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RICOH CO. v. HONEYWELL

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY


March 12, 1993

RICOH COMPANY, LTD., Plaintiff,
v.
HONEYWELL, INC. and KEER ELECTRICAL SUPPLY CO., Defendant.

The opinion of the court was delivered by: ALFRED J. LECHNER, JR.

OPINION

 LECHNER, District Judge

 This is an action for patent infringement brought by plaintiff Ricoh Company, Ltd. ("Ricoh") against defendants Honeywell Inc. ("Honeywell") and Keer Electrical Supply Co. ("Keer") (collectively, the "Defendants"), allegedly arising under 35 U.S.C. § 1 et seq. Jurisdiction is alleged under 28 U.S.C. § 1331(a) and 1338(a) and appears to be proper. See Complaint (the "Complaint"), filed 25 November 1992, P 5.

 Currently before the court is a motion by Defendants to transfer this action pursuant to 28 U.S.C. § 1404(a) to the United States District Court for the District of Minnesota. *fn1" Also before the court is a motion by Keer for summary judgment pursuant to Fed. R. Civ. P. 56. *fn2" For the reasons that follow, the motion to transfer is granted. Because this action is transferred to the United States District Court for the District of Minnesota, the motion for summary judgment is not considered. *fn3"

 Facts

 Ricoh is a Japanese corporation having its principal place of business in Tokyo, Japan. Complaint, P 1; Opp. Brief at 2. Ricoh has a wholly-owned subsidiary, Ricoh Corporation ("Ricoh Corp."), which maintains its principal place of business in West Caldwell, New Jersey. *fn4" Complaint, P 1; Opp. Brief at 2. According to Ricoh, Ricoh Corp. is the center of its "marketing operation in the United States for all Ricoh products in the Western Hemisphere." Opp. Brief at 2; Asano Decl., P 2. Because of its relationship with Ricoh Corp., Ricoh argues that it "considers New Jersey to be its home base in the United States, from which Ricoh oversees all its marketing activities in the United States." *fn5" Asano Decl., P 7.

 Honeywell is a Delaware corporation with its principal place of business in Minneapolis, Minnesota ("Minneapolis"). *fn6" Answer (the "Answer"), filed 22 December 1992, PP 2, 12; Lanyi Aff., P 2. Honeywell is licensed to do business in New Jersey. Complaint, P 2; Answer, P 2. Although Honeywell maintains a sales office for its micro switch division (the "Honeywell Micro Switch Division") in Westfield, New Jersey, *fn7" all production operations for the Honeywell Micro Switch Division are located in Freeport, Illinois ("Freeport"). Answer, P 2; Lanyi Aff., P 3; Moving Brief at 2. Honeywell has also authorized some New Jersey businesses to distribute its products in New Jersey, including Keer. Complaint, P 3; Answer, P 3. Keer is a Delaware Corporation with its principal place of business in Newark, New Jersey. Complaint, P 4; Answer, P 4.

 On 10 August 1982, the United States Patent Office appears to have issued patent number 4,343,768 ("Patent 768") to Ricoh for a device invented by Mitsutera Kimura and described as a "gas detector" (the "Gas Detector"). *fn8" Complaint, P 7; id., Ex. A (copy of Patent 768) at 1; Moving Brief at 3. The Gas Detector employs an electric heater to detect -- by measuring variations in electrical resistance caused by contact -- the existence of such gasses as carbon monoxide or chlorine. Complaint, Ex. A at 7. The design of the Gas Detector is purported to improve upon prior uses of electric heating devices in gas detectors. Id.

 Ricoh contends Honeywell has infringed on Patent 768. Id., P 9. Specifically, Ricoh states:

 

Honeywell, through its Micro Switch Division, has committed and continues to commit acts of infringement of [Patent 768] by making, using, selling and offering for sale directly and/or through its authorized distributors in this District and elsewhere, (i) products, including Honeywell model AWM 1000, 2000, 3000 and 5000 series microbridge sensors [(the "Honeywell AWM Sensors")], which are claimed in [Patent 768] and (ii) systems and controllers, such as DeltaNet Microcel Controller systems [("the Microcel System")] and Deltanet Excel Plus Distributed Controllers [(the "Excel System")] [(collectively, the "Honeywell Sensor Control Systems")], which incorporate said products as material components thereof.

  Id. As for Keer, Ricoh alleges that Keer has infringed on Patent 768 by selling and offering for sale Honeywell products, including AWM 2000 and 3000 series microbridge sensors. *fn9" Id., P 10.

 Ricoh further alleges that the actions of both Honeywell and Keer "have been and are being conducted willfully and deliberately with full knowledge of [Patent 768] and in disregard of Ricoh's rights thereunder." Id., P 11. Moreover, Ricoh contends it has been and will continue to be irreparably harmed by Defendants' alleged infringement of Patent 768. Id., P 12. Ricoh requests a declaratory judgment that Patent 768 has been infringed by Defendants, a permanent injunction, treble damages, attorneys' fees and costs. Id. at 4-5.

 Discussion

 Honeywell argues that Ricoh has brought this litigation in an inappropriate forum, namely, New Jersey. Moving Brief at 1. Specifically, Honeywell states:

 

None of the events which gave rise to the alleged infringement occurred within this jurisdiction, and none of the documents and witnesses are in New Jersey. Ricoh's chosen forum would be unduly expensive, inconvenient, and burdensome to Honeywell, and would involve this court's energies in a dispute between two non-residents in which New Jersey has no interest.

 Id.

 The Honeywell AWM Sensors

 The Honeywell AWM Sensors which Ricoh claims infringe on Patent 768 were originally designed in Minneapolis in Honeywell's Sensors and Systems Development Center. Leonard Aff., P 5; Lanyi Aff., P 5. The sensors are manufactured and sold by the Honeywell Micro Switch Division in Minneapolis. Alvarez Aff., P 2.

 According to William Lanyi ("Lanyi"), patent counsel for Honeywell responsible for all intellectual property matters for the Honeywell Micro Switch Division, see Lanyi Aff., P 2, all documents relating to the original design of the Honeywell AWM Sensors are located in Minneapolis. Id., PP 5, 11. Similarly, both Lanyi and Ramon Alvarez ("Alvarez"), General Manager of the Honeywell Micro Switch Division, see Alvarez Aff., P 1, represent that documents relating to the production, manufacture and marketing of the Honeywell AWM Sensors are located in either Freeport or in Minneapolis. *fn10" Lanyi Aff., P 8; Alvarez Aff., P 4.

 Lanyi further represents that he has reviewed Ricoh's first set of document requests and "all documents which appear to be responsive to those requests are located either in Minneapolis . . . or Freeport." Lanyi Aff., P 11. Significantly, Lanyi represents that, to his knowledge, "no responsive documents [are] located in New Jersey." Id., PP 8, 11. Similarly, Alvarez represents that, to his knowledge, Keer has no documents relating to the design and production of Honeywell AWM Sensors at its plant in New Jersey. Alvarez Aff., P 6.

 In addition to documents, Honeywell indicates that the majority of key witnesses with respect to the design, production, sales and marketing of the Honeywell AWM Sensors are located either in Minneapolis or in Freeport. *fn11" Lanyi Aff., P 9; Alvarez Aff., P 3. For instance, those persons responsible for the original design of the Honeywell AWM Sensors -- Robert Higashi, Robert Johnson and Philip J. Bohrer -- are located in Minnesota. Lanyi Aff., P 6. Similarly, James Holman, the person who developed the manufacturing process for the Honeywell AWM Sensors, is located in Minneapolis. Id., P 9. Honeywell states that, given the number of witnesses from the Honeywell Micro Switch Division in Illinois who would be witnesses in this litigation, "it would disrupt the Micro Switch Division of Honeywell if these persons were caused to appear in New Jersey." Id.; accord Alvarez Aff., P 5. Honeywell further states that "it would be far less disruptive of the Micro Switch Division to transport these individuals to Minneapolis for discovery and trial than to transport these persons to New Jersey." *fn12" Lanyi Aff., P 10; accord Alvarez Aff., P 5.

 The Honeywell Sensor Control Systems

 The Honeywell Sensor Control Systems are products manufactured and sold by the Building Control Business Unit of Honeywell (the "Honeywell Building Control Unit"), which is located at Honeywell's principal place of business in Minneapolis. Leonard Aff., PP 4, 8. These control systems, which may incorporate Honeywell AWM Sensors, are designed to control temperature and airflow within a room. Id., P 4; Moving Brief at 3. The Microcel System was designed in Minneapolis with input from Honeywell personnel in Arlington Heights, Illinois ("Arlington Heights"). Leonard Aff., P 6. The Excel System was designed in Arlington Heights. Id.

 According to Robert Leonard ("Leonard"), patent counsel for Honeywell responsible for intellectual property matters at the Honeywell Building Control Unit, see id., P 2, documents relating to the manufacture and design of Honeywell Sensor Control Systems are located in Minneapolis and in Arlington Heights. Id., PP 6-7. Leonard further represents that he has reviewed Ricoh's first set of document requests and that "most of the documents responsive to [these] request[s] with respect to the [Honeywell Sensor Control Systems] are located in Minneapolis and [in] Arlington Heights." *fn13" Id., P 9. In addition to documents, Honeywell states that "many of the essential witnesses in this litigation" with respect to the Honeywell Sensor Control Units are located in Minneapolis." *fn14" Id., PP 5, 8.

  As with the documents and witnesses related to the Honeywell AWM Sensors, Honeywell insists that, "in view of the location of witnesses and documents" concerning the Honeywell Sensor Control Systems, transfer to Minnesota "would make this litigation substantially more convenient for Honeywell and less expensive for Honeywell." Id., P 10.

 A. Standard of Review Under 28 U.S.C. § 1404(a)

 Section 1404(a) permits a district court to transfer a case to any other district where venue is proper "for the convenience of parties and witnesses, in the interest of justice . . . ." 28 U.S.C. § 1404(a). *fn15" The purpose of section 1404(a) "is to prevent the waste of 'time, energy and money' and 'to protect litigants, witnesses and the public against unnecessary inconvenience and expense . . . .'" Van Dusen v. Barrack, 376 U.S. 612, 616, 11 L. Ed. 2d 945, 84 S. Ct. 805 (1964) (quoting Continental Grain Co. v. Barge FBL-585, 364 U.S. 19, 26-27, 4 L. Ed. 2d 1540, 80 S. Ct. 1470 (1960)); see also American Tel. & Tel. v. MCI Communications Corp., 736 F. Supp. 1294, 1305 (D.N.J. 1990).

 The terms of the statute suggest three factors must be considered in transferring a case: (1) the convenience of the parties, (2) the convenience of the witnesses and (3) the interests of justice. Sandvik, Inc. v. Continental Ins. Co., 724 F. Supp. 303, 306 (D.N.J. 1989); Derry Finance N.V. v. Christiana Cos., 555 F. Supp. 1043, 1045 (D.Del. 1983). In addition, the transferee forum must be one in which the suit "might have been brought." 28 U.S.C. § 1404(a); see Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970), cert. denied, 401 U.S. 910, 27 L. Ed. 2d 808, 91 S. Ct. 871 (1971); AT&T, 736 F. Supp. at 1305 ; Sandvik, 724 F. Supp. at 306 .

 B. Private and Public Interests

 The analysis under section 1404 is flexible and must be made on the unique facts of each case. Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29-30, 101 L. Ed. 2d 22, 108 S. Ct. 2239 (1988); Piper Aircraft Co. v. Reyno, 454 U.S. 235, 249-50, 70 L. Ed. 2d 419, 102 S. Ct. 252 (1981), reh'g denied, 455 U.S. 928, 71 L. Ed. 2d 474, 102 S. Ct. 1296 (1982); Van Dusen, 376 U.S. at 624. A determination that transfer to another jurisdiction is appropriate represents an "'exercise[] of structured discretion by trial judges appraising the practical inconvenience posed to the litigants and to the court should a particular action be litigated in one forum rather than another.'" Lony v. E.I. Du Pont de Nemours & Co., 886 F.2d 628, 632 (3d Cir. 1989) [hereinafter Lony I] (quoting Pain v. United Technologies Corp., 205 U.S. App. D.C. 229, 637 F.2d 775, 781 (D.C.Cir. 1980), cert. denied, 454 U.S. 1128, 71 L. Ed. 2d 116, 102 S. Ct. 980 (1981)). Added to that are the "interests of justice" and the impact on judicial administration of maintaining related actions in separate fora.

 In Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 91 L. Ed. 1055, 67 S. Ct. 839 (1947), the Supreme Court listed various factors which should be considered in deciding to transfer. *fn16" These factors fall into two broad categories. One category includes factors relating to the so-called "private interests" of the parties in the context of the litigation: the plaintiff's choice of forum, the ease of access to sources of proof, availability of compulsory process over unwilling witnesses, the cost of attendance of willing witnesses, obstacles to a fair trial and the possibility of a jury view of the premises. Gulf Oil, 330 U.S. at 508. The other category consists of the "public interest" in the administration of courts and the adjudication of cases: court congestion and other administrative difficulties, placing the burden of jury duty on those having the closest ties to the action, local interests in having cases adjudicated at home and familiarity of the forum court with the applicable law. Id. at 508-09; Sandvik, 724 F. Supp. at 307 .

 The moving party has the burden of persuasion on a motion to transfer. Lony II, 935 F.2d at 609; Lony I, 886 F.2d at 633; Lacey I, 862 F.2d at 44; Plum Tree, Inc. v. Stockment, 488 F.2d 754, 756 (3d Cir. 1973). The burden is not on the plaintiff to show that the proposed alternative forum is inadequate. AT&T, 736 F. Supp. at 1305 . On the contrary, the burden is on the moving party to show the proposed alternate forum is not only adequate but also more convenient than the present forum. Lacey I, 862 F.2d at 43-44.

 In making its decision, a "district court is required to develop adequate facts to support its decision and to articulate specific reasons for its conclusion" that transfer to another venue is appropriate. Id. at 39. Among the considerations are whether the moving party submitted adequate data of record to facilitate the appropriate analysis, whether the moving party has met its burden of persuasion, whether the contentions of the plaintiff were adequately considered and whether the relevant private and public interests were both adequately considered and balanced. Id. A court must rely on facts which are a matter of record in deciding a motion for transfer. Plum Tree, 488 F.2d at 756-57.

 C. Private Interests

 The primary private interests in this action are the plaintiff's choice of forum and the convenience of the available districts with regard to the witnesses and the documentary evidence of both parties.

 1. The Ricoh Choice of Forum

 In a decision involving transfer under section 1404(a), it was stated:

 

Under the Gulf Oil analysis, a plaintiff's choice of forum is presumptively correct. In the Third Circuit, a plaintiff's choice of forum is a "paramount concern" in deciding a motion to transfer venue. When a plaintiff chooses his home forum, the choice is "entitled to greater deference."

 Sandvik, 724 F. Supp. at 307 (citations omitted). Indeed, "unless the balance is strongly tipped in favor of transfer, the plaintiff's choice of forum should not be disturbed." Hardaway Constr., Inc. v. Conesco Indus., Ltd., 583 F. Supp. 617, 620 (D.N.J. 1983); see also Lony II, 935 F.2d at 609; Lacey I, 862 F.2d at 44.

 Nevertheless, a plaintiff's choice of forum is "neither dispositive of the transfer analysis nor is it the only factor to be considered." AT&T, 736 F. Supp. at 1306 . "The preference for honoring a plaintiff's choice of forum is simply that, a preference; it is not a right." E.I. Du Pont de Nemours & Co. v. Diamond Shamrock Corp., 522 F. Supp. 588, 592 (D.Del. 1981). For instance, it is equally well-established that a plaintiff's choice of forum is afforded less deference when the plaintiff has chosen a foreign forum. Mediterranean Golf, 783 F. Supp. at 842 ; see also Piper, 454 U.S. at 255-56; AT&T, 736 F. Supp. at 1306 ; Ballard Med. Prods. v. Concord Labs., 700 F. Supp. 796, 800 (D.Del. 1988); L.C. Baron, Inc. v. H.G. Caspari, Inc., 678 F. Supp. 100, 103 (E.D.Pa. 1987); Clopay Corp. v. Newell Cos., 527 F. Supp. 733, 736 (D.Del. 1981) (patent case); Pall Corp. v. Bentley Labs., Inc., 523 F. Supp. 450, 452 (D.Del. 1981) (same). Cf. Lony II, 935 F.2d at 609 (according less deference does not mean no deference is given to foreign plaintiff's choice of forum).

 Ricoh argues that its choice of New Jersey as the forum for this action is entitled to heightened deference because "New Jersey is Ricoh's home turf in the United States." Opp. Brief at 6-9. Ricoh bases this argument on the "substantial business connections" of Ricoh to Ricoh Corp. in New Jersey. Id.; see also supra n.5. Specifically, Ricoh states: "Ricoh maintains its U.S. marketing headquarters in New Jersey and conducts all U.S. sales and marketing efforts through Ricoh Corp. from that location." Opp. Brief at 11.

 This argument is meritless. As the Complaint squarely states, Ricoh is a Japanese corporation with its principal place of business in Japan. Complaint, P 1. Ricoh maintains no offices, manufacturing facilities or distributing facilities in New Jersey. Put simply, as a foreign corporation, Ricoh is not on its "home turf" in New Jersey. Mediterranean Golf, 783 F. Supp. at 842 ; L.C. Baron, 678 F. Supp. at 103 .

 Ricoh's attempt to bootstrap its position by reference to its connections with Ricoh Corp. is misguided. As Honeywell points out: (1) Ricoh Corp. is not a party to this lawsuit; (2) Ricoh Corp. does not appear to have any proprietary interest in Patent 768; and (3) Ricoh's list of contacts with Ricoh Corp. contains no indication that Ricoh Corp. has any relation whatever to Patent 768 or that Ricoh Corp. in any way participated in its design, development or manufacture. See Reply Brief at 4. It is implausible to suggest that -- in a case involving the design and development of the invention which resulted in Patent 768 -- Ricoh may rely on the presence of a subsidiary which did not participate in those activities and which has no apparent proprietary interest in the resulting patent.

 Ricoh's reliance on Ricoh Corp. also ignores the fact that, in New Jersey, parent and subsidiary corporations are distinct legal entities and courts are extremely reluctant to pierce the veil between the two absent compelling circumstances. See, e.g., State, Dep't of Environmental Protection v. Ventron Corp., 94 N.J. 473, 500-01, 468 A.2d 150 (1983); Lyon v. Barrett, 89 N.J. 294, 300, 445 A.2d 1153 (1982); In re Maple Contractors, Inc., 172 N.J. Super. 348, 354-55, 411 A.2d 1186 (Law.Div. 1979).

 Ricoh also ignores the fact that this same argument has been rejected in similar situations. See, e.g., AT&T, 736 F. Supp. at 1306 ; Sony Corp. v. Quantum Corp., 1990 U.S. Dist. LEXIS 19444, 16 U.S.P.Q.2D (BNA) 1446, 1447 (D.Del. 1990). For instance, in AT&T, although the plaintiff was a New York corporation with its principal place of business in New York, New Jersey "was the home of every major AT&T division and [was] the center of AT&T's long distance business." 736 F. Supp. at 1297 . Nevertheless, the argument that New Jersey was AT&T's home turf was rejected: "While AT&T maintains a considerable presence in New Jersey, it is a New York corporation with its principal place of business in that state. Therefore, AT&T cannot be said to be entitled to deference due to a plaintiff suing in its home state." Id. at 1306. Similarly, in Sony, 16 U.S.P.Q.2D (BNA) at 1447, the court rejected the argument by a Japanese plaintiff in a patent infringement case that its American subsidiary qualified as its "home turf." Id. The present home turf argument is indistinguishable from either AT&T or Sony. Ricoh's argument that its choice of forum is entitled to higher deference is rejected.

 Disregarding Ricoh's choice of forum is appropriate for an additional reason. When the central facts of a lawsuit occur outside the forum state, a plaintiff's selection of that forum is entitled to less deference. *fn17" Manasse v. West Hunterdon Transit, No. 91-4713, 1992 U.S.Dist. LEXIS 6838 *9 (D.N.J. 4 May 1992); AT&T, 736 F. Supp. at 1306 ; National Mortg. Network, Inc. v. Home Equity Ctrs., Inc., 683 F. Supp. 116, 119 (E.D.Pa. 1988); S.C. Johnson, 571 F. Supp. at 1188.

 Put simply, as Honeywell has demonstrated, neither the design nor the development nor the manufacture of the Honeywell products involved in this action occurred in New Jersey. *fn18" See supra at pp.7-11. On the one hand, the Honeywell AWM Sensors were designed in Minneapolis at the Honeywell Sensors and Systems Development Center and are manufactured in Freeport. Leonard Aff., P 5; Lanyi Aff., P 8. On the other hand, regarding the Honeywell Sensor Control Systems, the Excel System was designed in Arlington Heights, while the Microcel System was designed in Minneapolis. Leonard Aff., P 6. Both systems were and are manufactured by the Honeywell Building Control Unit in both Minneapolis and Arlington Heights. Id., PP 4, 8. Similarly, the marketing strategies for the Honeywell Sensor Control Systems were formulated in both Minneapolis and Illinois. Id., P 8; Lanyi Aff., P 9.

 Ricoh attempts to establish ties between the subject matter of this litigation and New Jersey by pointing to (1) 503 Honeywell AWM Sensors which Honeywell appears to have sold in New Jersey in 1992 and (2) a single Honeywell AWM Sensor which was allegedly sold by Keer in New Jersey. *fn19" To argue that these activities establish sufficient ties to New Jersey, particularly in light of the activities which occur and have occurred in Minneapolis, Illinois and probably Japan, is simply disingenuous.

 Honeywell AWM Sensors are sold nationwide by Honeywell. Reply Brief at 10 (citing Stipulation Between the Parties, PP 6, 10). The 503 such units sold in New Jersey represent an exceedingly small proportion of those nationwide sales, and generated a revenue of only $ 14,000. *fn20" Id. In the large picture, these sale activities in New Jersey are insignificant and do not establish New Jersey as the center of gravity for Honeywell's allegedly infringing activities. Nor do these sale activities change the fact that the central and essential activities relevant to this lawsuit -- the design, research, development and marketing of the Honeywell AWM Sensors and the Honeywell Sensor Control Systems -- occurred outside of New Jersey. See S.C. Johnson, 571 F. Supp. at 1188 (limited sales activity in chosen forum, consisting of sale of over 100,000 units, was not sufficient to retain jurisdiction in patent infringement action when development, testing, research and production of allegedly infringing product occurred elsewhere).

 Because Honeywell has demonstrated that the operative facts to this litigation are not centered in New Jersey, Honeywell has demonstrated that Ricoh's choice of New Jersey as the forum for this litigation is entitled to lessened deference. AT&T, 736 F. Supp. at 1306 ; Pall, 523 F. Supp. at 452 . This lessened deference is bolstered by the fact that Ricoh is a foreign corporation suing in a foreign forum. *fn21" Piper, 454 U.S. at 255-56; Mediterranean Golf, 783 F. Supp. at 842 ; AT&T, 736 F. Supp. at 1306 ; Sandvik, 724 F. Supp. at 307 ; Pall, 523 F. Supp. at 452 .

 2. Access to Sources of Proof

 The second relevant factor under the private interest analysis is the convenience of the available districts concerning the witnesses and the documentary evidence of both parties. As the Supreme Court has stated:

 

To examine "the relative ease of access to sources of proof," and the availability of witnesses, the district court must scrutinize the substance of the dispute between the parties to evaluate what proof is required, and determine whether the pieces of the evidence cited by the parties are critical, or even relevant, to the plaintiff's cause of action and to any potential defenses to the action.

 Van Cauwenberghe v. Biard, 486 U.S. 517, 528, 100 L. Ed. 2d 517, 108 S. Ct. 1945 (1988) (quoting Gulf Oil, 330 U.S. at 508).

 In this action, the parties do not dispute the characterization of the issue. This action involves a claim for patent infringement, governed by Federal patent law, 35 U.S.C. § 1 et. seq. The issues relating to Honeywell's alleged infringement of Patent 768 require analysis of facts, documents and testimony relating to the design, development and production of the Honeywell's AWM Sensors and Sensor Control Systems. See 35 U.S.C. § 271 (listing activities which constitute infringement). As Honeywell has demonstrated by its submission of factually specific affidavits, development of these facts are far more easily developed in Minnesota than in New Jersey.

 The Honeywell AWM Sensors were originally designed in Minneapolis in Honeywell's Sensors and Systems Development Center. Leonard Aff., P 5 Lanyi Aff., P 5. Those persons responsible for the original design of the Honeywell AWM Sensors -- Robert Higashi, Robert Johnson and Philip J. Bohrer -- are also located in Minnesota. Lanyi Aff., P 6. As well, James Holman, the person who developed the manufacturing process for the Honeywell AWM Sensors, is located in Minneapolis. Id., P 9. With regard to the manufacture and marketing of the Honeywell AWM Sensors, Honeywell lists eleven key witnesses, all of whom are located in either Minneapolis or in Freeport, Illinois. See id., P 9; see also supra n.11. Significantly, no witnesses with regard to the design, development, manufacture or marketing of the Honeywell AWM Sensors appear to be located in New Jersey. Lanyi Aff., PP 9, 11.

 With regard to the Honeywell Sensor Control Units which incorporate the allegedly infringing AWM Sensors, the Microcel system was designed in Minneapolis and the Excel System was designed in Arlington Heights, Illinois. As a whole, the Honeywell Sensor Control Units are manufactured in Minneapolis. Leonard Aff., PP 4, 8. Again, all relevant witnesses reside in either Minnesota or in Illinois. See Leonard Aff., P 8 (citing by name, title and responsibility six witnesses, all residing in Minnesota, who are witnesses to the design, development, manufacture and marketing of the Honeywell Sensor Control Units); see also supra n.14. Again, it appears that no witnesses with regard to the Honeywell Sensor Control Units are located in New Jersey.

 The same is true for relevant documentary evidence in this action. All documents relating to the original design and development of the Honeywell AWM Sensors, including engineering and laboratory notebooks, are located in Minneapolis. Lanyi Aff., PP 5, 11. All documents relating to the manufacture and marketing of the Honeywell AWM Sensors are located in Minneapolis and in Freeport, Illinois. Id., P 8; Alvarez Aff., P 4. Similarly, the majority of documents relating to the design, manufacture and marketing of the Honeywell Sensor Control Systems are located in Minneapolis and in Arlington Heights. Leonard Aff., P 9 Significantly, no relevant or responsive documents, with regard to either the Honeywell AWM Sensors or the Honeywell Sensor Control Systems, appear to be located in New Jersey. *fn22" Lanyi Aff., PP 8, 11; Alvarez Aff., P 6; Phillips Aff., PP 3-4.

 Although Ricoh does not bear any burden of persuasion on this motion for transfer, the convenience of potential non-party witnesses must nevertheless be considered and balanced. Significantly, Ricoh has not indicated the presence of a single non-party witness in New Jersey or otherwise who would be inconvenienced by transfer of this action to Minnesota. In fact, Ricoh has failed to submit by affidavit the names of any witnesses -- even employee witnesses -- in New Jersey. Although Ricoh generally claims its employees would be inconvenienced by requiring them to travel to Minnesota for trial, it has failed to provide the names of any such witnesses, the employment positions and responsibilities of those witnesses or the proposed testimony those witnesses would provide.

 Even accepting the contention that witnesses on behalf of Ricoh will come from Japan, *fn23" Ricoh is still a Japanese corporation located in Japan. Its witnesses are already inconvenienced by having to travel thousands of miles from their homes to testify. Minnesota is no more inconvenient for these witnesses than New Jersey. *fn24" In contrast, by virtue of its factually specific affidavits, Honeywell has demonstrated that trial of this case in New Jersey would cause inconvenience not otherwise necessary. *fn25" With almost all of Honeywell's relevant documents and witnesses located in Minnesota or in Illinois, trial in Minnesota would require only one, rather than both, parties to this litigation to be inconvenienced. When a transfer motion would aid the movant and not disadvantage the opponent, transfer is appropriate. Filmtec Corp. v. Allied-Signal, Inc., 1989 U.S. Dist. LEXIS 16897, 13 U.S.P.Q.2D (BNA) 1979, 1983 (D.Del. 1989); S.C. Johnson, 571 F. Supp. at 1187 ; Pall, 523 F. Supp. at 452-53 . Moreover, as one court has observed:

 

From an economic standpoint it certainly makes sense to conduct a trial . . . where only one party and witnesses have to travel rather than where both parties have to travel.

 Lambton, 1992 WL 5275 at *2; see also S.C. Johnson, 571 F. Supp. at 1187 ("maintenance of suit in district in which one of the parties resides [is] preferable").

 Contrary to Ricoh's suggestion, see Opp. Brief at 12, this is not a case where transfer simply shifts the inconvenience of litigation from one party to another. Ballard, 700 F. Supp. at 801 . Honeywell has demonstrated that trial in New Jersey would cause significant inconvenience to its business and to its employees who would be witnesses. In contrast, by choosing to bring this litigation, Ricoh has accepted the fact that litigation will occur in a forum thousands of miles from its home turf and will cause it significant inconvenience. In light of Ricoh's failure to provide factually specific affidavits to the contrary, there is no reason to believe that trial in Minnesota is any more inconvenient to Ricoh than trial in New Jersey. See Ballard, 700 F. Supp. at 801 .

 In sum, Honeywell has demonstrated that the balance of private interests "strongly favors" transfer of this action to the District of Minnesota. As a foreign plaintiff, Ricoh has no claim to "home turf" in New Jersey and is not entitled to an enhanced presumption in favor of its choice of forum. New Jersey, moreover, has little or no connection with the operative facts of this litigation. The design, development, manufacture and marketing of Honeywell's allegedly infringing sensor products occurred in Minnesota and Illinois, not in New Jersey. Based on the lack of any contrary evidence presented by Ricoh, it is reasonable to assume development of the Gas Detector and Patent 768 occurred in Japan.

 As for access to sources of proof, the majority of Honeywell's possible witnesses work or reside in Minnesota or in Illinois. Transfer will enhance the ease of discovery given the location of these witnesses and documents. Although it is possible to move documents to New Jersey for trial, such efforts will increase the direct and indirect costs of and inconvenience associated with litigation in this District. As for sources of proof to be presented by Ricoh, Ricoh has failed either to name any specific witnesses or to specify the location of its documents. Accordingly, there is no reason to believe that trial in Minnesota is any more inconvenient for Ricoh than trial in New Jersey. In light of these reasons and the other considerations discussed above, Honeywell has met its burden of proof to show transfer is appropriate and more convenient for the witnesses, the parties and the trial. See Levinson, 1989 U.S. Dist. LEXIS 17455, 14 U.S.P.Q.2D (BNA) 1064 ; Ballard, 700 F. Supp. at 801 ; Clopay, 527 F. Supp. at 736 .

 D. Public Interest

 As the Third Circuit stated in Lony I, the public interest factors relevant to a determination of the propriety of transfer include

 

the administrative difficulties flowing from court congestion; the "local interest in having localized controversies decided at home;" the interest in having the trial of a diversity case in a forum that is at home with the law that must govern the action; the avoidance of unnecessary problems and conflicts of laws or the application of foreign law; and the unfairness of burdening citizens in an unrelated forum with jury duty.

 886 F.2d at 640 (quoting Piper, 454 U.S. at 241 n.6). The Third Circuit also stated: "In evaluating the public interest factors the district court must 'consider the locus of the alleged culpable conduct, often a disputed issue, and the connection of the conduct to plaintiff's chosen forum.'" Lacey I, 862 F.2d at 48 (quoting Van Cauwenberghe, 485 U.S. at 529); see also Lony II, 935 F.2d at 612.

 Although a number of these criteria are inapplicable in the present case, it appears that Minnesota has a greater interest in this litigation than New Jersey.

 1. Local Interests

 Honeywell maintains its principal place of business in Minnesota. Answer, PP 2, 12; Lanyi Aff., P 2. Minnesota, therefore, has a compelling interest in regulating the conduct of businesses in its state. In addition, as previously discussed, the locus of this action is based largely in Minnesota by virtue of the fact that the design, development, manufacture and marketing of Honeywell's AWM Sensors and Sensor Control systems occurred largely in Minnesota. Because Minnesota is the locus of the majority of alleged culpable conduct, Minnesota has a strong public interest in adjudicating this dispute. Lacey I, 862 F.2d at 48; Mediterranean Golf, 783 F. Supp. at 849-50 . It does not appear that any comparably culpable conduct occurred in New Jersey. *fn26" Mediterranean Golf, 783 F. Supp. at 849-50 ; see supra at pp.20-22.

 2. Burden of Jury Duty

 The burden of jury duty "ought not to be imposed upon the people of a community which has no relation to the litigation." Ferens v. John Deere Co., 494 U.S. 516, 529-30, 108 L. Ed. 2d 443, 110 S. Ct. 1274 (1990) (citing Gulf Oil, 350 U.S. at 508-09); Klauder & Nunno Enterprises, Inc. v. Hereford Assocs., Inc., 723 F. Supp. 336, 351 (E.D.Pa. 1989). New Jersey jurors should not be burdened with adjudicating a matter concerning allegations of patent infringement stemming from conduct which is/was largely localized in Minnesota and Illinois. See Pain, 637 F.2d at 792 (jury duty should not be imposed, nor local dockets clogged by, cases with little relation to jurisdiction). This factor too weighs in favor of transfer to Minnesota.

 3. Related Litigation/Interests of Justice

 Another significant criteria in determining the advisability of transfer is whether transfer would promote the interests of justice. Pall, 523 F. Supp. at 453 . Where related lawsuits exist, "it is in the interests of justice to permit suits involving the same parties and issues to proceed before one court and not simultaneously before two tribunals." Id.; accord Continental Grain, 364 U.S. at 26 Transfer in such a circumstance has numerous benefits. Cases can be consolidated before one judge thereby promoting judicial efficiency; pretrial discovery can be conducted in a more orderly manner; witnesses can be saved the time and expense of appearing at trial in more than one court; and duplicative litigation involving the filing of records in both courts is avoided, thereby eliminating unnecessary expense and the possibility of inconsistent results. Ballard, 700 F. Supp. at 801 ; Pall, 523 F. Supp. at 453 .

 In this instance, there is a related litigation pending in Minnesota. On 14 December 1992, Honeywell filed a declaratory judgment action in Federal District Court in Minnesota, seeking an order that its sensor products did not infringe on Ricoh's Patent 768. Moving Brief at 3 n.2, 16. Obviously, this declaratory judgment action was filed after this patent infringement action. When two suits involving the same parties and subject matter are pending concurrently, the first-filed suit should have priority absent a showing that the balance of inconvenience favors transfer or unless there are special circumstances which justify giving priority to the second suit. AT&T, 736 F. Supp. at 1308 ; Todd Shipyards Corp. v. Cunard Line, Ltd., 708 F. Supp. 1440, 1447 (D.N.J. 1989); Pall, 523 F. Supp. at 453 .

 The circumstances of this case warrant departure from the first-to-file rule. Both cases concern the same issues and will require the same sources of proof. Given the location of a large number of relevant witnesses and documents in Minnesota, as well as the total lack of any such evidence in New Jersey, the enhanced convenience offered by trial in Minnesota is sufficient to overcome the first-to-file rule. See, e.g., EMS-American Grilon, 15 U.S.P.Q.2D (BNA) at 1475 ; Pall, 523 F. Supp. at 453 ; K-Tel Int'l, Inc. v. Zuro, 176 U.S.P.Q. (BNA) 464 (D.Minn. 1971). In addition to judicial and litigation efficiency, the interests of justice are served by transfer to Minnesota because such a transfer eliminates the possibility of inconsistent rulings from this court and from the court in Minnesota. Chrysler Capital Corp. v. Woehling, 663 F. Supp. 478, 484 (D.Del. 1987).

 E. Filing of Suit in Minnesota

 For a transfer to be proper, the transferee forum must be one in which the suit "might have been brought." 28 U.S.C. § 1404 (a); see Shutte, 431 F.2d at 25 (3d Cir.); AT&T, 736 F. Supp. at 1305 ; Sandvik, 724 F. Supp. at 306 . There is no question that the action against Honeywell could have originally been brought in the District of Minnesota. *fn27" Both personal jurisdiction and venue are proper in the District of Minnesota. Moving Brief at 19-20; Reply Brief at 14; see also 28 U.S.C. § 1400(b). Honeywell maintains its principal place of business in Minnesota and, as discussed above, has committed acts of alleged infringement in Minnesota. *fn28" In addition, because this case involves application of Federal patent law, subject matter jurisdiction in the District of Minnesota is appropriate under 28 U.S.C. §§ 1331(a) and 1338(a). *fn29"

 Accordingly, the private and public interests in this action weigh in favor of transfer to Minnesota. Moreover, Honeywell has met its burden showing the District of Minnesota is an adequate and a more convenient forum than the District of New Jersey.

 Conclusion

 For the foregoing reasons, the motion of Honeywell to transfer this action to the United States District Court for the District of Minnesota is granted.

 Dated: 12 March 1993


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