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RICOH CO. v. HONEYWELL

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.

 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.

 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.

 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.


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