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.
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.
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.
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.
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.
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,
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.
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.
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.
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.
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.
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).
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.
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