THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY
February 6, 2001
MARION STEEL CO.,
GARDEN STATE HIGHWAY PRODUCTS, INC., ET AL.,
The opinion of the court was delivered by: Simandle, District Judge
NOT FOR PUBLICATION
This matter is before the Court on motion of defendants Granger & Associates, Inc. and Mark S. Granger, to transfer venue in this case to the United States District Court for the Southern District of Ohio, Eastern Division, for consolidation with the related case of Granger & Assocs., Inc. v. Marion Steel Co., Civ. No. 00-355. Granger urges the Court to transfer because, he argues, the sole New Jersey defendant (Garden State Highway Products) having settled, there is no further basis for this case to proceed in New Jersey.
This motion will be denied. Sometime after Granger filed the present motion to transfer venue, the Southern District of Ohio entered an order dated January 4, 2001 transferring the related Granger v. Marion Steel Co. case to this District for consolidation with the present case. Judge King temporarily stayed her transfer order on January 24, 2000 pending consideration of Granger's objections to that order. In light of this ruling by the Ohio court, this Court finds that the "law of the case" doctrine and comity principles command denial of Granger's motion to transfer venue.
This is an action for unfair competition and patent infringement arising under the trademark and patent laws of the United States, 15 U.S.C. § 1051, et seq.; 35 U.S.C. § 1, et seq., over which this Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1338(a).
Plaintiff Marion Steel Company (MSC) manufactures and sells breakaway devices for use with highway signposts under the trademark Lap Splice.(TM) Defendant Mark Granger, a former employee of MSC, manufactures and sells a rival breakaway coupling system through his company, defendant Granger & Associates, Inc. (collectively "Granger"). Defendant Garden State Highway Products ("GSHP") serves as a distributor for both MSC and Granger, and sold both types of coupling systems to the New Jersey Department of Transportation ("NJDOT"). (Am. Compl. ¶¶ 6-9; Granger Decl. ¶ 1.) MSC alleges that Granger's coupling systems are substantially similar to the MSC Lap Splice system, and that Granger and GSHP sold the Granger system using the MSC Lap Splice trademark, in violation of patent and trademark laws.
On March 8, 2000, MSC filed the present action in this Court. On or about March 23, 2000, Granger filed a mirror-image lawsuit in the Southern District of Ohio against MSC, alleging that MSC has infringed two Granger patents, and seeking a declaration that (1) Granger has not infringed two of MSC's patents (5,794,910 & 5,887,842), (2) that one of MSC's patents is invalid (5,957,425), and (3) that due to this invalidity, MSC is estopped from asserting any claim based on violation of the `425 patent.
In April 2000, MSC moved the Ohio federal court to transfer that case to this Court for consolidation with the present case. The grounds asserted were that (1) there is overlap between the claims; (2) this New Jersey action is not transferable to Ohio, whereas the Ohio action is transferable here, (3) judicial economy would be best served by transferring the case here, (4) the New Jersey action was the first filed, and (5) New Jersey is the proper venue given that this state is the locus of the essential infringement and key witnesses reside here. (MSC Br. at 6-7.) On January 10, 2001, Granger moved this Court to transfer the present matter to Ohio for consolidation with the MSC v. Granger case there pending.
On January 4, 2001, but after briefing of this underlying motion was completed, United States Magistrate Judge Norah McCann King of the Southern District of Ohio issued an Opinion and Order granting MSC's motion to transfer Granger's suit from that court to this District. See Granger & Assocs., Inc. v. Marion Steel Company, Slip Op., 2:00-CV-355, (S.D. Ohio Jan. 4, 2001). *fn1 Judge King found that the Ohio action could have been brought initially in New Jersey, id., Slip Op. at 5, and that the proper venue for the suit was in New Jersey, id. at 13. Judge King's Opinion explained that her decision was based on the following factors:
1. Plaintiff's Choice of Forum. This factor weighed against transfer to the District of New Jersey. Because Granger and Associates chose the Southern District of Ohio as the forum, that choice would not be disturbed "unless the relevant factors weighed strongly in favor of transfer." Id. at 7 (citations omitted).
2. Comprehensive Relief. This factor weighed in favor of transfer. Among the defendants in the case here is Garden State, a New Jersey corporation. Garden State was not made a party to the Ohio action, and lacked sufficient contacts with Ohio necessary to give the Southern District of Ohio general or in personam jurisdiction over it. Judge King found that the absence of Garden State prevented her from affording complete relief to the parties, a factor weighing in favor of transfer. Id. at 8-9 (citations omitted).
3. Witnesses. This factor also weighed in favor of transfer. Judge King agreed with MSC that relevant NJDOT witnesses would not be subject to the Ohio court's subpoena power, and that without those witnesses the court would not be able to determine the merits of Granger's request for a declaration of non-infringement of MSC's patent No. 5,957,425. Given that the testimony from NJDOT witnesses is relevant, and given that these witnesses do not reside within 100 miles of Colombus, Ohio, Judge King concluded that the availability of witnesses weighed in favor of transfer to the District of New Jersey. Id. at 9-10.
4. Convenience to the Parties. This factor also tilted in favor of transfer. Judge King found that Granger, an Ohio resident, could be presumed to be willing to testify in either forum, and that MSC's employees must be presumed to be willing to testify in New Jersey since they brought the motion to transfer. With respect to non-party witnesses, there were non-parties who lived in New Jersey, such as Garden State's president, and still other witnesses living in places such as Virginia, Illinois, and Texas, for whom neither forum would be convenient. On balance, Judge King concluded, convenience weighed in favor of transfer. Id. at 10-12 (citations omitted).
5. Judicial Economy. This factor also counseled in favor of transfer. Judge King found that the claims in the Ohio and New Jersey actions were intimately related, inasmuch as the "`crux of [Granger's] complaint is that several claims under the `910 and 842 Patents interfere with and are virtually identical to those found in [MSC's] `425 patent.'" Granger's suit in Ohio was brought mainly as a way to establish priority and inventorship concerning the competing patents. Id. at 12 (quoting Granger Br. at 6). Because the pending action in New Jersey involves the same central issue, Judge King concluded, it would promote judicial economy to transfer and consolidate the two cases. Id.
Based on her evaluation of these factors, Judge King concluded that the relevant factors weighed heavily in favor of transferring the Ohio action to this District for consolidation with the present case. Accordingly, the court granted MSC's motion to transfer. *fn2
The Ohio federal court having decided that Granger v. Marion Steel should be transferred for consolidation with the case at bar, the question becomes what effect, if any, this ruling should have on the transfer motion presently before the Court. For reasons now discussed, Judge King's decision to transfer is highly instructive and should not be contradicted by this Court absent unusual circumstances not present here. Granger's motion to transfer will be denied.
Once a decision has been made to transfer venue from one federal court to another, that Order become the law of the case. The doctrine of "the law of the case" applies to the effect of previous orders on later action in the same case, and empowers courts to refuse to reopen issues that already have been decided. Messenger v. Anderson, 225 U.S. 435, 444 (1912). The law of the case doctrine has been routinely applied to compel respect of transfer decisions by coordinate courts. Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 816 (1988). Under the law of the case doctrine, the court should not revisit earlier decisions, even though having the power to do so, except in "extraordinary circumstances such as where the earlier decision was `clearly erroneous and would work a manifest injustice.'" Id. at 817 (citing Arizona v. California, 460 U.S. 605, 618 n.8 (1983).
Once a court has decided an issue pursuant to a motion to transfer venue, that decision becomes the law of the case. Hayman Cash Register Co. v. Sarokin, 669 F.2d 162, 165 (3d Cir. 1982). In Hayman Cash Register, the Third Circuit reversed, on law of the case and comity grounds, a District Court's order re-transferring the subject case back to the transferring court. The court's discussion of the law of the case doctrine is particularly applicable to the facts at hand:
We find guidance in other Third Circuit cases holding that `judges of co-ordinate jurisdiction sitting in the same court and in the same case should not overrule the decisions of each other.' . . . . This `rule of judicial comity' should similarly apply to the propriety of transfer orders between two courts. Once the transferor court has decided the issue of whether the suit `could have been brought' in the transferee court . . . this ruling becomes the law of the case. . . . A disappointed litigant should not be given a second opportunity to litigate a matter that has been fully considered by a court of coordinate jurisdiction, absent unusual circumstances. . . . Adherence to law of the case principles is even more pronounced where the transferor judge and the transferee judge are not members of the same court. 669 F.2d at 168-169 (citations omitted) (emphasis added).
Hayman Cash Register was also cited with approval by the Supreme Court in Christianson, supra, 486 U.S. at 816. Under these principles, unless unusual or significantly changed circumstances exist in this case that would compel this Court to disregard the Southern District of Ohio's ruling concerning venue, we will respect that ruling here.
Granger has pointed to no unusual circumstances that might give this Court cause to disregard the Ohio federal court's ruling. As Judge King recognized, in a motion to transfer venue, the terms of the statute suggest that 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. National Micrographics Systems, Inc. v. Canon U.S.A., Inc., 825 F. Supp. 671 (D.N.J. 1993) (citations omitted). A case may be transferred under § 1404(a) only to a venue "where it might have been brought." 28 U.S.C. § 1404(a).
In her January 4th Opinion and Order, Judge King determined that the Ohio patent action between these parties could have been brought here, and further determined that, despite Granger's subsequent choice of Ohio as a forum, the relevant factors all strongly weighed in favor of transfer to this Court for consolidation with this case. Nothing in the record before this Court gives any indication that the Ohio court's decision to transfer was incorrect. Moreover, one of Granger's chief arguments for transfer, that sole New Jersey defendant, GSHP, has settled out of the case, appears to be premature. (See Pl. Surreply Br. in Opp'n at 2 n.1 (disputing that there is even a settlement in principle with GSHP).) Even assuming, arguendo, that there was an error, Granger may not seek review of that ruling here. Granger may either seek reconsideration in the Southern District of Ohio, which already has been done, *fn3 or else may petition the Sixth Circuit Court of Appeals for a writ of mandamus. See Hayman Cash Register, 669 F.2d at 168-69.
Based on the foregoing, the motion of defendants Mark Granger and Granger Associates to transfer venue in this case to the Southern District of Ohio will be denied. The accompanying Order is entered.
JEROME B. SIMANDLE U.S. DISTRICT JUDGE
THIS MATTER having come before the Court on motion of defendants Granger & Associates, Inc. and Mark S. Granger, to transfer venue in this case to the United States District Court for the Southern District of Ohio, Eastern Division, for consolidation with the related case of Granger & Assocs., Inc. v. Marion Steel Co., Civ. No. 00-355; and the Court having reviewed the parties' submissions; and for the reasons discussed in today's Opinion in this case;
IT IS this 6th day of February, 2001, hereby ORDERED that the motion to transfer venue is DENIED.
JEROME B. SIMANDLE U.S. DISTRICT JUDGE