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Marion Steel Co. v. Garden State Highway Products

February 6, 2001

MARION STEEL CO.,
PLAINTIFF,
V.
GARDEN STATE HIGHWAY PRODUCTS, INC., ET AL.,
DEFENDANTS.



The opinion of the court was delivered by: Simandle, District Judge

NOT FOR PUBLICATION

OPINION

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.

BACKGROUND

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 ...


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