Next, Raytheon notes that some courts have held that transfer from New York to New Jersey is generally not necessary. See Schwartz, 791 F. Supp. at 95; Noreiga, 671 F. Supp. at 996. Nevertheless, courts have transferred cases from this district to New Jersey in appropriate circumstances. See De Jesus, 725 F. Supp. at 208-09; Eichenholtz v. Brennan, 677 F. Supp. 198, 203 (S.D.N.Y. 1988). Thus, in this case, I must analyze the relative conveniences between New Jersey and Massachusetts to determine where this action belongs.
Both parties have provided lists of key witnesses. Anadigics's witnesses are all located in New Jersey; Raytheon's witnesses are all located in Massachusetts. Also, the convenience of the parties does not favor one district over the other: Anadigics is a New Jersey corporation and Raytheon is a Massachusetts corporation. Similarly, factors such as the availability of process to compel the attendance of unwilling witnesses, the relative means of the parties, and the forum's familiarity with the governing law do not favor New Jersey or Massachusetts. Finally, because Anadigics has brought this action in New York, its preference to be in New Jersey rather than Massachusetts is not accorded any additional weight. See Hutson v. A.H. Robins Co., 846 F. Supp. 14, 16 (S.D.N.Y. 1994); Gall v. Home Box Office, Inc., 1992 U.S. Dist. LEXIS 13020, No. 92 Civ. 0835, 1992 WL 230245, at *6 (S.D.N.Y. Aug. 31, 1992)
Nonetheless, other factors favor Massachusetts over New Jersey. These factors include the location of relevant documents, the relative ease of access to sources of proof, and the locus of operative facts. Anadigics has asserted an infringement claim against Raytheon. The "center of gravity" for such a claim is in the district where the alleged infringement occurred. S.C. Johnson & Son, Inc. v. Gillette Co., 571 F. Supp. 1185, 1187-88 (N.D. Ill. 1983); Volk Corp. v. Art-Pak Clip Art Serv., 432 F. Supp. 1179, 1181-82 (S.D.N.Y. 1977); see also Max Planck Gesellschaft Zur Foederung Der Wissenschaften, E.V. v. General Elec. Co., 858 F. Supp. 380, 383 (S.D.N.Y. 1994) (transferring action to locale of alleged infringement); Editorial Musical Latino Americana, S.A. v. Mar Int'l Records, Inc., 829 F. Supp. 62, 67 (S.D.N.Y. 1993) (denying motion to transfer because, inter alia, alleged infringement occurred in present venue). In this case, all acts relating to Raytheon's alleged infringement occurred in the District of Massachusetts.
Furthermore, Raytheon's central defense in this action is reverse engineering. Under the Act, it is not an infringement to reproduce a mask work to analyze or evaluate its concepts or techniques and then to incorporate the results of this work into an original mask work. 17 U.S.C. § 906(a). This process is known as reverse engineering. The crucial evidence in determining whether a party simply infringed on another's mask work or conducted permissible reverse engineering is a "paper trail" that records "the engineer's efforts to understand the original chip and to design a different version after reverse engineering . . . ." Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1566 (Fed. Cir. 1992). The presence or absence of such a paper trail would "significantly reduce the gray area between legitimate and illegitimate behavior." Id. Thus, resolution of the critical defense in this case, whether Raytheon's product is the result of legitimate reverse engineering, revolves around a paper trail that exists, if at all, in Massachusetts.
Anadigics responds that Raytheon's affirmative defenses raise other issues implicating sources of proof that are located in New Jersey. Primarily, Raytheon may challenge the validity of Anadigics's mask work. Proof pertaining to this issue is located in New Jersey and thus favors that forum. See Rackman v. Texas Instruments, Inc. 712 F. Supp. 448, 450 (S.D.N.Y. 1989). Nevertheless, the primary aspects of this case are the infringement claim and the reverse engineering defense. These issues involve documents, witnesses, and other sources of proof located in Massachusetts. Raytheon's mere assertion of the defense of invalidity is not enough to shift the center of gravity away from Massachusetts. Accordingly, Massachusetts is the most convenient forum in this action.
For the reasons set forth above, Raytheon's motion to transfer this case to Massachusetts is granted and Anadigics's motion to transfer this case to New Jersey is denied. The Clerk of the Court for the Southern District of New York shall transfer all records and papers in this action to the Clerk of the Court for the District of Massachusetts, along with a certified copy of this memorandum decision and order.
Dated: New York, New York
November 8, 1995
United States District Judge
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