B. The Eastern District of New York Case
On March 7, 1997, Pall initiated the case before the Court by filing a complaint alleging one cause of action against PTI for allegedly infringing United States Letters Patent No. 4,609,465, which was issued to John Miller and assigned to Pall (the "Pall '465 Patent" or "the Miller Patent"). According to Pall, its '465 Patent, which covered an invention entitled "Filter Cartridge with a Connector Seal," was infringed by Pall's manufacture and sale of a fluoropolymer filter cartridge. Once again, PTI filed a counterclaim, this time seeking a judgment declaring that: (1) "no product previously sold by PTI infringes any patent owned by Pall"; and (2) the Pall "'465 Patent is invalid and void on the ground that the purported invention does not meet the requirements specified in Section[s] 101 . . . 102, 103 and 112" of Title 35 of the United States Code.
PTI now moves the Court for an order transferring this case to the Central District of California. Pall does not dispute that this case could have been brought in the Central District of California and that transfer is, therefore, possible. Instead, the dispute centers on whether transfer would be appropriate.
A motion to transfer venue from one federal district court to another, when venue initially is proper, is governed by 28 U.S.C. § 1404(a), which provides in relevant part: "for the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil case to any other district or division where it might have been brought." 28 U.S.C. § 1404(a). See generally Filmline (Cross-Country) Prods. v. United Artists, 865 F.2d 513, 520 (2d Cir. 1989).
"The goal of Section 1404(a) is to prevent waste of time, energy and money and to protect litigants, witnesses and the public against unnecessary inconvenience and expense." Wine Markets Int'l, Inc. v. Bass, 939 F. Supp. 178, 179 (E.D.N.Y. 1996)(internal quotations marks omitted)(quoting Van Dusen v. Barrack, 376 U.S. 612, 616, 84 S. Ct. 805, 809, 11 L. Ed. 2d 945 ); see also Launer v. Buena Vista Winery, Inc., 916 F. Supp. 204 (E.D.N.Y. 1996); Hernandez v. Graebel Van Lines, 761 F. Supp. 983 (E.D.N.Y. 1991).
The Court's inquiry on a motion to transfer is two-fold. The first issue is whether the action sought to be transferred is one that "might have been brought" in the district court in which the moving party seeks to have the case litigated, namely, the transferee court. If the initial threshold question is answered affirmatively, as the parties concede, then the court must examine whether, "the convenience of parties and witnesses" and "the interest of justice", weighs in favor of a transfer to the proposed district. " Laumann Mfg. Corp. v. Castings USA, Inc, 913 F. Supp. 712, 720 (E.D.N.Y. 1996); Modern Computer Corp. v. Ma, 862 F. Supp. 938, 947-48 (E.D.N.Y. 1994); Hernandez v. Graetal Van Lines, 761 F. Supp. at 986.
The moving party has the "burden to clearly establish that a transfer is appropriate and that the motion should be granted." Laumann Mfg. Corp., 913 F. Supp. at 720 (emphasis added)(quoting Modern Computer Corp., 862 F. Supp. at 948). See also Factors Etc. Inc. v. Pro Arts, Inc., 579 F.2d 215, 218-19 (2d Cir. 1978), cert. denied, 440 U.S. 908, 99 S. Ct. 1215, 59 L. Ed. 2d 455 (1979); Arrow Elec., Inc. v. Ducommun, Inc., 724 F. Supp. 264, 265 (S.D.N.Y. 1989)(quoting Morales v. Naveiero de Puerto Rico, 713 F. Supp. 711, 712 [S.D.N.Y. 1989]). The movant must support the motion with an affidavit containing " detailed factual statements " explaining why the transferee forum is more convenient, including "the potential principal witnesses expected to be called and a general statement of the substance of their testimony." Laumann Mfg. Corp., 913 F. Supp. at 720 (emphasis added); Modern Computer Corp., 862 F. Supp. at 948; see also Factors, 579 F.2d at 218; Schieffelin & Co. v. Jack Co. of Boca, Inc., 725 F. Supp. 1314, 1321 (S.D.N.Y. 1989).
"Courts have employed a variety of factors that serve as a guidepost in helping to determine whether to transfer a case to another district, none of which are singly dispositive." Modern Computer Corp., 862 F. Supp. at 948. The criteria include: (1) convenience of the parties; (2) convenience of witness; (3) relative means of the parties; (4) locus of operative facts and relative ease of access to sources of proof; (5) attendance of witnesses; (6) the weight accorded the plaintiff's choice of forum; (7) calendar congestion; (8) the desirability of having the case tried by the forum familiar with the substantive law to be applied; (9) practical difficulties; and (10) how best to serve the interest of justice, based on an assessment of the totality of material circumstances. Wine Markets Int'l, 939 F. Supp. at 181; Modern Computer Corp., 862 F. Supp. at 948; Miller v. County of Passaic, 699 F. Supp. 409, 411 (E.D.N.Y. 1988)(citing Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 91 L. Ed. 1055, 67 S. Ct. 839 ).
Finally, the decision whether to transfer venue is left to the sound discretion of the district court. Red Bull Assocs. v. Best Western Int'l, Inc., 862 F.2d 963, 967 (2d Cir. 1988); Chichelo v. Hoffman-La Roche, Inc., 1997 U.S. Dist. LEXIS 16262, No. 97 Civ. 4591, 1997 WL 654637 *3 (S.D.N.Y. Oct. 21, 1997); Modern Computer Corp., 862 F. Supp. at 948. That discretion will not be disturbed on appeal absent a clear showing of abuse. Filmline (Cross-Country) Prods., Inc., 865 F.2d at 520.
PTI advances several theories in favor of transfer, without supplying any supporting affidavits. For example, PTI maintains that the "convenience of the parties and the location of the witnesses and documents favor the California forum" because it "is located in California [and,] although Pall is located in New York, its choice of forum is neutral since it initiated actions in both fora. PTI's witnesses and documents, and convenience strongly favor California." (Defendant's Memorandum of Law, at 5). The defendant also contends that "judicial economy" warrants transfer because "the [California and New York] cases are so closely related." (Defendant's Memorandum of Law, at 5). Specifically, the defendant asserts in its Memorandum of Law:
Both the [defendant's] Miyagi patent [the subject of the defendant's counterclaim in the California lawsuit] and the [plaintiff's] Miller patent [the subject of the plaintiff's complaint in the New York case] cover fluorocarbon resin filters. The [defendant's] Miyagi patent has an effective U.S. filing date of May 8, 1994, and claims priority under 35 U.S.C. § 119 . . . . On the other hand, the Miller patent has a U.S. filing date of May 21, 1994. Thus, the Miyagi patent predates the Miller patent, and on its face qualifies as prior art against the Miller patent under 35 U.S.C. § 102(e), i.e., the validity of the Miller patent can be directly challenged by the existence of the Miyagi patent. As a defense in the instant action, PTI intends to assert the Miyagi patent to defeat the validity of the Miller patent.