(S.D.N.Y. 1977), aff'd, 573 F.2d 1288 (2d Cir. 1978); Capitol Records, 810 F. Supp. at 1354.
Each of these factors is present here. Judicial economy, "a factor of substance that weighs heavily in favor of departing from the first-filed rule," Capitol Records, 810 F. Supp. at 1354, would be served by avoiding duplicative litigation of identical issues in the Washington action and the New York action. Because the Washington court has denied Recoton's transfer motion, transfer of the New York action is a means of avoiding the waste of conducting two, mirror-image litigations of the same issues.
The importance of the earlier date of filing is diminished where, as here, the competing actions are filed within a short period of time of each other. See Capitol Records, 810 F. Supp. at 1355 (transferring first-filed action to district in which action was filed twenty days later). Here, only two days passed between the filing of the two actions. Accordingly, no further progress has been made in this action that would militate against transfer to another district.
These factors, taken together, support the exercise of the Court's discretion in rejecting application of the first-filed doctrine. See Riviera Trading Corp. v. Oakley, Inc., 944 F. Supp. 1150, 1159 (S.D.N.Y. 1996) (rejecting exercise of application of first-filed doctrine where, among other things, second action filed within four days of first action and no significant difference in progress of litigation); Capitol Records, 810 F. Supp. at 1355.
III. Application of the Venue Transfer Factors Favors Transfer to Washington
There are eight factors to consider in deciding whether to transfer venue pursuant to section 1404(a): (1) the place where the operative facts occurred; (2) the convenience of the parties; (3) the convenience of the witnesses; (4) the relative ease of access to sources of proof; (5) the availability of process to compel attendance; (6) the Plaintiff's choice of forum; (7) the forum's familiarity with governing law; and (8) trial efficiency and the interests of justice. See Linzer v. EMI Blackwood Music, Inc., 904 F. Supp. 207, 216 (S.D.N.Y. 1995); Viacom Int'l v. Melvin Simon Prods., 774 F. Supp. 858, 867-68 (S.D.N.Y. 1991); Don King Prods., Inc. v. Douglas, 735 F. Supp. 522, 533 (S.D.N.Y. 1990). Each of these factors will be addressed seriatim.
Factor 1: Place where the operative facts occurred
Of the four patents in question, three of them, belonging to Allsop, were prosecuted in Washington State. Recoton acquired the fourth patent from Discwasher, a company that prosecuted the patent in neither Washington or New York. The agreement to not enforce the patents was negotiated, at least in part, in Washington and not at all in New York. Allsop's products that are the subject of Recoton's patent infringement claims are manufactured in Washington. In short, none of the operative facts in this claim occurred in New York, and most of them occurred in Washington State.
Factors 2, 3 and 4: The convenience of the parties and witnesses and the relative ease of access to sources of proof
The majority, if not all, of Allsop's officers, employees and inventors who can be called as witnesses are located in Washington, as are its business records. On the other hand, although Recoton is incorporated in New York, its principal place of business is in Florida. Its officers, most employees and relevant business records are in Florida, and possible witnesses would need to travel to New York for trial. Although there may be more frequent flights between Florida and New York than Florida and Washington, and the trip is shorter, the marginal increase in inconvenience to Recoton is outweighed by the significant convenience to Allsop to litigate without any travel.
Factor 5: The availability of process to compel attendance
The court could compel attendance in either forum, so this factor does not weigh in either way in the analysis.
Factor 6: The Plaintiff's Choice of Forum
Plaintiff's choice of forum should usually be favored particularly where, as discussed above, there are two independent actions and Recoton filed first. However, for the reasons discussed above, this factor is not sufficient to outweigh the convenience of the parties demonstrated by the other factors here.
Factor 7: The forum's familiarity with governing law
Since patent law is federal law, any district court may handle a patent case with equal skill. However, should either party offer evidence relating to the Allsop/Dishwasher agreement, and if such agreement is governed by Washington law, then the Washington forum would be favored. Accordingly, this factor is neutral or slightly favors Washington.
Factor 8: Trial efficiency and the interests of justice
Finally, as discussed above, the Washington court has denied Recoton's motion to transfer the second action to this Court. Accordingly, if this Court were to deny Allsop's motion to transfer, the parties may be subject to duplicative litigation. Therefore, in the interests of justice, and in the absence of any other factor weighing significantly on the side of maintaining the action in New York, the case should be transferred.
For the reasons set forth above, Allsop's motion to transfer this action to the Western District of Washington is granted.
It is so ordered.
New York, N.Y.
April 6, 1998
ROBERT W. SWEET
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