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INVIVO RESEARCH v. MAGNETIC RESONANCE EQUIPMENT

November 6, 2000

INVIVO RESEARCH, INC., PLAINTIFF,
V.
MAGNETIC RESONANCE EQUIPMENT CORPORATION AND MEDRAD, INC., DEFENDANTS.



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

OPINION

The defendants Magnetic Resonance Equipment Corporation ("MRE") and Medrad, Inc. ("Medrad") have moved pursuant to 28 U.S.C. § 1404(a) for an order transferring this patent infringement action to the Western District of Pennsylvania where a declaratory judgment action raising identical issues is pending. Plaintiff Invivo Research, Inc. ("Invivo") opposes the motion. For the reasons set forth below, the motion is granted.

The Parties

Invivo is a corporation organized and existing under the laws of Oklahoma with its principal place of business in Orlando, Florida.

MRE is a corporation organized and existing under the laws of Delaware with its principle place of business in Bay Shore, New York.

Medrad is a corporation organized and existing under the laws of Delaware with its principle place of business in Indianola, Pennsylvania.

Facts And Prior Proceedings

Invivo initiated the instant action by the filing of a complaint on December 8, 1999. Invivo is the holder of U.S. Patent No. 4,991,580 (the '580 Patent), and the complaint alleges patent infringement by MRE. The complaint does not specify which of MRE's products it accuses of infringement, but mentions two products by name, the MRE Foxbox*fn1 and MRE 9500 Monitoring System (the "accused products"). Invivo served the complaint on MRE on April 25, 2000.*fn2

MRE's principal place of business is in Bayshore, New York, which is in the Eastern District of New York. MRE does not have a place of business within the Southern District of New York. MRE developed and previously sold the products accused of infringement in this action. The primary developer of the accused products was G. Ronald Morris, Sr. ("Morris"), assisted by Jim Valentine ("Valentine") and Doug Tomalson ("Tomalson"). Valentine currently resides in the State of Washington. Tomalson currently resides in Wisconsin.

The accused products were sold nationally to hospitals and doctors in all major U.S. markets, including hospitals located in the Western District of Pennsylvania. Customers within the Southern District of New York accounted for no more than one percent of the total sales of the accused products.

On April 21, 2000, MRE sold certain of its assets, including the products allegedly infringing the '580 Patent, to Medrad as part of an Asset Purchase Agreement. Under the agreement, MRE agreed to manufacture the accused products for Medrad during a short transition period, which ended on or about August 31, 2000. At that time, MRE became a company devoted solely to research activities with no on-going connection to the manufacture, marketing, or sale of the accused products.

Medrad's principal place of business in Indianola, Pennsylvania, which is in the Western District of Pennsylvania. Medrad is in the process of relocating all manufacturing activities and documentation relating to the assets of the business which it purchased from MRE to Indianola, Pennsylvania. The relocation was expected to be complete on or by August 31, 2000. Medrad does not have a place of business anywhere in the State of New York.

On April 21, 2000, upon acquiring the aforementioned assets of MRE, Medrad filed a declaratory judgment action in the Western District of Pennsylvania against Invivo seeking a declaration of non-infringement. Invivo filed an answer on May 31, 2000, and an amended answer on June 16, 2000. That action, Medrad, Inc. v. Invivo Research, Inc., No. 00 Civ. 778, was stayed by order of the Honorable Donalta W. Ambrose on October 5, 2000, and marked "administratively closed."

On June 27, 2000, Invivo filed an amended complaint adding Medrad as a defendant in this action. Medrad answered on August 14, 2000.

Medrad and MRE filed motions to transfer this action to the Western District of Pennsylvania on July 21, 2000 and July 24, 2000, respectively, and submissions were received through August 16, 2000, at which time the matter was deemed fully submitted.

Discussion

I. The Standard Under Rule 1404(a)

Section 1404(a) of Title 28 of the United States Code provides in relevant part that:

for the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or ...

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