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.
Invivo is a corporation organized and existing under the laws
of Oklahoma with its principal place of business in Orlando,
MRE is a corporation organized and existing under the laws of
Delaware with its principle place of business in Bay Shore, New
Medrad is a corporation organized and existing under the laws
of Delaware with its principle place of business in Indianola,
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
Donalta W. Ambrose on October 5, 2000, and marked
On June 27, 2000, Invivo filed an amended complaint adding
Medrad as a defendant in this action. Medrad answered on August
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.
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 division
where it might have been brought.
28 U.S.C. § 1404(a).
This section is a statutory recognition of the common law
doctrine of forum non conveniens as a facet of venue in the
federal courts. See Wilshire Credit Corp. v. Barrett Capital
Management Corp., 976 F. Supp. 174, 180 (W.D.N.Y. 1997). Section
1404(a) strives to prevent waste "`of time, energy and money' and
to `protect litigants, witnesses and the public against
unnecessary inconvenience and expense.'" Wilshire, 976 F. Supp.
at 180 (quoting Continental Grain Co. v. Barge FBL-585,
364 U.S. 19, 27, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1960)).
"`[M]otions for transfer lie within the broad discretion of the
courts and are determined upon notions of convenience and
fairness on a case-by-case basis.'" Linzer v. EMI Blackwood
Music Inc., 904 F. Supp. 207, 216 (S.D.N.Y. 1995) (quoting In re
Cuyahoga Equip. Corp., 980 F.2d 110, 117 (2d Cir. 1992))
(citing Stewart Organization, Inc. v. Ricoh Corp., 487 U.S. 22,
29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988)). The burden of
demonstrating the desirability of transfer lies with the moving
party. See, e.g., Hubbell Inc. v. Pass & Seymour, Inc.,
883 F. Supp. 955, 962 (S.D.N.Y. 1995).
Thus, the inquiry on a motion to transfer is two-fold. The
court must first determine whether the action sought to be
transferred is one that "might have been brought" in the
transferee court. Second, the court must determine whether,
considering the "convenience of parties and witnesses" and the
"interest of justice," a transfer is appropriate. Wilshire, 976
F. Supp. at 180.
In determining whether transfer is warranted "for the
convenience of the parties and witnesses [and] in the interest of
justice," courts generally consider several factors, including:
(1) the convenience of witnesses, (2) the convenience of the
parties, (3) the locus of operative facts, (4) the availability
of process to compel the attendance of unwilling witnesses, (5)
the location of relevant documents and the relative ease of
access to sources of proof, (6) the relative means of the
parties, (7) the forum's familiarity with the governing law, (8)
the weight accorded the plaintiff's choice of forum, and (9)
trial efficiency and the interest of justice, based on the
totality of the circumstances. See Orb Factory, Ltd. v. Design
Science Toys, Ltd., 6 F. Supp.2d 203 (S.D.N.Y. 1998) (citing
Wilshire, 976 F. Supp. at 181); see also Constitution
Reinsurance Corp. v. Stonewall Ins. Co., 872 F. Supp. 1247, 1250
(S.D.N.Y. 1995); Cento Group, S.p.A v. OroAmerica, Inc.,
822 F. Supp. 1058, 1060 (S.D.N.Y. 1993).
II. This Action Will Be Transferred
A. This Case Could Have Been Brought In The Western District
An action "could have been brought" in another forum if the
defendant would have been amenable to personal jurisdiction in
the transferee forum at the