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Colida v. Panasonic Corporation of North America


November 10, 2005


The opinion of the court was delivered by: James C. Francis IV United States Magistrate Judge


This case involves the alleged infringement by Panasonic Corporation of North America*fn1 ("Panasonic") of the rights of Tony Colida, the holder of a design patent for a cellular phone. Panasonic is a Delaware corporation having a principal place of business in New Jersey. Panasonic moves pursuant to 28 U.S.C. § 1404(a) to transfer this case to the District of New Jersey for the convenience of the parties and witnesses and in the interest of justice. For the reasons that follow, the motion is granted.


Tony Colida, a resident of Montreal, Canada, is the owner of a United States design patent for a cellular telephone. (Complaint ("Compl."), ¶¶ 1, 5; U.S. Patent No. 321,184 issued Oct. 29, 1991, attached to Compl. as Exh. P-1). Mr. Colida contends that Panasonic infringed on his rights in marketing and selling the Panasonic Model KX-TG 6502B cordless telephone, which Mr. Colida claims "reproduces the overall distinctive . . . appearance" of his patented design. (Compl., ¶¶ 9, 14).

Upon learning of the offending phone, Mr. Colida sent Panasonic a cease-and-desist letter, in which he offered to sell Panasonic a non-exclusive license to the design for $1 million. (Letter of Tony Colida dated April 6, 2005, attached to Compl. as Exh. P-3). Panasonic responded on April 15, 2005, in a letter to Mr. Colida's attorney declining the license offer and denying any infringement. (Letter of Tadashi Horie dated April 15, 2005, attached to Compl. as Exh. P-4). Panasonic noted Mr. Colida's previous patent infringement suits against other corporations, and threatened to seek sanctions against Mr. Colida and his counsel should Mr. Colida pursue litigation.

Proceeding pro se, Mr. Colida filed the present complaint on June 22, 2005, seeking $10 million in damages. Panasonic counterclaimed for malicious use of process and malicious prosecution, and cited a previous patent infringement suit initiated by Mr. Colida against Panasonic in 2003, decided on summary judgment in Panasonic's favor. Colida v. Matsushita Electric Corp. of America, No. 03 Civ. 2904, 2004 U.S. Dist. LEXIS 23116 (D.N.J. March 26, 2004), aff'd, 114 Fed. Appx. 383 (Fed. Cir. 2004); (Defendant's Answer to Complaint, Affirmative Defense and Counterclaims ("Ans.") at 7-12).

On September 30, 2005, Panasonic filed a motion requesting a transfer of venue to the District of New Jersey. Panasonic argues that New Jersey, as the company's principal place of business and the location of all witnesses and relevant documents, is the more appropriate forum. (Lasorsa Decl., ¶ 4; Ans. at 7).


The statute governing transfer of cases provides that "[f]or 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). Here, there is no dispute that this action could have been brought in the District of New Jersey, as Panasonic is headquartered in New Jersey and subject to personal jurisdiction there. Indeed, Mr. Colida's previous litigation against Panasonic was filed in New Jersey. See Colida v. Matsushita Electric Corp. of America, 2004 U.S. Dist. LEXIS 23116. The determination whether to transfer on grounds of convenience lies "within the broad discretion of the district court." Palace Exploration Co. v. Petroleum Development Co., 41 F. Supp. 2d 427, 437 (S.D.N.Y. 1998) (quoting In re Cuyahoga Equipment Corp., 980 F.2d 110, 117 (2d Cir. 1992)). The burden of demonstrating the desirability of transfer rests with the moving party. Palace Exploration Co., 41 F. Supp. 2d at 437; see also Filmline (Cross-Country) Productions, Inc. v. United Artists Corp., 865 F.2d 513, 520 (2d Cir. 1989).

In evaluating a motion to transfer venue, courts take into account a variety of factors including: (1) the plaintiff's choice of forum, (2) the locus of operative facts, (3) the convenience and relative means of the parties, (4) the convenience of the witnesses, (5) the location of and relative ease of access to evidence including documents, and (6) the interests of justice. See Amersham Pharmacia Biotech, Inc. v. Perkin-Elmer Corp., 11 F. Supp. 2d 729, 730 (S.D.N.Y. 1998).*fn2

A. Plaintiff's Choice of Forum

A plaintiff's choice of venue is entitled to significant consideration and will not be disturbed unless other factors weigh strongly in favor of transfer. See In re Warrick, 70 F.3d 736, 741 (2d Cir. 1995). Mr. Colida filed this action in United States District Court for the Southern District of New York, thus indicating New York, not New Jersey, to be his forum of choice.

However, the weight accorded to a plaintiff's choice of venue is significantly diminished where the operative facts have no connection to the chosen district. See 800-Flowers, Inc. v. Intercontinental Florist, Inc., 860 F. Supp. 128, 135 (S.D.N.Y. 1994); Dostana Enterprises LLC v. Federal Express Corp., No. 00 Civ. 0747, 2000 WL 1170134, at *7 (S.D.N.Y. Aug. 16, 2000) ("A plaintiff's choice of forum is not entitled to the weight which it is generally accorded where there is no material connection between the forum and the events underlying the cause of action."). Furthermore, where a plaintiff's chosen forum is not his home state, his choice of forum is given less weight. See Herbert Limited Partnership v. Electric Arts, Inc., 325 F. Supp 2d 282, 291 (S.D.N.Y. 2004). Because the present dispute bears little connection to New York, the plaintiff's choice of forum is not a factor that militates against transfer.

B. Locus of Operative Facts

"Courts routinely transfer cases when the principle events occurred and the principal witnesses are located in another district." In re Nematron Securities Litigation, 30 F. Supp. 2d 397, 404 (S.D.N.Y 1998) (citing Viacom International, Inc. v. Melvin Simon Productions, 774 F. Supp. 858, 867 (S.D.N.Y. 1991)). The facts underlying this dispute occurred predominantly in New Jersey, as well as in Japan, where the Panasonic model KX-TG6502B cordless phone was designed, and in Indonesia and Malaysia, where the KX-TG6502B was manufactured. (Lasorsa Decl., ¶¶ 4-5). All business records and documents relating to, and persons having knowledge of the design, manufacture, or sale of the KX-TG6502B are located in New Jersey. (Lasorsa Decl., ¶¶ 9-11). The only connection suggested by Mr. Colida between New York and this litigation is that "the infringing product was noticed" here. (Plaintiff's Opposition to Defendants' Motion to Transfer Venue, ¶ 1). However, that some of the accused phones may have been marketed or sold in New York does not establish a material connection to the present litigation. See Invivo Research, Inc. v. Magnetic Resonance Equipment Corp., 119 F. Supp. 2d 433, 439-40 (S.D.N.Y. 2000) ("Where a party's products are sold in many states, sales alone are insufficient to establish a material connection to the forum and to override other factors favoring transfer.").

C. Convenience and Relative Means of the Parties

When considering the convenience of the parties, "[t]he logical starting point is a consideration of the residence of the parties." Frasca v. Yaw, 787 F. Supp. 327, 331 (E.D.N.Y. 1992) (citing Heyco, Inc. v. Heyman, 636 F. Supp. 1545, 1550 (S.D.N.Y. 1986)). Mr. Colida is a resident of Montreal, Canada. New Jersey is thus no less convenient for him than New York, and he can travel to either forum at comparable expense. Mr. Colida has also previously chosen New Jersey as the forum to litigate similar claims against Panasonic, see Colida v. Matsushita Electric Corp. of America, 2004 U.S. Dist LEXIS 23116, as well as other corporations. See, e.g., Colida v. LG Electronics, Inc., No. 02 Civ. 4947 (D.N.J. April 28, 2003); Colida v. Sharp Electronics Corp., No. 03 Civ. 2889, 2004 U.S. Dist. LEXIS 27428 (D.N.J. Oct. 6, 2004). As Mr. Colida has himself instituted suit in New Jersey, "[i]t is difficult for plaintiff to argue . . . that [the transferee district] is an inconvenient forum." Nieves v. American Airlines, 700 F. Supp. 769, 773 (S.D.N.Y. 1988).

Mr. Colida argues that he will be prejudiced by transfer to another district because he has been granted in forma pauperis status in this district. However, Mr. Colida may apply for in forma pauperis status in the District of New Jersey, and therefore transfer should not result in prejudice to him.

D. Convenience of the Witnesses

The convenience of witnesses has been characterized as "the most powerful factor governing the decision to transfer a case." In re Eastern District Repetitive Stress Injury Litigation, 850 F. Supp. 188, 194 (E.D.N.Y. 1994)(citing Saminsky v. Occidental Petroleum Corp., 373 F. Supp. 257, 260 (S.D.N.Y. 1974)). Although the convenience of party witnesses weighs less heavily than that of nonparty witnesses, and here the majority of witnesses are employees of Panasonic, this factor nonetheless cuts in favor of transfer because no witnesses are located in New York. (Lasorsa Decl., ¶¶ 10-11). See Computer Horizons Corp. v. Knauer, 483 F. Supp. 1272, 1273 (S.D.N.Y. 1980) (transfer ordered where almost all witnesses having knowledge of relevant facts located in California).

E. Location of Documents and Other Evidence

The location of physical evidence also favors transfer in this case, because all of the documents related to this matter are located in New Jersey. See Royal & Sunalliance v. British Airways, 167 F. Supp. 2d 573, 578 (S.D.N.Y. 2001) (citing McEvily v. Sunbeam-Oster Co., 878 F. Supp. 337, 348 (D.R.I. 1994))(ease of access to large quantity of documents favors transfer). Even assuming the relevant documents are easily transportable, "ease of transport weighs no more heavily in favor of [the Southern District of New York] than the proposed transferee district," Coker v. Bank of America, 984 F. Supp. 757, 766 (S.D.N.Y. 1997) (internal quotation marks and citation omitted), especially where, as here, no relevant documents are located in New York and all of the documents are in New Jersey.

F. Interest of Justice

The court must also consider whether a transfer is in the interest of justice, "a concern which relates primarily to issues of judicial economy." Dostana Enterprises LLC v. Federal Express Corp., 2000 WL 1170134, at *7. "Although certainly not decisive, docket conditions or calendar congestion of both the transferee and transferor districts is a proper factor for the Court to consider and is afforded 'some weight.'" Hernandez v. Graebel Van Lines, 761 F. Supp. 983, 991 (E.D.N.Y. 1991) (citations omitted). It has been noted that the Southern District of New York is one of the busiest courts in the nation. See Raines v. Switch Manufacturing Corp., No. 96 Civ. 2361, 1996 WL 413720, at *3 (S.D.N.Y. July 24, 1996). Accordingly, retention of a case such as this, with only minimal connections to New York, would not serve the interest of justice, and would only "delay adjudication of other cases brought by parties who are compelled to sue [here]." Kanbar v. U.S. Healthcare, Inc., 715 F. Supp. 602, 606 (S.D.N.Y. 1989).


Notwithstanding Mr. Colida's choice of New York as the venue for this action, the relevant factors favor transfer to the District of New Jersey. Accordingly, Panasonic's motion is granted and the Clerk of Court shall effect the transfer.



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