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Advanced Fiber Technologies Trust v. J & L Fiber Services

November 12, 2008


The opinion of the court was delivered by: David R. Homer U.S. Magistrate Judge


Plaintiff Advanced Fiber Technologies (AFT) Trust ("AFT") brings this action pursuant to 35 U.S.C. § 271 et seq. alleging that defendant, J & L Fiber Services, Inc. ("J & L"), infringed AFT's screen cylinder patents. Compl. (Docket No. 1). J & L counterclaims for declaratory relief. Ans. (Docket No. 12) at ¶ 27-36. Presently pending is J & L's motion for a change of venue to the Eastern District of Wisconsin ("Eastern District"). Docket Nos. 21, 28.*fn1 AFT opposes the motion. Docket No. 22. For the reasons which follow, J & L's motion is denied.

I. Background

Both parties manufacture and sell pulp screening components for the pulp and paper industry. Compl. ¶¶ 6, 7. AFT has approximately 186 employees located principally at AFT's facilities in Sherbrooke, Quebec, Canada. Gooding Decl. (Docket No. 22-2) ¶ 9. J & L has approximately 150 employees principally located at its Waukesha, Wisconsin facility of whom five work in the screen cylinder division involving the matters at issued in this case. Lutz Decl. (Docket No. 21-3) ¶ 3.

On April 5, 1993, AFT was granted ownership of United States Letters Patent No. 5,200,072 ("072 Patent") for screening plates which filtered impurities from pulp during paper manufacturing. Compl. ¶¶ 9-10; see also Gooding Decl. ¶ 3. This patent and the plates were conceived, reduced to practice, designed, and developed in Glens Falls, New York and gave rise to AFT's DURASHELL screen cylinder. Id. ¶ 7; Frejborg Decl. (Docket No. 22-4) ¶¶ 3-4. From late 2000 to 2001, J & L developed the alleged infringing product, the V-MAX screen cylinder, at its Waukesha facility. Lutz decl. ¶ 4. All documents and materials related to this product remain in Wisconsin. Id.

On September 12, 2003, AFT requested that the 072 Patent be reissued. Compl. ¶ 11. On April 27, 2007, the 072 Patent was reissued as United States Letters Patent No. RE39,940 ("940 Patent"). Id. ¶ 12. On November 9, 2007, AFT filed commenced the present action alleging infringement of AFT's 940 Patent by J & L's manufacture and distribution of the V-MAX screen cylinder. Id. The present motion followed.

II. Discussion

Under federal law, "[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." 28 U.S.C. § 1400(b); see also Tigercat Indus., Inc. v. Deere & Co., No. 05-CV-761S, 2007 WL 1087564, at *1 (W.D.N.Y. Apr. 9, 2007) (citing §1400(b) and stating that "the test for venue for a corporate defendant in a patent infringement case is whether the defendant was subject to personal jurisdiction in the district of suit at the time the action was commenced.") (citations and quotation marks omitted); Walker v. Jon Renau Collection, Inc., 423 F. Supp. 2d 115, 116-17 (S.D.N.Y. 2005); Meteoro Amusement Corp. v. Six Flags, 267 F. Supp. 2d 263, 267-68 (N.D.N.Y. 2003) (holding that "§§ 1391(c) and 1400(b) should be read coextensively instead of the latter being the exclusive authority for determination of venue in patent infringement cases... [and that the district in question] will be deemed a proper venue if it is determined that [defendant] is subject to personal jurisdiction there....") (internal citations and quotation marks omitted). However, "[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... where it might have been brought." 28 U.S.C. § 1404(a). Thus, motions to transfer venue are subject to "a two-part test: (1) whether the action to be transferred might have been brought in the transferee venue; and (2) whether the balance of convenience and justice favors transfer." Rescuecom Corp. v. Chumley, 522 F. Supp. 2d 429, 448 (N.D.N.Y. 2007).

The decision to transfer a case is committed to the discretion of the court. Dixon v. Fischer, No. 9:07-CV-1157 (DNH)(DRH), 2008 WL 141786, at *1 (N.D.N.Y. Jan. 11, 2008) (citations omitted). In determining the first prong of the analysis, "the court must first decide whether... venue [in the transferee forum] was proper... at the time that the suit was initiated." Id. (citations omitted). Determination of the second prong requires a court to consider (1) the convenience of witnesses; (2) the convenience of the parties; (3) the location of relevant documents and the relative ease of access to those sources of proof; (4) the situs of the operative events in issue; (5) the availability of process to compel the attendance of unwilling witnesses; (6) the relative means of the parties; (7) the comparative familiarity of each district with the governing law; (8) the weight accorded a plaintiff's choice of forum; and (9) judicial efficiency and the interests of justice Rescuecom Corps., 522 F. Supp. 2d at 449 (citations omitted). The party seeking transfer bears the burden of proof and, "therefore, it is his or her responsibility "to establish in [the] pleadings and affidavits the conditions necessary to justify transfer." Id. (citations omitted). Ultimately, any transfer must serve "to prevent the waste of time, energy and money and to protect litigants, witnesses and the public against unnecessary inconvenience and expense." Id. at 448.

A. Proper Venue Upon Initiation of Suit

In this case, venue in the Eastern District of Wisconsin would have been proper at the time the suit was initiated. Under § 1400, venue existed in the Eastern District if (1) the defendants resided in the Eastern District, or (2) the alleged infringing action and a regular place of business was located in the Eastern District. J & L was both headquartered and the development and manufacturing of the V-MAX screen cylinder occurred at the factory, in Waukesha in the Eastern District. See Lutz Decl. ¶¶ 2-4. Thus, venue would have been proper in the Eastern District of Wisconsin and J & L has satisfied the first prong of the analysis.*fn2

B. Balance of Parties' Interests

1. Convenience of Witnesses

While "[c]onvenience of both the party and non-party witnesses is probably the single-most important factor in the analysis of whether transfer should be granted," this inquiry is more than a "mere[] tally of witnesses who reside in the current forum in comparison to the number located in the proposed transferee forum. Instead, the court must qualitatively evaluate the materiality of the testimony that the witnesses may provide." Fuji Photo Film Co., Ltd v. Lexar Media, Inc., 415 F. Supp. 2d 370, 373 (S.D.N.Y. 2006) (internal citations and quotations omitted); see also Neil Brothers Ltd. v. World Wide Lines, Inc., 425 F. Supp. 2d 325, 329 (E.D.N.Y. 2006). Accordingly, "[t]he key issues in a patent infringement suit involve the technology of the inventions claimed in the patents-in-suit." Fuji Photo ...

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