Free Reply Brief - District Court of Delaware - Delaware

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APPENDIX A

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Not Reported in F.Supp.2d Not Reported in F.Supp.2d, 2005 WL 2620196 (D.Del.) (Cite as: Not Reported in F.Supp.2d)

Briefs and Other Related Documents Textron Innovations, Inc. v. The Toro Co.D.Del.,2005.Only the Westlaw citation is currently available. United States District Court,D. Delaware. TEXTRON INNOVATIONS INC., Plaintiff, v. THE TORO COMPANY, Defendants. No. Civ.A. 05-486 GMS. Oct. 14, 2005. Edmond D. Johnson, The Bayard Firm, Richard L. Horwitz, Potter Anderson & Corroon, LLP, Wilmington, DE, for Plaintiff. Richard L. Horwitz, David Ellis Moore, Potter Anderson & Corroon, LLP, Wilmington, DE, for Defendants. MEMORANDUM SLEET, J. I. INTRODUCTION *1 On July 12, 2005, the plaintiff, Textron Innovations Incorporated ("TII") filed the above-captioned action against The Toro Company ("Toro"), alleging infringement of United States Patent Nos. 6,047,530,6,336,311, and 6,336,312, which are directed to a gang type rotary mower. Presently before the court is Toro's motion to transfer this action to the District of Minnesota, pursuant to 28 U.S.C. § 1404(a). For the following reasons the court will deny the motion. II. BACKGROUND *1 On July 12, 2005, TII filed the present patent infringement action involving technology related to the rotary mower used to cut golf course roughs. TII is the subsidiary of Textron Inc., and the assignee of the three patents in suit. (See D.I. 6, at 1 n. 1; D.I. 19, at 2.) TII is incorporated in Delaware and maintains its headquarters in Providence, Rhode Island. (D.I. 1 ¶ 3.) Toro is a Delaware corporation that maintains its headquarters in Bloomington, Minnesota. (Id. ¶ 4.)

Toro's allegedly infringing products are manufactured in Tomah, Wisconsin. (D.I. 6, at 3.) *1 On August 15, 2005, Toro filed a separate action in Minnesota against Textron, Inc. and Jacobsen, a division of Textron, Inc., alleging that their products infringe two Toro patents relating to hydraulic drive system technology for riding mowers. The following day, Toro filed this motion to transfer venue to the District of Minnesota. III. DISCUSSION *1 Pursuant to Section 1404(a), the court may transfer a civil action "for the convenience of parties and witnesses, in the interest of justice, ... to any other district ... where it might have been brought." 28 U.S.C. § 1404(a). It is the movant's burden to establish the need to transfer, and "the plaintiff's choice of venue [will] not be lightly disturbed." Truth Hardware corp. v. Ashland Prods., Inc., No. C.A. 02-1541 GMS, 2003 WL 118005, at *1 (quoting Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir.1995)). In other words, "unless the balance of convenience strongly favors a transfer in favor of defendant, the plaintiff's choice of forum should prevail." Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.1970). *1 When considering a motion to transfer, the court must determine "whether on balance the litigation would more conveniently proceed and the interest of justice be better served by transfer to a different forum." Jumara, 55 F.3d at 879. This inquiry requires "a multi-factor balancing test," embracing not only the statutory criteria of convenience of the parties and the witnesses and the interest of justice, but all relevant factors, including certain private and public interests. Id. at 875. These private interests include the plaintiff's choice of forum; the defendant's preference; whether the claim arose elsewhere; the convenience of the parties; the convenience of the expected witnesses; and the location of books and records, to the extent that they could not be produced in the FN1 alternative forum. Id at 879. Among the relevant public interests are: "the enforceability of the judgment; practical considerations that could make the tri-

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al easy, expeditious, or inexpensive; the relative administrative difficulty in the two fora resulting from court congestion; the local interest in deciding local controversies at home; [and] the public policies of the fora." Id. at 879-80. FN1. The first three of these private interest factors collapse into other portions of the Jumara analysis. Thus, the court will consider them in the context of the entire inquiry only. See Affymetrix, Inc. v. Synteni, Inc., 28 F.Supp.2d 192 (D.Del.1998). *2 Upon consideration of the relevant factors, the court finds that Toro has not met its burden of demonstrating that transfer is appropriate. First, the court concludes that convenience of parties factor weighs in favor of maintaining the action in Delaware. The court will afford less deference to TII's choice of Delaware as a forum because it is not its "home turf," or principal place of business. See Waste Distillation Tech., Inc. v. Pan Am. Res., Inc., 775 F.Supp. 759, 764 (D.Del.1991). However, it is not appropriate to disregard a plaintiff's choice of forum where it has a rational and legitimate reason for choosing the forum. See Joint Stock Soc'y v. Heublein, Inc., 936 F.Supp. 177, 187 (D.Del.1996). In the present case, the fact that Toro is incorporated in Delaware is a rational and legitimate reason for TII choosing to sue it in Delaware. See Stratos Lightwave, Inc. v. E20 Communications, Inc., No. Civ. A. 01-309-JJF, 2002 WL 500920, at *2 (D.Del. Mar.26, 2002). Further, having received the benefits of Delaware incorporation, Toro cannot now complain that another corporation has chosen to sue it here. See id. Indeed, it is difficult for the court to find any inconvenience to Toro when it has previously chosen this forum in order to litigate its own patent infringement claims against Textron. See Toro Company v. Textron, Inc., 499 F.Supp. 241 (D.Del.1980). Thus, the convenience of the parties weighs in favor of maintaining this action in Delaware. *2 The court also finds that the location of books and records weighs against granting Toro's motion to transfer. Toro contends that its books and records necessary for litigation are in Minnesota. A court should consider the location of books and records in

its analysis. However, it must only do so to the extent that the files could not be produced in the alternative forum. Jumara, 55 F.3d at 879. Here, Toro does not suggest that its documents could not be produced in Delaware. Accordingly, this factor does not weigh in favor of the transfer. *2 Toro also contends that non-party witness convenience weighs in favor of a transfer. According to the briefs, Toro plans to rely on testimony from two original inventors of the patents in-suit, three retired employees, and an employee of a local golf course. The two inventors do not reside within the subpoena power of Delaware or Minnesota. However, they have both stated, in sworn declarations, that they are willing to appear in Delaware for depositions and trial. (D.I. 19, at 3.) Thus, any inconvenience to the inventors weighs in favor of maintaining the action in Delaware. *2 As for the other witnesses, Toro has elected to rely upon retired and, therefore, "third-party" employees that do not reside within the subpoena power of Delaware. In support of its motion, Toro insists that due to personal circumstances, travel to Delaware is extremely inconvenient for its third-party witnesses. (D.I. 6, at 4-6.) The court is not persuaded by this argument, and finds Toro's reliance on former employees, rather than its current employees, questionable. Further, as this court has previously held, a flight to Delaware is not an onerous task warranting transfer. Truth Hardware Corp. v. Ashland Prods., Inc., No C.A. 02-1541 GMS, 2003 WL 118005, at *2 (D. Del. Jan 13, 2003). Moreover, Toro has not asserted that the identified witnesses are the only individuals capable of testifying as to the technology of the accused products. Nevertheless, if necessary, TII has agreed to take witness depositions in Minnesota. (See D.I. 19, at 23.) For these reasons, the court concludes the convenience of the witnesses does not favor transfer in this case. *3 Finally, the court finds that the public interest factors do not weigh strongly in favor of transfer to Minnesota. First, Toro's pending litigation in Minnesota was filed after TII initiated this lawsuit, and involves different patents. Thus, the court believes that this is not a relevant consideration in favor of

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transfer. See Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 77 F.Supp.2d 505, 513 (D.Del.1999) (refusing to give "any weight whatsoever" to a mirror image action filed by the defendant). Additionally, the court is not persuaded that any disparity in court congestion, to the extent there is any, will be so great as to weigh strongly in favor of a transfer. Finally, it is well settled that patent rights are not considered state or local matters and do not implicate local interests. Jones Pharma, Inc. v. KV Pharm. Co., No. Civ. A. 03-786 JJF, 2004 WL 323109, at * 3 (D.Del. Feb.17, 2004). The court, therefore, finds no strong local interest in litigating in the transferee forum. Accordingly, the court concludes that public interest factors do not favor transfer in the instant case. ORDER *3 For the reasons stated in the court's Memorandum of this same date, IT IS HEREBY ORDERED that: *3 1. The defendant's Motion to Transfer the Case to the United States District Court for the District of Minnesota (D.I.5) is DENIED. D.Del.,2005. Textron Innovations, Inc. v. The Toro Co. Not Reported in F.Supp.2d, 2005 WL 2620196 (D.Del.) Briefs and Other Related Documents (Back to top) · 2005 WL 3242158 (Trial Pleading) Defendant's Amended Answer and Counterclaims (Nov. 9, 2005) Original Image of this Document (PDF) · 2005 WL 2603883 (Trial Motion, Memorandum and Affidavit) Plaintiff Textron Innovations Inc.'s Brief in Opposition to Motion to Transfer Venue (Aug. 30, 2005) Original Image of this Document (PDF) · 2005 WL 2603569 (Trial Pleading) Answer (Aug. 29, 2005) Original Image of this Document (PDF) · 2005 WL 2603700 (Trial Motion, Memorandum and Affidavit) Toro's Reply to Textron's Brief in Opposition to Motion to Transfer Venue (Aug. 19, 2005) Original Image of this Document (PDF) · 2005 WL 2603699 (Trial Motion, Memorandum and Affidavit) Opening Brief Supporting Defendant

Toro's 28 U.S.C. | 1404 (a) Motion to Transfer Venue to Minnesota (Aug. 16, 2005) Original Image of this Document (PDF) · 2005 WL 2385695 (Trial Pleading) Complaint (Jul. 12, 2005) Original Image of this Document (PDF) · 2005 WL 2912858 (Trial Pleading) Complaint (Jul. 12, 2005) Original Image of this Document (PDF) · 1:05cv00486 (Docket) (Jul. 12, 2005) END OF DOCUMENT

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Case 1:06-cv-00764-GMS

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APPENDIX B

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Not Reported in F.Supp.2d Not Reported in F.Supp.2d, 2003 WL 118005 (D.Del.) (Cite as: Not Reported in F.Supp.2d)

Briefs and Other Related Documents Truth Hardware Corp. v. Ashland Products, Inc.D.Del.,2003.Only the Westlaw citation is currently available. United States District Court,D. Delaware. TRUTH HARDWARE CORPORATION, Plaintiff, v. ASHLAND PRODUCTS, INC., Defendant. No. C.A. 02-1541 GMS. Jan. 13, 2003. MEMORANDUM AND ORDER SLEET, J. I. INTRODUCTION *1 On October 15, 2002, the plaintiff, Truth Hardware Corporation ("Truth") filed the instant action alleging patent infringement of its "Advent" window operator. The defendant, Ashland Products, Inc. ("Ashland") now moves to transfer this case to the United States District Court for the Northern District of Illinois, Eastern Division, because litigation concerning a related patent is currently pending between the parties in that venue. For the following reasons, the court will deny Ashland's motion. II. DISCUSSION *1 Section 1404(a) provides that "[f]or convenience of [the] parties and witnesses, in the interest of justice," the court may transfer a civil action "to any other district ... where it might have been brought." FN1 28 U.S.C. § 1404(a). It is the movant's burden to establish the need to transfer, and "the plaintiff's choice of venue [will] not be lightly disturbed." Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d CIr.1995). FN1. The parties do not dispute that this action could have been filed in the Northern District of Illinois. *1 When considering a motion to transfer, the court must determine "whether on balance the litigation

would more conveniently proceed and the interest of justice be better served by transfer to a different forum." Id. This inquiry requires "a multi-factor balancing test" embracing certain private and public interests. Id. at 875, 879. These private interests include the plaintiff's choice of forum; the defendant's preference; whether the claim arose elsewhere; and the location of books and records, to the extent that they FN2 could not be produced in the alternative forum. Id. at 879. Among the relevant public interests are: "[t]he enforceability of the judgment; practical considerations that could make the trial easy, expeditious, or inexpensive; the relative administrative difficulty in the two fora resulting from court congestion; the local interest in deciding local controversies at home; [and] the public policies of the fora." Id. at 879-80 (citations omitted). FN2. The first three of these private interest collapse into other portions of the Jumara analysis. The court, therefore, will consider them in the context of the entire inquiry only. See Affymetrix, Inc. v. Synteni, Inc. and Incite Pharmaceuticals, Inc., 28 F.Supp.2d 192 (D.Del.1998). *1 Upon consideration of these factors, the court finds that Ashland has not met its burden of demonstrating that transfer is appropriate. In reaching this conclusion, the court relied on the following considerations, among others. First, Truth and Ashland are Delaware corporations and should reasonably expect to litigate in the forum. Additionally, the patent dispute and technology at issue is not "local" in nature or otherwise unique to the Northern District of Illinois. *1 Moreover, while it is true that litigation concerning a related patent is currently pending in the Northern District of Illinois, the court concludes that this is not as significant as Ashland suggests. Of critical importance in this regard is the fact that the Illinois action is several years old, has already proceeded through the dispositive motion phase, and is now set to begin trial on March 3, 2003. Thus, the advanced procedural posture of the Illinois action militates

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against a transfer. *1 Ashland further argues that, because the presiding judge in Illinois is familiar with the parties and the technology, judicial economy would be served by a transfer. While the court does not doubt that the Illinois court may be more familiar with the technology at this juncture, the present court is amply qualified to likewise familiarize itself. To the extent collateral estoppel issues may arise from the Illinois litigation, such issues will ultimately have to be decided by a court, regardless of whether that court sits in Illinois or Delaware. Thus, Ashton's arguments on this point are of little avail. *2 Finally, Ashton contends that non-party witness convenience weighs in favor of a transfer. The court must again disagree. In support of its contention, Ashton has identified three "critical" non-party witnesses that it claims would be inconvenienced by a trial in Delaware. Truth points out in its answer brief, hoever, that none of these witnesses resides in Illinois either, although it is unclear where they do reside. Nevertheless, it appears that these witnesses will have to travel regardless of where this action proceeds. Furthermore, the court does not find the possibility of a three-hour flight to be an onerous task warranting transfer. III. CONCLUSION *2 For these reasons, IT IS HEREBY ORDERED that: *2 1. Ashton's motion to transfer the case to the United States District Court for the Northern District of Illinois, Eastern Division, (D.I.9) is DENIED. D.Del.,2003. Truth Hardware Corp. v. Ashland Products, Inc. Not Reported in F.Supp.2d, 2003 WL 118005 (D.Del.) Briefs and Other Related Documents (Back to top) · 1:02CV01541 (Docket) (Oct. 15, 2002) END OF DOCUMENT

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Case 1:06-cv-00764-GMS

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APPENDIX C

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Not Reported in F.Supp.2d Not Reported in F.Supp.2d, 2000 WL 1728354 (D.Del.) (Cite as: Not Reported in F.Supp.2d)

Asten Inc. v. Weavexx Corp.D.Del.,2000.Only the Westlaw citation is currently available. United States District Court, D. Delaware. ASTEN INC., Plaintiff, v. WEAVEXX CORPORATION, Defendant. No. 99-593 GMS. Feb. 11, 2000. George H. Seitz, III, Seitz, Van Ogtrop & Green, P.A., Wilmington, for Asten Inc., plaintiffs. Thomas C. Grimm, Morris, Nichols, Arsht & Tunnell, Wilmington, for Weavexx Corporation, defendants. ORDER SLEET, J. I. INTRODUCTION *1 On September 3, 1999, Plaintiff Asten, Inc. ("Asten") filed a complaint alleging patent infringement by Defendant Weavexx Corp. ("Weavexx"). The complaint was not served until September 24, 1999. In the interim, on September 10, 1999, Weavexx filed and served a "mirror image" action in the United States District Court for the Eastern District of North Carolina. In that action, Weavexx seeks a declaration that Asten's patent is invalid and/or not infringed by Weavexx. *1 Before the court is Weavexx's motion to transfer this case to the Eastern District of North Carolina, or in the alternative, to stay proceedings here pending resolution of the North Carolina declaratory judgment action. Weavexx argues that the case should be transferred pursuant to the "first filed" rule, or, alFN1 ternatively, pursuant to 28 U.S.C. § 1404. For the reasons that follow, the court will deny Weavexx's motion. FN1. Weavexx's motion requests a transfer pursuant to § 1404 or a stay pursuant to the first-filed rule. See Mot. to Transfer or Stay, at 1. In its briefing, however, Weavexx ap-

pears to request only a transfer, pursuant to either § 1404 or the first-filed rule. See Opening Br. at 2, 5, 18. As discussed below, the court has concluded that the first-filed rule does not operate in Weavexx's favor. The rule, therefore, provides no more basis for a stay than it does for a transfer. II. BACKGROUND *1 Asten and Weavexx both design and manufacture certain fabrics used on papermaking machines. Both companies are incorporated in Delaware, but neither company maintains a physical presence in this state. Asten is headquartered in Charleston, South Carolina and maintains its primary manufacturing facility in Appleton, Wisconsin. Weavexx is headquartered and maintains a major manufacturing facility in Wake Forest, North Carolina. It also has manufacturing facilities in several other southern states and in Canada, FN2 and sells its products in the United States, Canada, and Mexico. FN2. In addition to its Wake Forest location, Weavexx maintains U.S. manufacturing facilities in Florida, Tennessee, Mississippi and Virginia, and Canadian facilities in Ontario (administrative offices), Nova Scotia and Quebec. See Opp'n Br. at Ex. B. *1 Asten is the assignee of U.S. Patent No. 5,025,839 ("the '839 patent"), entitled "Two-Ply Papermakers Forming Fabric with Zig-Zagging MD Yarns." Asten contends that Weavexx's "Design 2895" forming fabrics infringe the '839 patent. Weavexx states that it "principally designed" these fabrics at its Wake Forest plant, and that it markets and sells these products out of that facility. The products are manufactured, however, by a "sister-company" of Weavexx that is located in Brazil. *1 The inventor of the '839 patent, Walter Wright, is employed by Asten at its Appleton, Wisconsin facility. Asten manufactures its "Style 866" forming fabric, based on the '839 patent, at the Appleton plant. The documents relating to the design and develop-

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ment of the '839 patent are also located in Appleton. III. DISCUSSION *1 As previously noted, Weavexx seeks to transfer this action pursuant to the "first-filed" rule, or, alternatively, pursuant to 28 U.S.C. § 1404(a). A. The First-Filed Rule *1 The first-filed rule is a judicially created doctrine that is designed to avoid concurrent litigation of the same issues, between the same parties, in more than one federal court. See EEOC v. University of Pennsylvania, 850 F.2d 969, 971-72 (3d Cir.1988). As its name implies, the rule generally provides that a later filed action should be stayed pending resolution of an earlier filed action, or transferred to the court in which the earlier filed action is pending. See Peregrine Corp. v. Peregrine Indus., Inc., 769 F.Supp. 169 (E.D.Pa.1991). *2 Since Asten filed its complaint in this court seven days before Weavexx filed its federal declaratory judgment action in North Carolina, the rule would not seem to provide a basis for transfer. Weavexx, however, claims that in the Third Circuit, the "first-filed" rule would more accurately be described as the "first-served" rule. It contends that under Third Circuit case law, "the `first-filed' of two parallel actions is the one in which the district court first obtains jurisdiction of the parties and issues." Opening Br. at 6. Weavexx argues that in Delaware, personal jurisdiction over a defendant does not arise until a complaint is served. Consequently, Weavexx contends that the earlier-served North Carolina action should have priority over this earlier-filed Delaware action. The court disagrees. *2 Weavexx correctly notes that the Third Circuit Court of Appeals has at times articulated the rule as giving priority to the court "first obtaining jurisdiction of the parties and issues." See, e .g., Crosley Corp. v. Westinghouse Elec. & Mfg. Co., 130 F.2d 474, 475 (3d Cir.1942). But Weavexx places too much significance on this language. In applying the rule, the Third Circuit has never focused on the dates that complaints were served, or, more generally, the dates on which personal jurisdiction was established.

In this court's view, the "parties and issues" language just quoted was merely intended to signify that the first-filed rule should only apply when the competing actions involve the same parties and issues. See University of Pennsylvania, 850 F.2d at 971-72 (noting that the rule gives a court the power to enjoin the "subsequent prosecution of proceedings involving the same parties and the same issues already before another district court" (emphasis added)). *2 Indeed, the rule is often articulated without language that might suggest a focus on personal jurisdiction. For example, the rule has been described as giving priority to "the court which first has possession of the subject. " University of Pennsylvania, 850 F.2d at 971 (emphasis added) (citing Crosley Corp. v. Hazeltine Corp., 122 F.2d 925, 929 (3d Cir.1941)). In first adopting the rule, the Third Circuit explained that the party who "first brings a controversy into a court of competent jurisdiction for adjudication should ... be free from the vexation of subsequent litigation over the same subject matter." Crosley Corp. v. Hazeltine Corp., 122 F.2d 925, 930 (3d Cir.1941) (emphasis added). The Hazeltine court, therefore, concluded that the lower court had erred in refusing to enjoin later-filed patent infringement actions in the Southern District of Ohio, "when the jurisdiction of the district court of Delaware has already been invoked to determine the validity and infringement of all of these patents." Id. at 930 (emphasis added). These articulations suggest that the inquiry should focus on the date on which the jurisdiction of the court is invoked-i.e., through the filing of a complaintrather than the date on which personal jurisdiction over the parties is perfected. *3 The only case from this circuit to squarely address the issue concluded that the first-filed rule gives priority to an earlier filed complaint even if a later filed complaint is first served. See Peregrine Corp. v. Peregrine Indus., Inc., 769 F.Supp. 169, 171-72 (E.D.Pa.1991); but see Osteotech, Inc. v. Gensci Regeneration Sciences, Inc., 6 F.Supp.2d 349, 357 n. 4 (D.N.J.1998) (stating, in dicta, that a "persuasive argument can be made" that a later filed but first served FN3 complaint takes priority in this circuit). This court agrees with the conclusion reached in Peregrine, which also appears to be the majority view in

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other circuits.

FN4

FN3. Though not addressing the "first-filed" vs. "first-served" issue, the court in Jefferson Ward Stores, Inc. v. Doody Co., 560 F.Supp. 35 (E.D.Pa.1983), also placed great emphasis on the "first obtaining jurisdiction of the parties and the issues" language quoted above. See id. at 36-37. That court permitted a later filed Pennsylvania action to proceed because personal jurisdiction was being contested in an earlier filed Ohio action. Because the district court in Ohio had not yet ruled on a motion to dismiss for lack of personal jurisdiction, the district court in Pennsylvania concluded that the Ohio court had not yet "obtained jurisdiction of the parties." See id. The Pennsylvania court did, however, note that it would reconsider the question of transfer if the Ohio court were to rule that it did have jurisdiction over the parties. Id. Despite its focus on personal jurisdiction, however, Jefferson Ward is not helpful to Weavexx's position. In Weavexx's declaratory judgment action in North Carolina, Asten moved for dismissal based on, inter alia, lack of personal jurisdiction. As that motion is still outstanding, it might be said that the district court in North Carolina has not yet "obtained jurisdiction" over the parties. Because personal jurisdiction is not contested in the instant action, transfer might be inappropriate even if the court were to construe the rule as focusing on the time at which personal jurisdiction is established. FN4. See, e.g., Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 96 n. 3 (9th Cir.1982), Hospah Coal Co. v. Chaco Energy Co., 673 F.2d 1161, 1163 (10th Cir.1982); Barber-Greene Co. v. Blaw-Knox Co., 239 F.2d 774, 778 (6th Cir.1957); MedTec Iowa, Inc. v. Nomos Corp., 1999 WL 1084253, at *6 (N.D.Iowa 1999); Fat Possum Records Ltd. v. Capricorn Records, Inc., 909 F.Supp. 442, 446 (N.D.Miss.1995); but see Northwest Airlines, Inc. v. Astraea

Aviation Serv., Inc., 930 F.Supp. 1317, 1327 n. 9 (suggesting that first-served action may take priority). *3 In the present case, this conclusion is fully consistent with the concerns that gave rise to the rule. In University of Pennsylvania, the court noted that the rule "encourages sound judicial administration and promotes comity among federal courts of equal rank." 850 F.2d at 971. In Weavexx's declaratory judgment action in North Carolina, the district court recently granted Asten's motion to stay proceedings pending this court's consideration of the instant motion. In so doing, the court stated: "Moreover, the Delaware complaint was filed, if not served, first. This Court sees no reason why the Delaware Court should not be allowed to determine whether to retain jurisdiction before the instant action is allowed to proceed." In light of that ruling, allowing this case to proceed in Delaware would not result in duplicative litigation, and would not undermine comity between federal courts of equal rank. *3 Finally, it should be noted that in response to the court's inquiry, counsel for Weavexx conceded that at the time Weavexx filed its declaratory judgment action in North Carolina, it was aware that Asten had already filed its complaint here in Delaware. Weavexx offers no explanation as to what function its declaratory judgment action could serve that a counterclaim in the instant action could not. Under these circumstances, the court concludes that the first-filed rule does not provide a basis for staying these proceedings or transferring this case to the Eastern District of North Carolina. B. Transfer Pursuant to 28 U.S.C. § 1404 *3 The first-filed rule does not, of course, preclude Weavexx's motion for transfer pursuant to 28 U.S.C. § 1404. That section provides as follows: *3 For the convenience of parties and witnesses, in the interests of justice, a district court may transfer any civil action to any other district or division where it may have been brought. *3 Although the decision to transfer a case is subject to the court's discretion, a plaintiff's choice of forum

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is a "paramount" consideration that is not to be "lightly disturbed." Schutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.1970); see also Jumara v. State Farm Ins. Co., 55 F.3d 873, 879-80 (3d Cir.1995). As such, Weavexx has a heavy burden to carry. The court should not grant a transfer unless the "balance of convenience" weighs strongly in favor of transfer. FN5 See Schutte, 431 F.2d at 25. FN5. Weavexx attempts to incorporate its position regarding the first-filed rule into its § 1404 analysis, arguing that Asten has the burden of establishing that the balance of convenience strongly favors Delaware. Opening Br. at 9. Since the court has already rejected Weavexx's position that the North Carolina action was "first-filed," it need not decide whether a contrary conclusion would have reversed the burden of persuasion in a § 1404 analysis, as Weavexx contends. The court does note, however, that the case Weavexx cites for that proposition, Ballard Medical Products v. Concord Lab., Inc., 700 F.Supp. 796 (D.Del.1988), does not support Weavexx's view. Rather, the earlier filed action in Ballard was simply considered as a factor favoring transfer-it did not reverse the burden of persuasion. See id. at 800-01. *4 In Jumara, the Third Circuit Court of Appeals identified a nonexclusive list of factors that have been used to guide courts in the exercise of their discretion in ruling on requests for transfer. See Jumara, 55 F.3d at 879-80; see also Affymetrix, Inc. v. Synteni, Inc., 28 F.Supp.2d 192, 196-97 (D.Del.1998). The factors most relevant to this case are discussed FN6 below. FN6. As a threshold matter, this action could have been brought in the Eastern District of North Carolina. See 28 U.S.C. §§ 1391(b), 1400(b). The court can, therefore, proceed to weighing the factors for and against transfer. 1. The Convenience of the Parties *4 Litigating this case in North Carolina would be more convenient for Weavexx. Weavexx is

headquartered in Wake Forest, which is within the Eastern District of North Carolina. Weavexx has identified six employees likely to testify at trial, each of whom resides within the Eastern District. The accused product was designed in Wake Forest, and Weavexx contends that the vast majority of its documents and records relating to the accused product are maintained at its Wake Forest headquarters. *4 Weavexx also claims that litigating this case in North Carolina would be more convenient for Asten. The entirety of Weavexx's "proof" in this regard is the fact that Asten is headquartered in Charleston, South Carolina. Asten does not vigorously contend, however, that Delaware is more convenient. Although Asten notes that its relevant documents and at least one of its testifying employees are located in Appleton, Wisconsin, it has done little to establish that these facts make Delaware any less inconvenient than North Carolina. *4 The court, therefore, concludes that North Carolina would be more convenient than Delaware for Weavexx, and no more inconvenient than Delaware for Asten. While this factor therefore favors transfer, it does so only slightly. Weavexx concedes that it is financially able to shoulder the expense of litigating this case in Delaware. Further, Weavexx has not established that its business would be disrupted if the employees that are expected to testify at trial must do so in Delaware. Weavexx maintains manufacturing facilities in several southern states and in Canada. It is likely that the six employees Weavexx identifies-upper level management including the company's president and three vice-presidents-are sometimes called upon to travel for company business. Finally, Weavexx has managed to survive two previous lawsuits filed in Delaware by Weavexx against Asten. 2. The Convenience and Availability of the Witnesses *4 The convenience of witnesses is often an important factor in a transfer inquiry. See 15 CHARLES ALAN WRIGHT, ARTHUR R. MILLER & EDWARD H. COOPER, FEDERAL PRACTICE AND PROCEDURE: JURISDICTION AND RELATED MATTERS § 3851, at 415 (2d ed.1986) [hereinafter

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WRIGHT & MILLER] (describing this factor as "[p]robably the most important factor, and the factor most frequently mentioned, in passing on a motion to transfer"). The convenience of witnesses is only considered, however, "to the extent that the witnesses may actually be unavailable for trial in one of the fora." Jumara, 55 F.3d at 879 (citing WRIGHT & MILLER § 3851, at 420-22). Thus, for example, the convenience of witnesses that are employees of a party carries no weight because the parties are obligated to procure their attendance at trial. See Affymetrix, 28 F.Supp.2d at 203. *5 Weavexx claims that North Carolina is a more convenient forum than Delaware for most of both parties' witnesses. But Weavexx has failed to sufficiently identify any witnesses that "may actually be unavailable for trial" in Delaware. Indeed, the six "primary anticipated fact witnesses" that Weavexx identifies are all upper level Weavexx employees. As such, Weavexx should be able to assure their attendFN7 ance at trial. FN7. Weavexx appears to contend that one of its employee witnesses-the inventor of the accused product-should be treated as a nonparty witness because he is scheduled to retire from Weavexx before the anticipated trial date. Opening Br. at 11. Weavexx, however, provides no information-by affidavit or otherwise-to suggest that this witness may be unavailable for trial in Delaware (or, for that matter, that he plans to remain within the subpoena power of the Eastern District of North Carolina after his retirement). The court is, therefore, not persuaded that this employee's anticipated retirement should have a significant impact on the transfer inquiry. *5 Weavexx also claims that three of the four "major domestic manufacturers of papermaking fabric" are headquartered in either North or South Carolina. Therefore, it asserts that "it is clearly more likely that witnesses having knowledge regarding relevant prior art would be within the subpoena power of the North Carolina Court." Opening Br. at 11. While this may FN8 or may not be a reasonable assumption, such un-

supported speculation about unspecified witnesses does not carry much weight in a transfer analysis. Affymetrix, 28 F.Supp.2d at 205. Further, two of the three "major domestic manufacturers" headquartered in the Carolinas are Asten and Weavexx themselves. As already noted, the convenience of party witnesses generally receives no weight in a transfer analysis. Id. at 203. FN8. For example, although Asten is headquartered in South Carolina, its employee that is apparently most knowledgeable about the prior art of the '839 patent is located at Asten's manufacturing facility in Appleton, Wisconsin. *5 As such, to the extent that the convenience and availability of witnesses weighs at all in favor of transfer, it does so only slightly. 3. Other Factors *5 Although Weavexx principally relies on the two factors discussed above, it recites several other factors that supposedly favor transfer. For example, Weavexx notes that since 1996, the average time from filing to trial for civil actions is 19.3 months in Delaware as compared to 16.5 months in North Carolina. But for the most recent period-the year ending June 30, 1999-Weavexx's statistics show that the average time to trial was one month longer in North Carolina than in Delaware. Virtually all of the other statistics provided by Weavexx (but not cited in its brief) suggest that court congestion is actually worse in the Eastern District of North Carolina than in the District of Delaware. Moreover, Magistrate Judge Thynge of this district served as a mediator in both of the prior Delaware actions between the parties. Judge Thynge will again be available in the present action. It appears, therefore, that administrative considerations and judicial economy actually weigh against FN9 transfer. FN9. As already noted, the district court in North Carolina has granted Asten's motion to stay proceedings in the declaratory judgment action pending this court's decision on Weavexx's motion to transfer. Therefore,

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there does not appear to be a risk of duplicative litigation if this motion is denied. *5 Next, Weavexx attempts to characterize this action as a "local controversy" that should be decided close to home. See Jumara, 55 F.3d at 879. The court fails to see how a patent infringement action involving two large companies that (1) are incorporated in Delaware; (2) are headquartered in different states; and (3) maintain manufacturing facilities in various states and Canada can be considered a "local" North Carolina controversy. Such characterization seems particularly inappropriate where, as here, the competing products at issue are manufactured in Wisconsin and Brazil. *6 The court finds that the other factors referred to by Weavexx, including those not discussed herein, do not weigh significantly, if at all, in favor of transfer. 4. Weighing of Factors *6 The court recognizes that the ties between this litigation and the state of Delaware are not substantial. Nevertheless, Asten's choice of this forum is a "paramount" consideration that is not to be "lightly disturbed." Schutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.1970). After weighing the factors discussed above, the court finds that Weavexx has failed to meet its heavy burden of establishing that the "balance of convenience" tips strongly in favor of transfer. As such, Weavexx has failed to establish that transfer is appropriate pursuant to 28 U.S.C. § 1404. IV. CONCLUSION *6 For the foregoing reasons, IT IS HEREBY ORDERED that: *6 1. Weavexx's motion to transfer this case to the United States District Court for the Eastern District of North Carolina is DENIED; and *6 2. Weavexx's alternative request to stay these proceedings pending resolution of Weavexx's declaratory judgment action in the Eastern District of North Carolina is DENIED.

D.Del.,2000. Asten Inc. v. Weavexx Corp. Not Reported in F.Supp.2d, 2000 WL 1728354 (D.Del.) END OF DOCUMENT

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Briefs and Other Related Documents Adams v. CrowleyD.Del.,2005.Only the Westlaw citation is currently available. United States District Court,D. Delaware. Arlin M. ADAMS, Chapter 11 Trustee of the PostConfirmation Bankruptcy Estates of Coram Healthcare Corporation, a Delaware Corporation, and of Coram, Inc., a Delaware corporation, Plaintiff, v. Daniel D. CROWLEY; Donald J. Amaral; William J. Casey; L. Peter Smith; and Sandra L. Smoley, Defendants. No. Civ. 04-1565-SLR. May 25, 2005. Rolin P. Bissell, Glenn Christopher Mandalas, Young, Conaway, Stargatt & Taylor, Wilmington, DE, for Plaintiff. Jeffrey C. Wisler, Connolly, Bove, Lodge & Hutz, Peter J. Walsh, Jr., Potter Anderson & Corroon, LLP, Wilmington, DE, for Defendants. MEMORANDUM ORDER ROBINSON, J. th *1 At Wilmington this 25 day of May, 2005, having reviewed defendants' motions to transfer, and the papers submitted in connection therewith; *1 IT IS ORDERED that said motions (D.I.3, 15) are denied, for the reasons that follow: *1 1. Background facts. On August 8, 2000, Coram Healthcare Corporation and Coram, Inc. (hereafter "Coram") filed a Chapter 11 petition in the United States Bankruptcy Court for the District of Delaware, together with a proposed plan of reorganization. In December 2000, the bankruptcy court denied confirmation of the plan, based in part on the fact that defendant Crowley had a conflict of interest by reason of his position as CEO of Coram and his contractual relationship with one of Coram's three major FN1 lenders. After denying confirmation of Coram's FN2 second proposed plan of reorganization, the bankruptcy court entered an order appointing plaintiff

Chapter 11 Trustee of Coram. On October 27, 2004, the bankruptcy court confirmed the Trustee's plan of reorganization, which plan was implemented on December 1, 2004. Coram is now a private company owned by its former lenders. Under the Trustee's plan as approved by the bankruptcy court, the right to pursue causes of action against Coram's former directors was reserved to the Trustee for the benefit of Coram's former unsecured trade creditors and its former common shareholders. FN1. It is alleged that between November 30, 1999, when Crowley became CEO, and July 31, 2000, Crowley caused Coram to pay certain lenders approximately $60 million. FN2. The bankruptcy court found in this regard that the Outside Directors, the remaining defendants herein, had done nothing in response to the court's order denying confirmation of the first plan of reorganization. *1 2. Standard of review. Under 28 U.S.C. § 1404(a), a district court may transfer any civil action to any other district where the action might have been brought for the convenience of parties and witnesses and in the interests of justice. Congress intended through § 1404 to place discretion in the district court to adjudicate motions to transfer according to an individualized, case-by-case consideration of convenience and the interests of justice. Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988); Affymetrix, Inc. v. Synteni, Inc., 28 F.Supp.2d 192, 208 (D.Del.1998). *1 3. The burden of establishing the need to transfer rests with the movant "to establish that the balance of convenience of the parties and witnesses strongly favors the defendants." Bergman v. Brainin, 512 F.Supp. 972, 973 (D.Del.1981) (citing Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.1970). "Unless the balance is strongly in favor of a transfer, the plaintiff's choice of forum should prevail". ADE Corp. v. KLA-Tencor Corp., 138 F.Supp.2d 565, 567 (D.Del.2001); Shutte, 431 F.2d at 25.

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*1 4. The deference afforded plaintiff's choice of forum will apply as long as a plaintiff has selected the forum for some legitimate reason. C.R. Bard, Inc. v. Guidant Corp., 997 F.Supp. 556, 562 (D.Del.1998); Cypress Semiconductor Corp. v. Integrated Circuit Systems, Inc., 2001 WL 1617186 (D.Del. Nov.28, 2001); Continental Cas. Co. v. American Home Assurance Co., 61 F.Supp.2d 128, 131 (D.Del.1999). Although transfer of an action is usually considered as less inconvenient to a plaintiff if the plaintiff has not chosen its " `home turf' or a forum where the alleged wrongful activity occurred, the plaintiff's choice of forum is still of paramount consideration, and the burden remains at all times on the defendants to show that the balance of convenience and the interests of justice weigh strongly in favor of transfer." In re M.L.-Lee Acquisition Fund II, L.P., 816 F.Supp. 973, 976 (D.Del.1993). *2 5. The Third Circuit Court of Appeals has indicated that the analysis for transfer is very broad. Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir.1995). Although emphasizing that "there is no definitive formula or list of factors to consider," id., the Court has identified potential factors it characterized as either private or public interests. The private interests include: "(1) plaintiff's forum preference as manifested in the original choice; (2) defendant's preference; (3) whether the claim arose elsewhere; (4) the convenience of the parties as indicated by their relative physical and financial condition; (5) the convenience of the witnesses but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and (6) location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum)." Id. (citations omitted). *2 6. The public interests include: "(1) the enforceability of the judgment; (2) practical considerations that could make the trial easy, expeditious or inexpensive; (3) the relative administrative difficulty in the two fora resulting from court congestion; (4) the local interest in deciding local controversies at home; (5) the public policies of the fora; and (6) the familiarity of the trial judge with the applicable state law in diversity cases." Id. (citations omitted).

*2 7. Analysis. Defendants move to transfer this case to the District of Colorado. In support of their motions, defendants recite several facts. First, none of FN3 the defendants live in or near Delaware. Coram, now a private company, is incorporated in Delaware with its principal place of business in Denver, Colorado. Coram's employees and business records are located as well in Denver, Colorado. Plaintiff, Coram's Chapter 11 Trustee, resides in Philadelphia. According to defendants, these facts compel the transfer of this case to Colorado because no one involved in the litigation has a direct connection to the District of Delaware. FN3. Three of the defendants, Mr. Casey, Mr. Crowley and Ms. Smoley, live in California, while Mr. Amaral lives in Nevada and Mr. Smith lives in Illinois. *2 8. I respectfully disagree. Coram (through its directors) chose Delaware as its place of incorporation and chose to file for bankruptcy protection in Delaware's bankruptcy court. The bankruptcy court appointed plaintiff the Chapter 11 Trustee and gave him the authority to commence the instant proceedings against the company's former fiduciaries. These facts demonstrate a substantial connection to Delaware. Moreover, given the fact that most discovery will be taken in the same fashion regardless of FN4 where trial may proceed, the convenience of the defendants is not a compelling factor. For these reasons, and consistent with my practice, I decline to FN5 transfer this case on the record presented. FN4. Depositions generally do not last more than 7 hours; the parties should be able to work out convenient places for their location. Document production may well be in electronic format. FN5. Employees of parties must make themselves available for purposes of depositions and trial. It is not apparent to me whether the employees of Coram (in its present corporate form) are subject to this court's jurisdiction. However, neither is it apparent at this stage of the proceedings whether they will voluntarily appear as witnesses, under the

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circumstances at bar. Therefore, I will reconsider my decision not to transfer only if specifically identified, critical witnesses decline to testify in Delaware and cannot be compelled to do so. D.Del.,2005. Adams v. Crowley Not Reported in F.Supp.2d, 2005 WL 1240181 (D.Del.) Briefs and Other Related Documents (Back to top) · 2006 WL 1199915 (Trial Motion, Memorandum and Affidavit) Plaintiff's Brief in Support of Motion to Vacate Order and Lift Stay (Mar. 9, 2006) Original Image of this Document (PDF) · 1:04cv01565 (Docket) (Dec. 29, 2004) END OF DOCUMENT

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Briefs and Other Related Documents Truth Hardware Corp. v. Ashland Products, Inc.D.Del.,2003.Only the Westlaw citation is currently available. United States District Court,D. Delaware. TRUTH HARDWARE CORPORATION, Plaintiff, v. ASHLAND PRODUCTS, INC., Defendant. No. C.A. 02-1541 GMS. Jan. 13, 2003. MEMORANDUM AND ORDER SLEET, J. I. INTRODUCTION *1 On October 15, 2002, the plaintiff, Truth Hardware Corporation ("Truth") filed the instant action alleging patent infringement of its "Advent" window operator. The defendant, Ashland Products, Inc. ("Ashland") now moves to transfer this case to the United States District Court for the Northern District of Illinois, Eastern Division, because litigation concerning a related patent is currently pending between the parties in that venue. For the following reasons, the court will deny Ashland's motion. II. DISCUSSION *1 Section 1404(a) provides that "[f]or convenience of [the] parties and witnesses, in the interest of justice," the court may transfer a civil action "to any other district ... where it might have been brought." FN1 28 U.S.C. § 1404(a). It is the movant's burden to establish the need to transfer, and "the plaintiff's choice of venue [will] not be lightly disturbed." Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d CIr.1995). FN1. The parties do not dispute that this action could have been filed in the Northern District of Illinois. *1 When considering a motion to transfer, the court must determine "whether on balance the litigation

would more conveniently proceed and the interest of justice be better served by transfer to a different forum." Id. This inquiry requires "a multi-factor balancing test" embracing certain private and public interests. Id. at 875, 879. These private interests include the plaintiff's choice of forum; the defendant's preference; whether the claim arose elsewhere; and the location of books and records, to the extent that they FN2 could not be produced in the alternative forum. Id. at 879. Among the relevant public interests are: "[t]he enforceability of the judgment; practical considerations that could make the trial easy, expeditious, or inexpensive; the relative administrative difficulty in the two fora resulting from court congestion; the local interest in deciding local controversies at home; [and] the public policies of the fora." Id. at 879-80 (citations omitted). FN2. The first three of these private interest collapse into other portions of the Jumara analysis. The court, therefore, will consider them in the context of the entire inquiry only. See Affymetrix, Inc. v. Synteni, Inc. and Incite Pharmaceuticals, Inc., 28 F.Supp.2d 192 (D.Del.1998). *1 Upon consideration of these factors, the court finds that Ashland has not met its burden of demonstrating that transfer is appropriate. In reaching this conclusion, the court relied on the following considerations, among others. First, Truth and Ashland are Delaware corporations and should reasonably expect to litigate in the forum. Additionally, the patent dispute and technology at issue is not "local" in nature or otherwise unique to the Northern District of Illinois. *1 Moreover, while it is true that litigation concerning a related patent is currently pending in the Northern District of Illinois, the court concludes that this is not as significant as Ashland suggests. Of critical importance in this regard is the fact that the Illinois action is several years old, has already proceeded through the dispositive motion phase, and is now set to begin trial on March 3, 2003. Thus, the advanced procedural posture of the Illinois action militates

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against a transfer. *1 Ashland further argues that, because the presiding judge in Illinois is familiar with the parties and the technology, judicial economy would be served by a transfer. While the court does not doubt that the Illinois court may be more familiar with the technology at this juncture, the present court is amply qualified to likewise familiarize itself. To the extent collateral estoppel issues may arise from the Illinois litigation, such issues will ultimately have to be decided by a court, regardless of whether that court sits in Illinois or Delaware. Thus, Ashton's arguments on this point are of little avail. *2 Finally, Ashton contends that non-party witness convenience weighs in favor of a transfer. The court must again disagree. In support of its contention, Ashton has identified three "critical" non-party witnesses that it claims would be inconvenienced by a trial in Delaware. Truth points out in its answer brief, hoever, that none of these witnesses resides in Illinois either, although it is unclear where they do reside. Nevertheless, it appears that these witnesses will have to travel regardless of where this action proceeds. Furthermore, the court does not find the possibility of a three-hour flight to be an onerous task warranting transfer. III. CONCLUSION *2 For these reasons, IT IS HEREBY ORDERED that: *2 1. Ashton's motion to transfer the case to the United States District Court for the Northern District of Illinois, Eastern Division, (D.I.9) is DENIED. D.Del.,2003. Truth Hardware Corp. v. Ashland Products, Inc. Not Reported in F.Supp.2d, 2003 WL 118005 (D.Del.) Briefs and Other Related Documents (Back to top) · 1:02CV01541 (Docket) (Oct. 15, 2002) END OF DOCUMENT

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Not Reported in F.Supp. Not Reported in F.Supp., 1998 WL 24354 (D.Del.) (Cite as: Not Reported in F.Supp.)

Briefs and Other Related Documents Bering Diagnostics GmbH v. Biosite Diagnostics, Inc.D.Del.,1998.Only the Westlaw citation is currently available. United States District Court, D. Delaware. BERING DIAGNOSTICS GMBH and Behring Diagnostics, Inc., Plaintiffs, v. BIOSITE DIAGNOSTICS, INC., Defendant. No. Civ.A. 97-501 MMS. Jan. 6, 1998. David J. Baldwin, and Joanne Ceballos, of Potter Anderson & Corroon, Wilmington, Delaware; of counsel, Herbert F. Schwartz, Kenneth B. Herman, Marta E. Gross, and Keith D. Agisim, of Fish & Neave, New York City, for plaintiffs. Jeffrey Bove, of Connolly, Bove, Lodge & Hutz, Wilmington, Delaware; of counsel: Richard G. Greco, and Deborah A. Marrone, of Kaye, Scholer, Fierman, Hays & Handler, LLP, New York City, for defendants. OPINION SCHWARTZ, Senior J. I. Introduction *1 Behring Diagnostics GmbH, Behring Diagnostics, Inc., and their parent company, Dade International, Inc. (collectively "Behring") brought this patent infringement action against Biosite Diagnostics, Inc. ("Biosite") for infringing Behring GmbH's U.S. PatFN1 ent No. 4,336,241 (the " '241 Patent"). Biosite answered this complaint and counterclaimed seeking a declaratory judgment that the '241 Patent is invalid, unenforceable, and not infringed. The product accused of infringement is Biosite's Triage Panel For Drugs of Abuse ("Triage DOA"), which is an immunoassay device which is used for the detection of drugs of abuse in urine. FN1. Initially, on September 2, 1997, this action was commenced in the name of Behringwerke GmbH and Behring Dia-

gnostics, Inc.; but this complaint was never served. On September 9, 1997, Behring Diagnostics GmbH and Behring Diagnostics, Inc. refiled and served this present complaint. In addition, Dade International, Inc., is in the process of changing its name to Dade Behring, Inc., effective January 1, 1998. At that time, Dade Behring, Inc. will be substituted as a party for Dade International, Inc. *1 Pending before the Court now is Biosite's motion to transfer this action to the United States District Court for the Southern District of California ("Southern District of California"). The Court has jurisdiction over this action under 28 U.S.C. § 1338(a). The motion to transfer will be denied. II. Factual Background A. The Parties *1 Biosite is a Delaware Corporation with its principal, and only, place of business in San Diego, California. Founded in 1988, Biosite develops, manufactures and markets diagnostics products to detect, inter alia, the presence in urine of commonly abused substances. Biosite has currently 210 employees and a market capitalization of $100 million, with approximately $28 million in gross sales. All of its management, scientists, and other employees (except for 20 sales people) are located at the San Diego facility. The accused product, the Triage DOA, was invented and developed in Biosite's San Diego facility and is manufactured at the same San Diego facility. *1 The Behring companies are a subsidiary of Hoescht AG and also develop, manufacture, and market diagnostics products to detect, inter alia, the presence in urine of commonly abused substances. Behring Diagnostics GmbH is a German corporation with its principal place of business in Marburg, Germany. Behring Diagnostics Inc. is at present a Delaware Corporation with its principal place of business in Westwood, Massachusetts. It is currently responsible for being the United States marketer of

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products manufactured by Behring GmbH. Behring Diagnostics GmbH became the current assignee of the '241 Patent when the Behring companies acquired Syva Company ("Syva") in 1995. *1 Dade International, Inc., a Delaware corporation, is the owner of Behring Diagnostics GmbH and is also the owner, through a holding company, of Behring Diagnostics, Inc. On January 1, 1998, Dade International Inc. intends to change its name to Dade Behring Inc. It will be the same corporate entity it is now, with only a name change. The new entity will also be a Delaware corporation with its principal place of business in Deerfield, Illinois. Dade Behring will be owned in part by Hoescht AG. Dade International Inc., soon to be Dade Behring Inc., has a branch office in Glasgow, Delaware which employs approximately 1000 people and has 25 sales and service offices throughout Delaware. B. Subject Matter of this Lawsuit *2 Behring's '241 Patent, which was initially issued on December 28, 1982, to Henry K. Tom ("Tom") and Gerald L. Rowley ("Rowley"), is entitled "Concentrating Zone Method in Heterogeneous Immunoassays". The patent was subsequently assigned to Syva. The '241 Patent is directed to an assay device which can identify the presence of specific antigens in a sample solution such as urine or blood. Such devices are used for, among other things, the detection of drugs of abuse including cocaine and marijuana. Behring asserts Biosite's Triage DOA infringes upon the '241 Patent. The Triage DOA is a diagnostic device capable of detecting, in urine, a broad spectrum of commonly overdosed prescription and illicit drugs. Triage DOA is used by over 2,600 hospitals across the country, including hospitals in Delaware. Over 4.6 million Triage DOA devices have been sold worldwide since the product's introduction. III. Standards for Motion to Transfer *2 28 U.S.C. § 1404(a) provides "[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) (1993). The parties concede that this action could have been FN2 brought in the Southern District of California. See D.I. 28, at 11 n. 2. FN2. A 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 business." 28 U.S.C. § 1400(b). Since Biosite is not only headquartered in San Diego, and its only facility is located there, there is no question that the Southern District of California, in which San Diego lies, is an appropriate venue. *2 As the text of § 1404(a) indicates, the Court must examine (1) the convenience of the parties, (2) the convenience of the witnesses, and (3) the interests of justice, in determining whether transfer is proper. The Court of Appeals for the Third Circuit has emphasized this is a broad inquiry: a district court must examine "all relevant factors to determine whether on balance the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum." Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir.1995). While cautioning "there is no definitive formula or list of factors to consider," id., the court identified potential factors which it characterized as either private or public interests. *2 The private interests include: (1) plaintiff's forum preference as manifested in the original choice, (2) the defendant's preference, (3) whether the claim arose elsewhe