Free Opening Brief in Support - District Court of Delaware - Delaware

Case 1:04-cv-01451-SLR Document 16-10 Filed 04/13/2005 Page 1 0fRage 2 of 4
· ng
Not Reported in F.Supp.2d Page 1
2003 WL 179996 (D.Del.)
(Cite as: 2003 WL 179996 (D.Del.))
C States Patent Number 5,968,544 ("the '544 patent").
Motions, Pleadings and Filings OCPC alleges that Kaizen has made, used, offered
for sale, and continues to do the same,
Only the Westlaw citation is currently available. creatine-containing products embodying the
invention patented in the '544 patent. OCPC further
contends that Kaizen has marketed and sold
United States District Court, creatine-containing products embodying the
D. Delaware. invention in the 'l59 patent. Kaizen filed an answer
and asserted affirmative defenses, including
THE ORIGINAL CREATINE PATENT inequitable conduct and bad faith. (D.I.9) Kaizen
COMPANY, LTD, Plaintiff, then filed this motion to dismiss or transfer to the
v. Central District of Califomia. (D.I.l0) OCPC
KAIZEN, INC., Defendant. responded with a motion to strike and/or dismiss
fifteen of Kaizen's affirmative defenses. (D.I.l°0)
No. Civ.A. 02-471-SLR.
FN2. OCPC tiled the original complaint
Jan. 22,2003. incorrectly against Kaizen, Inc., a
Delaware corporation unrelated to this
action. (D.I.1, 15)
MEMORANDUM ORDER
2. Background. OCPC is an English corporation
ROBINSON, J. with its principal place of business in Leeds, United
Kingdom. (D.I.7, il 2) OCPC is the assignee of the
*1 At Wilmington this 22nd day of January, 2003, two patents-in-suit, the 'l59 patent, issued to
having reviewed defendant's motion to dismiss or, inventors Eric Hultman and Roger C. Harris, and
in the alternative, to transfer and the papers the '544 patent, issued to inventors Alan N. Howard
submittedinconnection therewith; and Roger C. Harris. (Id at 1l'll 5-6) While
Hultman resides in Sweden, Howard and Harris
IT IS ORDERED that said motion to transfer reside in the United Kingdom. (D.I.l9, Ex. 1) The
(D.I.14) is granted, for the reasons that follow: attorneys who prosecuted the patents are located in
[FNI] Washington, D.C. and Chicago, Illinois. OCPC has
filed four other actions to enforce the patents-in-suit
FNI. Because the court is transferring the , against different defendants, all of which are
action to California, Kaizen's motion to pending before this court.
dismiss for lack of personal jurisdiction is
denied as moot. Kaizen's motions for 3. Kaizen is a California corporation with only one
protective orders (D.I.25, 31) and OCPC‘s office located in Los Angeles, California. (D.I.l5.
motion to strike (D.I.l0) are denied Ex. A) Kaizen is a corporation involved in the
without prejudice to renew. advertising, distribution and sales of health food
products. (Id at fl 2) In l998, Kaizen entered a
1. Introduction. On July 11, 2002, plaintiff, The licensing agreement to market, distribute and sell
Original Creatine Patent Co., Ltd. ("OCPC"), tiled creatine-containing products from a German
an amended complaint for patent infringement company under the trade-name CreapureTM. (Id at
against defendant Kaizen, Inc. ("Kaizen"). [FN2] 1} 4) Kaizen claims that all its documents, and
(D.I.7) The patents-in-suit are United States Patent employees are located in California. With the
Number 5,757,159 ("the '159 patent") and United exception of two potential witnesses, [FN3] Kaizen
Copr. © 2004 West. No Claim to Orig. U.S. Govt. Works.
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Case 1:04-cv-01451-SLR Document 16-10 Filed 04/13/2005 Page 2 0fP.5tg€ 3 of 4
Not Reported in F.Supp.2d Page 2
2003 WL 179996 (D.Del.)
(Cite as: 2003 WL 179996 (D.Del.))
indicates the remaining reside inCalifomia. the analysis for transfer is very broad. Jumara v.
State Farm Ins. C0., 55 F.3d 873, 879 (3d Cir.1995)
FN3. There are two witnesses located in . Although emphasizing that "there is no definitive
Georgia and Canada. (D.1. 15 11 9) formula or list of factors to consider," id, the Court
has identified potential factors it characterized as
4. Standard of Review. Under 28 U.S.C. § l404(a) either private or public interests. The private
, a district court may transfer any civil action to any interests include: "(1) plaintiffs forum preference as
other district where the action might have been manifested in the original choice; (2) defendant's
brought for the convenience of parties and preference; (3) whether the claim arose elsewhere;
witnesses and in the interest of justice. Congress (4) the convenience of the parties as indicated by
intended through § 1404 to place discretion in the their relative physical and fmancial condition; (5)
district court to adjudicate motions to transfer the convenience of the witnesses but only to the
according to an individualized, case-by-case extent that the witnesses may actually be
consideration of convenience and the interests of unavailable for trial in one of the fora; and (6)
justice. Stewart Org., Inc. v. Ricoh Corp., 487 U.S. location of books and records (similarly limited to
22, 29 (1988); Ajfvmetrix, Inc. v. Synteni, Inc., 28 the extent that the files could not be produced in the
F.Supp.2d 192, 208 (D.Del. 1998). alternative forum)." Id (citations omitted).
*2 The burden of establishing the need to transfer The public interests include: "(l) the enforceability
rests with the movant "to establish that the balance of the judgment; (2) practical considerations that
of convenience of the parties and witnesses strongly could make the trial easy, expeditious or
favors the defendants." Bergman v. Brainin, 512 inexpensive; (3) the relative administrative
F.Supp. 972, 973 (D.Del.l98l) (citing Shutte v. difficulty in the two fora resulting from court
Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.l970). congestion; (4) the local interest in deciding local
"Unless the balance is strongly in favor of a controversies at home; (5) the public policies of the
transfer, the plaintiffs choice of forum should fora; and (6) the familiarity of the trial judge with
prevail". ADE Corp. v. KLA-Tencor Corp., 138 the applicable state law in diversity cases." Id
F.Supp.2d 565, 567 (D.Del.2001); Shutte, 431 F.2d (citations omitted).
at 25.
5. Discussion. Kaizen argues the public and private
The deference afforded plaintiffs choice of forum interests weigh in favor of a transfer to the Central
will apply as long as a plaintiff has selected the District of California. Specifically, Kaizen argues
forum for some legitimate reason. C.R. Bard Inc. v. that OCPC has no parties, witnesses or evidence
Guidant Corp., 997 F.Supp. 556, 562 (D. Del 1998) related to this action in Delaware. Kaizen avers that
; Siemens Medical Systems, Inc. v. Fonar OCPC instituted this action in Delaware for the sole
Corporation, C.A. No. 95-261-SLR, slip. op. at 8 reason of accommodating the convenience of its
(D.Del. Nov. 1, 1995); Cypress Semiconductor lawyers, who practice in this state. Kaizen contends
Corp. v. Integrated Circuit Systems, Inc., 2001 WL that the action actually emanates from Los Angeles,
1617186 (D.Del. Nov. 28, 2001). Although transfer Califomia, the location of its sales center. California
of an action is usually considered as less convenient is also the location of all events and evidence
to a plaintiff if the plaintiff has not chosen its " related to the litigation. (D.1.15, Ex. A)
'home turf or a forum where the alleged wrongful
activity occurred, the plaintiffs choice of forum is *3 6. OCPC contends its choice of forum should be
still of paramount consideration, and the burden afforded deference. (D.1.l9) The Delaware forum
remains at all times on the defendants to show that was selected because Kaizen has committed patent
the balance of convenience and the interests of infringement in this state, argues OCPC. Moreover,
justice weigh strongly in favor of transfer." In re the evidence and witnesses necessary to defend
ML.-Lee Acquisition Fund IL L.P., 816 F.Supp. against Kaizen's affirmative defenses are located in
973,976 (D.Del.1993). Sweden, the United Kingdom, Washington, D.C.
and Illinois. Although all of these witnesses will
The Third Circuit Court of Appeals has indicated have to travel for trial purposes, OCPC asserts that
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Case 1:04-cv-01451-SLR Document 16-10 Filed 04/13/2005 Page 3 oflB1ge 4 of 4
Not Reported in F.Supp.2d Page 3
2003 WL 179996 (D.Del.)
(Cite as: 2003 WL 179996 (D.Del.))
Delaware is a closer forum than California. Further, of transfer. The record reflects that neither litigant
because there are three other cases involving the has ties to Delaware. Geographically, Delaware is
same patents pending before this court, judicial inconvenient to everyone. All witnesses, docmnents
economy will be promoted by maintaining this and employees are located outside of this forum.
action. (D.I.19, Ex. 1) The risk of inconsistent Although Kaizen may describe itself as a
results will be reduced by allowing one judge to world-wide operation, there has been nothing
become proficient in the patent technology and the presented to corroborate this apparent
relevant facts. embellishment.
OCPC also raises another issue related to Kaizen's *4 With regard to compulsory process problems,
business, or lack thereofi in Delaware. On Kaizen's OCPC indicates that a Delaware store owner will be
internet website, the company describes itself as called as a trial witness. However, it has not
maintaining offices "world-wide," in addition to the established that this individual will be unwilling to
California office. (D.I.19, Ex. 2) The Kaizen testify outside of Delaware. Absent a demonstrable
website does not accept orders for its products. obstacle to obtaining personal jurisdiction over a
However, the website does provide a link to an third-party witness, the comt declines to consider
internet nutrition store which sells Kaizen products. this as aproblem.
According to the declaration of an OCPC attorney,
she was able to place post-complaint orders for Turning to the public interests, the court fmds the
Kaizen products, including those alleged to infringe practical considerations related to trial weigh in
the patents-in-suit, from the linked nutrition store. favor a transfer. As noted, the expense of trial in
(D.I.l9, Ex. 3) The orders were made from a Delaware will weigh more heavily on Kaizen.
Delaware computer and she received the products in Regardless of the fornm, OCPC will incur travel
Delaware. The attorney states that she was able to expenses. A transfer to California would eliminate
buy a nationally distributed magazine at a Delaware rather than merely shifting the travel expense of one
bookstore that contained advertisements for Kaizen party. See Van Dusen v. Barrack, 376 U.S. 612,
products. She was also able to purchase, in person, 646 (1964).
noninfringing Kaizen products from a Delaware
store. She states that the owner of the store told her The court is likewise confident that the Central
that he has received solicitations to sell the entire District of California is well-equipped to decide the
line of Kaizen products. OCPC plans to call the issues implicated by this case, regardless of the
Delaware store owner as athird party witness. pendency of OCPC's other infringement actions.
Ftuther, considering Kaizen is a California
ln response, Kaizen urges the court to strike the corporation conducting business therein, that forum
declaration as it contains impermissible double has a more particular interest in the litigation than
hearsay. (D.I.20) However, even if it were Delaware. Accordingly, for the reasons stated, this
considered, Kaizen contends it does not establish action is transferred to the Central District of
that Kaizen conducts business in Delaware or sells California.
the accused products here. Moreover, the fact that
Kaizen's website describes its operations as 2003 WL 179996 (D.Del.)
"world-wide" still does not establish any business
relationship with anyone in Delaware. Kaizen also Motions, Pleadings and Filings (Back to top)
argues that any problems with having third party · l:02CV00471 (Docket)
witness testifying in California, can be solved by (Jun. 03,2002)
taking the depositions elsewhere.
END OF DOCUMENT
Since the parties do not dispute that this action
could have been initiated in the Central District of
California, an examination of the private issues
implicated by a transfer is warranted. The court
fmds the balance of private factors weighs in favor
Copr. © 2004 West. No Claim to Orig. U.S. Govt. Works.
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