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Infinity Computer Products, Inc. v. Toshiba America Business Solutions, Inc.

United States District Court, E.D. Pennsylvania

February 27, 2018





         The above-captioned civil action is one of eight cases remaining that were consolidated by Order dated January 11, 2018, [1] (collectively, the “Related Cases”), for discovery and pretrial purposes, and designated as the lead case. Before this Court is Defendant Toshiba America Business Solutions, Inc.'s (“Moving Defendant”) motion to transfer venue to the United States District Court for the Central District of California pursuant to the forum non conveniens provision of 28 U.S.C. § 1404(a). [ECF 59]. Plaintiff Infinity Computer Products Inc., (“Plaintiff” or “Infinity”) opposes the motion to transfer. [ECF 63].[2] The issues raised in the motion have been fully briefed and are now ripe for disposition. For the reasons set forth, Moving Defendant's motion to transfer is denied.


         The procedural history in this case is protracted and can be summarized as follows:

         On June 30, 2010, Plaintiff filed a patent infringement action against fifteen corporate defendants, including Moving Defendant, (the “Original Defendants”) which was docketed at Civil Action No. 10-3175 (the “Original Case”), and assigned to the calendar of the Honorable Legrome D. Davis.[4]Subsequently, Plaintiff amended the complaint to assert patent infringement counts related to its Patent Nos. 6, 894, 811 (the “811 Patent”) and 7, 489, 423 (the “423 Patent”).[5] [Original Case ECF 158]. On October 5, 2012, the Original Defendants filed motions to dismiss the complaint and/or sever based on misjoinder, [Original Case ECF 260, 261], which Plaintiff opposed. [Original Case ECF 265, 266]. On November 16, 2012, Judge Davis granted the motion to sever, [Original Case ECF 280], and ordered that the civil actions be severed, [6]and that Plaintiff file separate complaints against each defendant. On December 5, 2012, Plaintiff filed separate complaints, this time asserting four patent infringement claims against numerous defendants, including Moving Defendant, specifically alleging infringement of the 811 and 423 Patents, as well as Patent Nos. 8, 040, 574 (the “574 Patent”) and Patent 8, 294, 915 (the “915 Patent”)[7](Patents 811, 423, 574 and 915, will be referred to collectively as the “Patents”).[8]

         On January 23, 2013, Moving Defendant filed an answer, admitting that venue was proper in this district, and asserting counterclaims against Plaintiff. [ECF 9]. On February 13, 2013, Plaintiff filed an answer to Moving Defendant's counterclaims. [ECF 15]. On April 12, 2013, Moving Defendant moved to stay this action pending the outcome of a reexamination of the Patents by the United States Patent and Trademark Office (“USPTO”). [ECF 18]. Notwithstanding Plaintiff's opposition, Judge Davis granted the motion and stayed this proceeding pending the conclusion of the reexamination. [ECF 20].[9]

         On July 12, 2013, Plaintiff's then-counsel, Attorney Robert Sachs, moved to withdraw as counsel. [ECF 21]. Judge Davis denied the motion. [ECF 22]. On November 18, 2013, Attorney Sachs renewed his motion to withdraw as counsel. [ECF 27]. By Order dated November 22, 2013, Judge Davis granted the motion and ordered Plaintiff to “promptly retain new counsel.” [ECF 28]. Despite the passage of more than three-and-one-half years, no attorney entered an appearance on behalf of Plaintiff. As a result, on June 9, 2017, Moving Defendant moved to dismiss the complaint pursuant to Rule 41(b) based on Plaintiff's failure to prosecute the claims and comply with Judge Davis' order. On June 15, 2017, Judge Davis again ordered Plaintiff to obtain counsel and to file a response to the Rule 41(b) motion. [ECF 34]. On July 13, 2017, Attorney Edward Behm, Jr., entered his appearance on behalf of Plaintiff, and filed a response in opposition to the Rule 41(b) motion. [ECF 35, 36]. On July 28, 2017, Plaintiff filed a motion to lift the stay in this case, [ECF 42], as well as the other Related Cases, which was granted by Judge Davis by Order dated August 8, 2017. [ECF 45].

         Judge Davis retired in September 2017, and by Order dated October 3, 2017, this case, and the other Related Cases, were reassigned to the undersigned. [ECF 47]. By Order dated October 12, 2017, Moving Defendant's Rule 41(b) motion was denied. [ECF 49]. On January 9, 2018, a preliminary pretrial conference was held with counsel for the parties in the Related Cases, including counsel for Moving Defendant. Pursuant to the discussion with the parties in the Related Cases, the Related Cases were consolidated for discovery and pretrial purposes, and the above-captioned case was designated as the lead case. [ECF 58]. This Court set a deadline of January 16, 2018, as the date to file motions to dismiss and/or transfer for improper venue. [ECF 57]. The Order specifically provided that the “failure to file a motion to dismiss and/or transfer for improper venue by January 16, 2018, will be deemed a waiver of any argument that venue is improper in the United States District Court for the Eastern District of Pennsylvania.” (Id.).

         On January 16, 2018, Moving Defendant filed the instant motion to transfer for forum non conveniens pursuant to 28 U.S.C. § 1404(a) (“§ 1404(a)”). Notably, Moving Defendant does not argue that venue is improper in this district, but only that it is inconvenient.[10]


         Section 1404(a) 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 or to any district or division to which all parties have consented.” 28 U.S.C. § 1404(a). The purpose of transferring venue under § 1404(a) “is to prevent the waste of time, energy, and money, and to protect litigants, witnesses and the public against unnecessary inconvenience and expense.” Van Dusen v. Barrack, 376 U.S. 612, 616 (1964). In determining whether transfer is appropriate, “the district court is vested with wide discretion, ” Plum Tree, Inc. v. Stockment, 488 F.2d 754, 756 (3d Cir. 1973), consistent with federal law. Jumara v. State Farm Ins. Co., 55 F.3d 873, 877-78 (3d Cir. 1995).

         The threshold inquiry under § 1404(a) is whether venue in the transferee district is proper. Id. at 878. If venue is proper, the court must then undertake a balancing test to decide whether the convenience of the parties and witnesses and the interest of justice would be better served by a transfer to a different forum. Coppola v. Ferrellgas, Inc., 250 F.R.D. 195, 197 (E.D. Pa. 2008). Although “there is no definitive formula or list of the factors to consider, ” when determining whether a transfer is warranted, a court should weigh existing relevant private and public interests in its decision process. These interests are the following:

The private interests include[]: plaintiff's forum preference as manifested in the original choice; the defendant's preference; whether the claim arose elsewhere, the convenience of the parties as indicated by their relative physical and financial condition; 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 the location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum).
The public interests include[ ]: the 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; the public policies of the fora; and the familiarity of the trial judge with the applicable state law in diversity cases.

Jumara, 55 F.3d at 879-80 (citations omitted).

         The party seeking the transfer bears the burden of establishing the need for the transfer. Id. at 879.[11] “Transfer is not warranted, however, if the result is merely to shift the inconvenience from one party to the other.” DermaMed, Inc. v. Spa de Soleil, Inc., 152 F.Supp.2d 780, 783 (E.D. Pa. 2001). “[U]nless the balance of convenience of the parties is strongly in favor of defendant, the plaintiff's choice of forum should prevail.'” Penn Mut. Life Ins. Co. v. BNC Nat. Bank, 2010 WL 3489386, at *8 (E.D. Pa. Sept. 2, 2010) (quoting Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.1970)). Further, the delay in filing a motion to transfer pursuant to § 1404(a), while not dispositive, is a factor to be considered in ruling on the motion. See Abbott v. CSX Transp., Inc., 2008 WL 4522481, at *3 (E.D. Pa. Oct. 8, 2008) (noting that “delay alone does not preclude transfer” but supported the denial of the motion to transfer); Kravas v. Private Adoption Servs., Inc., 2009 WL 5184689, at *4 n.4 (W.D. Pa. Dec. 22, 2009) (noting that while the “length of time before bringing a § 1404(a) motion is to be considered, ” a “delay in filing a motion for transfer of venue is not alone dispositive.”).


         Moving Defendant argues that this case could have been brought in the Central District of California, and that transferring it to that district would be in the interest of justice and convenient ...

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