Opinion
03 Civ. 2503 (SHS)
December 4, 2003
OPINION AND ORDER
Defendants in this patent infringement action, Andrx Pharmaceuticals, LLC and Andrx Pharaceuticals, Inc., ("Andrx, LLC" and "Andrx, Inc." or collectively "Andrx") have moved to dismiss the claims brought against them by Bristol-Myers Squibb Company and E.R. Squibb Sons, LLC (collectively "Bristol") for lack of personal jurisdiction pursuant to Fed.R.Civ.P. 12(b)(2), or alternatively, for a transfer pursuant to 28 U.S.C. § 1404(a) to the United States District Court for the Southern District of Florida where an identical action is pending before Judge Paul C. Huck. See Bristol-Myers Squibb Co. et al. v. Andrx Pharmaceuticals, et al., No. 03 Civ. 60703 (S.D. Fla. 2003); (Trans, of Oral Arg. before Judge Huck, Sept. 5, 2003, p. 7).
I. Background
A. The Parties
Bristol-Myers Squibb Company is a Delaware corporation with its principal place of business in New York. E.R. Squibb Sons, LLC is a Delaware corporation with its principal place of business in New Jersey. Bristol is also the owner of United States Patent No. 5,006,344 ("344 patent") that forms the underlying grounds for this action. (Compl. ¶¶ 1, 2, 7).
Defendant Andrx, LLC is a Delaware limited liability company with a principal place of business in Florida. Defendant Andrx, Inc. is a Florida corporation with a principal place of business in Florida. Andrx, Inc. conducts business in New York regularly, but Andrx, LCC does not. Both entities are subsidiaries of Andrx Corporation. (Compl. ¶¶ 3, 4, 5, 11-16).
B. The Alleged Infringement
Plaintiffs own a patent on a fosinopril formulation which was issued in 1991. (Compl. ¶ 7, 8, 10). In 2003, Andrx, Inc. submitted an Abbreviated New Drug Application ("ANDA") for two products: fosinopril sodium and fosinopril sodium with hydrochlorothiazide. ( Id.). Those ANDA applications are the basis for this infringement litigation pursuant to 35 U.S.C. § 271(e)(2). At some point prior to the litigation, Andrx, Inc. assigned the ANDA applications to Andrx, LLC. (Compl. ¶ 11, 12). Andrx, LLC mailed to Bristol, pursuant to 21 C.F.R. § 314.95, certain statutorily required "Paragraph IV certification" notices that alert a patent-holder to a challenge or prospective non-infringing use. ( Id.)
After receiving those notices, Bristol filed this lawsuit in the United States District Court for the Southern District of New York. Subsequently, Bristol also filed an identical complaint in the United States District Court for the Southern District of Florida, and that action is currently underway in Florida No party contests jurisdiction in the Florida action, although Bristol maintains that it only filed that action to preserve its rights in light of certain misrepresentations by defendants, but not as an exercise of its jurisdictional preference. (See Trans. Oral Arg. before Judge Huck, Sept. 5, 2003, 5:13-18, Def's Mot. to Dismiss, p. 13).
II. Discussion
Plaintiffs have requested that this Court transfer this action pursuant to 28 U.S.C. § 1404(a), which allows a district court to transfer an action for "the convenience of parties and witnesses" and "in the interest of justice" to another judicial district where it might have been brought. Such a grant is within the discretion of the district court. In re Cuyahoga Equipment Corp., 980 F.2d 110, 117 (2d. Cir. 1992).
That section reads in its entirety as follows: "For 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."
A. Defendants' Burden
In order to prevail on a motion to transfer pursuant to section 1404(a), the moving party bears the burden of establishing that the convenience of parties and witnesses and the interests of justice will be better served by transfer to another forum. See Nabisco, Inc. v. Brach's Confections, Inc., No. 00 Civ. 5875, 2000 WL 1677935, at *3 (S.D.N.Y. Nov. 6, 2000); Toy Biz, Inc. v. Centuri Corp., 990 F. Supp. 328, 330 (S.D.N.Y. 1998); Christina Canada Inc. v. Wior Corp., 702 F. Supp. 461, 464 (S.D.N.Y. 1988). "That burden is heavy: `unless the balance is strongly in favor of the defendant, the plaintiff's choice of forum should rarely be disturbed.'"Id. at 463 (quoting Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947)). While the plaintiff's choice of forum is "`entitled to substantial consideration,'" Warrick v. General Elec. Co. (In re Warrick) 70 F.3d 736, 741 (2d Cir. 1995) (quoting A. Olnick Sons v. Dempster Bros., Inc., 365 F.2d 439, 444 (2d Cir. 1966)), "[t]he emphasis that a court places on plaintiffs choice of forum diminishes where . . . the facts giving rise to the litigation bear little material connection to the chosen forum." Fontana v. E.A.R., 849 F. Supp. 212, 215 (S.D.N.Y. 1994).
Here, plaintiffs' selected forum has only a slight or "tenuous" connection to the operative facts of the litigation, because "plaintiff's selection of [the] forum has an artificial quality that entitles a court to give it less weight." Id. see also Anadigics, Inc. v. Raytheon Co., 903 F. Supp. 615, 616 (S.D.N.Y. 1995); Coker v. Bank of America, 984 F. Supp. 757, 766 (S.D.N.Y. 1997) (collecting cases). Bristol-Myer Squibb Company is headquartered in New York, but the research and development of the `344 patent took place at E.R. Squibb Sons, LLC in New Jersey. More importantly, the facts giving rise to this action took place in Florida, as will be fully set forth below. Therefore, the emphasis normally placed on plaintiff's choice of forum is lessened in this instance.
B. Transfer Pursuant to section 1404(a): "Convenience" and "Interest of Justice"
The prerequisite to evaluating the propriety of a transfer is whether there is a transferee forum available with proper jurisdiction and venue.Alfadda v. Fenn, 159 F.3d 41, 54 (2d Cir. 1998). As noted, an identical action is underway in the Southern District of Florida and all parties agree that jurisdiction and venue are proper there.
Once a finding has been made that the proposed transferee forum has jurisdiction as well as proper venue, a court should assess the "convenience" and "fairness" of a transfer. The court considers factors such as (1) convenience of the witnesses; (2) location of relevant documents and the relative ease of access to sources of proof; (3) locus of operative facts; (4) convenience of the parties; (5) availability of process to compel attendance of unwilling witnesses; (6) relative means of the parties; (7) forum's familiarity with the governing law; (8) weight accorded a plaintiffs choice of forum; and (9) trial efficiency and the interests of justice based on the totality of the circumstances.See Kiss My Face Corp. v. Bunting, 2003 WL 22244587, at *1 (S.D.N.Y. 2003); Telebrands Corp. v. Wilton Indus., Inc., 983 F. Supp. 471, 477 (S.D.N.Y. 1997). An evaluation of the convenience and fairness of granting a transfer should be based on an "individualized, case-by-case consideration of convenience and fairness." In re Cuyahoga Equip. Corp., 980 F.2d at 117. The Court shall now turn to a consideration of each of the relevant factors.
1. The Convenience of the Witnesses
"The convenience of the parties and witnesses is generally the most important factor for a court to consider when deciding whether a change of venue is proper." Telebrands Corp, v. Wilton Industries. Inc., 983 F. Supp. 471, 477 (S.D.N.Y., 1997). "However, the costs and burdens should not merely be shifted from one party to the other."Id.
Bristol has made a showing that a trial in the Southern District of New York would be easier for four of its witnesses, who are located in the New York tri-state area. (Def's Mem. in Opp. to Mot. to Dismiss, p. 20). For the purposes of this analysis, the Court "dismisses from consideration the convenience of witnesses who are located outside both the current and transferee forums." Wechsler v. Macke Int'l Trade. Inc., No. 99 Civ. 5725, 1999 WL 1261251, at *6 (S.D.N.Y. 1999). Therefore, the convenience of Bristol's witness located in California, and of its expert traveling from an unspecified location, is not relevant. Andrx has indicated that "all of the fact witnesses regarding the formulation of the alleged infringing product who may be called to testify are located in Florida." (Def's Mot. to Dismiss, p. 16). While Andrx fails to list and name these prospective witnesses, the corporation is located in Florida and a number of employees are located there. Additionally, the witnesses who have already presented testimony in this action, Mr. Whitlock and Mr. Lodin, appear to be employed by Andrx in Florida., Moreover, there is no indication that Bristol's witnesses will not be able to either travel to Florida or provide testimony by deposition. This factor favors transfer of this action to Florida.
2. Location of the Documents and Sources of Proof
Bristol also states that the documents to be produced by all parties in this action are located in the Southern District of New York. (Aff. Park, ¶ 4-7). Andrx has not contended otherwise. The location of documents in New York is "entitled to little weight unless the defendant makes a detailed showing as to the burden it would incur absent transfer."Royal Ins. Co, of America v. Tower Records, Inc., 2002 WL 31385815, at *6 (S.D.N.Y. Oct 22, 2002). There has been no such "detailed" showing in this action, and therefore the Court presumes that in this "era of photocopying, fax machines and Federal Express" the documents can be relocated to Florida without undue expense.Coker, 984 F. Supp. at 766; see also Constitution Reinsurance Corp, v. Stonewall Ins. Co., 872 F. Supp. 1247, 1251 (S.D.N.Y. 1995).
3. Locus of Operative Facts
The locus of operative facts is "traditionally an important factor to be considered in deciding where a case should be tried." Royal Ins. Co., 2002 WL 31385815, at *3. Andrx is the alleged patent infringer, and that alleged infringement originated at the Florida headquarters of the company. In a patent infringement action, the locus of operative facts is the jurisdiction where the design and development of the infringing patent occurred. Amersham Pharmacia Biotech. Inc. v. Perkin-Elmer Corp., 11 F. Supp.2d 729, 730 (S.D.N.Y. 1998). It is also relevant that the designers, developers, and marketers of the allegedly infringing patent are employed in the transferee forum.See Wechsler, 1999 WL 1261251, at *4 (citingBionx Implants, Inc. v. Biomet Inc., 1999 WL 342306, at *4 (S.D.N.Y. May 27, 1999)). It therefore makes little difference that the development of the underlying Bristol patent took place in New Jersey, where the Bristol research facilities are located. The only action taking place in New York was that Andrx mailed certain Paragraph IV notifications to Bristol headquarters in New York. Therefore this factor favors a transfer to Florida; the Southern District of New York has only a tenuous connection to the facts of this litigation.
4. Convenience of the Parties
Not surprisingly, all parties to this action would prefer to try the action in their respective home jurisdictions. The attorneys for all parties appear to be based in New York, but both sets of attorneys are also able to appear in Florida, and have already demonstrated that they are prepared to do so in this matter. Moreover, the convenience of counsel is not relevant to an evaluation of whether to grant a transfer pursuant to section 1404(a). See Bionx Implants, 1999 WL 342306, at * 4. The inconvenience to Andrx caused by a suit in New York, though defendants claim it would be great, cannot be overwhelming when Andrx has previously appeared in actions here. See Aktiebolag v. Andrx Pharmaceuticals, Inc., 208 F.R.D. 92 (S.D.N.Y. 2002). Bristol alleges that Andrx actually transferred theAktiebolag litigation to the Southern District of New York from the Southern District of Florida, pursuant to section 1404(a). (Def.'s Mem. in Opp. to Mot. to Dismiss, p. 7). Similarly, the inconvenience to Bristol of a suit in the Southern District of Florida could not be overwhelming in light of the fact that it has filed a concurrent action in that forum. Moreover, the parties' convenience is a neutral factor where transfer would only shift the burden from one party to another.Transatlantic Reinsurance Co. v. Continental Ins. Co., No. 03 Civ. 3227, 2003 WL 22743829, at *6 (S.D.N.Y. Nov 20, 2003). Thus this factor is not decisive one way or the other.
5. Ability to Compel Unwilling Witnesses
Neither jurisdiction provides an advantage in the ability of the parties to compel unwilling witnesses. No party has set forth any witnesses who would refuse to appear in either forum; therefore, this factor is also neutral.
6. Relative Means of the Parties
No party has indicated that it will not be able to sustain the expenses of litigating in either jurisdiction. This factor cannot be considered absent documentary proof of any economic hardship that would flow to either party as a result of transferring this action. See Federman Assocs. v. Paradigm Medical Indus., Inc., No. 96 Civ. 8545, 1997 WL 811539, at *4 (S.D.N.Y. Apr. 8, 1997).
7. Forum's Familiarity with Governing Law
The forum's familiarity with the governing law favors neither the Southern District of New York nor the Southern District of Florida. Patent law is federal law and "any district court may handle a patent case with equal skill." Bionx Implants, 1999 WL 342306, at *5;Recoton Corp, v. Allsop. Inc., 999 F. Supp. 574, 578 (S.D.N.Y. 1998).
8. Plaintiff's Choice of Forum
"Attention must always be paid . . . to the eighth factor — `the weight accorded the plaintiff's choice of forum' — for `unless the balance is strongly in favor of the defendant, the plaintiff's choice of forum should rarely be disturbed.'" Amersham Pharmacia Biotech, 11 F. Supp.2d at 730 (citing Ford Motor Co. v. Ryan, 182 F.2d 329, 330 (2d Cir. 1950)). However, as set forth above, in this action, the importance of plaintiff's choice of forum is greatly diminished for two reasons.
First, the forum selected by plaintiff for this action, the Southern District of New York, has only a tenuous connection to the operative facts of the litigation. See e.g. Fontana v. E.A.R., 849 F. Supp. 212, 215 (S.D.N.Y. 1994). Second, it is plaintiffs who have filed actions in two forums. Bristol contends that it filed in Florida only to preserve its rights: it feared it would not have proper in personam jurisdiction over Andrx, LLC in New York. Only because Bristol believed Andrx, LLC to be a necessary party, it filed the second suit. Therefore, Bristol believes its choice of the Southern District of New York as a forum should still be afforded credit, especially because it has already sought to have the Florida action transferred to the Southern District of New York. (Trans. Oral Arg. before Judge Huck, Sept. 5, 2003, 15:3-6). Nevertheless, plaintiffs' double-filing does cut against its choice of the Southern District of New York.
9. Trial Efficiency and the Interests of Justice Based on the Totality of the Circumstances
The parties assert that a trial in their respective chosen forums would be more efficient and just. As Bristol points out, this Court has already presided over a trial on the same patent underlying this action and has rendered a decision on that matter. See Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA. Inc., No. 01 Civ. 5572, 2003 WL 22434211 (S.D.N.Y. Oct. 27, 2003). To the extent that the parties intend to litigate the same issues here, this factor weighs against a transfer. Bristol believes that the Court's familiarity with "active ingredients" in the tablets, and problems Bristol faced in trying to market a successful tablet free of interaction problems, as well as the Court's exposure to expert testimony, will be relevant. (Plt.'s Mem. In Opp. to Mot. to Dismiss, p. 22). Andrx counters that the issues in this trial will be sufficiently distinct to prevent a duplication of effort in familiarizing a second judge with the facts at issue. (Aff. Blischak ¶ 17-19). TheTeva action involved a lubricant in the patent, and the issue here relates to other excipients. ( Id) As proof of the fact that the issues in the two litigations are perceived by the parties as being different, Andrx quotes Bristol from a discovery dispute in the Southern District of Florida action where Bristol objected to turning over the documents that related to Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA. Inc. because Bristol considered those papers to be "irrelevant and not reasonably calculated to lead to admissible evidence." (Def.'s Reply in Supp. of Mot. to Dismiss, p. 9).
Transferring this case to the Southern District of Florida will still serve judicial economy in that the case will cover different issues and this Court's familiarity may not be relevant. The case is also already underway in the Southern District of Florida and there is a scheduled trial date of February 23, 2004. (Def.'s Mot. to Dismiss, Exh. B). Although the action was recently stayed, Judge Huck has told the parties to prepare the case for litigation in Florida, and to continue discovery proceedings. (Trans. Oral Arg. before Judge Huck, Sept. 5, 2003, 15:22-16:18). It is in the interests of judicial economy to avoid a duplication of efforts and to have these two lawsuits consolidated into one action.
In light of the fact that the motion to transfer this action is being granted, the Court will not consider Andrx's alternative request to dismiss this action for lack of personal jurisdiction. The Court can transfer an action pursuant to section 1404(a) without resolving whether personal jurisdiction exists over the defendants in the transferor forum.See Fort Knox Music Inc. v. Baptiste, 257 F.3d 108, 111-12 (2d Cir. 2001).
III. Conclusion
Andrx has made a clear showing that this case should be transferred, both for the convenience of the parties and in the interest of justice. Therefore, for the reasons set forth above, this action is transferred to the Southern District of Florida.
SO ORDERED