United States District Court, Northern District of California
April 11, 2003
JENS OLE SORENSEN, PLAINTIFF,
DAIMLER CHRYSLER AG, ET AL., DEFENDANTS
The opinion of the court was delivered by: Maxine M. Chesney, United States District Judge
ORDER GRANTING DEFENDANTS' MOTION FOR TRANSFER OF VENUE; VACATING HEARING
(Docket No. 33)
Before the Court is the motion of defendants DaimlerChrysler AG ("DCAG") and Mercedes-Benz USA, LLC ("MBUSA") to transfer the above-titled action to the District of New Jersey, pursuant to 28 U.S.C. § 1404 (a). Plaintiff Jens Ole Sorensen ("Sorensen") has filed opposition, to which defendants have replied.*fn1
Having considered the papers submitted in support of and in opposition to the motion, the Court deems the motion appropriate for decision on the papers, VACATES the hearing scheduled for March 28, 2003, and rules as follows.
Sorensen alleges that he invented a process for stabilized injection molding and thereafter obtained U.S. Patent No. 4,935,184 ("the `184 patent"). Sorensen alleges that defendants engage in the manufacture and sale of automobiles, including automobiles imported for sale into the United States. According to Sorensen, defendants' imported automobiles include "lens assemblies manufactured using the `184 patent process." (See Compl. ¶ 49.) The lens assemblies, which defendants refer to as "SLK taillights" or "light assemblies," are manufactured in Germany by non-party Schefenacker Vision Systems Germany GmbH & Co. ("Schefenacker"). (See Defs.' Mot. Ex. 2 at 2-3.) The automobiles incorporating the lens assemblies are manufactured in Germany by defendant DCAG, (see Jung Decl. ¶ 2), and are sold and marketed in the United States by defendant MBUSA. (See Barnard Decl., filed February 19, 2003, ¶ 1.)
Defendants argue that the District of New Jersey is a more convenient forum than the Northern District of California ("Northern District").*fn2
"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." 28 U.S.C. § 1404 (a). In order to transfer an action under § 1404(a), a district court must find "that the district court is one where the action might have been brought and that the convenience of parties and witnesses in the interest of justice favor transfer." See Hatch v. Reliance Ins. Co., 758 F.2d 409, 414 (9th Cir.) (internal quotations omitted), cert. denied, 474 U.S. 1021 (1985).
Here, the action "might have been brought" in the District of New Jersey, as defendant DCAG is an alien corporation see 28 U.S.C. § 1391 (d) (providing "alien may be sued in any district"), and defendant MBUSA resides in New Jersey. See 28 U.S.C. § 1400 (b) (providing action for patent infringement may be brought in district where defendant resides).
With respect to the issue of convenience, a district court must "weigh multiple factors in its determination whether transfer is appropriate in a particular case." See Jones v. GNC Franchising, Inc., 211 F.3d 495, 498 (9th Cir.), cert. denied, 531 U.S. 928 (2000). One important factor is the convenience of witnesses. See id. at 499 (holding where "more of the relevant witnesses" resided in plaintiffs chosen forum, district court properly weighed that finding against transfer). Indeed, as one district court observed, this factor is "often the most important factor." See Steelcase Inc. v. Haworth Inc., 41 U.S.P.Q.2d 1468, 1470 (C.D. Cal. 1996).
In their initial disclosures made to Sorensen on January 29, 2003, defendants identify four witnesses employed by MBUSA in New Jersey, whom defendants assert are likely to offer testimony concerning importation, distribution, sales and/or marketing decisions made by MBUSA. (See Defs.' Mot. Ex. I at 2-3.) Additionally, defendants initially disclosed three witnesses employed by DCAG in Germany, two of whom, defendants assert, are likely to offer testimony concerning DCAG's design and development of the light assemblies, and a third who, according to defendants, is likely to offer testimony concerning DCAG's communications with non-party Schefenacker, the manufacturer of the light assemblies. (See Defs.' Mot. Ex. 2 at 2-3.) Defendants also initially disclosed witnesses in Germany who are employed by Schefenacker. (See Defs.' Mot. Ex. 2 at 3.)*fn3 Sorensen, in his initial disclosures made to defendants on January 27, 2003, agrees that "officers and/or employees of Defendants and/or their fabricators" are witnesses on such issues as the design and manufacture of the accused products, sales figures, pricing decisions, and defendants' decisions made after being notified of Sorensen's claim of infringement. (See Defs.' Mot. Ex. 3 at 2.) Consequently, all parties are in accord that witnesses employed by defendants and Schefenacker,*fn4 all of whom work in either New Jersey or Germany, are potential witnesses in the instant action.
Sorensen, the inventor and a resident of the Cayman Islands, initially disclosed both himself and Paul Brown ("Brown"), an employee of non-party Turn-Key-Tech, LLC ("Turn-Key"),*fn5 a company located in the Southern District of California, as potential witnesses. (See Defs.' Mot. Ex. 3 at 1.) According to Sorensen, he and Brown are witnesses as to the patented technology and identification of accused products. (See Defs.' Mot. Ex. 3 at 2.) Defendants agree that both Sorensen and Brown are likely to be called as witnesses at trial. (See Defs.' Mot. Ex. I at 3:18-20; Defs.' Reply at 10:18-20.)
In his opposition, Sorensen additionally identifies as witnesses Jens Erik Sorensen, Trustee of SRD Trust, (see Jens Erik Sorensen Decl. ¶ 1), and John Tang-Pedersen ("Tang-Pedersen"), Turn-Key's Plant Engineer. (See Tang-Pedersen Decl. ¶ 12.) Jens Erik Sorensen states he is likely to testify as to his efforts to license the `184 patent, (see Jens Erik Sorensen Decl. ¶ 6); Tang-Pedersen states he is likely to testify as to the chain of custody of automobile lamp lenses currently in Turn-Key's warehouse located in the Southern District of California. (See Tang-Pedersen Decl. ¶¶ 2-3; Brown Decl. ¶ 2.) Defendants argue the materiality of such testimony is questionable in light of the fact that Sorensen did not disclose either of those witnesses in his initial disclosures, thus indicating that as of January 27, 2003, Sorensen was not of the opinion that Jens Erik Sorensen and Tang-Pedersen were "likely to have discoverable information." See Fed.R.Civ.P. 26(a)(1) (providing party making initial disclosures "must" disclose name of "each individual likely to have discoverable information"). Sorensen has not had an opportunity to explain why he omitted Jens Erik Sorensen and Tang-Pedersen from plaintiffs initial disclosures. In any event, there is no showing that either individual resides in the Northern District. Jens Erik Pedersen works in the Southern District of California*fn6 and Tang-Pedersen, as noted, works for a company in that district as well.
In sum, no potential witness resides in or near the Northern District of California. All such witnesses reside and/or work in New Jersey, Germany, the Cayman Islands, or the Southern District of California, with a sizable majority residing a significant distance from the Northern District.*fn7 Thus, if the action remains in this forum, all witnesses will be required to travel significant distances to attend trial. Even Brown, who resides in the Southern District of California, will be required to travel hundreds of miles to the Northern District.*fn8 By contrast, if the action is transferred to the District of New Jersey, the four potential witnesses working in New Jersey will not be required to travel any significant distance, and those witnesses traveling from Germany will face a considerably shorter trip. On balance, this factor weighs in favor of transfer.
In Jones, the Ninth Circuit identified eight additional factors that a district court should consider: "(1) the location where the relevant agreements were negotiated and executed, (2) the state that is most familiar with the governing law, (3) the plaintiffs choice of forum, (4) the respective parties' contacts with the forum, (5) the contacts relating to the plaintiffs cause of action in the chosen forum, (6) the differences in the costs of litigation in the two forums, (7) the availability of compulsory process to compel attendance of unwilling non-party witnesses, and (8) the ease of access to sources of proof." See id. at 498-99. The Court addresses these factors in turn.
At the outset, the Court notes that because the action does not involve an agreement, the first factor identified in Jones is not applicable and, as the action arises solely under federal law, the second factor likewise is inapplicable to the instant action.
Turning to the third factor enumerated in Jones, although "there is ordinarily a strong presumption in favor of the plaintiffs choice of forum . . . the presumption applies with less force when the plaintiff or real parties in interest are foreign." See Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 (1982). As Sorensen is a resident of the Cayman Islands, (see Compl. ¶ 1), Sorensen's choice of the Northern District is entitled to little deference. Although Sorensen asserts that the additional plaintiff, SRD Trust, is a "California trust," he does not contend that SRD Trust resides in the Northern District. To the extent any evidence as to residency has been submitted, that evidence strongly suggests that SRD Trust resides in the Southern District of California because, as noted above, Jens E. Sorensen, Trustee of SRD Trust, is employed in the Southern District of California. Moreover, even where a plaintiff has chosen a forum close to his place of residence, district courts have applied a "general rule" that, in actions based on a claim of patent infringement, a plaintiffs choice of forum is accorded little deference where the central facts of the lawsuit occur outside the plaintiffs chosen forum. See, e.g., S.C. Johnson & Son, Inc. v. Gillette Co., 571 F. Supp. 1185, 1187-88 (N.D. Ill. 1983). In such circumstances, "the preferred forum is that which is the center of the accused activity." See id. The "center of the accused activity" is the forum where the defendant is alleged to have developed, tested, researched, produced, marketed, and made sales decisions concerning the accused product. See id. at 1188 (holding preferred forum was district in which defendant conducted "all development, testing, research, and production" and made "virtually all marketing and sales decisions" concerning accused product); see also Saint-Gobain Calmar, Inc. v. Nat'l Products Corp., 230 F. Supp.2d 655, 660 (E.D. Pa. 2002) (holding plaintiffs choice of forum entitled to less deference where "center of gravity of the alleged infringement" occurred in another forum where defendant assembled and shipped accused device). Here, the center of the accused activity is Germany, where all design and manufacturing decisions were made, or New Jersey, where all marketing and sales decisions were made. See Jung Decl. ¶ 2; Barnard Decl., filed February 19, 2003, ¶ 5; see L.G. Electronics Inc. v. First Int'l Computer, Inc., 138 F. Supp.2d 574, 590 (D.N.J. 2001) (holding "center of gravity of the allegedly infringing activity" in Taiwan or California where one defendant manufactured accused device in Taiwan and second defendant make marketing and sales decisions in California). Consequently, Sorensen's choice of the Northern District is entitled to little, if any, deference.
Next, there is no showing that either Sorensen or SRD Trust have any contacts with either the Northern District or New Jersey. MBUSA, a subsidiary of DCAG, has contacts with both the Northern District and New Jersey. Although MBUSA markets automobiles throughout the United States, (see Barnard Decl., filed February 19, 2003, ¶¶ 2-3), and maintains a regional office in the Northern District, (see Barnard Decl., filed March 14, 2003, 114), MBUSA's principal place of business, where it employs 800 people, is in New Jersey. (See Barnard Decl., filed February 19, 2003, ¶¶ 1, 4, 5.) Moreover, as noted, the New Jersey headquarters is the place where MBUSA makes all marketing and sales decisions concerning the accused products. (See id. ¶ 5.) Accordingly, the fourth Jones factor weighs in favor of transfer.
As to contacts relating to the plaintiffs cause of action, both parties' contacts with the Northern District appear to relate to the instant claims only to the extent that infringing products may have been sold in the Northern District. Those contacts, however, are likely to exist in every district in the United States, including the District of New Jersey. By contrast, as discussed above, one of the centers of the accused activity is New Jersey. Accordingly, the fifth Jones factor weighs in favor of transfer.
As to the costs of litigation, defendants argue that because those MBUSA employees who are potential witnesses work in New Jersey and the DCAG employees who are potential witnesses reside in Germany, defendants' costs will increase if such witnesses must travel to California instead of New Jersey. Sorensen argues that it would be a burden to bring witnesses and evidence to New Jersey. In short, defendants argue that transfer will lower their costs, while Sorensen argues that transfer will increase his costs. No party, however, shows that its costs will significantly differ depending on whether the instant matter is heard in the Northern District or the District of New Jersey. Accordingly, the sixth factor weighs in favor of neither party.
With respect to the seventh of the factors enumerated in Jones, the parties' ability to compel attendance of unwilling non-party witnesses, defendants identify witnesses employed by non-party Schefenacker, while Sorensen has identified witnesses associated with non-party Turn-Key. Neither party, however, asserts that any non-party witness is unwilling to travel to either the Northern District or New Jersey. Accordingly, the seventh Jones factor weighs in favor of neither party.
As to the final Jones factor, defendants assert that documents likely to be used as evidence are located in MBUSA's records in New Jersey and DCAG's records in Germany. Sorensen asserts that Turn-Key maintains a warehouse in the Southern District of California, which facility contains "samples" of automobile lenses that have been analyzed "for possible infringement," (see Brown Decl. ¶ 2, 10), and that such samples likely will be offered as evidence. No party identifies any potentially relevant documents or tangible items located in the Northern District. Assuming the above-referenced evidence would have to be transported a considerable distance for trial or other purposes, there is no showing that moving such material to either the Northern District or New Jersey would hamper or otherwise affect the accessibility of such evidence. Accordingly, the eighth Jones factor weighs in favor of neither party.
In sum, the most probative of the factors discussed above weigh in favor of transferring the instant complaint to the District of New Jersey and the remaining factors weigh in favor of neither party. Significantly, no factor weighs in favor of retention of the action in the Northern District given that neither Sorensen nor SRD Trust resides in the Northern District, that no potential witness resides in the Northern District, and that no party has identified any potential evidence located in the Northern District. Accordingly, the Court finds that transfer of the instant action to the District of New Jersey is appropriate.
For the reasons stated above, defendants' motion for transfer of venue to the District of New Jersey is hereby GRANTED.
The Clerk of the Court shall transfer the above-titled action to the District of New Jersey.
This order closes Docket No. 33.
IT IS SO ORDERED.