Wesley-Jessen Corp. v. Pilkington Visioncare, Inc.

157 F.R.D. 215, 1993 U.S. Dist. LEXIS 20461, 1993 WL 738404
District Court, D. Delaware·Decided October 25, 1993·No. Civ. A. No. 93-268-RRM·Published·Cited by 13 cases

Opinion

OPINION

McKELVIE, District Judge.

This is a patent infringement case. In a complaint filed on June 8, 1993, Wesley-Jessen Corporation alleges Pilkington Vision-care, Inc. and Pilkington Barnes-Hind, Ltd. are infringing three of its patents for colored contact lenses and methods for making those lenses. The case is currently scheduled for a two week jury trial beginning on Monday, June 6, 1994.

Pilkington Barnes-Hind, Ltd. has moved to be dismissed for lack of personal jurisdiction and Pilkington Visioncare has moved to transfer the balance of the claims to the Northern District of California. This is the Court’s decision on the motion for a change of venue. Concurrently with this Opinion the Court is issuing an Opinion on the motion to dismiss.

CHANGE OF VENUE PURSUANT TO 28 U.S.C. § im(a)

Section 1404(a) of Title 28 of the United States Code reads as follows:

For the convenience of the 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.

As the plaintiffs choice of forum is the paramount consideration in the determination of any transfer request, a party seeking [217]*217a transfer has the burden of establishing that a balancing of the interests identified in the statute tips strongly in favor of a transfer. Shutte v. Armco Steel Corporation, 431 F.2d 22 (3rd Cir.1970). See also Norwood v. Kirkpatrick, 349 U.S. 29, 75 S.Ct. 544, 99 L.Ed. 789 (1955).

FACTS

The following is a brief review of the information in the record relevant to a balancing of the interests identified in the statute.

A. The Parties

Wesley-Jessen is a Delaware corporation engaged in the manufacture and sale of contact lenses and is the assignee of U.S. patent Nos. 4,582,402, 4,704,017 and 4,720,188, which relate to the development of a contact lens that is “tinted” by applying a pattern of colored dots to the lens surface. It markets its colored contact lenses made pursuant to the patents as “Durasoft 2 Colors,” “Durasoft 3 Colors,” and “Complements.”

Wesley-Jessen’s executive offices and marketing departments are in Chicago, Illinois. It manufactures its patented lenses in Puerto Rico and Illinois and has its research and development departments in Des Plaines, Illinois. Wesley-Jessen is a wholly-owned subsidiary of Schering Corporation, which is headquartered in New Jersey. Schering is, in turn, a wholly owned subsidiary of Scher-ing-Plough Corporation, which is also headquartered in New Jersey.

Pilkington Visioncare (“Visioncare”) is a Delaware corporation that sells a complete line of eye care products, including glasses, contact lenses, cleaning solutions and other related supplies. Visioncare has developed and markets its own line of tinted contact lenses under the brand name “Natural Touch.” Visioncare’s corporate headquarters are in Menlo Park, California, and its primary research, development, marketing, sales and administrative operations are located in Sunnyvale, California.

Visioncare is an indirectly wholly owned subsidiary of Pilkington PLC, a United Kingdom corporation. Pilkington Barnes-Hind, Ltd. is an indirect, wholly owned subsidiary of Pilkington PLC. Its headquarters are in Southampton, England.

Visioncare’s process for entrapping dyes in the lens material was developed in Sunnyvale, California. Pilkington Barnes-Hind, Ltd. manufactures its Natural Touch lenses in England.

B. Witnesses and Access to Evidence

Visioncare’s scientific, testing and research records relating to the development of the Natural Touch lenses are in Sunnyvale, and the principal developers of the lens method and other potential witnesses either are employed at Visioncare’s Sunnyvale facility or reside in California.

The bulk of Wesley-Jessen’s documents are stored at its counsel’s offices in New York. The inventor of the patents-in-suit is retired and lives in New Jersey, as does the attorney who prosecuted the patents-in-suit and the former vice-president of sales and marketing, both of whom now work for Schering-Plough.

C. Other Matters Relevant to the Interests of Justice

The parties have identified three other factors they contend the Court should consider in weighing whether or not granting the motion would be in the interests of justice. First, the Plaintiff asserts that the Court has some familiarity with the subject matter of this action, as the patents-in-suit were the subject of a prior lawsuit Wesley-Jessen brought in this district. See Wesley-Jessen Corporation v. Ciba Vision Corporation, C.A. No. 90-663-RRM. That case was settled prior to the pre-trial conference. Second, according to the Administrative Office of the Courts’ Judicial Workload Schedule, for the period ending September, 1992, there were an average of 441 cases pending per judgeship in the Northern District of California, and only 227 per judgeship in Delaware. Third, according to those statistics, the median time to trial for civil cases in the Northern District for that time period was 20 months, compared to 19 months in Delaware.

[218]*218 DISCUSSION

I. Balancing the Convenience of the Parties and Witnesses

Visioncare is headquartered in California, and its documents and most of the fact witnesses it expects to call to testify at the trial are there. It argues that it would be much more convenient for it to litigate and try this case in California, rather than in Delaware. Visioncare also argues that Wesley-Jessen is unable to counterbalance these facts by showing that it would be more convenient for Wesley-Jessen to litigate and try this case in Delaware, rather than in California.

For three reasons, the Court finds Vision-care has failed to show that the convenience of the parties and witnesses favors a transfer of this action from Delaware to California. The first reason relates to Visioncare’s status as an enterprise engaged in business throughout the United States. If Visioncare were a local or regional business that targeted a market in San Francisco or on the West Coast, it might be able to identify particular and unique problems that a smaller, local business would have in defending itself in a forum that is on the other side of the country. For example, a smaller management team may find it difficult to do business throughout different time zones and at greater distances than it had otherwise anticipated. As Visioncare is a substantial corporation that operates in the national market place and as it has developed its business in anticipation of doing business around the country, it has not been able to identify any unique or unusual burden that this litigation places on its business operations.

A second reason for finding Vision-care has failed to show that the convenience of the parties and witnesses favors a transfer of this action from Delaware to California relates to Visioncare’s status as a Delaware corporation. In some senses, Delaware is Visioncare’s home. It is, for example, treated as a citizen of this state for the purposes of determining jurisdiction and venue.

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Wesley-Jessen Corp. v. Pilkington Visioncare, Inc., 157 F.R.D. 215, 1993 U.S. Dist. LEXIS 20461, 1993 WL 738404 (D. Del. 1993).

157 F.R.D. 215 (Wesley-Jessen Corp. v. Pilkington Visioncare, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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