The opinion of the court was delivered by: Shadur, District Judge.
MEMORANDUM OPINION AND ORDER
Rockwell International Corporation ("Rockwell") sues Eltra Corporation
("Eltra") for infringement of two United States patents:
(1) Patent No. 4,029,947 ("Patent 947"), issued June
14, 1977 to Rockwell as assignee of co-inventors
Gregory Evans and Robert Caswell, and
(2) U.S. Patent Re. 30,679 ("Patent 679"), a July
14, 1981 reissue of Patent 947 to Rockwell.
Eltra has moved under 28 U.S.C. § 1404 (a) that this action be
transferred to the United States District Court for the Central District
of California. For the reasons stated in this memorandum opinion and
order Eltra's motion is granted.
Graphic Systems Division ("MGD," from its pre-Rockwell-acquisition
corporate name Miehle-Goss-Dexter) is an Illinois based wholly owned
subsidiary*fn1 of Rockwell. In the early 1970s MGD decided to enter the
"pre-press field," a decision that resulted in the development of the
Metro-Set phototypesetter, the device incorporating Patents 947 and 679.
MGD did not have the technical ability to develop Metro-Set. But under
Rockwell's Technology Transfer Program ("TTP") one part of the Rockwell
organization can avail itself of technological expertise in another
part, in much the same way as hiring an outside consultant. MGD originated
the idea for development, defined specifications and submitted them to
engineers in Rockwell's Autonetics Division for development of an
appropriate device. Metro-Set was thus developed by Rockwell engineers
located in its California facility. Their work was done for MGD on a
"contractual basis," with MGD "paying" for the services and overseeing
When Metro-Set was completed Rockwell obtained Patent 947 and turned
the device over to MGD in Chicago. MGD then handled all sales, service
and further engineering. After a number of years of successful sales, MGD
sold the Metro-Set product line to Information International, Inc.
("Triple-I"), a California corporation. Triple-I became executory owner
of the patents, to take effect after this action is completed. All
negotiations for the sale, and all executions of sale documents, took
place in Chicago.
There are thus four sets of actors involved in this action. Eltra, the
alleged infringer, is a New York based corporation with nine regional
sales offices, including locations in Illinois and California. Metro-Set
was invented for MGD by Rockwell employees in California. Metro-Set was
then manufactured and sold by MGD in Illinois. Both patents are being
used by California-based Triple-I, their equitable owner.
Section 1404(a) Principles
Section 1404(a) provides:
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.
Rockwell first contends the action originally could not have been brought
in California. On that score 28 ...