United States District Court, Northern District of Illinois, E.D
April 21, 1982
ROCKWELL INTERNATIONAL CORPORATION, PLAINTIFF,
ELTRA CORPORATION, DEFENDANT.
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 U.S.C. § 1400 (b) provides:
Any civil action for patent infringement may be
brought in the judicial district . . . where the
defendant has committed acts of infringement and has a
regular and established place of business.
Eltra has filed the affidavit of its Los Angeles based Regional Sales
Manager Elvin George Kyle, demonstrating amply that the Central District
of California meets the venue test:
(1) Eltra's Mergenthaler Linotype Company division
has maintained a regional sales office in the Central
District of California (Culver City) since at least
(2) That office has since at least 1981 sold and
serviced the typesetters that allegedly infringe
Because both this district and the proposed transferee district are
thus available forums, it becomes necessary to determine which better
serves the Section 1404(a) considerations: convenience of parties and
witnesses and the interest of justice. Those standards are similar but
not identical to those that control forum non conveniens decisions, as
defined in Gulf Oil Corp. v. Gilbert, 330 U.S. 501
, 508, 67 S.Ct. 839,
848, 91 L.Ed. 1055 (1947). As the Supreme Court said in Norwood v.
Kirkpatrick, 349 U.S. 29
, 32, 75 S.Ct. 544, 546, 99 L.Ed. 789 (1955):
When Congress adopted § 1404(a), it intended to
do more than just codify the existing law on forum non
conveniens. As this Court said in Ex parts Collett,
337 U.S. 55-61 [69 S.Ct. 944-947, 93 L.Ed. 1207],
Congress, in writing § 1404(a), which was an
entirely new section, was revising as well as
codifying. The harshest result of the application of
the old doctrine of forum non conveniens, dismissal of
the action, was eliminated by the provision in §
1404(a) for transfer. When the harshest part of the
doctrine is excised by statute, it can hardly be
called mere codification. As a consequence, we believe
that Congress, by the term "for the convenience of
parties and witnesses, in the interest of justice,"
intended to permit courts to grant transfers upon a
lesser showing of inconvenience. This is not to say
that the relevant factors have changed or that the
plaintiff's choice of forum is not to be considered,
but only that the discretion to be exercised is
And the Court has recently reconfirmed that distinction in Piper Aircraft
Co. v. Reyno, ___ U.S. ___, 102 S.Ct. 252, 264-65, 70 L.Ed.2d 419
One of the more significant changes wrought by Section 1404(a) is in
the weight accorded to a plaintiff's choice of forum, Y4 Design, Ltd.
v. Regensteiner Publishing Enterprises, Inc., 428 F. Supp. 1067, 1070
(S.D. N Y 1977):
Plaintiffs' choice of forum, while still an important
factor in the determination of a motion to transfer,
is no longer given the overriding consideration it may
have once enjoyed under the former doctrine of forum
1 Moore's Federal Practice ¶ 0.145 at 1616-18. Thus while the
movant still retains the burden of making a clear showing why a transfer
is appropriate, plaintiff's choice of forum is but one factor to
consider, Coats Co. v. Vulcan Equipment Co., 459 F. Supp. 654, 657
In short, before a proper determination of convenience
can be made under § 1404(a), close and careful
consideration must be given to all of the relevant
facts and circumstances.
Here the parties have focused primarily on location of witnesses.*fn3
key witnesses located in California and not subject to compulsory
subpoenas in Illinois, forcing Eltra to rely on deposition testimony if
the action is kept here. Rockwell, on the other hand, contends a like
number of important witnesses reside in Illinois.
There is however a substantial difference in the factual underpinning
for the parties' contentions. Eltra points to California residents
Gregory Evans and Robert Caswell (co-inventors of the Patent), Jaroslay
Terleckyj (MGD's manager of the project that led to the development of
Metro-Set), Roger duPlessis, T. E. Martin, R. Scot Clark and Alfred
Fenaughty. All are important witnesses at least on Eltra's related claims
of anticipation by the SEACO prior art and fraud on the Patent and
Trademark Office.*fn4 Under those circumstances the live testimony of
those witnesses would be far superior to the paper record represented by
depositions (or to the possible alternative of videotaped depositions).
Triple-I's California situs is also significant, though it is not
formally a party. It is true that MGD will sustain the immediate economic
benefits and burdens of this action (having reserved them under the sale
contract with Triple-I). But if Rockwell were to lose this action, the
principles of defensive collateral estoppel (Blonder-Tongue Laboratories,
Inc. v. University of Illinois, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d
788 (1971)) would destroy the value of the Patents in Triple-I's hands.
In short, Eltra has presented clear and compelling reasons for transfer
to California. It has discharged its burden of overcoming Rockwell's
choice of forum. And Rockwell has advanced nothing of significance to
place in the other scale. Its principal argument, that most MGD officials
involved in Metro-Set are located in Illinois, is unpersuasive:
(1) All but two of the MGD officials it lists are
still MGD employees. Rockwell can thus use their live
testimony in any forum if it chooses.
(2) Rockwell is impermissibly vague on the content
and relevance of the testimony of the MGD people. It
simply says in a footnote (Memorandum 10):
Each of these witnesses . . . can testify, to the
extent necessary and relevant, relating to one or
more of the following areas: the significance of the
contribution by the Metro-Set typesetter to the
industry; the sales and/or commercial success of the
Metro-Set typesetter; service of the Metro-Set
typesetter; and the negotiations preceding and the
details of the MGD/Triple-I sales agreement.
Of those items the last two seem irrelevant, while the
others are generally of secondary importance.
Under the circumstances, if those witnesses are unwilling to travel to
California their deposition testimony should be adequate. Indeed
Rockwell's sketchy presentation indicates their testimony would likely be
duplicative, with the testimony of a few perhaps sufficing.
Whatever balancing formula is appropriate, then, Eltra must prevail.
Convenience of the parties weighs in favor of California if anything, and
the convenience of witnesses plainly does. "Interest of justice" requires
no different result.*fn5
Eltra's Section 1404(a) motion is granted. This action is transferred
to the United States District Court for the Central District of