United States District Court, N.D. Illinois
January 29, 2004.
CALMEDICA, LLC, Plaintiff -v- NOVOSTE CORPORATION and RUSH-PRESBYTERIAN-ST. LUKE'S MEDICAL CENTER, Defendant's
The opinion of the court was delivered by: WAYNE ANDERSEN, District Judge
MEMORANDUM OPINION AND ORDER
This matter is before the Court on defendant Novoste Corporation's
motion to sever the claims filed by plaintiff Calmedica LLC against
co-defendant Rush-Presbyterian-St. Luke's Medical Center. Defendant
Novoste Corporation also has moved to transfer this case to the United
States District Court for the Northern District of Georgia.
Rush-Presbyterian-St. Luke's Medical Center has filed a motion to join
Novoste's motion to sever and transfer venue. For the following reasons,
the motion to sever and transfer venue is granted.
This is a patent infringement dispute in which Calmedica has sued
Novoste and Rush-Presbyterian-St. Luke's Medical Center ("Rush").
Calmedica owns two patents which are directed to a method (U.S. Patent
No. 5,302,168) and apparatus (U.S. Patent No. 5,411,466) used for the
treatment of coronary artery disease. Novoste manufactures and sells a
catheter system known as the Beta-Cath system for use in the treatment of
coronary heart disease. Rush uses Novoste's Beta-Cath system for the
treatment of patients who suffer from coronary heart disease
and was one of the many medical centers that participated in the
Beta-Cath system clinical trials that led to FDA approval of the product.
Calmedica filed a complaint alleging separate claims against Novoste
and Rush. Calmedica alleges that Novoste directly infringes its apparatus
patent by manufacturing and selling the Beta-Cath system and that Novoste
also is liable for inducement of infringement because it is causing, and
has caused, others to infringe its method patent. Calmedica also alleges
that Rush directly infringes both patents because Rush uses the Beta-Cath
system to treat its patients. Both Novoste and Rush have filed answers
denying infringement and have plead that the patents-in-suit are invalid
and unenforceable. Novoste has filed a motion to sever the claims against
Rush and seeks to transfer the action to the Northern District of
Georgia, Rush has joined Novoste's motion.
A. Severance of the Claims Against Rush
Novoste has moved to sever the action against Rush, arguing that Rush
is a peripheral defendant and not a necessary party to the underlying
dispute between Calmedica and Novoste. Pursuant to Federal Rule 21,
"[a]ny claim against a party may be severed and proceeded with
separately." It is not uncommon for courts to sever claims by patent
holders against peripheral defendants in order to transfer the litigation
to a more appropriate forum. See, e.g., Safe Bed Technologies Co. v.
KCI USA, Inc., 2002 WL 1769991 (N.D.III. July 31, 2002)(severing
claims against a hospital that leased the accused product from the
manufacturer as a peripheral defendant); Ambrose v. Steelcase,
Inc., 2002 WL 1447871 (N.D. Ill. July 3, 2002) (severing claims
against a reseller of the accused infringing product).
Resolution of Calmedica's infringement claims against Novoste likely
will resolve the same issues underlying any potential infringement claims
that Calmedica may have against Rush. To prove that Novoste induced
infringement of Calmedica's method patent, Calmedica must prove that
someone directly infringed the patent by performing the patented method.
It is not disputed that Novoste does not perform the patented method.
However, to prove infringement of Calmedica's method patent, it is not
imperative to prove Rush's alleged infringement.
Rush is merely one of Novoste's customers located throughout the United
States that has purchased, used and continue to use the Beta-Cath system.
Calmedica can establish the direct infringement element of its inducement
claim by proving that anyone practiced the patented method using the
Beta-Cath system supplied by Novoste. There is nothing particularly
special about determining the alleged infringement of Rush as compared to
any of Novoste's other customers using the Beta-Cath system.
It is transparent to this Court that Calmedica has named Rush as a
defendant in this matter solely to justify venue in this Court. This is
not a case in which a patent holder has sued a manufacturer along with
its top purchasers or distributors. Rather, Rush is merely one of 59
hospitals worldwide that participated in the Beta-Cath clinical trials
and one of Novoste's many customers located throughout the United States
that is using the Beta-Cath system. In light of this as well as the
arguments addressed below in resolving the transfer issue, we conclude
that it is appropriate to sever the claims against Rush.
B. Transfer of Venue
Novoste also has moved to transfer this case to the Northern District
of Georgia. Pursuant to 28 U.S.C. § 1404(a), "[f]or 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." The moving
party has the burden to establish that the transfer forum is "clearly
more convenient" than the transferor court. Coffey v. Van Dom Iron
Works, 796 F.2d 217, 219-220 (7th Cir. 1986).
Transfer is appropriate pursuant to section 1404(a) when the moving
party demonstrates that: (1) venue is proper is the transferor district;
(2) venue and jurisdiction are proper in the transferee district; and (3)
a transfer will serve the convenience of the parties, the witnesses and
the interests of justice. Anchor Wall Systems, Inc. v. R&D
Concrete Products, Inc., 55 F. Supp.2d 871, 873 (N.D. Ill 1999).
With the severance of Rush, venue is proper in this Court as well as
in the Northern District of Georgia. Thus, resolution of this issue
centers principally around the third factor.
The convenience and fairness inquiry for a transfer pursuant to section
1404(a) is determined on a case by case basis by looking at the private
interests of the parties and witnesses and the public interest of the
court. Coffey, 796 F.2d 219. Private interests generally
include: (1) plaintiff's choice of forum; (2) the situs of material
events; (3) the relative ease of access to sources of proof in each
forum; and (4) convenience to the parties. Anchor Wall Systems,
Inc., 55 F. Supp.2d at 873.
1. Plaintiffs Choice of Forum
Although Calmedica filed suit in this District, its choice of forum has
diminished significance because Calmedica is not a resident of the
Northern District of Illinois. Thus, this factor is simply another factor
in the mix and is not given any additional weight. H.B. Sherman Mfg.
Co. v. Rain Bird Nat'l Sales Corp., 979 F. Supp. 627, 630 (N.D. Ill.
1997). The weight
given to a plaintiff's choice of forum is further lessened if the
chosen forum lacks any significant connection to the lawsuit. Anchor
Wall Systems, Inc., 55 F. Supp.2d at 874. In this case, Calmedica
is not located in Illinois and does not appear to have any connection
with this forum. Thus, little weight will be accorded Calmedica's choice
of forum in this case.
2. Situs of Material Events
In patent cases, courts often focus on "the alleged infringing
activities of the defendant and the employees and documents that evidence
these activities," and the situs of the material events generally is
where the alleged infringing activities occurred. Sitrick v.
Dreamworks LLC, 2003 WL 21147898, at * 3 (N.D. Ill. May 14, 2003).
In this case, the Northern District of Illinois has a de minimus
connection with the operative facts giving rise to the alleged
infringement while the Northern District of Georgia has a much greater
connection because Novoste's research, development, manufacturing and
sales activities are based in Georgia. Thus, consideration of the situs
of material events strongly favors the transfer of this matter to
3. Convenience of the Witnesses and Parties
The convenience of the witnesses often is viewed as the most important
factor to consider in evaluating whether a transfer would be appropriate.
Ambrose, 2002 WL 1447871, at * 3. Novoste has identified 16
witnesses of which 13 of those witnesses are located in Georgia. Neither
party has identified any individual witnesses in Illinois.
With regard to convenience of the parties, neither party is located in
Illinois, but one party is located in Georgia. Also, it is not a
significant burden for Calmedica to travel from California to Georgia
rather than to Illinois as in either instance Calmedica cannot avoid
travel. Calmedica seeks to justify Illinois as its choice of forum on the
ground that its counsel is located in Chicago.
However, this does not tilt the scales in favor of Calmedica in the
transfer analysis. See Hemstreet v. Scan-Optics, Inc., 1990 WL
36703, at * 4 (N.D. Ill. Mar. 9, 1990) (stating that "[t]he convenience
and location of counsel have never been accorded weight in a transfer
analysis"). Thus, convenience for the key witnesses and Novoste weighs in
favor of transferring this matter while no material or relevant
counterbalancing inconveniences have been identified for Calmedica.
4. Public Interests of Justice
The final consideration is whether a change of venue would serve the
overall interests of justice. Public interests include a court's
familiarity with applicable law and the desirability of resolving
controversies in its locale. Anchor Wall Systems, Inc.,
55 F. Supp.2d at 874. Both forums are equally familiar with federal patent
law. However, because this lawsuit does not have any significant
connection to this forum, the interest of justice is better served by
transferring this matter to the Northern District of Georgia where the
situs of material events occurred and where a majority of the witnesses
and documents are located.
Having examined each of the factors enumerated above, we conclude that
the continued litigation of this case in the Northern District of Georgia
is clearly more convenient and in the interests of justice.
For the foregoing reasons, Novoste's motion to sever the claims against
its co-defendant Rush-Presbyterian-St. Luke's Medical Center is granted,
and this mater is transferred to the United States District Court for the
Northern District of Georgia.
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