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.
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 ...