United States District Court, N.D. Illinois, Eastern Division
July 20, 2004.
FIRST HORIZON PHARMACEUTICAL CORP., Plaintiff,
BRECKENRIDGE PHARMACEUTICAL, INC., and SCIENTIFIC LABORATORIES, INC., Defendants.
The opinion of the court was delivered by: AMY J. ST. EVE, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff First Horizon Pharmaceutical Corporation ("First
Horizon") filed this action alleging patent infringement against
Defendants Breckenridge Pharmaceutical, Inc. ("Breckenridge") and
Scientific Laboratories, Inc. ("SLI"). Defendants have moved to
dismiss Plaintiff's complaint, or alternatively, to transfer
venue to the Southern District of Florida pursuant to
28 U.S.C. § 1404(a) and the doctrine of forum non conveniens. Based on the
Court's review of the relevant factors, Defendants' motions to
transfer venue to the Southern District of Florida are granted.
First Horizon is a Delaware Corporation with its principal
place of business in Alpharetta, Georgia. (R. 10-1, Am. Compl. ¶
2.) Breckenridge is a Florida corporation with its principal
place of business in Boca Raton, Florida. (Id. at ¶ 3.)
Defendant Breckenridge also maintains offices in Berlin,
Connecticut. (16-1, Def.'s Mot. Trans. Ven. ¶ 11.) Defendant SLI
is a Maryland corporation with a place of business in Lanham,
Maryland (R.10-1, Am. Compl. at ¶ 4.) None of these companies
maintains an office in Illinois. First Horizon and Breckenridge both develop and distribute pharmaceutical products and sell them
On January 21, 2003, Plaintiff obtained a patent relating to
tannate pharmaceutical composition. ("492 patent.") (R. 10-1, Am.
Compl. ¶ 5.) In a letter dated March 7, 2003, Plaintiff notified
Defendant Breckenridge of its 492 patent. (Id. at ¶ 6.) In or
about February, 2004, Breckenridge commenced selling Duotan PD, a
product intended for the relief of nasal congestion. (16-1,
Def.'s Mot. Trans. Ven. p. 1.) On April 1, 2004, First Horizon
sent Breckenridge a letter accusing the company of illegally and
willfully infringing on two of Plaintiff's patents, the 492
patent and a second patent, the 415 patent. (Id.) Plaintiff
ordered Defendant to discontinue and withdraw its Duaton product
from the market that same day. (Id.) Upon receiving the letter,
Breckenridge's attorney immediately contacted Plaintiff's General
Counsel and requested time to evaluate and properly investigate
the merits of Plaintiff's claim. (Id.) First Horizon's counsel
agreed to allow Breckenridge time to investigate the matter
before taking action. (Id.) Two weeks later, First Horizon
filed this action for patent infringement against Breckenridge.
(R. 1-1, Compl.) Breckenridge subsequently filed a complaint in
the Southern District of Florida seeking declaratory relief
relating to both the 492 and 415 patents.
On or about May 20, 2004, Plaintiff First Horizon filed an
amended complaint adding Defendant SLI, the manufacturer of
Defendant's Duotan product. Plaintiff alleged SLI's involvement
in the infringement of patent 492. SLI also moved to dismiss
Plaintiff's claim or alternatively, to transfer venue to the
Southern District of Florida. (R. 26-1, SLI's Mot. to Dismiss.)
Defendants have moved to transfer this case to the Southern
District of Florida pursuant to 28 U.S.C. § 1404(a). "Section
1404(a) authorizes a district court to transfer a case in the interest of justice and for the convenience of the parties and
witnesses." Lexecon Inc. v. Milberg Weiss Bershad Hynes &
Lerach, 523 U.S. 26, 34, 118 S.Ct. 956, 961, 140 L.Ed.2d 62
(1998). Under Section 1404(a), the Court may transfer a case if
the moving party demonstrates the following: (1) venue was proper
in the transferor district; (2) venue and jurisdiction would be
proper in the transferee district; and (3) the transfer will
serve the convenience of the parties and the witnesses as well as
the interests of justice. Vandeveld v. Christoph, 877 F. Supp. 1160,
1167 (N.D. Ill. 1995).
In analyzing the third prong of Section 1404(a), the Court must
look to both private and public interests. United Air Lines,
Inc. v. Mesa Airlines, Inc., 8 F. Supp.2d 796, 798 (N.D. Ill.
1998). The private interests include: (1) plaintiffs' choice of
forum; (2) the situs of the material events; (3) the relative
ease of access to sources of proof; and (4) convenience to the
witnesses and parties. Id. Public interests include, among
other things, the court's familiarity with applicable law.
Chukwu v. Air France, 218 F. Supp.2d 979, 989 (N.D. Ill.
2002). "The weighing of factors for and against transfer
necessarily involves a large degree of subtlety and latitude, and
therefore, is committed to the sound discretion of the trial
judge." Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219
(7th Cir. 1986).
I. Venue is Appropriate in Both the Transferee and Transferor
Venue in patent infringement actions is dictated by
28 U.S.C. § 1400(b), which provides that "any civil action for patent
infringement may be brought in the judicial district where the
defendant resides, or where the defendant has committed acts of
infringement and has a regular established place of business."*fn1 Hemstreet v. Caere
Corp., No. 90 C 377, 1990 WL 77920 (N.D. Ill. Jun. 6, 1990). The
residence of a corporate defendant in patent infringement actions
is controlled by § 1391(c), which states that a corporate
defendant is "deemed to reside in any judicial district in which
it is subject to personal jurisdiction at the time the action is
commenced." 28 U.S.C. § 1391(a). The parties do not dispute that
venue is proper in both the Northern District of Illinois and the
Southern District of Florida.
II. The Southern District of Florida is a More Convenient
Forum Than the Northern District of Illinois
In evaluating the third prong of Section 1404(a), the Court
must assess factors relating to both convenience and the
"interests of justice." Defendant "has the burden of
establishing, by reference to particular circumstances, that the
transferee forum is clearly more convenient" than the transferor
court. Coffey, 796 F.2d at 219-20. Transfer generally is
inappropriate if it shifts the inconvenience for one party into
an inconvenience for the other party. Id. ["U]nless the balance
is strongly in favor of the defendant, the plaintiff's choice of
forum should rarely be disturbed." In Re National Presto Indus.,
Inc., 347 F.3d 662, 664 (7th Cir. 2003). Courts give the
plaintiff's choice of forum less deference, however, when it
bears little relation to the suit in question. See Id.
A. Plaintiff's Choice of Forum
Defendant argues that Plaintiff's choice of forum is arbitrary
and that the Court should not reward Plaintiff for "racing to the
courthouse and acting in bad faith." (16-1, Def.'s Mot. to Trans.
Ven. ¶ 3.) Plaintiff asserts that it has meaningful contacts with
the Northern District of Illinois because Plaintiff's patent counsel and the Chairman of
the Board of Directors of First Horizon both reside in Illinois.
Plaintiff also contends that the Court should honor its choice of
forum because First Horizon's largest shareholder has its
principal place of business in the Chicago area and because First
Horizon has twelve full-time sales representatives working in the
While a plaintiff's choice of forum is normally entitled to
substantial deference, it is not absolute and will not overpower
a well-founded motion to transfer. See Bryant v. ITT Corp.,
48 F. Supp.2d 829, 832 (N.D.Ill. 1999). When the plaintiff chooses
a forum that is not its home forum or chooses a forum that does
not have a significant relationship to the material events
leading to the litigation, the plaintiff's choice is given less
First Horizon is a Delaware corporation with its principal
place of business in Georgia. Plaintiff has no offices in the
state of Illinois. Further, the contacts that Plaintiff asserts
to have with Illinois do not support the argument that
Plaintiff's choice of forum should be given substantial
deference. Although Plaintiff's patent counsel is located in
Illinois, convenience of Plaintiff's counsel is not an
appropriate consideration in the transfer analysis. See
Hemstreet, 1990 WL 77920, at *16. Further, even though
Plaintiff's Chairman of the Board resides in Illinois and its
largest shareholder has its principal place of business in
Illinois, First Horizon has failed to identify any connection
between either its Chairman or largest shareholder and this
litigation. While these factors are relevant to the Court's
personal jurisdiction over Plaintiff, they are not dispositive
here. Accordingly, because the Northern District of Illinois is
not the Plaintiff's home forum, and because Plaintiff does not
have meaningful contacts within the state of Illinois,
Plaintiff's choice of forum is entitled to less deference. B. The Location of Material Events
When the material events leading to the litigation do not take
place in the plaintiff's chosen forum, the plaintiff's choice of
forum is given less deference. Dunn v. Soo Line R.R. Co.,
864 F. Supp. 64, 65 (N.D.Ill. 1994). Material events are those that
give rise to the cause of action. Id. Although Breckenridge
distributes and sells Duotan in Illinois, it also distributes and
sells Duotan nationwide. Plaintiff has not identified any
circumstances giving Illinois a stronger connection to the
material events leading to the litigation than other states that
also store and distribute the Duotan product. Furthermore, the
location of material events for purposes of venue is the location
where the defendant's decisions and activities that gave rise to
the claim took place. See Biomet, Inc. v. Stryker Howmedica
Osteonics Corp., No. 03 C 6491, 2004 WL 769358 (N.D. Ill. Apr.
9, 2004) (finding the forum where defendants produced and
distributed the memorandum giving rise to the lawsuit to be to
the location of material events); Von Holdt v. Husky Injunction
Molding Systems Ltd., 887 F. Supp. 185, 188-89 (N.D. Ill. 1995);
S.C. Johnson & Son, Inc. v. Gillette Co., 571 F. Supp. 1185,
1186-87 (N.D. Ill. 1983).
Here, Breckenridge is correct in its assertion that the
material events giving rise to this cause of action occurred in
both Florida and Maryland Florida is the state where
Breckenridge originally made its decision to launch the allegedly
infringing product, Duotan. Von Holdt, 887 F. Supp. at 188-89.
Breckenridge's product is manufactured by SLI in Maryland None
of these events took place in Illinois. Thus, the second factor
in the convenience analysis weighs in favor of transferring this
case to the Southern District of Florida.
C. Relative Ease of Access to Sources of Proof
Defendant Breckenridge argues that because neither Defendant
maintains documents or other tangible evidence relating to the
alleged infringement in Illinois and because none of the parties maintain an office in Illinois, the relative ease of
access to sources of proof weighs in favor of transfer to the
Southern District of Florida. Breckenridge further notes that
upon information and belief, all of Plaintiff's material
documents are located in Georgia. Lastly, Breckenridge relies on
the geographic location of the parties for the proposition that
the Southern District of Florida is a more convenient forum with
regard to the ease of access to sources of proof.
Plaintiff fails to directly address the relative ease of access
to proof factor. Specifically, Plaintiff makes no arguments
regarding the location of its material documents or tangible
evidence relating to the litigation. Rather, Plaintiff argues
that because SLI's documents relating to the manufacture of
Duotan are located in Maryland, the Southern District of Florida
is no more convenient than the Northern District of Illinois.
Plaintiff's argument, however, does not speak to the fact that
most of the material documents leading to the litigation are
located on the east coast where all parties maintain offices. In
terms of transferring documents, the relative ease to sources of
proof is neutral with respect to both SLI and Plaintiff because
both parties must travel by air to either forum. The Southern
District of Florida, however, is clearly more convenient for
Breckenridge because its material documents are located in Boca
Raton, Florida. Thus, because the Southern District of Florida is
more convenient for Breckenridge in the litigation, the third
factor favors transfer to the Southern District of Florida. See
Biomet, 2004 WL 769358, at *5.
D. Convenience of the Parties
In analyzing the convenience of the parties, the Court must
consider "their respective residence and abilities to bear the
expense of trial in a particular forum." Von Holdt,
887 F. Supp. at 188. Breckenridge argues that because none of the
parties' home forum is Illinois and because Breckenridge's home forum is Florida, the convenience of
the parties favors transferring the case to the Southern District
of Florida. Plaintiff relies on airport statistics for the
proposition that travel to Illinois is more convenient for
Plaintiff, Defendant SLI, and Breckenridge's officers located in
Berlin, Connecticut. Because all parties must travel by air to
Illinois, and because all parties, excluding Breckenridge, must
travel by air to Florida, the convenience of the parties factor
slightly favors transfer to the Southern District of Florida.
E. Convenience of the Witnesses
The determination of the convenience of witnesses is often
considered the most important factor in the transfer balance.
Tingstol v. Rainbow Sales, Inc., 18 F. Supp.2d 930, 933 (N.D.
Ill. 1998). In assessing the convenience of the witnesses, courts
consider the "nature and quality of the witnesses' testimony with
respect to the issues of the case." Tingstol, 18 F. Supp.2d at
933. Further, the convenience of non-party witnesses is
substantially more important than the convenience of party
witnesses because the latter are within the party's control.
Int'l Truck and Engine Corp. v. Dow-Hammond Trucks Co.,
221 F. Supp.2d 898, 904 (N.D. Ill. 2002).
Breckenridge's argument that the convenience of the witnesses
weighs in favor of transferring the case to the Southern District
of Florida is persuasive. None of Plaintiff's or Defendants'
witnesses reside in Illinois, nor do the parties employ Illinois
residents. Many of Breckenridge's employee witnesses reside in
the Southern District of Florida. Significantly, the only
non-party witness that Defendant Breckenridge intends to call at
trial Patricia McQueenie resides within the Southern District
Plaintiff first argues that Breckenridge has failed to provide
sufficient information regarding the information on which Ms.
McQueenie intends to rely in her testimony. Breckenridge,
however, need only disclose the nature of the anticipated
testimony and whether the witness can be compelled to testify. See Peterson v. U.S.
Steel Corp., 624 F. Supp. 44, 45 (N.D. Ill. 1985). This Court
believes that Breckenridge has sufficiently stated the nature of
Ms. McQueenie's anticipated testimony. Accordingly, Plaintiff's
first argument fails.
Plaintiff next argues that it may have third-party witnesses
from one or more wholesalers and pharmacies in Illinois.
Plaintiff, however, does not disclose the identity of any of
these witnesses. Plaintiff's failure to identify these witnesses
with more particularity undermines its argument. See Biomet,
2004 WL 769358, at *6. Further, as Breckenridge correctly notes,
there are wholesalers and retailers in Florida whose testimony on
Plaintiff's behalf would be comparable to any testimony made by a
wholesaler or retailer in Illinois.
Accordingly, because Breckenridge's only non-party witness
resides in Florida, and because Plaintiff failed to specifically
identify any non-party witnesses residing in Illinois, the
convenience of the witnesses also weighs in favor of transferring
this case to the Southern District of Florida.
III. The Transfer to the Southern District of Florida Best
Serves the Interests of Justice
The "interests of justice" analysis relates to the efficient
functioning of the courts, not the merits of the underlying
dispute. Coffey, 796 F.2d at 221. The factors considered in
this analysis often include the prospects of a speedy trial, the
relationship of the community to the issue of the litigation, and
the court's familiarity with the applicable law. Int'l Truck and
Engine Corp., 221 F. Supp.2d at 898. Here, the "interests of
justice" analysis weighs in favor of transfer to the Southern
District of Florida.
A. Congestion of Court Dockets and the Likelihood of a Speedy
Defendant Breckenridge relies on the 2003 Federal Court
Management Statistics for the proposition that all parties will
receive a speedier trial in the Southern District of Florida than
in the Northern District of Illinois. The Statistics show that in
the Southern District of Florida, the median time from case
filing to trial is 18.3 months, whereas in the Northern District
of Illinois, the median time from case filing to trial is 26
months. This eight-month difference weighs slightly in
Breckenridge's favor. See Celozzi v. Boot, No. 00 C 3285, 2000
WL 1141568 (N.D. Ill. Aug. 11, 2000).
First Horizon argues that because it filed a motion for
preliminary injunction in the Northern District of Illinois,
transferring this case to Florida would only further delay a
resolution while allowing Defendants to continue manufacturing
and distributing the allegedly infringing product. Plaintiff,
however, is free to pursue its preliminary injunction in the
Southern District of Florida.
B. The Relationship of the Community to the Issue of the
Breckenridge argues that the Southern District of Florida has a
greater connection to the litigation because the Breckenridge
Corporation is located in that district. Plaintiff's only
assertion regarding the relationship of Illinois to the patent
infringement allegations is that Breckenridge sold its product in
Illinois. When the products at the center of the litigation are
distributed nationwide, however, the "community interest" factor
remains neutral. See Biomet, 2004 WL 769358, at *7; Santa's
Best Craft, LLC v. Janning, No. 02 C 9529, 2003 WL 21504522, *4
(N.D. Ill. June 30, 2003).
In assessing the relationship of the community to the issue of
the litigation, it appears that the Southern District of Florida
has a somewhat stronger relationship because it is Breckenridge's
home forum, while none of the parties reside in the Northern
District of Illinois. See Colida v. Kyocera Wireless Corp., No.
02 C 7348, 2003 WL 1741396 (N.D. Ill. Apr. 1, 2003) (deeming the
defendant's home forum to have a substantial connection to the
litigation, despite the fact that the alleged infringement occurred in both
the transferor and transferee forum).
C. The Court's Familiarity with the Applicable Law
In regards to the court's familiarity with the applicable law
surrounding the litigation, it appears that the Southern District
of Florida and the Northern District of Illinois have comparable
knowledge regarding patent infringement. Thus, this factor
IV. Balancing the Factors
Venue is proper in both the Northern District of Illinois and
in the Southern District of Florida. Both the convenience factors
and the interests of justice, however, weigh in favor of
transferring this case to the Southern District of Florida.
Plaintiff's choice of forum is entitled to less deference because
Illinois is not its home forum and because Illinois is not the
location of the material events giving rise to the litigation.
Illinois, in essence, is unrelated to the heart of this
litigation. Further, the convenience of the witnesses favors the
Southern District of Florida because the only identified
non-party witness resides in the state of Florida. Lastly, in
assessing the "interests of justice," it appears that the parties
will receive a speedier trial in the Southern District of Florida
and that the Southern District of Florida has a more substantial
connection to the issues of the litigation than the Northern
District of Illinois. Accordingly, Defendants have carried their
For the foregoing reasons, Defendants' motions to transfer
venue to the Southern District of Florida are granted. This case
is hereby transferred to the Southern District of Florida.
Defendant's motion to dismiss and Plaintiff's motion for a
preliminary injunction are more appropriately left for the