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FIRST HORIZON PHARMACEUTICAL v. BRECKENRIDGE PHARMACEUTICAL

July 20, 2004.

FIRST HORIZON PHARMACEUTICAL CORP., Plaintiff,
v.
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.

BACKGROUND

  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 nationwide.

  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.)

  LEGAL STANDARDS

  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).

  ANALYSIS

  I. Venue is Appropriate in Both the Transferee and Transferor Districts

  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 ...


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