03-CV-0651E(F)United States District Court, W.D. New York.
March 30, 2004


[1] This decision may be cited in whole or in any part.

JOHN T. ELFVIN, Senior District Judge

Plaintiffs (“A A”)[2] filed a declaratory judgment action on August 28, 2003 seeking declarations that, inter alia, their products do not infringe the patents or trade dress rights of defendant (“CBI”) and that certain CBI patents are invalid and unenforceable.[3]
On November 18 CBI filed a motion to transfer venue to the Western District of Texas pursuant to 28 U.S.C. § 1404(a) (2000 Supp. 2003). This motion was argued and submitted on February 6, 2004. For the reasons set forth below, CBI’s motion will be denied.

Section 1404(a) provides that

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“[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.”

In addressing a motion to transfer, this Court must answer two questions: (1) whether AA could have filed this action in the Western District of Texas[4] and (2) whether the convenience of the parties and witness and the interests of justice favor transfer.[5]
When addressing the second prong, district courts consider factors including (1) plaintiffs’ choice of forum, (2) the locus of the operative facts, (3) the convenience and relative means of the parties, (4) the convenience of witnesses, (5) the availability of process to compel unwilling witnesses to testify at trial, (6) the location of evidence, (7) the forum’s familiarity with the governing law, (8) trial efficiency and (9) the interests of justice.[6] No single factor is determinative.[7]

The moving party has the burden of justifying a transfer of venue by clear and convincing evidence.[8] Moreover, “the presumption against transferring venue is a strong

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one, and the rule in this Circuit is that plaintiff’s choice of forum will not be disturbed unless the movant shows that the balance of convenience and justice weighs heavily in favor of transfer.”[9] In other words, “unless the balance is strongly in favor of the defendant, the plaintiff’s choice of forum should rarely be disturbed.”[10] This determination lies in the district court’s sound discretion.[11]

Applying these factors to the present case, this Court finds that CBI has not made a clear and convincing showing that this case should be transferred to the Western District of Texas. First, as noted above, plaintiffs’ choice of forum is not to be lightly disturbed,

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especially where one of the plaintiffs, AA USA, resides in this district.[12] Although A A USA is a Delaware corporation, CBI has offered no evidence that A A USA maintains its principal place of business outside this district.[13] Second, the loci of operative facts appear to be equally divided.[14] Consequently, factors 3 through (and including) 8 set forth above are neutral factors in deciding this motion.[15] Finally, although the interests of judicial

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economy favor transfer to the Western District of Texas,[16] such alone cannot satisfy CBI’s strong burden in demonstrating that the transferee district is more convenient — especially in light of the presumption favoring plaintiffs’ choice of forum.[17] Consequently, the fact that the majority of relevant factors are neutral in conjunction with the deference accorded to plaintiffs’ choice of forum indicates that CBI has failed to make a clear and convincing showing that this case ought to be transferred to the Western District of Texas.

Accordingly, it is hereby ORDERED that defendant’s motion to transfer venue is denied.

[2] Plaintiff AA Jewellers Limited (“AA Canada”) is a Canadian corporation and AA Jewelers, Inc. (“AA USA”) is a Delaware corporation. Compl. ¶¶ 5-6. Plaintiffs will be collectively referred to as AA. Plaintiffs and defendant design, manufacture, market and distribute jewelry products.
[3] CBI, in its Answer, withdrew its assertion that AA infringed patent numbers 389, 770, 392, 204 and 384,903. Consequently, the only patent remaining in issue is patent number 382,831. Def.’s Mem. of Law, at 2 n. 1. AA filed suit in response to a cease and desist letter that it received from CBI in early August of 2003.
[4] Plaintiffs do not dispute that they could have filed this suit in the Western District of Texas. See Pls.’ Mem. of Law, at 4 n. 3.
[5] Lencco. Racing Co. v. Arctco, Inc., 953 F. Supp. 69, 71 (W.D.N.Y. 1997).
[6] See Ahern v. N. Techs. Int’l Corp., 206 F. Supp.2d 418, 421 (W.D.N.Y. 2002).
[7] Citigroup Inc. v. City Holding Co., 97
F. Supp.2d 549, 561 (S.D.N.Y. 2000); Flanagan v. Armco. Steel Co., 1997 WL 461995, at *1 (W.D.N.Y. 1997) (“No single factor is dispositive, and the factors are not meant to be used in a strict mathematical formula.”).
[8] See, e.g., Millennium, L.P. v. Dakota Imaging, Inc., 2003 WL 22940488, at *6 (S.D.N.Y. 2003) (citing Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 218 (2d Cir. 1978) for the proposition that the burden is on the moving party “to make a clear and convincing showing that transfer is proper”) Hernandez v. Blackbird Holdings, Inc., 2002 WL 265130, at *1 (S.D.N.Y. 2002) (“To overcome this burden, the moving party must demonstrate through clear and convincing evidence that the interests of justice require transfer to a venue other than the one chosen by the plaintiff.”); Mpower Communications, Corp. v. VOIPLD.COM, Inc., 2004 WL 178444, at *1 (W.D.N.Y. 2004) (“Unless the movant makes a `clear and convincing showing,’ the motion [to transfer] will be denied.”).
[9] Hernandez, supra note 8, at *1 (internal quotations omitted); see also Ford Motor Co. v. Ryan, 182 F.2d 329, 330 (2d Cir.) (holding that the moving party must make “out a strong case for a transfer”), cert. denied, 340 U.S. 851 (1950) Filmline (Cross-Country) Prods., Inc. v. United Artists Corp., 865 F.2d 513, 521 (2d Cir. 1989) (citing Ford Motor Co. with approval).
[10] Ford Motor Co., supra note 9, at 330.
[11] “Filmline, supra note 9, at 520; Gateway Cos. v Vitech Am., Inc., 2002 WL 662893, at *1 (2d Cir. 2002) (citin Filmline with approval); Mpower, supra note 8, at *1 (“District courts have `considerable discretion’ in balancing these factors.”); Flanagan, supra note 7, at *1 (quoting Red Bull Assocs. v. Best Western Int’l, Inc., 862 F.2d 963, 967 (2d Cir. 1988) for the proposition that “[s]ection 1404(a) reposes considerable discretion in the district court to adjudicate motions for transfer according to an individualized, case-by-case consideration of convenience and fairness”) (internal quotations omitted).
[12] Mpower, supra note 8, at *1; Steuben Foods, Inc. v. Morris, 2002 WL 1628061, at *5 (W.D.N.Y. 2002).
[13] Inasmuch as AA USA maintains its principal place of business in this district, this case is distinguishable fro Orthoarm, Inc. v. Am. Orthodontics Corp., 2002 WL 450069, at *1 (W.D.N.Y. 2002) and Bassili v. Chu, 242 F. Supp.2d 223, 232 (W.D.N.Y. 2002). Orthoarm is also distinguishable on the ground that a second action was pending in the transferee district.
[14] Plaintiffs seek declarations that, inter alia, (1) CBI’s patents are invalid and unenforceable and (2) that plaintiffs did not infringe CBI’s patents. Evidence concerning the first issue exists in the Western District of Texas. See, e.g., Lever Bros. Co. v Procter Gamble Co., 23 F. Supp.2d 208, 210-211 (D. Conn. 1998) (granting patentee’s motion to transfer a declaratory judgment action challenging its patents to the district where the patentee was headquartered because that was where the evidence concerning patent validity and enforceability was located). But see Aerotel, Ltd. v. Sprint Corp., 100 F. Supp.2d 189, 197 (S.D.N.Y. 2000) (holding that, with respect to claims that a patent is invalid and unenforceable, the locus of operative facts factor is “not geographically dependent”). Evidence concerning the second issue exists in this district as well as in Ontario, Canada. See, e.g., Orthoarm, supra note 13, at *1 (“[I]n a patent infringement case the locus of operative facts is where the allegedly infringing product was designed and developed.”) Lencco, supra note 5, at 71 (“Courts have found that the preferred forum for an infringement claim is in the district where the alleged infringement occurred.”) (citing cases). Indeed, plaintiffs’ non-infringement claim is essentially the same as the assertion of a defense to an infringement claim. Findwhat.com v. Overture Servs., Inc., 2003 WL 402649, at *6 (S.D.N.Y. 2003) (noting that the locus of operative facts is the same for infringement actions as well as declaratory judgment actions concerning claims of non-infringement).
[15] With respect to the fifth factor set forth above — the availability of process to compel witnesses to testify at trial —, CBI has not identified any witnesses who are unwilling to travel to this district to testify. Indeed, CBI’s witnesses are its own employees, whom CBI will presumably make available for trial. See Mpower, supra
note 8, at *3. Moreover, borrowing from Judge Larimer’s opinion i Mpower, this Court notes that “[i]ts weather notwithstanding, [Buffalo] is not Siberia, and is easily accessible from [Texas] by air or other means.” Ibid.
[16] As noted by CBI, the number of pending cases per judge in the Western District of Texas is approximately 250 less than the number of pending cases per judge in this district. Def.’s Mem. of Law, at 9.
[17] In re Nematron Corp. Sec. Litig., 30 F. Supp.2d 397, 407 (S.D.N.Y. 1998) (“Judicial economy, although a relevant consideration, is insufficient on its own to support a transfer motion.”).

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