C. R. Bard, Inc. v. Angiodynamics, Inc.

156 F.Supp.3d 540

C. R. Bard, Inc. and Bard Peripheral Vascular, Inc., Plaintiffs,

v.Angiodynamics, Inc., Defendant.

Civ. No. 15-218-SLR

United States District Court, D. Delaware.

Signed January 12, 2016

John G. Day, Esquire, Tiffany Geyer Lydon, Esquire, and Andrew C. Mayo, Esquire of Ashby & Geddes, Wilmington, Delaware. Counsel for Plaintiff. Of Counsel: Vincent J. Belusko, Esquire and Nicole M. Smith, Esquire of Morrison & Foerster LLP.

Richard L. Horwitz, Esquire, David E. Moore, Esquire, and Stephanie E. O'Byrne, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel: Christopher A. Hughes, Esquire, Regina M. Lutz, Esquire, Danielle V. Tully, Esquire, and Michael B. Powell, Esquire of Cadwalader, Wickersham & Taft LLP.

MEMORANDUM OPINION

ROBINSON, District Judge

I. INTRODUCTION

On March 10, 2015, plaintiffs C. R. Bard, Inc. and Bard Peripheral Vascular, Inc. (“collectively, “plaintiffs”) filed this patent suit against defendant, alleging infringement of U.S. Patent Nos. 8,475,417 (the “'417 patent”), 8,545,460 (the “'460 patent”), and 8,805,478 (the “'478 patent”) (collectively, “the patents-in-suit”) by certain implantable power-injectable port products, including Smart Port® products. (D.I. 1) Presently before the court are defendant's motion to dismiss (D.I. 9) and motion to transfer (D.I. 11), as well as plaintiffs' motion for leave to file a sur-reply in response to defendant's reply in support of its motion to dismiss (D.I. 22).

The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

II. BACKGROUND

C. R. Bard, Inc. is a corporation organized and existing under the laws of the State of New Jersey with its principal place of business in Murray Hill, New Jersey. Bard Peripheral Vascular, Inc. (a subsidiary of C. R. Bard, Inc.) is a corporation organized and existing under the laws of the State of Arizona with its principal place of business in Tempe, Arizona. Defendant is a corporation organized under the laws of the State of Delaware with its principal place of business in Latham, New York. (D.I. 1 at, ¶¶ 3-5)

The '417 patent is titled “Assemblies for Identifying a Power Injectable Access Port” and issued July 2, 2013. The '460 patent is titled “Infusion Apparatuses and Related Methods” and issued October 1, 2013. The '478 patent is titled “Methods of Performing a Power Injection Procedure Including Identifying Features of a Subcutaneously Implanted Access Port for Delivery of Contrast Media” and issued August 12, 2014. Plaintiffs assert infringement of claims 8, 12, and 13 of the '417 patent, claims 1, 2, and 4 of the '460 patent, and claims 1, 3, 5, 8, 9, and 11 of the '478 patent. (D.I. 1 at ¶¶ 19, 27, 35)

III. MOTION TO TRANSFER

A. Standard

Section 1404(a) of Title 28 of the United States Code grants district courts the authority to transfer venue “[f]or the convenience of parties and witnesses, in the interests of justice ... to any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). Much has been written about the legal standard for motions to transfer under 28 U.S.C. § 1404(a). See, e.g., In re Link_A_Media Devices Corp. , 662 F.3d 1221 (Fed.Cir.2011) ; Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir.1995) ; Helicos Biosciences Corp. v. Illumina, Inc. , 858 F.Supp.2d 367 (D.Del.2012).

Referring specifically to the analytical framework described in Helicos, the court starts with the premise that a defendant's state of incorporation has always been “a predictable, legitimate venue for bringing suit” and that “a plaintiff, as the injured party, generally ha[s] been ‘accorded [the] privilege of bringing an action where he chooses.’ ” 858 F.Supp.2d at 371 (quoting Norwood v. Kirkpatrick , 349 U.S. 29, 31, 75 S.Ct. 544, 99 L.Ed. 789 (1955) ). Indeed, the Third Circuit in Jumara reminds the reader that “[t]he burden of establishing the need for transfer ... rests with the movant” and that, “in ruling on defendants' motion, the plaintiff's choice of venue should not be lightly disturbed.” 55 F.3d at 879 (citation omitted).

The Third Circuit goes on to recognize that,

[i]n ruling on § 1404(a) motions, courts have not limited their consideration to the three enumerated factors in § 1404(a) (convenience of parties, convenience of witnesses, or interests of justice), and, indeed, commentators have called on the courts to “consider all relevant factors to determine whether on balance the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum.”

Id. (citation omitted). The Court then describes some of the “many variants of the private and public interests protected by the language of § 1404(a).” Id.

The private interests have included: plaintiff's forum of preference as manifested in the original choice; the defendant's preference; whether the claim arose elsewhere; the convenience of the parties as indicated by their relative physical and financial condition; the convenience of the witnesses—but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and the location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum) .

The public interests have included: the enforceability of the judgment; practical considerations that could make the trial easy, expeditious, or inexpensive; the relative administrative difficulty in the two fora resulting from court congestion; the local interest in deciding local controversies at home; the public policies of the fora; and the familiarity of the trial judge with the applicable state law in diversity cases.

Id. (citations omitted) (emphasis added).

B. Analysis

With the above “jurisdictional guideposts” in mind, the court turns to the “difficult issue of federal comity” that transfer motions present. E.E.O.C. v. Univ. of Pa. , 850 F.2d 969, 976 (3d Cir.1988). Plaintiffs do not challenge that venue would also be proper in the District of Utah. As such, the court does not address this further. See 28 U.S.C. § 1404(a) ; (D.I. 16)

Both Delaware and Utah are legitimate forums in which to pursue the litigation at bar. Defendant is incorporated in Delaware and sells its products in various states (including Delaware and Utah). A party's state of incorporation is a traditional and legitimate venue, as is the locus of a party's business activities. Defendant contends that plaintiffs' choice of forum should be given little to no deference as Delaware is not “home turf” for either plaintiff and non-party Bard Access Systems (incorporated in Utah and based in Salt Lake City) is “primarily responsible for devising [plaintiffs'] purported vascular access port technology.” (D.I. 12 at 14) Defendant argues that the District of Utah is the preferred forum mainly because a prior suit, C. R. Bard, Inc. v. AngioDynamics, Inc. , Civ. No. 12-35, filed January 11, 2012 (“the Utah case”), is currently pending in the District of Utah and the cases involve “substantially overlapping subject matter.” (D.I. 12 at 4) Defendant concludes that it is more convenient and efficient to litigate in Utah. Defendant's argument that plaintiffs are forum shopping due to “unfavorable rulings” is no different than plaintiffs' choosing a venue that it believes to be more favorable to its claims for whatever reason. Cellectis S.A. v. Precision Biosciences, Inc. , 858 F.Supp.2d 376, 385 (D.Del.2012). Given that “convenience” is separately considered in the transfer analysis, the court declines to elevate defendant's choice of venue over the choice of plaintiffs. That plaintiffs have historically been accorded the privilege of choosing their preferred venue for pursuing their claims remains a significant factor.

A claim for patent infringement arises wherever someone has committed acts of infringement, to wit, “makes, uses, offers to sell, or sells any patented invention” without authority. See generally 35 U.S.C. § 271(a) ; Red Wing Shoe Co., Inc. v. Hockerson – Halberstadt, Inc. , 148 F.3d 1355, 1360 (Fed.Cir.1998) (an infringement claim “arises out of instances of making, using, or selling the patented invention”). Defendant points out that “for the period beginning on June 1, 2014, and ending on May 8, 2015, it sold only $372,711 worth of product in Delaware, while it sold nearly double that amount in Utah,” presumably to argue that the alleged infringement is more properly focused in Utah. (D.I. 12 at 8) Plaintiff responds that the populations of the two states are different, making the comparison of product sales immaterial to the determination of where the claims arose. (D.I. 16 at 10 n.4) As defendant has sold product in Delaware, the asserted patent claims may be said to arise in Delaware.

The Third Circuit in Jumara indicated that, in evaluating the convenience of the parties, a district court should focus on the parties' relative physical and financial condition. Here, plaintiffs are much larger than defendant,¹ leading defendant to conclude that plaintiffs have “the endurance and resources to bring serial and parallel suits across multiple forums.” (D.I. 12 at 15) Defendant argues that it “would be significantly inconvenienced, should [this action] proceed in [the] District of Delaware, while [the Utah case] proceeds in the District of Utah.” (D.I. 12 at 16) In response, plaintiffs point out that defendant is “a large Delaware corporation with the resources to litigate in this district,” which defendant has previously chosen to do.² (D.I. 16 at 10)

With respect to the convenience of the witnesses, it is not whether witnesses are inconvenienced by litigation but, rather, whether witnesses “actually may be unavailable for trial in one of the fora” that is the relevant consideration in this analysis. Jumara , 55 F.3d at 879. Defendant argues that certain inventors reside in Utah (and no longer work for plaintiffs). Additionally, “because inventors working in Utah...