Lynn v. Becton Dickinson & Co.

LAWRENCE A. LYNN, Plaintiff, v. BECTON DICKINSON AND COMPANY, Defendant.

Civil Action No. 2:21-cv-5004

United States District Court, S.D. Ohio, Eastern Division

March 2, 2022

Michael H. Watson, Judge.

OPINION AND ORDER

CHELSEY M. VASCURA, UNITED STATES MAGISTRATE JUDGE.

Plaintiff Lawrence A. Lynn, an Ohio citizen, brings this action against Defendant, Becton Dickinson and Company, a New Jersey citizen, alleging that Defendant breached a license agreement when it failed to pay Plaintiff royalty payments related to blunt cannula penetration medical valves. This matter is before the Court on Defendant's Motion to Transfer Venue (ECF No. 16) and Defendant's Motion for Referral to Mediation and for Temporary Stay of Proceedings and Discovery During Mediation (ECF No. 17). For the following reasons both of Defendant's Motions are DENIED.

I. BACKGROUND

Plaintiff is an Ohio resident who has invented various forms of medical technology, including “methods and processes for Blunt Cannula Penetration Medical Valves.” (Am. Compl. ¶ 9, ECF No. 23.) In 1998, Plaintiff entered into various agreements with Defendant, culminating in the Patent License Agreement for the Blunt Cannula Penetration Medical Valves, effective November 13, 1998 (the “Patent License Agreement”). (Id. at ¶ 17.) Under the Patent License Agreement, Plaintiff granted an exclusive license to Defendant to exercise rights under specified patents and other technology owned by him related to the Blunt Cannula Penetration Medical Valves (“BCPMVs”) in exchange for royalty payments. (Id. at ¶ 18.) The parties amended the Patent License Agreement in 2005 and 2008. (Id. at ¶¶ 27-28.)

Defendant's part in negotiating and executing these agreements took place via its wholly-owned subsidiary, Becton Dickinson Infusion Therapy Systems, Inc. (“BD Infusion”), which is headquartered in Sandy, Utah. (Harding Decl. ¶¶ 4, 8, ECF No. 16-1.) On two occasions during 1998-1999, Plaintiff traveled to Sandy, Utah to meet with BD Infusion representatives in connection with the Patent License Agreement's negotiation, execution, and performance. (Id. at ¶ 8.) Likewise, BD Infusion executives traveled to Ohio to meet with Plaintiff in connection with the Patent License Agreement's negotiation and execution. (Lynn Decl. ¶ 7.) During the time since the Patent License Agreement was executed, manufacturing, testing, and marketing of the BCPMVs took place primarily at BD Infusion's facilities in Utah. (Harding Decl. ¶ 8, ECF No. 16-1.) BD Infusion (and/or Defendant in Franklin Lakes, New Jersey, or San Antonio, Texas) issued royalty payments under the Patent License Agreement in Utah, and Plaintiff received those royalty payments in Ohio. (Id.; Lynn Decl. ¶ 9.) The parties have had many telephonic and email communications between Plaintiff in Ohio and Defendant in Utah or New Jersey. (Lynn Decl. ¶ 8.)

Plaintiff alleges that Defendant violated the Patent License Agreement and its Amendments by failing to make royalty payments to him beginning in August 2019. (Am. Compl. ¶ 42, ECF No. 23.) Plaintiff commenced this action on October 8, 2021, advancing claims for breach of contract and declaratory relief. (Compl., ECF No. 1; Am. Compl. ¶¶ 41-49, ECF No. 23.) On December 27, 2021, Defendant filed the present Motion to Transfer Venue, contending that the parties' convenience favored transferring this action under 28 U.S.C. § 1404(a) to the District of Utah, where Defendant's employees, non-party witnesses, and records are located. (ECF No. 16.) Defendant simultaneously filed a Motion for Referral to Mediation and for Temporary Stay of Proceedings and Discovery During Mediation, contending that the case would benefit from court-ordered mediation and that the parties' and the court's resources would be conserved by staying discovery pending mediation. (ECF No. 17.) Plaintiff filed a Memorandum in Opposition to each Motion on February 7, 2022. (ECF Nos. 27-28.) Defendant filed Reply briefs on March 1, 2022. (ECF Nos. 35-36.)

II. DEFENDANT'S MOTION TO TRANSFER VENUE

A. Standards Governing Transfer of Venue

Under 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 where it might have been brought.” The moving party bears the burden of demonstrating that a change of venue is warranted. Centerville ALF, Inc. v. Balanced Care Corp., 197 F.Supp.2d 1039, 1049 (S.D. Ohio 2002). District courts have broad discretion in ruling on a motion to transfer under § 1404. Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988). This provision codifies the doctrine of forum non conveniens for the subset of cases in which the transferee forum is another federal Court. Atl. Marine Constr. Co. v. United States Dist. Court, 571 U.S. 49, 61 (2013). A district court considering a § 1404(a) motion must evaluate both the parties' convenience and various public-interest considerations. Id. at 62. The moving party must demonstrate that transfer would allow for the litigation to proceed in a more convenient forum, not merely “a forum likely to prove equally convenient or inconvenient.” Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964).

The analysis involves three steps. Hefferan v. Ethicon Endo-Surgery Inc., 828 F.3d 488, 493 (6th Cir. 2016). First, the court determines the amount of deference to be accorded the plaintiff's choice of forum. Id. “The Court must give foremost consideration to the plaintiff's choice of forum, and the balance must weigh ‘strongly in favor of a transfer' before the Court should grant a Section 1404(a) motion.” W. & S. Life Ins. Co. v. Morgan Stanley Mortg. Cap., Inc., No. 1:11-CV-00576, 2011 WL 6372845, at *4 (S.D. Ohio Dec. 20, 2011) (citing Nicol v. Koscinski, 188 F.2d 537 (6th Cir. 1951); Lewis v. ACB Bus. Servs., 135 F.3d 389, 413 (6th Cir. 1998), Artisan Dev. v. Mountain States Dev. Corp., 402 F.Supp. 1312 (S.D. Ohio 1975)); see also Atl. Marine, 571 U.S. at 63 (“Because plaintiffs are ordinarily allowed to select whatever forum they consider most advantageous (consistent with jurisdictional and venue limitations), we have termed their selection the ‘plaintiff's venue privilege.'”) (quoting Van Dusen v. Barrack, 376 U.S. 612, 635 (1964)). Generally, the plaintiff's choice of his home forum is accorded substantial deference because it presumptively convenient. Hefferan, 828 F.3d at 493.

Step two requires the defendant to establish the availability of an adequate alternative forum. Ordinarily, this requirement will be satisfied when the defendant is amenable to process in the other jurisdiction. Solari v. Goodyear Tire & Rubber Co., 654 Fed.Appx. 763, 766 (6th Cir. 2016) (quoting Piper Aircraft Co. v. Reyno, 454 U.S. 235, 254 n.22 (1981). “In rare cases an alternative forum may provide a remedy so ‘clearly inadequate or unsatisfactory that it is no remedy at all'-for example ‘where the alternative forum does not permit litigation of the subject-matter of the dispute.'” Id. (quoting Piper Aircraft, 454 U.S. at 254 & n.22 (1981)). “Law that is simply less favorable to the plaintiff in the alternative forum is not so extraordinary as to render that forum inadequate.” Hefferan, 828 F.3d at 495.

Step three requires the court to consider the private and public interests implicated by dismissing or retaining the case in the plaintiff's chosen forum. Hefferan, 828 F.3d at 493. The relevant private and public factors include access to witnesses and evidence; availability of compulsory process; cost of obtaining witnesses, willing or otherwise; administration difficulties for the trial court; local interest in the litigation; and the law applicable to the controversy. Id. (citing Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508-09 (1947)).

B. Analysis

After undertaking Hefferan's three-step analysis, the Court finds that on balance, the relevant factors favor maintaining the litigation in the Southern District of Ohio.

At step one, the undersigned finds that Plaintiff's selection of his home forum should be afforded substantial deference, as it is presumed to be convenient. See Hefferan, 828 F.3d at 493; W. & S. Life Ins. Co., 2011 WL 6372845, at *4. Defendant's repeated assertions that the case has “little to no connection to Ohio apart from Dr. Lynn himself” are unpersuasive, as Dr. Lynn himself is a critical part of this case. (E.g., Def.'s Reply 17 n. 8, ECF No. 35.) Indeed, as one of the parties to the contract at issue, Dr. Lynn in part negotiated and executed the Patent License Agreement in Ohio and received royalty payments under the Agreement in Ohio. Moreover, BD Infusion executives traveled to Ohio to meet with Plaintiff in connection with the Patent License Agreement's negotiation and execution. Accordingly, the undersigned does not find this is the type of case in which the plaintiff's choice of forum is entitled to little weight because “the cause of action has little connection with the forum.” Bartell v. LTE Club Operations Co., No. 2:14-CV-00401, 2015 WL 770341, at *6-7 (S.D. Ohio Feb. 23, 2015), report and recommendation adopted, 2015 WL 1730415 (S.D. Ohio, Apr. 14, 2015).

At step two, the parties do not dispute that the District of Utah would be an adequate alternative forum, in that subject-matter jurisdiction and venue would be proper in, and Defendant would be amenable to process issuing from, that court. See Sky Tech. Partners, LLC v. Midwest Research Inst., 125 F.Supp.2d 286, 291 (S.D. Ohio 2000).

Step three requires the Court to balance a number of factors related to convenience and justice. In resolving part two of this § 1404(a) analysis, a district court evaluates various private-interest factors (which have been recited in a number of ways), including:...