Motion to transfer venue is denied
Ethicon Endo-Surgery, Inc. v. Hologic, Inc., and Suros Surgical Systems, Inc., C.A. No. 09-580-JJF, October 15, 2009.
Farnan, J. Defendants’ motion to transfer venue is denied.
Through this action, plaintiff alleges that defendants’ breast biopsy device is infringing four patents-in-suit which generally related to tissue extraction devices used during breast biopsies. The parties are currently involved in other litigation both in this Court and elsewhere. Plaintiff brought an infringement action against one of the defendants in the Southern District of Ohio regarding related technology (the “Ohio Action”). That case is scheduled to begin trial November 2009. The same defendant initiated suit against plaintiff in the District of Delaware also regarding related technology (the “Delaware Action”). Trial in that matter is scheduled for June 2010. Defendants are related entities and are both Delaware corporations while plaintiff is an Ohio corporation. Generally, plaintiff’s choice of forum is given paramount consideration. However, this factor is given less weight where the plaintiff does not bring suit in its home turf. Defendants contend that this litigation should be transferred to the Southern District of Ohio where the same parties are engaged in litigation regarding similar albeit different technologies. Although plaintiff is not a Delaware corporation, the Court finds that public and private considerations do not warrant transfer. At this point, the Ohio Court is more familiar with that patents-in-suit. However, because this action involves a different accused product and two patents not asserted in the Ohio Action, the Ohio court would have to do additional discovery and perform additional claims construction at the same time that this Court would be conducting discovery with similar technologies in the pending Delaware Action. Moreover, the fact that the defendant initiated action against the plaintiff in Delaware, even though the parties were engaged in similar litigation in Ohio, indicates that the defendant does not consider Delaware to be an inconvenient forum. Therefore, defendants’ motion to transfer is denied.
