Addiction & Detoxification Institute, LLC v. Rapid Drug Detox Center

Filing 4

MEMORANDUM Opinion and Order Signed by the Honorable Sharon Johnson Coleman on 3/11/2013:Mailed notice(rth, ) [Transferred from ilnd on 4/18/2013.]

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
ADDICTION & DETOXIFICATION
INSTITUTE, LLC,
Plaintiff,

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v.
RAPID DRUG DETOX CENTER,
Defendant.

Case No. 11-cv-7992
Judge Sharon Johnson Coleman

MEMORANDUM, OPINION, AND ORDER
On November 9, 2011, Plaintiff Addiction & Detoxification Institute, LCC (“Addiction
Detox”), a New Jersey corporation with its principal place of business in Merchantville, New
Jersey, filed a complaint alleging patent infringement against Defendant Rapid Detox Center
(“Rapid Detox”), a Michigan corporation with its principal place of business in Livonia, Michigan.
On March 8, 2012, Defendant filed a motion to transfer venue to the Eastern District of Michigan
pursuant to 28 U.S.C. § 1404(a) (“§ 1404(a)”). For the reasons below Rapid Detox’s motion is
granted.
Background
The United States Patent and Trademark Office issued two patents to Addiction Detox
involving methods of rapidly detoxifying opioid addict patients. Patent 5,789,411 (“Patent ‘411”)
involves detoxification by means of sedation and a narcotic antagonist to relieve a patients
conscious symptoms. Patent 6,004,962 (“Patent ‘962”) involves detoxification by means of
sedation, intubation, ventilation, paralyzing the patient, and injecting an aggressive opioid
antagonist. Addiction Detox’s sole allegation against Rapid Detox is for patent infringement.
Addiction Detox alleges that Rapid Detox has infringed on its patents by making, using, selling or
offering for sale the detoxification procedures described in Patents ‘411 and ‘962.
Legal Standard
28 U.S.C. § 1404(a) provides “for 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 or to any district or division to which all parties have consented.” 28 U.S.C. §
1404 (a). The court may transfer venue when “(1) venue is proper in both the transferor and
transferee court; (2) transfer is for the convenience of the parties and witnesses; and (3) transfer is
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in the interests of justice.” Clear Lam Packaging, Inc. v. Rock-Tenn Co., No. 02 C 7491, 2003 U.S.
Dist. LEXIS 14691, at *10 (N.D. Ill. Aug. 22, 2003); see also Coffey v. Van Dorn Iron Works, 796
F.2d 217, 220 (7th Cir. 1986).
Discussion
In determining a question of transfer pursuant to § 1404(a), venue must be proper in both the
transferor and transferee courts. 28 U.S.C. § 1400(b) provides that venue in patent infringement
cases is proper “where the defendant resides or where the defendant has committed acts of
infringement.” Addiction Detox alleges that Rapid Detox directly infringed on its patents by
making, using, selling, and offering for sale in the United States activities, methods and procedures
claimed in the patents. (Compl. at ¶ 8). The parties do not dispute that Rapid Detox advertised and
offered to sell its alleged infringing procedures nationwide including to Illinois residents.
Accordingly, because Rapid Detox resides in Michigan for purposes of venue and because
Addiction Detox sold or offered for sale the alleged infringing procedures in Illinois, venue in both
the transferor and transferee courts is proper.
Transfer must also be for the convenience of the parties and witnesses. When evaluating the
convenience of the parties and witnesses, courts consider: (1) the plaintiff’s choice of forum, (2) the
situs of the material events, (3) the relative ease and access to sources of proof, (4) the convenience
to the parties, and (5) the convenience of the witnesses. Clear Lam, 2003 U.S. Dist. LEXIS 14691,
at *11.
1. Plaintiff’s Choice of Forum
A plaintiff’s choice of forum is generally entitled to substantial weight and deference.
Plotkin v. IP Axess, Inc., 168 F. Supp. 2d 899, 902 (N.D. Ill. 2001); see also Clerides v. Boeing Co.,
534 F.3d 623, 628 (7th Cir. 2008). However, this deference is lessened where the plaintiff chooses
a forum that is not his home forum or has little connection with the relevant facts giving rise to the
litigation. See Body Sci. LLC v. Boston Sci. Corp., 846 F. Supp. 2d 980, 992-993 (N.D. Ill. 2012).
Here, Addiction Detox’s chosen forum is Illinois. Addiction Detox’s arguments
notwithstanding, its home forum is New Jersey, where it was incorporated and has its principal
place of business. Moreover, the Northern District of Illinois has relatively weak connections with
the operative facts giving rise to the litigation, as only a fraction of the Rapid Detox’s sales are to
Illinois customers. See Body Sci., 846 F. Supp. 2d at 993. Rapid Detox asserts that less than 1% of
its customers reside in Illinois. (Rapid Detox Reply at 6). While Rapid Detox admits that it
advertises its detoxification procedures throughout the United States, including Illinois, “sales alone
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are insufficient to establish a substantial connection to the forum if the defendant’s goods are sold
in many states.” Id. at 992. While Rapid Detox may sell its detoxification procedures to clients
located in Illinois, the allegedly infringing process is performed solely in the Eastern District of
Michigan. (Katz Decl. at ¶ 8). Addiction Detox attempts to argue that the location of its attorneys
in Illinois somehow establishes significant connections weighing against transfer. However, “it is
well-settled that consideration of the convenience of Plaintiff’s counsel is not an appropriate factor
to consider when evaluating transfer.” Body Sci., 846 F. Supp. 2d at 993; see also Chicago, R. I. &
P. R. Co. v. Igoe, 220 F.2d 299, 304 (7th Cir. 1955). Accordingly, this Coiurt gives less deference
to Addiction Detox’s choice of forum and this factor weighs in favor of transfer.
2. Situs of Material Events
In patent infringement actions, “the situs of the injury is the location, or locations, at which
the infringing activity directly impacts on the interests of the patentee.” Body Sci., 846 F. Supp. 2d
at 993. Courts typically focus on the location of the allegedly infringing sales or the alleged
infringer’s place of business; however, where a defendant sells its products throughout the country,
the fact that the defendant also sells its products in Illinois is not determinative. Id. Accordingly,
“in patent infringement cases, the location of the infringer’s principal place of business is often the
critical and controlling consideration because such suits often focus on the activities of the alleged
infringer, its employees, and its documents, rather than upon those of the plaintiff.” Id.
Here, all of the central facts surrounding the patent infringement dispute relate to activities
that took place in Michigan. Rapid Detox argues that the situs of material events is the Eastern
District of Michigan because that is where Rapid Detox has its principal place of business, where
material policy decisions related to the alleged infringing process were made, and the only location
where the alleged infringing process is performed. (Rapid Detox Mot. to Transfer at 7). Addiction
Detox argues that Illinois is the situs of material events because Rapid Detox advertises to potential
patients in Illinois through its website and has sold its detoxification process to Illinois customers.
(Addiction Detox Resp. at 6-9). Although Rapid Detox may have Illinois customers who traveled
to Michigan to undergo the alleged infringing process, the mere fact that these customers are from
Illinois is insufficient to make Illinois the situs of material events. THerefore, the situs of material
events is Michigan, and this factor weighs in favor of transfer.
3. Relative Ease and Access to Sources of Proof
The third factor to consider in evaluating whether transfer is warranted is the relative ease of
access to sources of proof in each forum including the power of the court to compel the appearance
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of witnesses and the costs of obtaining the attendance of witnesses. Coolsavings.com, Inc. v.
IQ.Commerce Corp., 53 F. Supp. 2d 1000, 1006 (N.D. Ill. 1999). Rapid Detox argues that all of its
records are in Michigan. This factor is of little import in patent cases when the documents are
easily transferable. Radiation Stabilization v. Varian, 11 C 7701, 2012 U.S. Dist. LEXIS 72088, at
*5-6 (N.D. Ill. May 23, 2012). Addiction Detox argues that most of Rapid Detox’s clients reside
outside of Michigan and that transfer to Michigan would place all potential Illinois, non-party
witnesses outside of the Michigan court’s subpoena power. Rapid Detox’s argument is
unpersuasive. Rapid Detox fails to present any reason why Illinois customers are material
witnesses or more essential than Michigan customers. “To establish liability in a patent
infringement case, plaintiffs generally need to discover primarily the design, development and
engineering of the accused device.” Body Sci., 846 F. Supp. 2d at 994. Illinois customers offer
minimal, if any, proof of the alleged infringing procedures especially when they were sedated
and/or paralyzed during the alleged infringing process. This factor is neutral and does not weigh in
favor of, or against, transfer.
4. Convenience to the Parties
“In analyzing the convenience of the parties, the Court must consider their respective
residence and abilities to bear the expense of trial in a particular forum.” First Horizon Pharm.
Corp. v. Breckenridge Pharm., Inc., No. 04 C 2728, 2004 U.S. Dist. LEXIS 13871, at *12 (N.D. Ill.
July 20, 2004). Here, neither party is incorporated or has its principal place of business in Illinois.
The parties do not suggest nor is there any evidence that the parties are unable to bear the expenses
of trial in either Illinois or Michigan. “In a patent infringement case, practicality and convenience
are best served when it is prosecuted where the alleged acts of infringement occurred and the
defendant has a regular and established place of business so as to facilitate the production and
investigation of books, records and other data necessary to the discovery and trial techniques
employed in the patent field.” See Greene Mfg. Co. v. Marquette Tool & Die Co., 97 C 8857, 1998
U.S. Dist. LEXIS 10656, at *6-7 (N.D. Ill. July 8, 1998) (internal quotations omitted). Here, even
though Rapid Detox’s clients are residents of various states including Illinois, the alleged infringing
procedures all occurred in Michigan, Rapid Detox’s principal place of business. Accordingly, the
convenience of the parties weighs in favor of transfer.
5. Convenience of the Witnesses
The determination of the convenience of witnesses is often considered the most important
factor in the transfer balance. First Horizon Pharm. Corp. v. Breckenridge Pharm., Inc., No. 04 C
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2728, 2004 U.S. Dist. LEXIS 13871, at *12-13 (N.D. Ill. July 20, 2004). In assessing the
convenience of the witnesses, courts consider the “number of witnesses in each forum; the nature,
quality, and importance of the witnesses’ testimony with respect to the issues of the case; the
expense of transportation and the length of time the witnesses will be absent from their jobs; and
whether the witnesses can be compelled to testify.” Kammin v. Smartpros, Ltd., 07 C 2665, 2007
U.S. Dist. LEXIS 75914, at *5-6 (N.D. Ill. Oct. 9, 2007) (internal quotations omitted). The
convenience of employee witnesses, however, is distinguished from non-party witnesses and is
given little weight because of the ability of parties to compel their employees’ appearances at trial.
Id.; see also Anchor Wall Sys., Inc. v. R & D Concrete Prods., Inc., 55 F. Supp. 2d 871, 874 (N.D.
Ill. 1999). Accordingly, the convenience of non-party witnesses is substantially more important
than the convenience of party witnesses. Rapid Detox argues that its key witnesses, including
Rapid Detox’s owner Jeanne Katz, are located in Michigan. However, this Court affords little
weight to this argument. It is assumed that witnesses in the parties’ control will appear voluntarily.
See Costar Realty Info., Inc. v. CIVIX-DDI, LLC, No. 12 C 4968, 2012 U.S. Dist. LEXIS 149888, at
*8 (N.D. Ill. Oct. 18, 2012).
A party seeking transfer “should specify particular third party witnesses who reside outside
the district and whose testimony will be needed, and generally explain the nature of their testimony,
in order to prevail with respect to this factor.” Radiation, 2012 U.S. Dist. LEXIS 72088, at *7.
Both parties identify non-party witnesses in support of their arguments for or against transfer.
Addiction Detox argues that there are at least twenty-nine potential Illinois resident patients who
were treated by Rapid Detox, weighing against transfer. Rapid Detox argues that any potential
Illinois residents are immaterial compared to third-party health care providers, located in Michigan,
who performed the alleged infringing procedures. Rapid Detox argues further that the third-party
health care providers are more essential witnesses than any Illinois customers because the patients
undergoing the drug detoxification procedure at issue cannot testify concerning the alleged
infringing procedures because they were either sedated and/or paralyzed during the procedures.
(Rapid Detox Reply at 3). Rapid Detox also argues that Illinois resident patients are no more
material or key than patients who reside in Michigan or elsewhere and that their testimony would be
marginal at best. Id. This Court agrees with Rapid Detox that the nature of testimony from
potential witnesses who performed the alleged infringing procedure is more essential than
testimony from Illinois customers who purchased the procedure eventually performed in Michigan.
While Addiction Detox argues that most of Rapid Detox’s customers are from outside of Michigan,
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Addiction Detox does not assert that there are no Rapid Detox customers within Michigan.
Addiction Detox fails to demonstrate the importance of testimony from customers who reside in
Illinois specifically over any other customers in Michigan or elsewhere. This Court finds that the
convenience of the witnesses factor weighs in favor of transfer.
Lastly, transfer must be in the interests of justice. The interest of justice analysis relates to
the efficient functioning of the courts and may be determinative in a particular case, even if the
convenience of the parties and witnesses might call for a different result. See Clear Lam
Packaging, 2003 U.S. Dist. LEXIS 14691, at *9-13. Factors to consider include “the court's
familiarity with the applicable law, the speed at which the case will proceed to trial, and the
desirability of resolving controversies in their locale.” See Rabbit Tanaka Corp. USA v. Paradies
Shops, Inc., 598 F. Supp. 2d 836, 841 (N.D. Ill. 2009). In a patent infringement cases, because the
applicable law is the same nationwide, familiarity with the applicable law is not an issue. Rabbit,
598 F. Supp. 2d at 841. Addiction Detox attempts to argue that transfer is inappropriate because
non-party Illinois customers will be outside of a Michigan court’s subpoena power. Once again,
Addiction Detox fails to show why Illinois customers who traveled to Michigan for the alleged
infringing procedures are more material than other customers found in Michigan or elsewhere.
Additionally there is no evidence that transfer will slow the speed at which the case will proceed to
trial. Consequently, transfer is in the interests of justice.
Conclusion
Accordingly, Rapid Detox’s motion to transfer is granted.

IT IS SO ORDERED.
___________________
Date: March 11, 2013
____________________________
Sharon Johnson Coleman
United States District Judge

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