Roxane Laboratories, Inc. v. Camber Pharmaceuticals, Inc. et al

Filing 46

ORDER granting 28 Motion to Dismiss/or Transfer. Signed by Judge Gregory L Frost on 6/23/14. (kn)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
ROXANE LABORATORIES, INC.,
Plaintiff,
Case No. 2:14-cv-232
JUDGE GREGORY L. FROST
Magistrate Judge Terence P. Kemp

v.
CAMBER PHARMACEUTICALS, INC.,
et al.,
Defendants.

OPINION AND ORDER
This matter is before the Court for consideration of a combined motion to dismiss or
transfer filed by Defendants InvaGen Pharmaceuticals, Inc. and Camber Pharmaceuticals, Inc.
(ECF No. 28), a memorandum in opposition filed by Plaintiff, Roxane Laboratories, Inc. (ECF
No. 32), and a reply memorandum filed by Defendants (ECF No. 38). For the reasons that
follow, the Court finds the motion only partially well taken and transfers the case to the United
States District Court for the District of New Jersey.
I. Background
This is a patent infringement action in which the patent-holder plaintiff, Roxane
Laboratories, Inc., claims infringement of a drug patent by Defendants InvaGen Pharmaceuticals,
Inc. and Camber Pharmaceuticals, Inc. Plaintiff is an Ohio corporation with its principal place of
business in Columbus, Ohio. Defendant InvaGen Pharmaceuticals, Inc. is a New York
corporation with its principal place of business in Hauppauge, New York, and Defendant

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Camber Pharmaceuticals, Inc. is a Delaware corporation with its principal place of business in
Piscataway, New Jersey.
Plaintiff filed its complaint on March 4, 2014, 2010, asserting one count of patent
infringement. (ECF No. 1.) The parties soon thereafter engaged in motions practice, with
Defendants eventually filing a combined motion to dismiss or transfer pursuant to Federal Rules
of Civil Procedure 12(b)(2), 12(b)(3), and 12(b)(6) and 28 U.S.C. § 1404(a). (ECF No. 28.) The
parties have completed briefing on the combined motion, which is ripe for disposition.
II. Discussion
Defendant InvaGen Pharmaceuticals, Inc. seeks to dismiss this action under Federal Rule
of Civil Procedure 12(b)(2) for lack of personal jurisdiction and under Rule 12(b)(3) for
improper venue. InvaGen Pharmaceuticals, Inc. also joins Defendant Camber Pharmaceuticals,
Inc. in seeking to obtain dismissal under Rule 12(b)(6) for failure to state a claim upon which
this Court can grant relief. Most important for present purposes, however, is that Defendants
alternatively and jointly request that this Court effectuate a transfer of venue to the United States
District Court for the District of New Jersey under 28 U.S.C. § 1404(a).
Section 1404(a) provides that “[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.” 28 U.S.C. § 1404(a). A district court has discretion whether
to transfer venue. Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). The exercise of this
discretion involves evaluating “both the convenience of the parties and various public-interest
considerations,” which means that, “[o]rdinarily, the district court . . . weigh[s] the relevant

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factors and decide[s] whether, on balance, a transfer would serve ‘the convenience of parties and
witnesses’ and otherwise promote ‘the interest of justice.’ ” Atlantic Marine Constr. Co., Inc. v.
U.S. Dist. Court for the Western Dist. of Texas, 134 S. Ct. 568, 581 (2013).
Thus, as the Sixth Circuit has explained, a district court deciding whether to transfer a
case “should consider the private interests of the parties, including their convenience and the
convenience of potential witnesses, as well as other public-interest concerns, such as systemic
integrity and fairness, which come under the rubric of ‘interests of justice.’ ” Moses v. Bus.
Card Express, Inc., 929 F.2d 1131, 1137 (6th Cir. 1991). See also Atlantic Marine Constr. Co.,
Inc., 134 S. Ct. at 581 n.6. Private interest factors of the parties include “ ‘the relative ease of
access to sources of proof; availability of compulsory process for attendance of unwilling, and
the cost of obtaining attendance of willing, witnesses; . . . and all other practical problems that
make trial of a case easy, expeditious and inexpensive.’ ” Hanning v. New England Mut. Life
Ins. Co., 710 F. Supp. 213, 214 (S.D. Ohio 1989). Public interest factors include:
(1) the administrative difficulties flowing from court congestion; (2) the local interest
in having localized interests decided at home; (3) the familiarity of the forum with
the law that will govern the case; and (4) the avoidance of unnecessary problems of
conflicts of laws or in the application of foreign law.
B.E. Tech., LLC v. Sony Computer Entm’t Am. LLC, Nos. 2:12-cv-02826-JPM-tmp, 2:12-cv02827-JPM-tmp, & 2:12-cv-02828-JPM-tmp, 2013 WL 3804030, at *4 (W.D. Tenn. July 19,
2013) (quoting In re Acer Am. Corp., 626 F.3d 1252, 1254 (Fed. Cir. 2010)).
Although “[t]here is no definitive formula or comprehensive test for determining the
issue of convenience,” courts have generally looked at the foregoing factors and related interests,
including:

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(1) convenience of the witnesses; (2) availability of judicial process to compel the
attendance of unwilling or uncooperative witnesses; (3) location of the relevant
documents or records, and the relative ease of access to sources of proof; (4)
residence and convenience of the parties; (5) relative financial means and resources
of the parties; (6) locus of the operative facts and events that gave rise to the dispute
or lawsuit; (7) each judicial forum’s familiarity with the governing law; (8) the
deference and weight accorded to the plaintiff’s choice of forum; and (9) trial
efficiency, fairness, and the interests of justice based on the totality of the
circumstances.
Mardini v. Presidio Developers, LLC, No. 3:08-CV-291, 2011 WL 111245, at *6-7 (E.D. Tenn.
Jan. 13, 2011) (quoting Mullins v. ADB Logistics, Inc., No. 1:09–cv–160, 2009 WL 2406408, at
*2–3 (E.D. Tenn. July 31, 2009) (citations omitted)). As the movants, Defendants bear the
burden of demonstrating that the balance of the factors strongly favors transfer. Id. (quoting
Gilbert, 330 U.S. at 508).
Transfer is wholly inappropriate if it merely shifts the burden of inconvenience. See
Reed Elsevier, Inc. v. Innovator Corp., 105 F. Supp. 2d 816, 821-22 (S.D. Ohio 2000). There is
thus a strong presumption in favor of a plaintiff’s choice of forum that “may be overcome only
when the private and public interest factors clearly point towards trial in the alternative forum.”
Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 (1981). See Trustar Funding v. Mruczynski, No.
1:09-cv-01747-CAB, 2010 WL 1539759, at *10 (N.D. Ohio Mar. 30, 2010) (“ ‘Plaintiff’s choice
of forum should be given ‘great’ or ‘substantial’ weight when considering whether to transfer a
case under § 1404(a).’ ” (quoting U.S. v. Cinemark USA, Inc., 66 F. Supp. 2d, 881, 888 (N.D.
Ohio 1987))). A plaintiff’s choice of forum is given little weight, however, “ ‘where none of the
conduct complained of occurred in the forum selected by the plaintiff.’ ” Keybanc Capital
Markets v. Alpine Biomed Corp., No. 1:07 CV 1227, 2008 WL 828080, at *7 (N.D. Ohio Mar.

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26, 2008) (quoting Edmison v. Vision Inv. & Dev., LLC, No. 1:06 CV 1108, 2006 WL 3825149,
at *5 (N.D. Ohio Dec. 26, 2006)).
Cognizant of the foregoing considerations and assuming for the sake of argument that
venue is appropriate in this District, the Court concludes that transfer is appropriate. There is no
dispute that Plaintiff could have brought this action in the District of New Jersey. The Court
therefore moves directly to the case-specific factors of the transfer analysis.
The Court finds that the location of the complained-of activity weighs in favor of
transfer. Defendants assert through affidavit that its operations and all employees are located in
New Jersey or in close proximity in New York. All documentary evidence relating to the
marketing, sales, and revenue related to the accused product is similarly located in New Jersey or
New York. In addition, the accused product was designed and developed in New Jersey, not in
Ohio.
Although, as noted above, a plaintiff’s choice of forum is usually awarded qualified
deference, that is but one factor in the analysis and is not alone dispositive. Lewis v. ACB Bus.
Servs., Inc., 135 F.3d 389, 413 (6th Cir. 1998). This Court is also cognizant that a plaintiff’s
choice of forum is given less weight where none of the complained-of activity occurred in the
plaintiff’s choice of forum. Keybanc Capital Markets, 2008 WL 828080, at *7. Accordingly,
the Court finds that although Plaintiff’s choice of forum obviously weighs in Plaintiff’s favor,
the undisputed fact that the majority of the complained-of conduct occurred in the other forum
weighs in favor of transfer.
In reviewing the key factors of the location of sources of proof, the convenience of
witnesses, and judicial economy, the Court finds that the majority of these factors weigh in favor

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of transfer. Defendants assert through affidavit that all documents, employees, and any evidence
to be produced regarding the accused product are located in or near New Jersey. Plaintiff
understandably points out that many of its witnesses and documents are located in Ohio and that
transfer would shift the inconvenience to Plaintiff, but this argument ultimately fails to persuade.
The greater inconvenience to the case as a whole, not specifically to any party, is what matters,
and that inconvenience here arises from litigating the case in Ohio as opposed to where most if
not all of the most material witnesses and documents exist, which is New Jersey and the
surrounding area. See KANL, LLC v. Savage Sports Corp., No. 3:13-CV-265-TAV-CCS, 2014
WL 1745443, at *4 (E.D. Tenn. Apr. 30, 2014) (explaining that a § 1404(a) transfer must render
the litigation more convenient as a whole).
This is an important factor that bears emphasis. The Court recognizes that it generally
disfavors transfer of a case unless strong circumstances compel the transfer. Additionally, the
Court concedes that it is inherently disinclined to transfer a patent case in particular given that
perhaps few judges would welcome such a case with appreciation. But this Court is also
cognizant that “the convenience of witnesses is the most important factor to be considered in
transferring venue.” Industrial Quick Search, Inc. v. Google, Inc., No. 1:13-cv-770, 2014 WL
1846886, at *1 (W.D. Mich. May 8, 2014). The further from home a witness must travel, the
greater the inconvenience to that witness and to their employer. See In re Nintendo Co., Ltd.,
589 F.3d 1194, 1199 (Fed. Cir. 2009).
Moreover, “ ‘in patent suits, the forum which is the center of the accused activity is the
preferred forum.’ ” Id. (quoting Steelcase, Inc. v. Smart Techs., Inc., 336 F. Supp. 2d 714, 720
(W.D. Mich. 2004). Another judicial officer in this Circuit explained why, noting that

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“[i]n 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 trial techniques
employed in the patent field.”
William M. Yarbrough Found. v. Garcoa Laboratories, Inc., No. 1:11-CV-907, 2013 WL
4068176, at *4 (W.D. Mich. Aug. 12, 2013) (quoting Addiction & Detoxification Inst. v. Rapid
Drug Detox Ctr., No. 11–cv–792, 2013 WL 951115, at *3 (N.D. Ill. Mar.11, 2013)).
Also related to the convenience of the parties is the difference in the size of the
companies involved. InvaGen Pharmaceuticals, Inc. has approximately 386 employees, Camber
Pharmaceuticals, Inc. has approximately 55 employees, and Roxane Laboratories, Inc. has
approximately 1,200 employees. A vast difference in the size and scale of the parties’ operations
informs the issue of any inconvenience that transfer would cause. See William M. Yarbrough
Found., 2013 WL 4068176, at *4.
Accordingly, the Court finds that the sources of proof, the convenience of the majority of
the likely and most material witnesses, and the location of where the relevant conduct occurred
weigh in favor of transfer. The factor of judicial economy, however, does not weigh in favor of
or against transfer here.
All of the parties devote a portion of their briefing to debating which federal court is
busiest and which court could dispose of this case more promptly, but the data they present to
this Court is of little value in that it amounts to argument by speculation. See KANL, LLC, 2014
WL 1745443, at *5 (“The Court finds that [the] argument for judicial efficiency is speculative
and does not account for several factors that may affect the judicial process.”). As a general
matter, the data presented is not patent-case specific. But of greater significance is that the data

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is of little relevance given the individual nature of this case. See id. (“ ‘[C]ase-disposition
statistics may not always tell the whole story.’ ” (quoting In re Genentech, Inc., 566 F.3d 1338,
1347 (Fed. Cir. 2009))).
In other words, the typical time until disposition of a civil case in each possible venue
does little to inform this action, especially in light of the fact that Plaintiff has now filed for a
preliminary injunction that will necessarily expedite matters and place the case far outside the
typical track toward disposition, regardless of in which court the case resides. Consideration of
the injunctive relief motion will necessitate determining a likelihood of success on the merits,
which will in turn necessitate expediting claim construction. Thus, in part as a result of
Plaintiff’s election to seek immediate consideration of the merits, the current posture of this case
renders the judicial economy factor of little value in the transfer decision with perhaps one
caveat. There is no personal jurisdiction dispute regarding InvaGen Pharmaceuticals, Inc. in the
New Jersey forum, as opposed to the dispute surrounding the exercise of such jurisdiction in this
Ohio venue. This Court regards this point of limited to little weight, however, given that the
need or lack thereof to engage in personal jurisdiction analysis–or any type of work, for that
matter–should never control a transfer decision.
Other public interest concerns such as systemic integrity and fairness also largely neither
favor nor disfavor transfer under the totality of the circumstances presented here. Because both
forums are equally capable of adjudicating federal patent law claims, litigating in either federal
venue would generally further the interests of justice in regard to these factors. See William M.
Yarbrough Found., 2013 WL 4068176, at *7. There is some limited support for transfer,
however, in the fact that Defendants reside in the District of New Jersey. When a patent

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infringement case calls into question the work and reputation of individuals residing in a
particular district, the local interest factor weighs in favor of transfer to that district. Id. at *8
(“Because this patent infringement action calls into question the work and reputation of
individuals residing in the Central District of California, this factor weighs in favor of transfer to
that district.”).
In light of the foregoing, the greater weight of the private and public interest factors
favors transfer. The most significant factor weighing against transfer is Plaintiff’s choice of
forum. But all of the likely sources of proof are in New Jersey or the surrounding area. And
although this is not a numbers game in which the party with the greater number of witnesses
prevails on the transfer issue, it is notable that the majority of the material witnesses are in New
Jersey or the surrounding area. There is also some qualified support under the local interest
factor for transfer. Judicial economy neither favors nor disfavors transfer because the current
posture of the litigation necessitates expedited proceedings, which negates any possible
inference that could be culled from statistics that are inherently largely inapplicable to this case.
Having found the balance of factors to weigh in favor of transfer, the Court in the interest of
justice concludes that transfer is appropriate.
III. Conclusion
For the foregoing reasons, the Court GRANTS Defendants’ motion to transfer and
TRANSFERS the case to the United States District Court for the District of New Jersey. (ECF
No. 28.) Consequently, the Court DENIES AS MOOT Defendants’ motion to dismiss pursuant
to Rule 12(b)(2), DENIES AS MOOT Defendants’ motion to dismiss pursuant to Rule 12(b)(3),
and declines to address Defendants’ motion to dismiss pursuant to Rule 12(b)(6). (ECF No. 28.)

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This remaining component of the combined motion (ECF No. 28) and the remaining pending
motions (ECF Nos. 14, 35, 43) necessarily remain for disposition by the transferee court. The
Clerk shall therefore transfer this case to the United States District Court for the District of New
Jersey.
IT IS SO ORDERED.
/s/ Gregory L. Frost
GREGORY L. FROST
UNITED STATES DISTRICT JUDGE

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