Retirement of Texas Judges Leads to Transfer Out of Texas

August 9, 2011

In a patent case brought by Plaintiff Rembrandt Vision Technologies, L.P. ("Rembrandt") against Defendant Johnson & Johnson Vision Care, Inc. ("J&J") in the Eastern District of Texas, J&J moved to transfer the case to the United States District Court for the Middle District of Florida. Central to the Judge Ward's grant of J&J's motion was the fact that he and Magistrate Judge Everingham soon would be retiring effective October 1, 2011, which -- along with the balance of private and public interest factors -- resulted in the transferee venue being "clearly more convenient than the venue chosen by [Rembrandt]."

Initially, the district court noted that Rembrandt is a New Jersey limited liability partnership with offices in Pennsylvania and no facilities in Texas. The district court also noted that the inventors of the patent-in-suit have no connection to Texas, but own a house in the Middle District of Florida. The district court pointed out that the only connection that Rembrandt had to the Eastern District of Texas was the pending lawsuit and other lawsuits it had filed there. On the other hand, the district court countered that J&J had been involved in litigation in the Middle District of Florida involving the same accused products, J&J was a Florida corporation with its headquarters in Jacksonville, Florida, and that it employed over 1200 people to manufacture the accused product in its Florida facility.

After concluding that the threshold determination that Rembrandt's claim could have been brought in the Middle District of Florida, the district court turned to Rembrandt's argument that judicial economy weighed against transfer. Rembrandt argued that judicial economy weighted against transfer because of the district court's experience with the patent-in-suit and also because J&J waited 17 months to file its transfer motion. Judge Ward stated that "[b]ecause both the undersigned and Magistrate Judge Everingham are retiring from the bench on October 1, 2011, these issues do not weigh as heavily, with respect to judicial economy, as they may have otherwise." Judge Ward further explained that "[w]ith respect to the Court's familiarity and experience with the patents-in-suit, due to the approaching retirement of both the undersigned and Magistrate Judge Everingham, there will no longer be a judge in the Marshall Division with familiarity of this case."

The district court also concluded that the 17 month delay in filing the transfer motion was "not commendable," but also was "not sufficient for this Court to keep the case in the Eastern District of Texas." The Court found that "[t]he timing of the undersigned's announcement of retirement is important in considering [J&J]'s delay" because J&J filed its motion only three months after "the undersigned informed President Barrack Obama, via a letter on September 29, 2010, that the undersigned would be retiring effective October 1, 2011." Thus, as a practical matter, the district court explained that the announcement may not have reached the parties for a couple of weeks or months. Judge Ward concluded that "it is reasonable that [J&J] may have decided to file the motion to transfer venue only after learning of the undersigned's retirement."

In analyzing the private and public interest factors, the district court concluded that private interest factors of "the relative ease of access to sources of proof and the availability of compulsory process to secure the attendance of witnesses weight [sic] slightly in favor of transfer, and the cost of attendance for willing witnesses and local interest weigh in favor of transfer [and that] no [private interest] factors weigh against transfer and all other [public interest] factors are neutral." Accordingly, the district court granted J&J's motion to transfer venue to the United States District Court of the Middle District of Florida.

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While venue transfer motions have become more frequent and successful in the Eastern District of Texas, it is likely that the district court's consideration of its own retirement as weighing in favor of transfer is limited to the unique facts of this case, and perhaps a limited number of similarly situated cases pending before Judge Ward.

Rembrandt Vision Technologies, L.P. v. Johnson & Johnson Vision Care, Inc., Case No. 09-CV-200 (E.D. Texas July 19, 2011)

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