Bovino v. Incase Designs Corp
ORDER granting 17 Defendants Motion to Transfer Venue under 28 U.S.C. § 1404(a) to the District Court for the Northern District of California, by Judge William J. Martinez on 5/6/2014.(evana, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge William J. Martínez
Civil Action No. 13-cv-2106-WJM-MJW
JERALD A. BOVINO,
INCASE DESIGNS CORP,
ORDER GRANTING DEFENDANT’S MOTION TO TRANSFER VENUE
Plaintiff Jerald A. Bovino (“Plaintiff”) has brought this patent infringement case
against Incase Designs Corp. (“Defendant”). Before this Court is Defendant’s Motion to
Transfer Venue under 28 U.S.C. § 1404(a) to the District Court f or the Northern District
of California (the “Motion to Transfer”). (ECF No. 17.) For the reasons set forth below,
Defendant’s Motion to Transfer is granted.
Plaintiff filed his Complaint on August 7, 2013. (ECF No. 1.) Plaintiff seeks
damages for Defendant’s alleged infringement on Plaintiff’s patent No. 6,977,809,
which was issued for a “Portable Computer Case.” (Id. at 2, 4.)
On October 23, 2013, Defendant filed the instant Motion to Transfer Venue
pursuant to 28 U.S.C. § 1404(a), and to Dismiss Plaintiff’s Claims of Indirect and Willful
Infringement pursuant to Federal Rule of Civil Procedure 12(b)(6). (Motion (ECF No.
17.)) Plaintiff filed a Response on November 13, 2013. (ECF No. 26.) Plaintiff filed an
Amended Complaint on November 14, 2013, thus mooting Defendant’s Motion to
Dismiss as to the original Complaint. (ECF No. 27.) Defendant filed its Reply on
November 26, 2013. (ECF No. 33.)
This Motion to Transfer is now ripe for resolution.
II. LEGAL STANDARD
“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.” 28 U.S.C. § 1404(a). The party seeking to transfer a case pursuant to
§ 1404(a) bears the burden of establishing that the existing forum is inconvenient. See
Chrysler Credit Corp. v. Cnty. Chrysler, Inc., 928 F.2d 1509, 1515 (10th Cir. 1991).
In ruling on a motion to transfer venue, district courts must assess two issues: (1)
whether the case might have been brought in the proposed transferee district, and (2)
whether the “competing equities” weigh in favor of adjudicating the case in that district.
See Hustler Magazine, Inc. v. U.S. Dist. Court for the Dist. of Wyo., 790 F.2d 69, 71
(10th Cir. 1986). The competing equities include the following factors:
(1) plaintiff’s choice of forum; (2) the accessibility of witnesses and other
sources of proof, including the availability of compulsory process to insure
attendance of witnesses; (3) the cost of making the necessary proof; (4)
questions as to the enforceability of a judgment if one is obtained; (5) relative
advantages and obstacles to a fair trial; (6) difficulties that may arise from
congested dockets; (7) the possibility of the existence of questions arising in
the area of conflict of laws; (8) the advantage of having a local court
determine questions of local law; and (9) all other considerations of a
practical nature that make a trial easy, expeditious and economical.
Chrysler Credit Corp., 928 F.2d at 1516 (quoting Tex. Gulf Sulphur Co. v. Ritter, 371
F.2d 145, 147 (10th Cir. 1967)). The decision to transfer venue, however, lies in the
sole discretion of the district court and should be based on an “individualized,
case-by-case consideration of convenience and fairness.” Texas E. Transmission
Corp. v. Marine Office-Appleton & Cox Corp., 579 F.2d 561, 567 (10th Cir. 1978);
Stewart Org. v. Ricoh Corp., 487 U.S. 22, 29 (1988).
This Case Might Have Been Brought In The Northern District of Texas
“Plaintiff does not dispute that [the] Northern District of California is a district
where this case could have initially been brought.” (ECF No. 26 at 2.) Defendant is a
California corporation with an address in San Francisco, in the Northern District of
California. (ECF Nos. 27 ¶ 2, 17-1 ¶ 6.) The Court, therefore, finds that this action
might have been brought in that district. See 28 U.S.C. § 1400(b) (“[A]ny civil action for
patent infringement may be brought in the judicial district where the defendant
resides.”). The Court must next determine whether the “competing equities” weigh in
favor of adjudicating the case in the Northern District of California. See Hustler
Magazine, 790 F.2d at 71.
The Competing Equities Factors
Plaintiff’s Choice of Forum
Plaintiff argues that his choice of forum should be given considerable weight
because he is a Colorado resident. (ECF No. 26 at 4.) “[U]nless the balance is strong ly
in the favor of the movant[,] the plaintiff’s choice of forum should rarely be disturbed” by
the court. Scheidt v. Klein, 956 F.2d 963, 965 (10th Cir. 1992) (quoting William A. Smith
Contracting Co. v. Travelers Indem. Co., 467 F.2d 662, 664 (10th Cir. 1972)). However,
little weight is given “where the facts giving rise to the lawsuit have no material relation or
significant connection to the plaintiff’s chosen forum.” Employers Mut. Cas. Co. v. Bartile
Roofs, Inc., 618 F.3d 1153, 1168 (10th Cir. 2010) (citation om itted).
Although the infringements alleged in the Complaint have taken place in
Colorado because Defendant’s products are sold here, they have also taken place in
every other district where Defendant’s products are sold. (Motion at 8-9.) The Court,
therefore, finds that Plaintiff’s choice of forum carries little weight. See Potter Voice
Techs. LLC v. Apple, Inc., 2013 WL 1333483, at *3 (D. Colo. Mar. 29, 2013) (finding
that the plaintiff’s choice of forum carried “little weight” where “the infringements alleged
[were] not tied to Colorado any more than to other states and districts”).
Witnesses and Other Proof
“The convenience of witnesses is the most important factor in deciding a motion
[to transfer venue] under § 1404(a).” Employers Mut. Cas. Co., 618 F.3d at 1169. “To
demonstrate inconvenience, the movant must (1) identify the witnesses and their
locations; (2) indicate the quality or materiality of their testimony; and (3) show that any
such witnesses were unwilling to come to trial, that deposition testimony would be
unsatisfactory, or that the use of compulsory process would be necessary.” Id. (quoting
Scheidt, 956 F.2d at 966) (brackets and internal quotation marks omitted). “In
analyzing the accessibility of witnesses, the convenience of non-party witnesses weighs
more heavily than the convenience of parties and their employees.” Potter, 2013 WL
1333483, at *2. Further, the availability of compulsory process can be a key factor in
transfer decisions where third party witnesses are located in the transferee district.
Bailey, 364 F. Supp. 2d at 1230; see also Sackett v. Denver & Rio Grande Western
R.R. Co., 603 F. Supp. 260, 261-62 (D. Col. 1985) (transf erring case to Utah where
witnesses were subject to subpoena).
It is undisputed that Plaintiff’s fact witnesses and relevant documents are located
in California. (ECF No. 17-1 ¶¶ 8-12.) The accused products were designed and
developed in the Northern District of California. (Motion at 6.) All of Defendant’s
witnesses with knowledge regarding the development, design, manufacturing, and
marketing of the accused products, including third-party witnesses, reside in San
Francisco. (ECF No. 17-1 ¶¶ 8-9.) This Court may not be able to secure these thirdparty witnesses’ attendance at trial. The Northern District of California, however, has
the availability of compulsory process to secure their attendance at trial. See In re
Volkswagen of Am., Inc., 545 F.3d 304, 316 (5th Cir. 2008) (availability of compulsory
process weighs in favor of transfer). Plaintiff, on the other hand, only seeks to call one
Colorado witness–himself.1 (ECF No. 17-4 at 2.)
As witnesses and documents in this case, including third parties, are located in
the Northern District of California, while only Plaintiff is located in Colorado, the Court
finds that the second factor weighs in favor of transfer.
The Cost of Making the Necessary Proof
Defendant argues that it will be more expensive for its several witnesses and
counsel to travel to Colorado for trial than it would be for Plaintiff and his attorneys to
Plaintiff also references a potential witness who resides in Ohio. This witness has no
impact on the venue transfer analysis. See Bailey, 364 F. Supp. 2d at 1231 (explaining that
Defendant’s potential witnesses, who were neither from Colorado nor the district of proposed
transfer, “have no impact on the transfer analysis”).
travel to California. (Motion at 7.) Plaintiff responds by arguing that Defendant will not
incur significant travel expenses because most of Defendant’s proposed witnesses are
not necessary for the presentation of Defendant’s case and will, therefore, not testify at
trial.2 (ECF No. 26 at 9.)
The costs Defendant cites, though significant, would only occur in the event that
the case proceeds to trial and the witnesses are all called to testify. “Nevertheless, for
the purposes of weighing the competing equities, the Court cannot assume . . . that the
witnesses’ travel will otherwise be unnecessary.” Aurora Commercial Corp. v. Lenox
Fin. Mortg. Corp., 2013 WL 5200231, at *4 (D. Colo. Sept. 16, 2013). Litig ating in
California would reduce the overall cost of litigation. Therefore, the Court finds that the
third factor weighs in favor of transfer. See Potter, 2013 WL 1333483, at *3 (finding
cost factor weighs in favor of transfer where “it would be more expensive for several
Apple witnesses to travel to Colorado for trial than it would be for Potter’s one witness .
. . to travel to California for trial”).
All Other Factors and Considerations
The parties have supplied no evidence or argument weighing either way as to all
other factors. Thus, the Court finds that the remaining competing equities factors are
neutral as applied to this case.
Plaintiff also argues that “[t]he origin of Defendant’s accused products has no
relevance to this case” and “[a]ny argument with respect to inconvenience of the transfer of
documents is unpersuasive.” (ECF No. 26 at 10.) Defendant agrees, and notes that it “did not
rely on the transportation costs of documents or physical samples in support of its argument
under the cost prong of its opening brief.” (ECF No. 33 at 6.) Therefore, the Court will not
factor Plaintiff’s argument into its analysis.
Summary of Convenience Factors
Based on the above analysis, the factors involving convenience of the witnesses
and the cost of making the required proof in this case favor transfer. Aside from
Plaintiff’s interest in his choice of forum, none of the factors that the applicable case law
directs this Court to consider weigh in Plaintiff’s favor on the transfer question. As such,
the Court finds that the above competing equities favor transferring this case to the
Northern District of California, and Defendant’s Motion to Transfer Venue under 28
U.S.C. § 1404(a) is granted.
For the reasons set forth above, the Court ORDERS as follows:
Defendant’s Motion to Transfer Venue under 28 U.S.C. § 1404(a) to the
District Court for the Northern District of California (ECF No. 17) is GRANTED; and
The Clerk is directed to transfer the case record to the District Court for
the Northern District of California.
Dated this 6th day of May, 2014.
BY THE COURT:
William J. Martínez
United States District Judge
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