TeleCommunication Systems, Inc. v. TracBeam, L.L.C.
ORDER to Transfer. ORDERED that TracBeams Motion to Transfer Under 28 U.S.C. § 1404 10 is GRANTED. ORDERED that TracBeams Motion to Dismiss 6 is DENIED AS MOOT. ORDERED that the Clerk of Court shall TRANSFER this case to the United States District Court for the Eastern District of Texas by Chief Judge Wiley Y. Daniel on 02/06/12.(jjhsl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Chief Judge Wiley Y. Daniel
Civil Action No. 11-cv-02519-WYD-MJW
TELECOMMUNICATION SYSTEMS, INC., a Maryland company,
TRACBEAM, L.L.C., a Colorado limited liability company,
ORDER TO TRANSFER
On September 27, 2011, Plaintiff Telecommunication Systems, Inc. (“TCS”)
commenced this action against Defendant TracBeam, L.L.C. (“TracBeam”), a Colorado
company, seeking a declaratory judgment of noninfringment and invalidity of two (2)
United States patents pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-02,
and the Federal patent laws. (ECF No. 1, Compl. ¶ 1). This matter is before me on
TracBeam’s Motion to Transfer Under 28 U.S.C. § 1404 (the “Motion”) (ECF No. 10),
filed November 18, 2011. Briefing on this Motion was delayed after both parties sought
leave to file sur-replies, which I granted.1 Therefore, the Motion is fully briefed and ripe
Having carefully considered the Motion, response, reply and sur-replies, and all
legal authorities, I grant TracBeam’s Motion to Transfer for the reasons stated below.
On January 10, 2012, TCS filed its sur-reply and TracBeam filed its sur-sur-reply.
My decision to order transfer of this action renders moot TracBeam’s alternative Motion
to Dismiss (ECF No. 6).
In the motion, TracBeam requests that I transfer this declaratory judgment action
to the United States District Court for the Eastern District of Texas, where a nearly
identical lawsuit is pending (the “Texas Action”).2 More specifically, in February 2011,
TracBeam filed the Texas Action alleging infringement of U.S. Patent Nos. 7,764,231
and 7,525,484 (the “TracBeam Patents”). Seven months later, TCS filed the instant
declaratory judgment action, which involves the same TracBeam Patents at issue in the
28 U.S.C. § 1404(a) provides “For the convenience of the 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.” Congress enacted the statute "as a
'federal housekeeping measure,' allowing easy change of venue within a unified federal
system." Chrysler Credit Corp. v. County Chrysler, Inc., 928 F.2d 1509, 1515 (10th Cir.
1991) (quoting Piper Aircraft Co. v. Reyno, 454 U.S. 235, 254 (1981)). Although
Congress drafted section 1404(a) in accordance with the doctrine of forum non
conveniens, "the statute was intended to revise rather than merely codify the common
As TracBeam asserts, the Texas Action involves closely related parties to this case.
TracBeam is a party to both actions, and TCS: (1) claims to supply allegedly accused products
and services to various defendants in the Texas Action; (2) has been identified as a potential
party in the Texas Action; (3) has indicated that it is contractually obligated to indemnify the
MetroPCS defendants in the Texas Action; and (4) may also control (pursuant to the
indemnification agreement and using the same attorneys) the defense of the MetroPCS
defendants in the Texas Action. (ECF No. 13, Mot. at 1).
law." Id. District courts therefore enjoy greater discretion to transfer a case pursuant to
section 1404(a) than to dismiss the action based upon the forum non conveniens
doctrine. Id. The moving party bears the burden of demonstrating that the existing
forum is inconvenient. Id.
The decision whether to transfer an action lies within the sound discretion of the
trial judge. See Texas Eastern Transmission Corp. v. Marine Office-Appleton & Cox
Corp., 579 F.2d 561, 567 (10th Cir. 1978). In exercising that discretion, the Court must
“adjudicate motions for transfer according to an ‘individualized, case-by-case
consideration of convenience and fairness.’” Chrysler, 928 F.2d at 1516 (quoting
Stewart Org. v. Ricoh Corp., 487 U.S. 22, 29 (1988)). Among the factors a district court
should consider are: (1) the 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; (5) the 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 practical considerations that
make a trial easy, expeditious and economical. Id. (citation omitted).
In this case, TCS has selected Colorado as its forum of choice, and as previously
set forth, a plaintiff’s choice of forum is afforded substantial deference. However, I
agree with TracBeam that this factor is entitled to less weight when the case’s operative
facts have no connection with the forum, as here. See Alden Corp. v. Eazypower Corp.,
294 F. Supp. 2d 233, 236-37 (D. Conn. 2003); Mitsui Marine and Fire Ins. Co. Ltd. v.
Nankai, 245 F. Supp. 2d 523, 525 (S.D.N.Y. 2003); Peters v. Graber Industries, Inc.,
No. CIV.A.91-1507-Bb, 1992 WL 420915, at *3 (D. Kan. 1992).
First, TCS does not reside in Colorado; it is a Maryland Corporation with offices
in both Washington and California. See Spires v. Hosp. Corp. of Am., No. 06-2137JWL, 2006 WL 1642701, at *2 (D. Kan. June 8, 2006) (holding that when the plaintiff
does not reside in the chosen forum, the rationale for allowing the plaintiff to dictate the
forum evaporates); see also 15 Charles Alan Wright, Arthur R. Miller & Edward H.
Cooper, Federal Practice and Procedure: Jurisdiction § 3848 (3d ed.2007) (observing
that many courts give substantially less, if any, deference to the plaintiff's choice of
forum when the plaintiff resides elsewhere).
Second, the basis of TCS’s instant declaratory judgment action is that, in the
Texas Action, TracBeam accused TCS’s products and services of infringing on the
TracBeam Patents arising, in part, from acts committed in Texas. Thus, while TCS
argues that Colorado is the more convenient forum because TracBeam and its
managing partner are located in Colorado, I find this argument unavailing because the
underlying alleged infringement is unconnected to Colorado. TracBeam chose to file its
infringement action in Texas because the alleged infringing activity occurred, for the
most part, in Texas. Thus, I find that this factor is not controlling.
I also find that since the Texas Action was filed seven months prior to this action
and has progressed to a more advanced stage of litigation than the instant case,
transferring this action to Texas would save both judicial and party resources. The
same witnesses will likely be relevant to both this action and the Texas Action since
both cases involve the TracBeam Patents and similar infringement issues. Thus,
proceeding with both actions in the same district would save witnesses from having to
travel and testify in cases in two separate states. I also note that the only witnesses
with ties to Colorado are associated with TracBeam. By filing its infringement suit in
Texas and through its pleadings in this matter, TracBeam has indicated that it is not
inconvenienced by litigating in the Eastern District of Texas.
I further find that in addition to conserving judicial resources, transferring a patent
case to a district handling a similar case involving the same patents promotes uniformity
in the construction of the patents. The importance of uniformity in claim construction is
best described in Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996).
Congress created the Court of Appeals for the Federal Circuit to promote uniformity. Id.
at 390. The Supreme Court emphasized “the importance of uniformity in the treatment
of a given patent as an independent reason to allocate all issues of construction to the
court.” Id. Uncertainty regarding a patent's limits discourages invention and industrial
innovation, whereas certainty fosters technological growth. Id. Here, because the
Texas Action and the instant action involve the same TracBeam Patents, the argument
for transfer is even stronger.3 I find that the need for uniformity in patent cases strongly
As to the remaining factors governing transfer, I find that they are essentially
I note that the district judge in the Eastern District of Texas has set a Markman hearing
in the Texas Action for later this year.
neutral and do not favor either jurisdiction. Weighing all the factors discussed above, I
conclude that the balance of equities tips strongly in favor of a transfer of this case to
the Eastern District of Texas pursuant to 28 U.S.C. § 1404(a).
Accordingly, I find that TracBeam’s motion to transfer should be granted. Based
upon the foregoing, it is
ORDERED that TracBeam’s Motion to Transfer Under 28 U.S.C. § 1404
(ECF No. 10) is GRANTED. In accordance therewith, it is
ORDERED that TracBeam’s Motion to Dismiss (ECF No. 6) is DENIED AS
MOOT. It is
FURTHER ORDERED that the Clerk of Court shall TRANSFER this case to the
United States District Court for the Eastern District of Texas.
Dated: February 6, 2012
BY THE COURT:
s/ Wiley Y. Daniel
Wiley Y. Daniel
Chief United States District Judge
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