Columbia Insurance Co. et al v. Integrated Stealth Technology Inc.
Filing
10
OPINION Entered by Judge Sue E. Myerscough on 7/8/16. Defendant's Motion to Transfer (d/e 5 ) is DENIED. Defendant shall file an answer on or before July 25, 2016. (SW, ilcd)
E-FILED
Monday, 11 July, 2016 09:37:19 AM
Clerk, U.S. District Court, ILCD
IN THE UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF ILLINOIS
SPRINGFIELD DIVISION
COLUMBIA INSURANCE CO.,
MiTek HOLDINGS, INC., and
MiTek USA, INC.,
Plaintiffs,
v.
INTEGRATED STEALTH
TECHNOLOGY INC.,
Defendant.
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No. 16-cv-3091
OPINION
SUE E. MYERSCOUGH, U.S. District Judge.
Defendant Integrated Stealth Technology Inc. has filed a
Motion to Transfer (d/e 5) asking that this Court transfer the case
to the United States District Court, Western District of Michigan,
where Defendant has filed a declaratory judgment action regarding
the same patents at issue in this lawsuit. Defendant asserts that
this Court lacks personal jurisdiction over Defendant and, even if
personal jurisdiction exists, transfer is warranted under 28 U.S.C. §
1404(a) for the convenience of the parties and witnesses and in the
interest of justice.
Page 1 of 26
The Motion is DENIED. Plaintiff has made a prima facie
showing that Defendant is subject to personal jurisdiction in
Illinois. Moreover, transfer is not warranted under 28 U.S.C.
§ 1404(a).
I. BACKGROUND
In April 2016, Plaintiffs Columbia Insurance Co., MiTek
Holdings, Inc., and MiTek USA, Inc. filed a Complaint and Demand
for Jury Trial (d/e 1) alleging that Defendant infringed on several of
Plaintiffs’ patents. The patents pertain to improvements in
automated jig systems, which are used to manufacture roof trusses
for the construction of buildings. Compl. ¶¶ 23, 24, 28. Plaintiffs
Columbia and MiTek Holdings own the patents at issue, and MiTek
USA is the exclusive licensee of the patents. Id. ¶¶ 8-22. Plaintiffs
allege that Defendant has made, used, sold, or offered for sale an
“Auto Puck System” that infringes Plaintiffs’ patents. Id. ¶¶ 31, 35,
40, 41, 51, 52, 62, 63, 73, 74, 84, 85. Two days after Plaintiffs filed
this lawsuit, Defendant filed a declaratory judgment action in
Defendant’s home district, the Western District of Michigan,
Integrated Stealth Tech., Inc. v. Columbia Ins. Co., MiTek Holdings,
Inc., and MiTek USA, Inc., Case No. 1:16-cv-00355.
Page 2 of 26
None of the parties is a citizen of Illinois. Columbia is
incorporated in Nebraska and has its principal place of business in
Omaha, Nebraska. Compl. ¶ 1. MiTek Holdings is incorporated in
Delaware and has its principal place of business in Chesterfield,
Missouri. Id. ¶ 2. MiTek USA is incorporated in Missouri and has
its principal place of business in Chesterfield, Missouri. Id. ¶ 3.
Defendant is incorporated in Michigan and has its principal place of
business in Michigan. Id. ¶ 4; see also Def. Mot. at 3 (admitting
that Defendant’s sole office is located in Lansing, Michigan).
In May 2016, Defendant filed its Motion to Transfer.
Defendant argues that it is not subject to personal jurisdiction in
Illinois and, even assuming personal jurisdiction exists, transfer is
still warranted for the convenience of the parties and witnesses and
in the interest of justice. See 28 U.S.C. § 1404(a).
In support of its Motion, Defendant submitted the Affidavit of
Edward Joseph, the president and principal owner of Defendant.1
Joseph states that: Defendant’s only office is located in Lansing,
Michigan; all of Defendant’s owners, officers, and employees work
The Court may consider affidavits when deciding a motion under Rule 12(b)(2)
disputing personal jurisdiction. See Silent Drive, Inc. v. Strong Indus., Inc.,
326 F.3d 1194, 1201 (Fed. Cir. 2003).
1
Page 3 of 26
from the Lansing office; all of Defendant’s products are designed
and manufactured in, and sold from, the Lansing office; all of the
documentation and other information relating to the design and
manufacture of the Automated Puck System is located in Lansing,
Michigan; Defendant has no offices, property, or employees in
Illinois; and Defendant sold a single Automated Puck System to a
customer in Illinois in November 2013. Def. Mot., Ex. 1 (d/e 6-1).
Plaintiffs allege in the Complaint that Defendant installed its
Automated Puck System on at least one occasion in Springfield,
Illinois. Compl. ¶ 34. In response to the Motion to Dismiss,
Plaintiffs submitted the Declaration of Joseph C. Carr, Jr., the Vice
President and General Counsel of MiTek USA. Pls. Resp. Ex. B (d/e
9-2). Carr states that MiTek USA and Defendant are competitors
and share mutual customers and solicit business from the same
potential customers. From these ongoing customer interactions,
employees of MiTek USA have become generally aware of Defendant
and Joseph. Id. ¶ 9. Through interactions with customers and
potential customers, MiTek USA has identified seven locations
where Defendant has installed its Automated Puck System. Id. ¶
Page 4 of 26
10. 2 One of the installations was at U.S. Truss Co.’s facility in
Springfield, Illinois. Id. None of the known installations is located
in the Western District of Michigan. Id. Plaintiffs also submitted a
page from Defendant’s website that indicates that installation of
upgraded equipment (which presumably includes the Automated
Puck System) takes approximately five days and Defendant’s
installations are personally overseen by Defendant’s president. Ex.
D (d/e 9-4); see also http://
www.integratedstealth.com/index.php/parts/before-and-afterphotos (last visited July 8, 2016). Plaintiffs asserts that the sale
and installation of the Automated Puck System at U.S. Truss Co. in
Springfield, Illinois represents a considerable project and is
sufficient to justify the Court’s exercise of specific jurisdiction over
Defendant.
Defendant has not disputed these assertions. Moreover, hearsay “bearing
circumstantial indicia of reliability may be admitted for purposes of
determining whether personal jurisdiction obtains.” Akro Corp. v. Luker, 45
F.3d 1541, 1546-47 (Fed. Cir. 1995) (internal quotation marks and citations
omitted).
2
Page 5 of 26
II. ANALYSIS
A.
The Court Has Personal Jurisdiction Over Defendant
When determining whether the Court has personal jurisdiction
over a defendant in a patent case, this Court applies the law of the
Federal Circuit and not the law of the regional circuit in which the
case arises. See 28 U.S.C. § 1295(a)(1) (providing that the Federal
Circuit has exclusive jurisdiction to review cases relating to
patents); Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d
1012, 1016 (Fed. Cir. 2009) (noting that Federal Circuit law is
applied when determining personal jurisdiction because the
personal jurisdictional issue is “intimately involved with the
substance of the patent laws”) (internal quotation marks and
citations omitted).
When the Court makes its personal jurisdiction determination
based on the written submissions and without an evidentiary
hearing, the plaintiff need only make a prima facie showing that
Defendant is subject to personal jurisdiction. Grober v. Mako
Prods., Inc., 686 F.3d 1335, 1345 (Fed. Cir. 2012); Avocent
Huntsville Corp. v. Aten Int’l Co., Ltd., 552 F.3d 1324, 1328-29
(Fed. Cir. 2008) (where parties have not conducted discovery, the
Page 6 of 26
plaintiff need only make a prima facie showing that the defendant is
subject to personal jurisdiction). In such case, the Court accepts
the uncontroverted allegations as true and resolves any factual
disputes in the plaintiff’s favor. AFTG-TG, LLC v. Nuvoton Tech.
Corp., 689 F.3d 1358, 1360 (Fed. Cir. 2012); Beverly Hills Fan Co.
v. Royal Sovereign Corp., 21 F.3d 1558 (1994).
Defendant asks for an evidentiary hearing if the Court does
not grant Defendant’ s motion on the written submissions,
asserting that the Court can resolve any factual questions the Court
may have at the evidentiary hearing. However, the parties’
submissions did not create any factual questions. Further, as
determined below, the written submissions support a finding that
Plaintiffs have made a prima facie showing that Defendant is
subject to personal jurisdiction. Therefore, the request for an
evidentiary hearing is denied.
A federal district court may exercise jurisdiction over a nonconsenting out-of-state defendant if (1) the defendant is amenable
to service of process and (2) exercising jurisdiction over the
defendant comports with due process. Patent Rights Prot. Group,
LLC v. Video Gaming Techs., Inc., 603 F.3d 1364, 1368-69 (Fed.
Page 7 of 26
Cir. 2010). Because the Patent Act does not authorize nationwide
service of process, the Court looks to Illinois’ long-arm statute to
determine whether Defendant is amendable to service of process.
TechnoLines, LP v. GST AutoLeather, Inc., 799 F. Supp. 2d 871,
874 (N.D. Ill. 2011); see also Autogenomics, Inc., 566 F.3d at 1017
(the court looks at whether the forum state’s long-arm statute
permits service of process).
Illinois’ long-arm statute is co-extensive with federal due
process requirements. See 735 ILCS 5/2-209(c) (“A court may also
exercise jurisdiction on any basis now or hereafter permitted by the
Illinois Constitution and the Constitution of the United States”);
Ticketreserve, Inc. v. viagogo, Inc., 656 F. Supp. 2d 775, 781 (N.D.
Ill. 2009) (the Illinois long-arm statute is coextensive with federal
due process requirements). Therefore, the two-part inquiry
collapses into one inquiry: whether the exercise of personal
jurisdiction over the defendant comports with constitutional due
process. Campbell Pet Co. v. Miale, 542 F.3d 879, 884 (Fed. Cir.
2008) (holding that “when the state’s long-arm statute extends to
the limits of due process, the two-party inquiry collapses into one—
Page 8 of 26
whether due process considerations permit the exercise of
jurisdiction”).
Constitutional due process requires that a nonresident
defendant have “certain minimum contacts with [the forum] such
that the maintenance of the suit does not offend ‘traditional notions
of fair play and substantial justice.’” Int’l Shoe Co. v. Washington,
326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311 U.S. 457,
463 (1940)). Moreover, “it is essential in each case that there be
some act by which the defendant purposefully avails itself of the
privilege of conducting activities within the forum State, thus
invoking the benefits and protections of its laws (Hanson v.
Denckla, 357 U.S. 235, 253 (1958)) such that the defendant
“should reasonably anticipate being haled into court there.” WorldWide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980).
Under the minimum contacts test, personal jurisdiction can be
general or specific. Avocent, 552 F.3d at 1330. General jurisdiction
requires that the defendant have “continuous and systematic”
contacts with the forum. Helicopteros Nacionales de Columbia, S.A.
v. Hall, 466 U.S. 408, 415-16 (1984). However, Plaintiffs only
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assert that Defendant’s contacts with Illinois are sufficient to justify
specific jurisdiction. Pls. Resp. at 7.
To establish the minimum contacts necessary to establish
specific personal jurisdiction, the Federal Circuit applies a threefactor test: whether (1) the defendant purposefully directed its
activities at residents of the forum; (2) the claim arises out of or
relates to those activities; and (3) the assertion of personal
jurisdiction is reasonable and fair. Breckenridge Pharm., Inc. v.
Metabolite Labs., Inc., 444 F.3d 1356, 1363 (Fed. Cir. 2006). “The
first two factors correspond with the ‘minimum contacts’ prong of
the International Shoe analysis, and the third factor corresponds
with the ‘fair play and substantial justice’ prong of the analysis.”
Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2001).
Plaintiffs bear the burden of establishing the first two factors while
Defendant bears the burden of showing that the exercise of
personal jurisdiction would be unreasonable. Grober v. Mako
Prods., Inc., 686 F.3d 1335, 1346 (Fed. Cir. 2012).
Plaintiffs argue that Defendant purposely directed its activities
at Illinois by selling to and installing its Automated Puck System for
a customer in Springfield, Illinois. Plaintiffs argue that the sale of a
Page 10 of 26
single infringing product can show purposeful availment sufficient
to meet the minimum contacts requirement of the specific
jurisdiction analysis. Pls. Resp. at 8 (citing cases). Plaintiffs also
point out that, according to Defendant’s website, installation of the
Automated Puck System is a considerable project—taking up to 5
days—and that the president of Defendant personally oversees
installations of upgraded equipment. See Pls. Memo., Ex. D
(printout from Defendant’s website indicating that upgraded
equipment is installed “in around 5 days” and that all of
Defendant’s installations are “personally overseen by our
president”).
Defendant argues that Defendant has no offices, employees, or
property in Illinois. In addition, only one sale to a single customer
in Illinois occurred two and a half years ago. According to
Defendant, such contacts are insufficient to demonstrate personal
jurisdiction.
Plaintiff has made a prima facie showing that Defendant is
subject to personal jurisdiction. Defendant sold the allegedly
infringing product to a customer in Springfield, Illinois. As noted,
the parties dispute whether a single sale of a single product is
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sufficient to confer specific jurisdiction. However, Plaintiffs have
also asserted that Defendant installed the product which, according
to Defendant’s website, purportedly takes up to five days and is
personally overseen by Defendant’s president. Such action shows
that Defendant purposefully directed its activities at Illinois by
accepting the order, installing the product in Illinois, and personally
overseeing the installation in Illinois. See, e.g., Caddy Prods., Inc.
v. Greystone Int’l, Inc., No. 05-301, 2005 WL 3216689, at * 2 (D.
Minn. Nov. 29, 2005) (“By intentionally shipping the allegedly
infringing product to Minnesota, [defendant] purposefully directed
activity towards Minnesota”). In addition, Plaintiffs’ lawsuit arises
out of or relates to Defendant’s forum activities because the product
shipped to and installed in Illinois is the product accused of
infringement. See Id.; see also, e.g., Avocent, 552 F.3d at 1332
(noting that in the ordinary patent infringement suit, the claim
arises out of “the defendant’s alleged manufacturing, using, or
selling of the claimed invention”).
Defendant cites Gro Master, Inc. v. Farmweld, Inc., 920 F.
Supp. 2d 974, 982-83 (N.D. Iowa 2013), for the proposition that a
single sale of an allegedly infringing product is insufficient to confer
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specific personal jurisdiction over a defendant. That case, however,
is distinguishable.
In Gro Master, the court held that the defendant’s single
appearance at a trade show, publications in a national publication,
and single sale of an infringing product was insufficient to confer
specific jurisdiction over the defendant. In particular, the court
found that the single sale was insufficient because the defendant
made hundreds of sales in another forum. Id. at 983; but see
Equine PSSM Genetics, LLC v. Animal Genetics, Inc., No. 14-cv493, 2015 WL 868005, at *7 (Feb. 27, 2015) (noting that it is not
the volume of activity but the degree and type of contact that is
critical to determining whether a defendant directed activities
toward the forum state).
In contrast, the evidence presented here suggests that
Defendant has only made a total of seven sales of its Automated
Puck System. The parties do not indicate where the other sales
occurred, although Plaintiffs assert the other sales did not occur in
the Western District of Michigan. Unlike the situation in Gro
Master, where the one sale was insignificant in light of the total
number of sales made, the sale here was allegedly one sale out of
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seven, making the sale more significant. Moreover, Defendant did
not merely sell a single product in Illinois. Defendant purportedly
installed the product and the Defendant’s president personally
oversaw the installation.
Having found the existence of purposeful minimum contacts,
the Court turns to the last factor of the Federal Circuit’s three-part
test: whether the assertion of personal jurisdiction would comport
with fair play and substantial justice. As noted above, Defendant
bears the burden of showing that the exercise of jurisdiction would
be unreasonable under the circumstances. Grober 686 F.3d at
1346.
The reasonableness inquiry involves the consideration of
several factors: the burden on the defendant; the forum state’s
interest in adjudicating the dispute; the plaintiff’s interest in
obtaining convenient and effective relief; the interstate judicial
system’s interest in obtaining the most efficient resolution of
controversies; and the shared interest of the several States in
furthering the fundamental substantive social policies. Asahi Metal
Indust. Co., Ltd. v. Superior Court of Cal., Solano Cnty., 480 U.S.
102, 113 (1987). Jurisdiction is unreasonable only in the rare case
Page 14 of 26
“in which the plaintiff’s interest and the state’s interest in
adjudicating the dispute in the forum are so attenuated that they
are clearly outweighed by the burden of subjecting the defendant to
litigation within the forum”. Beverly Hills Fan Co., 21 F.3d 1558,
1568 (Fed. Cir. 1994).
In this case, Defendant offers no argument for why the
exercise of jurisdiction would be unreasonable in these
circumstances. Therefore, Defendant has forfeited the argument.
Consequently, the Court finds that Plaintiffs have made a prima
facie showing that Defendant is subject to personal jurisdiction in
Illinois.
B.
Transfer to the Western District of Michigan Would Not
Serve the Convenience of the Parties and Witnesses and
the Interest of Justice
In the alternative to a transfer of the case to Michigan for lack
of personal jurisdiction, Defendant argues the case should be
transferred to the Western District of Michigan pursuant to 28
U.S.C. § 1404(a). Section 1404(a) of Title 28 of the United States
Code provides the circumstances under which a court may transfer
a civil action to another district or division:
Page 15 of 26
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 regional circuit law governs motions to
transfer venue in patent cases. See Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1352 (Fed. Cir. 2000).
To warrant transfer, the moving party must show that (1)
venue is proper in the current district; (2) venue and jurisdiction
are proper in the transferee district; and (3) the transfer will serve
the convenience of the parties and witnesses and will serve the
interest of justice. College Craft Cos., Ltd. v. Perry, 889 F. Supp.
1052, 1054 (N.D. Ill. 1995); see also Gueorguiev v. Max Rave, LLC,
526 F. Supp. 2d 853, 856 (N.D. Ill. 2007). The moving party bears
the burden of proving the transferee district is more convenient. Id.
at 857. Whether to transfer a case under § 1404(a) is within the
court’s discretion. Research Automation, Inc. v. SchraderBridgeport Int’l, Inc., 626 F.3d 973, 977-78 (7th Cir. 2010) (“we
grant a substantial degree of deference to the district court in
deciding whether transfer is appropriate”).
Page 16 of 26
In this case, the parties only address whether the transfer will
serve the convenience of the parties and witness and is in the
interest of justice. The parties do not address whether venue is
proper in this district or whether venue and jurisdiction are proper
in the Western District of Michigan. In fact, Plaintiffs have filed a
motion to dismiss for lack of personal jurisdiction in the case filed
in the Western District of Michigan. See Pls. Resp., Ex. A (select
documents from the Michigan lawsuit). The motion remains
pending.
Venue is clearly proper in this district now that the Court has
found personal jurisdiction over Defendant. Trintec Indust., Inc. v.
Pedre Promotional Prods., Inc., 395 F.3d 1275, 1280 (Fed. Cir.
2005) (“Venue in a patent action against a corporate defendant
exists wherever there is personal jurisdiction”). Even if this Court
assumes that venue and jurisdiction are proper in the Western
District of Michigan, Defendant has not shown that transfer to the
Western District of Michigan is warranted.
When considering the convenience factor, the Court considers
the following factors: (1) the plaintiff’s choice of forum; (2) the situs
of material events; (3) the relative ease of access to evidence; (4) the
Page 17 of 26
convenience of the parties; and (5) the convenience of the witnesses.
See Body Sci. LLC v. Boston Scientific Corp., 846 F. Supp. 2d 980,
992 (N.D. Ill. 2012) (citing Research Automation, Inc. , 626 F.3d at
978). The plaintiff’s choice of forum is generally accorded
substantial weight but is entitled to less deference when the forum
is not the plaintiff’s home forum or lacks significant contact with
the litigation. Plotkin v. IP Axess, Inc., 168 F. Supp. 2d 899, 902
(N.D. Ill. 2001).
In this case, the Central District of Illinois is not Plaintiffs’
home forum. Plaintiffs assert they chose this district because it is
convenient for one of the Plaintiffs, MiTek USA, whose corporate
headquarters is located approximately 117 miles away in Missouri.
However, because the Central District of Illinois is not Plaintiffs’
home forum, and because Plaintiffs do not have meaningful
contacts within the State of Illinois, Plaintiffs’ choice of forum is
given less deference. First Horizon Pharm. Corp. v. Breckenridge
Pharm., Inc., No. 04 C 2728, 2004 WL 1921059, at *3 (N.D. Ill. July
21, 2004). Therefore, this factor is only afforded some weight but
weighs in favor of denying the transfer.
Page 18 of 26
As for the 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.” Beverly Hills Fan Co., 21 F.3d at 1571 (finding that the
situs of the injury was the place of the infringing sales in Virginia).
When determining the situs of the injury, courts generally focus on
the location of the allegedly infringing sales or the alleged infringer’s
place of business. Energaire Corp. v. E.S. Originals, Inc., No. 99 C
3252, 1999 WL 1018039, at *3 (N.D. Ill. Nov. 2, 1999).
In this case, Plaintiffs assert that one (out of seven known
sales) occurred in Illinois. Defendant claims that all of its products
are designed and manufactured in Michigan. Consequently, the
Court finds that this factor is neutral, as both forums are the situs
of Plaintiffs’ injury.
The third factor, relative ease of access to the evidence,
weighs slightly in favor of transfer. Defendant asserts that virtually
all of the documentary evidence on which Defendant will rely is
located in the Western District of Illinois. Plaintiffs claim that the
purchasers of the infringing products, such as U.S. Truss Co. in
Springfield, Illinois, are likely sources of evidence. In addition,
Page 19 of 26
Plaintiffs point out, the infringing product is a large piece of
machinery and inspections of the Automated Puck System by
expert witnesses and others would likely need to occur at the
facility where the system has been installed, which includes the
U.S. Truss facility in Springfield, Illinois. Finally, Plaintiffs assert
that the proliferation of electronic document generation, storage,
and discovery renders the location of the documentary evidence
irrelevant.
Patent infringement suits “often focus on the activities of the
alleged infringer, its employees, and its documents.” Wen Prods.,
Inc. v. Master Leather, Inc., 899 F. Supp. 384, 385 (N.D. Ill. 1995);
see also Ambrose v. Steelcase, Inc., No. 02 C 2753, 2002 WL
1447871, at *3 (N.D. Ill. July 3, 2002) (finding access to sources of
proof favored transfer to forum where evidence about the design,
development and engineering of the allegedly infringing device was
located). Such evidence will likely be found in Michigan. However,
modern technology makes the transfer of data easier because
electronic data and information can be sent electronically. Craik v.
Boeing Co., 37 F. Supp. 3d 954, 961 (N.D. Ill. 2013) (noting that “in
this computerized era of litigation, parties are no longer unduly
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burdened by the prospect of transferring mass amounts of
electronic data and information”). Therefore, this factor only
slightly favors transfer.
The convenience-of-the-parties factor is neutral. Transferring
the case to Michigan, which is more convenient for Defendant,
would merely shift the inconvenience from one party to the other.
See, e.g., Gueorguiev v. Max Rave, LLC, 526 F. Supp. 2d 853, 857
(N.D. Ill. 2007) (“The burden is on the moving party to demonstrate
that the balance of the factors weighs heavily in favor of transfer
and that transfer would not merely shift inconvenience from one
party to another”). Therefore, this factor is neutral.
The convenience-of-the-witnesses factor is also neutral.
Defendant bears the burden of establishing the witnesses
Defendant would call, their testimony, and the importance of their
testimony. Rohde v. Central R.R. of Ind., 951 F. Supp. 746, 748
(1997); Rosen v. Spirit Airlines, Inc., --- F. Supp. 3d ---, 2015 WL
3798150, at * 4 (N.D. Ill. June 17, 2015) (the moving party must
“provide specific information about the witness testimony”). The
Court should also consider whether the nonparty witnesses can be
subpoenaed to testify from the forum. Rohde, 951 F. Supp. at 748.
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Defendant does not provide sufficient information for the
Court to determine whether transfer would be convenient to the
witnesses. While Defendant states that all of Defendant’s owners,
officers, and employees work from the Lansing, Michigan office, the
convenience of employee-witnesses is generally given less weight
than the convenience of non-party witnesses because the witnesses
are usually within the control of the parties. Rorah v. Petersen
Health Care, No. 13 C 01827, 2013 WL 3389063, at *4 (N.D. Ill.
July 8, 2013); Brandon Apparel Group, Inc. v. Quitman Mfg. Co.
Inc., 42 F. Supp. 2d 821, 834 (N.D. Ill. 1999). Moreover, the
Central District of Illinois is more convenient for Plaintiff MiTek
USA’s party representatives and witnesses who are located 117
miles away in Missouri. In addition, this Court regularly uses
videoconferencing to avoid the cost of travel for parties, witnesses,
and attorneys, even for purposes of trial. Given the lack of
information provided by Defendant and the fact that witnesses can
testify by videoconference, the Court finds this factor is neutral.
Considering the convenience of the parties and the witnesses,
the Court finds that neither forum will avoid imposing
inconvenience on the parties and the witnesses. The inconvenience
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in both forums is comparable. In such case, “the tie is awarded to
the plaintiff[.]” In re Nat’l Presto Industs., Inc., 347 F.3d 662, 665
(7th Cir. 2003) (“When plaintiff and defendant are in different states
there is no choice of forum that will avoid imposing inconvenience;
and when the inconvenience of the alternative venues is comparable
there is no basis for a change of venue; the tie is awarded to the
plaintiff[.]”).
Whether transfer would serve the interest of justice requires
the Court consider the following factors: (1) the “docket congestion
and likely speed to trial” in each forum; (2) “each court’s relative
familiarity with the relevant law;” (3) “the respective desirability of
resolving controversies in each locale;” and (4) “the relationship of
each community to the controversy. “ Research Automation, 626
F.3d at 978.
According to the U.S. District Courts Federal Management
Statistics3 for the 12-month period ending March 2016, the average
number of cases pending per judgeship in the Central District of
Illinois was 473. Weighted filings—statistics accounting for more
See http://www.uscourts.gov/statistics-reports/federal-court-managementstatistics-march-2016
3
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time-consuming cases—in the Central District was 390 cases per
judgeship. The median time from filing to disposition in civil cases
was 11 months. The median time from filing to trial in civil cases
was 36.1 months. Total filings for the 12-month period ending
March 31, 2016 in the Central District was1,905. The Central
District of Illinois has four judgeships and no vacancies, three
magistrate judges, and four senior judges.
In the Western District of Michigan, the average number of
cases pending per judgeship was 423. The weighted filing was 444
cases per judgeship. The median time from filing to disposition of
civil cases was 9.2 months. The median time from filing to trial in
civil cases was 28 months. Total filings for the 12-month period
ending March 31, 2016 was 2,136. The Western District of
Michigan has four judgeships and no vacancies, four magistrate
judges, and two senior judges. See
http://www.miwd.uscourts.gov/judicial-directory.
While the Western District of Michigan judges have more
pending cases per judgeship when considering the weighted filings
and more cases filed overall, the Western District also has a shorter
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time between filing and disposition and filing and trial. Therefore,
the Court finds this factor is neutral.
The next factor, each forum’s relative familiarity with the
relevant law, is neutral. Both this Court and the Western District of
Michigan would be equipped to decide this case because patent
infringement is a question of federal law. Body Sci., 846 F. Supp.
2d at 998.
The final factors -- the respective desirability of resolving
controversies in each locale and the relationship of each community
to the controversy—weigh slightly in favor of transfer. Illinois has
an interest in the controversy because an allegedly infringing
product was sold and installed in Illinois. Body Sci., 846 F. Supp.
2d at 998 (state where the allegedly infringing product is sold has
an interest in the controversy). However, Michigan has a greater
interest because the allegedly infringing product was manufactured
and developed in Michigan. See Body Sci., 846 F. Supp. 2d at 998.
Considering all of the factors, the Court finds that Defendant
has failed to show that transfer to the Western District of Michigan
is clearly more convenient or in the interest of justice. The relevant
factors are largely neutral or only slightly favor transfer. Plaintiffs
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have chosen this forum, and this forum is not unduly inconvenient
to Defendant or adverse to the interest of justice. Moreover, this
forum has an interest in the litigation in light of the sale and
installment of an allegedly infringing product in this district. For all
of these reasons, transfer is not warranted.
III. CONCLUSION
For the reasons stated, Defendant’s Motion to Transfer (d/e 5)
is DENIED. Defendant shall file an answer on or before July 25,
2016.
ENTER: July 8, 2016
FOR THE COURT:
s/Sue E. Myerscough
SUE E. MYERSCOUGH
UNITED STATES DISTRICT JUDGE
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