Pinpoint Incorporated v. Groupon, Inc. et al

Filing 77

MEMORANDUM Opinion Signed by the Honorable John F. Grady on 12/5/2011. Mailed notice(cdh, )

11-5597.111-JCD

December 5, 2011

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
PINPOINT INCORPORATED,

)
)
)
)
)
)
)
)
)
)

Plaintiff,
v.
GROUPON, INC.; HOTWIRE, INC.;
L.L. BEAN, INC.; and ORBITZ, LLC,
Defendants.

No.

11 C 5597

MEMORANDUM OPINION
Before the court is the motion of defendant L.L. Bean, Inc. to
sever and transfer the claims asserted against it to the District
of Maine.

For the reasons explained below, the motion is granted.
BACKGROUND

Pinpoint, Inc. brings this patent infringement action against
Groupon, Inc.; Hotwire, Inc.; L.L. Bean, Inc.; and Orbitz, LLC.
Pinpoint alleges that the defendants have infringed three patents:
“Pseudonymous

Server

for

System

for

Customized

Electronic

Identification of Desirable Objects,” United States Patent No.
5,754,938;

“System

and

Method

for

Providing

Access

to

Video

Programs and Other Data Using Customer Profiles,” United States
Patent No. 7,853,600 B2; and “System and Method for Providing
Access to Data Using Customer Profiles,” United States Patent No.
8,056,100.

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L.L. Bean moves for severance and transfer.
DISCUSSION
A.

Misjoinder
Under Federal Rule of Civil Procedure 20(a)(2), parties may be

joined in one action as defendants where (1) “any right to relief
is asserted against them jointly, severally, or in the alternative
with respect to or arising out of the same transaction, occurrence,
or series of transactions or occurrences;” and (2) “any question of
law or fact common to all defendants will arise in the action.”
Although the second requirement of Rule 20(a)(2) appears to be
satisfied, the first requirement is not.

As L.L. Bean points out,

defendants are unrelated companies that have nothing in common
except Pinpoint’s allegation that they have infringed the same
three patents.

Pinpoint offers a lame response: “All of the

accused products are extremely similar” (an allegation that is not
included in the complaint) because they “involve proxy servers, web
servers, databases, websites, user accounts, customer profiles, and
targeted email offers to specific customers.”

(Pl.’s Opp’n at 4.)

The defendants’ operation of unrelated websites does not establish
a common transaction or occurrence.

We concur with our colleagues

in this district, who have consistently held that the first element
of Rule 20’s joinder test is not met where, as here, plaintiff
merely accuses unrelated defendants of independently infringing the

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same patent.1

See, e.g., ThermaPure, Inc. v. Temp-Air, Inc., No.

10 CV 4724, 2010 WL 5419090, at *4 (N.D. Ill. Dec. 22, 2010)
(collecting cases); Androphy v. Smith & Nephew, Inc., 31 F. Supp.
2d 620, 623 (N.D. Ill. 1998) (“[C]laims of infringement against
unrelated defendants, involving different [products], should be
tried separately against each defendant.”); Billingnetwork Patent,
Inc. v. Avisena, Inc., No. 09 CV 8002, 2010 WL 45765 (N.D. Ill.
Jan. 4, 2010); Rudd v. Lux Prods. Corp., No. 09 CV 6957, 2011 WL
148052, at *3 (N.D. Ill. Jan. 12, 2011); Spread Spectrum Screening,
LLC v. Eastman Kodak Co., No. 10 CV 1101, 2010 WL 3516106, at *2
(N.D. Ill. Sept. 1, 2010).
Because Pinpoint does not assert a right to relief against the
defendants that arises out of the same transaction or occurrence,
the defendants have been misjoined, and L.L. Bean’s motion to sever
will be granted. Furthermore, Pinpoint will be required to dismiss
two of the three remaining defendants (Groupon, Hotwire, and
Orbitz) without prejudice and proceed in this action against only
one of those defendants.

If Pinpoint wishes to pursue the two

defendants it chooses to dismiss, it will have to file separate

1/
This district’s prevailing approach is in accord with the Leahy-Smith
America Invents Act, which became effective a month after the instant action was
filed. The Act includes a provision (which does not apply to cases filed before
the effective date of the Act) stating that accused patent infringers may be
joined in one action as defendants only if two conditions are met: (1) the right
to relief against them must arise “out of the same transaction, occurrence, or
series of transctions or occurrences relating to the making, using, importing
into the United States, offering for sale, or selling of the same accused product
or process”; and (2) “questions of fact common to all defendants or counterclaim
defendants will arise in the action.” 35 U.S.C. § 299 (emphasis added).

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lawsuits against them.
in

this

district,

In the event that those suits are refiled

Judge

Shadur’s

remarks

in

Billingnetwork

Patent are applicable: Pinpoint’s counsel must not fill out the
cover sheets on those new actions as reflecting the refiling of a
previously-dismissed action; no motion for reassignment on grounds
of relatedness would be appropriate; and we would have no objection
to

an

agreement

among

the

parties

that

would

allow

for

the

coordination of overlapping discovery to avoid duplication.
B.

Transfer
“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.”
U.S.C. § 1404(a).

28

We may transfer the severed claims against L.L.

Bean if (1) venue is proper in both this court and in the District
of Maine; (2) the District of Maine is more convenient for the
parties and witnesses; and (3) transfer would serve the interests
of justice.

See, e.g., Abbott Labs. v. Selfcare, Inc., No. 98 C

7102, 1999 WL 162805, at *1 (N.D. Ill. Mar. 15, 1999) (Grady, J.).
“The movant . . . has the burden of establishing, by reference to
particular circumstances, that the transferee forum is clearly more
convenient.”

Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219-20

(7th Cir. 1986).
There is no dispute that venue is proper both here and in the
District of Maine, so we will discuss the second and third factors.

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1.

Convenience Factors

To evaluate the convenience of one venue over another, we
consider five factors: (1) the plaintiff’s choice of forum; (2) the
situs of material events; (3) the relative ease of access to
sources of proof; (4) the convenience of the parties; and (5) the
convenience of witnesses.
a.

Abbott Labs., 1999 WL 162805, at *3.

Plaintiff’s Choice of Forum
and Situs of Material Events

“A plaintiff’s choice of forum is generally given substantial
weight, particularly when it is the plaintiff’s home forum.”
Amorose v. C.H. Robinson Worldwide, Inc., 521 F. Supp. 2d 731, 735
(N.D. Ill. 2007).

But the weight given to its choice of forum “is

lessened if the chosen forum has relatively weak connections with
the operative facts giving rise to the claim.”

Von Holdt v. Husky

Injection Molding Sys., Ltd., 887 F. Supp. 185, 188 (N.D. Ill.
1995).
Pinpoint is a Texas corporation with a principal place of
business here in this district.

Its choice of forum is entitled to

little weight, though, because this district has a weak connection
with the operative facts of its claims.

In patent infringement

cases, “the location of the infringer’s principal place of business
is often the critical and controlling consideration because such
suits often focus on the activities of the alleged infringer, its
employees,
plaintiff.”

and

its

documents,

rather

than

upon

those

of

the

Cooper Bauck Corp. v. Dolby Labs., Inc., No. 05 C

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7063, 2006 WL 1735282, at *5 (N.D. Ill. June 19, 2006) (internal
quotation marks and brackets omitted); see also ThermaPure, 2010 WL
5419090,

at

*6.

In

addition,

“[i]n

infringement

litigation

involving Internet websites courts have tended to emphasize the
location where the website is maintained--otherwise the alleged
tort

would

be

too

diffuse

to

pinpoint.”

Swift

v.

Medicate

Pharmacy, Inc., Nos. 10 C 689 & 10 C 1874, 2010 WL 3548006, at *4
(N.D. Ill. Sept. 3, 2010).

According to Pinpoint, this case is

about L.L. Bean’s operation of its website and promotional e-mails
to

customers.

Illinois,”2

as

Although
Pinpoint

L.L.

argues

Bean’s
(as

website

it reaches

“reaches

into

throughout

the

country), L.L. Bean is headquartered in Freeport, Maine, and it
conducts all of its website operations there, not in Illinois.
L.L. Bean’s employees perform all activities relating to customer
profiles and promotional e-mail in Maine.

The employees most

knowledgeable about these activities, as well as the relevant
documents, are located in Maine.

(L.L. Bean’s Mot. to Sever and

Transfer, Ex. 2, Decl. of Peter Liberatore ¶¶ 5, 7-11.)

The

alleged conduct that gives rise to Pinpoint’s claims occurred in
Maine, and the situs of material events is therefore the District
of Maine.

2/

Pl.’s Opp’n at 8.

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Pinpoint’s

choice

of

forum

weighs

only

slightly

against

transfer, while the situs of material events weighs strongly in
favor of transfer.
b.

Relative Ease of Access to Sources of Proof

Pinpoint does not contest L.L. Bean’s assertion that the
documents relevant to its allegedly infringing conduct are located
in Maine, but does note that its own documents are located here in
Chicago and argues that “in this day and age,” the transfer of
documents for use in litigation is no great burden.
at 8.)

(Pl.’s Opp’n

In our view, the location of Pinpoint’s documents is not a

significant consideration because it is L.L. Bean’s documents that
will constitute the bulk of the relevant evidence, although we
agree that

advances

in

technology

information much easier and cheaper.

have

made the

movement

of

Thus, we conclude that the

relative ease of access to sources of proof slightly supports
transfer.
c.

Convenience of the Parties and Witnesses

This factor is neutral as to the parties themselves; this
district is more convenient for Pinpoint, and the District of Maine
is

more

convenient

for

L.L.

Bean.

The

convenience

witnesses, on the other hand, weighs in favor of transfer.
the bulk of the evidence will come from L.L. Bean.

of

the

Again,

None of its

witnesses are located in Illinois; they are in Maine and will have
to be deposed there.

Pinpoint points out that various third-party

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witnesses and the prosecuting attorneys who drafted or revised the
patent claims at issue are scattered throughout the eastern half of
the country, but none of these potential witnesses are located in
Illinois, so they do not change the analysis.

The convenience of

the witnesses favors transfer.
2.

Public Interest Factors

When examining the interests of justice (often referred to as
the

“public

administration

interest”
of

the

factors),
court

we

system

focus
and

on

the

consider

efficient

the

courts’

familiarity with the applicable law, the speed at which the case
will

proceed

to

trial,

and

controversies in their locale.

the

desirability

of

resolving

St. Paul Fire & Marine Ins. Co. v.

Brother Int’l Corp., No. 05 C 5484, 2006 WL 1543275, at *1 (N.D.
Ill. June 1, 2006).

The parties agree that this court and a court

in the District of Maine are equally capable of interpreting and
applying federal patent law, so that is a neutral factor.
a.

Speed at Which the Case Will Proceed

L.L. Bean cites statistics indicating that the District of
Maine’s docket is much less burdened than the docket of this court.
For the twelve-month period ending September 30, 2010, the District
of Maine had 395 pending civil actions, and the Northern District
of Illinois had 8,786.

When one considers the number of judges in

each district, it appears that the dockets of judges in the
District of Maine are considerably lighter.

In the same time

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period, 9 civil trials were held in the District of Maine, and 113
civil trials were held here.

The median time to trial in Maine was

not reported because there were less than ten trials, but we can
compare the two districts’ median times to disposition, which are
very similar.

See Statistics Division, Administrative Office of

the United States Courts, Judicial Business of the United States
Courts, tbls. C-5, C-6 & C-10 (2010), available at http://www.
uscourts.gov/Statistics/JudicialBusiness/JudicialBusiness2010.aspx.
Pinpoint does not dispute that the District of Maine has a lighter
docket, but discounts the importance of “general statistics,”
observing that the Northern District of Illinois “has achieved one
of the fastest times to resolution in patent cases over the last
decade, taking just .95 years on average.”3
12.)

(Pl.’s Opp’n at 11-

Pinpoint also emphasizes that the Northern District of

Illinois has two features that the District of Maine lacks: local
patent rules and participation in the Patent Pilot Program (which
is designed to enhance patent expertise in the federal courts).
This district’s participation in the Patent Pilot Program is
not relevant here.

This case was randomly assigned to us, and we

did not decline to accept it.

Similarly, the existence of our

local patent rules does not affect our analysis because there is no
indication that they would reduce the length of time it would take

3/
It is somewhat ironic that plaintiff (jointly with defendants) proposed
a scheduling order, which we declined to enter, that would have taken this case
well into the year 2013 and likely 2014.

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to resolve this particular case.

See, e.g., ThermaPure, 2010 WL

5419090, at *8 (rejecting argument that this district’ local patent
rules reduce the cost and expense of patent litigation).

The

important element is that the docket of the District of Maine is
much

lighter.

That

district’s

median

time

from

filing

to

disposition, however, is similar to that of this district, so we
find that the speed at which the case will proceed weighs just
slightly in favor of transfer.
b.

Desirability of Resolving
Controversies in Their Locale

L.L. Bean contends that of the two venues, the District of
Maine has a stronger interest in this action.

We agree.

Pinpoint

is correct that the Northern District of Illinois has an interest
in protecting its citizens from infringement, but the District of
Maine

has

employees

a

stronger

are

there,

interest.
and

that

L.L.
is

Bean’s

where

headquarters

the

adjudication” of Pinpoint’s claims would be felt.

“impact

of

and
the

See ThermaPure,

2010 WL 5419090, at *9.
In sum, L.L. Bean has met its burden of establishing that the
District of Maine is clearly more convenient.
material events strongly favors transfer.

The situs of

Pinpoint’s choice of

forum weighs against transfer, but only slightly so because this
forum has a tenuous connection with the operative facts.

The

relative ease of access to sources of proof weighs slightly in
favor of transfer.

While the parties’ convenience is a neutral

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factor, the convenience of witnesses weighs in favor of transfer.
The familiarity-with-law factor is neutral, and the speed at which
the

case

will

transfer.

proceed

to

trial

weighs

slightly

in

favor

of

In addition, transfer would be in the public interest

because of the desirability of resolving controversies in their
locale.

Accordingly, transfer is appropriate.
CONCLUSION

For the foregoing reasons, the motion of defendant L.L. Bean,
Inc. to sever and transfer the claims against it to the District of
Maine [41] is granted.

The Clerk is directed to transfer the

claims against L.L. Bean to the District of Maine.

Plaintiff is

directed to dismiss without prejudice, by December 12, 2011, two of
the remaining three defendants in this action.
chooses

to

refile

actions

in

this

district

If plaintiff

against

the

two

dismissed defendants, it should do so in accordance with this
opinion.

DATE:

December 5, 2011

ENTER:

___________________________________________
John F. Grady, United States District Judge