Eclipse IP, LLC v. ECCO USA, Inc.

Filing 34

MEMORANDUM OPINION AND ORDER GRANTING 27 DEFENDANT'S MOTION FOR TRANSFER OF VENUE. Signed by Senior Judge Frederick P. Stamp, Jr. on 10/30/2013. (copy to counsel of record via CM/ECF) (nmm) [Transferred from wvnd on 10/30/2013.]

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF WEST VIRGINIA
ECLIPSE IP, LLC,
Plaintiff,
v.

Civil Action No. 5:12CV160
(STAMP)

ECCO USA, INC.,
Defendant.
MEMORANDUM OPINION AND ORDER
GRANTING DEFENDANT’S MOTION FOR TRANSFER OF VENUE
I.

Background

The plaintiff, Eclipse IP, LLC, filed the above-styled civil
patent action with this Court alleging that the defendant, ECCO
USA, Inc., infringed on one or more of its patents.

The plaintiff

asserts a total of five different patent infringement claims.

The

alleged infringements are based on the defendant’s use of its
electronic order, purchase, and product return status messaging and
information systems.

As relief, the plaintiff seeks monetary

damages, including interest from the date of infringement, and all
other remedies available based on the defendant’s alleged willful
infringement.

Further, the plaintiff seeks attorneys’ fees and

costs.
After answering the complaint, the defendant filed a motion
for transfer of venue to the United States District Court for
District

of

New

Hampshire

pursuant

to

28

U.S.C.

§

1404(a).

Thereafter, the plaintiff responded and the defendant replied.

Thus, the motion is fully briefed and ripe for review.

For the

reasons set forth below, the defendant’s motion to transfer venue
is granted.
II.

Applicable Law

A motion to transfer a case to another venue is subject to the
provisions of 28 U.S.C. §§ 1404(a) and 1391(a).

Pursuant to 28

U.S.C. § 1404(a), “a district court may transfer any civil action
to any other district or division where it might have been brought”
where such transfer is made “[f]or the convenience of parties and
witnesses, in the interest of justice.” 28 U.S.C. § 1404(a). This
rule is intended to allow a court to transfer venue in order to
“make trial of a case easy, expeditious and inexpensive.” Gulf Oil
Corp. v. Gilbert, 330 U.S. 501, 508 (1947) (superceded by statute
on other grounds).
The decision to transfer venue is left to the sound discretion
of the trial court.
(4th Cir. 1956).

Southern Ry. Co. v. Madden, 235 F.2d 198, 201
In making this determination, a court should

consider:
(1) ease of access to sources of proof; (2) the
convenience of parties and witnesses; (3) the cost of
obtaining the attendance of witnesses; (4) the
availability of compulsory process; (5) the possibility
of a view; (6) the interest in having local controversies
decided at home; and (7) the interests of justice.
In re Campbell Transp. Co., Inc., 368 F. Supp. 2d 553, 555-56 (N.D.
W. Va. 2005) (citing Alpha Welding & Fabricating Co. v. Todd
Heller, Inc., 837 F. Supp. 172, 175 (S.D. W. Va. 1993)).
2

The

movants typically bear the burden of demonstrating that transfer is
proper. Versol B.V. v. Hunter Douglas, Inc., 806 F. Supp. 582, 592
(E.D. Va. 1992).

The Supreme Court of the United States has

further stated that “unless the balance is strongly in favor of the
defendant,

the

disturbed.”

plaintiff’s

choice

forum

should

rarely

be

Gulf Oil, 330 U.S. at 508.
III.

A.

of

Discussion

Transfer of Venue
The parties in this action do not contest that the plaintiff

“might have brought” this action in the United States District
Court for the District of New Hampshire.

Thus, the issue is

whether the interests of justice and the convenience to the parties
weigh in favor of transferring venue.

The defendant argues that

based on the factors outlined above, justice and convenience both
weigh in favor of transferring venue.

The plaintiff contests this

argument, and instead, asserts that such factors require that this
Court deny the defendant’s motion for transfer of venue.
1.

Ease of Access to Sources of Proof

First, concerning the ease of access to sources of proof, the
defendant asserts that the relevant proof is located in the
District of New Hampshire.

Specifically, it asserts that all of

the documents concerning its online sales system, which is the
system involved in the plaintiff’s patent infringement claims,
reside at the defendant’s corporate headquarters in New Hampshire.

3

The plaintiff, however, asserts that to the extent that relevant
proof is located in New Hampshire, this fact should be accorded
little weight if any, as the documents can be transported easily or
transferred electronically.

While the plaintiff is correct that

the cost of transferring documents to this district would not be
substantial and may even be done electronically, this Court still
finds that this factor weighs at least somewhat is favor of the
defendant.
2.

Convenience of Parties and Witnesses

Second, as to the convenience of the parties and witnesses,
the defendant argues that its key witnesses live and work in or
near New Hampshire.

Further, the defendant alleges that the

plaintiff has no presence in West Virginia and no key witnesses in
that area.
or

other

The plaintiff argues that the convenience of officers
witnesses

with

interests

closely

aligned

with

the

defendant should be accorded little weight. Further, the plaintiff
argues that the defendant failed to describe the substance of their
testimony so as to provide this Court with enough information to
weigh the importance of witness convenience against other factors.
Initially,

this

Court

finds

that

the

defendant

provided

sufficient information regarding its potential witnesses.

“The

party asserting witness inconvenience has the burden to proffer, by
affidavit or otherwise, sufficient details respecting the witnesses
and their potential testimony to enable the court to assess the

4

materiality of evidence and the degree of inconvenience.”

Koh v.

Microtek Int’l, Inc., 250 F. Supp. 3d 627, 636 (E.D. Va. 2003).
Here, the defendant provided this Court by way of affidavit with a
list of three party witnesses, who are employees of the defendant,
and two non-party witnesses, which are outside consulting firms.
The

defendant

asserts

that

all

three

employees

live

in

New

Hampshire, and one of the two consulting firms has offices in New
Hampshire.

The other consulting firm is alleged to be located in

Massachusetts.

While the defendant does not outline the exact

substance of the testimony, it still provides either the employee’s
job description or the firm’s role in the defendant’s online sales
system.

Thus, based on these descriptions, this Court is able to

infer the basic substance of the testimony, its materiality, and
also the degree of inconvenience to those witnesses.
The plaintiff is correct in noting that courts, in considering
the

convenience

to

witnesses,

“draw[]

a

distinction

between

party-witnesses and non-party witnesses and afford[] greater weight
to the convenience of non-party witnesses.”

Lycos, Inc. v. TiVo,

Inc., 499 F. Supp. 2d 685 (E.D. Va. 2007) (citation omitted).

The

defendant, however, has provided this Court with both witnesses
that are employees of the defendant and also witnesses that are
outside consulting firms.

The plaintiff has provided this Court

with two examples of its witnesses, a manager of the plaintiff and
the alleged inventor of the patent. Neither of these two witnesses

5

reside in this district.

The plaintiff asserts that its manager

maintains a residence in nearby Hermitage, Pennsylvania, and the
inventor originates from Wheeling, West Virginia, and regularly
travels to the area.

As the inventor is allegedly a non-party

witness because he no longer owns the patents, the plaintiff
asserts his convenience should be accorded great weight.

This

Court notes that while the inventor may regularly travel to the
area, this does not make it a convenient forum for him, as the
trial cannot be scheduled around his visits. Thus, the convenience
alleged by the plaintiff as to the inventor is minimal.

Further,

as to the plaintiff’s manager, again this Court cannot schedule a
trial around the manager’s visits to his maintained home, which
this Court notes is located over 100 miles from this point-ofholding court. As such, based on the witnesses that this Court was
provided with and its evaluation of the parties’ arguments, this
Court finds that this factor weighs in favor of transfer.
3.

Cost of Obtaining the Attendance of Witnesses

Third, concerning the cost of obtaining the attendance of the
witnesses in this action, the defendant asserts that it would be
far less expensive to have this action heard in the District of New
Hampshire, as most of the key witnesses reside in New Hampshire.
The defendant further asserts that it is unaware of any key
witnesses who reside or conduct business in West Virginia.

In

opposition, the plaintiff asserts that the Northern District of

6

West Virginia is centrally located and a convenient forum for the
parties and potential non-party witnesses.

Specifically, the

plaintiff asserts that this district is 500 miles closer to the
defendant’s headquarters than to the plaintiff’s headquarters.
This Court finds that this factor weighs in favor of transfer, as
the fact that this district is 500 miles closer to the defendant’s
headquarters does not speak to the cost of having witnesses attend
the trial here.

While the mileage may be less, accommodations and

other travel expenses also must be taken into account.

These

expenses do not change as a result of this district being 500 miles
closer

to

the

defendant’s

headquarters

than

it

is

to

the

plaintiff’s headquarters.
4.

Availability of Compulsory Process

Fourth, as to the availability of compulsory process, the
plaintiff asserts that the documents and witnesses reside outside
of this Court’s subpoena power.

In opposition, the plaintiff

argues that because the witnesses provided by the defendant are
party witnesses, the defendant has not shown that the witnesses
would not willingly appear for trial, and therefore this factor
does not weigh in the defendant’s favor.

It is true that “[w]hen

the appearance of witnesses can be secured regardless of the
forum’s location through court order or persuasion by an employer
who is a party to the action, this factor becomes less important.”
Samsung Electronics Co., Ltd. v. Rambus, Inc., 386 F. Supp. 2d 708,

7

719 (E.D. Va. 2005) (citation and internal quotations omitted).
The defendant, however, has provided two outside consulting firms
whose representatives would act as possible witnesses and the
plaintiff has provided two witnesses, neither of who seem to be
within this Court’s subpoena power.1

Accordingly, as none of the

witnesses, whether party witnesses or non-party witnesses, appear
to be within this Court’s subpoena power, this Court finds that
this factor also weighs in favor of transfer.
5.

Possibility of a View

Fifth, as to the possibility of a view, neither party asserts
that such a view is required.

Although, the defendant does assert

that to the extent a jury will need to personally view any sites
relevant to the dispute, such sites are in New Hampshire.
plaintiff does not contest this argument.

The

This Court, however,

finds that this factor does not weigh in favor of transfer.

The

defendant admits that it does not believe a view will be required;
thus, it would neither be more or less convenient to transfer the
venue to the District of New Hampshire based on this factor if no
such view is likely to occur.

1

Federal Rule of Civil Procedure 45(b)(2) places limits on a
district court’s subpoena power. A subpoena may be served at the
boundaries of the court’s district, or outside of the district, but
within 100 miles of the place specified for the deposition,
hearing, trial, production, or inspection. The other two options
provided by Rule 45(b)(2) do not apply in this circumstance.
8

6.

Interest in Having Local Controversies Decided at Home

Sixth, concerning the interest in having local controversies
decided at home, the defendant argues that this is not a dispute
that is local to West Virginia.

Specifically, the defendant

asserts that neither party employs any citizen of this district and
it is also not alleged that any citizen of this district suffered
harm. Further, the defendant asserts that its online sales in West
Virginia represent only a minute fraction of its revenue.

The

plaintiff does not make any allegations concerning whether or not
this is a local dispute.

After a review of the record in this

matter, this Court finds that the Northern District of West
Virginia has little to no connection with this dispute. Therefore,
this

Court

cannot

find

that

local

interests

are

involved.

Accordingly, this factor weighs in favor of transfer to the
District of New Hampshire, which actually has a local interest due
to the defendant’s headquarters and operations being located within
that district.
7.

Interests of Justice

Seventh, the defendant argues that the interests of justice
favor the District of New Hampshire over the Northern District of
West Virginia.

The defendant argues that while courts give weight

to the plaintiff’s choice of forum, this weight diminishes when the
plaintiff has not chosen its home forum.

Further, the defendant

argues that the District of New Hampshire enjoys a lighter docket

9

and is equally capable of handling a patent infringement action.
The defendant also indicates that the plaintiff has not been
reluctant to initiate patent infringement suits across the country.
Thus, the defendant argues that if the plaintiff has been able to
litigate in such districts as the Central District of California
and the Eastern District of Texas, moving this litigation to New
Hampshire
plaintiff.

should

not

impose

any

meaningful

burden

upon

the

In response, the plaintiff argues that its choice of

forum favors retention of this case. Further, the plaintiff argues
that this Court should consider the fact that the defendant is a
“worldwide conglomerate” “making hundreds of millions of dollars
per year” and the plaintiff is “a small company.”
“The ‘interest of justice’ category is designedly broad.” Bd.
of Tr., Sheet Metal Workers Nat. Fund v. Baylor Hearing & Air
Conditioning, Inc., 702 F. Supp. 1253, 1260 (E.D. Va. 1988).

The

category is “meant to encompass all those factors bearing on
transfer that are unrelated to the other factors.”

JTH Tax, Inc.

v. Lee, 482 F. Supp. 731, 738 (E.D. Va. 2007) (citation omitted).
However, the defendant’s “status as a corporation with sufficient
resources to defend in a foreign forum is not a factor that [a]
court considers in a transfer analysis.”

Id. (citing Precision

Franchising, LLC v. Coombs, No. 1:06CV1148, 2006 WL 3840334, at *5
(E.D.

Va.

Dec.

27,

2006);

Intranexus,

Inc.

v.

Siemens

Med.

Solutions Health Servs. Corp, 227 F. Supp. 2d 581, 584 (E.D. Va.

10

2002)).

Further, while the plaintiff’s choice of forum should

ordinarily be given substantial weight, “a plaintiff’s chosen venue
is not given such substantial weight when the plaintiff selects a
forum other than its home forum and the claims bear little or no
relation to the chosen forum.”

Koh, 250 F. Supp. 2d at 633; see

Klay v. Axa Equitable Life Ins. Co., No. 5:08CV118, 2009 WL 36759,
at *3 (N.D. W. Va. Jan. 6, 2009) (finding that venue should be
transferred where plaintiff’s domicile was located elsewhere and
there was little connection between the plaintiff’s claims and the
judicial district).
In this action, the plaintiff’s chosen venue is accorded
little weight.

The Northern District of West Virginia is not the

plaintiff’s home forum, as the plaintiff’s headquarters are located
in Florida. Further, the patent infringement claims bear little to
no relation to this district, as the defendant indicates that
online

sales

in

the

State

of

West

Virginia

are

minimal.

Additionally, the base of the defendant’s online operations, which
are at issue, is in New Hampshire.
The financial conditions of either party is also not given any
weight.

Thus, regardless of the plaintiff asserting that it is a

“small company,” such assertion does not factor into this Court’s
analysis of whether the transfer of venue is proper.

Further, as

the defendant notes, the plaintiff seems to have filed suits in
numerous other districts far from its headquarters.

11

Thus, even if

the

financial

conditions

were

taken

into

account,

this

fact

diminishes its relevance.
As the defendant indicates, the District of New Hampshire is
fully capable of handling the plaintiff’s claims, as the law
governing the claims is federal, and courts in either district
would look to the law of the Federal Circuit.

While the defendant

argues that the docket conditions in New Hampshire are lighter than
those in this district, this fact is only somewhat relevant.
Tax, 482 F. Supp. at 739.

JTH

The most relevant fact to this Court in

this interests of justice analysis is the fact that there seems to
be little or no connection to this district.

The interests of

justice do not favor requiring a defendant to defend an action in
a district that has little to no connection with the underlying
claims merely because one witness originates and visits this area
and another witness maintains a home over 100 miles from the pointof-holding court.
Thus, weighing all of the factors, this Court finds that the
transfer of venue to a district with more appropriate contacts is
the proper course of action.

Based on all of the above findings,

this Court finds that the United States District Court for the
District of New Hampshire provides a more suitable forum in this
case.

12

B.

Plaintiff’s Request for Limited Discovery
The plaintiff requests that if this Court believes based on

the facts alleged by the defendant that it should transfer venue,
the plaintiff requests that this Court allow discovery on this
issue prior to ruling on the motion.

The plaintiff argues that

such discovery will enable the plaintiff and this Court to better
understand the defendant’s contacts with West Virginia and this
district.
In support of this request, the plaintiff cites Wine Markets
Int’l v. Bass, 939 F. Supp. 178 (E.D. N.Y. 1996).

That case,

however, is clearly distinguishable from the instant action.

The

court in Wine Markets denied the defendant’s motion to transfer
venue without ordering or authorizing any pre-ruling discovery.
Id. at 185.

The court only permitted the defendant to renew such

motion later in the litigation following the normal discovery
process.

Id.

Here, the plaintiff is requesting that this Court

defer a ruling on this motion and allow limited discovery on the
topics associated with venue.
Ordinarily, district courts have broad discretion in granting
limited discovery to explore jurisdictional facts, including venue.
Virginia Innovation Sciences, Inc. v. Samsung Electronics Co.,
Ltd., 928 F. Supp. 2d 863, 874 (E.D. Va. 2013).

In this case,

however, this Court finds no reason to allow such limited discovery
prior to making its ruling on the defendant’s motion to transfer

13

venue.

If the plaintiff filed this action in accordance with Rule

11 of the Federal Rules of Civil Procedure, then plaintiff should
“have some reason to believe that the allegations and other factual
contentions in the [complaint] have evidentiary support.” Saleh v.
Titan Corp., 361 F. Supp. 2d 1152, 1170 (S.D. Cal. 2005) (finding
that allowing discovery prior to ruling on the defendants’ motion
to transfer was inappropriate where the plaintiffs should have had
information in their possession to substantiate the allegations
made against defendants).

Under the heading “jurisdiction and

venue” in the plaintiff’s complaint, the plaintiff alleges that
“this

Court

has

personal

jurisdiction

over

ECCO

because

it

transacts regular business in this judicial district; is operating
and/or supporting products or services that fall within one or more
claims of Eclipse’s patents in this judicial district; and has
committed
district.”

the

tort

of

patent

infringement

in

this

judicial

Thus, if the plaintiff made this claim in accordance

with Rule 11, it represented that it possessed evidentiary support
for the allegation that the claims are connected to this district.
The plaintiff, however, has not provided such support to this
Court.

The defendant, on the contrary, specifically denies these

allegations, and through the briefing of this motion has provided
this Court with specific facts regarding its connection, or rather
lack of connection with this district and the lack of connection
that the plaintiff’s claims have to this district.

14

“Where a party’s request for jurisdictional or venue-related
discovery rests on bare allegations made in the face of specific
denials, the Court need not permit even limited discovery if such
discovery will be a fishing expedition.”

Virginia Innovation

Sciences, 928 F. Supp. 2d at 874 (internal quotations omitted)
(citing Carefirst of M.D., Inc. v. Carefirst Pregnancy Ctrs., Inc.,
334 F.3d 390, 403 (4th Cir. 2003)).

This Court finds that, here

the plaintiff’s request for discovery on issues dealing with venue
amounts to nothing more than an effort to find contrary facts to
those specific denials alleged by the defendant.

The plaintiff’s

bare allegations concerning venue being proper in this instance are
not sufficient for this Court to believe that any limited discovery
will aid the plaintiff in establishing a connection between its
claims and this district.

Thus, it need not permit discovery into

the requested topics prior to making its ruling on the defendant’s
motion to transfer venue.
IV.

Conclusion

For the above stated reasons, the defendant’s motion to
transfer the case to the United States District Court for the
District of New Hampshire is GRANTED.
IT IS SO ORDERED.
The Clerk is DIRECTED to transmit a copy of this memorandum
opinion and order to counsel of record herein and to the Clerk of
the United States District Court for the District of New Hampshire.

15

DATED:

October 30, 2013

/s/ Frederick P. Stamp, Jr.
FREDERICK P. STAMP, JR.
UNITED STATES DISTRICT JUDGE

16