INTERNAL COMBUSTION SOLUTIONS LLC v. YOSHIMURA RESEARCH AND DEVELOPMENT OF AMERICA, INC.

Filing 27

OPINION. Signed by Judge Renee Marie Bumb on 4/9/2014. (drw)

NOT FOR PUBLICATION

[Dkt. Ent. 23]

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
CAMDEN VICINAGE

INTERNAL COMBUSTION SOLUTIONS,
LLC,
Plaintiff,
v.

Civil No. 13-02793 (RMB/AMD)
OPINION

YOSHIMURA RESEARCH AND
DEVELOPMENT OF AMERICA, INC.,
Defendant.

Appearances
Jean-Marc Zimmerman, Esq.
Zimmerman & Weiser LLP
226 St. Paul Street
Westfield, NJ 07090
Attorney for the Plaintiff
Matthew T. Charles, Esq.
Law Offices of David G. Concannon, LLC
200 Eagle Road, Suite 116
Wayne, PA 19087
Attorney for Defendant
BUMB, United States District Judge:
Plaintiff Internal Combustion Solutions LLC (the
“Plaintiff” or “ICS”) brings this suit against Defendant
Yoshimura Research and Development of America, Inc. (the
“Defendant” or “Yoshimura”) for patent infringement relating to
Defendant’s sale of a programmable device that enables the user

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to control an internal combustion engine. Before the Court is
Defendant’s motion to transfer venue to the United States
District Court for the Central District of California pursuant
to 28 U.S.C. § 1404(a). (Dkt. No. 23.) For the reasons that
follow, this motion is hereby GRANTED.
I.

BACKGROUND
ICS is a New Jersey Resident (Compl. ¶ 1). Yoshimura is in

the business of developing, manufacturing, and selling aftermarket motorcycle components, and is a California corporation
with its principal place of business in Chino, California.
(Declaration of Dan Sakakura in Support of Motion (“Sakakura
Decl.”), Dkt. Ent. 23-3 ¶¶ 2-3.) Yoshimura is not incorporated,
registered, or licensed to do business in New Jersey. (Sakakura
Decl. ¶ 5.) It maintains no office, manufacturing facility, or
any other facility, and has maintained no place of business, in
New Jersey. (Id. ¶ 6.) Yoshimura sells its products through a
network of distributors, none of which it contends are located
in New Jersey. (Id. ¶ 12.) ICS, however, has identified a
Belleville, New Jersey retailer, the Motorcycle Mall, listed on
Yoshimura’s website that sells Yoshimura products as well as
motorcycles customized with Yoshimura parts. (See Declaration of
Jean-Marc Zimmerman in Opposition to Motion (“Zimmerman Decl.”),
Dkt. Ent. 25-1 ¶¶ 3-4.) According to Yoshimura, the Motorcycle
Mall is not an agent dealer, but sells “a Suzuki motorcycle
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customized with Yoshimura parts, owned and sold by Suzuki
through authorized Suzuki dealers.” (Sakakura Decl. ¶ 13.)
ICS contends that Yoshimura is infringing, inducing
infringement, or contributorily infringing U.S. Patent No.
6,560,528 (the “‘528 Patent”) by “making, using, offering to
sell, selling and/or importing a programmable device, including
but not limited to its EM Pro, MX Tuner and PIM2 & D.A.T.A. Box
products.” (Compl. ¶ 10.) It further argues that Yoshimura sells
and uses infringing products in New Jersey. (See id.; Opp. 3.)
II.

DISCUSSION
Yoshimura seeks to have this action transferred to the

United States District Court for the Central District of
California pursuant to 28 U.S.C. § 1404(a) as all of its
“design, development, testing, integration, and commercial
introduction of the allegedly infringing products are centered
in or around Chino, California, as are all management
activities,” witness, and documents. (See Sakakura Decl. ¶¶ 1517.) ICS opposes transfer on the grounds that Yoshimura has
failed to meet its burden and transfer would simply shift the
burden of an inconvenient forum to ICS.
Pursuant to 28 U.S.C. § 1404(a), “[f]or 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
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division to which all parties have consented.” This section was
designed to prevent “the wastefulness of time, energy and money”
and “to protect litigants, witnesses and the public against
unnecessary inconvenience and expense[.]” Cont’l Grain Co. v.
Barge FBL–585, 364 U.S. 19, 26–27 (1960). Section 1404(a) vests
a district court with considerable discretion to “adjudicate
motions to transfer according to an individualized, case-by-case
consideration of convenience and fairness.” See Stewart Org.,
Inc. v. Ricoh Corp., 487 U.S. 22, 23, 27-28 (1998); Jumara v.
State Farm Ins. Co., 55 F.3d 873, 877 (3d Cir. 1995); Cadapult
Graphic Sys., Inc. v. Tektronix, Inc., 98 F.Supp.2d 560, 564
(D.N.J. 2000). “A plaintiff’s choice of venue is not to be
‘lightly disturbed,’ and the moving party has the burden of
establishing that the proposed transferee forum is proper and
that a balancing of the relevant considerations weighs in favor
of transfer.” Gentry v. Leading Edge Recovery Solutions, LLC,
No. 13-3398, 2014 WL 131811, at *2 (D.N.J. Jan. 10, 2014)
(citing Jumara, 55 F.3d at 879); see also Shutte v. Armco Steel
Corp., 431 F.2d 22, 25 (3d Cir. 1970). The moving party must
demonstrate that “the proposed alternative forum is not only
adequate, but also more convenient than the present forum.”
Lawrence v. Xerox Corp., 56 F. Supp. 2d 442, 450 (D.N.J. 199).
Moreover, in evaluating a motion to transfer, a “‘district court
is required to develop adequate facts to support its decision
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and to articulate specific reasons for its conclusion that
transfer to another venue is appropriate.’” Gentry, 2014 WL
131811, at *2 (quoting Tischio v. Bontex, Inc., 16 F. Supp. 2d
511, 520 (D.N.J. 1998)).
First, the Court must determine whether venue would be
proper in the proposed transferee district. See Clark v. Burger
King Corp., 255 F. Supp. 2d 334, 337 (D.N.J. 2003). Neither
party disputes that this action originally could have been
brought in the Central District of California. See 28 U.S.C.
§ 1391(b)(1) (venue is appropriate in “a judicial district in
which any defendant resides, if all defendants are residents of
the State in which the district is located”); 28 U.S.C.
§ 1400(b) (“Any civil action for patent infringement may be
brought in the judicial district where the defendant resides, or
where the defendant has committed acts of infringement and has a
regular and established place of business.”).
Next, this Court must assess whether transferring the
action is in the interests of justice, which requires the Court
to “consider both the private and public interests affected by
the transfer.” Bus. Store, Inc. v. Mail Boxes Etc., No. 11-3662,
2012 WL 525966, at *3 (D.N.J. Feb. 16, 2012) (citing Clark, 255
F. Supp. 2d at 337). Although the Court may consider a wide
range of public and private interests, courts have identified
the following private interests: (1) the parties’ preferences;
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(2) where the claim arose; (3) the parties’ relative
convenience; (4) “the convenience of the witnesses (only to the
extent that the witnesses may actually be unavailable for trial
in one of the fora);” and (5) “the location of books and records
(only to the extent that the files could not be produced in the
alternative forum).” See Digital Tech. Licensing LLC v. Sprint
Nextel Corp., No. 07-5432, 2011 WL 1899279, at *3 (D.N.J. May
19, 2011); see also Jumara, 55 F.3d at 879. Among the public
interests identified are: 1) the enforceability of the judgment;
2) practical considerations that could make the trial easy,
expeditious or inexpensive; 3) any relative administrative
difficulty resulting from court congestion; 4) local interest in
deciding local controversies; 5) public polices of the fora; and
6) trial judge’s familiarity with the applicable state law in
diversity cases. Jumara, 55 F.3d at 879-80.
a. Private Interests
As to the parties’ preferences, Plaintiff chose New Jersey
as the forum for litigation of its dispute, but while this
choice is owed considerable deference, it is not dispositive.
See Osteotech, Inc. v. Gensci Regeneration Scis., Inc., 6 F.
Supp. 2d 349, 357 (D.N.J. 1998). “When the central facts of a
lawsuit occur outside the forum state, a plaintiff’s selection
of that forum is entitled to less deference.” Ricoh Co., Ltd. V.
Honeywell, Inc., 817 F. Supp. 473, 482 (D.N.J. March 16, 1993)
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(granting transfer); AB Coaster Holdings, Inc. v. Icon Health &
Fitness, Inc., No. 10-6760, 2011 WL 6887724, at *3 (D.N.J. Dec.
29, 2011) (“Notably, courts give less weight to a plaintiff’s
choice of forum when the dispute at the heart of a lawsuit
occurred almost entirely in another state.”). Therefore, because
the central facts of this action are primarily connected to
California, Plaintiff’s choice of forum is entitled to less
deference.
In evaluating the second factor, this Court has previously
held,
in patent infringement actions, “as a general rule,
the preferred forum is that which is the center of
gravity of the accused activity.” . . . In finding
that “center of gravity,” a district court “ought to
be as close as possible to the milieu of the
infringing device and the hub of activity centered
around its production.” . . . Appropriate
considerations include the location of a product’s
development, testing, research and production. Also
relevant is the place where marketing and sales
decisions are made, rather than where limited sales
activity has occurred.
Osteotech, Inc. v. Gensci Regeneration Scis., Inc., 6 F. Supp.
2d 349, 357 (D.N.J. 1998) (citations omitted); Wechsler v. Macke
Intern. Trade, Inc., No. 99 Civ. 5725, 1999 WL 1261251, at *4
(S.D.N.Y. Dec. 27, 1999) (“In an action for patent infringement,
the transferee forum is the locus of the operative facts if,
inter alia, the design, development, and some of the marketing
of the product allegedly infringing plaintiff's patent occurred

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in the transferee forum and the designers, developers, and
marketers live and work in that forum.”).
Here, Yoshimura attests that all of its allegedly
infringing products were designed, developed, and tested in or
around Chino, California. (Sakakura Decl. ¶ 15.) It further
contends that all witnesses with knowledge of the allegedly
infringing activities, and anyone with knowledge of the design
and manufacture are located in California. (Id. ¶ 16.) Plaintiff
does not dispute these facts. Nor does Plaintiff dispute that
none of the research, development, or production of the
allegedly infringing products takes place in New Jersey. Rather,
ICS points only to the possibility that Yoshimura is selling
infringing products in New Jersey through the single identified
dealer listed on its website. “However, ‘sales alone are
insufficient to establish a material connection to the forum’ in
a patent infringement action where, as here, ‘defendants’
products are sold in many states.’” Wechsler, 1999 WL 1261251,
at *5; see also Osteotech, 6 F. Supp. 2d at 357; Ricoh Co., 817
F. Supp. at 482 (“To argue that these [sales] activities
establish sufficient ties to New Jersey, particularly in light
of the activities which occur and have occurred in Minneapolis,
Illinois and probably Japan, is simply disingenuous.”); McRo,
Inc. v. Activision Blizzard, Inc., No. 12-1508, 2013 WL 6571618,
at *6 (D. Del. Dec. 13, 2013) (finding second factor favors
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transfer in patent infringement action because “[e]ven taking
into account Defendants’ nationwide sales, it appears that the
primary acts giving rise to McRo’s claims of infringement . . .
have a strong connection to the Central District (one far
stronger than their connection to Delaware)”). Thus, because the
“center of gravity” is the Central District of California,
Plaintiff’s choice of forum is entitled to less deference. See
also AB Coaster Holdings, Inc., 2011 WL 6887724, at *5 (finding
second factor favored transferred in patent infringement
action).
In considering the convenience of the parties, the district
courts evaluate the parties’ physical and financial condition.
See AB Coaster Holdings, Inc., 2011 WL 6887724, at *5. “If both
parties have a preference but neither can show the balance of
convenience factors ‘tips strongly in his favor,’ the party with
a stronger financial condition is better suited to bear the
inconvenience of a foreign forum.” Id. However, in a patent
infringement action this principle carries less force as it is
usually the accused infringer who presents the bulk of the
evidence. See id.; Osteotech, 6 F. Supp. 2d at 359. Notably,
both parties conclusorily assert that their non-chosen forum is
inconvenient, yet neither party has argued that they are unable
to litigate in that forum. Nor has either party suggested that
the other is a larger or more financially stable entity. Despite
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the absence of such evidence, the fact that this is a patent
infringement action suggests that Yoshimura, the accused
infringer with presumably the bulk of the evidence as discussed
supra, “will be more inconvenienced defending this suit in New
Jersey than would Plaintiff be inconvenienced should the Court
transfer the suit to [California].” AB Coaster Holdings, Inc.,
2011 WL 6887724, at *5.
The Court finds the fourth and fifth factors concerning the
location of witnesses and documents have little bearing on this
decision. A court should only consider these factors to the
extent a party argues the “witnesses may actually be
unavailable” or the documents may “not be produced in the other
forum.” Jumara, 55 F.3d at 879. Yoshimura makes no such
contentions here. See McNulty v. J.H. Miles & Co., Inc., 913 F.
Supp. 2d 112 (D.N.J. 2012) (finding these factors neither
favored nor disfavored transfer as neither party demonstrated
the “actual unavailability” of witnesses or documents); see also
Westfield Ins. Co. v. Interline Brands, Inc., No. 12-6775, 2013
WL 6816173, at *14-15 (D.N.J. Dec. 20, 2013). Indeed, while
Yoshimura asserts that all of its relevant witnesses and
documents are located in and around Chino, California, it fails
even to identify any of these witnesses or documents, much less
explain why those witnesses would be unwilling or unable to
travel to New Jersey. However, Plaintiff also does not assert
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that any of its witnesses would be unable to travel to
California. See PCS Wireless, LLC v. Portables Unlimited, No.
No. 13-4348, 2013 WL 5797731, at *3 (D.N.J. Oct. 28, 2013)
(“Portables asserts that certain material party witnesses are
located in New York. . . . The Court assigns little weight to
this assertion for three reasons. First, Defendants do not
actually identify any witnesses located in New York. Second, the
Court’s primary concern in balancing this factor is the
convenience of non-party witnesses.” (citations omitted)); DePuy
Synthes Sales, Inc. v. Gill, No. 13-04474, 2013 WL 5816328, at
*9 (D.N.J. Oct. 29, 2013) (“Furthermore, it is only Gill that
has supplied the names of any witnesses that would be
unavailable if the matter was to proceed in one of the fora.
DePuy Synthes has not claimed that any of its potential
witnesses would be otherwise unable to travel to Washington, if
necessary.”). Therefore, these factors are neutral.
b. Public Interests
The public interests are either neutral or favor transfer.
As to the enforcement of a judgment, “Plaintiff can more easily
enforce a judgment against an infringer in the same forum where
the infringing product's ‘development, testing, research, and
production occurred.’” AB Coaster Holdings, Inc., 2011 WL
6887724, at *6 (quoting Refined Recommendation Corp. v. Netflix,

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No. 07–04981, 2008 WL 474106, at *4 (D.N.J. Feb.14, 2008)).
Therefore, this factor weighs in favor of transfer.
Regarding the second factor, practical considerations that
may make the trial easier or less expensive, Yoshimura primarily
recasts its arguments regarding the convenience of the parties
and witnesses. It also notes the associated practical
difficulties with compelling the attendance of its witnesses or
any third-party witnesses outside of California, which it argues
strongly favors transfer. As noted supra, the bulk of the
evidence and witnesses would appear to be in California, but
Yoshimura has not identified any witnesses who are unwilling to
attend a trial in New Jersey. Thus, this factor is not
determinative.
Plaintiff argues that New Jersey has a strong interest in
protecting its residents against the type of misconduct alleged
here, which militates against transfer. Again, Plaintiff has
alleged only limited misconduct involving a third-party dealer
in New Jersey selling a motorcycle that contains Defendant’s
motorcycle parts. The Court balances this against the fact that
California also has an interest in regulating the conduct of its
corporations. The fourth factor is thus neutral. See AB Coaster
Holdings, Inc., 2011 WL 6887724, at *6; see also Osteotech, 6 F.
Supp. 2d at 359. As to the last two public interest factors,
this is a patent infringement action governed by patent law,
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which district courts in New Jersey and California are equally
capable of applying.
In sum, Plaintiff’s choice of forum is entitled to less
weight in this matter because the locus of operative events, or
“center of gravity,” in this patent infringement action is
California. The remaining private and public factors are either
neutral or weigh slightly in favor of transfer and, thus, on
balance the Court finds it appropriate to transfer this action
to the Central District of California pursuant to Section
1404(a).

Date: April 9, 2014
s/Renée Marie Bumb
RENÉE MARIE BUMB
UNITED STATES DISTRICT JUDGE

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