Iron Cross Automotive, Inc. v. Rampage Products LLC

Filing 76

OPINION AND ORDER by Judge John E Dowdell The Motion to Transfer Venue (Doc. 34) is hereby granted. The Court Clerk is directed to transfer this case to the United States District Court for the Central District of California. ; transferring case (terminates case) ; granting 34 Motion to Transfer Case to Other District (Re: 2 Complaint ) (SAS, Chambers)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF OKLAHOMA
IRON CROSS AUTOMOTIVE, INC.,
Plaintiff,
v.
RAMPAGE PRODUCTS, LLC,
Defendant.

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Case No. 11-CV-535-JED-PJC

OPINION AND ORDER
The Court has for its consideration the Motion to Transfer Venue (Doc. 34) filed by the
defendant, Rampage Products, LLC (“Rampage”). Plaintiff, Iron Cross Automotive, Inc. (“Iron
Cross”) filed an Objection (Doc. 39), and Rampage filed a Reply Brief (Doc. 42). By its motion,
Rampage requests that the Court transfer this action to the Central District of California pursuant
to 28 U.S.C. § 1404(a), in the interest of justice and for the convenience of the parties and
witnesses.
I.

Background
On October 27, 2010, Iron Cross, an Oklahoma corporation with its principal place of

business in Sapulpa, Oklahoma, acquired three patents: U.S. Patent No. 7,360,779 (issued in
April 2008); and U.S. Design Patents, Nos. D535,928 (issued in January 2007) and D567,729
(issued in April 2008). (Doc. 2-1 at 1-3, 7, 30). Each of the patents relates to a vehicle step rail.
(Id.). Rampage manufactures and sells parts and accessories for certain vehicles. (Doc. 34 at 1).
Iron Cross alleges that at least one of Rampage’s products, a step rail product identified as a
Streamline Bar, constitutes patent infringement and trade dress infringement. (Doc. 2 at 3-6).
Rampage is a California limited liability company with business operations in Corona,
California, within the Central District of California, and Rampage manufactures the allegedly

infringing product(s) there. Rampage asserts that this action should be transferred to the Central
District of California pursuant to 28 U.S.C. § 1404(a) for the convenience of the parties and
witnesses and in the interest of justice. Rampage asserts that transfer is appropriate because the
inventor of the patents-in-suit resides in California, all of Rampage’s 13 employees reside in
California, the alleged infringing product is manufactured in California, and several important
third party witnesses reside in California who will allegedly provide testimony supporting
Rampage’s defense of patent invalidity. (See Doc. 34 at 3-4). In contrast, Rampage notes that
the only connection to Oklahoma is that Iron Cross recently purchased the patents and is located
in Oklahoma. (Id. at 4).
In response to the request to transfer venue, Iron Cross relies principally upon the fact
that Iron Cross chose Oklahoma as the forum for the case and that choice of forum is entitled to
deference. Iron Cross does not identify any third party witnesses who are present in Oklahoma,1
and does not directly dispute Rampage’s submission that numerous third party witnesses are in
California. Rather, Iron Cross suggests that any witnesses in California may be provided by
video deposition.
II.

Standards Governing Motions to Transfer
The applicable statute provides that, “[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 division to which all parties have
consented.” 28 U.S.C. § 1404(a). Congress enacted the statute to allow “easy change of venue
within a unified federal system.” Chrysler Credit Corp. v. Country Chrysler, Inc., 928 F.2d
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To the extent that Iron Cross intends to call any of the third party witnesses to whom it
previously issued subpoenas (which were subsequently withdrawn), none of those witnesses are
located in Oklahoma. Rather, they are located in California, Georgia, Illinois, Indiana, Ohio, and
Pennsylvania. (See Doc. 39-2 at Exhibit 5).
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1509, 1515 (10th Cir. 1991) (quoting Piper Aircraft Co. v. Reyno, 454 U.S. 235, 254 (1981)).
The party moving to transfer a case pursuant to § 1404(a) has the burden to establish that the suit
should be transferred; that is, that the existing forum is inconvenient. Wm. A. Smith Contracting
Co., Inc. v. Travelers Indemnity Co., 467 F.2d 662, 664 (10th Cir. 1972); Chyrsler, 928 F.2d at
1515; Scheidt v. Klein, 956 F.2d 963, 966 (10th Cir. 1992).
The transfer of venue statute (§ 1404(a)) “is intended to place discretion in the district
court to adjudicate motions for transfer according to an ‘individualized, case-by-case
consideration of convenience and fairness.’” Chrysler, 928 F. 2d at 1516. The discretionary
factors considered include: plaintiff’s choice of forum; the accessibility of witnesses and other
sources of proof, including the availability of compulsory process to insure attendance of
witnesses; the cost of making the necessary proof; questions as to the enforceability of a
judgment if one is obtained; relative advantages and obstacles to a fair trial; difficulties that may
arise from congested dockets; the possibility of the existence of questions arising in the area of
conflict of laws; the advantage of having a local court determine questions of local law; and, all
other considerations of a practical nature that make a trial easy, expeditious and economical. Id.
(quoting Texas Gulf Sulphur Co. v. Ritter, 371 F.2d 145, 147 (10th Cir. 1967)); Employers Mut.
Co. v. Bartile Roofs, 618 F.3d 1153, 1167-68 (10th Cir. 2010). A court should not transfer venue
merely to shift the inconvenience from one party to another. Bartile Roofs, 618 F.3d at 1168.
An action may be transferred under § 1404(a) at any time during the pendency of the action.
Chrysler, 928 F.2d at 1516.
III.

Discussion
It is undisputed that this case could have been brought in the Central District of

California (as is required to transfer the case under § 1404(a)), because the defendant, Rampage,

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is located there. 28 U.S.C. § 1404(a); see id., § 1391(b) (allowing venue in any judicial district
where defendant resides or where a substantial part of the events giving rise to the claim
occurred); id., § 1400(b) (civil action for patent infringement may be brought in the district
where defendant resides or where defendant has committed acts of infringement and has a
regular and established place of business).
There being no dispute that the case could have been brought in the Central District of
California, the determination of the motion here thus turns on the “convenience of parties and
witnesses, in the interest of justice.” 28 U.S.C. § 1404(a). In support of its request for transfer to
the Central District of California, Rampage has asserted the following, supported by affidavit:
(1) Ramage is located, operates its business, and manufactures the accused products in the
Central District of California; (2) the inventor of the three patents-in-suit resides in Yorba Linda,
California, within the Central District of California; (3) all of Ramage’s company witnesses,
sales records and documents relating to the claimed infringing products are within the Central
District of California; (4) Rampage intends to rely upon the trial testimony of another Central
District of California resident, Bill Cord, who Rampage believes will provide testimony that
Berryman Products (the original assignee of two of the patents) and other entities publicly used,
offered for sale, and sold the patented invention and designs more than one year before the
application dates of the patents-in-suit; (5) several other third-party witnesses likely to provide
relevant testimony reside in California, including Dave Williams of Lake Elsinore, California
(head of aftermarket sales for Berryman Products), Dean Lueck, of Villa Park, California
(president of Steelhorse Automotive, which Ramage asserts to have sold the accused invention
and designs more than a year before the effective application dates), two other employees of
Steelhorse, and Jeff Jacobson, of Newport Beach, California, who allegedly has similar

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information; and (6) Rampage is unable to compel all of the third party witnesses to Oklahoma,
and reliance upon depositions for all of those witnesses would be an ineffective means of
presenting Rampage’s defenses, including patent invalidity. Rampage asserts that these factors
weigh strongly in favor of transfer, in contrast to the only connection to Oklahoma, which is Iron
Cross’s location in Sapulpa, Oklahoma.
In response, Iron Cross principally argues that its choice of its home forum is entitled to
great deference and that Rampage has not shown enough to shift the scales in favor of transfer.
Iron Cross also argues that the Court should not simply shift the inconvenience to Iron Cross.
The Court finds Rampage’s arguments more persuasive. If a plaintiff’s choice of home
forum were determinative (as Iron Cross suggests), there would be no necessity for a balancing
of the Chrysler factors. Numerous courts have transferred cases under 28 U.S.C. § 1404(a),
notwithstanding that plaintiff filed in its home forum. It is undisputed that Ramage is located in
the Central District of California, operates business and manufactures the accused products there,
and that the inventor of the patents, as well as several witnesses (including Rampage’s own
employees), are located there. Some of those witnesses are third party witnesses who are not
subject to compulsory process in Oklahoma such that their testimony would have to be presented
only by deposition. By comparison, Iron Cross has not identified any third party witnesses in
Oklahoma, and has not suggested that there are any witnesses who would be unwilling to testify
in California if this matter were transferred. In essence, the only argument for maintaining this
action here is that Iron Cross elected to file it here, in its home district. As Rampage notes, Iron
Cross acquired the patents-in-suit in 2010, whereas the inventor, both at the time of invention
and now, lives in California, the allegedly infringing activity (the design, manufacture and sale

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of the accused products) is centered in California, and third party witnesses who may testify to
prior sales of the design and product are located in California.
The Tenth Circuit has determined that, “unless the balance is strongly in favor of the
movant, the plaintiff’s choice of forum should rarely be disturbed.” Scheidt v. Klein, 956 F.2d
963, 965 (10th Cir. 1992) (quoting Wm. A. Smith Contracting, 467 F.2d at 664). However,
courts “also accord little weight to a plaintiff’s choice of forum ‘where the facts giving rise to the
lawsuit have no material relation or significant connection to the plaintiff’s chosen forum.’”
Bartile Roofs, 618 F.3d at 1168 (quoting Cook v. Atchison, Topeka & Santa Fe Ry. Co., 816 F.
Supp. 667, 669 (D. Kan. 1993)). Moreover, in this Circuit, the “convenience of witnesses is the
most important factor in deciding a motion under § 1404(a).” Bartile Roofs, 618 F.3d at 1169
(quoting Cook, 816 F. Supp. 16 669).
Here, Rampage has specified by name and residence a number of witnesses who are
located in California, and has identified the expected subject matters and materiality of their
testimony to the patents-in-suit and alleged infringement.

Rampage has also provided

information that the use of compulsory process would likely be necessary with respect to at least
some of those witnesses, and that presenting all of those witnesses’ testimony by deposition
would be unsatisfactory. This showing satisfies the requirements set forth in Bartile Roofs to
establish inconvenience of witnesses. See id. at 1169.
Based upon the foregoing, the Court finds that the balance is strongly in favor of
Rampage’s motion to transfer. While Iron Cross acquired the patents-in-suit in 2010 and is
located in this District, the facts in the record do not establish any other significant connection to
Oklahoma that would require the Court to find that Iron Cross’s choice of forum must trump the
other factors establishing that transfer is proper for convenience of the witnesses, as well as for

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Rampage. See id. at 1168. The other Chrysler factors are either neutral or not helpful to Iron
Cross.
In consideration of all of the Chrysler factors, the Court finds and concludes that this case
should be transferred to the Central District of California.
IT IS THEREFORE ORDERED that the Motion to Transfer Venue (Doc. 34) is hereby
granted. The Court Clerk is directed to transfer this case to the United States District Court for
the Central District of California.
DATED this 30th day of September, 2013.

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