Marketfleet Puerto Rico, Inc. v. Yardstash Solutions, LLC.

Filing 15

MEMORANDUM AND ORDER re 9 Motion to Dismiss for Lack of Jurisdiction: GRANTED. Accordingly, this action is TRANSFERRED to the Eastern District of California. Signed by Judge Francisco A. Besosa on 08/31/2018. (brc)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
MARKETFLEET PUERTO RICO, INC.,
derivatively on behalf of
MARKETFLEET INC.,
Plaintiff,
Civil No. 18-1112 (FAB)

v.
YARDSTASH SOLUTIONS, LLC,
Defendant.

MEMORADUM AND ORDER 1
BESOSA, District Judge.
Before

the

Court

is

defendant

Yardstash

Solutions,

LLC

(“Yardstash”)’s motion to transfer pursuant to 28 U.S.C. § 1404(a)
(“section 1404”).

(Docket No. 9.)

For the reasons set forth

below, the Court GRANTS Yardstash’s motion to transfer.
I.

Factual Background
This action concerns a patent infringement claim.

No. 9 at p. 7.)

(Docket

Yardstash is a Delaware incorporated limited

liability company with its principal place of business in San
Diego, California.

(Docket No. 11, Ex. 1 at pp. 13-14; Docket

No. 9, Ex. 1 at p. 1.)

San Diego is located in the Southern

District of California.

Marketfleet is a Delaware corporation

1

Jeremy S. Rosner, a third-year student at Emory University School of Law,
assisted in the preparation of this Memorandum and Order.

Civil No.

18-1112 (FAB)

with

principal

its

2

place

of

(Docket No. 9, Ex. 9 at p. 7.)
District of California.
A.

business

in

Chico,

California.

Chico is located in the Eastern

Id.

The California Litigation
Yardstash purportedly owns a patent for a storage tent

pursuant to United States Patent No. D689,579 (“Patent 579”).
(Docket No. 2; Docket No. 9, at p. 7.)

According to Yardstash,

Marketfleet infringed Patent 579 by “making, offering for sale,
selling, and/or shipping a nearly identical product to [Patent
579].”

(Docket No. 9, Ex. 3 at p. 4.)
On March 28, 2017, Yardstash commenced an action in the

Southern District of California, alleging violations of United
States patent law and California law.

Docket No. 9, Ex. 3 at

pp. 7-8; see 35 U.S.C. §§ 284 et seq., Cal. Bus. & Prof. Code
§ 17200 et seq.

Subsequently, the District Court for the Southern

District of California transferred Yardstash’s patent infringement
claims to the Eastern District of California pursuant to 28 U.S.C.
§ 1406(a).
B.

Id. at pp. 6-8.
The Puerto Rico Litigation
On February 26, 2018, Marketfleet PR filed a derivative

complaint against Yardstash in the District of Puerto Rico on
behalf of Marketfleet.

(Docket No. 1 at pp. 1-2, 4.)

Marketfleet

PR is incorporated in Puerto Rico, and maintains its principal

Civil No.

18-1112 (FAB)

place of business in Puerto Rico.

3
Id. at p. 3.

Marketfleet PR

requests that this Court issue a declaratory judgment, holding
either that Marketfleet’s storage tent does not infringe Patent
579, or that Patent 579 is invalid.

Id.

On May 15, 2018,

Yardstash moved to transfer the claims asserted by Marketfleet PR
to the Eastern District of California pursuant to section 1404.
(Docket No. 9 at p. 29.) 2
II.

Transfer Pursuant to 28 U.S.C. Section 1404
Pursuant section 1404, “a district court may transfer any

civil action to any other district or division where it might have
been brought . . . in the interest of justice.”
§ 1404(a).

28 U.S.C.

Congress adopted this statute “to prevent the waste

of time, energy and money, and to protect litigants, witnesses and
the public against unnecessary inconvenience and expense.”

Van

Dusen v. Barrack, 376 U.S. 612, 616 (1964) (citation omitted).
Yardstash shoulders the burden of proving that transfer is proper,
“because of the strong presumption in favor of plaintiff’s choice

2 Yardstash also moves to dismiss the complaint for lack of jurisdiction and
improper venue pursuant to Federal Rule of Civil Procedure 12(b)(2) and (3)
(“Rule 12(b)”).
(Docket No. 9.)
Because Marketfleet PR’s claims are
transferred to the Eastern District of California, this Court need not address
whether jurisdiction and venue are proper in the District of Puerto Rico.
See
Antilles Cement Corp. v. Aalborg Portland A/S, 526 F. Supp. 2d 205, 207 (D.P.R.
2007) (Acosta, J.) (citing Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 2425 (1988)) (“[W]here transfer to another federal jurisdiction is viable, the
proper remedy is not dismissal of the complaint [based on lack of personal
jurisdiction or venue] but rather a determination of whether transfer is
proper”.).

Civil No.

18-1112 (FAB)

of venue.”

4

Arroyo-Pérez v. Demir Group Int’l., 733 F. Supp. 2d

at 319 (citations omitted); see Villalobos v. North Carolina
Growers Ass’n., 42 F. Supp. 2d 131, 142 (D.P.R. 1999) (Fusté, J.)
(citation omitted) (“The burden of proof is on the movant and
unless the balance is strongly in favor of the defendant, the
plaintiff’s

choice

of

forum

should

rarely

be

disturbed.”)

(citation and internal quotation omitted).
Courts
transfer

possess

discretion

according

to

an

in

“adjudicat[ing]

individualized,

consideration of convenience and fairness.”

motions

case-by-case

Astro-Med, Inc. v.

Nihon Kohden Am., Inc., 591 F.3d 1, 12 (1st Cir. 2009).
determine

whether

transfer

following four factors:

is

warranted,

for

Courts

consider

To
the

(1) the convenience of the parties and

witnesses, (2) the availability of documents, (3) the possibility
of consolidation, and (4) the order in which the district court
obtained jurisdiction.”

Albizu Rodríguez, v. Carlos Albizu Univ.,

585 F. Supp. 2d 240, 244 (D.P.R. 2008) (Besosa, J.) (citation
omittied).
III. Discussion
All factors weigh in favor of transfer.

Accordingly, the

Court transfers this action to the Eastern District of California.

Civil No.

18-1112 (FAB)

A.

5

Convenience of the Parties and Witnesses
In the context of section 1404, “the convenience of

witnesses is probably the most important factor in deciding whether
to transfer.”

Ponce de León Hosp. Corp. v. Avalon Logistics,

Inc., 117 F. Supp. 3d 124, 132 (D.P.R. 2015) (Domínguez, J.)
(citation omitted).

The movant must “show that it would be

inconvenienced by the chosen venue.”
2d at 319 (citation omitted).

Arroyo-Pérez, 733 F. Supp.

Courts need not defer to the

plaintiff’s choice of forum when there is no connection between
the

selected

complaint.

jurisdiction

and

the

allegations

underlying

the

See Fash Obalco v. M.K.M. Indus., 888 F. Supp. 344,

349 (D.P.R. 1995) (Domínguez, J.) (internal citations omitted)
(“Where

the

residence,

forum

or

chosen

bears

no

by

plaintiff

obvious

is

connection

not
to

his
the

place
case,

of
the

defendant’s residence gains importance in determining the relative
convenience of the parties.”).
Marketfleet

PR

is

a

Puerto

Rico

corporation,

maintains its principal place of business in Puerto Rico.
No. 9, Ex. 4 at pp. 2-3; Docket No. 9, Ex. 2 at p. 2.)
PR, however, is suing on behalf of Marketfleet.
p. 1.)

and

(Docket

Marketfleet

(Docket No. 1 at

Marketfleet’s officers, directors, and employees are

Civil No.

18-1112 (FAB)

6

located in California. 3

Yardstash’s officers, directors, and

employees

are

also

located

in

California.

4

George

Barker

(“Barker”) is the inventor of the storage tent corresponding to
Patent 579.

(Docket No. 9, Ex. 1 at p. 1.)

Barker is the most

important witness in the case, and resides in California.

Id.;

see SCVNGR, Inc. v. eCharge Licensing, LLC, No. 13-12418, 2014
U.S. Dist. LEXIS 135408, at *21 (D. Mass. Sept. 25, 2014) (holding
that “the most significant witnesses in a patent infringement case
are

the

inventors”).

Consequently,

the

Eastern

District

of

California is a more convenient forum to litigate the purported
infringement of Patent 579.
B.

Availability of Documents
With regard to the second factor, “[d]ue to recent

technological advances, reliance on physical copies of documents
and

records

has

diminished

now

that

documents

more accessible through electronic means.”

have

become

Ponce de León Hosp.

Corp., 117 F. Supp. 3d at 133 (citation omitted).

This litigation

involves online retail, entailing proof of purchase and sales
records that are stored electronically.
at pp. 2, 5 and 7.

See Docket No. 11, Ex. 1

Moreover, Patent 579 is logged electronically

3

See Docket No. 1 at p. 3; Ex. 2 at pp. 2-3; Ex. 6 at pp. 2-3; Ex. 7 at p. 2;
Ex. 7 at pp. 6-7; Docket No. 11, Ex. 1.
4

See Docket No. 1 at p.3; Docket No. 9, Ex. 1 at p. 1; Ex. 3 at p. 2.

Civil No.

18-1112 (FAB)

7

with the United States Patent and Trademark Office.
No. 2; Docket No. 9 at p. 7.)

(Docket

Accordingly, the availability of

documents is no reason to deny Yardstash’s motion to transfer.
C.

Possibility of Consolidation
Jurisdiction was Obtained

and

Order

in

which

The third and fourth factors of the section 1404 analysis
“prevent duplication and inconsistent rulings.”
F. Supp. 2d at 321.

Arroyo-Pérez, 733

With regard to the third factor, transfer is

appropriate when the actions subject to consolidation are in the
early stages of litigation.

Cf. Codex Corp. v. Milgo Elec. Corp.,

553 F.2d 735, 739 (1st Cir. 1977).

The fourth factor establishes

that “the first filed action is generally preferred in a choiceof-venue decision.”

Cianbro Corp. v. Curran-Lavoie, Inc., 814

F.2d 7, 11 (1st Cir. 1987); see N.Y. Wiping & Indus. Prod. Co. v.
Rocky Brands, Inc., No. 09-1237, 2009 U.S. Dist. LEXIS 77827 at *6
(D.P.R. Aug. 31, 2009) (Fusté, J.) (“Where the parties have filed
two actions in separate districts, however, and the actions are
nearly identical, ‘the first-filed action is generally preferred
in a choice of venue decision.’”) (citation omitted).
The cases pending in the District of Puerto Rico and the
Eastern District of California are both in the pre-trial stages.
See Docket No. 9, Ex. 10 at p. 5; Docket No. 11; Docket No. 12.
The

Eastern

District

of

California

infringement claim regarding Patent 579.

case

concerns

a

patent

(Docket No. 9, Ex. 3 at

Civil No.
p. 2.)

18-1112 (FAB)

8

The case before this Court pertains to the validity and

enforceability Patent 579.

(Docket No. 1 at pp. 1-2.)

Because

both cases involve nearly identical facts, they are subject to
consolidation.
The

See Albizu, 585 F. Supp. 2d at 244.
Southern

District

of

California

transferred

Yardstash’s patent infringement action to the Eastern District of
California on February 16, 2018.

(Docket No. 9, Ex. 9 at p. 8.)

The case before this Court commenced ten days later on February 26,
2018.

See Docket No. 1 at p. 19.

Accordingly, all factors weigh

in favor of transfer to the Eastern District of California.
IV.

Conclusion
For the reasons set forth above, the Court GRANTS Yardstash’s

motion to transfer.

(Docket No. 9.)

Accordingly, this action is

TRANSFERRED to the Eastern District of California.
IT IS SO ORDERED.
San Juan, Puerto Rico, August 31, 2018.

s/ Francisco A. Besosa
FRANCISCO A. BESOSA
UNITED STATES DISTRICT JUDGE