Medtech Products Inc. v. Ranir, LLC
Filing
60
ORDER denying 21 Motion to Change Venue. Signed by Judge Jon Phipps McCalla on 1/5/2016. (McCalla, Jon)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION
MEDTECH PRODUCTS INC.,
Civil Action No.
2:15-cv-02584-JPM-tmp
Plaintiff,
v.
JURY DEMANDED
RANIR, LLC,
Defendant.
ORDER DENYING DEFENDANT’S MOTION TO TRANSFER VENUE
Before
the
Court
is
Defendant
Ranir,
Transfer Venue, filed on November 3, 2015.
LLC’s
Motion
(ECF No. 21.)
to
For
the following reasons, the Court DENIES the Motion.
I.
BACKGROUND
A.
Factual Background
Plaintiff Medtech Products Inc. (“Plaintiff”) is a Delaware
corporation with its principal place of business in Tarrytown,
New York.
(Compl. ¶ 1, ECF No. 1.)
Plaintiff asserts that it
is the assignee of U.S. Patent No. 7,658,193 (“the ’193 Patent”)
and U.S. Patent No. 8,316,859 (“the ’859 Patent”), each of which
is a patent for an “interocclusal appliance and method.”
¶¶ 3-5, 11.)
(Id.
Plaintiff alleges that Defendant has infringed
literally or under the doctrine of equivalents the ’193 and the
’859 Patents and that the infringement has been willful and
deliberate.
(Id. ¶¶ 31-37.)
Defendant Ranir, LLC (“Defendant”) is a Delaware limited
liability company with its principal place of business in Grand
Rapids, Michigan. (Id. ¶ 2.)
of infringement.
Defendant denies the allegations
(Answer ¶¶ 31-37, ECF No. 17.)
Defendant also
denies that venue is proper in the Western District of
Tennessee.
(Id. ¶ 29.)
Defendant asserts that the litigation
should be transferred to the Western District of Michigan.
(Id.)
Defendant asserts that the Western District of Michigan
is a “far more convenient venue for the witness and the parties”
that “possesses a unique, particularized local interest” in the
technology at issue because the design and development of the
accused product took place in the Western District of Michigan.
(ECF No. 22 at 2.)
Plaintiff asserts that the forum-selection
clause in a 2007 settlement agreement between the parties
requires transfer to the Southern District of New York.
No. 34 at 5.)
(ECF
Even without the forum-selection clause,
Plaintiff asserts that Defendant cannot meet its burden of
showing that transfer to the Western District of Michigan is
appropriate.
B.
(Id. at 16-17.)
Procedural Background
On September 8, 2015, Plaintiff filed a Complaint in the
U.S.
District
Court
(Compl., ECF No. 1.)
for
the
Western
District
of
Tennessee.
With leave of Court, Defendant filed its
2
Answer
and
Counterclaim
on
October
29,
2015.
(Answer
&
Countercl., ECF No. 17.)
On November 3, 2015, Defendant filed the instant Motion to
Transfer Venue to the Western District of Michigan.
21.)
(ECF No.
Plaintiff responded in opposition on November 20, 2015.
(ECF Nos. 34-35.)
With leave of Court, Defendant filed a reply
brief on November 30, 2015.
On
November
9,
(ECF No. 42-1.)
2015,
Defendant
filed
a
Motion
to
Stay
pending the resolution of the determination of proper venue.
(ECF No. 27.)
2015.
Plaintiff responded in opposition on November 25,
(ECF No. 40.)
On November 25, 2015, Plaintiff filed its own Motion to
Transfer Venue to the Southern District of New York.
38-39.)
(ECF Nos.
Defendant responded in opposition on December 14, 2015.
(ECF Nos. 57-58.)
Plaintiff’s Motion remains pending before the
Court.
On
December
Supplemental
Venue.
(ECF
2,
Authority
No.
50.)
2015,
in
Defendant
support
On
the
of
same
filed
its
a
Notice
Motion
day,
to
the
Court
of
Transfer
held
a
telephonic hearing on Defendant’s Motion to Transfer Venue and
Motion to Stay.
(Min. Entry, ECF No. 51.)
The Court granted in
part and denied in part Defendant’s Motion to Stay on the same
day.
(ECF No. 52.)
3
II.
LEGAL STANDARD
“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.”
28 U.S.C. § 1400(b).
A
defendant corporation is “deemed to reside . . . in any judicial
district in which such defendant is subject to the court's
personal jurisdiction with respect to the civil action in
question.”
28 U.S.C. § 1391(c)(2).
The Federal Circuit has
held that § 1391 applies to all venue statues in its same
chapter, including § 1400(b).
See VE Holding Corp. v. Johnson
Gas Appliance Co., 917 F.2d 1574, 1580 (Fed. Cir. 1990) (“the
language of the statute . . . reveal[s] ‘a clear intention’ that
§ 1391(c) is to supplement § 1400(b)”). 1
“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 . . . .”
28 U.S.C. § 1404(a).
“As the permissive
language of the transfer statute suggests, district courts have
‘broad discretion’ to determine when party ‘convenience’ or ‘the
1
There is a current petition for a writ of mandamus before the Federal
Circuit that challenges the validity of VE Holding because the language in
§§ 1391(a) and (c) has changed since VE Holding was decided. (Pet. for Writ
of Mandamus, In re TC Heartland, No. 16-105 (Fed. Cir. Oct. 23, 2015), ECF
No. 2.) The court ordered a response on October 26, 2015. (Order Requesting
Response, id., ECF No. 3.) The respondent filed its response on November 9,
2015. (Response, id., ECF No. 27.) The court has not yet ruled on the
petition; VE Holding is still applicable in this case.
4
interest of justice’ make a transfer appropriate.”
Reese v. CNH
Am. LLC, 574 F.3d 315, 320 (6th Cir. 2009); see Norwood v.
Kirkpatrick, 349 U.S. 29, 32 (1955).
In determining whether to transfer a case under § 1404(a),
the court must first determine whether the claim could have been
brought in the transferee district.
28 U.S.C. § 1404(a)
(allowing transfer to any other district in which the claim
“might have been brought”).
Once the court has made this
threshold determination, the court must then determine whether
party and witness “convenience” and “the interest of justice”
favor transfer to the proposed transferee district.
See Reese,
574 F.3d at 320; One StockDuq Holdings, LLC v. Becton, Dickinson
& Co., No. 2:12-cv-03037-JPM-tmp, 2013 WL 1136726, at *2 (W.D.
Tenn. Mar. 18, 2013).
In weighing these statutory factors, the
court may still consider the private- and public-interest
factors set forth in the pre-Section 1404(a) case, Gulf Oil v.
Gilbert, 330 U.S. 501, 508-09 (1947), but courts are not
burdened “with preconceived limitations derived from the forum
non conveniens doctrine.”
Norwood, 349 U.S. at 31 (quoting All
States Freight v. Modarelli, 196 F.2d 1010, 1011 (3d Cir.
1952)).
A plaintiff has the privilege of selecting an advantageous
venue so long as it is consistent with jurisdictional and venue
limitations.
Atl. Marine Constr. Co. v. U.S. Dist. Court for
5
the W. Dist. of Tex., 134 S. Ct. 568, 581 (2013).
Although
there is a strong presumption in favor of the plaintiff’s choice
of forum under the doctrine of forum non conveniens, under
§ 1404(a), a plaintiff’s choice of forum is entitled to less
deference.
Discussing the difference between the common-law
doctrine of forum non conveniens and the federal
transfer-of-venue statute in Norwood, the Supreme Court stated,
When Congress adopted § 1404(a), it intended to
do more than just codify the existing law on forum
non conveniens. . . . [W]e believe that Congress, by
the term “for the convenience of parties and
witnesses, in the interest of justice,” intended to
permit courts to grant transfers upon a lesser
showing of inconvenience.
This is not to say that
the relevant factors have changed or that the
plaintiff’s choice of forum is not to be considered,
but only that the discretion to be exercised is
broader.
Norwood, 349 U.S. at 32; see also Lemon v. Druffel, 253 F.2d
680, 685 (6th Cir. 1958) (“The choice of the forum by the
petitioner is no longer as dominant a factor as it was prior to
the ruling in Norwood v. Kirkpatrick[.]”).
Defendant’s burden under § 1404(a) is to demonstrate by a
preponderance of the evidence that a change of venue to the
transferee district is warranted.
See Esperson v. Trugreen Ltd.
P’ship, No. 2:10-cv-02130-STA-cgc, 2010 WL 4362794, at *2 (W.D.
Tenn. Oct. 5, 2010), adopted by 2010 WL 4337823 (W.D. Tenn. Oct.
27, 2010).
“Merely shifting the inconvenience from one party to
another does not meet Defendant’s burden.”
6
McFadgon v. Fresh
Mkt., Inc., No. 05-2151-D/V, 2005 WL 3879037, at *2 (W.D. Tenn.
Oct. 21, 2005).
“[T]he movant must show that the ‘forum to
which he desires to transfer the litigation is the more
convenient one vis a vis the plaintiff’s initial choice.’”
Roberts Metals, Inc. v. Fla. Props. Mktg. Grp., Inc., 138 F.R.D.
89, 93 (N.D. Ohio 1991) (quoting Mead Corp. v. Oscar J. Boldt
Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981)), aff’d per
curiam, 22 F.3d 1104 (6th Cir. 1994) (unpublished table
decision).
III. ANALYSIS
Defendant asserts that venue is improper in the Western
District of Tennessee.
(ECF No. 22 at 6-7.)
Defendant,
however, acknowledged during the motion hearing that it is
subject to this Court’s personal jurisdiction.
Thus, as
§ 1391(c) still applies to § 1400(b), absent a decision
invalidating VE Holding, the Court finds that venue is proper in
the Western District of Tennessee.
Defendant asserts that Plaintiff could have brought this
action in the Western District of Michigan.
(ECF No. 22 at 7.)
For the purpose of responding to Defendant’s motion only,
Plaintiff does not dispute this assertion. 2
2
(ECF No. 34 at 16.)
Plaintiff asserts, however, that there is an applicable
forum-selection clause in an agreement between the parties that dictates
transfer to the Southern District of New York. (See generally ECF Nos. 34,
38.)
7
The Court agrees that Plaintiff could have brought suit in the
Western District of Michigan.
Therefore, the only issue remaining is whether the balance
of the statutory factors – the convenience to the parties, the
convenience to the witnesses, and the interest of justice –
favors transfer to the Western District of Michigan.
The Court
will first address each statutory factor separately and then
weigh these factors to determine whether transfer to the Western
District of Michigan is proper pursuant to § 1404(a).
A.
Convenience to Parties
“A defendant who moves for a transfer under § 1404(a) is
required to show both that the original forum is inconvenient
for it and that the plaintiff would not be substantially
inconvenienced by the transfer.”
Aultman, Tyner & Ruffin, Ltd.
v. Capital Rubber & Specialty Co., Civil Action No.
2:10cv223KS-MTP, 2011 WL 213471, at *11 (S.D. Miss. Jan. 21,
2011).
Factors related to the convenience of the parties
include “relative ease of access to sources of proof . . . and
other practical problems that make trial of a case easy,
expeditious and inexpensive.”
n.6.
Atl. Marine, 134 S. Ct. at 581
The Court finds that the location of sources of proof is
a neutral factor and that the financial hardships associated
with litigation in Plaintiff’s chosen forum do not weigh in
favor of a transfer of venue.
8
1. Location of Sources of Proof
“In patent infringement cases, the bulk of the relevant
evidence usually comes from the accused infringer.
Consequently, the place where the defendant’s documents are kept
weighs in favor of transfer to that location.”
In re Genentech,
Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009) (quoting Neil Bros.
Ltd. v. World Wide Lines, Inc., 425 F. Supp. 2d 325, 330
(E.D.N.Y. 2006)).
The Federal Circuit in Genentech noted that
the district court had erred by stating that the access to
evidence factor was neutral when the documents of the
petitioner, the party seeking transfer, were either in the
transferee venue or in the transferee state while the documents
of the respondent were in Europe or Washington, D.C. and would
have to be transported anyway to the respondent’s chosen venue.
Id. at 1345-46.
Defendant asserts that “the vast majority of potentially
relevant documents related to . . . the accused product [is]
located in the Western District of Michigan,” whereas none are
known to be physically located in Tennessee.
12.)
(ECF No. 22 at
Plaintiff argues that documents relating to the patent as
well as the 2007 settlement agreement, which is implicated by
9
Defendant’s affirmative defense of a license, are located in the
Western District of Tennessee in Memphis. 3
(ECF No. 34 at 17.)
Unlike the respondent in Genentech, Plaintiff would not
have to transport its documents to the transferor venue, since
the documents are already located in this district.
It would
not be “only slightly more inconvenient or costly to require the
transportation of those materials,” Genentech, 566 F.3d at 1346
(emphasis added), but rather, unnecessary and thus, much more
inconvenient to transport the documents from this district to
Defendant’s desired venue.
Further, when “[n]othing in the
record indicates that ‘the documents are so voluminous that
their shipment will impair the parties’ ability to conduct a
trial in this district[,] . . . . the location of documents
should be considered a neutral factor.”
Ajose v. Interline
Brands, Inc., No. 3:14-cv-1707, 2015 WL 5773080, at *3 (M.D.
Tenn. Sept. 30, 2015).
Defendant has not asserted a quantity of
3
Defendant argues that Plaintiff’s documents are “immaterial” for
purposes of this motion to transfer. (ECF No. 42-1 at 4.) Defendant cites
In re Verizon Business Network Services Inc., in which the Federal Circuit
found that a transfer of venue to another district, simply because the
transferee district had handled a case involving the same patent five years
earlier, was not justified. See 635 F.3d 559 (Fed. Cir. 2011). This case is
not analogous to Verizon because although the settlement agreement is even
more than five years old, Plaintiff does not argue that transfer should be
denied only because documents related to the settlement agreement are located
in the Western District of Tennessee. Rather, Plaintiff asserts that
patent-related documents in addition to the settlement documents are located
in Memphis (ECF No. 34 at 17) and that its choice of venue was also based on
the sale of infringing products in this district and this Court’s designation
as a Patent Pilot Program court (id. at 16). Thus, the Court finds that
Plaintiff’s asserted documents in Memphis are material and not the sole
reason for its opposition to a transfer of venue.
10
documents that would impede transport so much that this factor
would weigh in favor of transfer to the Western District of
Michigan.
The Court has found previously that a greater volume
of documents in the transferee venue is not “enough to tip the
balance in favor of transfer” when “both parties maintain
documents in their respective districts . . . [and] both sets of
documents will be integral to the proceedings.”
B.E. Tech., LLC
v. Apple Inc., No. 2:12-cv-02831-JPM-tmp, 2013 WL 3166620, at *9
(W.D. Tenn. June 20, 2013).
Thus, the Court finds that the
location of sources of proof is a neutral factor.
2. Financial Hardships
the Chosen Forum
Attendant
to
Litigating
in
“[T]he relative ability of litigants to bear expenses in
any particular forum” is one factor that this Court has
considered in § 1404(a) cases.
B.E. Tech., 2013 WL 3166620, at
*10 (quoting Ellipsis, Inc. v. Colorworks, Inc., 329 F. Supp. 2d
962, 970 (W.D. Tenn. 2004)).
When asserting financial
hardships, the parties should state them with specificity.
See
id. (“[Plaintiff’s] CEO stated that the company will incur
additional expenses, but it has not shown with any specificity
how detrimental those expenses would be to the company.”);
Siteworks Sols., LLC v. Oracle Corp., No. 08-2130-A/P, 2008 WL
4415075, at *4 (W.D. Tenn. Sept. 22, 2008) (“[Defendant] has
failed to show that transporting the documents . . . would cause
11
a specific hardship.”).
When “the evidence presented is
insufficient to make a showing that [a party] will be adversely
affected by litigating in either forum[,] [t]he paramount
consideration remains whether the [transferee forum] is more
convenient to the parties than [Plaintiff’s] chosen forum.”
B.E. Tech., 2013 WL 3166620, at *10.
Defendant asserts that the Western District of Michigan is,
in fact, far more convenient to the parties because nearly all
of Defendant’s employees, including those who may testify in
this case, are located there while Plaintiff has no known
connection to the Western District of Tennessee except that its
trial counsel is located in Tennessee.
(ECF No. 22 at 13.)
Plaintiff asserts that the Western District of Michigan is far
less convenient for its employees and witnesses because of
troublesome travel arrangements to Grand Rapids or Kalamazoo,
the two possible locations for this case upon transfer.
(ECF
No. 34 at 17-18.)
Defendant also asserts that its lead trial counsel has
offices only a few hours from the Western District of Michigan,
but eight hours from the Western District of Tennessee.
No. 22 at 13.)
(ECF
Plaintiff asserts that a transfer would increase
its expenses because there are no direct flights from Memphis to
Grand Rapids.
(ECF No. 34 at 17-18).
Courts have found,
however, that “[t]he factor of ‘location of counsel’ is
12
irrelevant and improper for consideration in determining the
question of transfer of venue.”
In re Horseshoe Entm’t, 337
F.3d 429, 434 (5th Cir. 2003); see, e.g., Siddiqi v. Gerber
Prods. Co., No. CV 12-1188 PA (RZx), 2012 WL 11922412, at *2
(C.D. Cal. Mar. 26, 2012); Solomon v. Cont’l Am. Life Ins. Co.,
472 F.2d 1043, 1047 (3d Cir. 1973).
The Court does not,
therefore, take into account the location of either party’s
counsel for this convenience analysis.
While both parties argue that they will experience
hardships because of travel to the opposing party’s choice of
venue, neither party describes specifically the significance of
the asserted hardships in terms of time loss or monetary
expense, or asserts that it will be unable to bear such costs.
See Siteworks, 2008 WL 4415075, at *4 (finding the relative
financial strengths of the parties did not weigh in favor of
transferring the case, as the party opposed to transfer “ha[d]
no net worth, very little revenue, no gross profits, no assets,
and [would need to] borrow from its owners in order to pay the
litigation expenses”); cf. B.E. Tech., 2013 WL 3166620, at *10
(considering a party’s ability to bear costs in an undesirable
forum as non-dispositive evidence only).
Defendant has failed
to meet its burden of demonstrating that a transfer of venue
will be more convenient to both parties as compared to the venue
Plaintiff has chosen.
While the Western District of Michigan is
13
more convenient for Defendant than the Western District of
Tennessee, it does not appear to be more convenient for
Plaintiff.
Accordingly, the financial hardships factor does not
support a transfer of venue.
B.
Convenience to Witnesses
“The convenience of the witnesses ‘is perhaps the most
important factor in the transfer analysis.’”
Ajose, 2015 WL
5773080, at *3 (quoting Steelcase, Inc. v. Smart Techs., Inc.,
336 F. Supp. 2d 714, 720 (W.D. Mich. 2004)).
When asserting
that a transferee district is more convenient for witnesses, a
party “must produce evidence regarding the precise details of
the inconvenience” of the forum chosen by the plaintiff.
Esperson, 2010 WL 4362794, at *8.
To satisfy its burden, the
movant must do “more than simply assert[] that another forum
would be more appropriate for the witnesses; ‘he must show that
the witnesses will not attend or will be severely inconvenienced
if the case proceeds in the forum district.”
Id. (quoting
Roberts Metals, Inc., 138 F.R.D. at 93 (internal quotation marks
omitted)).
Further, “to support a finding that this factor
favors transfer, the party asserting that the forum is
inconvenient for witnesses should ‘proffer, by affidavit or
otherwise, sufficient details respecting the witnesses and their
potential testimony to enable a court to assess the materiality
of evidence and the degree of inconvenience.’”
14
One StockDuq,
2013 WL 1136726, at *4 (quoting Eaton v. Meathe, No.
1:11-cv-178, 2011 WL 1898238, at *3 (W.D. Mich. May 18, 2011)).
“[I]t is the ‘materiality and importance of the testimony of
prospective witnesses, and not merely the number of witnesses,’
that is crucial to this inquiry.”
Id. (quoting Rinks v.
Hocking, No. 1:10-cv-1102, 2011 WL 691242, at *3 (W.D. Mich.
Feb. 16, 2011)).
The Court finds that neither convenience to
party witnesses nor convenience to non-party witnesses weighs in
favor of transfer to the Western District of Michigan.
1. Party Witnesses
Defendant asserts that nearly all of its employees work in
the Western District of Michigan and none work in Tennessee.
(ECF No. 22 at 11.)
Defendant also asserts that Plaintiff’s
employees are located in New York and that the inventor is
located in Pennsylvania.
(Id.)
Plaintiff argues that the
convenience to party witnesses should hold little weight in
analyzing the motion to transfer because “courts have held that
it is likely witnesses will be cooperative when employed by a
party because of their employment responsibilities.”
34 at 19 (quoting Esperson, 2010 WL 4362794, at *8).)
(ECF No.
Further,
Defendant provides an exhibit demonstrating that it is
approximately only one hour more for Plaintiff’s potential
employee witnesses in New York to fly to Memphis than to Grand
Rapids.
(ECF No. 44-6.)
This does not constitute a severe
15
inconvenience in favor of transfer.
Therefore, because there is
no evidence that Defendant’s party witnesses would not attend
proceedings in the Western District of Tennessee, and because
§ 1404(a) “provides for transfer to a more convenient forum, not
to a forum likely to prove equally convenient or inconvenient,”
convenience to party witnesses does not weigh in favor of
transfer.
Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964).
2. Non-party Witnesses
While convenience to party witnesses is an important
consideration, “it is the convenience of non-party witnesses,
rather than employee witnesses . . . that is the more important
factor and is accorded greater weight.”
Steelcase, 336 F. Supp.
2d at 721 (quoting Gundle Lining Constr. Corp. v. Fireman’s Fund
Ins. Co., 844 F. Supp. 1163, 1166 (S.D. Tex. 1994)).
Defendant asserts that three non-party witnesses, Becky
Engel, Chris McDonald, and Chad Kleinheksel, would be unwilling
to attend or seriously inconvenienced by a trial in the Western
District of Tennessee.
(ECF No. 22 at 8-11.)
Engel and
McDonald, both former employees of Defendant, would provide
critical testimony about Defendant’s “non-infringement and
invalidity defenses” and the state of the industry and the level
of skill in the art at the time of the invention.
(Id. at 9.)
Kleinheksel is outside counsel who would provide legal analysis
16
based on a prior investigation related to the accused product.
(Id. at 10.)
Engel declared that she “would not come to trial to testify
unless compelled to do so.”
25.)
(Decl. of Becky Engel ¶ 7, ECF No.
McDonald informed Defendant’s general counsel that “he
would not willing[ly] participate in this litigation.”
of Michael Bregenzer ¶ 13, ECF No. 24.)
(Decl.
Kleinheksel declared
that trial in this district “would impose a severe hardship” on
his personal and professional responsibilities.
Kleinheksel ¶ 7, ECF No. 26.)
(Decl. of Chad
All three are outside of the
subpoena power of this Court but subject to the subpoena power
of the Western District of Michigan.
(ECF No. 22 at 10.)
Defendant argues that live testimony by all three witnesses is
crucial to its case.
(Id. at 9-10.)
Plaintiff asserts that McDonald’s testimony would be
unnecessary in light of Engel’s, and thus, only Engel’s
convenience is relevant.
(ECF No. 34 at 19.)
Plaintiff asserts
that a subpoena will not be necessary if Engel volunteers to
testify, and that if she maintains that she will only testify if
compelled, her testimony can be presented by deposition.
(Id.)
Plaintiff also argues that Kleinheksel’s convenience is
irrelevant as he is Defendant’s patent prosecution counsel, and
convenience of a transfer for counsel should not be a
17
consideration.
(Id. (citing Quixtar Inc. v. Signature Mgmt.
Team, LLC, 566 F. Supp. 2d 1205, 1208 n.1 (D. Nev. 2008)).)
The Court finds that Defendant has met its burden to show
the nature of the non-party witnesses’ testimony, and that the
testimony of Engel and/or McDonald is likely material to
Defendant’s non-infringement and invalidity defenses.
The Court
finds that Kleinheksel’s testimony is also likely material but
that his asserted hardship is not so severe as to influence the
venue transfer analysis.
Kleinheksel’s general assertions that
a trial in the Western District of Tennessee would disrupt his
family and work obligations are not unique and may apply to many
witnesses for both parties.
In addition, unlike Engel and
McDonald who are no longer associated with or employed by
Defendant, Kleinheksel has represented and continues to
represent Defendant on patent matters.
Kleinheksel ¶ 3.)
(Decl. of Chad
While he is not counsel for Defendant in this
case and thus, Quixtar does not apply, Kleinheksel is still
likely to cooperate because of his duties to Defendant as his
client, even though he is not a party witness.
Cf. supra Part
III.B.1 (finding that party employees are likely willing to
cooperate because of employment responsibilities).
To the
extent that Kleinheksel would be considered an opinion witness,
his inconvenience is even less persuasive as a factor in favor
of transfer.
See First Union Nat’l Bank v. Paribas, 135 F.
18
Supp. 2d 443, 449 & n.19 (S.D.N.Y. 2001) (“the location of
defendants’ retained expert is entitled to little if any
consideration in the analysis”); Webster-Chicago Corp. v.
Minneapolis-Honeywell Regulator Co., 99 F. Supp. 503, 505 (D.
Del. 1951) (suggesting that opinion witnesses are selected for
their expertise, not residence, and “are presumably well
compensated for their attendance, labor and inconvenience, if
any”).
The Court also finds that the non-party witnesses’
testimony may be presented by deposition.
See Fed. R. Civ. P.
32(a)(4) (permitting use of deposition testimony when a witness
is unavailable to attend a hearing or trial); see also In re
Altera Corp., 494 F. App’x 52, 53 (Fed. Cir. 2012) (indicating
that the availability of video depositions can be a
consideration in analyzing a motion to transfer); In re Apple
Inc., 374 F. App’x 997, 998 (Fed. Cir. 2010) (per curiam) (“the
convenience of the witnesses did not weigh either in favor of or
against transfer, particularly in light of the availability of
video depositions of non-party witnesses”).
Although Defendant asserts that live testimony is
necessary, “there is no need to insist upon live testimony when
the credibility of the witness is not in question.”
McDaniel v.
BSN Medical, Inc., Civil Action No. 4:07CV-36-M, 2010 WL
2464970, at *4 (W.D. Ky. June 15, 2010) (quoting Borchardt v.
19
United States, 133 F.R.D. 547, 548 (E.D. Wis. 1991)).
Thus,
since it is unlikely that the witnesses’ credibility will be at
issue, the witnesses’ availability to testify by deposition
negates any inconvenience to them caused by litigating in the
Western District of Tennessee.
Further,
to the extent [a witness’] testimony is called into
question, any concern over the inability for the jury
to assess his credibility is significantly alleviated
because the deposition will be presented to the jury
by video rather than being read from a transcript.
“Videotaped testimony prepared specifically for use at
trial mitigates the concerns militating against the
use of depositions in lieu of live testimony. First,
although the witness is not physically present in the
courtroom, the jury has the opportunity to observe his
manner and hear his voice during the testimony.
Second, the witness is questioned just as he would be
at trial by counsel for both parties.”
Id. (quoting Hague v. Celebrity Cruises, Inc., No.
95CIV.4648(BSJ)(JCF), 2001 WL 546519, at *2 (S.D.N.Y. May 23,
2001)).
Accordingly, because Engel and McDonald may be compelled to
testify by deposition and/or video deposition, the inconvenience
to them should be a neutral factor.
The inconvenience to
Kleinheksel, who has not demonstrated that he would be severely
inconvenienced by, and is likely to appear at, proceedings in
the Western District of Tennessee, is unsubstantiated and does
not support a transfer of venue.
C.
Interests of Justice
The “interest of justice” factor has been interpreted
20
broadly by courts, influenced by the individualized
circumstances of each case.
The Federal Circuit has set forth a
non-exhaustive list of pertinent public interest factors:
(1) the administrative difficulties flowing from court
congestion; (2) the local interest in having localized
interests decided at home; (3) the familiarity of the
forum with the law that will govern the case; and (4)
the avoidance of unnecessary problems of conflicts of
laws or in the application of foreign law.
In re Acer Am. Corp., 626 F.3d 1252, 1254 (Fed. Cir. 2010).
The asserted interest of justice factors in this case are
promoting trial efficiency and litigating localized
controversies “at home.”
(ECF No. 22 at 13-15; ECF No. 34 at
11-13; see Esperson, 2010 WL 4362794, at *5 (quoting Gulf Oil,
330 U.S. at 508-09).)
The parties agree that trial efficiency
is a neutral factor since the Western District of Tennessee and
the Western District of Michigan have similar caseloads and time
to trial. 4 (ECF No. 22 at 13-14; ECF No. 34 at 11.)
The Western
District of Tennessee’s participation in the Patent Pilot
Program, too, is a neutral consideration.
See Round Rock
Research, LLC v. Oracle Corp., 2011 WL 5600363, at *9 (E.D. Tx.
Oct. 21, 2011) (“[R]egardless of the Eastern District’s
participation in the Patent Pilot Program, both Courts are
4
Defendant notes in its reply brief that, comparing only the two
districts’ patent dockets, the Western District of Michigan has adjudicated a
higher number of cases and has concluded cases in a shorter amount of time.
(ECF No. 42-1 at 5.) As the difference in median time from filing to
termination is only approximately two months, and the difference in mean time
only approximately three months (ECF No. 44 ¶ 15), however, the Court does
not find this patent-case-specific data to affect the neutrality of the trial
efficiency factor.
21
capable of applying patent law appropriately.
[this] factor[] to be neutral.”)
The Court finds
Thus, the Court examines only
the local interest factor and finds that it weighs in favor of
transfer.
Defendant asserts that the Western District of Michigan has
a substantial local interest in adjudicating the case because it
is home to Defendant and its witnesses and evidence.
22 at 14.)
(ECF No.
In response, Plaintiff argues not that the Western
District of Tennessee has a local interest, but rather that the
Southern District of New York, the venue Plaintiff asserts is
now required based on a forum-selection clause in the 2007
settlement agreement, has a local interest.
11-13.)
(ECF No. 34 at
As the Court in deciding the instant motion need only
compare Defendant’s proposed transferee venue to Plaintiff’s
original choice of venue, Plaintiff’s assertions about the local
interest of Southern District of New York are irrelevant.
The
Court finds that the local connection to the Western District of
Michigan is stronger in this case because Plaintiff has only
asserted that documents, and not witnesses or party employees,
are in the Western District of Tennessee.
Thus, the local
interest factor weighs in favor of transfer.
IV.
CONCLUSION
For the foregoing reasons, the Court finds that, in
balancing the statutory factors, Defendant has not demonstrated
22
that the Western District of Michigan is a more convenient forum
than the Western District of Tennessee.
Only one “interest of
justice” factor, the local interest, favors transfer, while one
“convenience to parties” factor and both “convenience to
witnesses” factors do not favor transfer.
Since convenience to
witnesses, particularly non-party witnesses, is generally
regarded as the most important consideration in a venue-transfer
analysis, see Steelcase, 336 F. Supp. 2d at 720-21, and in this
case, it does not favor transfer, Defendant’s Motion to Transfer
Venue is DENIED.
IT IS SO ORDERED, this 5th day of January, 2016.
/s/ Jon P. McCalla
JON P. McCALLA
UNITED STATES DISTRICT JUDGE
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