HFA, Inc. v. Trinidad/Benham Corp.

Filing 34

MEMORANDUM OPINION AND ORDER Denying 14 Trinidad's MOTION to Transfer Venue. Signed by Magistrate Judge John D. Love on 10/17/2017. (rlf)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
HFA, INC.,
Plaintiff,
v.
TRINIDAD/BENHAM CORP.,
Defendant.

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CIVIL ACTION NO. 6:17-CV-00343-RWS

MEMORANDUM OPINION AND ORDER
Before the Court is Defendant Trinidad/Benham Corporation’s (“Trinidad”) Motion to
Transfer Venue Pursuant to 28 U.S.C. §1404(a). (Doc. No. 14.) Plaintff HFA, Inc. (“HFA”) has
filed a response (Doc. No. 32) to which Trinidad filed a reply (Doc. No. 33). After considering
the parties’ arguments, the Court DENIES Trinidad’s Motion to Transfer Venue (Doc. No. 14).
BACKGROUND
HFA is an Illinois corporation, with its principal place of business at 135 E. Hintz Rd.,
Wheeling, Illinois 60090. (Doc. No. 1, at ¶ 2.) HFA is engaged in part in the business of
manufacturing, distributing, and selling of disposable aluminum foil pans and containers and
other aluminum products for home and food service. Id.
Trinidad is a Colorado Corporation with a principal place of business in Denver,
Colorado. (Doc. No. 14-2, Declaration of Jason Knudson, at ¶ 2) (“Knudson Decl.”).) Trinidad
has over 780 employees, approximately 10 percent of which are located in this District. Id.
Trinidad further has physical places of business across the country, including one location in
Mineola, Texas. Id. Trinidad identifies one employee who designed the accused products located
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in the Denver area, as well as the sales manager on the Sam’s Account, Tracy Page, who lives in
Dallas, Texas1 and works from a home office there. Id. at ¶¶ 10, 12. Some of Trinidad’s hard
copy documents related to the accused products, such as design schematics, research notes,
vendor communications, and product specification are located in Denver, Colorado, with
remaining documents related to manufacture, including equipment manuals, production run
reports, and testing reports, located in LaGrange, Georgia. Id. at ¶ 11. Documents related to
marketing and sales of the accused products are located in Denver, Colorado. Id. at ¶ 13.
Trinidad is in the business of processing, packaging, and distributing bean, rice, and popcorn
products in the United States. Id. at ¶ 3.
LEGAL STANDARD
Section 1404(a) provides that “[f]or the convenience of the 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). The goals of § 1404(a) are to prevent
waste of time, energy, and money, and also to protect litigants, witnesses, and the public against
unnecessary inconvenience and expense. Van Dusen v. Barrack, 376 U.S. 612, 616 (1964).
Ultimately it is within a district court’s sound discretion to transfer venue pursuant to 28 U.S.C.
§ 1404(a), but the court must exercise its discretion in light of the particular circumstances of the
case. Hanby v. Shell Oil Co., 144 F. Supp. 2d 673, 676 (E.D. Tex. 2001); Mohamed v. Mazda
Corp., 90 F. Supp. 2d 757, 768 (E.D. Tex. 2000). The party seeking transfer must show good
cause for the transfer. In re Volkswagen of America, Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en
banc) (“Volkswagen II”).

To show good cause, the moving party must demonstrate the

transferee venue is clearly more convenient. Id.
1

In its reply brief, Trinidad corrected the location of Mr. Page to Crossroads, Texas, which is located in this District.
(Doc. No. 33, at 4, n. 2[sic].)

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When deciding whether to transfer venue, a district court balances the private interests of
the parties and the public interests in the fair and efficient administration of justice. The private
interest factors the court considers are: (1) the relative ease of access to sources of proof; (2) the
availability of compulsory process to secure the attendance of witnesses; (3) the cost of
attendance for willing witnesses; and (4) all other practical problems that make trial of a case
easy, expeditious, and inexpensive. In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004)
(“Volkswagen I”). The public interest factors are: (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 conflict laws or in the application of foreign law. Id.
DISCUSSION
The threshold issue in a § 1404(a) analysis is “whether the judicial district to which
transfer is sought would have been a district in which the claim could have been filed.”
Volkswagen I, 371 F.3d at 203. In a patent infringement action, venue is proper 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). In this case, HFA
does not contest that Trinidad conducts business within the District of Colorado and transfer is
permissible under § 1404.
I.

The Private Interest Factors
(a) The Relative Ease of Access to Sources of Proof
For this factor to weigh in favor of transfer, the movant must demonstrate that transfer

will result in more convenient access to sources of proof. The Federal Circuit requires the Court

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to assume that the bulk of all relevant evidence will come from the accused infringer. In re
Genentech, 566 F.3d 1338, 1345 (Fed. Cir. 2009). As a result, “the place where the defendant’s
documents are kept weighs in favor of transfer to that location.” Id. (quoting Neil Bros. Ltd. v.
World Wide Lines, Inc., 425 F. Supp. 2d 325, 330 (E.D.N.Y. 2006)). To meet its burden,
Trinidad must identify its sources of proof with some specificity such that the Court may
determine whether transfer will increase the convenience of the parties. In re Apple, 743 F.3d at
1379; see also Invitrogen v. Gen. Elec. Co., No. 6:08–CV–113, 2009 WL 331889 at *3 (E.D.
Tex. Feb. 9, 2009) (finding that general statements that relevant documents were located in either
England or New Jersey “fail to show that transfer would make access to sources of proof either
more or less convenient for the parties”).
Trinidad first identifies certain documents at its headquarters in Denver, Colorado,
including design schematics, research notes, vendor communications, and product specifications.
Knudson Decl. at ¶ 11. Trinidad also identifies documents at its headquarters in LaGrange,
Georgia, such as manufacturing equipment manuals, production run reports, and testing reports.
Id. Trinidad maintains that the documents in Georgia are also frequently accessible through its
headquarters in Colorado. (Doc. No. 14, at 7.) Trinidad specifically identifies one employee, the
principal designer of the accused products, John Adam, who resides in the Denver area. Id. at ¶
10. Trinidad further identifies the sales manager for their Sam’s Club account, Tracy Page, who
works from a home office in Crossroads, Texas. Id. at ¶ 12; Doc. No. 33, at 4, n. 2[sic]. Trinidad
maintains that it does not have any employees with relevant knowledge at its office in Mineola,
Texas. Id. at ¶ 8.
HFA does not affirmatively identify the location of its sources of proof, but contends that
Trinidad has not met its burden to show transfer is clearly more convenient. (Doc. No. 32, at 7–

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10.) Specifically, HFA calls into question the location of Trinidad’s relevant sources of proof.
HFA contends that if documents in Georgia are also accessible at Trinidad’s headquarters in
Denver, then they must also be accessible at Trinidad’s office in this District in Mineola, Texas.
(Doc. No. 32, at 9.) Regardless, HFA points out that the documents in Georgia are closer to this
District. Id.
With regard to witnesses, HFA points out that Mr. Page is actually located in this District
at a home office in Cross Roads, Texas. Id. at 10. HFA also identifies Mr. Gregg Brashear, who
was identified by Trinidad as having relevant knowledge, and who lives in Carrollton, Texas. Id.
HFA identifies three Trinidad witnesses with relevant knowledge in LaGrange, Georgia: Mr.
Todd Brown (knowledge regarding the production and manufacturing of the accused products),
Ms. Leanne Roberts (Operations Manager), and Mr. Joe Davidson (knowledge regarding the
design, development, and manufacturing of the accused products), as well as one Trinidad
witness in Arkansas, Mr. Brook Sims (knowledge of design and development of the accused
products). Id. HFA further points to Sam’s Club employees, Helene Marlinski and Kelly Ingram,
who have knowledge of the design, development, and marketing of the accused products and are
located in Bentonville, Arkansas. Id. HFA identifies Jerrell Hicks, a Designer at Packaging
Corporation of America in Lithonia, Georgia, as well as two individuals in Italy who have
knowledge of the relative development and manufacturing of the accused products. Id. Trinidad
downplays the importance of these witnesses because the asserted patent is a design patent. (Doc.
No. 33, at 2–3.)
As an initial matter, the parties both attempt to use the electronic accessibility of
documents to lessen the consideration of where hard copy documents are located when such a
location does not favor their position. Despite the accessibility of nearly all documents in an

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electronic format, those arguments are not prevailing. The Court must still consider where the
documents are located with the accused infringer. In re Genentech, 566 F.3d at 1345. Here, those
documents are split between Colorado and Georgia, with the majority of design documents
located in Colorado. As to witnesses, Trinidad identifies two party witnesses, one located in the
District of Colorado and one located in this District.2 In addition, three employees specifically
identified are located in LaGrange, Georgia, and one in Arkansas. While HFA identifies many
third party witnesses, the location of those witnesses are not central to the considerations of this
factor.
In sum, several documents are located in Colorado and several are located closer to this
District in LaGrange, Georgia. At least one Trinidad witness is located in Colorado and at least
one is located in this District. Several other identified Trinidad employees with alleged relevant
knowledge are located in Georgia and Arkansas, all closer to this District than to Colorado. Thus,
on balance, this factor only slightly favors transfer.
(b)The Availability of the Compulsory Process to Secure the Attendance of Witnesses
The second private interest factor instructs the Court to consider the availability of
compulsory process to secure the attendance of witnesses, particularly non-party witnesses
whose attendance may need to be secured by a court order. See In re Volkswagen II, 545 F.3d at
316. The Court gives more weight to those specifically identified witnesses and affords less
weight to vague assertions that witnesses are likely located in a particular forum. See Novelpoint
Learning v. Leapfrog Enter., No 6:10-cv-229, 2010 WL 5068146, at *6 (E.D.Tex Dec. 6, 2010)
(stating that the Court will not base its conclusion on unidentified witnesses); See also West
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While Trinidad maintained that Mr. Page had a home office in Dallas, Texas, outside of this District, according to
Trinidad’s responses to HFA’s interrogatories, Mr. Page actually works out of his home in Cross Roads, Texas
which is located within this District. (Doc. No. 32-2, at ¶ 7.) Trinidad conceded this mistake in its reply brief. (Doc.
No. 33, at 4 n. 2[sic].)

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Coast Trends, Inc. v. Ogio Int’l, Inc., No. 6:10-cv-688, 2011 WL 5117850, at *3 (E.D. Tex. Oct.
27, 2011).
Trinidad does not identify any third-party witnesses in its motion to transfer. HFA
identifies Mr. Micheal Barney, a Club Manager at Sam’s Club in Tyler, Texas, who has
information on infringing sales, and the sale, display, and packing of the accused products. (Doc.
No. 32, at 12, citing Doc. Nos. 32-3, 32-4.) HFA also identifies Mr. Gregg Brashear who is a
non-party consultant identified by Trinidad and who lives in Carrolton, Texas. (Doc. No. 32-2, at
¶ 10.) Thus, at least one third-party witness located in Tyler, Texas is subject to the absolute
subpoena power of the Court. Fed.R.Civ.P. 45(c)(1)(A). Mr. Brashear appears to live just over
100 miles from the courthouse in Carrollton, Texas,3 and therefore could be compelled to trial
here only if the additional 9 miles of travel would not cause him to “incur substantial expense.”
Fed.R.Civ.P. 45(c)(1)(B)(ii).
Given that there are no identified third-party witnesses subject to the subpoena power of
the District of Colorado, but at least one subject to this Court’s absolute subpoena power, and
another likely subject to this Court’s subpoena power, this factor weighs against transfer.
(c) The Cost of Attendance for Willing Witnesses
In analyzing this factor, all parties and witnesses must be considered. Volkswagen I, 371
F.3d at 204. “Because it generally becomes more inconvenient and costly for witnesses to attend
trial the further they are away from home, the Fifth Circuit established in Volkswagen I a ‘100mile’ rule, which requires that ‘[w]hen the distance between an existing venue for trial of a
matter and a proposed venue under §1404(a) is more than 100 miles, the factor of inconvenience

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According to Trinidad’s responses to HFA’s interrogatories, Mr. Brashear’s home office is located at 2418
Ridgedale Drive, Carrollton, Texas, 75006, 109 miles from the Tyler courthouse. (Doc. No. 32-2, at ¶ 10.)

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to witnesses increases in direct relationship to the additional distance to be traveled.’” In re TS
Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008) (citations omitted).
As discussed, Trinidad has specifically identified two employees as willing witnesses
with relevant knowledge of the accused products, one located in this District and one located in
the District of Colorado. Knudson Decl. at ¶¶ 10, 12. Trinidad also identifies its declarant, Mr.
Knudson who had knowledge of marketing and sales and is located in the Denver area. (Doc.
No. 14, at 10.) Trinidad maintains that having trial in this District would significantly increase
the inconvenience and expense for its witnesses in Colorado as well as any potential HFA
witnesses in Illinois. Id. at 11.
HFA relies on Mr. Page, the party witness in this District, as well as the three Trinidad
witnesses in Georgia, and the one Trinidad witness in Arkansas. (Doc. No. 32, at 13–14.) HFA
also relies on the following third-party witnesses previously identified: Mr. Gregg Brashear in
Carrolton, Texas; Ms. Helene Marlinski and Ms. Kelly Ingram, both in Bentonville, Arkansas;
Jerrell Hicks in Lithonia, Georgia; and Christiano Gozzoli and Lorenza Manera, both in Italy. Id.
at 14–16.
Balancing the scattering of identified witnesses, with only two in Colorado, two in Texas,
and several others closer to this District in Georgia and Arkansas, the Court finds that this factor
does not weigh in favor of transfer.
(d) Other Practical Problems
(i) Judicial Economy
Although judicial economy is not among the list of the enumerated factors, it can be a
consideration when determining whether a transfer is in the interest of justice. Volkswagen II,
565 F.2d at 1351. Here, neither party identifies any co-pending action from which either court

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would have gained familiarity with the parties, patent, or accused products. Therefore, this factor
is neutral.
II.

The Public Interest Factors
The parties agree that the public interest factors are neutral, aside from the administrative

difficulties flowing from court congestion and local interest considerations.
(a) The Administrative Difficulties Flowing From Court Congestion
This factor is the most speculative, and cannot alone outweigh other factors. Genentech,
566 F.3d at 1347. However, the speed with which a case may get to trial is relevant under the §
1404(a) analysis. Id. Both parties agree that the time to trial in this District is statistically
shorter than in the District of Colorado. (Doc. No. 14, at 13; Doc. No. 32, at 17.) HFA also notes
that this Court has already set this case for a jury trial to commence on November 13, 2018.
(Doc. No. 32, at 17.) While the Court agrees that this factor is not alone sufficient to outweigh
any other factors, given that the parties agree the time to trial is statistically 10 months faster in
this District, the Court finds this factor weighs slightly against transfer.
(b) The Local Interest in Having Localized Interests Decided at Home
Trinidad maintains that the District of Colorado has a local interest because it is
headquartered there and the accused products were developed there. (Doc. No. 14, at 13.) HFA
maintains that the evidence of other documents and witnesses in other locations, as well as the
presence of a physical plant in this District, diminishes the local interest the District of Colorado
has in this matter. (Doc. No. 32, at 14.)
Ultimately, because Trinidad has identified a couple of individuals whose work relates to
the accused technology and who are located in the District of Colorado, the Court finds that the
District of Colorado has some local interest in the outcome of the litigation. See Hoffman-La

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Roche, 587 F.3d at 1336 (“[L]ocal interest in this case remains strong because the cause of action
calls into question the work and reputation of several individuals residing in or near that district
and who presumably conduct business in that community.”); Eon Corp. IP Holdings, LLC v.
Sensus, USA Inc., No. 2:10-cv-448, 2012 WL 122562, at *5 (E.D. Tex. Jan. 9, 2012). However,
given that there are also Trinidad witnesses whose work related to the accused products was
conducted in this District, as well as other witnesses working in Georgia and Arkansas, the Court
does not find that any local interest had by the District of Colorado strongly outweighs the
interest of other forums, including this District. Therefore, this factors weighs only slightly in
favor of transfer, and the local interest here is insufficient to warrant transfer on its own.
(c) The Remaining Public Interest Factors
The remaining public interest factors are neutral. Both courts are familiar with federal
patent law and there are no conflicts to avoid.
CONCLUSION
For the aforementioned reasons, the Court finds that Trinidad has not shown that the
District of Colorado is a clearly more convenient forum. Here, while the location of sources of
proof and the local interest weighs slightly in favor of transfer, the convenience of willing
witnesses was neutral, and availability of the compulsory process weighs against transfer. In
addition, the administrative difficulties arising from court congestion weigh slightly against
transfer. All other factors were neutral. Accordingly, on balance, the Court DENIES Trinidad’s
motion to transfer (Doc. No. 14).

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So ORDERED and SIGNED this 17th day of October, 2017.

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