JPT Group, LLC v. Balenciaga et al
MEMORANDUM AND ORDER granting 24 MOTION to Transfer Case to Southern District of New York. (Signed by Judge Ewing Werlein, Jr) Parties notified.(gclair, 4)
United States District Court
Southern District of Texas
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
JPT GROUP, LLC,
David J. Bradley, Clerk
CIVIL ACTION NO. H-16-1596
BALENCIAGA and BALENCIAGA
February 10, 2017
MEMORANDUM AND ORDER
Pending is Defendant Balenciaga America,
Transfer Venue Pursuant to 28 U.S.C.
Inc. 's Motion to
(Document No. 24).
supplemental response, and applicable law, the Court concludes for
the reasons that follow that the motion should be granted.
Plaintiff JPT Group, LLC ("Plaintiff") owns two design patents
for ornamental women's sandals and sells "MOJO" sandals embodying
the patents under its Bernardo brand. 1
Plaintiff alleges that
Defendant Balenciaga America, Inc. ("Defendant"), together with its
Document No. 1 ~~ 1, 12-16 (Orig. Compl.); id., ex. A
(United States Patent No. D581,149); id., ex. B (United States
Patent No. D577,182).
Plaintiff seeks damages, attorneys' fees, and a permanent
injunction against further infringement. 4
Defendant moves under
1404(a) to transfer venue to the Southern District of
New York, arguing that the only connection between the case and the
Southern District of Texas is the location of Plaintiff's counsel
and that the Southern District of New York,
where Defendant is
headquartered and where both parties engage in extensive marketing
convenient and appropriate venue. 5
II. Legal Standard
"For the convenience of parties and witnesses, in the interest
of justice, a district court may transfer any civil action to any
Defendant Balenciaga, a French company with its principal
place of business in Paris, has not been served or made an
appearance in this case, although Plaintiff represents that it "has
initiated service of Balenciaga in France through the Hague
Convention." Document No. 34 at 3. To the extent that Defendant
Balenciaga's interests should be considered as part of the venue
transfer analysis, they weigh in favor of transfer, as travel from
Paris to New York is more convenient than travel from Paris to
Document No. 1
Id. at 5-6. Defendant alleges counterclaims for declaratory
judgments of non-infringement and invalidity of Plaintiff's
patents. Document No. 27.
Document No. 24.
other district or division where it might have been brought or
to any district or division to which all parties have consented."
protect litigants, witnesses, and the public against unnecessary
inconvenience and expense, and to avoid the waste of time, energy,
Van Dusen v. Barrack, 84 S. Ct. 805, 809 (1964).
transfer of an action under section 1404 is committed to the sound
discretion of the district court.
Jarvis Christian Coll. v. Exxon
Corp., 845 F.2d 523, 528 (5th Cir. 1988) . 6
Under section 1404(a), the movant bears the burden of showing
to transfer venue.
In re Volkswagen of Am.,
545 F.3d 304,
burden reflects the appropriate deference to
which the plaintiff's choice of venue is entitled."
. it has shown good cause and the district court
should therefore grant the transfer."
transferee venue is not clearly more convenient than the venue
"Though patent cases are appealed to the Federal Circuit,
the Federal Circuit follows Fifth Circuit law on procedural issues
such as section 1404's convenience analysis."
RSI Video Techs.,
Inc. v. Vacant Prop. Sec., LLC, No. 3:13-CV-00170, 2013 WL 5530619,
at *1 (S.D. Tex. Oct. 4, 2013) (Costa, J.) (citing In re Microsoft
Corp., 630 F.3d 1361, 1363 (Fed. Cir. 2011) (applying Fifth Circuit
law in reviewing a district court ruling on a motion to transfer on
A court should not transfer a case "if the only
practical effect is to shift inconvenience from the moving party to
the nonmoving party."
Goodman Co., L. P. v. A
F. Supp. 2d 766, 776 (S.D. Tex. 2005)
H Supply, Inc., 396
(quotation marks and citation
"[W]here, as is the case here, the plaintiff is not from
forum it has chosen,
the plaintiff's choice is given less
5214098, at *2 (S.D. Tex. Dec. 23, 2009).
issue under section 1404 (a)
plaintiff's claim could have been filed in the judicial district to
which transfer is sought.
In re Volkswagen AG ("Volkswagen I") ,
371 F.3d 201, 203 (5th Cir. 2004).
If so, the court then considers
determine whether transfer is for the convenience of the parties
and in the interest of justice.
Volkswagen II, 545 F.3d at 315.
The private interest factors are:
to sources of proof;
(1) the relative ease of access
(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
public interest factors are:
flowing from court congestion;
(1) the administrative difficulties
the local interest in having
localized interests decided at home;
the familiarity of the
forum with the law that will govern the case; and (4) the avoidance
of unnecessary problems of conflict of laws or in the application
of foreign law.
Although these factors "are appropriate for
exclusive," and no single factor is dispositive.
It is undisputed that Plaintiff could have filed suit in the
Southern District of New York, where Defendant is headquartered.
factors to determine whether transfer would be convenient and in
the interest of justice.
Private Interest Factors
Relative Ease of Access to Sources of Proof
evidence usually comes from the accused infringer.
the place where the defendant's documents are kept weighs in favor
of transfer to that location."
Lines, Inc., 425 F. Supp. 2d 325, 330 (E.D.N.Y. 2006)).
(1) Defendant's headquarters and principal place
of business are in New York;
(quoting Neil Bros.
evidence is that:
In re Genentech,
(2) all of Defendant's "management,
distributions," along with the "personnel and documents relevant to
these functions," are located in New York;
(3) Defendant's finance
employees and documents are in New Jersey,
fewer than ten miles
from the courthouse for the Southern District of New York;
(4) all of Defendant's "records and documents in the United States
that may be relevant to this lawsuit are located in and in close
current and former employees located in New York who have knowledge
of the sales, marketing, advertising, distribution, and customer
interactions related to Defendant's allegedly infringing sandals. 8
while Plaintiff attempts
to minimize its ties to New
there is at least some evidence that Plaintiff's Bernardo
brand, which markets the patented sandals at issue, is or recently
was headquartered in New York. 9
As this Court recently concluded,
Document No. 24-1 at 1-2.
Id. at 3-4. Plaintiff attempts to minimize the significance
of Defendant's New York-based operations and evidence by arguing
that the key documents and witnesses related to Defendant's design
and development of its sandals are likely located in Europe, where
Defendant's parent company is based. Document No. 34 at 9-10. To
the extent that additional evidence located in Europe is central to
Plaintiff's claims against Defendant, it does not weigh against
transfer. See RSI Video, 2013 WL 5530619, at *3 ("The possibility
that more evidence might be located in the United Kingdom [where
the allegedly infringing products are designed and manufactured]
than in Chicago [where the defendant is headquartered] or anywhere
else does not help RSI because the 'question is relative ease of
access, not absolute ease of access.'") (citing In re Radmax Ltd.,
720 F.3d 285, 288 (5th Cir. 2013)).
See, e.g., Document No. 37-2 at 2 of 62 and 14 of 62 (copy
of Bernardo website from January 2016 stating that its headquarters
are based in New York) .
"[r]egardless of the true location of its headquarters, Bernardo
clearly has significant connections to New York."
JPT Grp., LLC.
v. Steven Madden Retail, Inc., No. CV H-15-3264, 2016 WL 3523878,
at *2 (S.D. Tex. June 28, 2016)
The evidence and witnesses available in the Southern District
of Texas are comparatively less significant.
documents in Texas.
Plaintiff, a Delaware
Instead, Plaintiff argues that various former
employees of the previous owners of the patents at issue and other
witnesses who were involved with the prosecution of the patents
reside in Texas. 11
These witnesses' testimonies are unlikely to be
"the bulk of
relevant evidence" is likely to come from Defendant. 12
Document No. 1 ~ 3 .
Document No. 34 at 7-8. Notably, the actual inventor of the
patents at suit, Dennis Comeau, whose contact information Plaintiff
lists as "Counsel for JPT," Document No. 34-1 at 6, is not a Texas
resident, and in a prior case Comeau's counsel advised all parties
that "Mr. Comeau
has transacted all business with [the
plaintiff] JPT Group and [the defendant] Steve Madden Companies in
New York City and has never done business with either company in
Texas." Document No. 37, ex. DD at 62 of 62.
In a previous case filed by Plaintiff alleging infringement
of the same patents, the only witness upon whom Plaintiff relied at
summary judgment was its manager in Oregon; none of the purportedly
critical Texas witnesses provided testimony.
See Plaintiff JPT
Group's Response to Defendants' Motion for Summary Judgment and
Cross Motion for Summary Judgment of Infringement, JPT Group, LLC
v. Express, Inc., No. 4:15-cv-2757 (S.D. Tex. Aug. 8, 2016), ECF
566 F.3d at 1345; see also Spiegelberg v. Collegiate Licensing Co.,
402 F. Supp. 2d 786, 791-92 (S.D. Tex. 2005)
("Courts have observed
that ' [i] ntellectual property infringement suits often focus on the
principal place of business is often the critical and controlling
(quoting Houston Trial Reports,
Inc. v. LRP Publ'ns, Inc., 85 F.
Supp. 2d 663, 668 (S.D. Tex. 1999)).
Finally, Plaintiff's contention that Defendant has important
documents and witnesses in Texas because its products are sold here
is a hollow argument.
Defendant produces evidence that
" [a] 11
sales reporting, inventory information, and documents relevant to
advertising and promotion of BALENCIAGA products in the U.S. are
information related to this
retailers in Texas,
is required from third party
and that Defendant's sales in New York "far
exceed" its sales in Texas. 13
the relative ease of
access to evidence factor weighs heavily in favor of transfer.
Document No. 37-1 at 2.
Availability of Compulsory Process to Secure the
Attendance of Witnesses
court may compel a
to attend a
hearing, or deposition that takes place within 100 miles of where
the person resides, is employed, or regularly transacts business in
FED. R. Crv. P. 45(c) (1) (A).
subpoena power over most of
Accordingly, this Court has
but none of
and the Southern District of New York has subpoena
power over Defendant's witnesses but not Plaintiff's.
process in either court.
Plaintiff urges that this factor nevertheless weighs against
transfer because Defendant's New York witnesses are its employees
and compulsory process is unnecessary to compel their attendance,
unlike the third-party witnesses in Texas on whom Plaintiff claims
it will rely. 14
Plaintiff's argument has been called into question
by a recent decision by this Court.
Sandbox Logistics LLC v. Grit
Energy Sols. LLC, No. 3:16-CV-12, 2016 WL 4400312, at *4 (S.D. Tex.
in this District have noted that
witnesses who are employed by one party to the litigation are often
required by their employers to attend and testify at trial, even if
they are not within the subpoena power of the Court.
The Court notes that the Federal Circuit has not adopted
Document No. 34 at 13.
this approach- -even in cases arising within the Fifth Circuit.
compulsory process for unwilling witnesses without regard to their
status as employees of a party.")
(citing In re Toa Technologies,
543 F. App'x 1006, 1009 (Fed. Cir. 2013); In re Acer America Corp.,
626 F.3d 1252, 1255 (Fed. Cir. 2010)).
However, to the extent that there is any merit in Plaintiff's
argument that the unavailability in New York of compulsory process
unavailability in this Court of compulsory process for Defendant's
employee witnesses, the importance of those third-party witnesses
defendant should be considered.
The only Texas witnesses listed by
Plaintiff acquired the patents by assignment dated February 11,
Of those witnesses listed in Plaintiff's Response, only two
. infringement by the accused products, and
the former President of Bernardo Group and the
former CEO of Bernardo Group.
Given that Plaintiff has not alleged
that infringement of the Patents occurred before February 11, 2014,
the testimony of former officers of the former owner of the Patents
Document No. 1 at 3.
in this patent
reside in New York.
infringement case have been shown to
Thus, on this record, this factor is neutral.
Cost of Attendance for Willing Witnesses
"In considering the availability and convenience of witnesses,
convenience of key witnesses."
(E.D. Tex. Oct. 28, 2009)
"In determining whether a particular venue is
more convenient to witnesses,
Remmers v. United States, No. CIV.
A. 1:09-CV-345, 2009 WL 3617597, at *5
(collecting cases) .
and quality of
the court should inquire into the
regard to the issues in dispute rather than limit its investigation
to a review of which party can produce the longer witness list."
Id. (collecting cases); see also Houston Trial Reports, 85 F. Supp.
2d at 668
("The convenience of one key witness may outweigh the
The distance and cost of travel between Houston and New
York is presumably equal for witnesses residing either in Houston
or New York but, as noted above, Defendant's witnesses in New York
are likely to be the key witnesses.
Moreover, although the two witnesses identified by Plaintiff
in Bend, Oregon and Santa Fe, New Mexico reside closer to Houston
than to New York, Defendant presents evidence that there are more
flights available from both locations to New York than to Houston,
and that flights
from New Mexico to New York are substantially
cheaper than flights to Houston despite the greater distance, while
from Oregon to New York and
to Houston are
In sum, considering that most of the key witnesses are
in New York, the cost of attendance factor favors transfer.
All Other Practical Factors
Plaintiff argues that transfer is inefficient because there
are multiple related lawsuits filed by Plaintiff in this district
However, all of those cases have been settled and
if there was ever an arguable
retaining this case in Houston as companion to similar cases filed
by Plaintiff, that efficiency is no longer present, rendering this
a neutral factor.
In sum, the private interest factors weigh strongly in favor
Public Interest Factors
Because this case involves federal patent law,
Document No. 24, exs. 0-R.
Document No. 34 at 16-17.
Judges in the Southern District of Texas had an average
of 799 cases filed from July 2015 to June 2016,
Southern District of New York,
compared to 467
District of Texas had a slightly shorter median time from filing to
disposition of civil cases,
so on balance the court congestion
factor is neutral. 19
As for the final public interest factor, the local interest in
having localized interests decided at home, "[w]hile the sale of an
in any single venue,
significant connections between a particular venue and the events
that gave rise to a suit,
this factor should be weighed in that
In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338
Both parties sell their
but Defendant is headquartered in New York
Plaintiff argues as to these factors that this Court is
familiar with the patents in suit due to past cases and that a
single court should determine whether the asserted patents are
valid and enforceable to avoid conflicting decisions.
Id. at 19.
However, none of Plaintiff's other cases on these patents was
assigned to the undersigned Judge. Regardless, all of Plaintiff's
other cases have settled, and the two design patents for studded
sandals at issue here do not involve complex technology or patent
claims regarding which this Court or the undersigned Judge has any
Document No. 24, ex. Fat 37 of 250, 62 of 250.
while Plaintiff has no current and ongoing special tie to Houston
other than its counsel having his office here.
See RSI Video Techs.
Thus, in comparison
Inc. v. Vacant Prop. Sec.
No. 3:13-CV-00170, 2013 WL 5530619, at *4 (S.D. Tex. Oct. 4, 2013)
("[A] district does have a significant local interest
A district's local interest in a case may also be significant
reputation of several individuals residing in or near that district
587 F.3d at 1336.
Plaintiff argues that the
into question the work and reputation of
Houston residents who "contributed to the patents in suit and what
the Bernardo brand is today," as well as the work and reputation of
the local patent prosecution firm that obtained the patents, such
that Houston is
the proper venue. 20
innovation and work of those who obtained the patents in suit about
ten years ago,
they sold those patents years ago to Plaintiff.
Thus, Plaintiff's accusations in its Complaint do not implicate the
work and reputation of those who sold their interests to Plaintiff
Document No. 34 at 18.
but do have direct implications for the work and reputation of
willful patent infringement.
On the whole,
the local interest
factor weighs heavily in favor of transfer.
After careful consideration of the private and public interest
factors, the Court finds that all of the private and public factors
either weigh in favor of transfer or are neutral.
established that the Southern District of New York is clearly a
more convenient forum for the parties and witnesses and, therefore,
in the interest of justice this cause will be transferred to the
Southern District of New York.
For the foregoing reasons, it is
ORDERED that Defendant Balenciaga America,
Transfer Venue Pursuant to 28 U.S.C.
Inc.'s Motion to
(Document No. 24) is
GRANTED and this case is TRANSFERRED to the United States District
Court for the Southern District of New York.
The Clerk will
Order and mail a
Memorandum and Order to the Clerk of the United States District
Court for the Southern District of New York, and shall send copies
to all counsel of record.
SIGNED at Houston, Texas, on
this~~ of February,
~TES DISTRICT JUDGE
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