CAO Group v. Den-Mat Holdings

Filing 35

MEMORANDUM DECISION AND ORDER granting 17 Motion to Change Venue - case is now transferred to USDC Central District of CA; finding as moot 17 Motion to Stay; finding as moot 28 Motion to Stay. Signed by Judge David Nuffer on 9/29/15 (alt)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
CAO Group, Inc.,
Plaintiff/ Counter ClaimDefendant
v.

MEMORANDUM DECISION AND
ORDER GRANTING DEFENDANT’S
MOTION TO TRANSFER TO
CENTRAL DISTRICT OF
CALIFORNIA

Den-Mat Holdings, LLC
Case No.2:15-cv-412-DN
Defendant/Counterclaimant
District Judge David Nuffer

Defendant and counterclaimant Den-Mat Holdings, LLC (“Den-Mat”) filed this motion
to transfer to the Central District of California (the “Motion to Transfer”). 1 Den-Mat argues that
this case should be transferred under § 28 U.S.C. 1404(a), 2 which states: “[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.” 3 Plaintiff and counterclaim-defendant CAO Group (“CAO”)
opposes the Motion to Transfer. 4 While this Motion to Transfer was pending, Den-Mat also filed
a Motion to Stay any scheduling in this case until this Motion to Transfer is resolved, 5 and CAO
opposed that Motion. 6 As discussed below, the appropriate venue for this patent infringement
1

Def./Countercl. Den-Mat Holdings, LLC’s Mot. to Transfer to the Central District of California or, in the
Alternative, to Stay (“Motion to Transfer”) at 5, docket no. 17, filed August 10, 2015.

2

Id.

3

28 U.S.C. § 1404(a).

4

See Mem. in Opp’n to Def./Countercl. Den-Mat Holding’s, LLC Mot. to Transfer to the Central District of
California or, in the Alternative, to Stay (“Transfer Opposition”) at 1, docket no. 24, filed August 27, 2015.

5

Def./Countercl. Den-Mat Holdings, LLC’s Ex Parte Mot. to Stay the Parties’ 26(f) Conference Pending the
Resolution of Transfer Mot. to Stay, docket no. 28, filed Sept. 10, 2015.
6

Pl. CAO Group, Inc.’s Opp’n to Def.’s Mot. to Stay 26(f) Conference, docket no. 29, filed Sept. 11, 2015.

action is the Central District Court of California. Therefore, the Motion to Transfer is
GRANTED, and the Motion to Stay is MOOT.
DISCUSSION
This dispute arises out of Den-Mat’s alleged infringement of five separate patents that
CAO owns. 7 Den-Mat’s headquarters are in the Central District of California. 8 Den-Mat also
manufactures and produces in California the accused products that allegedly violate CAO’s
patents. 9
Den-Mat argues that this case should be transferred to the Central District of California
because “key documents and witnesses” pertaining to this case are located in that jurisdiction. 10
CAO, on the other hand, argues that transfer is not proper because the factors articulated in 28
U.S.C. 1404(a) are either neutral or disfavor transfer. 11 Furthermore, CAO emphasizes that
transfer is not appropriate because courts generally give the plaintiff’s choice of forum great
deference. 12
When considering whether to transfer a case to a different venue, courts are required to
consider the following factors:
(1) the plaintiff's choice of forum; (2) the accessibility of witnesses and other
sources of proof, including the availability of compulsory process to insure the
attendance of witnesses; (3) the cost of making the necessary proof; (4) the
enforceability of a judgment if one is obtained; (5) relative advantages and
obstacles to a fair trial; (6) difficulties that may arise from congested dockets; (7)
the possibility of the existence of questions arising in the area of conflict of laws;
(8) the advantage of having a local court determine questions of local law; and (9)
7

Compl. & Jury Demand ¶¶ 10–14. docket no. 2, filed June 11, 2015.

8

Aff. of Robert Cartagena in Supp. of Def. Den-Mat Holdings, LLC Mot. to Transfer to the Central District of
California or, in the Alternative, to Stay (“Affidavit. of Robert Cartagena”) ¶ 3, docket no. 18, filed Aug. 10, 2015.

9

Id. ¶ 4.

10

Mot. to Transfer at 2.

11

Transfer Opp’n at 6.

12

Id. at 2.

2

all other considerations of a practical nature that make a trial easy, expeditious
and economical. 13
Courts should rarely disturb the plaintiff’s choice of forum, “unless the balance [of factors] is
strongly in favor of the movant.” 14 However, “a plaintiff's choice of forum is afforded less
deference when their choice of forum has little connection with the operative facts of the
lawsuit.” 15 “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
[generally] weighs in favor of transfer to that location.” 16 Moreover, the “operative facts” in a
patent infringement case typically include “facts relating to the design, development, and
production of a patented product.” 17 “Where a party's products are sold in many states, sales
alone are insufficient to establish a material connection to the forum and to override other factors
favoring transfer.” 18
Here, transfer to the Central District of California is appropriate because the operative
facts of this case bear the greatest relation to California. Many witnesses that have information
related to the design, development, and production of Den-Mat’s accused products reside in
California. 19 And although Den-Mat has transacted business in Utah, 20 CAO acknowledges that

13

Chrysler Credit Corp. v. Country Chrysler, Inc., 928 F.2d 1509, 1516 (10th Cir. 1991).

14

Scheidt v. Klein, 956 F.2d 963, 965 (10th Cir. 1992).

15

Cmty. Television of Utah, LLC v. Aereo, Inc., 997 F. Supp. 1191, 1206 (D. Utah 2014).

16

In re Genentech, Inc., 556 F.3d. 1338, 1346 (Fed. Cir. 2009).

17

Invivo Research, Inc. v. Magnetic Resonance Equip. Corp., 119 F. Supp. 433, 440 (S.D.N.Y. 2000).

18

Id.; see also Bovino v. Incase Designs Corp., No. 13-cv-2106-WJM-MJW, 2014 WL 1796914, at *2 (finding
Plaintiff’s choice of forum carried little weight where defendant’s accused products have as much relation to the
chosen forum as they do many other forums).
19

Aff. of Robert Cartagena ¶¶ 5–12.

20

See Def./Countercl. Den-Mat Holdings, LLC’s Reply in Supp. of its Mot. to Transfer to the Central District of
California or, in the Alternative, to Stay (“Reply Memorandum.”) at 3, docket no. 31, filed September 14, 2015.

3

Den-Mat sells its accused products nationwide. 21 Thus, sales in Utah alone are not sufficient to
establish a more significant connection to this forum. Since Den-Mat sells these accused
products nation-wide, CAO’s claim bears as much relation to many other jurisdictions as it does
to Utah. Consequently, CAO’s claim does not sufficiently relate to Utah to justify affording
substantial weight to CAO’s choice of forum.
Many of the factors identified in § 28 U.S.C. 1404(a) are neutral 22 in this case. The
accessibility of witnesses and sources of proof weighs in favor of transfer, and “[t]he
convenience of witnesses is the most important factor in deciding a motion under § 1404(a).” 23
Many witnesses who have knowledge related to the design and manufacture of Den-Mat’s
accused products reside in California. 24 Although CAO identifies witnesses who reside in Utah
that have information related to CAO’s alleged damages, 25 those witnesses do not have
information pertaining to the “design, development, and production” 26 of CAO’s accused
products.
CONCLUSION
The operative facts of this case stem from California, so no substantial weight attaches to
CAO’s choice of forum. Moreover, given that convenience of potential witnesses is the most
important factor in the transfer calculus, it is proper that this case be transferred to the Central
District of California because the potential witnesses with information related to the design and
21

Transfer Opp’n. at 4.

22

The relative advantages and obstacles to a fair trial; the possibility of the existence of questions arising in the area
of conflict of laws; and the advantage of having a local court determine questions of local law are either neutral or
inapplicable. As Den-Mat points out, this Court’s docket is more congested than the Central District of California’s.
Mot. to Transfer at 9–10. Furthermore, given Den-Mat manufactures the accused products in California, it will be
easier for CAO to enforce any potential judgement in California.

23

Emp’r Mut. Cas. Co. v. Bartile Roofs, Inc., 618 F. 3d 1153, 1169 (10th Cir. 2010).

24

Aff. of Robert Cartagena ¶¶ 5–12.

25

Transfer Opp’n at 3.

26

In re Genentech, Inc., 556 F.3d. at 1346 (Fed. Cir. 2009).

4

manufacture of Den-Mat’s accused products, and the documentary evidence of those facts, are in
California.
ORDER
IT IS HEREBY ORDERED that Defendant’s Motion to Transfer 27 is GRANTED.
IT IS FURTHER ORDERED Defendant’s Motion to Stay 28 is MOOT.

Signed September 29, 2015.
BY THE COURT

_______________________________
District Judge David Nuffer
United States District Court

27

Def./Countercl. Den-Mat Holdings, LLC’s Mot. to Transfer to the Central District of California or, in the
Alternative, to Stay at 5, docket no. 17, filed Aug. 10, 2015.
28

Pl. CAO Group, Inc.’s Opp’n to Def.’s Mot. to Stay 26(f) Conference, docket no. 29, filed Sept. 11, 2015.

5