CIVIX-DDI, LLC v. Loopnet, Inc.
Filing
84
OPINION AND ORDER GRANTING Defendant Loopnet's Motion to Transfer Venue. As outlined in this Order, this case is TRANSFERRED to the U.S. District Court for the Northern District of Illinois for all further proceedings. Entered and filed 8/30/12. (Signed by District Judge Mark S. Davis on 8/30/12). (ecav, )
FILED
UNITED
STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
AUG 3 0 2012
Norfolk Division
CIVIX-DDI,
CLERK, US DISTRICT COURT
LLC,
NORCOLK, VA
Plaintiff,
V.
Case No.:
LOOPNET,
2:12cv2
INC.,
Defendant.
OPINION AND ORDER
This
matter
("Loopnet")
District
to
28
I.
Court
§
before
to
for
the
Northern
1404 (a).
ECF No.
plaintiff,
January
3,
U.S.
CIVIX-DDI,
2012.
Patent
U.S.
Patent
No.
deal
with
technology
of
Transfer
Court
Venue
on
to
District
57.
Loopnet,
the
of
United
Illinois,
For the
Inc.'s
reasons
States
pursuant
set
forth
FACTUAL AND PROCEDURAL HISTORY
infringing
the
the
the defendant's motion to transfer is GRANTED.
The
on
Motion
U.S.C.
herein,
is
a
items
alleges
offering
Civix
No.
6,415,219
"system and methods
for
for
Loopnet
sale,
has
("Civix"),
accuses
6,385,622
("the
known
from a database."
that
LLC
as
a
"local
remotely accessing
1,
operating
and
a
complaint
Loopnet
patent")
Both
search"
and
of
and
patents
describe
selected group
Exhibits A-B.
infringed its patents
selling,
A622
patent").
See ECF No.
a
defendant
("the
'291
filed
by making,
providing
searching systems through the www.loqpiiet.coin website.
real
Civix
using,
estate
Civix
is
a
Colorado
alleged
principal
Loopnet
is
a
business
place
Delaware
in
San
location-based
limited
of
business
corporation
Francisco,
searching
liability
in
July
Transfer
56.
1
Venue
Civix
The
11,
to
filed
as
before
and
Transfer
place
which
District
Illinois
was
Exhibits
4,
its
10,
fact
could not
tell
On May 14,
to
add
recently
39.
On
that
any
joined
an
in
a
the
Loopnet
instant
attempt
a
infringement
Case
No.
Motion
of
in
to
suit.
by
Civix
their
Motion
that
by
in
the
Chicago,
ECF
the
No.
58,
Court
on
that
it
place
stated
of
although
shift
to
submitted
principal
Virginia,
counsel
occurred.
Costar
of
No.
to
IL.
motion
Illinois.
the
As
the
of
Civix
Civix
on
the
No.
of
this
complaint,
the
June
of
non-
patents21,
by
Eastern
pending
of
properly
judgment
responded
currently
be
result
regarding
to
ECF
explaining
instant
Illinois
had
acquisition
not
a
declaratory
litigation
is
motion
could
52.
Costar
subsidiary.
to
amend
a
since
that
thus
against
Transfer
That
prior
District
N.D.
the
denied
and
seeking
invalidity
Northern
District
Civix's
has
See
Civix
wholly-owned
ECF
I:12cv4 968,
Virginia.
Northern
a
matter
complaint
and
the
to
of
filings
complaint
defendant
Court
infringement
unsuccessful
in-suit
as
this
separate
Costar
filed
a
exactly when that
additional
2012,
alleged
was
place
been
alleging
questioned
that
ECF
principal
business.
to
No.
2012,
25,
has
to
ECF
plaintiff's
argument,
2006
Motion
Civix filed a Motion to Amend its Complaint
as
21,
July
defendant
2006
of
Illinois
the Court
on
Opposition
the
when
oral
after
from
acquired
June
Loopnet
during
2012,
Costar
place
commercial
Illinois.
filed
in
Furthermore,
sometime
shifted
2003.
Civix
Illinois
principal
inconsistency
in
reveals
for
of
The
However,
of
provides
instant
Virginia
since
64.
of
11.
business
2
No
place
Loopnet
plaintiff's
Virginia.
business
ECF
Virginia.1
the
District
that
an
including Virginia.2
filed
the
with
principal
services
opposition memorandum
indicate
of
1,
documentation
Northern
Northern
identifies
Court
at
Loopnet
Alexandria,
the
principal
was
its
Complaint
business
this
the
its
California.
systems
2012,
Alexandria,
having
properties throughout the United States,
On
company
2012.
filing
a
District
before
the
No.
64,
2012,
and a
reply memorandum was
ECF No.
70.
Markman hearing
docket
the
5,
and
2013
oral
reset
2012,
under
on
the Court
the matters
the
On
Motion
advisement
and
now
29,
16,
2012,
Transfer.
issues
its
8,
to the Court's
for October
August
to
on August
rescheduled the
in this matter due
respectively.
argument
matter
16,
and jury trial
congestion
February
heard
On August
filed by Loopnet
2012
this
The
and
Court
Court
took
findings
as
set
witnesses,
in
the
forth below.
II.
LEGAL
"For
the
interest
action
STANDARD
of
to
convenience
justice,
any
a
other
of
the
parties
district
district
court
or
and
may
division
transfer
where
it
any
civil
might
have
been brought or to any district or division to which all parties
have
consented."
28
U.S.C.
§
1404(a).
Section
intended to place discretion in the district court
motions
for
transfer
according
an
Ricoh,
Inc.,
Barrack,
Imaging
689,
376
Sys.,
696
district
burden
Section
487
U.S.
Inc.
(E.D.
is
on
1404 (a)
612,
v.
Va.
court has
U.S.
22,
622
29
(1964));
Recognition
2000)
(1988)
see
Research
(recognizing
Van
also
Inc.,
the
movant
is
proper.
to
show
that
Cognitronics,
83
F.
Dusen
F.
Supp.
discretion
transfer
Inc.
v.
Cognitronics
83
to transfer to a more convenient
the
case-by-case
Steward Org.,
(citing
"is
to adjudicate
'individualized,
consideration of convenience and fairness.'"
v.
1404(a)
forum).
pursuant
Supp
2d at
2d
the
The
to
696.
In
a
patent
infringement
pursuant
to
Section
regional
circuit
Royalty Corp.
In
appropriate,
whether
forum,
of
the
and
in
which
202
to
"a
parties
v.
Microtek
Va.
2003).
forum
settled
of
.
that
601,
.
A.
second
balance
of
of
in
Supp.
of
venue
a
and
to
as
clearly
(1)
convenience
that
627,
forum."
630
"[i]t
is
favor
203
(E.D.
choice
plaintiff's
Ralsky,
is
transferee
plaintiff's
weight
v.
Int'l
2000).
the
2d
a
the
inquires:
justice
disturb
Inc.
Cir.
transfer
of
Winner
two
brought
F.
law
transfer
hardships
Servs.,
(Fed.
inquiry,
rarely
See
make
substantial
should
Va.
250
the
venue
well
choice
transfer
F.
Supp.
2d
2002).
Jurisdiction of the Potential Transferee Forum
order
district
been
the
Online
must
justify
Inc.,
by
transfer
DISCUSSION
In
the
the
{E.D.
a
interest
given
court
Verizon
623-24
of
be
unless
."
III.
a
whether
been
to
sits.
1352
witnesses
part
Court
1340,
have
the
motions
governed
court
Intern.,
should
forum
.
and
As
F.3d
might
whether
Koh
the
district
(2)
such
are
determine
claims
the
of
1404 (a)
Wanq/
v.
order
action,
where
Court
must
brought
Inc.
2004) .
v.
in
to
the
cause
determine
the
Micromuse,
The
determine
whether
of
action
whether
court
Inc.,
F.
phrase
"might
transferee
"might
have
Plaintiff's
transferee
316
the
Supp.
have
2d
been
been
claims
initially.
322,
court
brought"
a
brought,"
could
Agilent
325
is
have
Techs.,
(E.D.
has
Va.
been
interpreted
to
mean
has
a
to
sue
of
defendant."
right
1084,
at
4
324
could
L.
be
brought
in
decision
court.
F.
Hunter
to
Douglas,
a
1400(b)
3
In
28
is
where
has
2d
824,
regular
Co.
U.S.C.
§
and
the
Va.
2004)
1400(b),
582,
has
the
place
of
316
80
F.
in
the
acts
Ct.
2d
claims
have
been
subsequent
discretion
of
Rental
Va.
patent
S.
considering
the
(E.D.
wishes
Supp.
whether
Trailer
591
where
committed
344,
(citing Verosol
venue
"district
the
could
initially,
within
plaintiff
of
before
claims
Storage
established
Complaint,
the
JNB
(emphasis added).3
its
court
court
Supp.
335,
determine
v.
F.
any
defendant
first
(E.D.
828
806
in
U.S.
also Agilent,
If
is
commenced,
independently
transferee
venue
Inc.,
proper
the
must
is
363
see
venue).
Ins.
suit
Blaski,
transferee
Beacon
Supp.
lawsuits
the
transfer
One
Under
or
the
v.
court
in
a
district,
(1960);
a
transfer
"when
that
1254
that
brought
to
in
Hoffman
2d
(noting
whether
312
Ed.
that
the
Corp.,
B.V.
v.
1992)).
infringement
defendant
resides,
of
infringement
business."
28
and
U.S.C.
§
A corporate defendant resides in any
plaintiff
merely
states
venue
is
appropriate in the Eastern District of Virginia under section
1400(b).
However,
it
appears the
second portion of section
1400(b)
would not support venue in this district
[or in the
Eastern
District
of
Illinois].
In
a
district
where
the
defendant
does
not
reside,
venue
is
only
proper
where
the
defendant has committed acts of infringement and has a regular
and established place of business.
It does not appear that the
defendant has such a place of business in Virginia
[or in the
Eastern District of Illinois] that would support venue under the
second prong.
The first part of section 1400(b), however, looks
to
the district
in which the defendant
resides.
For venue
district
in
U.S.C.
1391 (c).
§
Both
could
which
parties
have
Civix's
it
is
subject
that
brought
been
agree
in
Opposition
to
the
Motion
to
Transfer
Complaint
alleges
it
is
having
principal
Alexandria,
However,
Virginia
Plaintiff
limited
Illinois.
Additionally,
Illinois,
personal
jurisdiction
availed
of
purposes,
any
a
corporate
at
At
then
it
Civix's
1
company
Street,
at
as
transact
internet
sufficient
a
f
1.
foreign
business
company
contacts
it
filing
least
one
"shall
which
it
the
such
is
If
the
of
to
in
Civix
lawsuit
to
patent
is
still
reside
to
is
has
Northern
numerous
subject
does
support
the
deemed
action
at 691.
[or
in
personal
of
be
that
appears
jurisdiction
the
time
appears
an
the
at
Supp. 2d
district
No.
64;
in
personal
commenced."
infringing sales have
Eastern
District
of
jurisdiction
likely
exists,
venue.
least
principal
326,
of
in
the
to
No.
Prince
registered
Moreover,
defendant
district
Cognitronics,
83 F.
made
in
this
4
there.
and
been
does
is
has
lawsuits,
judicial
Illinois],
too
ECF
liability
ECF
claims
Illinois.
57.
1220
28
27.
through
jurisdiction
as
currently
Illinois
infringement
at
of
5,
No.
limited
authorized
itself
at
Complaint,
Loopnet
it
District
ECF
business
Exhibit
since
in
District
of
also
58,
business
repeatedly
Colorado
company
ECF No.
9,
jurisdiction.
infringement
Transfer
at
22314.A
is
liability
a
patent
Northern
to
Motion
place
personal
Civix's
Loopnet's
a
to
as
place
Chicago,
late
of
as
August
business
Illinois
60606.
was
24,
125
ECF No.
2006,
South
58,
Civix
Wacker
Exhibit
alleged
Drive,
11.
its
Suite
currently pending.
No.
05cv06869.
Civix v.
Therefore,
have been brought"
U.S.C.
B.
§ 1404(a);
Hotels.com,
it
is
clear
et
al.,
this
N.D.
civil
111.
action "might
in the Northern District of Illinois.
28 U.S.C.
Plaintiff's
Choice
§
of
Case
See 28
1391 (c).
Forum
/
Convenience
to
Parties
and
Witnesses
The
second
consider
several
These
(2)
factors
convenience
obtaining
of
the
compulsory
controversies
decided
of
(quoting BHP
493,
consider,
the
498
Loopnet
choice
because
Civix
the
Ins.
v.
Online
2000)).
Plaintiff's
sources
of
250
F.
in
312
having
of
party
Supp.
cost
local
cases,
and
F.
the
(7)
Supp.
the
2d
at
105
F.
factors
to
Inc.,
principal
choice
the
availability
Exch.,
The
proof,
the
law;
Co.,
of proof;
(3)
diversity
applicable
Inc.
Koh,
(4)
Court
transfer venue.
witnesses;
in
the
forum,
witness
convenience,
2d at
and
633.
Choice of Forum
argues
Civix's
has
sources
interest
(6)
Inv.,
interest of justice.
1. Plaintiff s
home;
Va.
and
the
Beacon
are
to
analysis
witnesses;
One
(E.D.
access
of
(5)
with
Int'l
however,
convenience,
parties
at
justice.'"
1404 (a)
ease of access to
the
process;
interest
2d
"Ml)
attendance
familiarity
Supp.
the
to determine whether to
of
court's
828
of
factors include:
the
of
prong
of
is
that
the
a
little
Eastern
deference
District
non-practicing
entity
of
should
Virginia
whose
main
be
as
given
a
to
forum
business
is
enforcing
argues
that
its
that
intellectual
Civix
it
has
Virginia
for
has
been
nine
property
minimal
a
ties
to
"resident"
years
rights.
Virginia.
of
because
its
Loopnet
the
therefore
Civix
Eastern
principal,
responds
District
William
of
Semple,
has lived in the Eastern District of Virginia since 2002.5
ECF
No.
its
64.
Plaintiff
primary
place
District
of
also
business
of Virginia"
Generally,
states
a
in
from
2003.
plaintiff's
See
Heinz
LLC,
Supp.
660,
667
2d
at
and
623.
"the
2d
However,
greater
forum
and
the
court
will
Inc.,
316
the
give
to
F.
Supp.
71
infringement
center
of
Supp.
F.
5
accused
2d
936,
Supp.
2d
939
at
moved
No.
at
64
Virginia
2.
where
(E.D.
Va.
Civix
Then
he
2d
the
in
of
to
2008,
continues
to
Eastern
preferred
Acterna
Mr.
that
its
more
Id.
Supp.
weight
Agilent
Wireless,
Va.
is
v.
1999).
In
generally
"the
Inc.,
forum
in
to
129
Inc.,
for
principal,
moved
a
Techs.,
Inc.
Techs.,
Virginia
Semple
to reside.
8
the
Adtech,
Delaphane,
F.
chosen
forum
preferred
250
USA,
plaintiff's
se_e Agilent
that
Razor
varies
{E.D.
v.
v.
to
choice
choice."
519
entitled
Koh,
this
a
GTE
is
Co.
action,
517,
explains
&
2010);
see
2001);
(noting
from Colorado
within
forum
between
327;
activity."
326
Specifically,
Semple,
at
cases,
the
accorded
cause
Supp.
to
GmbH
Va.
plaintiff's
2d
F.
patent
(E.D.
connection
the
changed
of
Kettler
weight
plaintiff's
Inc.,
Qualcomm,
the
"formally
Colorado
choice
weight.
F.
it
Id.
substantial
750
that
F.
316
patent
William
2002.
ECF
Alexandria,
infringement
are
Eastern
Civix
Civix
made
the
business.
is
in
Civix
conceded
after
changed
tell
business
is
is
a
in
See
and
evidence
Illinois
if
of
its
employees
that
principal,
Mr.
that
to
the
Semple,
does
entity
located
owns
not
a
place
to
10,
of
11.
until
business
counsel
could
occurred.
rights.
these
place
dispute
business
district
in
2005
ignore
operations,
home
of
business
actually
to
only
64.
documentation,
principal
this
in
4,
appear
place
copy
transition
property
in
a
of
were
2003
No.
Illinois
this
the
allegations.
with
although
whose
facilities,
its
not
that
in
ECF
place
principal
Plaintiff's
Civix
who
was
Court
1,
Exhibits
with
it
when
at
of
58,
Virginia,
intellectual
are
No.
that
in
principal
Court
principal
Civix's
assume
manufacturing
the
its
its
support
District
ECF
exactly
Virginia,
to
resided
and
Transfer
confronted
Court
that
Court
to
has
years
Virginia
Motion
when
2006"
of
alleges
the
and
nine
Northern
Civix
to
for
provided
non-practicing
enforcement
no
the
even
inconsistencies
has
witnesses
principal
nothing
Illinois.
from
the
to
has
argument,
Nevertheless,
it
of
its
District
offered
in
which
oral
Virginia
Loopnet
filed
in
"sometime
not
has
Chicago,
During
was
majority
that
Opposition
contrast,
2006
of
Eastern
Civix
complaints
and
where
alleges
District
However,
In
is
located).
Here,
of
cases
that
is
Thus,
the
Civix
offices,
besides
Alexandria,
of
or
its
Virginia.
Furthermore,
for
Civix
brief
it
and
also
that
states Mr.
"take
a
job
Transfer
Inc.,
at
769
where
that
not
F.
limited to
because
6
During
Semple
2d
at
as
full
and
internet
and
its
at
SI
2,
ECF
No.
"federal
with
to
whose
used
1;
see
courts
weight'
the
in
the
have
company
^substantial
connection
home
regularly
that
claiming
"only
Thus,
Loopnet
based
that
weight"
owned a
are
(noting
the
(noting
"minimal
has
to
Facebook,
part-time").
claim
area to
Motion
v.
2011)
entity
time
Plaintiff's
to
LLC
given
here
an
938
where
are
for
forum
is
activity without more").
it
district
the
underlying
lacks
work
in
choice
appears
argument,
not
be
Complaint
plaintiffs
currently working
Va.
services
of
Plaintiff's
oral
does
works
is
AV,
co-owner who
underlying
Plaintiff's
this
business
(E.D.
and
Supp.
transfer,
forum and
not work
Opposition
would
a
district.
sales
Although
against
is
choice
forum
side
non-practicing
searching
solicitous
their
a
Loopnet
this
129
995
the
"location-based
Acterna,
does
Praqmatus
2007
connection
throughout"
see,
forum
district
since
is
a
D.C.."6
991,
of
is
in this
Virginia
just
64;
2d
choice
Alexandria
only
No.
Supp.
Plaintiff
employee
is
Washington
ECF
F.
Plaintiff's
Civix
Semple
Semple originally moved to the Virginia
in
2,
appears Mr.
real
of
forum
actual
cause
Plaintiff's
full
time
estate.
10
connection
of
significant
action
contacts
counsel
for
generally
Civix
is
between
weak.
with
the
conceded
and
weighs
this
Thus,
claim,
that
instead
Mr.
is
Plaintiff's choice of forum will not be given great weight.
See
Glamorgan Coal Corp.
438
(W.D.
Va.
forum,
v.
Ratners Group PLC,
1993)(noting that
"the
district's
underlying]
claim
although
lack
makes
of
this
854
F.
Plaintiff
significant
factor
Supp.
436,
filed in its home
contact
neither
with
[the
dispositive
nor
conclusive").
2. Convenience of the Parties and Witnesses
The
Court
and witnesses
factor
must
of
weigh
in litigating
requires
sources
next
courts
proof,
convenience
in either venue.
to
the
the
consider
costs
of
the
499
Co
F.
Supp.
v.
2d 685,
Rambus,
Inc.,
The
693
party
2005)).
burden to proffer,
Va.
2007)
F.
Supp.
2d
386
asserting
Inc.
708,
717
or otherwise,
the
materiality
of
assess
inconvenience."
"the
convenience
greater
weight
deciding
718.
Eastern
a
As
Koh,
of
[than
motion
the
the
to
moving
District
of
250
F.
Supp.
non-party
the
of
party,
Virginia
of
Samsung,
Loopnet
is
at
witnesses
transfer."
"an
11
v.
and
TiVo,
to
the
Inc.,
n.13
(E.D.
must
"has
Va
the
sufficient details
testimony to enable
evidence
2d
convenience
access
inconvenience
and their potential
to
of
witnesses,
respecting the witnesses
court
parties
(quoting Samsung Elecs.
witness
by affidavit
"ease
Lycos,
(E.D.
the
Assessment of this
obtaining
availability of compulsory process."
to
and
636.
386
be
afforded
witnesses]
F.
Supp
demonstrate
inconvenient
degree
Additionally,
should
party
the
forum
2d.
that
in
in
at
the
which
to litigate,
not simply that the
would be more convenient."
Loopnet
forum
.
argues
.
.
Id.
that
given
[Northern District of Illinois]
at 718
n.15.
"Illinois
that
it
is
is
an
a
far
more
internet
convenient
company
business operation in Virginia."
at
that
2.
Loopnet
middle
the
ground"
as
majority
Coast.
Id^
counsel
three
goes
of
its
at
9.
resides
in
inventors)
Id.
argues
convenient
No.
a
of
transfer
of
that
is
will
located
likely
officers
likely
be
be
to
two
who
as
and Maryland.
Costar's
and
(the
employees
inconvenienced
in Washington,
12
"may"
they
Id.
will
D.C.
able
a
be
9.
that
Northern
the
at
most
8,
ECF
witnesses
in
the
Civix
(co-
to
since
Western
also
recently
called
transfer
again.
inconvenienced by
reside
at
to
is
Transfer
be
Northern
inconvenient,"
Virginia
to
the
"[t]he
non-party
entity
by
be
that
of
Motion
identifies
in
particularly
District
litigation
of Virginia
Loopnet)
not
that
should
concedes
patents-in-suit)
this
out
available
thus
Civix
Opposition
District
it
points
from
and
(the
and
coming
Francisco
lead
Eastern
the
San
"convenient
Civix's
that
also
in
a
West
also
be
themselves
before
the
will
is
the
may
Civix
inventors
headquartered
Illinois
forum.
64.
made
though
Illinois
57
and that Civix's main witnesses
Illinois
Illinois
of
is
Loopnet
contrast,
District
argue
witnesses
have
of
In
to
Loopnet
District
Civix
on
no
ECF No.
Motion to Transfer,
with
notes
acquired
testify
Costar
and
is
The
convenience or inconvenience
identified
in
the
both
and
specific
details
regarding
the
witness's
testimony
Koh,
250
F.
and potential
the
degree
of
Supp.
to
Virginia
be
is
inventors
of
since
area,
repeatedly
litigation
time
in
travel
7
Civix
Virginia)
to
Loopnet
the
"no
District of
Illinois
and
without
its
a
plaintiff
regarding
in the
principal
these
the
last
flight
Illinois
argument
and
or
weight
and
that
two
around
the
as Civix
has
patents-in-suit
nine
place
years
of
were
in
(during
business
witnesses
co-
able
has
to
problem.
lead counsel
relevant documentation,
consideration is given
otherwise
in
non-
Loopnet's
longer
principal,
reside
presumably
also noted that
somewhat
is not given much
Illinois
alleges
of
and
California
Civix's
its
to
inconvenience
All
in
weight
failed
material
located
a
have
opposed to California to
Virginia/DC/Maryland
the Northern
be
little
of
636.
from
patent-in-suit
initiated
degree
Furthermore,
convenient
the
parties
at
are
inconvenience
slight.7
more
2d
witnesses
from California to Virginia as
appears
both
accorded
will
each
employees
been
is
because
cumulative.
which
Civix
analysis
how
thus
Loopnet
transfer
provide
and
by
of the potential witnesses
could
for Civix,
and presumably
were located in Illinois.
However,
to the convenience of counsel" for
ship
relevant
documents
and
evidence
to counsel in any district and use it as a basis for defeating a
motion
to
transfer
and
establishing
venue.
See
Original
Creatine Patent Co., Ltd. v. Met-Rx USA, Inc., 387 F. Supp. 2d
564, 571 (E.D. Va. 2005); Coqnitronics, 83, F. Supp 2d at 698.
13
Thus,
based
Court on witness
on
the
of
Illinois
equally
inconvenient)
the
residence
in
home
in
favor
is
Eastern
Plaintiff's
of
information
and party convenience,
District
Though
limited
this
the
Eastern
District
forum,
of
with
district,
this
forum
District
the
(or perhaps
of
Illinois.
is
proposed
to
single
employee
having
Virginia
only
to
it appears the Northern
an equally convenient
as
provided
a
factor
does
not
weigh
a
court
be
heavily
either party.
C. Interest of Justice
Last,
"interest
witness
Section
of
and
1404 (a)
justice,"
party
"encompasses
a
requires
consideration
convenience.
public
that
The
interest
of
factors
interest
factors
consider
of
unrelated
justice
aimed
at
the
to
factor
'systemic
integrity and fairness,'" with the most prominent considerations
being
"judicial
judgments."
2d 627,
635
721).
Byerson
(E.D.
In
circumstances
court's
economy
v.
Va.
2006)
as
the
Equifax
analyzing
such
and
familiarity with
the
Info.
Servs,
(quoting Samsung,
this
"the
avoidance
factor
pendency
of
LLC,
applicable
a
related
law,
an
unfair
trial,
the
ability to
14
join
F.
Supp.
Supp.
2d at
should
docket
access to premises that might have to be viewed,
of
467
386 F.
courts
of
inconsistent
other
consider
action,
the
conditions,
the possibility
parties,
and the
possibility of
and Air
Conditioning,
Systemic
to
harassment."8
702
Bd.
F.
Supp.
integrity must also take
forum
shop
and
to
avoid
"When
related
interest
of
actions
justice
in favor of transfer."
U.S.
Ship Mgmt.
(E.D.
Va.
v.
previously
litigated
a
in
386 F.
is
Ltd.,
especially
case
involving
the
of
familiarity
2d
at
the
is
938
(citing
Loopnet
currently
Illinois
issue
8
Under
premises
argues
two
a
matter
Supp.
that
the
case;
the
is
facts
might
same
and 2)
of
this
to
v.
in
the
case,
it
viewed,
2d
a
forum,
(quoting
924,
937
party
has
issues
and
facts
economy,
357
Advance
Va.
District
appears
the
F.
Supp.
Creative
under
1)
Northern
and
such
2001)).
reasons:
patents-in-suit
be
Supp.
appropriate
two
the Northern
have
2d at 721
"where
(E.D.
for
lawsuits
2d at 721.
Ship Mgmt,
Inc.
transfer
adverse
'weigh heavily'
judicial
815
consideration
on
of
2d 804,
of
likely be familiar with
U.S.
Electronics,
pending
based
that
LG
131 F.
actions"
in this
As
highly desirable.'"
Computer Corp.,
"related
case.
to
similar
*a court in that district will
attempt
transferee
F.
true
[because]
facts
Supp.
Supp.
1988).
a party's
the
357
Va.
effect
generally thought
Samsung,
This
and
Baylor Heating
(E.D.
386 F.
pending
Maersk Line,
2005)).
1260
force
Samsung,
are
is
1253,
v.
into account
"the
rulings in prior litigation."
the
Of Trustees
there
the
are
District
of
technology
at
of
Illinois has
the
access
possibility
of
to
an
unfair trial, and the possibility of harassment are not at issue
for no party mentioned these concerns in the filings before the
Court
or
during
oral
argument.
15
past
experience
litigating
issue.
Motion to Transfer
reason,
the
these
District
two
of
pending
Illinois
Costar litigation.
in
2006,
Case
counterclaim
second
21,
pending
2012
when
still
Transfer
the
are
the
the
57.
currently
technology
As
to
before
Hotels.com
l:05cv6869,
pending,
Costar10
patents-in-suit.
ECF No.
actions
litigation,
non-infringement
15,
and
the
the
at
first
Northern
litigation
and
the
The Hotels.com9 infringement litigation began
No.
is
at
patents
and
filed
ECF
suit
has
currently
No.
Costar
invalidity
Civix
Costar
the
and
58,
responded
to
Civix
by
the
contract
16.
began
declaratory
against
litigation
Exhibit
litigation,
for
a
The
on
June
judgment
regarding
filing
Eastern
a
of
the
Motion
to
District
of
9
Civix brought this patent infringement action in December of
2006 against Defendants Hotels.Com, LP, Hotels.Com GP, LLC, and
other companies that are no longer parties to the lawsuit.
ECF
No. 58, Exhibit 10.
In October of 2010, the Illinois district
court
(Judge St. Eve)
construed eight disputed claim terms of
the X622 and '291 patents. Id^, Exhibit 13 at 2.
On August 19,
2011,
the
Illinois
court
granted the
Defendants'
Motion
for
Summary
Judgment.
Id.
Thus,
all
parties
believed
the
Hotels.com litigation was over until the Federal Circuit issued
an Order on May 1,
2012 noting that the district court never
ruled on the counterclaims and didn't certify the judgment as
final pursuant to Rule 54 (b) .
Id^, Exhibit 14.
Most recently,
on
June
12,
2012,
Judge
St.
Eve
denied
Civix's
Motion
for
Entry
of Judgment pursuant to Rule 54 (b) and held that the remaining
contract
counterclaim
was
interrelated
to
the
issues
of
infringement.
Id^, Exhibit 16.
Thus, trial on the remaining
claim has been scheduled for January 22, 2013.
10
As
mentioned
earlier
in
this
opinion,
Costar
recently
acquired Loopnet as a wholly-owned subsidiary. Civix attempted
to amend their Complaint to include Costar as an additional
defendant, but such motion was denied through an order issued by
Magistrate
Judge
Douglas
E.
Miller
52.
16
on
June
21,
2012.
ECF
No.
Virginia.
August
As
This
23,
to
2012.
the
Northern
that
motion
See
second
technology
briefed
I:12cv4968
Civix
has
Illinois
over
the
a
history
with
the
issue
as
it
has
and
became
(N.D.
repeatedly
of
has
at
fully
Case No.
reason,
District
district
is
last
IL),
ripe
ECF No.
suit
filed
22.
the
decade.
these
in
Therefore,
patents-in-suit
litigated
on
and
the
issues
several
weigh
against
times.11
Civix
transfer
Motion
2)
argues
because:
to
docket
case was
to a
judge
to
Although
delay
there
no
See
28
Co.,
11
a
delayed
Northern
slower
there
time
is
months
in
to
bringing
favor
keeping
District
to
no
2010
2004,
Loopnet's
and
can
§
U.S.
Defendant
finds
is
be
time-limit
U.S.C.
infringement
2003,
the
first
minimal
is
has
justice
eight
considerations
as
and
Court
be
thus
of
of
trial;
it
the
the
3)
this
motion;
case
Illinois
and
guarantee
file
even
would be
in
has
if
a
the
assigned
familiar with the patents-at-issue.
Plaintiff due
will
waited
and
transferred,
The
interests
congestion
jurisdiction
heavier
the
Loopnet
1)
Transfer
docket
this
that
1404 (a) ;
Dist.
Loopnet's
suits
2005
on
in
factor
the
in
Zurich
Am.
128074,
of
a
ECF No.
17
to
Co.
*14-15
58,
transfer.
determination,
v.
to
Ace
transfer.
Am.
(W.D.N.C.
Civix
of
by
this motion
deny
motion
Ins.
District
suffered
filing
Court's
demonstrate
Northern
See
in
cause
the
filing
exhibits
and 2010.
prejudice
sufficient
LEXIS
the
any
purported delay
not
a
that
Exhibits
Dec.
filed
Illinois
1-5,
Ins.
3,
patent
in
1999,
10.
2010) .
While
it
is
true
discovery
is
underway,
the
case
is
still at the beginning stages of its lifecycle and the Court has
not
yet
conducted
dispositive
a
Markman
motions.12
hearing
and
Furthermore,
has
Loopnet
not
ruled
has
on
explained
any
that
its delay in filing was in part due to the recent revival of the
Hotels.com
12,
2012
filed Costar litigation on June 21,
2012.
that
litigation
Plaintiff's
between
the
on
June
argument
Eastern
as
to
the
District
of
as
well
Next,
relative
Virginia
as
the
newly
the Court notes
docket
and
congestion
the
Northern
District of Illinois is not strong enough to deny transfer.13
This court has previously explained that:
Docket conditions,
while a consideration,
cannot be
the primary
reason
for
retaining
a
case
in this
district.
This
Court
cannot
stand
as
a
willing
repository for cases which have no real nexus to this
district.
The
plaintiffs,
attraction
"rocket docket"
but
does
not
continue to act
Cognitronics,
83 F.
the
Court
dull
certainly
must
the
ensure
ability
of
attracts
that
the
this
Court
to
in an expeditious manner.
Supp.
2d at 699
(E.D.
Va.
2000).
Thus,
when
a plaintiff with no significant ties to the Eastern District of
Virginia
chooses
to
litigate
in
this
district
primarily because
12
The Markman hearing in this case is currently scheduled for
October 16, 2012 and a jury trial is set to begin on February 5,
2013.
13
The Court notes that Plaintiff's assertion that
District
of
Illinois
has
a heavier docket
than
the Northern
the Eastern
District of Virginia is questionable.
The statistics show that
the number of filings per judge in 2011 was 466 in the Northern
District of Illinois compared to 472 per judge in the Eastern
District of Virginia.
ECF No.
54,
18
Exhibits E
&
F.
it
is
not
known as
served."
Inc.,
387
F.
guarantee
Hotels.com
to
Original
the
Plaintiff
argument
this
is
case
Court
appreciate
that
that
court
of
a
"is
in a
likely
case
to
fact
However,
U.S.
Ship Mgmt,
St.
Court's
has
to
357 F.
(the
assignment
previously
similar
with
no
transfer
job instead
familiar
is
Eve
appear to be a
the case" and as a matter of judicial economy,
is highly desirable."
USA,
related
there
chooses
involving
be
that
Judge
Court
court
Met-Rx
Loopnet's
to
judge does not
This
v.
2005).
the
Illinois.
district
Ltd.
that
this
consider.14
where
Va.
assigned
if
interest of justice "is
Co.,
argues
Judge)
same patents-in-suit
facts,
(E.D.
be
specific
to
Patent
undermined by
District
needs
572
will
litigation
related case to a
the
Creatine
2d 564,
the Northern
this
docket," the
Supp.
Last,
litigation
the "rocket
of
a
factor
is
to
litigated
issues
the
facts
and
of
"such familiarity
Supp.
2d at 938.
14 Nevertheless, in the Northern District of Illinois, on motion
by any party to the case, a case may be reassigned to another
judge who has a related case if: "1) both cases are pending in
this Court; 2) the handling of both cases by the same judge is
likely to result in a substantial saving of judicial time and
effort; 3) the earlier case has not progressed to the point
where designating a later filed case as related would likely
delay the proceedings in the earlier case substantially; and 4)
the
cases
are
susceptible
of
disposition
in
a
single
proceeding." N.D. IL Civil Local Rule 40.4(b)
(emphasis added)
(listing conditions of reassignment).
Therefore, based on the
above factors of local Rule 40.4, it appears to this Court that
there is a possibility that if this case is transferred to the
Northern District of Illinois it will be assigned to Judge St.
Eve.
19
"Litigation
where
one
energy'
court
in
judicial
in the
a
same
has
already
case."
Id.
economy and the
the Northern
committed
court
District
judicial
avoids
invested
Therefore,
interests
of
Illinois
resources
to
of
as
that
favor
district
contested
time
it
appears
transfer to
has
issue
Samsung,
and
386 F.
"already
and
is
Supp.
2d
722.
In
sum,
related
the
pending
warrants
connection
cases
transfer
brought
its
Plaintiff's
witnesses"
to
balance,
justice
the
litigation
'substantial
on
familiar with the facts of the case."
at
duplicative
this
to
claim
choice
is
in
of
is
this
Northern
a
little
single
of
Plaintiff
Northern
weight
and
District
district.
the
case
District
forum and "convenience
accorded
forum
the
that
in
between
where
employee
and
to
its
the
two
Illinois
could
of
have
Illinois.
the parties
sole
where
and
connection
it
has
been
litigating the same patents-at-issue in the Northern District of
Illinois
for
the
past
decade.
justice"
and
judicial
economy
case
on
to
the
after
that
the Northern
party
seeking
balancing
the
the
burden has
District
a
In
clearly
of
transfer
Section
contrast,
1404(a)
been met.
20
favor
Illinois.
is
a
the
heavy
"interest
transferring
of
this
Although the burden
one,
factors,
in
the
this
case,
Court
finds
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