Cree, Inc. v. Honeywell International Inc.

Filing 67

ORDER denying 25 Motion to Transfer to the District of Minnesota by Defendant Honeywell International Inc. Signed by District Judge William M. Conley on 3/25/2015. (arw)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
_________________________________________________________________________________
CREE, INC.,
Plaintiff,

OPINION AND ORDER

v.

14-cv-737-wmc

HONEYWELL INTERNATIONAL, INC.,
Defendant.
_________________________________________________________________________________
In this patent lawsuit, plaintiff Cree, Inc., asserts that defendant Honeywell
International, Inc. (“Honeywell”) infringed four patents through its use of light emitting
diodes (“LEDs”) in various products. Honeywell has moved to transfer this action to the
District of Minnesota primarily because the witnesses most likely to testify on its behalf,
all of whom are Honeywell employees, are located in Minnesota.

(Def.’s Mot. (dkt.

#25); Def.’s Br. (dkt. #26) 4-5.) This alone does not make the District of Minnesota
“clearly more convenient” for the parties and witnesses as a whole, nor does it suggest the
“interests of justice” warrant transfer. Accordingly, the court will defer to Cree’s original
choice of forum and deny Honeywell’s motion.
BACKGROUND
Cree and Honeywell are familiar adversaries in patent litigation, with actions
pending on various technologies in the United States Districts for the Eastern District of
Texas and for the District of New Jersey. (Pl.’s Opp’n, Exs. J-K (dkt. #30-10, -11).) The
action before this court concerns the use of “phosphorous-based LEDs” and “backlit with

white Liquid Crystal Displays (LCDs)” in various products designed and manufactured
by Honeywell. (Def.’s Br. (dkt. # 26) 2.) Plaintiff specifies four thermostats as examples
in its complaint, but its claims of infringement are not limited to those examples. (Id.)
Cree is incorporated under North Carolina law and maintains its principal place of
business in Durham, North Carolina. (Compl. (dkt. # 1) ¶ 1.) Cree owns United States
Patent No. 8,659,034 (“the ‘034 patent”), United States Patent No. 8,860,058 (“the
‘058 patent”), United States Patent No. 7,910,938 (“the ‘938 patent”), and United
States Patent No. 8,766,298 (“the ‘298 patent”), all of which are directed toward LED
technology and will be referred to collectively as “the patents-in-suit.” (Pl.’s Opp’n (dkt.
#30) 2.) Cree asserts that Honeywell has infringed these four patents by incorporating
the claimed technology in its products, specifically noting the use of LEDs in Honeywell’s
thermostat products. (Compl. (dkt. # 1) ¶¶ 18, 23, 28, and 33.) Cree represents that it
selected this district as the venue for its action against Honeywell in part based on its
connection to Wisconsin, where it maintains its largest LED manufacturing facility (Pl.’s
Opp’n (dkt. #30) 1, 7), although other tactical reasons, including speed to trial, likely
play a role as well. Cree also has three other actions pending in this district asserting
claims for infringement of some of the same patents at issue in this action against
Honeywell. (Pl.’s Opp’n (dkt. #30) 1.)
Honeywell is incorporated under Delaware law and maintains its principal place of
business in Morristown, New Jersey. (Compl. (dkt. #1) ¶ 1.) Honeywell operates five
major facilities in Minnesota.

(Def.’s Br. (dkt. #26) 2; Declaration of John Stokely

(“Stokely Decl.”) (dkt. #27) ¶ 2.) Honeywell’s Environmental and Combustion Controls

business unit designed the allegedly infringing thermostats in Golden Valley, Minnesota,
where that unit is headquartered. (Def.’s Br. (dkt. #26) 2; Stokely Decl. (dkt. #27) ¶ 45.) Honeywell also conducts significant research and development activities relating to
LEDs in Minnesota. (Def.’s Br. (dkt. #26) 3; Stokely Decl. (dkt. #27) ¶ 5.) Honeywell
has no major facilities in this district and has conducted no significant research, design,
or development of products here. (Stokely Decl. (dkt. #27) ¶ 7.)
OPINION
A motion to transfer venue is governed by 28 U.S.C. § 1404(a). Under § 1404(a),
a transfer is permissible “when (1) venue is proper in the transferor district and (2) the
transferee district is one in which the action may have been brought.” Illumina, Inc. v.
Affymetrix, Inc., No. 09-CV-277-BBC, 2009 WL 3062786, at *5 (W.D. Wis. Sept. 21,
2009). The court must consider, under the specific circumstances of the case, whether
transfer would: (a) further the convenience of the parties and witnesses; and (b) promote
the interests of justice.
1986).

Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th Cir.

The court’s weighing of the factors under § 1404(a) “permits a ‘flexible and

individualized analysis’ and affords district courts the opportunity to look beyond a
narrow or rigid set of considerations in their determinations.” Research Automation, Inc. v.
Schrader–Bridgeport Int’l, Inc., 626 F.3d 973, 978 (7th Cir. 2010) (quoting Stewart Org.,
Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988)). The moving party must establish “that the
transferee forum is clearly more convenient.”
(quoting Coffey, 796 F.2d at 219-20).

Illumina, 2009 WL 3062786, at *1

The defendant disputes neither that venue in this district is proper, nor that the
action could have been brought in the District of Minnesota. (See Def.’s Br. (dkt. #26)
4.) Rather, the parties’ dispute centers on whether transferring the litigation would be
more convenient for the parties and witnesses and promote the interests of justice.
Because the defendant’s transfer motion rests largely on considerations that this court
finds do not weigh heavily in favor of transfer, the defendant has failed to establish that
the transferee district is a “clearly more convenient” venue for this litigation.

See

Illumina, 2009 WL 3062786, at *1 (quoting Coffey, 796 F.2d at 219-20).
I.

Convenience
A. Plaintiff’s Choice of Forum
The court begins its consideration of defendant’s motion to transfer with the

plaintiff’s choice of forum, as courts typically defer to this choice. See In re Nat’l Presto
Indus., Inc., 347 F.3d 662, 663-64 (7th Cir. 2003) (“[U]nless the balance is strongly in
favor of the defendant, the plaintiff’s choice of forum should rarely be disturbed.”)
(quoting Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947) (internal quotation marks
omitted)). Courts generally give this factor less weight where the plaintiff selects a forum
that is neither its home nor the situs of material events. See Piper Aircraft Co. v. Reyno,
454 U.S. 235, 255-56 (1981). Even if the plaintiff is foreign to the venue, however, the
court will not disturb its choice unless considerations of convenience or justice strongly
favor the defendant. In re Nat’l Presto Indus., 347 F.3d at 663-64.
Here, Cree’s principal place of business is not located in the state of Wisconsin,
and it is not incorporated under Wisconsin law. (Compl. (dkt. #1) ¶ 1.) Although

Cree’s Racine facility is engaged in substantial activity within the state of Wisconsin, it
does not make Cree a Wisconsin resident.1 See Kimberly-Clark Worldwide, Inc. v. First
Quality Baby Prods., LLC, No. 14-CV-502-WMC, 2014 WL 6612881, at *3 (W.D. Wis.
Nov. 20, 2014) (“While it is true that Neenah is not technically within the boundary of
the Western District, [plaintiff] resides in Wisconsin and in close proximity to this
District.”) (emphasis added). Still, while not heavily weighting Cree’s choice of forum,
neither will this court upset that choice, unless Honeywell can show that the convenience
of the parties and witnesses or the interests of justice favor transfer. See In re Nat’l Presto
Indus., 347 F.3d at 663.
B. Convenience of the Parties and Witnesses
In many cases, the court considers convenience to the parties and witnesses as it
relates to access to sources of proof, namely documents and witnesses. Kimberly-Clark,
2014 WL 6612881, at *3 (citing Harley Davidson, Inc. v. Columbia Tristar Home Video, Inc.,
851 F. Supp. 1265, 1270 (E.D. Wis. 1994)). Where the documents and witnesses are
under the control of the parties, such as employees who may serve as witnesses, this is
not a heavily weighted factor. See Illumina, 2009 WL 3062786, at *3 (citing Milwaukee
Elec. Tool Corp. v. Black & Decker (N.A.) Inc., 392 F. Supp. 2d 1062, 1064 (W.D. Wis.
2005)).

On the contrary, technology has rendered the location of such evidence

minimally important in the transfer analysis. Fabio v. Diversified Consultants, Inc., No. 13CV-524-WMC, 2014 WL 713104, at *6 (W.D. Wis. Feb. 25, 2014) (citing Bd. of Trs.,
Indeed, the Racine facility is located in the far southeast corner of the Eastern District of
Wisconsin, substantially closer to that court’s location in Milwaukee, than this court in Madison,
Wisconsin.
1

Sheet Metal Workers Nat’l Pension Fund v. Elite Erectors, Inc., 212 F.3d 1031, 1037 (7th Cir.
2000); Milwaukee Elec. Tool Corp., 392 F. Supp. 2d at 1064).
Honeywell cites several decisions from this district in support of its argument that
the location of its employees and facilities is an appropriate consideration in determining
whether transfer is warranted. (See Def.’s Reply (dkt. #43) 6; Declaration of Ryan J.
Casamiquela (“Casamiquela Decl.”), Exs. A-B (dkt. #44-1, -2).)

This may be, but

Honeywell fails to establish that the specific circumstances here make this single
consideration determinative.
For example, unlike the plaintiff in Hunts Point Ventures, Incorporated v. Research in
Motion, Limited, 12-CV-307-WMC, Dkt. No. 43, Cree offers some, albeit limited, factual
support for its assertion that this district is more convenient than the District of
Minnesota, based both on its presence and regular operations in Wisconsin. See id. at 6
(concluding that the plaintiff “provide[d] no factual support for [its] assertion that the
Western District of Wisconsin is materially more convenient to Hunts Point”); (Pl.’s
Opp’n (dkt. #30) 7-8.) Cree’s Racine facility houses witnesses who may testify about the
patents-in-suit. See Hunts Point, No. 12-CV-307-WMC, Dkt. No. 43, at 2 (“Hunts Point
has no employees in Wisconsin, nor does it maintain any relevant books or records in
Wisconsin.”); (Pl.’s Opp’n (dkt. #30) 7-8.) Unlike Hunts Point, this is not a case where
the plaintiff has no connection to the forum state. Moreover, plaintiff offers no other
compromise location, which would be more convenient for both sides.
The convenience of witnesses also does not strongly favor transfer. Honeywell
relies on the fact that its employees conducting research and development activities

relating to LEDs are based in Minnesota. (Def.’s Br. (dkt. #26) 3; Declaration of John
Stokely (dkt. #45) ¶ 2.) The location of Honeywell’s employees does not weigh heavily
in favor of transfer, as this court presumes that Honeywell’s employee witnesses will
appear voluntarily.

See Illumina, 2009 WL 3062786, at *3 (“[T]he location of

defendant's employee witnesses is not a heavily weighted factor because of the
assumption that witnesses within the control of the party calling them, such as
employees, will appear voluntarily, that is, at least without subpoena.”) (internal
quotations omitted).2 Moreover, Honeywell has failed to address why video deposition
or live, remote testimony, which is common in patent suits, would be less effective than
in-person testimony in this case. See Adams v. Newell Rubbermaid Inc., No. 07-C-313-S,
2007 WL 5613420, at *3 (W.D. Wis. Aug. 21, 2007) (citing Milwaukee Elec. Tool Corp.,
392 F. Supp. 2d at 1064).

Based on the likely witnesses in this case, therefore,

Honeywell has failed to show that consideration for their convenience strongly favors
transfer.

Ultimately, Honeywell’s argument fails because it does not show that the

transferee district is clearly more convenient for the parties or that Cree has no
convenience-related basis for bringing the action in this district. See Hangartner v. Intel
Corp., No. 13-CV-663-BBC, 2014 WL 266802, at *1 (W.D. Wis. Jan. 24, 2014) (finding
that plaintiff did “not identify any contacts that he has with Wisconsin” and that “both
parties have a significant presence in [the transferee district]”).

The existence of likely non-party witnesses remains an important consideration in the transfer
analysis. See Milwaukee Elec. Tool Corp., 392 F. Supp. 2d at 1064 (“Live testimony cannot be
compelled when third-party witnesses are distant from the forum court,” and, “[a]ccordingly, the
existence of such witnesses is frequently an important consideration in a transfer motion
analysis.”). However, Honeywell fails to specify any non-party witnesses who are likely to testify.
2

Nor can Honeywell point to other factors that strongly favor transfer, which might
make Honeywell’s minimal showing of convenience solely to itself a tipping point in
favor of transfer. See DeLaval Int’l AB v. Alpha Tech. USA Corp., No. 13-CV-673-BBC,
2014 WL 37309, at *1-2 (W.D. Wis. Jan. 3, 2014) (granting motion to transfer in part
based on presence of third-party witnesses who worked in the transferee district and in
part based on convenience of the parties); Ho Keung Tse v. Apple, Inc., No. 12-CV-21BBC, Dkt. No. 29, at *12 (W.D. Wis. May 18, 2012) (granting motion to transfer in
part based on ability to consolidate the action with an action in the transferee district
and in part based on convenience of the parties) (Casamiquela Decl., Ex. B (dkt. #44-2).)
Since Honeywell has failed to establish that the transferee district is “clearly more
convenient” for the parties than this district, Illumina, 2009 WL 3062786, at *1 (quoting
Coffey, 796 F.2d at 219-20), this court will not “shift[] inconvenience from one party to
another” by transferring the case to a forum that defendant finds more convenient.
Research Automation, Inc., 626 F.3d at 979.
II.

Interests of Justice
By considering the interests of justice, this court ensures “the efficient

administration of the court system.” Coffey, 796 F.2d at 221. Considerations for the
interests of justice “may be determinative in a particular case, even if the convenience of
the parties and witnesses might call for a different result.” Id at 220. To determine
whether a transfer is in the interests of justice, the court considers four factors: “(1) the
district in which the litigants would receive a speedier trial; (2) whether there is related
litigation in the transferee district that may allow consolidation; (3) the courts’ relative

familiarity with the applicable law; and (4) the relation of each community to the
controversy at issue.” Grand River Enters. Six Nations Ltd. v. VMR Prods. LLC, No. 13-CV104-WMC, 2013 WL 6185205, at *8 (W.D. Wis. Nov. 26, 2013) (citing Coffey, 796
F.2d at 221; Illumina, 2009 WL 3062786 at *5; Research Automation, Inc., 626 F.3d at
978).
In discussing the interests of justice, the parties focus on the relative speed to trial
in the transferor and transferee districts and the significance of Cree’s other, ongoing
litigation in this district. “Although this court does not encourage litigants to choose this
forum because of its speed and although this court makes no promises regarding quick
resolution, the fact remains that this is a relatively speedy federal court, particularly with
regard to patent lawsuits.” Sunbeam Prods., Inc. v. Homedics, Inc., 587 F. Supp. 2d 1055,
1058 (W.D. Wis. 2008).

Here, Honeywell’s statistics suggest that the action would

proceed to trial 3.1 months faster in this district than in the District of Minnesota.
(Def.’s Br. (dkt. #26) 5-6.) Thus, even according to Honeywell, the speed to trial factor
is at best a neutral one in the current transfer analysis. (Def.’s Reply (dkt. #43) 9.) It
certainly does not weigh in favor of transfer.
Not surprisingly, the parties dispute the significance of Cree’s ongoing litigation in
this district against other defendants, which involves assertions of infringement of three
of the patents-in-suit here. (See Pl.’s Opp’n (dkt. #30) 5; Def.’s Reply (dkt. #43) 3.)
Even if Cree’s litigation relating to similar technology does not weigh against transfer,
this, too, is no more than a neutral factor for Honeywell. Coupled with neutral interests
of justice factors, Honeywell’s minimal showing of greater convenience to itself and its

witnesses fails to establish that the District of Minnesota is a “clearly more convenient”
forum for this action. See Illumina, 2009 WL 3062786, at *1 (quoting Coffey, 796 F.2d at
219-20).

ORDER
IT IS ORDERED that defendant Honeywell International, Inc.’s motion to
transfer venue to the U.S. District Court for the District of Minnesota (dkt. # 25) is
DENIED.

Entered this 25th day of March, 2015.
BY THE COURT:
/s/
________________________________________
William M. Conley
District Judge