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VON HOLDT v. HUSKY INJECTION MOLDING SYS.

June 1, 1995

JOHN W. VON HOLDT, SR., and PLAS-TOOL CO., Plaintiffs,
v.
HUSKY INJECTION MOLDING SYSTEMS, LTD., and HUSKY INJECTION MOLDING SYSTEMS, BOSTON, INC., Defendants.



The opinion of the court was delivered by: RUBEN CASTILLO

 Plaintiffs, John W. Von Holdt, an individual residing in Niles, Illinois ("Von Holdt"), and Plas-Tool Co., an Illinois Corporation with its principal place of business in Niles, Illinois, ("Plas-Tool") sues the Defendants Husky Injection Molding System, Ltd. ("Husky Canada") and Husky Injection Molding Systems Boston, Inc. ("Husky Boston") for patent infringement. Plaintiffs move for a preliminary and permanent injunction enjoining defendants from further infringing or inducing the infringement of the '834 patent. Defendants move for change of venue, to transfer the case to the District of Massachusetts. After considering all the relevant factors, the Court hereby grants the motion for a change of venue.

 RELEVANT FACTS

 On or about March 30, 1995, plaintiffs filed an amended complaint. Plaintiff, Von Holdt, a resident of Illinois, alleges that he is the owner of all interests in and rights to U.S. Patent No. 4,648,834 ("the '834 patent") entitled "Mold for Manufacturing Flanged Objects without Side Action" which was duly and legally issued by the U.S. Patent's Office on March 10, 1987. (Comp. PP7-8) These molds are principally used to produce plastic buckets. Plaintiff, Plas-Tool, an Illinois corporation with its principal place of business in Illinois, is the sole U.S. manufacturing licensee of the '834 patent. (Comp. P8) Plaintiffs' amended complaint specifically references that the infringing molds manufactured by Husky Boston were involved in a prior case, Von Holdt v. Wentworth Mound & Die Co., Ltd and Philips Industries Limited Partnership et al., 1992 U.S. Dist. LEXIS 19486, No. 89-CV-1209 (N.D. Ohio 1989), where the '834 patent was found valid and $ 7.14 million dollars was awarded to the plaintiffs as a result of the patent infringement.

 The two defendants include Husky Illinois and Husky Canada. Husky Canada is a Canadian Corporation whose principal place of business is located at 530 Queen Street South, Bolton, Ontario Canada, L7E 5S5. Husky Boston is a Massachusetts corporation whose principal place of business is located at 303-313 Washington Street, Auburn, Massachusetts 01501-3293. Defendants operate an Illinois subsidiary and sales office ("Husky Illinois") in Oak Forest, Illinois. *fn1" The defendants have admitted that venue is proper in this district. (Ans. P6)

 The amended complaint alleges that Husky Boston has directly infringed the '834 patent by having made, used and sold molds for manufacturing flanged objects, such as buckets. (Comp. P12) It further alleges that Husky Canada, under principles of the agency Jaw, has directly infringed plaintiffs' patent by supervising, directing and controlling the manufacture of the infringing molds. (Comp. P13) Furthermore, plaintiffs assert that both defendants sold the infringing molds to Philips Container Corporation, an Ohio corporation. (Comp. P12-13) The amended complaint further states that the acts of direct infringement were committed with full knowledge of the '834 patent and with total disregard of the plaintiffs' rights in the '834 patent, thus constituting a willful and wanton infringement. (Comp. P14) In addition to the direct infringement claim, the complaint alleges that the defendants actively induced the infringement by others because the defendants sold these molds to Philips Container Corporation, whose use of such molds constituted direct infringement of the '834 patent. (Comp. P16) The complaint also stated that these induced acts of infringement were willful and wanton. (Comp. P18)

 Plaintiffs allege that venue is proper in this district under 28 U.S.C. § 1400(b) and 28 U.S.C. § 1391 because defendants have transacted business within this judicial district by operating a sales office at 14930 South Cicero Ave., Oak Forest, Illinois, 60462.

 Defendants respond by denying most of the material allegations. Additionally, defendants assert the following affirmative defenses: the '834 patent is invalid; they have been released from liability due to the agreement made between Philips Container Company and plaintiffs; the defenses of laches, estoppel and accord and satisfaction; discharge in bankruptcy; waiver; and comparative fault.

 On March 16, 1995, the defendants filed the present motion requesting a change of venue from this district to the U.S. District Court for the District of Massachusetts. Both parties concede that venue is proper in this district. Further, Husky Boston is a Massachusetts corporation whose principal place of business is in Boston, Massachusetts. Thus, jurisdiction exists over defendant and venue is therefore proper in the United States District Court for the District of Massachusetts.

 ANALYSIS

 Defendants move for change of venue pursuant to 28 U.S.C. § 1404(a). The decision to transfer a case on venue grounds is largely a discretionary determination. Promatek Med. Sys. v. Ergometrics, Inc., 1990 U.S. Dist. LEXIS 2068 1990 WL 19491, *3 (N.D.Ill. 1994); Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th Cir. 1986). The Court exercises its discretion within the guidelines of sections 1400(b) and 1404(a) of Title 28 of the United States Code.

 Defendants request that the action be transferred to the U.S. District Court for the District of Massachusetts. Venue in patent infringement actions is controlled by 28 U.S.C. § 1400(b). This section states: "any civil action for patent infringement may be brought 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." The parties do not dispute that venue is proper in this district. Venue is also proper in the District of Massachusetts because the defendant resides there.

 We now consider whether the suit can be transferred to another venue. Pursuant to 28 U.S.C. § 1404(a), "for 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." Thus, transfer of venue is proper if the moving party demonstrates that: (1) venue is proper in the transferor district; (2) the transferee district is one where the action might have been brought (both venue and jurisdiction are proper); and (3) the transfer will serve the convenience of parties and witnesses and will serve the interest of justice. Medi USA v. Jobst Institute, Inc., 791 F. Supp. 208, 210 (N.D. Ill. 1992); Heller Financial, Inc. v. Riverdale Auto Parts, Inc., 713 F. Supp. 1125, 1127 (N.D. Ill. 1989); General Accident Ins. Co. v. Travelers Corp., 666 F. Supp. 1203, 1206 (N.D. Ill. 1987).

 The parties do not dispute that venue is proper in the District of Massachusetts because Husky Injection Molding System, Inc. resides within that judicial district. The plaintiffs also do not dispute that the venue in the District of Massachusetts is ...


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