The opinion of the court was delivered by: Castillo, District Judge.
MEMORANDUM OPINION AND ORDER
Anchor Wall Systems, Inc., a Minnesota corporation with its
principal place of business in Minnetonka, Minnesota, sues R & D
Concrete Products, Inc., an Iowa corporation with its principal
place of business in Rock Island, Illinois, for patent
infringement. Anchor moves for a preliminary and permanent
injunction enjoining R & D from further infringement of United
States Patent No. 5,827,015 ("the '015 patent") and for damages
under 35 U.S.C. § 284. R & D moves for change of venue, seeking
to transfer the case from the United States District Court for
the Northern District of Illinois, Eastern Division ("Northern
District") in Chicago, Illinois to the United States District
Court for the Central District of Illinois, Rock Island Division
("Central District") in Rock island, Illinois. After considering
all the relevant factors, the Court grants R & D's motion for a
change of venue.
Although they play different roles, both Anchor and R & D are
participants in the concrete block industry. Anchor licenses
concrete block retaining wall products to block manufacturing
companies. Anchor owns all interests in and rights to the '015
patent, entitled "Composite Masonry Block", which is directed to
for concrete block used to construct retaining walls.
R & D is a small company with gross sales of approximately
$3,000,000 a year and 12-20 employees. R & D manufactures and
sells concrete-block landscaping products. R & D's distributors
are located exclusively in the Midwest, including Illinois,
Wisconsin, and Indiana.
On February 17, 1999 Anchor sued R & D alleging infringement of
Anchor's '015 patent. Specifically, Anchor alleges that three of
the composite masonry blocks that R & D manufactured, used,
offered to sell, and/or sold infringe the '015 patent. Anchor
further charges that R & D's infringement is willful and
R & D denies most of the material allegations, claiming that
none of its products fall within the scope of the claims of the
'015 patent. R & D also filed a counterclaim, contending that the
'015 patent is invalid, void, and unenforceable. In its
counterclaim, R & D seeks a declaratory judgment of
non-infringement, invalidity, and unenforceability.
Currently before the Court is R & D's motion seeking a change
of venue to the Central District of Illinois pursuant to
28 U.S.C. § 1404(a). Both parties concede that venue is technically
proper in this district under 28 U.S.C. § 1400(b) and
28 U.S.C. § 1391. The parties also acknowledge that personal jurisdiction and
venue are proper in the transferee district because R & D's
principal place of business is located in Rock Island, Illinois.
As the moving party, R & D bears the burden of showing that the
forum should be changed. Coffey v. Van Dorn Iron Works,
796 F.2d 217, 219-220 (7th Cir. 1986). District courts have broad
discretion in denying or granting a motion to transfer under
Section 1404(a). Id. at 219.
Section 1404(a) states that "for the convenience of the 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." 28 U.S.C. § 1404(a). Thus, transfer
of venue is proper when the moving party demonstrates that (1)
venue is proper in the transferor district, (2) venue and
jurisdiction are proper in the transferee district, and (3) the
transfer will serve the convenience of the parties, the
convenience of the witnesses and the interest of justice. Avery
Dennison Corp. v. FLEXcon Co., 42 U.S.P.Q.2d 1087, 1088, 1997 WL
106252 (N.D.Ill. 1997).
The first two elements, determining proper venue in patent
infringement cases, are controlled by 28 U.S.C. § 1400(b). This
section states that "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."
28 U.S.C. § 1400(b). The parties do not dispute that venue is proper in the
Northern District, because R & D delivered three shipments of the
allegedly infringing masonry blocks to distributors residing in
this district. Similarly, venue is proper in the Central District
because R & D resides there. The parties' dispute centers
principally around the third factor.
The third element, the convenience and fairness of transfer
under § 1404(a), is determined on a case by case basis by looking
at the private interests of the parties and the public interest
of the court. Coffey, 796 F.2d at 219. Private interests
include: (1) plaintiff's choice of forum, (2) the situs of
material events, (3) the relative ease of access to sources of
proof in each forum including the court's power to compel the
appearance of unwilling witnesses at trial and the costs of
obtaining the attendance of witnesses, (4) convenience to the
parties — specifically, their respective residences and abilities
to bear the expense of trial in a particular forum. Von Holdt v.
Husky Injection Molding Systems, Ltd., ...