choice of forum, (2) the situs of the material events, (3) the relative
ease of access to sources of proof; and (4) convenience to the parties.
Public interests include the court's familiarity with applicable law and
the desirability of resolving the controversy in its locale. Anchor Wall
Sys., Inc. v. R & D Concrete Prod., Inc., 55 F. Supp.2d 871, 873
(N.D.Ill. 1999) (Anchor).
Generally a court accords substantial weight to the plaintiffs choice
of forum. However, such weight is lessened if the forum lacks any
significant connection to the claim. Anchor, 55 F. Supp.2d at 874; Dunn
v. Soo Line R. Co., 864 F. Supp. 64, 65 (N.D.Ill. 1994) ("where the
conduct and events giving rise to the cause of action did not take place
in the plaintiffs selected forum, the plaintiffs preference has minimal
value"). In the present case, none of the operative facts surrounding the
alleged infringement occurred in Illinois. Williams has no businesses
within Illinois and has never conducted remediation services within
Illinois. Accordingly, little weight is afforded to plaintiff's choice of
forum in this state.
Illinois is also not the situs of the material events in this case. The
alleged acts of trademark infringement did not occur in Illinois because
Williams never conducted remediation services within Illinois. Because
there is little to no connection between this district and the
litigation, the situs of material events favors transfer to Georgia.
The third factor for consideration is the relative ease of access to
sources of proof in each forum. In patent infringement cases,
"practicality and convenience are best served when [it] is prosecuted
where the alleged acts of infringement occurred and the defendant has a
regular and established place of business so as to facilitate the
production and investigation of books, records and other data necessary to
the discovery and trial techniques employed in the patent field." Ardco,
Inc. v. Page, Ricker, Felson Mktg., Inc., 1992 WL246862 (N.D.Ill.
Sept.23, 1992), quoting Spound v. Action Ind., Inc., 369 F. Supp. 1066,
1069 (N.D.Ill. 1974). Here, the alleged acts of infringement occurred not
in Illinois but in Georgia. The books, records, and other documents
necessary to prove plaintiffs case are in Georgia. Plaintiff argues that
its documents and witnesses are in this district so this factor does not
weigh in Williams' favor. However, a trademark infringement action is
primarily concerned with the alleged offensive actions of the defendant
not the plaintiff. TY Inc. v. Beanie World, Inc., 1999 WL 782092
(N.D.Ill. Sept. 27, 1999).
Plaintiff also argues that the holding in Ardco has been distinguished
where the defendant has filed an affirmative defense alleging plaintiffs
patent was invalid. In such cases, the plaintiff must also present
evidence to prove its patent is valid requiring the plaintiff to produce
documents similar to those of the defendant. See Energaire Corp. v. E.S.
Originals, Inc., 1999 WL 1018039 (N.D.Ill. Nov. 2, 1999). In the instant
case, Williams has not plead the affirmative defense that plaintiffs
patent is invalid. Therefore, Energaire is not applicable. The Ardco
court's reasoning is persuasive and will be applied to the present
trademark infringement action. Accordingly, this factor weighs in favor
The convenience of the parties, by looking at their respective
residences and their abilities to bear the expense of trial in a
particular forum, is equally weighed in this case. Regardless of the
forum, Illinois or Georgia, one of the parties will be required to travel
to the other state.
The final factor is whether a change in venue would serve the interests
of justice. Both districts are equally familiar with the
federal patent law applicable to this case. However, consideration of the
interest of justice weighs in plaintiffs favor. Consideration of the
interests of justice includes judicial economy. Regents of the University
of California v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed. Cir. 1997)
(Eli Lilly). The interests of justice may be determinative to a
particular transfer motion even if the convenience of the witnesses and
parties might call for a differed result. See Eli Lilly, 119 F.3d at 1565
(district court did not abuse its discretion in denying transfer of case
after finding judicial economy would be served by retaining the case);
Coffey v. Van Dorn Iron Works, 796 F.2d 217, 220-21 (7th Cir. 1986). If
Williams is transferred to the District Court in Georgia, both this Court
and the Georgia court will have a case pending because several other
defendants in the present action remain. Such transfer would result in
two different suits in two different courts that allege infringement of
the same patent. A transfer of this one defendant would lead to a
duplication of the case and would likely lead to delay.
While the convenience to the parties weighs in favor of transferring
the cause against Williams to Georgia, the interests of justice weigh
more heavily in favor of retaining jurisdiction. Accordingly, Williams'
Motion to Transfer Venue is denied.
II. DEFENDANT TARMAC ENVIRONMENTAL COMPANY
Defendant, Tarmac Environmental Company (Tarmac), seeks dismissal for
lack of personal jurisdiction and/or lack of proper venue. Plaintiff
avers personal jurisdiction based on Tarmac selling an oxidizer, quench
tube, and acid gas scrubber to an Illinois company and the alleged
leasing of Tarmac equipment to the same Illinois company.
Tarmac is a Missouri corporation with no employees or offices within
Illinois. Tarmac has never performed any remediation services within
Illinois and avers that it has never sold or leased any equipment in
Illinois that utilizes the thermal desorption process that is subject to
A. Amenability to Service
The Illinois long-arm statute provides that a defendant is subject to
the jurisdiction of its courts if the defendant conducted the transaction
of any business within this state. 735 ILCS 5/2-209(a)(1). Where
jurisdiction is predicated upon subsection (a), only causes of action
arising from the enumerated acts may be asserted against a nonresident
defendant. 735 ILCS 5/2-209(f). Here, plaintiff alleges infringement of
patents related to soil remediation. Tarmac admits that it sold three
pieces of equipment to an Illinois company in 1998. Tarmac, through an
affidavit, avers that the three pieces of equipment that were sold are
nonpatented pollution-control pieces of equipment that are used to clean
the air steam from any process which produces hydrocarbons and acids.
Plaintiff has provided an affidavit that avers that the said pieces of
equipment are key and necessary components for practicing the process of
thermal desorption according to plaintiffs patent. Plaintiff's averment
does not contradict Tarmac's claim that the pieces of equipment are
nonpatented and are used in many different processes other than soil
remediation, it merely states that the same equipment is used in the RSL
Plaintiff also argues that Tarmac leased equipment to an Illinois
company. In support of its argument, plaintiff cites to a construction
permit and deposition testimony of an individual from the Illinois
company. However, the permit merely
states that a piece of "Tarmac" equipment was used and does not state for
what purpose. In addition, the deponent never identified that Tarmac
leased, sold, or manufactured the "Tarmac machine" that was used for the
project. The deponent stated that the piece of equipment was "subbed" from
another source but never identified the source.
Based on the above, plaintiff has failed to show that its claim of
patent infringement arose out of Tarmac's Limited contact with Illinois
under 735 ILCS 5/2-209(a)(1).
Furthermore, Tarmac has not "done business" in Illinois. See 735 ILCS
5/2. Tarmac's one-time sale of general pieces of equipment does not
constitute operating within Illinois with a fair measure of permanence
and continuity. See Rokeby-Johnson, 594 N.E.2d at 1194.
B. Due Process
I. Minimum Contacts
Assuming, argumendo, that Tarmac was amendable to service, Tarmac would
still not be subject to personal jurisdiction because it did not maintain
minimum contacts with Illinois.
Tarmac is not subject to specific jurisdiction because its one-time
sale of general equipment does not constitute purposeful activities
directed at residents of Illinois, and plaintiff's claim does not arise
out of or is not related to such activity. See Hollyanne, 199 F.3d at
Furthermore, Tarmac has not maintained "continuous and systematic"
contacts with Illinois. General jurisdiction arises when a defendant
maintains "continuous and systematic" contacts with the forum state even
when the cause of action has no relation to those contacts. Helicopteros
Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984).
However, "contacts only add to the quantum for personal jurisdiction when
purposefully directed at the forum or its residents." Red Wing Shoe Co.
v. Hockerson-Halberstadt, Inc. 148 F.3d 1355, 1359 (Fed. Cir. 1998).
Contacts that are random, fortuitous, or attenuated do not count in the
minimum contacts calculation. Burger King Corp., 471 U.S. at 476.
Here, the only contacts Tarmac has with Illinois is a one-time sale of
general equipment that is unrelated to the cause of action and the
possible use of a piece of their equipment for a project within Illinois
which has no evidence of ties with Tarmac. Tarmac does no advertising in
Illinois, has no offices, employees, agents or representatives in
Illinois. It has no assets, bank accounts, real or personal property, or
inventory in Illinois. In addition, it does not maintain a mailing
address or telephone listing in Illinois. Tarmac does not have continuous
and systematic contacts with Illinois. See Adell Corp. v. Elco Textron,
Inc., 51 F. Supp.2d 752, 756 (N.D.Texas 1999) (sales of parts not
involved in the infringement action that constitute a minimal amount of
total sales was not continuous and systematic contact); Stairmaster
Sports/Medical Prod., Inc. v. Pacfic Fitness Corp., 916 F. Supp. 1049,
1053 (W.D. Wash 1996) (sales of product not involved in infringement
action that constituted minimal amount of defendant's total sales was not
continuous and systematic contact). Tarmac is not subject to personal
jurisdiction in this district.
Furthermore, venue in a patent case "includes any district where there
would be personal jurisdiction over the corporate defendant at the time
the action commenced." VE Holding Corp. v. Johnson Gas Appliance Co.,
917 F.2d 1574, 1583 (Fed. Cir. 1990). Because Tarmac is not subject to
personal jurisdiction in this district, venue is not proper.
Accordingly, Tarmac's Motion To Dismiss is granted.
For the reasons stated above, Williams' Motion to Dismiss and Motion to
Transfer venue are denied. Tarmac's Motion to Dismiss is granted.