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March 24, 2003


The opinion of the court was delivered by: Ronald A. Guzman, United States District Judge


Pending is Defendant Freehand Systems, Inc. motion to transfer this lawsuit pursuant to 28 U.S.C. § 1404 (a). For the reasons set forth below, this motion is denied.


Plaintiff David Sitrick is an Illinois resident and holds patents for two inventions relating to transposing, communicating and displaying musical compositions under U.S. Patent No. 5,728,960 (hereinafter "the '960 patent") and U.S. Patent No. 6,084,168 (hereinafter "the '168 patent") (Compl. P 1). Defendant FreeHand Systems, Inc. ("Freehand") is a corporation organized and existing under the laws of the state of Nevada, with its principal place of business in Los Altos, California. (Ans. P 2).

On March 4, 2002, Sitrick filed the instant patent infringement suit in this Court, alleging that FreeHand had infringed its '960 and '168 patents (Compl. P 1). On June 6, 2002 Freehand filed a motion to dismiss the suit for lack of personal jurisdiction pursuant to FED. R. Civ. P. 12(b)(6). That motion was denied on Oct. 29, 2002. Fourteen days later, FreeHand filed this motion to transfer venue under 28 U.S.C. § 1404 (a) to the Northern District of California. For the reasons set forth below Freehand's motion to transfer venuc is denied.


A motion to transfer is governed by 28 U.S.C. § 1404 (a). Under 1404(a), a federal district court may "for the convenience of the parties and witnesses and in the interest of justice . . . transfer any civil action to any other district or division where it might have been brought." 28 U.S.C. § 1404 (a); Coffty v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th Cir. 1986). A section 1404(a) transfer is appropriate only where "(1) venue was proper in the transferor district, (2) venue and jurisdiction would be proper in the transferee district, and (3) the transfer will serve the convenience of the parties and the witnesses as well as the interests of justice." United Air Lines, Inc. v. Mesa Airlines, Inc., 8 F. Supp.2d 796, 798 (N.D. Ill. 1998). Because determining whether transfer is appropriate "involves a large degree of subtlety and latitude," and is made on a case-by-case basis, it is therefore "committed to the sound discretion of the trial judge." Coffey, 796 F.2d at 219; Amoco Oil Co. v. Mobil Oil Corp., 90 F. Supp.2d 958. 959 (N.D. Ill. 2000).

To aid the trial judge in determining the final element of the 1404(a) analysis, the party seeking to transfer venue "has the burden of establishing, by reference to particular circumstances, that the transfer forum is clearly more convenient" than the transferor court. Coffey, 796 F.2d at 219-20. In making a transfer determination, the court must consider both the private interest of the parties and the public interests of the Court. Medi USA v. Jobst Inst., Inc., 791 F. Supp. 208, 210 (N.D. Ill. 1992). Factors for the court to consider in assessing private interests include: (1) plaintiff's choice of forum, (2) the sits of the material events, (3) the relative ease and access to sources of proof, (4) the convenience of the parties and (5) the convenience of the witnesses. Amoco Oil, 90 F. Supp.2d at 960. Public interest factors or interests of justice "relate to the court's familiarity with the applicable law, the speed at which the case will proceed to trial, and the desirability of resolving controversies in their locale." VonHoldt v. Husky Injecting Molding System Ltd, 887 F. Supp. 185, 188 (N.D.Ill. 1995). these interests of justice "may be determinative in a particular case, even if the parties and witnesses might call for a different result." Coffey, 796 F.2d at 220.

Venue in patent infringement actions is controlled by 28 U.S.C. § 1400 (b), which provides: "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. FreeHand, the defendant in this case, resides in the Northern District of California. Because venue is proper in both this district, and under 28 U.S.C. § 1400 (b), in the Northern District of California, the only issues that remain to be decided pertain to the convenience of the parties and witnesses, as well as the interests of justice.

A. Private Factors

i. Plaintiff's Choice of Forum and Site of Material Events

Generally, a plaintiff's choice of forum is given substantial weight, particularly when the plaintiff resides in the chosen forum, Symons Corp. v. Southern Forming & Supply, Inc, 954 F. Supp. 184, 186 (N.D.Ill. 1997); United Air Lines, 8 F. Supp.2d at 798; Amoco Oil, 90 F. Supp.2d at 960; Macedo v. Boeing Co., 693, 683, 688 (7th Cir. 1982). Sitrick is a resident of the state of Illinois and has designed and produced his patented products in Illinois. As a result, Freehand "bears a heavy burden to show that the inconvenience of the parties and witnesses and the dictates of justice are substantial enough to overcome the presumption in favor of Illinois courts." Sky Valley Ltd. v. ATX Sky Valley Ltd., 776 F. Supp. 1271, 1276 (N.D.Ill. 1991) (citing Bodine's Inc. v. Sunny-O Inc, 494 F. Supp. 1279, 1285 (N.D. Ill. 1980)). As Sitrick is an individual residing in this district, FreeHand must carry the heavy burden of showing that transfer is warranted. It is not enough that the transfer merely shifts the burden from one party to the other; the transferee forum must be clearly more appropriate than the transferor forum. Continental Illinois National Bank and Trust Co. of Chicago v. Stanley, 585 F. Supp. 610, 612 (N.D.Ill. 1984).

FreeHand argues that the plaintiff's choice of forum should be given less weight than it is normally entitled to because it lacks a significant connection between this district and Sitrick's infringement claim. The plaintiff's choice of forum is only afforded less deference when it lacks any significant contact with the underlying forum. Symons Corp., 954 F, Supp. at 186, The connection between Sitriek's infringement claim and this district lies in the demonstration by FreeHand to the Chicago Lyric Opera and the Chicago Symphony in February, 2002. This Court has already determined that the events surrounding this demonstration were significant enough to confer personal jurisdiction of the Court over FreeHand. Thus, this is not an instance in which the plaintiff's choice of' forum has "relatively weak connections with the operative (hets giving rise to the claim." VonHoldt, 887 F. Supp. at 188 (N.D. Ill. 1995). As these connections between the district and the plaintiff's claim may certainly be classified as greater than "weak, " the plaintiff's choice of forum is entitled to its usual substantial deference.

When determining the appropriate weight that should be accorded to the plaintiff's choice of forum, it is also necessary to consider the situs of material events. This claim arises out of the defendant's alleged infringement of the plaintiff's '960 and '168 patents. Freehand argues that because the product design, development, manufacturing, warehousing, and shipping of the allegedly infringing products have or will take place in California, the situs of the material events is California, not Illinois. (Compl. P 4). However, the material events of a patent infringement case do not revolve around a particular situs. Medi USA, 791 F. Supp. at 210. Patent infringement determinations are made by comparing the alleged infringing device with the language of the claims. See SRI Internat'l v. Matsushita Elec Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985). This determination does not involve any significant location. Medi USA, 791 F. Supp. at 210. Therefore, the fact that the allegedly infringing products are or will be designed and produced in California does not weigh heavily in ...

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