United States District Court, N.D. Illinois
March 30, 2004.
THE HEIL COMPANY, Plaintiff
CUROTTO CAN COMPANY, Defendant
The opinion of the court was delivered by: WAYNE ANDERSEN, District Judge
MEMORANDUM OPINION AND ORDER
This matter is before the Court on defendant Curotto Can Company's
motion to transfer this case to the United States District Court for the
Northern District of California pursuant to 28 U.S.C. § 1404(a), For
the following reasons, the motion to transfer venue is granted.
Plaintiff The Heil Company filed a patent infringement action against
defendant Curotto Can Company on February 1, 2002. On May 14, 2003, after
prolonged discussions between the parties and settlement negotiations,
defendant filed a motion for change of venue pursuant to
28 U.S.C. § 1404(a), which is presently before the Court. In the intervening
period, defendant has filed counterclaims alleging invalidity and
unenforceability of the two patents that The Heil Company claims have
A. Standard of Review
In considering a motion to transfer venue, the court accepts all
well-pleaded allegations in the complaint as true unless controverted by
affidavit. Plotkin v. IP Axess, Inc., 168 F. Supp.2d 899, 900
(N.D. Ill. 2001). Any conflict in an affidavit is resolved in favor of
Turnock v. Cope, 816 F.2d 332, 333 (7th Cir. 1987). The
decision whether to transfer is in the sound discretion of the trial
judge. Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th
B. Transfer of Venue
Curotto Can has moved to transfer this case to the Northern District of
California, Pursuant to 28 U.S.C. § 1404(a), "[f]or 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." The moving party has the burden to establish
that the transfer forum is "clearly more convenient" than the transferor
court. Coffey, 796 F.2d at 219-220.
Transfer is appropriate pursuant to section 1404(a) 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)
a transfer will serve the convenience of the parties, the witnesses and
the interests of justice. Anchor Wall Systems, Inc. v. R & D
Concrete Products, Inc., 55 F. Supp.2d 871, 873 (N.D. Ill 1999).
There is no dispute that venue and jurisdiction are proper in this Court
as well as in the Northern District of California. Thus, resolution of
this issue centers principally around the third factor.
The convenience and fairness inquiry for a transfer pursuant to section
1404(a) is determined on a case by case basis by looking at the private
interests of the parties and witnesses and the public interest of the
court. Coffey, 796 F.2d 219. Private interests generally
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; and (4) convenience to the parties. Anchor Watt Systems,
Inc., 55 F. Supp.2d at 873.
1. Plaintiff's Choice of Forum
Although The Hell Company filed suit in this district, its choice of
forum has diminished significance because it is not a resident of
Illinois. Thus, this factor is simply another factor in the mix and is
not given any additional weight. H.B. Sherman Mfg. Co. v. Rain Bird
Nat'l Sales Corp., 979 F. Supp. 627, 630 (N.D. Ill. 1997). The
weight given to a plaintiff's choice of forum is further lessened if the
chosen forum lacks any significant connection to the lawsuit. Anchor
Wall Systems, Inc., 55 F. Supp.2d at 874.
In this case, The Heil Company is not located in Illinois and does not
appear to have any connection with this forum. Curotto Can also is not
located in Illinois and has limited connection with this forum based on
minimal sales that have taken place in Illinois and the headquarters of
the company that manufactures the alleged infringing product is in
Illinois, However, the actual manufacturing activities take place in
Canada. Thus, little weight will be accorded The Heil Company's choice of
forum in this case.
2. Situs of Material Events
In patent cases, courts often focus on "the alleged infringing
activities of the defendant and the employees and documents that evidence
these activities," and the situs of the material events generally is
where the alleged infringing activities occurred. Sitrick v.
Dreamworks LLC, 2003 WL 21147898, at * 3 (N.D. Ill. May 14, 2003).
In this case, the Northern District of Illinois has a de minimus
connection with the operative facts giving rise to the alleged
infringement while the Northern District of California has a much greater
connection because Curotto Can is headquartered in Northern California
and its sales activities are based in California, Thus, consideration of
the situs of material events favors the transfer of this matter to
3. Convenience of the Witnesses and Parties
The convenience of the witnesses often is viewed as the most important
factor to consider in evaluating whether a transfer would be appropriate.
Ambrose v. Steelcase, Inc., 2002 WL 1447871, at * 3 (N.D. Ill.
July 3, 2002). In this case, neither party has identified any individual
witnesses in Illinois. The majority of the witnesses are located either
in Tennessee or California. Thus, consideration of the convenience of the
witnesses for The Heil Company does not tilt the scales in one direction
or another as these witnesses will have to travel no matter where the
trial will occur. However, consideration of the convenience of the
witnesses for Curotto Can does tilt the scale in favor of transfer as
defendant's witnesses are located in California.
With regard to convenience of the parties, neither party is located in
Illinois while one party is located in California. Also, it is not a
significant burden for The Heil Company to travel from Tennessee to
California rather than to Illinois as in either instance it cannot avoid
travel. Also, the fact that counsel for The Heil Company is located in
Chicago does not tilt the scales in favor of The Heil Company in the
transfer analysis. See Hemstreet v. Scan-Optics, Inc., 1990 WL
36703, at * 4 (N.D. Ill. Mar, 9, 1990) (stating that "[t]he convenience
and location of counsel have never been accorded weight in a transfer
4. Public Interests of Justice
The final consideration is whether a change of venue would serve the
overall interests of justice. Public interests include a court's
familiarity with applicable law and the desirability of resolving
controversies in its locale. Anchor Wall Systems, Inc.,
55 F. Supp.2d at 874. Both forums are equally familiar with federal patent
law. However, Illinois does not have a strong interest in adjudicating a
case between two companies neither of which is located in this State,
and California has a greater interest in resolving a patent
infringement action involving a company headquartered in California.
In addition, although this Court oversaw discovery in this matter, we
have not resolved any substantive legal issues in this case. All
substantive matters have been stayed pending settlement negotiations, and
contrary to The Heil Company's claim, no trial date has been set. Thus,
because this lawsuit does not have any significant connection to this
forum, the interests of justice are better served by transferring this
matter to the Northern District of California,
Having examined each of the factors enumerated above, we conclude that
the continued litigation of this case in the Northern District of
California is clearly more convenient and in the interests of justice.
For the foregoing reasons, defendant's motion to transfer venue is
granted, and this mater is transferred to the United States District
Court for the Northern District of California.
It is so ordered.
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