The opinion of the court was delivered by: GEORGE LINDBERG, Senior District Judge
Brunswick Bowling and Billiards Corporation ("plaintiff"),
brought this action against Qubica USA, Inc. ("defendant") for
alleged patent infringement. Defendant has filed a motion to
transfer venue to the Middle District of Florida pursuant to
18 U.S.C. § 1404(a). Defendant's motion is hereby granted.
"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."
28 U.S.C. § 1404(a). "A transfer under § 1404(a) is appropriate if:
(1) venue is proper in both the transferor and transferee courts;
(2) transfer is for the convenience of the parties and witnesses;
and (3) transfer is in the interest of justice." Law Bulletin
Publ'g Co. v. LRP Publ'ns, Inc., 992 F. Supp. 1014, 1017 (N.D.
Ill. 1998). "It is in the sound discretion of the trial judge to
determine the weight accorded to each factor." Amoco Oil Co. v.
Mobil Oil Corp., 90 F. Supp. 2d 958, 959 (N.D. Ill. 2000).
Plaintiff has been involved in the bowling industry since the
late nineteenth century and is currently the world leader in the
manufacture and sale of bowling equipment. It is headquartered in Lake Forest, Illinois, and has approximately 791
employees in Illinois. Defendant is a Florida corporation engaged
in the business of developing and selling innovative bowling
center products. It conducts its development, manufacturing,
sales and distribution activity in Lake Hamilton and Bonita
Springs, Florida. Two of the products offered by defendant are
the Smile Arch and the Smile Axe scoring stations, used for
scoring bowling games.
Defendant has sold the Smile Axe to three bowling alleys, all
of which are in Florida, and has sold the Smile Arch to one
bowling alley, also in Florida. Last year, defendant sold one
scoring system (neither the Smile Axe nor the Smile Arch) to a
bowling alley in Illinois. Illinois sales have accounted for less
than three percent of defendant's total sales since 1996. On June
20, 2005, plaintiff filed this action in the Northern District of
Illinois alleging infringement of two of plaintiff's patents
(U.S. Patent Nos. 6,441,724 and 6,619,603) in general terms. The
complaint identifies defendant's Smile Axe and Smile Arch
products as two infringing products but is broad enough to
include other products within a certain class of products that
might also infringe.
The first element that is necessary in order for transfer to be
proper under 28 U.S.C. § 1404(a) is that venue must be proper in
both the transferor and the transferee districts. Law Bulletin
Publ'g Co. v. LRP Publ'ns, Inc., 992 F. Supp. 1014, 1017 (N.D.
Ill. 1998). Plaintiff and defendant agree that venue is proper in
both the Northern District of Illinois and in the Middle District
of Florida. See 28 U.S.C. § 1391. "Thus, the focal point of
this analysis is the convenience of parties and witnesses and the
interest of justice, to which this court now turns." Truserv
Corp. v. Neff, 6 F. Supp. 2d 790, 794 (N.D. Ill. 1998). In evaluating a request for transfer, the court must consider
both the private interests of the parties and the public
interest. Medi USA, L.P. v. Jobst Inst., Inc.,
791 F. Supp. 208, 210 (N.D. Ill. 1992). Private interest factors include: (1)
the 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 courts' power to compel the appearance
of unwilling witnesses and the costs of obtaining the attendance
of witnesses; and (4) convenience to the parties, their
residences and their abilities to bear the expense of trial in a
particular forum. Truserv Corp. v. Neff, 6 F. Supp. 2d 790, 792
(N.D. Ill. 1998) (citing Medi USA, L.P. v. Jobst Inst., Inc.,
791 F. Supp. 208, 210 (N.D. Ill. 1992)). Public interest factors
include: (1) the relation of the community to the issue of the
litigation and the desirability of resolving controversies in
their locale; (2) the court's familiarity with applicable law;
and (3) the congestion of the respective court dockets and the
prospects for earlier trial. Id.
The parties disagree as to the amount of deference that should
be given to the plaintiff's choice of forum. Plaintiff cites
several cases for the proposition that its choice of forum is
given significant weight when, as here, plaintiff has chosen its
home forum. See IP Innovation L.L.C. v. Matsushita Elec. Indus.
Co., Ltd., No. 05 C 902, 2005 U.S. Dist. LEXIS 11892, at *4
(N.D. Ill. June 13, 2005); Sitrick v. Freehand Sys., Inc., No.
02 C 1568, 2003 U.S. Dist. LEXIS 4813, at *6-7 (N.D. Ill. Mar.
24, 2003); Abbott Lab. v. Zenith Lab., No. 02 C 1568, 2003 U.S.
Dist. LEXIS 3256, at *7 (N.D. Ill. Mar. 25, 1995). Defendant on
the other hand cites cases for the proposition that plaintiff's
choice of forum should be given deference only when there is a
connection between the forum and the operative facts giving rise
to the cause of action. See Truserv Corp. v. Neff,
6 F. Supp. 2d 790, 794 (N.D. Ill. 1998); Von Holdt v. Husky Injection Molding Systems, Ltd., 887 F. Supp. 185, 188 (N.D. Ill. 1995).
In this case, plaintiff's principal place of business is located
in the Northern District of Illinois and plaintiff has nearly 800
employees in the district. There is no other connection to the
Northern District of Illinois. It is unnecessary at this time for
the court to decide how much deference should be afforded
plaintiff's choice of forum. "[W]hile the plaintiff's choice is
an important consideration, it is not absolute in determining
whether a motion to transfer should be granted." Amoco Oil Co.
v. Mobil Oil Corp., 90 F. Supp. 2d 958, 960 (N.D. Ill. 2000).
Even if plaintiff's choice of forum is given substantial
deference, other factors weigh strongly enough in favor of
transfer that this court will still grant defendant's motion.
The parties also disagree over what should be considered the
situs of material events. Defendant urges that "in infringement
cases, the location of the infringer's place of business is often
the critical and controlling consideration because such suits
often focus on the activities of the alleged infringer, its
employees, and its documents rather than upon those of the
plaintiffs." Technical Concepts, L.P. v. Zurn Indus., Inc., No.
02 C 5150, 2002 U.S. Dist. LEXIS 21020, at *4 (N.D. Ill. Oct. 30,
2002) (internal quotations omitted). Defendant argues that
because it is headquartered in the Middle District of Florida,
development of the allegedly infringing products occurred in the
Middle District of Florida, and the alleged infringement (sale of
Defendant's Smile Arch and Smile Axe to bowling alleys) occurred
in the Middle District of Florida, the Middle District of Florida
is the situs of material events. Plaintiff on the other hand,
points out that "the material events of a patent infringement
case do not revolve around any particular situs. The trier of
fact determines patent infringement by comparing the alleged
infringing device with the language of the claims." Medi USA,
L.P. v. Jobst Institute, Inc., 791 F. Supp 208, 210 It is unnecessary for this court to resolve the issue
whether the situs of material events is in fact the Middle
District of Florida. There is no strong connection in this case
to the Northern District of Illinois. This factor is either
neutral, or weighs in favor of transfer. Making all possible
inferences in favor of plaintiff (that the alleged infringement
in the Middle District of Florida does not make that district the
situs of material events), transfer is still appropriate given
the weight of the other factors.
The ease of access to sources of proof weighs heavily in favor
of transfer to the Middle District of Florida. The location of
documents does not weigh in favor of either forum as "[t]he court
is satisfied . . . that either party can easily bring to the
district in which the case is litigated" all necessary documents.
Law Bulletin Publ'g, Co. v. LRP Publ'ns, Inc.,
992 F. Supp. 1014, 1017 (N.D. Ill. 1998). Similarly, the location of witnesses
who are employees of either defendant or plaintiff is a neutral
factor since the convenience of "employee-witnesses . . . is
generally assigned little weight," Law Bulletin,
992 F. Supp. at 1019, and it is assumed that employee witnesses would
"voluntarily appear to defend the suit." Technical Concepts L.P.
v. Zurn Indus., Inc., No. 02 C 5150, 2002 U.S. dist. LEXIS
21020, at *12 (N.D. Ill. Oct. 30, 2002).
The location and convenience of "potential, non-party
witnesses" is often viewed as the "most important factor in the
transfer balance." Technical Concepts L.P. v. Zurn Indus.,
Inc., No. 02 C 5150, 2002 U.S. Dist. LEXIS 21020, at *18 (N.D.
Ill. Oct. 30, 2002). The movant has "the burden of showing, by
reference to particular circumstances, that the transferee forum
is clearly more convenient," Coffey v. Van Dorn Iron Works,
796 F.2d 217, 219-220 (7th Cir. 1986), and "[v]enue may not be
transferred simply to shift inconvenience from the defendant to
the plaintiff." Holley Performance Prods, Inc. v. Barry Grant,
Inc., No. 04 C 5758, 2004 U.S. Dist. LEXIS 25892, at *12 (N.D. Ill. Dec. 17, 2004) (citing
Tsaparikos v. Ford Motor Co., No. 02 C 6899, 2002 WL 31844949,
at *1 (N.D.Ill.Dec. 18, 2002)).
"The determination of whether a particular venue is more
convenient for the witnesses should not turn on which party
produces a longer witness list. Rather, the court must look to
the nature and quality of the witnesses' testimony with respect
to the issues of the case." Law Bulletin Publ'g, Co. v. LRP
Publ'ns, Inc., 992 F. Supp. 1014, 1018 (N.D. Ill. 1998).
Furthermore, the court "will not consider the convenience of . . .
unidentified witnesses." Id. at 1018. Defendant identifies
several non-party witnesses and the testimony they will be
expected to provide.
Doug Wilkerson, one such witness, assisted in the development
of the Qubica products at issue and will testify as to dates of
development and first use. While Mr. Wilkerson is currently a
Qubica employee, he has provided notice of his resignation. He
lives in Winter Haven, Florida. Tony Madafer, a resident of
Naples, Florida, is a vendor that was used to fabricate
components for Qubica products. He can testify about the
development process, dates of development, and specifications of
scoring stations. Current and former employees of Woodside Lanes
in Naples, Florida can testify about the sale and use of the
Smile Arch stations installed at Woodside Lanes. Defendant claims
this testimony will be relevant to its defenses. The owners and
employees of the Regal Bowling Lanes in Tampa, Florida, Unity
Bowling Lanes in Zephyrhills, Florida and Crown Bowling Lanes in
Tampa, Florida can testify about the sale and use of the Smile
Axe stations installed in their bowling facilities. Dick Hubbard
III, the owner of Sarasota Lanes in Sarasota, Florida, will
testify about the sale, design, installation and use of
defendant's mounting arms, as well as plaintiff's representatives
who visited the center and inspected the tables and mounting systems in early 1999.
Defendant also claims that this information is relevant to its
defenses. Will Heddon, formerly of Heddon Bowling Corporation (a
competitor of both plaintiff and defendant) can provide testimony
relevant to patent misuse by plaintiff, dates of first use by
defendant and plaintiff, evidence of prior art, and evidence of
The convenience of these non-party witnesses weighs strongly in
favor of transfer to the Middle District of Florida. Plaintiff
argues that the convenience of these witnesses does not mandate
transfer because defendant has not proven that these witnesses
will not appear voluntarily or that their testimony cannot be
provided through videotaped deposition. This argument fails. The
court must consider not only whether these witnesses will appear
voluntarily, but "whether these witnesses will be subject to
compulsory process and the cost to obtain attendance of willing
witnesses." Pinpoint, Inc. v. Amazon.com, No. 03 C. 4954,
2003 U.S. Dist. LEXIS 16561, at *9 (N.D. Ill. Sept. 18 2003).
Furthermore, by making non-party witnesses available for trial,
the court hopes "to minimize the risk of trial by deposition."
Aearo Co. v. Bacou-Dalloz USA Safety, Inc., No. 03 C 1406,
2004 U.S. Dist. LEXIS 13970, at *8 (N.D. Ind. July 21, 2004) (internal
Plaintiff also argues that the case must remain in Illinois for
the convenience of its own non-party witnesses. However,
plaintiff does not identify any non-party witnesses located
within the Northern District of Illinois. Instead, plaintiff
argues that the Northern District of Illinois is a more
convenient forum for the inventors of the patents in question,
who are located in Michigan and Wisconsin. This argument fails
since witnesses who live in neither the transferor nor the
transferee forum are insignificant to the court's analysis. Law
Bulletin Publ'g Co. V. LRP Publ'ns, Inc., 992 F. Supp. 1014, 1019 (N.D. Ill. 1998). While
Illinois might be more convenient for ...