Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Rabbit Tanaka Corp. USA v. Paradies Shops

January 23, 2009

RABBIT TANAKA CORP. USA, PLAINTIFF,
v.
THE PARADIES SHOPS, INC., IMAGE MASTERS, INC., AND BIG LOTS STORES, INC., DEFENDANTS.



The opinion of the court was delivered by: Matthew F. Kennelly United States District Judge

MEMORANDUM OPINION AND ORDER

MATTHEW F. KENNELLY, District Judge

Rabbit Tanaka Corp. USA has sued The Paradies Shops, Inc., Image Masters, Inc. and Big Lots Stores, Inc. for patent infringement. Image Masters has moved to transfer the case to the Central District of California pursuant to 28 U.S.C. § 1404(a). For the reasons stated below, the Court denies Image Masters' motion.

Background

Rabbit Tanaka alleges that it holds U.S. Patent No. 5,685,097, for an "illuminated colored display device," and that defendants have infringed and continue to infringe the patent by making and selling certain identified products. It also alleges that infringing products were sold in and shipped to this district. Rabbit Tanaka seeks damages and an injunction.

Rabbit Tanaka has identified itself as a Texas corporation with its principal place of business in Fort Worth, Texas. Paradies Shops is a Georgia corporation headquartered in Atlanta, Georgia. It operates retail shops, nearly all of which are located at airports in the United States and Canada. Marek Affid. ¶¶ 2-3. Image Masters is a California corporation with its principal place of business in Agoura Hills, California, which is near Los Angeles. Traub Affid. ¶ 3. Based upon the information currently before the Court, it appears that Image Masters is a distributor of certain accused products. See id. ¶¶ 4-5. Big Lots is an Ohio corporation with its principal place of business in Columbus, Ohio; it is a well-known nationwide retailer that has "distribution centers" (which distribute products to its retail stores) located in Ohio, Pennsylvania, Alabama, California, and Oklahoma. Preston Affid. Ex. C. Big Lots, which was first named as a defendant in Rabbit Tanaka's amended complaint, has not yet been served with summons, and it is likely that the time for service has expired. See Fed. R. Civ. P. 4(m).

In an affidavit supporting the motion to transfer, Image Masters' president states that the company imported the products at issue from China to California and then shopped them to its customers, which are located throughout the United States. Traub Affid. ¶ 5. It has 2,230 customers, 146 of which are in Illinois. Id. ¶ 6. Big Lots is not one of its customers. Id. Image Masters' attorney has submitted an affidavit stating that based upon his review of information contained on Paradies Shops' website, that entity has only one shop in Illinois, located at the Quad Cities Airport in Moline. Preston Affid. ¶¶ 2-3. According to an affidavit submitted by Paradies Shops' chief financial officer, it sold the accused products only at shops in Georgia, Texas, California, Florida, Michigan, Tennessee, and Kentucky. Marek Affid. ¶ 4.

In seeking a transfer to the Central District of California, Image Masters concedes that certain of the accused products were marketed in this District but says that does not distinguish this District from any other available venue. It argues that venue is proper in the Central District of California, its home district; the case has no significant connection to the Northern District of Illinois because no party is headquartered here and Rabbit Tanaka itself has no facilities or employees here; witnesses and documents are likely to be located in California, Georgia, and Texas; and the case is likely to get to trial quicker in the Central District of California than in this District.

In opposition to Image Masters' motion, Rabbit Tanaka argues that Image Masters has failed to show that the other defendants are subject to personal jurisdiction in the Central District of California, a prerequisite to transfer to a particular district under section 1404(a); Image Masters has failed to show that the proposed transferee district is more convenient than this District; and Image Masters has provided no support for its contention that significant witnesses are likely to be located in the proposed transferee district. Rabbit Tanaka also contends that records regarding its patents are located with its counsel in Chicago*fn1 and that it has brought other infringement actions in this District. Rabbit Tanaka argues that because the alleged infringers are found in disparate locations, the convenience factor tilts in favor of keeping the case here.

Paradies Shops also opposes transfer of the case to the Central District of California, though it appears to concede it is subject to jurisdiction in that district because it sold some of the questioned merchandise there. Its chief financial officer has submitted an affidavit in which he states that the company's relevant records and its "key witnesses" (himself and the company's director of marketing) are located in Atlanta and that being forced to travel to the Central District of California would be "disruptive to [his] work." Marek Affid. ¶ 6. Paradies Shops does not oppose having the case proceed in the Northern District of Illinois, and it does not seek transfer to the Northern District of Georgia.

In its reply brief, Image Masters contends that the primary locus of the case is the Central District of California, "the only location through which everything in this case passed," and that no other judicial district has a greater connection with the case. It also argues that Big Lots is a "sham defendant" added only to aid Paradies Shops in avoiding transfer. If anything, Image Masters argues, Big Lots should be severed from the case. Image Masters does not suggest that Paradies Shops should be severed.

The Court permitted Rabbit Tanaka to file a surreply given Image Masters' belated suggestion regarding severance. Rabbit Tanaka notes that Image Masters has made no motion for severance under Federal Rule of Civil Procedure 21 or otherwise and that it did not object to the addition of Big Lots to the case. Rabbit Tanaka also argues that the law does not require a patent holder to file separate lawsuits against infringers in separate supply chains. It contends that considerations of convenience and judicial economy favor keeping the case in its current consolidated form, to avoid duplicative discovery and parallel claim construction hearings in different districts regarding the same patent claims.

Discussion

Under section 1404(a), a court may, "[f]or the convenience of parties and witnesses, in the interest of justice, . . . transfer any civil action to any other district or division where it might have been brought." As the party seeking transfer, Image Masters "has the burden of establishing, by reference to particular circumstances, that the transferee forum is clearly more convenient." Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219-20 (7th Cir. 1986).*fn2 In ruling on a motion for transfer, the Court considers the ยง 1404(a) criteria "in light of all the factors of the case," an inquiry that "necessarily involves a large degree of subtlety and latitude," including how much weight to give each of the statutory criteria. ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.