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Bajer Design & Marketing, Inc. v. Whitney Design

June 26, 2009


The opinion of the court was delivered by: Judge James B. Zagel



On March 23, 2009, Plaintiff Bajer Design & Marketing, Inc. ("Bajer"), a Wisconsin Corporation, sued Defendant Whitney Design, Inc. ("Whitney"), a Delaware Corporation, with its principal place of business in St. Louis, Missouri, alleging infringement of Bajer's patent when Whitney offered for sale certain clothes hampers at the International Home & Housewares Show, in Chicago, Illinois ("the Show"). Bajer filed suit in this court and served Whitney the following day, while at the Show. Two weeks later, on April 10, 2009, Whitney brought its own suit against Bajer in the Eastern District of Missouri ("the St. Louis case"), seeking a declaratory judgment that Whitney's hampers do not infringe Bajer's patent. On April 13, 2009, Whitney filed in this court a motion to transfer Bajer's infringement case to St. Louis on the basis of inconvenient forum. Three days later, on April 16, Whitney answered the complaint in this case. On April 27, Whitney served Bajer with the complaint in the St. Louis case. Rather than answer that complaint, Bajer filed a motion to dismiss or to stay pending deposition of this case, in order to avoid duplicative litigation. On May 19, Bajer filed a motion in this court to enjoin Whitney from further proceeding in the St. Louis case pending this court's final disposition. On June 19, Judge Shaw of the Eastern District of Missouri stayed Whitney's action, pending a decision by this court as to whether to apply the first-filed rule in this case. Whitney Design, Inc. v. Bajer Design & Marketing, Inc., No. 4:09-CV-555 CAS (E.D. Mo. June 19, 2009). For the following reasons, Whitney's Motion to Transfer is denied, and Bajer's Motion for Preliminary Injunction is moot.


"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). Section 1404(a) places discretion with this court to adjudicate motions for transfer according to "individualized, case-by-case consideration of convenience and fairness." Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th Cir.1986) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622, (1964)). "Under § 1404(a), a court may transfer a case if the moving party shows that: (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." Rohde v. Central R.R. of Ind., 951 F. Supp. 746, 747 (N.D. Ill.1997). The language of § 1404(a) does not indicate the relative weight to be accorded to each factor. Coffey, 796 F.2d at 220 n. 3.


A. Motion to Transfer Venue

In its Motion to Transfer venue, Whitney argues that the case before me should be transferred to the Eastern District of Missouri, Eastern Division, pursuant to 28 U.S.C. § 1404(a).

The parties do not dispute that venue is proper in both the transferor and transferee courts, and that jurisdiction would be proper in the transferee district. I will address the remaining factors in turn.

1. Convenience

In this case, matters of convenience do not weigh in favor of transfer. Whitney "has the burden of establishing, by reference to particular circumstances, that the transfer forum is clearly more convenient." Coffey, 796 F.2d at 219-20. "When evaluating the conveniences, the court should consider five factors: (1) the plaintiff's choice of forum, (2) the situs of the material events, (3) the relative ease of access to sources of proof, (4) the convenience of the parties, and (5) the convenience of the witnesses." Amoco Oil Co. v. Mobil Oil Corp., 90 F. Supp. 2d 958, 960 (N.D. Ill. 2000).

"In considering whether to transfer an action the court should give some weight to the plaintiff's choice of forum." New Hampshire Ins. Co. v. Green Dragon Trading Co., No. 08 C 1326, 2008 WL 2477484, at *6 (N.D. Ill. 2008). "The plaintiff's choice is given less weight when the plaintiff is a non-resident of the chosen forum, when the plaintiff sues derivatively or as a class representative, and where the cause of action did not conclusively arise in the chosen forum." Countryman v. Stein Roe & Farnham, 681 F. Supp. 479, 482-83 (N.D. Ill. 1987). Whitney argues that Bajer's choice of forum should be accorded little weight, since the selected forum is not Bajer's home. However, Bajer is suing on its own right, and there is no dispute that the alleged infringement took place in Chicago. Although not determinative, Plaintiff's choice of forum is more than just another factor to consider in light of the right Plaintiff seeks to enforce and location of the events underlying the cause of action. See id. at 483 (where plaintiff was a non-resident of the chosen forum, sued derivatively and where the cause of action did not occur in the chosen forum, plaintiff's choice of forum was "merely another factor to consider" in deciding change of venue); see also Technical Concepts L.P. v. Zurn Industries, Inc., 2002 WL 31433408, at *3 (N.D. Ill. 2002) ("where the plaintiff's choice of forum has relatively weak connections with the operative facts giving rise to the claim, it is afforded less importance and becomes only one of many factors considered by the court")(citation omitted)). Where Plaintiff is suing on its own right alleging infringement that took place in Chicago, this factor weighs against transfer.

There is also some dispute over the second factor - the situs of material events - with regard to what constitutes material events in this case. "To establish infringement of a product patent, the patent owner must demonstrate that the alleged infringer has made, used, or sold the product coming within the scope of the claimed inventions." Paper Converting Mach. Co. v. Magna-Graphics Corp., 680 F.2d 483, 498 (7th Cir. 1982). Bajer alleges that Whitney manufactured, used, and offered for sale at the Show an infringing hamper. According to Bajer, the material event here is the sale of the allegedly infringing product. Whitney argues that its research, design, development, marketing and sales decisions concerning the accused product are "material events" which would be more conveniently proven in the Eastern District of Missouri, where Whitney is located. Although these issues may be ...

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