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Swingaway Sports Products, Inc v. Escalade

April 23, 2012


The opinion of the court was delivered by: Judge Robert W. Gettleman


Plaintiff SwingAway Sports Products, Inc. has sued defendant Escalade, Inc. in a four count complaint alleging patent infringement, reverse palming-off in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), violations of the Illinois Deceptive Trade Practices Act, and tortious interference with prospective economic advantage. Defendant has moved to transfer venue under 28 U.S.C. § 1404(a) to the Southern District of Indiana. Because the action has no significant connection to the Northern District of Illinois, defendant's motion is granted.


Plaintiff SwingAway makes and sells a highly acclaimed innovative and patented baseball and softball hitting training system. Each of SwingAway's products bears the SWINGAWAY® trademark and all incorporate its patented features, including its ball return dampening feature. It was formed in 2008 and has established itself as a leader in the baseball and softball training aids market, with projected sales in 2012 of greater than $1 million. It is a Georgia corporation with its principal place of business in Marietta, Georgia.

Defendant Escalade*fn2 is an Indiana corporation with its principal place of business in Evansville, Indiana. It is in the business of making and selling sports-related equipment and products for a variety of sports under a number of well known brands, including "Goalrilla." It averages over $100 million in annual revenue.

Plaintiff is the assignee of U.S. Patent No. 5,795,250 (the "`250 Patent") entitled Tethered Ball Practice Device. The '205 Patent covers all of plaintiff's baseball and softball training aids. Plaintiff also owns the federally registered SWINGAWAY® trademark.

On June18, 2011, plaintiff's president John Flading was at a trade show at the college world series in Omaha, Nebraska. He was told by an industry-renowned baseball hitting instructor that a SwingAway hitting and fielding aid was on display at another exhibitor's (defendant's) booth. Flading went to defendant's booth and observed a training system identical in all material respects, including the ball return dampening system covered by the '250 Patent, to a SwingAway device. The product was identified as a "Goalrilla Spring Trainer" but was a SwingAway device with minor cosmetic changes. The key parts were actually physically taken from a SwingAway device. On further inspection, Flading discovered that defendant had simply rubbed off the SWINGAWAY® trademark from the exhibited device.

Flading told the personnel at defendant's booth that the Goalrilla Spring Trainer incorporated SwingAway parts, and infringed the `250 Patent. Defendant's personnel showed Flading copies of documents reflecting that the `250 Patent had lapsed on September 19, 2010, for failure to pay routine maintenance fees. Defendant took the position that as a result of that lapse, it was free to make, use and sell products that read on the claims of the `250 Patent on the basis of intervening rights under 35 U.S.C. § 41(c)(2).

On that same day Flading contacted plaintiff's patent counsel, who filed a petition with the Patent and Trademark Office ("PTO") advising of counsel's inadvertent error, paying the maintenance fee and requesting immediate reinstatement of the `250 Patent. The PTO reinstated the patent that same day.

Defendant filed an action in the Southern District of Indiana seeking a declaratory judgment of non-infringement. Hearing nothing from plaintiff, defendant assumed that plaintiff had acquiesced with respect to its position that it had intervening rights with respect to the `250 Patent and allowed the 120 day service period to expire. One month later, almost five months after the trade show, plaintiff filed the instant action in this district.


"Change of venue in patent cases, like other civil cases, is governed by 28 U.S.C. § 1404(a)." In re TS Tech USA, Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). That section provides "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 or to any district or division to which all parties have consented." 28 U.S.C. § 1404(a). The court may transfer venue when "(1) venue is proper in this district; (2) venue and jurisdiction is proper in the transferee district; (3) the transferee district is more convenient for both parties and witnesses; and (4) transfer would serve the interests of justice." Spread Spectrum Screening, LLC v. Eastman Kodak Co., 2010 WL 3516106 at *3 (N.D. Ill. 2010) (citing Jaramillo v. DineEquity, Inc., 664 F. Supp.2d 908, 913 (N.D. Ill. 2009)). In the instant case, only the third and fourth elements are in dispute.

To determine whether one venue is more convenient than another, courts in this district generally evaluate five factors: (1) the plaintiff's choice of forum; (2) the situs of 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. Spread Spectrum, 2010 WL 3516106 at *3 (citing Amoco Oil Co. v. Mobile Oil Corp., 90 F. Supp.2d 958, 960 (N.D. Ill. 2000).

Generally, the plaintiff's choice of forum is given great weight when the chosen forum is the plaintiff's home forum. Spread Spectrum, 2010 WL 3516106 at *3. When the plaintiff's forum is not its home forum and the chosen forum lacks significant contacts with the cause of action, the plaintiff's ...

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