Opinion
NO. 1:03-cv-01406-DFH-VSS.
June 7, 2004
ENTRY ON MOTION TO TRANSFER
Plaintiffs Aearo Company and Cabot Safety Intermediate Corporation filed this action against defendant Bacou-Dalloz USA Safety, Inc. alleging patent infringement, trademark infringement, and false advertising. Defendant Bacou has moved to transfer this action to the Southern District of California pursuant to 28 U.S.C. § 1404(a), which authorizes such transfers for the convenience of the parties and witnesses and in the interest of justice. For the reasons set forth below, Bacou's motion to transfer is hereby denied.
Background
Plaintiffs in this action (collectively, "Aearo") allege that the defendant's manufacture, distribution, and advertisement of the "SmartFit" earplug constitutes, among other things, patent infringement, trademark infringement, and false advertising. Plaintiffs seek relief under both federal and state law. The bases of the infringement claims are: (1) plaintiff Cabot's claim that it is the owner of United States Patent Number 4,867,149, entitled "Earplugs"; (2) Aearo Company's claim to be the exclusive licensee of this patent; and (3) Aearo Company's claim of a trademark on the UltraFit earplug. Bacou alleges that the patent and the trademark are invalid.
Aearo Company has its principal place of business in Indianapolis. Cabot has a place of business in Indianapolis as well. The invention of the patent in question and the marketing of the UltraFit were done by Aearo employees in Indianapolis. Plaintiffs' UltraFit earplugs are manufactured in Massachusetts and packaged in Indianapolis.
The headquarters for defendant Bacou's Howard Leight Industries Division, the division responsible for the design, manufacture, and distribution of the SmartFit, is in San Diego. The manufacturing, research and development, marketing, distribution, and customer service for the SmartFit occurred in San Diego. Venue is proper in either Indianapolis or San Diego, so the issue is whether a transfer of venue would be convenient and in the interest of justice under 28 U.S.C. § 1404(a).
Discussion
A motion to transfer under § 1404(a) for the convenience of the parties and witnesses and in the interest of justice is committed to the sound discretion of the district court. Under § 1404(a), Bacou has the burden of showing that the Southern District of California is "clearly more convenient" than the Southern District of Indiana. Coffey v. Van Dorn Iron Works, 796 F.2d 217, 220 (7th Cir. 1986).
I. Convenience of Parties
The Southern District of Indiana is less convenient for Bacou than the Southern District of California would be. However, either forum would be inconvenient for one side. It is well-established that "the effect of a transfer cannot be a mere shift of inconveniences" among the parties. Moore v. ATT Latin Am. Corp., 177 F. Supp. 2d 785, 789 (N.D. Ill. 2001), citing Promatek Med. Sys., Inc. v. Ergometrics, Inc., 1990 WL 19491, at *4 (N.D. Ill. Feb. 15, 1990); accord, Educational Visions, Inc. v. Time Trend, Inc., 2003 WL 1921811, at *7 (S.D. Ind. April 17, 2003) (denying motion to transfer that would have merely shifted inconvenience between parties); Beller v. MacDermid, Inc., 2002 WL 31045377, at *6 (S.D. Ind. Sept. 9, 2002) (same); Sage Prods., Inc. v. Devon Indus., Inc., 148 F.R.D. 213, 216 (N.D. Ill. 1993).
Bacou argues that the location of the alleged infringing activity "can appropriately be the decisive factor in the court's analysis." In support of this proposition, Bacou quotes Skill-CraftEnterprises, Inc. v. Astro Mfg., Inc., 1990 U.S. Dist. Lexis 18929 (N.D. Ind. Dec. 3, 1990) (granting motion for a transfer after a balancing of various factors): "Motions for a change of venue have been granted in patent infringement cases where the defendant-movant sought the jurisdiction of its principal place of business and the situs of the alleged infringing activity as the forum." Id. at *18. The site of the alleged infringing activity may be entitled to consideration by the court, but it alone is not determinative as a matter of law. If it were, the defendant in such cases would "almost always be allowed to transfer the case to its home forum." Lucent Techs., Inc. v. Aspect Telecomms. Corp., 1997 WL 476356, *3 (E.D. Pa. Aug. 20, 1997) (rejecting contention that the location of the accused activity is the predominant factor).
Instead, the site of the alleged infringing activity is one factor for the court to take into account. Another factor to be considered is the plaintiff's choice of forum. FDIC v. Citizens Bank Trust Co., 592 F.2d 364, 368 (7th Cir. 1979) (affirming trial court's denial of a motion to transfer, and noting that the "trial court must give some weight to the plaintiff's choice of forum"); Abbott Labs v. Zenith Labs., Inc., 1995 U.S. Dist. Lexis 3256, at *7 (N.D. Ill. Mar. 15, 1995) (denying motion to dismiss where plaintiff brought suit in its home forum). In Skill-Craft, quoted by Bacou, one of the reasons that the court granted the motion to transfer was that the plaintiff brought suit outside of its home jurisdiction. The court stated that the plaintiff's choice of forum "is entitled to great weight in the balance of factors unless the forum chosen is outside of the plaintiff's home jurisdiction." Skill-Craft, 1990 U.S. Dist. Lexis 18929, at *13. In this case, Aearo has chosen to file suit in its home jurisdiction, and that choice is given due weight by this court.
Even when the forum is not the plaintiff's "home," plaintiff's choice of forum is entitled to some weight as long as the forum bears a substantial relationship to the cause of action, such as the place where the cause of action arose. See, e.g., Gemological Institute of America, Inc. v. Trang Thi-Dai Phan, 145 F. Supp. 2d 68, 71 (D.D.C. 2001), quoting DeLoach v. Philip Morris Co., 132 F. Supp. 2d 22, 24 (D.D.C. 2000) ("although a plaintiff's choice of forum is ordinarily accorded a significant degree of deference, numerous cases in this Circuit recognize that such a choice receives substantially less deference where the plaintiffs, as here, neither reside in, nor have any substantial connection to, that forum"); General Instrument Corp. v. Mostek Corp., 417 F. Supp. 821, 823 (D. Del. 1976) ("Where the forum selected by plaintiff is connected neither with the plaintiff nor with the subject matter of the lawsuit, meeting the burden of showing sufficient inconvenience to tip the `balance' of convenience `strongly in favor of defendant' will ordinarily be less difficult."), cited in State Farm Mut. Auto. Ins. Co. v. Bussell, 939 F. Supp. 646, 651 (S.D. Ind. 1996).
Most of Bacou's evidence will likely be California, but much of Aearo's evidence will likely come from Indiana, particularly with respect to Bacou's counterclaims and affirmative defenses regarding the validity of the patent and trademark. That balance means that a transfer would merely shift convenience from one side to the other. Where there is such a balance between the sides, the plaintiffs' choice of forum in this case carries some weight in favor of denying the motion to transfer.
B. Convenience of Witnesses
Because merely shifting inconvenience from one party to another does not justify a transfer, a major concern under § 1404(a) is the availability of non-party witnesses and evidence. Parties may use Rule 45 of the Federal Rules of Civil Procedure to conduct discovery all over the United States, so the principal concern along these lines is to make non-party witnesses available for trial. The aim is to minimize the risk of "trial by deposition." See, e.g., Volkswagen Aktiengesellschaft v. Dee Engineering, Inc., 2003 WL 1089515, at *4 (S.D. Ind. March 4, 2003); Preston v. Missouri-Nebraska Exp., Inc., 1991 WL 626751, at *2 (W.D. Mo. Oct. 16, 1991); Kendall U.S.A., Inc. v. Central Printing Co., 666 F. Supp. 1264, 1268 (N.D. Ind. 1987).
Bacou offers little in the way of potential non-party witnesses to support its motion to transfer. Bacou states that it will have witnesses in California and that Aearo will have witnesses in Indiana, but that, because Bacou's own conduct is at issue, the witnesses in California will likely have a greater impact on the case. For this proposition, Bacou cites Volkswagen, 2003 WL 1089515, at *11. However, the court in Volkswagen specifically noted that the defendant identified several non-party witnesses who would not be subject to service in Indiana. Bacou identifies five potential witnesses who reside in California. Of those five, only one, Leon Rosen, is not a Bacou employee, but he has acted as outside counsel to Bacou in the past. Courts ordinarily can assume that the parties will be sufficiently motivated to have their own employees or other allies appear for trial wherever it might take place. Volkswagen Aktiengesellschaft v. West Coast Metric, 2004 WL 392942, at *2 (S.D. Ind. Feb. 12, 2004); FUL Inc. v. Unified Sch. Dist. No. 204, 839 F. Supp. 1307, 1311(N.D. Ill. 1993), cited in Greene Mfg. Co. v. Marquette Tool Die Co., 1998 WL 395155, at *3 (N.D. Ill. July 9, 1998).
Aearo is likely to present its own party witnesses who reside in Indiana, particularly in light of Bacou's defenses and counterclaims regarding the validity of its patent and trademark. Neither side has identified significant non-party witnesses who may not be amenable to service in Indiana. Thus, the convenience of the witnesses does not support a transfer to the Southern District of California.
C. The Interest of Justice
In considering a motion to transfer under § 1404(a), a court must consider the interest of justice. The focus here is on "the efficient functioning of the courts." Coffey, 796 F.2d at 221. Transferring this action would not further "such concerns as ensuring speedy trials, trying related litigation together, and having a judge who is familiar with the applicable law try the case." Heller Financial, Inc. v. Midwhey Powder Co., 883 F.2d 1286, 1293 (7th Cir. 1989), citing Coffey, 796 F.2d at 221.
Some of the claims brought by Aearo in this suit are Indiana state law claims. While the judges in the Southern District of California could certainly apply Indiana law, the familiarity of this court with applicable Indiana law is a factor to be taken into consideration that weighs at least slightly toward denial of transfer. E J Gallo Winery v. Morand Bros. Beverage Co., 247 F. Supp. 2d 973, 976 (N.D. Ill. 2002) (denying motion to transfer action arising under Illinois law to a California district court).
Bacou argues that ease of access to sources of proof counsels in favor of transfer, but such an argument ignores the plaintiffs' activities in inventing and licensing their patent or creating their trademark. Certainly the evidence surrounding the activities which led to the production and distribution of Bacou's SmartFit is located in California, but the evidence of Aearo's patent and the production and distribution of the UltraFit is in Indiana. In addition, to the extent that the parties' evidence consists of records and documents, their location is a small matter "in these more modern days of photocopying, faxing and other electronic means of retrieval." Undertoe Software, Inc. v. Advanced Tracking Technologies, Inc., 2002 WL 31890062, *1 (N.D. Ill. Dec. 30, 2002).
Finally, Bacou notes that, based on data from the web site of the federal judiciary, cases filed in the Southern District of Indiana have a longer median time from filing to disposition than do cases filed in the Southern District of California, and there are more civil cases filed per judge in the Southern District of Indiana than in the Southern District of California. However, the data also indicate that, due to criminal cases, the total number of actions filed per judge is significantly higher in the Southern District of California than in the Southern District of Indiana. In fact, according to the statistics cited by Bacou in their brief, the Southern District of California has the second most actions filed per judge of any district in the United States, though the total filings per judgeship in this district is also among the highest in the nation. In any event, this court is confident that this action will proceed in the Southern District of Indiana with due speed.
The decision on this motion has been delayed at the request of the parties.
III. Conclusion
Bacou has not demonstrated that the Southern District of California is "clearly more convenient" than the Southern District of Indiana. Coffey, 796 F.2d at 220. Accordingly, defendant's motion to transfer is hereby denied.
So ordered.