Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

BorgWarner, Inc. v. Hilite Int’l., Inc., No. 07 C 3339, 2008 WL 3849908 (N.D. Ill. Aug. 14, 2008) (Zagel, J.)

Judge Zagel denied defendant Hilite’s 23 U.S.C. §1404(a) motion to transfer. Plaintiff BorgWarner filed this patent infringement suit over variable camshaft timing (“VCT”) in June 2007. Hilite answered and counterclaimed in March 2008. Five days after answering, Hilite filed a suit in the District of Delaware alleging that BorgWarner infringed Hilite’s VCT patent. Hilite reasoned that its VCT case was related to a prior Delaware patent case filed by BorgWarner on the patent currently at issue in the Northern District, and, therefore, by the transitive property this suit and BorgWarner’s closed Delaware case were related.

While the Seventh Circuit does not strictly follow the first-to-file rule, its use was warranted in this case. BorgWarner’s choice of forum deserved some deference. And the Northern District, while equivalent to Delaware in terms of time to trial, was significantly faster for average disposition without court actions – 6.2 months in the Northern District to 12.5 months in Delaware. Convenience factors were neutral, and therefore weighed in favor of keeping the case in the Northern District.

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Hope Family Vineyards Pty, Ltd., v. Hope Wine, LLC, No. 08 C 3246, Slip Op. (N.D. Ill. Jul. 11, 2008) (Lindberg, J.).

Judge Lindberg granted defendant’s §1404(a) motion to transfer to the Central District of California. Plaintiff was an Australian entity with its principal place of business in Australia. Its only direct connection to the Northern District was that its exclusive U.S. distributor was headquartered in Illinois. The distributor, however, was not a party to the suit. The Court therefore, gave plaintiff’s choice of forum minimal deference.

Defendant was a California entity with its principal place of business in the Central District of California. While defendant sold its wine on the internet, 90% of its sales were in California, and only 5% over the internet. Of that 5%, only four sales were to Illinois, including one to plaintiff’s distributor. Based on these facts, the alleged harm and confusion occurred in California, not Illinois.

Finally, transfer would increase the ease of access to the evidence because defendant, its documents and witnesses were all in California, and plaintiff would have to travel from Australia regardless of which district court heard the case.

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Judge Conlon denied defendants' (collectively “Wound Care Plus”) motion to dismiss plaintiff Wound Care Education Institute's (“WCEI”) trademark and copyright infringement case for lack of personal jurisdiction, improper venue and forum non conveniens. WCEI provided wound treatment education to health professionals across the country using copyrighted materials, and is largely based in the Northern District. It alleged that Wound Care Plus attended three of its seminars and then began running competing seminars, including at least one in Chicago, using course materials that were substantially similar to or exact copies of WCEI's copyrighted course materials. Wound Care Plus also operated a website which allowed its customers to register online for the Wound Care Plus seminars.

Personal Jurisdiction

The Court held that it had specific personal jurisdiction over Wound Care Plus, a New York resident, because it advertised its Chicago seminars in national publications seeking to register Illinois customers. Additionally, Wound Care Plus's website created jurisdiction because it was an active, commercial website that allowed Wound Care Plus's customers to register for, among others, its Chicago seminar online.

Venue

Venue was proper in the Northern District, despite the fact that Wound Care Plus did not reside in Illinois because a substantial part of the events giving rise to WCEI's claims, the Chicago seminars, occurred within the Northern District.

Forum Non Conveniens

The Court noted that the motion should have been brought pursuant to 28 U.S.C. Section 1404(a), instead of the common law forum non conveniens.  Forum non conveniens was inapplicable to this case because the alternate forum was not abroad or a state court. 

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Palantir.net, Inc. v. Palantir Techs., Inc., No. 07 C 4271, Min. Order (N.D. Ill. Nov. 27, 2007) (Guzman, J.).*

Judge Guzman granted defendant's motion to transfer this Lanham Act case to the Northern District of California ("N.D. Cal.") pursuant to 28 U.S.C. Section 1404(a).  Defendant's principal place of business was in the N.D. Cal. and defendant had an earlier-filed case against plaintiff pending in the N.D. Cal.  The Court, therefore, held that the convenience of the parties and the witnesses, as well as the interests of justice, were best served by transferring the case to the N.D. Cal.

*  Click here for a copy of the case.

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Jewel Am., Inc. v. Combine Int’l., Inc., No. 07 C 3596, 2007 WL 4300589 (N.D. Ill. Nov. 30, 2007) (Guzman, J.).

Judge Guzman denied defendants’ 28 U.S.C. § 1404(a) motion to transfer this copyright case to the Eastern District of Michigan. Plaintiff argued that its choice of forum should be given deference because its relevant subsidiary was an Illinois entity with its place of business and all of its operations in Illinois. But the Court looked to the residence of the named plaintiff, not the plaintiff’s subsidiary. Because the named plaintiff was a New York entity, plaintiff’s chosen forum was not given deference. Further, the situs of material events was Michigan. Defendants were Michigan entities and the alleged infringement and related planning occurred in Michigan. The Court discounted the location of documents because, “[i]n this age of faxing, scanning and overnight courier services, however, the location of documentary evidence is largely irrelevant.”

No party identified a third party witness that would be required to testify. And convenience of the parties tipped slightly to plaintiff whose subsidiary’s business would be disrupted if its main employees and key witnesses had to travel from Illinois to Michigan for court proceedings and depositions. Based upon these factors, the Court held that defendants had not shown that the Eastern District of Michigan was clearly more convenient and denied the motion.

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Abbott Labs. V. Church & Dwight, Inc., No. 07 C 3428, 2007 WL 3120007 (N.D. Ill. Oct. 23, 2007) (Kennelly, J.).

Judge Kennelly denied defendant Church & Dwight’s (“C&D”) 28 U.S.C. Section 1404(a) motion to transfer this patent case to the District of New Jersey, where a related case between the parties was pending, and granted C&D’s motion to dismiss a claim that the New Jersey Court previously dismissed for lack of standing. In New Jersey, C&D sued plaintiff Abbott Laboratories (“Abbott”) alleging infringement of patents covering lateral flow immunology devices, and pregnancy and ovulation testing methods. Abbott counterclaimed alleging infringement of three patents, including U.S. Patent No. 6,534,320 (the “’320 patent”). The New Jersey Court ultimately dismissed Abbott’s counterclaim, holding that Abbott was a nonexclusive licensee of the ‘320 patent and, therefore, lacked standing. The New Jersey Court also held that standing could not be cured by Abbott’s effort to involuntarily join its licensor Inverness pursuant to Fed. R. Civ. P. 19.  Based upon the New Jersey Court’s ruling, this Court held that issue preclusion prevented Abbott from re-litigating its standing to sue. Unless Abbott revised its license agreement with Inverness, giving Abbott additional rights, the New Jersey Court’s ruling was preclusive. The Court, therefore, dismissed Abbott’s ‘320 patent infringement claim.

The Court denied C&D’s motion to transfer the case to New Jersey. The Court gave Abbott’s choice of forum deference. And the Court gave little weight to the parties’ ongoing New Jersey patent suit because the New Jersey Court dismissed Abbott’s counterclaims before making any substantive rulings. The New Jersey Court, therefore, would not have been in a better position to decide any issues in the case. 

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Timebase Pty Ltd. v. Thomson Corp., No. 07 C 460, 2007 WL 772946 (N.D. Ill. Mar. 9, 2007) (Lindberg, Sen. J.).

Judge Lindberg transferred this patent case to the District of Minnesota because all of the relevant documents and witnesses reside within that district or its subpoena power, while the dispute has no apparent unique connection to Illinois.  The software at issue, Westlaw's PastStat Locator, was researched, designed and developed in Minnesota and the related documents were still there.  Additionally, although the PastStat Locator can be accessed in any state, including Illinois, the hardware and software necessary to operate it are located in Minnesota.  Finally, 24 of the 25 witnesses identified as related to defendant are within the D. Minn. or its subpoena power.  And plaintiff's witnesses are in Australia, so whether they flew to Illinois or Minnesota was a minor difference to them at most.

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