Red Pine Point LLC v. Amazon.Com, Inc., Slip Op. (N.D. Ill. Jul 16, 2014) (Holderman, J.).

Judge Holderman granted defendants’ joint motion to transfer these consolidated patent cases to the N.D. California, pursuant to 28 U.S.C. § 1404(a).  First, the generic reasons plaintiff Red Pine Point cited in support of keeping the case in

Addiction & Detoxification Institute, LLC v. Rapid Drug Detox Center, No. 11 C 7992, Slip Op. (N.D. Ill. Mar. 11, 2013) (Coleman, J.).

Judge Coleman granted defendant Rapid Detox’s 28 U.S.C. § 1404(a) motion to transfer this patent infringement case to the Eastern District of Michigan.  While Rapid Detox had a website and had

Heathcote Holdings Corp. v. L’Oreal USA, Inc., No. 11 C 1921, Slip Op. (N.D. Ill. Aug. 9, 2011) (Lefkow, J.).
Judge Lefkow granted defendant L’Oreal’s motion to transfer plaintiff’s false patent marking case involving boxes of hair dye to the S.D. New York, L’Oreal’s home district. Generally, plaintiff’s Heathcote’s choice of forum would be given deference, but in false marking cases the United States is the real party in interest. So, the qui tam plaintiff’s chosen forum is given little deference. The situs of material events was New York, where the accused packaging was designed and where the relevant employees reside. L’Oreal’s witnesses and documents were more likely in New York than Illinois.
The convenience of the parties also weighed in favor of New York. Heathcote did not identify any employees that would have to travel to New York for the case, whereas L’Oreal’s relevant employees were in New York. Furthermore, Heathcote’s only business was litigation and therefore the travel would not distract Heathcote from its business.
The interests of justice weighed in favor of transfer. There were already four false marking cases against L’Oreal or its subsidiaries that had been transferred to the S.D. New York. And the potential consolidation of those cases would benefit the parties and judicial economy.

Continue Reading False Marking Case Transferred to District Where Defendant Already Faces Four False Marking Cases

Rude d/b/a ABT Sys., LLC v. Lux Prods. Corp., No. 09 C 6957, Slip Op. (N.D. Ill. Jan. 12, 2011) (Norgle, J.).
Judge Norgle granted defendant Emerson Climate Technologies’ (“ECT”) motion to sever plaintiffs’ claims against ECT for improper joinder, and granted ECT’s motion to transfer the case to the Eastern District of Missouri in this patent dispute regarding an air distribution fan recycling control. ECT sought dismissal because each defendant’s accused system, generally a thermostat, was a different product and, therefore, there was no common transaction or occurrence as required for Fed. R. Civ. P. 20 joinder. The Court agreed, holding that sales of similar products by unrelated defendants did not meet Rule 20(a)’s common transaction or occurrence requirement, noting agreement from several other judges in the Northern District. Furthermore, allegations that unrelated defendants design and sell similar products does not satisfy Rule 20(a). Similarly, the fact that the defendants’ defenses and counterclaims were “nearly identical” was irrelevant to the joinder analysis. Having held that ECT was misjoined, the Court declined to consolidate the two cases for pretrial proceedings pursuant to Fed. R. Civ. P. 42(a). And the Court severed ECT’s case pursuant to Fed. R. Civ. P. 21.
The Court then transferred the severed case to the Eastern District of Missouri, where ECT was located. Plaintiffs’ choice of forum was given less than normal deference because plaintiffs were not Illinois residents. The situs of material events was irrelevant, as in many patent cases.
The ease of access to the proofs weighed strongly in favor of transfer. ECT’s relevant entities were headquartered in St. Louis, within the Eastern District of Missouri. ECT identified at least five key party witnesses within the Eastern District of Missouri. And that district could more easily compel non-party witnesses also likely to be resident in St. Louis. Additionally, while ECT would gain significant convenience from transfer, plaintiffs would be inconvenienced either way, as they were not residents of either contemplated district. So, relative convenience of the parties weighed in favor of transfer. And the speed of the districts to trial slightly favored transfer.

Continue Reading Similar Products Sold by Unrelated Defendants Not Warrant Joinder in Patent Cases

ThermaPure, Inc. v. Temp-Air, Inc., No. 10 C 4724, Slip Op. (N.D. Ill. Dec. 22, 2010) (Lefkow, J.).
Judge Lefkow granted defendants’ RxHeat and Cambridge Engineering’s (collectively “Cambridge”) motion to dismiss or sever and Temp-Air’s motion to sever and transfer in this patent litigation involving the use of heat to remediate structures removing mold, bacteria, insects or rodents, among other things. Neither Cambridge nor Temp-Air were related to any of the other defendants. As such, their sales of different products could not satisfy the Fed. R. Civ. P. 20(a) joinder requirement that the claims arise out of the same transaction or occurrence. It was not enough that plaintiff accused that each defendant infringed the same patent. Furthermore, plaintiff never identified which specific products it accused of infringement, even during briefing of the instant motion. So, there was no way for the Court to determine how similar the accused products actually were. The Court, therefore severed Cambridge’s and Temp-Air’s cases.
The Court then transferred Temp-Air’s case. ThermaPure’s choice of forum was given little deference because it was neither party’s home district. The situs of material events was Minnesota, where ThermaPure is headquartered and conducts most of its business. The fact that ThermaPure sold accused products to Illinois customers was unavailing. Additionally, most of the documents were located in Minnesota. Temp-Air only identified party witnesses, which are given less consideration, that were located in Minnesota. But ThermaPure did not identify any Illinois witnesses.
Neither party argued that either district would resolve the claims faster, and ThermaPure’s citation to the Northern District’s Local Patent Rules for reducing costs and expenses of the litigation was not relevant. The Court, therefore, transferred Temp-Air’s case to Minnesota. And having transferred the case as to Temp-Air, the Court stayed ThermaPure’s case against Temp-Air’s alleged Illinois customer Gierstsen Illinois. That case could be reopened, as necessary, in the Northern District after Temp-Air’s case was resolved, as it should significantly narrow, if not resolve, the claims against Gierstsen Illinois.

Continue Reading Unrelated Companies’ Sales of Similar Products Do Not Warrant Joinder in Patent Cases

Simonian v. Monster Cable Prods., No. 10 C 1269, Slip Op. (N.D. Ill. Nov. 22, 2010) (Bucklo, J.).
Judge Bucklo granted defendant Monster Cable Products’ (“Monster”) § 1404 motion to transfer this false patent marking case. Citing the Court’s decision transferring another of plaintiff Simonian’s false marking cases to Iowa in Simonian v. Pella. As in Pella, the qui tam plaintiff’s chosen forum was given little deference. And California was the situs of the events because that is where Monster designed the packaging at issue and made the alleged marking decisions. Also, all of Monster’s witnesses were located in California. The Court, therefore, transferred the case to the Northern District of California.

Continue Reading False Marking Plaintiffs’ Choice of Forum Given Little Deference

Zojo Sol’ns., Inc. v. Leviton Mfg. Co., No. 10 C 881, Slip Op. (N.D. Ill. Oct. 20, 2010) (Grady, Sen. J.).
Judge Grady granted defendant Leviton’s 28 U.S.C. § 1404(a) motion to transfer this false patent marking case to the Eastern District of New York. Plaintiff Zojo’s choice of forum was given little deference because Zojo was a qui tam plaintiff. The location of Leviton’s witnesses and documents in New York combined with the fact that Leviton’s New York headquarters was the situs for the alleged false marking, favored transfer. That was true even though the Eastern District of New York was a slightly faster court. The most interesting aspect of the decision, however, was a statement that the Local Patent Rules did not apply to false patent marking cases because patent infringement was not alleged. Presumably, the analysis is different if the alleged false marking involves a marked product that allegedly does not fall within the claims of the marked patent.

Continue Reading Local Patent Rules Do Not Apply to False Marking with Expired Patents