Fasoli (a/k/a Jaz) v. Voltage Pictures, LLC, 14 C 6206, Slip Op. (N.D. Ill. Dec. 22, 2014) (Gettleman, J.).

Judge Gettleman granted plaintiffs’ motion to transfer this copyright case involving plaintiffs’ copyrighted mural “Castillo” to the C.D. California. Of particular note, the Court held as follows:

  • The Court did not afford plaintiffs’ choice of

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

Simonian v. Maybelline LLC, No. 10 C 1615, Slip Op. (N.D. Ill. Mar. 14, 2011) (Kendall, J.)
Judge Kendall denied defendant Maybelline’s motion to dismiss, granted its motion to transfer and denied as moot its motion to stay pending the Federal Circuits standing decision in Stauffer, in this false patent marking case. The Court held, pre-BP Lubricant, that Fed. R. Civ. P. 9(b) pleading applied to the intent element, but because the intent went to state of mind the fraud could be alleged generally, inconsistent with BP Lubricants. Because plaintiff Simonian had generally pled intent, the complaint was sufficient.
The Court then transferred the case to the Southern District of New York, Maybelline’s home district. As a relator plaintiff, Simonian’s choice of forum was given little deference. And the situs of material facts was where marking decisions were made – New York – not where marked products were bought – Illinois. The Court, therefore, transferred the case.

Continue Reading Situs of Material Events in False Marking Cases is Where Marking Occurred

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

MPH Techs. Oy v. Zyxel Coms. Corp., No. 10 C 684, Slip Op. (N.D. Ill. Jul. 16, 2010) (Darrah, J.).
Judge Darrah granted defendants’ 28 U.S.C. § 1404(a) motion to transfer this patent case to the Northern District of California. Venue was proper in both districts. Plaintiff’s choice of forum was only given slight weight because the Northern District of Illinois was not plaintiff’s home forum and had only a weak connection to the case. The convenience of witnesses weighted in favor of transfer. All of defendants’ employee witnesses were in the Northern District of California and, more importantly, half of the non-party witnesses were in the Northern District of California. Three of plaintiff’s four witnesses were in its home country – Finland. Access to proofs is given little deference in light of wide-spread use of digital discovery, but still leaned slightly in favor of transfer because defendants’ documents were largely in California.
The situs of material events was neutral because it is largely irrelevant in patent cases. The convenience of parties weighed in favor of transfer. Plaintiff’s inconvenience in traveling from Finland to Chicago or to Northern California was not significantly different.
The interests of justice weighed slightly in favor of transfer because defendants’ employees had a greater interest in the case than Illinois citizens did. Otherwise, the Courts were similarly capable of handling patent cases and had comparable times to resolution, with only a few months difference in each category.

Continue Reading Patent Case Transferred to District With Witnesses and Documents

Kolcraft Enter., Inc. v. Chicco USA, Inc., No. 09 C 339, Slip Op. (N.D. Ill. Oct. 23, 2009) (Norgle, J.)
Judge Norgle denied defendant Chicco’s § 1404(a) motion to transfer this patent case to the Eastern District of Pennsylvania, where Chicco’s principle place of business is located. Neither court was more suited for the case in terms of speed or familiarity with the law. The Court also noted that the location of documents was neutral based upon electronic document exchange. The convenience of the parties was also neutral because one party would be inconvenienced by the decision either way. Additionally, the situs of material events was irrelevant as in most patent cases because the comparison of an accused product to a claim does not revolve around any location.
As to non-party witnesses, one inventor was within the Northern District and the other was outside the subpoena power of both districts. And patent prosecution counsel also resided within the Northern District. Additionally, plaintiff agreed to depose all U.S. parties in their home districts, further diminishing that factor. Finally, the Court held that plaintiff’s choice of forum deserved significant weight. The Court, therefore, denied Chicco’s motion to transfer.

Continue Reading Court Keeps Case, Deferring to Plaintiff’s Chosen Forum

Bajer Design & Marketing, Inc. v. Whitney Design,, Inc., No. 09 C 1815, Slip Op. (N.D. Ill. Jun. 26, 2009) (Zagel, J.).
Judge Zagel denied defendant Whitney Design’s (“Whitney”) Section 1404(a) motion to transfer plaintiff Bajer Design & Marketing’s (“Bajer”) patent infringement case to the Eastern District of Missouri, where Whitney filed a declaratory judgment case after being served with Bajer’s complaint. Although Bajer was not a Chicago-based company, its choice of forum still deserved significant deference because the alleged injury occurred in Chicago. Bajer filed the complaint after identifying the accused infringement at the International Housewares Show in Chicago. Whitney argued that the accused infringement occurred in the St. Louis area where Whitney researched and designed the accused clothes hampers. But the Court held that the point of sale, Chicago, was the situs of the injury.
Whitney also argued that convenience of the parties weighed in favor of transfer because all of its documents and people were in the St. Louis area. But the Court held convenience weighed against transfer because the parties could transfer documents electronically and, in any event, the documents would have to be sent to the parties’ counsel across the midwest. And the convenience of third parties also weighed against transfer. The only third party, the inventor, lived in Iowa almost equidistant from Chicago and St. Louis.
Finally, the interests of justice did not weigh in favor of transfer. Whitney argued that time to trial in the Eastern District of Missouri was significantly faster than in the Northern District of Illinois. But the Court held that those statistics were irrelevant because they were for all cases, not split up by case types.
The Court denied Bajer’s preliminary injunction motion seeking to enjoin the Eastern District of Missouri case. Because that court stayed its case pending the Northern District of Illinois’s decision on the transfer motion, there was no need to enjoin a stayed case.

Continue Reading Point of Sale was Situs of Injury in Motion to Transfer Analysis

Personified, LLC v. Sales Consultants of Cary, LLC, No. 08 C 3123, 2008 WL 3200842 (N.D. Ill. Aug. 8, 2008) (Der-Yeghiayan, J.)
Judge Der-Yeghiayan granted declaratory judgment (“DJ”) defendant Sales Consultants of Cary’s (“SCC”) Fed. R. Civ. P. 12(b)(6) motion to dismiss DJ plaintiff Personified’s trademark case in favor of SCC’s later-filed District of North Carolina action. Shortly after its parent registered the trademark “Personified,” Personified began using the name and allegedly received a cease and desist letter from SCC who offered staffing services using the name “Personified.” SCC’s letter allegedly demanded that Personified immediately change its name and pay SCC damages. In response, Personified filed this suit seeking a declaratory judgment that it had not violated trademark laws or engaged in unfair competition. SCC countersued in the District of North Carolina several days later.
The Court had federal question jurisdiction because of the Lanham Act issues. Personified was the first to file, but the Court noted that the Seventh Circuit did not strictly follow the first-to-file rule. And the Court exercised its “wide discretion,” declining to exercise jurisdiction over the declaratory action. SCC was the natural plaintiff. Instead of filing suit after receiving the cease and desist letter, Personified could have gone to SCC to resolve the dispute. Additionally, Personified was already preparing a motion to transfer the North Carolina action to the Northern District. The Court also denied a motion to stay its ruling pending a decision by the District of North Carolina. If the North Carolina Court transferred the case to the Northern District, Personified would not face substantial hardship by having to replead its DJ claim.

Continue Reading No Declaratory Judgment Jurisdiction Because Defendant is Natural Plaintiff

Kammin v. Smartpros, Ltd., No. 07 C 2665, 2007 WL 3046128 (N.D. Ill. Oct. 9, 2007) (Guzman, J.)
Judge Guzman transferred this copyright case to the Southern District of New York pursuant to 28 U.S.C. Section 1404. While plaintiff’s choice of forum is usually given significant weight, no party was a resident of the Northern District – both parties were New York residents. Furthermore, the non-party witnesses were closer to New York. And New York had a significant interest in deciding a case between its citizens regarding a dispute arising within New York.

Continue Reading Case Transferred for Lack of Illinois Ties