United States District Court, S.D. Texas, Houston Division
MEMORANDUM OPINION AND ORDER
H. MILLER UNITED STATES DISTRICT JUDGE.
before the court is the defendants Adrian Rivera and Adrian
Rivera Maynez Enterprises, Inc.'s (collectively
“ARM”) motion to transfer venue. Dkt. 37. After
considering the complaint, the motion, the response, the
reply, the pending case in the Central District of
California, and the applicable law, the court is of the
opinion that ARM's motion to transfer venue should be
LLC (“Solofill”) and ARM are involved in a
dispute regarding after-market reusable brewing containers
designed to be used with a Keurig coffee maker, known as
“K-cups.” Dkt. 1 at 2. On June 28, 2016, ARM
filed a complaint against Solofill for patent infringement,
alleging that Solofill's reusable brewing containers
infringed two of ARM's patents in United States District
Court for the Central District of California (the
“California litigation”). Dkt. 37, Ex. E
(Rivera v. Solofill, LLC, Case No. 2:16-CV-04706
(C.D. Cal)). On September 6, 2016, Solofill filed a complaint
for trademark infringement, trade dress infringement, and
unfair competition in this court. Dkt. 1. On December 30,
2016, Solofill filed its second amended counterclaims in the
California litigation. Dkt. 37, Ex. A. In those
counterclaims, Solofill alleged that ARM “knocked
off” Solofill's reusable brewing containers and
asked for relief from unfair competition under the Lanham
January 5, 2017, ARM filed a motion to transfer
Solofill's trademark claims from the Southern District of
Texas to the Central District of California. Dkt. 37. ARM
argues that this case should be transferred for the
convenience of the parties and in the interest of justice.
Id. Solofill opposes the transfer. Dkt. 42.
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
district court has broad discretion in deciding whether to
order a transfer.” Caldwell v. Palmetto State Sav.
Bank of S.C., 811 F.2d 916, 919 (5th Cir. 1987). The
moving party bears the burden of showing why the forum should
be changed. Time, Inc. v. Manning, 366 F.2d 690, 698
(5th Cir. 1966). In evaluating a § 1404(a) motion to
transfer, the court examines (1) whether the action
“might have been brought” in the transferee
forum, and (2) whether there is “good cause” for
transferring the action. In re Volkswagen of Am.
Inc., 545 F.3d 304, 312, 315 (5th Cir. 2008).
good cause, the movant must demonstrate that a transfer is
“[f]or the convenience of parties and witnesses, in the
interest of justice.” Id. at 315. In
determining whether transfer is appropriate, the court
considers private and public interest factors. Id.
The private interest factors are: (1) the relative ease of
access to sources of proof; (2) the availability of
compulsory process to secure attendance of witnesses; (3) the
cost of attendance for willing witnesses; and (4) all other
practical problems that make trial of a case easy,
expeditious, and inexpensive. Id. The public
interest factors are: (1) the administrative difficulties
flowing from court congestion; (2) the local interest in
having localized interests decided at home; (3) the
familiarity of the forum with the law that will govern the
case; and (4) the avoidance of unnecessary problems of
conflict of laws or in the application of foreign law.
Id. Although the Supreme Court has given the court
some guidance with regard to the factors it should consider,
none has dispositive weight, and “they are not
necessarily exhaustive or exclusive.” Id.
(citing Gulf Oil Corp. V. Gilbert, 330 U.S. 501,
508, 67 S.Ct. 839 (1947) (articulating the private and public
interest factors to be considered in a motion to transfer
transfer statute, § 1404(a), was designed to save time,
energy, and money in situations where two cases involving the
same issues are simultaneously pending in different district
courts. Cont'l Grain Co. v. Barge FBL-585, 364
U.S. 19, 26, 80 S.Ct. 1470 (1960). “[W]hen the
transferee venue is not clearly more convenient than the
venue chosen by the plaintiff, the plaintiff's choice
should be respected.” In re Volkswagen, 545
F.3d at 315. However, when the movant demonstrates that the
transferee venue is clearly more convenient, “it has
shown good cause and the district court should therefore
grant the transfer.” Id.
motion to transfer venue, ARM argues that having the same
litigation occur in two forums is inefficient and creates the
potential for inconsistent decisions. Dkt. 37. Solofill
responds that the same litigation is not occurring in two
forums, because it did not pursue trademark and trade dress
infringement claims in the California litigation. Dkt. 42.
Further, Solofill opposes the motion to transfer based on
plaintiff's choice of forum being the Southern District
of Texas, a strong local interest in Texas, and the
familiarity of Texas courts applying Texas trademark law.
the court will consider whether the action “might have
been brought” in the Central District of California.
The parties have complete diversity jurisdiction under 28
U.S.C. § 1332, because Solofill is located in Houston,
Texas and ARM is located in Whittier, California and La
Mirada, California. Dkt. 37. Furthermore, Solofill admitted
that venue was proper in the California litigation located in
the Central District of California. Id., Ex. F. The
Court finds that this action could have been brought in the
Central District of California. Therefore, the first step in
the transfer analysis is satisfied.
the case may have been brought in the Central District of
California, the court must also find “good cause”
for transferring the action in order to transfer the case.
In re Volkswagen, 545 F.3d at 315. Therefore, the
court will weigh the public and private factors to determine
whether transfer is warranted for the convenience of the
parties and is in the interest of justice.