United States District Court, E.D. Texas, Tyler Division
NICOLE MITCHELL, UNITED STATES MAGISTRATE JUDGE
LLC (“MacroPoint” or “Plaintiff”)
asserts infringement of U.S. Patent Nos. 9, 429, 659
(“the ‘659 patent”) and 8, 275, 358
(“the ‘358 patent”). Before the Court is
Ruiz Food Products' (“Ruiz”, “Ruiz
Foods”, or “Defendant”) § 1404 Motion
to Transfer or Alternatively, to Stay Pending Related
Litigation. Doc. No. 13.
Court DENIES Ruiz's Motion to Transfer.
Doc. No. 13. The Court further DENIES as
Moot Ruiz's Request to Stay Pending Related
Litigation. Doc. No. 13.
August 30, 2016, MacroPoint filed the instant suit against
Ruiz for infringement of the ‘659 Patent and the
‘358 Patent. Ruiz filed a Motion to Transfer to the
Northern District of Ohio, or, Alternatively, to Stay Pending
Resolution of Related Litigation. Doc. No. 13.
22, 2017, the Supreme Court decided TC Heartland v. Kraft
Foods. 137 S.Ct. 1514, 1519 (2017). The Court
subsequently ordered the parties to file supplemental
briefing addressing the effect, if any, of the TC
Heartland decision on Ruiz's pending Motion to
Transfer Venue, and any need for jurisdictional discovery.
Doc. No. 50. Before the Court is the fully briefed §
1404 Motion to Transfer Venue and Supplemental Briefing.
Docs. No. 13; 24; 25; 51, 52.
is an Ohio limited liability company with its principal place
of business in Cleveland, Ohio. Doc. No. 1 at 2. Ruiz is a
California corporation with its headquarters in Dinuba,
California. Doc. No. 13 at 3. Ruiz also maintains a facility
in Denison, TX, which is in the Eastern District of Texas.
Id. at 2. FourKites, which sells the allegedly
infringing products to Ruiz, is a Delaware corporation with
its principal place of business in Chicago, Illinois.
Id. at 4.
I. Venue Transfer Under 28 U.S.C. §
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 threshold
question for a motion to transfer venue is whether the
transferee judicial district “would have been a
district in which the claim could have been filed.”
In re Volkswagen AG (Volkswagen I), 371
F.3d 201, 203 (5th Cir. 2004). If this threshold is met, the
court will balance private and public factors relating to the
convenience of transferring venue, and the interests of the
original and transferee venues in hearing the case. See
In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir.
private factors are: (1) the relative ease of access to
sources of proof; (2) the availability of compulsory process
to secure witness attendance; (3) the cost of attendance for
willing witnesses; and (4) all other practical problems that
make trial of a case easy, expeditious, and inexpensive.
Volkswagen I, 371 F.3d at 203. The public factors
are: (1) the administrative difficulties caused by court
congestion; (2) the forum's interest in having localized
interests decided at home; (3) the forum's familiarity
with the law that will govern the case; and (4) the avoidance
of unnecessary problems of conflict of laws of the
application of foreign law. Id.
single factor is dispositive. Id. A case should be
transferred only if the transferee forum is clearly more
convenient than the original forum. In re Volkswagen of
Am., Inc. (Volkswagen II), 545 F.3d 304, 315
(5th Cir. 2008) (en banc).
Transfer Under 28 U.S.C. § 1404
Although Ruiz's original § 1404 Motion to Transfer
requested transfer to the Northern district of Ohio, its
supplemental brief conceded that “TC Heartland
appears to have rendered that district an improper venue. . .
.” Doc. No. 51 at 1. Ruiz modifies its request to
transfer this case to the Eastern District of California.
Id. The Court thus analyzes this modified request.
i.Threshold Factor Because Ruiz is incorporated in
California, this action could have originally been brought in
the Eastern District of California, under the first prong of
the patent venue statute. Thus, the threshold factor for
transfer is satisfied.
Private Interest Factors
Relative Ease of Access to Sources of Proof
first private factor is the relative ease of access to
sources of proof in each district. See In re Volkswagen
of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en
banc). Notwithstanding technological advances in the
transportation of electronic documents, “the Court must
consider the actual location of documents and physical
evidence.” Nobel Biz, Inc. v. Glob. Connect,
LLC, 2013 WL 12171139, at *3 (E.D. Tex. Mar. 28, 2013)
(citing Volkswagen II, 545 F.3d at 316). Moreover,
because this is a patent infringement case, the Court assumes
that most of the relevant proof will come from the accused
infringer. In re Genentech, Inc., 566 F.3d 1338,
1345 (Fed. Cir. 2009) (citation omitted).
states that the Eastern District of California “is the
location of its witnesses, documents, and things.” Doc.
No. 51 at 10. MacroPoint responds that “there are
sources of proof in this judicial district” and that
“[a]t least some responsive information from Defendant