United States District Court, W.D. Texas, Austin Division
PITMAN UNITED STATES DISTRICT JUDGE.
the Court is Defendant SAN Engineering's
(“SAN”) Motion to Dismiss, (Dkt. 33). Plaintiff
Primacy Engineering, Inc. (“Primacy”) filed a
response, (Dkt. 43), and SAN replied, (Dkt. 48). After the
briefing was complete, the parties participated in a phone
conference to offer additional argument on the motion.
(See Dkts. 49, 50). Having considered the
parties' briefs and arguments, the record, and the
relevant law, the Court finds that SAN's motion should be
a trade secrets case involving a mix of American and South
Korean companies. (Compl., Dkt. 1, at 1). Primacy, a
company that specializes in marine industrial equipment for
military use, (id. at 4), alleges as follows. Before
2017, a company called GMB (USA), Inc.
(“GMB-USA”) had for years supplied a South Korean
military contractor, Hanjin Heavy Industries Corporation
(“Hanjin”), with components to make marine
hovercraft vehicles for the Republic of Korea Navy.
(Id. at 1). In 2017, Primacy bought many of
GMB-USA's assets, which included a trade-secret technical
data package that GMB-USA had created in its work for Hanjin.
(Id. at 1-2).
Chi Won Lee worked for GMB-USA from 2011 until 2015, when he
went to work for SAN, a competitor. (Id. at 2). He
also founded a Korean company called Oceanics, through which
he has disrupted Primacy's relationships with its
suppliers. (Id. at 9). Two years later, SAN outbid
Primacy for Hanjin's contract, which it could not have
done so without learning Primacy's trade secrets from
Lee. (Id. at 2, 10). All of this conduct-Lee's
defection for SAN, his alleged trade-secrets disclosure to
SAN, and SAN's use of that information to bid for the
Hanjin contract-took place in South Korea. (Id. at
Primacy sued Lee and SAN in this Court, along with an
Austin-based company called JK Oceanics that allegedly used
Primacy's trade secrets to help SAN perform its Hanjin
contract. (Id. at 11). SAN needs parts from the
United States but requires a cooperative U.S. partner to
secure those parts and ship them to Korea. (Id.).
Enter JK Oceanics, operated by another allegedly disgruntled
formed GMB-USA employee named Ji Min Justin Kwon
(“Kwon”). (Id.). Primacy alleges that
SAN is sending Kwon misappropriated trade-secret information
so that he will know what parts to acquire for it.
(Id. at 11-12).
remedy the misappropriation of its trade secrets, Primacy
sued SAN in Korean court. (Mot., Dkt. 33, at 2). Primacy then
also sued SAN, Lee, and JK Oceanics in this Court. (Compl.,
Dkt. 1, at 1). SAN now asks the Court to dismiss all of
Primacy's claims against it for lack of personal
jurisdiction and on the ground of forum non
conveniens. (Mot., Dkt. 33, at 3, 9). Because the Court
finds that dismissal is appropriate on the ground of
forum non conveniens, it does not decide whether it
has personal jurisdiction over SAN.
doctrine of forum non conveniens “proceeds
from the premise that in n rare circumstances, federal courts
can relinquish their jurisdiction in favor of another
forum.” DTEX, LLC v. BBVA Bancomer, S.A., 508
F.3d 785, 794 (5th Cir. 2007) (cleaned up). Whether to do so
involves two steps. First, the court must determine whether
there exists an adequate alternative forum. Piper
Aircraft Co. v. Reyno, 454 U.S. 235, 255 n.22 (1981). If
so, then the court must determine which forum is best suited
to the litigation according to “private and public
interest factors.” DTEX, 508 F.3d at 794
(citation and quotation marks omitted).
“private interest” factors include:
(i) the relative ease of access to sources of proof; (ii)
availability of compulsory process for attendance of
unwilling, and the cost of obtaining attendance of willing,
witnesses; (iii) possibility of view of the premises, if view
would be appropriate to the action; (iv) all other practical
problems that make trial of a case easy, expeditious and
Moreno v. LG Elecs., USA Inc., 800 F.3d 692, 699
(5th Cir. 2015) (cleaned up). Courts also look at the
enforceability of a judgment obtained in the alternate forum
and “whether the plaintiff has sought to vex, harass,
or oppress the defendant.” Id. (cleaned up).
“public interest” factors include:
(i) the administrative difficulties flowing from court
congestion; (ii) the local interest in having localized
controversies resolved at home; (iii) the interest in having
a trial of a diversity case in a forum that is familiar with
the law that must govern the action; (iv) the avoidance of
unnecessary problems in conflicts of law, or in application