United States District Court, S.D. Indiana, Indianapolis Division
VOXX INTERNATIONAL CORP., and ROSEN ENTERTAINMENT SYSTEMS, LLP, Plaintiffs,
JOHNSON SAFETY, INC., Defendant.
ORDER ON DEFENDANT'S MOTION TO DISMISS AND MOTION
J. McKINNEY, JUDGE
matter comes before the Court on Defendant's, Johnson
Safety, Inc. (“JSI”), combined Motion to Dismiss
and Motion to Transfer. Dkt. No. 31. For the reasons set
forth below, the Court GRANTS JSI's Motion to Transfer to
the Central District of California. In light of this transfer
of venue, the Court reserves judgment on JSI's Motion to
Dismiss for the Central District of California.
Voxx International Corporation (“Voxx”), entered
into a Patent License Agreement (the “Agreement”)
with Plaintiff Rosen Entertainment Systems, LLP
(“Rosen”) on September 1, 2003, for the use of
certain patents involving automotive overhead entertainment
display systems, including U.S. Patent Nos. 6, 124, 902, 6,
157, 418, 6, 115, 086, and 6, 246, 449 (collectively, the
“Rosen Patents”). See generally, Dkt.
No. 32, Ex. A.
1, 2016, Voxx filed its Complaint against JSI, claiming that
JSI infringed upon Voxx's patents, U.S. Patent Nos. 7,
653, 345, 8, 255, 958, 9, 114, 745, and 9, 348, 368. Dkt. No.
1. On August 23, 2016, Voxx filed its First Amended
Complaint, which removed Voxx's claims in relation to
U.S. Patent No. 7, 653, 345,  added infringement claims in
relation the Rosen Patents, and named Rosen as a plaintiff to
this action. Dkt. No. 24.
filed its Motion to Dismiss and Motion to Transfer on
September 20, 2016. Dkt. Nos. 31 & 32. JSI seeks
dismissal of Voxx's Rosen Patent claims on the grounds
that Voxx lacks standing to bring such claims against
Dkt. No. 32 at 5-17. In response, Voxx asserts that it has
sufficient standing because JSI infringed on Voxx's
exclusive rights under the PLA and because Rosen was properly
joined as a plaintiff. Dkt. No. 45 at 7-19.
also seeks transfer of this action to the Central District of
California under 28 U.S.C. § 1404(a), for the
convenience of parties and witnesses and in the interest of
justice. Dkt. No. 32 at 20-30. Specifically, JSI asserts that
transfer is necessary because (1) none of the parties,
including Voxx, are based in Indiana; (2) the Central
District of California has a greater interest in litigating
this action as the home forum of JSI and Rosen; (3) all
allegations of wrongdoing occurred in the Central District of
California; (4) most of JSI's anticipated witnesses and
exhibits are in the Central District of California; and (5)
the Central District of California could administer this
action more efficiently. Id.
JSI claims that such a transfer is necessary because this
action is very similar to another pending patent infringement
case in the Central District of California, Cause No.
5:14-cv-02591-ODW (DTB), involving the same parties and
issues (the “California Litigation”).
Id. at 21-22, 29. In the California Litigation, JSI
filed suit against Voxx, as well as two of Voxx's
subsidiaries, for infringement on five of JSI's patents.
Id. at 21-22. Voxx then filed a counterclaim against
JSI, asserting that JSI infringed on five of its patents, for
a total of ten patents-in-suit in the California Litigation.
Id. at 22. One of the patents-in-suit in the
California Litigation, U.S. Patent No. 7, 245, 274, is a
parent-patent to U.S. Patent No. 9, 114, 745, which is at
issue in this action. Id. at 29. The California
Litigation has been pending for over two years, has already
conducted extensive discovery, and has undergone claims
construction proceedings for its patents-in-suit.
Id. at 21-22.
response to JSI's Motion to Transfer, Voxx argues that,
although it is a Delaware corporation with is principal place
of business located in Florida, it has a substantial presence
in the State of Indiana and that its choice of forum is
entitled to significant weight. Dkt. No. 45 at 24-25 (citing
Nagle v. Hartford Life & Accident Ins. Co., No.
15-cv-6073, 2015 WL 9268420 (N.D. Ill.Dec. 21, 2015); In
re Nat'l Presto Indus., Inc., 347 F.3d 662, 663-64
(7th Cir. 2003); Vandeveld v. Christopher, 877
F.Supp. 1160, 1167 (N.D. Ill. 1995)). Voxx further asserts
that JSI has not demonstrated that the Central District of
California clearly presents a more convenient forum for this
action. Id. at 20-27.
28 U.S.C. § 1404(a), a district court may transfer an
action to any other district or division where the action
could have been brought or to which the parties consent
“[f]or the convenience of the parties and witnesses
[and] in the interest of justice.” Such a transfer
under 28 U.S.C. § 1404(a) is appropriate only
“when the moving party establishes that (1) venue is
proper in the transferor district; (2) venue and jurisdiction
are proper in the transferee district; and (3) the transfer
will serve the convenience of the parties, the convenience of
the witnesses, and the interest of justice.”
Comm'ning Agents, Inc. v. Long, 187 F.Supp.3d
980, 2016 WL 2866053, at *3 (S.D. Ind. 2016) (citing RCA
Trademark Mgmt. S.A.S. v. VOXX Int'l Corp., No.
1:14-CV-88-TWP, 2014 WL 3818289, at *2 (S.D. Ind. Aug. 4,
2014); State Farm Mut. Auto. Ins. Co. v. Bussell,
939 F.Supp. 646, 651 (S.D. Ind. 1996)). The interest of
justice element “relates to the efficient
administration of the court system rather than the merits of
the underlying dispute.” Long, 2016 WL 2866053
at *7. Factors considered in determining what is in the
interest of justice include (1) “the likely speed to
trial in each forum”; (2) “each forum's
familiarity with the relevant law”; and (3) “the
relationship of each forum to the controversy, particularly
concerning whether jurors have a financial interest in the
case, and whether jurors in one forum are better equipped to
apply community standards.” Id.
party seeking a transfer of venue “has the burden to
establish, by reference to particular circumstances, that the
transferee forum is clearly more convenient that the
transferor forum.” Id. at *4. Because
“[t]he weighing of factors for and against transfer
necessarily involves a large degree of subtlety and latitude,
” a trial judge has broad discretion when determining
whether to transfer venue. Coffey v. Van Dorn Iron
Works, 796 F.2d 217, 219 (7th Cir. 1986). See
also, Cote v. Wadel, 796 F.2d 981, 985 (7th
asserts that the Central District of California presents the
most convenient forum for the parties and witnesses and best
serves the interest of justice for this action. Dkt. No. 32
at 20-30. The Court agrees with JSI that transfer to Central
District of California is ...