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Voxx International Corp. v. Johnson Safety, Inc.

United States District Court, S.D. Indiana, Indianapolis Division

January 17, 2017




         This 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.

         I. BACKGROUND

         Plaintiff 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.

         On July 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, [1] added infringement claims in relation the Rosen Patents, and named Rosen as a plaintiff to this action. Dkt. No. 24.

         JSI 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 JSI.[2] 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.[3] Dkt. No. 45 at 7-19.

         JSI 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.

         Additionally, 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.

         In 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.[4] Id. at 20-27.

         II. STANDARD

         Under 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.

         The 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 Cir. 1986).

         III. ANALYSIS

         JSI 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 ...

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