Forcillo v. LeMond Fitness, Inc.

220 F.R.D. 550, 71 U.S.P.Q. 2d (BNA) 1528, 2004 U.S. Dist. LEXIS 7548, 2004 WL 882044
CourtDistrict Court, S.D. Illinois
DecidedApril 9, 2004
DocketNo. 03-CV-0565-MJR
StatusPublished
Cited by5 cases

This text of 220 F.R.D. 550 (Forcillo v. LeMond Fitness, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Forcillo v. LeMond Fitness, Inc., 220 F.R.D. 550, 71 U.S.P.Q. 2d (BNA) 1528, 2004 U.S. Dist. LEXIS 7548, 2004 WL 882044 (S.D. Ill. 2004).

Opinion

MEMORANDUM and ORDER

REAGAN, District Judge.

Plaintiff John Forcillo filed suit against Defendants LeMond Fitness, Inc. (LeMond) and Brunswick Corporation, Inc. (Brunswick) for patent infringement pursuant to 35 U.S.C. § 1, et seq. (Doc. 1). Subject matter jurisdiction lies under 28 U.S.C. § 1338(a). Defendants now move this Court to transfer this action to the United States District Court for the Western District of Washington pursuant to 28 U.S.C. § 1404(a) (Doc. 9). Forcillo responded to the transfer motion (Doc. 11) and Defendants replied to Forcillo’s response (Doc. 12). So the motion is fully briefed.

Forcillo is a citizen of Canada. LeMond as a corporation is a citizen of both Washington (its principal place of business) and Delaware (its state of incorporation), and resides in the Western District of Washington. Brunswick, also a corporation, is a citizen of both Illinois (its principal place of business) and Delaware (its state of incorporation), and resides in the Northern District of Illinois.

Forcillo is the patentee and owner of U.S. Patent 6,612,970, entitled “Adjustable Stationary Exercise Bicycle” issued on September 2, 2003. In his complaint, Forcillo alleges that LeMond and Brunswick are threatening to infringe and are infringing his patent by “making, using, offering to sell and selling infringing stationary exercise bicycles in the United States” marked under the trademark LeMond RevMaster (Doe. 1). Forcillo further alleges that such acts of infringement by LeMond and Brunswick have taken place and are taking place in the Southern District of Illinois and elsewhere.

LeMond obtained its rights to its accused device, the RevMaster, from the bankruptcy estate of the now defunct StairMaster, which was located in the Western District of Washington. Once LeMond obtained the rights to the RevMaster from StairMaster, it devel[552]*552oped, manufactured, marketed and started the selling the device. LeMond then entered into a distribution agreement with Life Fitness, a division of Brunswick, to distribute the RevMaster exercise bicycle in the United States. Life Fitness’ principal place of business is in Franklin Park, Illinois, which is located in the Northern District of Illinois. LeMond is indemnifying Brunswick in this action and is thus in charge of the defense.

Under Section 1404(a), “for the convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district court or division where it might have been brought.” 28 U.S.C. § 1404(a). A transfer is proper if: (1) venue is proper in both the transferee and transferor courts; (2) it is for the convenience of the parties or witnesses; and (3) it is in the interest of justice. Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th Cir.1986). District Courts have broad discretion to grant or deny motions to transfer, and the burden is on the moving party to establish that the transfer is warranted. Heller Financial, Inc. v. Midwhey Powder Co., Inc., 883 F.2d 1286, 1293 (7th Cir.1989).

The parties do not dispute that venue is proper in both the Southern District of Illinois and the Western District of Washington. Thus, the Court turns to the second prong of its analysis, if transfer will be for the convenience of the parties or witnesses. Factors to be considered by the Court in assessing the convenience aspect of a § 1404(a) transfer include: (1) the plaintiffs choice of forum, (2) the location of the parties and witnesses, (3) the ease of access to sources of proof, and (4) the situs of material events. Schwarz v. National Van Lines, Inc., - F.Supp.2d -, 2004 WL 432483, at *4 (N.D.Ill.2004). See also ISI International, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548, 553 (7th Cir.2001); Tice v. American Airlines, 162 F.3d 966 (7th Cir.1998), cert. denied, 527 U.S. 1036, 119 S.Ct. 2395, 144 L.Ed.2d 795 (1999); General Portland Cement Co. v. Perry, 204 F.2d 316, 318-19 (7th Cir.1953).

A plaintiffs choice of forum is generally given substantial weight under Section 1404(a). Vandeveld v. Christoph, 877 F.Supp. 1160, 1167 (N.D.Ill.1995). However, where the plaintiffs choice is not its resident forum, the chosen forum is entitled to less deference. Bryant v. ITT Corp., 48 F.Supp.2d 829, 832 (N.D.Ill.1999). Although Forcillo choose to file suit in this District, his choice of forum has diminished significance because Forcillo, as a resident of Canada, is not a resident of the Southern District of Illinois. Furthermore, the Court notes that neither defendant is a resident of this District. Brunswick is the closest party to this District, but is a resident of the Northern District of Illinois, and as only a distributor of the alleged device, Brunswick’s role is not as significant as that of its co-defendant LeMond.

In an attempt to establish that preference should be given to Forcillo’s choice of forum, Forcillo argues that despite being a resident of Canada, this District is his home forum. He claims he has designated a resident of Edwardsville, Illinois (which is located in this District) as his registered agent for his patent and trademark applications, that he is affiliated with Millenium-Fit, a company located in this District, and that all his records for the prosecution and issue of Patent 6,612,970 are also located in Edwardsville. However, the Court notes that Millenium-Fit is not named as a party in this action and did not even exist when Forcillo filed this action. Furthermore, no statute required Forcillo to designate a representative in the United States; 35 U.S.C. § 293 states that a nonresident patentee may designate an agent for service (emp.added). Additionally, Forcillo argues that as his attorney has offices in this District, that also should be given weight in deferring to his choice of forum. However, that is of no consequence in this Court’s analysis. See Koos, Inc. v. Performance Industries, Inc., 747 F.Supp. 487, 490 (N.D.Ill.1990)(“the convenience of counsel is not considered in the transfer decision”).

Therefore, the Court finds nothing in the record to lead it to conclude other than For-cillo is not a resident of this district and thus his choice of this District as his forum is simply another factor in the mix and is not given any additional weight. See Plotkin v. [553]*553IP Axess, Inc., 168 F.Supp.2d 899, 902 (N.D.Ill.2001); H.B. Sherman Mfg. Co. v. Rain Bird Nat’l Sales Corp., 979 F.Supp. 627, 630 (N.D.Ill.1997).

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220 F.R.D. 550, 71 U.S.P.Q. 2d (BNA) 1528, 2004 U.S. Dist. LEXIS 7548, 2004 WL 882044, Counsel Stack Legal Research, https://law.counselstack.com/opinion/forcillo-v-lemond-fitness-inc-ilsd-2004.