1 2
3 4 5 6 7 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 8 AT SEATTLE
9 10 NATIONAL PRODUCTS, INC., CASE NO. C15-2024JLR 11 Plaintiff, ORDER TRANSFERRING CASE v. TO THE CENTRAL DISTRICT 12 OF CALIFORNIA WIRELESS ACCESSORY 13 SOLUTIONS, LLC, d/b/a IBOLT – WIRELESS ACCESSORY 14 SOLUTIONS, LLC, 15 Defendant. 16
I. INTRODUCTION 17 Before the court are the parties’ responses to the court’s order to show cause why 18 the court should not transfer Plaintiff National Products, Inc.’s (“NPI”) non-patent claims 19 against Defendant Wireless Accessory Solutions, LLC, d/b/a iBolt – Wireless Accessory 20 Solutions, LLC (“iBolt”) to the Central District of California pursuant to 28 U.S.C. 21 § 1404(a). (iBolt Resp. (Dkt. # 28); NPI Resp. (Dkt. ## 31 (redacted), 33 (sealed).) On 22 1 March 23, 2018, the court determined, pursuant to 28 U.S.C. §§ 1400(b) and 1406(a), 2 that venue of NPI’s patent claim against iBolt was improper in this district and the claim
3 should be transferred to the Central District of California. (Order (Dkt. # 27) at 7-17, 19.) 4 In the same order, the court ordered the parties to show cause why the court should not 5 also transfer NPI’s non-patent claims to the Central District of California pursuant to 28 6 U.S.C. § 1404(a). (Order at 17-19.) The court deferred transferring NPI’s patent claim 7 until after it reviewed NPI’s and iBolt’s responses to the court’s order to show cause. (Id. 8 at 18-19.) Having reviewed the parties’ responses, the court now DIRECTS the Clerk to
9 transfer the entire case—both NPI’s patent and non-patent claims against iBolt—to the 10 Central District of California for the reasons stated herein. 11 II. BACKGROUND 12 iBolt is a limited liability corporation organized and existing under the laws of the 13 State of Utah. (15-19841 2d Brassard Decl. (Dkt. # 112) ¶ 3.) iBolt’s principal place of
14 business is Arcadia, California. (Id.) iBolt has no property, infrastructure, inventory, or 15 other physical presence in the Western District of Washington. (Id. ¶ 4.) iBolt also has 16 no employees in the Western District of Washington and provides no localized customer 17 support or targeted marketing efforts here, nor does it otherwise interact in a targeted way 18 with existing or potential customers in the Western District of Washington. (Id. ¶¶ 5-6.)
19 iBolt makes no representations that it has any presence in the Western District of 20
1 Previously, this action was consolidated with several other actions for purposes of 21 conducting discovery and claims construction only under National Products, Inc. v. Arkon Resources, Inc., No. C15-1984JLR (W.D. Wash.). Accordingly, the court prefaces any 22 references to the record from the consolidated case with “15-1984.” 1 Washington. (Id. ¶ 5.) Any records, documents, or information related to the subject 2 matter of this litigation, which are in iBolt’s possession, custody, or control are located at
3 iBolt’s headquarters in Arcadia, California. (Id. ¶ 7.) 4 On December 29, 2015, NPR filed a complaint against iBolt in the Western 5 District of Washington alleging patent and trademark claims, along with a variety of state 6 law claims. (See Compl. (Dkt. # 1).) On September 19, 2017, the court held a claims 7 construction hearing (see 15-1984 9/19/17 Min. Entry (Dkt. # 95)) and subsequently 8 issued a claims construction order (15-1984 CC Order (Dkt. # 96)).
9 On November 30, 2017, iBolt filed a motion to dismiss or transfer NPI’s patent 10 claim based on improper venue under 28 U.S.C. §§ 1400(b) and 1406(a). (See 15-1984 11 MTD (Dkt. # 111).) On March 23, 2018, the court granted iBolt’s motion and 12 determined that NPI’s patent claim should be transferred to the Central District of 13 California. (Order at 7-17, 19.) The court, however, deferred transferring NPI’s patent
14 claim until after the court reviewed the parties’ responses to the court’s order to show 15 cause why it should not also transfer NPI’s non-patent claims pursuant to 28 U.S.C. 16 § 1404(a). (Order at 17-19.) The court now considers whether to transfer NPI’s non- 17 patent claims. 18 III. ANALYSIS
19 A. Standards for Considering a Transfer of Venue Under 28 U.S.C. § 1404(a) 20 “For the convenience of parties and witnesses, in the interest of justice, a district 21 court may transfer any civil action to any other district or division where it might have 22 been brought.” 28 U.S.C. § 1404(a). The threshold question is whether the plaintiff 1 could have originally brought the action in the forum proposed for transfer. See Hoffman 2 v. Blaski, 363 U.S. 335, 344 (1960). Once this question is resolved, district courts have
3 discretion to transfer venue on a case-by-case basis. Stewart Org., Inc. v. Ricoh Corp., 4 487 U.S. 22, 29 (1988). 5 In determining whether to transfer an action, the district court must weigh a 6 number of different “case-specific factors.” Id. These factors include both public and 7 private factors. Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 (1981); see Decker Coal 8 Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986). “The district
9 court . . . must weigh in the balance . . . those public-interest factors of systemic integrity 10 and fairness that, in addition to private concerns, come under the heading of ‘the interest 11 of justice.’” Stewart Org., 487 U.S. at 30 (quoting 28 U.S.C. § 1404(a)). On the other 12 hand, private factors generally concern the relative impact of the venue on the private 13 parties participating in the litigation, the parties’ access to evidence, the availability of
14 compulsory process, “and all other practical problems that make trial of a case easy, 15 expeditious and inexpensive.” Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). 16 These private, convenience factors may include: 17 (1) the location where the relevant agreements were negotiated and executed, (2) the state that is most familiar with the governing law, (3) the plaintiff's 18 choice of forum, (4) the respective parties’ contacts with the forum, (5) the contacts relating to the plaintiff’s cause of action in the chosen forum, (6) the 19 differences in the costs of litigation in the two forums, (7) the availability of compulsory process to compel attendance of unwilling non-party witnesses, 20 and (8) the ease of access to sources of proof.
21 Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99 (9th Cir. 2000) (footnotes 22 omitted). The court now considers the relevant public and private factors. 1 B. Public Factors and the Interest of Justice 2 The interest of justice is the most important consideration in weighing whether to
3 transfer a case. See Nelson v. Master Lease Corp., 759 F. Supp. 1397, 1402 (D. Minn. 4 1991) (citing Medtronic, Inc., v. Am. Optical Corp., 337 F. Supp. 490, 495-97 (D. 5 Minn.1971)). “Consideration of the interest of justice . . . ‘may be determinative to a 6 particular transfer motion, even if the convenience of the parties and witnesses might call 7 for a different result.’” Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 8 1565 (Fed. Cir. 1997) (quoting Coffey v. Van Dorn Iron Works, 796 F.2d 217, 220-21
9 (7th Cir. 1986)). Here the court identifies two relevant public factors: (1) judicial 10 efficiency, see id., and (2) the “local interest in having localized controversies decided at 11 home” and deciding cases “where the claim arose,” Decker Coal, 805 F.2d at 843. 12 Judicial Efficiency 13 The public interest factor of judicial efficiency includes “trying related litigation
14 together.” Avritt v. Reliastar Life Ins. Co., No. C06-1435RSM, 2007 WL 666606, at *3 15 (W.D. Wash. Feb. 27, 2007). “[T]he court should give great weight” to the “desire to 16 avoid multiplicity of litigation from a single transaction.” Gerin v. Aegon USA, Inc., 17 No. C06-5407 SBA, 2007 WL 1033472, at *6 (N.D. Cal. Apr. 4, 2007) (citing Cont’l 18 Grain Co. v. The FBL-585, 364 U.S. 19, 26 (1960)). Indeed, “[c]oncerns over judicial
19 efficiency are paramount” in weighing whether to transfer a case. Starbucks Corp. v. 20 Wellshire Farms, Inc., No. C13-1170-MJP, 2013 WL 6729606, at *5 (W.D. Wash. Dec. 21 18, 2013). 22 // 1 In its order granting iBolt’s venue motion, the court noted that NPI acknowledged 2 that “many of the same products implicated under NPI’s [n]on-[p]atent counts are also
3 accused of infringing the asserted patent.” (Order at 17 (citing 15-1984 Resp. at 10 and 4 15-1984 FAC (Dkt. # 47) ¶¶ 21, 30).) The court therefore concluded that “[i]t would 5 seem absurd . . . to sever the patent infringement claim and transfer it . . . while retaining 6 the [other] counts” and would likely lead to “intolerable judicial inefficiency” and 7 “possible inconsistent results.” (Id. (quoting Lighting Sys. v. Int’l Merch. Assoc., Inc., 8 464 F. Supp. 601, 606 (W.D. Pa. 1979)).) Now, however, when faced with the possibility
9 of transfer, NPI argues that its state and federal trademark claims “are legally and 10 factually independent” from its patent claim and transferring the non-patent claims 11 “would not serve the cause of judicial efficiency.” (NPI Resp. at 1.) This self-serving 12 turnabout undermines NPI’s credibility. 13 Further, a review of NPI’s first amended complaint persuades the court that the
14 claims—as NPI first asserted—overlap factually. (See generally 15-1984 FAC.) The 15 court has already determined that venue of NPI’s patent claim is improper in this district 16 and that the claim must be transferred to the Central District of California. (See Order at 17 7-17, 19.) Further, there is no dispute that there is personal jurisdiction over iBolt in the 18 Central District of California and that venue for all of NPI’s claims—both patent and
19 non-patent—is proper there. Thus, the only way to avoid the “intolerable judicial 20 inefficiency” of holding two trials over related claims is to transfer all of NPI’s claims to 21 the Central District of California. The court therefore concludes that the public interest 22 1 factor of judicial efficiency weighs heavily in support of transferring NPI’s non-patent 2 claims to the Central District of California.
3 The Local Interest in Having Localized Controversies Decided at Home and Deciding Cases Where the Claim Arose 4 Public policy factors include the “local interest in having localized controversies 5 decided at home” and deciding cases “where the claim arose.” Decker Coal, 805 F.2d at 6 843. Additionally, states have an interest in providing a forum for their injured residents. 7 Hansen v. Combined Transp., Inc., No. C13-129RSL, 2013 WL 5969863, at *4 (W.D. 8 Wash. Nov. 7, 2013). In this case, despite the fact that NPI is a Washington company 9 (15-1984 FAC ¶ 1), and despite NPI’s assertion that its “trademark claims arise out of 10 [iBolt’s] conduct in . . . Washington” (NPI Resp. at 5), the court is not convinced that 11 Washington is “where the claim arose,” see Decker Coal, 805 F.2d at 843. Indeed, 12 iBolt’s principal place of business is in the Central District of California and all records, 13 documents, or information relating to the subject matter of this litigation, which are in 14 iBolt’s possession, custody, or control, are located at iBolt’s headquarters in California. 15 (15-1984 2d Brassard Decl. ¶¶ 3, 7.) Although NPI alleges that iBolt “committed tortious 16 actions . . . in this judicial district and the State of Washington,” NPI also alleges that 17 iBolt “distributes its infringing products throughout the United States.” (15-1984 FAC 18 ¶ 7; see also id. ¶ 30 (alleging that iBolt “sells” and “also distributes the Bizmount 19 products . . . throughout the United States, including this district and the State of 20 Washington”).) The allegedly infringing products at issue in this case originated with 21 iBolt in California, and were distributed from there throughout the United States. (See id. 22 1 ¶¶ 7, 30.) Based on these facts, the court concludes that the claims at issue arose in 2 California, not Washington. Thus, California has an interest in resolving this controversy
3 “where it arose” and at “home.” See Decker Coal, 805 F.2d at 843. Nevertheless, NPI 4 felt the effects of iBolt’s allegedly wrongful conduct in Washington, and thus, 5 Washington also retains an interest in providing a forum for its injured residents, such as 6 NPI. See Hansen, 2013 WL 5969863, at *4. The court, therefore, concludes that this 7 factor is neutral. 8 C. Private or Convenience Factors
9 In addition to the relevant public factors, the court also considers the private 10 factors listed in Jones, which are based predominantly on the convenience of the parties 11 and witnesses. See Jones, 211 F.3d at 498-99. 12 The State that is Most Familiar with the Governing Law 13 The first relevant Jones factor is the state that is most familiar with the governing
14 law.2 See id. at 498. NPI asserts two of its non-patent claims under federal law: (1) 15 federal trade dress infringement under 15 U.S.C. § 1114, and (2) federal unfair 16 competition and false designation of origin under 15 U.S.C. § 1125(a). (15-1984 FAC 17 ¶¶ 29-49.) Both federal courts in the Western District of Washington and the Central 18 District of California will have equal familiarity with the law governing these federal
19 claims. However, NPI asserts four claims under Washington law: (1) common law trade 20 dress infringement, (2) unfair business practices under Washington’s Consumer 21
2 This is not a contract case and so the first Jones factor—the location where the relevant 22 agreements were negotiated and executed—is not relevant here. (See NPI Resp. at 6, n.3.) 1 Protection Act (“CPA”), RCW ch. 19.86, (3) common law unfair competition, and (4) 2 common law unjust enrichment. (15-1984 FAC ¶¶ 50-62.) The court recognizes that
3 “federal courts are equally equipped to apply distant state laws when the law is not 4 complex.” Jinni Tech Ltd. v. Red.com, Inc., No. C17-0217JLR, 2017 WL 4758761, at 5 *11 (W.D. Wash. Oct. 20, 2017), reconsideration denied, No. 17-0217JLR, 2018 WL 6 581071 (W.D. Wash. Jan. 25, 2018) (concluding that counts alleged under Washington’s 7 CPA and common law were not complex) (citing Barnstormers, Inc. v. Wing Walkers, 8 LLC, No. 09cv2367 BEN (RBB), 2010 WL 2754249, at *3 (S.D. Cal. July 9, 2010)
9 (stating that a federal court in Texas would be equally adept at applying California law 10 related to unfair competition claims)). NPI’s state law claims are not complex; neither is 11 the state law governing those claims unsettled. Accordingly, the court concludes that 12 both district courts are equally equipped to handle this case, and this factor is therefore 13 neutral. See Jinni Tech, 2017 WL 4758761, at *11; see also Inlandboatmen’s Union of
14 the Pac. v. Foss Mar. Co., No. C14-1403JLR, 2015 WL 64933, at *3 (W.D. Wash. Jan. 15 5, 2015). 16 NPI’s Choice of Forum 17 The next Jones factor is the plaintiff’s choice of forum. See Jones, 211 F.3d at 18 498. NPI chose this forum, and NPI is incorporated in Washington and has its principal
19 place of business here. (15-1984 FAC ¶ 1.) A plaintiff’s choice of forum “receives 20 substantial deference” and so there must be a “strong showing” to upset this factor. See 21 Jinni Tech, 2017 WL 4758761, at *11 (citing Decker Coal, 805 F.2d at 843. The court 22 concludes that this factor weighs against transfer. 1 The Parties’ Respective Contacts with the Forum and Contacts Related to the Plaintiff’s Cause of Action in the Chosen Forum 2 The court considers the next two Jones factors together—the parties’ respective 3 contacts with the forum and the parties’ contacts related to the plaintiff’s cause of action 4 in the chosen forum—because the factors overlap. See Jones, 211 F.3d at 498. The first 5 of these factors focuses on the parties’ contacts with either forum. Jinni Tech, 2017 WL 6 4758761, at *11. The parties’ respective contacts with each forum are evenly divided. 7 As noted above, iBolt is a limited liability company organized under the laws of Utah 8 with its principal place of business is the Central District of California. (See 15-1984 2d 9 Brassard Decl. ¶ 3.) Any records, documents or information relating to the subject matter 10 of this litigation, which are in iBolt’s possession, custody, or control are located at iBolt’s 11 headquarters in Arcadia, California. (Id. ¶ 7.) iBolt maintains that it has no presence in 12 Washington State—no property, infrastructure, inventory, other physical presence, or 13 employees. (Id. ¶¶ 4-6.) On the other hand, NPI is a Washington corporation with is 14 headquarters are in Seattle. (15-1984 FAC ¶ 1.) NPI’s business activities originate from 15 Seattle, including its product design, manufacture, marketing, and sales, as well as the 16 development, prosecution, and promotion of the asserted trademark. (NPI Resp. at 5.) 17 Thus, iBolt’s contacts are almost exclusively in the Central District of California and 18 NPI’s are almost exclusively in the Western District of Washington. 19 Nevertheless, NPI maintains that all of its “contacts relating to the trademark 20 claims” are within this forum. (NPI Resp. at 5.) NPI argues that its trademark claims 21 “arise out of iBolt’s conduct in the State of Washington.” (NPI Resp. at 5 (citing 15- 22 1 1984 FAC ¶¶ 7, 30, 56).) NPI’s first amended complaint indeed recites that iBolt “has 2 engaged in business activities in . . . the State of Washington, and has committed the
3 tortious acts complained of in . . . the State of Washington . . . .” (FAC ¶ 7.) However, 4 the first amended complaint also states that iBolt “distributes its infringing products 5 throughout the United States . . . .” (Id.; see also id. ¶ 30 (“[iBolt] sells the Bizmount 6 products from its website and from the Amazon.com online retail platform to consumers 7 throughout the United States . . . .”).) Thus, NPI alleges that the wrongful conduct at 8 issue here occurred throughout the United States and not just in Washington. Further,
9 because iBolt’s home state is California and its home district is the Central District of 10 California, its alleged wrongful conduct logically occurred there as well. Thus, because 11 the parties’ contacts with the two forums and NPI’s contacts related to its non-patent 12 claims are evenly split between the two districts, the court concludes that both of these 13 factors are neutral.
14 The Differences in the Costs of Litigation in the Two Forums and Ease of Access to Sources of Proof 15 The relative cost analysis focuses primarily on the venue’s proximity to witnesses. 16 See Silver Valley Partners, LLC. v. De Motte, No. C05-5590RBL, 2006 WL 2711764, at 17 *6 (W.D. Wash. Sept. 21, 2006). When considering the difference in cost between two 18 forums, courts disfavor transferring venue when “transfer would merely shift rather than 19 eliminate” costs and inconvenience. Decker Coal, 805 F.2d at 843. The ease of access to 20 sources of proof focuses on the location of witnesses and documentary evidence. See 21 Jinni Tech, 2018 WL 4758761, at *12. However, “the ability to transfer documents 22 1 electronically with relative ease and little expense may lessen the importance of this 2 factor with respect to documentary evidence.” Id. Thus, the focus of both of these
3 factors is primarily on the witnesses. See id. 4 iBolt’s witnesses and documentary evidence are located exclusively in California 5 (15-1984 2d Brassard Decl. ¶ 7), and NPI’s “evidence and potential party witnesses . . . 6 are located in Washington” (NPI Resp. at 6 (citing McMichael Decl. ¶ 5, Ex. C)). Thus, 7 NPI argues that differences in the costs of litigation and the ease of access to sources of 8 proof “are, at worst, neutral and do not support transfer.” (Id.)
9 The court, however, evaluates these factors differently. As discussed above, NPI’s 10 patent claim and NPI’s remaining federal trademark and state law claims overlap 11 factually. (See Order at 17 (citing 15-1984 Resp. at 10 and 15-1984 FAC (Dkt. # 47) 12 ¶¶ 21, 30)); see also supra § III.B.1. NPI’s patent claim, however, must be transferred to 13 the Central District of California because venue is improper here. (See Order at 7-17.)
14 Thus, unless NPI’s non-patent claims are transferred, the parties will need to depose 15 many witnesses twice in separate litigation in California and Washington and also may 16 need to call many of the same witnesses at two trials. The costs involved in litigating two 17 factually related cases in two different jurisdictions and the inconvenience to witnesses in 18 having to be deposed and potentially to give testimony in two different cases in two
19 separate jurisdictions significantly outweighs any inconvenience caused by transfer of the 20 non-patent claims. Indeed, many of NPI’s witnesses will already have to travel to 21 California and the parties will have to access sources of proof in Washington to address 22 NPI’s patent claim in California. Thus, there is little, if any, added inconvenience to 1 witnesses or difficulty in accessing sources of proof if NPI’s non-patent claims are 2 transferred there as well. The court concludes that these factors weigh significantly in
3 favor of transfer. 4 The Availability of Compulsory Process 5 The last Jones factor is the availability of compulsory process. Jones, 211 F.3d at 6 499. NPI argues that at least two non-party witnesses reside in Washington and thus 7 could not be compelled to attend trial in the Central District of California. (NPI Resp. at 8 5-6.) This factor, however, looks only to the availability of compulsory process to
9 compel unwilling non-party witnesses to attend trial. See id.; see also ACTV8 LLC v. 10 Media Gen. Inc., No. CV114961GAFMANX, 2011 WL 13220728, at *6 (C.D. Cal. July 11 13, 2011). NPI presents no evidence that the two non-party witnesses it cites, who reside 12 in this district, would be unwilling to travel to the Central District of California to testify 13 at trial. (See generally Dkt.) This factor is either neutral or given little weight where
14 there is no evidence that the witnesses at issue would be unwilling to appear in the 15 transferee court. See id. (citing Selfhelpworks.com, Inc. v. 1021018 Alberta Ltd., No. 16 10-172, 2010 WL 5514690, at *3 n.1 (S.D. Cal. Dec. 23, 2010)); see also Duha v. 17 Agrium, Inc., 448 F.3d 867, 877 (6th Cir. 2006) (“When no witness’[s] unwillingness has 18 been alleged or shown, a district court should not attach much weight to the compulsory
19 process factor.”). 20 D. Balancing the Public Interest and Private Factors 21 Balancing the above public and private factors, the court concludes that transfer of 22 the non-patent claims to the Central District of California is appropriate. The only 1 private or convenience factor that weighs against transfer is NPI’s choice of forum in the 2 Western District of Washington. See supra § III.C.2. On the other hand, both the
3 differences in the costs of litigation in the two forums and the ease of access to sources of 4 proof weigh in favor of transfer. See supra § III.C.4. All of the remaining convenience 5 factors are neutral. See supra §§ III.C.1, 3, 5. Of the relevant public interest factors, the 6 “local interest in having localized controversies decided at home” and in deciding cases 7 “where the claim arose” is neutral. See supra § III.B.2. However, the public interest in 8 judicial efficiency weighs heavily in favor of transfer to the Central District of California.
9 See supra § III.B.1. As discussed above, concerns over judicial efficiency are 10 “paramount,” Starbucks Corp., 2013 WL 6729606, at *5, and should be “given great 11 weight,” Gerin, 2007 WL 1033472, at *6. On balance, the court finds that transfer of 12 NPI’s non-patent claims to the Central District of California is warranted and outweighs 13 NPI’s choice of forum in this district.
14 IV. CONCLUSION 15 On March 23, 2018, the court granted iBolt’s motion to transfer NPI’s patent 16 claim to the Central District of California pursuant to 28 U.S.C. §§ 1400(b) and 1406(a). 17 (See generally Order.) The court, however, deferred the transfer of NPI’s patent claim 18 until it could evaluate the parties’ responses to its order to show cause why the court
19 should not also transfer NPI’s non-patent claims pursuant to 28 U.S.C. § 1404(a). As 20 described above, the court has reviewed the parties’ responses and evaluated the 21 appropriate factors in considering the transfer of NPI’s non-patent claims to the Central 22 District of California. The court concludes that the relevant factors weigh in favor of 1 transfer of NPI’s non-patent claims. Thus, the court concludes that it should transfer all 2 of NPI’s claims against iBolt—both the patent and non-patent claims—to the Central
3 District of California. Accordingly, the court DIRECTS the Clerk to transfer this case to 4 the Central District of California. 5 Dated this 9th day of April, 2018. 6 A 7 8 JAMES L. ROBART United States District Judge 9 10 11 12 13 14 15 16 17 18
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