vPersonalize Inc v. Magnetize Consultants Ltd

• Court: District Court, W.D. Washington
• Decided: September 12, 2019
• Docket: 2:18-cv-01836
• Status: Unknown

Opinion

1 HONORABLE BARBARA J. ROTHSTEIN 2 3 4

5 6 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WASHINGTON 7 AT SEATTLE vPersonalize Inc., 8 Case No.: 2:18-CV-01836-BJR Plaintiff, 9 ORDER DENYING MOTION TO v. TRANSFER VENUE 10 Magnetize Consultants Ltd. (dba Kit Builder), 11 Defendant. 12

13 Defendant Magnetize Consultants Ltd. (Magnetize) filed a motion to transfer this case to 14 what it claims is the “more appropriate and convenient” venue of the Eastern District of 15 Pennsylvania. The choice of the Eastern District of Pennsylvania appears to be based solely on the 16 fact that non-party Inksewn USA Corp., referred to in the First Amended Complaint as an entity 17 through which Magnetize allegedly misappropriated trade secrets, has its place of business in 18 Philadelphia, Pennsylvania. Magnetize’s place of business is the United Kingdom, and it claims 19 that none of its employees, agents, or operations are located in the United States (or the State of 20 Washington). Plaintiff vPersonalize, Inc. is a California company with its principal place of 21 business in San Francisco. 22 Defendant claims that vPersonalize chose to file its complaint in the Western District of 23 Washington: (1) for the convenience of Plaintiff’s counsel of record (whose law firm—which also 24 1 handles patent prosecution for vPersonalize before the USPTO—is in Seattle); and (2) for the 2 inconvenience of Defendant. 3 28 U.S.C. § 404(a), on which Magnetize’s motion is based, provides “For the convenience 4 of the parties and witnesses, in the interest of justice, a district court may transfer any civil action

5 to any other district or division where it might have been brought.” The statute has two 6 requirements on its face: (1) that the transferee district is one in which the action ‘might have been 7 brought,’ and (2) that the transfer be for the convenience of parties and witnesses, and in the 8 interest of justice. There appears to be no disagreement as to the first requirement; vPersonalize 9 has alleged that Magnetize, among other things, “improperly obtained access to vPersonalize’s 10 proprietary product, patterns, software code and technical documents through at least one third- 11 party, Inksewn USA Corp,” which is based in Philadelphia, Pennsylvania. Am. Compl. ¶ 26. 12 Thus the only issue for the Court to resolve is whether a transfer would be “for the 13 convenience of parties and witnesses, and in the interest of justice.” The Ninth Circuit has outlined 14 factors to weigh in such consideration:

15 (1) the location where the relevant agreements were negotiated and executed, 16 (2) the state that is most familiar with the governing law, 17 (3) the plaintiff's choice of forum, 18 (4) the respective parties' contacts with the forum, 19 (5) the contacts relating to the plaintiff's cause of action in the chosen forum, 20 (6) the differences in the costs of litigation in the two forums, 21 (7) the availability of compulsory process to compel attendance of unwilling non-party 22 witnesses, 23 (8) the ease of access to sources of proof, and

24 1 (9) the relevant public policy of the forum state, if any. 2 See Jones v. GNC Franchising, Inc., 211 F.3d 495, 498–99 (9th Cir. 2000). Without going through 3 each of these factors in detail, it appears that the most salient issues are: Plaintiff’s counsel is 4 located Seattle, but otherwise neither party has more significant contact with the Western District

5 of Washington than the Eastern District of Pennsylvania; some of the witnesses pertaining to 6 vPersonalize’s trade secrets claims may reside in Philadelphia; Philadelphia is closer than Seattle 7 to Magnetize’s place of business in the U.K.; Pennsylvania’s trade secrets law, unlike 8 Washington’s version of the same law, allows recovery of expenses to the prevailing party, which 9 Magnetize claims will be substantial given the amount of travel that will be involved in the 10 litigation. 11 Of course, the most relevant factor for the Court’s consideration is that Plaintiff has chosen 12 to file suit in this district. As vPersonalize emphasizes, a plaintiff is allowed deference in its choice 13 of forum, and no one denies that this Court has jurisdiction over this matter, and that venue in this 14 district is proper, if not optimal for Defendant. Plaintiff notes non-party Inksewn, on which

15 Magnetize relies in support of its motion, also does business in Washington, and that Magnetize 16 has failed to demonstrate that in any event, Inksewn witnesses would be “unwilling” to appear in 17 this district if called. Finally much, if not most, of the transactions involved in the alleged 18 infringements and misappropriations took place, if at all, over the internet, not in any specific 19 physical locale. 20 It is well settled that the courts will not disturb a plaintiff’s original choice of forum “unless 21 the ‘private interest’ and the ‘public interest’ factors strongly favor” dismissal. Tuazon v. R.J. 22 Reynolds Tobacco Co., 433 F.3d 1163, 1180 (9th Cir. 2006). Defendant has failed to identify any 23 public interests unique to Pennsylvania, or that favor Pennsylvania over Washington; its private

24 1 interests include, at most, the convenience of only the Defendant, and perhaps of non-party 2 Inksewn, and arguably even then, not. The convenience to Plaintiff of having its counsel located 3 in the district in which the suit was filed, by contrast, cannot be disputed. 4 Based upon the foregoing analysis, the Court hereby DENIES Magnetize’s Motion to

5 Transfer Venue. 6 Dated this 12th day of September, 2019. 7

8 A 9 Barbara Jacobs Rothstein 10 U.S. District Court Judge

16 17 18 19 20 21 22 23 24 1 CERTIFICATE OF SERVICE 2 I hereby certify that on July 5, 2019 PST, I caused the foregoing [Proposed] Protective Order to be: 3 electronically filed with the Clerk of the Court using the CM/ECF system which will send 4 notification of such filing to the following: Mudit Kakar 5 Boyoon Choi Choi Capital Law, PLLC 6 2101 Fourth Avenue, Suite 1570 Seattle, WA 98121 7 Email: m.kakar@choicapitallaw.com Email: b.choi@choicapitallaw.com 8 Attorneys for Plaintiff

10 By: /s/ Seth A. Watkins Seth A Watkins (D.C. Bar # 467470)* 11 * admitted pro hac vice Watkins Law & Advocacy, PLLC 12 1455 Pennsylvania Avenue NW, Suite 400 Washington, DC 20004 13 (202) 355-9421 Fax: (202) 355-9424 14 Email: watkins@wlapllc.com Attorney for Defendant 15

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