Case 2:11-cv-01112-DN Document Filed 11/28/11 Page 1 of of Page ID #153 Case 3:11-cv-00603-DRH -PMF Document 31 1 Filed 12/05/11 Page 1 7 7

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF ILLINOIS

THE SOLLAMI COMPANY, Plaintiff, v. NOVATEK, INC., Defendant. No. 11-0603-DRH

MEMORANDUM and ORDER HERNDON, Chief Judge: I. Introduction and Background Pending before the Court is defendants October 4, 2011 motion to transfer venue (Doc. 14). Specifically, defendant moves to transfer this case to the District Court of Utah pursuant to 28 U.S.C. 1404(a). Plaintiff opposes the motion arguing that Novatek failed to show that the District of Utah is clearly more convenient (Doc. 23). Based on the following, the Court finds that transfer is warranted under 28 U.S.C. 1404(a). On July 13, 2011, The Sollami Company (Sollami) filed a one-count complaint against against Novatek, Inc. (Novatek) for patent infringement of its patent entitled Bit Holders and Bit Blocks for Road Milling, Mining and Trenching

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Equipment U.S. Patent No. 6,371,567 B1 (the 567 Patent) (Doc. 2).1 Sollami alleges that Novatek has infringed the 567 Patent by manufacturing, using and marketing within this district and elsewhere a bit holder (specifically, the Novatek PCD tipped bit/holder and perhaps other models) for road milling, mining and trenching equipment which infringes upon the 567 Patent. (Doc. 2, p. 2 (footnote omitted)). The named inventor of the 567 Patent is Phillip Sollami and the assignee is Sollami. Thereafter, on October 4, 2011, Novatek filed its answer and

counterclaim for declaratory judgment seeking invalidity and/or unenforceability of the 567 Patent and seeking a declaration of non-infringement by Novatek of the 567 Patent (Doc. 13). Prior to Sollami filing this lawsuit, Novatek, on February 16, 2011, filed a declaratory judgment action against Sollami in the District of Utah. See Novatek Inc. v. The Sollami Co., 2:11-cv-00180-TC. Novateks first amended complaint

seeks a declaration of invalidity and/or unforceability of Sollamis patent entitled Bits Assemblies for Road Milling, Mining and Trenching Equipment U.S. Patent No. 7,883,155 (the 155 Patent) and seeking a declaration for non-infringement of the 155 patent. Thereafter, Sollami filed a counterclaim against Novatek alleging infringement of the 155 patent in the District of Utah.

Sollami is an Illinois corporation with offices in Herrin, Illinois. Novatek is a Utah corporation with its principal place of business in Utah. Both parties are engaged in the business of manufacturing and distributing road milling, mining and trenching equipment.

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II. Analysis A motion to transfer is governed by 28 U.S.C. 1404(a). Under this section, a federal district court may for the convenience of the parties and witnesses and in the interest of justice transfer any civil action to any other district or division where it might have been brought. 28 U.S.C. 1404(a); Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th Cir. 1986). A section 1404(a) transfer is appropriate only when (1) venue was proper in the transferor district; (2) venue and jurisdiction would be proper in the transferee district; and (3) the transfer will serve the convenience of the parties and the witnesses as well as the interests of justice. Heller Fin., Inc. v. Midwhey Power Co., Inc., 883 F.2d 1286, 1293 (7th Cir. 1989). The movant has the burden of showing that the transferee forum is clearly more convenient. Coffey, 796 F.2d at 219-20. Courts are given broad discretion to transfer under 1404(a), Piper Aircraft Co. v. Reyno, 454 U.S. 235, 264-65 (1981), and are called upon to adjudicate motions for transfer according to an individualized, case-by-case consideration of the convenience and fairness. Stewart Org. Inc. v. Ricoh Corp., 487 U.S. 22, 29-31 (1988)(quotation omitted). Thus, district courts look at each factor on a case-by-case basis and utilize a broader set of considerations that turn upon the particular facts of the case. Coffey, 796 F.2d at 219. The interests of justice may be determinative in a particular case, even if the parties and witnesses call for a different result. Id. at 220. The parties do not deny that venue is proper here or that the action could have

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been brought in the District of Utah.2 Therefore, the question before the Court is whether transferring this case would increase the convenience of the parties and witnesses and advance the interest of justice. In general, courts should give significant weight to a plaintiff's choice of forum. See Nat'l Presto Indust., Inc., 347 F.3d 662, 664 (7th Cir. 2003); FDIC v. Citizens Bank & Trust Co., 592 F.2d 364, 368 (7th Cir. 1979) ([T]he trial court must give some weight to the plaintiffs choice of forum.). If another site has a stronger connection to the material events or relationship to the suit, less deference is awarded to plaintiffs choice of forum. Chi., Rock Island & Pac. R.R. Co. v. Igoe, 220 F.2d 299, 304 (7th Cir. 1955). Although the sale of infringing products in this judicial district is may be significant, the accused product is allegedly sold nationwide, so the allege infringement is presumably occurring in several fora across the country. Therefore, the connection to this forum is not very strong, and plaintiffs choice of forum should not be accorded significant weight. The same logic applies to the situs of material events prong. The Federal Circuit dictates that the situs of injury is the location, or locations at which the infringing activity directly impacts on the interest of the patentee. Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1158, 1571 (Fed. Cir. 1994). In order to

Venue in patent infringement actions is controlled by 28 U.S.C. 1400(b), which provides that any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has regular and established place of business. 28 U.S.C. 1400(b). As stated previously, Novatek is incorporated in Utah with its principal place of business in Utah. Thus, Novatek resides in Utah pursuant to 28 U.S.C. 1391(b) and (c).

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apply this tests, courts have focused on the location of the allegedly infringing sales, or the alleged infringers place of business. See Berol Corp. v. BIC Corp., 2002 WL 1466829, at * 4 (N.D. Ill. 2002); Ellis Corp. v. Jensen USA, Inc., 2003 WL 22111100 at * 3 (N.D. Ill. 2003). Again, the allegedly infringing sales have occurred across the country, rather than exclusively in the Southern District of Illinois and Novateks principal place of business is in Utah. Accordingly, the situs of material events favors transfer. The ease of access to sources of proof prong and the convenience of the parties are neutral factors. The ease with which documents and records can be transported, particularly in digital form, makes this factor relatively insignificant in the transfer analysis. See Board of Trs., Sheet Metal Workers Natl Pension Fund v. Elite Erectors, Inc., 212 F.3d 1031, 1037 (7th Cir. 2000) (noting that [e]asy air transportation, the rapid transmission of documents, and the abundance of law firms with nationwide practices, make it easy these days for cases to be litigated with little extra burden in any of the major metropolitan areas.). Clearly, these considerations are a wash. However, from a practical point of view, Sollami and its witnesses will have to travel to Utah to litigate the similar case involving a similar patent. Thus, the convenience factor leans slightly towards transfer. There are also public interest factors to take into account when evaluating a motion to transfer. The interest of justice components of the Section 1404(a) analysis concerns the efficient administration of the court system. Coffey, 796 F.2d at 221. Certain public factors that may warrant transfer include: (1) the relation of Page 5 of 7

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the communities to the issue of the litigation and the desirability of resolving controversies in their locale; (2) the courts familiarity with applicable law; and (3) the congestion of the respective court dockets and the prospects for earlier trial. See Coffey, 796 F.2d at 221; While these factors are important, larger principals of judicial economy militate in favor of transferring the case to the District of Utah. Transferring a lawsuit to a venue in which related litigation is pending generally serves the efficient administration of justice. When pending litigation involves the same parties and similar legal, technical and infringement issues, transfer to that venue is logical and favored. As already mentioned, a declaratory judgment action and counterclaim between the two parties involving similar issues with the child patent are pending in the District of Utah. The lawsuit in the District of Utah has been pending since February 2011 and presumably is further along than this case. The Court sees a very strong likelihood of duplicative judicial efforts and potentially contradictory rulings regarding the similar parent/child patents and the terms of these patents if this litigation is permitted to proceed in this forum. Further, it is axiomatic that related suits should be concentrated in the same forum. See Van Dusen v. Barrack, 376 U.S. 612, 644 (1964)(transfer to the district where a related suit is pending is generally accompanied by the full benefits of consolidation and uniformity of result); Coffey, 796 F.2d at 221 (noting that related litigation should be transferred to a forum where consolidation is feasible.). Therefore, principals of judicial economy dictate that this case be transferred to the District of Utah. Page 6 of 7

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III. Conclusion Accordingly, the Court GRANTS the motion to transfer (Doc. 14). Pursuant to 28 U.S.C. 1404(a), the Court TRANSFERS this case to the District Court of Utah. IT IS SO ORDERED. Signed this 28th day of November, 2011.
David R. Herndon 2011.11.28 15:38:27 -06'00'

Chief Judge United States District Court

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