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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Transfer

Ability to Consolidate Prevents Transfer

Posted in Jurisdiction

CoStar Realty Information, Inc. v. CIVIX-DDI, LLC, No. 12 C 4968, Slip Op. (N.D. Ill. Oct. 18, 2012) (Holderman, C. J.).

Chief Judge Holderman denied patent holder CIVIX-DDI’s motion to transfer this patent dispute to the E.D. Virginia.

Convenience of the Parties

Plaintiff CoStar’s choice of forum was given deference despite not being resident in Illinois because of defendant CIVIX-DDI’s prior and existing litigation involving the same patents in this district.  The likely location of documents in Washington, DC did not weigh in favor of transfer because they would likely be transferred electronically.  The third party witnesses were in or near the E.D. Virginia, weighing in favor of transfer.

Public Interest

Both jurisdictions were familiar with the law.  The E.D. Virginia had a greater interest in the dispute because CoStar was located there.  The ability to try related cases together, however, weighed against transfer.  Balancing the locations, the ability to consolidate outweighed the other factors.

Limited Jurisdictional Discovery Ordered Despite Overbroad Requests

Posted in Jurisdiction

Addition & Detoxification Institute, LLC v. Rapid Drug Detox Center, No. 11 C 7992, Slip Op. (N.D. Ill. Oct. 11, 2012) (Coleman, J.).

Judge Coleman granted in part plaintiff ADI’s motion to compel limited jurisdictional discovery in this patent case.  ADI’s requests were overly broad and the Court accepted defendant’s declarations, but the Court ordered that defendant respond to limited additional interrogatories:

  • Identify customers by race and whether they reside in this district.
  • Provide a general statement of defendant’s worth to demonstrate its ability or lack thereof to litigate in this district.

Transfer Warranted Where All Parties are in Florida

Posted in Jurisdiction

Flava Works, Inc. v. Terry, No. 12 C 1884, Slip Op. (N.D. Ill. Oct. 11, 2012) (Coleman, J.).

Judge Coleman granted defendant’s motion to transfer this copyright and trademark infringement case to the M.D. Florida.  As an initial matter, defendant did not waive the issue of personal jurisdiction because the answer contested it.  While there was at least one witness and some documents in Illinois, defendant, much of plaintiff’s business and many of the documents were in Florida.  The Court, therefore, transferred the case to Florida.

Little Deference for Plaintiff’s Non-Home Forum Clinic

Posted in Jurisdiction

Caldera Pharms. Inc. v. Los Alamos Nat’l Security, LLC, No. 10 C 6347, Slip Op. (N.D. Ill. Jan. 26, 2012) (Bucklo, J.).

Judge Bucklo granted in part defendant Los Alamos National Security’s motion to transfer this dispute involving a patent license agreement to the District of New Mexico.  As an initial matter, the Court held that venue and personal jurisdiction were proper as to all claims and defendants in New Mexico.  Specifically, New Mexico would have personal jurisdiction over UChicago Argonne because the harm of the alleged conspiracy occurred in New Mexico.

The convenience of the parties and witnesses favored New Mexico.  Most defendants were New Mexico residents, only UChicago Argonne was an Illinois resident.  Plaintiff Caldera was also a New Mexico entity.  And because Illinois was not Caldera’s home jurisdiction, its choice of forum was given less deference.  Finally, a significant number of witnesses were located in New Mexico.  The Court, therefore, transferred the case to New Mexico.

Contacts in New York Trumps Plaintiff’s Choice of Forum

Posted in Jurisdiction

SMP Logic Sys., LLC v. Jerome Stevens Pharms., Inc., No. 11 C 5075, Slip Op. (N.D. Ill. Jan. 26, 2012) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan transferred this patent case involving pharmaceutical methods to the Eastern District of New York, for the following reasons:

  • While the Court gave plaintiff SMP’s choice of forum deference, less is given when, as here, plaintiff’s counsel were the only link to Chicago.
  • Defendant’s headquarters, its manufacturing facilities and its distributor were all located in or near the Eastern District of New York.
  • The interests of justice were served by transfer because New York had closer ties to the case.

Joinder Based Upon Unrelated Products of Competitors is Improper

Posted in Local Rules

Fellowes, Inc. v. ACCO Brands Corp., No. 10 C 7587 & 11 C 4229, Slip Op. (N.D. Ill. Nov. 10, 2011) (Leinenweber, J.).

Judge Leinenweber granted the Royal defendants’ motion to transfer the claims against them to the Northern District of Ohio, and consolidated the remaining claims against defendant ACCO, in this patent dispute involving various aspects of paper shredders.  There were five pending cases:

  • Royal filed two declaratory judgment cases against plaintiff Fellowes in the Northern District of Ohio.  Both were the first-filed suits on the respective patents-in-suit.
  • Fellowes responded to those suits by filing patent infringement suits against Royal.  ACCO was also a party to the suits, as well as another Fellowes brought against ACCO on additional patents.  This case is also interesting as one of the last cases where plaintiffs may file against unrelated parties in a single suit.
  • Fellowes also filed an additional suit against Royal in this District regarding anti-jitter technology in paper sensors.

The Court transferred all claims against Royal for the following reasons:

  • Royal’s first-to-file position was given some weight.
  • Royal, as a competitor of ACCO selling unrelated products, was misjoined in the second Fellowes suit.  And discovery efficiencies from a combined suit did not outweigh the joinder rule.
  • The location of witnesses and documents weighed in favor of transfer.
  • While maximum efficiency would result from consolidating all five cases, it would have come at a cost to Royal.

Left with just Fellowes’ claims against ACCO, the Court consolidated the ACCO cases because they involved the same parties and three related patents.  Furthermore, neither party opposed consolidation.