Virginia Lawyers Weekly VA Lawyers Weekly
Where companies alleged that Ace Hardware infringed the companies’ patents by importing infringing products into the United States, but the non-party witnesses, party witnesses and relevant documents were in Illinois, where Ace Hardware is based, and there was an insubstantial connection with this court, the suit was transferred to the Northern District of Illinois.
Background
Seoul Semiconductor Co. Ltd. and Seoul Viosys Co. Ltd. filed a 10-count complaint in this court, alleging that Ace Hardware Corporation infringes upon 10 of Seoul’s patents by “import[ing] into the United States … certain LED products that infringe … Seoul[’s] … patents … [and] then sell[ing] these infringing products to consumers located in the Eastern District of Virginia and other areas of the United States.” Ace Hardware has moved to dismiss the suit for improper venue or, alternatively, to transfer it to the Northern District of Illinois.
Standard
A court determining the propriety of a motion to transfer under § 1404(a) follows a twostep inquiry. First, “a movant must establish that both venue and jurisdiction with respect to each defendant is proper in the transferee district.” Second, a court considers numerous factors.
A court’s decision to transfer depends on the particular facts of the case because § 1404(a) “provides no guidance as to the weight” that courts should afford each factor. However, “[t]he principal factors to consider” are: (1) plaintiff’s choice of forum, (2) convenience of the parties, (3) witness convenience and access and (4) the interest of justice.
Analysis
The court first concludes that Seoul could have initiated this action in the Northern District of Illinois. No question exists that venue and jurisdiction are proper for Ace Hardware in the Northern District of Illinois because its principal place of business is in Oak Brook, Illinois, which is within the Northern District of Illinois.
The court turns to the second part of the two-part inquiry. The first “principal factor” is Seoul’s choice of forum. Here, Seoul’s choice of forum is not entitled to substantial weight because the Eastern District of Virginia is not Seoul’s home forum, the center of the accused activity is not in this district and the only nexus tying this district to the underlying patent infringement allegations is that the accused products may be imported into and distributed from the Ace Hardware redistribution center in Suffolk Virginia. Because the court cannot give Seoul’s choice of forum substantial weight, if much weight at all, this factor favors transfer to the Northern District of Illinois.
Second, the court reviews three aspects of the convenience to the parties analysis: “ease of access to sources of proof, the cost of obtaining attendance of witnesses, and the availability of compulsory process.” The court finds that because sources of proof would be easier to access in the Northern District of Illinois, the cost of obtaining attendance of witnesses would be lower in the Northern District of Illinois and the availability of compulsory process stands neutral, this factor favors transfer to the Northern District of Illinois.
Third, because virtually all of Ace Hardware’s party witnesses would be located in Illinois, and no critical witnesses are located in the Eastern District of Virginia, transfer of this case to the Northern District of Illinois should proceed. Regarding the final “principal factor, the interest of justice,” the desire for system integrity by keeping this case in the Eastern District of Virginia because of its expenditure of time on this motion – to the extent it pertains – is far outweighed by the interest of having local controversies decided at home. Thus, the interest of justice also supports transfer to Illinois.
Defendant’s motion to transfer granted.
Seoul Semiconductor Co. Ltd. v. Ace Hardware Corporation, Case No. 3:22-cv-271, March 31, 2023. EDVA at Richmond (Lauck). VLW 023-3-184. 21 pp.
