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Joao Control & Monitoring Systems, LLC v. Ford Motor Co.

United States District Court, Third Circuit

August 21, 2013

JOAO CONTROL & MONITORING SYSTEMS LLC, Plaintiff,
v.
FORD MOTOR COMPANY, Defendant.

MEMORANDUM OPINION

I. INTRODUCTION

On November 15, 2012, the plaintiff, Joao Control & Monitoring Systems, LLC ("Joao Control"), filed suit against the defendant, Ford Motor Company ("Ford"), alleging infringement of U.S. Patent Nos. 6, 542, 076 ("the '076 Patent"), 6, 542, 077 ("the '077 Patent"), and 7, 397, 363 ("the '363 Patent") (collectively, "the patents-in-suit"). (D.I. 1.) On December 21, 2012, Ford filed a Motion to Transfer (D.I. 10), pursuant to 28 U.S.C. § 1404(a), seeking to transfer the above-captioned action to the Eastern District of Michigan. For the reasons that follow, the court will grant Ford's motion.

II. BACKGROUND

As described in the Complaint and the parties' briefing in connection with the instant motion, Joao Control is a limited liability company organized and existing under the laws of the State of Delaware and maintains its principal place of business in Yonkers, New York. (D.I. 1 at ¶ 2.) Joao Control's principal place of business address is listed as the residence of the named inventor of the patents-in-suit, Raymond Anthony Joao. (D.I. 11 at 3.) Ford is a corporation also organized and existing under the laws of the State of Delaware, but maintains its principal place of business in Dearborn, Michigan. (Id. At ¶ 3.)

This patent infringement action involves hardware and software technology. (Id. at ¶¶ 6.) Specifically, the plaintiff alleges that Ford owns, operates, advertises, controls, sells, and otherwise provides hardware and software comprising "control apparatuses for vehicle systems, " including the "Ford SYNC system, particularly as this system is used to access and utilize personalized online statement of vehicle status (via the 'Vehicle Health Report'), to access directions from a home computer (via the "Send to SYNC" and "SYNC Destinations" Systems and Services), to access Bluetooth and Sirius audio streaming, and to obtain energy response (via the 'Ford SYNC 911 Assist' System and Services) . . . and associated hardware and software. (Id.) Joao Control alleges that Ford has infringed the patents-in-suit by making, using, providing, offering to sell, and selling (directly or through intermediaries), and includes claims for willful infringement and induced infringement. (Id. at ¶¶ 6-25.)

III. STANDARD OF REVIEW

28 U.S.C. § 1404(a) provides that, "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented." 28 U.S.C. § 1404. The provision affords district courts with "broad discretion to determine, on an individualized, case-by-case basis, whether convenience and fairness considerations weigh in favor of transfer." Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir. 1995). In this examination, the court undertakes a two-step inquiry to determine whether a motion to transfer should be granted. First, the court must establish whether the action is one that could have originally been brought in the proposed transferee forum. See Shutte v. Armco Steel Corp., 431 F.2d 22, 24 (3rd Cir. 1970). Second, the court must then weigh whether transfer would best serve the interests of convenience and justice. See Jumara, 55 F.3d at 879. The burden rests on the defendant to show that transfer is appropriate at each step, id. (citing Shutte, 431 F.2d at 22), and, "unless the balance of convenience of the parties is strongly in favor of [the] defendant, the plaintiffs choice of forum should prevail" Shutte, 431 F.3d at 25 (citing Owatonna Manufacturing Co. v. Melore Co., 301 F.Supp. 1296, 1307 (D. Minn. 1969)).

IV. DISCUSSION

A. The Propriety of the Transferee Forum

Under 28 U.S.C. § 1404(a), the proposed transferee forum must be one in which the action might have originally been brought. 28 U.S.C. § 1404(a). Accordingly, the court may only grant Ford's motion to transfer to the Eastern District of Michigan if venue would have been proper there and if that district court could have exercised personal and subject matter jurisdiction in the action. See 17 James Wm. Moore et al., Moore's Federal Practice § 111.12[b] (3d ed. 2012).

As noted, Ford maintains its principal place of business in Dearborn, Michigan, which is located in the proposed transferee forum. In addition, Joao Control is currently litigating a suit against Ford in the Eastern District of Michigan, [1] that was originally filed in January of 2012, and, according to Ford, involves the same family of patents as those asserted here. (Id. at 1.) Therefore, it is clear that each party has sufficient minimum contacts with the proposed transferee forum to provide that district court with personal jurisdiction and the parties do not dispute this fact. See D.I. 15 at 9; 28 U.S.C. § 1400(b) ("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 a regular and established place of business."); see also §§ 1391(b)(1), 1391(d); Fed.R.Civ.P. 4(k). In addition, as a patent dispute, the Eastern District of Michigan would have subject matter jurisdiction over the action pursuant to 28 U.S.C. § 1338(a), which provides district courts with original jurisdiction in such matters. See 28 U.S.C. § 1338(a). Thus, in view of the foregoing, the court finds that this action could have been brought originally in the proposed transferee forum and will proceed to the second step of the transfer analysis.

B. The Jumara Analysis

Next, the court must consider whether transferring this action to the Eastern District of Michigan would serve the interests of convenience and justice. See Mitel, 2013 WL 1856457, at *5. The Third Circuit requires courts considering a transfer motion to perform a case-by-case analysis, rather than to apply a "definitive formula." See Jumara, 55 F.3d at 879. This assessment should take into account the various public and private interests protected and defined in § 1404(a). The private interests may include:

plaintiffs forum preference as maintained in the original choice; the defendant's preference; whether the claim arose elsewhere; the convenience of the parties as indicated by their relative physical and financial condition; the convenience of the witnesses—but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and the location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum).

Id. The public interests may include:

the enforceability of the judgment: practical considerations that could make the trial easy, expeditious, or inexpensive; the relative administrative difficulty in the two fora resulting from court congestion; the local interest in deciding local controversies at home; the public policies of the fora; and the familiarity of the trial judge with the applicable state law in diversity cases.

Id. at 879-80. Importantly, the Jumara analysis is not limited to these explicitly enumerated factors, and no one factor is dispositive. See Id . at 879. The court addresses ...


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