Litigation Update – Middle District of Florida Transfers Case When Plaintiff Moves to the Jurisdiction

By: L Andrew S. Riccio, Associate, Assouline Berlowe, P.A.

On October 22, 2012, U.S. Magistrate Judge Thomas B. McCoun, III granted Nike, Inc. and Umbro Corp.’s Motion to Transfer Case to the District of Oregon, despite Plaintiff, Evans Design Dynamics’ objections and incorporation in Florida.  Evans Design is a Florida company with its principal place of business in Tampa, Florida. Whereas Nike is an Oregon corporation with its principal place of business in Beaverton, Oregon; and Umbro is a Delaware corporation also with its principal place of business in Beaverton, Oregon.

Evans Design sued Nike and Umbro for patent infringement of the patent owned by Anthony Evans, inventor and sole owner and shareholder of Evans Designs. Magistrate Judge McCoun’s Report and Recommendation (Case No. 8-12-CV-00493-JDW-TBM [DE47]) is significant because he grants the transfer motion despite the fact that Plaintiff has alleged that the infringing activity occurred in Florida, that Plaintiff is based in Florida, and that both Defendants conduct regular business in Florida.

Pursuant to 28 U.S.C. § 1404(a), the Court evaluated the Defendants’ Motion.  Citing Suomen Colorize Oy v. DISH Network LLC, 801 F.Supp.2d 1334 (M.D.Fla. 2011), as authority for the standards applied in a § 1404 motion, the Court found that it is in its own discretion to adjudicate a motion for transfer based on “an individualized, case-by-case consideration of convenience and fairness.” Id. at 1337. Based on two Eleventh Circuit decisions the burden is on the moving party to establish that the transfer is actually more convenient for the parties.

There are several relevant factors considered by the Court in the transfer inquiry:

  1. The convenience of the witnesses;
  2. The location of relevant documents and ease of access to sources of proof;
  3. Convenience of the parties;
  4. The locus of the operative facts;
  5. The availability of process to compel the attendance of unwilling witnesses;
  6. The relative means of the parties;
  7. A forum’s familiarity with the governing law;
  8. The weight accorded a plaintiff’s choice of forum; and
  9. Trial efficiency and the interests of justice, based on the totality of the circumstances.

Again citing Suomen, the Court indicates that the preferred forum in patent cases is the defendant’s place of business. Despite Plaintiff’s choice of forum in Florida, and the Eleventh Circuit’s general deference to the plaintiff’s chosen venue, the particular circumstances of this case “militate[d] against such deference.” Evans Design Dynamics v. Nike, Inc. and Umbro Corp., Case No. 12-cv-00493 at 6 (M.D.Fla. Oct. 22, 2012).

The Court finds that since Nike and Umbro are the accused infringers, it will be incumbent upon them to produce the bulk of the evidence in the case. As such, with the physical presence of both Defendants in Oregon, the Court determined that transfer would facilitate production of evidence. Plaintiff countered with the fact that it would be forced to send its discovery from Florida to Oregon, however the Court did not agree that this was significant enough to retain jurisdiction.

Besides the convenience factors, the Court took issue with the fact that Plaintiff incorporated in Tampa, Florida less than two months before filing suit. Plaintiff incorporated on January 27, 2012, and the complaint was filed on March 6, 2012. The Court thus found issue with the credibility of Plaintiff’s arguments. The owner of the patent and owner of Plaintiff resides in Enhland. The patent was issued in 2000, and the alleged infringement commenced in 2003 by Umbro and 2007 by Nike (when Nike acquired Umbro). Therefore the Court determined that besides some sales in Florida by Defendants, there was no reason to maintain the action in that District.

I reproduce the Court’s conclusion as it is clearly stated:

In sum, given that the bulk of the parties’ witnesses and evidence relevant to the infringement claims or the defenses of the same appear to reside in and around Orego where most of the salient events took place, and there is no reason to believe that the District Court in Oregon cannot capably, efficiently and expeditiously handle this dispute, I conclude that transfer of the case to the District of Oregon is appropriate despite the Plaintiff’s residence in this District.

Evans Design Dynamics v. Nike, Inc. and Umbro Corp., Case No. 12-cv-00493 at 13 (M.D.Fla. Oct. 22, 2012).

The take away: The Middle District of Florida has set the stage for patent infringement defendants to argue for change of venue when the plaintiff cannot show sufficient evidence, witnesses, and increased convenience. As a defendant in a patent infringement claim, you should be aware of the plaintiff’s choice of venue. As a plaintiff, the burden may have increased with regard to patent litigation to prove each factor weighs in favor of maintaining your selected jurisdiction.

If you have any questions regarding litigation issues, please do not hesitate to contact us.

ERIC N. ASSOULINE, ESQ.

Business and Bankruptcy Litigation

ASSOULINE & BERLOWE, P.A.

213 E. Sheridan Street, Suite 3

Dania Beach, Florida 33004

Telephone: 954-929-1899

Facsimile: 954-922-6662

Email: ena@assoulineberlowe.com

www.assoulineberlowe.com

Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, and Corporate Law

Miami · Ft. Lauderdale · Boca Raton

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