T. JOHN WARD, District Judge.
Before the Court is Defendants' Motion to Transfer. (Dkt. No. 11.) Defendants in this case include Target Brands, Inc. and Target Corporation (collectively "Target"). The Court, having considered the venue motion and the arguments of counsel, DENIES the motion to transfer venue to the United States District Court for the Eastern District of Wisconsin pursuant to 28 U.S.C. § 1404(a). The balance of the private and public factors does not demonstrate that the transferee venue is "clearly more convenient" than the venue chosen by Plaintiff Texas Data Co., L.L.C. ("Texas Data"). See In re Volkswagen of Am., Inc. ("Volkswagen III"), 566 F.3d 1349 (Fed.Cir.2009); In re Genentech, Inc., 566 F.3d 1338 (Fed.Cir.2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed.Cir.2008); In re Volkswagen of Am., Inc. ("Volkswagen II"), 545 F.3d 304 (5th Cir.2008) (en banc).
Plaintiff Texas Data is a Texas limited liability company and has its principal place of business in Longview, Texas, which is within the Eastern District of Texas. (Coverstone Decl., Dkt. No. 33.) Target is a Minnesota corporation with its principal place of business in Minneapolis, Minnesota. (Bullard Decl., Dkt. No. 11.)
Texas Data brought this action against Target for an alleged violation under 35 U.S.C. § 292 for false patent marking. (Compl. ¶ 11, Dkt. No. 1.) The false patent marking statute creates a qui tam action where, in this case, Texas Data is bringing the action on behalf of the United States of America. Plaintiff Texas Data alleges that Target has marked and continues to mark its up & up Training Pants product (the "Accused Product") with expired or otherwise inapplicable patents. (Id.) The up & up Training Pants are manufactured by Target's vendor, Kimberly-Clark Corporation ("Kimberly-Clark"). (Metz Decl. ¶ 9, Dkt. No. 11.) Kimberly-Clark is a Delaware corporation with its corporate headquarters in Irving, Texas and a significant place of business in Neenah, Wisconsin. (Id. at ¶ 2.) Kimberly-Clark is not a party to this lawsuit.
The Accused Product is manufactured by Target's vendor, Kimberly-Clark, in Kimberly-Clark's facility in Paris, Texas, which is within the Eastern District of Texas. (Id. at ¶ 9.) Therefore, the Accused Product is physically marked in Paris, Texas. Kimberly-Clark, however, alleges that the decisions to mark the Accused Product with the specific patent numbers are made in Neenah, Wisconsin. (Id.) In addition, the team of Kimberly-Clark employees responsible for the design of the Accused Product is also located in Neenah, Wisconsin. (Id. at ¶ 4.) Kimberly-Clark states that the patent markings are wholly within the control of Kimberly-Clark, not Target. (Id. at ¶ 3.)
The patent markings themselves are specifically made on the packaging for the Accused Product. (Compl. at ¶ 14.) The company that manufactures the packaging for the Accused Product, Bemis, is located in Longview, Texas, which is within the Eastern District of Texas. (Metz Decl. at ¶ 7, Dkt. No. 26.) Bemis manufactures the packaging in Longview, Texas, and then provides the finished packaging for the Accused Product to the Kimberly-Clark manufacturing facility in Paris, Texas. (Id.) Kimberly-Clark, however, alleges that the packaging is designed by a team in Neenah, Wisconsin, and the decision to mark the packaging with particular patents
The present issue is Target's Motion to Transfer Venue. (Dkt. No. 11.) Target moves this Court to transfer venue in this case to the Eastern District of Wisconsin. The following pages outline the Court's analysis.
There has been a recent increase in filings of false patent marking cases, and because of that, there are new issues for the Court. Thus, before proceeding into the normal law governing venue motions, the Court provides a brief summary of 35 U.S.C. § 292 and a discussion of new issues it may pose in venue transfer motions.
The claims by Plaintiff in this case are brought under the false patent marking provisions of 35 U.S.C. § 292. Section § 292 states:
35 U.S.C. § 292. Section 292 creates a qui tam cause of action, and the statute specifies that the person bringing the cause of action on behalf of the United States shall receive one-half of the defendant's fine. 35 U.S.C. § 292. Before the end of 2009, filings of claims for false patent marking were relatively rare. But on December 28, 2009, the Federal Circuit issued an important opinion in Forest Group, Inc. v. Bon Tool Company, 590 F.3d 1295 (Fed. Cir.2009). One holding in Forest Group was that the plain language of the statute requires courts to impose the maximum $500 penalty on a "per article basis." Forest Group, 590 F.3d at 1304. Thus, a company selling thousands of units of a particular product can now be fined up to $500 per each unit of product sold. Naturally, after the Forest Group decision, filings of false patent marking cases exploded.
A claim for false marking has two elements: (1) marking an unpatented article; and (2) intent to deceive the public. See Clontech Labs. Inc. v. Invitrogen Corp., 406 F.3d 1347, 1352 (Fed.Cir.2005) ("According to the statute, when an unpatented article is marked with the word "patent" or any word or number that imports that the article is patented, and such marking is for the purpose of deceiving the public, the fine is invoked."). Although there is limited case law interpreting Section 292 by the Federal Circuit, the Circuit has expanded on these two elements of the claim. The court in Pequignot v. Solo Cup Co., 608 F.3d 1356, 1362 (Fed.Cir.2010) decided that marking articles with expired patent numbers is sufficient to meet the element of marking an unpatented article. The court in Forest Group expanded on the "intent to deceive" element:
Forest Group, 590 F.3d at 1300. This brief background provides context to the analysis below of the motion to transfer venue.
The defendants in this case argue that the plaintiff's choice of venue in a false patent marking case should be entitled to less than usual deference. (See Motion to Transfer, Dkt. No. 11, at 5.) But in the Fifth Circuit, the plaintiff's choice of venue is not an independent factor in the venue transfer analysis, but instead is represented in the movant's burden. Volkswagen II, 545 F.3d at 315. Thus, before proceeding into the normal venue transfer analysis, the Court addresses the burden of proof for a movant in a motion to transfer venue in a false patent marking case. The Court holds that the burden of proof in a false marking case should be the same as the burden set forth in Volkswagen II, 545 F.3d at 315.
The Fifth Circuit standard for motions to transfer venue traces its roots to the Supreme Court case of Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 67 S.Ct. 839, 91 L.Ed. 1055 (1947). In Gilbert, the Supreme Court established the common-law doctrine of forum non conveniens in the federal courts. Volkswagen II, 545 F.3d at 313. Section 1404(a) venue transfers are decided under the same Gilbert factors created for the forum non conveniens analysis, but venue transfers may be
Id. at 315.
Thus, since the decision in Volkswagen II, this Court has recognized that the burden of proof is that the movant must show "good cause," and this burden is satisfied when the movant shows the transferee venue is "clearly more convenient." See, e.g., Vora v. Scottsdale Ins. Co., Civ. No. 2:10-cv-089-TJW, 2010 WL 3928072, at *2 (E.D.Tex. Oct. 5, 2010). The plaintiff's choice of venue is not an independent factor to be considered in the transfer analysis; instead, deference to the plaintiff's choice of venue is accounted for in the "clearly more convenient" burden on the movant. See Volkswagen II, 545 F.3d at 315; In re TS Tech., 551 F.3d at 1320.
As indicated above, Defendants' argue that in a false patent marking case the plaintiff's choice of venue should be given little deference. Defendants are not clear regarding how little deference should be given; instead, Defendants state:
(Defendants' Brief, Dkt. No. 11, at 5.) Further, in the background of Defendants' arguments is the suggestion that the plaintiff in this case, Texas Data, is merely a
Although Defendants contend that the plaintiff's choice of venue should be given little deference, the Court finds many countervailing reasons to give the plaintiff's choice of venue its normal deference. First, policy considerations of Section 292 support plaintiff's choice of venue having its normal deference in a false marking case. "Congress intended the public to rely on marking as a `ready means of discerning the status of intellectual property embodied in an article of manufacture or design.'" Clontech Labs., 406 F.3d at 1356 (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 162, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989)). Potential competitors may be dissuaded from entering the market if an article within the public domain is falsely marked. Forest Group, 590 F.3d at 1302-03. False patent marking may deter innovation and stifle competition in the marketplace. Id. Thus, Congress enacted 35 U.S.C. § 292 to deter false marking. The statute is "a criminal provision." 35 U.S.C. § 292, Historical and Statutory Notes. Further, Congress meant to encourage third parties to bring qui tam actions to enforce the statute. Forest Group, 590 F.3d at 1303. By not giving the plaintiff's choice of forum its normal deference, this Court would frustrate Congress' intent of the statute to encourage third parties to bring these lawsuits. To illustrate, in false marking cases the defendants are likely the custodians of the majority of relevant witnesses and documents.
In addition, the predecessor to 35 U.S.C. § 292, which was 35 U.S.C. § 50, included a provision that stated the suit must be brought "in any District Court of the United States within whose jurisdiction such offense may have been committed." See London v. Everett H. Dunbar Corp., 179 F. 506, 507 (1st Cir.1910) (giving the full text of the predecessor statute 35 U.S.C. § 50). Thus, the older statute provided that venue was only proper where the offense was committed, that is, the place of
Additionally, the Court is not persuaded by Defendants' attempt to effectively label the plaintiff as a false marking troll. It is this Court's view that Plaintiff's identity as a holding company formed by its lawyers does not change the deference to the plaintiff's choice of venue. The label of a "marking troll" obviously draws its name from the "patent troll" label often ascribed to entities created solely to buy patents and then license them or bring patent infringement suits.
The deference accorded to the plaintiff's choice of forum in false marking cases should be no different than other cases, such as patent infringement cases. The Fifth Circuit does not consider the plaintiff's choice of venue independently but instead as part of the burden. Thus, the burden for a motion to transfer venue in a false marking case should be the same: the movant must show the transferee venue is "clearly more convenient." Volkswagen II, 545 F.3d at 315. But because the plaintiff's choice of venue is taken into account in the burden on the movant, the Court, in accordance with the Fifth Circuit, recognizes the significance of the burden and does not take it lightly. The Fifth Circuit announced:
Id. at 314 n. 10. The court's analysis in Volkswagen II reflected the importance to the plaintiff's choice of venue, as the court issued a writ of mandamus to transfer venue in that case only after it found that four of the eight Gilbert factors weighed in favor of transfer and no factors weighed against transfer. Against this backdrop, the Court considers the merits of this motion to transfer venue.
"For the convenience of parties, 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." 28 U.S.C. § 1404(a). The Fifth and Federal Circuits have enunciated the standard to be used in deciding motions to transfer venue. See Volkswagen III, 566 F.3d 1349; In re Genentech., 566 F.3d 1338; In re TS Tech USA Corp., 551 F.3d 1315 (applying the Fifth Circuit's en banc Volkswagen II decision to rulings on transfer motions out of this Circuit); Volkswagen II, 545 F.3d 304. The initial threshold question is whether the suit could have been brought in the proposed transferee district. In re Volkswagen AG ("Volkswagen I"), 371 F.3d 201, 203 (5th Cir.2004). The moving party must show "good cause," and this burden is satisfied "when the movant demonstrates that the transferee venue is clearly more convenient." Volkswagen II, 545 F.3d at 314. As discussed above, the "clearly more convenient" burden is applied in false marking cases.
If the transferee district is a proper venue, then the court must weigh the relative conveniences of the current district against the transferee district. In making the convenience determination, the Fifth Circuit considers several private and public interest factors, none of which are given dispositive weight. Id. "The private interest factors are: `(1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive.'" Volkswagen II, 545 F.3d at 315 (quoting Volkswagen I, 371 F.3d at 203). "The public interest factors are: `(1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws [in] the application of foreign law.'" Id. (quoting Volkswagen I, 371 F.3d at 203).
The threshold "determination to be made is whether the judicial district to which transfer is sought would have been a district in which the claim could have been filed" in the first place. Volkswagen I, 371 F.3d at 203. Neither party disputes that this case could have been brought in the Eastern District of Wisconsin, and this Court agrees. Thus, the threshold determination is met in this case.
The relative ease of access to sources of proof is the first factor to consider, and this factor weighs slightly in favor of transfer. "That access to some sources of proof presents a lesser inconvenience
As discussed above, there are two main elements on a false patent marking cause of action under Section 292:(1) marking an unpatented article; and (2) intent to deceive the public. See Clontech, 406 F.3d at 1352. Thus, the relevant sources of proof in this case primarily relate to those two elements. Additionally, since 35 U.S.C. § 292 is chiefly concerned with the conduct of the defendant
Documents or witnesses from Target that may be used in this case are all likely located in Minneapolis, Minnesota. As Target admits, however, it does not manufacture the Accused Product or decide which patents are labeled on the packaging. (Bullard Decl., Dkt. No. 11.) But Target does admit that it approves changes to the Accused Product's packaging that are made by Kimberly-Clark. (Id. at ¶ 6.) Thus, Target may have documents or witnesses that may contain information related to Target's intent to deceive, and these sources of proof would be in Minneapolis, Minnesota. (Id. at ¶ 9.) Although Minneapolis is not in the Eastern District of Wisconsin, it is closer to that district than the Eastern District of Texas.
Bemis makes the packaging for the Accused Product. The alleged false markings are on the packaging. (Metz Decl. at ¶ 7, Dkt. No. 26.) Bemis is located in Longview, Texas, which is within the Eastern District of Texas, so any sources of proof at Bemis are closer to the Eastern District of Texas. Target discounts the sources of proof located at Bemis because Kimberly-Clark makes the decisions regarding what patents to put on the packaging and then merely sends the packaging design to Bemis for it to manufacture. (Id.) Further, Bemis has no input in the design and no ability to make changes to the design. (Id.) In this Court's view, any sources of proof related to the intent to deceive are likely located in Neenah, Wisconsin at Kimberly-Clark or in Minneapolis, Minnesota at Target. But intent to deceive is not the only element; another important element of the offense is the actual marking of the unpatented article. See Clontech, 406 F.3d at 1352. Sources of proof related to the marking of the packaging are likely located at Bemis because Bemis physically marks the packaging. Additionally, since the number of articles marked is an issue for damages under Section 292, sources of proof related to the number of units of packaging manufactured at Bemis are likely located at Bemis. (Coverstone Decl. at ¶¶ 13, 14, Dkt. No. 33.) Therefore, there are sources of proof at Bemis, in Longview, Texas, within the Eastern District of Texas.
Finally, according to Target, many sources of proof are located with Kimberly-Clark. Kimberly-Clark states that relevant witnesses and documents related to the decisions to mark the Accused Product are located in Neenah, Wisconsin, which is within the Eastern District of Wisconsin. (Metz Decl., Dkt. No. 26.) Those sources of proof are relevant to intent. There may
Because the sources of proof are not clustered near the proposed transferee district, this case is distinguishable from Volkswagen II and In re TS Tech. In Volkswagen II, all of the physical evidence was located within the proposed transferee venue. Volkswagen II, 545 F.3d at 316. Similarly in TS Tech, all of the sources of proof were located within 300 miles of the proposed transferee district, the Southern District of Ohio, and the original venue, the Eastern District of Texas, was about 900 additional miles away. In re TS Tech Corp., 551 F.3d at 1320-21. In these two cases, access to the physical evidence was clearly more convenient in the proposed transferee venue.
In contrast to Volkswagen II and In re TS Tech, the physical evidence in this case is distributed across the country with some evidence in the Eastern District of Texas and some evidence at or near the Eastern District of Wisconsin. As noted above, the Court puts little weight on sources of proof located at Texas Data's place of business in Longview, Texas because Texas Data's sources of proof have limited use in this case. Although Bemis may only have a small number of sources of proof, those sources are in Longview, Texas. In contrast, nearly all of Target's sources of proof are located in Minneapolis, Minnesota, which is closer to the Eastern District of Wisconsin. Finally, Kimberly-Clark likely keeps more of its sources of proof in Neenah, Wisconsin than in its Paris, Texas facility or headquarters in Irving, Texas. Therefore, after considering these facts, the Court holds this factor only slightly weighs in favor of transfer.
The next private interest factor is the availability of compulsory process to secure the attendance of non-party witnesses, and this factor weighs slightly against transfer. Rule 45(c)(3)(A)(ii) limits the Court's absolute subpoena power by protecting non-party witnesses who work or reside more than 100 miles from the courthouse. Volkswagen II, 545 F.3d at 316. This factor will weigh more heavily in favor of transfer when more non-party witnesses reside within the transferee venue. See id. This factor will weigh the heaviest in favor of transfer when a transferee venue is said to have "absolute subpoena power." See id. "Absolute subpoena power" is subpoena power for both depositions and trial. In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed.Cir. 2009).
There are many non-party witnesses in this case—most from either Kimberly-Clark
It is worth noting that the venue transfer analysis adopted by the Fifth Circuit in Volkswagen II based its analysis on the "Gilbert factors,"
The "unwillingness" of a witness to appear is worth mentioning in this particular
All in all, on one hand, this Court may not have subpoena power of many third-party witnesses—employees and ex-employees of Kimberly-Clark—in Wisconsin. But as discussed above, Target does not practically need subpoena power over current Kimberly-Clark employees. Although it may need subpoena power for ex-employees of Kimberly-Clark, at this point, Target has named no ex-employees that it would need.
Next, the Court must weigh the cost for witnesses to travel and attend trial in the Eastern District of Texas versus the Northern District of California, and this factor slightly favors transfer. The Fifth Circuit has explained:
Volkswagen I, 371 F.3d at 205. The Court must consider the convenience of both the party and non-party witnesses. See id. at 204 (requiring courts to "contemplate consideration of the parties and witnesses"); Fujitsu Ltd. v. Tellabs, Inc., 639 F.Supp.2d 761, 765-66 (E.D.Tex.2009).
The Court first observes that neither party has provided a list of potential witnesses in this case.
On the other hand, potential witnesses that are employees of Target are located in Minneapolis, Minnesota, which is closer to the Eastern District of Wisconsin than the Eastern District of Texas. (Bullard Decl., Dkt. No. 11.) Target admits, however, that its employees in Minneapolis are not as relevant to this case because of their lack of knowledge about the Accused Product and their limited decision-making powers with respect to the marking of patents on the Accused Product. (Id.) Instead, Target states, and Kimberly-Clark agents agree, that most of the knowledgeable and relevant witnesses in this case will come from Kimberly-Clark employees in Wisconsin. (See id.; Metz Decl., Dkt. No. 26.) Texas Data even agrees that these employees would more conveniently appear in Wisconsin and that this aspect favors transfer. (See Texas Data's Response at 7, Dkt. No. 24.)
In this Court's view, given the context of this case as a Section 292 cause of action where relevant inquires are conduct, actions, and intent of the defendant and/or its agents such as Kimberly-Clark, the witnesses from Kimberly-Clark in Wisconsin and Target in Minnesota will be more numerous in this case. However, there are also potential witnesses from Texas Data in Longview, Texas, Kimberly-Clark in Paris and Irving, Texas, and Bemis in Longview, Texas, so this factor only slightly weighs in favor of transfer.
Practical problems include issues of judicial economy. Volkswagen III, 566 F.3d 1349, 1351 (Fed.Cir.2009). Judicial economy weighs against transfer when the Court already has familiarity with the case's factual issues. Id. Further, the Court often considers the possibility of delay and prejudice if transfer is granted, but delay and prejudice associated with transfer is relevant "in rare and special circumstances" and only if "such circumstances are established by clear and convincing evidence." ICHL, LLC v. NEC Corp. of America, No. 5:08-cv-65, 2009 WL 1748573, at *12 (E.D.Tex. June 19, 2009) (quoting In re Horseshoe, 337 F.3d 429, 434 (5th Cir.2003)). The parties have not identified any special circumstances of judicial economy or other practical problems that weigh against transfer, so this factor is neutral.
The Court may consider how quickly a case will come to trial and be resolved. In re Genentech, 566 F.3d at 1347. This factor is the "most speculative," however, and in situations where "several relevant factors weigh in favor of transfer and others are neutral, the speed of the transferee district court should not alone outweigh all of the other factors." Id. The parties agree that (1) the median time to trial for cases in the Eastern District of Texas is faster than the median time to trial in the Eastern District of Wisconsin (28 to 25 months); but (2) the median time for all dispositions is faster in the Eastern District of Wisconsin than in the Eastern District of Texas (10.8 to 7.2 months). This District has treated time-to-trial differences as meaningful and weighing against transfer, see ATEN Int'l Co., Ltd. v. Emine Tech. Co., Ltd., 261 F.R.D. 112, 125 (E.D.Tex.2009); however, given the speculative nature of this factor, the conflicting evidence, and the relatively small differences in time, the Court finds it to be neutral.
The Court must consider local interest in the litigation, because "[j]ury duty is a burden that ought not to be imposed upon the people of a community which has no relation to the litigation." Volkswagen I, 371 F.3d at 206 (5th Cir. 2004). Interests that "could apply virtually to any judicial district or division in the United States," such as the nationwide sale of infringing products, are disregarded in favor of particularized local interests. Volkswagen II, 545 F.3d at 318; In re TS Tech, 551 F.3d at 1321. First, the Court addresses Target's argument that "plaintiff appears to have created a weak business practice in the forum solely for the convenience of its litigation counsel," and "its choice of venue is a `legal fiction' that is not to be given weight in the venue analysis." (Target's Motion at 11, Dkt. No. 11.) Target cites In re Zimmer Holdings, Inc. 609 F.3d 1378 (Fed.Cir.2010), in support of its argument. Zimmer, however, is distinguishable in this case. In Zimmer, the plaintiff was a Michigan limited liability corporation with a registered office in Michigan and all its corporate officers resided in Michigan, one of which was the inventor of the asserted patent in the patent infringement suit. Id. at 1381. The plaintiff had no employees in Texas, but the plaintiff had a Texas office, which it shared with another of its trial counsel's clients. Id. The plaintiff argued this should have some weight in the analysis in the motion to transfer from the Eastern District of Texas to the Northern District of Indiana. Id. But the Federal Circuit held that the plaintiff "has no presence in Texas that should be given weight in the transfer analysis." Id. That was "a classic case where the plaintiff is attempting to game the system by artificially seeking to establish venue by sharing the office space with another of the trial counsel's clients." Id.
Another more recent Federal Circuit case that is also relevant but distinguishable is In re Microsoft Corp., 630 F.3d 1361, Misc. No. 944, 2011 WL 30771 (Fed. Cir.2010). In that case, the plaintiff operated its company from the United Kingdom, but it opened an office and created an entity in Tyler, Texas—which had no local employees. Id. at 1362-63, at *1. The plaintiff's website directed requests and inquiries to its Texas office, but those requests were answered by the plaintiff in the United Kingdom. Id. The Federal Circuit noted "[t]he only added wrinkle [as opposed to Zimmer] is that [plaintiff] took the extra step of incorporating under the laws of Texas 16 days before filing suit." Id. at 1365, at *4. "But, that effort is no more meaningful, and no less in anticipation of litigation, than the other ones we reject." Id.
The present case is not a situation where a plaintiff from out of the state or country, as in Zimmer and Microsoft, created a company or office in the Eastern District of Texas to manipulate venue. The president of the company for Plaintiff Texas Data, Thomas Coverstone, has lived within the Eastern District of Texas for over a year. (Coverstone Decl., Dkt. No. 33.) Virtually all of Texas Data's activities, including its employees, are in the Eastern District of Texas. (Id.) Thus, this case is in contrast to Zimmer where nearly all of the activities and employees were in Michigan and Microsoft where the principal of the plaintiff was in the United Kingdom. Although Texas Data was incorporated three days before Texas Data filed its first false marking suit, Texas Data was not formed to manipulate venue as in Zimmer and Microsoft. Texas Data's president and employee has lived in the Eastern District of Texas for over a year. (Id.) Thus, it is natural and logical for the limited liability company to be formed under Texas laws and the office to
Aside from the localized interest in deciding a localized dispute where the plaintiff resides in the District, there are other local interests within the Eastern District of Texas. The Paris, Texas facility where Kimberly-Clark manufactures the Accused Product creates a local interest in the Eastern District of Texas. Bemis manufactures the packaging of the Accused Product in Longview. This, too, creates a local interest in the Eastern District of Texas. Even Kimberly-Clark's headquarters in Irving, Texas creates a local interest in Texas. On the other hand, there are local interests in the Eastern District of Wisconsin. Target's headquarters is located in Minneapolis, Minnesota and this is closer to the Eastern District of Wisconsin. But the majority of the decisions relating to the decisions to mark the Accused Product with specific patents are apparently made in Neenah, Wisconsin, and that creates a local interest in the Eastern District of Wisconsin. This is particularly important in a false marking case because one of the two major elements is the defendant's intent to deceive. Therefore, the Court holds this factor is neutral.
One of the public interest factors is "the familiarity of the forum with the law that will govern the case." Volkswagen I, 371 F.3d at 203. Both the Eastern District of Texas and the Eastern District of Wisconsin are equally capable of applying the law for false patent marking claims; therefore, this factor is neutral. See In re TS Tech, 551 F.3d at 1320.
No conflict of laws issues are expected in this case, so this factor does not apply.
The movant has the burden to show the Eastern District of Wisconsin is "clearly more convenient" than the Eastern District of Texas. Volkswagen II, 545 F.3d at 314. As the Court discussed above, the "clearly more convenient" burden is applied in false marking cases just as in other cases such as patent infringement
For the foregoing reasons, the Court DENIES Target's Motion to Transfer to the Eastern District of Wisconsin.
It is so ORDERED.