United States District Court, N.D. California
ORDER GRANTING DEFENDANT'S MOTION TO TRANSFER RE:
DKT. NO. 15
HAYWOOD S. GILLIAM, JR. United States District Judge.
before the Court is Defendant Swagway, LLC's
(“Defendant” or “Swagway”) motion to
transfer venue to the Northern District of Indiana. Dkt. No.
15. Plaintiff Hangzhou Chic Intelligent Technology Co., Ltd.
(“Plaintiff” or “Chic”) opposes the
motion. Dkt. No. 28. Having carefully considered the
parties' arguments, the Court GRANTS Defendant's
motion and TRANSFERS this action to the Northern District of
Indiana for the reasons set forth below.
FACTUAL AND PROCEDURAL BACKGROUND
parties design, manufacture, and sell self-balancing vehicles
called “hoverboards.” See Dkt. No. 1
¶ 3, 10; Dkt. No. 12 at 9-10. Plaintiff is a Chinese
corporation with its principal place of business in Hangzhou,
China. See Dkt. No. 1 ¶ 2. Plaintiff
researches, designs, and manufactures its products in
Hangzhou, and does not have any employees located outside of
China. Dkt. No. 28-1 ¶¶ 4-5. Plaintiff
admits that it has “limited” contacts with the
United States, though its largest customer is based in
California. Dkt. No. 28 at 2; Dkt. No. 28-1 ¶¶
is an American limited liability company with its principal
place of business in South Bend, Indiana. See Dkt.
No. 1 ¶ 4. Its South Bend office is Swagway's sole
U.S. facility. See Dkt. No. 35-1 ¶ 5.
Defendant's managing member, Johnny Zhu, resides in South
Bend. Id. ¶ 1. In addition, one of
Defendant's distributors, 3B-Tech, Inc.
(“3B-Tech”), and four 3B-Tech employees who are
potential third-party witnesses, are all located in South
Bend. Id. ¶¶ 6, 7, 11. Defendant
manufactures its products through third parties in China.
Id. ¶ 16.
filed the present action in this district on August 19, 2016,
for patent infringement arising under 35 U.S.C. § 1
et. seq. See Dkt. No. 1. Plaintiff seeks damages,
injunctive relief, and other relief for the alleged
infringement of United States Patent Nos. 9, 376, 155
(entitled “Electric Balance Vehicle”) and D737,
723 (entitled “Self-Balancing Vehicle”). See
Id. ¶ 1, 5, 8-9.
answered the complaint on August 26, 2016. Dkt. No. 12. The
same day, Defendant filed a complaint against Plaintiff in
the Northern District of Indiana alleging unfair competition
under federal and state laws, tortious interference with
business relationships, and defamation (the “Indiana
Action”). See Dkt. No. 36. Defendant then
filed a motion to transfer venue from this district to the
Northern District of Indiana on September 2, 2016, on the
basis of forum non conveniens. Dkt. No. 15. Plaintiff
responded on September 23, 2016, Dkt. No. 28, and Defendant
replied on October 7, 2016, Dkt. No. 35. However, because
Defendant included new information in its reply regarding
potential witnesses, the Court waived the deadline to file an
objection to Defendant's reply under Civ. L.R. 7-3(d)(1),
and Plaintiff filed an objection on November 15, 2016.
See Dkt. Nos. 44, 51.
U.S.C. § 1404(a) provides: “For the convenience of
the 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.”
The purpose of this statute is “to prevent the waste of
time, energy and money and to protect litigants, witnesses
and the public against unnecessary inconvenience and
expense.” Van Dusen v. Barrack, 376 U.S. 612,
ruling on a motion to transfer under § 1404(a), courts
consider “both public factors [that] go to the
interests of justice[, ] and private factors, which go to the
convenience of the parties and witnesses.” Brackett
v. Hilton Hotels Corp., 619 F.Supp.2d 810, 820 (N.D.
Cal. 2008). Private interest factors include “ease of
access to sources of proof, plaintiff's choice of forum,
relative convenience to parties, and relative convenience to
witnesses.” Id. Public interest factors
include “degrees of court congestion, local interest in
deciding local controversies, potential conflicts of laws,
and burdening citizens of an unrelated forum with jury
duty.” Id. at 820. It is the moving
party's burden “to show that when these factors are
applied, the balance of convenience clearly favors
transfer.” Trend Micro Inc. v. RPost Holdings,
Inc., No. 13-cv-05227-WHO, 2014 WL 1365491, at *5 (N.D.
Cal. Apr. 7, 2014).
The Action Could Have Been Brought In the Northern District
“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.” 28
U.S.C. § 1400(b). Plaintiff does not dispute that this
action could have been brought in the Northern District of
Indiana. Because Defendant designs, researches, and tests its
products in South Bend, Indiana, where its sole and principal
place of business is located, see Dkt. No. 35,
Defendant is subject to personal jurisdiction in the state of
Indiana, and the Court finds that this part of the analysis