Case 1:17-cv-00770-JDW-MPT Document 106 Filed 09/28/22 Page 1 of 6 PageID #: 11391
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`CATERPILLAR INC.,
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`Defendant.
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`Case No. 1:17-cv-00770-JDW
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`ORDER
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`AND NOW, this 28th day of September, 2022, upon consideration of Wirtgen
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`America,
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`Inc.’s Motion To Sever And Transfer Defendant/Counterclaim-Plaintiff
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`Caterpillar Inc.’s Permissive Counterclaims For Patent Infringement (D.I. 56), the Court
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`notes as follows.
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`I.
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`TRANSFER
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`1.
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`Assuming for the purpose of this analysis that the Court severed
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`Defendant’s counterclaims, the Court would not transfer the counterclaims to the
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`Middle District of Tennessee.
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`2.
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`Under 28 U.S.C. § 1404(a), “[f]or the convenience of parties and witnesses,
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`in the interest of justice, a district court may transfer any civil action to any other district
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`or division where it might have been brought.” Caterpillar does not dispute that it could
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`have brought its counterclaims as an independent action in the Middle District of
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
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`CATERPILLAR INC.,
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`
`
`
`
`
`Defendant.
`
`
`
`
`
`Case No. 1:17-cv-00770-JDW
`
`
`
`
`
`
`
`ORDER
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`
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`AND NOW, this 28th day of September, 2022, upon consideration of Wirtgen
`
`America,
`
`Inc.’s Motion To Sever And Transfer Defendant/Counterclaim-Plaintiff
`
`Caterpillar Inc.’s Permissive Counterclaims For Patent Infringement (D.I. 56), the Court
`
`notes as follows.
`
`I.
`
`TRANSFER
`
`1.
`
`Assuming for the purpose of this analysis that the Court severed
`
`Defendant’s counterclaims, the Court would not transfer the counterclaims to the
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`Middle District of Tennessee.
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`2.
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`Under 28 U.S.C. § 1404(a), “[f]or the convenience of parties and witnesses,
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`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.” Caterpillar does not dispute that it could
`
`have brought its counterclaims as an independent action in the Middle District of
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`
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`Case 1:17-cv-00770-JDW-MPT Document 106 Filed 09/28/22 Page 2 of 6 PageID #: 11392
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`Tennessee. Wirtgen America does not dispute that the District of Delaware is a proper
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`venue for Caterpillar’s permissive counterclaims. The Court will therefore assume that
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`venue is proper in either District.
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`3.
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`The Third Circuit has enumerated twelve private and public interests that
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`courts weigh in considering a Section 1404 transfer motion. See Jumara v. State Farm
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`Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995). The private interests courts consider are 1) the
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`plaintiff’s choice of forum; 2) the defendant’s preferred forum; 3) where the claim arose;
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`4) the convenience of the parties (as indicated by their relative physical and financial
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`condition); 5) the convenience of the witnesses (but only to the extent that the witnesses
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`may actually be unavailable for trial in one of the fora); and 6) the location of books and
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`records (similarly limited to the extent that the files could not be produced in the
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`alternative forum). See id. The public interests are 1) the enforceability of the judgment;
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`2) practical considerations that could make the trial easy, expeditious, or inexpensive; 3)
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`the relative administrative difficulty in the two fora resulting from court congestion; 4)
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`the local interest in deciding local controversies at home; 5) the public policies of the
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`fora; and 6) the familiarity of the trial judge with the applicable state law in diversity
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`cases. See id. at 879-80.
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`4.
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`Courts have “broad discretion to determine, on an individualized, case-by-
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`case basis, whether convenience and fairness considerations weigh in favor of transfer.”
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`Id. at 883. However, “unless the balance of convenience of the parties is strongly in favor
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`2
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`Case 1:17-cv-00770-JDW-MPT Document 106 Filed 09/28/22 Page 3 of 6 PageID #: 11393
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`of [the] defendant, the plaintiff's choice of forum should prevail.” Shutte v. Armco Steel
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`Corp., 431 F.2d 22, 25 (3d Cir. 1970). Movants bear the burden of persuasion. See id.
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`5.
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`The private interest most relevant to this Court’s analysis of the present
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`case is the convenience of witnesses. In general, the movant must come forward with
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`some amount of specificity for this interest to meaningfully favor transfer. See Elm 3DS
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`Innovations LLC v. SK Hynix Inc., No. 14-cv-1432-LPS-CJB, 2015 WL 4967139, at *8 (D.
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`Del. Aug. 20, 2015). Plaintiff’s speculative analysis of the convenience of the witnesses is
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`not persuasive. Wirtgen does not identify any unavailable witnesses or present any
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`evidence that any current or former employee would be unwilling to testify at trial in
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`Delaware. Without more specificity, this interest cannot favor transfer.
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`6.
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`The other private interests are either neutral or receive little weight from
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`the Court. Caterpillar is the counterclaim plaintiff, and its choice of forum gets significant
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`weight. See P Tech, LLC v. Arthrex, Inc., No. 21-968 (MN), 2022 WL 1490733 at *2 (D. Del.
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`May 11, 2022). At most, Wirtgen’s preference to litigate the counterclaims in Tennessee
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`neutralizes Caterpillar’s choice of forum. Neither party makes an argument as to where
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`the claim arose, so this interest is neutral. The parties are already litigating the initial
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`infringement claims in this Court, so the convenience of the parties gets little weight.
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`Similarly, the location of books and records is not afforded much weight because
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`Wirtgen has not made any showing about the ability of any party to produce the
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`relevant files in Delaware.
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`3
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`Case 1:17-cv-00770-JDW-MPT Document 106 Filed 09/28/22 Page 4 of 6 PageID #: 11394
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`7.
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`The public interests most relevant to this Court’s analysis are the practical
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`considerations that could make the trial easy, expeditious, or inexpensive, and the
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`relative administrative difficulty in the two fora resulting from court congestion. The
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`time elapsed in this case means that the practical considerations weigh against transfer.
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`The parties have proceeded with the consolidated case for nearly eleven months.
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`Discovery is well underway. Proceeding under the current schedule would provide a
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`more expeditious resolution of Caterpillar’s counterclaims and not prejudice either
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`party.
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`8.
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`The parties discuss court congestion in the context of the District of
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`Delaware compared to the Middle District of Tennessee. However, the undersigned
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`serves primarily in the Eastern District of Pennsylvania. Court congestion in Delaware is
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`therefore less significant. And the Court has issued a Scheduling Order (D.I. 28), to which
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`it and the parties have been adhering. This interest, therefore, weighs against transfer.
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`9.
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`Other public interests do not support transfer. The parties do not argue
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`issues of the enforceability of the judgment, the local interest in deciding local
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`controversies at home, the public policies of the fora, or the familiarity of the trial judge
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`with the applicable state law in diversity cases. Furthermore, many of these interests are
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`neutral when the causes of action at issue arise under federal law. See Dariz v. Republic
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`Airline Inc., 377 F. Supp. 3d 499, 504 (E.D. Pa. 2019) (quotation omitted).
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`4
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`Case 1:17-cv-00770-JDW-MPT Document 106 Filed 09/28/22 Page 5 of 6 PageID #: 11395
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`II.
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`SEVERANCE
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`10.
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`In deciding whether to sever a claim, courts consider the “convenience of
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`the parties, avoiding prejudice, and promoting expedition and economy.” Graudins v.
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`Retro Fitness, LLC, 921 F. Supp. 2d 456, 468 (E.D. Pa. 2013) (citing BancMortgage Fin.
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`Corp. v. Guarantee Title & Trust Co., No. CIV.A.99-CV-2932, 2000 WL 1521600, at *2 (E.D.
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`Pa. Oct. 6, 2000)). Specific factors the courts consider are 1) whether the issues for trial
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`are different from one another; 2) whether the separable issues require the testimony of
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`different witnesses and different documentary proof; 3) whether the severance would
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`prejudice the opposing party; and 4) whether a decision not to sever would prejudice
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`the moving party. See BancMortgage Fin. Corp., 2000 WL 1521600, at *2. “Questions of
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`severance are addressed to the broad discretion of the district court.” 7 Charles Alan
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`Wright & Arthur R. Miller, Federal Practice and Procedure § 1689 (3rd ed. 2022).
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`11.
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`Caterpillar’s counterclaims differ from Wirtgen’s claims. The counterclaims
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`relate to different patents, with different claim terms, associated with different road
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`milling machine technologies.
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`12.
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`However, because this Court would not transfer the counterclaims even if
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`it severed them, the severance decision is essentially a question of docket management.
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`This Court can manage the competing claims in one case or two to avoid prejudicing
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`either party.
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`5
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`Case 1:17-cv-00770-JDW-MPT Document 106 Filed 09/28/22 Page 6 of 6 PageID #: 11396
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`Therefore, it is ORDERED that Wirtgen’s Motion To Sever And Transfer
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`Defendant/Counterclaim-Plaintiff Caterpillar Inc.’s Permissive Counterclaims For Patent
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`Infringement (D.I. 56) is DENIED.
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`It is further ORDERED that the Claim Construction Hearing scheduled for January 24,
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`2023, will focus solely on the claims that Wirtgen asserts in its affirmative claims. The Court
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`will hold a separate Claim Construction Hearing for Caterpillar’s counterclaims on
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`January 25, 2023. Each hearing will begin at 9:30 a.m. ET in Courtroom 12B, 601 Market
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`Street, Philadelphia, PA 19106.
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`BY THE COURT:
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`/s/ Joshua D. Wolson
`JOSHUA D. WOLSON, J.
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