Case 1:16-cv-01780-LJM-MJD Document 47 Filed 01/17/17 Page 1 of 8 PageID #: 1430
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF INDIANA
`INDIANAPOLIS DIVISION
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`VOXX INTERNATIONAL CORP., and
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`ROSEN ENTERTAINMENT SYSTEMS,
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`LLP,
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` Plaintiffs,
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` vs.
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`JOHNSON SAFETY, INC.,
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` Defendant.
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` No. 1:16-cv-01780-LJM-MJD
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`ORDER ON DEFENDANT’S MOTION TO DISMISS AND MOTION TO TRANSFER
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`This matter comes before the Court on Defendant’s, Johnson Safety, Inc. (“JSI”),
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`combined Motion to Dismiss and Motion to Transfer. Dkt. No. 31. For the reasons set
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`forth below, the Court GRANTS JSI’s Motion to Transfer to the Central District of
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`California. In light of this transfer of venue, the Court reserves judgment on JSI’s Motion
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`to Dismiss for the Central District of California.
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`I. BACKGROUND
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`Plaintiff Voxx International Corporation (“Voxx”), entered into a Patent License
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`Agreement (the “Agreement”) with Plaintiff Rosen Entertainment Systems, LLP (“Rosen”)
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`on September 1, 2003, for the use of certain patents involving automotive overhead
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`entertainment display systems, including U.S. Patent Nos. 6,124,902, 6,157,418,
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`6,115,086, and 6,246,449 (collectively, the “Rosen Patents”). See generally, Dkt. No. 32,
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`Ex. A.
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`On July 1, 2016, Voxx filed its Complaint against JSI, claiming that JSI infringed
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`upon Voxx’s patents, U.S. Patent Nos. 7,653,345, 8,255,958, 9,114,745, and 9,348,368.
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`Dkt. No. 1. On August 23, 2016, Voxx filed its First Amended Complaint, which removed
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`Voxx’s claims in relation to U.S. Patent No. 7,653,345,1 added infringement claims in
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`relation the Rosen Patents, and named Rosen as a plaintiff to this action. Dkt. No. 24.
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`JSI filed its Motion to Dismiss and Motion to Transfer on September 20, 2016. Dkt.
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`Nos. 31 & 32. JSI seeks dismissal of Voxx’s Rosen Patent claims on the grounds that
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`Voxx lacks standing to bring such claims against JSI.2 Dkt. No. 32 at 5-17. In response,
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`Voxx asserts that it has sufficient standing because JSI infringed on Voxx’s exclusive
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`rights under the PLA and because Rosen was properly joined as a plaintiff.3 Dkt. No. 45
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`at 7-19.
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`JSI also seeks transfer of this action to the Central District of California under 28
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`U.S.C. § 1404(a), for the convenience of parties and witnesses and in the interest of
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`justice. Dkt. No. 32 at 20-30. Specifically, JSI asserts that transfer is necessary because
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`(1) none of the parties, including Voxx, are based in Indiana; (2) the Central District of
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`California has a greater interest in litigating this action as the home forum of JSI and
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`1 Voxx’s claims related to Patent Nos. 8,255,958 and 9,348,368 were later dismissed by
`stipulation. Dkt. Nos. 29 & 30. Therefore, the only patent originally addressed in the
`Complaint that remains at issue is Patent No. 9,114,745.
`2 As an alternative to its standing arguments, JSI argues that Voxx’s claims of
`infringement of the Rosen Patents with regard to JSI’s products KHDM7 and AMSA104
`must be dismissed because Voxx failed to plead specific facts in relation to those
`products. Dkt. No. 32 at 18-19. Voxx concedes that its allegations in its Amended
`Complaint incorrectly identified JSI’s KHDM7 as a product infringing on the Rosen
`Patents. Dkt. No. 45 at 19. Voxx requests that the Court grant it leave to modify its
`allegations with regard to the KHDM7 product to instead refer to JSI’s SDM 107, 108, and
`109 products. Id. Voxx also asserts that because JSI’s AMSA104 product is a private
`label variant of JSI’s SDM105 product, Voxx’s references to the SDM105 product in its
`Amended Complaint apply with equal force to the AMDA104 product. Id.
`3 Voxx asserts that naming Rosen as a plaintiff in the First Amended Complaint
`constitutes proper joinder of Rosen because the Agreement permits Voxx to file suit in
`Rosen’s name and to join Rosen as a plaintiff to such a lawsuit. See Dkt. No. 45 at 11.
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`Rosen; (3) all allegations of wrongdoing occurred in the Central District of California; (4)
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`most of JSI’s anticipated witnesses and exhibits are in the Central District of California;
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`and (5) the Central District of California could administer this action more efficiently. Id.
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`Additionally, JSI claims that such a transfer is necessary because this action is
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`very similar to another pending patent infringement case in the Central District of
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`California, Cause No. 5:14-cv-02591-ODW (DTB), involving the same parties and issues
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`(the “California Litigation”). Id. at 21-22, 29. In the California Litigation, JSI filed suit
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`against Voxx, as well as two of Voxx’s subsidiaries, for infringement on five of JSI’s
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`patents. Id. at 21-22. Voxx then filed a counterclaim against JSI, asserting that JSI
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`infringed on five of its patents, for a total of ten patents-in-suit in the California Litigation.
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`Id. at 22. One of the patents-in-suit in the California Litigation, U.S. Patent No. 7,245,274,
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`is a parent-patent to U.S. Patent No. 9,114,745, which is at issue in this action. Id. at 29.
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`The California Litigation has been pending for over two years, has already conducted
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`extensive discovery, and has undergone claims construction proceedings for its patents-
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`in-suit. Id. at 21-22.
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`In response to JSI’s Motion to Transfer, Voxx argues that, although it is a Delaware
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`corporation with is principal place of business located in Florida, it has a substantial
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`presence in the State of Indiana and that its choice of forum is entitled to significant
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`weight. Dkt. No. 45 at 24-25 (citing Nagle v. Hartford Life & Accident Ins. Co., No. 15-cv-
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`6073, 2015 WL 9268420 (N.D. Ill. Dec. 21,2015); In re Nat’l Presto Indus., Inc., 347 F.3d
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`662, 663-64 (7th Cir. 2003); Vandeveld v. Christopher, 877 F. Supp. 1160, 1167 (N.D. Ill.
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`1995)). Voxx further asserts that JSI has not demonstrated that the Central District of
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`California clearly presents a more convenient forum for this action.4 Id. at 20-27.
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`II. STANDARD
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`Under 28 U.S.C. § 1404(a), a district court may transfer an action to any other
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`district or division where the action could have been brought or to which the parties
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`consent “[f]or the convenience of the parties and witnesses [and] in the interest of justice.”
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`Such a transfer under 28 U.S.C. § 1404(a) is appropriate only “when the moving party
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`establishes that (1) venue is proper in the transferor district; (2) venue and jurisdiction are
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`proper in the transferee district; and (3) the transfer will serve the convenience of the
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`parties, the convenience of the witnesses, and the interest of justice.” Comm’ning Agents,
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`Inc. v. Long, 187 F. Supp. 3d 980, 2016 WL 2866053, at *3 (S.D. Ind. 2016) (citing RCA
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`Trademark Mgmt. S.A.S. v. VOXX Int’l Corp., No. 1:14-CV-88-TWP, 2014 WL 3818289,
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`at *2 (S.D. Ind. Aug. 4, 2014); State Farm Mut. Auto. Ins. Co. v. Bussell, 939 F. Supp.
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`646, 651 (S.D. Ind. 1996)). The interest of justice element “relates to the efficient
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`administration of the court system rather than the merits of the underlying dispute.” Long,
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`2016 WL 2866053 at *7. Factors considered in determining what is in the interest of
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`justice include (1) “the likely speed to trial in each forum”; (2) “each forum’s familiarity with
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`the relevant law”; and (3) “the relationship of each forum to the controversy, particularly
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`4 Voxx claims that if the Court were inclined to transfer this action, the Middle District of
`Florida, where Voxx’s corporate headquarters are located, would present the most
`convenient forum. However, Voxx provides no further argument as to why the Middle
`District of Florida is the most convenient forum, and therefore, its claim to transfer this
`action to that district is waived. See Puffer v. Allstate Ins. Co., 675 F.3d 709, 718 (7th
`Cir. 2012).
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`concerning whether jurors have a financial interest in the case, and whether jurors in one
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`forum are better equipped to apply community standards.” Id.
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`The party seeking a transfer of venue “has the burden to establish, by reference
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`to particular circumstances, that the transferee forum is clearly more convenient that the
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`transferor forum.” Id. at *4. Because “[t]he weighing of factors for and against transfer
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`necessarily involves a large degree of subtlety and latitude,” a trial judge has broad
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`discretion when determining whether to transfer venue. Coffey v. Van Dorn Iron Works,
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`796 F.2d 217, 219 (7th Cir. 1986). See also, Cote v. Wadel, 796 F.2d 981, 985 (7th Cir.
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`1986).
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`III. ANALYSIS
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` JSI asserts that the Central District of California presents the most convenient
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`forum for the parties and witnesses and best serves the interest of justice for this action.
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`Dkt. No. 32 at 20-30. The Court agrees with JSI that transfer to Central District of
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`California is necessary for the convenience of the parties and witnesses and in the interest
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`of justice.
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`First, the Central District of California presents the most convenient forum for the
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`parties involved in this action. Because JSI and Rosen are both California companies
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`with their headquarters located in the Central District of California, Dkt. No. 24 at 2, that
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`district clearly presents a more convenient forum for those parties. Although Voxx
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`accurately claims that a plaintiff’s forum selection is generally entitled to some weight, a
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`plaintiff’s choice of forum receives less weight when it chooses a venue outside of its
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`home forum. State Farm, 939 F. Supp. at 651; see also Lancer Ins. Co. v. Landers
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`Explosives, Inc., No. 3:07-cv-117-RLY-WGH, 2008 WL 3819850, at *7 (S.D. Ind. July 24,
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`2008). “Where, as here, the chosen forum is not the plaintiff’s [state of incorporation or
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`principal place of business], the defendants’ place of residence becomes more important
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`in determining the convenience of the parties.” State Farm, 939 F. Supp. at 651 (citing
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`Kendall U.S.A., Inc. v. Cent. Printing Co., 666 F. Supp. 1264, 1268 (N.D. Ind. 1987)).
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`Additionally, while Voxx is registered to do business, has a registered agent, and owns
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`operating facilities in the State of Indiana, Voxx is also registered to do business and has
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`a registered agent in the State of California. See Statement of Information (Foreign
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`Corporation), STATE OF CALIFORNIA SECRETARY OF STATE
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`(Oct. 3, 2013),
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`https://businesssearch.sos.ca.gov/CBS/Detail. Therefore, litigating this action in Indiana
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`would likely be no more convenient for Voxx than litigating in California.
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`The Central District of California is also a more convenient forum for the anticipated
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`witnesses in this action. While Voxx argues that JSI has not shown the Central District
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`of California to be clearly more convenient for anticipated witnesses because JSI has not
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`specifically identified any non-party witnesses subject to the Central District of California’s
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`subpoena power, Dkt. No. 45 at 27, Voxx also has not provided any evidence
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`demonstrating that this Court presents a more convenient forum for any witnesses. JSI
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`indicated that all of its corporate officers, directors, and employees, as well as all of its
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`other anticipated witnesses with personal knowledge of JSI’s alleged infringements, are
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`based either in the Central District California or Taiwan. Dkt. No. 32 at 26-27; Dkt. No.
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`33, Ex. B, ¶¶ 7, 22. Although JSI noted that several non-party witnesses, such as the
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`inventors of patents-in-suit, are located throughout the United States, it indicated that
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`none of those witness are believed to be in Indiana. Dkt. No. 33, Ex. B, ¶ 22. Because
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`the Central District of California is a convenient forum for at least some of the anticipated
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`witnesses and because there is no evidence showing that this district is convenient for
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`any anticipated witnesses, JSI has sufficiently demonstrated that the Central District of
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`California serves as a more convenient forum for the anticipated witnesses in this action.
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`Furthermore, transfer to the Central District of California is appropriate in the
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`interest of justice. Because the Central District of California has already construed U.S.
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`Patent No. 7,245,274, a parent-patent to U.S. Patent No. 9,114,745 at issue in this action,
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`there would be some potential risk of duplicative litigation if this Court were to interpret
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`U.S. Patent No. 9,114,745. Claim Construction Order at 24-25, Johnson Safety, Inc. v.
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`Voxx Int’l Corp., No. 5:14-cv-02591-ODW (DTB) (C.D. Cal. Nov. 16, 2016). As the home
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`forum of both Rosen and JSI, the Central District of California also has a greater interest
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`in the controversy at issue than the Southern District of Indiana, which is not the home
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`forum of any of the parties.
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`Additionally, while JSI did not specifically assert that dismissal or transfer of this
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`action is required for lack of personal jurisdiction or improper venue, the declaration of
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`Arthur Chang submitted by JSI, stating that JSI is not registered to do business, has not
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`operated a place of business, and has not otherwise conducted business in Indiana,
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`suggests that transfer may also have been proper on these bases. See generally, Dkt.
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`No. 33, Ex. B. However, because transfer of this action to the Central District of California
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`is appropriate under 28 U.S.C. § 1404(a), the Court need not determine whether transfer
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`is necessary for want of jurisdiction or proper venue. See 28 U.S.C. §§ 1400(b), 1406(a)
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`& 1631.
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`IV. CONCLUSION
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`For the foregoing reasons, the Court GRANTS JSI’s Motion to Transfer venue to
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`the Central District of California. JSI’s Motions to Dismiss remain pending upon transfer
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`to the Central District of California. This case is hereby TRANSFERRED to the
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`Central District of California.
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`IT IS SO ORDERED this 17th day of January, 2017.
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`Distribution:
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`Christopher Charles Hagenow
`BLACKWELL, BURKE & RAMSEY, P.C.
`chagenow@bbrlawpc.com
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`Alastair J. Warr
`FISHER BROYLES LLP
`alastair.warr@fisherbroyles.com
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`Dean E. McConnell
`INDIANO & MCCONNELL
`dean@im-iplaw.com
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`Stephen W. Abbott
`PREBEG, FAUCETT, & ABBOTT PLLC
`sabbott@pfalawfirm.com
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`Matthew S. Compton, Jr.
`PREBEG, FAUCETT, & ABBOTT PLLC
`mcompton@pfalawfirm.com
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`8
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`________________________________
`LARRY J. McKINNEY, JUDGE
`United States District Court
`Southern District of Indiana
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