Case: 3:14-cv-00737-wmc Document #: 67 Filed: 03/25/15 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
`_________________________________________________________________________________
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`CREE, INC.,
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`Plaintiff,
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`v.
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`OPINION AND ORDER
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`14-cv-737-wmc
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`HONEYWELL INTERNATIONAL, INC.,
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`Defendant.
`_________________________________________________________________________________
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`In this patent lawsuit, plaintiff Cree, Inc., asserts that defendant Honeywell
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`International, Inc. (“Honeywell”) infringed four patents through its use of light emitting
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`diodes (“LEDs”) in various products. Honeywell has moved to transfer this action to the
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`District of Minnesota primarily because the witnesses most likely to testify on its behalf,
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`all of whom are Honeywell employees, are located in Minnesota. (Def.’s Mot. (dkt.
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`#25); Def.’s Br. (dkt. #26) 4-5.) This alone does not make the District of Minnesota
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`“clearly more convenient” for the parties and witnesses as a whole, nor does it suggest the
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`“interests of justice” warrant transfer. Accordingly, the court will defer to Cree’s original
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`choice of forum and deny Honeywell’s motion.
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`BACKGROUND
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`Cree and Honeywell are familiar adversaries in patent litigation, with actions
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`pending on various technologies in the United States Districts for the Eastern District of
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`Texas and for the District of New Jersey. (Pl.’s Opp’n, Exs. J-K (dkt. #30-10, -11).) The
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`action before this court concerns the use of “phosphorous-based LEDs” and “backlit with
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`Case: 3:14-cv-00737-wmc Document #: 67 Filed: 03/25/15 Page 2 of 10
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`white Liquid Crystal Displays (LCDs)” in various products designed and manufactured
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`by Honeywell. (Def.’s Br. (dkt. # 26) 2.) Plaintiff specifies four thermostats as examples
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`in its complaint, but its claims of infringement are not limited to those examples. (Id.)
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`Cree is incorporated under North Carolina law and maintains its principal place of
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`business in Durham, North Carolina. (Compl. (dkt. # 1) ¶ 1.) Cree owns United States
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`Patent No. 8,659,034 (“the ‘034 patent”), United States Patent No. 8,860,058 (“the
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`‘058 patent”), United States Patent No. 7,910,938 (“the ‘938 patent”), and United
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`States Patent No. 8,766,298 (“the ‘298 patent”), all of which are directed toward LED
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`technology and will be referred to collectively as “the patents-in-suit.” (Pl.’s Opp’n (dkt.
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`#30) 2.) Cree asserts that Honeywell has infringed these four patents by incorporating
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`the claimed technology in its products, specifically noting the use of LEDs in Honeywell’s
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`thermostat products. (Compl. (dkt. # 1) ¶¶ 18, 23, 28, and 33.) Cree represents that it
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`selected this district as the venue for its action against Honeywell in part based on its
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`connection to Wisconsin, where it maintains its largest LED manufacturing facility (Pl.’s
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`Opp’n (dkt. #30) 1, 7), although other tactical reasons, including speed to trial, likely
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`play a role as well. Cree also has three other actions pending in this district asserting
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`claims for infringement of some of the same patents at issue in this action against
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`Honeywell. (Pl.’s Opp’n (dkt. #30) 1.)
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`Honeywell is incorporated under Delaware law and maintains its principal place of
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`business in Morristown, New Jersey. (Compl. (dkt. #1) ¶ 1.) Honeywell operates five
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`major facilities in Minnesota. (Def.’s Br. (dkt. #26) 2; Declaration of John Stokely
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`(“Stokely Decl.”) (dkt. #27) ¶ 2.) Honeywell’s Environmental and Combustion Controls
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`business unit designed the allegedly infringing thermostats in Golden Valley, Minnesota,
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`where that unit is headquartered. (Def.’s Br. (dkt. #26) 2; Stokely Decl. (dkt. #27) ¶ 4-
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`5.) Honeywell also conducts significant research and development activities relating to
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`LEDs in Minnesota. (Def.’s Br. (dkt. #26) 3; Stokely Decl. (dkt. #27) ¶ 5.) Honeywell
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`has no major facilities in this district and has conducted no significant research, design,
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`or development of products here. (Stokely Decl. (dkt. #27) ¶ 7.)
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`OPINION
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`A motion to transfer venue is governed by 28 U.S.C. § 1404(a). Under § 1404(a),
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`a transfer is permissible “when (1) venue is proper in the transferor district and (2) the
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`transferee district is one in which the action may have been brought.” Illumina, Inc. v.
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`Affymetrix, Inc., No. 09-CV-277-BBC, 2009 WL 3062786, at *5 (W.D. Wis. Sept. 21,
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`2009). The court must consider, under the specific circumstances of the case, whether
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`transfer would: (a) further the convenience of the parties and witnesses; and (b) promote
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`the interests of justice. Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th Cir.
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`1986). The court’s weighing of the factors under § 1404(a) “permits a ‘flexible and
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`individualized analysis’ and affords district courts the opportunity to look beyond a
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`narrow or rigid set of considerations in their determinations.” Research Automation, Inc. v.
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`Schrader–Bridgeport Int’l, Inc., 626 F.3d 973, 978 (7th Cir. 2010) (quoting Stewart Org.,
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`Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988)). The moving party must establish “that the
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`transferee forum is clearly more convenient.” Illumina, 2009 WL 3062786, at *1
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`(quoting Coffey, 796 F.2d at 219-20).
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`The defendant disputes neither that venue in this district is proper, nor that the
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`action could have been brought in the District of Minnesota. (See Def.’s Br. (dkt. #26)
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`4.) Rather, the parties’ dispute centers on whether transferring the litigation would be
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`more convenient for the parties and witnesses and promote the interests of justice.
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`Because the defendant’s transfer motion rests largely on considerations that this court
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`finds do not weigh heavily in favor of transfer, the defendant has failed to establish that
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`the transferee district is a “clearly more convenient” venue for this litigation. See
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`Illumina, 2009 WL 3062786, at *1 (quoting Coffey, 796 F.2d at 219-20).
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`I.
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`Convenience
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`A. Plaintiff’s Choice of Forum
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`The court begins its consideration of defendant’s motion to transfer with the
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`plaintiff’s choice of forum, as courts typically defer to this choice. See In re Nat’l Presto
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`Indus., Inc., 347 F.3d 662, 663-64 (7th Cir. 2003) (“[U]nless the balance is strongly in
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`favor of the defendant, the plaintiff’s choice of forum should rarely be disturbed.”)
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`(quoting Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947) (internal quotation marks
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`omitted)). Courts generally give this factor less weight where the plaintiff selects a forum
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`that is neither its home nor the situs of material events. See Piper Aircraft Co. v. Reyno,
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`454 U.S. 235, 255-56 (1981). Even if the plaintiff is foreign to the venue, however, the
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`court will not disturb its choice unless considerations of convenience or justice strongly
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`favor the defendant. In re Nat’l Presto Indus., 347 F.3d at 663-64.
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`Here, Cree’s principal place of business is not located in the state of Wisconsin,
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`and it is not incorporated under Wisconsin law. (Compl. (dkt. #1) ¶ 1.) Although
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`Cree’s Racine facility is engaged in substantial activity within the state of Wisconsin, it
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`does not make Cree a Wisconsin resident.1 See Kimberly-Clark Worldwide, Inc. v. First
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`Quality Baby Prods., LLC, No. 14-CV-502-WMC, 2014 WL 6612881, at *3 (W.D. Wis.
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`Nov. 20, 2014) (“While it is true that Neenah is not technically within the boundary of
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`the Western District, [plaintiff] resides in Wisconsin and in close proximity to this
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`District.”) (emphasis added). Still, while not heavily weighting Cree’s choice of forum,
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`neither will this court upset that choice, unless Honeywell can show that the convenience
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`of the parties and witnesses or the interests of justice favor transfer. See In re Nat’l Presto
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`Indus., 347 F.3d at 663.
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`B. Convenience of the Parties and Witnesses
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`In many cases, the court considers convenience to the parties and witnesses as it
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`relates to access to sources of proof, namely documents and witnesses. Kimberly-Clark,
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`2014 WL 6612881, at *3 (citing Harley Davidson, Inc. v. Columbia Tristar Home Video, Inc.,
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`851 F. Supp. 1265, 1270 (E.D. Wis. 1994)). Where the documents and witnesses are
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`under the control of the parties, such as employees who may serve as witnesses, this is
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`not a heavily weighted factor. See Illumina, 2009 WL 3062786, at *3 (citing Milwaukee
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`Elec. Tool Corp. v. Black & Decker (N.A.) Inc., 392 F. Supp. 2d 1062, 1064 (W.D. Wis.
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`2005)). On the contrary, technology has rendered the location of such evidence
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`minimally important in the transfer analysis. Fabio v. Diversified Consultants, Inc., No. 13-
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`CV-524-WMC, 2014 WL 713104, at *6 (W.D. Wis. Feb. 25, 2014) (citing Bd. of Trs.,
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`1 Indeed, the Racine facility is located in the far southeast corner of the Eastern District of
`Wisconsin, substantially closer to that court’s location in Milwaukee, than this court in Madison,
`Wisconsin.
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`Sheet Metal Workers Nat’l Pension Fund v. Elite Erectors, Inc., 212 F.3d 1031, 1037 (7th Cir.
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`2000); Milwaukee Elec. Tool Corp., 392 F. Supp. 2d at 1064).
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`Honeywell cites several decisions from this district in support of its argument that
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`the location of its employees and facilities is an appropriate consideration in determining
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`whether transfer is warranted. (See Def.’s Reply (dkt. #43) 6; Declaration of Ryan J.
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`Casamiquela (“Casamiquela Decl.”), Exs. A-B (dkt. #44-1, -2).) This may be, but
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`Honeywell fails to establish that the specific circumstances here make this single
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`consideration determinative.
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`For example, unlike the plaintiff in Hunts Point Ventures, Incorporated v. Research in
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`Motion, Limited, 12-CV-307-WMC, Dkt. No. 43, Cree offers some, albeit limited, factual
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`support for its assertion that this district is more convenient than the District of
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`Minnesota, based both on its presence and regular operations in Wisconsin. See id. at 6
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`(concluding that the plaintiff “provide[d] no factual support for [its] assertion that the
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`Western District of Wisconsin is materially more convenient to Hunts Point”); (Pl.’s
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`Opp’n (dkt. #30) 7-8.) Cree’s Racine facility houses witnesses who may testify about the
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`patents-in-suit. See Hunts Point, No. 12-CV-307-WMC, Dkt. No. 43, at 2 (“Hunts Point
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`has no employees in Wisconsin, nor does it maintain any relevant books or records in
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`Wisconsin.”); (Pl.’s Opp’n (dkt. #30) 7-8.) Unlike Hunts Point, this is not a case where
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`the plaintiff has no connection to the forum state. Moreover, plaintiff offers no other
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`compromise location, which would be more convenient for both sides.
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`The convenience of witnesses also does not strongly favor transfer. Honeywell
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`relies on the fact that its employees conducting research and development activities
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`relating to LEDs are based in Minnesota. (Def.’s Br. (dkt. #26) 3; Declaration of John
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`Stokely (dkt. #45) ¶ 2.) The location of Honeywell’s employees does not weigh heavily
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`in favor of transfer, as this court presumes that Honeywell’s employee witnesses will
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`appear voluntarily. See Illumina, 2009 WL 3062786, at *3 (“[T]he location of
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`defendant's employee witnesses is not a heavily weighted factor because of the
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`assumption that witnesses within the control of the party calling them, such as
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`employees, will appear voluntarily, that is, at least without subpoena.”) (internal
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`quotations omitted).2 Moreover, Honeywell has failed to address why video deposition
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`or live, remote testimony, which is common in patent suits, would be less effective than
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`in-person testimony in this case. See Adams v. Newell Rubbermaid Inc., No. 07-C-313-S,
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`2007 WL 5613420, at *3 (W.D. Wis. Aug. 21, 2007) (citing Milwaukee Elec. Tool Corp.,
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`392 F. Supp. 2d at 1064). Based on the likely witnesses in this case, therefore,
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`Honeywell has failed to show that consideration for their convenience strongly favors
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`transfer. Ultimately, Honeywell’s argument fails because it does not show that the
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`transferee district is clearly more convenient for the parties or that Cree has no
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`convenience-related basis for bringing the action in this district. See Hangartner v. Intel
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`Corp., No. 13-CV-663-BBC, 2014 WL 266802, at *1 (W.D. Wis. Jan. 24, 2014) (finding
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`that plaintiff did “not identify any contacts that he has with Wisconsin” and that “both
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`parties have a significant presence in [the transferee district]”).
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`2 The existence of likely non-party witnesses remains an important consideration in the transfer
`analysis. See Milwaukee Elec. Tool Corp., 392 F. Supp. 2d at 1064 (“Live testimony cannot be
`compelled when third-party witnesses are distant from the forum court,” and, “[a]ccordingly, the
`existence of such witnesses is frequently an important consideration in a transfer motion
`analysis.”). However, Honeywell fails to specify any non-party witnesses who are likely to testify.
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`Nor can Honeywell point to other factors that strongly favor transfer, which might
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`make Honeywell’s minimal showing of convenience solely to itself a tipping point in
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`favor of transfer. See DeLaval Int’l AB v. Alpha Tech. USA Corp., No. 13-CV-673-BBC,
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`2014 WL 37309, at *1-2 (W.D. Wis. Jan. 3, 2014) (granting motion to transfer in part
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`based on presence of third-party witnesses who worked in the transferee district and in
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`part based on convenience of the parties); Ho Keung Tse v. Apple, Inc., No. 12-CV-21-
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`BBC, Dkt. No. 29, at *12 (W.D. Wis. May 18, 2012) (granting motion to transfer in
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`part based on ability to consolidate the action with an action in the transferee district
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`and in part based on convenience of the parties) (Casamiquela Decl., Ex. B (dkt. #44-2).)
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`Since Honeywell has failed to establish that the transferee district is “clearly more
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`convenient” for the parties than this district, Illumina, 2009 WL 3062786, at *1 (quoting
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`Coffey, 796 F.2d at 219-20), this court will not “shift[] inconvenience from one party to
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`another” by transferring the case to a forum that defendant finds more convenient.
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`Research Automation, Inc., 626 F.3d at 979.
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`II.
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`Interests of Justice
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`By considering the interests of justice, this court ensures “the efficient
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`administration of the court system.” Coffey, 796 F.2d at 221. Considerations for the
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`interests of justice “may be determinative in a particular case, even if the convenience of
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`the parties and witnesses might call for a different result.” Id at 220. To determine
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`whether a transfer is in the interests of justice, the court considers four factors: “(1) the
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`district in which the litigants would receive a speedier trial; (2) whether there is related
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`litigation in the transferee district that may allow consolidation; (3) the courts’ relative
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`familiarity with the applicable law; and (4) the relation of each community to the
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`controversy at issue.” Grand River Enters. Six Nations Ltd. v. VMR Prods. LLC, No. 13-CV-
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`104-WMC, 2013 WL 6185205, at *8 (W.D. Wis. Nov. 26, 2013) (citing Coffey, 796
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`F.2d at 221; Illumina, 2009 WL 3062786 at *5; Research Automation, Inc., 626 F.3d at
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`978).
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`In discussing the interests of justice, the parties focus on the relative speed to trial
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`in the transferor and transferee districts and the significance of Cree’s other, ongoing
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`litigation in this district. “Although this court does not encourage litigants to choose this
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`forum because of its speed and although this court makes no promises regarding quick
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`resolution, the fact remains that this is a relatively speedy federal court, particularly with
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`regard to patent lawsuits.” Sunbeam Prods., Inc. v. Homedics, Inc., 587 F. Supp. 2d 1055,
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`1058 (W.D. Wis. 2008). Here, Honeywell’s statistics suggest that the action would
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`proceed to trial 3.1 months faster in this district than in the District of Minnesota.
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`(Def.’s Br. (dkt. #26) 5-6.) Thus, even according to Honeywell, the speed to trial factor
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`is at best a neutral one in the current transfer analysis. (Def.’s Reply (dkt. #43) 9.) It
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`certainly does not weigh in favor of transfer.
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`Not surprisingly, the parties dispute the significance of Cree’s ongoing litigation in
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`this district against other defendants, which involves assertions of infringement of three
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`of the patents-in-suit here. (See Pl.’s Opp’n (dkt. #30) 5; Def.’s Reply (dkt. #43) 3.)
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`Even if Cree’s litigation relating to similar technology does not weigh against transfer,
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`this, too, is no more than a neutral factor for Honeywell. Coupled with neutral interests
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`of justice factors, Honeywell’s minimal showing of greater convenience to itself and its
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`witnesses fails to establish that the District of Minnesota is a “clearly more convenient”
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`forum for this action. See Illumina, 2009 WL 3062786, at *1 (quoting Coffey, 796 F.2d at
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`219-20).
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`IT IS ORDERED that defendant Honeywell International, Inc.’s motion to
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`ORDER
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`transfer venue to the U.S. District Court for the District of Minnesota (dkt. # 25) is
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`DENIED.
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`Entered this 25th day of March, 2015.
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`BY THE COURT:
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`/s/
`________________________________________
`William M. Conley
`District Judge