JET IMPORTS LLC d/b/a LIFE IS TENNIS, Plaintiff, v. WHAK SAK INDUSTRIES, INC., Defendant. This matter comes before the court pursuant to Defendant’s January 13, 2010 Motion to Transfer Case out of the U.S. District Court for the Southern District of Iowa to the U.S. District Court for the District of Nevada [Dkt. 5]. Plaintiff resisted Defendant’s Motion on February 1, 2010 [Dkt. 6]. Defendants filed a reply to Plaintiff’s resistance on February 10, 2010 [Dkt. 7]. Defendants’ motion to transfer is granted. I. FACTUAL AND PROCEDURAL BACKGROUND Jet Imports, Incorporated (“Jet Imports, Inc.”) was a Nevada corporation in the business of manufacturing and selling tennis bags. It was owned and operated by John and Lynne Tauchen (“the Tauchens”), who were residents of Clark County in Nevada until at least March 12, 2008. Jet Imports, Inc. obtained patents on certain tennis bags between February 15, 2005 and July 8, 2008. Plaintiff Jet Imports, L.L.C., also known as Life is Tennis (“Jet Imports, L.L.C.”), incorporated in Iowa as a limited liability company on June 9, 2008. Owned by John Tauchen, Jet Imports L.L.C. has its principal place of business in Iowa, and is in the business of designing, manufacturing, distributing, marketing, and selling women’s tennis bags. Jet Imports, L.L.C. owns the aforementioned tennis bag patents pursuant to assignment on August 28, 2008, from Jet Imports, Inc. In early 2007, Jet Imports, Inc. hired Heather Combs (“Combs”) as a business ORDER No. 4:09-CV-00421-JAJ

manager in Clark County in Nevada. Combs left Jet Imports, Inc. amid much acrimony in September or October 2007, and formed Defendant Whak Sak Industries, Inc. (“Whak Sak”), also a Nevada corporation, on October 11, 2007. Whak Sak is also in the tennis bag business, with its principal place of business in Las Vegas, Nevada. After Combs left Jet Imports, Inc. she filed a complaint on February 8, 2008, against Jet Imports, Inc. and the Tauchens in Nevada state court in Clark County, alleging defamation, sexual harassment, and intentional interference with contractual relations. Shortly thereafter, Jet Imports, Inc. and the Tauchens filed a separate state court action against Combs, claiming that she embezzled from Jet Imports, Inc. and that she copied protected designs for use in her own competing business, Whak Sak. The two actions were consolidated on April 15, 2008 under the caption In re Jet Imports, Inc. Litigation, Case No. A556887. The order for consolidation states that the two actions “and any other actions hereafter filed in or transferred to the District Court, Clark County, Nevada, that arise out of the same operative facts as alleged in the [two actions] will be consolidated for all purposes [under this case].” The consolidated action is pending before the state court in Nevada. Jet Imports, L.L.C., the Iowa limited liability company that owns the patents formerly owned by Jet Imports, Inc., now sues Whak Sak for patent infringement and related claims based on those patents. Jet Imports, L.L.C. alleges that Whak Sak designs, manufactures, and sells tennis bags that infringe its patents. Likely witnesses include John Tauchen for Jet Imports, L.L.C. and Combs for Whak Sak. Tauchen now lives in Iowa. Whak Sak also indicates that Whak Sak employees Heather Wilson and Kevin Combs, who live in Nevada, may testify. Whak Sak has sold tennis bags in Iowa, among other states.


II. ANALYSIS The issue is whether to transfer this case to the District of Nevada under 28 U.S.C. § 1404(a). “For the convenience of 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.” 28 U.S.C. § 1404(a). There are “three general categories of factors that courts must consider when deciding a motion to transfer: (1) the convenience of the parties, (2) the convenience of the witnesses, and (3) the interests of justice.” Terra Int’l., Inc. v. Mississippi Chemical Corp., 119 F.3d 688, 691 (8th Cir. 1997).1 But “courts have recognized that such determinations require a case-by-case evaluation of the particular circumstances at hand and a consideration of all relevant factors.” Id. “In general, federal courts give considerable deference to a plaintiff’s choice of forum and thus the party seeking a transfer under section 1404(a) typically bears the burden of proving that a transfer is warranted.” Id. at 695. It is clear that the District of Nevada is a district where this action “might have been brought.” 28 U.S.C. § 1404(a). Venue is proper in the District of Nevada, where the defendant, Whak Sak, has its principal place of business, and where a substantial part of the events giving rise to the claims occurred. See 28 U.S.C. § 1391(b); 28 U.S.C. § 1400(b). The court thus turns to the enumerated factors and the particular circumstances at hand. A. The convenience of the parties and witnesses The Eighth Circuit has approved the consideration of the following factors concerning convenience: “(1) the convenience of the parties, (2) the convenience of the witnesses – including the willingness of witnesses to appear, the ability to subpoena witnesses, and the adequacy of deposition testimony, (3) the accessibility to records and
Because it is a procedural matter, a motion to transfer in a patent case is decided under regional circuit law rather than the law of the Federal Circuit. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1352 (Fed. Cir. 2000) (citation omitted). 3

documents, (4) the location where the conduct complained of occurred, and (5) the applicability of each forum state’s substantive law.” Terra Int’l., 119 F.3d at 696 (citing Terra Int’l., 922 F.Supp. 1334, 1357-61 (N.D. Iowa 1996)). Here, the convenience of the parties and witnesses favors transfer to Nevada. While Heather Combs has no connection with the state of Iowa, John Tauchen was recently a resident of and doing business in Clark County Nevada. Jet Imports, L.L.C. identified no witnesses other than John Tauchen, who can reasonably be expected to travel to his recent home – and the site of related litigation in which he is involved – for trial.2 Moreover, the two non-party material witnesses identified by Whak Sak are in Clark County, and each of them submitted affidavits showing unwillingness or inability to travel to Iowa for trial. In these circumstances, a transfer does not amount to merely shifting the inconvenience from one party to the other. The “location where the conduct complained of occurred” heavily favors transfer to Nevada. The conduct complained of – three counts of patent infringement, one count of trade dress infringement, and one count of theft of trade secrets – all occurred in Nevada.3 None of it occurred in Iowa. The alleged violator is a Nevada corporation, with its principal place of business in Nevada. The alleged violations stem from an employeremployee relationship in Nevada, involving another Nevada corporation, Jet Imports, Inc., the assignor of Jet Imports, L.L.C.’s patents. The only connection between Jet Imports, L.L.C.’s claims and the state of Iowa is Whak Sak’s sales of bags in Iowa, which do not appear to be more significant than in other

While it does not affect the court’s disposition of this motion, the court notes that, according to the February 10, 2010 submission of Whak Sak, it appears that Tauchen may have lied about whether his company has employees in his affidavit filed with his response to the motion to transfer on February 1, 2010. Without making a judgment as to the truth of this allegation, the court notes that such allegation is serious.


Some of it may have also occurred in China. 4

states. “Where a party’s products are sold in many states, sales alone are insufficient to establish a material connection to the forum and to override other factors favoring transfer.” Invivo Research, Inc. v. Magnetic Resonance Equipment Corp., 119 F.Supp.2d 433, 439-40 (S.D.N.Y. 2000). Indeed, under a “center of gravity” test that many district courts have used in determining the proper forum for a patent infringement action, “appropriate considerations include the location of a product’s development, testing, research and production [and] the place where marketing and sales decisions were made, rather than where limited sales activity has occurred.” Saint-Gobain Calmar, Inc. v. National Products Corp., 230 F.Supp.2d 655, 660 (E.D.Pa. 2002) (quoting Ricoh Co., Ltd. v. Honeywell, Inc., 817 F.Supp. 473, 482 n.17 (D.N.J. 1993)); see also v. Cendant Corp., 404 F.Supp.2d 1256, 1260 (W.D.Wash. 2005) (“[i]n patent infringement actions, the preferred forum is that which is the center of gravity of the accused activity” (internal quotation marks and citations omitted)). B. The interests of justice The Eighth Circuit has approved the consideration of the following factors concerning the interests of justice: “(1) judicial economy, (2) the plaintiff’s choice of forum, (3) the comparative costs to the parties of litigating in each forum, (4) each party’s ability to enforce a judgment, (5) obstacles to a fair trial, (6) conflict of law issues, and (7) the advantages of having a local court determine questions of local law.” Terra Int’l., 119 F.3d at 696 (citing Terra Int’l., 922 F.Supp. at 1361-63). Most of these factors do not point one way or the other,4 though the plaintiff’s choice of forum weighs against transfer. Indeed, “a plaintiff’s choice of forum should only be disturbed when the balance of factors strongly favors transfer.” Medicine Shoppe Intern, Inc. v. Tambellini, 191 F.Supp.2d 1065, 1069 (E.D.Mo. 2002) (citations omitted).

Jet Imports, L.L.C.’s unsupported suggestion that a fair trial is more likely in Iowa because the company is located in Iowa and Tauchen resides in Iowa is rejected out of hand. 5


But where, as here, the “underlying events giving rise to the litigation did not occur in the forum, courts afford a plaintiff’s choice of forum ‘significantly less deference.’” CBS Interactive Inc. v. National Football League Player’s Ass’n, Inc., 259 F.R.D. 398, 408 (D.Minn. 2009) (citation omitted); see also Invivo, 119 F.Supp.2d at 438-39; Amorose v. C.H. Robinson Worldwide, Inc., 521 F.Supp.2d 731, 735 (N.D.Ill. 2007) (citing Chicago R.I. & P.R. Co. v. Igoe, 220 F.2d 299, 304 (7th Cir. 1955)). Indeed, Jet Imports, Inc. says it initiated this action here only because its principal place of business is in Iowa and because Whak Sak has sold the allegedly infringing bags in Iowa. Where a claim arises wholly out of a transferee district such that the convenience of the parties and witnesses naturally favors that district, and the only connection to the plaintiff’s choice of forum is plaintiff’s recent incorporation and isolated sales by the defendant, the balance of factors strongly favors transfer. III. CONCLUSION This case is transferred to the United States District Court for the District of Nevada. IT IS SO ORDERED. DATED this 11th day of February, 2010.