Eastern District of Texas Federal Court Practice: False marking ...

Holding: Motion to Transfer Venue GRANTED

I have to admit, I'm a bit partial to Orvis - I like their luggage.  And the plaintiff is going to need it after this ruling by Judge Folsom sending the case to Vermont.  Following on Judge Ward's recent opinion denying a motion to transfer in a false marking case but providing a detailed recitation of the standards is this order from Judge Folsom last week transferring a case against Orvis brought by the Americans For Fair Patent Use, LLC (AFPU).

Judge Folsom started by noting that Orvis had withdrawn its motion to dismiss claiming that no false marking occurred and that the complaint didn't meet minimum pleading standards, accordingly it was denied without prejudice.

The venue analysis is of course a familiar one, and growing so even in false marking cases.  Judge Folsom noted that "given the nature of the false patent marking statute, the majority of relevant sources of proof in the above-captioned case are likely to be in Orvis’ custody in Vermont".  With respect to witnesses, again, this case is illustrative of most cases I have seen, as indicated by Judge Folsom's analysis:

Neither party has stated that any potential witness in this case is located or works in the Eastern District of Texas. Orvis’ potential witnesses all appear to be located in Vermont, while AFPU’s corporate representative is located in Austin, Texas. Thus, under the 100 mile rule, Vermont would be more convenient for Orvis’ witnesses, while the Eastern District of Texas would be more convenient for AFPU’s corporate representative. As discussed above, given the nature of the false patent marking statute, the majority of relevant sources of proof and witnesses will likely be presented by Orvis. AFPU even states that Orvis “may ultimately present more witnesses at trial than AFPU.” Dkt. No. 12 at 7. Therefore, it would appear that more witnesses are located in Vermont than in Austin and the District of Vermont would be more convenient overall. Thus, the Court finds this factor weighs in favor of transfer.

Judge Folsom ended up concluding that "[g]iven the specific facts and circumstances of this matter, the location of sources of proof, witnesses’ cost of attendance, and the local interest factors weigh in favor of transfer, and the remaining factors are neutral. On balance, Orvis has clearly demonstrated that the District of Vermont would be a more convenient venue than the Eastern District of Texas."  AFPU raised one additional argument, though, and that was that as a private attorney general, it ought not to have to bear the burden of prosecuting its case in a remote forum.  Judge Folsom rejected this argument, noting that the cases cited in support dealt with situations where the district courts both had experience with the patents-in-suit and therefore the interests of judicial economy counseled against transfer.  There were no such benefits in this case.

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