NST Global, LLC v. Sig Sauer Inc.

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
NST GLOBAL, LLC, d/b/a
SB TACTICAL,
Plaintiff,
V. 	Civil Action No. 19-121-CFC
SIG SAUER, INC.,
Defendant. :
Raeann Warner, JACOBS & CRUMPLAR, P.A., Wilmington, Delaware; Brittany J.
Maxey-Fisher, William R. Brees, MAxEY-FISHER, PLLC, Saint Petersburg, Florida
Counsel for Plaintiff
Helena C. Rychlicki, PINCKNEY, WEIDINGER, URBAN & JOYCE LLC, Greenville,
Delaware; Laura L. Carroll, Eric G. J. Kaviar, Anthony E. Faillaci, BURNS &
LEVINSON LLP, Boston, Massachusetts
Counsel for Defendant
July 9, 2019
Wilmington, Delaware
MEMORANDUM OPINION
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ONNOLLY
CT JUDGE
Plaintiff NST Global, LLC filed this lawsuit accusing Defendant Sig Sauer,
Inc. of infringing two patents covering stabilizing braces for handguns. Defendant
has moved to transfer the case to the District of New Hampshire (D.I. 15). I will
grant the motion.
I. 	BACKGROUND
The connections between this case and Delaware are weak. First, Defendant
is incorporated in Delaware. Second, according to Plaintiff, one of the accused
products can be purchased from a store in Delaware, see D.I. 19 at 4-5, although
Defendant stresses that it "has no distributers or dealers in Delaware, and does not
ship to any distributors or wholesale customers in Delaware," see D.I. 30 at 6. No
other facts connect this case to Delaware.
The connections between this case and New Hampshire are strong. Plaintiff
has a place of business in New Hampshire. 	See D.I. 19 at 3. Defendant maintains
its corporate headquarters and four other facilities in New Hampshire. See D.I. 16
at 13-14. The accused products were designed in New Hampshire. See id. at 3.
II. 	DISCUSSION
Section 1404(a) provides that "[f]or the convenience of the parties and
witnesses, in the interests of justice, a district court may transfer any civil action to
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any other district or division where it might have been brought." 28 U.S.C. §
1404(a). It is undisputed that this action could have been brought in the District of
New Hampshire, where Defendant is headquartered. Thus, the only issue before
me is whether I should exercise my discretion under § 1404(a) to transfer the case
to New Hampshire.
Defendant has the burden "to establish that a balancing of proper interests
weigh[s] in favor of the transfer." Shutte v. Armco Steel Corp., 431 F.2d 22, 25
(3d Cir. 1970). This burden is heavy. "[U]nless the balance of convenience of the
parties is strongly in favor of [the] defendant, the plaintiff's choice of forum should
prevail." Id. ( emphasis in original) (internal quotation marks and citation omitted).
The proper interests to be weighed in deciding whether to transfer a case
under§ 1404(a) are not limited to the three factors recited in the statute (i.e., the
convenience of the parties, the convenience of the witnesses, and the interests of
justice). Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995).
Although there is "no definitive formula or list of the factors to consider" in a
transfer analysis, the court in Jumara identified 12 interests "protected by the
language of§ 1404(a)." Id. 	Six of those interests are private:
[ 1] plaintiff's forum preference as manifested in the
original choice; [2] the defendant's preference; [3]
whether the claim arose elsewhere; [4] the convenience
of the parties as indicated by their relative physical and
financial condition; [5] the convenience of the
witnesses-but only to the extent that the witnesses may
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actually be unavailable for trial in one of the fora; and [6]
the location of books and records (similarly limited to the
extent that the files could not be produced in the
alternative forum).
Id. (citations omitted). The other six interests are public in nature:
[7] the enforceability of the judgment; [8] practical
considerations that could make the trial easy, expeditious,
or inexpensive; [9] the relative administrative difficulty
in the two fora resulting from court congestion; [ 1O] the
local interest in deciding local controversies at home;
[11] the public policies of the fora; and [12] the
familiarity of the trial judge with the applicable state law
in diversity cases.
Id. at 879-80 (citations omitted). As the parties have not identified relevant factors
beyond these 12 interests, I will balance the Jumara factors in deciding whether to
exercise the discretion afforded me by§ 1404(a).
1. 	PLAINTIFF'S FORUM PREFERENCE
This factor clearly weighs against transfer and is to be given "paramount
consideration" in applying the Jumara factors. 	See VLSI Tech. LLC v. Intel Corp.,
2018 WL 5342650, at *2-6 (D. Del. Oct. 29, 2018).
2. 	DEFENDANT'S FORUM PREFERENCE
This factor favors transfer.
3. 	WHETHER THE CLAIM AROSE ELSEWHERE
This factor bears only slightly on the transfer analysis. On one hand, it is
undisputed that the accused products were designed in New Hampshire, which
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favors transfer. See In re Hoffmann-La Roche, Inc., 587 F.3d 1333, 1338 (Fed.
Cir. 2009). 	On the other hand, patent claims arise wherever the allegedly-
infringing products are sold, Treehouse Avatar LLC v. Valve Corp., 170 F. Supp.
3d 706, 710 (D. Del. 2016) (first citing 35 U.S.C. § 271(a); then citing Red Wing
Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360 (Fed. Cir.
1998)), and it appears that at least one of the accused products is offered for sale in
Delaware. Overall, this factor weighs in favor of transfer, but only slightly.
4. 	THE CONVENIENCE OF THE PARTIES AS INDICATED BY
THEIR RELATIVE PHYSICAL AND FINANCIAL
CONDITION
This factor is neutral. Defendant's size, financial resources, and status as a
Delaware corporation negate any implication that litigating this case in Delaware
would cause it inconvenience. As a Delaware corporation with global operations,
Defendant can demonstrate "inconvenien[ce]" for§ 1404(a) purposes only if it
"prove[ s] that litigating in Delaware would pose a unique or unusual burden on
[its] operations." Graphics Props. Holdings Inc. v. Asus Computer Int 'l, Inc., 964
F. Supp. 2d 320, 325 (D. Del. 2013) (second alteration in original) (internal
quotation marks and citation omitted); see also ADE Corp. v. KLA-Tencor Corp.,
138 F. Supp. 2d 565, 573 (D. Del. 2001) ("[A]bsent some showing of a unique or
unexpected burden, a company should not be successful in arguing that litigation in
its state of incorporation is inconvenient."). Defendant does not present any facts
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that suggest that litigating this case in Delaware would pose any "unique,"
"unusual," or "unexpected" burden on its operations. This factor is therefore
neutral.
5. 	THE CONVENIENCE OF THE WITNESSES
This factor carries weight "only to the extent that the witnesses may actually
be unavailable for trial in one of the fora." Jumara, 55 F.3d at 879; see also Smart
Audio Techs., LLC v. Apple, Inc., 910 F. Supp. 2d 718, 732 (D. Del. 2012) (noting
that this factor applies only insofar as "a witness actually will refuse to testify
absent a subpoena"). In addition, "witnesses who are employed by a party carry no
weight," because "each party is able, indeed, obligated to procure the attendance of
its own employees for trial." Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192,
203 (D. Del. 1998). In considering this factor, "the Court should be particularly
concerned not to countenance undue inconvenience to third-party witnesses ...
who have no direct connection to the litigation." Intellectual Ventures I LLC v.
Altera Corp., 842 F. Supp. 2d 744, 757 (D. Del. 2012), mandamus denied sub nom.
In re Altera Corp., 494 F. App'x 52 (Fed. Cir. 2012).
Defendant identifies one potential non-party witness, John Wilson, who may
actually be unavailable for trial in Delaware. Defendant hired Wilson as a
consultant in connection with the design of the accused products. According to
Defendant, Wilson lives in East Waterboro, Maine; and he could therefore be
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subpoenaed to testify at a trial in New Hampshire, but not in Delaware. See D.I.
16 at 16-1 7; D .I. 30 at 5. Plaintiff does not dispute the necessity of Wilson's
testimony, responding only that Wilson could be deposed instead of testifying live.
See D.I. 19 at 13. The fact that a necessary, non-party witness could be
subpoenaed to testify in New Hampshire but not in Delaware weighs in favor of
transfer. But because there is no indication that Wilson would refuse to testify at
trial in Delaware, and because Defendant identifies only one potentially
unavailable witness, this factor overall weighs only slightly in favor of transfer.
6. 	THE LOCATION OF BOOKS AND RECORDS
Jumara instructs me to give weight to the location of books and records only
"to the extent that the files [and other documentary evidence] could not be
produced in the alternative forum." 	55 F.3d at 879. Because the parties identify
no documentary evidence that would be available in only one of the two fora, this
factor is neutral. See Signal Tech, LLC v. Analog Devices, Inc., 2012 WL
1134723, at *3 (D. Del. Apr. 3, 2012).
7. 	ENFORCEABILITY OF THE JUDGMENT
This factor is neutral.
8. 	PRACTICAL CONSIDERATIONS
Jumara instructs me to give weight to "practical considerations that could
make the trial easy, expeditious, or inexpensive." 	55 F.3d at 879. Practically
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speaking, New Hampshire is a more convenient forum for the parties than
Delaware is, and litigating this case in New Hampshire would be generally more
efficient. Both parties maintain a place of business in New Hampshire, and neither
party has operations in Delaware. The accused products were designed in New
Hampshire. It would be more convenient for Defendant to produce its witnesses
and documents in New Hampshire, because most of its relevant employees and
documents are already located in New Hampshire. Plaintiffs witnesses are likely
to come from either New Hampshire or Florida, making New Hampshire at least as
convenient as Delaware for Plaintiff. The relative simplicity of producing
potential party witnesses and documents in New Hampshire weighs strongly in
favor of transfer.
9. 	RELATIVE ADMINISTRATIVE DIFFICULTY DUE TO
COURT CONGESTION
This factor is neutral, as both districts have congested dockets.
10. 	LOCAL INTEREST IN DECIDING LOCAL
CONTROVERSIES AT HOME
Because "[p]atent issues do not give rise to a local controversy or implicate
local interests," TriStata Tech., Inc. v. Emulgen Labs., Inc., 537 F. Supp. 2d 635,
643 (D. Del. 2008), this factor is neutral.
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11. 	PUBLIC POLICIES OF THE FORA
Delaware's public policy encourages Delaware corporations to resolve their
disputes in Delaware courts. See Round Rock Research, LLC v. Dell, Inc., 904 F.
Supp. 2d 374, 378 (D. Del. 2012). That concern is irrelevant since Plaintiff is not a
Delaware corporation, and Defendant, which is a Delaware corporation, does not
want to litigate here. See Semcon Tech, LLC v. Intel Corp., 2013 WL 126421, at
*4 (D. Del. Jan. 8, 2013). This factor is thus neutral.
12. 	FAMILIARITY OF THE TRIAL JUDGES WITH THE
APPLICABLE STATE LAW IN DIVERSITY CASES
The claims arise under the federal patent laws. Therefore, the familiarity of
the respective districts with state law is not applicable, and this factor is neutral.
III. 	CONCLUSION
In sum, of the 12 Jumara factors, four favor transfer to varying degrees, one
weighs strongly against transfer, and the other seven are neutral. Having
considered the factors in their totality and given Plaintiffs choice of this forum
paramount consideration, I find that Defendant has demonstrated that the Jumara
factors weigh strongly in favor of transfer. I will therefore grant Defendant's
motion to transfer this case to New Hampshire (D.I. 15).
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