GIW Industries, Inc. v. S.P.I./Mobile Pulley Works, Inc.
1:10-cv-05031
N.D. Ill.Mar 25, 2011Background
- GIW sues SPI for patent infringement of U.S. Patent No. 7,465,153 relating to a slurry pump diverter with SSE impellers; SPI moves to transfer to the Southern District of Alabama under 28 U.S.C. § 1404(a).
- GIW is a Georgia corporation; SPI is Alabama-based with manufacturing and headquarters in Mobile, Alabama.
- SPI has sold SSE impellers to Great Lakes in Illinois, but such sales represent a small portion of SPI’s overall business.
- Great Lakes tested GIW’s diverter impeller in 2005-2006; Great Lakes is the Illinois-based customer subset involved in the dispute.
- SPI previously sought declaratory judgment in the Southern District of Alabama in 2003 regarding other GIW patents, which was dismissed; the current case centers on the ’153 patent and where liability and evidence are located.
- The court must decide if transfer to Alabama serves the convenience of the parties and witnesses and the interests of justice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether transfer is proper under 1404(a). | GIW argues venue is proper in this district and transfer is unwarranted. | SPI argues Alabama is clearly more convenient and the situs of material events is Alabama. | Transfer granted; Alabama is more convenient and appropriate. |
| How deference to GIW’s forum choice affects the decision. | GIW asserts deference due to choice of forum. | GIW’s connection to Illinois is limited and not controlling. | GIW’s choice is weighed but not controlling; transfer preference given to Alabama. |
| Where the material events and evidence are centered. | Some events and evidence occur in Illinois via Great Lakes and testing. | Primary events and evidence located in Alabama; sales and manufacturing occur there. | Situs of material events in Alabama weighs in favor of transfer. |
| Convenience of witnesses and documents. | GIW witnesses are in Georgia/South Carolina/Germany; some Illinois witnesses exist. | SPI witnesses and documents largely in Alabama; documents easily transportable. | Weight favors transfer due to witnesses and evidence primarily in Alabama. |
| Interests of justice balancing. | Time to trial and legal familiarity neutral; Alabama has closer ties to case. | Alabama forum aligns with defendant’s operations and evidence location. | Interests of justice favor transfer to Alabama. |
Key Cases Cited
- Gueorguiev v. Max Rave, LLC, 526 F. Supp. 2d 853 (N.D. Ill. 2007) (multi-factor transfer analysis and case-by-case discretion under 1404(a))
- Bryant v. ITT Corp., 48 F. Supp. 2d 829 (N.D. Ill. 1999) (weight given to convenience factors in transfer decisions)
- Heller Fin. Inc. v. Midwhey Powder Co., 883 F.2d 1286 (7th Cir. 1989) (transfer requires showing clearly more convenient for parties and witnesses)
- Coffey v. Van Dorn Iron Works, 796 F.2d 217 (7th Cir. 1986) (clear standard for evaluating § 1404(a) transfers)
- Van Dusen v. Barrack, 376 U.S. 612 (1964) (remedial purpose of § 1404(a) and transfer posture across districts)
- Rabbit Tanaka Corp. USA v. Paradies Shops, Inc., 598 F. Supp. 2d 836 (N.D. Ill. 2009) (district-to-district transfer considerations in patent cases)
- Brandon Apparel Group, Inc. v. Quitman Mfg. Co., 42 F. Supp. 2d 821 (N.D. Ill. 1999) (convenience factors and witnesses in transfer analysis)
- Rohde v. Cent. R.R. of Ind., 951 F. Supp. 746 (N.D. Ill. 1997) (weighing location of witnesses and access to proof in venue analysis)
- Rose v. Franchetti, 713 F. Supp. 1203 (N.D. Ill. 1989) (considerations for convenience factors and forum selection)