Hafco Foundry and Machine Company, Incorporated v. GMS Mine Repair and Maintenance, Inc.
1:15-cv-16143
S.D.W. VaMay 18, 2016Background
- Hafco sued GMS for infringement of U.S. Design Patent No. D681,684S (rock dust blower), filed Dec. 15, 2015.
- Hafco alleges GMS sold infringing blowers in the Southern District of West Virginia after termination of a distributor agreement with an alleged GMS affiliate. Complaint cites marketing at a Bluefield trade show.
- After GMS answered, Hafco moved under 28 U.S.C. § 1404(a) to transfer venue to the Northern District of West Virginia, asserting convenience (including an allegedly infringing unit in Cumberland, Maryland).
- GMS did not join the motion and preferred the case remain in the Southern District. Hafco is located in New Jersey; its counsel has offices in Morgantown and New York.
- The court evaluated traditional § 1404(a) factors (access to proof, convenience of parties/witnesses, cost, compulsory process, possibility of a view, local interest, and interests of justice) and found transfer inappropriate.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether transfer to the Northern District is warranted under 28 U.S.C. § 1404(a) | Northern District is more convenient for parties, counsel, and because an allegedly infringing unit is in Cumberland, MD | GMS does not join the motion and prefers Southern District; no showing of undue burden if case remains here | Denied — movant failed to show transfer is warranted given the factors and defendant's opposition |
| Whether access to the primary source of proof favors transfer | Presence of an allegedly infringing product in Cumberland makes Northern District more convenient for a view and proof | Plaintiff did not show no examples exist in Southern District or that an exhibit could not be brought here | Court found this factor neutral; item not so large to require offsite view |
| Weight to give counsel location | Counsel in Morgantown and NYC would prefer Northern District | Location of counsel is not a proper basis to transfer | Court gave little-to-no weight to counsel convenience; not persuasive |
| Effect of defendant's non-joinder | N/A (Hafco assumed defendant would oppose) | Defendant’s choice to remain in this district undermines plaintiff’s convenience claims | Court gave significant weight to defendant’s preference against transfer |
Key Cases Cited
- Southern Railway Co. v. Madden, 235 F.2d 198 (4th Cir. 1956) (transfer decisions committed to district court discretion)
- Jiffy Lubricator Co. v. Stewart-Warner Corp., 177 F.2d 360 (4th Cir. 1949) (orders granting or refusing change of venue generally not appealable)
- Preston Corp. v. Raese, 335 F.2d 827 (4th Cir. 1964) (same principle regarding non-appealability of venue orders)
- Original Creatine Patent Co. v. Met-Rx USA, Inc., 387 F. Supp. 2d 564 (E.D. Va. 2005) (burden on movant to justify discretionary transfer)
- Alpha Welding & Fabricating v. Todd Heller, Inc., 837 F. Supp. 172 (S.D.W. Va. 1993) (lists factors to consider on § 1404 motions)
- Telepharmacy Solutions, Inc. v. Pickpoint Corp., 238 F. Supp. 2d 741 (E.D. Va. 2003) (same; discusses venue-transfer factors)
- Acterna, LLC v. Adtech, Inc., 129 F. Supp. 2d 936 (E.D. Va. 2001) (convenience of counsel is not entitled to deference)
- Cognitronics Imaging Sys., Inc. v. Recognition Research, Inc., 83 F. Supp. 2d 689 (E.D. Va. 2000) (location of counsel is not appropriate factor for transfer)