Signify North America Corporation v. Menard, Inc., 1:22-cv-01447-JPC

Background

Plaintiffs Signify North America Corp. and Signify Holding B.V. sued Menard, Inc. for infringing six LED-related patents by selling allegedly infringing lighting products in Menard retail stores, including at least three stores in the Northern District of Ohio.
Menard is incorporated and headquartered in Eau Claire, Wisconsin; it is licensed to do business in Ohio and admits operating stores in the Northern District of Ohio.
Menard moved to transfer the case to the Western District of Wisconsin under 28 U.S.C. § 1404(a), supporting the motion with a declaration from its controller (Souba) stating that decisionmaking, key documents, and principal witnesses (including Souba and merchandising manager Chapman) are in Wisconsin.
Plaintiffs opposed transfer, emphasizing their choice of forum in Ohio, the local sales that give rise to venue under the patent statute, and Ohio’s local patent rules; they did not identify Ohio-based witnesses for the patents.
The court found venue proper in Wisconsin under the patent venue statute (defendant resides there) and evaluated § 1404(a) private and public interest factors, concluding witness and operative-fact considerations favored Wisconsin.
The court granted Menard’s motion and ordered transfer to the Western District of Wisconsin.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the case could have been brought in the Western District of Wisconsin under the patent venue statute	Signify did not contest transferee venue; emphasized Ohio sales and filed in N.D. Ohio	Menard is incorporated and headquartered in Wisconsin, so venue in W.D. Wis. is proper	Held: Menard resides in Wisconsin; plaintiffs could have sued in W.D. Wisconsin (venue proper there)
Weight to give plaintiff’s choice of forum when plaintiff is not at home in the forum	Plaintiff asked for deference to its chosen forum and cited local patent rules	Menard argued plaintiff’s choice deserves less weight because plaintiffs are not domiciliaries of Ohio	Held: Plaintiff’s choice favors Ohio but carries reduced weight because plaintiffs are not at home in this District
Private-interest factors: location of operative facts, sources of proof, and witness convenience	Signify noted alleged infringing sales occurred in N.D. Ohio and some evidence exists at Ohio stores	Menard showed decisionmaking, key documents, and central witnesses are in Eau Claire, Wisconsin; witnesses of central relevance located in Wisconsin	Held: Operative-fact and witness-convenience factors favor transfer to Wisconsin
Public-interest factors: court familiarity, congestion, and local interest	Signify argued Ohio’s local patent rules and public interest in local adjudication	Menard argued federal patent law applies equally and citizens of Wisconsin have as much interest as Ohio residents	Held: Public-interest factors are neutral or only slightly favor transfer; no meaningful disadvantage to applying federal law in W.D. Wisconsin

Key Cases Cited

TC Heartland LLC v. Kraft Food Grp. Brands LLC, 137 S. Ct. 1514 (2017) (patent venue statute: corporate defendant resides in state of incorporation)
In re Juniper Networks, Inc., 14 F.4th 1313 (Fed. Cir. 2021) (witness convenience is a critical transfer factor)
In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) (analysis of convenience to witnesses in transfer motions)
Reese v. CNH Am. LLC, 574 F.3d 315 (6th Cir. 2009) (district courts have broad discretion in transfer decisions)
Means v. United States Conf. of Cath. Bishops, 836 F.3d 643 (6th Cir. 2016) (list of transfer factors and deference to district court’s balancing)
In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) (local interest factor can be neutral where alleged infringement spans many districts)
In re Barnes & Noble, Inc., 743 F.3d 1381 (Fed. Cir. 2014) (applying Sixth Circuit law in reviewing transfer decisions)
Roxane Labs., Inc. v. Camber Pharms., Inc., [citation="666 F. App'x 899"] (Fed. Cir. 2016) (recognizing district courts’ broad discretion to transfer for convenience)