Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc.

• Decision Date: 31 January 2005
• Docket Number: No. Civ.A.3:03-CV-2837-G.,No. Civ.A.3:04-CV-0348-G.,Civ.A.3:03-CV-2837-G.,Civ.A.3:04-CV-0348-G.
• Parties: WOLF DESIGNS, INC., Plaintiff, v. DONALD MCEVOY LIMITED, INC. and Donald McEvoy, Defendants.
• Court: U.S. District Court — Northern District of Texas

355 F.Supp.2d 848

WOLF DESIGNS, INC., Plaintiff, v. DONALD MCEVOY LIMITED, INC. and Donald McEvoy, Defendants.

No. Civ.A.3:03-CV-2837-G.

No. Civ.A.3:04-CV-0348-G.

United States District Court, N.D. Texas, Dallas Division.

January 31, 2005.

Richard D. Anigian, John Russell Emerson, Haynes & Boone, Dallas, TX, Donald M. Cislo, Kelly W. Cunningham, Mark D. Nielsen, Cislo & Thomas, Santa Monica, CA, for Plaintiffs.

Linda R. Stahl, Andrews & Kurth, Dallas, TX, Bruce A. Fields, Steven H. Haney, Haney Buchanan & Patterson, Los Angeles, CA, for Defendants.

Hesha Abrams, Abrams Mediation & Negotiation Inc., Dallas, TX, pro se.

MEMORANDUM ORDER

FISH, Chief Judge.

Before the court is the motion of the defendants Donald McEvoy Limited, Inc. and Donald E. McEvoy (collectively, "McEvoy") to reopen these cases, lift a previously imposed stay, and transfer venue to the United States District Court for the Northern District of Georgia. For the reasons discussed below, McEvoy's motion is denied.

I. BACKGROUND

These cases involve a patent dispute between Wolf Designs and Donald McEvoy Limited, Inc. Plaintiff Wolf Designs, Inc. ("Wolf Designs") is a California corporation with its principal place of business in Malibu, California. See Plaintiff's Original Complaint ("Complaint") ¶ 2. Defendant McEvoy is a Texas corporation with its principal place of business in Dallas, Texas. See id. ¶ 3. Both corporations are in the business of designing and selling jewelry boxes. See id. ¶¶ 10-16.

On July 2, 2003, Wolf Designs filed suit in the United States District Court for the Central District of California, Case No. CV-03-4729-SJO (the "California Action") alleging that Collectives, Inc. ("Collectives") had infringed its design patent for jewelry boxes. Plaintiff Wolf Designs' Brief in Support of Amended Motion to Stay Proceeding ("Wolf Designs' Brief") at 2; Defendant's Response to Plaintiff's Amended Motion to Stay ("McEvoy's Response Brief") at 2. The California Action was brought against the following persons: Collectives, a company which — like Wolf Designs — sells jewelry boxes; DHR & Company ("DHR"), a sales representative of Collectives; Stein Mart, Inc., a Florida based customer which purchased jewelry boxes from Collectives through DHR; David Richardson, a principal of DHR; and Shea Robinson and Michael Meyer, two sales representatives in Florida. Defendant Donald McEvoy's Opposition to Motion to Stay Proceedings ("Opposition to Motion to Stay Proceedings") at 3. Shortly thereafter, Wolf Designs filed a case in California against McEvoy, an established sales representative which has sold Collectives' products in the Dallas area. Id.; McEvoy's Response Brief at 2.

Eventually, Wolf Designs dismissed its claims against Robinson and Meyers in the California Action for lack for personal jurisdiction over those defendants. See Opposition to Motion to Stay Proceedings at 3. In addition, Wolf Designs dismissed the McEvoy action in California because McEvoy only sold jewelry boxes in Texas and lacked minimum contacts with California. Plaintiff Wolf Designs' Reply Brief in Support of Amended Motion to Stay Proceedings ("Wolf Designs' Reply Brief") at 1; McEvoy's Response Brief at 2. On February 4, 2004, Wolf Designs filed a separate action against Collectives and DHR in California alleging patent infringement with respect to three particular jewelry boxes which was later consolidated with the trade dress action for purposes of discovery and trial. See Wolf Designs' Brief at 2; McEvoy's Response Brief at 2. The trial in the California Action was set for November 2004. Wolf Designs' Brief at 2.

On November 24, 2003, while the California Action was pending, Wolf Designs filed the first of these Texas suits against McEvoy alleging, inter alia, trade dress infringement and false advertising. McEvoy's Response Brief at 2; see generally Complaint ¶¶ 17-45. On February 19, 2004, Wolf Designs filed a second Texas suit against McEvoy for patent infringement. McEvoy's Response Brief at 3. These two cases were consolidated by order dated June 4, 2004 (collectively, the "Texas Action").¹ Id.

McEvoy attempted to conduct discovery in the Texas Action, serving interrogatories and requests for production on Wolf Designs on February 9, 2004. Id. Additionally, McEvoy noticed the deposition of Wolf Designs and its principal on this same date. Id. Although Wolf Designs sought extensions of time to respond to the discovery requests and plead the need to reschedule the depositions, it never contended that discovery should be delayed due to the California Action. Id. Barely a week before the scheduled deposition was set to take place, however, Wolf Designs filed its first motion to stay.² See id.; Plaintiff Wolf Designs' Motion to Stay the Proceedings ("Wolf Designs' First Motion to Stay").

McEvoy moved on June 3, 2004 to compel the depositions of Wolf Designs and its principal and on June 7, 2004 to compel further interrogatory responses and document production. McEvoy's Response Brief at 4. McEvoy's motion to compel the depositions was set for hearing, by order dated June 9, 2004, before United States Magistrate Judge Paul D. Stickney; however, Wolf Designs filed its amended motion to stay the next day.³ Id.; see also Plaintiff's Wolf Designs' Amended Motion to Stay the Proceedings ("Amended Motion to Stay"). As a consequence of Wolf Designs' Texas Action against McEvoy, McEvoy has suspended sales of the allegedly infringing jewelry boxes. McEvoy's Response Brief at 4.

On October 15, 2004, this court granted Wolf Design's Amended Motion to Stay. Memorandum Order (October 15, 2004). Shortly thereafter, on October 19, 2004, the California Action was transferred to the United States District Court for the Northern District of Georgia. Defendants' Motion to Reopen the Case, Lift the Stay and Transfer Venue to the United States District Court, Northern District Georgia, Atlanta Division ("Motion to Transfer") at 2. With the stay still intact, this court administratively closed these cases on November 30, 2004. Order (November 30, 2004).

Then, in response to the transfer of the California Action, McEvoy filed this motion on December 8, 2004, asking the court to reopen these cases, lift the stay, and transfer venue to the Northern District of Georgia. Motion to Transfer at 2-3.

II. ANALYSIS

A. Wolf Design's Motion to Transfer Pursuant to 28 U.S.C. § 1404(a)

1. The Legal Standard

A district court may transfer any civil case "[f]or the convenience of parties and witnesses, in the interest of justice, ... to any other district or division where it might have been brought."⁴ 28 U.S.C. § 1404(a). As a threshold matter, the language of Section 1404(a) requires the court to determine whether the proposed transferee district is one in which the suit might have been brought. Illinois Union Insurance Company v. Tri Core Inc., 191 F.Supp.2d 794, 797 (N.D.Tex.2002); Eastman Medical Products, Inc. v. E.R. Squibb & Sons, Inc., 199 F.Supp.2d 590, 595-96 (N.D.Tex.2002). Such a district "is one in which upon commencement of the suit the plaintiff ha[d] a right to sue independently of the wishes of the defendant." Independent Fish Company v. Phinney, 252 F.Supp. 952, 953 (W.D.Tex.1966) (citing Hoffman v. Blaski, 363 U.S. 335, 80 S.Ct. 1084, 4 L.Ed.2d 1254 (1960)). "[V]enue must have been proper in the transferee district and the transferee court must have had power to command jurisdiction over ... the defendant[]." Illinois Union Insurance Company, 191 F.Supp.2d at 797 (quoting Shutte v. Armco Steel Corporation, 431 F.2d 22, 24 (3d Cir.), cert. denied, 401 U.S. 910, 91 S.Ct. 871, 27 L.Ed.2d 808 (1971)). That the defendant later consents to jurisdiction in another forum is irrelevant. Independent Fish Company, 252 F.Supp. at 953.

After determining that the transferee district is one in which the case might have been brought, the court considers "all relevant factors to determine whether or not on balance the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum." Peteet v. Dow Chemical Company, 868 F.2d 1428, 1436 (5th Cir.) (internal quotations and citations omitted), cert. denied, 493 U.S. 935, 110 S.Ct. 328, 107 L.Ed.2d 318 (1989); see also Illinois Union Insurance Company, 191 F.Supp.2d at 797 (stating that the second part of the 1404(a) transfer analysis, after determining that the transferee court is one in which the case might have been brought, is to examine the convenience of the parties and witnesses, and whether the transfer is in the interest of justice). These factors include: (1) the convenience of the parties, (2) the convenience of material witnesses, (3) the availability of process to compel the presence of unwilling witnesses, (4) the cost of obtaining the presence of witnesses, (5) the relative ease of access to sources of proof, (6) calendar congestion, (7) where the events in issue took place, and (8) the interests of justice in general. Minka Lighting, Inc. v. Trans Globe Imports, Inc., No. 3:02-CV-2538-G, 2003 WL 21251684, at *2 (N.D.Tex. May 23, 2003) (Fish.C.J.); see also Gundle Lining Construction Corporation v. Fireman's Fund Insurance Company, 844 F.Supp. 1163, 1165 (S.D.Tex.1994).

McEvoy seeks, in his motion to transfer, an order from the court reopening these cases, lifting the stay, and transferring venue to the United States District Court for the Northern District of Georgia. Motion to Transfer at 2-3. A transfer is proper pursuant to 28 U.S.C. § 1404(a), McEvoy argues, because he "has agreed to have the case transferred to Georgia," Brief in Support of Defendants' Motion to Reopen, Lift Stay, and Transfer Venue ("McEvoy's Transfer Brief") at 12, and because "the factors considered by the district courts in transferring venue overwhelmingly favor transfer of this case...." Id. The court disagrees that these cases can be transferred pursuant to 28 U.S.C. § 1404(...