United States District Court, D. Rhode Island
OPINION AND ORDER
J. MCCONNELL, JR., United States District Judge.
Tristar Products, Inc. ("Tristar"), a Pennsylvania
Corporation, with its principal place of business in New
Jersey, filed this action in Rhode Island alleging patent
infringement against Defendant, Novel Brands, LLC
("Novel Brands"), a New Jersey LLC, with its
principal place of business in New Jersey. Before this Court
is Novel Brands' Motion to Dismiss for lack of personal
jurisdiction and improper venue, or alternatively, for
transfer to the United States District Court for the District
of New Jersey. This Court finds that this case should proceed
in the District of New Jersey. As a result, the Motion to
Dismiss is DENIED; the alternative motion to transfer is
GRANTED, and this case is TRANSFERRED to the United States
District Court for the District of New Jersey.
is the assignee of U.S. Patent No. D772, 641 ("the
Patent") protecting the ornamental design for a pan. The
Patent lists two inventors, Keith Mirchandani, of New Jersey,
and Mo-Tsan Tsai, of Shenzhen, China. Two corporate entities
are also listed, Tristar, located in New Jersey, and Ke M.O
House Co., Ltd., located in Shenzhen, China. Tristar's
attorney, as reflected on the Patent, is located in
Providence, Rhode Island.
December 30, 2016, Tristar's Rhode Island attorney
accessed a website that advertised and offered for sale the
"Copper Pro Square Pan by Novel Brands, " and
purchased it from that website. According to the shipping
label on the package, the pan was shipped from Las Vegas,
Nevada to Providence, Rhode Island. Subsequently, Tristar
filed a complaint against Novel Brands for patent
infringement in the United States District Court for the
District of Rhode Island.
Brands moves to dismiss this matter for lack of personal
jurisdiction, improper venue, or alternatively, transfer of
venue to the District of New Jersey. Tristar, while
maintaining the position that personal jurisdiction exists
and venue is proper in Rhode Island, otherwise urges this
Court to allow jurisdictional discovery to determine if
personal jurisdiction exists over Novel Brands.
Court finds, however, that it need not decide the issues of
whether personal jurisdiction exists and/or whether venue is
proper. That is because this Court retains the
authority to transfer this action to a more convenient forum
pursuant to 28 U.S.C. § 1631,  § 1404(a), or §
1406(a). See Slattery v. Walt Disney World
Co., No. Civ. 03-267-M, 2003 WL 22888860, at *2 (D.N.H.
Dec. 8, 2003). Because the Court finds that transfer is
appropriate without deciding the issues of personal
jurisdiction and venue, it will begin and end its analysis
with that issue.
Transfer of Venue
1404(a), states that: "[f]or the convenience of parties
and witnesses, in the interest of justice, a district court
may transfer any civil action to any other district or
division where it might have been brought." The district
court has discretion "to adjudicate motions for transfer
according to an 'individualized, case-by-case
consideration of convenience and fairness.'"
Main St. NA Parkade, LLC v. Sleepy's, LLC, No.
CA-13-593-S, 2014 WL 652313, at *1 (D.R.I. Feb. 19, 2014)
(quoting Brian Jackson & Co. v. EximiasPharm.
Corp., 248 F.Supp.2d 31, 38 (D.R.I. 2003)). To make that
determination, the Court must look to both private and public
interest factors to determine if transfer is appropriate.
Boothroyd Dewhurst, Inc. v. Bd. of Trs. of the Leland
Stanford Junior Univ., Civ. A. No. 92-0075-P, 1993 WL
385713, at *7 (D.R.I. July 8, 1993). Such factors include:
(1) ease of access to sources of proof! (2) availability of
compulsory process to compel attendance of witnesses; (3)
cost of attendance of willing witnesses; (4) ease of a view
of premises, if necessary; (5) enforceability of the
judgment, if obtained; (6) advantages and obstacles to a fair
trial; (7) status of the court's trial calendar; and (8)
familiarity of forum with applicable state law. Id.
moving party bears the burden of proving that a transfer is
warranted. Momenta Pharm., Inc. v. Amphastar Pharm.,
Inc., 841 F.Supp.2d 514, 522 (D. Mass. 2012). Novel
Brands moves for transfer to the United States District Court
for the District of New Jersey, arguing that New Jersey is
appropriate because it is more convenient for all parties.
Specifically, it argues that the majority of the witnesses
located in the United States reside in New Jersey, and the
majority of the evidence is located in New Jersey. Tristar
counters that this action should proceed in Rhode Island
because this is where acts of infringement have occurred,
Rhode Island is not far for potential witnesses, and it is
Tristar's choice of forum.
initial matter, the Court notes that because both parties are
located in New Jersey, the lawsuit could have been brought in
New Jersey. The Court finds that both the private and public
interest factors weigh in favor of transfer to the District
of New Jersey. First, since most of the documents relevant to
this matter are in electronic form, they are easily
producible in any state. Next, since both parties are
headquartered in New Jersey, representatives from both
parties who are called as witnesses are likely located in New
Jersey, or in any event, closer to New Jersey than Rhode
Island. Furthermore, while one of the product's inventors
lives abroad, and therefore a neutral factor, the other
inventor, Keith Mirchandani, lives in New Jersey. And since
Tristar has not identified any potential witnesses located in
Rhode Island, New Jersey is not only a more convenient forum
for the parties, but also more convenient for potential
third-party witnesses as well.
next argument that the cost of litigation favors Rhode Island
because its attorneys are located here and a transfer would
require it to retain counsel in New Jersey is unavailing.
Tristar has filed three similar proceedings in New Jersey
that have advanced beyond the pleading stage. Tristar
Prods., Inc. v. Ocean State Jobbers, Inc., No.
2:i7-cv01767-KSH-CLW (D.N.J, filed Mar. 16, 2017);
Tristar Prods., Inc. v. E. Mishan & Sons Inc.,
No. 1:17-cv-01204-RMB-JS (D.N.J, filed Feb. 21, 2017);
Tristar Prods., Inc. v. Telebrands Corp., No.
1:l7-cv01206-RMB-JS (D.N.J, filed Feb. 21, 2017). As a
result, Tristar clearly retains local counsel who represents
them in similar matters in New Jersey, proving that transfer
of the case to New Jersey is not inconvenient.
§ 1404(a) transfer requires that litigation be conducted
in the district that will best serve the "interests of
justice." While the Court must consider Tristar's
choice of forum as a factor, it is not entitled to
substantial weight in this matter because Tristar is a
nonresident, with no obvious connections to Rhode Island so
its choice of forum is given little deference by this Court.
See Nash v. CVS Caremark Corp., C.A. No. 09-079S,
2009 WL 2393937, at *2 (D.R.I. July, 1, 2009) (while
"[i]t is true that ordinarily a strong presumption
favors Plaintiffs choice of forum[, ]" the 'strong
presumption is greatly weakened where plaintiffs chosen forum
is not also his home'"). It is in the interests of
justice that this case be litigated in New Jersey, where both
parties are headquartered and where the acts leading to this
action likely occurred. Neither Tristar nor Novel Brands
produce their product in Rhode Island or distribute their
product from Rhode Island. This matter arose in Rhode Island
only because Tristar's ...