1 

UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF NEW YORK 

WHITEHAUS COLLECTION, a division of 

WHITE’S PLUMBING SUPPLIES, INC., 

 11 Civ. 217 (LBS) 

 Plaintiff, 

 MEMORANDUM

v. & ORDER

BARCLAY PRODUCTS, LIMITED, 

NANTUCKET SINKS U.S.A., and L.A. 

SALES, INC., 

 Defendants. 

 

SAND, J. 

 This is an action for patent infringement arising under 35 U.S.C. §§ 271 and 281 and 

trademark infringement arising under 15 U.S.C. § 1125(a). Before the Court is Defendant 

Barclay Products, Limited’s Motion to Transfer Venue pursuant to 28 U.S.C. § 1404(a). 

Defendant Barclay seeks to have this case transferred to the United States District Court for the 

Northern District of Illinois. 

For the reasons stated below, Defendant Barclay’s motion is granted. 

I. Background 

Plaintiff Whitehaus Collection is a Connecticut corporation with its principal place of 

business in West Haven, Connecticut. Compl. ¶ 2.1

 It operates as a designer, manufacturer, and 

distributor of high-end decorative plumbing fixtures. Id. Defendant Barclay Products, Limited 

(“Barclay”) is an Illinois corporation with its principal place of business in Gurnee, Illinois. 

Compl. ¶ 3. Defendant Nantucket Sinks, U.S.A. (“Nantucket”) is a Connecticut corporation 

 

1

 All citations to the Complaint refer to the Complaint filed by Plaintiff on January 11, 2011. 

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doing business as Seena Stone, LLC, with its principal place of business in Norwalk, 

Connecticut. Compl. ¶ 4. Defendant L.A. Sales, Inc. (“L.A. Sales”) is a New York corporation 

with its principal place of business in New York, New York. Compl. ¶ 5. All three Defendants 

conduct business in or sell fireclay sinks and other decorative plumbing features through their 

respective websites. Compl. ¶¶ 10, 15, 21, 27.

Plaintiff’s president, Efraim Eckhaus, was the original holder of United States Design 

Patent No. D624,635S, entitled “Reversible Sink Façades,” issued by the United States Patent 

Office on September 28, 2010. Eckhaus Decl. ¶ 1; Compl. Ex. A. Eckhaus assigned the patent to 

Plaintiff on December 20, 2010. Compl ¶ 11. The patent describes a fireclay sink with a fluted 

apron design on one side, and a concave panel design on the other (the “Patented Invention”). 

Id. ¶ 12. Plaintiff asserts that it owns “unique” trade dress in the Patented Invention, and that this 

trade dress is protected under the Lanham Act. Id. Plaintiff alleges that Barclay sells an 

infringing product (“Accused Product”), a fireclay sink marketed and sold under the name 

“Roberta.” Id. ¶ 16, Ex. C. The Accused Product, according to Plaintiff, is identical to the 

Patented Invention. Id. ¶ 18. Plaintiff makes similar allegations against the other two 

Defendants, id. ¶¶ 21-26 (Nantucket); ¶¶ 27-32 (L.A. Sales), but states that they have settled the 

dispute.2

 Pl. Opp. Br. Mot. Transfer 1 n.1.

Plaintiff filed a Complaint on January 11, 2011 alleging three counts of patent 

infringement under 28 U.S.C. § 271 with a claim to injunctive relief under 28 U.S.C. § 283, and 

three counts of trade dress infringement under provisions of the Lanham Act, 15 U.S.C. § 

1125(a). Barclay moved to transfer venue to the Northern District of Illinois on May 16, 2011. 

 

2

 The parties have not submitted any stipulations or other filings that officially record the alleged settlements or 

dismiss Nantucket or L.A. Sales from this proceeding. 

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II. Legal Standard 

“For 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.” 

28 U.S.C. § 1404(a). “Section 1404(a) proposes a two-part test. First, the transferee district 

must be one where jurisdiction over the defendant could have been obtained at the time suit was 

brought, regardless of defendant’s consent. . . . Second, the transfer must be in the interest of 

justice and convenience the parties and witnesses.” Ins. Co. of N. Am. v. S/S Ro Ro Genova, 661 

F. Supp. 1578, 1579 (S.D.N.Y. 1987) (internal citation omitted). 

Under the second prong of this test, “District courts have broad discretion in making 

determinations of convenience under Section 1404(a) and notions of convenience and fairness 

are considered on a case-by-case basis.” D.H. Blair & Co. v. Gottdiener, 462 F.3d 95, 106 (2d 

Cir. 2006). “In exercising such discretion, courts commonly consider at least nine factors, viz., 

(1) the convenience of witnesses; (2) the location of relevant documents and relative ease of 

access to sources of proof; (3) the convenience of the parties; (4) the locus of the operative facts; 

(5) the availability of process to compel the attendance of unwilling witnesses; (6) the relative 

means of the parties; (7) the forum’s familiarity with the governing law; (8) the weight accorded 

the plaintiff’s choice of forum; and (9) trial efficiency and the interests of justice, based on the 

totality of circumstances.” Amersham Pharmacia Biotech, Inc. v. Perkin-Elmer Corp., 11 F. 

Supp. 2d 729, 730 (S.D.N.Y. 1998). In applying this test, “each factor need not be accorded 

equal weight, and other factors may be considered.” Malone v. Commonwealth Edison Co., 2 F. 

Supp. 2d 545, 547 (S.D.N.Y. 1998). 

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The United States Court of Appeals for the Second Circuit has held that “the party 

requesting transfer carries the burden of making out a strong case for transfer.” New York 

Marine and Gen. Ins. Co. v. Lafarge N. Am., Inc., 599 F.3d 102, 114 (2d Cir. 2010). District 

courts “have consistently applied the clear and convincing evidence standard in determining 

whether to exercise discretion to grant a transfer motion.” Id.

III. Discussion 

The parties do not dispute that this case could have been brought in the Northern District 

of Illinois. Therefore, the first prong of § 1404(a)’s test is met. The nine factors underlying the 

second prong of the test are considered below. 

A. Locus of Operative Facts 

“The location of the operative events is a primary factor in determining a § 1404(a) 

motion to transfer.” Billing v. Commerce One, Inc., 186 F. Supp. 2d 375, 377 (S.D.N.Y. 2002) 

(internal quotation marks and citations omitted). “In a patent infringement action, the locus of 

operative facts is the jurisdiction where the design and development of the infringing patent 

occurred.” Bristol-Myers Squibb Co. v. Andrx Pharms., LLC, No. 03 Civ. 2503 (SHS), 2003 WL 

22888804, at *3 (S.D.N.Y. Dec. 5, 2003). Barclay is located in the Northern District of Illnois, 

along with documents and witnesses relevant to the case. The Accused Product was designed 

there, and its sales and marketing are conducted there. None of the parties are located in the 

Southern District of New York, and Plaintiff does not allege that any of the Accused Product’s 

design and marketing originates from this District. Barclay shipped a single unit of the Accused 

Product into this District, but “where defendants’ products are sold in many states, sales alone 

are insufficient to establish a material connection to the forum and to override the other factors 

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favoring transfer.” Bionx Implants, Inc. v. Biomet, Inc., No. 99 Civ. 740 (WHP), 1999 WL 

342306, at *4 (S.D.N.Y. May 27, 1999). 

Plaintiff argues that this case should stay in this District because “[o]perative facts in a 

patent infringement action include facts relating to the design, development, and production of a 

patented product.” Medien Patent Verwaltung AG v. Warner Bros. Entm’t Inc., 749 F. Supp. 2d 

188, 191–92 (S.D.N.Y. 2010). Moreover, Barclay has filed a counterclaim for declaratory relief, 

seeking a judgment that Plaintiff’s patent fails to meet the conditions for patentability set forth in 

35 U.S.C. §§ 101–03 and/or 112 et seq. Answer at 8–9. Plaintiff correctly argues that this 

counterclaim puts in issue operative facts relating to Plaintiff’s operations. Nevertheless, 

Plaintiff’s arguments are unavailing. They establish that Plaintiff’s home forum—the District of 

Connecticut—would be an appropriate forum for this action, but they establish no operative facts 

that took place in the Southern District of New York. At most, Plaintiff’s arguments tend to 

show that this District is relatively more convenient for Plaintiff’s witnesses. However, 

considerations of witness convenience are properly considered under different factors of the 

§ 1404(a) test. As far as the locus of operative facts is concerned, Plaintiff has failed to establish 

any facts situated in this District while Barclay has shown that ample facts are situated in Illinois. 

Therefore, the locus of operative facts analysis favors transfer to the Northern District of Illinois. 

B. Plaintiff’s Choice of Forum 

“A court generally accords significant weight to a plaintiff’s choice of forum.” Herbert 

Ltd. P’ship v. Elec. Arts Inc., 325 F. Supp. 2d 282, 291 (S.D.N.Y. 2004). This rule has two 

exceptions. First, “the plaintiff’s choice of forum receives less deference when that forum is not 

the plaintiff’s home district . . . .” Id.; see also ZPC 2000, Inc. v. SCA Grp., Inc., 86 F. Supp. 2d 

274, 280 (S.D.N.Y. 2000) (plaintiff’s choice of non-home forum “entitled to little deference”); 

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Coker v. Bank of Am., 984 F. Supp. 757, 766 (S.D.N.Y. 1997) (plaintiff’s choice of forum 

“entitled to lesser weight because [plaintiff] has chosen a forum that is not his residence.”). 

Second, “the weight afforded a plaintiff’s choice of venue is significantly diminished . . . where 

the operative facts have no connection to the chosen district.” Royal Ins. Co. of Am. v. U.S., 998 

F Supp. 351, 354 (S.D.N.Y. 1998). Courts in this District have applied these exceptions against 

plaintiffs.3

 In Herbert, a copyright and trademark infringement case, the court afforded the 

plaintiff’s choice of a non-home forum “relatively little weight” even where the plaintiff 

conducted all of its business operations through agents and business associates in the forum, 

holding that “apart from some sales of the allegedly infringing products none of the operative 

facts in this case occurred in New York . . . .” 325 F. Supp. 2d at 291. 

Here, neither Plaintiff nor any of the Defendants are located in this District. Furthermore, 

as discussed supra, Plaintiff has failed to establish any operative facts that have any connection 

to this District. At the most, Plaintiff can assert the proximity of its Connecticut operations to 

New York, but again, this factor is properly considered under the convenience prongs of the 

§ 1404(a) test. Therefore, this case falls under both exceptions to the deference ordinarily 

accorded a plaintiff’s choice of forum. Plaintiff’s choice of the Southern District of New York is 

not entitled to significant deference. 

 

3

 Other courts in this District have held that a plaintiff’s choice of a non-home forum should be afforded “greater 

deference” if it was “motivated by legitimate reasons,” and “diminishing deference” if “it was motivated by tactical 

advantage, such as forum shopping.” Caville v. Malibu Toys, Inc., No. 03 Civ. 9727 (SAS), 2004 WL 1516799, at 

*2 (S.D.N.Y. July 7, 2004). This test relies on Iragorri v. United Technologies Corp., which held that for forum non 

conveniens dismissals, the appropriate standard of deference depends on whether a plaintiff’s choice of a non-home 

forum was motivated by legitimate or tactical reasons. 274 F.3d 65, 73 (2d Cir. 2001). However, Iragorri is 

distinguishable because it did not involve a motion to transfer. Under a motion to transfer, plaintiff’s choice of 

forum “is no longer given the overriding consideration it may have once enjoyed under the former doctrine of forum 

non conveniens.” Y4 Design, Ltd. V. Regensteiner Pub. Enterprises, Inc., 428 F. Supp. 1067, 1070 (S.D.N.Y. 1977). 

Therefore, this Court adopts the approach in Herbert and other such cases. 

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C. Convenience of Witnesses and Availability of Process 

“Courts typically regard the convenience of witnesses as the most important factor in 

considering a § 1404(a) motion to transfer.” Herbert, 325 F. Supp. 2d at 286. “The convenience 

of non-party witnesses is accorded more weight than that of party witnesses.” Indian Harbor 

Ins. Co. v. Factory Mut. Ins. Co., 419 F. Supp. 2d 395, 402 (S.D.N.Y. 2005). However, “[a] 

party seeking to rely on the convenience of the witnesses factor must identify the material 

witnesses and supply a general description of what their testimony will cover.” Dostana Enter., 

LLC v. Fed. Express Corp., No. 00 Civ. 747 (RWS), 2000 WL 1170134, at *3 (S.D.N.Y. Aug. 

16, 2000). Where a party “has outlined the expected testimony of [its witnesses] in only vague 

terms, they will not be considered as material witnesses whose convenience will affect the 

balancing inquiry.” Dealtime.com v. McNulty, 123 F. Supp. 2d 750, 755 (S.D.N.Y. 2000). 

 Barclay argues that this factor of the analysis is neutral, because it is difficult to identify 

any non-party witnesses at this stage of the litigation. Accordingly, Barclay does not identify a 

single non-party witness who would be inconvenienced by venue in this District, or describe any 

expected testimony. Plaintiff counters that three non-party witnesses live within close proximity 

to this District and would be inconvenienced by transfer to the Northern District of Illinois: the 

two other Defendants named in the Complaint, Nantucket and L.A. Sales, who have allegedly 

settled this litigation, and an unidentified former independent sales representative for Plaintiff 

based in Long Island, New York. 

 While Plaintiff correctly points out that Barclay has failed to meet its burden of 

specifying witnesses who would be inconvenienced absent a transfer, Plaintiff has also failed to 

outline the potential testimony of its non-party witnesses in terms specific enough to establish 

that testimony’s materiality. Plaintiff offers nothing about the prospective testimony of 

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Nantucket and L.A. Sales. As for the former independent sales representative, Plaintiff claims 

that he or she will offer testimony about the design of the Patented Invention. However, the 

patent was originally held by Efraim Eckhaus, Plaintiff’s president. Eckhaus Decl. ¶ 1; Compl. 

Ex. A. Plaintiff states that Eckhaus will testify regarding the conception and development of the 

Patented Invention. Therefore, testimony from the sales representative would be duplicative of 

Eckhaus’s testimony; Plaintiff has not revealed why the representative’s testimony would be 

necessary or how it would materially differ from Eckhaus’s testimony. In sum, Plaintiff has 

failed to establish that inconvenience to its proposed non-party witnesses argues against transfer 

of this case to Illinois. 

As for the convenience of party witnesses, both Plaintiff and Barclay state that their 

employees—located in Connecticut and Illinois—will offer material testimony. No party 

witnesses are located in this District. Transferring venue would only shift the inconvenience for 

party witnesses from one party to another, because employees of either party can be compelled to 

testify in either jurisdiction. Therefore, this factor is also neutral. See, e.g., Earley v. BJ’s 

Wholesale Club, Inc., No. 06 Civ 3529 (WHP), 2007 WL 1624757, at *3 (S.D.N.Y. June 4, 

2007) (“[B]ecause most of the witnesses in this action will likely be party witnesses, the 

convenience of witnesses is a neutral factor.”) 

 Regarding the availability of process to compel the testimony of unwilling witnesses, 

Plaintiff argues that this factor favors venue in this District because the three non-party witnesses 

it has identified, as well as party witnesses representing each of the three original Defendants in 

this action, are all subject to the subpoena power of this District. Here, neither party asserts that 

any witness will be unwilling to testify. Moreover, as held supra, Plaintiff has failed to establish 

that the testimony of the non-party witnesses is necessary to resolve this action. 

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 In sum, neither party can establish that the convenience of witnesses, the convenience of 

parties, or the availability of process to compel testimony favors either this District or the 

Northern District of Illinois. These factors are therefore neutral. 

D. Convenience of Parties 

“The parties’ convenience becomes a neutral factor in the transfer analysis if transferring 

venue would merely shift the inconvenience to the other party.” Beatie & Osborn LLP v. Patriot 

Scientific Corp., 431 F. Supp. 2d 367, 396 (S.D.N.Y. 2006) (quoting Wechsler v. Macke Int’l 

Trade, Inc., No. 99 Civ. 5725 (AGS), 1999 WL 1261251, at *6 (S.D.N.Y. Dec. 27, 1999)). 

Here, neither party is located in this District. The fact that Plaintiff resides in a neighboring 

district does not affect the analysis, since the inconvenience of travel between Illinois and the 

New York—New England area would be borne by Barclay absent a transfer, and merely shift to 

Plaintiff in the case of a transfer. Accordingly, this factor is neutral. 

E. Access to Sources of Proof 

Defendant Barclay argues that because “the bulk of relevant evidence will come from 

defendant’s offices and support staff,” Wechsler, 1999 WL 1261251, at *8, ease of access to 

relevant witnesses and documents favors the Northern District of Illinois. Plaintiff points out, 

however, that “location of documents . . . is not a compelling consideration when records are 

easily portable.” Medisim Ltd. v. BestMed LLC, No. 10 Civ. 2463 (SAS), 2010 WL 2697073, at 

*2 (S.D.N.Y. 2010) (internal citation and quotation marks omitted). Moreover, Defendant has 

not shown any hardship or inability to produce necessary documents in New York. See Medien 

Patent Verwaltung, 749 F. Supp. 2d at 191. Accordingly, this factor is neutral. 

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F. Trial Efficiency and the Interests of Justice 

“[T]he Court’s consideration of whether transfer is in the interest of justice is based on 

the totality of the circumstances . . . and relates primarily to issues of judicial economy.” Beatie 

& Osborn, 431 F. Supp. at 397. Statistics offered by Barclay indicate that the Southern District 

of New York’s docket is more congested than that of the Northern District of Illinois. While this 

factor has “no more than marginal relevance, it favors transfer.” In re Principal U.S. Prop. 

Account Litig., No. 09 Civ. 9889 (CM), 2010 WL 1645042, at *6 (S.D.N.Y. Apr. 22, 2010). 

G. Remaining Factors 

The parties do not dispute the relative means of the parties to bring suit in either forum. 

Nor do the parties dispute that courts in both districts are familiar with the governing law. 

“Patent law is federal law and any district court may handle a patent case with equal skill.” 

Wechsler, 1999 WL 1261251, at *9. Therefore, these factors are neutral. 

H. Balancing the § 1404(a) Factors 

Of the § 1404(a) factors of analysis for transfer of venue, none favor venue in this 

District. One of the most important factors—the locus of operative facts—strongly favors 

transfer of venue to the Northern District of Illinois. Barclay has also demonstrated that 

Plaintiff’s choice of forum is not entitled to deference, and that considerations of judicial 

economy slightly favor the Northern District of Illinois. The remaining factors are neutral. 

Therefore, Defendant has established that the balance of the § 1404(a) factors favors transfer. 

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IV. 	 Conclusion 

Defendant's Motion to Transfer Venue is granted. The Clerk of Court is directed to 

transfer this case to the United States District Court for the Northern District of Illinois. 

SO ORDERED. 

o Dated: 	August~{ ,2011 

New York, NY 

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