UNITED STATES DISTRICT COURT 

CENTRAL DISTRICT OF CALIFORNIA 

CIVIL MINUTES – GENERAL 

Case No. LA CV14-03106 JAK (JEMx) Date September 25, 2014 

Title Signal IP, Inc. v. Ford Motor Company 

CV-90 (10/08) CIVIL MINUTES - GENERAL Page 1 of 8 

Present: The Honorable JOHN A. KRONSTADT, UNITED STATES DISTRICT JUDGE 

Andrea Keifer Not Reported 

Deputy Clerk Court Reporter / Recorder 

Attorneys Present for Plaintiff: Attorneys Present for Defendant: 

Not Present Not Present 

Proceedings: (IN CHAMBERS) ORDER GRANTING DEFENDANT FORD MOTOR 

COMPANY’S MOTION TO TRANSFER TO THE EASTERN DISTRICT OF 

MICHIGAN (DKT. 35) JS-6 

I. INTRODUCTION 

On April 23, 2014, Plaintiff Signal IP, Inc. (“Plaintiff”) brought this action against Ford Motor Company 

(“Defendant”), alleging direct and indirect infringement of six United States Patents: Nos. 5,714,927, 

5,732,375, 6,434,486, 6,775,601, 6,012,007, and 5,463,374 (collectively, the “Patents-In-Suit”). 

Defendant moved to transfer the action to the Eastern District of Michigan (the “Motion”). Motion, Dkt. 35. 

A hearing on the Motion was held on September 15, 2014, and the Motion was taken under submission. 

For the reasons stated in this Order, the Motion is GRANTED. 

II. BACKGROUND 

Defendant is an automobile manufacturer whose headquarters are located in Detroit, Michigan. Dkt. 36 at 

4, 10. Plaintiff, which was established and incorporated on February 27, 2014, is located in Los Angeles, 

California. Motion, Ex. 2, Dkt. 36-3 at 1. On March 26, 2014, Plaintiff became the assignee of the 

Patents-in-Suit. Motion, Ex. 3, Dkt. 36-4 at 3. 

Doug Croxall is the Chief Executive Officer of both Plaintiff and Plaintiff’s parent company, Marathon 

Patent Group. Croxall Decl., Dkt. 38-6 at ¶ 1. “All relevant work regarding [Plaintiff] and its predecessor in 

interest Loopback Technologies, Inc. has been performed from [Marathon Patent Group’s] Los Angeles 

office.” Id. at ¶ 5. Croxall lives in Los Angeles. Croxall Decl., Dkt. 38-6 at ¶¶ 1-2. Plaintiff has not alleged 

that it has any other employees or that it engages in any business other than licensing and protecting its 

patent portfolio. 

Defendant “conducts the research, design, development, marketing, and advertising of the accused 

vehicles and technology chiefly in Dearborn, Michigan.” Motion, Dkt. 36 at 4. “For the 30+ accused 

vehicles . . . hundreds of [Defendant’s] employees in Dearborn were involved in the research, 

engineering, design, marketing and advertising of the accused vehicles.” Id. 

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UNITED STATES DISTRICT COURT 

CENTRAL DISTRICT OF CALIFORNIA 

CIVIL MINUTES – GENERAL 

Case No. LA CV14-03106 JAK (JEMx) Date September 25, 2014 

Title Signal IP, Inc. v. Ford Motor Company 

CV-90 (10/08) CIVIL MINUTES - GENERAL Page 2 of 8 

Plaintiff has filed 14 other similar actions before this Court against other defendants in the automotive 

industry, 13 of which remain pending at this time. Collectively these actions concern at least the same six 

patents that are issue here. All of those other cases have been deemed related pursuant to General 

Order 08-05. No decision as to potential consolidation has been made. Plaintiff believes that 

consolidation would be appropriate for claim construction and other pretrial matters, while Defendants 

have expressed reservations concerning consolidation. Joint Rule 16(b) Report, Dkt. 46 at 3, 14, 18-20. 

III. ANALYSIS 

A. Legal Standard 

The Motion has been brought pursuant to 28 U.S.C § 1404(a). That statute provides that “[f]or the 

convenience of parties and witnesses, [and] 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.” In a patent case, motions to 

transfer under 28 U.S.C. § 1404(a) are governed by the law of the regional circuit. In re TS Tech USA 

Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). “Section 1404(a) is intended to place discretion in the 

district court to adjudicate motions for transfer according to an individualized, case-by-case consideration 

of convenience and fairness.” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988). 

The moving party bears the burden of proving that the case should be transferred. Jones v. GNC

Franchising, Inc., 211 F.3d 495, 499 (9th Cir. 2000). To meet this burden, that party must demonstrate 

that both private and public interests favor a transfer and overcome the choice of forum made by the 

non-moving party. In Jones, the Ninth Circuit set forth ten factors that district courts may consider in 

determining whether the moving party has met its burden: (1) the location where the relevant agreements 

were negotiated and executed; (2) the District that is most familiar with the governing law; (3) the 

plaintiff’s choice of forum; (4) the respective contacts with the forum of the moving and non-moving party; 

(5) contacts relating to plaintiff’s cause of action that are present in the chosen forum; (6) the differences 

in the costs of litigation in the two forums; (7) the availability of compulsory process to compel attendance 

of unwilling non-party witnesses; (8) the ease of access to sources of proof in each forum; (9) the 

presence of a forum selection clause; and (10) any applicable public policy of the forum state. Id. at 

498-499. 

“[T]hese factors cannot be mechanically applied to all types of cases” and should be considered “under 

the statutory requirements of convenience of witnesses, convenience of parties, and the interests of 

justice.” Amazon.com v. Cendant Corp., 404 F.Supp.2d 1256, 1259 (W.D. Wash. 2005). 

B. Application 

Plaintiff does not dispute that it could have brought this action in the Eastern District of Michigan. Opp’n, 

Dkt. 38. The parties agree that there is no operative forum selection clause, and neither contends that 

there is some public policy of California that should be weighed as part of the analysis of the potential 

transfer of the action. The applicable Jones factors are next addressed. 

1. Where the Relevant Agreements Were Negotiated and Executed 

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UNITED STATES DISTRICT COURT 

CENTRAL DISTRICT OF CALIFORNIA 

CIVIL MINUTES – GENERAL 

Case No. LA CV14-03106 JAK (JEMx) Date September 25, 2014 

Title Signal IP, Inc. v. Ford Motor Company 

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The location of the negotiation and execution of the “relevant agreements” is neutral, because the 

location where Plaintiff executed its patent purchase agreements, which did not involve Defendant, has 

no bearing on venue. See Seely v. Cumberland Packing Corp., 10-CV-02019-LHK, 2010 WL 5300923 

(N.D. Cal. Dec. 20, 2010) (“There is no contract at issue in this action [for false patent marking]. Thus, this 

factor is irrelevant to this analysis.”) 

2. Familiarity with the Governing Law 

Plaintiff argues that the “Central District of California has significantly greater familiarity with patent 

litigation than the Eastern District of Michigan,” citing the Court’s participation in the Patent Pilot Program 

and adoption of patent rules. Opp’n, Dkt. 38 at 7-8. The Eastern District of Michigan does not participate 

in the Patent Pilot Program and does not have local patent rules. Id. at 8 (citing Velocity v. Audi of 

America, 2014 U.S. Dist. LEXIS 115699 (N.D. Ill. 2014)). 

Notwithstanding these distinctions, the Eastern District of Michigan routinely handles patent cases. Like 

many judges here in the Central District, many in the Eastern District use standing or model orders. 

These serve the same case management purpose as local patent rules. Reply, Dkt. 42 at 9. That judges 

in the Central District, including this Court, participate in the Patent Pilot Program may be relevant to the 

transfer analysis. Thus, a concentration of patent cases is consistent with the purposes of the Program. 

Industry Access, Inc. v. Ellie Mae, Inc., CV13-02769 KAJ (AJWx), Dkt. 31 (Sept. 18, 2013). However, as 

to the ability to apply federal law uniformly, “most courts have frowned on the suggestion that the judges 

of one district are more capable or experienced in a particular area than are judges of another district.” 

Lewis v. Grote Indus., Inc., 841 F. Supp. 2d 1049, 1055 (N.D. Ill. 2012). 

The familiarity of the districts with the governing law is a more significant factor when the case involves 

state law or rules that differ among the regional circuits. It is a less significant factor when the applicable 

law is uniform throughout the nation. See In re Link_A_Media Devices, 662 F.3d 1221, 1224 (Fed. Cir. 

2011) (proposed transferee district court was equally well equipped to address uniform national patent 

law). Patent law is uniform across all Circuits. Id. Because the Central District and the Eastern District of 

Michigan routinely handle patent cases, this factor is neutral. 

3. Plaintiff’s Choice of Forum 

There is a strong presumption in favor of Plaintiff’s choice of forum. See Decker Coal, 805 F.2d at 843 

(“The defendant must make a strong showing of inconvenience to warrant upsetting the plaintiff’s choice 

of forum.”). However, this presumption may be rebutted due to a variety of circumstances, including: 

when the party who has selected the challenged forum does not reside there; where there is some 

suggestion of forum shopping by the non-moving party; and when the chosen forum lacks a significant 

connection to the activities alleged in the complaint. Microsoft Corp. v. Tivo, Inc., No. C11-00134-RSM, 

2011 WL 1930640, at *3 (W.D. Wash. May 19, 2011); Williams v. Bowman, 157 F.Supp.2d 1103, 1107 

(N.D. Cal. 2001). 

Defendant argues that Plaintiff’s choice of forum is entitled only to minimal consideration for two reasons: 

(1) the design and engineering of the accused vehicles occurred outside of this District; and (2) Plaintiff 

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UNITED STATES DISTRICT COURT 

CENTRAL DISTRICT OF CALIFORNIA 

CIVIL MINUTES – GENERAL 

Case No. LA CV14-03106 JAK (JEMx) Date September 25, 2014 

Title Signal IP, Inc. v. Ford Motor Company 

CV-90 (10/08) CIVIL MINUTES - GENERAL Page 4 of 8 

was incorporated so recently. Motion, Dkt. 36 at 8-9. Plaintiff responds that it operates and is 

incorporated in the Central District of California, and that its connections are not “fleeting.” Opp’n, Dkt. 38 

at 6-7. 

Plaintiff is a California company operating in the Central District. But, it was incorporated on February 27, 

2014. This was less than two months before it brought this case. That timing provides some support for a 

claim of forum shopping. Motion Ex. 2, Dkt. 36-3. The design and engineering of the accused vehicles 

occurred outside of this District. Collectively, these facts take some force away from the presumption in 

favor of Plaintiff’s choice of this forum. However, this factor still weighs somewhat against transfer. 

4. The Parties’ Contacts with the Forum and the Contacts with the Chosen Forum 

Relating to Plaintiff’s Cause of Action 

“[I]n patent infringement actions, the preferred forum is that which is the center of gravity of the accused 

activity.” Amazon.com, 404 F. Supp. 2d at 1260 (internal quotation marks omitted). “The district court 

ought to be as close as possible to the milieu of the infringing device and the hub of activity centered 

around its production.” Id. This location is often where the development, research, and marketing of the 

accused product occurred. See Arete Power, Inc. v. Beacon Power Corp., No. CV 07-5167 WDB, 2008 

WL 508477, at *5 (N.D. Cal. 2008). “This makes sense because in determining whether infringement has 

been established, the principal target of inquiry is the design and construction of the accused product. 

The trier of fact will be asked to compare the claims in the patent with the accused product—examining its 

development, its components, its construction, and how it functions.” Id.

Defendant argues that its primary contacts are with the Eastern District of Michigan, and that the sale of 

many of its vehicles within the Central District of California is less significant. Motion, Dkt. 36 at 10. 

Plaintiff responds that Defendant has significant contacts within this District because it has “no fewer than 

seventy dealerships clustered in this District” including “the No. 1 volume Ford dealership in the world for 

21 consecutive years, Galpin Ford.” Opp’n, Dkt. 38 at 9 (emphasis in original). 

Although many Ford vehicles are sold in this District -- and in other ones throughout the United States -- 

the contacts relevant to this case, i.e., those with the greatest significance as to the research, design and 

marketing of the accused products, are centered in the Eastern District of Michigan. These factors favor 

transfer. 

5. The Comparative Cost of Litigating in the Districts and the Convenience of the 

Witnesses 

For the comparative cost of litigation to weigh in favor of transfer, there must be actual cost savings, and 

not mere shifting of the costs between parties. See, e.g., DIRECTV, Inc. v. EQ Stuff, Inc., 207 F. Supp. 2d 

1077, 1084 (C.D. Cal. 2002). Relevant costs include those related to where witnesses work and reside. 

See, e.g., Italian Colors Rest. v. Am. Express Co., No. CV 03-3719 SI, 2003 WL 22682482, at *5 (N.D. 

Cal. Nov. 10, 2003) (“Generally, litigation costs are reduced when venue is located near most of the 

witnesses expected to testify or give depositions.”). 

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CENTRAL DISTRICT OF CALIFORNIA 

CIVIL MINUTES – GENERAL 

Case No. LA CV14-03106 JAK (JEMx) Date September 25, 2014 

Title Signal IP, Inc. v. Ford Motor Company 

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Defendant has identified 16 individual employees who are expected to be witnesses and who reside in 

the Eastern District of Michigan. Decl. of Steven Schondorf in Support of Motion, Dkt. 36-2 at ¶ 7. 

Defendant contends that there would be a substantial cost associated with bringing many witnesses to a 

trial in Los Angeles, and that their travel would take them away from their regular job duties with a 

resulting disruption of Defendant’s ordinary business in Michigan. Motion, Dkt. 36 at 12. Plaintiff has 

identified only a single potential witness in this district -- its CEO. Reply, Dkt. 42 at 2. Plaintiff argues that 

it would incur substantial expense, and its business would be unnecessarily disrupted, by transfer of this 

action from Los Angeles to the Eastern District of Michigan. Croxall Decl., Dkt. 38-6 at ¶ 6. 

Defendant can be expected to have many more trial witnesses than Plaintiff. The factual inquiries in the 

case are focused on Defendant’s activities. It will be significantly more expensive for 16 witnesses to 

travel between Detroit and Los Angeles than for a single witness to travel on that route. Similarly, more 

business activity may be disrupted if 16 witnesses are away from work than one. To be sure, the effect 

may vary according to the responsibilities of the particular witnesses, as well as an assessment as to 

whether each would also miss work while appearing as a trial witness in Michigan. However, there is an 

added factor here: Defendant intends to obtain testimony from non-party witnesses, including employees 

of its suppliers who are located in the Eastern District of Michigan as well as named inventors in Indiana 

and prosecuting attorneys in Michigan and Ohio. Motion, Dkt. 36 at 12-13. A consideration of all of these 

facts leads to the conclusion that cost and convenience weighs substantially in favor of transfer. 

6. Availability of Compulsory Process 

Defendant argues that at least nine of its suppliers -- all of whom have evidence relevant to the case -- 

conduct their business relations with Defendant in the Eastern District of Michigan. Motion, Dkt. 36 at 12. 

Because these suppliers and their employees are not parties, their testimony may have to be obtained by 

using compulsory process. Id. at 12-13. Plaintiff responds that this factor is neutral because Defendant 

has not provided evidence that non-party witnesses would be unwilling to travel for trial. Opp’n, Dkt. 38 at 

13. 

Whether witnesses are willing to testify at trial is often something that cannot be reliably ascertained in 

advance of trial. Among other things, there is no certainty as to what witness may be needed at trial given 

that the proceedings are at such an early stage, and the issues have not yet been narrowed. However, 

Plaintiff has not identified any potential non-party witnesses who would be called and who reside in this 

forum. In contrast, Defendant has identified a significant number of potential trial witnesses who reside in 

Michigan. This disparity is sufficient to find that it is substantially more likely that Defendant will be 

prejudiced at trial by the unavailability of compulsory process should the action remain in this District. 

Therefore, this factor favors transfer. 

7. Ease of Access to Sources of Proof 

Defendant argues that its “documents relating to research, design, development, marketing, advertising, 

and sales of the relevant products are primarily maintained in the [Eastern District of Michigan]” and that 

“[a] non-practicing entity typically has scant evidence to produce.” Motion, Dkt. 36 at 11-12. Plaintiff 

responds that the location of documents should be afforded little weight because they may be easily 

transmitted electronically. Opp’n, Dkt. 38 at 11. Defendant replies that some of its evidence is in the form 

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CENTRAL DISTRICT OF CALIFORNIA 

CIVIL MINUTES – GENERAL 

Case No. LA CV14-03106 JAK (JEMx) Date September 25, 2014 

Title Signal IP, Inc. v. Ford Motor Company 

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of “physical evidence and source code” that is not easily transferred in that manner. Reply, Dkt. 42 at 4. 

“In patent infringement cases, the bulk of the relevant evidence usually comes from the accused infringer. 

Consequently, the place where the defendant’s documents are kept weighs in favor of transfer to that 

location.” In re Genetech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009); A10 Networks, Inc., 2011 WL 

5835374 at *4 (same). Although electronic transmission of documents may mitigate the inconvenience of 

access to documents relating to infringement, Metz v. U.S. Life Ins. Co., 674 F. Supp. 2d 1141, 1149 

(C.D. Cal. 2009), not all relevant evidence is electronic. And, there are particular sensitivities concerning 

access to source code, which Plaintiff believes will be at issue in this case. Joint Rule 16(b) Rep., Dkt. 46 

at 10. This factor weighs very slightly in favor of transfer. 

8. Compelling Local Interest in Adjudicating the Controversy 

A district may have a relevant local interest when claims “call into question the work and reputation of 

several individuals residing in or conducting business in this community.” In re Hoffman-La Roche, 587 

F.3d 1333, 1336 (Fed. Cir. 2009). Defendant argues that because its headquarters and principal place of 

business are in the Eastern District of Michigan, the design and marketing of the accused products took 

place there, and this action necessarily challenges the work and reputation of certain of its employees 

who performed that work, the Eastern District of Michigan has a strong local interest in adjudicating this 

controversy. Motion, Dkt. 36 at 10. 

Plaintiff responds that the Central District has an equally compelling interest in adjudicating this 

controversy because much of the alleged infringement occurred here. Opp’n, Dkt. 38 at 9-10. Further, 

Plaintiff argues that Defendant’s alleged long-standing and high-profile presence in the Detroit 

community suggests that Defendant may be engaging in forum shopping. Id. at 11. 

Each District has a significant interest in adjudicating this controversy; each side is located in one District. 

However, the center of gravity of the accused activity is in the Eastern District of Michigan. Thus, the 

Eastern District of Michigan has a somewhat stronger interest in adjudicating this case. This factor 

weighs slightly in favor of transfer. 

9. Judicial Economy 

Where “several highly technical factual issues are presented and the other relevant factors are in 

equipoise, the interest of judicial economy may favor transfer to a court that has become familiar with the 

issues.” Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed. Cir. 1997). Plaintiff 

argues that “judicial economy is determinative and weighs heavily against transfer.” Opp’n, Dkt. 38 at 3. 

Plaintiff notes that it has filed 13 other actions against similar defendants in the automotive industry, 

asserting the same six patents, and argues that “[a]ll actions therefore share common issues such as 

validity of the patents, claim construction, and infringement.” Id. at 3-4. As noted, those other actions are 

presently pending in this District, although a motion to transfer one of them is now pending. Motion to 

Transfer Case to Eastern District of Michigan, Dkt. 40, Signal IP, Inc. v. Fiat U.S.A., Inc., LACV 14-3105 

JAK (JEMx) (Sept. 23, 2014). 

Defendant responds that arguments about judicial efficiency are speculative because it is may be that 

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UNITED STATES DISTRICT COURT 

CENTRAL DISTRICT OF CALIFORNIA 

CIVIL MINUTES – GENERAL 

Case No. LA CV14-03106 JAK (JEMx) Date September 25, 2014 

Title Signal IP, Inc. v. Ford Motor Company 

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none of the other cases will make it to trial. Reply, Dkt. 42 at 12. Although it is impossible to predict the 

litigation path of these 14 cases, the Court will manage those pending here with regard to both pretrial 

and trial in a manner designed to generate all appropriate efficiencies. And, it is true that simply having 

the same patents before the same judge as to similar, if not identical legal and factual issues, creates 

efficiencies. See In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (“a familiarity with 

the patents could preserve time and resources.”). 

For these reasons, a consideration of advancing judicial economy weighs against transfer. However, 

this is not a case in which the other factors are in equipoise, making this one determinative. In Allen v. 

Scribner, 812 F.2d 426 (9th Cir. 1987), a Ninth Circuit case cited by the Federal Circuit in Regents of the 

University of California v. Eli Lilly & Co., 119 F.3d 1559, the Ninth Circuit affirmed a denial of transfer 

where the bulk of the cause of action occurred in the district where the case was pending and the case 

had proceeded there for more than three years. In another, the Ninth Circuit gave weight to the fact that 

“[t]he district court was familiar with the case and transfer may have led to delay.” Commodity Futures 

Trading Comm’n v. Savage, 611 F.2d 270, 279 (9th Cir. 1979). The Motion here is premised on different 

facts. Although this Court has conducted a Scheduling Conference and set dates that are designed to 

lead to an efficient Markman process, this case is at a very early stage. Thus, the judicial economy that 

could result from the litigation of this matter, along with more than a dozen others, is only one relevant 

factor in the transfer analysis. 

The Federal Circuit has held open the possibility that it could be proper to deny transfer based on judicial 

economy even when all of the convenience factors favor transfer. In re Vistaprint Ltd., 628 F.3d 1342, 

1345-46 (Fed. Cir. 2010) (citing Cont’l Grain Co. v. The FBL-585, 364 U.S. 19 (1960)). However, that 

court reached that conclusion because “§ 1404(a) commits the balancing determination to the sound 

discretion of the trial court based not on per se rules but rather on an ‘individualized, case-by-case 

consideration of convenience and fairness.’” Id. at 1345 (quoting Van Dusen v. Barrack, 376 U.S. 612, 

622 (1964)). Here, an individualized consideration of convenience and fairness leads to the conclusion 

that the potential judicial efficiency from having this action remain in this District is outweighed by the 

factors favoring transfer.1

 

IV. CONCLUSION 

An assessment of the relevant factors here demonstrates that the transfer of this action to the Eastern 

District of Michigan is justified by convenience and the interest of justice. Plaintiff’s choice of forum and 

judicial economy each weighs against transfer. However, the parties’ respective contacts with the Central 

District, the contacts relating to the cause of action in the Eastern District of Michigan, the difference in 

litigation cost in the two forums, the availability of compulsory process for non-party witnesses, the ease 

of access to sources of proof and the comparative interest of each forum in adjudicating the controversy, 

all weigh in favor of transfer. 

 

1

 Judicial efficiency may be served here by coordination between the District Courts handling litigation concerning 

the same patents. The formal multidistrict litigation procedures of 28 U.S.C. § 1407 may also be a means of 

increasing efficiency. 

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UNITED STATES DISTRICT COURT 

CENTRAL DISTRICT OF CALIFORNIA 

CIVIL MINUTES – GENERAL 

Case No. LA CV14-03106 JAK (JEMx) Date September 25, 2014 

Title Signal IP, Inc. v. Ford Motor Company 

CV-90 (10/08) CIVIL MINUTES - GENERAL Page 8 of 8 

For the foregoing reasons, the Motion is GRANTED. The case is TRANSFERRED to the Eastern District 

of Michigan. 

IT IS SO ORDERED. 

: 

Initials of Preparer ak 

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