A. Private Factors
i. Plaintiff’s Choice of Forum and Site of Material Events

Generally, a plaintiff's choice of forum is given substantial weight, particularly when the
plaintiff resides in the chosen forum, Symons Corp. v. Southern Forming & Supply, ine., 954 V.
Supp. 184, 186 (N.D. Ill. 1997); United Air Lines, 8 F. Supp. 2d at 798; Amoco Oil, 90 F, Supp.
2d at 960; Macedo v. Boeing Co., 693 F.2d 683, 688 (7th Cir. 1982). Sitrick is a resident of the
state of Illinois and has designed and produced his patented products in Mlingis. As a result,
freeHand “bears a heavy burden to show that the inconvenience of the parties and witnesses and
the dictates of justice are substantial cnough to overcome the presumption in favor of THinois
courts.” Sky Valley Ltd. v. ATX Sky Valley Ld., 776 F. Supp. 1271, 1276 (N.D. Ill. 1991) (citing
Bodine’s Inc. v. Sunny-O, Ine., 494 F. Supp. 1279, 1285 (N_D. MM. 1980)). As Sittick is an
individual residing in this district, FreefIand must carry the heavy burden of showing that transfer
is warranted. It is not enough that the transfer merely shifts the burden from one party to the
other; the transferee forum must be clearly more appropriate than the transferor forum.
Continental Hlinois National Bank and Trust Co, of Chicago y. Stanley, 585 F. Supp. 610, 612
(ND. Il. 1984).

FreeHand argues that the plaintiff's choice of forum should be given less weight than it is
normally entitled to because it lacks a significant connection between this district and Sitrick’s
infringement claim. The plaintiff's choice of forum is only afforded less deference when it lacks
any significant contact with the underlying forum, Symons Corp,, 954 F, Supp. al 186. The

connection between Sitrick’s infringement claim and this district lies in the demonstration by

FrecHand to the Chicago Lyric Opera and the Chicago Symphony in February, 2002. This Court



court’s familiarity with applicable law; (2) congestion of the respective dockets and the prospects
for an earlier trial; and (3) the relation of the community to the issues in the litigation and the
desirability of resolving controversies in their locale. Beral Corp. v. BIC Corp., 2002 U.S. Dist.
LEXIS 12932 at *18 (N.D. Ll. July 8, 2002).
i. The Court's Familiarity With Applicable Law

“Resolving litigated controversies in their locale is a desirable goal of the federal courts.”
Doage v. Board of Regents, 950 F. Supp. 258, 262 (N.D. Ill. 1997). Illinois has a strong interest
in adjudicating injuries that occur within the state, including patent infringement actions.
Coalsavings.com, 53 F, Supp. 2d at 1005. As Sitrick is an Ilinois citizen, whose injury is
alleged to have occurred at least in part within the state, Illinois’ stake in the outcome of the case
is substantial. This factor weighs in favor ofa denial of transfer.
ii. Congestion of the Respective Dockets

With regard to this factor, the two most relevant statistics in determining speed of
litigation are (a) the median months from filing to disposition, and (b) the median months trom
filing to trial. Amoco Oil, 90 F. Supp. 2d at 962. According to the 2001 Annual Report of the
Director (Leonidas Ralph Mecham) on Judicial Business of the United States Court, which is the
most recent report, the median months from filing to disposition (where there is no court action)
in the Northern District of California is 8.1 months, and the median in the Northern District of
Tllinois is 6.3 months. See Table C-5, U.S, District Courts: Median Time Intervals from Filing to
Disposition of Cases Terminated, by District and Method of Disposition, During the 12-Month
Period Ending September 30, 2001, available at

http://www.uscourts.zov/judbus2001/appendices/c05sep01.pdf. The median time from filing to



ii. Relative Ease of Access to Evidence and Convenience of the Parties

The Court next considers "the residence of the parties and their ability to bear the expense
of trial in a particular forum," Medi USA, 791 F. Supp. at 210. The ability or inability of cither
party to bring relevant documents to court that are not already located within the district "neither
militates for or against transfer." /fanley v. Omarc, Inc., 6 F. Supp. 2d 770, 775 (N.D. Ill. 1998).

Evidence is readily available in this instance regardless of where it is located. ‘The Court
will consider if "practicality and convenience are best served when [it] is prosecuted where the
alleged acts of infringement occurred and the defendant has a regular and established place of
business so as to facilitate the production and investigation of books, records and other data
necessary to the discovery and trial techniques employed in the patent field." Ardco, lnc. v.
Page, Ricker, Felson Marketing, Inc., 1992 U.S, Dist. LEXIS 14299, 25 U.S.P.Q.2d 1382, 1386
(N.D. IL 1992) (quoting Spound v. Action Industries, Inc., 369 F. Supp. 1066, 1069 (N.D. Tl1,
1974). In the present case, the alleged acts of infringement occurred in both the demonstrations
of FreeHand’s products in Illinois as well as the sales of its products in California. While
FreeHand’s place of business has been established as being in Los Altos, California, other courts
have pointed out that “all relevant documents will have to be collected, copied, inspected and
sent to the offices of trial counsel [in both venues.]” Coolsavings.com, Inc. v. 10.Commerce, Inc.,
53 F. Supp. 2d, 1000, 1006 (N.D. Ill. 1999), Responding to the advances in copying technology
and information storage, courts have acknowledged that “progress in communications and
transportation has made the defense of a lawsuit in a foreign tribunal less burdensome.” World-

Wide Volkswagen Corp. v. Woodson, 444 U.S, 286 (1980) (quoting Hanson y. Denckla, 357 U.S.

235, 250-51 (1958)); see also Blumenthal v. Mgmt. Assistance, Inc., 480 F. Supp. 470, 472-73



has alrcady determined that the events surrounding this demonstration were significant enough to
confer personal jurisdiction of the Court over FrecHand. ‘Thus, this is not an instance in which
the plaintiff’ choice of forum has “relatively weak connections with the operative (acts giving
rise to the claim.” VonHoldt, 887 F. Supp. at 188 (N.D. Ill. 1995). As these connections
between the district and the plaintiff's claim may certainly be classified as greater than “weak,”
the plaintifi’s choice of forum is entitled to its usual substantial deference.

When determining the appropriate weight that should be accorded to the plaintiff's choice
of forum, it is also necessary to consider the situs of material events. This claim arises out of the
defendant’s alleged infringement of the plaintif1’s ‘960 and ‘168 patents. Freeland argues that
because the product design, development, manufacturing, warehousing, and shipping of the
allegedly infringing products have or will take place in California, the situs of the material events
is California, not Illinois. (Compl. P 4), However, the material events of a patent infringement
case do not revolve around a particular situs. Medi USA, 791 F. Supp. at 210. Patent
infringement determinations are made by comparing the alleged infringing device with the
language of the claims. See SRI Jnternat’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1121 (Fed. Cir. 1985). This determination does not involve any significant location. Medi USA,
791 F. Supp. at 210. Therefore, the fact that the allegedly infringing products are or will be
designed and produced in California docs not weigh heavily in favor of transfer out of the
Northern District of Minois, especially as FreeHand is alleged to have committed infringing

activities in this forum as well. FreeHand has not met its considerable burden in proving that

transfer out of the plaintiff's chosen forum is warranted.



the nature and quality of their testimony in relationship to the issues of the case. Midwest
Precision Services v. PTM Indus., 574 F. Supp. 657, 659 (N.D. Tl. 1983), With respect to the
convenience of the witnesses in this action, Freeland asserts that they have four officers, eight
current independent contractors, and three former independent contractors; fourteen out of the
fiftccn total prospective witnesses are located in California (Def. Reply P 3). FreeHand docs
concede that it is unlikely that each of these fifteen persons would be called upon to testify at
tual, but asserts that “at least several” will be needed (/d.). Freeland has not specifically
identified what these witnesses would testify to. Sitrick has not identified his potential witnesses
at this point in the litigation, but as he does not seek to transfer the case, this is not his burden at
this time, Without clear identification of either party’s witnesses or the substance of their
testimony, the remaining convenience issues to consider would be those of expert witnesses for
both partics. As patent cases tend to be battles of experts on validity and infringement issues,
Medi USA,791 P. Supp. 211, neither California nor Illinois is plainly more convenient than the
other in this respect. Expert witnesses may be readily found in any district, so this Court will not
give any weight to the parties’ ability to obtain potential expert witnesses in either Illinois or
California.
B. Public Factors / Interests of Justice

The interests of justice components of the 1404(a) analysis concerns the “efficient
administration of the court system.” Coffey, 796 F.2d at 221. This consideration embraces
“traditional notions of judicial economy, rather than the private interests of the litigants and their

witnesses.” 7G Ins. Co. v. Brightly Galvanized Products, {ne., 911 F. Supp. 344, 346 (N.D. Il.

1996), The court must consider certain public interest factors that may warrant transfer: (1) the



‘Minute Order Form (06/97)

ry

United States District Court, Northern District of Illinois

‘a
Name of Assigned Judge
or Magistrate Judge

Ronald A. Guzman

Sitting Judge if Other
than Assigned Judge

CASE NUMBER 02 C 1568 DATE 3/24/2003
CASE David H. Sitrick vs. Freehand Systems, Inc.
TITLE
In the following bux (a) indicate the party filing the motion. e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.
DOCKET ENTRY:
qd) Oo Filed motion of [ use listing in “Motion” box above.]
(2) oO Brief in support of motion due.
3) oO Answer brief to motion duc_ . Reply to answer brief due
(4) oO Ruling/Hearing on set for at
(5) Qa Status hearing[held/continued to] [set for/re-set for] on set for at
(6) Oo Pretrial conference{held/continued to] (set for/re-set for] on set for at
(7) Qa Trial{set for/re-set for] on at
(8) oO [Bench/Jury trial] [Hearing] held/continued to at
(9) o This case is dismissed [with/without] prejudice and without costs[by/agreemenUpursuant to]
OFRcP4(m) O Local Rule 41.1 OC FRCP41(a)(1) O FRCP41{a)(2).

| {Other docket entry] . ENTER MEMORANDUM OPINION AND ORDER: Defendant’s mation

to transfer venuc to the Northern District of California with respect to Plaintiff's action against defendant

is denied pursuant to 18 U.S.C. Section 1404(a),
(il) (For further detail see order attached to the original minute order.]

No notices requited, advised in open court,

‘No nutices required. nymber of norices,

MAR 27,2003

‘Notices mailed by judge's staff,

Notified counsel by telephone.

vo | Docketing to mail notices,

Mail AO 450 farm nna ooeersias'q
Copy to judge/magistrate judge.
gr eh i he ersy
courtroom y Nhl dew a ewe
TBK deputy’s :
initials + |
* Date/inie received in
central Clerk's Office smiling deputy inns



CONCLUSION
Freehand’s motion to transfer venue to the Northern District of California with respect to

Sitrick’s action against Freehand is denied pursuant to 28 U.S.C. § 1404(a).

SO ORDERED ENTERED: /. 2y/e2

IION. RONALD A. GUZM&
United States Judge

11



trial in California is 24.5 months, and in Ilinois it is 25.4 months. Jd. The fact that there is a
higher backlog in the Northern District of California weighs against transfer to that forum.

iii. Relation of the Community to Issues in the Litigation and the Desirability of Resolving
Controversies in Their Locale

Patent infringement is a question of federal law, and both this Court and the Northern
District of California are both equally competent to hear and decide upon such matters. While
the Illinois court is more familiar with its own substantive laws, courts often decide substantive
legal questions based upon another state’s laws, Amoco Oil, 90 F, Supp. 2d at 962. Further,
where the law in question in neither complex nor unscttled, the interests of justice remain neutral
between competing courts, Bodine’s, 494 F. Supp. 1279, 1286-87 (N.D. Ill. 1980). Thus, this
issue ncither weighs in favor or against the transfer.

Ultimately, as with all cases where the parties reside in different states, one party must
bear the inconvenience of litigation in a forum other than its home state. In this instance, the
factors analyzed cither weigh in Sitrick’s favor or are neutral as to the two parties. As Sitrick has
chosen this Court as his forum, a forum that is ncither unduly inconvenient to FreeHand nor

adverse to the interests of justice, the court has concluded that in light of all the facts and

circumstances known to this Court this case should proceed in the Northern District of Illinois.



(N.D. II. 1979) (photocopying technology removes inconvenience despite vast amount of
documents located in distant forum). Therefore, this factor is neutral as to the convenience of the
respective parties, as cach is minimally inconvenienced by the need to obtain documents from the
other in another state.

While not an overriding factor, the parties’ relative financial ability to undertake a trial in
any particular forum is a relevant consideration in determining the convenience of the parties.
Sitrick argues that FreeHand is a corporate entity with venture capital backing, while Sitrick is an
independent inventor with no financial backing, and thus, Sitrick is entitled to his choice of
forum as the party with the greater financial burden in litigating out-of-state. In opposition to the
assertion that Sitrick would be financially disadvantaged to conduct litigation in the Northern
District of California, FrecHand contends that Sitrick has demonstrated a willingness and
capacity to maintain multiple patent litigations at the same time and in distant jurisdictions, and
that this activity weighs in favor of transfer. (Def. Reply P 4-5). Simply because Sitrick has
been involved with "sizeable patent infringement actions" in federal courts in California certainly
docs not bind him to that forum forever. Sitrick has never initiated a lawsuit outside of Illinois;
the patent infringement actions to which FreeHand refers have been declaratory judgment actions
brought against Sitrick in California. Freeland appears to suggest that because Sitrick has acted
to defend these suits, he is willing and capable (and perhaps eager) to maintain multiple and
expensive litigation efforts in different jurisdictions.

iii. Convenience of Witnesses

Addressing the issue of the convenience of potential witnesses involves not only a

consideration of the number of witnesses located in or near the respective forums, but focuses on



circumstances, that the transfor forum is clearly more convenient” than the transferor court.
Coffey, 796 F.2d at 219-20, In making a transfer determination, the court must consider both the
private interest of the parties and the public interests of the Court. Medi USA v. Jobst Inst., Inc.,
791 F. Supp. 208, 210 (N.D. IIL 1992). Factors for the court to consider in assessing private
interests include: (1) plaintif!’s choice of forum, (2) the situs of the material events, (3) the
relative ease and access to sources of proof, (4) the convenience of the parties and (5) the
convenience of the witnesses. Amoco Oil, 90 F, Supp. 2d at 960. Public interest factors or
interests of justice “relate to the court’s familiarity with the applicable law, the speed at which
the case will proceed to trial, and the desirability of resolving controversies in their locale.”
VonHoldt v, Husky Injecting Molding System Ltd., 887 F. Supp. 185, 188 (N.D. Ill. 1995). These
interests of justice “may be determinative in a particular case, cven if the partics and witnesses
might call for a different result.” Coffey, 796 F.2d at 220.

Venuc in patent infringement actions is controlled by 28 U.S.C. § 1400(b), which
provides: “any civil action for patent infrmgement may be brought in the judicial district where
the defendant resides, or where the defendant has committed acts of infringement and has a
regular and established place of business. FreeHand, the defendant in this case, resides in the
Northern District of California. Because venue is proper in both this district, and under 28
U.S.C. § 1400(b), in the Northern District of California, the only issues that remain to be decided

pertain to the convenience of the partics and witnesses, as well as the interests of, justice.

ive)



in Los Altos, California. (Ans. P 2).

On March 4, 2002, Sitrick filed the instant patent infringement suit in this Court, alleging
that I'reeHand had infringed its ‘960 and ‘168 patents (Compl. P 1). On June 6, 2002 FrocHand
filed a motion to dismiss the suit for lack of personal jurisdiction pursuant to FED. R. Civ.
P.12(b)(6). That motion was denied on Oct. 29, 2002. Fourteen days later, FreeHand filed this
motion to transfer venue under 28 U.S.C. § 1404(a) to the Northern District of California. For
the reasons set forth below Freehand’s motion to transfer venuc is denied.

DISCUSSION

A motion to transfer is governed by 28 U.S.C. § 1404(a). Under 1404(a), a federal
district court may “for the convenience of the parties and witnesses and in the interest of justice
». transfer any civil action to any other district or division where it might have been brought.” 28
U.S.C. § 1404(a); Coffey v. Van Dorn Lron Works, 796 F.2d 217, 219 (7th Cir, 1986). A section
1404(a) transfer is appropriate only where “(1) venuc was proper in the transferor district, (2)
venue and jurisdiction would be proper in the transferee district, and (3) the transfer will serve
the convenience of the parties and the witnesses as well as the interests of justice.” United Air
Lines, Inc. v. Mesa Airlines, Inc., 8 F, Supp. 24 796, 798 (N.D. Tl. 1998). Because determining
whether transfer is appropriate “involves a large degree of subtlety and latitude,” and is made on
a case-by-case basis, it is therefore “committed to the sound discretion of the trial judge.”
Coffey, 796 F.2d at 219; Amoco Oil Co, v. Mobil Oil Corp., 90 F. Supp. 2d 958, 959 (N.D. Hl.
2000).

To aid the trial judge in determining the final element of the 1404(a) analysis, the party

seeking to transfer venue “has the burden of establishing, by reference (o particular



IN THE UNITED STATES DISTRICT COURT e
FOR THE NORTHERN DISTRICT OF ILLINOIS DAGKETED

EASTERN DIVISION MAR 2 7 2003
DAVID H. SITRICK )
)
) No. 02. C1568
Plaintiff, )
)
) Judge Ronald A. Guzman
)
y )
)
)
FREEHAND SYSTEMS, INC, )
a California Corporation, y
)
Defendant. )

MEMORANDUM OPINION AND ORDER

Pending is Defendant l‘reehand Systems, Inc. motion to transfer this lawsuit pursuant to

28 U.S.C. § 1404(a). For the reasons set forth below, this motion is denied.

BACKGROUND FACTS
Plaintiff David Sitrick is an Ilinois resident and holds patents for two inventions relating
to transposing, communicating and displaying musical compositions under U.S. Patent No.
5,728,960 (hercinafter “the ‘960 patent”) and U.S. Patent No. 6,084,168 (hereinafter “the ‘168
patent”) (Compl. P 1), Defendant FreeHand Systems, Inc. (“Freeland”) is a corporation

organized and existing under the laws of the state of Nevada, with its principal place of business