4895-3369-0574 

IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

SIGNODE INDUSTRIAL GROUP LLC, 

 Plaintiff, 

 v. 

SAMUEL, SON & CO., LTD. and SAMUEL, SON 

& CO. (USA) INC. d/b/a SAMUEL PACKAGING 

SYSTEMS GROUP and SAMUEL STRAPPING 

SYSTEMS, 

 Defendants. 

Civil Action No. 2:24-cv-00080-JRG 

JURY TRIAL DEMANDED 

DEFENDANTS SAMUEL, SON & CO., LTD.’S AND SAMUEL, SON & CO. (USA) 

INC.’S MOTION TO TRANSFER TO THE NORTHERN DISTRICT OF ILLINOIS 

PURSUANT TO 28 U.S.C. § 1404(a) 

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TABLE OF CONTENTS 

I. INTRODUCTION ...............................................................................................................1

II. FACTUAL BACKGROUND ..............................................................................................2

A. Both Parties Lack Any Significant Relationship to This District, and 

Instead Have Significant Ties to N.D. Ill. ................................................................2

1. Samuel has no meaningful relevant ties to this District, but has 

significant relevant ties to N.D. Ill. ..............................................................2

2. Signode has no meaningful ties to this District, but has significant 

relevant ties to N.D. Ill. ................................................................................4

B. No Known Relevant Non-Party Witnesses Reside in This District, while 

Several Non-Party Witnesses Reside in N.D. Ill. ....................................................5

III. LEGAL STANDARDS .......................................................................................................6

IV. ARGUMENT .......................................................................................................................7

A. This Lawsuit Could Have Been Filed in N.D. Ill. ...................................................7

B. The Private Interest Factors Favor Transfer to N.D. Ill. ..........................................7

1. Sources of proof are more accessible from N.D. Ill. ...................................7

2. Witness convenience and cost of attendance favors N.D. Ill. ....................10

3. Compulsory process is more available from N.D. Ill. ...............................12

4. No other practical problems resulting from transfer. .................................13

C. The Public Interest Favor Transfer to N.D. Ill. ......................................................13

1. N.D. Ill. has a strong interest in this lawsuit. .............................................13

2. The remaining public interest factors. .......................................................15

D. The Private and Public Interest Factors Weigh Strongly in Favor of 

Transfer. .................................................................................................................15

V. CONCLUSION ..................................................................................................................15

 

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TABLE OF AUTHORITIES 

Page(s) 

Federal Cases

Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 

321 F.2d 53 (5th Cir. 1963) ........................................................................................................ 6 

In re Genentech, Inc., 

566 F.3d 1338 (Fed. Cir. 2009).......................................................................................... passim

In re Hoffmann-La Roche Inc., 

587 F.3d 1333 (Fed. Cir. 2009)................................................................................................. 14 

In re Nintendo Co., Ltd., 

589 F.3d 1194 (Fed. Cir. 2009)................................................................................................... 6 

In re Radmax, Ltd., 

720 F.3d 285 (5th Cir. 2013) .................................................................................................... 13 

In re TS Tech USA Corp., 

551 F.3d 1315 (Fed. Cir. 2008)................................................................................................. 15 

In re Volkswagen AG, 

371 F.3d 201 (5th Cir. 2004) ...................................................................................................... 6 

In re Volkswagen of Am., Inc., 

545 F.3d 304 (5th Cir. 2008) ...................................................................................................... 8 

Other Cases 

AGIS Software Dev. LLC v. Huawei Device USA Inc., 2:17-cv-00513, 2018 U.S. Dist. LEXIS 

86382 at *19 (E.D. Tex. May 23, 2018) ................................................................................... 12 

Farmobile LLC v. Farmers Edge Inc., 

No. 2:21-cv-00411, 2022 U.S. Dist. LEXIS 120370 (E.D. Tex. July 7, 2022) ........................ 10 

Geotag, Inc. v. Classified Ventures, LLC, 2:11-cv-426, 2013 U.S. Dist. LEXIS 209383, at *4 

(E.D. Tex. Jan. 14, 2013) ................................................................................................... passim 

Kranos IP Corp. v. Riddell, Inc., Civil Action, 

No. 2:17-cv-443-JRG, 2017 U.S. Dist. LEXIS 138108 (E.D. Tex. Aug. 28, 2017) ......... passim 

Maz Encryption Techs. v. Blackberry Ltd., 6:15-cv-1167 RWS-JDL, 2016 U.S. Dist. LEXIS 

199674, at *10-13 (E.D. Tex. July 14, 2016) ........................................................................... 11 

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4895-3369-0574 

Phil-Insul Corp. v. Reward Wall Sys., 

No. 6:11cv53 LED-JDL, 2012 U.S. Dist. LEXIS 114493 (E.D. Tex. Feb. 10, 2012) ............. 11 

Quest NetTech Corp. v. Apple, Inc., 2:19-cv-00118, 2019 U.S. Dist. LEXIS 206019, at *13 (E.D. 

Tex. Nov. 27, 2019) .................................................................................................................. 13 

Unicorn Energy GMBH v. Tesla, Inc., 2:20-cv-00338, 2021 U.S. Dist. LEXIS 167381, at *3-6 

(E.D. Tex. Sept. 3, 2021) .......................................................................................................... 10 

United States ex rel. Ferguson v. Lockheed Martin Corp., 4:20-cv-097, 2023 U.S. Dist. LEXIS 

224624, at *21 (E.D. Tex. Dec. 18, 2023) ................................................................................ 14 

Federal Statutes

28 U.S.C. § 1391(c)(3) .................................................................................................................... 7 

28 U.S.C. § 1404(a) ............................................................................................................... passim 

28 U.S.C. § 1331 ............................................................................................................................. 7 

28 U.S.C. § 1338(a) ........................................................................................................................ 7 

28 U.S.C. § 1391 ............................................................................................................................. 7 

28 U.S.C. § 1400(b) ........................................................................................................................ 7 

Federal Rules

FRCP 45(c)(1)(A)-(B) .................................................................................................................. 12 

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I. INTRODUCTION 

Defendants Samuel, Son & Co., Ltd. (“Samuel Canada”) and Samuel, Son & Co. (USA) 

Inc. (“Samuel USA”) (collectively “Samuel”) hereby respectfully move the Court, pursuant to 28 

U.S.C. § 1404(a), to transfer this lawsuit to the Northern District of Illinois (“N.D. Ill.”), a much 

more convenient forum for this dispute compared to the Eastern District of Texas (“this District”). 

Regarding private interests, both parties have very strong connections to N.D. Ill. where 

the vast majority of the relevant evidence and witnesses reside, as compared to the relatively 

nominal connections to this District where no witnesses reside. Specifically, (1) the lion’s share of 

documents and physical evidence relating to the research, design, development, operation, 

marketing, sale, and finances of Samuel’s STL-500 strapping device (the “Accused Product”), as 

well as most of the relevant witnesses having knowledge of the same, are located in and/or work 

regularly in N.D. Ill.; (2) it will be markedly more convenient and less expensive for multiple party 

and non-party witnesses to attend trial in N.D. Ill.; (3) multiple relevant non-party witnesses are 

located in N.D. Ill. and are therefore subject to that jurisdiction’s subpoena power, while no 

relevant non-party witnesses have been identified as subject to this District’s subpoena power; and 

(4) there are no practical problems presented by transferring this case to N.D. Ill. Plaintiff has no 

apparent connection to this District specific to this case, and Samuel’s minor sales location in this 

District does not entail any unique evidence or witnesses relevant to this case. 

Regarding public interests, N.D. Ill. has a strong interest because Samuel USA is 

headquartered there, the Accused Product was designed and developed there, and all but one of 

the witnesses involved in the research, design, and development of the Accused Product remain 

located there. Of the remaining public interest factors, only time-to-trial arguably slightly disfavors 

transfer, but this alone cannot outweigh the remaining factors. This motion should be granted. 

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II. FACTUAL BACKGROUND 

A. Both Parties Lack Any Significant Relationship to This District, and Instead 

Have Significant Ties to N.D. Ill. 

1. Samuel has no meaningful relevant ties to this District, but has 

significant relevant ties to N.D. Ill. 

Founded in Canada in 1855, Samuel is a leading metals and industrial products 

manufacturer. Declaration of Traci Chapple (“Chapple Decl.”) ¶3. In 1963, Samuel created a 

packaging division that manufactures a broad range of strapping, hand tools, and unitizing 

equipment. Id. Today, Samuel USA, a Delaware corporation headquartered in Woodridge, IL, 

employs over 200 people in Illinois. Id. ¶4. Samuel USA’s packaging division, located at its 

headquarters, is one of the company’s largest businesses. Id.; see https://www.samuel.com/aboutsamuel/our-history. 

Samuel USA manufactures the Accused Product at Samuel USA’s headquarters in 

Woodridge, IL.1 Id. ¶6. The design and development of the Accused Product occurred in 

Woodridge, IL, and at DiMonte Group Inc., a product design and engineering firm located in 

Warrenville, IL. Id. The following current Samuel employees have knowledge relating to the 

research, design, development, operation, sales, and marketing of the Accused Product: 

 Traci Chapple, Product Design Manager at Samuel USA, has knowledge about 

the design, development, operation, and marketing of the Accused Product. Id. 

¶12. She works and resides in N.D. Ill. Declaration of Michael Houston 

(“Houston Decl.”) ¶2. 

 Dan Collins, Vice President, Sales at Samuel USA, has knowledge about sales 

of the Accused Product. Chapple Decl. ¶10. He works and resides in N.D. Ill. 

Houston Decl. ¶3. 

 Terry Evans, Vice President, Commercial Development, Technical Sales & 

Service – National Sales & Marketing at Samuel USA, knowledge of historical 

facts, development, and sale of the Accused Product. Chapple Decl. ¶9. Resides 

1

 Samuel Canada, a Canadian company headquartered in Ontario, Canada, provides relatively 

minor sales, marketing, and oversight support for Samuel USA’s STL-500 product. Id. ¶7. 

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in Ontario, Canada but travels to N.D. Ill. regularly for work. Houston Decl. ¶4. 

 Luis Ponte, President of Samuel Packaging Division as of 2023, has knowledge 

of historical facts, sales, and development of the Accused Product. Chapple 

Decl. ¶11. He resides in Ontario, Canada but travels to N.D. Ill. regularly for 

work. Houston Decl. ¶5. 

 Steve Snyder, Vice President, Marketing & Communications at Samuel 

Canada, has knowledge about marketing of the Accused Product. Chapple Decl. 

¶13. He resides in Ontario, Canada. Houston Decl. ¶6. 

 Tashinga Mawema, Digital Strategist at Samuel Canada, has knowledge about 

marketing of the Accused Product. Chapple Decl. ¶14. He resides in Ontario, 

Canada. Houston Decl. ¶7. 

A former Samuel employee currently living in Illinois also helped with design and development: 

 David VonderHaar, former Director, Engineering, Innovation & Equipment 

Technology at Samuel Packaging Systems Group, has knowledge about the 

design, development, operation, and marketing of the Accused Product. 

Chapple Decl. ¶15. He resides N.D. Ill. Houston Decl. ¶8. 

In sum, the current and former Samuel employees who researched and designed the 

Accused Product reside in N.D. Ill. The Samuel employees having knowledge of the general 

development, marketing and sales of the Accused Product reside in N.D. Ill., or in or near Ontario, 

Canada, with some traveling regularly to N.D. Ill. for work. Regarding the Accused Product 

marketing and sales, the primary decision-making has historically been, and continues to be, based 

at Samuel USA’s Woodridge, IL location, and with relatively minor involvement by Samuel 

Canada employees located in or near Ontario, Canada. Decl. Chapple Decl. ¶7. 

Samuel does not have any employees in this District responsible for the research, design 

or development of the Accused Product. Id. ¶19. While Samuel has a regional sales and distribution 

center in Longview, TX, the employees there only have generalized knowledge relating to the 

marketing and sales of the Accused Product limited to supporting regional sales. Id. ¶¶19-20. None 

of Samuel’s employees in this district are known or believed to have any particular or unique 

knowledge relevant to any of the issues in this lawsuit. Id. 

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Documents relating to the research, design, development, testing, operation, marketing, 

and sales of the Accused Product are located in N.D. Ill. (as to any paper copies) or on a server in 

Canada. Id. ¶21. No research, design, development, or testing documents are located in this 

District, while any marketing or sales documents for the Accused Product located at the Longview 

facility are general in nature (e.g., product brochures) without providing any unique or noncumulative information not located in Woodridge, IL at Samuel USA’s headquarters. Id. ¶¶21-22. 

2. Signode has no meaningful ties to this District, but has significant 

relevant ties to N.D. Ill. 

Signode has no discernable connection with this District specific to this case. Signode is 

organized under the laws of Delaware and is headquartered in Florida. First Amended Complaint 

(“FAC”; Dkt. 20), ¶2. Signode’s FAC does not identify any physical presence in this District. 

While Signode appears to maintain one place of business here (out of 124 worldwide locations 

(https://www.signode.com/en-us/locations/)), the available evidence indicates that its BXT3 tool 

(FAC, ¶25) was not designed or developed and is not manufactured in this District, but rather was 

designed and developed in Switzerland and Germany (Houston Decl. ¶9, Ex. 1), and is 

manufactured/provided by Orgapack in Switzerland (Id. ¶10, Ex. 2 at 2). 

The FAC alleges infringement of three Signode patents: U.S. Patent No. 11,667,417, No. 

11,667,418, and No. 11,932,430 (the “Asserted Patents”). FAC, ¶¶36, 47, 56. These patents 

collectively name four inventors, Flavio Finzo, Mirco Neeser, Dimitrios Takidis, and Andreas 

Keller (Dkt. Nos. 20-1 – 20-3), all residing in Switzerland (Houston Decl. ¶¶11-12, Exs. 3-4). 

Signode’s Initial and Additional Disclosures do not identify any relevant witnesses in this 

District. Id. ¶13, Ex. 5 at 4-5. Besides the named inventors (already discussed above), Signode’s 

disclosures only identify one additional salesperson, who resides in Switzerland. Id. ¶¶13-14, Exs. 

5-6. Thus, no witnesses meriting inclusion on Signode’s Initial and Additional Disclosures are 

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located in this District, and no apparent relevant Signode documents are kept in this District. 

In contrast, Signode has substantive ties to N.D. Ill. Signode was headquartered in 

Glenview, IL, until at least the end of 2021 before moving to Florida. Id. ¶15, Ex. 7. Despite that 

move, Signode recently opened its new global flagship facility in Roselle, IL, which is the new 

location for its Automation and Packaging Technologies division (believed to involve strapping 

tools) that was relocated from Glenview, IL. Id. ¶16, Ex. 8. Both locations are in N.D. Ill. 

Based on available information, Signode has at least two current employees located in N.D. 

Ill. who have knowledge regarding the prosecution of and/or prior art to the Asserted Patents: (i) 

Kevin Cukierski, who helped prosecute one or more of the Asserted Patents (Id. ¶17, Ex. 9) and 

(ii) Jeffrey D. Termanas, a prior-art author (Id. ¶18, Ex. 10). In addition, Adam Masia, an outside 

attorney who helped prosecute one or more of the Asserted Patents, resides in N.D. Ill. Id. ¶19, Ex. 

11. Thus, the evidence shows that Signode prosecuted the patents and developed prior art relevant 

to this lawsuit in N.D. Ill., suggesting that relevant witnesses, documents and physical evidence 

related to the prior art and the prosecution of the Asserted Patents are also likely located there. 

B. No Known Relevant Non-Party Witnesses Reside in This District, while 

Several Non-Party Witnesses Reside in N.D. Ill. 

Several employees of the DiMonte Group were involved in the design and development of 

the Accused Product. Chapple Decl. ¶16. None reside in this District; two reside in N.D. Ill., and 

one former DiMonte employee, resides in Tennessee near Knoxville: 

 Michael A. Graef, Principal Design Engineer at DiMonte Group, has 

knowledge about the design, development, and operation of the Accused 

Product. Id. ¶17. He resides in N.D. Ill. Houston Decl. ¶20. 

 Rebecca L. Hyma (fka “Rebecca Regan”), Senior Industrial Designer at 

DiMonte Group, knowledge about the design, development, and operation of 

Accused Product. Chapple Decl. ¶17. Resides in N.D. Ill. Houston Decl. ¶21. 

 Nathan Mellas, former Mechanical Design Engineer at DiMonte Group, has 

knowledge about the design, development, and operation of the Accused 

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Product. Chapple Decl. ¶17. Resides in Tennessee. Houston Decl. ¶22, Ex. 12. 

Thus, together with the ex-Samuel employee, Mr. VonderHaar, the non-party engineers primarily 

responsible for the design and development of the Accused Product all reside in N.D. Ill., with one 

exception for Mr. Mellas who resides closer to N.D. Ill. than to this District (id.). 

Samuel’s Initial and Additional Disclosures identify numerous additional non-party 

witnesses having knowledge regarding prior art to the Asserted Patents or their prosecution. Id. 

¶56, Ex. 43 at 5-10. None reside in this District, six reside in N.D. Ill., seventeen reside in Europe, 

two reside in Asia, one each resides in Arizona, Florida, Massachusetts, and North Carolina, and 

five are unknown as to their residences. Id. ¶¶11-12, 19, 23-46; Exs. 3-4, 11, 13-35. 

III. LEGAL STANDARDS 

“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 may have been brought.” 28 

U.S.C. § 1404(a). Courts perform a two-step inquiry to evaluate whether transfer is warranted. The 

court first determines “whether the judicial district to which transfer is sought would have been a 

district in which the claim could have been filed.” In re Volkswagen AG, 371 F.3d 201, 203 (5th 

Cir. 2004) (“Volkswagen I”). “Once that threshold is met, courts analyze both public and private 

factors relating to the convenience of parties and witnesses, as well as the interests of particular 

venues in hearing the case.” Kranos IP Corp. v. Riddell, Inc., Civil Action No. 2:17-cv-443-JRG, 

2017 U.S. Dist. LEXIS 138108, at *24-25 (E.D. Tex. Aug. 28, 2017) (citing Humble Oil & Ref. 

Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963); In re Nintendo Co., Ltd., 589 F.3d 

1194, 1198 (Fed. Cir. 2009)). 

A non-exhaustive list of private and public interest factors are considered in deciding a 

motion to transfer under § 1404(a). Volkswagen I, 371 F.3d at 203. The private interest factors 

include: (1) “the relative ease of access to sources of proof;” (2) “the availability of compulsory 

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process to secure the attendance of witnesses;” (3) “the cost of attendance for willing witnesses;” 

and (4) “all other practical problems that make trial of a case easy, expeditious and inexpensive.” 

Id. The public interest factors include: (1) “the administrative difficulties flowing from court 

congestion;” (2) “the local interest in having localized interests decided at home;” (3) “the 

familiarity of the forum with the law that will govern the case;” and (4) “the avoidance of 

unnecessary problems of conflict of laws of the application of foreign law.” Id. 

IV. ARGUMENT 

A. This Lawsuit Could Have Been Filed in N.D. Ill. 

Signode could have brought this lawsuit in N.D. Ill., which has subject matter jurisdiction 

under 28 U.S.C. §§ 1331 and 1338(a). Samuel USA’s headquarters and principal place of business 

is located in N.D. Ill. (Woodridge, IL) (Chapple Decl. ¶4), establishing personal jurisdiction over 

Samuel USA in N.D. Ill. based on its continuous and systematic contacts with the forum. For the 

same reasons, venue is proper in N.D. Ill. as to Samuel USA pursuant to 28 U.S.C. §§ 1391 and 

1400(b), and because the Accused Product was/is designed, developed, and sold in N.D. Ill. 

Samuel Canada is a Canadian corporation. Id. ¶3. N.D. Ill. has personal jurisdiction over 

Samuel Canada given its business relationship with Samuel USA relating to marketing and sales 

of the Accused Product that occur in N.D. Ill. and as the direct parent corporation of Samuel USA. 

Id. ¶7; Houston Decl. ¶55. Further, as a foreign corporation, venue as to Samuel Canada is proper 

in N.D. Ill. pursuant to 28 U.S.C. § 1391(c)(3). 

B. The Private Interest Factors Favor Transfer to N.D. Ill. 

1. Sources of proof are more accessible from N.D. Ill. 

The relative ease of access to sources of proof strongly favors transfer to N.D. Ill. This 

factor “pertains to where documentary evidence, such as documents and physical evidence, is 

stored.” Kranos, 2017 U.S. Dist. LEXIS 138108 at *26. Regarding documents maintained in 

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electronic format, “the Fifth Circuit has made clear that the fact that ‘access to some sources of 

proof presents a lesser inconvenience now than it might have absent recent developments does not 

render this factor superfluous.’” Id. at *28 (citing In re Volkswagen of Am., Inc., 545 F.3d 304, 

316 (5th Cir. 2008) (“Volkswagen II”)). Thus, this factor is treated equally with the remaining 

factors. Id. at n.11. “This factor weighs in favor of transfer when evidence could be more readily 

accessed from the proposed transferee district.” Geotag, Inc. v. Classified Ventures, LLC, No. 

2:11-cv-426, 2013 U.S. Dist. LEXIS 209383, at *4 (E.D. Tex. Jan. 14, 2013). “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 Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009). 

While Samuel’s server is located in Canada (Houston Decl. ¶57), the paper documents 

relating to the research, design, development, testing, operation, marketing, and sales of the 

Accused Product reside at Samuel USA’s headquarters in Woodridge, Illinois, within the N.D. Ill. 

Chapple Decl. ¶21. Samuel also manufactures the Accused Product and has prototypes and 

physical samples there. Id. ¶6. Further, the DiMonte Group was involved in the research, design, 

development, and testing of the Accused Product, and is located in Warrenville, IL, along with its 

relevant documents. Id. ¶16. In contrast to the extensive documentary evidence and witnesses 

present in N.D. Ill., Samuel does not maintain documents relevant to the design, development, or 

manufacture of the Accused Product in this District. Id. ¶21. 

 No unique, non-cumulative sales-related documents exist in this District. Id. ¶¶21-22. 

Further, to the extent that any documents or other physical evidence from Canada are needed for 

trial, Ontario is much closer to Illinois than to Texas (Houston Decl. ¶¶48-49, Exs. 36-37), making 

this evidence more readily accessible from N.D. Ill. See Kranos, 2017 U.S. Dist. LEXIS 138108 

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at *29-30 (rejecting plaintiff’s argument regarding financial documents stored in Ohio rather than 

Illinois because “Ohio is closer to Illinois but is a considerable distance from Texas”). 

There is no evidence suggesting that Signode maintains any unique documents or physical 

evidence relevant to this lawsuit in this District; instead, the available information indicates that 

the bulk of Signode’s relevant evidence is located in N.D. Ill and Switzerland. While Signode is 

now headquartered in Florida (FAC, ¶2), its Automation and Packaging Technologies division, 

which is believed to encompass research and development for strapping tools, has historically been 

and is currently located in N.D. Ill. Houston Decl. ¶16, Ex. 8. As one example, U.S. Patent Pub. 

No. US 2012/0210682, assigned to Signode (id. ¶50, Ex. 38), discloses a fully-automated handheld strapping tool similar to the devices claimed in the Asserted Patents, and names three 

inventors. The face of the document indicates that all three were located in N.D. Ill. (id.), with two 

(Joseph Gardner and Timothy Pearson) still located in N.D. Ill. (id. ¶¶23-24, Exs. 13-14). Because 

highly relevant prior art was developed by Signode in N.D. Ill., it is likely that relevant documents 

and other physical evidence are located in N.D. Ill. as well. To the extent Signode keeps some 

relevant documents at its headquarters in Tampa, FL, or at its location(s) in Switzerland, the 

distance from Tampa and Switzerland to the N.D. Ill. courthouse is not materially different than 

to this District’s courthouse. Id. ¶¶ 51-52, Exs. 39-40. 

Thus, because 1) Samuel’s relevant documents reside primarily in N.D. Ill.; 2) Samuel does 

not maintain any unique documents or evidence in this District; 3) Signode’s relevant documents 

are likely housed in N.D. Ill., Florida, and Switzerland; and 4) there is no apparent indication 

Signode maintains documents or physical evidence in this District, this factor weighs heavily in 

favor of transfer to N.D. Ill. See Geotag, 2013 U.S. Dist. LEXIS 209383 at *6-7 (finding this factor 

favors transfer even though plaintiff had strong ties to transferor district because the bulk of 

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defendant’s evidence was more easily accessed from the transferee district). This Court’s transfer 

decisions are consistent. See, e.g., Farmobile LLC v. Farmers Edge Inc., No. 2:21-cv-00411, 2022 

U.S. Dist. LEXIS 120370, at *6-9 (E.D. Tex. July 7, 2022) (transferring where majority of 

identified documents and sources of proof were located in transferee district); Kranos, 2017 U.S. 

Dist. LEXIS 138108 at *26-30, 38 (same); Unicorn Energy GMBH v. Tesla, Inc., No. 2:20-cv00338, 2021 U.S. Dist. LEXIS 167381, at *3-6 (E.D. Tex. Sept. 3, 2021) (same). 

2. Witness convenience and cost of attendance favors N.D. Ill. 

“The convenience of the witnesses is probably the single most important factor in transfer 

analysis.” In re Genentech, 566 F.3d at 1343. “Because it generally becomes more inconvenient 

and costly for witnesses to attend trial the further they are away from home, the Fifth Circuit 

established the ‘100-mile’ rule, which requires that ‘[w]hen the distance between an existing venue 

... and a proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to 

witnesses increases in direct relationship to the additional distance to be traveled.’” Id. (citing 

Volkswagen II, 545 F.3d at 317). “In analyzing the cost of attendance of willing witnesses, courts 

consider the convenience of both party and non-party witnesses.” Geotag, 2013 U.S. Dist. LEXIS 

209383 at *9. Here, “the courthouse for the Eastern Division of the Northern District of Illinois 

and the courthouse for the Marshall Division of the Eastern District of Texas are greater than 100 

miles apart. Thus, the Court must assess the inconvenience to witnesses of having to travel to one 

venue over the other.” Id. at *10. 

Samuel has identified at least four party witnesses and nine non-party witnesses residing 

in N.D. Ill. who have relevant information in this case (Houston Decl. ¶¶ 2-3, 17-18, Exs. 9-10): 

Witness Name Party or Non-Party Nature of Relevant Information 

Traci Chapple Party (Samuel) Design, development, marketing, sales, and 

finances of the Accused Product 

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Witness Name Party or Non-Party Nature of Relevant Information 

Dan Collins Party (Samuel) Design, development, marketing, sales, and 

finances of the Accused Product 

Kevin Cukierski Party (Signode) Prosecution of the Asserted Patents 

Jeffrey D. Termanas Party (Signode) Prior art to the Asserted Patents 

David Vonderhaar Non-Party (Former 

Samuel) 

Design, development, operation, and 

marketing of the Accused Product 

Michael A. Graef Non-party (DiMonte 

Group) 

Design, development, and operation of the 

Accused Product 

Rebecca L. Hyma Non-party (DiMonte 

Group) 

Design, development, and operation of the 

Accused Product 

Joseph Gardner Non-party Prior art to the Asserted Patents 

Timothy Pearson Non-party Prior art to the Asserted Patents 

Jason R. Nasiatka Non-party Prior art to the Asserted Patents 

William A. Bernard Non-party Prior art to the Asserted Patents 

James A. Haberstroh Non-party Prior art to the Asserted Patents 

Adam Masia Non-party Prosecution of the Accused Product 

Other party and non-party witnesses of interest reside in various locations, where N.D. Ill. 

is more convenient than this District. Samuel’s four party witnesses who reside in Ontario, Canada 

(Mssrs. Evans, Ponte, Snyder, and Mawema), are markedly closer to N.D. Ill. than to this District, 

making traveling to N.D. Ill. much more convenient. Id. ¶¶48-49, Exs. 36-37; see Phil-Insul Corp. 

v. Reward Wall Sys., No. 6:11cv53 LED-JDL, 2012 U.S. Dist. LEXIS 114493, at *9 (E.D. Tex. 

Feb. 10, 2012) (recognizing the far greater convenience for Canadian witnesses to travel to 

Nebraska versus Texas, and granting transfer where most of the defendants were Canadian, a 

defendant’s presence in the transferee district created a domestic locus, and most of the identified 

witnesses and documents were in Canada or the transferee district); Maz Encryption Techs. v. 

Blackberry Ltd., No. 6:15-cv-1167 RWS-JDL, 2016 U.S. Dist. LEXIS 199674, at *10-13 (E.D. 

Tex. July 14, 2016) (finding this factor weighs in favor of transfer to D. Del. where four witnesses 

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were located in Ontario, Canada). 

Witnesses in Europe or Asia will be required to travel a significant distance regardless of 

where they testify, and the few witnesses in other states have little impact on the analysis. 

Importantly, no apparent party or non-party witnesses having unique information relevant to this 

case reside in this District or within 100 miles of the courthouse, or even in the state of Texas. 

Significant weight should be given to the witnesses residing in N.D. Ill., strongly favoring 

transfer there. See Genentech, 566 F.3d at 1344-45 (finding that even where additional witnesses 

resided in Europe or other states, “because a substantial number of material witnesses reside[d] 

within the transferee venue and the state of California, and no witnesses reside[d] within the 

Eastern District of Texas, this factor [] weigh[s] substantially in favor of transfer.”). 

3. Compulsory process is more available from N.D. Ill. 

The availability of compulsory process to secure the attendance of witnesses favors transfer 

to N.D. Ill. “Transfer is favored when a transferee district has absolute subpoena power over a 

greater number of non-party witnesses.” Geotag, 2013 U.S. Dist. LEXIS 209383 at *7. Federal 

district courts have the absolute power to compel attendance “within 100 miles of where the person 

resides, is employed, or regularly transacts business in person” and have trial subpoena power over 

a person “within the state where the person resides, is employed, or regularly transacts business in 

person, if the person (i) is a party or a party’s officer; or (ii) is commanded to attend a trial and 

would not incur substantial expense.” FRCP 45(c)(1)(A)-(B). When there is no indication that a 

non-party witness is willing, the witness is presumed to be unwilling and considered under the 

compulsory process factor. See AGIS Software Dev. LLC v. Huawei Device USA Inc., No. 2:17-

cv-00513, 2018 U.S. Dist. LEXIS 86382 at *19 (E.D. Tex. May 23, 2018). 

At least nine non-party witnesses reside in N.D. Ill. See Houston Decl. ¶¶8, 19-21, 23-27; 

Exs. 11, 13-17. Such non-party witnesses have highly relevant information relating to 

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noninfringement, invalidity, and alleged damages. They are important to Samuel’s defense of this 

litigation, and Samuel can secure their attendance at trial only in N.D. Ill. By contrast, there are no 

known relevant non-party witnesses located in this District. Thus, this factor weighs heavily in 

favor of transfer. See Genentech, 566 F.3d at 1345 (“The fact that the transferee venue is a venue 

with usable subpoena power here weighs in favor of transfer, and not only slightly.”); Geotag, 

2013 U.S. Dist. LEXIS 209383 at *7-9 (weighing factor in favor of transfer where N.D. Ill. had 

absolute subpoena power over a third-party witness but this District did not). 

4. No other practical problems resulting from transfer. 

There are no practical problems presented by transferring this lawsuit to N.D. Ill. This 

factor “pertains to ‘all other practical problems that make trial of a case easy, expeditious and 

inexpensive.’” Kranos, 2017 U.S. Dist. LEXIS 138108 at *33 (citing In re Radmax, Ltd., 720 F.3d 

285, 288 (5th Cir. 2013)). This factor addresses concerns rationally based on judicial economy. 

Quest NetTech Corp. v. Apple, Inc., No. 2:19-cv-00118, 2019 U.S. Dist. LEXIS 206019, at *13 

(E.D. Tex. Nov. 27, 2019). Transfer will make this lawsuit easier, more expeditious, and less 

expensive given the number of witnesses and the amount of evidence present in N.D. Ill. Further, 

this case is still in its infancy and the Parties and the Court have not expended a significant amount 

of resources. Thus, this factor weighs slightly in favor of transfer or is neutral. Geotag, 2013 U.S. 

Dist. LEXIS 209383 at *14 (“Since this case is still in its infancy, and because problems with 

judicial economy do not exist, this factor is neutral.”). 

C. The Public Interest Favor Transfer to N.D. Ill. 

1. N.D. Ill. has a strong interest in this lawsuit. 

This factor considers the relationship between the dispute and the community from which 

the jury pool will be drawn, as “jury duty is a burden that ought not be imposed upon the people 

of a community which has no relation to the litigation.” Volkswagen I, 371 F.3d at 206. “[I]f there 

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are significant connections between a particular venue and the events that give rise to a suit, this 

factor should be weighed in that venue’s favor.” In re Hoffmann-La Roche Inc., 587 F.3d 1333, 

1338 (Fed. Cir. 2009). “Local interest [] arises when a district is home to a party because the suit 

may call into question the reputation of individuals that work in the community.” Geotag, 2013 

U.S. Dist. LEXIS 209383 at *16 (citing In re Hoffmann-La Roche, 587 F.3d at 1338.) 

Samuel USA’s principal place of business is in N.D. Ill. and the research, design, and 

development of the Accused Product occurred there. Chapple Decl. ¶¶4, 6. Samuel employs over 

200 people in Illinois, and the Accused Product is manufactured there. Id. Further, DiMonte Group, 

who was involved with the design and development of the Accused Product, is also based in N.D. 

Ill. Id. ¶16. Signode’s product development center has also historically been located and remains 

in N.D. Ill. Houston Decl. ¶16, Ex. 8; see also id. ¶50, Ex. 38. Thus, N.D. Ill. has a localized 

interest in this lawsuit. See Hoffmann-La Roche, 587 F.3d at 1336 (noting that a district had a 

localized interest where the accused product was developed and tested in the district and “the cause 

of action call[ed] into question the work and reputation of several individuals residing in or near 

that district and who presumably conduct business in that community”); Kranos, 2017 U.S. Dist. 

LEXIS 138108 at *36-37 (finding that this factor favors transfer because the defendant’s principal 

place of business was in the transferee district and the research, design, and development of the 

accused products occurred there). 

In contrast, this District does not have a strong localized interest in this lawsuit. Neither 

party has uniquely relevant facilities or employees within this District. See United States ex rel. 

Ferguson v. Lockheed Martin Corp., Civil Action No. 4:20-cv-097, 2023 U.S. Dist. LEXIS 

224624, at *21 (E.D. Tex. Dec. 18, 2023) (stating that a party’s facility with “no connection to 

[the] case” “does not impact [this District’s] local interest in this case”). This factor favors transfer. 

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2. The remaining public interest factors. 

The remaining public interest factors are neutral or slightly weigh against transfer. First, 

because the claims at issue arise under federal law, the courts’ familiarity with the law factor is 

neutral. In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008). Second, there are no 

conflict-of-laws issues so this factor is also neutral. Lastly, the court congestion factor addresses 

“[t]he speed with which a case can come to trial and be resolved.” Genentech, 566 F.3d at 1347. 

The median time to trial has been approximately 20 months in this District and 44 months in N.D. 

Ill. for cases pending in the past five years. Houston Decl. ¶¶53-54, Exs. 41-42. However, this 

factor is the most speculative and “case-disposition statistics may not always tell the whole story.” 

In re Genentech, 566 F.3d 1347. Thus, when “several relevant factors weigh in favor of transfer 

and others are neutral, then the speed of the transferee district court should not alone outweigh all 

of those other factors.” Id. 

D. The Private and Public Interest Factors Weigh Strongly in Favor of 

Transfer. 

Assessing all the private and public interest factors together, four weigh heavily in favor 

of transfer (including the convenience of the witnesses, which is “probably the single most 

important factor in transfer analysis” (Genentech, 566 F.3d at 1343)), only one factor arguably 

weighs slightly against transfer, and the remaining factors are either neutral or weigh slightly in 

favor of transfer. N.D. Ill. is therefore a “clearly more convenient forum” for this lawsuit. 

V. CONCLUSION 

For the foregoing reasons, Samuel respectfully requests that the Court transfer this lawsuit 

to the Northern District of Illinois. 

Dated: August 13, 2024 Respectfully submitted, 

/s/ Michael R. Houston 

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Michael R. Houston (IL Bar No. 6286431) 

Pavan K. Agarwal (D.C. Bar No. 459614) 

Tiffany K. Sung (CA Bar No. 323077) 

Gabriella M. Salek (IL Bar No. 6342686) 

FOLEY & LARDNER LLP 

321 North Clark Street, Suite 3000 

Chicago, IL 60654 

Telephone: (312) 832-4378 

Facsimile: (312) 832-4700 

Email: mhouston@foley.com 

 pagarwal@foley.com 

 tsung@foley.com 

 gsalek@foley.com 

Melissa R. Smith 

State Bar No. 24001351 

GILLAM & SMITH, LLP 

303 South Washington Avenue 

Marshall, Texas 75670 

Telephone: (903) 934-8450 

Facsimile: (903) 934-9257 

Email: melissa@gillamsmithlaw.com 

Attorneys for Defendants 

 

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CERTIFICATE OF CONFERENCE 

 I hereby certify that I conferred with counsel for Plaintiff regarding the substance of the 

relief requested herein. No agreement could be reached. The parties are at an impasse on these 

issues, leaving an open issue for the court to resolve. Counsel for Defendants complied with the 

meet and confer requirement in Local Rule CV-7(h), and this motion is opposed. 

________________________ 

 Melissa R. Smith 

CERTIFICATE OF SERVICE 

 The undersigned hereby certifies that counsel of record who are deemed to have consented 

to electronic services are being served with a copy of this document via the Court’s CM/ECF 

system per Local Rule CV-5(a)(3) on this the 13th day of August 2024. 

 ________________________ 

 Melissa R. Smith 

/s/ Melissa R. Smith 

/s/ Melissa R. Smith 

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