*NOT FOR PUBLICATION

UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

AB COASTER HOLDINGS, INC., :

a Delaware corporation, :

:

Plaintiff, : Civil Action No. 2:10-CV-06760(ES-CLW)

:

v. :

: OPINION

ICON HEALTH & FITNESS, INC., :

a Delaware corporation, :

:

Defendant. : December 29, 2011

:

____________________________________:

Pending before this Court is a motion by Defendant Icon Health & Fitness, Inc., 

(“Defendant”) to Transfer Venue pursuant to 28 U.S.C. §1404(a) to the United States District 

Court for the District of Utah (the “Motion”). (Docket Entry No. 6, “Def. Motion”). The Court 

has reviewed the submissions in favor of and in opposition to the Motion. For the reasons set 

forth below, the Motion is hereby GRANTED.

I. BACKGROUND

AB Coaster Holdings, Inc. (“Plaintiff”), a Delaware corporation, filed a complaint against 

Defendant on December 23, 2010 in the United States District Court for the District of New 

Jersey. (Docket Entry No. 1, “Complaint” dated December 23, 2010 at ¶ 1). Plaintiff holds the 

entire right, title, and interest in United States Patent Nos. 7,455,633 (the “633 Patent”) and 

7,485,079 (the “079 Patent”). Id. at ¶¶ 5, 7. Plaintiff and its licensee, Ab Coaster, LLC (The 

“LLC” or “Ab Coaster, LLC”), focus on a single product line covered by the patents-in-suit, with 

yearly revenues in the range of $2-3 million. Docket Entry No. 8-1, the “Augustine Declaration” 

dated March 7, 2011 at ¶ 5. Ab Coaster, LLC is not a party to this action; Plaintiff asserts that the 

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LLC possesses “100%” of the documents identified to date as relevant to this lawsuit and that at 

least three of the individuals whose testimony may be required at trial work there regularly. Id. 

at ¶ 7-8. 

Defendant Icon is a Delaware corporation headquartered in Logan, Utah. Docket Entry 

No. 6-2, the “Daleabout Declaration”, dated February 18, 2011 at ¶ 5. Icon owns many 

prominent fitness equipment brand names and reports annual sales of approximately $1 billion.

Id. at ¶ 6. Icon has designed and developed a product called the Ab Glider. Id. at ¶ 9. All those 

responsible for the research, development, design, manufacture, and prosecution of pending 

patent applications relating to the Ab Glider are located in Utah. Id. at ¶¶ 9-13. Icon competes in 

the national and international market for fitness equipment and its Ab Glider allegedly infringes 

AB Coaster’s patent in an “Abdominal Exercise Machine.” Complaint at ¶ 7. 

On December 23, 2010, Plaintiff commenced this action for patent infringement, alleging 

that the Ab Glider embodies or uses the inventions claimed in the ‘663 and ‘079 Patents. 

Complaint at ¶¶ 8-9. On February 22, 2011, Defendant filed a motion to transfer this action to 

the United States District Court for the District of Utah. Plaintiff opposes the said motion. For 

the reasons set forth below, this Court finds that Defendant has met its burden of establishing the 

appropriateness of transfer.

II. PARTY’S ARGUEMENTS

Defendant Icon argues that the action should be transferred for the convenience of the 

parties. Utah is more convenient for Defendant and, because Plaintiff is headquartered in 

Delaware, Defendant argues that Utah would present no greater inconvenience for Plaintiff than 

New Jersey. (Def. Motion at 8). Moreover, Defendant points out that the papers, witnesses, and 

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underlying facts regarding design and development of the accused product are all located in 

Utah. (Def. Motion at 9, 11).

Plaintiff argues that the Court should deny the motion based on the deference generally 

accorded to a plaintiff’s choice of forum and because Plaintiff has significant business ties to a 

company headquartered in New Jersey. (Docket Entry No. 8, Brief in Opposition to Defendant’s 

Motion to Transfer Venue [“Pl. Opposition”] at 13, 20). This company is the sole patent licensee 

and its employees would testify about the licensing relationship, damages caused by the alleged 

infringement, and the local and global retail fitness equipment markets. (Pl. Opposition at 6-8). 

III. LEGAL STANDARD

A. 28 U.S.C. § 1404(a)

The decision to transfer an action remains in the sound discretion of the district court. See

Plum Tree Inc. v. Stockment, 488 F.2d 754, 756 (3d Cir. 1973). The Court must consider all 

relevant factors to decide if “litigation would more conveniently proceed and the interests of 

justice be better served by transfer to a different forum.” See Jumara v. State Farm Ins. Co., 55 

F.3d 873, 879 (3d Cir. 1995); Rappoport v. Steven Spielberg, Inc., 16 F. Supp. 2d 481, 498 

(D.N.J. 1998). The moving party has the burden of establishing that transfer is appropriate and 

must establish that the alternative forum is more convenient than the present forum. See Santi v. 

National Business Records Management, LLC, 722 F.Supp.2d 602, 606 (D.N.J. 2010); See also

Jumara, 55 F.3d at 879 (3d Cir. 1995) (the burden of establishing the need for transfer belongs to 

the defendant.)

A motion under § 1404(a) allows transfers “[f]or the convenience of parties and 

witnesses, in the interest of justice . . . to any other district or division where it might have been 

brought.” 28 U.S.C. § 1404(a). Under that statute, district courts should consider three factors: 

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(1) the convenience of the parties, (2) the convenience of the witnesses, and (3) the interests of 

justice. See Jumara, 55 F.3d at 879.

The Third Circuit has provided several other private and public factors that courts should 

consider, in addition to those of the statute, when deciding whether to transfer an action. Id. “The 

private interests have included: plaintiff’s forum preference as manifested in the original choice; 

the defendant’s preference; whether the claim arose elsewhere; the convenience of the parties as 

indicated by their relative physical and financial condition; the convenience of the witnesses—

but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; 

and the location of books and records (similarly limited to the extent that the files could not be 

produced in the alternative forum).” Id. at 879 (internal citations omitted).

Among the public interest factors are: “the enforceability of the judgment; practical 

considerations that could make the trial easy, expeditious, or inexpensive; the relative 

administrative difficulty in the two fora resulting from court congestion; the local interest in 

deciding local controversies at home; the public policies of the fora; and the familiarity of the 

trial judge with the applicable state law in diversity cases.” Id. (internal citations omitted).

A plaintiff’s choice of venue generally should not be lightly disturbed. See id. Deference 

to the plaintiff’s choice of a forum can be overcome, however, if the moving party convinces the 

court that the alternative forum would be more convenient than the present forum. See Sonic 

Supply, LLC v. Universal White Cement Co., Inc., No. 07-CV-04529, 2008 WL 2938051, at *5 

(D.N.J. July 29, 2008) (quoting Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 (1981)). 

Additionally, if plaintiff’s choice of forum does not coincide with the forum where the operative 

facts of the lawsuit occurred, less weight will be accorded to that choice. See American Tel. & 

Tel. Co. v. MCI Communications Corp., 736 F. Supp. 1294, 1306 (D.N.J. 1990); Newcomb v. 

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Daniels Saltz Mongeluzzi & Barrett, 847 F. Supp. Notably, courts give less weight to a 

plaintiff’s choice of forum when the dispute at the heart of a lawsuit occurred almost entirely in 

another state. Santi, 722 F.Supp.2d at 607. 

B. 28 U.S.C. § 1391

A civil action wherein jurisdiction is founded only on diversity of citizenship may . . . be 

brought only in (1) a judicial district where any defendant resides, if all defendants reside in the 

same [s]tate [or] (2) a judicial district in which a substantial part of the events or omissions 

giving rise to the claim occurred, or a substantial part of property that is the subject of the action 

is situated. 28 U.S.C. § 1391(a)(1), (a)(2). Furthermore, “a defendant that is a corporation shall 

be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the 

time the action is commenced.” 28 U.S.C. §1391(c).

IV. ANALYSIS

As a threshold matter, transfer is only appropriate where the Court has determined the 

transferee court is one where the action could have been brought. See, e.g., Aventis Pharma S.A. 

v. Sandoz, Inc., No. 06-3671, 2007 WL 1101228, at *3 (D.N.J. Apr. 10, 2007). The Court notes 

that Defendant Icon’s international headquarters are in Utah, as are many of Defendant’s other 

core tasks and facilities, including the research and development center, testing labs, injection 

molded plastics plant, and main manufacturing facility. (Daleabout Decl. at ¶ 5.) Additionally, 

the allegedly infringing item (“Ab Glider”) was designed and developed in Utah (although it is 

manufactured in China). (Daleabout Decl. at ¶¶ 9, 12.) This satisfies the requirements of 28 

U.S.C. § 1391(a)(1) and (a)(2) such that Plaintiff could have brought this action in the District of 

Utah. Thus, the Court will evaluate the Motion according to the relevant public and private 

interest factors. 

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A. Private Interests Analysis

Among the private interests to be weighed are: (1) Plaintiff’s choice of forum, (2) 

Defendant’s preferred forum, (3) where the claim arose, (4) convenience of the parties, (5) 

convenience of the witnesses, to the extent that witnesses may be unavailable for trial in one of 

the fora, and (6) physical location of documents and files. Jumara, 44 F.3d at 879. The Court 

will address the relevant factors in turn. 

i. Plaintiff’s Choice of Forum

Plaintiff’s expressed choice of forum is New Jersey. Plaintiff’s preference would 

ordinarily weigh against transfer to Utah, except that New Jersey does not have a strong 

connection to the operative facts of this lawsuit. For the reasons stated below, the Court finds 

that Plaintiff’s choice of forum is insufficient to avoid transfer to Utah.

While the Plaintiff’s choice of forum is entitled to some deference, the level “‘diminishes 

where the plaintiff chooses a foreign forum rather than his or her own forum’ and ‘decreases 

even further where the central facts of a lawsuit occur outside the chosen forum.’” Eastman v. 

First Data Corp., No. 10-4860 2011 WL 1327707, at *3 (D.N.J. Apr 5, 2011) (Citing Peikin v. 

Kimmel & Silverman, P.C., 576 F.Supp.2d 654, 660 (D.N.J 1998)).

Plaintiff is a Delaware corporation with its principal place of business in Delaware. 

Therefore, by choosing to bring this action in New Jersey, Plaintiff has not selected its home 

forum. Moreover, Plaintiff fails to persuasively argue that the central facts of the lawsuit 

occurred in New Jersey. Plaintiff notes that its sole licensee for the product protected by the 

Patent is Ab Coaster, LLC, a company incorporated and principally operating in the State of 

New Jersey. Furthermore, the record reflects that Defendant distributes the accused product 

through its retail partners throughout New Jersey. However, since both parties distribute their 

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products throughout the country, Plaintiff’s argument would support venue in all fifty states. 

Accordingly, because New Jersey is not the Plaintiff’s home forum and the central facts of the 

lawsuit have no unique connection to the State, the Court finds that Plaintiff’s choice of forum in 

New Jersey is entitled to less deference. 

ii. Where the Claims Arose

To determine where a claim “arose,” it is necessary to look to the district in which “the 

contacts weight most heavily.” Hitachi Cable Am. Inc. v. Wines, No. 85-4265, 1986 WL 2135, 

at *4 (D.N.J. Feb. 14, 1986). In a patent infringement case, the claim arises where the 

development, testing, research, and production of the alleged infringing activity occurred, as well 

as where marketing decisions are made. Ricoh v. Honeywell, Inc., 817 F. Supp, 473, 482 n.17 

(D.N.J. 1993). The basic facts underlying this suit for patent infringement will be determined 

through examination of the process by which Defendant Icon designed and created the plans for 

the accused product. See Refined Recommendation Corp. v. Netflix, Inc., No. 07-4981 (DMC), 

2008 U.S. Dist. LEXIS 11541, at *11 (D.N.J. Feb. 15, 2008) (“In patent infringement cases, ‘as a 

general rule, the preferred forum is that which is the center of gravity of the accused activity.’

To determine the ‘center of gravity,’ consideration must be offered to the location of the 

product’s development, testing, research, and production, as well as where marketing decisions 

are made, ‘rather than where limited sales activity has occurred.’”) (quoting Ricoh Co. v. 

Honeywell, Inc., 817 F. Supp. 473, 482 (D.N.J. 1993)).

Defendant argues that this center of gravity is located in Utah, its preferred forum, 

because the accused product was designed, developed, tested, and sold in Utah, meaning that 

many related witnesses and all related documentation associated with that process are also 

located at Defendant’s headquarters in Utah. Def. Motion at 7-8. Plaintiff argues that it 

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maintains strong ties to New Jersey through: (1) Ab Coaster, LLC, its sole licensee for the 

patents-at-issue, which is headquartered and incorporated in New Jersey, (2) the sale of Ab 

Coaster products in New Jersey through its third party distributor (Tristar), and (3) the location 

where Plaintiff and its licensee were harmed by the alleged infringement. However, Plaintiff is 

unable to cite any authority supporting these factors as legally relevant to determining where an 

infringement claim arose. More persuasively, Defendant points out that the Ab Glider was 

designed, developed, tested, and sold in Utah. Having hosted the vast majority of the alleged 

infringing activity, Utah is the “center of gravity” for this action. 

Plaintiff has not demonstrated that any operative facts occurred in New Jersey, but 

instead points to the fact that Plaintiff has strong ties to the chosen forum state. Plaintiff sells 

products under the patents-at-issue in New Jersey and both the corporation and some of its 

officers pay personal and corporate taxes to New Jersey derived from the sale of the product 

within the state. (Pl. Opposition at 13-14). However, Plaintiff’s witnesses and documents will be 

of limited use in establishing damages if any infringement is found. These contacts will not 

address the operative facts of whether Defendant infringed Plaintiff’s patent. Because the Court 

has determined that the center of gravity in this patent infringement action is properly located in 

Utah, the Plaintiff’s choice of forum is consequently entitled to less deference. See American 

Tel. & Tel. Co., 736 F. Supp. at 1306. The factor of where the underlying facts of the suit arose 

favors transfer to Utah. See Ricoh, 817 F. Supp. at 482. 

iii. Convenience of the Parties

In considering the convenience of the parties, district courts focus on the relative physical 

and financial condition of the parties. Santi, 722 F.Supp.2d at 608. If both parties have a 

preference but neither can show the balance of convenience factors “tips strongly in his favor,” 

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the party with a stronger financial condition is better suited to bear the inconvenience of a 

foreign forum. See Schreiber v. Eli Lilly & Co., Civ. No 05-cv-2616, 2006 U.S. Dist. LEXIS 

13477, at *32-33 (E.D. Pa. March 27, 2006). To that end, Plaintiff argues that Defendant has 

financial resources that are more extensive.

The Court finds that the Schreiber matter is distinguishable from the case sub judice in 

that the plaintiffs therein were a college professor, a small corporation, and a not-for-profit 

educational institution. Id. at 33. Here, although Defendant is admittedly a larger corporation 

than Plaintiff, the relative physical and financial conditions of the parties do not impact a transfer 

analysis because the bulk of evidence that must be produced in a patent infringement case will be 

produced by the accused product’s maker, the Defendant. See Illumina, Inc. v. Complete 

Genomics, Civ. No. 10-649, 2010 WL 4818083, at *5 (D. Del. Nov. 9, 2010) (citing In re 

Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 1999)) (“In patent infringement cases, the bulk 

of 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.”). Accordingly, 

although Defendant has superior financial condition, it will be more inconvenienced defending 

this suit in New Jersey than would Plaintiff be inconvenienced should the Court transfer the suit 

to Utah. Financial strength is only one factor in the balancing of convenience and its presence 

alone does not require a party to bear an inconvenient venue.

iv. Convenience of the Witness

Neither party has contended that it intends to produce witnesses or documents that are 

unavailable in one of the two potential foraonly that each finds its preferred forum to be more 

convenient in terms of distance to travel. Indeed most of the witnesses identified by the parties 

are party-affiliated: direct employees or, for Plaintiff, employees of Plaintiff’s sole licensee. See

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Affymetrix Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 203 (D. Del. 1998) (witnesses who are 

employed by a party are presumed capable and willing to testify and so carry no weight in the 

Jumara convenience analysis). Therefore, the convenience of the witness analysis is neutral. 

Although Plaintiff’s preference would ordinarily weigh against transfer to Utah, New 

Jersey does not have a strong connection to the operative facts of this lawsuit. The Court finds 

that the private interest analysis favors transfer to Utah.

B. Public Interests Analysis

While the Court does not assign dispositive weight to the public factors analyzed below, 

these considerations are either neutral or support transfer to the District of Utah. 

i. Enforceability of a Judgment 

Plaintiff can more easily enforce a judgment against an infringer in the same forum where 

the infringing product’s “development, testing, research, and production occurred.” Refined 

Recommendation Corp. v. Netflix, Civ no. 07-04981, 2008 WL 474106, at *4 (D.N.J. Feb. 14, 

2008). Therefore, this factor weighs in favor of transfer.

ii. Practical Considerations

This factor parallels the convenience of the parties and witnesses analysis discussed 

above. The court reiterates its finding with respect to those private factors. Additionally, the 

practical considerations provide little guidance for the ultimate determination of whether to 

transfer the suit as no other actions are pending in either forum where jurisdiction could be had.

iii. Court Congestion

Both sides argue that statistics on court congestion is the Districts of Utah and New 

Jersey support their respective positions. The Court finds little reason to favor either side, as the 

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different figures can be used to make inapposite conclusions. See Johnson v. Nextel, No. 06-

5547, 2007 U.S. Dist. LEXIS 70926, at 13. 

Additionally, the factors of judicial economy and the interests of justice do not offer 

guidance because neither principle will be better served in one forum over the other. Moreover, 

the applicable law in this action is patent law, which Utah District Court judges are as familiar 

with as are judges here in New Jersey. This is not a diversity case. Instead, “[p]atent claims are 

governed by federal law, and as such both [courts are] capable of applying patent law to 

infringement claims.” In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008). 

Therefore, this factor is neutral. 

iv. The Local Interest in Deciding Local Controversies

Evaluating the interests of the forum in adjudicating the case, the Court finds that this 

factor weighs in favor of transfer. Utah has an interest in regulating the conduct of its 

corporations. While New Jersey also has an interest in protecting its corporations, Plaintiff is 

incorporated in Delaware, not New Jersey and the sole licensee, while incorporated in New 

Jersey, is not a named party to this case. See Cadapult Graphic Sys., Inc. v. Tektronix, Inc., 98 

F. Supp. 2d 560, 568 (D.N.J. 2000). Accordingly, the public interest analysis tips in favor of 

transfer.

IV. Conclusion

For the reasons set forth above, the undersigned hereby GRANTS Defendant’s Motion to 

Transfer. An appropriate order shall follow. 

s/ Cathy L. Waldor

CATHY L. WALDOR

UNITED STATES MAGISTRATE JUDGE

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