NOT FOR PUBLICATION

UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

KIRKER ENTERPRISES, INC.,

 Plaintiff,

v.

GENOSCO (d/b/a KLEANCOLOR),

Defendant.

Civil Action No. 11-3195 (WJM)

OPINION

FALK, U.S.M.J.

Before the Court is Defendant Genosco’s motion to transfer venue to the Central District of

California pursuant to 28 U.S.C. § 1404(a). See CM/ECF No. 35. The motion is opposed. The

Honorable William J. Martini, U.S.D.J., referred the motion to the Undersigned. No oral argument

was heard. Fed.R.Civ.P. 78(b). For the reasons that follow, Defendant’s motion to transfer is

granted.

BACKGROUND

On June 2, 2011, Plaintiff KirkerEnterprises (“Plaintiff”), a New Jerseycorporation, brought

this action against Defendant Genosco (“Defendant”) for infringing two of its patents – numbers

5,935,590 (the ‘590 patent) and 6,139,822 (the ‘822 patent) (collectively the “patents”). See

CM/ECF Nos. 1, 14. The patents cover the methods and compositions for a kind of nail polish,

commonly described as “crackle,” which forms decorative random cracks after its application to

nails and upon the drying of the applied nail polish layer. See CM/ECF No. 20 at 1. 

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Defendant Genosco (“Defendant”) is a California corporation with its principal place of

business in Buena Park, California. Defendant sells crackle nail polish under its brand “KleanColor”

and advertises it as “Crack” nail polish. Defendant denies infringement and claims the patents are

invalid and/or unenforceable. See CM/ECF No.15. Defendant asserts that it extensively advertises

and markets its “Crack” nail polish in California, and its sales there total about $70,000. See

CM/ECF No. 16-1 at 1. Comparatively, Defendant claims it has sold its “Crack” nail polish only

once in New Jersey to one customer for a sale totaling $750. Id. 

Defendant seeks to transfer this action to theCentral District of California, arguing California

is the most appropriate and convenient forum.

DISCUSSION

A. Transfer Pursuant to § 1404(a)

28 U.S.C. § 1404(a) provides: “[f]or the convenience of parties and witnesses, in the interest

of justice, a district court may transfer any civil action to any other district or division where it might

have been brought.” The purpose of section 1404(a) “is to prevent the waste of ‘time, energy and

money’ and to ‘protect litigants, witnesses and the public against unnecessary inconvenience and

expenses. . . .’” Ricoh Co., Ltd. v. Honeywell, Inc., 817 F.Supp. 473, 479 (D.N.J. 1993) (quoting

Van Dusen v. Barrack, 376 U.S. 612, 616 (1964)). The Court is “vested with a large discretion”

when deciding whether to transfer a case. Solomon v. Continental Am. Life Ins. Co., 472 F.2d 1043,

1045 (3d Cir. 1973). 

The moving party bears the burden of establishing (1) that the proposed transferee forum is

one in which the case “might have been brought” and (2) that in the interest of justice the proposed

transferee forum is more convenient for parties and witnesses. See CIBC World Mkts., Inc. v.

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Deutsche Bank Sec., Inc., 309 F.Supp.2d 637, 643 (D.N.J. 2004) (citing Jumara v. State Farm Ins.

Co., 55 F.3d 873, 879 (3d Cir. 1995)).

B. Adequate Transferee Forum

The transfer statute limits the ability to transfer to a district or division where the case “might

have been brought.” 28 U.S.C. § 1404(a). Another district is proper if that district would be a proper

venue for the action and that forum is capable of asserting subject matter jurisdiction over the claim

and personal jurisdiction over the defendants. See Yang v. Odom, 409 F.Supp.2d 599, 604 (D.N.J.

2006). This case could have been brought in the Central District of California. Defendant is a

California corporation with its principal place of business there, and thus personal jurisdiction is not

an issue. Likewise, subject matter jurisdiction would clearly exist since this is a patent action.

C. Convenience and Justice Factors

“There is no definitive formula or list of the factors to consider when deciding a motion to

transfer.” Landmark Fin. Corp. v. Fresenus Med. Care Holdings, Inc., No. 09-3689, 2010 WL

715454, at *2 (D.N.J. Mar. 1, 2010). However, the Third Circuit has articulated certain “public” and

“private” interests implicated by § 1404(a). The private interests include: (1) the plaintiff’s preferred

forum as expressed by the original forum choice; (2) the defendant’s preference; (3) where the claim

arose; (4) the convenience of the parties; (5) the convenience and availability of witnesses; and (6)

the location of books and records. See Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir.

1995). 

The public interests include: (1) enforceability of the Court’s judgment; (2) practical

considerations that could make the trial easy, expeditious, or inexpensive; (3) the level of congestion

in the respective forums; (4) the local interest in deciding local controversies at home; (5) the public

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policies of the forum; and (6) the familiarity of the trial judge with the applicable state law in

diversity cases. Id. These factors are not exhaustive, as “a transfer analysis under Section 1404 is a

flexible and individualized analysis which must be made on the unique facts presented in each case.”

Lawrence v. Xerox Corp., 56 F.Supp.2d 442, 450 (D.N.J. 1999).

1. Private Interests

(i) Choice of Forum

In a section 1404(a) analysis, plaintiff’s choice offorum receives some deference, particularly

when choosing its home forum. See Sandvik, Inc. v. Continental Ins. Co., 724 F.Supp.303, 307-308

(D.N.J. 1989). However, a plaintiff’s forum selection is not dispositive, and courts often transfer

cases when the other interests of convenience and justice weigh in favor of the proposed transferee

forum. Id. See also American Tel. & Tel. Co. v. MCI Communications Corp., 736 F.Supp.1294,

1306 (D.N.J. 1990).

(ii) Where the Claim Arose – The Hub of the Activity

Generally, in a patent infringement action, the claim “arises” where the “development,

testing, research and production” of the alleged infringing activity occurred “as well as where

marketing decisions are made . . . .” Refined Recommendation Corp. v. Netflix, Inc., No. 07-4981,

2008 WL 474106, at *4 (D.N.J. Feb. 15, 2008) (citing Ricoh Co., Ltd. v. Honeywell, Inc., 817

F.Supp.473, 482 n.17 (D.N.J. 1993)). These factors deserve more consideration than where “limited

sales activity has occurred.” Id. In this case, most of that activity occurred in California. 

Defendant’s small company has 22 employees all located in California. See CM/ECF No.

16-2 at ¶ 10. The operations of the company are based out of California, including product

development, marketing and sales. See CM/ECF No. 16-2 at ¶¶ 9, 11. Defendant’s documents and

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records are located in California. Id. at ¶ 13. Thus, it is reasonable to conclude that the essence of

the claim arose in California. In fact, it appears Defendant’s only relationship with New Jersey is that

Defendant once sold a relatively small amount of its “Crack” nail polish to one New Jersey

purchaser. As noted, the location of isolated sales activity is not dispositive in a patent transfer

analysis. Even if it was an important consideration, Defendant’s sales in California are about 100

times greater than its one New Jersey sale. Id. at ¶ 6. See Ricoh, supra at 482 (stating it is

disingenuous of Plaintiff to argue that sufficient ties existed in New Jersey where Defendant only

sold one of its products in New Jersey and all other activities occurred elsewhere).

(iii) Convenience of the Parties

Defendant persuasively argues that litigating in New Jersey will impose a significant burden

on its business. Defendant asserts that it is a small business, employing only 22 California residents,

and since many of those employees will likely be crucial witnesses, a trial in California will reduce

interference with its business and is far more convenient. See CM/ECF No. 16-1 at 6. Plaintiff does

not effectively argue that it cannot proceed in California or that it will be burdened by doing so. 

 (iv) Witnesses and the Availability of Compulsory Process 1

The convenience of witnesses is an important consideration in the transfer analysis. See

Teleconference Sys. v. Proctor & Gamble Pharm., Inc., 676 F. Supp. 2d 321, 331 (D. Del. 2009).

 Location of Sources of Proof – Neither party has established that documents will be 1

unavailable in either forum. Plaintiff argues that its documents which will be subject to discovery

include older documents, some more than ten years old, which are located primarily in New

Jersey. Plaintiff does not claim that its documents could not be produced in California, but

instead, scrutinizes the quantity of Defendant’s documents, which it claims cannot be as

voluminous. Accordingly, the location of sources of proof will not affect this Court’s balancing

of interests. See Lester v. Gene Express, Inc., No. 09-403, 2009 WL 3757155, at *6 (D.N.J. Nov.

10, 2009). 

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“When considering a motion to transfer, the [Third] Circuit distinguishes between party and nonpartywitnesses.” Liggett Group Inc. v. R.J. Reynolds TobaccoCo., 102 F.Supp.2d 518 (D.N.J. 2000)

(citing Jumara, 55 F.3d at 879). Party witnesses carry less weight because they are presumed to be

willing to testify in either forum, even if inconvenient. Id. at 534 n. 19. On the other hand, non-party

witnesses may be compelled to attend only by the subpoena power of federal courts. See

Fed.R.Civ.P. 45(b)(2). The availabilityof compulsoryprocess to compel the attendance of non-party

witnesses has been referred to as the most important transfer factor. Teleconference Sys., 676

F.Supp.3d at 331. 

Defendants have identified a number of party witnesses expected to testify, all of whom

reside in California, and have important roles in Defendant’s business operations. Plaintiff identifies

the inventors of the ‘822 patent, stating that one resides in New Jersey and the other in New York,

both of whom are employees of Plaintiff. See CM/ECF No. 22. 2

With regard to third-party witnesses, Plaintiff only identifies one third-party who would not

be subject to compulsory process in California–the owner/manager of the one New Jersey store that

allegedly purchased “Crack” nail polish from Defendant. See CM/ECF No. 20 at 13. Bycomparison,

Defendant identifies at least six third-party witnesses who will be witnesses. See CM/ECF No. 16-2

 Plaintiff also identifies as potential witnesses the attorney involved in the application 2

leading to the ‘822 patent, Stephen Goldman, Esq., and the attorney involved in the ‘590 patent

(who is unidentified). Mr. Goldman resides in New Jersey, and the ‘590 patent attorney resides in

Florida. These arguments have little bearing on the transfer analysis. Mr.Goldman presently

represents Plaintiff in this matter, and thus, his location is not a proper consideration. See

Solomon v. Cont’l Am. Life Ins. Co., 472 F.2d 1043, 1047 (3d Cir. 1973) (stating convenience of

counsel is not a consideration as to proper venue). Similarly, the ‘590 patent attorney will have to

travel to either forum, the only difference being the length of the flight. 

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at ¶ 8. These six witnesses are located in California and are beyond the compulsory process in New

Jersey. On balance, this factor weighs in favor of transfer to California. 

2. Public Factors 

Neither party makes a strong argument about the public factors. In fact, most of the public

factors are not even addressed in the briefing. Therefore, the Court will not address the factors in

detail. To the extent that Plaintiff argues that New Jersey has a local interest in the controversy, the

Court disagrees. “Patent infringement lawsuits are matters of national concern that are not ‘local

controversies,’ nor do they implicate the public policies of any one forum.” COA Network, Inc. v.

J2 Global Communications, Inc., No. 09-6505, 2010 WL 2539692, at *5 (D.N.J. June 17, 2010)

(citing Schering Corp. v. Amgen Inc., 969 F.Supp.258, 269 (D.Del. 1997)). 

D. Summary

Defendant has demonstrated that California is the most appropriate and convenient forum.

Obviously each party would find it more convenient to litigate in its home state, and that is the

reason for Plaintiff’s forum choice. However, Plaintiff’s forum choice cannot defeat transfer when

the majority of factors favor the transferee forum. See LG Elecs. Inc. v. First Int’l Computer, Inc.,

138 F.Supp.2d 574, 590 (D.N.J.2001) (noting that “[w]hen the central facts of the lawsuit occur

outside of the forum state, a plaintiff’s selection of that forum is entitled to less deference”).

This case has barely any connection to New Jersey. The allegedly infringing product was

developed, marketed, extensively advertised, and sold in California. On the contrary, there was only

one, almost de minimis, sale to one customer in New Jersey. Also, Defendant has shown the majority

of non-party witnesses are in California and not subject to compulsory process in New Jersey. 

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CONCLUSION

For the reasons stated above, Defendant’s motion to transfer is granted. An appropriate

Order accompanies this Opinion. The Clerk’s Office shall take no action on transfer of this case for

14 days. See L.Civ.R. 72.1(c)(1)(C). 

Dated: November 29, 2011

s/ Mark Falk 

MARK FALK

United States Magistrate Judge

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