Case: 1:23-cv-02690 Document #: 45 Filed: 03/31/23 Page 1 of 21 PagelD #:601
`Case: 1:23-cv-02690 Document #: 45 Filed: 03/31/23 Page 1 of 21 PageID #:601
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`IN THE UNITED STATESDISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`RichmondDivision
`
`SEOUL SEMICONDUCTORCoO., LTD.,
`a Korean corporation,
`
`and
`
`SEOUL VIOSYSCO., LTD.,
`a Korean corporation,
`
`Plaintiffs,
`
`v.
`
`ACE HARDWARE CORPORATION,
`
`Defendant.
`
`Civil Action No. 3:22¢ev271
`
`MEMORANDUM OPINION
`
`This matter comes before the Court on Defendant Ace Hardware Corporation’s
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`(“Ace Hardware”) Motion to Dismiss or, Alternatively, to Transfer Venue (the “Motion”). (ECF
`
`No.13.) Plaintiffs Seoul Semiconductor Co., Ltd. (“Seoul Semiconductor”) and Seoul Viosys
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`Co., Ltd. (“Seoul Viosys,” and collectively with Seoul Semiconductor, “Seoul”) responded, and
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`Ace Hardware replied. (ECF Nos. 19, 30.) This matteris ripe for adjudication.
`
`The Court dispenses with oral argument because the materials before it adequately
`
`present the facts and legal contentions, and argument would notaid the decisional process. The
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`Court exercises jurisdiction pursuantto 28 U.S.C. § 1331.! For the reasonsthat follow, the Court
`
`will grant the Motion to Transfer. Because the Court will grant the Motion to Transfer, it will
`
`' Section 1331 of Title 28 of the United States Code provides:
`
`Thedistrict courts shall have original jurisdiction overall civil actions arising under
`the Constitution, laws, or treatises of the United States.
`
`28 U.S.C. § 1331.
`
`

`

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`not rule on the Motion to Dismiss, and instead defer the Motion to Dismiss to the
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`transferee court.
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`J. Procedural and Factual Background
`
`A.
`
`Procedural Background
`
`Seoul filed a ten-count Complaint in the Eastern District Court of Virginia, alleging that
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`Ace Hardwareinfringes upon ten of Seoul’s patents by “import[ing] into the United States...
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`certain LED productsthat infringe .
`
`.
`
`. Seoul[’s] .
`
`.
`
`. patents. .
`
`. [and] then sell[ing] these
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`infringing products to consumerslocated in the Eastern District of Virginia and otherareas of the
`
`United States.” (ECF No. 1 78.) Specifically, Seoul brings the following counts:
`
`CountI:
`
`Infringement of United States Patent No. 7,572,653, (“the °653 patent”)
`
`CountII:
`Count II:
`
`Infringement of United States Patent No. 7,667,225 (“the ’225 patent”)
`Infringement ofUnited States Patent No.9,269,868 (“the ’868 patent”)
`
`CountIV:
`
`Infringement of United States Patent No. 8,604,496 (“the °496 patent”)
`
`Count V:
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`Infringement of United States Patent No. 8,659,050 (“the ’050 patent”)
`
`Count VI:
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`_Infringement of United States Patent No. 9,147,821 (“the ’821 patent”)
`
`Count VII:
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`Infringement of United States Patent No. 8,981,410 (“the ’410 patent”)
`
`Count VIII:
`
`Infringement of United States Patent No. 9,716,210 (“the ’210 patent”)
`
`Count IX:
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`Infringement of United States Patent No. 10,134,967 (“the ’967 patent”)
`
`Count X:
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`Infringement of United States Patent No. 7,397,069 (“the ’069 patent”)
`
`(ECF No.1, at 11-30.)
`
`Ace Hardwarefiled its Motion to Dismiss or, Alternatively, to Transfer Venue. (ECF
`
`No. 13.) In the Motion, Ace Hardware “moves th[e] Court to dismiss [this action pursuantto]
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`Federal Rule [of Civil Procedure] 12(b)(3) for improper venueor, alternatively, to transfer this
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`

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`case to the Northern District of Illinois.” (ECF No. 13, at 1.) Seoul filed its Opposition, and Ace
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`Hardwarefiled its Reply. (ECF Nos. 19, 30.)
`
`B.
`
`Factual Background?
`
`1,
`
`General Background
`
`Seoul Semiconductoris one of the largest manufacturersof light emitting diodes
`
`(“LEDs”) in the world, and Seoul Viosys, its subsidiary, is also a leading company in the LED
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`industry. (ECF No. 1 2.) Ace Hardware “imports into the United States[,] through the Port of
`
`Norfolk and elsewhere[,] certain LED productsthat infringe ... Seoul[’s] .
`
`.
`
`. patents .
`
`.
`
`. [and]
`
`then sells these infringing products to consumerslocated in the Eastern District of Virginia and
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`other areas of the United States.” (ECF No. 1 7 8.)
`
`Between April 2019 and September 2021, Seoul sent Ace Hardware twelve notice-of-
`infringement letters asking Ace Hardwareto stop selling products that infringe Seoul’s patents.
`
`(ECF No. 1 ] 25-36.) Seoul does not indicate to which addressit sent these letters or to whom
`
`the letters were addressed. Ace Hardware’s counsel respondedto only one ofthese letters—a
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`March 10, 2021 letter—‘“but made no commitmentto investigate the patents or accused products,
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`did not mention any analysis of infringementor validity, and made no agreementto stopselling
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`infringing products.” (ECF No.1 § 32.)
`
`In October 2021, Seoulfiled a patent infringement case against Ace Hardware in the
`
`Western District of Texas. See Seoul Semiconductor Co. v. Ace Hardware Corp., 6:21cv01060,
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`(W.D.Tex.filed Oct. 21, 2021); (ECF No. 43-1). Seoul asserted infringementofsixteen patents
`
`Because the Court will grant Ace Hardware’s Motion to Transfer, the Court will give
`only a brief overview ofthe facts pertaining to the underlying dispute prior to discussing the
`facts relevant to the Motion to Transfer.
`
`

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`from at least two manufacturers. See id. at Dkt. 8 F§ 8-15, 20-35; (ECF No. 43-1 4 8-15,
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`20-35.) In the Texas case, Ace Hardware movedto dismissor, in the alternative, to transfer
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`venueto the Northern District of Illinois. (ECF. No. 30-1, at 2-22.) Seoul voluntarily dismissed
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`the Texas case on April 15, 2022. See Seoul Semiconductor Co. v. Ace Hardware Corp.,
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`6:21cv01060, Dkt. 9 (W.D. Tex. filed Oct. 21, 2021); (ECF No. 43-3.) The same day the Texas
`
`action was dismissed, Seoul filed its Complaintin this Court.
`
`2.
`
`Factual Background Relating to the Motion to Transfer
`
`a.
`
`Seoul’s Operations
`
`Seoul Semiconductor is a company organized and existing under the laws of the Republic
`
`of Korea, with its principal place of business in Korea. (ECF No. 1 44.) Seoul Viosys is a
`
`subsidiary of Seoul Semiconductor and is a company organized and existing under the laws of
`the Republic ofKorea, with its principal place of business in Korea. (ECF No. 1 { 5.) Seoul’s
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`“successis in large part dueto their significant investment in innovation and respect for
`
`intellectual property.” (ECF No. 1 93.) Seoul Semiconductor “ownsoneof the largest LED
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`patent portfolios in the world, which includes more than 10,000 patents worldwide.” (ECF No. 1
`
`4 3.) Seoul Semiconductor’s United States sales offices are located in Michigan, Georgia, and
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`California. (ECF No. 14,at 13.)
`
`b.
`
`Ace Hardware’s Operations
`
`Ace Hardware is a Delaware corporation, with its principal place of Business in
`
`Oak Brook,Illinois. (ECF No. 1 46.) It has “physical locations in this Judicial District and
`
`Division, including a Redistribution Center [the ‘RDC’] located at 1006 Center[p]oint Drive in
`
`Suffolk, Virginia.” (ECF No. 1 97.) The Suffolk RDC is a 475,000 square foot warehouse, and
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`“serves as [Ace Hardware’s] east coast hub for receiving import merchandise through the Port of
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`

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`Virginia.” (ECF No. 197.) The Suffolk RDC “distributes products ‘to [ten] of Ace Hardware’s
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`[fourteen] Retail Support Centers, serving Ace [Hardware]retail stores as far as Texas, New
`
`York[,] and Florida.’” (ECF No. 1 77.) Seoul states that “[b]etween September 1, 2015[,] and
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`April 8, 2022, Ace Hardwarereceivedat least 4,953 shipments through the Port ofNorfolk, of
`
`which at least 209 shipments were identified by the shippers as containing LEDS, lamps, and/or
`
`lighting (or a combination of these).” (ECF No. 1 { 12(a).)
`
`“Four Ace Hardware employees workat [the Suffolk RDC],in addition to dozens of
`
`employees of Ace Hardware’s contractor, Expeditors International [of Washington,Inc.
`
`(‘Expeditors’)].” (ECF No. 19, at 9.) Expeditors, a global logistics and warehouse managing
`
`company, “conducts muchofthe distribution operations at the Suffolk [RDC].” (ECF No.19,
`
`at 23.)
`.
`
`In his sworn declaration, Kevin Kryscio, the Corporate Vice President of Supply Chain
`
`and Logistics at Ace Hardware,states that “Ace Hardware maintainsits physical and
`
`electronically stored records as they relate to sales, marketing, manufacturing, product
`
`development, and researchat its principal place of business.” (ECF No. 15-3 4 4.) He avers that
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`“[njo Ace Hardware employeeat the Suffolk facility is involved in the selection, ordering,sales,
`
`or returns of the accused products.” (ECF No. 15-3
`
`6.) Hestates that “[a]ll pertinent
`
`information relating to the products at issue, including sales, finance, [and] marketing [is] located
`
`at Ace Hardware’s Illinois headquarters,” and that any other “documents and .. . information
`
`that may be relevantto this suit are also likely locatedin Illinois.” (ECF No. 15-3 7] 6, 9.)
`
`“
`
`In his sworn declaration, Matthew Massey, the RDC Import Manager at Ace Hardware,
`
`states that “[he] and the other three Ace Hardware employees in Suffolk[] are not involved in the
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`selection, ordering,sales, or returns of the products that are received [in Suffolk]. Rather, [they]
`
`

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`focus only on intake of shipments designated for delivery [in Suffolk] by headquarters [in
`
`Illinois] and the correspondingredistribution ofproduct[s] to a Retail Support Center.” (ECF
`
`No. 15-2 7 8.) Massey states that “based on[his] recollection and review of available records,
`
`which are a subset of those available at [Ace Hardware’s] Illinois headquarters, not one ofthe
`
`products identified in [Seoul’s C]omplaint has passed through the Suffolk RDC.” (ECF No. 15-2
`
`45.) He further avers that “the distribution operations at the location namedin [the C]omplaint
`
`are conducted by Expeditors.” (ECF No. 15-2 9.)
`
`Ii. Legal Standard
`
`“For the convenience ofparties and witnesses, in the interest ofjustice, a district court
`
`may transfer any civil action to any other district or division where it might have been brought.”
`
`28 U.S.C. § 1404(a). The decisionto transfer a case rests in the district court's sound discretion.
`Koh v. Microtek Intern., Inc., 250 F. Supp. 2d 627, 630 (E.D. Va. 2003). “The movantcarries
`
`the burden of establishing the propriety of the transfer request.” Bascom Res., LLC v. Facebook,
`
`Inc., No. 1:12cv1111, 2012 WL 12918407, at *1 (E.D. Va. Dec. 11, 2012).
`
`A court determining the propriety of a motion to transfer under § 1404(a) follows a two-
`
`step inquiry. Koh, 250 F. Supp. 2d at 630. First, the court determines whether the claims could
`
`have been broughtin the transferee forum.
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`/d@. To do so, “a movant must establish that both
`
`venue andjurisdiction with respect to each defendantis proper in the transferee district.” Jd.
`
`at 631 (citations omitted). Second, a court considers the following seven factors:
`
`(1) ease of access to sources of proof; (2) the convenienceto the parties and
`witnesses; (3) the cost of obtaining the attendance of witnesses; (4) the
`availability of compulsory process; (5) the interest in having local controversies
`decided at home; (6) in diversity cases, the court's familiarity with the applicable
`law; and,(7) the interest ofjustice.
`
`

`

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`Samsung Elecs. Co., Lid. v. Rambus, Inc., 386 F. Supp. 2d 708, 715 (E.D. Va. 2005). A court's
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`decision to transfer dependsonthe particular facts of the case because § 1404(a) “provides no
`
`guidanceas to the weight” that courts should afford each factor. Jd. at 716 (citing 15 Wright,
`
`Miller & Cooper, Federal Practice and Procedure: Jurisdiction 2d § 3847 at 370). However,
`
`“[t]he principal factors to consider”are: (1) plaintiff's choice of forum, (2) convenienceofthe
`
`parties, (3) witness convenience and access, and (4) the interest ofjustice. /d.; See also Bascom,
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`2012 WL 12918407, at *1. “The party asserting .
`
`. inconvenience has the burdento proffer, by
`
`affidavit or otherwise, sufficient details .
`
`.
`
`. to enable the court to assess the materiality of
`
`evidence and the degree of inconvenience.” Koh, 250 F. Supp. 2d at 636 (citation omitted).
`
`“Althoughaplaintiff's choice of forum ‘is typically entitled to substantial weight,
`
`especially where the chosen forum is the plaintiff's homeorbears a substantial relation to the
`cause ofaction,’ deference to that forum choice ‘varies with the significance ofthe contacts
`
`between the venue chosenby plaintiff and the underlying cause of action.’” Bascom, 2012 WL
`
`12918407, at *1 (quoting Pragmatus AV, LLC v. Facebook, Inc., 769 F. Supp. 2d 991, 995 (E.D.
`
`Va. 2011)). “[I]f thereis little connection between the claims and t[he] judicial district, that
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`would militate againsta plaintiff's chosen forum and weighin favoroftransfer to a venue with
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`more substantial contacts.” Koh, 250 F. Supp. 2d at 635 (citation omitted).
`
`In a patent case, “[a]s a generalrule, the preferred forum is that which is the center of the
`
`accused activity.” Acterna, L.L.C. v. Adtech, Inc., 129 F. Supp. 2d 936, 939 (E.D. Va. 2001)
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`(alteration in original) (citation omitted). “The center of accusedactivity will most often be
`
`where the offending device is produced.” Jd. “[T]hetrier of fact ought to be as close as possible
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`to the milieu of the infringing device and the hub ofactivity centered aroundits production.” Jd
`
`(alteration in original) (citation omitted and emphasis removed). “[T]he nucleus of operative
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`

`

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`facts [in a patent case] formsat or near the ‘center ofthe allegedly infringing activities,”
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`primarily where the accused products were designed, developed, and manufactured.” Macronix
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`Int'l Co. v. Spansion Inc., No. 3:13cv679, 2014 WL 934521, at *2 (E.D. Va. March 10, 2014)
`
`(citing Koh, 250 F. Supp. 2d at 636). However,“[t]he availability of modern technology. . . has
`
`alleviated the substantiality of this doctrine to the extent that transportation of evidencein patent
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`suits is no longer as expensive and time consumingas it once was.” Cobalt Boats, LLC v. Sea
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`Ray Boats, Inc., Case No. 2:15cv21, 2015 WL 1800274,at *3 (E.D. Va. Apr. 16, 2015)
`
`(citation omitted).
`
`Ii. Analysis
`
`The decision regarding transfer of this case rests largely on one issue: whether Ace
`
`Hardware’s RDC in Suffolk supports a finding that this matter should stay in this Court. It
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`does not.
`
`.
`
`The Court will grant Ace Hardware’s Motion to Transfer andtransfer this case to the
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`Northern District of Illinois because Seoul could have brought this action in the Northern District
`
`of Illinois and the four factors that this Court must consider in deciding this Motion strongly
`
`favor transfer. Given the forthcomingtransfer, the Court will not address whetherit should
`
`dismiss this matter pursuant to Federal Rule of Civil Procedure 12(b)(3).
`
`A.
`
`Seoul Could Have BroughtIts Claims Against Ace Hardwarein the
`Northern District of Illinois
`
`Asto the first of the Court’s two-part inquiry, the Court concludes that Seoul could have
`
`initiated this action in the Northern District of Illinois. “[A] district court may transfer any civil
`
`action to any otherdistrict or division where it might have been brought.” 28 U.S.C. § 1404(a).
`
`To demonstrate that an action could have been broughtin the proposed transferee forum,
`
`the movant must establish that both venue andjurisdiction are proper for each defendant. Koh,
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`

`

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`250 F. Supp. 2d at 630. Pursuantto 28 U.S.C. § 1400(b), a civil action for patent infringement
`
`may be brought in any district where the defendant resides or where the defendant has committed
`
`acts of infringementandhas a regular and established place of business. TC Heartland LLCv.
`
`Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1514 (2017).
`
`Noquestion exists that venue and jurisdiction are proper for Ace Hardware in the
`
`Northern District of Illinois becauseits principal place of business is in Oak Brook, Illinois,
`
`whichis within the Northern Districtof Illinois. (ECF No. 15-3 43.) Because Ace Hardware
`
`“resides”in the Northern District of Illinois, Seoul’s claims against Ace Hardware might have
`
`been broughtin the transferee forum. TC Heartland, 137 S. Ct. at 1514.
`
`Therefore, because venue andjurisdiction are properin the transferee district, the first
`
`step of the Court’s two-step inquiry allows transfer of this matter to the Northern District
`of Iinois.
`.
`
`B.
`
`All Four Principal Factors Weigh in Favor of Transfer
`
`The Court turns to the second part of the two-part inquiry which requires the evaluation
`
`of four subparts within it. Seoul’s choice of forum, the convenience to the parties, and the
`
`convenience to the witnesses support transfer of this action to the Northern District ofIllinois.
`
`The fourth factor, the interest ofjustice, weighs slightly in favor of transfer. As such, the second
`
`step of the two-part inquiry supports a finding that the Court may transfer this matter to the
`
`Northern District of Illinois. The Court will exercise its discretion to do so.
`
`1.
`
`The Court Will Afford Little Weight to Seoul’s Choice of Forum
`
`Thefirst “principal factor” to consider is Seoul’s choice of forum. Samsung Elecs. 386 F.
`
`Supp. 2d at 715. Here, Seoul’s choice of forum is not entitled to substantial weight because the
`
`Eastern District of Virginia is not Seoul’s home forum,the center of the accusedactivity is not in
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`

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`the District, and the only nexustying the Eastern District of Virginia to the underlying patent
`
`infringementallegations is that the accused products may be imported into and distributed from
`
`the Suffolk RDC.
`
`While the “plaintiffs choice of forum is typically entitled to substantial weight, especially
`
`where the chosen forum is the plaintiff's homeor bears a substantial relation to the cause of
`
`
`
`action[,] . . [t]he level of deference toaplaintiff's forum choice varies with the significance of.
`
`
`
`the contacts between the venue chosenby plaintiff and the underlying cause ofaction.”
`
`Pragmatus, 769 F. Supp. 2d at 995. “Even whentheplaintiff sues in its home forum,that fact is
`
`notby itself controlling and the weight of that factor depends on the nexustying the case to the
`
`forum.” Gebr. Brasseler GmbH & Co. KG v. Abrasive Tech., Inc., No. 1:08cv1246, 2009 WL
`
`874513, at *2 (E.D. Va. March 27, 2009). Accordingly, analysis of whethera plaintiff's choice
`offorum should receive substantial weight isheavily fact-based and dependent uponthe specific
`
`facts and circumstances of each case. See ThroughPuter Inc. v. Microsoft Corp., No. 3:21cv216,
`
`2022 WL 874319, at *7 (E.D. Va. Mar. 23, 2022).
`
`Plainly, Seoul cannot establish that the Eastern District of Virginia is its home forum.
`
`See Pragmatus, 769 F. Supp. 2d at 995. Plaintiffs are Korean corporations headquartered
`
`abroad, (ECF No. 1 {§ 4-5), and they have not indicated that they have any known offices or
`
`meaningfulties to this District.7
`
`3 Ace Hardwarestates that Seoul Semiconductor’s United States sales offices are located
`in Michigan, Georgia, and California. (ECF No. 14, at 14.)
`
`

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`Second, the Eastern District of Virginia is not the “center ofthe accusedactivity.”
`Acterna, 129 F. Supp. 2d at 939. Ina patentaction, “the pre ferred forumis that whichis the
`center ofis the center ofthe accused activity.” /d. (citation omitted). This is “primarily where
`
`the accused products were designed, developed, and manufactured.” Macronix Int'l, 2014 WL
`934521, at *2 (citing Koh, 250 F. Supp. 2d at 636). Here, Seoul does not contend that the
`accused products were “designed, developed, and manufactured” in the Eastern District of
`
`Virginia.
`Jd.
`Third, Seoul unconvincingly contends that this forum “bears a substantial relation to the
`
`cause ofaction” because Ace Hardware’s Suffolk RDCis “the east coast hub for receiving
`
`
`
`4 In its Opposition, Seoul contends that,
`There are morethan[thirty] Ace Hardwareretail stores located in the Eastern District of
`Virginia, including at least a dozen Ace Hardwarestores in the RichmondDivision.
`Ultimately, then, the allegations and factual admissions of Ace Hardware plausibly
`establish thatAce Hardwarecontracts withits retail stores situated throughout the Eastern
`District of Virginia tosell (or, at minimum,offer to sell) the accused LED lighting
`products.
`(ECF No.19 at 16.) Tothe extent Seoul seeksto argue that venue is appropriate giventhat Ace
`Hardware hasretail locationsin this District, its legal theory cannot be supported based onfacts
`
`elicited in the Texaslitigation about how Ace Hardwareoperates.
`
`(ECF No. 30-1, at 7-9.) Seoul voluntarily dismissed its action in Texas following venue
`discoveryon this legal theory. See Seoul Semiconductor Co. v.Ace Hardware Corp.,
`6:21cv01060, Dkt. 9 (W.D. Tex. Oct. 21, 2021); (ECF No. 43-3). Thereprisal ofa failed legal
`theoryhereis, at best, a pooruse ofjudicial resources.
`11
`
`

`

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`import merchandise[,] serves [ten] out of Ace Hardware’s [fourteen] retail support centers[,] and
`
`playsavital role in distributing products to Ace [Hardware] retail stores as far as Texas, New
`
`York, and Florida.” (ECF No. 19, at 18-19.) It further avers that Ace Hardwarereceivedat least
`
`4,953 shipments through the Port of Norfolk, of which at least 209 shipments wereidentified by
`
`the shippers as containing LEDs, lamps, and/orlighting. (ECF No. 1 { 12(a).)
`
`While sales or importation can create contacts to the choice forum, the fact that
`
`importation of an infringing product occurs in a particular district does not necessitate a finding
`
`that the plaintiff's choice ofthat district is entitled to substantial weight. See NanoEntek, Inc.v.
`
`Bio—Rad Labs., Inc., No. 2:11¢v427, 2011 WL 6023189, at *3 (E.D. Va. Dec. 2, 2011). Indeed,
`
`as NanoEntek articulated, “[ml]ere sales and marketing activit[ies] do[] not entitle [a plaintiffs]
`
`choice of forum to substantial weight when noneofthe infringing products were developed or
`producedin this District.” Ia (citation omitted).
`
`The Court follows the same logic here. The fact that the infringing products may find
`
`themselves in this District (either for sale or for further distribution elsewhere) does not lend
`
`much weight to Seoul’s choice of forum. See id. This is especially true here, where Seoul can at
`
`mostassert that“at least 209 shipments were identified by the shippers as containing LEDs,
`
`lamps, and/orlighting,” but cannotplainly state that the accused products are imported into the
`
`forum. (ECF No.19, at 14.) Seoul “identifies three .
`
`.
`
`. products that it believes pass through the
`
`Suffolk[ RDC].” (ECF No. 19, at 9 (emphasis added).) But RDC Import Manager Matthew
`
`Massey declares that “[bJased on fhis] recollection and review of available records, which are a
`
`subset of those available at [Ace Hardware’s]Illinois headquarters, not one of the products
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`identified in [Seoul’s] complaint has passed through the Suffolk RDC.” (ECF No. 15-2,at 2.)
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`Case: 1:23-cv-02690 Document #: 45 Filed: 03/31/23 Page 13 of 21 PageID #:613
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`Seoul counters with a sworn declaration from Christopher Suarez attaching a record of
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`“the importation by Ace Hardware of LED products”that includes productsthat infringe the
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`patents-in-suit. (ECF No. 20 § 6; ECF No. 20-5; ECF No.19, at 15.) However, Seoul does not
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`contextualize the importation record, so it has little persuasive value. Even if this Court were to
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`consider the importation record, the document does not appear to list any of the accused products
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`identified in Seoul’s Complaint, but rather appearstolist irrelevant Westinghouse products.°
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`(ECF No. 20-5.) While Import Manager Massey’s declaration, which stems from “recollection”
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`and a “review of available records,” may lack specificity, it is a statement proffered by a person
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`with knowledge of the subject matter, and it is under oath. Clearly the persuasive value of Mr.
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`Massey’s declaration outweighs that of any document appended for Seoul’s opposition.
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`As a result, Seoul’s choice of forum is not entitled to substantial weight because the
`Eastern District ofVirginia is not Seoul’s home forum, the center ofthe accused activity is not in
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`this District, and the only nexus tying the Eastern District of Virginia to the underlying patent
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`infringementallegations is that the accused products may be importedinto and distributed from
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`the Suffolk RDC. Because the Court cannot give Seoul’s choice of forum substantial weight, if
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`much weightatall, this factor favors transfer to the Northern District of Illinois. See Samsung
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`Elecs., 386 F. Supp. at 715.
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`5 In their Opposition brief, Seoul references “additional products manufactured by
`third[ parties that Ace Hardware [allegedly] imports andsells in this District [that] infringe the
`patents-in-suit and are relevantto this case.”” (ECF No. 19, at 19.) However, Seoul doesnotlist
`these additional products in its Complaint. Seoul suggests that it intended to request leave to
`amend the Complaintto include the additional products, but until it does so, this Court will not
`considerallegations pertaining to them. (See ECF No.19, at 19 n.10.)
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`2.
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`The Convenience to the Parties Weighs in Favor of Transfer
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`The Court must next evaluate the second “principal factor” in transfer cases:
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`convenienceto the parties. Samsung, 386 F. Supp. 2d at 715. The convenience to Seoul and
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`Ace Hardwarefavors transfer. In so finding, the Court reviews three aspects of the convenience
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`to the parties analysis: “ease of access to sources ofproof, the cost of obtaining attendance of
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`witnesses, and the availability of compulsory process.” Byerson v. Equifax Infor. Services, LLC,
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`467 F. Supp. 2d 627, 633 (E.D. Va. 2006)(citing Samsung, 386 F. Supp. 2d at 717 n. 13).
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`Transfer is not appropriate when “the result of transfer would serve only to ‘shift the balance of
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`inconvenience’” from one party to another. Board ofTr. Sheet Metal Workers Nat. Fund v.
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`Baylor Heating & Air Conditioning, Inc., 702 F. Supp. 1253, 1258 (E.D. Va. 1988)
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`(quoting Eastern Sci. Marketing v. Tekna-Seal Corp., 696 F. Supp. 173, 180 (E.D. Va. 1988)).
`Here, the convenience ofthe parties favors transfer because two out of its three subparts weigh in
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`favor of transfer: (1) access to sources of proofis easier in Illinois, (2) the cost of obtaining the
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`attendance of witnessesis lowerin Illinois, and (3) the availability of compulsory process stands
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`neutral.
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`a.
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`The Ease of Access to Sources of Proof in the Northern District of
`Illinois Favors Transfer
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`As to ease of access to proofas thefirst part of the convenience to parties analysis,this
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`Court has previously held that“[{i]n actions alleging patent infringement, because the bulk of
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`relevant evidence comes from the accusedinfringer, [] the place where [the] defendant’s
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`documents are kept weighs in favor of transfer to that location.” ThroughPuter, 2022 WL
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`874319, at *10 (first and second alteration in original) (citation omitted). Easier access to
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`sources of proof exists in the Northern District of Illinois.
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`Case: 1:23-cv-02690 Document #: 45 Filed: 03/31/23 Page 15 of 21 PageID #:615
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`Ace Hardware’s headquartersis located in Oak Brook,Illinois. “Ace Hardware
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`maintainsits physical and electronically stored recordsas they relate to sales, marketing,
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`manufacturing, product development, and research at its principal place of business[whichis in
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`Oak Brook,Illinois].” (ECF No. 15-3, at 2.) Thus, the documentsrelevantto this matter,
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`whetherin physical or electronic form, are largely housed in Illinois. (ECF No. 14,at 13, 15.)
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`Seoul’s argumentthat evidence regarding the importation ofthe allegedly infringing
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`products “will come from documents housedin Virginia, [because] the Suffolk, Virginia
`[RDC] ... is Ace[ Hardware’s] main hub for importation on the Eastern Seaboard”is unavailing.
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`(ECF No.19, at 22.) Indeed, the record suggests the inverse. As noted above, Ace Hardware
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`RDC Import Manager Masseydeclaresthat the alleged infringing products do not pass through
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`the facility in Suffolk. (ECF No. 15-2, at 2.) Indeed, even with Seoul’s submitted documents,
`the record doesnotreliably suggest that the Suffolk warehouse has any relevant documents. But
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`importation aside, none of the evidence suggests the Suffolk warehouse would be the hub of
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`needed documents. For example, Seoul does not indicate that documents pertaining to whether
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`the Ace Hardware’s products infringe their patents are housed in Suffolk.
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`It is correct that, given the advances in technology, the comparatively low cost of
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`transporting documents, “can make [document] location a less pressing consideration when
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`deciding a motion to transfer venue.” Finkel v. Subaru ofAm., Inc., No. 3:06cv292, 2006 WL
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`2786811, at *3 (E.D. Va. Sept. 26, 2006); see also NanoEntek, 2011 WL 6023189,at *4
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`(agreeing that “changes in technology have lessened the importance of the court’s proximity to
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`physical documentation.”). Although the convenienceof access to proof may not weigh as
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`heavily in favoroftransfer given the ease with which information can be transmitted,it still
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`weighs in Ace Hardware’s favor because the documents are principally located and moreeasily
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`accessed in the Northern District of Illinois.
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`b.
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`The Cost of Obtaining Witnesses Would Be Lowerin the Northern
`District of Illinois
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`While the parties largely address this second consideration about convenienceto the
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`parties in tandem with principal factor three, the convenienceto the witnesses, the Court
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`concludesthat the cost of obtaining witnesses would also be lowerin Illinois. This logically
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`follows a finding regarding access to proof. Furthermore, as the Court will address in detail
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`whenassessing the third principal factor of convenienceto the witnesses, the majority of
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`relevant witnesseswill bein Illinois. Therefore, the cost of obtaining witnesses would be lower
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`in the transferee court.®
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`c.
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`The Availability of Compulsory Process Stands Neutral
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`The third factor the Court must weigh when assessing convenience to the parties, the
`“availability ofcompulsory process,” targets the availability ofcompulsory process for the
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`attendance of unwilling witnesses. GulfOil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). This
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`factor encompasses the need to subpoena witnesses to appear at trial and requires a showing that
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`“witnesses who are beyond compulsion will not appear .
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`.
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`. voluntarily.” Samsung, 386 F. Supp.
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`2d at 718. Ace Hardwarestates that it is “under the impression that any third-party witnesses are
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`located beyond this Court’s subpoena power—namely,in the greater Chicago area.” (ECF
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`No. 14, at 15.) In response, Seoul contendsthat “third-party witnesses and individual contractor
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`6 The Court declines to evaluate with precision the parties’ positions with respect to
`relative cost of transportation to Chicago versus to Washington, D.C. Because the “center of the
`accused activity” clearly lies where Ace Hardwareresides inIllinois, this record demonstrates
`that t