Pakage Apparel, Inc. v. Tommy John, Inc.

Background

Pakage Apparel, Inc. brought a patent-infringement action against Tommy John, Inc. Pakage Apparel does business under the name BN3TH, manufactures and sells men’s underwear, and owns the patent at issue, referred to as the ’974 Patent. It alleged that five Tommy John products infringed that patent.

Pakage Apparel filed the case in the Southern District of Texas. Tommy John moved under 28 U.S.C. § 1404(a) to transfer the case to the Southern District of New York. The parties agreed that the case could have originally been filed in New York. The dispute was whether New York was clearly more convenient and whether transfer served the interests of justice.

Transfer Analysis

The court weighed the private and public factors used for a venue-transfer decision.

The court gave substantial weight to access to evidence. Tommy John showed that its research, design, development, marketing, sales, and finance activities concerning the accused products occurred in or near its Manhattan headquarters. Its related business records and likely witnesses were also in or near New York. Pakage Apparel had no documents or witnesses in Texas, and Tommy John’s Houston retail store did not create a comparable concentration of evidence there.

The court found that the availability of court orders requiring nonparty witnesses to appear slightly favored New York. It also found that the cost of attendance for willing witnesses strongly favored transfer because Tommy John’s relevant witnesses, potential third-party witnesses, and many of Pakage Apparel’s witnesses were in or near New York. Witnesses from Pakage Apparel’s Canadian headquarters would have to travel a significant distance to either forum.

The court further found that practical considerations strongly favored transfer. The case was still in its early stages, and the relevant design decisions were made in New York. The court rejected Pakage Apparel’s argument that the Southern District of Texas’s patent procedures made it a better forum, noting that the Southern District of New York also had rules and case-management procedures for patent cases.

Court congestion was neutral or slightly favored transfer. The court found that both districts were busy metropolitan courts and that the available patent-case data did not show that transfer would make resolving the case less efficient. New York’s local interest in the dispute strongly favored transfer because the accused products were designed and developed there and the case concerned the work and reputation of Tommy John employees there. The courts were equally capable of applying federal patent law, so familiarity with the governing law and avoiding conflicts of law were neutral.

Disposition

After balancing the factors, the court held that the Southern District of New York was clearly more convenient than the Southern District of Texas. Judge Charles Eskridge granted Tommy John’s motion to transfer venue and transferred the action to the Southern District of New York.