Judge Albright Denied Resideo Technologies, Inc.’s Motion to Transfer Venue from the Western District of Texas to the District of Minnesota

On October 21, 2022, Judge Albright denied Defendant Resideo Technologies, Inc.’s (“Resideo”) Motion to Transfer Venue from the Western District of Texas (“Western District”) to the District of Minnesota.

Plaintiff EcoFactor Inc. (“EcoFactor”) accused Resideo of patent infringement of two patents relating to smart energy management systems. In addition to the present case, EcoFactor had co-pending litigation in the Western District involving the same patents or the same technology. EcoFactor accused various Resideo thermostats of infringing the EcoFactor patents.

Judge Albright, in weighing the private and public interest factors, concluded that the availability of the compulsory process for non-party witnesses, practical considerations, and court congestion weighed against transfer, while none of the factors weighed in favor of transfer. His analysis is as follows:

The Private Interest Factors

1. The Court found that the first factor, the cost of attendance and convenience for willing witnesses, was neutral. While the Court noted that Resideo identified more willing witnesses in Minnesota than in the Western District, it found that there were likely other witnesses in Resideo’s Austin office who were relevant to the case. The Court also highlighted that “EcoFactor’s willing witnesses and Resideo’s international employees ha[d] no impact on the outcome of this factor.”
2. The Court found that the second factor, relative ease of access to sources of proof, was neutral. The Court found that relevant documents were likely located in both districts. In doing so, however, the Court rejected EcoFactor’s argument that this factor weighed against transfer, since relevant electronically stored information was accessible in both districts. Specifically, the Court pointed to the Federal Circuit’s previous ruling that stated “the location of document custodians and location where documents are created and maintained, which may bear on the ease of retrieval.”
   The Court found that the third factor, the availability of compulsory process to secure the attendance of witnesses, weighed against transfer, finding that all potentially relevant third-party witnesses were in the Western District
   The Court found that the fourth factor, all other practical problems that make trial of a case easy, weighed against transfer, citing the co-pending litigation (all in the Western District) involving the same patents and related technology.

 The Public Interest Factors

1. The Court found that the first factor, administrative difficulties flowing from court congestion, weighed against transfer. First, it noted the Court’s consistent ability to bring patent cases to trial expeditiously. Second, it highlighted the Federal Circuit’s emphasis on the rapid disposition of patent cases.
2. The Court found that the second factor, local interest in having localized interests decided at home, was neutral, since “both the DMN and the WDTX likely ha[d] a local interest in the outcome of this litigation.”
3. Both parties agreed that the third factor – the familiarity of the forum with the law that would govern the case – was neutral.
4. Both parties agreed that the fourth factor – avoidance of unnecessary problems of conflict of laws or in the application of foreign law – was neutral.

In summary, the Court did not find that any factors weighed in favor of transfer – all factors either were neutral or disfavored transfer. The Court especially considered co-pending litigation in the district, compulsory process for non-party witnesses, and the Court’s history of rapid disposition in denying transfer.