United States District Court, D. Nebraska
MEMORANDUM AND ORDER
F. Rossiter, Jr. United States District Judge.
Midwest Athletics and Sports Alliance LLC
(“MASA”) is a Delaware limited liability company
with its principal place of business in Omaha, Nebraska. On
November 3, 2017, MASA acquired 96 patents from Eastman Kodak
Company (“Kodak”). Shortly thereafter, MASA
separately sued defendants Xerox Corp. (“Xerox”)
and Ricoh USA, Inc. (“Ricoh”) in this district,
alleging they each infringed many of the patents MASA
recently acquired from Kodak. See 35 U.S.C. § 299
(limiting the joinder of accused infringers in patent cases).
pending before the Court are Xerox's Motion to Transfer
(Filing No. 57 in 8:17CV478) its case to the Western District
of New York and Ricoh's Motion to Transfer (Filing No. 40
in 8:18CV10) its case to the Eastern District of
Pennsylvania. See 28 U.S.C. § 1404(a). The
magistrate judge issued a findings and recommendation in
each case (Filing No. 70 in 8:17CV478 and Filing No. 53 in
8:18CV10) recommending that the transfer motions be granted.
MASA has filed a Statement of Objections in each case (Filing
No. 71 in 8:17CV478 and Filing No. 54 in 8:18CV10) pursuant
to Federal Rule of Civil Procedure 72(b) and Nebraska Civil
Rule 72.2. For the reasons stated below, MASA's
objections are overruled and the motions to transfer are
on June 23, 2017, MASA is a wholly-owned subsidiary of
Midwest Youth A&S, Inc., a Delaware public benefit
corporation. See Del. Code Ann. tit. 8, § 362.
MASA registered to do business in Nebraska on August 2, 2017.
Since then, MASA, through its President, Geoffrey S. Thomas
(“Thomas”), has made significant contributions to
provide funding and equipment for youth-sport organizations
in Omaha. MASA conducts its daily operations in Nebraska and
maintains its files and records at its home office in Omaha.
MASA does not have any employees or offices outside of
December 13, 2017, just months after forming and weeks after
acquiring the Kodak patents, MASA sued Xerox (Filing No. 1 in
8:17CV478) for patent infringement in this Court.
See 35 U.S.C. § 271(a). With leave, MASA
amended its complaint (Filing No. 40 in 8:17CV478) on April
20, 2018, to add factual allegations to support its claims.
In support of venue in Nebraska, MASA alleges Xerox
“has a regular and established place of business
located in” Nebraska; hires employees to work here,
“such as Field Service Technicians”; and
“has committed acts of patent infringement in Nebraska,
and throughout the United States, because it makes, uses,
sells, offers for sale and/or imports” infringing
products in Nebraska.
is a New York corporation with its headquarters in Norwalk,
Connecticut. It manufactures and sells office-technology
products, such as document systems, copiers, computers,
scanners, and printers, worldwide. Though registered in all
fifty states, Xerox reports its largest base of employees,
including most of its design, engineering, sales and
marketing employees, work in and around its offices in
Rochester, New York, and Webster, New York. Xerox has
specifically identified several New York employees that have
relevant knowledge regarding the development and technical
aspects of the specific Xerox products MASA alleges infringe
on MASA's patents. Xerox further avers that relevant
documents identified in the Amended Complaint are located at
Xerox's New York offices.
also maintains several places of business in Nebraska. Xerox
states it has fewer than fifty employees in Nebraska and
their activities are limited to sales, marketing, and
repair-activities that are not unique to Nebraska and occur
in almost every state. According to Xerox, no Xerox employee
in Nebraska has any “unique relevant technical
knowledge regarding the” allegedly infringing products,
and none of those products were developed or manufactured in
January 5, 2018, MASA filed a similar patent-infringement
suit in this Court against Ricoh (Filing No. 1 in 8:18CV10).
In its Amended Complaint (Filing No. 26 in 8:18CV10), MASA
again asserts this Court has venue because Ricoh has offices
in Nebraska, including “a full service sales dealer,
” and “has committed acts of patent infringement
in Nebraska, and throughout the United States, because it
makes, uses, sells, offers for sale and/or imports”
infringing products in Nebraska.
is an Ohio corporation with its principal place of business
and corporate headquarters in Malvern, Pennsylvania. Ricoh
states it provides “document management systems, IT
services, commercial and industrial printing, digital
cameras, and industrial systems.” According to Ricoh,
it has some executives at its former headquarters in West
Caldwell, New Jersey, and elsewhere, but its “key
executives and senior leaders . . . are located in
Malvern” and its “strategic planning, supply
operations, sales and marketing, managed services, and
technical services are run” from there.
Xerox, Ricoh states it has a satellite office in Nebraska but
explains its activities in Nebraska are limited to routine
sales and customer service. Ricoh states most of its 100
Nebraska employees “are managed services operations
employees housed at customer sites.” Ricoh specifically
identifies witnesses located in Pennsylvania, New Jersey,
Georgia, Ohio, New York, and Colorado that may have knowledge
about the patents and products at issue and agreements
between Ricoh's corporate parent and Kodak. Ricoh further
states it does not develop or manufacture products in
Nebraska and avers “there are no Ricoh documents or
witnesses with unique information or knowledge relevant to
the patent infringement claims at issue located within
Nebraska.” Most of Ricoh's product development
5, 2018, Xerox moved (Filing No. 57 in 8:17CV478) to transfer
its case to “the Western District of New York pursuant
to 28 U.S.C. § 1404(a), for the convenience of the
parties and witnesses.” Ricoh followed suit on June 22,
2018, requesting transfer (Filing No. 40 in 8:18CV10) to the
Eastern District of Pennsylvania on the same grounds. Neither
Xerox nor Ricoh claims that venue in this district is
improper. Rather, they each argue “the predominance of
witnesses, records, and documents necessary for” their
respective cases reside within their preferred districts. As
a second alternative to Nebraska, Ricoh requests that the
Court transfer its case to the Western District of New York,
if, and only if, the Court finds transfer to Pennsylvania
adamantly opposes transfer. As MASA sees it, its choice of
venue in Nebraska is entitled to great deference and the
efficiency of keeping both cases here requires denying
Xerox's and Ricoh's requests for transfer.
Standard of Review
and Ricoh's transfer motions were referred to the
magistrate judge pursuant to 28 U.S.C. § 636(b)(1) and
Federal Rule of Civil Procedure 72. Section 636(b)(1) and
Rule 72 establish two types of referral and concomitant
“levels of review depending on the scope and
significance of the magistrate's decision.”
Gomez v. United States, 490 U.S. 858, 871 (1989).
Section 636(b)(1)(A) authorizes the Court to
designate a magistrate judge to hear and determine any
pretrial matter pending before the court, except a motion for
injunctive relief, for judgment on the pleadings, for summary
judgment, to dismiss or quash an indictment or information
made by the defendant, to suppress evidence in a criminal
case, to dismiss or to permit maintenance of a class action,
to dismiss for failure to state a claim upon which relief can
be granted, and to involuntarily dismiss an action.
magistrate judge's rulings on a nondispositive pretrial
matter under § 636(b)(1)(A) is subject to review by this
Court when the ruling “is clearly erroneous or contrary
to law.” See also Fed. R. Civ. P. 72(a).
respect to dispositive motions like those excepted in
subparagraph (A), the Court may designate a magistrate judge
to conduct hearings, if necessary, and submit to the Court
“proposed findings of fact and recommendations for the
disposition” of the pending motion. 28 U.S.C. §
636(b)(1)(B); see also Fed. R. Civ. P. 72(b). If a
party timely objects to the magistrate judge's findings,
§ 636(b)(1) requires the Court to “make a de novo
determination of those portions of the report or specified
proposed findings or recommendations to which objection is
made.” See also Fed. R. Civ. P. 72(b).
the parties dispute whether Xerox's and Ricoh's
transfer motions are dispositive, and, in turn, which
standard of review should apply. MASA contends the transfer
motions are dispositive and thus subject to de novo review.
Xerox and Ricoh argue the motions are not dispositive and
subject only to review if clearly erroneous or contrary to
law. Both positions find some support in the law. Compare
In re Howmedica Osteonics Corp, 867 F.3d 390, 398 n.2
(3d Cir. 2017) (noting the magistrate judge “had
granted the [defendants' § 1404(a)] transfer motions
pursuant to his authority under 28 U.S.C. § 636 and
Federal Rule of Civil Procedure 72(a)”), and Koning
v. Baisden, No. 4:08CV3087, 2008 WL 4482839, at *3 (D.
Neb. Oct. 1, 2008) (explaining a magistrate judge's order
denying a §1404(a) transfer motion addressed “a
nondispositive pretrial matter within the ambit of 28 U.S.C.
§ 636(b)(1)(A)”), DietGoal Innovations LLC v.
Wegmans Food Markets, Inc., 993 F.Supp.2d 594, 599 (E.D.
Va. 2013) (agreeing “with the district courts that
routinely treat such motions as nondispositive”),
with Payton v. Saginaw Cty. Jail, 743 F.Supp.2d 691,
692-93 (E.D. Mich. 2010) (discussing the split of authority
on this issue before deciding a magistrate judge does not
have authority to enter a transfer order).
the Court is inclined to agree with the Third Circuit and
others that a transfer motion is not dispositive and that a
magistrate judge has authority under § 636(b)(1)(A) to
rule directly on such a motion, the Court need not pick sides
today. The magistrate judge in this case did not directly
rule on Xerox's and Ricoh's transfer motions and
issue an order subject to review under § 636(b)(1)(A)
and Rule 72(a). She made findings and a recommendation in
each case subject to review upon objection under §
636(b)(1)(B) and Rule 72(b). And even under the
more-stringent de novo standard MASA requests, the Court
finds MASA's objections should be overruled and the
transfer motions should be granted as the magistrate judge
Transfer of Venue under 28 U.S.C. § 1404(a)
noted above, Xerox and Ricoh have each moved to transfer
their respective patent cases pursuant to 28 U.S.C. §
1404(a) to districts that are home to their key offices.
Under § 1404(a), this Court has broad discretion to
transfer a case “to any other district . . . where it
might have been brought” if the transferee district is
more convenient for the parties and witnesses or if transfer
is “in the interest of justice.” See,
e.g., Steen v. Murray, 770 F.3d 698, 702
(8th Cir. 2014). MASA does not dispute that these cases could
have been brought in Xerox's and Ricoh's preferred
districts, se ...