# Ham-Let, USA, Inc. v. Guthrie

> District Court, M.D. Alabama · August 27, 2019

URL: https://www.frixlaw.com/law-library/cases/9977612

## Case

- **Court:** District Court, M.D. Alabama
- **Decided:** August 27, 2019
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9977612

## How later opinions describe it (automated extraction)

- holding that a motion to transfer venue requires the court to “balance a number of case-specific factors” in an “individualized, case by-case consideration of convenience and fairness” (citation and internal quotation marks omitted)

## Opinion text

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF ALABAMA
NORTHERN DIVISION

HAM-LET, USA, INC., )
)
Plaintiff, )
)
v. ) CIVIL ACT. NO. 3:18-cv-679-ECM
) (WO)
BARBARA GUTHRIE, and )
COMPART SYSTEMS CORP., )
)
Defendants. )

MEMORANDUM OPINION and ORDER

Plaintiff Ham-Let, USA, Inc. (“Ham-Let”) filed this action on July 20, 2018, against
defendants Barbara Guthrie (“Guthrie”) and Compart Systems Corporation (“Compart”)
asserting claims of breach of contract, misappropriation of trade secrets under the Federal
Defend Trade Secrets Act pursuant to 18 U.S.C. § 1836, and misappropriation of trade
secrets under the Alabama Trade Secrets Act, ALA. CODE § 8-27-3 (1975). Specifically,
Ham-Let alleges that Guthrie, prior to the termination of her employment with Ham-Let,
accessed, downloaded, and retained Ham-Let’s confidential and proprietary trade secrets,
and then used that information in her new employment with Compart, Ham-Let’s direct
competitor. The Court granted the Plaintiff’s motion for a temporary restraining order
(doc. 8), restraining the Defendants from using Ham-Let’s confidential, proprietary
information. (Id.).
The Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331 and the
specific statutory grant of jurisdiction contained in 18 U.S.C. § 1836(c). In addition to the
general federal question jurisdiction, the Defend Trade Secrets Act contains a specific grant
of jurisdiction. “The district courts of the United States shall have original jurisdiction of
civil actions brought under this section.” 18 U.S.C.§ 1836(c). Finally, the Court has

supplemental jurisdiction over the Plaintiff’s state law claims pursuant to 28 U.S.C. § 1367.
Now pending before the court is the Defendants’ motion to transfer venue to the
United States District Court for the Western District of Texas (doc. 39). The Plaintiff
opposes the motion to transfer venue (doc. 41). The motion has been fully briefed and is
ripe for resolution. After careful consideration of the motion, the Plaintiff’s responses, and

the arguments in favor of and against the motion, the Court concludes that the motion to
transfer venue should be DENIED.
DISCUSSION
Ham-Let is a corporation formed under the laws of the State of California with its
principal place of business in Sugarland, Texas. (Doc. 44, at 1, para. 1). Guthrie is a citizen

of the state of Alabama. (Id. at para. 2). Compart is a corporation existing under the laws
of the state of Delaware, with its principal place of business in Austin, Texas. (Id. at 2,
para. 3).
The Defendants argue that this case should be transferred to the Western District of
Texas for the convenience of parties and witnesses because Ham-Let has “no apparent

connection to this District” and it primarily does business in Sugarland, Texas which is
significantly closer to the Western District of Texas than the Middle District of Alabama.
(Doc. 39 at 2). The Defendants further argue that they “have substantial connections to the
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Western District of Texas,” and the Western District of Texas is significantly closer for
potential witnesses than the Middle District of Alabama. (Id., at 2-3). The Defendants
contend that “[a]lthough Guthrie resides in Alabama, she . . . spends most of the work week

in Austin, Texas, or traveling to California for Compart,” and Guthrie “consents to personal
jurisdiction in the Western District of Texas.” (Id. at 3). Finally, the Defendants argue that
“Texas is home to potential third-party witnesses.” (Id.) According to the Defendants, the
Western District of Texas is a “clearly more convenient” forum. (Id. at 10).
Ham-Let opposes transfer to that court because venue is proper in this District, and

is its chosen forum. (Doc. 41). In addition, Ham-Let contends that the motion to transfer
is untimely because the Defendants waited over six months to file the motion, has actively
defended the case in this District, and that the motion is a delaying tactic. (Id. at 2). More
importantly, Ham-Let argues that this forum is more convenient because the principal
witness, Guthrie, resides in this District, and she downloaded and retained proprietary

confidential information in this District. (Doc. 41 at 5-6; Doc. 74 at 1). Finally, Ham-Let
asserts that the Defendants fail to identify a single non-party witness located in the Western
District of Texas. (Doc. 41 at 4). Thus, Ham-Let contends the case should remain in the
Middle District of Alabama.
The parties do not dispute that venue is proper in the Middle District of Alabama.

Instead, the Defendants’ motion is pursuant to 28 U.S.C. § 1404(a) which provides, in
pertinent part, that “[f]or the convenience of the parties and witnesses, in the interest of
justice, a district court may transfer any civil action to any other district or division where
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it might have been brought or to any district or division to which all parties have
consented.” (emphasis added). Usually, the Court accords “considerable deference” to the
Plaintiff’s choice of forum and “in the usual motion for transfer under section 1404(a), the

burden is on the [Defendants] to establish that the suggested forum is more convenient.”
In re Ricoh Corp., 870 F.2d 570, 573 (11th Cir. 1989).
In the typical case not involving a forum-selection clause, a district court
considering a § 1404(a) motion (or a forum non conveniens motion) must
evaluate both the convenience of the parties and various public-interest
considerations. Ordinarily, the district court would weigh the relevant
factors and decide whether, on balance, a transfer would serve “the
convenience of parties and witnesses” and otherwise promote “the interest of
justice.” § 1404(a).

Atl. Marine Const. Co., Inc. v. U.S. Dist. Court for W. Dist. of Texas, 571 U.S. 49, 62–63
(2013) (footnote in original omitted).
In this case, the Defendants do not seek to enforce a forum-selection clause, and
thus, the Plaintiff’s choice of forum weighs in favor of Ham-Let. The Court recognizes
that “when the plaintiff’s choice is not [its] home forum, . . . the presumption in the
plaintiff’s favor ‘applies with less force,’ for the assumption that the chosen forum is
appropriate is in such cases ‘less reasonable.’” Sinochem Int't Co., Ltd. v. Malaysia Int'l
Shipping Corp., 549 U.S. 422, 430 (2007) (quoting Piper Aircraft Co. v. Reyno, 454 U.S.
235, 255-56 (1981)). It is undisputed that the Middle District of Alabama is not the home
forum of Ham-Let. Thus, while Ham-Let’s choice of this form is entitled to less weight,
it is still entitled to more weight than the Defendants have attributed to it.
4
The decision to transfer a case is within the discretion of the trial court with the
propriety of transfer being decided based on the facts of each individual case. See Brown
v. Connecticut General Life Ins. Co., 934 F.2d 1193, 1196 (11th Cir. 1991). And the burden

is on the Defendants to establish the suggested forum is more convenient, and would be
“in the interest of justice.” In re Ricoh Corp., 870 F.2d at 572-73. In considering whether
the Defendants have demonstrated that their suggested forum is more convenient and
serves the interest of justice, the court considers a variety of case-specific factors such as
(1) the convenience of the witnesses; (2) the location of relevant documents
and the relative ease of access to sources of proof; (3) the convenience of the
parties; (4) the locus of operative facts; (5) the availability of process to
compel the attendance of unwilling witnesses; (6) the relative means of the
parties; (7) [the suggested] forum’s familiarity with the governing law; (8)
the weight accorded a plaintiff's choice of forum; and (9) trial efficiency and
the interests of justice, based on the totality of the circumstances.

Manuel v. Convergys Corp., 430 F.3d 1132, 1135 n.1 (11th Cir. 2005); see also Stewart
Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (holding that a motion to transfer
venue requires the court to “balance a number of case-specific factors” in an
“individualized, case by-case consideration of convenience and fairness” (citation and
internal quotation marks omitted)).
In evaluating the factors, the Court considers that the individual defendant, Guthrie,
is a resident of this District, notwithstanding the fact that she often works in Austin, Texas.
The events giving rise to the Plaintiff’s claims occurred in the Middle District of Alabama.
Guthrie is alleged to have accessed, downloaded, retained, and stored confidential and
proprietary trade secrets in the Middle District of Alabama. The fact that Guthrie
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subsequently went to work in the Western District of Texas does not substantially tilt this
factor in the Defendants’ favor. Guthrie voluntarily terminated her employment with Ham-
Let in the Middle District of Alabama, and her actions after her employment ended

occurred in the Middle District of Alabama. These facts weigh in favor of the case
remaining in this District.
A critical factor for the court’s consideration is the convenience of witnesses. See
Owens v. Blue Tee Corp., 177 F.R.D. 673, 679 (M.D. Ala. 1998). “The convenience of
non-party witnesses is important, if not the most important, factor in determining whether

a motion for transfer should be granted.” Conseal Int’ Inc. v. Econalytic Sys., Inc., 2009
WL 1285865 (S.D. Fla. 2009) (discussing transfer under § 1404(a)). The Defendants argue
that the convenience of non-party witnesses weigh in favor of transferring this case to the
Western District of Texas, which is significantly closer than the Middle District of
Alabama. However, the Defendants have not identified any individual non-party witness

from the Western District of Texas who would be inconvenienced by traveling to the
Middle District of Alabama.1 This factor does not weigh in favor of the case being
transferred to the Western District of Texas.

1 The Defendants assert that the neutral expert and Ham-Let’s expert reside in Texas and thus, the Western
District of Texas would be more convenient. The Court has considered that factor, but as the experts were
hired with the understanding that the case was filed in the Middle District of Alabama, does not accord the
factor much weight.
The Court has also considered the Defendants’ argument that potential witnesses from Applied
Materials “could testify,” and the Western District of Texas would be a more convenient forum. However,
because the Defendants have failed to identify any individual non-party witness who would actually testify,
the Court accords this factor less weight.
6
While pertinent documents appear to have been recently removed from this District
to the Western District of Texas, those documents can just as easily be made available in
this District. (Doc. 75 at 5). “[I]n this current era of technology, document production is

not as onerous as it once was, and scores of file boxes filled with paper (if they exist) need
not travel across the country.” Conseal Int’l Inc., supra. Thus, the location of relevant
documents is not a significant factor weighing in favor of transfer to another district.
The crux of Ham-Let’s claims against Guthrie and Compart stem from allegations
that Guthrie accessed, downloaded, and retained confidential and proprietary trade secrets

and took that information with her when she went to work for Compart. Those alleged
actions took place in the Middle District of Alabama, and thus, the Court concludes that
the locus of operative facts weighs in favor of this district.
Finally, Ham-Let alleges a claim under the Alabama Trade Secrets Act, ALA. CODE
§ 8-27-3 (1975). The Defendants do not address why the Western District of Texas would

be a more convenient forum to litigate this claim, and this Court’s “familiarity with the
governing law” weighs in favor of this claim being litigated in this District.
“The plaintiff’s choice of forum should not be disturbed unless it is clearly
outweighed by other considerations.” Robinson v. Giarmarco & Bill, P.C., 74 F.3d 253,
260 (11th Cir. 1996). Undisputedly, the Western District of Texas would be more

convenient to Compart. However, under the present circumstances, the Court concludes
that the Defendants have failed to establish that the interests of justice demand that this

7
case be transferred to the Western District of Texas as a more convenient forum for all the
parties.
CONCLUSION

Accordingly, for the reasons as stated, it is
ORDERED that the motion to transfer (doc. 39) is DENIED.
Done this 27th day of August, 2019.

/s/ Emily C. Marks
EMILY C. MARKS
CHIEF UNITED STATES DISTRICT JUDGE

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9977612. Public record. Not legal advice.