United States District Court, W.D. Washington
DECISION AND ORDER GRANTING MOTION TO TRANSFER
William C. Griesbach, Chief Judge United States District
PTP OneClick, LLC, a Delaware limited liability company with
its principal place of business in Buffalo Grove, Illinois,
filed this action on October 22, 2018, against Avalara, Inc.,
a Washington corporation with its principal place of business
in Seattle, Washington, alleging patent infringement,
misappropriation of trade secrets under both federal and
Wisconsin law, unfair competition under Wisconsin law related
to tax software, as well as breach of contract for violating
the terms of a confidentiality agreement. In lieu of an
answer, Avalara filed the two motions that are presently
before the court: a motion to dismiss PTP OneClick's
complaint pursuant to Federal Rule of Civil Procedure
12(b)(6), and a motion to transfer the case to the Western
District of Washington pursuant to 28 U.S.C. § 1404(a).
The court has jurisdiction over the patent infringement
claims under 28 U.S.C. §§ 1331 and 1338(a) and the
federal trade secret misappropriation claim under 18 U.S.C.
§ 1836(c), as well as supplemental jurisdiction over the
state law claims under 28 U.S.C. § 1367. The court also
has jurisdiction under 28 U.S.C. § 1332. For the
following reasons, Avalara's motion to transfer will be
granted, and the court will reserve resolution of the motion
to dismiss for the transferee court.
2006, Pavlos Pavlou founded the company that is now called
PTP OneClick, LLC, two of whose members reside in Wisconsin.
Pavlou, a certified public accountant and tax professional,
developed software that automatically calculates various
corporate taxes at the state, county, and municipal level
based on location and type of sale, and automatically
generates and files the relevant tax documents. In February
of 2006, Pavlou filed for patent protection for his
invention, which the Patent and Trademark Office granted in
2017 when it issued U.S. Patent No. 9, 760, 915. PTP OneClick
owns and markets Pavlou's tax solution, known as Pavlou
2011, Avalara expressed interest in PTP OneClick's tax
solution. Avalara, whose headquarters are located in Seattle,
Washington, sells tax calculation and preparation products
and, according to the complaint, Avalara's tax products
did not have the same functionality as PTP OneClick's at
this time. The parties arranged to meet at Avalara's
Washington office on August 2, 2011. Prior to this meeting,
the parties executed a confidentiality agreement that, among
other things, required Avalara to keep confidential any
details disclosed during both the meeting and any subsequent
discussion regarding a potential transaction.
meeting, Pavlou met with Avalara senior executives and
demonstrated the functionality of his product. Impressed with
the product, Avalara brought in more employees, either in
person or remotely, to view further demonstrations of the
product and ask questions. Pavlou explained his methodology
utilizing a white board and Avalara employees continued to
ask questions and took notes. Following the conclusion of the
meeting, Avalara executives requested an unlocked fully
functional version of Pavlou SalesTaxPRO, which Pavlou
provided the next day. There were further negotiations and
exchanges of information between the parties until April of
2012 when Avalara informed PTP OneClick that it was no longer
interested in a business deal.
OneClick alleges that after the 2011 meeting, Avalara
released a series of updates to some of its tax
products-AvaTax, Avalara Returns, and Avalara TrustFile-that
introduced capabilities that Avalara's tax products
previously did not possess that were identical or near
identical to the capabilities of Pavlou SalesTaxPRO. The
majority of the Avalara employees who are responsible for the
development, design, and commercialization of these products
work at Avalara's Seattle headquarters where the meeting
2014, Avalara opened an office in Green Bay after its
acquisition of the Zytax line of energy excise tax-related
products. The focus of the work that is done in Avalara's
Green Bay office is focused on this energy excise
the convenience of parties and witnesses, in the interest of
justice, a district court may transfer any civil action to
any other district or division where it might have been
brought or to any district or division to which all parties
have consented.” 28 U.S.C. § 1404(a). Transfer is
proper when “(1) venue is proper in the transferor
district; (2) venue and jurisdiction are proper in the
transferee district; and (3) the transfer will serve the
convenience of the parties, the convenience of the witnesses,
and the interests of justice.” Coffey v. Van Dorn
Iron Works, 796 F.2d 217, 219-20 (7th Cir. 1986).
“[T]he party seeking a Section 1404(a) transfer bears
the burden of showing that ‘the transferee forum is
clearly more convenient' than the transferor
forum.” Vandeveld v. Christoph, 877 F.Supp.
1160, 1167 (N.D. Ill. 1995) (quoting Heller Fin., Inc. v.
Midwhey Powder Co., Inc., 883 F.2d 1286, 1290 (7th Cir.
1989)). A ruling on a motion to transfer venue
“requires an ‘individualized, case-by-case
consideration of convenience and fairness, '” and
“the district court is afforded broad discretion and
substantial deference in weighing the factors for and against
transfer.” Bull v. Ill. Union Ins. Co., No. 16
C 11446, 2017 WL 3234374, at *2 (N.D. Ill. July 31, 2017)
(quoting Coffey, 796 F.2d at 219).
pursuant to § 1404(a) is appropriate only when the
transferee forum is one where the action “might have
been brought.” Van Dusen v. Barrack, 376 U.S.
612, 616 (1964). Here, the parties are in agreement that
venue is also appropriate in the Western District of
Convenience of Parties and Witnesses
assessing the convenience of the parties, a court considers
four factors: (1) the plaintiff's choice of forum; (2)
the situs of the material events; (3) the relative ease of
access to sources of proof; and (4) the convenience of the
parties and witnesses. Research Automation, Inc. v.
Schrader-Bridgeport Int'l, Inc., 626 F.3d 973, 978
(7th Cir. 2010); Rosen v. Spirit Airlines, Inc., 152
F.Supp.3d 1055, 1059 (N.D. Ill. June 17, 2015).
“[T]ransfer is inappropriate if it will ‘merely
transform an inconvenience for one party into an