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`Case 1:11-cv-00797-RGA Document 94-1 Filed 12/19/11 Page 2 of 21 PageID #: 522
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`COLT DEFENSE LLC, Plaintiff, v. HECKLER & KOCH DEFENSE, INC.,
`HECKLER & KOCH, INC., HECKLER & KOCH GmbH and BUSHMASTER
`FIREARMS, INC., Defendants.
`
`Civil Action No. 2:04cv258
`
`UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF
`VIRGINIA, NORFOLK DIVISION
`
`2004 U.S. Dist. LEXIS 28690
`
`October 22, 2004, Decided
`October 22, 2004, Filed
`
`SUBSEQUENT HISTORY: Transferred to, Magistrate's
`recommendation at, Summary judgment proceeding at
`Colt Def. LLC v. Bushmaster Firearms, Inc., 2005 U.S.
`Dist. LEXIS 20874 (D. Me., Sept. 20, 2005)
`
`DISPOSITION:
`[*1] Bushmaster's and HKI/HKD's
`motions to sever claims and Bushmaster's motion to
`transfer claims GRANTED; HK GmbH's motion to
`dismiss GRANTED; HKI/HKD's motion for leave to
`amend their answer GRANTED.
`
`COUNSEL: For Colt Defense LLC, Plaintiff: Alicia Ann
`Meros, Edward Alan Pennington, Thomas Silvio Valente,
`Swidler, Berlin, Shereff, Friedman LLP, Washington,
`DC; Kristan Boyd Burch, Stephen Edward Noona,
`Kaufman & Canoles PC, Norfolk, VA; Warren Anthony
`Fitch, Swidler & Berlin, Chartered, Washington, DC.
`
`For Heckler & Koch Defense Inc., Heckler & Koch Inc.,
`Defendants: Henry Dwight Williams Burt, Robert
`Armistead Angle, Robert Lawrence Brooke, Troutman
`Sanders LLP, Richmond, VA; Jason Christopher Roper,
`McKenry Dancigers Dawson & Lake PC, Virginia
`Beach, VA; Kenneth Nicholson Whitehurst,
`III,
`Troutman Sanders LLP, Virginia Beach, VA; Sandra
`Compton Simmons, Troutman Sanders LLP, Norfolk,
`VA.
`
`For Heckler & Koch GmbH, Defendant: Henry Dwight
`Williams Burt, Robert Armistead Angle, Robert
`Lawrence Brooke, Troutman Sanders LLP, Richmond,
`VA;
`Jason Christopher Roper, McKenry Dancigers
`Dawson & Lake PC, Virginia Beach, VA; Kenneth
`Nicholson Whitehurst,
`III, Troutman Sanders LLP,
`Virginia Beach, [*2] VA.
`
`For Bushmaster Firearms, Inc., Defendant: Christopher
`Robert Drury, Jeffrey Munroe White, Pierce Atwood,
`Portland, ME; Conrad Moss Shumadine, Willcox &
`Savage PC, Norfolk, VA.
`
`Inc., Counter Claimant:
`For Bushmaster Firearms,
`Christopher Robert Drury, Jeffrey Munroe White, Pierce
`Atwood, Portland, ME; Conrad Moss Shumadine,
`Willcox & Savage PC, Norfolk, VA.
`
`For Colt Defense LLC, Counter Defendant: Alicia Ann
`Meros, Edward Alan Pennington, Thomas Silvio Valente,
`Swidler, Berlin, Shereff, Friedman LLP, Washington,
`DC; Kristan Boyd Burch, Stephen Edward Noona,
`Kaufman & Canoles PC, Norfolk, VA.
`
`For Heckler & Koch Inc., Counter Claimant: Henry
`Dwight Williams Burt, Robert Armistead Angle, Robert
`Lawrence Brooke, Troutman Sanders LLP, Richmond,
`VA; Jason Christopher Roper, McKenry Dancigers
`
`

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`Page 2
`
`Dawson & Lake PC, Virginia Beach, VA.
`
`JUDGES: Jerome B. Friedman, UNITED STATES
`DISTRICT JUDGE.
`
`OPINION BY: Jerome B. Friedman
`
`OPINION
`
`ORDER
`
`This matter comes before the court on a number of
`motions filed by the various defendants in this case.
`Defendant Bushmaster Firearms,
`Inc.
`("Bushmaster")
`moves for a severance of the claims brought against it
`and a transfer of those claims to [*3] the United States
`District Court for the District of Maine. Defendants
`Heckler & Koch, Inc. ("HKI") and Heckler & Koch
`Defense, Inc. ("HKD") also move for a severance of the
`claims alleged against Bushmaster. 1 Defendant Heckler
`& Kock Gmbh ("HK GmbH"), appearing specially,
`moves to dismiss for
`lack of personal
`jurisdiction.
`Finally, defendants HKI and HKD move for leave to
`amend their answer to the plaintiff's complaint. This latter
`motion has not been opposed. The other motions are fully
`briefed, and the issues presented are ripe for review.
`
`1 Although the motions to sever were ripe in
`June 2004,
`the court delayed consideration of
`them while waiting for the plaintiff to accomplish
`service on the one foreign defendant.
`
`Due to the high quality of the briefs submitted by the
`parties and the quantity of exhibits submitted in support
`of and opposition to the above-referenced motions, the
`court finds that oral argument on these motions is not
`necessary. The facts and legal contentions are very
`capably presented [*4] in these materials and argument
`would not aid in the decisional process. Accordingly, for
`the court GRANTS
`the reasons
`set
`forth herein,
`Bushmaster's and HKI / HKD's motions to sever claims
`and Bushmaster's motion to transfer claims; GRANTS
`HK GmbH's motion to dismiss; and GRANTS HKI /
`HKD's motion for leave to amend their answer.
`
`I. Procedural History
`
`The plaintiff, Colt Defense LLC ("Colt"), filed suit
`against
`the defendants on April 21, 2004.
`In its
`complaint, Colt asserts the following causes of action
`
`against Bushmaster and the Heckler & Koch entities: (1)
`federal trademark infringement; (2) false designation of
`origin; (3) trade dress infringement; (4) false advertising;
`(5) common law trademark infringement and unfair
`competition; and (6) federal
`trademark dilution. Each
`claim is
`asserted
`separately
`against Bushmaster
`individually, and against the Heckler & Koch entities
`collectively. The plaintiff also asserts a claim of patent
`infringement against Heckler & Koch.
`
`The complaint sets forth the citizenship information
`as to each defendant, which does not appear to be in
`dispute. Colt is a Delaware corporation, with its principal
`place of business
`in Hartford,
`[*5] Connecticut.
`Bushmaster is a Maine corporation, with its principal
`place of business in Windham, Maine. HK GmbH is a
`German corporation, with its principal place of business
`in Oberndorf, Germany. Finally, HKI and HKD are
`Virginia corporations, with their principal places of
`business in Sterling, Virginia. Colt alleges that HK
`GmbH is the parent company of HKI and HKD. Other
`than this
`information as
`to the
`citizenship and
`parent-subsidiary relationships between HK GmbH and
`HKI and HKD, Colt refers to the Heckler & Koch entities
`collectively in all other portions of
`the complaint.
`Defendants Bushmaster and HKI / HKD have responded
`with certain counterclaims against Colt.
`
`II. Background
`
`is a firearm manufacturer that has been in
`Colt
`business for over 150 years. Two of Colt's products, the
`M16 rifle and M4 carbine, are at the center of the issues
`in this case. These are assault-type weapons that may not
`be sold to the general public. Colt has a "sole source"
`contract with the United States government to supply the
`M4 carbine to military forces and is one of only two
`companies that can manufacture the M16 rifle and sell it
`to the United States military. Colt claims that it is the
`current [*6] record trademark owner of marks "AR-15,"
`"Colt AR-15,"
`"M4,"
`and "COMMANDO." Colt
`maintains that as a result of long and continuous use of
`such marks, and of the mark "M-16," these marks have
`become famous and well-known and are recognized as
`trademarks of Colt by members of
`the
`relevant
`purchasing public.
`
`A. Heckler & Koch
`
`Colt claims that Heckler & Koch is currently
`marketing a carbine called the HKM4, which not only
`
`

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`
`incorporates and infringes upon Colt's registered M4
`trademark, but also duplicates the styling and other
`characteristics of Colt's M4 carbine. Colt also alleges that
`Heckler & Koch is marketing a carbine called the XM8,
`and is falsely marketing this weapon as the replacement
`for the M16 rifle and the M4 carbine.
`
`Colt claims that the backdrop for the infringing acts
`began in 2003, when Heckler & Koch expressed an
`interest in acquiring Colt. Colt maintains that Heckler &
`Koch signed a confidentiality agreement and received
`confidential financial, technical and other information.
`Colt alleges that Heckler & Koch ended its interest in
`acquiring Colt
`after
`receiving
`such
`information.
`Following this attempted transaction,
`the complaint
`alleges that Heckler & Koch introduced [*7] the HKM4
`at a trade show in the United States. Evidence submitted
`by the parties reveals that this trade show was in Las
`Vegas, Nevada. Colt maintains that Heckler & Koch has
`also introduced the proposed XM8 and has presented it as
`an American-made product that will replace the Colt M4.
`Colt avers that Heckler & Koch has no manufacturing
`facilities in the United States and that the XM8 is not in
`production anywhere, existing only as an experimental
`prototype. Colt further alleges that Heckler & Koch has
`disseminated misinformation and false advertising on its
`website about
`its intentions to build a manufacturing
`facility in Georgia to produce firearms for the United
`States military,
`law enforcement
`and commercial
`markets. Colt concludes that Heckler & Koch is using the
`trademark and appearance of the M4 to gain immediate
`entry into the United States military market and convince
`military authorities to replace the Colt M4 carbine with
`the XM8.
`
`B. Bushmaster
`
`currently
`is
`that Bushmaster
`Colt maintains
`marketing a product called the XM-15 E2S "M4 type"
`carbine, which duplicates the styling and feel of the Colt
`M4 carbine. Colt asserts that Bushmaster, in marketing
`this look-a-like weapon, [*8] intends to mislead military,
`law enforcement and civilian customers into believing
`that Bushmaster
`is authorized by the United States
`government
`to manufacture and sell M16 and M4
`weapons. Colt also claims that Bushmaster frequently
`uses Colt trademarks in a manner that would suggest that
`Bushmaster sells products by names owned by Colt. Colt
`further contends
`that Bushmaster has adopted and
`plagiarized Colt's M16 and M4 brand parts numbering
`
`system for Bushmaster's "M4 type" products.
`
`to Bushmaster's motion requesting
`relevant
`As
`severance and transfer, Bushmaster's headquarters are
`located in Windham, Maine, where the majority of its
`employees work and reside. The design, development and
`production of Bushmaster's products,
`including the
`XM-15 E2S "M4 type" carbine take place in Maine.
`Bushmaster sells and distributes products nationally,
`including within the Eastern District of Virginia, in a
`number of ways,
`through the use of a web site, a
`telephone ordering system and distribution of a product
`catalog. Bushmaster
`also
`conducts
`sales
`through
`independent distributors; however, it has attested in an
`affidavit that no such distributors are located in Virginia.
`
`III. Discussion
`
`A. [*9] Motions to Sever and Transfer Venue
`
`1. Motion to Sever
`
`Both Bushmaster and the American Heckler & Koch
`entities (HKI and HKD) request that the court sever the
`plaintiff's
`claims
`against Bushmaster. Bushmaster
`maintains that
`it
`is a separate, unrelated entity from
`Heckler & Koch and that
`it manufactures and sells
`different and competing products. Bushmaster argues that
`the claims made against it are distinct from those raised
`against Heckler & Koch, as they arise from different and
`unrelated activities.
`
`Rule 21 of the Federal Rules of Civil Procedure
`provides that "parties may be dropped or added by order
`of the court on motion of any party . . . on such terms as
`are just." Fed. R. Civ. P. 21. A district court possesses
`broad discretion in ruling on a requested severance under
`Rule 21. See Saval v. BL, Ltd., 710 F.2d 1027, 1031-32
`(4th Cir. 1983). Although Rule 21 does not detail a
`standard for determining misjoinder,
`"courts have
`uniformly held that parties are misjoined when they fail
`to satisfy either of the preconditions for permissive
`joinder of parties set forth in [Federal Rule of Civil
`Procedure] 20(a) [*10] ." Hanna v. Gravett, 262 F. Supp.
`2d 643, 647 (E.D. Va. 2000).
`
`to join multiple
`Rule 20(a) permits a plaintiff
`defendants in one action "if there is asserted against them
`. . . any right to relief in respect of or arising out of the
`same transaction, occurrence, or series of transactions or
`occurrences and if any question of law or fact common to
`
`

`
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`2004 U.S. Dist. LEXIS 28690, *10
`
`Page 4
`
`all defendants will arise in the action." Fed. R. Civ. P.
`20(a). The purpose of this rule is to promote trial
`convenience and expedite the determination of disputes
`in a manner that will prevent multiple lawsuits. See
`Saval, 710 F.2d at 1031. Joinder is not a substantive
`right, rather it is a procedural device by which parties
`with similar substantive claims might
`jointly enforce
`them. See id. at 1030.
`
`Thus, Rule 20(a) presents two requirements to the
`joinder of defendants in one action: (1) the claims
`asserted against each defendant must arise out of the
`same transaction or occurrence; and (2) common
`questions of law or fact will arise in the action. See
`Hanna, 262 F. Supp. 2d at 647. Satisfaction of these
`requirements permits "all [*11] reasonably related claims
`for relief by or against different parties to be tried in a
`single proceeding." Saval, 710 F.2d at 1031.
`
`There is little doubt that common questions of fact or
`law will arise in this action. Colt is alleging that both
`Bushmaster and the Heckler & Koch entities have
`engaged in similar acts of trade infringement, unfair
`competition and false advertising with respect to the same
`Colt firearms. Whether the Colt trademarks are valid is
`certain to be a common question of law and whether the
`defendants made use of the same Colt trademarks in the
`course of
`the alleged infringing acts constitutes a
`common question of fact. What is at issue, however, is
`whether
`the claims
`raised against Bushmaster and
`Heckler & Koch satisfy the same transaction or
`occurrence test.
`
`is
`events
`all
`of
`identity
`absolute
`Although
`unnecessary for Colt to join both defendants, the claims
`raised against each defendant must at least stem from the
`same series of transactions or occurrences. See Saval, 710
`F.2d at 1031 (finding that allegations of fraud stemming
`from purchase of different cars at different times did not
`satisfy same transaction test). Colt's [*12] claims against
`Bushmaster and Heckler & Koch are premised on
`independent acts of infringement, false advertising and
`unfair competition. There is no allegation in the
`complaint
`revealing a connection among the acts
`attributed to Bushmaster and those attributed to Heckler
`& Koch. Colt argues, however, that the claims it has
`raised against Bushmaster and Heckler & Koch are not
`substantively distinct. Colt maintains that it has accused
`both defendants 2 of essentially identical illegal practices
`of infringement, false advertising and engagement in acts
`
`of unfair competition. Therefore, Colt contends that it
`meets the same transaction or occurrence requirement of
`Rule 20(a), because both Bushmaster and Heckler &
`Koch are attempting to commit "genericide" on Colt's M4
`trademark.
`
`The court consolidates the Heckler & Koch
`2
`entities
`for
`the purposes of
`this
`severance
`discussion only, referring to them collectively as a
`single defendant, as Colt has done it its complaint.
`
`The plaintiff has not referred the court to [*13] any
`authority in support of its position. To the contrary, the
`overwhelming authority from other jurisdictions indicates
`that allegations against multiple and unrelated defendants
`for
`independent
`acts of patent,
`copyright
`and/or
`trademark infringement do not set forth claims arising
`from the same transaction or occurrence within the
`meaning of Rule 20(a). See SB Designs v. Reebok Int'l,
`Ltd., 305 F. Supp. 2d 888, 892 (N.D. Ill. 2004) (finding
`that
`fact
`that defendants
`allegedly violated same
`trademark did not mean that plaintiffs' claims arose out of
`same transaction or occurrence); Androphy v. Smith &
`Nephew, Inc., 31 F. Supp. 2d 620, 623 (N.D. Ill. 1998)
`(finding that defendants in patent infringement case who
`sold different products and were competitors of one
`another were improperly joined); Paine, Webber, Jackson
`& Curtis, Inc. v. Merrill Lynch, Pierce, Fenner & Smith,
`Inc., 564 F. Supp. 1358, 1371 (D. Del. 1983)
`("Allegations of
`infringement against
`two unrelated
`parties based on different acts do not arise from the same
`transaction.")
`
`That Colt has accused both Bushmaster and Heckler
`& Koch of identical acts of infringement [*14] and of
`attempted "genericide" focuses not on whether the claims
`set forth in the complaint arise from the same transaction
`or occurrence, but rather on whether common questions
`of fact or law exist. Even assuming such common
`questions might exist, they are insufficient to satisfy the
`same transaction test under Rule 20. See SB Designs, 305
`F. Supp. 2d at 892. Colt has failed to demonstrate that
`Bushmaster's
`alleged
`acts
`of
`infringement,
`false
`advertising and unfair competition are in any way related
`to the alleged acts of infringement committed by Heckler
`& Koch. See id. Bushmaster and Heckler & Koch are
`separate
`companies
`that
`independently
`design,
`manufacture, market and sell different products
`in
`competition with each other. See Androphy, 31 F. Supp.
`2d at 623 (finding that competing defendants were
`
`

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`
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`
`these
`improperly joined). There is no allegation that
`defendants are jointly and severally liable or that any
`collusive or cooperative activity between them has led to
`Colt's claims. See Pergo Inc., v. Alloc, Inc., 262 F. Supp.
`2d 122, 128 (S.D.N.Y. 2003).
`
`Colt further argues that granting the motions to sever
`would result
`in judicial
`[*15]
`inefficiency and a
`substantial risk of prejudice to Colt because two courts
`would be required to hear the separate cases. Colt's
`apprehension is misplaced "given that
`the products
`alleged to have been infringing are not the same and the
`two sets of defendants are unrelated." See id. at 132.
`Furthermore, the court can perceive a risk of prejudice to
`the defendants were these cases not severed. Although
`the claims against Bushmaster and Heckler & Koch do
`not arise out of the same transaction or occurence, the
`same Colt
`trademarks are at
`issue in the allegations
`against each defendant. As such, there is the possibility of
`jury confusion over the evidence required to prove these
`claims. See Saval, 710 F.2d at 1031 (noting that
`severance was justified in order to keep straight facts
`pertaining to separate claims); Advamtel, LLC v. AT&T
`Corp., 105 F. Supp. 2d 507, 515 (E.D. Va. 2000)
`(allowing for possibility that
`joinder may lead to
`confusion at trial in case of distinct allegations against
`separate defendants).
`
`patent
`a
`alleged
`not
`has
`Additionally, Colt
`infringement claim against Bushmaster, as it has against
`Heckler & Koch. The possibility [*16] of a jury
`attributing evidence related to this claim to an unrelated
`defendant also counsels in favor of severance. See Philips
`Electronics North America Corp. v. Contect Corp., 220
`F.R.D. 415, 418 (D. Del. 2004) (noting possibility of
`prejudice accruing to defendant not accused of patent
`infringement if case were not severed). Finally, to the
`extent that considerations of judicial economy can factor
`into the court's decision whether to sever the claims
`against Bushmaster, they do so only after the plaintiff has
`first satisfied the requirements of Rule 20(a). See El
`Aguila Food Products, Inc. v. Gruma Corp., 167 F. Supp.
`2d 955, 959 (S.D. Tex. 2001). Accordingly, because the
`court finds that Colt's claims against Bushmaster and
`against Heckler & Koch do not arise from the same
`transaction or occurrence,
`the court will grant
`these
`defendants' motions to sever.
`
`2. Motion to Transfer
`
`Bushmaster also moves for a transfer of the claims
`
`asserted against it to the United States District Court for
`the District of Maine, Portland Division. Change of venue
`is permissible pursuant to 28 U.S.C. § 1404(a), which
`provides:
`
`For the [*17] convenience of parties and
`witnesses,
`in the interest of
`justice, a
`district court may transfer any civil action
`to any other district court or division
`where it might have been brought.
`
`28 U.S.C. § 1404(a). "[A] district court may sever certain
`claims under Rule 21 of the Federal Rules of Civil
`Procedure .
`.
`. and then transfer an action as to the
`severed claims under a change of venue statute .
`.
`.
`retaining jurisdiction over only some claims." Dao v.
`Knightsbridge Int'l Reinsurance Corp., 15 F. Supp. 2d
`567, 576 (D.N.J. 1999).
`
`In ruling on a motion to transfer, the court first
`determines whether the plaintiff could have brought its
`claims in the proposed transferee court. See Agilent
`Techs., Inc. v. Micromuse, Inc., 316 F. Supp. 2d 322,
`2004 U.S. Dist. LEXIS 7427 *5 (E.D. Va. 2004). This
`prerequisite is satisfied if
`the transferee court has
`jurisdiction over the subject matter of the action, if venue
`is proper, and if the defendant is amenable to process in
`that court. See Koh v. Microtek Int'l, Inc., 250 F. Supp. 2d
`627, 630 (E.D. Va. 2003).
`In the
`instant
`case,
`Bushmaster, as [*18] a corporation headquartered in
`Maine, would certainly be subject to the jurisdiction of
`that state's federal courts for claims arising under federal
`law. Similarly, as Bushmaster's design, marketing and
`sales efforts are based in Maine, venue would be proper
`there as well. See 28 U.S.C. § 1391.
`
`The court next inquires as to whether a transfer of
`the claims asserted against a defendant would undermine
`the plaintiff's choice of venue and whether a transfer
`would promote the convenience of
`the parties and
`witnesses and the interests of justice. See Koh, 250 F.
`Supp. 2d at 633; GTE Wireless, Inc. v. Qualcomm, Inc.,
`71 F. Supp. 2d 517, 519 (E.D. Va. 1999). Bushmaster
`contends that this balancing of factors weighs in favor of
`transfer. Bushmaster avers that none of its known fact
`witnesses reside in Virginia and that most company and
`non-party witnesses
`reside in Maine. Furthermore,
`Bushmaster claims that the claims raised against it have
`little connection to the Eastern District of Virginia.
`Bushmaster states that
`the XM-15 E2S "M4 type"
`
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`
`carbines manufactured by it, and which are at issue in this
`case, are produced at Bushmaster's [*19] principal
`facility in Maine. Similarly, Bushmaster's sales network,
`comprised of product catalogs,
`telephone sales and
`website server all are based or created in Maine.
`
`Colt argues that the plaintiff's choice of forum must
`be given substantial weight
`in the transfer analysis.
`Generally, a plaintiff's choice of forum is entitled to
`substantial weight. See Acterna, L.L.C. v. Adtech, Inc.,
`129 F. Supp. 2d 936, 938 (E.D. Va. 2001). But the weight
`accorded this choice "varies
`in proportion to the
`connection between the forum and the cause of action.
`Thus, a plaintiff's choice of its home forum is given more
`weight than its choice of a foreign forum." GTE Wireless,
`71 F. Supp. 2d at 519. Colt is headquartered in Hartford,
`Connecticut. Although Colt argues that it has extensive
`ties to Virginia, most of these ties are related to the sales
`and marketing of its products in Virginia. "Federal courts
`are not solicitous of plaintiffs claiming substantial weight
`for their forum choice where the connection with the
`forum is limited to sales activity without more." Acterna,
`129 F. Supp. 2d at 938.
`
`The court also finds that the claims raised against
`[*20] Bushmaster do not bear substantial relation to the
`Eastern District of Virginia such that Colt's choice would
`be entitled to greater deference. See id.; see also Koh,
`250 F. Supp. 2d at 633 (noting that plaintiff's chosen
`forum is not entitled to substantial weight when the
`claims have no connection to chosen forum). Although
`Colt references its extensive marketing and sales activity
`in Virginia, which Colt argues will serve as potential
`sources of evidence, it is the connection of the forum
`with the claims, not with the plaintiff, that is relevant to
`the transfer analysis. The claims of infringement, false
`advertising
`and
`unfair
`competition
`relating
`to
`Bushmaster's advertising, marketing, and sales activities
`all stem from Maine, where Bushmaster's sales efforts are
`based,
`its products catalogs are created and its other
`ordering mechanisms are hosted. See Acterna, 129 F.
`Supp. 2d at 939 (noting that in patent infringement cases,
`preferred forum is center of accused activity).
`
`Determination of a motion to transfer requires the
`court
`to weigh the convenience to the parties and
`witnesses in litigating in either venue. The party asserting
`witness inconvenience,
`[*21]
`in this case Bushmaster,
`"has the burden to proffer, by affidavit or otherwise,
`sufficient details respecting the witnesses and their
`
`to assess the
`testimony to enable the court
`potential
`materiality of evidence and the degree of inconvenience."
`Koh, 250 F. Supp. 2d at 636. Bushmaster has proffered
`by affidavit that many of its witnesses will be company
`employees who are familiar with Bushmaster's sales and
`marketing practices. None of these fact witnesses reside
`in Virginia. Bushmaster has identified seven witnesses
`and provided a description of the likely area of testimony
`of each witness. Such proffered testimony is likely to be
`material to the infringing claims at issue. See id. (noting
`that it is permissible to infer that witnesses located at or
`near
`center of
`infringing activities
`are material).
`Bushmaster has also attested in an affidavit that most
`discoverable material relating to the alleged claims of
`infringement are located at its Maine headquarters.
`
`is
`that Bushmaster
`argues
`In response, Colt
`attempting to shift the balance of inconvenience from the
`defendant to the plaintiff in a manner contrary to law.
`Colt claims that several of its own important [*22]
`witnesses reside in Virginia, including Colt employees
`and other
`third-party Virginia witnesses,
`such that
`convenience of
`these witnesses counsels against a
`transfer. Colt maintains that its Chief Executive Officer,
`Lt. Gen. William M. Keys,
`resides
`in Virginia.
`Furthermore, a Mr. Thaddeus Fletcher, a third-party
`witness who will testify as to the sale of Bushmaster
`weapons, also resides in Virginia.
`
`identified three potential
`Altogether Colt has
`witnesses, two of which reside in Virginia. One of these
`two, Colt's CEO, states in an affidavit
`that he is in
`Virginia at least once per week, usually for at least two
`days per week. As Colt's corporate headquarters are in
`Hartford, Connecticut, it appears that General Keys is
`often required to travel on business, such that he would
`not be inconvenienced by attending trial in Maine. Colt
`has also identified various government entities located in
`Virginia that are potential sources of evidence; however,
`Colt has not identified expected testimony such that the
`court can accord these identifications much weight in the
`transfer analysis. See id. at 637. Contrary to Colt's claims,
`it appears to the court that ease of access to [*23] sources
`of proof favors transfer because Bushmaster has shown
`that the center of the accused activity is in Mane. See id.
`at 638; see Verosol B.V. v. Hunter Douglas, Inc., 806 F.
`Supp. 582, 593 (noting that
`litigating in forum of
`defendant's principal place of business would reduce
`time, expense, and disruption to business operations). The
`court finds that the plaintiff has identified no witnesses in
`
`

`
`Case 1:11-cv-00797-RGA Document 94-1 Filed 12/19/11 Page 8 of 21 PageID #: 528
`
`2004 U.S. Dist. LEXIS 28690, *23
`
`Page 7
`
`this district who appear to have testimony that is either
`relevant or unique enough to warrant venue in this
`district. See GTE Wireless, Inc., 71 F. Supp. 2d at 520.
`
`Furthermore, Colt argues that Bushmaster has similar
`substantial ties to Virginia through its sale of firearms in
`this forum, such that
`trying this case in the Eastern
`District of Virginia is not a serious inconvenience to
`Bushmaster. These connections are tenuous at best. See
`Cognitronics Imaging Sys. v. Recognition Research Inc.,
`83 F. Supp. 2d 689, 697 (noting that weak connections of
`defendant with forum state may weigh in favor of
`transfer). Colt has not disputed Bushmaster's claims that
`its Virginia sales of M4-type products during the period
`from January 2003 to May 2004 accounted for less than
`0.3% of Bushmaster's total [*24]
`sales for the same
`period. 3 The court finds that such a small percentage of
`sales in the forum do not create a connection sufficient to
`grant Colt's choice of venue substantial weight. See
`Acterna, 129 F. Supp. 2d at 938. (finding that sales
`activity without more does not establish presence in
`forum for venue purposes).
`
`3 From the affidavit submitted by Richard Dyke,
`Bushmaster's Chief Executive Officer, it appears
`that
`the reference to total sales includes both
`national and international figures. See Affidavit of
`Richard Dyke at page 2, P5, 8.
`
`Lastly, Colt claims that Bushmaster, in filing certain
`counterclaims, has agreed to produce witnesses
`in
`Virginia. The court finds this argument to be unavailing
`and unrelated to the proper
`transfer analysis. The
`counterclaim filed by Bushmaster was compulsory in
`nature, requiring Bushmaster to plead it in an answer or
`risk waiver. See Fed. R. Civ. P. 13. The defendant need
`not waive a compulsory counterclaim [*25] in order to
`preserve a venue defense. See Dee-K Enters v. Heveafil
`SDN. Bhd., 985 F. Supp. 640, 643-44 (E.D. Va. 1997).
`
`It appears to the court that the convenience to Colt of
`having this case tried in this forum is not connected to the
`ease of sources of proof and witness convenience, but
`rather to its interest in trying cases involving similar
`claims against two unrelated defendants together. Were a
`severance not required, the transfer question would be in
`a different posture. As it stands, however, the court finds
`that the balance of convenience of parties and witnesses
`weighs in favor of transfer. See Verosol, 806 F. Supp. at
`593 (citing Anchor Sav. Bank v. Transamerica Ins. Co.,
`634 F. Supp. 398, 400-01 (S.D.N.Y. 1986) (observing
`
`that "where a plaintiff's chosen forum has little or no
`relation to the material facts of the case so that he may
`not rely on the deference ordinarily given his choice, he
`cannot by conclusory recitations of inconvenience defeat
`a defendant's transfer motion which is supported by a
`factual showing of greater inconvenience in the tranferee
`forum.")).
`
`The District of Maine is more closely connected to
`[*26] the alleged claims and Colt, headquartered as it is
`in Connecticut, will not be inconvenienced by proceeding
`in this preferable forum. See Verosol v. Hunter Douglas,
`Inc., 806 F. Supp. 582, 593 (E.D. Va. 1992) (finding that
`foreign corporation would experience no greater burden
`if action were tried in New Jersey rather than Virginia).
`In fact, the District of Maine is closer to Colt's principal
`place of business than is the Eastern District of Virginia
`and could prove more convenient for Colt employees and
`executives who must travel to the trial.
`
`Finally, in assessing a motion to transfer, the court
`must consider
`the interests of
`justice, "an analysis
`encompassing those factors unrelated to witness and
`party convenience." See Acterna, 129 F. Supp. 2d at
`939-40. In a case brought by an out-of-state plaintiff
`against an out-of-state defendant,
`there is little local
`interest in having the matter decided in Virginia. See
`Cognitronics
`Imaging Systems,
`Inc. v. Recognition
`Research, Inc., 83 F. Supp. 2d 689, 696. As this is a case
`arising under federal
`law,
`this court has no greater
`familiarity with the applicable law than would any other
`[*27] federal court. See id. Accordingly, the interests of
`justice also weigh in favor of transfer.
`
`Colt has not chosen to bring this action it its home
`forum, thus, very little deference is due to this choice. In
`doing so, Colt has acquiesced to some level of
`inconvenience of
`its own witnesses. See Agilent
`Technologies, Inc. v. Micromuse, Inc., 316 F. Supp. 2d
`322, 328, 2004 U.S. Dist. LEXIS 7427 *13-14 (E.D. Va.
`2004) (noting that by filing of action in Virginia, plaintiff
`burdened its own witnesses). The court
`finds that
`Bushmaster has met its burden of establishing that there
`is little connection between the claims alleged against it
`by Colt and the Eastern District of Virginia. In such a
`case, where the center of
`the alleged claims lies
`elsewhere,
`the convenience of witnesses and parties
`warrants a transfer. See Koh, 250 F. Supp. 2d at 640.
`
`B. Motion to Dismiss for Lack of Personal Jurisdiction
`
`

`
`Case 1:11-cv-00797-RGA Document 94-1 Filed 12/19/11 Page 9 of 21 PageID #: 529
`
`2004 U.S. Dist. LEXIS 28690, *27
`
`Page 8
`
`In its motion to dismiss, HK GmbH asserts that Colt,
`in making its claims, has not