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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`CASE NO. 14-22134-CIV-MIDDLEBROOKS
`
`
`ROTHSCHILD DIGITAL MEDIA
`INNOVATIONS, LLC,
`
`Plaintiff,
`
`
`
`
`v.
`
`SONY COMPUTER ENTERTAINMENT
`AMERICA LLC,
`
`
`
`
`
`Defendant.
`______________________________________________/
`
`
`PLAINTIFF’S OPPOSITION TO DEFENDANT’S MOTION
`TO TRANSFER VENUE UNDER 28 U.S.C. § 1404
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`Plaintiff Rothschild Digital Media Innovations, LLC (“RDMI”) hereby submits this
`opposition to the Defendants’ Motion to Transfer Venue Under 28 U.S.C. § 1404 (D.E. 15) (the
`“Motion”) filed by defendant Sony Computer Entertainment America LLC (“SCEA”).
`I.
`Introduction
`Longtime Florida resident Leigh Rothschild (“Mr. Rothschild”) is a prolific inventor,
`having been issued over sixty United States patents, mainly involving electronic arts. (Decl. of
`Leigh M. Rothschild ¶¶ 1, 3 [hereinafter “Rothschild Decl.”].) In addition to these
`accomplishments, he has served as an executive in several public and private companies in such
`industries as videogame publishing and software (id. ¶¶ 5-7), and has received presidential and
`gubernatorial appointments relating to technology policy (id. ¶ 8). The patent at issue in the
`present suit – U.S. Patent No. 6,101,534 (the ‘534 Patent”) – issued on August 8, 2000 and is
`titled “Interactive, remote, computer interface system.” (‘534 Patent, p. 1.) In general, the patent
`covers a system in which data from portable media associated with a local computer processor
`are used in conjunction with data from a remote server.
`Mr. Rothschild created RDMI for the purpose of licensing and enforcing his inventions,
`including the ‘534 Patent. (Rothschild Decl. ¶ 10.) The complaint in this action (D.E. 1) claims
`that several SCEA products infringe the ‘534 Patent.
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`The Motion seeks a transfer of venue from the Southern District of Florida, RDMI’s
`home forum, to the Northern District of California, SCEA’s home forum. RDMI’s choice of its
`home forum, however, is entitled to considerable deference. Moreover, Mr. Rothschild
`previously enforced the ‘534 Patent three times in this District: once before Judge Gold, who
`denied a similar transfer motion; and twice before Judge King, who in one case also denied a
`similar transfer motion and in the other case construed the ‘534 Patent’s claims in an extensive
`thirty-seven-page claim construction ruling that has valuable precedential effect in this district.
`Further, this case is already on an expedited calendar in this District at SCEA’s own request,
`with an early claim-construction hearing in November, for which briefs are due next month.
`In attempting to overcome these virtually dispositive considerations, SCEA goes too far.
`For example, SCEA misleadingly suggests that RDMI has filed numerous other cases in
`California, but inspection of the declarations “supporting” the argument reveal only one action
`filed several months ago by a separate entity on a separate patent in the Southern (not Northern)
`District of California, and even that action was voluntarily dismissed before an answer or Rule
`12(b) motion was even filed. Similarly, SCEA relies on generalized assertions about witnesses
`and documents without demonstrating their relevance, and urges a construction of law that would
`effectively dictate the transfer of every patent case to the defendant’s home forum – a
`construction that the Eleventh Circuit has never endorsed, and a choice that Congress could have
`included in the patent statute but did not.
`SCEA fails to carry its burden. The Motion should be denied.
`II. COUNTERSTATEMENT OF FACTUAL BACKGROUND
`The Motion includes a preliminary section entitled “Factual Background” that is
`sufficiently misleading to warrant a response apart from the usual argument pertinent to a
`transfer motion.
`A. SCEA Exaggerates Its Witnesses and Documents
`SCEA vastly exaggerates the number and relevance of witnesses and documents located
`in the Northern District of California. A large company like SCEA will always have a bevy of
`divisions and departments from which the specter of a multitude of witnesses and documents
`may be conjured. SCEA goes further and claims that “the relevant witnesses and the relevant
`United States documents are all in California” (Mot. at 3), even though Mr. Rothschild resides in
`this District (Rothschild Decl. ¶ 1), and the law firm that handled the prosecution of the ‘534
`Patent is located in this District (id. ¶ 12; ‘534 Patent, p. 1). SCEA also argues that “witnesses
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`from SCEA’s financial and marketing departments will play a substantive role in this patent
`trial” (Mot. at 3), but this is a patent-infringement case – basically a matter of comparing the
`accused products to the patent claims. Marketing information is a red herring. Financial
`information would be relevant only to damages, which in patent cases is ordinarily addressed
`with a combination of documentary evidence and expert testimony, not parties’ direct testimony.
`Even SCEA’s product developers have limited relevance; the question is what the products are –
`i.e., whether they infringe – not how they came to be. And again, in patent litigation,
`infringement is generally a subject of expert testimony, not direct party testimony.
`SCEA’s claim that all the relevant documents are located in California is overblown for
`the additional reason that documentary evidence is easily reproducible and transferable in the
`electronic age, and therefore has little weight in the analysis.
`B. SCEA’s Misleading Characterization of Prior Rothschild-Related Lawsuits
`SCEA attempts to grossly mislead the Court into thinking that RDMI or Mr. Rothschild
`has filed numerous patent-infringement cases in California. In four separate places throughout
`the Motion, SCEA argues with double emphasis that Mr. Rothschild and his entities have filed
`“thirteen” suits in California and Delaware, and mentioning “California” before “Delaware” so
`as to give the impression that most of the suits were filed in California. (Mot. at 2 (“Yet, this
`same inventor, under the auspices of his various patent holding companies, recently filed suit
`against thirteen different defendants for patent infringement in California and Delaware courts . .
`. .”); id. at 5 (“Under the auspices of his various patent holding companies, Mr. Rothschild has
`recently filed thirteen other patent litigation cases.”); id. at 8 (“Mr. Rothschild has shown a
`remarkable willingness to litigate in other venues, as evidenced by the thirteen separate patent
`infringement lawsuits he initiated earlier this year in California and Delaware.”); id. at 10 (“[H]e
`recently filed thirteen separate patent infringement cases in other jurisdictions, including
`California, and only this case in Florida.”).)
`Based on SCEA’s intentionally misleading characterization, the Court would be forgiven
`for having the natural impression that most of those cases were filed in California. In fact, only
`one of the cases was filed in California, and the other twelve were filed in Delaware. Moreover,
`the one in California was filed in April 2014 and voluntarily dismissed in June 2014 after
`appearances of counsel but before any further substantive filings. The case was already closed
`by voluntary dismissal before SCEA filed the present motion to transfer. Yet SCEA omitted that
`fact from its characterization. Further, the case was filed in the Southern District of California,
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`not the Northern District to which SCEA seeks transfer; the case had nothing to do with the ‘534
`Patent; and the plaintiff was not RDMI but a separate business entity, Rothschild GPS Sharing
`Innovations, LLC. (D.E. 15-1, App. 3.)
`Perhaps the weakness of relying on a single case that was voluntarily dismissed before it
`ever started was what prompted SCEA misleadingly to commingle a dozen Delaware cases into
`the argument. As with the California case, RDMI did not file the Delaware cases; a separate
`entity, Rothschild Location Technologies, LLC, did. (Id., Ex. A ¶¶ 14-24.) Nor did any of those
`cases involve the ‘534 Patent. But even ignoring those distinctions, it would make no sense to
`transfer a Florida plaintiff to California just because the plaintiff filed other cases in Delaware.
`C. SCEA Understates Its Activities in Florida
`SCEA disclaims any ties to the Southern District of Florida, but in fact SCEA has
`extensive ties to this District. SCEA itself has filed two lawsuits in this District, and SCEA-
`related entities have filed a total of 226 lawsuits in this District and 559 lawsuits in federal courts
`in Florida as a whole. (Decl. of Ernesto M. Rubi ¶¶ 2-7 [hereinafter “Rubi Decl.”].) Notably,
`SCEA makes no argument that venue in this District is improper; to the contrary, SCEA has filed
`counterclaims in this very case, explicitly stating that venue is proper in this District. (D.E. 6 at
`6.) And of course, SCEA is happy to sell as many infringing products in Florida as it possibly
`can, no doubt including tens of millions of dollars’ worth of the products alleged in this case to
`infringe. (See Rubi Decl. ¶¶ 8-9; Rothschild Decl. ¶ 16.)
`D. SCEA Baselessly Doubts RDMI’s and Mr. Rothschild’s Roots in This District
`SCEA grudgingly concedes that Mr. Rothschild, the inventor of the ‘534 Patent and the
`owner of RDMI, “appears to reside in Florida.” (Mot. at 5.) In fact, as mentioned above, Mr.
`Rothschild is a longtime resident of not only Florida, but this District, having lived in Miami-
`Dade County for over forty years. (Rothschild Decl. ¶ 1.)
`Nonetheless, SCEA claims that “Plaintiff’s connection to Florida is recent and limited”
`(Mot. at 5), an assertion that is apparently based on the fact that RDMI is a business entity that
`Mr. Rothschild formed last year. SCEA cites no authority for the notion that a business entity
`formed in the recent past by a longtime forum resident should be treated as if it has little
`connection to the forum. Obviously, SCEA could not even make the argument if Mr. Rothschild
`directly held title to the ‘534 Patent, because Mr. Rothschild is indisputably a longtime forum
`resident. (Rothschild Decl. ¶ 1.) The implication of SCEA’s argument is that Mr. Rothschild is
`to be penalized and disadvantaged solely because he exercised his rights under Florida law to
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`form a business entity, and under federal law to assign the ‘534 Patent to that entity. There is no
`rational reason to penalize and disadvantage a patentee for exercising those rights under state and
`federal law.
`Moreover, to the extent that SCEA may be drawing an analogy to a plaintiff who creates
`a business entity in a forum just to create home-forum advantage there, the analogy fails. Mr.
`Rothschild is a longtime forum resident, and there is not one whiff of forum-shopping in his
`formation of RDMI here, or in RDMI’s filing suit here. To the contrary, forming RDMI here
`and bringing suit here are consistent with Mr. Rothschild’s deep roots in this home forum, and
`with the fact that the only other suits to enforce the ‘534 Patent have been brought right here.
`E. SCEA Obfuscates the Important Prior ‘534 Enforcement Suits in This District
`The ‘534 Patent has already been litigated in this District three times. In the first of those
`suits, Trust Licensing, LLC v. InterActual Technologies, Inc., No. 1:03-cv-20672 (S.D. Fla. filed
`Mar. 21, 2003), Judge King denied a motion to transfer to the Northern District of California that
`was based on the same kinds of arguments that SCEA makes here. In the order denying transfer,
`Judge King recognized that “Plaintiff should not have to travel around the country defending its
`patent in every place where a possible violator resides.” (Rubi Decl., Ex. E at 2.) SCEA fails to
`acknowledge the InterActual suit or the highly pertinent order denying transfer.
`In the second prior suit in this District involving the ‘534 Patent, Rothschild Trust
`Holdings, LLC v. Orb Networks, Inc., No. 1:06-cv-22921-GOLD/TURNOFF (S.D. Fla. filed
`Dec. 1, 2006), Judge Gold likewise denied a motion to transfer that was based on the same kinds
`of arguments that SCEA makes here. (Rubi Decl., Ex. F.) SCEA fails to inform the Court of
`this highly relevant decision, even though the same law firm that represented the defendant in
`Orb Networks – DLA Piper – represents SCEA in the present case. Apparently, SCEA seeks the
`benefits of a firm experienced in defending against the ‘534 Patent, without the burden of
`candor. Indeed, SCEA cites a declaratory-judgment action that Orb Networks filed in the
`Northern District of California, and suggests that the ‘534 Patent “was previously the subject of
`litigation” there as well as here. (Mot. at 6.) In fact, that action was filed more than a year after
`the case before Judge Gold, and was stayed pending Judge Gold’s decision whether to dismiss or
`transfer, because the cases were “‘mirror image’ lawsuits.” (See Rubi Decl., Ex. G at 2; Rubi
`Decl., Ex. H.) The ball remained in this Court, and Judge Gold denied the transfer motion.
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`Consequently, the dispute was never transferred to the Northern District of California.1 Judge
`Gold’s decision denying transfer directly applies here and warrants denial of SCEA’s motion.
`In the third ‘534 Patent enforcement suit in this District, Rothschild Trust Holdings, LLC v.
`Citrix Systems, Inc., No. 1:06-cv-21359-KING (S.D. Fla. filed May 26, 2006), Judge King
`authorized the defendants to file an overlength brief on claim construction and rendered a thirty-
`seven-page claim-construction order. (Rubi Decl., Exs. I, J.) SCEA argues that none of Judge
`King’s extensive work matters, because the ‘534 Patent was the subject of a later reexamination
`proceeding in the U.S. Patent and Trademark Office. Although SCEA is free to argue
`(incorrectly) that the reexamination proceedings somehow altered the meaning of certain claim
`terms compared to Judge King’s construction, that mere argument is no ground for assuming at
`this stage that none of Judge King’s extensive work has any value anymore.
`SCEA’s eagerness to discard the work done by this District is as unseemly as SCEA’s
`accompanying suggestion that the Northern District of California is better able to handle claim
`construction. (See Mot. at 6 (“The Northern District of California is well-equipped to engage in
`this new analysis.”); id. at 7 n.1 (“[T]his issue would be far more conveniently resolved in the
`Northern District of California.”)). Claim construction is no better or more convenient in the
`Northern District of California than in this District, but the precedential value of Judge King’s
`construction is certainly greater in this District than in the Northern District of California. See
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996) (holding claim construction to
`constitute a matter of law for court to decide, and explaining that “treating interpretive issues as
`purely legal will promote (though it will not guarantee) intrajurisdictional certainty through the
`application of stare decisis on those questions not yet subject to interjurisdictional uniformity
`under the authority of the single appeals court”).
`F. SCEA Already Mooted Its Own Argument By Requesting and Receiving an
`Expedited Schedule in this District
`SCEA argues that “if the case is transferred to the Northern District of California, SCEA
`intends to bring a motion for an early Markman hearing, as SCEA believes there is a single claim
`construction issue that is potentially case dispositive.” (Mot. at 6 n.1.) Since filing the Motion,
`however, SCEA has already sought and received exactly that procedural privilege from this
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`1 Both cases were eventually stayed pending reexamination in the U.S. Patent and Trademark
`Office, with the California case avoiding final closure only because Judge Gold had not yet
`decided a personal jurisdiction issue. The reexamination ultimately concluded with a
`confirmation of the validity of all claims. (See D.E. 1-3 at 16-18 (per filing-stamp pagination).)
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`Court. In the Scheduling Conference Report (see D.E. 16 at 2), and again at the July 24, 2014
`scheduling conference, SCEA insisted that it would not genuinely participate in a settlement
`conference unless the Court first resolved the same claim-construction issue to which the Motion
`refers. The Court and RDMI agreed to this unusual step, and the Court set a date of November
`15, 2014 for the Markman hearing on that issue, with initial Markman briefs due on September
`22, 2014 – i.e., next month. Transferring this case would make no sense when the Court has
`already tailored the proceedings to suit SCEA’s predilection, and when the result of that
`specially-tailored proceeding may yield a settlement resolving this dispute in just a few months.
`The expedited schedule here is especially significant because the median time to trial in
`this District is 16.5 months, while in the Northern District of California it is 27.4 months. See
`http://www.uscourts.gov/uscourts/Statistics/JudicialBusiness/2013/appendices/T03Sep13.pdf.
`III. APPLICABLE LAW
`Defendants request that this case be transferred to the Northern District of California
`pursuant to 28 U.S.C. § 1404(a). Although the U.S. Court of Appeals for the Federal Circuit has
`appellate jurisdiction over this patent case, Eleventh Circuit precedent governs issues that are not
`specific to patent law, including issues regarding transfer under § 1404(a). Winner Int’l Royalty
`Corp. v. Wang, 202 F.3d 1340, 1352 (Fed. Cir. 2000) (stating that review of district court’s
`decision on motion to transfer “is governed by the law of the regional circuit in which it sits”).
`A. The Prevailing Standards in the Eleventh Circuit
`“The burden is on the movant to establish that the suggested forum is more convenient.”
`Steifel Labs., Inc. v. Galderma Labs., Inc., 588 F. Supp. 2d 1336, 1338 (S.D. Fla. 2008). Factors
`governing a decision whether to transfer a case under § 1404(a) include:
`(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) a
`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.
`Manual v. Convergys Corp., 430 F.3d 1132, 1135 n.1 (11th Cir. 2005).2 Of these, the plaintiff’s
`choice of forum is the starting point, and “‘should not be disturbed unless it is clearly
`outweighed by other considerations.’” Robinson v. Giarmarco & Bill, P.C., 74 F.3d 253, 260
`
`2 For some reason, SCEA takes its formulation of relevant factors from an unreported district
`court case rather than binding circuit court authority.
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`(11th Cir. 1996) (quoting Howell v. Tanner, 650 F.2d 610, 616 (11th Cir. 1981)). As a result,
`“[u]ltimately, transfer can only be granted where the balance of convenience of the parties
`strongly favors the defendant.” Steifel Labs., Inc. v. Galderma Labs., Inc., 588 F. Supp. 2d 1336,
`1339 (S.D. Fla. 2008).
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`In this case, the plaintiff’s choice of forum is not “clearly outweighed by other
`considerations.” Robinson, 74 F.3d at 260 (quoting Howell, 650 F.2d at 616). To the contrary,
`trial efficiency and the interests of justice (particularly as to the expedited claim-construction
`hearing already scheduled in this District at SCEA’s request, and the history of enforcement
`proceedings, including claim construction, in this District), as well as SCEA’s obviously far
`greater means, strongly reinforce the plaintiff’s choice of forum. Together, these factors
`overwhelmingly weigh against transfer, while the remaining factors are essentially neutral.
`B. SCEA’s Erroneous Reliance on the “Center of Gravity” Concept
`SCEA repeatedly urges the Court to transfer the case on the ground that the so-called
`“center of gravity” of the case is in California. However, the center-of-gravity concept is no
`substitute for faithful application of controlling law. The Eleventh Circuit has never recognized
`the existence of a “center of gravity” analysis in transfer decisions under § 1404(a); the term has
`literally never been mentioned in any Eleventh Circuit decision on transfer of venue. The
`considerations set forth in Eleventh Circuit (not Federal Circuit) precedent are the only
`legitimate ground for decision of the present motion.
`The court in Radisson Hotels International, Inc. v. Westin Hotel Co., 931 F. Supp. 638
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`(D. Minn. 1996), reached a similar conclusion:
`Defendants argue that in applying § 1404(a) in a patent infringement case,
`the Court should place great emphasis on the “hub” or “center of gravity”
`of the alleged infringing activity. The Defendants have provided no
`authority to show the three prong test mandated by the language in
`§ 1404(a) and the law in this Circuit has been supplanted by this standard
`in patent infringement actions.
`Id. at 642 n.4; see also Caddy Products, Inc. v. Seating Concepts, LLC, No. Civ. 05-1231
`JRT/FLN, 2006 WL 1085144 (D. Minn. Apr. 24, 2006) (following Radisson and denying
`transfer where another case involving same patents was pending in plaintiff’s chosen forum, thus
`avoiding duplication of claim-construction proceedings).
`At most, the “center of gravity” concept might be understood as a mere alternative
`expression of the considerations regarding access to proof and convenience of witnesses.
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`Because that is all the “center of gravity” test can legitimately be, it really serves no useful
`analytical purpose and should be disregarded to avoid legal error.
`SCEA relies heavily on this Court’s transfer order in Mayfonk, Inc. v. Nike, Inc., No.
`0:13-cv-60755-DMM (S.D. Fla. June 18, 2013). This unreported order was based in large part
`on the “center of gravity” concept discussed above, and therefore should not be viewed as
`overriding Eleventh Circuit precedent on the appropriate factors to consider under § 1404(a).
`Another problem with SCEA’s reliance on Mayfonk is that the plaintiff in that case had entered
`an agreement containing a forum-selection clause that designated California as the forum for
`litigation. Id. at 7. Although there was a question about whether the agreement was in force, the
`Court nevertheless weighed the forum-selection clause as a consideration in favor of transfer. Id.
`The present case, by contrast, is like the prior ‘534 Patent enforcement proceeding
`brought in this District by Rothschild Trust Holdings, LLC against Orb Networks. In denying
`the defendant’s motion for transfer, Judge Gold noted that there was no forum-selection clause
`and indeed no contract between the parties. (Rubi Decl., Ex. F at 2 n.1.) Nor is there any forum-
`selection clause or contract between RDMI and SCEA.
`The Federal Circuit must follow Eleventh Circuit precedent, which provides no basis for
`engaging in the so-called center-of-gravity analysis.
`IV. ARGUMENT
`The balance of relevant considerations does not favor transfer, much less justify
`disturbing RDMI’s choice of its home forum. SCEA fails to carry its burden, and the Motion
`should be denied.
`A. Analysis of Individual Factors
`1. Plaintiff’s Choice of Its Home Forum Should Not Be Disturbed
`“‘The plaintiff’s choice of forum should not be disturbed unless it is clearly outweighed
`by other considerations.’” Robinson, 74 F.3d at 260 (quoting Howell, 650 F.2d at 616); see also
`J.I. Kislak Mortgage Corp. v. Conn. Bank & Trust Co., N.A., 604 F. Supp. 346, 347 (S.D. Fla.
`1985) (“What Defendant does not point out is the well-settled fact that ‘a discretionary transfer
`under 28 U.S.C. § 1404(a) will not be granted absent a clear cut and convincing showing by
`defendant that the balance of convenience weighs strongly in favor of the transferee court.’ . . .
`“Unless the balance strongly favors the defendant, plaintiff’s choice of forum will rarely be
`disturbed.”) (quoting Vassallo v. Niedermeyer, 495 F. Supp. 757, 759 (S.D.N.Y. 1980)).
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`The deference accorded a plaintiff’s choice of forum is at its greatest when the plaintiff
`chooses its home forum. See Mason v. Smithkline Beecham Clinical Labs., 146 F. Supp. 2d
`1355, 1360 (S.D. Fla. 2001) (“[A] plaintiff’s choice of forum must be afforded considerable
`deference, where, as here, the plaintiff has elected to bring suit in the district in which he
`resides.”).
`RDMI’s choice to litigate at home in the Southern District of Florida therefore plainly
`weighs against transfer. Instead of acknowledging this, SCEA opts to distract and mislead.
`SCEA argues about where the “center of gravity” in a patent-infringement case is (Mot. at 6),
`where documents are kept (id.), where witnesses reside (id.) and where its products are
`distributed (id.). All of these arguments belong, if anywhere, to other factors in the analysis, and
`are completely irrelevant to the plaintiff’s choice of forum.
`SCEA desperately contends that RDMI should not even be considered a Florida plaintiff
`because it was created recently, despite Mr. Rothschild’s longstanding presence here. As
`explained above, there is no basis for penalizing and disadvantaging Mr. Rothschild for
`exercising his rights under state and federal law to create a business entity and assign the ‘534
`Patent to that entity. (See supra Part II.D.)
`The Court should not be distracted or misled. RDMI’s choice of its home forum, the
`Southern District of Florida, is not to be disturbed unless other considerations clearly outweigh
`it, which they do not. SCEA fails to carry its burden on this predominant factor, and transfer
`should be denied.
`2. The Balance of Witnesses Does Not Clearly Favor Either Side
`Transfer should be denied if it “would merely shift inconvenience from the defendants to
`the plaintiff.” Robinson, 74 F.3d at 260. The question is not who can dream up a longer list of
`potential witnesses:
`[M]otions to transfer are not determined solely upon the outcome of a
`contest between the parties as to which of them can present a longer list of
`possible witnesses located in the respective districts within which each
`party would like to try the case. The party seeking the transfer must
`support its motion by specifying the key witnesses to be called and
`particularly stating the significance of their testimony.
`Mason, 146 F. Supp. 2d at 1362; accord A Slice of Pie Prods., LLC v. Wayans Bros. Entm’t, 392
`F. Supp. 2d 297, 308 (D. Conn. 2005) (“While the greater number of defendants obviously
`demonstrates a collective greater inconvenience for them, a venue transfer here would do nothing
`more than shift that inconvenience to plaintiff.”).
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`Thus, even if the Court were to assume that there are more witnesses in California than
`Florida, that would not end the inquiry: “A motion for transfer is not simply a numbers game.
`Rather, the Court must consider whether, though inconvenienced, the enumerated witnesses
`would attend a trial, the importance of the witnesses’ testimony, and whether that testimony
`could be effectively presented by deposition.” Mason, 146 F. Supp. 2d at 1363.
`Judge Gold applied these principles in denying transfer when Rothschild Trust Holdings,
`LLC sued in this District to enforce the ‘534 Patent in the Orb Networks case:
`[W]here the transfer would merely shift the inconvenience from the
`defendant’s witnesses to the plaintiff’s witnesses, transfer is not
`appropriate. Moreover, courts have been uniform in holding that a bald
`showing of inconvenience of witnesses is insufficient. . . . “[I]f the party
`moving for transfer under § 1404(a) merely makes a general allegation
`that witnesses will be necessary, without identifying those necessary
`witnesses and indicating what their testimony at trial will be, the motion
`for transfer based on convenience of witnesses will be denied.”
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`In this case, Orb has made only a general allegation regarding the
`fact that its employees and business partners reside in California. It has
`not identified specific witnesses whose testimony would be necessary, nor
`indicated what their testimony would be at trial. Orb has failed to meet its
`burden to show that this action should be transferred to California for the
`convenience of the witnesses.
`(Rubi Decl., Ex. F at 3-4 (citations omitted) (quoting Am. Standard, Inc. v. Bendix Corp.,
`487 F. Supp. 254, 262 (W.D. Mo. 1980)).) Likewise, Judge King, denying transfer in the
`InterActual case, observed: “While many of Defendant’s witnesses reside in California,
`all of Plaintiff’s witnesses reside here in Florida. Therefore, this case will necessarily
`inconvenience one party or the other.” (Rubi Decl., Ex. E at 2.)
`Like the defendant in Orb Networks, SCEA relies on broad assertions about its
`employees and business partners. SCEA refers to unidentified “employees responsible for the
`accused products” (Mot. at 11), and unidentified employees from its “engineering, marketing,
`sales, and finance departments” (id.). The only specific individuals SCEA identifies are its
`employees John Koller, who supposedly “will explain SCEA’s marketing efforts” (id.), and
`Aaron Wong, who supposedly will “provide testimony relating to damages” (id.). This falls far
`short of satisfying SCEA’s duty to “specify[] the key witnesses to be called and particularly
`stat[e] the significance of their testimony.” Mason, 146 F. Supp. 2d at 1362. The key witnesses
`in this patent case will be those who testify on the central questions of infringement and validity.
`See Edward G. Poplawski, Selection and Use of Experts in Patent Cases, 9 Fed. Cir. Bar J. 145,
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`145 (1999) (“Patent litigation typically involves complex technical issues . . . and increasingly
`complex damages theories. . . . All of these considerations dictate that expert testimony is
`virtually essential in assisting the trier of fact to understand the evidence and to resolve factual
`issues in litigation.”); id. at 183 (“[E]xperts remain a sine qua non in patent litigation.”); Patent
`Litigation: Is It Worth the Expense?, 26 Genetic Eng’g & Biotech. News (Apr. 1, 2006),
`available at http://www.genengnews.com/gen-articles/patent-litigation-is-it-worth-thc-
`cxpense/1454 (last visited July 30, 2014) (“[E]xpensive expert witnesses are usually required in
`patent cases. In fact, multiple experts are frequently necessary to cover the technology, as well
`as the damages calculations.”).
`Testimony concerning marketing, if it is even relevant, is certainly not “key.” Testimony
`on damages is relevant, but ordinarily would be a matter of documentary evidence and expert
`testimony. See Poplawski, supra, at 156-57 (“In many patent cases, trial counsel will need at
`least two types of damages experts: an accountant and a licensing or industry expert.”); Ned L.
`Conley, An Economic Approach to Patent Damages, 15 AIPLA Q.J. 354, 390 (“The proof of
`damages in a patent case requires heavy reliance on expert witnesses . . . .”). Indeed, the patent
`statute itself recognizes the need for expert testimony on damages. 35 U.S.C. § 284 (“The court
`may receive expert testimony as an aid to the determination of damages or of what royalty would
`be reasonable under the circumstances.”). SCEA’s suggestion that an in-house employee will
`perform that role is not credible. SCEA fails to carry its burden of particularly identifying key
`witnesses an