Case5:14-cv-03928-PSG Document22 Filed08/27/14 Page1 of 8
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`U N ITED STATE S D ISTR ICT CO UR T
`SO UTH ERN D ISTR ICT O F FLO RID A
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`C A SE NO . 14-22134-C lV -M ID D LEBR O O K S
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`ROTH SCH ILD D IGITA L M ED IA
`IN NO VA TION S, LLC,
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`Plaintiff,
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`VS.
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`SON Y COM PU TER EN TERTA IN M EN T
`A M ERICA LLC,
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`D efendant.
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`O RD ER O N DEFEND A NT 'S M O TIO N T O TR AN SFER V EN UE
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`TH IS CA U SE com es before the Court upon D efendant Sony Com puter Entertainm ent
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`America LLC'S (tsDefendanf') M otion to TransferVenue under 28 U.S.C. j 1404 (DE 15)
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`(:çM otion''), filed on July 16, 2014. Plaintiff Rothschild Digital Media Innovations, LLC
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`(ttplaintiff') filed a Response (DE 20) to the Motion on August 4, 2014, to which Defendant then
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`filed a Reply (DE 21) on August 14, 2014. l have reviewed the matter and nm fully advised in
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`the prem ises.
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`1.
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`Backzround
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`On June 9, 2014, Plaintiff filed its Com plaint for patent infringem ent against D efendant.
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`(See DE 1). Plaintiff is a Florida limited liability company with a principal place of business in
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`Bay Harbor, Florida. D efendant is a D elaw are lim ited liability com pany w ith a principal place
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`of business in San M ateo, Califom ia.
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`ln the Com plaint, Plaintiff alleges that Defendant com m itted acts of patent infringem ent
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`in this D istrict, and that venue is proper here because :1a substantial part of the events giving rise
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`Case5:14-cv-03928-PSG Document22 Filed08/27/14 Page2 of 8
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`to these claims occurred in this judicial district, because (Plaintiftl has suffered injury in this
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`district, and because (Defendantj resides in this district tmder the patent venue statute by having
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`com m itted acts of alleged patent infringem ent in this district.'' (DE 1 at ! 6). The patent-in-suit
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`relates to i'an interactive, rem ote, com puter interface system com prised of
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`rem ote server assem bly, a local processor assem bly and a data storage assem bly including a
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`com pact, portable and interchangeablç com puter readable m edium .'' (DE 1 at !( 8). As to
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`infringem ent, Plaintiff alleges that D efendant's çiplaystation products and services - com prised
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`of Playstation N etw ork servers, Playstation consoles and Playstation gam e discs - directly
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`infringe at least claim 1 of the (U.S. Patent No. 6, 101,534 (çithe '534 Patent'')).'' (DE 1 at jr 9).
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`In the instant M otion, Defendant seeks to transfer this action to the N orthern D istrict of
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`California pursuant to 28 U.S.C. 1401(a). In supporq Defendant asserts that: (1) it is
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`heAdqum ered in the Northem District of California; (2) al1 of its witnesses that would likely
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`testify reside and work in the Northern District of Califomia; and (3) there are a huge number of
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`potentially relevant third parties also located in the N orthem D istrict of Califom ia. D efendant
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`also asserts that this case has no substantial connection to the Southern D istrict of Florida
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`because D efendant has no offices or operations here, Plaintifps connections are only recent and
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`tenuous, and the only w itness that appears to have any connection to Florida is the inventor and
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`sole m em ber of Plaintiff.
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`lI.
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`L ezal Standard
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`Pursuant to 28 U.S.C. j 1404(a), çtlflor the convenience of parties and witnesses, in the
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`interest of justice, a district court may transfer any civil action to any other district or division
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`where it m ight have been brought or to any district or division to w hich a1l parties have
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`consented.'' ld This standard Stleaves m uch to the broad discretion of the trial court . . . .
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`''
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`Trace-W ilco, Inc. v. Symantec Corp.s N o. 08-80877-C 1V , 2009 W L 455432, at.? 1 (S.D. Fla. Feb.
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`23, 2009) (citing Brown v. Connecticut Gen. L f/'e Ins. Co., 934 F.2d 1 193, 1 197 (1 1th Cir.
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`1991:; accord Tazoe v. Airbus S.A.S., 631 F.3d 1321, 1336 (1 1th Cir. 201 1).
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`Section 1404 authorizes courts to transfer the venue of a case in order to avoid
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`unnecessary inconvenience to the litigants, w itnesses, and the public, and to conserve tim e,
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`energy, and money. tç'l-o this end (Section 1404(a)) empowers a district court to transftr any
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`civil action to another district court if the transfer is warranted by the convenience of the parties
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`and witnesses and promotes the interest of justice.'' Van Dusen v. Barrack, 376 U.S. 612, 616
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`(1964) (internal footnote omitted). The burden is on the movant to establish that the suggested
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`forum is more convenient. ln re Ricoh Corp., 870 F.2d 570, 573 (1 1th Cir. 1989). To determine
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`w hether transfer is appropriate, courts em bark on a tw o-prong inquiry. First, the new venue m ust
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`be one in which the action could originally have been brought by the plaintiffs. 28 U.S.C. j
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`1404(a). Second, courts are to conduct a balancing test, weighing several private and public
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`interest factors to determine if transfer is justifed. See Stefel Lab., Inc. v. Galderma Lab., Inc.,
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`588 F. Supp. 2d 1336, 1338 (S.D. Fla. 2008) (citing Mason v. Smithkline Beecham Clinical L ab.,
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`146 F. Supp. 24 1355, 1359 (S.D. Fla. 2001(9.
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`Private factors to be w eighed include: çlthe relative ease of access to sotlrces of proof;
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`availability of com pulsory process for attendance of unw illing, and the cost of obtaining
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`attendance of w illing, w itnesses; possibility of view of prem ises, if view w ould be appropriate to
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`the action; and all other practical problem s that make trial of a case easy, expeditious and
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`inexpensive.'' Trace-Wilco, 2009 W L 455432, at *2 (quoting ylpl. Dredging Co. v. M iller, 510
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`U.S. 443, 448 (1994)4. Public interest factors that should be considered include:
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`the adm inistrative diffculties flowing from court congestion; the local interest in
`having localized controversies decided at hom e; the interest in having the trial of
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`a diversity case in a forum that is at hom e with the 1aw that m ust govern the
`action; the avoidance of unnecessary problem s in contlict of law s, or in the
`application of foreign law; and the unfairness in burdening citizens in an unrelated
`fonlm withjury duty.
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`1d. (quoting Piper Aircrah Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981:. fçAlthough transfer is
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`w ithin the discretion of the trial court, fin é case featuring m ost w itnesses and evidence closer to
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`the transferee venue with few or no convenience factors favoring the venue chosen by the
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`plaintift''' transfer is appropriate. In re Biosearch Techns., Inc. , 452 F. App'x 986, 989 (Fed.
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`Cir. 2011) (quoting In re Nintendo Co., 589 F.3d 1 194, 1 198 (Fed. Cir. 2009:.
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`Applying the Section 1404 tw o-part inquiry to the case at hand, the C ourt finds that
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`D efendant has m et its burden and transfer to the N orthern D istrict of California is appropriate.
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`111. Anglvsis
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`A s an initial m atter, Plaintiff does not dispute that this case could have been brought in
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`the N orthern D istrict of Califom ia. Thus, the Court finds this factor to be satisfied and w ill
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`m ove on to the second aspect of the analysis - the balancing test.
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`A .
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`Convenience of the Parties and W itnesses
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`It is cannot be disputed that the N orthern D istrict of Califom ia is a m ore convenient
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`venue for D efendant. Its engineering, m arketing, sales, and finance departm ents are located in
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`its California headquarters, and em ployees in those departm ents reside and w ork in the N orthern
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`D istrict of C alifornia. Plaintiff argues that D efendant and related entities have filed num erous
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`lawsuits in this D istrict and in federal courts in Florida, therefore dem onstrating that Florida is
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`not inconvenient for D efendant. How ever, the Court is not persuaded by this argum ent, as those
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`cases could have been filed in Florida for a plethora of reasons unrelated to the convenience
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`determ ination.
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`4
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`In support of this venue, Plaintiff asserts that M r. Rothschild is Plaintiff s ow ner and sole
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`em ployee, and has lived in this
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`D istrict for over forty years. H ow ever, Plaintiff is a non-
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`practicing entity with no oftk es in this District, and appears to have been created solely for
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`purposes of licensing and litigation. Further, M r. R othschild concurrently tlled m ore than a
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`dozen othtr pattnt infringement cases in other jm isdiction, so his claims of his ties to this venue
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`carry little w eight.
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`A s to the convenience of the w itnesses, Plaintiff argues that the balance of w itnesses does
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`not clearly favor either side. This Court disagrees. The only w itnesses Plaintiff points to are M r.
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`Rothschild and putative experts who have yet been identified.l Defendant, on the other hand,
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`nam es tw o key witnesses, and declares that any and al1 relevant w itness em ployed by D efendant
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`w ould likely be em ployed in tht N orthern District of C alifornia. M oreover, as set forth by
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`D efendant, m any of the potential non-party w itnesses in this case w ill also likely be located in
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`Califom ia. Plaintiff did not identify any third-party w itnesses located in this D istrict.
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`For these reasons, the Court finds that the convenience of the parties and w itnesses
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`w eighs in favor of transfer.
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`B.
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`R elative Ease of A ccess to Som ces of Proof
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`G iven today's technology and the availability of overnight shipping to easily transport
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`docum ents and other tangible evidence, the Court does not give m uch w eight to this factor.
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`H owever, the Court notes that Defendant's docum ents relating to the aecused produets are
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`located in Califom ia, w hereas Plaintiff does not cite to any of its docum ents located in this
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`D istrict.
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`1 S rely along the lines of Plaintiffs reasoning as to expert w itnesses
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`, D efendant, too, w ill have
`expert w itnesses.
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`C.
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`The Locus of O perative Facts
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`Defendant argues that the N orthem D istrict of California is the ttcenter of the accused
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`activity,'' w here D efendant is headquartered and hundreds of em ployees responsible for the
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`accused products reside and work.SdkW lhere the operative facts underlying the cause of action
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`did not occur w ithin the forum chostn by the Plaintiff, the choice of forum is entitled to less
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`consideration. Several district courts have held that the tcenter of gravity' for a patent
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`infringem ent case is w here the accused product w as designed and developed.'' M otorola
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`M obility fnc: v. M icroso.ft Corp., 804 F. Supp.2d 1271, 1276 (S.D. Fla. 2011) (footnote,
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`citations, and internal quotation marks omitted).
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`Plaintiff argues that Defendant's nationwide
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`sale of the accused products do not w eigh in favor of any particular venue. W hile this m ay be
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`true, see In re Acer Am. Corp., 653 F.3d 1252, 1256 (Fed. Cir. 2010), al1 other relevant activity
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`occurred in the N orthern D istrict of C alifornia. Therefore, this w eighs in favor of transfer.
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`D .
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`Plaintiffs Choice of Forllm
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`Generally, as recognized by the Eleventh Circuit, ççEtlhe plaintiff s choice of forum
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`should not be disturbed unless it is clearly outw eighed by other considerations.'' Robinson v.
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`Giarmarco & Sfll, #.C., 74 F.3d 253, 260 (11th Cir.1996) (citation omitted). However, a
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`plaintifps choice of forum is given less deference w hen the operative facts underlying the cause
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`of action did not occur within the plaintiff s chosen folym. 28 U.S.C. 1404(a); In re
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`L ink W Media Devices Corp., 662 F.3d 1221, 1224 (Fed. Cir. 201 1) (citing Sinochem Int 1 Co. v.
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`Malaysia Int 1 Shipping Corp., 549 U.S. 422, 430 (2007)); see also Motorola A/b:f/fly, 804 F.
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`Supp. 2d at 1276 (citing W indmere Corp. v. Remington Prods., Inc., 617 F. Supp. 8, 10 (S.D. Fla.
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`1985(9; Cellulaw Tech. (f Telecomm., L .P. v. Alltell Corp., 508 F. Supp. 2d 1 186, 1 189 (S.D. Fla.
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`2007) (idBut where a plaintiff has chosen a forum that is not its home forum, only minimal
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`deference is required, and it is considerably easier to satisfy the burden of showing that other
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`considerations make transfer proper.'')
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`H ere, the C ourt gives little w eight to Plaintiffs' choice of forum . W hile the inventor of
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`the patent-in-suit rtsides in Florida, the rtcent creation of Plaintiff as an entity solely to license
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`the patent and enforce the patent in litigation here dots not carry weight. See In re M icrosoh
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`Corp., 630 F.3d 1361, 1365 (Fed Cir. 201 1). Further, other than the inventor living here and the
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`recent incom oration to license and enforce the patent, there does not appear to be any connection
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`to this District.
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`Public Factors
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`Sim ilarly, the Court finds that the public factors w eigh in favor of transfer. First,
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`D efendant resides in the N orthern District of C alifornia and has a very active business in that
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`district, so there is a strong local interest in having this controversy decided there. Second, there
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`is no unfairness in burdening California citizens with jury duty, since the case deals with a
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`California defendant. Last, the Court finds that the interest of justice weighs in favor of transfer.
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`In reality, this case has no aspect specific to this D istrict other than the inventor living here.
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`IV . C onclusion
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`In balancing all the factors, the Court agrees w ith Defendant that the private and public
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`interests favor transfer to the N orthern D istrict of California. Further, the Court finds it to be
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`im portant that Plaintiff s presence here is recent and solely for pum oses of licensing and
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`litigating the patent-in suit. This existence in Florida is ephem eral and lacking in substance. In
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`sum, this case presents a situation where the majority of the witnesses and evidence are in the
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`transferee district, w hile there are few or no convenience factors w eighing in favor of this
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`District.
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`A ccordingly, it is hereby
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`ORDERED AND ADJUDGED that Defendant's Motion to Transfer Venue (DE 15) is
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`G R ANTED . The Clerk of Court shall TR AN SFER this case to the U nited States D istrict Court
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`for the N orthern D istrict of C alifom ia.The Clerk of Court shall CLO SE tllis case.
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`DONE AND ORDERED in Chambers at W est Palm Beach, Florida, this Z-Z day of
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`August, 2014.
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`/
`/;'
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`Copies to:
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`Counsel of Record
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`Je
`A
`A LD M . M ID D LEBRO O K S
`UN ITED STATES D ISTRICT JU D GE
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