Case 1:16-cv-02690-AT Document 126-2 Filed 08/09/16 Page 1 of 8
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`Exhibit B
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`Case 1:06-cv-00585-CC Document 88 Filed 10/05/12 Page 1 of 7Case 1:16-cv-02690-AT Document 126-2 Filed 08/09/16 Page 2 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`IP CO., LLC,
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`vs.
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`Plaintiff,
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`TROPOS NETWORKS, INC.,
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`CIVIL ACTION NO.
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`1:06-CV-0585-CC
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`::
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`Defendant.
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`ORDER
`This matter is before the Court on Plaintiff IP Co., LLC’s Motion to
`Transfer [Doc. No. 76] the above-styled action from this Court to the District
`Court for the Eastern District of Texas pursuant to 28 U.S.C. § 1404(a).1 For the
`reasons stated below, the Court DENIES Plaintiff’s motion.
`I. BACKGROUND
`Plaintiff IP Co., LLC (“IPCO”) is a Georgia limited liability corporation
`headquartered in Atlanta, Georgia (Pl.’s Am. Compl. [Doc. No. 13] ¶ 1.) According
`to its Amended Complaint, IPCO is the assignee of all rights, title and interest in
`United States Patent No. 6,249,516 (the “ ‘516 Patent”) and United States Patent No.
`6,044,062 (the “ ‘062 Patent”), entitled “Wireless Network Gateway and Method for
`Providing Same.” (Doc. No. 13 ¶¶ 7-8, 14-15.) Defendant Tropos Networks, Inc.
`(“Tropos”) is a Delaware corporation with its principal place of business in
`Sunnyvale, California. (Def.’s Answer [Doc. No. 24] ¶ 1.) Tropos designs, develops
`and provides metro-scale Wi-Fi mesh network products and services. (Doc. No. 24
`¶ 12.) On October 21, 2005, Tropos sued IPCO in the Northern District of California
`(the “California Court”) for a judgment declaring the ‘516 and ‘062 Patents invalid,
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`1The Court GRANTS the Consent Motion for Extension of Time [Doc. No. 81] nunc
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`pro tunc.
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`Case 1:06-cv-00585-CC Document 88 Filed 10/05/12 Page 2 of 7Case 1:16-cv-02690-AT Document 126-2 Filed 08/09/16 Page 3 of 8
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`unenforceable and/or not infringed, among other things. (Def.’s Compl. [Doc. No.
`6-3] ¶¶ 41-50.) On March 13, 2006, IPCO sued Tropos in this Court for patent
`infringement. (Pl.’s Compl. [Doc. No. 1] ¶¶ 6-12.) IPCO alleged that Tropos
`infringed on and continues to infringe on the ‘516 and ‘062 Patents by making,
`using, offering to sell, and/or selling its wireless mesh network system. (Doc. No.
`13 ¶¶ 10, 17.)
`On May 8, 2006, Tropos filed a Motion to Dismiss, Stay, or Transfer [Doc. No.
`6] the case from this Court to the California Court. IPCO opposed Tropos’s motion
`by arguing that principles of judicial economy, the convenience of the parties, and
`the availability of witnesses and evidence weighed in favor of litigating the case in
`Georgia. (Pl.’s Mem. in Opp’n to Def.’s Mot. to Dismiss, Stay, or Transfer [Doc. No.
`9] at 11-15.) On July 13, 2006, the California Court transferred Tropos’s action to this
`Court. (Order, Nov. 8, 2006 [Doc. No. 48] at 1.)
`On October 6, 2006, Tropos moved this Court to stay the litigation pending the
`United States Patent and Trademark Office’s reexamination of the ‘516 and ‘062
`Patents. (Def.’s Mot. to Stay Litig. [Doc. No. 43] at 1.) The Court granted the stay
`on August 16, 2007. (Order [Doc. No. 72] at 1.) On September 8, 2011, the Court
`ordered the stay lifted. (Order Grant. Opp’d Mot. to Lift Stay [Doc. No. 75] at 1.)
`Then on October 3, 2011, IPCO moved the Court to transfer the case to the Eastern
`District of Texas. (Doc. No. 76.) IPCO argues that this action should be transferred
`because the Eastern District of Texas is the more convenient forum. (Doc. No. 76.)
`II. STANDARD OF REVIEW
`Section 1404(a) of Title 28 of the United States Code provides that “[f]or the
`convenience of parties and witnesses, in the interest of justice, a district court may
`transfer any civil action to any other district . . . where it might have been brought.”
`28 U.S.C. § 1404(a) (2012). A party requesting a transfer of venue bears the burden
`of proving that the proposed transferee venue is more convenient than the venue
`selected by a plaintiff. In re Ricoh Corp., 870 F.2d 570, 573 (11th Cir. 1989). This
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`Case 1:06-cv-00585-CC Document 88 Filed 10/05/12 Page 3 of 7Case 1:16-cv-02690-AT Document 126-2 Filed 08/09/16 Page 4 of 8
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`reflects the rule that “‘[t]he plaintiff’s choice of forum should not be disturbed unless
`it is clearly outweighed by other considerations.’” Robinson v. Giarmarco & Bill,
`P.C., 74 F.3d 253, 260 (11th Cir. 1996) (quoting Howell v. Tanner, 650 F.2d 610, 616
`(5th Cir. Unit B July 1981)). While a court has broad discretion when determining
`whether to transfer a case to another district, “[a] court should not grant a transfer
`if the transfer would just shift inconvenience from one party to another.” Am. Gen.
`Life Ins. Co. v. Margolis Family I, LLC, No. 1:07-CV-0230-JEC, 2008 WL 857436, at
`*14 (N.D. Ga. Mar. 28, 2008).
`III. ANALYSIS
`A. Alternative Venue
`Before assessing the convenience of the proposed transferee forum under a
`Section 1404(a) analysis, the Court must determine whether IPCO’s action for patent
`infringement could have initially been brought in that forum. Dial HD, Inc. v.
`Clearone Commc’ns, Inc., No. CV 109-100, 2010 WL 3732115, at *5 (S.D. Ga. Sept. 7,
`2010) (“The question of whether to transfer venue is a two-pronged inquiry. First,
`the alternative venue must be one in which the action could originally have been
`brought by the plaintiff.”); see also Hoffman v. Blaski, 363 U.S. 335, 342-43, 80 S. Ct.
`1084, 1088-89, 4 L. Ed. 2d 1254 (1960). “An action ‘might have been brought’ in a
`proposed transferee court if that court has jurisdiction over the subject matter of the
`action, if venue is proper there, and if the defendant is amenable to process issuing
`out of the transferee court.” Miot v. Kechijian, 830 F. Supp. 1460, 1465 (S.D. Fla.
`1993) (quoting Windmere Corp. v. Remington Prods., 617 F. Supp. 8, 10 (S.D. Fla.
`1985)). Proving “[v]enue in the transferee forum is essential to a transfer under [§]
`1404(a) for that section confers none.” United States v. Casey, 420 F. Supp. 273, 275
`(S.D. Ga. 1976).
`In a patent infringement case, venue is governed by 28 U.S.C. § 1400(b).
`Hoffman, 363 U.S. at 342 n.10. The language in that section “is specific and
`unambiguous and the requirement of venue under th[e] statute ‘is not one of those
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`vague principles which, in the interest of some overriding policy, is to be given a
`‘liberal’ construction.’” Kalvar Corp. v. Memorex Corp., 386 F. Supp. 273, 278 (E.D.
`La. 1974) (quoting Schnell v. Peter Eckrich & Sons, Inc., 365 U.S. 260, 264, 81 S. Ct.
`557, 560, 5 L. Ed. 2d 546 (1961)). According to that section, a civil action for patent
`infringement may be brought in “the judicial district where the defendant resides,
`or where the defendant has committed acts of infringement and has a regular and
`established place of business.” 28 U.S.C. § 1400(b) (2012). Therefore, IPCO must
`show that at the time of its Complaint, Tropos resided, or committed acts of
`infringement and had a regular and established place of business in the Eastern
`District of Texas. IPCO has made no such showing.
`First, IPCO fails to show that Tropos resided in Texas. “[T]he residence of a
`corporation for purposes of [28 U.S.C. §] 1400(b) is its place of incorporation.”
`Brunette Mach. Works, Ltd. v. Kockum Indus., Inc., 406 U.S. 706, 707 n.2, 92 S. Ct.
`1936, 1937, 32 L. Ed. 2d 428 (1972). In its Complaint, IPCO alleged that Tropos is
`only a Delaware corporation. (Doc. No. 1 ¶ 1.) IPCO also contends that “Tropos
`ha[d] a national and international presence.” (Doc. No. 76 at 9.) Those facts are
`insufficient to prove residence in Texas.
`Second, IPCO fails to show that Tropos had a regular and established place
`of business in Texas. Instead, IPCO argues that Tropos has “customers all over the
`United States, and . . . solicits Texan customers through its website and holds
`conferences in Texas.” (Doc. No. 76 at 9-10.) That argument is insufficient. “Mere
`solicitation of orders in a district is not sufficient by itself to establish that a
`defendant had a regular and established place of business in the district for purposes
`of establishing venue.” Roblor Mktg. Grp., Inc. v. GPS Indus., Inc., 645 F. Supp. 2d
`1130, 1145 (S.D. Fla. 2009). Indeed, “the ‘regular and established place of business’
`requirement contemplates something more than minimum contacts or simply doing
`business in a particular district.” HomeBingo Network, Inc. v. Chayevsky, 428 F.
`Supp. 2d 1232, 1249 (S.D. Ala. 2006) (quoting Kinetic Instruments v. Lares, 802 F.
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`Supp. 976, 987 (S.D.N.Y. 1992)). Thus, “‘the appropriate inquiry is whether the
`corporate defendant does its business in that district through permanent and
`continuous presence there.’” HomeBingo Network, 428 F. Supp. 2d at 1249 (quoting
`In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985)). Soliciting Texan customers
`through a website, without more, is insufficient to show a regular and established
`place of business in Texas.
`Because IPCO fails to establish venue, the Court need not address the issue
`of personal or subject matter jurisdiction. Therefore, IPCO has not shown that its
`patent infringement action could have been brought in the Eastern District of Texas.
`B. Public and Private Factors
`Even if IPCO were correct in arguing that “[t]he threshold burden is met [and
`its] case could have been filed in the transferee district,” (Doc. No. 76 at 8), the Court
`is not persuaded that the Eastern District of Texas is a more convenient forum. The
`second prong in a Section 1404(a) analysis requires a court to balance private and
`public factors. Dial HD, 2010 WL 3732115, at *5. In the Eleventh Circuit, courts
`consider: (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. Manuel v. Convergys Corp., 430 F.3d 1132, 1135 (11th Cir. 2005).
`“‘The most important factor under [Section] 1404(a) is the convenience of
`witnesses, and the moving party must make a specific showing of inconvenience to
`witnesses.’” Collegiate Licensing Co. v. Am. Cas. Co. of Reading, Pa., 842 F. Supp.
`2d 1360, 1366 (N.D. Ga. 2012) (quoting Elec. Transaction Network v. Katz, 734 F.
`Supp. 492, 501-02 (N.D. Ga. 1989)). IPCO fails to show the Court that the witnesses
`will be inconvenienced. IPCO notes that the location and identity of the relevant
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`party witnesses for Tropos have not been disclosed. (Doc. No. 76 at 14.) Thus,
`without knowing where Tropos’s witnesses are located, IPCO cannot demonstrate
`the witnesses will be inconvenienced. Conversely, many of IPCO’s witnesses are in
`Georgia because IPCO has offices here and its officers reside here. (Doc. No. 76 at
`15.) That factor weighs against transfer from this Court to the Eastern District of
`Texas.
`Factor two is neutral. “The location of documents, is neutral [i]n today’s era
`of photocopying, fax machines and Federal Express.” Walker v. Jon Renau
`Collection, Inc., 423 F. Supp. 2d 115, 118 n.3 (S.D.N.Y. 2005) (citations and internal
`quotation marks omitted). Indeed, IPCO concedes as much by noting that
`“‘producing documents and other files for litigation . . . is not usually a burdensome
`ordeal due to technological advancements, such as electronic document-imaging
`and retrieval.’” (Doc. No. 76 at 16.) (quoting Kenneth F. Hackett & Assocs., Inc. v.
`GE Capital Info. Tech. Solutions, No. 10-20715-CIV, 2010 WL 3056600, at *5 (S.D. Fla.
`Aug. 4, 2010)). Factors four through seven are also neutral. IPCO agrees that the
`locus of operative facts is neither Georgia nor Texas, that there is no indication that
`service of process will be difficult, that the relative means of the parties are on
`balance, and that each forum is equally capable of applying patent law. (Doc. No.
`76 at 18-20.) IPCO also concedes that it “originally filed in the Northern District of
`Georgia” and that a [p]laintiff’s choice of forum ‘should not be disturbed unless it
`is clearly outweighed by other considerations.’” (Doc. No. 76 at 19); id. (quoting Ins.
`Co. of N. Am. v. Levin, No. 10-CV-60130, 2011 WL 1398473, at *2 (S.D. Fla. Mar. 28,
`2011)). Therefore, factor eight weighs against transfer. Finally, trial efficiency and
`the interests of justice, based on the totality of the circumstances, would be served
`by maintaining venue in Georgia, IPCO’s original choice of forum.
`IV. CONCLUSION
`For the reasons stated above, the Court hereby DENIES Plaintiff’s Motion to
`Transfer [Doc. No. 76].
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`SO ORDERED this 5th day of October, 2012.
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`s/ CLARENCE COOPER
`CLARENCE COOPER
`SENIOR UNITED STATES DISTRICT JUDGE
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