Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 1 of 21 PageID 330
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, LLC,
`
`Plaintiff,
`
`vs.
`
`AMAZON DIGITAL SERVICES, INC.,
`
`Defendant.
`
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`
`No.: 2:12-cv-02767-JPM-tmp
`
`JURY DEMAND
`
`MEMORANDUM OF AMAZON DIGITAL SERVICES, INC. IN SUPPORT OF
`ITS MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(A)
`
`Glen G. Reid, Jr. (#8184)
`greid@wyattfirm.com
`Mark Vorder-Bruegge, Jr. (#06389)
`mvorder-bruegge@wyattfirm.com
`WYATT, TARRANT & COMBS, LLP
`The Renaissance Center
`1715 Aaron Brenner Dr., Suite 800
`Memphis, TN 38120-4367
`(901) 537-1000
`
`Counsel for Defendant
`AMAZON DIGITAL SERVICES, INC.
`
`
`
`
`
`
`
`J. David Hadden
`dhadden@fenwick.com
`Darren F. Donnelly
`ddonnelly@fenwick.com
`Saina S. Shamilov
`sshamilov@fenwick.com
`Ryan J. Marton
`rmarton@fenwick.com
`Clifford Web
`cweb@fenwick.com
`Justin Hulse
`jhulse@fenwick.com
`FENWICK & WEST LLP
`801 California Street, 6th Floor
`Mountain View, CA 94041
`(650) 988-8500
`
`
`
`
`
`
`

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`Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 2 of 21 PageID 331
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`
`TABLE OF CONTENTS
`
`INTRODUCTION --------------------------------------------------------------------------------------------- 1 
`STATEMENT OF FACTS ----------------------------------------------------------------------------------- 2 
`A. 
`This Action ------------------------------------------------------------------------------------ 2 
`B. 
`The Patents-in-Suit --------------------------------------------------------------------------- 2 
`C. 
`The Parties ------------------------------------------------------------------------------------ 3 
`1. 
`B.E. Technology -------------------------------------------------------------------- 3 
`
`2. 
`
`Amazon ------------------------------------------------------------------------------- 4 
`
`II. 
`
`2. 
`
`3. 
`
`Relevant Third Parties ----------------------------------------------------------------------- 5 
`D. 
`ARGUMENT --------------------------------------------------------------------------------------------------- 5 
`THIS CASE COULD HAVE BEEN BROUGHT IN THE
`I. 
`NORTHERN DISTRICT OF CALIFORNIA -------------------------------------------- 6 
`THIS CASE SHOULD BE LITIGATED IN THE
`NORTHERN DISTRICT OF CALIFORNIA -------------------------------------------- 6 
`The Private Interest Factors Favor Transfer to the
`A. 
`Northern District of California ---------------------------------------------------- 7 
`The Vast Majority of Documents Relevant
`1. 
`to This Case Are Located in the Northern
`District of California ------------------------------------------------------- 7 
`The Cost of Attendance and Convenience of
`Witnesses Strongly Favor Transfer -------------------------------------- 8 
`The Availability of Compulsory Process to
`Secure the Attendance of Witnesses
`Strongly Favors Transfer -------------------------------------------------- 10 
`No Practical Problems Favor Litigation in
`This District Over the Northern District of
`California -------------------------------------------------------------------- 12 
`The Public Factors Also Favor Transfer of This
`Case to the Northern District of California -------------------------------------- 13 
`Court Congestion is Not a Serious Concern
`1. 
`Here and It Does Not Weigh Against
`Transfer ---------------------------------------------------------------------- 13 
`
`4. 
`
`B. 
`
`- ii -
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`Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 3 of 21 PageID 332
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`2. 
`
`The Northern District of California Has a
`Far More Substantial Interest in the
`Adjudication of This Case ------------------------------------------------ 14 
`CONCLUSION ------------------------------------------------------------------------------------------------ 15 
`
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`Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 4 of 21 PageID 333
`
`
`Cases:
`
`Page(s):
`
`TABLE OF AUTHORITIES
`
`Cherokee Export Co. v. Chrysler Int’l. Corp.,
`No. 96-1745, 142 F.3d 432, 1998 WL 57279 (6th Cir. Feb. 2, 1998) ------------------------ 6
`
`Cont’l First Fed., Inc. v. Watson Quality Ford, Inc.,
`No. 3:08-0954, 2010 WL 1836808 (M.D. Tenn. May 6, 2010) ------------------------------- 6
`
`In re EMC Corporation,
`677 F.3d 1351 (Fed. Cir. 2012) ------------------------------------------------------------------ 13
`
`GeoTag, Inc. v. Aromatique, Inc.,
`Case No. 2:10-cv-570, Dkt. 585 at 10 (E.D. Tex. Jan. 14, 2013) ---------------------------- 13
`
`Hertz Corp. v. Friend,
`130 S. Ct. 1181 (2010) ----------------------------------------------------------------------------- 7
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) ------------------------------------------------------------------ 14
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ------------------------------------------------------------ 6-8, 10
`
`Just Intellectuals, PLLC v. Clorox Co.,
`No. 10-12415, 2010 WL 5129014 (E.D. Mich. Dec. 10, 2010) ------------------------ 7-8, 10
`
`L&P Prop. Mgmt. Co. v. JTMD, LLC,
`No. 06-13311, 2007 WL 295027 (E.D. Mich. Jan 29, 2007) -------------------------------- 7-8
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2010) ------------------------------------------------------------------ 14
`
`Moses v. Bus. Card Express, Inc.,
`929 F.2d 1131 (6th Cir. 1991) ------------------------------------------------------------------- 5-6
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009) ---------------------------------------------------------------- 7, 9
`
`Quality Gold, Inc. v. West,
`No. 1:11-CV-891, 2012 WL 1883819 (S.D. Ohio May 22, 2012) --------------------------- 6
`
`Returns Distribution Specialists, LLC v. Playtex Prods., Inc.,
`No. 02-1195-T, 2003 WL 21244142 (W.D. Tenn. May 28, 2003) ---------------------- 5, 7-9
`
`United States ex rel. Kairos Scientia, Inc. v. Zinsser Co.,
`No. 5:10-CV-383, 2011 WL 127852 (N.D. Ohio Jan. 14, 2011) ---------------------------- 14
`
`- iv -
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`

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`Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 5 of 21 PageID 334
`
`
`In re Volkswagen of America, Inc.,
`545 F.3d 304 (Fed. Cir. 2008) --------------------------------------------------------------------- 5
`
`In re Zimmer Holdings, Inc.,
`609 F.3d 1378 (Fed. Cir. 2010) ----------------------------------------------------------- 7, 12-14
`
`Statutes and Rules:
`
`28 U.S.C. § 1391 -------------------------------------------------------------------------------------- 5-6
`
`28 U.S.C. § 1400(b) ------------------------------------------------------------------------------------- 6
`
`28 U.S.C. § 1404 ----------------------------------------------------------------------------------- 2-6, 8
`
`Other Authorities:
`
`Fed. R. Civ. P. 12(b)(6) -------------------------------------------------------------------------------- 2
`
`Fed. R. Civ. P. 45(c)(3)(A)(ii) ------------------------------------------------------------------------ 10
`
`- v -
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`Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 6 of 21 PageID 335
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`
`INTRODUCTION
`
`As explained in Amazon’s pending motion to dismiss (Dkt. No. 32), the patents asserted
`
`in this case are invalid and this case should be dismissed in its entirety now. If this case is to be
`
`litigated further, however, it should be litigated in the Northern District of California. The ac-
`
`cused products are designed and developed there. Amazon’s relevant engineering employees are
`
`located there. Amazon’s relevant technical documents and computer source code are also locat-
`
`ed there. Amazon has no relevant business operations, offices, employees, documents, or com-
`
`puter source code in this district.
`
`B.E. is a patent assertion entity and its sole purported connection to Tennessee is its busi-
`
`ness registration—created the day before this lawsuit was filed. Prior to its registration, B.E. was
`
`based in Michigan since at least the time the applications for the asserted patents were filed. The
`
`sole inventor named on the asserted patents, Mr. Martin Hoyle, was residing in Louisiana when
`
`the applications were filed (and the patents issued). A recent patent application published in
`
`June of 2012 still lists Mr. Hoyle as an inventor residing in Louisiana. B.E.’s last minute pre-
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`litigation “relocation”—really just the ministerial act of filing business registration papers with
`
`this State—does not create any meaningful connection between this district and either the plain-
`
`tiff, the asserted patents or the purported invention.
`
`In addition to Amazon, B.E. sued 18 other companies for infringing its patents. Not a
`
`single defendant is based in Tennessee and the overwhelming majority of defendants are located
`
`on the West Coast. Not a single relevant document is known to be located in this district, and no
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`known third-party witnesses are located here. Because the Northern District of California has a
`
`significantly stronger connection to this case than this district, the interests of justice and conven-
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`ience compel transfer of this case to California—a convenient forum for resolution and one that
`
`has a meaningful interest in the underlying dispute.
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`

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`For these reasons, and for the reasons stated more fully below, Amazon moves, pursuant
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`to 28 U.S.C. § 1404(a), to transfer this case to the Northern District of California.
`
`STATEMENT OF FACTS
`
`A.
`This Action
`On September 7, 2012, as part of a broad campaign of patent infringement lawsuits in
`
`this district, B.E. Technology Inc. (“B.E.”) filed this lawsuit against Amazon Digital Services,
`
`Inc. (“Amazon”) accusing it of infringing U.S. Patent No. 6,771,290 (the “’290 patent”).1 (See
`
`Dkt. No. 1 (“Complaint”).) Shortly thereafter, B.E. filed an amended complaint accusing Ama-
`
`zon of infringing both the ’290 patent and its parent U.S. Patent No. 6,141,010 (the “’010 pa-
`
`tent”). (Dkt. No. 9 (“Amended Complaint”).) On January 7, 2013, Amazon moved to dismiss
`
`B.E.’s claims with prejudice because the patents violate the fundamental rules of the United
`
`States patent law and are invalid on their face. (Dkt. No. 32.)
`
`B.
`The Patents-in-Suit
`As part of its litigation campaign, B.E. is asserting three related patents: the two patents
`
`asserted against Amazon—the ’290 and ’010 patents—and U.S. Patent No. 6,628,314, which
`
`claims priority to the ’010 patent. (See, e.g., Case No. 2:12-cv-02772, Dkt. No. 1.) B.E. also
`
`accuses 18 other companies (collectively “defendants”) of infringing various combinations of
`
`these patents.2 A substantial number of defendants are headquartered in the Northern District of
`
`California (Facebook, LinkedIn, Pandora, Twitter, Sony Computer Entertainment, Google, Ap-
`
`
`1 Case Nos. 12-cv-02830, 12-cv-02866, 12-cv-02767, 12-cv-02769, 12-cv-02772, 12-cv-
`02781, 12-cv-02782, 12-cv-02783, 2:12-cv-02823, 12-cv-02824, 12-cv-02825, 2:12-cv-02826,
`12-cv-02827, 12-cv-02828, 12-cv-02829, 12-cv-02831, 12-cv-02832, 12-cv-02833, and 12-cv-
`02834.
`2 The other defendants are Motorola Mobility Holdings LLC, Google Inc., LinkedIn, Inc.,
`Facebook, Inc., Groupon, Inc., Pandora Media, Inc., Twitter, Inc., Barnes & Noble, Inc., Sam-
`sung Telecommunications America, LLC, Samsung Electronics America, Inc., Sony Computer
`Entertainment, Sony Mobile Communications, Sony Electronics, Inc., Microsoft Corp., Apple,
`Inc., Spark Networks, Inc., People Media, Inc., and Match.com LLC.
`
`- 2 -
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`ple), or are otherwise based primarily on the West Coast (Sony Electronics, Microsoft, Spark
`
`Networks). None is based in Tennessee.
`
`The asserted patents name Martin David Hoyle of Louisiana as the sole inventor.
`
`(Amended Complaint Exs. A-B.) Although B.E.’s lead counsel, Robert Freitas, appears to have
`
`represented that Mr. Hoyle moved to Tennessee in 2006, a patent application filed in December
`
`2011 and published in June 2012 identifies Mr. Hoyle’s residence as New Orleans, Louisiana.
`
`(See Declaration of Amanda Hudson in Support of Defendant’s Motion to Transfer Venue Pur-
`
`suant to 28 U.S.C. § 1404(a) (“Hudson Decl.”) Exs. 1-2.) At the time applications for the assert-
`
`ed patents were filed, Mr. Hoyle was also based in Louisiana. (Id. Ex. 2.) It does not appear that
`
`any activities related to the asserted patents took place in Tennessee. (Id. Ex. 2.) Mr. Freitas
`
`himself and his firm reside in the Northern District of California. (Id. Ex. 3.) The asserted pa-
`
`tents were prosecuted by the law firm Reising, Ethington, Barnes, Kisselle, P.C. with offices in
`
`Michigan and Texas. (Id. Ex. 4.) The Reising firm has no offices in Tennessee. (Id.)
`
`C.
`
`The Parties
`
`1.
`B.E. Technology
`B.E. is a patent assertion entity (“PAE”). It is a Delaware company with no known busi-
`
`ness operations in Tennessee. (Amended Complaint ¶ 2.) Indeed, B.E. registered to do business
`
`in Tennessee one day before filing this lawsuit. (Hudson Decl. Ex. 5.) As a PAE, B.E. does not
`
`make or sell any products or services, much less make any beneficial use of the technologies that
`
`it claims to own. According to B.E.’s lead counsel, B.E.’s “business” consists solely of enforc-
`
`ing the family of patents asserted in this district against West Coast based companies. (Id.
`
`Ex. 1.) As recently as June 2012, B.E.’s patent filings listed itself as a company based in Sagi-
`
`naw, Michigan. (Id. Ex. 2.) At the time the applications for the asserted patents were filed, B.E.
`
`(also known as “Big Easy Technologies,”) was headquartered in New Orleans, Louisiana. (Id.
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`Ex. 6 at p. 30.) B.E. also appears to have had an office in Michigan during that time, and that is
`
`the location listed for B.E. in the asserted patents. (Id. Ex. 6; Amended Complaint Exs. A-B.)
`
`2.
`Amazon
`Like B.E., Amazon has no relevant business operations in the State of Tennessee. Ama-
`
`zon is a Delaware corporation with a principal place of business in Seattle. (See Declaration of
`
`Jeffrey H. Dean in Support of Defendant’s Motion to Transfer Venue Pursuant to 28 U.S.C.
`
`§ 1404(a) (“Dean Decl.”) ¶ 2.) It belongs to a group of companies that are known for the largest
`
`e-commerce marketplace on the Internet—the website www.amazon.com. Amazon also devel-
`
`ops and markets Kindle electronic book readers and tablets—the products that B.E. accuses of
`
`patent infringement in this lawsuit. (Id.) The engineering operations for the accused Kindle
`
`products are based in the city of Cupertino in the Northern District of California. (Id. ¶ 4.) Am-
`
`azon employees who design and develop the Kindle products are located in Cupertino. (Id.)
`
`Amazon’s technical documentation and computer source code relating to the accused Kindle
`
`products are also located in the Northern District of California. (Id.) While a parent company of
`
`the named Amazon defendant operates an online retail business, which is not a part of this law-
`
`suit, and that business operates merchandise fulfillment centers in Tennessee, not even these fa-
`
`cilities are located in the Western District. (Id. ¶ 6.) No employees with knowledge of the ac-
`
`cused Kindle products, or any other information relevant to this lawsuit, are employed here. (Id.)
`
`No technical documents and no computer source code relating to the accused products are locat-
`
`ed in Tennessee. (Id.)
`
`Amazon’s headquarters for its U.S. sales, finance, and marketing operations is also locat-
`
`ed on the West Coast, in Seattle, and so are employees with knowledge regarding those opera-
`
`tions. (Id. ¶ 5.) Amazon’s sales, financial, and marketing documents are located on the West
`
`Coast. (See id.) In short, all of Amazon’s potentially relevant witnesses and documents are lo-
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`Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 10 of 21 PageID 339
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`cated either in the Northern District of California or Seattle, and none is in the State of Tennes-
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`see, let alone this district.
`
`D.
`Relevant Third Parties
`No presently known third-party witnesses reside in the Western District of Tennessee.
`
`The attorney who prosecuted the asserted patents is located in Troy, Michigan. (See Hudson
`
`Decl. Exs. 7-10.) B.E.’s CEO at the time the applications for the asserted patents were filed and
`
`the patents issued was located in Bay City, Michigan. (See id. Ex. 11.) No known source of pri-
`
`or art or prior art witness is located in the Western District of Tennessee. By contrast, as de-
`
`scribed below, even at this early stage, numerous important third-party prior art witnesses and
`
`sources of proof are known to be located in the Northern District of California.
`
`ARGUMENT
`
`Under 28 U.S.C. § 1404, for the “convenience of parties and witnesses” and “in the inter-
`
`est of justice,” a court may transfer a civil action to any judicial district in which it could have
`
`been brought. 28 U.S.C. § 1404(a); see Moses v. Bus. Card Express, Inc., 929 F.2d 1131, 1137
`
`(6th Cir. 1991). “The underlying premise of § 1404(a) is that courts should prevent plaintiffs
`
`from abusing their privilege [of choosing venue] under § 1391 by subjecting defendants to ven-
`
`ues that are inconvenient under the terms of § 1404(a).” In re Volkswagen of America, Inc., 545
`
`F.3d 304, 313 (Fed. Cir. 2008). While plaintiffs have a privilege to file their claims in any judi-
`
`cial district appropriate under the general venue statute, Ҥ 1404(a) tempers the effects of the ex-
`
`ercise of this privilege” by allowing courts to transfer civil actions to a more convenient venue.
`
`Id.; see also Returns Distribution Specialists, LLC v. Playtex Prods., Inc., No. 02-1195-T, 2003
`
`WL 21244142, at *6 (W.D. Tenn. May 28, 2003) (noting that a district court has “broad discre-
`
`tion under section 1404(a) when determining whether to transfer a case” “to prevent a waste of
`
`time, energy, and money, and to protect litigants, witnesses, and the public against unnecessary
`
`inconvenience and expense”) (citation omitted).
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`
`I.
`
`THIS CASE COULD HAVE BEEN BROUGHT IN
`THE NORTHERN DISTRICT OF CALIFORNIA.
`In the Sixth Circuit, the “threshold” determination under Section 1404(a) is whether the
`
`claims could have been brought in the proposed transferee district. Id. This case could have
`
`been brought in the Northern District of California in the first instance. Under 28 U.S.C.
`
`§ 1400(b), a patent infringement action may be brought in the “district where the defendant …
`
`resides.” Section 1391(c) of Title 28 provides that a defendant “resides” in any district in which
`
`it is subject to personal jurisdiction. 28 U.S.C. § 1391(c)(2). Amazon designs the accused prod-
`
`ucts in the Northern District of California—it is subject to personal jurisdiction in that district.
`
`(See Dean Decl. ¶ 4.) This case could have been brought there.
`
`II.
`
`THIS CASE SHOULD BE LITIGATED IN THE NORTHERN
`DISTRICT OF CALIFORNIA.
`Provided that the proposed transferee district is one where the case could have been orig-
`
`inally brought, the Court must then consider the convenience of the parties and witnesses, bal-
`
`ancing several private and public interest factors. Moses, 929 F.2d at 1138; Cont’l First Fed.,
`
`Inc. v. Watson Quality Ford, Inc., No. 3:08-0954, 2010 WL 1836808, at *2 (M.D. Tenn. May 6,
`
`2010). The relevant private interest factors include “(1) the relative ease of access to sources of
`
`proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the
`
`cost of attendance for willing witnesses; and (4) all other practical problems that make trial [of a
`
`case] easy, expeditious and inexpensive.” Quality Gold, Inc. v. West, No. 1:11-CV-891, 2012
`
`WL 1883819, at *2 (S.D. Ohio May 22, 2012) (citing In re Genentech, Inc., 566 F.3d 1338, 1342
`
`(Fed. Cir. 2009)); see also Cherokee Export Co. v. Chrysler Int’l. Corp., No. 96-1745, 142 F.3d
`
`432, 1998 WL 57279, at *3 (6th Cir. Feb. 2, 1998). The relevant public interest factors include
`
`“(1) the administrative difficulties flowing from court congestion; [and] (2) the localized interest
`
`in having localized interests decided at home.” Quality Gold, Inc., 2012 WL 1883819, at *2.
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`
`While a plaintiff’s choice of venue is generally entitled to “some deference, it is not sac-
`
`rosanct, and will not defeat a well-founded motion for change of venue.” L&P Prop. Mgmt.
`
`Co. v. JTMD, LLC, No. 06-13311, 2007 WL 295027, at *3 (E.D. Mich. Jan 29, 2007) (citation
`
`omitted); Returns Distribution Specialists, 2003 WL 21244142, at *9 (ordering transfer where
`
`“the overwhelming inconvenience to the witnesses outweighs the Plaintiffs’ interest in choosing
`
`their own forum”). If a party’s presence in a venue “appears to be recent, ephemeral, and an arti-
`
`fact of litigation,” as it is here, it is subject to much closer scrutiny “to ensure that the purposes
`
`of jurisdictional and venue laws are not frustrated by a party’s attempts at manipulation.” In re
`
`Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010) (citing Hertz Corp. v. Friend, 130
`
`S. Ct. 1181, 1195 (2010)).
`
`A.
`
`The Private Interest Factors Favor Transfer to the
`Northern District of California.
`1.
`
`The Vast Majority of Documents
`Relevant to This Case Are Located in the
`Northern District of California.
`The relative ease of access to documentary and physical evidence strongly favors transfer
`
`to the Northern District of California. “In patent infringement cases, the bulk of the relevant evi-
`
`dence usually comes from the accused infringer. Consequently, the place where defendant’s
`
`documents are kept weighs in favor of transfer to that location.” In re Nintendo Co., Ltd., 589
`
`F.3d 1194, 1199 (Fed. Cir. 2009) (citing Genentech, 566 F.3d at 1345); see also See Just Intel-
`
`lectuals, PLLC v. Clorox Co., No. 10-12415, 2010 WL 5129014, at *2 (E.D. Mich. Dec. 10,
`
`2010) (finding that presence of documents in the Northern District of California heavily favored
`
`transfer where, as here, document discovery would be intensive).
`
`Amazon’s relevant documents are located in the Northern District of California or Seat-
`
`tle. Technical documentation and computer source code related to the accused Kindle prod-
`
`ucts—constituting the bulk of discovery to take place in this case—are located in the Northern
`
`District of California. (Dean Decl. ¶ 4.) Information related to Amazon’s U.S. sales, finances,
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`and marketing operations is maintained in Seattle, substantially closer to the Northern District of
`
`California than to Tennessee. (Id. ¶ 5.) Amazon has no relevant offices, computer servers or
`
`equipment in Tennessee and it stores no relevant documents or other information here. (Id. ¶ 6.)
`
`There is little reason to believe that B.E. is in possession of any large number of docu-
`
`ments or other information relevant to this case in the Western District of Tennessee. B.E. has
`
`no business operations in Tennessee other than asserting its patents. (Hudson Decl. Ex. 1.) In-
`
`deed, it registered to do business in the district the day before it filed its lawsuit against Amazon.
`
`(Id. Ex. 5.) It does not appear that B.E. has any offices in Tennessee. The address that was in-
`
`cluded in its business registration with the State is a residential address in Cordova, Tennessee—
`
`a suburb of Memphis—apparently purchased in May 2012. (Id. Ex. 12.)
`
`The great bulk of documents and information relating to this case is located in the North-
`
`ern District of California. Very little, if any, is located in this district. The factor of ease of ac-
`
`cess to documents and other physical evidence, therefore, strongly favors transfer to the Northern
`
`District of California. L&P Prop. Mgmt. Co., 2007 WL 295027, at *5 (finding this factor
`
`weighed in favor of transfer where “[a]ll of Defendants’ documents are located at their headquar-
`
`ters in [the transferee district] … [and] Plaintiffs have not identified any sources of evidence …
`
`that exist in [the transferring district]”); Just Intellectuals, 2010 WL 51229014, at *3 (same).
`
`2.
`
`The Cost of Attendance and Convenience
`of Witnesses Strongly Favor Transfer.
`The cost and inconvenience to witnesses in attending distant proceedings is “[t]he most
`
`significant factor when considering transfer under § 1404.” Returns Distribution Specialists,
`
`2003 WL 21244142, at *7; Genentech, 566 F.3d at 1343. The Amazon employees with
`
`knowledge relevant to this litigation are all located either in the Northern District of California—
`
`1,700 miles from Memphis, or Seattle—2,400 miles from Memphis—and at least some of them
`
`will be forced to travel to Memphis for this case. “Additional distance [from home] means addi-
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`tional travel time; additional travel time increases the probability for meal and lodging expenses;
`
`and additional travel time with overnight stays increases the time which these fact witnesses
`
`must be away from their regular employment.” Nintendo, 589 F.3d at 1199 (internal quotation
`
`omitted). No direct flights to Memphis are available from any airport near Amazon’s headquar-
`
`ters in Seattle or Amazon’s facility in Cupertino. (Hudson Decl. ¶ 14.) With travel time by air
`
`between any of these airports and Memphis generally greater than six hours, none of these wit-
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`nesses would be able to travel to and from Memphis within a single day, necessitating costly
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`overnight stays disrupting their personal and professional lives. Should this case be litigated in
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`the Northern District of California, however, the employees who work at Amazon’s facility in
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`Cupertino would not need to travel to attend any case proceedings, and the employees who work
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`in Amazon’s office in Seattle can take a short direct flight, of approximately 2 hours, offered
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`several times a day, every day, to any major airport in the Northern District of California. (Id.)
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`The factor of witness convenience weighs even more heavily in favor of transfer where
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`the witnesses forced to travel are important to the defendant’s business and their attendance at
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`trial and other proceedings in a distant forum would disrupt those operations. See, e.g., Returns
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`Distribution Specialists, 2003 WL 21244142, at *7. The relevant Amazon engineers are im-
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`portant to Amazon’s business and their absence for significant periods of time would adversely
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`affect operations. (Dean Decl. ¶ 4.) Amazon has no relevant employees in the Western District
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`of Tennessee, and has no offices in the Western District from which testifying witnesses could
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`work while present in the district. (Id. ¶ 6.) Simply put, it is more efficient and convenient and
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`less disruptive for witnesses to testify at home—in the Northern District of California—or to
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`make a short trip that in most cases would take no more than a single day, from Seattle to Cali-
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`fornia.
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`Balanced against the hardships to Amazon and its employees, B.E. appears to have no ac-
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`tual operations in the Western District of Tennessee—registering to do business there only one
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`Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 15 of 21 PageID 344
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`day prior to filing this suit and listing a recently purchased residence as its primary office. (Hud-
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`son Decl. Exs. 5 and 12.) It appears to have no employees in Tennessee, but for Mr. Hoyle—the
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`inventor named on the asserted patents—who has an interest in this litigation. (Id. Ex. 1.) Ac-
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`cording to the United States Patent and Trademark Office, however, this witness—at least as late
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`as June of 2012—resided in New Orleans, Louisiana. (Id. Ex. 2.) In any event, the disruption to
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`the large number of employees from Amazon, and the other 18 defendants, who may be forced to
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`leave their homes and jobs to testify in Tennessee is hardly offset by any inconvenience to Mr.
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`Hoyle, who has an interest in this litigation, if he must travel to California—the home of most of
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`the relevant witnesses and the majority of other defendants sued by B.E. in this district—and the
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`location of B.E.’s lead counsel. This factor weighs strongly in favor of transfer to the Northern
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`District of California.
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`3.
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`The Availability of Compulsory Process
`to Secure the Attendance of Witnesses
`Strongly Favors Transfer.
`A court’s subpoena power over potential witnesses is generally limited by Federal Rule
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`of Civil Procedure 45(c)(3)(A)(ii), which bars a court from commanding non-party witnesses to
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`travel more than 100 miles from their home or business (unless otherwise allowed by state law).
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`Given this strict limitation, the availability of compulsory process to secure the attendance of
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`non-party witnesses is a factor that, here, weighs heavily in favor of transfer. See, e.g., Genen-
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`tech, 566 F.3d at 1345 (“The fact that the transferee venue is a venue with usable subpoena pow-
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`er here weighs in favor of transfer, and not only slightly”); Just Intellectuals, 2010 WL 5129014,
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`at *3 (ordering transfer in part on presence of likely third-party witnesses in the Northern District
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`of California).
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`Amazon is aware of no relevant third-party witnesses residing in the Western District of
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`Tennessee. The attorney who prosecuted the asserted patents is located in Troy, Michigan and
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`his law firm has offices only in Michigan and Texas and none in Tennessee. (Hudson Decl.
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`Case 2:12-cv-02767-JPM-tmp Document 43-1 Filed 02/12/13 Page 16 of 21 PageID 345
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`Exs. 4 and 7.) At the time the asserted patent applications were applied for and prosecuted, B.E.
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`was based in Michigan with no presence in Tennessee, and any of its former employees who
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`may have knowledge relating to the lawsuit are likely located in Michigan and not Tennessee.
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`(Id. Ex. 6; Amended Complaint Exs. A-B.) Indeed, B.E.’s former CEO resides in Bay City,
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`Michigan. (Id. Ex. 11.) At the time the patent applications were filed and prosecuted, Mr. Hoyle
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`was based in Louisiana and his recent patent filings suggest he is still based there. (Id. Ex. 2.)
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`Amazon and other defendants are in the process of identifying the prior art. No third-
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`party prior art witnesses are known to be located in Tennessee. By contrast, the parties have al-
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`ready identified at least twelve prior art patents with clear ties to companies (such as Google, In-
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`tel, and Verifone) or inventors in the Northern District of California.3 These patents name nine
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`different inventors and seven different companies that are based in the Northern District of Cali-
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`fornia. (Id. ¶ 15, Ex. 13.) The asserted B.E. patents themselves identify on their face several
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`likely prior art witnesses located in the Northern District of California. (Id. ¶ 16.) To prepare its
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`defenses, Amazon (and other defendants) will need to gather documents and obtain testimony
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`from these individuals and companies in California, and California courts will adjudicate any
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`discovery disputes related to any such subpoenas.
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`If this case were to remain in the Western District of Tennessee, Amazon would be
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`forced to present critical prior art testimony through deposition transcripts instead of live testi-
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`mony at trial—which will prejudice its ability to put on an effective defense to the jury. This
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`prejudice can be effectively remedied only by transferring this case to the Northern District of
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`California where these, and likely many more, relevant third-party witnesses reside and can be
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`compelled to attend trial and testify in person.
`
`
`3 U.S. Patent Nos. 5,263,164, 5,696,965, 5,710,884, 5,717,923, 5,740,549, 5,794,210,
`5,948,061, 6,128,663, 6,151,643, 6,285,985, 6,285,987 and U.S. Patent Publication No.
`2001/0011226.
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`4.
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`No Practical Problems Favor Litigation in
`This District Over