Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 1 of 25 PageID 483
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`
`
`Case No. 2:12-cv-02767 JPM tmp
`
`JURY DEMAND
`
`REQUEST HEARING ON MOTION
`
`
`)))))))))))
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`
`
`v.
`
`AMAZON DIGITAL SERVICES, INC.,
`
`
`
`Defendant.
`
`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO DEFENDANT’S MOTION TO
`TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`Dated: March 1, 2013
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`Daniel J. Weinberg (CA Bar No. 227159)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`
`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
`
`

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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 2 of 25 PageID 484
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`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`II.
`
`III.
`IV.
`
`V.
`VI.
`
`
`INTRODUCTION ............................................................................................................. 1
`STATEMENT OF FACTS ................................................................................................ 2
`A.
`B.E. Technology, L.L.C ......................................................................................... 2
`B.
`B.E. v. Amazon ...................................................................................................... 3
`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
`A.
`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 5
`B.
`Private Factors Favor B.E.’s Choice of Forum ...................................................... 8
`1.
`Convenience of the Parties Weighs Against Transfer ............................... 9
`2.
`Convenience of the Witnesses Weighs Against Transfer .......................... 9
`a.
`Party Witnesses ............................................................................ 10
`b.
`Non-Party Witnesses .................................................................... 12
`Location of Sources of Proof ................................................................... 14
`Amazon Would Not Be Materially Burdened Bearing The Expense
`of Litigating in the Western District of Tennessee .................................. 16
`Public Factors Favor B.E.’s Choice of Forum ..................................................... 16
`1.
`Transfer to the Northern District of California Would Delay Trial ......... 16
`2.
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 17
`REQUEST FOR ORAL ARGUMENT ........................................................................... 18
`CONCLUSION ................................................................................................................ 19
`
`3.
`4.
`
`C.
`
`-i-
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`

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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 3 of 25 PageID 485
`TABLE OF AUTHORITIES
`
`
`
`
`Federal Cases
`
`Page(s)
`
`Adoma v. Univ. of Phoenix, Inc.,
`711 F. Supp. 2d 1142 (E.D. Cal. 2010)....................................................................................10
`
`American S.S. Owners Mut. Prot. & Indem. Ass’n, Inc. v. Lafarge North Am., Inc.,
`474 F. Supp. 2d 474 (S.D.N.Y. 2002) ......................................................................................15
`
`Board of Trs. v. Baylor Heading & Air Conditioning, Inc.,
`702 F. Supp. 1253 (E.D. Va. 1988) .........................................................................................10
`
`Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623 (W.D. Mich. 2009) .................................................................................15
`
`E2Interactive, Inc. v. Blackhawk Network, Inc.,
`2010 WL 3937911 (W.D. Wis. Oct. 6, 2010) ....................................................................16, 17
`
`Ellipsis, Inc. v. Colorworks, Inc.,
`329 F. Supp. 2d 962 (W.D. Tenn. 2004) ..................................................................................16
`
`Esperson v. Trugreen Ltd. P’ship,
`2010 WL 4362794 (W.D. Tenn. Oct. 5, 2010) ............................................................10, 11, 16
`
`Hanning v. New England Mut. Life Ins. Co.,
`710 F. Supp. 213 (S.D. Ohio 1989) ...........................................................................................5
`
`Hunter Fan Co. v. Minka Lighting, Inc.,
`2006 WL 1627746 (W.D. Tenn. June 12, 2006) ............................................................. passim
`
`Imagepoint, Inc. v. Keyser Indus., Inc.,
`2005 WL 1242067 (E.D. Tenn. May 25, 2005) .........................................................................5
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)..........................................................................................12, 13
`
`Kerobo v. Southwestern Clean Fuels Corp.,
`285 F.3d 531 (6th Cir. 2002) .....................................................................................................3
`
`Koh v. Microtek Int’l, Inc.,
`250 F. Supp. 2d 627 (E.D. Va. 2003) ......................................................................................10
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)................................................................................................15
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ..............................................................................9
`
`ii
`
`

`
`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 4 of 25 PageID 486
`
`
`
`
`TABLE OF AUTHORITIES
`(Cont.)
`
`Federal Cases
`
`Page(s)
`
`Max Rack, Inc. v. Hoist Fitness Sys., Inc.,
`2006 WL 640497 (S.D. Ohio March 10, 2006) .......................................................................14
`
`MCNIC Oil & Gas Co. v. IBEX Resources Co., L.L.C.,
`23 F. Supp. 2d 729 (E.D. Mich. 1998) .......................................................................................4
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)..................................................................................................7
`
`Moses v. Business Card Express, Inc.,
`929 F.2d 1131 (6th Cir. 1991) ...................................................................................................4
`
`Nationwide Mut. Life Ins. v. Koresko,
`2007 WL 2713783 (S.D. Ohio Sept. 14, 2007) ...................................................................3, 15
`
`Parsons v. Chesapeake & Ohio Ry. Co.,
`375 U.S. 71 (1963) ...................................................................................................................16
`
`Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
`2003 WL 21244142 (W.D. Tenn. May 28, 2003) .....................................................................4
`
`Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc.,
`138 F.R.D. 89, 93 (N.D. Ohio 1991) .................................................................................10, 11
`
`Samsung Elecs. Co. v. Rambus, Inc.,
`386 F. Supp. 2d 708 (E.D. Va. 2005) ......................................................................................10
`
`Siteworks Solutions, LLC v. Oracle Corp.,
`2008 WL 4415075 (W.D. Tenn. Sept. 22, 2008) .....................................................................16
`
`Stewart Organization, Inc. v. Ricoh Corp.,
`487 U.S. 22 (1988) .....................................................................................................................4
`
`Tuna Processors, Inc. v. Hawaii Int’l Seafood,
`408 F. Supp. 2d 358 (E.D. Mich. 2005) .....................................................................................4
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ...................................................................................................................4
`
`Virton Int’l Corp. v. David Boland, Inc.,
`237 F. Supp. 2d 812 (W.D. Mich. 2002) .................................................................................11
`
`- iii -
`
`

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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 5 of 25 PageID 487
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`
`
`
`TABLE OF AUTHORITIES
`(Cont.)
`
`Federal Statutes
`
`Page(s)
`
`28 U.S.C. § 1404 ......................................................................................................................1, 2, 3
`
`28 U.S.C. § 1404(a) ...................................................................................................................3, 19
`
`Fed. R. Civ. P. 45(b)(2)..................................................................................................................13
`
`Rules
`
`
`
`- iv -
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`

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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 6 of 25 PageID 488
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`
`I.
`
`INTRODUCTION.
`
`This case arises from the infringement by defendant Amazon Digital Services, Inc.
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`(“Amazon”) of United States Patents 6,141,010 and 6,771,290. Plaintiff B.E. Technology,
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`L.L.C. (“B.E.”) has brought this action because Amazon has infringed B.E.’s patents in this
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`District and across the United States. The inventor, Martin David Hoyle, is also the Chief
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`Executive Officer of B.E. Mr. Hoyle has lived in the Western District of Tennessee since 2006
`
`and currently resides at 116 W. Viking Drive, Cordova, Tennessee, part of the City of Memphis.
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`Mr. Hoyle has directed B.E.’s business from this District since at least 2008.
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`Ignoring these facts, Amazon asks this Court to transfer the case from the Western
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`District of Tennessee to the Northern District of California. Amazon states that “B.E. is
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`orchestrating the facts to create the appearance that venue is appropriate in this district,” D.E. 43-
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`1 at 15, because a December 2011 patent application that identifies New Orleans as Mr. Hoyle’s
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`residence “suggests” Mr. Hoyle “is still based there,” and he and/or B.E. are not “genuine”
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`residents of this District. Id. at 11, 15. But the Western District of Tennessee is, and has long
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`been, the physical location and home of B.E. and its Chief Executive Officer. Amazon cannot
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`disprove that. And while Amazon may point to one patent application that lists New Orleans as
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`Mr. Hoyle’s residence, Amazon makes no mention of three other B.E. patent applications that
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`identify Mr. Hoyle’s residence as Eads, Tennessee (where he lived before his move to Cordova).
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`In addition to trivializing Mr. Hoyle’s and B.E.’s longstanding connection to this District,
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`Amazon argues that transfer to the Northern District of California would be more convenient
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`because, despite being headquartered in Seattle, the Amazon facilities relevant to this case are
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`located in Cupertino, California. Transfer to California might in some ways be more convenient
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`for Amazon, but it would be less convenient for B.E. Transfer under 28 U.S.C. § 1404 requires a
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`“more convenient forum,” not merely a “forum likely to prove equally convenient or
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`1
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`

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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 7 of 25 PageID 489
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`inconvenient,” or “a forum the defendant finds more to its liking.” Because Amazon can offer
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`no more, its motion to transfer should be denied.
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`II.
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`STATEMENT OF FACTS.
`
`A.
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`B.E. Technology, L.L.C.
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`B.E. is a Delaware limited liability company. Declaration of Martin David Hoyle
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`(“Hoyle Decl.”) ¶ 5. Martin David Hoyle, who goes by David, founded B.E. in 1997 to develop
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`Internet-related technologies. Id. B.E. is the assignee of United States Patents 6,141,010 (the
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`“’010 patent”) and 6,771,290 (the “’290 patent”) (together, the “patents-in-suit”). Id. ¶ 7. Mr.
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`Hoyle has been B.E.’s Chief Executive Officer since 2008. Id. ¶ 6. He previously held other
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`positions with B.E., including serving as its President from 1997 to 2001. Id. Mr. Hoyle is the
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`named inventor of the patents-in-suit.1 Id. ¶ 7.
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`In April 2006, Mr. Hoyle and his family moved from Mandeville, Louisiana to Eads,
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`Tennessee. Id. ¶ 2. They left Louisiana in the aftermath of Hurricane Katrina. Id. Mr. Hoyle
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`has remained in the Memphis area, and in this judicial district, ever since. See id. ¶¶ 2-4. In
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`2012, after contemplating a return to Louisiana, Mr. Hoyle and his wife moved to Cordova, in
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`the city of Memphis and also in this District. Id. ¶ 4.
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`B.E. originally maintained its registered office in Michigan where some of its members
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`and its accountant reside, id. ¶ 5, but it formally registered to conduct business in Tennessee in
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`2012. Id. ¶ 8. Mr. Hoyle runs the business of B.E. from his home office, including meeting with
`
`the B.E. Board of Directors, filing patent applications, and coordinating the enforcement of
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`B.E.’s intellectual property rights. Id. ¶ 6.
`
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`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
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`- 2 -
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`B.E. also is the assignee of patent applications filed in January and March 2010 and May
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`2011. Declaration of Qudus B. Olaniran (“Olaniran Decl.”), Exs. A-C. Each application
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`identifies Mr. Hoyle as the inventor and identifies his residence as Eads, Tennessee. Id.
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`B.
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`B.E. v. Amazon.
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`B.E. filed its original Complaint in this matter on September 7, 2012, and filed an
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`Amended Complaint on September 20, 2012. D.E. 1 & 9. This is one of nineteen cases B.E. has
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`filed in the Western District of Tennessee for the infringement of the patents-in-suit and a related
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`patent not asserted against Amazon. The defendants in these cases include several of the world’s
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`most sophisticated technology companies, each of which regularly conducts business on a
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`massive scale in this District. Unlike the other 18 B.E. defendants that have answered B.E.’s
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`complaints, Amazon contends the Amended Complaint fails to state a claim upon which relief
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`can be granted because the patents-in-suit are invalid. D.E. 32-1, 43-1 at 2.
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`III. THE LAW GOVERNING MOTIONS TO TRANSFER.
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`“For the convenience of parties and witnesses, in the interest of justice, a district court
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`may transfer any civil action to any other district or division where it might have been brought.”
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`28 U.S.C. § 1404(a). A decision to transfer venue is made “on an individual basis by
`
`considering convenience and fairness.” Kerobo v. Southwestern Clean Fuels Corp., 285 F.3d
`
`531, 537 (6th Cir. 2002) (internal quotes omitted). The “balance of convenience must weigh
`
`heavily in favor of the transfer.” Nationwide Mut. Life Ins. v. Koresko, 2007 WL 2713783, at *5
`
`(S.D. Ohio Sept. 14, 2007).
`
`“As a general rule, there is a ‘strong presumption’ in favor of the plaintiff’s selection of
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`forum, and the plaintiff’s choice should not be altered ‘unless the defendant carries his burden of
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`demonstrating that the balance of convenience strongly favors transfer.’” Hunter Fan Co. v.
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`Minka Lighting, Inc., 2006 WL 1627746, at * 2 (W.D. Tenn. June 12, 2006) (McCalla, J.)
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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 9 of 25 PageID 491
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`(quoting Plough, Inc. v. Allergan, Inc., 741 F. Supp. 144, 148 (W.D. Tenn. 1990)) (denying a
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`motion to transfer even though the majority of defendant’s witnesses and documents were
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`located in California and California was the epicenter of the accused infringing activity). “When
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`a plaintiff has selected its home forum, this choice is given particular weight.” Id. (citing Tuna
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`Processors, Inc. v. Hawaii Int’l Seafood, 408 F. Supp. 2d 358, 360 (E.D. Mich. 2005)).
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`The threshold question on any motion to transfer is whether the plaintiff could have filed
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`the action in the transferee forum. See Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
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`2003 WL 21244142, at *6 (W.D. Tenn. May 28, 2003); MCNIC Oil & Gas Co. v. IBEX
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`Resources Co., L.L.C., 23 F. Supp. 2d 729, 739 (E.D. Mich. 1998) (same). If so, then the
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`“district court should consider the private interests of the parties, including their convenience and
`
`the convenience of potential witnesses, as well as other public-interest concerns, such as
`
`systemic integrity and fairness, which come under the rubric of ‘interests of justice.’” Moses v.
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`Business Card Express, Inc., 929 F.2d 1131, 1137 (6th Cir. 1991) (quoting Stewart
`
`Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 30 (1988)).
`
`IV.
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`TRANSFER IS NOT APPROPRIATE.
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`B.E. agrees that its patent infringement claims could have been brought in the Northern
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`District of California because Amazon infringes there, just as it does in this District. The
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`relevant question presented by Amazon’s motion is therefore whether Amazon has met its high
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`burden to establish that the Northern District of California is “a more convenient forum,” not
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`merely an “equally convenient or inconvenient” forum when compared to the Western District of
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`Tennessee. Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964). Amazon has not made that
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`showing.
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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 10 of 25 PageID 492
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`A.
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`B.E.’s Choice of Forum is Entitled to Substantial Weight.
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`As mentioned above, it is well-settled that a plaintiff’s choice of forum is entitled to
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`substantial weight. Hunter Fan Co., 2006 WL 1627746, at *2; see also Imagepoint, Inc. v.
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`Keyser Indus., Inc., 2005 WL 1242067, at *3 (E.D. Tenn. May 25, 2005) (explaining the
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`plaintiff’s “choice of forum will be given deference”); Hanning v. New England Mut. Life Ins.
`
`Co., 710 F. Supp. 213, 214-15 (S.D. Ohio 1989) (“considerable weight”). The Western District
`
`of Tennessee is B.E.’s principal place of business and its Chief Executive Officer, who is the
`
`named inventor, lives here. B.E.’s choice of forum should be accorded substantial weight.
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`Amazon argues that B.E.’s choice of venue should be “subject to much closer scrutiny”
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`because its “presence in [the] venue appears to be recent, ephemeral, and an artifact of
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`litigation.” D.E. 43-1 at 7 (internal quotations and citations omitted). B.E.’s presence in the
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`Western District of Tennessee is none of those but B.E. welcomes close scrutiny of the facts
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`establishing its connection to this District and Amazon’s distortions of those facts to further its
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`forum shopping narrative.
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`Mr. Hoyle lives in the Western District of Tennessee and operates B.E. from his home
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`office in Cordova. See Hoyle Decl. ¶¶ 2-6. Mr. Hoyle moved to this District six years before
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`the filing of this or any other action. Id. ¶ 2. He has been physically present in this District since
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`2006. Id. ¶¶ 2-4. Amazon contends that Mr. Hoyle’s “recent patent filings suggest he is still
`
`based” in Louisiana. D.E. 43-1 at 11 (relying on a December 2011 patent application that lists
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`his residence as New Orleans). Amazon’s incorrect conclusion ignores Mr. Hoyle’s personal
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`situation and the circumstances that led him briefly to seek to establish residence in New Orleans
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`around the time the December 2011 patent application was filed. See Hoyle Decl. ¶ 4
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`(explaining that “[o]ver time, [he] considered a return to Louisiana” and “[d]uring part of the
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`time [he] was living in Eads, [he] planned to return to Louisiana and took steps to establish
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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 11 of 25 PageID 493
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`residence there while [his] non-B.E. work required [his] presence in the Memphis area”).
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`Amazon presents no information that demonstrates Mr. Hoyle’s statements in this Court are
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`inconsistent with the representation made to the Patent Office about his residency and it
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`identifies no other patent “filings” that “suggest” he lives in New Orleans. To the contrary, Mr.
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`Hoyle regularly represented to the Patent Office in other patent applications that his residence
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`was Eads, consistent with the fact that he lived there. Olaniran Decl. Exs. A-C (2010 and 2011
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`patent applications). And while Mr. Hoyle personally considered his residence to be New
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`Orleans around the time the December 2011 patent application was filed (even though he was
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`present in Eads), he obviously considered his residence to be within this District before that time
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`(as evidenced by the other patent filings) and after when, in February 2012, he and his wife
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`elected to remain in Tennessee and purchased their home in Cordova. Hoyle Decl. ¶ 4.
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`Amazon’s distortion that Mr. Hoyle resided in New Orleans “at least as late as June of 2012” is
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`inexcusable. The patent application that is the basis for Amazon’s New Orleans conjecture was
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`published in June 2012. There is no argument or evidence that the date of publication
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`corresponds to any representations by Mr. Hoyle about his residence or physical location. In
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`fact, Mr. Hoyle had no duty to update his address with the Patent Office after the December 2011
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`filing because he gave a Power of Attorney to the prosecuting attorney whose mailing address
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`was used for all correspondence. See Olaniran Decl. Ex. D. Mr. Hoyle is a resident of this
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`District and his presence and residence here have nothing at all do with a desire to manufacture
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`venue.
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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 12 of 25 PageID 494
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`B.E. has been in this District since at least 20082 when Mr. Hoyle became Chief
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`Executive Officer and took control of the company. Hoyle Decl. ¶¶ 2-7. He operates B.E. from
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`his home office in Cordova. Id. ¶ 6. He conducts meetings with the board of directors,
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`participates in the prosecution of patents assigned to B.E., and coordinates the enforcement of
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`B.E.’s intellectual property. Id. Amazon cannot dispute this, and simply ignores it, but
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`nonetheless contends that B.E. made a “last minute prelitigation ‘relocation’” by filing “business
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`registration papers with this State.” D.E. 43-1 at 1. The filing of a business registration does not
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`establish when a company began business operations in a particular state and Amazon cites no
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`authority or regulation establishing that B.E. was required to register sooner than it did or that the
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`existence of a business registration is relevant to demonstrating a plaintiff’s connection to a
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`chosen forum. To the contrary, courts are instructed to identify the company’s “‘nerve center[,]’
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`the place of actual direction, control and coordination.” In re Microsoft Corp., 630 F.3d 1361,
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`1364 (Fed. Cir. 2011). Mr. Hoyle’s office is B.E.’s “nerve center.” It is and has been the place
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`from which he has controlled and directed B.E. business activities since at least 2008. Hoyle
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`Decl. ¶ 6. Amazon can muster no evidence to the contrary.
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`More importantly, B.E. does not rely on the fact that it is registered to conduct business
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`in Tennessee as a basis for establishing its connection to the District. Amazon ignores this too,
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`going so far as to state that B.E’s “sole purported connection to Tennessee is its business
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`registration—created the day before this lawsuit was filed.” D.E. 43-1 at 1. B.E. registered
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`because it has a connection to Tennessee; it did not register to establish a connection. If the
`
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`2 It could be said that B.E. has been present in this District since 2006 because Mr. Hoyle co-
`managed the company from here from 2006 to 2008. Hoyle Decl. ¶ 6. But for purposes of this
`motion, it is unnecessary to debate whether B.E. began operating from this District in 2006 or
`2008 since either establishes a sufficient duration to overcome the contention that B.E.’s
`presence in the District is “recent, ephemeral, and an artifact of litigation.”
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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 13 of 25 PageID 495
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`timing of B.E.’s registration is to be questioned, it should be understood that the registration was
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`made after Mr. Hoyle chose to remain in Tennessee, rather than return to Louisiana. Hoyle Decl.
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`¶ 4. When B.E. was preparing to file this action and Mr. Hoyle discovered that B.E. had not
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`registered to do business in Tennessee, the registration was made. Id. ¶ 8. Regardless, B.E. does
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`not contend that its contacts with the forum are established by its registration.
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`Finally, B.E.’s relevant business records, including documents demonstrating the
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`conception and reduction to practice of Mr. Hoyle’s inventions, are physically located in the
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`Western District of Tennessee. Hoyle Decl. ¶ 7. Amazon wrongly contends that “[n]ot a single
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`relevant document is known to be located in this district.” D.E. 43-1 at 1 & 8 (“Very little, if any
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`[documents and information relating to this case], is located in this district.”). These statements,
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`whether based on some speculative interpretation of a nearly thirteen year old B.E. business plan
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`or just a desperation to flee Tennessee, have no basis in the facts. When closely scrutinized, it is
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`clear B.E.’s contacts with the forum were not manufactured for litigation and as a result, its
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`choice of forum is entitled to “substantial weight.”
`
`B.
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`Private Factors Favor B.E.’s Choice of Forum.
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`While B.E.’s choice of forum is entitled to substantial weight, the Court is nevertheless
`
`required to evaluate private and public factors in determining whether to grant Amazon’s motion.
`
`“The private interests of the parties that courts consider when determining whether to transfer a
`
`case include: the convenience of the parties, the convenience of witnesses, the location of
`
`sources of proof, where the operative facts occurred, the relative ability of litigants to bear
`
`expenses in any particular forum, and other practical problems affecting the case.” Hunter Fan,
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`2006 WL 1627746, at *2.
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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 14 of 25 PageID 496
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`1.
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`Convenience of the Parties Weighs Against Transfer.
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`The Western District of Tennessee is more convenient for B.E. than the Northern District
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`of California. As previously explained, B.E. and its CEO, the inventor of the patents-in-suit,
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`reside within the District. B.E.’s corporate documents and records are here as well. Outside of
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`witness convenience, Amazon does not make an explicit argument that it will be inconvenienced
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`by conducting litigation in Tennessee. It is reasonable to require companies with the wealth and
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`size of Amazon to litigate in jurisdictions in which they regularly conduct business. See Lucent
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`Techs., Inc. v. Aspect Telecomms. Corp., 1997 WL 476356, at *4 (E.D. Pa. Aug. 20, 1997)
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`(finding it reasonable to force a public company with “$300 million a year in sales and
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`approximately $216 million in current assets, to travel to places where it is subject to jurisdiction
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`in order to defend its corporate interests”). Amazon’s parent company, Amazon.com, Inc. (D.E.
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`21) is a large and wealthy company. It reported for the fiscal quarter ending September 30, 2012
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`that it generated $13,806,000,000 in total net sales. Olaniran Decl., Ex. E. Amazon further
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`reported $22,834,000,000 in total assets, including $2,980,000,000 in cash and cash equivalents.
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`As of February 28, 2013, Amazon had a market capitalization of $120,120,000,000, and, to
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`defend it in this action, it has retained lawyers from Memphis and Mountain View, California. It
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`is doubtful that Amazon will suffer hardship or inconvenience by litigating in the Western
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`District of Tennessee.
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`2.
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`Convenience of the Witnesses Weighs Against Transfer.
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`Amazon argues that the Northern District of California would be a more convenient
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`venue for its own witnesses because, “[s]imply put, it is more efficient and convenient and less
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`disruptive for witnesses to testify at home . . . .” D.E. 43-1 at 9. By the same logic, transfer to
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`the Northern District of California would be equally inconvenient to B.E.’s witnesses, none of
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`whom is located in the Northern District of California. Moreover, Amazon offers precious little
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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 15 of 25 PageID 497
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`about whom the witnesses are that will be inconvenienced by the case staying in Tennessee, what
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`they will say, and why they are important to this case. “To sustain a finding on [the convenience
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`of the witnesses] . . . the party asserting witness inconvenience ‘has the burden to proffer, by
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`affidavit or otherwise, sufficient details respecting the witnesses and their potential trial
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`testimony to enable the court to assess the materiality of evidence and the degree of
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`inconvenience.’” Rinks, 2011 WL 691242, at *3 (quoting Koh v. Microtek Int’l, Inc., 250 F.
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`Supp. 2d 627, 636 (E.D. Va. 2003)); Samsung Elecs. Co. v. Rambus, Inc., 386 F. Supp. 2d 708,
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`718 (E.D. Va. 2005) (same). District courts typically require affidavits or declarations that
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`contain admissible evidence setting forth “who the key witnesses will be and what their
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`testimony will generally include.” Rinks, 2011 WL 691242, at *3 (quoting Adoma v. Univ. of
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`Phoenix, Inc., 711 F. Supp. 2d 1142, 1151 (E.D. Cal. 2010)); see also Board of Trs. v. Baylor
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`Heading & Air Conditioning, Inc., 702 F. Supp. 1253, 1258 (E.D. Va. 1988) (“Witness
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`convenience . . . cannot be assessed in the absence of reliable information identifying the
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`witnesses involved and specifically describing their testimony.”). Amazon provides none of that.
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`a. Party Witnesses.
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`Amazon claims that the employees with knowledge relevant to this litigation are located
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`in Cupertino, California or Seattle. Declaration of Jeffrey H. Dean (“Dean Decl.”) ¶¶ 4-5. But
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`Amazon offers no particularized information enabling the Court to ascertain how much weight to
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`give the claim of inconvenience. Amazon fails to identify any witnesses by name, position title,
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`location, the subject matter on which they will testify, or the burdens they would endure by
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`traveling to Tennessee to testify. “[A] party that ‘fails to identify the witnesses’ and ‘what their
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`testimony would be’ cannot establish that a particular forum is inconvenient.” Esperson v.
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`Trugreen Ltd. P’ship, 2010 WL 4362794, at *8 (W.D. Tenn. Oct. 5, 2010) (quoting Roberts
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`Metals, Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89, 93 (N.D. Ohio 1991), aff’d per
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`Case 2:12-cv-02767-JPM-tmp Document 46 Filed 03/01/13 Page 16 of 25 PageID 498
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`curiam, 22 F.2d 1104 (6th Cir. 1994)). Similarly, Amazon makes a pure numbers argument,
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`contending that the disruption—which it does not describe—to “the large number of employees
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`from Amazon, and the other 18 defendants,” outweighs any disruption to Mr. Hoyle. D.E. 43-1
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`at 10. But it is “the materiality and importance of the testimony of prospective witnesses, and
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`not merely the number of witnesses, [that] is crucial to this inquiry.” Rinks, 2011 WL 691242 at
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`*3 (citing Virton Int’l Corp. v. David Boland, Inc., 237 F. Supp. 2d 812, 816 (W.D. Mich.
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`2002)). Instead of relying on the fact that B.E. sued 19 defendants to create an imbalance in the
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`total number of overall witnesses that tips in its favor, Amazon should have provided evidence
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`identifying specific witnesses and describing how their testimony is material and important and
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`identifying the specific burdens they purport to face by having to travel to Memphis to testify at
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`trial. Amazon has provided none of that, and thus has not met its burden to establish the
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`convenience of witnesses weighs in favor of transferring this case.
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`Amazon also does not provide admissible evidence of the costs expected to be incurred
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`by having to travel from California to Tennessee or the difference in cost of having to travel
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`from Seattle to Memphis instead of Seattle to the Bay Area. D.E. 43-1 at 9 (referring generally
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`to “costly overnight stays”). Nor does Amazon assert that it will not cover any travel expenses
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`of its employee witnesses or that it would suffer any financial hardship by having to endure the
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`cost.
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`Amazon also does not provide ad