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Case 2:12-cv-02767-JPM-tmp Document 57 Filed 07/19/13 Page 1 of 28 PageID 610
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
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` No.: 2:12-cv-02767-JPM-cgc
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`B.E. TECHNOLOGY, LLC,
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`Plaintiff,
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`v.
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`AMAZON DIGITAL SERVICES, INC.,)
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`Defendant.
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`ORDER DENYING DEFENDANT’S MOTION TO TRANSFER VENUE
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`Before the Court is Defendant Amazon Digital Services,
`Inc.’s (“Defendant” or “Amazon”) Motion to Transfer Venue
`Pursuant to 28 U.S.C. § 1404(a) and for Expedited Consideration,
`filed February 12, 2013. (ECF No. 43.) For the reasons that
`follow, the Motion is DENIED.
`I. BACKGROUND
`This case concerns Defendant Amazon’s alleged infringement
`of United States Patent No. 6,771,290 (the “‘290 patent”). (ECF
`No. 1.) Plaintiff B.E. Technology, LLC (“Plaintiff or “B.E.”),
`is the assignee of the ‘290 patent (ECF No. 46 at 2), currently
`owning “all right, title, and interest in the ‘290 patent, and
`has owned all right, title, and interest throughout the period”
`of the alleged infringement (ECF No. 1 ¶ 10).
`B.E. alleges that Amazon infringed the ‘290 patent “by
`using, selling, and offering to sell in the United States tablet
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`computer products that directly infringe at least Claim 2 of the
`‘290 patent either literally or under the doctrine of
`equivalents.” (Id. ¶ 11.) The Amazon products alleged to
`infringe the ‘290 patent include “the Kindle, Kindle Touch,
`Kindle Touch 3G, Kindle Keyboard 3G, Kindle DX, and Kindle Fire
`products.” (Id.)
`B.E. filed a Complaint in this Court on September 7, 2012.
`(ECF No. 1.) Amazon filed a Motion to Dismiss on January 7,
`2013. (ECF No. 32.) Amazon thereafter filed its Motion to
`Transfer Venue on February 12, 2013. (ECF No. 43.) B.E. filed
`its Memorandum in Opposition to Defendant’s Motion to Transfer
`Venue on March 1, 2013. (ECF No. 46.) With leave of Court,
`Amazon filed a Reply Memorandum in Support of Its Motion to
`Transfer on March 18, 2013. (ECF No. 49.) On February 12,
`2013, Amazon filed a Motion to Stay pending resolution of its
`Motion to Transfer Venue. (ECF No. 44.) The Court granted
`Amazon’s Motion to Stay on February 12, 2013. (ECF No. 45.)
`While Amazon is a Delaware corporation with its principal
`place of business in Seattle, Washington, it seeks to transfer
`this case to the Northern District of California because the
`Amazon facilities relevant to this case are located in
`Cupertino, California, located in the Northern District of
`California. (See ECF No. 43-1 at 1, 4; Dean Decl., ECF No. 43-
`2, ¶¶ 2, 4.) To support its Motion, Amazon contends that all
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`the accused products were developed at its Northern California
`headquarters. (ECF No. 43-1 at 1.) As a result, the “relevant
`engineering employees” and the “relevant technical documents and
`computer source code” are located in the transferee district.
`(Id.) Further, Amazon asserts that numerous third-party
`witnesses on whom it intends to rely are also located in or
`around the Northern District of California. (Id. at 5.)
`B.E. opposes Amazon’s Motion to Transfer. B.E. is a
`limited-liability company incorporated in Delaware. (ECF No. 1
`¶ 2.) B.E. was originally registered in Michigan, but formally
`registered to conduct business in Tennessee in September 2012.
`(ECF No. 46 at 2.) B.E. contends that Memphis, Tennessee, is
`its principal place of business. (ECF No. 1 ¶ 2.) Martin David
`Hoyle (“Hoyle”), B.E.’s founder and CEO, is the named-inventor
`of the ‘290 patent. (ECF No. 46 at 1, 2.) Hoyle has been a
`resident of Tennessee since April, 2006. (Id. at 1, 2.)
`B.E. argues that transfer is inappropriate because it has
`substantial connections with this district. B.E. argues that
`Hoyle has been “present in this District since 2006,” and B.E.
`“since at least 2008,” and this district is B.E.’s principal
`place of business. (Id. at 5, 7.) B.E. also argues that none
`of its witnesses are located in the Northern District of
`California. (Id. at 9.) Further, B.E. argues that its
`corporate documents, including documents relating to the
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`“conception and reduction to practice” of the patent-in-suit,
`are located in this District. (Id. at 8.)
`II. STANDARD
`Amazon moves the Court to transfer this case to the
`Northern District of California pursuant to 28 U.S.C. § 1404(a).
`(ECF No. 43.) The statute provides that “[f]or the convenience
`of the parties and witnesses, in the interest of justice, a
`district court may transfer any civil action to any other
`district or division where it might have been brought.” 28
`U.S.C. § 1404(a). “As the permissive language of the transfer
`statute suggests, district courts have ‘broad discretion’ to
`determine when party ‘convenience’ or ‘the interest of justice’
`make a transfer appropriate.” Reese v. CNH Am. LLC, 574 F.3d
`315, 320 (6th Cir. 2009).
`In determining whether to transfer a case under § 1404(a),
`the court must first determine whether the claim could have been
`brought in the transferee district. 28 U.S.C. § 1404(a)
`(allowing transfer to any other district in which the claim
`“might have been brought”). Once the court has made this
`threshold determination, the court must then determine whether
`party and witness “convenience” and “the interest of justice”
`favor transfer to the proposed transferee district. Reese, 574
`F.3d at 320; Esperson v. Trugreen Ltd., No. 2:10-cv-02130-STA-
`cgc, 2010 WL 4362794, at *5 (W.D. Tenn. Oct. 5, 2010), adopted
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`2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010). In weighing these
`statutory factors, the court may still consider the private- and
`public-interest factors set forth in the pre-Section 1404(a)
`case, Gulf Oil v. Gilbert, 330 U.S. 501, 508-09 (1947), but
`courts are not burdened with “preconceived limitations derived
`from the forum non conveniens doctrine.” Norwood v.
`Kirkpatrick, 349 U.S. 29, 31 (1955) (quoting All States Freight
`v. Modarelli, 196 F.2d 1010, 1011 (3d Cir. 1952)) (internal
`quotation marks omitted); Esperson, 2010 WL 4362794, at *5. The
`United States Court of Appeals for the Sixth Circuit has stated
`that when deciding “a motion to transfer under § 1404(a), a
`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.’” Moore v. Rohm & Haas Co.,
`446 F.3d 643, 647 n.1 (6th Cir. 2006).
`Additionally, the “interest of justice” factor has been
`interpreted broadly by courts, influenced by the individualized
`circumstances of each case. The United States Court of Appeals
`for the Federal Circuit has set forth a non-exhaustive list of
`pertinent public-interest factors:
`The public interest factors include (1) the
`administrative
`difficulties
`flowing
`from
`court
`congestion; (2) the local interest in having localized
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`interests decided at home; (3) the familiarity of the
`forum with the law that will govern the case; and (4)
`the avoidance of unnecessary problems of conflicts of
`laws or in the application of foreign law.
`
`In re Acer Am. Corp., 626 F.3d 1252, 1254 (Fed. Cir. 2010); see
`also In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir.
`2009) (finding the local-interest factor weighed heavily in
`favor of transfer); Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623, 633 (W.D. Mich. 2009) (considering
`additional factors such as the relative docket congestion of the
`transferor and transferee districts).
`Initially, B.E. argues that there is a strong presumption
`in favor of its choice of forum, and that its choice of forum
`should not be disturbed unless the defendant carries its burden
`to demonstrate that the balance of convenience strongly favors
`transfer. (ECF No. 37 at 4-8.) B.E.’s argument is erroneously
`derived from the more stringent forum-non-conveniens standard.
`Compare Hunter Fan Co. v. Minka Lighting, Inc., No. 06–2108
`M1/P, 2006 WL 1627746 (W.D. Tenn. June 12, 2006) (applying the
`appropriate private- and public-interest factors but relying on
`the forum-non-conveniens doctrine to accord strong deference to
`the plaintiff’s choice of forum), with OneStockDuq Holdings, LLC
`v. Becton, Dickinson, & Co., No. 2:12–cv–03037–JPM–tmp, 2013 WL
`1136726, at *3 (W.D. Tenn. Mar. 18, 2013), and Roberts Metals,
`Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89, 92-93
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`(N.D. Ohio 1991) (recognizing defendants need to make a lesser
`showing to overcome plaintiff’s choice of forum under
`§ 1404(a)), aff’d per curiam, 22 F.3d 1104 (6th Cir. 1994).
`Although there is a strong presumption in favor of the
`plaintiff’s choice of forum under the doctrine of forum non
`conveniens, under § 1404(a), a plaintiff’s choice of forum may
`be considered, but is entitled to less deference. Discussing
`the difference between the common-law doctrine of forum non
`conveniens and the federal transfer-of-venue statute in Norwood,
`the Supreme Court stated,
`When Congress adopted § 1404(a), it intended to
`do more than just codify the existing law on forum non
`conveniens. . . . [W]e believe that Congress, by the
`term “for the convenience of parties and witnesses, in
`the interest of justice,” intended to permit courts to
`grant
`transfers
`upon
`a
`lesser
`showing
`of
`inconvenience. This is not to say that the relevant
`factors have changed or that the plaintiff’s choice of
`forum is not to be considered, but only that the
`discretion to be exercised is broader.
`
`Norwood, 349 U.S. at 32; see also Lemon v. Druffel, 253 F.2d
`680, 685 (6th Cir. 1958) (“The choice of the forum by the
`petitioner is no longer as dominant a factor as it was prior to
`the ruling in Norwood v. Kirkpatrick[.]”); Esperson, 2010 WL
`4362794, at *5-6.
`Defendant’s burden under § 1404(a) is to demonstrate that a
`change of venue to the transferee district is warranted. See
`Eaton v. Meathe, No. 1:11-cv-178, 2011 WL 1898238, at *2 (W.D.
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`Mich. May 18, 2011); Amphion, Inc. v. Buckeye Elec. Co., 285 F.
`Supp. 2d 943, 946 (E.D. Mich. 2003); Roberts Metals, Inc., 138
`F.R.D. at 93. “Merely shifting the inconvenience from one party
`to another does not meet Defendant’s burden.” McFadgon v. Fresh
`Mkt., Inc., No. 05-2151-D/V, 2005 WL 3879037, at *2 (W.D. Tenn.
`Oct. 21, 2005). “[T]he movant must show that the forum to which
`he desires to transfer the litigation is the more convenient one
`vis a vis the Plaintiff’s initial choice.” Roberts Metals,
`Inc., 138 F.R.D. at 93 (quoting Mead Corp. v. Oscar J. Boldt
`Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981)) (internal
`quotation marks omitted). If the court determines that the
`“balance between the plaintiff’s choice of forum and defendant’s
`desired forum is even, the plaintiff’s choice of [forum] should
`prevail.” Stewart v. Am. Eagle Airlines, Inc., No. 3:10-00494,
`2010 WL 4537039, at *2 (M.D. Tenn. Nov. 3, 2010).
`III. ANALYSIS
`Amazon asserts that B.E. could have brought this action in
`the Northern District of California. (See ECF No. 43-1 at 6.)
`B.E. does not dispute this assertion. (See ECF No. 46 at 4.)
`The Court agrees that B.E. could have brought suit in the
`Northern District of California. Therefore, the only issue
`remaining is whether the balance of the statutory factors — the
`convenience to the witnesses, the convenience to the parties,
`and the interest of justice — favors transfer to the Northern
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`District of California. The Court will address each statutory
`factor separately and balance these factors to determine whether
`transfer to the Northern District of California is proper
`pursuant to § 1404(a).
`A. Convenience of the Witnesses
`When asserting that a transferee district is more
`convenient for witnesses, a party “must produce evidence
`regarding the precise details of the inconvenience” of the forum
`chosen by the plaintiff. Esperson, 2010 WL 4362794, at *8. To
`satisfy its burden, the movant must do “more than simply
`assert[] that another forum would be more appropriate for the
`witnesses; he must show that the witnesses will not attend or
`will be severely inconvenienced if the case proceeds in the
`forum district.” Id. (quoting Roberts Metals, Inc., 138 F.R.D.
`at 93). Further, “[t]o sustain a finding on [this factor] . . .
`the party asserting witness inconvenience has the burden to
`proffer, by affidavit or otherwise, sufficient details
`respecting the witnesses and their potential testimony to enable
`a court to assess the materiality of evidence and the degree of
`inconvenience.” Eaton, 2011 WL 1898238, at *3 (quoting Rinks v.
`Hocking, 1:10-CV-1102, 2011 WL 691242, at *3 (W.D. Mich. Feb.
`16, 2011)) (internal quotation marks omitted). It is the
`“materiality and importance of the testimony of prospective
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`witnesses, and not merely the number of witnesses,” that is
`crucial to this inquiry. Rinks, 2011 WL 691242, at *3.
`Amazon contends that witness convenience favors transfer to
`the Northern District of California. (ECF No. 43-1 at 8-10; ECF
`No. 49 at 5-7.) To support this contention, Amazon asserts that
`all of the witnesses on which it intends to rely are located in
`the transferee district or in Seattle, Washington. These
`witnesses include employees with knowledge regarding the design
`and operation of its accused products, located in the transferee
`district (ECF No. 43-1 at 4), and employees with knowledge
`regarding Amazon’s “sales, finance, and marketing operations,”
`located in Seattle, Washington (id.). Additionally, Amazon
`asserts that “numerous important third-party prior art witnesses
`and sources of proof are known to be located in the Northern
`District of California.” (Id. at 5.)
`In response, B.E. argues that “transfer to the Northern
`District of California would be equally inconvenient to B.E.’s
`witnesses, none of whom is located in the Northern District of
`California.” (ECF No. 46 at 9.) Although B.E. does not
`affirmatively identify any witnesses of its own, Hoyle is the
`inventor of the patent-in-suit and a party, and it is therefore
`presumed his testimony will be necessary and material to B.E.’s
`case. B.E. states that Hoyle is located in the Western District
`of Tennessee. (Id. at 1-2.)
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`Because the convenience of party and non-party witnesses is
`given different weight, the Court will analyze the witnesses
`separately. See Azarm v. $1.00 Stores Servs., Inc., No. 3:08-
`1220, 2009 WL 1588668, at *4 (M.D. Tenn. June 5, 2009) (“[T]he
`convenience of potential non-party witnesses, who are not
`subject to the control of the parties, is a particularly weighty
`consideration, because it is generally presumed that party
`witnesses will appear voluntarily in either jurisdiction, but
`non-party witnesses, with no vested stake in the litigation, may
`not.”).
`1. Party Witnesses
`
`Amazon asserts that “[t]he engineers most knowledgeable
`about the design, developments, and operation of the accused
`Kindle products work in Amazon’s facility in Cupertino,
`California.” (Dean Decl., ECF No. 43-2, ¶ 4; see also ECF No.
`43-1 at 4.) Amazon also asserts that its employees with
`knowledge of its “U.S. sales, finance, and marketing operations”
`are located in Seattle, Washington. (Dean Decl., ECF No. 43-2,
`¶ 5; see also ECF No. 43-1 at 4.) In its Reply, Amazon defends
`its general identification of potential employee-witnesses by
`stating that identifying its witnesses with more specificity at
`this early stage would be “premature and prejudicial.” (ECF No.
`49 at 6.)
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`Amazon indicates that the engineers that are likely
`witnesses are “important to Amazon’s business and their absence
`for significant periods of time would adversely affect Amazon’s
`operations.” (Dean Decl., ECF No. 43-2, ¶ 4; see also ECF No.
`43-1 at 9.) Amazon does not, however, provide any evidence
`showing that these potential employee-witnesses, or any other
`employee-witnesses located in Seattle, will be unwilling to
`testify in this district if asked to do so. See Esperson, 2010
`WL 4362794, at *8. Moreover, courts have noted that “normally a
`corporation is able to make its employees available to testify
`when needed.” Clark v. Dollar Gen. Corp., No. 3-00-0729, 2001
`U.S. Dist. LEXIS 25975, at *9 (M.D. Tenn. Mar. 6, 2001); see
`also Zimmer Enters. v. Atlandia Imps., Inc., 478 F. Supp. 2d
`983, 991 (S.D. Ohio Mar. 14, 2007) (finding that the convenience
`of witnesses who are employees “will not ordinarily be
`considered, or at least, that the convenience of such employees
`will not generally be given the same consideration as is given
`to other witnesses”). Accordingly, it appears that Amazon’s
`employees will be able to attend absent any evidence to the
`contrary.
`The Court agrees that Amazon’s employees related to the
`development and operation of the accused products are located in
`the Northern District of California, and that their testimony is
`likely material. Amazon, however, has not indicated how many
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`employees it would be inclined to call as potential witnesses
`and has not provided any indication of the necessity of those
`employees to its business. Amazon stated generally that its
`operation would be “adversely affected” by employee absence for
`“significant periods of time,” but the Court has no indication
`as to what constitutes either “adverse” effects or a
`“significant period of time.” As a result, the Court cannot
`assess the degree to which Amazon’s business would be disrupted
`compared to the disruption B.E. will endure due to its CEO’s
`absence should the case be transferred. Accordingly, the Court
`finds transfer would only shift the inconvenience to B.E. See
`McFadgon, 2005 WL 3879037, at *2.
`Despite showing the materiality of the testimony of its
`proposed employee-witnesses, Amazon does not satisfy its burden.
`Amazon argues that due to the distance between Memphis and the
`Northern District of California, approximately 1700 miles, and
`the distance between Memphis and Seattle, approximately 2400
`miles, travel to Memphis would be inconvenient and disruptive.
`(ECF No. 43-1 at 8-9.) Yet, the same is true for B.E.’s
`witnesses, which B.E. asserts do not reside in the transferee
`district. (ECF No. 46 at 9.) Therefore, because § 1404(a)
`provides for transfer “to a more convenient forum, not to a
`forum likely to prove equally convenient or inconvenient,”
`distance of travel for employee witnesses does not weigh in
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`favor of transfer. Hunter Fan, 2006 WL 1627746, at *2 (citing
`Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964)).
`Amazon further argues that because it intends to call
`multiple employee-witnesses with testimony central to the claims
`at issue and because B.E. likely has only one witness, Hoyle,
`this factor weighs in favor of transfer. (ECF No. 43-1 at 9-
`10.) Amazon states, “the disruption to the large number of
`employees from Amazon . . . who may be forced to leave their
`homes and jobs to testify in Tennessee is hardly offset by any
`inconvenience to Mr. Hoyle, who has an interest in this
`litigation, if he must travel to California.” (Id. at 10.)
`While B.E. did not specifically identify any witnesses, it is
`presumed that Hoyle, as CEO and inventor of the patent-in-suit,
`will be a key witness. B.E., however, does not have the burden
`to identify more witnesses for the purposes of this Motion.
`Despite B.E. not identifying any witnesses, Amazon’s general
`identification of material witnesses who are Amazon employees
`does not satisfy its burden on this factor. A simple numerical
`advantage is insufficient on the issues raised by a motion to
`transfer. As a result, the witness-convenience factor does not
`weigh in favor of transfer.
`Moreover, B.E. argues that “[i]t is likely that Amazon’s
`California-based employees will be deposed in California where
`B.E.’s lead counsel is based.” (ECF No. 46 at 12.) This
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`further indicates that the witness-convenience factor does not
`weigh in favor of transfer. See Hunter Fan, 2006 WL 1627746, at
`*2 (finding relevant that the plaintiff planned to take
`depositions of the defendant’s witnesses in California in
`determining that the witness convenience factor did not favor
`transfer).
`2. Non-Party Witnesses
`While convenience to party witnesses is an important
`consideration, “it is the convenience of non-party witnesses,
`rather than employee witnesses . . . that is the more important
`factor and is accorded greater weight.” Steelcase Inc. v. Smart
`Techs., 336 F. Supp. 2d 714, 721 (W.D. Mich. Mar. 5, 2004)
`(citation omitted) (internal quotation marks omitted).
`Amazon asserts that, at the time of the filing of its
`Motion, it had identified “at least twelve prior art patents
`with clear ties to companies . . . or inventors in the Northern
`District of California.” (ECF No. 43-1 at 11.) Amazon states
`that in order to “prepare its defenses,” it “will need to gather
`documents and obtain testimony from these individuals and
`companies in California.” (Id.) Amazon further contends that
`if the case remains in the transferor district, it would “be
`forced to present critical prior art testimony trough deposition
`transcript instead of live testimony – which will prejudice its
`ability to put on an effective defense to the jury.” (Id.; see
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`also ECF No. 49 at 8.) Amazon finally asserts that it would be
`unable to secure the attendance of these potential prior-art
`witnesses by subpoena if the case remains in the transferor
`district and that it is “highly doubtful” that these witnesses
`would be “willing to voluntarily travel across the country to
`testify at trial in Tennessee.” (ECF No. 49 at 8.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Amazon has not established that the “third party testimony will
`be material or important.” (ECF No. 46 at 12.) B.E. asserts
`that Amazon has not stated the “relevance, materiality, and
`importance” of the non-party witnesses’ testimony. (Id. at 13-
`14.) B.E. further argues that prior-art testimony is “almost
`certain to be severely limited at the time of trial” and,
`therefore, such testimony does not weigh in favor of transfer.
`(Id. at 12.) Additionally, B.E. contends that Amazon has
`“fail[ed] to establish the current locations of any of the
`inventors,” and notes that “three of the patents [listed as
`prior art in Amazon’s Motion] list inventors that reside in
`Oregon.” (Id. at 13.)
`The availability of compulsory process for unwilling
`witnesses is a consideration closely related to the convenience-
`of-witnesses factor and the costs of procuring the witness, and
`therefore is an important consideration for the Court. See,
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`e.g., In re Acer, 626 F.3d at 1255; Rinks, 2011 WL 691242, at
`*4. Whether this factor should be given considerable weight
`depends on the materiality of the testimony to the resolution of
`the case. Rinks, 2011 WL 691242, at *4. A federal court in the
`Northern District of California would be able to compel the
`prior-art witnesses residing in that district or within the
`state of California to testify at trial. See Fed. R. Civ. P.
`45(b)(2); Brackett v. Hilton Hotels Corp., 619 F. Supp. 2d 810,
`821 (N.D. Cal. 2008) (“The California district courts have the
`power to subpoena witnesses throughout the state pursuant to
`[Federal Rule of Civil Procedure] 45(b)(2)(C) . . . .”). In
`contrast, the prior-art witnesses would not be subject to the
`subpoena power in the Western District of Tennessee, see Fed. R.
`Civ. P 45(c)(3)(A)(ii), but would be available for deposition in
`the Northern District of California if unwilling to testify in
`this District. Therefore, the testimony of such witnesses
`potentially would “not be live and therefore could be less
`persuasive.” Rinks, 2011 WL 691242, at *4.
`The Court finds that Amazon has met its burden to show the
`nature of the third-party witnesses testimony, and that the
`testimony is likely material to Amazon’s invalidity and non-
`infringement contentions. Amazon, however, has only stated
`generally that depositions of non-party witnesses would be
`inadequate and live testimony from non-party witnesses required.
`
`
`
`17
`
`

`
`Case 2:12-cv-02767-JPM-tmp Document 57 Filed 07/19/13 Page 18 of 28 PageID 627
`
`To the extent the non-party witnesses’ testimony may be
`presented by deposition, witness inconvenience would not be an
`issue. Amazon states that these prior-art witnesses will be
`necessary for trial, but recognizes that “likely many more” non-
`party witnesses will be necessary. (ECF No. 43-1 at 11.) This
`general statement relating to the number of non-party witnesses,
`combined with the general statement that without transfer Amazon
`would be forced to present “critical prior art testimony through
`deposition transcript instead of live testimony” which would
`“prejudice its ability to put on an effective defense to the
`jury,” is not sufficient to allow the Court to determine (1) the
`number of non-party witnesses Amazon requires; and (2) whether
`live testimony of these non-party witnesses is necessary.
`Further, Amazon is only able to estimate that it is “highly
`doubtful” that any of the non-party witnesses would be unwilling
`to testify in this District if asked to do so. As a result,
`this factor weighs only slightly in favor of transfer.
`B. Convenience of the Parties
`Amazon argues that the convenience of the parties requires
`the Court transfer this action to the Northern District of
`California. (ECF No. 43-1 at 1-2.) While Amazon organizes its
`arguments somewhat differently than the Court, the Court finds
`the considerations relevant to the convenience-of-the-parties
`
`
`
`18
`
`

`
`Case 2:12-cv-02767-JPM-tmp Document 57 Filed 07/19/13 Page 19 of 28 PageID 628
`
`factor are the location of the sources of proof and the parties’
`financial hardships due to litigation in the chosen forum.
`1. Location of Sources of Proof
`Amazon argues that all of its “relevant documents,” are
`located in either the transferee district or Seattle,
`Washington. (ECF No. 43-1 at 7.) Amazon states that its
`“[t]echnical documentation and computer source code related to
`the accused Kindle products – constituting the bulk of discovery
`to take place in this case – are located in the Northern
`District of California.” (Id. (citing Dean Decl., ECF No. 43-2,
`¶ 4).) Amazon states the “information related to [its] U.S.
`sales, finances, and marketing operations is maintained in
`Seattle[, Washington].” (Id. (citing Dean Decl., ECF No. 43-2,
`¶ 5).) Amazon further contends that B.E. has only produced 222
`documents in its initial disclosures relating to the conception
`and reduction to practice of the ‘290 Patent, and that “the size
`of this production belies B.E.’s claim of inconvenience,
`considering that the bulk of discovery in this case and a
`significantly greater number of documents are located in
`California or Washington at Amazon’s offices.” (ECF No. 49 at
`4.) Further, Amazon notes that these documents have already
`been produced, thus there is no ongoing inconvenience to B.E.
`relating to the sources of proof. (Id.)
`
`
`
`19
`
`

`
`Case 2:12-cv-02767-JPM-tmp Document 57 Filed 07/19/13 Page 20 of 28 PageID 629
`
`B.E. argues that, because its CEO resides in the Western
`District of Tennessee, its corporate documents and records,
`“including documents demonstrating the conception and reduction
`to practice of [the patent-in-suit],” are located in the Western
`District. (ECF No. 46 at 8, 14-16.) B.E. notes that while some
`of Amazon’s sources of proof are located in the Northern
`District of California, other sources of proof are located in
`Washington, and B.E.’s own sources of proof are located in
`Tennessee and have been maintained there for years. (Id. at
`14.) B.E. also contends that “the location of relevant
`documentary evidence is increasingly less important in deciding
`motions to transfer,” and that because documents can be
`exchanged electronically the weight given this factor should be
`minimal. (Id. at 15.) B.E. finally argues that this factor
`does not weigh in favor of transfer because “it can be expected
`that Amazon will eventually produce its documents to B.E.’s lead
`counsel in California, not to B.E. in Tennessee.” (Id.)
`As an initial matter, the Court disagrees with B.E.’s
`contention that advances in electronic document transfer reduce
`the importance of the location-of-sources-of-proof factor. This
`notion has been expressly rejected by the Federal Circuit. See,
`e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224
`(Fed. Cir. 2011) (reversing a district court that did not
`consider the factor, stating, “While advances in technology may
`
`
`
`20
`
`

`
`Case 2:12-cv-02767-JPM-tmp Document 57 Filed 07/19/13 Page 21 of 28 PageID 630
`
`alter the weight given to these factors, it is improper to
`ignore them entirely”); In re Genentech, Inc., 566 F.3d 1338,
`1345-46 (Fed. Cir. 2009) (finding clear error where a district
`court “minimized the inconvenience of requiring the petitioners
`to transport their documents by noting that ‘[t]he notion that
`the physical location of some relevant documents should play a
`substantial role in the venue analysis is somewhat antiquated in
`the era of electronic storage and transmission’” (quoting
`Sanofi-Aentis Deutschland GmbH v. Genentech, Inc., 607 F. Supp.
`2d 769, 777 (E.D. Tex. 2009))).
`The Court agrees that it is likely that the sheer volume of
`documents Amazon has in its possession outnumbers the patent-
`related documents in B.E.’s possession, and that B.E. has
`already produced documents related to the conception and
`reduction to practice of the ‘290 Patent, but the Court
`disagrees that this is enough to tip the balance in favor of
`transfer. The Court finds that both parties maintain documents
`in their respective districts, but that Amazon also maintains
`documents outside the transferee district; that these documents
`will be integral to the proceedings; and that Amazon will be
`expected to serve its documents on B.E.’s counsel in Northern
`California, not in the Western District of Tennessee. Amazon’s
`reliance on L&P Property Management Co. v. JTMD, LLC, No. 06-
`13311, 2007 WL 295027 (E.D. Mich. Jan. 29, 2007), is misplaced.
`
`
`
`21
`
`

`
`Case 2:12-cv-02767-JPM-tmp Document 57 Filed 07/19/13 Page 22 of 28 PageID 631
`
`(See ECF No. 43-1 at 8.) In L&P Property Management, the court
`found that transfer was appropriate as all of the movant’s
`relevant documents were located in the transferee district and
`there were no relevant documents in the transferor district.
`See L&P Prop. Mgmt. Co., 2007 WL 295027, at *4. In the instant
`case, Amazon indicated that some of its relevant documents are
`located outside the transferee district, and B.E. has shown that
`its releva

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