Case 2:12-cv-02769-JPM-tmp Document 38 Filed 01/31/13 Page 1 of 22 PageID 307
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff,
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`v.
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`FACEBOOK, INC.,
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`Defendant.
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`Case No. 2:12-cv-2769 JPM tmp
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`JURY DEMAND
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`REQUEST HEARING ON MOTION
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`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO
`DEFENDANT’S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`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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`
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`Dated: January 31, 2013
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`

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`Case 2:12-cv-02769-JPM-tmp Document 38 Filed 01/31/13 Page 2 of 22 PageID 308
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`TABLE OF CONTENTS
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`Page
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` INTRODUCTION ............................................................................................................ 1
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`STATEMENT OF FACTS ................................................................................................ 2
`
`A.
`
`B.
`
`B.E. Technology, L.L.C ......................................................................................... 2
`
`B.E. v. Facebook .................................................................................................... 2
`
`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
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`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
`
`A.
`
`B.
`
`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 4
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`Private Factors Favor B.E.’s Choice of Forum ...................................................... 7
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`1.
`
`2.
`
`3.
`
`4.
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`Convenience of the Parties Weighs Against Transfer ............................... 7
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`Convenience of the Witnesses Weighs Against Transfer .......................... 8
`
`a.
`
`b.
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`Party Witnesses .............................................................................. 9
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`Non-Party Witnesses .................................................................... 10
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`Location of Sources of Proof ................................................................... 12
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`Facebook Would Not Be Materially Burdened Bearing The
`Expense of Litigating in the Western District of Tennessee .................... 14
`
`C.
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`Public Factors Favor B.E.’s Choice of Forum ..................................................... 15
`
`1.
`
`2.
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`Transfer to the Northern District of California Would Delay Trial ......... 15
`
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 15
`
`CONCLUSION ................................................................................................................ 16
`
`
`I.
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`II.
`
`III.
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`IV.
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`V.
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`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`Page
`
`Adoma v. Univ. of Phoenix, Inc.,
`711 F. Supp. 2d 1142 (E.D. Cal. 2010) .....................................................................................9
`
`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) ......................................................................................13
`
`Board of Trs. v. Baylor Heading & Air Conditioning, Inc.,
`702 F. Supp. 1253 (E.D. Va. 1988) ...........................................................................................9
`
`Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623 (W.D. Mich. 2009) .................................................................................13
`
`E2Interactive, Inc. v. Blackhawk Network, Inc.,
`2010 WL 3937911 (W.D. Wis. Oct. 6, 2010) ..........................................................................15
`
`Ellipsis, Inc. v. Colorworks, Inc.,
`329 F. Supp. 2d 962 (W.D. Tenn. 2004) ..................................................................................14
`
`Esperson v. Trugreen Ltd. P’ship,
`2010 WL 4362794 (W.D. Tenn. Oct. 5, 2010) ..............................................................9, 11, 15
`
`Hanning v. New England Mut. Life Ins. Co.,
`710 F. Supp. 213 (S.D. Ohio 1989) ...........................................................................................4
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................5
`
`Hunter Fan Co. v. Minka Lighting, Inc.,
`2006 WL 1627746 (W.D. Tenn. June 12, 2006) (McCalla, J.) ....................................... passim
`
`Imagepoint, Inc. v. Keyser Indus., Inc.,
`2005 WL 1242067 (E.D. Tenn. May 25, 2005) .........................................................................4
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................11
`
`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) .......................................................................................9
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)................................................................................................13
`
`- ii -
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`TABLE OF AUTHORITIES
`(continued)
`
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ..............................................................................7
`
`Page
`
`Max Rack, Inc. v. Hoist Fitness Sys., Inc.,
`2006 WL 640497 (S.D. Ohio March 10, 2006) .......................................................................12
`
`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)..................................................................................................5
`
`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, 13
`
`Parsons v. Chesapeake & Ohio Ry. Co.,
`375 U.S. 71 (1963) ...................................................................................................................15
`
`Plough, Inc. v. Allergan, Inc.,
`741 F. Supp. 144 (W.D. Tenn. 1990) ........................................................................................3
`
`Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
`2003 WL 21244142 (W.D. Tenn. May 28, 2003) .................................................................3, 4
`
`Rinks v. Hocking,
`2011 WL 691242 (W.D. Mich. Feb. 16, 2011)................................................................ passim
`
`Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc.,
`138 F.R.D. 89 (N.D. Ohio 1991) ........................................................................................9, 11
`
`Samsung Elecs. Co. v. Rambus, Inc.,
`386 F. Supp. 2d 708 (E.D. Va. 2005) ........................................................................................9
`
`Siteworks Solutions, LLC v. Oracle Corp.,
`2008 WL 4415075 (W.D. Tenn. Sept. 22, 2008) .....................................................................14
`
`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) ....................................................................................3
`
`
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`TABLE OF AUTHORITIES
`(continued)
`
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ...................................................................................................................4
`
`Page
`
`Viron Int’l Corp. v. David Boland, Inc.,
`237 F. Supp. 2d 812 (W.D. Mich. 2002) ................................................................................10
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`STATUTES
`
`28 U.S.C. § 1404 ..........................................................................................................................1, 2
`
`28 U.S.C. § 1404(a) ...................................................................................................................3, 16
`
`Fed. R. Civ. P. 45(b)(2)..................................................................................................................11
`
`RULES
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`- iv -
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`I.
`
`INTRODUCTION.
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`This case arises from the infringement by defendant Facebook, Inc. (“Facebook”) of
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`United States Patent No. 6,628,314. This patent describes and claims inventions relating to user
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`interfaces for accessing computer applications and information to provide advertising over a
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`computer network. The inventor, Martin David Hoyle, who is also the Chief Executive Officer
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`of plaintiff B.E. Technology, L.L.C. (“B.E.”), has lived in the Western District of Tennessee
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`since 2006 and currently resides at 116 W. Viking Drive, Cordova, Tennessee, part of the City of
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`Memphis. B.E. has brought this action because Facebook has infringed B.E.’s patent in this
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`District and across the United States.
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`Relying on a business plan that is more than a decade old, Facebook has reached the
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`wrong conclusions about the location of relevant witnesses and documents and which individuals
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`play important roles in the management of B.E. Facebook also is misreads why and when Mr.
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`Hoyle moved to this District. Based on these misguided notions of B.E. and its connection to the
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`Western District of Tennessee, Facebook has asked the Court to transfer this case from the
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`inventor’s and the plaintiff company’s home District to Facebook’s home, the Northern District
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`of California. This case is not, however, like others in which plaintiffs take steps to manufacture
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`venue. The Western District of Tennessee has long been the physical location and home of B.E.
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`and its CEO, the only member of B.E. with any management responsibility since 2008.
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`Ignoring completely the relevant facts establishing Mr. Hoyle’s and B.E.’s longstanding
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`connection to this District, Facebook argues that transfer to the Northern District of California
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`would be more convenient because its global headquarters is located in Menlo Park, California
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`and its witnesses and documents can be found there. Transfer to California might be more
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`convenient for Facebook, but it would be less convenient for B.E. Transfer under 28 U.S.C. §
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`1404 requires a “more convenient forum,” not merely a “forum likely to prove equally
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`convenient or inconvenient,” or “a forum the defendant finds more to its liking.” Because
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`Facebook can offer no more, its motion to transfer should be denied.
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`II.
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`STATEMENT OF FACTS.
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`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 Patent No. 6,628,314 (the
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`“’314 patent”) (the “patent-in-suit”). Id. ¶ 7. Mr. Hoyle has been B.E.’s Chief Executive Officer
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`since 2008. Id. ¶ 6. Since then, he has been the sole member of B.E. with any management
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`responsibility. Id. He previously held other positions with B.E., including serving as its
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`President from 1997 to 2001. Id. Mr. Hoyle is the named inventor of the patent-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.
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`B.
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`B.E. v. Facebook.
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`B.E. filed its Complaint in this matter on September 7, 2012. D.E. 1. Facebook filed its
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`Answer on December 31, 2012 admitting that venue is procedurally proper. D.E. 27 at 2. This
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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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`is one of nineteen cases B.E. has filed in the Western District of Tennessee for the infringement
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`of the patent-in-suit and two related patents not asserted against Facebook. The defendants in
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`these cases include several of the world’s most sophisticated technology companies, each of
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`which regularly conducts business on a massive scale in this District.
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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
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`considering convenience and fairness.” Kerobo v. Southwestern Clean Fuels Corp., 285 F.3d
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`531, 537 (6th Cir. 2002) (internal quotes omitted). The “balance of convenience must weigh
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`heavily in favor of the transfer.” Nationwide Mut. Life Ins. v. Koresko, 2007 WL 2713783, at *5
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`(S.D. Ohio Sept. 14, 2007).
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`“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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`(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
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`the convenience of potential witnesses, as well as other public-interest concerns, such as
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`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
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`Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 30 (1988).
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`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 Facebook infringes there, just as it does in this District, and
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`Facebook is based in the Northern District of California. The relevant question presented by
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`Facebook’s motion is therefore whether Facebook has met its high burden to establish that the
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`Northern District of California is “a more convenient forum,” not merely an “equally convenient
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`or inconvenient forum” when compared to the Western District of Tennessee. Van Dusen v.
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`Barrack, 376 U.S. 612, 645-46 (1964). Facebook has not made that showing.
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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.
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`Co., 710 F. Supp. 213, 214-15 (S.D. Ohio 1989) (“considerable weight”). The Western District
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`of Tennessee is B.E.’s principal place of business and its Chief Executive Officer, who is the
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`named inventor and only managing member of B.E., lives here. B.E.’s choice of forum should
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`be accorded substantial weight.
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`Facebook argues that “B.E.’s activities in this District are insubstantial and recent, so the
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`Court should disregard the contacts in its transfer analysis.” D.E. 30 at 2. That is not true.
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`Unlike the cases on which Facebook relies where the plaintiffs’ contacts with the chosen forum
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`were recent or manufactured for the purpose of litigation, Mr. Hoyle has been physically present
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`in this District since 2006, and B.E. since at least 2008. Compare Hoyle Decl. ¶¶ 2-7 with In re
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`Microsoft Corp., 630 F.3d 1361, 1362 (Fed. Cir. 2011) (“[Plaintiff] is operated from the United
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`Kingdom by the patent’s co-inventor and company’s managing member” and employed no
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`individuals at its office in the Eastern District of Texas.); In re Hoffman-La Roche, Inc., 587 F.3d
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`1333, 1336-37 (Fed. Cir. 2009) (“[T]here appears to be no connection between this case and the
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`Eastern District of Texas except that in anticipation of this litigation, [plaintiff’s] counsel in
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`California converted into electronic format 75,000 pages of documents demonstrating conception
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`and reduction to practice and transferred them to the offices of its litigation counsel in Texas.”);
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`In re Zimmer Holdings, 609 F.3d 1378, 1381 (Fed. Cir. 2010) (“[Plaintiff] transported copies of
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`its patent prosecution files from Michigan to its Texas office space, which it shares with another
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`of its trial counsel’s clients.”). B.E.’s contacts with the forum were not manufactured for
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`litigation and as a result, its choice of forum is entitled to “substantial weight.”
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`Facebook makes a number of baseless assertions about Mr. Hoyle and B.E. in an
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`apparent attempt to manufacture a forum shopping narrative where none exists. For example,
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`despite access to Mr. Hoyle’s previously filed declarations opposing the transfer motions of other
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`B.E. defendants, Facebook suggests that Mr. Hoyle is a long-time resident of New Orleans and
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`only bought a house in Cordova to establish contacts in the District for the purpose of this
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`lawsuit. D.E. 30 at 13. Mr. Hoyle is not a recent transplant to the Western District of Tennessee.
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`Nor was his move to the District, six years before the filing of this action, the first step in a slow-
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`developing scheme to construct the appearance of a connection to the forum. See Hoyle Decl.,
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`¶¶ 2, 4.
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`Facebook also wrongly states that the “focal point[s]” of B.E.’s documents and witnesses
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`are Michigan and New Orleans. D.E. 30 at 8; see also id. at 2 (“[M]ost (or all) of B.E.’s
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`documents and witnesses likely will be found in Michigan and Louisiana—not Tennessee.”).
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`The physical location of B.E.’s records, including documents demonstrating the conception and
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`reduction to practice of Mr. Hoyle’s inventions, is the Western District of Tennessee. Mr. Hoyle,
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`as CEO and inventor, has physical possession of these materials. None are in Louisiana, and
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`few, if any, documents relevant to issues in this action are located in Michigan. Facebook’s
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`apparent ignorance of these publicly available facts might be excused as unfortunate inattention
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`to detail; but its naked assertions to the contrary are inexcusable.
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`Finally, Facebook points out that B.E. “only registered to do business in Tennessee one
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`day before it filed suit.” D.E. 30 at 13. B.E. does not rely on the simple fact that it is registered
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`to conduct business in Tennessee as a basis for establishing B.E.’s connection to the District.
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`B.E. registered because it has a connection to Tennessee; it did not register to establish a
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`connection. If the timing of B.E.’s registration is to be questioned, it should be understood that
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`the registration was made after Mr. Hoyle chose to remain in Tennessee, rather than return to
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`Louisiana. Hoyle Decl. ¶ 4. When B.E. was preparing to file this action and Mr. Hoyle
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`discovered that B.E. had not registered to do business in Tennessee, the registration was made.
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`Id. ¶ 8. Regardless, B.E. does not contend that its contacts with the forum are established by its
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`registration.
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`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
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`required to evaluate private and public factors in determining whether to grant Facebook’s
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`motion. “The private interests of the parties that courts consider when determining whether to
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`transfer a case include: the convenience of the parties, the convenience of witnesses, the location
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`of sources of proof, where the operative facts occurred, the relative ability of litigants to bear
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`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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`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. Facebook
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`does not explain how it will be inconvenienced by conducting litigation in Tennessee. Indeed, it
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`is reasonable to require companies with the wealth of Facebook to litigate in jurisdictions in
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`which they regularly conduct business. See Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
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`1997 WL 476356, at *4 (E.D. Pa. Aug. 20, 1997) (finding it reasonable to force a public
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`company with “$300 million a year in sales and approximately $216 million in current assets, to
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`travel to places where it is subject to jurisdiction in order to defend its corporate interests”).
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`Facebook is a public company with the financial capacity to litigate in Tennessee. Facebook
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`reported for the fiscal quarter ending September 30, 2012 that it generated $1,262,000,000 in
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`revenue. Declaration of James Lin (“Lin Decl.”) Ex. A. Facebook further reported
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`$16,038,000,000 in total current assets, including $2,478,000,000 in cash and cash equivalents.
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`As of January 28, 2013, Facebook had a market capitalization of $70,340,000,000, and, to
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`defend it in this action, it has retained lawyers from San Francisco, Palo Alto, Colorado, and
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`Nashville. It is doubtful that Facebook will suffer hardship or inconvenience by litigating in the
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`Western District of Tennessee.
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`2.
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`Convenience of the Witnesses Weighs Against Transfer.
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`Facebook argues that the “Northern District of California is far more convenient for all of
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`Facebook’s witnesses” because they reside there. D.E. 30 at 11. By the same logic, transfer to
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`the Northern District of California would be equally inconvenient to B.E.’s witnesses because
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`none of them reside there. Facebook predicts that B.E.’s witnesses will hail from Michigan and
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`Louisiana.2 See D.E. 30 at 8. Facebook is wrong. Mr. Hoyle is B.E.’s CEO and the inventor of
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`the patent-in-suit. Mr. Hoyle will be the key trial witness for B.E. B.E. has no witnesses in
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`Louisiana, and at this stage of the litigation, B.E. cannot identify any reason for a Michigan-
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`based witnesses to testify. Facebook, of course, cannot either.
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`Facebook does not offer enough admissible evidence about its witnesses, what they will
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`say, and why they are important to this case to carry its burden that the Western District of
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`Tennessee is inconvenient. “To sustain a finding on [the convenience of the witnesses] . . . the
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`party asserting witness inconvenience ‘has the burden to proffer, by affidavit or otherwise,
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`sufficient details respecting the witnesses and their potential trial testimony to enable the court to
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`2 Facebook argues that the case should be transferred to California because the cost of attendance
`for “the rest of B.E.’s party witnesses” will be the same in the Western District of Tennessee as
`the Northern District of California because airfare from Michigan and Louisiana to either
`Memphis or San Francisco is approximately the same. See D.E. 30 at 11-12. B.E. has no
`witnesses located in Louisiana, and is unaware of any “third-party witnesses with knowledge of
`B.E.’s business operations located in New Orleans,” as Facebook proclaims. Id. at 12.
`Similarly, B.E. is unlikely to call any trial witnesses from Michigan, where B.E. previously
`maintained a registered office. Hoyle Decl. ¶ 5. The only relevant comment Facebook makes
`about the costs of attendance is its admission that “[c]osts of attendance for Mr. Hoyle will
`increase if this litigation is transferred.” D.E. 30 at 11. Because those increased costs will
`impose a financial burden on B.E. and Mr. Hoyle, see infra Section IV.B.4, this case should not
`be transferred to the Northern District of California.
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`Case 2:12-cv-02769-JPM-tmp Document 38 Filed 01/31/13 Page 14 of 22 PageID 320
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`assess the materiality of evidence and the degree of inconvenience.’” Rinks v. Hocking, 2011
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`WL 691242, at *3 (W.D. Mich. Feb. 16, 2011) (quoting Koh v. Microtek Int’l, Inc., 250 F. Supp.
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`2d 627, 636 (E.D. Va. 2003)); Samsung Elecs. Co. v. Rambus, Inc., 386 F. Supp. 2d 708, 718
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`(E.D. Va. 2005) (same). District courts typically require affidavits or declarations that contain
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`admissible evidence setting forth “who the key witnesses will be and what their testimony will
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`generally include.” Rinks, 2011 WL 691242, at *3 (quoting Adoma v. Univ. of Phoenix, Inc.,
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`711 F. Supp. 2d 1142, 1151 (E.D. Cal. 2010)); see also Board of Trs. v. Baylor Heading & Air
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`Conditioning, Inc., 702 F. Supp. 1253, 1258 (E.D. Va. 1988) (“Witness convenience . . . cannot
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`be assessed in the absence of reliable information identifying the witnesses involved and
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`specifically describing their testimony.”). Facebook provides none of that.
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`a.
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`Party Witnesses.
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`Facebook claims that its employees who are likely to be witnesses would be
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`inconvenienced if the case remains in Tennessee, but offers no particularized information
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`enabling the Court to ascertain how much weight to give the claim of inconvenience. Facebook
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`fails to identify any witnesses by name, position title, location, the subject matter on which they
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`will testify, or the burdens they would endure by traveling to Tennessee to testify. Facebook
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`merely states that the “vast majority of Facebook employees knowledgeable about the design,
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`development, and operation of the www.facebook.com website are located at Facebook’s Menlo
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`Park headquarters.” Declaration of Jeremy Jordan (“Jordan Decl.”) ¶ 4. “[A] party that ‘fails to
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`identify the witnesses’ and ‘what their testimony would be’ cannot establish that a particular
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`forum is inconvenient.” Esperson v. Trugreen Ltd. P’ship, 2010 WL 4362794, at *8 (W.D.
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`Tenn. Oct. 5, 2010) (quoting Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D.
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`89, 93 (N.D. Ohio 1991), aff’d per curiam, 22 F.2d 1104 (6th Cir. 1994)). Facebook’s
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`nonspecific representations concerning witness inconvenience do not meaningfully aid in the
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`evaluation of this factor. 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
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`WL 691242 at *3 (citing Viron Int’l Corp. v. David Boland, Inc., 237 F. Supp. 2d 812, 816
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`(W.D. Mich. 2002)).
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`Facebook argues that its employees “would not incur any appreciable travel costs
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`associated with appearing at trial,” if it were held in the Northern District of California. D.E. 30
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`at 12. But Facebook fails to offer any admissible evidence that it will not cover any travel
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`expenses of its employee witnesses, or that Facebook or its employee witnesses are financially
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`incapable of bearing the travel costs from California to Tennessee.
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`Finally, Facebook has not shown that all of its witnesses will necessarily be forced to
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`testify in Tennessee. Typically, though not always, depositions are taken in locations convenient
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`for the witnesses or subject to agreements between the parties mindful of witness convenience.
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`It is likely that Facebook’s California-based employees will be deposed in California where
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`B.E.’s lead counsel is based. See Hunter Fan, 2006 WL 1627746, at *2 (witness convenience
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`does not favor transfer where plaintiff “plans to take the depositions of witnesses who are
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`California residents, including Defendant’s employees, in California”).
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`b.
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`Non-Party Witnesses.
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`Facebook next argues that the case should be transferred because third-party witnesses,
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`including “at least nine individuals who possess knowledge regarding potentially invalidating
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`prior art,” are located outside the Western District of Tennessee. See D.E. 30 at 5. While the
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`convenience of third party witnesses is a consideration in evaluating a motion to transfer, it is not
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`entitled to great weight where, as here, the movant fails to establish that the third party testimony
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`will be material or important. See Rinks, 2011 WL 691242, at *3 (stating “the materiality and
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`importance of the testimony of the prospective witness” is “crucial to this inquiry”).
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`Facebook lists nine individuals, two of whom are identified as co-founders of a company
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`and seven who are identified as co-inventors on various United States patents. D.E. 30 at 5-6,
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`10. Prior art inventor testimony may not be used to vary the words of the alleged prior art and
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`admissible prior art inventor testimony is almost certain to be severely limited by the time of
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`trial. See, e.g., Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1375 (Fed. Cir. 2008)
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`(affirming order limiting prior art inventor’s testimony to the “actual words and content” of the
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`patent application). Therefore, the testimony of these so-called prior art inventors does not
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`weigh in favor of transfer.
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`Moreover, Fa