throbber
Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 1 of 29 PageID 419
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`
`
`
`B.E. TECHNOLOGY, LLC,
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`FACEBOOK, INC.,
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
` No.: 2:12-cv-02769-JPM-tmp
`
`
`ORDER DENYING MOTION TO TRANSFER VENUE
`
`
`
`Before the Court is Defendant Facebook, Inc.’s (“Defendant”
`
`or “Facebook”) Motion to Transfer Venue Pursuant to 28 U.S.C.
`§ 1404(a), filed January 10, 2013. (ECF No. 29.) For the
`reasons that follow, the Motion is DENIED.
`I. BACKGROUND
`
`This case concerns Defendant Facebook’s alleged
`infringement of United States Patent No. 6,628,314 (the “‘314
`patent”). (ECF No. 1.) Plaintiff B.E. Technology, LLC
`(“Plaintiff or “B.E.”), is the assignee of the ‘314 patent (ECF
`No. 38 at 2), currently owning “all right, title, and interest
`in the ‘314 patent, and has owned all right, title, and interest
`throughout the period” of the alleged infringement (ECF No. 1
`¶ 10).
`B.E. alleges that Facebook infringed the ‘314 patent “by
`using a method of providing demographically targeted advertising
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 2 of 29 PageID 420
`
`that directly infringes at least Claim 11 of the ‘314 patent
`either literally or under the doctrine of equivalents.” (Id.
`¶ 11.)
`B.E. filed a Complaint in this Court on September 7, 2012.
`(ECF No. 1.) Facebook filed its Answer to the Complaint on
`December 31, 2012 (ECF No. 27), and its Motion to Transfer Venue
`on January 10, 2013 (ECF No. 29). B.E. filed its Memorandum in
`Opposition to Defendant’s Motion to Transfer Venue on January
`31, 2013. (ECF No. 38.) Facebook filed an Amended Answer on
`February 8, 2013. (ECF No. 44.) With leave of Court, Facebook
`filed a Reply Memorandum in Support of Its Motion to Transfer on
`February 19, 2013. (ECF No. 50.) On January 31, 2013, Facebook
`filed a Motion to Stay pending resolution of its Motion to
`Transfer Venue. (ECF No. 37.) The Court granted Facebook’s
`Motion to Stay on February 8, 2013. (ECF No. 43.)
`Facebook seeks to transfer this case to the Northern
`District of California, where its headquarters are located.
`(ECF No. 30 at 1.) To support its Motion, Facebook contends
`that its headquarters and the “vast majority of [its]
`potentially relevant documentations and witnesses” are located
`in the Northern District of California. (Id.) Further,
`Facebook asserts that it has “identified nine individuals who
`possess knowledge regarding potentially invalidating prior art
`who live in or near the Northern District of California.” (Id.)
`
`
`
`2
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 3 of 29 PageID 421
`
`B.E. opposes Facebook’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. 38 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 ‘314 patent. (ECF No. 38 at 1, 2.) Hoyle asserts he 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 that this district is B.E.’s principal
`place of business. (Id. at 5.) B.E. also argues that none of
`its witnesses are located in the Northern District of
`California. (Id. at 8.) Further, B.E. argues that its
`corporate documents, including documents relating to the
`“conception and reduction to practice” of the patent-in-suit,
`are located in this District. (Id. at 6-7.)
`II. STANDARD
`Facebook moves the Court to transfer this case to the
`Northern District of California pursuant to 28 U.S.C. § 1404(a).
`(ECF No. 29.) The statute provides that “[f]or the convenience
`of the parties and witnesses, in the interest of justice, a
`
`
`
`3
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 4 of 29 PageID 422
`
`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
`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
`
`
`
`4
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 5 of 29 PageID 423
`
`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
`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
`
`
`
`5
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 6 of 29 PageID 424
`
`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. 38 at 4-6.) 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
`(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
`
`
`
`6
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 7 of 29 PageID 425
`
`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.
`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,
`
`
`
`7
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 8 of 29 PageID 426
`
`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
`Facebook asserts that B.E. could have brought this action
`in the Northern District of California. (See ECF No. 30 at 7.)
`B.E. does not dispute this assertion, nor does it dispute that
`this action could have been brought in the Northern District of
`California. (See ECF No. 38 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 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
`
`
`
`8
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 9 of 29 PageID 427
`
`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 v. Meathe, No. 1:11-cv-178, 2011 WL
`1898238, at *3 (W.D. Mich. May 18, 2011) (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
`witnesses, and not merely the number of witnesses,” that is
`crucial to this inquiry. Rinks, 2011 WL 691242, at *3.
`
`Facebook contends that witness convenience favors transfer
`to the Northern District of California. (ECF No. 30 at 7-10;
`ECF No. 50 at 6-7.) To support this contention, Facebook
`asserts that a majority of the witnesses on which it intends to
`rely are located in the transferee district or throughout
`
`
`
`9
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 10 of 29 PageID 428
`
`California. These witnesses include Facebook employees
`“knowledgeable about the design, development, and operation of
`the www.facebook.com website” (Jordan Decl., ECF No. 30-31, ¶ 4)
`and at least nine non-party witnesses related to prior-art
`patents. (ECF No. 30 at 5-6.)
`In response, B.E. argues that “transfer to the Northern
`District of California would be equally inconvenient to B.E.’s
`witnesses because none of them reside there.” (ECF No. 38 at
`8.) B.E. identifies Hoyle, the named-inventor of the patent-in-
`suit and founder and CEO of B.E., as its key witness who is
`located in the Western District of Tennessee. (Id. at 8.) B.E.
`notes that Facebook’s assertion that there may be additional
`B.E. witnesses located in Louisiana or Michigan is false. B.E.
`claims it has no witnesses in Louisiana or Michigan and that it
`is “unaware of any third-party witnesses with knowledge of
`B.E.’s business operations located in New Orleans.” (Id. at 8
`n.2 (quoting ECF No. 30 at 12 (internal quotation marks
`omitted)).)
`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
`
`
`
`10
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 11 of 29 PageID 429
`
`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
`
`
`
`Facebook asserts that “[t]he vast majority of Facebook
`employees knowledgeable about the design, development, and
`operation of the www.facebook.com website are located at
`Facebook’s Menlo Park headquarters,” located in the transferee
`district. (Jordan Decl., ECF No. 30-31, ¶ 4.) Facebook
`recognizes that it does have one employee located in the Eastern
`District of Tennessee, but asserts that this employee does not
`have information pertinent to the instant case. (ECF No. 30 at
`4; see also Jordan Decl., ECF No. 30-31, ¶ 5.) In its Reply,
`Facebook defends its general identification of potential
`employee-witnesses by stating, “courts may infer that witnesses
`are located near the center of the allegedly infringing
`activities, and that witnesses involved in design and
`development of accused products are material to the transfer
`analysis.” (ECF No. 50 at 7 (citing Koh v. Microtek, Int’l,
`Inc., 250 F. Supp. 2d 627, 636-37 (E.D. Va. 2003)).) Facebook
`also contends that B.E.’s infringement allegations “implicate
`its entire business,” and as a result, “[i]t would be misleading
`for Facebook to pretend that it could identify a subset of
`
`
`
`11
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 12 of 29 PageID 430
`
`employees as most-relevant or its trial witnesses at this early
`stage of the litigation.” (Id. at 8.)
`Other than a general statement that transfer would “be
`significantly less burdensome and costly for the parties,”
`Facebook does not provide any evidence showing that any of its
`employees will be unwilling to testify in this district if asked
`to do so or how such employees will be “severely inconvenienced”
`if the case proceeds in this district. 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 Facebook’s
`employees will be able to attend absent any evidence to the
`contrary.
`Therefore, regarding Facebook employees, Facebook does not
`satisfy its burden. Facebook argues that the burden of
`proceeding in the transferee district is reduced when comparing
`its own employee witnesses and Hoyle, and the burden is the same
`
`
`
`12
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 13 of 29 PageID 431
`
`when comparing travel to either district for B.E.’s potential
`witnesses from Michigan or Louisiana. (ECF No. 30 at 9.) B.E.
`asserts, however, that it has no witnesses in Michigan or
`Louisiana, and that its key witness is Hoyle, located in the
`transferor district. Accordingly, it is equally inconvenient
`for B.E.’s identified witness – Hoyle - to travel to the
`Northern District of California. 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
`favor of transfer. Hunter Fan, 2006 WL 1627746, at *2 (citing
`Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964)).
`Facebook further argues that this factor strongly favors
`transfer because its employees are “primarily” located in the
`transferee district, whereas B.E. only identified one witness,
`Hoyle, who is also an interested party. (ECF No. 30 at 8.)
`Facebook asserts that Hoyle’s “purported inconvenience . . . is
`minor when balanced against the cost and inconvenience to
`Facebook’s potentially numerous party witnesses with knowledge
`of its accused products.” (ECF No. 50 at 7.) Although Facebook
`does not specifically list its witnesses, and though its
`assertion is imprecise as to the materiality of the witnesses’
`testimony, it is not asserted that their testimony will not be
`relevant and material in this case. Facebook’s general
`
`
`
`13
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 14 of 29 PageID 432
`
`statement, however, that it believes material witnesses are
`located in California does not aid the court in assessing (1)
`what the testimony of such additional material witnesses will
`be; (2) whether such witnesses will be unable to attend; or (3)
`whether and to what extent such witnesses will be inconvenienced
`by testifying in this district.
`Facebook relies on a United States District Court for the
`Eastern District of Virginia case, Koh v. Microtek
`International, Inc., 250 F. Supp. 2d 627 (E.D. Va. 2003), for
`the proposition that although a motion to transfer must normally
`contain specifics as to the “names, titles and locations of
`witnesses and the content of their testimony,” that district
`courts can infer witnesses are located near the infringing
`activities and “that witnesses involved in design and
`manufacture of the accused products are material to the transfer
`analysis.” (ECF No. 50 at 7 (citing Koh, 250 F. Supp. 2d at
`636-37) (internal quotation marks omitted).) Recognizing that
`Koh is persuasive authority, the Court also notes that Facebook
`misapplies it to the facts of the instant case. In Koh, the
`court stated, “although the Movants have not set out
`specifically any potential testimony, they have identified one
`individual who is located in California and two entities located
`in California, which participated in conception and reduction to
`practice of the accused product.” Koh, 250 F. Supp. 2d at 637.
`
`
`
`14
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 15 of 29 PageID 433
`
`In the instant case, Facebook has not identified specific
`witnesses that “participated in [the] conception and reduction
`to practice of the accused products.” To the contrary, Facebook
`has only generally asserted that the “vast majority of [its]
`employees knowledgeable about the design, development, and
`operation” if its website are located in the transferee
`district, leaving open the possibility that material witnesses
`may be located elsewhere. (Jordan Decl., ECF No. 30-31, ¶ 4.)
`Facebook cannot rely on such “bare allegations” to satisfy its
`burden. Esperson, 2010 WL 4362794, at *8.
`While B.E. did not specifically identify any witnesses
`beyond Hoyle, B.E. does not have the burden to do so. Despite
`B.E. not identifying any individuals beyond Hoyle, Facebook’s
`general identification of material witnesses who are Facebook
`employees does not satisfy its burden on this factor. A simple
`numerical advantage is insufficient on the issues raised by a
`motion to transfer.
`Moreover, B.E. argues that “[i]t is likely that Facebook’s
`California-based employees will be deposed in California where
`B.E.’s lead counsel is based.” (ECF No. 38 at 10.) This
`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
`
`
`
`15
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 16 of 29 PageID 434
`
`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).
`Facebook argues that it intends to rely on at least nine
`non-party witnesses who have knowledge of prior art related to
`the patent-in-suit. (ECF No. 30 at 5-6, 10-11; ECF No. 20 at 8-
`9.) Facebook states that it intends to subpoena “these
`individuals for documents and testimony” to “develop its
`invalidity defenses.” (ECF No. 30 at 6.) Facebook also asserts
`that one additional prior-art witness lives outside the subpoena
`power of California, but because he lives in Las Vegas, Nevada -
`near the transferee district - it is “more likely that he would
`voluntarily appear to testify at trial if this litigation is
`adjudicated in the Northern District [of California].” (Id. at
`11.) To support its contention, Facebook submits these nine
`prior-art witnesses and their last-known addresses based on
`webpages and documents filed with the United States Patent and
`Trademark Office (Id. at 10-11 (citing ECF Nos. 30-16 through
`
`
`
`16
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 17 of 29 PageID 435
`
`30-27).) Facebook claims that it will not be able to compel
`these witnesses to testify at trial if the case remains in
`Tennessee, but will be able to compel eight of the nine
`witnesses to testify at trial in the Northern District of
`California. (Id. at 10-11.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Facebook has not established that the “third party testimony
`will be material or important.” (ECF No. 38 at 10.) B.E.
`argues that Facebook has not stated the “relevance, materiality,
`and importance” of the third-party witnesses’ testimony. (Id.
`at 12.) 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 10-11.)
`B.E. acknowledges that Facebook has identified specific
`third-party witnesses regarding prior art and that those living
`outside the transferor district would not be subject to its
`subpoena power, but states that “Facebook does not address the
`relevance, materiality, and importance of the testimony any
`witness who allegedly could not be subpoenaed might give.” (Id.
`at 11-12.) Further, B.E. argues that Facebook “fails to
`establish that any of these individuals have themselves
`expressed that they would be inconvenienced by the case
`
`
`
`17
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 18 of 29 PageID 436
`
`remaining in the Tennessee or that they would not attend trial
`if [it] takes place here.” (Id. at 11.)
`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,
`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
`majority of the identified prior-art witnesses to testify at
`trial. See Fed. R. Civ. P. 45(b)(2). In contrast, the prior-
`art witnesses would be subject to the subpoena power in this
`district, 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 Facebook has met its burden to show
`the nature of the third-party witnesses testimony, and that the
`testimony is likely material to Facebook’s invalidity and non-
`infringement contentions. To the extent the non-party
`
`
`
`18
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 19 of 29 PageID 437
`
`witnesses’ testimony may be presented by deposition, witness
`inconvenience would not be an issue. While Facebook sets forth
`the fact that the prior-art witnesses would not be subject to
`subpoena in the Western District of Tennessee, this general
`statement is not sufficient to allow the Court to determine
`whether live testimony of Facebook’s non-party witnesses is
`necessary. As a result, this factor weighs only slightly in
`favor of transfer.
`B. Convenience of the Parties
`Facebook argues that the Northern District of California is
`“clearly more convenient.” (ECF No. 30 at 8.) While Facebook
`organizes its arguments somewhat differently than the Court, the
`Court finds the considerations relevant to the convenience-of-
`the-parties 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
`Facebook argues that “the vast majority of likely sources
`of proof (including documentation for all of Facebook’s service
`offerings) are located at, or accessed and managed from,
`Facebook’s headquarters” in the transferee district. (ECF No.
`30 at 3.) More specifically, Facebook contends that the “source
`code relating to the www.facebook.com website” and “[n]early all
`of the information relating to [its] general operations,
`
`
`
`19
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 20 of 29 PageID 438
`
`marketing, financials, and customer service” are located in the
`Northern District of California. (Id.)
`Additionally, Facebook presumes that B.E.’s documents are
`located in Michigan, not the Western District of Tennessee, as
`B.E.’s office address was listed on a 2011 patent application as
`Saginaw, Michigan. (ECF No. 30 at 8 (citing ECF No. 30-4 at
`PageID 158).) To further support this presumption, Facebook
`argues that the Court should infer that B.E.’s “financial
`records, tax records, and patent prosecution files all reside in
`Michigan” because Hoyle stated that B.E.’s accountant and patent
`attorney live in Michigan, B.E. maintained a registered office
`there, and B.E. “conceded” its documents located in Michigan are
`not numerous. (ECF No. 50 at 5 (quoting ECF No. 38 at 6
`(“[F]ew, if any documents relevant to issues in this action are
`located in Michigan.”)).) While recognizing that B.E. may have
`its own documents relevant to the litigation, Facebook argues
`that B.E.’s “assertion” regarding any inconvenience related to
`these sources of proof “overstates the volume of documents that
`are likely located in Tennessee.” (Id. at 6.)
`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 patents-in-suit],” are located in the
`Western District of Tennessee. (ECF No. 38 at 5, 7.) B.E.
`
`
`
`20
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 21 of 29 PageID 439
`
`notes that Facebook’s sources of proof are “maintained in data
`centers that,” based on the declaration of a Facebook litigation
`paralegal “are not necessarily located within the Northern
`District of California.” (Id. at 13 (citing Jordan Decl., ECF
`No. 30-31, ¶ 3).) Contrary to Facebook’s assertions, B.E.
`argues that its own sources of proof are located in Tennessee,
`not Michigan or Louisiana, and have been maintained in Tennessee
`for years. (Id. at 12.) 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 13.) B.E. finally argues that this factor
`does not weigh in favor of transfer because “it can be expected
`that Facebook 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
`alter the weight given to these factors, it is improper to
`ignore them entirely”); In re Genentech, 566 F.3d at 1345-46
`
`
`
`21
`
`

`
`Case 2:12-cv-02769-JPM-tmp Document 58 Filed 07/12/13 Page 22 of 29 PageID 440
`
`(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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket