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Case 2:12-cv-02772-JPM-tmp Document 44 Filed 07/19/13 Page 1 of 28 PageID 368
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
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`B.E. TECHNOLOGY, LLC,
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`Plaintiff,
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`LINKEDIN CORPORATION,
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`Defendant.
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`No.: 2:12-cv-02772-JPM-tmp
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`ORDER DENYING DEFENDANT’S MOTION TO TRANSFER VENUE
`
`Before the Court is Defendant LinkedIn Corporation’s
`(“Defendant” or “LinkedIn”) Motion to Transfer Venue Pursuant to
`28 U.S.C. § 1404(a) and for Expedited Consideration, filed
`January 3, 2013. (ECF No. 21.) For the reasons that follow,
`the Motion is DENIED.
`I. BACKGROUND
`This case concerns Defendant LinkedIn’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. 30 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).
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`B.E. alleges that LinkedIn infringed the ‘314 patent “by
`using a method of providing demographically targeted advertising
`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.) LinkedIn filed its Answer on December 31, 2012
`(ECF No. 19) and its Motion to Transfer Venue on January 3, 2013
`(ECF No. 21). B.E. filed its Response in Opposition to
`Defendant’s Motion to Transfer Venue on January 22, 2013. (ECF
`No. 30.) With leave of Court, LinkedIn filed a Reply Memorandum
`in Support of Its Motion to Transfer on February 1, 2013. (ECF
`No. 36.) On February 11, 2013, LinkedIn filed a Motion to Stay
`pending resolution of its Motion to Transfer Venue. (ECF No.
`37.) The Court granted LinkedIn’s Motion to Stay on February
`12, 2013. (ECF No. 38.)
`LinkedIn seeks to transfer this case to the Northern
`District of California, where its headquarters are located.
`(ECF No. 21-1 at 1.) To support its Motion, LinkedIn contends
`that all products and services of which it is alleged to have
`infringed were developed and have been operated from the
`Northern District of California. (Id.) LinkedIn states that
`its “employees, including engineering and financial personnel,”
`and its “relevant technical documents and computer source code
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`are located in the Northern District of California.” (Id. at 1;
`see also id. at 4-5.) Further, LinkedIn asserts that a majority
`of third-party witnesses on whom it intends to rely are also
`located in the Northern District of California. (Id. at 5.)
`B.E. opposes LinkedIn’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. 30 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. 30 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 the Western District of Tennessee
`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 7.) 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.)
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`II. STANDARD
`LinkedIn moves the Court to transfer this case to the
`Northern District of California pursuant to 28 U.S.C. § 1404(a).
`(ECF No. 21-1 at 1.) 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
`2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010). In weighing these
`statutory factors, the court may still consider the private- and
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`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
`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.
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`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
`each district).
`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. 30 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).
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`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.
`LinkedIn’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
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`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
`LinkedIn asserts that B.E. could have brought this action
`in the Northern District of California. (See ECF No. 21-1 at
`7.) B.E. does not dispute this assertion. (See ECF No. 30 at
`4.) The Court agrees with the parties that B.E. could have
`brought suit in the Northern District of California as personal
`jurisdiction over LinkedIn exists in that District. 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
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`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
`witnesses, and not merely the number of witnesses,” that is
`crucial to this inquiry. Rinks, 2011 WL 691242, at *3.
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`LinkedIn contends that witness convenience favors transfer
`to the Northern District of California. (ECF No. 21 at 9-11;
`ECF No. 36 at 5-7.) To support this contention, LinkedIn
`asserts that all of the witnesses on which it intends to rely
`are located in the transferee district. These witnesses include
`“employees, including engineering and financial personnel,” and
`numerous non-party prior-art witnesses. (ECF No. 21-1 at 1, 5;
`ECF No. 36 at 5-6.)
`In response, B.E. argues that transfer to the Northern
`District of California would be equally disruptive to its
`business and inconvenient to B.E.’s witnesses, “none of whom is
`located in the Northern District of California.” (ECF No. 30 at
`7.) 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 5-6.)
`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
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`non-party witnesses, with no vested stake in the litigation, may
`not.”).
`
`1. Party Witnesses
`LinkedIn asserts that “all of [its] potentially relevant
`witnesses . . . are located in the Northern District of
`California.” (ECF No. 21-1 at 5.) In its Reply, LinkedIn
`argues that it need not identify these potential witnesses by
`name “[b]ecause all of LinkedIn’s potential witnesses reside in
`the Northern District of California, and the topics of their
`testimony are not in doubt.” (ECF No. 36 at 6.) LinkedIn
`provided the Court with the Declaration of Ashvin Kannan, its
`Director of Engineering, which states, “Engineers who may have
`knowledge regarding any advertising features on LinkedIn’s
`website and any technology that supports those features work in
`the Mountain View[, California,] headquarters.” (Kannan Decl.,
`ECF No. 21-2, ¶ 7.)
`LinkedIn does not provide any evidence showing that any
`employees will be unwilling to testify in this district if asked
`to do so, but notes generally that the potential employee-
`witnesses will be inconvenienced due to “multi-leg flights to
`Tennessee to testify at trial, likely involving overnight stays
`away from family and work.” (ECF No. 36 at. 6-7.) See
`Esperson, 2010 WL 4362794, at *8. LinkedIn states that its
`engineers are “important” to its business and therefore their
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`“absence for significant periods of time would adversely affect
`operations.” (ECF No. 21-1 at 10.) 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
`LinkedIn’s employees will be able to attend absent any evidence
`to the contrary.
`Therefore, regarding LinkedIn employees, LinkedIn does not
`satisfy its burden. LinkedIn argues that due to the distance
`between Memphis and the Northern District of California,
`approximately 1800 miles, and the lack of direct flights between
`any of the three major airports in Northern California – San
`Jose, Oakland, or San Francisco – and Memphis, travel to Memphis
`would impose a significant inconvenience. (ECF No. 21-1 at 9-
`10.) Yet, the same is true for B.E.’s witnesses, which B.E.
`asserts do not reside in the Northern District of California.
`(ECF No. 30 at 7.) LinkedIn’s reliance on Returns Distribution
`Specialists, LLC v. Playtex Products, Inc., No. 02-1195-T, 2003
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`WL 21244142 (W.D. Tenn. May 28, 2003), for the proposition that
`this factor “weighs even more heavily in favor of transfer where
`the witnesses forced to travel are important to the defendant’s
`business and their attendance at trial and other proceedings in
`a distant forum could disrupt those operations” (ECF No. 21-1 at
`10) is misplaced. In Returns Distribution Specialists, the
`court found that this factor weighed heavily in favor of
`transfer because the defendant “presented unrefuted evidence
`that certain witnesses that it expects to call to testify at
`trial are a ‘core group of employees’ and that it would be
`severely disruptive to its business if these employees were all
`out of town at the same time.” Returns Distribution
`Specialists, 2003 WL 21244142, at *7. In the instant case, the
`Court agrees that all of LinkedIn’s employees are located in the
`transferee district, and that that their testimony is likely
`material. Unlike Returns Distribution Specialists, however,
`LinkedIn has only provided a general statement about the
`necessity of its engineers to its business and has not indicated
`how many engineers it would be inclined to call as potential
`witnesses. Further, LinkedIn’s general statement that its
`operation would “adversely affected” by employee absence for
`“significant periods of time” does not provide the Court with
`any indication as to what constitutes either “adverse” effects
`or a “significant” period of time. As a result, the Court
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`cannot assess the degree to which LinkedIn’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.
`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)).
`LinkedIn further argues that because it intends to call
`employee witnesses located in the transferee district and
`because B.E. only identified one witness, Hoyle, this factor
`weighs in favor of transfer. (ECF No. 36 at 6-7.) The Court
`acknowledges that the testimony of LinkedIn employees is likely
`material and that these employees are located in the transferee
`district. While B.E. did not specifically identify any
`witnesses beyond Hoyle, however, B.E. does not have the burden
`to do so. Despite B.E. not identifying any individuals beyond
`Hoyle, LinkedIn’s identification of all its engineers with
`“knowledge regarding any advertising features on LinkedIn’s
`website and any technology that supports those features,” and
`employees with knowledge of its “sales, finance, and marketing
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`operations” as material witnesses does not satisfy its burden on
`this factor. (Kannan Decl., ECF No. 21-2, ¶¶ 7-8.) 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 LinkedIn’s
`California-based employees will be deposed in California where
`B.E.’s lead counsel is based.” (ECF No. 30 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
`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). LinkedIn
`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 and inventors in the Northern District of California.”
`(ECF No. 21-1 at 12.) LinkedIn states that in order to
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`“prepare its defenses,” it “will need to gather documents and
`obtain testimony from these individuals and companies in
`California.” (Id. at 12.) LinkedIn 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 greatly
`undercut its ability to put on an effective defense at trial.”
`(Id.) LinkedIn 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. 36 at 8.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`LinkedIn has not established that the “third party testimony
`will be material or important.” (ECF No. 30 at 10.) B.E.
`asserts that LinkedIn has not stated the “relevance,
`materiality, and importance” of the non-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.) Additionally, B.E. contends that
`LinkedIn has “failed to establish the current locations of any
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`of the inventors or assignees,” and “has not presented any
`evidence that the inventors and assignees are unwilling to
`testify in Tennessee or how they would be inconvenienced by
`testifying 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
`prior-art witnesses residing in the 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 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
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`Case 2:12-cv-02772-JPM-tmp Document 44 Filed 07/19/13 Page 18 of 28 PageID 385
`
`potentially would “not be live and therefore could be less
`persuasive.” Rinks, 2011 WL 691242, at *4.
`The Court finds that LinkedIn has met its burden to show
`the nature of the prior-art witnesses’ testimony, and that the
`testimony is likely material to LinkedIn’s invalidity and non-
`infringement contentions. LinkedIn, however, has only stated
`generally that depositions of non-party witnesses would be
`inadequate and live testimony from non-party witnesses required.
`To the extent the non-party witnesses’ testimony may be
`presented by deposition, witness inconvenience would not be an
`issue. LinkedIn 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. 21-1 at 12.) This
`general statement relating to the number of non-party witnesses,
`combined with the general statement that without transfer
`LinkedIn would be forced to present “critical prior art
`testimony through deposition transcript instead of live
`testimony” which would “undercut its ability to put on an
`effective defense at trial,” is not sufficient to allow the
`Court to determine (1) the number of non-party witnesses
`LinkedIn requires; and (2) whether live testimony of these non-
`party witnesses is necessary. Further, LinkedIn 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
`
`
`
`18
`
`

`
`Case 2:12-cv-02772-JPM-tmp Document 44 Filed 07/19/13 Page 19 of 28 PageID 386
`
`asked to do so. As a result, this factor does weighs only
`slightly in favor of transfer.
`
`B. Convenience of the Parties
`LinkedIn argues that the “connections of this case are much
`stronger to the Northern District of California than the Western
`District of Tennessee.” (ECF No. 21-1 at 2.) While LinkedIn
`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
`
`LinkedIn argues that all of its “relevant documents,”
`“technical documentation and computer source code related to the
`accused advertising–related technology,” and “all information
`related to [its] U.S. sales, finances, and marketing operations”
`are maintained in the Northern District of California. (ECF No.
`21-1 at 8.) LinkedIn contends that B.E. has only produced 222
`documents in its initial disclosures relating to the conception
`and reduction to practice of the ‘314 Patent, and that “the size
`of this production belied 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 at LinkedIn’s offices.” (ECF No. 36 at 4.) Further,
`
`
`
`19
`
`

`
`Case 2:12-cv-02772-JPM-tmp Document 44 Filed 07/19/13 Page 20 of 28 PageID 387
`
`LinkedIn notes that as these documents have already been
`produced, there is no ongoing inconvenience to B.E. relating to
`the sources of proof. (Id.)
`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. 30 at 6, 12.) B.E. notes that while
`LinkedIn’s sources of proof are located in the Northern District
`of California, B.E.’s own sources of proof are located in
`Tennessee and have been maintained there 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 LinkedIn 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
`
`
`
`20
`
`

`
`Case 2:12-cv-02772-JPM-tmp Document 44 Filed 07/19/13 Page 21 of 28 PageID 388
`
`(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, 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 LinkedIn 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 ‘314 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; that both sets of documents will
`be integral to the proceedings; and that LinkedIn will be
`expected to serve its documents on B.E.’s counsel in Northern
`California, not in the Western District of Tennessee.
`LinkedIn’s reliance on In re Acer is misplaced. (See ECF No. 36
`
`
`
`21
`
`

`
`Case 2:12-cv-02772-JPM-tmp Document 44 Filed 07/19/13 Page 22 of 28 PageID 389
`
`at 4.) In In re Acer, the Federal Circuit found that “no party
`identified any likely source of proof” in the transferor
`district. In re Acer, 626 F.3d at 1256. To the contrary, in
`the instant case B.E. has shown that its records – which
`include, but are not necessarily limited to, “documents
`demonstrating the conception and reduction to practice of” the
`‘314 Patent - are located in Tennessee. (See ECF No. 30 at 6,
`12.) Taken together, the aforementioned facts indicate that as
`to the location of the sources of proof, the Northern District
`of California is a somewhat mo

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