Case 2:12-cv-02781-JPM-cgc Document 27 Filed 01/31/13 Page 1 of 22 PageID 181
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff/Counter-Defendant,
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`v.
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`GROUPON, INC.,
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`Defendant/Counterclaimant.
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`Case No. 2:12-cv-02781-JPM cgc
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`JURY DEMAND
`
`REQUEST HEARING ON MOTION
`
`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.
`
`
`
`Dated: January 31, 2013
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`
`

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`Case 2:12-cv-02781-JPM-cgc Document 27 Filed 01/31/13 Page 2 of 22 PageID 182
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`TABLE OF CONTENTS
`
`
`Page
`
`INTRODUCTION ............................................................................................................. 1
`
`STATEMENT OF FACTS ................................................................................................ 2
`
`A.
`
`B.
`
`B.E. Technology, L.L.C ......................................................................................... 2
`
`B.E. v. Groupon ..................................................................................................... 2
`
`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
`
`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
`
`A.
`
`B.
`
`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 4
`
`Private Factors Favor B.E.’s Choice of Forum ...................................................... 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`Convenience of the Parties Weighs Against Transfer ............................... 6
`
`Convenience of the Witnesses Weighs Against Transfer .......................... 7
`
`a.
`
`b.
`
`Party Witnesses .............................................................................. 8
`
`Non-Party Witnesses .................................................................... 10
`
`Location of Sources of Proof ................................................................... 12
`
`Groupon Would Not Be Materially Burdened Bearing The
`Expense of Litigating in the Western District of Tennessee .................... 13
`
`C.
`
`Public Factors Favor B.E.’s Choice of Forum ..................................................... 14
`
`1.
`
`2.
`
`Transfer to the Northern District of California Would Delay Trial ......... 14
`
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 15
`
`CONCLUSION ................................................................................................................ 16
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`
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`- i -
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`

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`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`Page
`
`Adoma v. Univ. of Phoenix, Inc.,
`711 F. Supp. 2d 1142 (E.D. Cal. 2010) .....................................................................................8
`
`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) ......................................................................................12
`
`Board of Trs. v. Baylor Heading & Air Conditioning, Inc.,
`702 F. Supp. 1253 (E.D. Va. 1988) ...........................................................................................8
`
`Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623 (W.D. Mich. 2009) .................................................................................12
`
`E2Interactive, Inc. v. Blackhawk Network, Inc.,
`2010 WL 3937911 (W.D. Wis. Oct. 6, 2010) ..........................................................................14
`
`Ellipsis, Inc. v. Colorworks, Inc.,
`329 F. Supp. 2d 962 (W.D. Tenn. 2004) ..................................................................................13
`
`Esperson v. Trugreen Ltd. P’ship,
`2010 WL 4362794 (W.D. Tenn. Oct. 5, 2010) ..............................................................9, 11, 14
`
`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)................................................................................................10
`
`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) .......................................................................................8
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)..........................................................................................12, 13
`
`- ii -
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`

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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, 15, 16
`
`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) .......................................................................................3
`
`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
`
`Optima, Inc. v. Republic Indus., Inc.,
`1995 WL 72430 (E.D. La. Feb. 21, 1995) ..............................................................................15
`
`Parsons v. Chesapeake & Ohio Ry. Co.,
`375 U.S. 71 (1963) ...................................................................................................................14
`
`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
`
`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) ........................................................................................8
`
`Siteworks Solutions, LLC v. Oracle Corp.,
`2008 WL 4415075 (W.D. Tenn. Sept. 22, 2008) .....................................................................13
`
`Stewart Organization, Inc. v. Ricoh Corp.,
`487 U.S. 22 (1988) .....................................................................................................................4
`
`
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`

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`Case 2:12-cv-02781-JPM-cgc Document 27 Filed 01/31/13 Page 5 of 22 PageID 185
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`TABLE OF AUTHORITIES
`(continued)
`
`
`Tuna Processors, Inc. v. Hawaii Int’l Seafood,
`408 F. Supp. 2d 358 (E.D. Mich. 2005) ....................................................................................3
`
`Page
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ...................................................................................................................4
`
`Viron Int’l Corp. v. David Boland, Inc.,
`237 F. Supp. 2d 812 (W.D. Mich. 2002) ..................................................................................9
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`STATUTES
`
`28 U.S.C. § 1404 ..............................................................................................................................1
`
`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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`Case 2:12-cv-02781-JPM-cgc Document 27 Filed 01/31/13 Page 6 of 22 PageID 186
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`
`I.
`
`INTRODUCTION.
`
`This case arises from the infringement by defendant Groupon, Inc. (“Groupon”) 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
`
`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 Groupon has infringed B.E.’s patent in this
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`District and across the United States.
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`Ignoring why and when Mr. Hoyle moved to this District and Mr. Hoyle’s connection to
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`B.E., Groupon has asked the Court to transfer this case from the inventor’s and the plaintiff
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`company’s home District to Groupon’s home, the Northern District of California. This case is
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`not, however, like others in which plaintiffs take steps to manufacture venue. The Western
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`District of Tennessee has long been the physical location and home of B.E. and its CEO who is
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`the inventor of the asserted patents.
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`Despite the relevant facts establishing Mr. Hoyle’s and B.E.’s longstanding connection to
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`this District, Groupon argues that transfer to the Northern District of California would be more
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`convenient because, even though its global headquarters is located in Chicago, Illinois, its San
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`Francisco and Palo Alto offices are the “center of gravity for the accused Groupon activities” and
`
`relevant witnesses and documents can be found there. Transfer to California might be more
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`convenient for Groupon, but it would be less convenient for B.E. Transfer under 28 U.S.C. §
`
`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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`Groupon can offer no more, its motion to transfer should be denied.
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`
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`

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`
`II.
`
`STATEMENT OF FACTS.
`
`A.
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`B.E. Technology, L.L.C.
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`B.E. is a Delaware limited liability company. Declaration of Martin David Hoyle
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`(“Hoyle Decl.”) ¶ 5. Martin David Hoyle, who goes by David, founded B.E. in 1997 to develop
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`Internet-related technologies. Id. B.E. is the assignee of United States 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. 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. Groupon.
`
`B.E. filed its Complaint in this matter on September 10, 2012. D.E. 1. Groupon filed its
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`Answer on December 31, 2012 admitting that venue is procedurally proper. D.E. 19 at 2. This
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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 Groupon. The defendants in
`
`
`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
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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.”
`
`28 U.S.C. § 1404(a). A decision to transfer venue is made “on an individual basis by
`
`considering convenience and fairness.” Kerobo v. Southwestern Clean Fuels Corp., 285 F.3d
`
`531, 537 (6th Cir. 2002) (internal quotes omitted). The “balance of convenience must weigh
`
`heavily in favor of the transfer.” Nationwide Mut. Life Ins. v. Koresko, 2007 WL 2713783, at *5
`
`(S.D. Ohio Sept. 14, 2007).
`
`“As a general rule, there is a ‘strong presumption’ in favor of the plaintiff’s selection of
`
`forum, and the plaintiff’s choice should not be altered ‘unless the defendant carries his burden of
`
`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.)
`
`(quoting Plough, Inc. v. Allergan, Inc., 741 F. Supp. 144, 148 (W.D. Tenn. 1990)) (denying a
`
`motion to transfer even though the majority of defendant’s witnesses and documents were
`
`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
`
`Processors, Inc. v. Hawaii Int’l Seafood, 408 F. Supp. 2d 358, 360 (E.D. Mich. 2005)).
`
`The threshold question on any motion to transfer is whether the plaintiff could have filed
`
`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
`
`Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 30 (1988).
`
`IV.
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`TRANSFER IS NOT APPROPRIATE.
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`B.E. agrees that its patent infringement claims could have been brought in the Northern
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`District of California because Groupon infringes there, just as it does in this District. The
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`relevant question presented by Groupon’s motion is therefore whether Groupon has met its high
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`burden to establish that the Northern District of California is “a more convenient forum,” not
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`merely an “equally convenient or inconvenient forum” when compared to the Western District of
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`Tennessee. Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964). Groupon has not made that
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`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
`
`plaintiff’s “choice of forum will be given deference”); Hanning v. New England Mut. Life Ins.
`
`Co., 710 F. Supp. 213, 214-15 (S.D. Ohio 1989) (“considerable weight”). The Western District
`
`of Tennessee is B.E.’s principal place of business and its Chief Executive Officer, who is the
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`named inventor, lives here. B.E.’s choice of forum should be accorded substantial weight.
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`Without any mention of the relevant facts, Groupon argues that B.E.’s choice of venue
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`should be disregarded because its “contacts to this district are minimal, recent, and unrelated to
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`this action.” D.E. 21-1 at 14. That is not true. Unlike the cases on which Groupon relies where
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`the plaintiffs’ contacts with the chosen forum were recent or manufactured for the purpose of
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`litigation, Mr. Hoyle has been physically present in this District since 2006, and B.E. since at
`
`least 2008. Compare Hoyle Decl. ¶¶ 2-7 with In re Microsoft Corp., 630 F.3d 1361, 1362 (Fed.
`
`Cir. 2011) (“[Plaintiff] is operated from the United Kingdom by the patent’s co-inventor and
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`company’s managing member” and employed no individuals at its office in the Eastern District
`
`of Texas.); In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1336-37 (Fed. Cir. 2009) (“[T]here
`
`appears to be no connection between this case and the Eastern District of Texas except that in
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`anticipation of this litigation, [plaintiff’s] counsel in California converted into electronic format
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`75,000 pages of documents demonstrating conception and reduction to practice and transferred
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`them to the offices of its litigation counsel in Texas.”); In re Zimmer Holdings, 609 F.3d 1378,
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`1381 (Fed. Cir. 2010) (“[Plaintiff] transported copies of its patent prosecution files from
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`Michigan to its Texas office space, which it shares with another of its trial counsel’s clients.”).
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`Mr. Hoyle is not a recent transplant to the Western District of Tennessee. Nor was his
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`move to the District, six years before the filing of this action, the first step in a slow-developing
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`scheme to construct the appearance of a connection to the forum. Moreover, the physical
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`location of B.E.’s records, including documents demonstrating the conception and reduction to
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`practice of Mr. Hoyle’s inventions, is neither a recent development nor a fictitious arrangement
`
`by counsel strategically to place important evidence in the Western District of Tennessee. Mr.
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`Hoyle, as CEO and inventor, will likely be a key B.E. witness, but Groupon makes no attempt to
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`overcome the significance of his presence in the District. B.E.’s contacts with the forum were
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`not manufactured for litigation and as a result, its choice of forum is entitled to “substantial
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`weight.”
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`Groupon seeks to undercut B.E.’s obvious connection to the District by pointing out that
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`“it was not until September 6, 2012—the day before filing the first of its Litigations here—that
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`Plaintiff even registered to do business in Tennessee.” D.E. 21-1 at 5 (emphasis in original).
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`B.E. does not rely on the simple fact that it is registered to conduct business in Tennessee as a
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`basis for establishing B.E.’s connection to the District. B.E. registered because it has a
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`connection to Tennessee; it did not register to establish a connection. If the timing of B.E.’s
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`registration is to be questioned, it should be understood that the registration was made after Mr.
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`Hoyle chose to remain in Tennessee, rather than return to Louisiana. Hoyle Decl. ¶ 4. When
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`B.E. was preparing to file this action and Mr. Hoyle discovered that B.E. had not registered to do
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`business in Tennessee, the registration was made. Id. ¶ 8. Regardless, B.E. does not contend
`
`that its contacts with the forum are established by its 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
`
`required to evaluate private and public factors in determining whether to grant Groupon’s
`
`motion. “The private interests of the parties that courts consider when determining whether to
`
`transfer a case include: the convenience of the parties, the convenience of witnesses, the location
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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.
`
`1.
`
`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
`
`of California. As previously explained, B.E. and its CEO, the inventor of the patents-in-suit,
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`reside within the District. B.E.’s corporate documents and records are here as well. Outside of
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`witness convenience, Groupon does not make an explicit argument that it will be inconvenienced
`
`by conducting litigation in Tennessee. It is reasonable to require companies with the wealth of
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`Groupon to litigate in jurisdictions in which they regularly conduct business. See Lucent Techs.,
`
`Inc. v. Aspect Telecomms. Corp., 1997 WL 476356, at *4 (E.D. Pa. Aug. 20, 1997) (finding it
`
`reasonable to force a public company with “$300 million a year in sales and approximately $216
`
`million in current assets, to travel to places where it is subject to jurisdiction in order to defend
`
`its corporate interests”). Groupon is a public company with the financial capacity to litigate in
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`Tennessee. Groupon reported for the fiscal quarter ending September 30, 2012 that it generated
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`$568,552,000 in revenue. Declaration of James Lin (“Lin Decl.”) Ex. A. Groupon further
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`reported $2,032,814,000 in total current assets, including $1,201,011,000 in cash and cash
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`equivalents. As of January 29, 2013, Groupon had a market capitalization of $3,460,000,000,
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`and, to defend it in this action, it has retained lawyers from Chicago and Memphis. It is doubtful
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`that Groupon will suffer hardship or inconvenience by litigating in the Western District of
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`Tennessee.
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`2.
`
`Convenience of the Witnesses Weighs Against Transfer.
`
`Groupon argues that the Northern District of California would be a more convenient
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`venue for its own witnesses because “the relevant engineers and employees to the accused
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`products and services work and/or reside in the Northern District of California.” D.E. 21-1 at 10.
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`By the same logic, transfer to the Northern District of California would be equally inconvenient
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`to B.E.’s witnesses, none of whom is located in the Northern District of California. Moreover,
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`Groupon offers no evidence about what the witnesses identified in its motion may testify and
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`why they are important to this case. “To sustain a finding on [the convenience of the witnesses] .
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`. . the 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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`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.
`
`2d 627, 636 (E.D. Va. 2003)); Samsung Elecs. Co. v. Rambus, Inc., 386 F. Supp. 2d 708, 718
`
`(E.D. Va. 2005) (same). District courts typically require affidavits or declarations that contain
`
`admissible evidence setting forth “who the key witnesses will be and what their testimony will
`
`generally include.” Rinks, 2011 WL 691242, at *3 (quoting Adoma v. Univ. of Phoenix, Inc.,
`
`711 F. Supp. 2d 1142, 1151 (E.D. Cal. 2010)); see also Board of Trs. v. Baylor Heading & Air
`
`Conditioning, Inc., 702 F. Supp. 1253, 1258 (E.D. Va. 1988) (“Witness convenience . . . cannot
`
`be assessed in the absence of reliable information identifying the witnesses involved and
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`specifically describing their testimony.”). Aside from naming four current or former employees,
`
`Groupon provides none of that.
`
`a.
`
`Party Witnesses.
`
`Groupon 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. Groupon
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`states that “employees most knowledgeable about the design, development, maintenance, and
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`operation of Groupon’s products and services with regards to targeting and personalization of
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`Groupon’s website are located in Groupon’s Palo Alto office.” Declaration of David Thacker
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`(“Thacker Decl.”) ¶ 5; but see D.E. 21-1 at 4, n.4 (“[S]ome Groupon employees with knowledge
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`about Groupon’s products and services may be located” at Groupon’s headquarters in Chicago.).
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`Groupon identifies three current employees by name and title that it calls “prospective witnesses
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`who may have relevant information,” but fails to identify what testimony these “prospective
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`witnesses” will provide or the burdens they would endure by traveling to Tennessee to testify.
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`“[A] party that ‘fails to identify the witnesses’ and ‘what their testimony would be’ cannot
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`Case 2:12-cv-02781-JPM-cgc Document 27 Filed 01/31/13 Page 14 of 22 PageID 194
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`establish that a particular forum is inconvenient.” Esperson v. Trugreen Ltd. P’ship, 2010 WL
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`4362794, at *8 (W.D. Tenn. Oct. 5, 2010) (quoting Roberts Metals, Inc. v. Florida Props. Mktg.
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`Grp., Inc., 138 F.R.D. 89, 93 (N.D. Ohio 1991), aff’d per curiam, 22 F.2d 1104 (6th Cir. 1994)).
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`Groupon’s non-specific representations concerning witness inconvenience do not meaningfully
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`aid in the evaluation of this factor. It is “the materiality and importance of the testimony of
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`prospective witnesses, and not merely the number of witnesses, [that] is crucial to this inquiry.”
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`Rinks, 2011 WL 691242 at *3 (citing Viron Int’l Corp. v. David Boland, Inc., 237 F. Supp. 2d
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`812, 816 (W.D. Mich. 2002)).
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`Groupon also fails to provide admissible evidence establishing how travel from
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`California to Tennessee would impose “a significant inconvenience for Groupon’s witnesses.”
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`D.E. 21-1 at 10; see also Thacker Decl. ¶ 12 (stating that travel from California to Tennessee
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`would “impose a significant inconvenience” without describing how any witness would be
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`inconvenienced). It does not address the availability of commercial flights between the Northern
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`District of California and the Western District of Tennessee or how long the trip takes, and it
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`does not assert that Groupon will not cover any travel expenses of its employee witnesses.
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`Finally, Groupon 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 Groupon’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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`Case 2:12-cv-02781-JPM-cgc Document 27 Filed 01/31/13 Page 15 of 22 PageID 195
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`b.
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`Non-Party Witnesses.
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`Groupon next argues that the case should be transferred because third-party witnesses,
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`including “numerous inventors and assignees of relevant prior art” are located outside the
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`Western District of Tennessee. See D.E. 21-1 at 11. While the convenience of third party
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`witnesses is a consideration in evaluating a motion to transfer, it is not entitled to great weight
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`where, as here, the movant fails to establish that the third party testimony will be material or
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`important. See Rinks, 2011 WL 691242, at *3 (stating “the materiality and importance of the
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`testimony of the prospective witness” is “crucial to this inquiry”).
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`Groupon lists eleven United States patents that it contends may be prior art. D.E. 21-1 at
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`6-7. 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 California-based prior art
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`inventors and assignees does not weigh in favor of transfer.
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`Moreover, Groupon fails to establish the current locations of any of the inventors or
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`assignees, apparently relying exclusively on the dated information disclosed in the patents
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`themselves. D.E. 21-1 at 6-7. Even if the Court were to assume that each inventor and assignee
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`resides in the same location he, she, or it did at the time the patents issued, Groupon has not
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`presented any evidence that the inventors and assignees, or even its own former employee that it
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`contends may be a third party witness, are unwilling to testify in Tennessee or how they would
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`be inconvenienced by testifying here. See D.E. 21-1 at 11 (“[R]elevant third party witnesses,
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`including inventors and assignees of relevant prior art and former Groupon employees, are all
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`located in the Northern District of California, rendering travel to Memphis inconvenient.”). A
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`Case 2:12-cv-02781-JPM-cgc Document 27 Filed 01/31/13 Page 16 of 22 PageID 196
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`movant’s burden to establish witness inconvenience “consists of more than simply asserting that
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`another forum would be more appropriate for the witnesses, ‘he must show that the witnesses
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`will not attend or will be severely inconvenienced if the case proceeds in the forum district.’”
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`Esperson, 2010 WL 4362794, at *8 (citing Roberts Metals, 138 F.R.D. at 93). Groupon has not
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`met its burden.
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`Groupon adds that the availability of compulsory process2 in California weighs in favor
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`of transfer because “Groupon would be unable to compel any of the [numerous inventors and
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`assignees of relevant prior art and at least one former high-level Groupon employee with relevant
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`knowledge], but would be able to in the Northern District of California.” D.E. 21-1 at 11.
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`Groupon does not deny that it will be able to subpoena these third-party inventors and assignees
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`to produce documents and appear for depositions in their home districts. See Fed. R. Civ. P.
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`45(b)(2). Thus, Groupon’s stated need to subpoena these third parties for depositions or
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`documents can be achieved even if the case