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Case 2:12-cv-02781-JPM-cgc Document 40 Filed 07/12/13 Page 1 of 27 PageID 262
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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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`v.
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`GROUPON, INC.,
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`Defendant.
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` No.: 2:12-cv-02781-JPM-cgc
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`
`ORDER DENYING MOTION TO TRANSFER
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`
`
`Before the Court is Defendant Groupon, Inc.’s (“Defendant”
`or “Groupon”) Motion to Transfer Venue Pursuant to 28 U.S.C.
`§ 1404(a), filed January 10, 2013. (ECF No. 21.) For the
`reasons that follow, the Motion is DENIED.
`I. BACKGROUND
`This case concerns Defendant Groupon’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. 27 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 Groupon infringed the ‘314 patent “by
`using a method of providing demographically targeted advertising
`that directly infringes at least Claim 11 of the ‘314 patent
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`either literally or under the doctrine of equivalents.” (Id.
`¶ 11.)
`B.E. filed a Complaint in this Court on September 10, 2012.
`(ECF No. 1.) Groupon filed its Answer and Counterclaim on
`December 31, 2012. (ECF No. 19.) Groupon filed its Motion to
`Transfer Venue on January 10, 2013. (ECF No. 21.) B.E. filed a
`Motion to Dismiss Defendant’s Counterclaim and Motion to Strike
`on January 25, 2013. (ECF No. 24.) B.E. filed its Response in
`Opposition to Defendant’s Motion to Transfer Venue on January
`31, 2013. (ECF No. 27.) With leave of Court, Groupon filed a
`Reply Memorandum in Support of Its Motion to Transfer on
`February 19, 2013. (ECF No. 34.) On February 1, 2013, Groupon
`filed a Motion to Stay pending resolution of its Motion to
`Transfer Venue. (ECF No. 28.) The Court granted Groupon’s
`Motion to Stay on February 11, 2013. (ECF No. 32.)
`Groupon seeks to transfer this case to the Northern
`District of California, where the allegedly infringing
`technology is “principally developed and maintained.” (ECF No.
`21-1 at 2.) Groupon notes that while its “business operations
`are headquartered in Chicago, Illinois,” and “Chicago would
`normally be the preferred forum for Groupon, the likely Groupon
`witnesses, documents, and other relevant evidence associated
`with the accused products and services are located in the
`Northern District of California.” (Id.)
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`B.E. opposes Groupon’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. 27 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. 27 at 1, 2.) Hoyle has been a
`resident of Tennessee since April 2006. (Id.)
`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 5.)
`II. STANDARD
`Groupon 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
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`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
`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
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`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
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`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. 27 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
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`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.
`Groupon’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,
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`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
`Groupon asserts that B.E. could have brought this action in
`the Northern District of California. (See ECF No. 21-1 at 8-9.)
`B.E. does not dispute this assertion. (See ECF No. 27 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 Groupon 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
`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
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`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.
`Groupon contends that witness convenience favors transfer
`to the Northern District of California. (ECF No. 21-1 at 4-5,
`10-11; ECF No. 34 at 4-5.) To support this contention, Groupon
`asserts that the majority of the witnesses on which it intends
`to rely are located in the transferee district. These witnesses
`include “engineers and employees” and numerous third-party
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`prior-art witnesses. (ECF No. 21-1 at 4-7, 10-11; ECF No. 34 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. 27 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.)
`Because the convenience of party and non-party witnesses is
`given different weight, the Court will analyze the witnesses
`separately. See Azarm v. $1.00 Stores Servs., Inc., No. 3:08-
`1220, 2009 WL 1588668, at *4 (M.D. Tenn. June 5, 2009) (“[T]he
`convenience of potential non-party witnesses, who are not
`subject to the control of the parties, is a particularly weighty
`consideration, because it is generally presumed that party
`witnesses will appear voluntarily in either jurisdiction, but
`non-party witnesses, with no vested stake in the litigation, may
`not.”).
`
`1. Party Witnesses
`Groupon asserts that “the vast majority of the relevant
`engineers and employees relating to the accused products and
`services work and/or reside in the Northern District of
`California.” (ECF No. 21-1 at 10.) Groupon specifically
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`identifies three current employees as potential witnesses with
`knowledge of the “design, development, maintenance, and
`operation of the accused products and services” that are located
`in the Northern District of California: David Thacker, Senior
`Director of Product Management; Amit Aggarwal, Senior Director
`in Engineering; and Sean O’Brien, Senior Manager in Software
`Engineering. (Id. at 4 (citing Thacker Decl., ECF No. 21-2,
`¶ 5).) Groupon further acknowledges that “some Groupon
`employees with knowledge about Groupon’s products and services
`may be located [at its Chicago, Illinois, headquarters,]
`including a small group of about 4-5 employees with
`responsibility for data collection on Groupon’s website.” (Id.
`at 4 n.4 (citing Thacker Decl., ECF No. 21-2, ¶ 6).)
`Groupon does not provide any evidence showing that any
`employees will be unwilling to testify in this district if asked
`to do so, and only notes generally that travel to the transferor
`district would “impose a significant inconvenience for Groupon’s
`witnesses.” (ECF No. 21-1 at 10.) See Esperson, 2010 WL
`4362794, at *8. 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
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`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 Groupon’s employees will be able to
`attend absent any evidence to the contrary.
`Therefore, regarding Groupon employees, Groupon does not
`satisfy its burden. Groupon argues that due to the distance
`between Memphis and the Northern District of California,
`approximately 1800 miles, travel to Memphis would impose a
`significant inconvenience. (ECF No. 21-1 at 10-11.) 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. 27 at
`7.) Groupon’s reliance on Returns Distribution Specialists, LLC
`v. Playtex Products, Inc., No. 02-1195-T, 2003 WL 21244142 (W.D.
`Tenn. May 28, 2003), for the proposition that this factor
`“supports transfer where witnesses likely to be called at trial
`are important to the operation of the defendant’s business” (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
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`Specialists, 2003 WL 21244142, at *7. In the instant case, the
`Court agrees that Groupon’s specifically identified employees
`are located in the transferee district, and that that their
`testimony is likely material. Unlike Returns Distribution
`Specialists, however, Groupon has only provided a general
`statement about inconvenience and has provided no evidence or
`argument regarding how detrimental the absence of these
`employees would be to its business. As a result, the Court
`cannot assess the degree to which Groupon’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)).
`Groupon 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.) Groupon
`relies on NISSM Corp. v. Time Warner, Inc., No. 07-20624-CIV,
`
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`2008 WL 540758 (S.D. Fla. Feb. 25, 2008), where the court
`granted a transfer in light of the number of the defendants’
`witnesses significantly outnumbering the plaintiff’s single
`witness, the CEO of NISSM Corp. and inventor of the patent-in-
`suit. (See ECF No. 34 at 5.) Recognizing that NISSM Corp. is
`persuasive authority, the Court declines to apply its reasoning
`in the instant case. Unlike NISSM Corp., which involved one
`plaintiff and four corporate defendants in a single action, the
`instant case involves only B.E. and Groupon. See also Droplets,
`Inc. v. Amazon.com, Inc., No. 2:11-CV-392, 2012 WL 3578605 (E.D.
`Tex. June 27, 2012) (granting transfer where one plaintiff
`brought suit against six defendants in a single action and
`transferor district contained only plaintiff’s headquarters and
`one witness). Although B.E. filed infringement actions against
`other defendants seeking transfer to the Northern District of
`California, motions to transfer venue pursuant to § 1404(a) are
`adjudicated “according to an individualized, case-by-case
`consideration of convenience and fairness . . . [and] balance
`[of] a number of case-specific factors.” Stewart Org., Inc. v.
`Ricoh Corp., 487 U.S. 22, 29 (1988); accord United States v.
`Gonzales & Gonzales Bonds & Ins. Agency, Inc., 667 F. Supp. 2d
`987, 992 (W.D. Tenn. 2010).
`The Court acknowledges that the testimony of Groupon’s
`identified employee-witnesses is likely material and that these
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`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. 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 Groupon’s
`California-based employees will be deposed in California where
`B.E.’s lead counsel is based.” (ECF No. 27 at 9.) 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). Groupon
`asserts that it has identified at least eleven prior-art patents
`“relevant to Groupon’s invalidity defenses and counterclaims.”
`(ECF No. 21-1 at 6.) Groupon states that it is “likely to
`subpoena at least the inventors and/or assignees of the patents
`
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`for documents and testimony in support of their invalidity
`defenses.” (Id. at 7.) Groupon also identifies an additional
`third-party witness, a former employee, who has relevant
`knowledge of the accused products and resides in the transferee
`district. (Id. at 7, 11.) Groupon further contends that these
`potential prior-art and third-party witnesses all live in the
`Northern District of California or a district within the
`subpoena power of the transferee district, therefore they are
`subject to compulsory process if the instant case is transferred
`and any travel to the Western District of Tennessee would be
`inconvenient. (Id.; see also ECF No. 34 at 5-6.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Groupon has not established that the “third party testimony will
`be material or important.” (ECF No. 27 at 10.) B.E. asserts
`that Groupon has not stated the “relevance, materiality, and
`importance” of the non-party witnesses’ testimony. (Id. at 11.)
`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.) Additionally, B.E. contends that Groupon has “failed to
`establish the current locations of any of the inventors or
`assignees,” and “has not presented any evidence that the
`inventors and assignees are unwilling to testify in Tennessee or
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`how they would be inconvenienced by testifying here.” (Id. at
`10.)
`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
`third-party witnesses to testify at trial, whether located
`within the transferee district or within the state of
`California. 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 third-party
`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 potentially would “not be live and
`
`
`
`17
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 40 Filed 07/12/13 Page 18 of 27 PageID 279
`
`therefore could be less persuasive.” Rinks, 2011 WL 691242, at
`*4.
`The Court finds that Groupon has met its burden to show the
`nature of its proposed non-party witnesses’ testimony, and that
`this testimony is likely material to Groupon’s invalidity and
`non-infringement contentions. Groupon, however, has not
`indicated why depositions of its non-party witnesses would be
`inadequate and live testimony required. To the extent the non-
`party witnesses’ testimony may be presented by deposition,
`witness inconvenience would not be an issue. Further, Groupon
`does not state whether it is aware that any of the non-party
`witnesses would be unwilling to testify in this district if
`asked to do so. As a result, this factor weighs only slightly
`in favor of transfer.
`
`B. Convenience of the Parties
`Groupon argues that the Northern District of California is
`“clearly” the more convenient venue. (ECF No. 21-1 at 2.) While
`Groupon 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.
`
`18
`
`
`
`
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 40 Filed 07/12/13 Page 19 of 27 PageID 280
`
`
`
`1. Location of Sources of Proof
`
`Groupon argues that “the vast majority of potentially
`relevant documents related to the research, design, and
`development of any of the potentially implicated Groupon
`products and services is located in the Northern District of
`California, while no relevant documents or other evidence are
`physically located in the Western District of Tennessee.” (ECF
`No. 21-1 at 9.) Groupon contends that B.E. “has likely already
`produced many, if not all, relevant documents,” in its initial
`disclosures relating to the patent-in-suit and Hoyle’s “prior
`attempts at forming a business.” (ECF No. 34 at 1 n.2.) As
`only 220 documents were produced, Groupon believes the “bulk of
`relevant documents” are located in the transferee district,
`which, in turn, favors transfer. (Id. at 3.)
`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. 27 at 5, 12.) B.E. notes that while
`Groupon’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
`
`
`
`19
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 40 Filed 07/12/13 Page 20 of 27 PageID 281
`
`motions to transfer,” and that because documents can be
`exchanged electronically the weight given this factor should be
`minimal. (Id. at 12.) B.E. finally argues that this factor
`does not weigh in favor of transfer because “it can be expected
`that Groupon will eventually produce its documents to B.E.’s
`lead counsel in California, not to B.E. in Tennessee.” (Id. at
`13.)
`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, 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))).
`
`
`
`20
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 40 Filed 07/12/13 Page 21 of 27 PageID 282
`
`The Court agrees that it is likely that the sheer volume of
`documents Groupon 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 ‘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 Groupon
`will be expected to serve its documents on B.E.’s counsel in
`Northern California, not in the Western District of Tennessee.
`Taken together, the aforementioned facts indicate that, as to
`the location of the sources of proof, the Northern District of
`California is a somewhat more convenient venue for the parties
`to the instant case. This factor, however, is not sufficient,
`by itself, to require transfer.
`2. Financial Hardships Attendant to Litigating in
`the Chosen Forum
`
`Groupon argues that “the vast majority of the relevant
`engineers and employees relating to the accused products and
`services work and/or reside in the Northern District of
`California,” and the “relevant third party witnesses” are also
`located there. (ECF No. 20-1 at 10-11) As a result, Groupon
`contends that travel to Tennessee would “impose a significant
`
`
`
`21
`
`

`
`Case 2:12-cv-02781-JPM-cgc Document 40 Filed 07/12/13 Page 22 of 27 PageID 283
`
`inconvenience for Groupon’s witnesses.” (Id.; see also Thacker
`Decl., ECF No. 21-2, ¶ 12.)
`B.E. states that it “would face a financial burden by
`having to litigate in the Northern District of California,”
`while Groupon does not assert that it would be “financially
`incapable of bearing the expense” of litigating the instant case
`in the transferor district. (ECF No. 27 at 13.) B.E.’s CEO
`Hoyle states that “B.E. will incur expenses it will not incur if
`the case remains in Memphis.” (Hoyle Decl., ECF No. 27-1, ¶ 9.)
`The Court has considered “the relative ability of litigants
`to bear expenses in any particular forum” amo

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