Case 2:12-cv-02823-JPM-tmp Document 32 Filed 01/25/13 Page 1 of 21 PageID 129
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff/Counter-Defendant,
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`v.
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`BARNES & NOBLE, INC.,
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`Defendant/Counterclaimant.
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`Case No. 2:12-CV-02823 JPM tmp
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`JURY DEMAND
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`REQUEST HEARING ON MOTION
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`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO
`DEFENDANT’S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`
`
`Dated: January 25, 2013
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`
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`Daniel J. Weinberg (CA Bar No. 227159)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`
`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
`
`

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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................................. 1
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`STATEMENT OF FACTS ................................................................................................ 2
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`A.
`
`B.
`
`B.E. Technology, L.L.C ......................................................................................... 2
`
`B.E. v. Barnes & Noble ......................................................................................... 2
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`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
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`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
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`A.
`
`B.
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`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 4
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`Private Factors Favor B.E.’s Choice of Forum ...................................................... 6
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`1.
`
`2.
`
`3.
`
`4.
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`Convenience of the Parties Weighs Against Transfer ............................... 7
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`Convenience of the Witnesses Weighs Against Transfer .......................... 7
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`a.
`
`b.
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`Party Witnesses .............................................................................. 8
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`Non-Party Witnesses .................................................................... 10
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`Location of Sources of Proof ................................................................... 12
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`Barnes & Noble Would Not Be Materially Burdened Bearing The
`Expense of Litigating in the Western District of Tennessee .................... 13
`
`C.
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`Public Factors Favor B.E.’s Choice of Forum ..................................................... 14
`
`1.
`
`2.
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`Transfer to the Northern District of California Would Delay Trial ......... 14
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`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 15
`
`CONCLUSION ................................................................................................................ 17
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`
`
`I.
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`II.
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`III.
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`IV.
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`V.
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`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`Page
`
`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, 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) ............................................................. passim
`
`Imagepoint, Inc. v. Keyser Indus., Inc.,
`2005 WL 1242067 (E.D. Tenn. May 25, 2005) .........................................................................4
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................11
`
`Kerobo v. Southwestern Clean Fuels Corp.,
`285 F.3d 531 (6th Cir. 2002) .....................................................................................................3
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)................................................................................................13
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ........................................................................7, 16
`
`Max Rack, Inc. v. Hoist Fitness Sys., Inc.,
`2006 WL 640497 (S.D. Ohio Mar. 10, 2006) ..........................................................................12
`
`- ii -
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`TABLE OF AUTHORITIES
`(continued)
`
`
`MCNIC Oil & Gas Co. v. IBEX Resources Co., L.L.C.,
`23 F. Supp. 2d 729 (E.D. Mich. 1998) .......................................................................................3
`
`Page
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)..................................................................................................5
`
`Moses v. Business Card Express, Inc.,
`929 F.2d 1131 (6th Cir. 1991) ...................................................................................................4
`
`Nationwide Mut. Life Ins. v. Koresko,
`2007 WL 2713783 (S.D. Ohio Sept. 14, 2007) ...................................................................3, 13
`
`Parsons v. Chesapeake & Ohio Ry. Co.,
`375 U.S. 71 (1963) ...................................................................................................................14
`
`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)................................................................8, 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
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ...................................................................................................................4
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`STATUTES
`
`28 U.S.C. § 1404 ..............................................................................................................................1
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`28 U.S.C. § 1404(a) ...................................................................................................................3, 17
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`- iii -
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`I.
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`INTRODUCTION.
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`This case arises from the infringement by defendant Barnes & Noble, Inc. (“Barnes &
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`Noble”) of United States Patent No. 6,771,290. The patent describes and claims inventions
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`relating to user interfaces for accessing computer applications and information to provide
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`advertising over a computer network. The inventor, Martin David Hoyle, who is also the Chief
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`Executive Officer of plaintiff B.E. Technology, L.L.C. (“B.E.”), has lived in the Western District
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`of Tennessee since 2006 and currently resides at 116 W. Viking Drive, Cordova, Tennessee, part
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`of the City of Memphis. B.E. has brought this action because Barnes & Noble has infringed
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`B.E.’s patent in this District and across the United States.
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`Perhaps operating under a misunderstanding about why and when Mr. Hoyle moved to
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`this District and about Mr. Hoyle’s connection to B.E., Barnes & Noble has asked the Court to
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`transfer this case from the inventor’s and the plaintiff company’s home District to the Northern
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`District of California, not Barnes & Noble’s home’s district, but what it contends is “the center
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`of gravity of the accused activity.” This case is not in which the plaintiff took steps to
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`manufacture venue. The Western District of Tennessee has long been the physical location and
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`home of B.E. and its CEO who is the inventor of the asserted patents.
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`Ignoring or dismissing completely the relevant facts establishing Mr. Hoyle’s and B.E.’s
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`longstanding connection to this District, Barnes & Noble argues that transfer to the Northern
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`District of California would be more convenient because the activities related to the accused
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`Barnes & Noble products took place in Palo Alto, California and some relevant Barnes &
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`Noble’s witnesses and documents can be found there. Barnes & Noble concedes, however, that
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`relevant witnesses and documents also will be found outside the Northern District of California.
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`Transfer to California might be more convenient for Barnes & Noble, but it would be less
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`convenient for B.E. Transfer under 28 U.S.C. § 1404 requires a “more convenient forum,” not
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`merely a “forum likely to prove equally convenient or inconvenient,” or “a forum the defendant
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`finds more to its liking.” Because Barnes & Noble can offer no more, its motion to transfer
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`should be denied.
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`II.
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`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. 6,771,290 (the
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`“’290 patent”) (“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. Barnes & Noble
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`B.E. filed its Complaint in this matter on September 21, 2012. D.E. 1. Barnes & Noble
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`filed its Answer on December 31, 2012. D.E. 26. This is one of nineteen cases B.E. has filed in
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`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
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`the Western District of Tennessee for the infringement of the patent-in-suit and two related
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`patents not asserted against Barnes & Noble. The defendants in these cases include several of
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`the world’s most sophisticated technology companies, each of which regularly conducts business
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`on a massive scale in this District.
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`III. THE LAW GOVERNING MOTIONS TO TRANSFER.
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`“For the convenience of parties and witnesses, in the interest of justice, a district court
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`may transfer any civil action to any other district or division where it might have been brought.”
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`28 U.S.C. § 1404(a). A decision to transfer venue is made “on an individual basis by
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`considering convenience and fairness.” Kerobo v. Southwestern Clean Fuels Corp., 285 F.3d
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`531, 537 (6th Cir. 2002) (internal quotes omitted). The “balance of convenience must weigh
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`heavily in favor of the transfer.” Nationwide Mut. Life Ins. v. Koresko, 2007 WL 2713783, at *5
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`(S.D. Ohio Sept. 14, 2007).
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`“As a general rule, there is a ‘strong presumption’ in favor of the plaintiff’s selection of
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`forum, and the plaintiff’s choice should not be altered ‘unless the defendant carries his burden of
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`demonstrating that the balance of convenience strongly favors transfer.’” Hunter Fan Co. v.
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`Minka Lighting, Inc., 2006 WL 1627746, at * 2 (W.D. Tenn. June 12, 2006) (McCalla, J.)
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`(quoting Plough, Inc. v. Allergan, Inc., 741 F. Supp. 144, 148 (W.D. Tenn. 1990)) (denying a
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`motion to transfer even though the majority of defendant’s witnesses and documents were
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`located in California and California was the epicenter of the accused infringing activity). “When
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`a plaintiff has selected its home forum, this choice is given particular weight.” Id. (citing Tuna
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`Processors, Inc. v. Hawaii Int’l Seafood, 408 F. Supp. 2d 358, 360 (E.D. Mich. 2005)).
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`The threshold question on any motion to transfer is whether the plaintiff could have filed
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`the action in the transferee forum. See Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
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`2003 WL 21244142, at *6 (W.D. Tenn. May 28, 2003); MCNIC Oil & Gas Co. v. IBEX
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`Resources Co., L.L.C., 23 F. Supp. 2d 729, 739 (E.D. Mich. 1998) (same). If so, then the
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`“district court should consider the private interests of the parties, including their convenience and
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`the convenience of potential witnesses, as well as other public-interest concerns, such as
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`systemic integrity and fairness, which come under the rubric of ‘interests of justice.’” Moses v.
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`Business Card Express, Inc., 929 F.2d 1131, 1137 (6th Cir. 1991) (quoting Stewart
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`Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 30 (1988)).
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`IV.
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`TRANSFER IS NOT APPROPRIATE.
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`B.E. agrees that its patent infringement claims could have been brought in the Northern
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`District of California because Barnes & Noble infringes there, just as it does in this District. The
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`relevant question presented by Barnes & Noble’s motion is therefore whether Barnes & Noble
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`has met its high burden to establish that the Northern District of California is “a more convenient
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`forum,” not merely an “equally convenient or inconvenient” forum when compared to the
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`Western District of Tennessee. Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964). Barnes &
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`Noble has not made that showing.
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`A.
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`B.E.’s Choice of Forum is Entitled to Substantial Weight.
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`As mentioned above, it is well-settled that a plaintiff’s choice of forum is entitled to
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`substantial weight. Hunter Fan Co., 2006 WL 1627746, at *2; see also Imagepoint, Inc. v.
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`Keyser Indus., Inc., 2005 WL 1242067, at *3 (E.D. Tenn. May 25, 2005) (explaining the
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`plaintiff’s “choice of forum will be given deference”); Hanning v. New England Mut. Life Ins.
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`Co., 710 F. Supp. 213, 214-15 (S.D. Ohio 1989) (“considerable weight”). The Western District
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`of Tennessee is B.E.’s principal place of business and its Chief Executive Officer, who is the
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`named inventor, lives here. B.E.’s choice of forum should be accorded substantial weight.
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`Without serious mention of the relevant facts, Barnes & Noble argues that B.E.’s choice
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`of venue should be disregarded because its “contacts with this District [] are minimal and recent,
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`and appear to have been manufactured solely for litigation purposes.” D.E. 28-1 at 2. That is not
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`true. Unlike the cases on which Barnes & Noble relies where the plaintiffs’ contacts with the
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`chosen forum were recent or manufactured for the purpose of litigation, Mr. Hoyle has been
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`physically present in this District since 2006, and B.E. since at least 2008. Compare Hoyle Decl.
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`¶¶ 2-7 with In re Microsoft Corp., 630 F.3d 1361, 1362 (Fed. Cir. 2011) (“[Plaintiff] is operated
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`from the United Kingdom by the patent’s co-inventor and company’s managing member” and
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`employed no individuals at its office in the Eastern District of Texas.); In re Hoffman-La Roche,
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`Inc., 587 F.3d 1333, 1336-37 (Fed. Cir. 2009) (“[T]here appears to be no connection between
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`this case and the Eastern District of Texas except that in anticipation of this litigation,
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`[plaintiff’s] counsel in California converted into electronic format 75,000 pages of documents
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`demonstrating conception and reduction to practice and transferred them to the offices of its
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`litigation counsel in Texas.”); In re Zimmer Holdings, 609 F.3d 1378, 1381 (Fed. Cir. 2010)
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`(“[Plaintiff] transported copies of its patent prosecution files from Michigan to its Texas office
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`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
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`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 Barnes & Noble makes only a
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`passing reference of him, and it makes no attempt to overcome the significance of his presence in
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`the District. B.E.’s contacts with the forum were not manufactured for litigation and as a result,
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`its choice of forum is entitled to “substantial weight.”
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`Barnes & Noble seeks to undercut B.E.’s obvious connection to the District by pointing
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`out that “it was not until September 6, 2012 – the day before filing the first of its cases here –
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`that B.E. was even registered to do business in Tennessee.” D.E. at 28-1 at 4. B.E. does not rely
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`on the simple fact that it is registered to conduct business in Tennessee as a basis for establishing
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`B.E.’s connection to the District. B.E. registered because it has a connection to Tennessee; it did
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`not register to establish a connection. If the timing of B.E.’s registration is to be questioned, it
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`should be understood that the registration was made after Mr. Hoyle chose to remain in
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`Tennessee, rather than return to Louisiana. Hoyle Decl. ¶ 4. When B.E. was preparing to file
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`this action and Mr. Hoyle discovered that B.E. had not registered to do business in Tennessee,
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`the registration was made. Id. ¶ 8. Regardless, B.E. does not contend that its contacts with the
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`forum are established by its registration. Barnes & Noble’s assault on this straw man is not
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`sufficient to carry its burden.
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`B.
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`Private Factors Favor B.E.’s Choice of Forum.
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`While B.E.’s choice of forum is entitled to substantial weight, the Court is nevertheless
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`required to evaluate private and public factors in determining whether to grant Barnes & Noble’s
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`motion. “The private interests of the parties that courts consider when determining whether to
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`transfer a case include: the convenience of the parties, the convenience of witnesses, the location
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`of sources of proof, where the operative facts occurred, the relative ability of litigants to bear
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`expenses in any particular forum, and other practical problems affecting the case.” Hunter Fan,
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`2006 WL 1627746, at *2.
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`1.
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`Convenience of the Parties Weighs Against Transfer.
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`The Western District of Tennessee is more convenient for B.E. than the Northern District
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`of California. As previously explained, B.E. and its CEO, the inventor of the patents-in-suit,
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`reside within the District. B.E.’s corporate documents and records are here as well. Outside of
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`witness convenience, Barnes & Noble does not make an explicit argument that it will be
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`inconvenienced by conducting litigation in Tennessee. It is reasonable to require companies with
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`the wealth and size of Barnes & Noble to litigate in jurisdictions in which they regularly conduct
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`business. See Lucent Techs., Inc. v. Aspect Telecomms. Corp., 1997 WL 476356, at *4 (E.D. Pa.
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`Aug. 20, 1997) (finding it reasonable to force a public company with “$300 million a year in
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`sales and approximately $216 million in current assets, to travel to places where it is subject to
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`jurisdiction in order to defend its corporate interests”). Barnes & Noble is a large and wealthy
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`company. It reported for the fiscal quarter ending October 27, 2012 that it generated
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`$1,884,532,000 in revenue and had $4,431,025,000 in current assets, including $470,994,000 in
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`cash and cash equivalents. Declaration of Daniel Weinberg (“Weinberg Decl.”) Ex. A. To
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`defend it in this action, Barnes & Noble has retained lawyers from Washington D.C. and
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`Memphis. It is doubtful that Barnes & Noble will suffer hardship or inconvenience by litigating
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`in the Western District of Tennessee.
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`2.
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`Convenience of the Witnesses Weighs Against Transfer.
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`Barnes & Noble argues that the Northern District of California would be a more
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`convenient venue for its own witnesses because “Barnes & Noble’s witnesses work and/or reside
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`primarily in the Northern District of California, and none are located in Tennessee.” D.E. 28-1 at
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`7-8. By the same logic, transfer to the Northern District of California would be equally
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`inconvenient to B.E.’s witnesses, none of whom is located in the Northern District of California.
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`Moreover, Barnes & Noble offers precious little about who the witnesses are, what they will say,
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`and why they are important to this case. “To sustain a finding on [the convenience of the
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`witnesses] . . . the party asserting witness inconvenience ‘has the burden to proffer, by affidavit
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`or otherwise, sufficient details respecting the witnesses and their potential trial testimony to
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`enable the court to assess the materiality of evidence and the degree of inconvenience.’” Rinks v.
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`Hocking, 2011 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.
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`Supp. 2d 708, 718 (E.D. Va. 2005) (same). District courts typically require affidavits or
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`declarations that contain admissible evidence setting forth “who the key witnesses will be and
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`what their testimony will generally include.” Rinks, 2011 WL 691242, at *3 (quoting Adoma v.
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`Univ. of Phoenix, Inc., 711 F. Supp. 2d 1142, 1151 (E.D. Cal. 2010)); see also Board of Trs. v.
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`Baylor Heading & Air Conditioning, Inc., 702 F. Supp. 1253, 1258 (E.D. Va. 1988) (“Witness
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`convenience . . . cannot be assessed in the absence of reliable information identifying the
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`witnesses involved and specifically describing their testimony.”). Barnes & Noble provides none
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`of that.
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`a.
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`Party Witnesses.
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`“Though Barnes & Noble’s headquarters are [sic] in New York,” D.E. 28-1 at 8, it claims
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`that the employees who are likely to be party witnesses work at its Palo Alto office and would be
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`inconvenienced if the case remains in Tennessee. But Barnes & Noble offers no particularized
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`information enabling the Court to ascertain how much weight to give the claim of inconvenience,
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`and the evidence offered establishes that relevant witnesses reside outside the Northern District
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`of California. First, Barnes & Noble fails to identify any witnesses by name, position title,
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`location, the subject matter on which they will testify, or the burdens they would endure by
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`traveling to Tennessee to testify. Barnes & Noble merely states that “[t]he Barnes & Noble
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`employees most knowledgeable of the design, development, and operation of the NOOK®
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`products work at Barnes & Noble’s offices in Palo Alto.” Declaration of Daniel Gilbert
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`(“Gilbert Decl.”) ¶ 3. “[A] party that ‘fails to identify the witnesses’ and ‘what their testimony
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`would be’ cannot establish that a particular forum is inconvenient.” Esperson v. Trugreen Ltd.
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`P’ship, 2010 WL 4362794, at *8 (W.D. Tenn. Oct. 5, 2010) (quoting Roberts Metals, Inc. v.
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`Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89, 93 (N.D. Ohio 1991), aff’d per curiam, 22 F.2d
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`1104 (6th Cir. 1994)).
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`Next, Barnes & Noble admits that some employees who reside outside the Northern
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`District of California may be called to testify at a trial in Memphis. See D.E. 28-1 at 3, n.3
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`(“Barnes & Noble acknowledges that there are likely some witnesses and documents relevant to
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`other issues, such as the sales and marketing of the accused NOOK® products, that may be
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`located outside the Northern District of California.”). For witnesses who reside near Barnes &
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`Noble’s New York headquarters, trial in Memphis would be more convenient than trial in the
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`Northern District of California. Barnes & Noble’s vague representations concerning witness
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`inconvenience do not meaningfully aid in the evaluation of this factor. It is “the materiality and
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`importance of the testimony of prospective witnesses, and not merely the number of witnesses,
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`[that] is crucial to this inquiry.” Rinks, 2011 WL 691242, at *3 (citing Viron Int’l Corp. v. David
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`Boland, Inc., 237 F. Supp. 2d 812, 816 (W.D. Mich. 2002)).
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`Barnes & Noble also fails to provide admissible evidence establishing how travel from
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`California to Tennessee would impose “significant inconvenience for the Barnes & Noble’s
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`witnesses.” D.E. 28-1 at 8. It does not address the availability of commercial flights between
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`the Northern District of California and the Western District of Tennessee or how long the trip
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`takes, and it does not assert that Barnes & Noble will not cover any travel expenses of its
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`employee witnesses.
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`Case 2:12-cv-02823-JPM-tmp Document 32 Filed 01/25/13 Page 14 of 21 PageID 142
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`Barnes & Noble also does not provide admissible evidence of how its operations would
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`be adversely affected by the case staying in Tennessee. Barnes & Noble merely states that if its
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`employees “were called away from their normal job responsibilities for a significant amount of
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`time, it would adversely affect Barnes & Noble’s operations.” Gilbert Decl. ¶ 3. That’s it.
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`Barnes & Noble fails to provide the names and position titles of any employees likely to be
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`“called away from their job responsibilities,” or how their absence from California would harm
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`Barnes & Noble’s operations. Nor does Barnes & Noble provide any evidence that any witness
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`would be away “for a significant amount of time,” or even what constitutes a “significant amount
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`of time” such that the Court can evaluate whether the time expected to be spent in Memphis is
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`likely to adversely affect Barnes & Noble’s operations.
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`Finally, Barnes & Noble has not shown that all of its witnesses will necessarily be forced
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`to testify in Tennessee. Typically, though not always, depositions are taken in locations
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`convenient for the witnesses or subject to agreements between the parties mindful of witness
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`convenience. It is likely that Barnes & Noble’s California-based employees will be deposed in
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`California where B.E.’s lead counsel is based. See Hunter Fan, 2006 WL 1627746, at *2
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`(witness convenience does not favor transfer where plaintiff “plans to take the depositions of
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`witnesses who are California residents, including Defendant’s employees, in California”).
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`b.
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`Non-Party Witnesses.
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`Barnes & Noble refers to argument from other B.E. defendants’ motions to transfer filed
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`in different cases that those cases should be transferred to the Northern District of California
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`because third-party witnesses “with knowledge of the prior art are located in California.” See
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`D.E. 28-1 at 4 (referring to Google’s and Apple’s motions to transfer). Barnes & Noble makes
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`no showing whatsoever regarding the location, availability, or convenience of third party
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`witnesses with knowledge of potential prior art. Barnes & Noble does not identify any potential
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`Case 2:12-cv-02823-JPM-tmp Document 32 Filed 01/25/13 Page 15 of 21 PageID 143
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`prior art itself. Barnes & Noble, therefore, has failed to meet its burden to establish that the
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`convenience of third party witnesses weighs in favor of transfer, particular since “Barnes &
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`Noble requests that the Court evaluate its transfer motion individually . . . .” D.E. 28-1 at 1, n.2.
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`To the extent the Court considers the arguments made by other B.E. defendants, those are
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`arguments are unavailing. While the convenience of third party witnesses is a consideration in
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`evaluating a motion to transfer, it is not entitled to great weight where, as here, there has been no
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`showing that the third party testimony will be material or important. See Rinks, 2011 WL
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`691242, at *3 (stating “the materiality and importance of the testimony of the prospective
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`witness” is “crucial to this inquiry”).
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`Other B.E. defendants have identified several United States patents that they contend may
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`be prior art to the ‘290 Patent. But prior art inventor testimony may not be used to vary the
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`words of the alleged prior art and admissible prior art inventor testimony is almost certain to be
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`severely limited by the time of trial. See, e.g., Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363,
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`1375 (Fed. Cir. 2008) (affirming order limiting prior art inventor’s testimony to the “actual
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`words and content” of the patent application). Therefore, the testimony of so-called California-
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`based prior art witnesses does not weigh in favor of transfer.
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`Moreover, neither Barnes & Noble, nor Google and Apple, have established the current
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`locations of any prior art-related third parties. Google and Apple, for example, apparently rely
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`exclusively on the dated information disclosed in certain patents themselves. Even if the Court
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`were to assume that each inventor and assignee resides in the same location he, she, or it did at
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`the time the patents issued, some of which date back almost 20 years, many of the inventors
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`reside outside the Northern District of California and some of them reside in Oregon. There
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`Case 2:12-cv-02823-JPM-tmp Document 32 Filed 01/25/13 Page 16 of 21 PageID 144
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`simply is no showing sufficient to enable the Court to give any weight to the convenience of
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`potential third party witnesses in evaluating Barnes & Noble’s motion to transfer.
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`3.
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`Location of Sources of Proof.
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`Barnes & Noble contends that the location of the sources of proof favors transfer because
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`“potentially relevant Barnes & Noble documents relating to the accused NOOK® products are
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`located in the Northern District of California, not in this District.” D.E. 28-1 at 8; see also
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`Gilbert Decl. ¶ 4 (“Substan