Case 2:12-cv-02823-JPM-tmp Document 36 Filed 02/01/13 Page 1 of 5 PageID 198
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`MEMPHIS DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
`Plaintiff,
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`v.
`BARNES & NOBLE, INC.,
`Defendant.
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`Case No. 2:12-cv-02823-JPM-tmp
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`JURY TRIAL REQUESTED
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`MOTION AND MEMORANDUM FOR LEAVE TO FILE REPLY
` SUPPORTING DEFENDANT’S MOTION TO TRANSFER
`(INCLUDING CERTIFICATE OF CONSULTATION)
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`Pursuant to this Court’s Local Rule 7.2(c), defendant Barnes & Noble, Inc. (“Defendant”)
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`respectfully moves for entry of the accompanying proposed Order, granting leave to file a reply
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`memorandum, not exceeding 10 pages in length, supporting defendant’s pending motion to
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`transfer venue of this action under 28 U.S.C. § 1404. In support of the relief sought herein,
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`Defendant respectfully submits the following:
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`1.
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`This action was commenced on September 21, 2012 (Doc. 1). Defendant timely
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`responded to the complaint on December 31, 2012 (Docket No. 26). On January 7, 2013,
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`defendant filed a motion and supporting documents seeking transfer of this action to the
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`Northern District of California under 28 U.S.C. 1404 (Docket No. 28). Plaintiff filed a response
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`opposing such transfer on January 25, 2013 (Docket No. 32).
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`2.
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`The determination of which venue best serves the interests of justice and the
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`convenience of parties and witnesses is among the most important matters the Court will decide
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`in this action. It will determine which Court’s resources will be employed in managing and
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`deciding the case, whether and how the parties may procure relevant evidence, and a potentially
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`extended series of travel and lodging arrangements for a large number of people. Indeed, given
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`the existence of 18 other cases filed by the same Plaintiff involving common U.S. Patents (as
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`detailed in the transfer motion), the filing of transfer motions in at least the majority of the cases,
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`and the relationship of all the motions to the Court’s consideration of each, the Court’s decision
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`will likely affect an extremely large number of people. The issue merits thorough consideration
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`of all relevant facts, arguments, and authorities.
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`3.
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`As the party moving for transfer, Defendant bears the burden on the underlying
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`motion. Allowing Defendant an opportunity for rebuttal, through a reply memorandum,
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`comports with fair application of that burden.
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`4.
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`The opposition to transfer filed by Plaintiff includes arguments that were not
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`predictable as certain or requiring pre-emptive or hypothetical argument in Defendant’s opening
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`motion papers, including arguments whose self-contradictory character merits analysis. For
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`example, Plaintiff has suggested on the one hand that this action should be consolidated with 18
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`others, yet addresses the transfer motion as a contest between only two parties’ circumstances.
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`While Defendant believes the circumstances tilt strongly in favor of the proposed transferee
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`district from either perspective, and while Plaintiff has yet to file any motion for consolidation of
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`any kind, the Court should have the benefit of full argument on the implications of Plaintiff’s use
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`of consolidation scenarios in the venue transfer context.
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`5.
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`In addition, on the same day that Barnes & Noble filed its motion to transfer, B.E.
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`served infringement contentions accusing, for the first time, any Barnes & Noble products and/or
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`services with programs, features, firmware, or applications from two third-party companies,
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`Netflix and Hulu, both of which are headquartered in California. In particular, Netflix is
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`headquartered in the Northern District of California, the jurisdiction to which Defendant seeks
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`Case 2:12-cv-02823-JPM-tmp Document 36 Filed 02/01/13 Page 3 of 5 PageID 200
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`transfer. Defendant should be afforded the opportunity to address how these newly accused
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`products, features and functionalities impact transfer.
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`6.
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`A recent Federal Circuit decision, In re EMC Corp., Decho Corp., iOmega Corp.,
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`and Carbonite, Inc., No. 10-cv-0435, issued on January 29, 2013, addresses transfer issues
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`related to Defendant’s transfer motion. Granting this motion for leave to file a reply
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`memorandum would give Defendant an opportunity to address this recent opinion and its
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`applicability to Defendant’s motion.
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`7.
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`This action is in an early stage. No Scheduling Order has been entered yet. The
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`proposed Order on this motion would require Defendant to file its reply memorandum within just
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`7 days from the grant of leave. Allowing these few additional days before the motion is at issue
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`for decision will not materially impede the progress of this action. Similar requests for leave to
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`file a reply memorandum have been submitted in at least six other cases and granted by this
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`Court.
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`8.
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`Like any Section 1404 motion in a case of this type, briefing must address a
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`number of issues and circumstances. While Defendant is committed to its reply being as concise
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`as possible, coverage of the issues meriting a reply appears likely to require more than the 5
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`pages normally permitted by Local Rule 7.2(e). This motion respectfully requests authorization
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`to use up to 10 pages for such purpose.
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`9.
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`Anticipating Plaintiff’s response to this motion, Barnes & Noble respectfully asks
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`the Court to grant the requested leave without pre-imposing requirements for what the reply may
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`contain. The underlying motion to transfer was filed early in the case consistent with efficient
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`administration goals, is not subject to a deadline, and is not based on a closed fact record in the
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`way that a summary judgment motion would be. If the reply is allowed, judgment is involved in
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`determining what content of the response merits attention in a reply of limited length, and how to
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`give the Court the best information possible for its decision-making process. If the reply is
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`allowed and plaintiff believes a sur-reply would also be helpful to the Court, counsel have
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`already advised plaintiff that no attempt to block a sur-reply would be made. Respectfully,
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`Plaintiff should not be allowed to pre-block content from the reply sought here, if allowed.
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`Respectfully submitted,
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`s/ Mark Vorder-Bruegge, Jr.
`Mark Vorder-Bruegge, Jr. (#06389)
`WYATT, TARRANT & COMBS, LLP
`1715 Aaron Brenner Drive, Suite 800
`Memphis, TN 38120-4367
`Phone: 901.537.1010
`Facsimile: 901.537.1010
`mvorder-bruegge@wyattfirm.com
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`Attorney for Defendant
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`CERTIFICATE OF CONSULTATION
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` The undersigned attorney hereby certifies that prior to the filing of this motion, multiple
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`consultations over several days including January 16, 2013, were held with Richard Carter,
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`attorney for plaintiff, to determine whether plaintiff would agree to the relief sought. Such
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`consultations were not successful to the extent that would allow defendant to present this motion
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`as unopposed, due to disagreement regarding advance control over what the requested reply
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`memorandum could contain.
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`s/ Mark Vorder-Bruegge, Jr.
`Mark Vorder-Bruegge, Jr.
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`Case 2:12-cv-02823-JPM-tmp Document 36 Filed 02/01/13 Page 5 of 5 PageID 202
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`CERTIFICATE OF SERVICE
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` The foregoing document was filed using the Court’s CM/ECF system, automatically effecting
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`service on counsel of record for all parties who have appeared in this action on the date of such
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`service.
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`s/ Mark Vorder-Bruegge, Jr.
`Mark Vorder-Bruegge, Jr.
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`60319987.1
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