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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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`BARNES & NOBLE, INC.
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`Defendant.
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`No.: 2:12-cv-02823-JPM-tmp
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`ORDER DENYING MOTION TO TRANSFER VENUE
`
`Before the Court is Defendant Barnes & Noble, Inc.’s
`(“Defendant” or “Barnes & Noble”) Motion to Transfer Venue
`Pursuant to 28 U.S.C. § 1404(a), filed January 7, 2013. (ECF
`No. 28.) For the reasons that follow, the Motion is DENIED.
`I. BACKGROUND
`
`This case concerns Defendant Barnes & Noble’s alleged
`infringement of United States Patent No. 6,771,290 (the “‘290
`patent”). (ECF No. 1.) Plaintiff B.E. Technology, LLC
`(“Plaintiff or “B.E.”) is the assignee of the ‘290 patent (ECF
`No. 32 at 2), currently owning “all right, title, and interest”
`in the patent “throughout the period of the infringement” (ECF
`No. 1 ¶ 10).
`B.E. alleges that Barnes & Noble infringed the ‘290 patent
`“by using, selling, and offering to sell in the United States
`tablet computer products that directly infringe at least Claim 2
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`of the ‘290 patent either literally or under the doctrine of
`equivalents.” (Id. ¶ 11.) B.E. alleges “[t]he accused products
`include Nook Simple Touch; Nook Simple Touch with GlowLight;
`Nook Color; [and] Nook Tablet.” (Id.)
`B.E. filed a Complaint in this Court on September 21, 2012.
`(ECF No. 1.) Barnes & Noble filed its Answer on December 31,
`2012 (ECF No. 26) and its Motion to Transfer Venue on January 7,
`2013 (ECF No. 28). B.E. filed its Memorandum in Opposition to
`Defendant’s Motion to Transfer Venue on January 25, 2013. (ECF
`No. 32.) With leave of Court, Barnes & Noble filed a Reply
`Memorandum in Support of Its Motion to Transfer on February 13,
`2013. (ECF No. 39.) On February 14, 2013, Barnes & Noble filed
`a Motion to Stay pending resolution of its Motion to Transfer
`Venue. (ECF No. 40.) The Court granted Barnes & Noble’s Motion
`to Stay the same day. (ECF No. 41.)
`Barnes & Noble seeks to transfer this case to the Northern
`District of California. (ECF No. 28-1 at 2.) To support its
`Motion, Barnes & Noble contends that “the vast majority of
`activities related to Barnes & Noble’s accused NOOK® products
`take place at Barnes & Noble’s offices in Palo Alto,
`California.” (Id.) Additionally, Barnes & Noble asserts that
`its employees with knowledge of the accused products and a
`majority of third-party witnesses on whom it may rely are also
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`located in or around the Northern District of California. (Id.
`at 3-4.)
`B.E. opposes Barnes & Noble’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. 32 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 ‘290 patent. (ECF No. 32 at 1.) Hoyle
`has been a resident of Tennessee since April, 2006. (Id. at 2.)
`B.E. argues that transfer is inappropriate because it has
`substantial connections with this district. B.E. argues that
`Hoyle has been “present in this District since 2006, and B.E.
`since at least 2008,” and 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 patents-in-suit,
`are located in this District. (Id. at 4, 5, 12-13.)
`II. STANDARD
`
`Barnes & Noble moves the Court to transfer this case to the
`Northern District of California pursuant to 28 U.S.C. § 1404(a).
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`(ECF No. 28.) The statute provides that “[f]or the convenience
`of the parties and witnesses, in the interest of justice, a
`district court may transfer any civil action to any other
`district or division where it might have been brought.” 28
`U.S.C. § 1404(a). “As the permissive language of the transfer
`statute suggests, district courts have ‘broad discretion’ to
`determine when party ‘convenience’ or ‘the interest of justice’
`make a transfer appropriate.” Reese v. CNH Am. LLC, 574 F.3d
`315, 320 (6th Cir. 2009).
`
`In determining whether to transfer a case under § 1404(a),
`the court must first determine whether the claim could have been
`brought in the transferee district. 28 U.S.C. § 1404(a)
`(allowing transfer to any other district in which the claim
`“might have been brought”). Once the court has made this
`threshold determination, the court must then determine whether
`party and witness “convenience” and “the interest of justice”
`favor transfer to the proposed transferee district. Reese, 574
`F.3d at 320; Esperson v. Trugreen Ltd., No. 2:10-cv-02130-STA-
`cgc, 2010 WL 4362794, at *5 (W.D. Tenn. Oct. 5, 2010), adopted
`2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010). In weighing these
`statutory factors, the court may still consider the private- and
`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
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`from the forum non conveniens doctrine.” Norwood v.
`Kirkpatrick, 349 U.S. 29, 31 (1955) (quoting All States Freight
`v. Modarelli, 196 F.2d 1010, 1011 (3d Cir. 1952)) (internal
`quotation marks omitted); Esperson, 2010 WL 4362794, at *5. The
`United States Court of Appeals for the Sixth Circuit has stated
`that when deciding “a motion to transfer under § 1404(a), a
`district court should consider the private interests of the
`parties, including their convenience and the convenience of
`potential witnesses, as well as other public-interest concerns,
`such as systemic integrity and fairness, which come under the
`rubric of ‘interests of justice.’” Moore v. Rohm & Haas Co.,
`446 F.3d 643, 647 n.1 (6th Cir. 2006).
`Additionally, the “interest of justice” factor has been
`interpreted broadly by courts, influenced by the individualized
`circumstances of each case. The United States Court of Appeals
`for the Federal Circuit has set forth a non-exhaustive list of
`pertinent public-interest factors:
`The public interest factors include (1) the
`administrative
`difficulties
`flowing
`from
`court
`congestion; (2) the local interest in having localized
`interests decided at home; (3) the familiarity of the
`forum with the law that will govern the case; and (4)
`the avoidance of unnecessary problems of conflicts of
`laws or in the application of foreign law.
`
`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
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`favor of transfer); Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623, 633 (W.D. Mich. 2009) (considering
`additional factors such as the relative docket congestion of
`each district).
`
`Initially, B.E. argues that there is a strong presumption
`in favor of its choice of forum, and 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. 32 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
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`be considered, but is entitled to less deference. Discussing
`the difference between the common-law doctrine of forum non
`conveniens and the federal transfer-of-venue statute in Norwood,
`the Supreme Court stated,
`When Congress adopted § 1404(a), it intended to
`do more than just codify the existing law on forum non
`conveniens. . . . [W]e believe that Congress, by the
`term “for the convenience of parties and witnesses, in
`the interest of justice,” intended to permit courts to
`grant
`transfers
`upon
`a
`lesser
`showing
`of
`inconvenience. This is not to say that the relevant
`factors have changed or that the plaintiff’s choice of
`forum is not to be considered, but only that the
`discretion to be exercised is broader.
`
`Norwood, 349 U.S. at 32; see also Lemon v. Druffel, 253 F.2d
`680, 685 (6th Cir. 1958) (“The choice of the forum by the
`petitioner is no longer as dominant a factor as it was prior to
`the ruling in Norwood v. Kirkpatrick[.]”); Esperson, 2010 WL
`4362794, at *5-6.
`Defendant’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
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`he desires to transfer the litigation is the more convenient one
`vis a vis the Plaintiff’s initial choice.” Roberts Metals,
`Inc., 138 F.R.D. at 93 (quoting Mead Corp. v. Oscar J. Boldt
`Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981)) (internal
`quotation marks omitted). If the court determines that the
`“balance between the plaintiff’s choice of forum and defendant’s
`desired forum is even, the plaintiff’s choice of [forum] should
`prevail.” Stewart v. Am. Eagle Airlines, Inc., No. 3:10-00494,
`2010 WL 4537039, at *2 (M.D. Tenn. Nov. 3, 2010).
`III. ANALYSIS
`Barnes & Noble asserts that B.E. could have brought this
`action in the Northern District of California. (See ECF No. 22-
`1 at 6.) B.E. does not dispute this assertion. (See ECF No. 32
`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 Barnes & Noble 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).
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`A. Convenience of the Witnesses
`When asserting that a transferee district is more
`convenient for witnesses, a party “must produce evidence
`regarding the precise details of the inconvenience” of the forum
`chosen by the plaintiff. Esperson, 2010 WL 4362794, at *8. To
`satisfy its burden, the movant must do “more than simply
`assert[] that another forum would be more appropriate for the
`witnesses; he must show that the witnesses will not attend or
`will be severely inconvenienced if the case proceeds in the
`forum district.” Id. (quoting Roberts Metals, Inc., 138 F.R.D.
`at 93). Further, “[t]o sustain a finding on [this factor] . . .
`the party asserting witness inconvenience has the burden to
`proffer, by affidavit or otherwise, sufficient details
`respecting the witnesses and their potential testimony to enable
`a court to assess the materiality of evidence and the degree of
`inconvenience.” Eaton v. Meathe, No. 1:11-cv-178, 2011 WL
`1898238, at *3 (W.D. Mich. May 18, 2011) (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.
`Barnes & Noble contends that witness convenience favors
`transfer to the Northern District of California. (ECF No. 37 at
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`7-8.) To support this contention, Barnes & Noble asserts that a
`majority of the witnesses on which it intends to rely are
`located in that district. These witnesses include Barnes &
`Noble employees located at its Palo Alto, California,
`facilities; employees of third-party companies such as Netflix,
`Inc., and Hulu, LLC, both of which are non-parties to the
`instant litigation that B.E. has indicated produce “programs,
`features, firmware, or applications” for use on the allegedly
`infringing Barnes & Noble products (ECF No. 39 at 3); and third-
`party witnesses related to prior art. (ECF No. 28-1 at 7-8; ECF
`No. 39 at 3-5.)
`In response, B.E. argues that “transfer to the Northern
`District of California would be equally inconvenient to B.E.’s
`witnesses, none of whom is located in the Northern District of
`California.” (ECF No. 32 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, 7-8.)
`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
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`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
`Barnes & Noble asserts that its “witnesses work and/or
`reside primarily in the Northern District of California, and
`none are located in Tennessee.” (ECF No. 28-1 at 7-8.) Barnes
`& Noble asserts that the accused products – the Nook product
`line – were designed and developed in the transferee district.
`(Id. at 8.) Additionally, Barnes & Noble’s office located in
`the Northern District of California “houses more than 400
`employees, including the employees who are most knowledgeable in
`the company regarding the design, development, and operation of
`the accused products.” (Id.) In its Reply, Barnes & Noble
`defends its general identification of potential employee-
`witnesses by stating that the testimony of any employee involved
`with the Nook product line, “no matter which individual
`employees are ultimately identified, is plainly relevant to the
`issues in this case.” (ECF No. 39 at 5.) Barnes & Noble also
`notes that “there are likely some witnesses . . . relevant to
`other issues, such as the sales and marketing of the accused
`NOOK® products, that may be located outside the Northern District
`of California.” (ECF No. 28-1 at 3 n.3.)
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`Barnes & Noble does not provide any evidence showing that
`its employees will be unwilling to testify in the Western
`District of Tennessee if asked to do so, but notes generally
`that travel to the transferor district to testify would “impose
`a significant inconvenience” for its witnesses, and that their
`absence from Barnes & Noble’s Northern California office would
`“adversely affect” its operations. (ECF No. 28-1 at 8.) 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 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
`Barnes & Noble’s employees will be able to attend absent any
`evidence to the contrary.
`Therefore, regarding its employees, Barnes & Noble does not
`satisfy its burden. Barnes & Noble 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 for [its] witnesses.” (ECF
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`No. 28-1 at 8.) 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. 32 at 7.) In the instant case, the Court
`agrees that Barnes & Noble’s employees related to the
`development and operation of its Nook products are located in
`the transferee district, and that that their testimony is likely
`material. Barnes & Noble, however, has only provided a general
`statement about the necessity of those employees to its business
`and has not indicated how many employees it would be inclined to
`call as potential witnesses. Additionally, Barnes & Noble has
`indicated that other employee-witnesses not located in the
`transferee district may be called as witnesses. As a result,
`the Court cannot assess the degree to which Barnes & Noble’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)).
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`Barnes & Noble 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. (See ECF No. 39 at 3-4.) While
`B.E. did not specifically identify any witnesses beyond Hoyle,
`however, B.E. does not have the burden to do so. Despite B.E.
`not identifying any individuals beyond Hoyle, Barnes & Noble’s
`identification of some 400 employees “knowledgeable of the
`design, development, and operation of the NOOK® products” as
`material witnesses does not satisfy its burden on this factor.
`(Gilbert Decl., ECF No. 28-2, ¶¶ 3.) 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 Barnes &
`Noble’s California-based employees will be deposed in California
`where B.E.’s lead counsel is based.” (ECF No. 32 at 10.) This
`further indicates that the witness-convenience factor does not
`weigh in favor of transfer. See Hunter Fan, 2006 WL 1627746, at
`*2 (finding relevant that the plaintiff planned to take
`depositions of the defendant’s witnesses in California in
`determining that the witness convenience factor did not favor
`transfer).
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`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). Barnes &
`Noble, referencing arguments related to prior-art witnesses made
`by Google, Inc. (see No. 2:12-cv-2830-JPM-tmp, ECF No. 22-1, at
`5-6), and Apple, Inc. (see No. 2:12-cv-2831-JPM-tmp, ECF No. 22-
`1, at 8-9), asserts that there are non-party witnesses who have
`knowledge about prior art related to the patent-in-suit. (ECF
`No. 28-1 at 4.)
`Additionally, Barnes & Noble argues that B.E., in its
`infringement contentions filed after the Motion to Transfer, has
`implicated “Barnes & Noble products and/or services with
`programs, features, firmware, or applications from two third-
`party companies, Netflix and Hulu, both of which are
`headquartered in California.” (ECF No. 39 at 3.) As a result,
`potential witnesses from these third parties are likely located
`within the transferee district, specifically, or within the
`state of California, generally. (Id. at 4.) Barnes & Noble
`claims that it will not be able to compel these witnesses to
`testify at trial if the case remains in Tennessee, but will be
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`able to compel the witnesses to testify at trial, whether they
`reside within the transferee district or within the state of
`California, if the case is transferred to the Northern District
`of California. (Id. at 4 n.1 (citing 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) . . . .”)).)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Barnes & Noble has made “no showing whatsoever regarding the
`location, availability, or convenience of third party witnesses
`with knowledge of potential prior art.” (ECF No. 32 at 10.)
`B.E. contends that Barnes & Noble has only relied on the
`arguments of two other defendants – Google, Inc., and Apple,
`Inc. – and has neither identified any prior-art witnesses
`itself, nor made a “showing that the third party testimony will
`be material or important.” (Id. at 11.) Finally, B.E. argues
`that Barnes & Noble has not established the “current locations”
`of any potential prior-art witnesses to the extent that
`compulsory process would be available in the transferee or
`transferor districts. (Id. at 11-12.)
`The availability of compulsory process for unwilling
`witnesses is a consideration closely related to the convenience-
`
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`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 non-
`party witnesses living in the state of California to testify at
`trial. See Fed. R. Civ. P. 45(b)(2). In contrast, the non-
`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
`therefore could be less persuasive.” Rinks, 2011 WL 691242, at
`*4.
`Barnes & Noble, however, has not (1) indicated the number
`of non-party witnesses it may require for trial; (2) indicated
`whether it intends to call any of the prior-art witnesses
`identified in Google, Inc.’s Motion to Transfer (see No. 2:12-
`cv-2830-JPM-tmp, ECF No. 22-1, at 5-6); (3) disclosed the
`particulars of the testimony of the potential prior-art
`witnesses or the third-party witnesses from Netflix, Inc., and
`Hulu, LLC; or (4) indicated why depositions of prior-art
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`witnesses or third-party witnesses would be inadequate and live
`testimony required. To the extent these non-party witnesses’
`testimony may be presented by deposition, witness inconvenience
`would not be an issue. Barnes & Noble’s general statements are
`not sufficient to allow the Court to determine whether live
`testimony of Barnes & Noble’s non-party witnesses is necessary.
`Further, Barnes & Noble 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 does
`not weigh in favor of transfer.
`
`B. Convenience of the Parties
`Barnes & Noble argues that the Northern District of
`California is “clearly a more convenient venue for this
`litigation.” (ECF No. 22-1 at 2.) While Barnes & Noble
`organizes its arguments somewhat differently than the Court, the
`Court finds the considerations relevant to the convenience-of-
`the-parties factor are the location of the sources of proof and
`the parties’ financial hardships due to litigation in the chosen
`forum.
`1. Location of Sources of Proof
`
`Barnes & Noble argues that “the potentially relevant Barnes
`& Noble documents relating to the accused NOOK® products” and
`“the physical and documentary evidence relevant to at least the
`critical issue of alleged infringement are located in the
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`Northern District of California.” (ECF No. 28-1 at 8.) Barnes
`& Noble contends that the volume of these “potentially relevant
`documents . . . far exceeds the volume of B.E.’s potentially
`relevant documents maintained in Tennessee.” (ECF No. 39 at 4.)
`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. 32 at 5, 12.) B.E. notes that while Barnes
`& Noble’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 argues that Barnes & Noble has indicated that
`some relevant documents – namely those related to sales and
`marketing – are not located within the transferee district.
`(Id. (citing ECF No. 28-1 at 3 n.3).) B.E. also contends that
`“the location of relevant documentary evidence is increasingly
`less important in deciding motions to transfer,” and that
`because documents can be exchanged electronically, the weight
`given this factor should be minimal. (Id. at 12-13.) B.E.
`finally argues that this factor does not weigh in favor of
`transfer because “it can be expected that Barnes & Noble will
`eventually produce its documents to B.E.’s lead counsel in
`California, not to B.E. in Tennessee.” (Id. at 13.)
`
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`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))).
`
`The Court agrees that it is likely that the sheer volume of
`documents Barnes & Noble has in its possession outnumbers the
`patent-related documents in B.E.’s possession, but the Court
`disagrees that this is enough to tip the balance in favor of
`transfer. The Court finds that both parties maintain some
`documents in their respective districts; that both sets of
`documents will be integral to the proceedings; and that Barnes &
`
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`Noble will be expected to serve its documents to B.E.’s counsel
`in Northern California, not in the Western District of
`Tennessee. Barnes and Noble’s reliance on L&P Property
`Management Co. v. JTMD, LLC, No. 06-13311, 2007 WL 295027 (E.D.
`Mich. Jan. 29, 2007), is misplaced. (See ECF No. 28-1 at 8.)
`In L&P Property Management, the court found that transfer was
`appropriate as all of the movant’s relevant documents were
`located in the transferee district and there were no relevant
`documents in the transferor district. See L&P Prop. Mgmt. Co.,
`2007 WL 295027, at *4. In the instant case, Barnes & Noble
`indicated that some of its relevant documents are likely located
`outside the transferee district, and B.E. has shown that
`relevant documents are located in Tennessee. Taken together,
`the aforementioned facts indicate that as to the location of the
`sources of proof, the Northern District of California may only
`be 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
`Barnes & Noble argues that its witnesses “work and/or
`reside primarily in the Northern District of California, and
`none are located in Tennessee.” (ECF No. 28-1 at 7-8.) As a
`result, Barnes & Noble contends that travel to Tennessee would
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`“impose a significant inconvenience for [its] witnesses,” and as
`the likely trial witnesses are “the most knowledgeable” about
`the accused products, their absence “would adversely affect
`Barnes & Noble’s operations.” (Id. at 8.)
`B.E. states that it “would face a financial burden by
`having to litigate in the Northern District of California.”
`(ECF No. 32 at 14.) 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. 32-1, ¶ 9.) B.E. also states
`that “[i]t is reasonable to require companies with the wealth
`and size of Barnes & Noble to litigate in jurisdictions in which
`they regularly conduct business.” (ECF No. 32 at 7.)
`The Court has con