Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 1 of 25 PageID 284
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
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`
`SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC,
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`Defendant.
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`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
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`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Defendant.
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`Case No. 2:12-CV-2824 JPM tmp
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`JURY DEMAND
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`REQUEST HEARING ON MOTION
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`Case No. 2:12-CV-2825 JPM tmp
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`JURY DEMAND
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`REQUEST HEARING ON MOTION
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`
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`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO DEFENDANTS’ MOTION TO
`TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`Dated: February 8, 2013
`
`
`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
`
`
`
`

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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 2 of 25 PageID 285
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`
`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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`
`
`

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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 3 of 25 PageID 286
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`
`I.
`II.
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`III.
`IV.
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`V.
`
`
`INTRODUCTION ............................................................................................................. 1
`STATEMENT OF FACTS ................................................................................................ 2
`A.
`B.E. Technology, L.L.C ......................................................................................... 2
`B.
`B.E. v. SEA and B.E. v. STA ................................................................................ 3
`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
`A.
`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 5
`B.
`Private Factors Favor B.E.’s Choice of Forum ...................................................... 8
`1.
`Convenience of the Parties Weighs Against Transfer ............................... 8
`2.
`Convenience of the Witnesses Weighs Against Transfer .......................... 9
`a.
`Party Witnesses ............................................................................ 11
`b.
`Non-Party Witnesses .................................................................... 13
`Location of Sources of Proof ................................................................... 13
`The Samsung Defendants Would Not Be Materially Burdened
`Bearing The Expense of Litigating in the Western District of
`Tennessee ................................................................................................. 15
`Public Factors Favor B.E.’s Choice of Forum ..................................................... 16
`1.
`Transfer to the District of New Jersey or Northern District of
`California Would Delay Trial .................................................................. 16
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 17
`CONCLUSION ................................................................................................................ 18
`
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`3.
`4.
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`2.
`
`C.
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`TABLE OF CONTENTS
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`PAGE
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`
`i
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`

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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 4 of 25 PageID 287
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`
`
`
`TABLE OF AUTHORITIES
`
`Federal Cases
`
`Page(s)
`
`Adoma v. Univ. of Phoenix, Inc.,
`711 F. Supp. 2d 1142 (E.D. Cal. 2010)....................................................................................10
`
`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) ......................................................................................14
`
`Board of Trs. v. Baylor Heading & Air Conditioning, Inc.,
`702 F. Supp. 1253 (E.D. Va. 1988) .........................................................................................10
`
`Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623 (W.D. Mich. 2009) .................................................................................14
`
`E2Interactive, Inc. v. Blackhawk Network, Inc.,
`2010 WL 3937911 (W.D. Wis. Oct. 6, 2010) ..........................................................................16
`
`Hanning v. New England Mut. Life Ins. Co.,
`710 F. Supp. 213 (S.D. Ohio 1989) ...........................................................................................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) .........................................................................5
`
`Kerobo v. Southwestern Clean Fuels Corp.,
`285 F.3d 531 (6th Cir. 2002) .....................................................................................................3
`
`L & P Prop. Mgmt. Co. v. JTMD, LLC,
`2007 WL 295027 (E.D. Mich. Jan. 29, 2007)............................................................................5
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ..................................................................9, 17, 18
`
`MCNIC Oil & Gas Co. v. IBEX Resources Co., L.L.C.,
`23 F. Supp. 2d 729 (E.D. Mich. 1998) .......................................................................................4
`
`Max Rack, Inc. v. Hoist Fitness Sys., Inc.,
`2006 WL 640497 (S.D. Ohio March 10, 2006) .......................................................................14
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)..............................................................................................5, 6
`
`ii
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`

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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 5 of 25 PageID 288
`
`
`TABLE OF AUTHORITIES
`(CONT)
`
`Federal Cases
`
`Page(s)
`
`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) ...................................................................4, 15
`
`Optima, Inc. v. Republic Indus., Inc.,
`1995 WL 72430 (E.D. La. Feb. 21, 1995) ...............................................................................17
`
`Parsons v. Chesapeake & Ohio Ry. Co.,
`375 U.S. 71 (1963) ...................................................................................................................16
`
`Plough, Inc. v. Allergan, Inc.,
`741 F. Supp. 144 (W.D. Tenn. 1990).........................................................................................4
`
`Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
`2003 WL 21244142 (W.D. Tenn. May 28, 2003) .....................................................................4
`
`Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc.,
`138 F.R.D. 89 (N.D. Ohio 1991) .............................................................................................11
`
`Samsung Elecs. Co. v. Rambus, Inc.,
`386 F. Supp. 2d 708 (E.D. Va. 2005) ......................................................................................10
`
`Siteworks Solutions, LLC v. Oracle Corp.,
`2008 WL 4415075 (W.D. Tenn. Sept. 22, 2008) .....................................................................15
`
`Stewart Organization, Inc. v. Ricoh Corp.,
`487 U.S. 22 (1988)) ...................................................................................................................4
`
`Tuna Processors, Inc. v. Hawaii Int’l Seafood,
`408 F. Supp. 2d 358 (E.D. Mich. 2005) .....................................................................................4
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ...................................................................................................................5
`
`Viron Int’l Corp. v. David Boland, Inc.,
`237 F. Supp. 2d 812 (W.D. Mich. 2002) .................................................................................11
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`iii
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`

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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 6 of 25 PageID 289
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`TABLE OF AUTHORITIES
`(CONT)
`
`Federal Statutes
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`Page(s)
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`28 U.S.C. § 1404 ..............................................................................................................................2
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`28 U.S.C. § 1404(a) ...................................................................................................................3, 18
`
`Fed. R. Civ. P. 45(b)(2)..................................................................................................................13
`
`Rules
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`
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`
`
`iv
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`

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`I.
`
`INTRODUCTION.
`
`This case arises from the infringement by defendant Samsung Electronics America, Inc.
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`(“SEA”) and Samsung Telecommunications America, LLC (“STA”) (together, “the Samsung
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`defendants”) of United States Patent No. 6,771,290. The patent describes and claims an
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`invention related to user interfaces for maintaining, organizing, and communicating information
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`accessible to a computer network such as the Internet and, in particular, to user interfaces that
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`provide the user with availability to that information in a personalized manner. Plaintiff B.E.
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`Technology, L.L.C. (“B.E.”) has brought this action because the Samsung defendants have
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`infringed B.E.’s patents in this District and across the United States. The inventor, Martin David
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`Hoyle, is also the Chief Executive Officer of B.E. Mr. Hoyle has lived in the Western District of
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`Tennessee since 2006 and currently resides at 116 W. Viking Drive, Cordova, Tennessee, part of
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`the City of Memphis. Mr. Hoyle has directed B.E.’s business from this District since at least
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`2008.
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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., the Samsung defendants have asked the
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`Court to transfer their cases from the inventor’s and the plaintiff company’s home District to
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`SEA’s home, the District of New Jersey (or alternatively, to the Northern District of California
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`where other B.E. defendants have sought transfer), but not STA’s home, which is located in the
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`Northern District of Texas. These cases are not like others in which plaintiffs take 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 patent.
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`Ignoring completely the relevant facts establishing Mr. Hoyle’s and B.E.’s longstanding
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`connection to this District, the Samsung defendants argue that transfer to the District of New
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`Jersey would be more convenient because SEA’s headquarters is located in Ridgefield Park,
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`1
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`New Jersey, that some unidentified STA employees regularly travel to SEA’s headquarters for
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`work, and that the facilities relevant to this case are located in New Jersey. Alternatively, the
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`Samsung defendants contend that it would be more convenient to transfer these cases to the
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`Northern District of California, where other B.E. defendants have sought transfer and where the
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`Samsung defendants apparently maintain additional facilities that may be related to this action.
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`Transfer to New Jersey or California might be more convenient for some the Samsung witnesses,
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`but it would be less convenient for B.E and other Samsung witnesses. Transfer under 28 U.S.C.
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`§ 1404 requires a “more convenient forum,” not merely a “forum likely to prove equally
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`convenient or inconvenient,” or “a forum the defendant finds more to its liking.” Because the
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`Samsung defendants can offer no more, their motion to transfer 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”) (the “patent-in-suit”). Id. ¶ 7. Mr. Hoyle has been B.E.’s Chief Executive Officer
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`since 2008. Id. ¶ 6. He previously held other positions with B.E., including serving as its
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`President from 1997 to 2001. Id. Mr. Hoyle is the named inventor of the patent-in-suit.1 Id. ¶ 7.
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`In April 2006, Mr. Hoyle and his family moved from Mandeville, Louisiana to Eads,
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`Tennessee. Id. ¶ 2. They left Louisiana in the aftermath of Hurricane Katrina. Id. Mr. Hoyle
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`has remained in the Memphis area, and in this judicial district, ever since. See id. ¶¶ 2-4. In
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`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
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`- 2 -
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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. Mr. Hoyle runs the business of B.E. from his home office, including meeting with
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`the B.E. Board of Directors, filing patent applications, and coordinating the enforcement of
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`B.E.’s intellectual property rights. Id. ¶ 6.
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`B.
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`B.E. v. SEA and B.E. v. STA.
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`B.E. filed its complaints in these matters on September 21, 2012.2 STA D.E. 1; SEA D.E.
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`1. The Samsung defendants filed their Answers on December 31, 2012. STA D.E. 22; SEA
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`D.E. 26. The SEA and STA cases are two of nineteen cases B.E. has filed in the Western
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`District of Tennessee for the infringement of the patent-in-suit and related patents not asserted
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`against the SEA and STA. The defendants in these nineteen cases include several of the world’s
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`most sophisticated technology companies, each of which regularly conducts business on a
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`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
`
`
`2 All citations to the docket in B.E. v. STA, Case Number 2:12-cv-2824 will be reflected as “STA
`D.E.” While all citations to the docket in B.E. v. SEA, Case Number 2:12-cv-2825 will be
`reflected as “SEA D.E.”
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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 10 of 25 PageID 293
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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).
`
`“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)).
`
`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 District of
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`New Jersey or the Northern District of California because the Samsung defendants infringe the
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`patent-in-suit in those districts, just as they do in this District. The relevant question presented
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`by the Samsung defendants’ motion is whether the Samsung defendants have met their high
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`burden to establish that the District of New Jersey or the Northern District of California is “a
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`more convenient forum,” not merely an “equally convenient or inconvenient” forum when
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`compared to the Western District of Tennessee. Van Dusen v. Barrack, 376 U.S. 612, 645-46
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`(1964). The Samsung defendants have 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 any mention of relevant facts, the Samsung defendants argue that B.E.’s choice
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`of venue should be disregarded because its “contacts to this district are minimal and unrelated to
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`these actions.” STA D.E. 27-1 at 15; SEA D.E. 31-1 at 15. That is not true. Unlike the cases on
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`which the Samsung defendants rely where the plaintiffs’ contacts with the chosen forum were
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`recent or manufactured for the purpose of litigation, Mr. Hoyle has been physically present in
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`this District since 2006, and B.E. since at least 2008. Compare Hoyle Decl. ¶¶ 2-7 with In re
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`Microsoft Corp., 630 F.3d 1361, 1362 (Fed. Cir. 2011) (“[Plaintiff] is operated from the United
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`Kingdom by the patent’s co-inventor and company’s managing member” and employed no
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`individuals at its office in the Eastern District of Texas.); In re Zimmer Holdings, 609 F.3d 1378,
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`1381 (Fed. Cir. 2010) (“[Plaintiff] transported copies of its patent prosecution files from
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`Michigan to its Texas office space, which it shares with another of its trial counsel’s clients.”);
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`L & P Prop. Mgmt. Co. v. JTMD, LLC, 2007 WL 295027, at *3 (E.D. Mich. Jan. 29, 2007)
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`(“Plaintiffs do not plan to call any of its Michigan employees as witnesses in this matter; and []
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`Plaintiffs do not anticipate that any of its documents in Michigan would be used in the
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`litigation.”).
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`The Samsung defendants mostly avoid the significance of Mr. Hoyle’s presence in this
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`District, arguing instead that “B.E. Technology established its alleged ‘presence’ in the State
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`immediately prior to this lawsuit,” by registering to conduct business within the state. STA D.E.
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`27-1 at 14; SEA D.E. 31-1 at 14. The Samsung defendants cite no authority establishing that the
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`existence of a business registration is important, much less relevant, to demonstrating a
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`plaintiff’s connection to a chosen forum. To the contrary, the Court should identify a company’s
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`“‘nerve center[,]’ the place of actual direction, control and coordination.” In re Microsoft Corp.,
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`630 F.3d at 1364. Mr. Hoyle’s office in Cordova is B.E.’s “nerve center.” It is and has been the
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`place from which Mr. Hoyle has controlled and directed B.E. business activities since at least
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`2008. Hoyle Decl. ¶ 6. The Samsung defendants can muster no evidence to the contrary.
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`Not only is a business registration not a prerequisite to establishing a connection to a
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`forum, B.E. does not rely on the fact that it is registered to conduct business in Tennessee as a
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`basis for establishing its connection to the District. B.E. registered because it has a connection to
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`Tennessee; it did not register to establish a connection. If the timing of B.E.’s registration is to
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`be questioned, it should be understood that the registration was made after Mr. Hoyle chose to
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`remain in Tennessee, rather than return to Louisiana. Id. ¶ 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.
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`- 6 -
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`The Samsung defendants also question B.E.’s connection to this District by observing
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`that in “a patent application filed in December 2011 and published in June 2012” B.E. identified
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`Mr. Hoyle’s “residence as New Orleans.” STA D.E. 27-1 at 5; SEA D.E. 31-1 at 5. The
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`Samsung defendants offer no information about Mr. Hoyle’s personal situation or the
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`circumstances that led him briefly to seek to establish residence in New Orleans when the
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`December 2011 patent application was filed. See Hoyle Decl. ¶ 4. Nor can the Samsung
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`defendants present any information that demonstrates Mr. Hoyle’s statements in this Court are
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`inconsistent with the representation made to the Patent Office about his residency. Mr. Hoyle is
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`a resident of this District and his presence and residence here have nothing at all do with a desire
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`to manufacture venue. The Samsung defendants’ assault on this straw man is not sufficient to
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`carry their burden.
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`The Samsung defendants also point to B.E.’s filing with the Michigan Secretary of State
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`presumably to suggest that B.E. only operates from there and not the Western District of
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`Tennessee. Specifically, the Samsung defendants state “B.E. Technology is a Delaware
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`corporation that . . . was registered to do business in only one location: Michigan.” STA D.E.
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`27-1 at 4; SEA D.E. 31-1 at 4 (emphasis added). Again the existence of a registration is not
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`dispositive legally or factually. Moreover, the fact that B.E. was registered to conduct business
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`in Michigan, or even that B.E. employs an accountant there, Hoyle Decl. ¶ 5, does not prove that
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`Michigan is B.E.’s nerve center, or that B.E. has not been operating from the Western District of
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`Tennessee since at least 2008.
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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. Mr. Hoyle is B.E.’s current
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`- 7 -
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`CEO, has been since 2008, and operates B.E. from this District. Moreover, the physical location
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`of B.E.’s records, including documents demonstrating the conception and reduction to practice of
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`Mr. Hoyle’s inventions, is neither a recent development nor a fictitious arrangement by counsel
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`strategically to place important evidence in the Western District of Tennessee. Mr. Hoyle, as
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`inventor, will likely be a key B.E. witness, but the Samsung defendants make no attempt to
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`overcome the significance of his presence in the District. B.E.’s contacts with the forum were
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`not manufactured for litigation and as a result, its choice of forum is entitled to “substantial
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`weight.”
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`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 the defendants’
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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 District of New
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`Jersey. As previously explained, B.E. and its CEO, the inventor of the patent-in-suit, reside
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`within the District. B.E.’s corporate documents and records are here as well. Outside of witness
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`convenience, the Samsung defendants do 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 the Samsung defendants to litigate in jurisdictions in which they regularly
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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 15 of 25 PageID 298
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`conduct business.3 See Lucent Techs., Inc. v. Aspect Telecomms. Corp., 1997 WL 476356, at *4
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`(E.D. Pa. Aug. 20, 1997) (finding it reasonable to force a public company with “$300 million a
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`year in sales and approximately $216 million in current assets, to travel to places where it is
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`subject to jurisdiction in order to defend its corporate interests”). The Samsung defendants are
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`large and wealthy companies. SEA reported for the three-months ending September 30, 2012
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`that it generated $2,439,533,345 in net sales, with net income of $3,142,320. Declaration of
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`Daniel Weinberg (“Weinberg Decl.”) Ex. A.4 STA reported for the three-months ending
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`September 30, 2012 that it generated $3,966,203,289 in net sales, with net income of
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`$37,812,444. Id. SEA further reported $9,887,257,286 in total current assets. Id. STA also
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`reported $2,874,435,008 in total current assets. Id. As of February 5, 2013, the Samsung
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`defendants’ parent company, Samsung Electronics Co. Ltd., had a market capitalization in excess
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`of $183,000,000,000. It is doubtful that the Samsung defendants will suffer hardship or
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`inconvenience by litigating 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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`The Samsung defendants argue that the District of New Jersey or the Northern District of
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`California would be “far more convenient” venues for their own witnesses because, “[s]imply
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`put, it is more convenient for witnesses to testify at home” and because the Samsung defendants
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`purports to have more party witnesses than B.E. STA D.E. 27-1 at 10; SEA D.E. 31-1 at 10. By
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`the same logic, transfer to either district would be equally inconvenient to B.E.’s witnesses, none
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`of whom is located in the District of New Jersey or the Northern District of California. In a bit
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`of sleight of hand, the Samsung defendants obscure the fact that most, if not all, of the party
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`3 Samsung sells products on a massive scale in Tennessee and throughout the United States.
`STA D.E. 27-1 at 3-4; SEA D.E. 31-1 at 3-4.
`4 The financial information provided herein, with the exception of Samsung Electronics Co.
`Ltd.’s market capitalization, was converted from Korean Won to U.S. Dollars using the provided
`conversion rate of ￦1,118.6 to US $1.
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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 16 of 25 PageID 299
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`witnesses relevant to the STA accused products are located in and around Richardson, Texas, not
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`New Jersey or California. See Declaration of Justin Denison (“Denison Decl.”) ¶ 6.5 Transfer to
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`the District of New Jersey or the Northern District of California, therefore, would be expensive
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`and inconvenient to B.E.’s witnesses and STA’s witnesses alike.
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`Moreover, the Samsung defendants offer precious little about who the STA witnesses are,
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`what they will say, and why they are important to this case. See Denison Decl. ¶ 8; Declaration
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`of Daniel Schinasi (“Schinasi Decl.”) ¶ 7.6 “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,
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`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.”). The Samsung defendants
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`provide few clues of that.
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`5 The Declaration of Justin Denison in Support of Samsung’s Motion to Transfer Venue to the
`District of New Jersey was filed at STA D.E. 27-13 and SEA D.E. 31-13.
`6 The Declaration of Daniel Schinasi in Support of Samsung’s Motion to Transfer Venue to the
`District of New Jersey was filed at STA D.E. 27-14 and SEA D.E. 31-14.
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`Case 2:12-cv-02825-JPM-tmp Document 38 Filed 02/08/13 Page 17 of 25 PageID 300
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`a.
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`Party Witnesses.
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`SEA claims that its “employees possess evidence and have knowledge regarding issues
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`relevant to this case, including design, operation, sales, marketing, and financial performance of
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`the Accused Products in the United States.” STA D.E. 27-1 at 10-11; SEA D.E. 31-1 at 10-11.
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`Similarly, STA claims that its “employees regularly travel to SEA’s Ridgefield facilities in
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`connection with their employment.” Id. at 11. But neither offer any particularized information
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`enabling the Court to ascertain how much weight to give the claim of inconvenience. It is “the
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`materiality and importance of the testimony of prospective witnesses, and not merely the number
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`of witnesses, [that] is crucial to this inquiry.” Rinks v. Hocking, 2011 WL 691242, at *3 (W.D.
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`Mich. Feb. 16, 2011) (citing Viron Int’l Corp. v. David Boland, Inc., 237 F. Supp. 2d 812, 816
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`(W.D. Mich. 2002)).
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`Although SEA identifies some marketing and sales witnesses, SEA fails to identify any
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`witnesses related to the design and operation of the SEA accused products by name, position
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`titl