Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 1 of 22 PageID 115
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`
`B.E. Technology, L.L.C.,
`
`
`Sony Computer Entertainment America
`LLC,
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`MEMORANDUM IN SUPPORT OF SONY COMPUTER ENTERTAINMENT
`AMERICA LLC’S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. §
`1404(A) TO THE U.S. DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`CALIFORNIA
`
`
`
`Defendant Sony Computer Entertainment America LLC (“SCEA”) respectfully submits
`
`this memorandum in support of its motion to transfer this action to the United States District
`
`Court for the Northern District of California, pursuant to 28 U.S.C. § 1404(a). To reduce the
`
`Court’s need to review substantially duplicative documents, this memorandum also supports the
`
`transfer motions being filed by two affiliates of SCEA, Sony Electronics Inc. (“SEL”) and Sony
`
`Mobile Communications (U.S.A.) Inc. (“SoMC”), in the separate actions filed against them in
`
`this Court by the same plaintiff, B.E. Technology, L.L.C. (“BET”) and therefore includes
`
`relevant factual information pertaining to each of the three moving defendants.
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`Civil Action No. 2:12-cv-02826-JPM-tmp
`
`
`
`
`
`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 2 of 22 PageID 116
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`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`INTRODUCTION............................................................................................................. 1 
`
`STATEMENT OF THE FACTS ..................................................................................... 3 
`
`A. 
`
`The Accused Sony Entities Are Either Headquartered in California or Have
`Significant Operations There. ................................................................................. 4 
`
`1. 
`
`2. 
`
`3. 
`
`SCEA Is Headquartered in the Northern District of California .................. 4 
`
`SEL Is Headquartered in California ............................................................ 5 
`
`SoMC Maintains a Significant Business Presence in California ................ 6 
`
`B. 
`
`C. 
`
`D. 
`
`BET’s Inventor/CEO Allegedly Lives in Tennessee, but all Relevant BET
`Business Has Been Conducted Outside of Tennessee. ........................................... 7 
`
`Many of the Defendants in this Litigation Are Located in California .................... 9 
`
`Third Party Witnesses Are Not Located in Tennessee ......................................... 10 
`
`III.  APPLICABLE LAW ...................................................................................................... 11 
`
`IV.  ANALYSIS ...................................................................................................................... 12 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`This Case Could Have Been Brought in the Northern District of California. ...... 12 
`
`The Private Factors Strongly Favor a Transfer ..................................................... 12 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`It Is Clearly More Convenient for the Witnesses to Litigate this Action in
`the Northern District of California ............................................................ 12 
`
`The Location of Sources of Proof, Including Documents and Things Is in
`California .................................................................................................. 16 
`
`The Availability of Compulsory Process to Compel Unwilling Witnesses
`Strongly Favors the Northern District of California ................................. 16 
`
`No Other Administrative Difficulties or Practical Problems Favor This
`District over the Northern District of California ....................................... 17 
`
`Plaintiff’s Choice of Forum Is Not Dispositive. ................................................... 18 
`
`The Public Factors Favor a Transfer ..................................................................... 20 
`
`CONCLUSION ............................................................................................................... 20 
`
`V. 
`
`
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`-ii-
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`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 3 of 22 PageID 117
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`I.
`
`INTRODUCTION
`
`Sony respectfully requests that this case be transferred from the Western District of
`
`Tennessee (“the Western District”) because under the criteria established by 28 U.S.C. § 1404(a)
`
`and the law of this Circuit, it would be in the interest of justice and serve the convenience of the
`
`parties and witnesses to litigate the case in a district that is the location of the vast majority of
`
`likely trial witnesses and relevant evidence. The relevant discovery and the proofs for trial in
`
`this matter will primarily relate to technical product information (non-infringement), marketing
`
`and sales information (potential damages and possibly obviousness), and prior art (invalidity).
`
`None of these categories of proof –no witnesses or documents– will be found in the Western
`
`District for Sony. Rather, most of the relevant Sony witnesses and documents will be in the
`
`Northern District of California or within close proximity of that District. This is also true for
`
`third parties, prior art witnesses, and, as we understand, for the numerous other companies that
`
`BET has recently sued in the Western District for alleged infringement of U.S. Patent No.
`
`6,771,290 (“the ’290 Patent”) or related patents.
`
`Technical information relevant to the accusations against Sony can be found in Sony’s
`
`facilities in either the Northern District of California, the Southern District of California, Japan,
`
`or possibly Sweden. Marketing and sales information is also located in the Northern District of
`
`California or the Southern District of California. Much of the prior art relevant to the patent
`
`(which, in general terms, relates to the way that users access files stored on computer servers),
`
`can be found in the epicenter of the U.S. computer industry, the Northern District of California.
`
`As will be shown, all but two of the sixteen other defendants BET has sued in the
`
`Western District have significant operations in California, and nearly half are based there. We
`
`understand that not a single defendant is based in or has operations in Tennessee, excluding retail
`
`-1-
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`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 4 of 22 PageID 118
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`stores of two defendants. Many defendants have already filed motions to transfer to California
`
`and Sony understands that all of the other defendants will be filing motions to transfer as well.
`
`In these other motions to transfer and in this motion below, numerous third party
`
`witnesses not employed by any of the parties have been identified as having potentially relevant
`
`knowledge of the prior art for the ’290 Patent, and have been identified as residing in Northern
`
`California or working at Northern California companies. Such third party witnesses will not be
`
`subject to the compulsory subpoena power of the Western District, and indeed will be subject
`
`only to the subpoena power of the Northern District of California.
`
`Sony brings this motion understanding that ordinarily deference should be given to a
`
`plaintiff’s choice of forum, but, in this case, BET’s connection to the Western District is slight.
`
`BET was formed in Michigan, had operations in Louisiana and Michigan, and only registered to
`
`do business in Tennessee the day before filing the first of its nineteen patent infringement
`
`lawsuits. There is no evidence that BET performs any business in Tennessee, other than filing its
`
`patent infringement suits. The only connection this case has to the Western District is based on
`
`the alleged Tennessee residence of Martin David Hoyle, the ’290 Patent’s inventor and CEO of
`
`BET. However, the plaintiff in this case is BET, a Michigan and Louisiana based company, not
`
`Mr. Hoyle himself, and therefore little deference is due to Mr. Hoyle’s choice of residence.
`
`Regardless, Sony believes that any deference is strongly outweighed by the overwhelming
`
`amount of discovery and trial testimony that is expected to come from the Northern District of
`
`California and the area within its subpoena power, including from numerous third parties not in
`
`the suit and that are not subject to the subpoena power of the Western District.
`
`-2-
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`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 5 of 22 PageID 119
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`Sony submits that a balancing of the factors relevant to 28 U.S.C. § 1404(a) strongly
`
`favors transfer and therefore respectfully requests that this case be transferred to the Northern
`
`District of California.
`
`II.
`
`STATEMENT OF THE FACTS
`
`BET filed this patent infringement action against SCEA, SEL, and SoMC on September
`
`21, 20121 and now alleges that 133 allegedly Sony products infringe the claims of the ’290
`
`Patent. See Exs. P-1, P-2, P-3, Initial Infringement Contentions.
`
`BET also sued sixteen other entities in September and October 2012, alleging
`
`infringement of the ’290 Patent and two other patents in the ’290 Patent’s family.2 Apple Inc.
`
`(“Apple”), Barnes & Noble, Inc., Google Inc. (“Google”), Groupon, Inc., Microsoft Corporation,
`
`Motorola Mobility Holdings LLC, Facebook, Inc., LinkedIn Corporation, Pandora Media, Inc.,
`
`Samsung Electronics America, Samsung Telecommunications America, LLC and Spark
`
`Networks, Inc. have already moved to transfer.3 BET has filed a responsive brief to Apple
`
`Google, Motorola Mobility Holdings LLC, Pandora Media, Inc., and Spark Networks, Inc.’s
`
`
`1 See Complaint, B.E. Technology, L.L.C. v. Sony Computer Entertainment America LLC, 2:12-
`cv-02826 (W.D. Tenn.); B.E. Technology, L.L.C. v. Sony Electronics Inc., 2:12-cv-02828 (W.D.
`Tenn.); B.E. Technology, L.L.C. v. Sony Mobile Communications (USA) Inc., 2:12-cv-02827
`(W.D. Tenn.).
`2 See 2:2012-cv-02767, 2:2012-cv-02831, 2:2012-cv-02823, 2:2012-cv-02830, 2:2012-cv-02829,
`2:2012-cv-02866, 2:2012-cv-02825, 2:2012-cv-02824, 2:2012-cv-02769, 2:2012-cv-02781,
`2:2012-cv-02772, 2:2012-cv-02834, 2:2012-cv-02782, 2:2012-cv-02833, 2:2012-cv-02832,
`2:2012-cv-02783.
`3 All of these parties have moved to transfer to the Northern District of California with the
`exception of Spark Networks, Inc., who has moved to transfer to the Central District of
`California. See Defendant’s Memorandum In Support of Its Motion to Transfer Venue Pursuant
`to 28 U.S.C. § 1404(a) and for Expedited Hearing, B.E. Technology v. Google Inc., 12-cv-02830-
`JPM-tmp, Dkt. 22 (W.D. Tenn. Dec. 18, 2012) (“Google’s Motion to Transfer”); Defendant’s
`Memorandum In Support of Its Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a), B.E.
`Technology v. Apple Inc., 12-cv-02831-JPM-tmp, Dkt. 22 (W.D. Tenn. Dec. 18, 2012) (“Apple’s
`Motion to Transfer”).
`
`-3-
`
`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 6 of 22 PageID 120
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`motions with supporting declarations.4 Sony understands that all nineteen defendants BET has
`
`sued have moved, or will be moving to transfer their respective cases, almost all of them to
`
`California.
`
`A.
`
`1.
`
`The Accused Sony Entities Are Either Headquartered in California or Have
`Significant Operations There.
`
`SCEA Is Headquartered in the Northern District of California
`
`SCEA is a limited liability company5 with headquarters in Foster City, California, within
`
`the Northern District of California. See Ex. A, Decl. of Jennifer Y. Liu (“SCEA Decl.”) ¶¶ 2, 3.
`
`SCEA also has two other offices in Foster City. Id. ¶ 3. SCEA has approximately 895
`
`employees working in its Foster City offices. Id. ¶ 3. The potentially relevant known U.S.
`
`documents and things related to products sold by SCEA in its possession are located at its offices
`
`in Foster City. Id. ¶ 6. SCEA’s known prospective witnesses are located at or near its offices in
`
`Foster City. Id. ¶ 7. SCEA’s anticipated witnesses in connection with the sales, finance, and
`
`marketing of the accused products are enumerated in Table 1. Each of these witnesses works at
`
`SCEA’s Foster City offices and resides within the Northern District of California. Id. ¶ 7.
`
`SCEA has no offices or facilities within the Western District and there are no known
`
`SCEA witnesses there. Id. ¶¶ 4, 8. SCEA has no meaningful connection to the Western District.
`
`
`
`
`
`
`4 See Plaintiff’s Memorandum in Opposition to Defendant’s Motion to Transfer Venue Pursuant
`to 28 U.S.C. § 1404(a), B.E. Technology v. Google Inc., 12-cv-02830-JPM-tmp, Dkt. 29, Dkt.
`29, Ex. 1 (W.D. Tenn. Dec. 18, 2012) (“BET’s Opposition to Google’s Motion to Transfer”);
`Plaintiff’s Memorandum in Opposition to Defendant’s Motion to Transfer Venue Pursuant to 28
`U.S.C. § 1404(a), B.E. Technology v. Apple Inc., 12-cv-02831-JPM-tmp, Dkt. 29 (W.D. Tenn.
`Dec. 18, 2012).
`5 In its Answer, SCEA inadvertently admitted to the erroneous BET averment that SCEA is a
`Delaware “corporation.” See Answer, Dkt. 21, 2:12-cv-02826 (W.D. Tenn. Dec. 31, 2012). This
`admission is inaccurate; as evident from its name, SCEA is a Delaware limited liability
`company.
`
`-4-
`
`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 7 of 22 PageID 121
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`
`Table 1: SCEA Employees with Potentially Relevant Information. Id. ¶ 7.
`Name
`Title
`Location
`John Koller
`Vice President, Product Marketing
`Foster City, CA
`Aaron Wong
`Senior Lead Accountant
`Foster City, CA
`
`
`2.
`
`SEL Is Headquartered in California
`
`
`
`SEL is headquartered in San Diego, California. See Ex. B, Decl. of Matthew Seymour
`
`(“SEL Decl.”), ¶ 3. There are approximately 1,244 SEL employees in San Diego including
`
`software engineers, service engineers, and quality assurance support engineers who test products
`
`for use in the field and test software for compliance with U.S. market requirements. Id. ¶ 3. SEL
`
`also has a large facility in San Jose, California, within the Northern District of California. Id. ¶
`
`5. Approximately 245 employees work at the San Jose facility, including members of the Digital
`
`Reader Business, a category of accused products, who primarily handle software and quality
`
`assurance engineering, as well as some marketing, testing, and support roles. Id. ¶ 5.
`
`
`
`SEL’s California employees, along with their counterparts in Japan, are likely to have
`
`relevant knowledge of SEL’s accused products. Id. ¶ 9. As a result, the U.S.-based SEL
`
`witnesses with knowledge relating to the design, development, function, and operation of the
`
`accused SEL products are located in California, as are their corresponding documents. Id. ¶ 9.
`
`
`
`SEL’s San Diego headquarters also houses the company’s corporate financial, sales, and
`
`marketing documentation. Id. ¶ 4. Employees at the San Diego office manage the company’s
`
`sales, distribution, and customer service departments, and are responsible for its U.S. marketing
`
`strategies, platform development, corporate research, and tradeshow exhibits. Id. ¶ 4.
`
`
`
`In Table 2, SEL identifies fourteen SEL employees located in California with knowledge
`
`potentially relevant to this lawsuit, including information about the development, engineering,
`
`and testing of software and hardware, as well as marketing, service, and the competitive market
`
`and business for SEL’s accused products. Id. ¶ 9.
`
`-5-
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`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 8 of 22 PageID 122
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`
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`SEL has no facilities in Tennessee and is unaware of any potential SEL witnesses based
`
`in Tennessee who have specific information relevant to this case. Id. ¶¶ 6, 10.
`
`Table 2: SEL Employees with Potentially Relevant Information. Id. ¶ 9.
`Name
`Title
`Location
`Kevin Brinkman Senior Manager, TV Product Marketing
`San Diego, CA
`Yang Cheng
`Senior Manager, Product Strategy
`San Diego, CA
`Chris Goodman Vice Pres., Finance
`San Diego, CA
`Natascha Helbig Director, Product Marketing, Reader Store
`San Jose, CA
`Klaus Hofrichter Vice Pres., UXSC Home
`San Diego, CA
`Hiraku Inoue
`Vice Pres., Software Eng.
`San Jose, CA
`Tiger Izaki
`Director, Product Planning & Strategy
`San Diego, CA
`Lordita Canlas
`Senior Marketing Mgr., Core Video/HMD
`San Diego, CA
`Jamie Marsh
`Senior Product Marketing Manager
`San Diego, CA
`Ken Orii
`Vice Pres., Marketing
`San Diego, CA
`Julie Reynosa
`Director, Business Planning
`San Diego, CA
`Mark Schmidt
`Director, QA Engineering
`San Diego, CA
`Oscar Vega
`Vice Pres., UX Engineering
`San Diego, CA
`Lisa Wayne
`Director, Business Operations
`San Diego, CA
`
`SoMC Maintains a Significant Business Presence in California
`
`SoMC is a wholly owned indirect subsidiary of Sony Corporation and oversees the
`
`
`
`3.
`
`
`
`company’s United States smart phone business unit. SoMC employs approximately 125 people
`
`in its Redwood City, California office, within the Northern District of California’s jurisdiction.
`
`See Ex. C, Decl. of Susana Capper (“SoMC Decl.”) ¶ 3. The Redwood City facility is the
`
`primary site for all of SoMC’s U.S.-based technology development efforts. Id. ¶ 3. All U.S.
`
`SoMC technical witnesses will likely be based from this Redwood City office. Id. ¶ 7. SoMC
`
`witnesses with potentially relevant information are enumerated in Table 3. Many potentially
`
`relevant documents and things related to the accused products in SoMC’s possession are likely
`
`located in its Redwood City, California offices, and most, if not all, relevant technical documents
`
`created by SoMC are created in its Redwood City, California offices. Id. ¶ 6. The other major
`
`U.S. SoMC office is in Atlanta, Georgia. Id. ¶ 7. SoMC employees regularly commute from
`
`-6-
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`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 9 of 22 PageID 123
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`Atlanta to the California office to meet and coordinate with personnel from other Sony
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`companies. Id. ¶ 7. The Redwood City office has facilities for out-of-state employees to work
`
`remotely and as a result, for SoMC employees, travel from Atlanta to Redwood City is less
`
`burdensome than to most other U.S. locations. Id. ¶ 7.
`
`SoMC has no facilities in Tennessee and is unaware of any potential SoMC witnesses
`
`based in Tennessee who have specific information relevant to this case. Id. ¶¶ 4, 8.
`
`
`
`Table 3: SoMC Employees with Potentially Relevant Information. Id. ¶ 7.
`Name
`Title
`Location
`Kim Ahlstrom
`Senior Manager, Research Labs Silicon Valley Redwood City, California
`Jorgen Birkler
`Senior Manager
`Redwood City, California
`Martin Granstrom Senior Manager
`Redwood City, California
`Kuldeep Jain
`Senior Systems Engineer, Software
`Redwood City, California
`Toshihiko Kii
`Program Manager, Software
`Redwood City, California
`Wayne Moyoung Senior Verification Engineer, Software
`Redwood City, California
`Minshik Roh
`Director, Business & Partner Development
`Redwood City, California
`
`
`B.
`
`BET’s Inventor/CEO Allegedly Lives in Tennessee, but all Relevant BET Business
`Has Been Conducted Outside of Tennessee.
`
`The only connection that BET has to Tennessee is that Martin David Hoyle, the inventor
`
`of the ’290 Patent and CEO of BET, purportedly maintains his current personal residence there
`
`and BET has recently filed its patent infringement lawsuits there; all other BET business has
`
`been conducted outside of Tennessee. Since at least 2000, BET has stated in its business plan
`
`that its “principal office of record is in Bay City, Michigan, and its operations are headquartered
`
`in New Orleans, Louisiana.” See Ex. E, BET Business Plan at 30 (May 8, 2000). As of June 21,
`
`2012, BET listed itself as a Michigan based company on a patent publication and named Mr.
`
`Hoyle, the inventor, as a resident of New Orleans, Louisiana. See Ex. F, U.S. Pat. Pub.
`
`2012/0158512 A1. As of several weeks ago, public records still yielded BET addresses in
`
`Michigan and Louisiana, but none in Tennessee. See Ex. G, Lexis Public Records Search
`
`-7-
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`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 10 of 22 PageID 124
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`(October 2012). The ’290 Patent also lists BET as a Michigan based company and was
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`prosecuted by a Michigan based attorney working at a Michigan based law firm. See Ex. H,
`
`Relevant Sections of the ’290 Patent; Ex. I-1, Firm Website; Ex. I-2, Attorney Profile.
`
`Michigan-based Mark McKinley, co-managed BET from Michigan where he had “[s]ignifigant
`
`control of [BET’s] day-to-day business” since at least May, 2000. See Ex. J, McKinley Article;
`
`Ex. E, BET Business Plan.
`
`There is no evidence that BET has performed any business in Tennessee, beyond filing
`
`suit for patent infringement. Only on September 6, 2012, the day before filing the first of its
`
`nineteen litigations, did BET register to do business in Tennessee, which was admitted to being
`
`done in preparation to file its patent infringement lawsuits. See Ex. K, BET Certificate of
`
`Existence; Ex. L, Decl. of Martin David Hoyle (“Hoyle Decl.”) ¶ 8. There is no evidence that
`
`BET has an office in Tennessee, even though it admits to once having one in Michigan. See
`
`Hoyle Decl. ¶ 5. Even BET’s apparent lead counsel in this case is based in the Northern District
`
`of California, more than 1800 miles away from Tennessee. See Ex. M, BET Counsel’s Website
`
`(located in Redwood Shores, CA, which is in the Northern District of California and adjacent to
`
`both SCEA’s headquarters in Foster City, CA and SoMC’s office in Redwood City, CA).
`
`Mr. Hoyle –the inventor of the ’290 Patent and CEO of BET but not a party in this
`
`litigation– claims to have moved his personal residence to Tennessee in 2006, years after the
`
`’290 Patent was applied for in 1999 and issued in 2004. See Hoyle Decl. ¶ 2; Ex. H, Relevant
`
`Sections of the ’290 Patent. Mr. Hoyle admits that he did not move to Tennessee to perform
`
`BET business there. See Hoyle Decl. ¶¶ 3-4 (“my non-B.E. work required my presence in the
`
`Memphis area”). There is no evidence that Mr. Hoyle has engaged in any BET business in
`
`Tennessee besides his apparent involvement in the instant litigation.
`
`-8-
`
`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 11 of 22 PageID 125
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`C. Many of the Defendants in this Litigation Are Located in California
`
`
`
`Of the sixteen entities BET sued other than SCEA, SEL, and SoMC on the ’290 Patent
`
`and two other patents within the same patent family, Sony understands that all but two have
`
`offices in California, many in the Northern District of California. See Table 4. Nearly half of
`
`the nineteen named defendants have headquarters in California. See id. In contrast, as evident
`
`from the collective information in the transfer motions filed by the other defendants, none have
`
`operations in Tennessee excluding retail locations of two defendants.
`
`Table 4: Defendants with Headquarters or Offices in California
`Office6 in
`Headquarters
`Office in
`Defendant
`in California
`California
`Tennessee
`Amazon Digital Services, Inc.
`
`
`✔
`Apple Inc.
`
`✔
`✔
`Barnes & Noble, Inc.
`
`✔
`Google Inc.
`
`✔
`Groupon, Inc.
`
`✔
`Facebook, Inc.
`
`✔
`LinkedIn Corporation
`
`✔
`Match.com L.L.C.
`
`
`Microsoft Corporation
`
`✔
`Motorola Mobility Holdings LLC
`
`✔
`Pandora Media, Inc.
`
`✔
`People Media, Inc.
`
`
`Samsung Electronics America, Inc.
`
`✔
`Samsung Telecommunications
`
`✔
`America, LLC
`SCEA
`SEL
`SoMC
`Spark Networks, Inc.
`Twitter, Inc.
`Total
`
`✔
`
`✔
`✔
`
`
`
`✔
`
`
`
`
`✔
`✔
`
`
`
`✔
`✔
`9 of 19
`
`✔
`✔
`✔
`✔
`✔
`17 of 19
`
`
`
`
`
`
`0 of 19
`
`
`6 Excluding retail locations of Apple Inc. and Barnes & Noble, Inc.
`
`-9-
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`

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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 12 of 22 PageID 126
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`D.
`
`Third Party Witnesses Are Not Located in Tennessee
`
`There are many potential third party witnesses based in California but no foreseeable
`
`third party witnesses in Tennessee. During prosecution of the’290 Patent, BET cited twenty-one
`
`prior art patents and pieces of literature that BET apparently deemed material to the patentability
`
`of the ’290 Patent. See Ex. N, U.S. Pat. App. 09/744,033, I.D.S. (June 24, 2002). These
`
`references were created by people working in California, at companies such as Netscape
`
`Communications Corp. and PointCast, Inc., both that were companies located in California.
`
`Although these two companies may exist in a different form than they once did, it can be
`
`expected that many former employees and potential witnesses likely remain in California. Not
`
`one of the references that BET submitted was created by a person or company located in
`
`Tennessee.
`
`Furthermore, in Google’s Motion to Transfer, Google identified eleven prior art
`
`references deemed potentially relevant to its invalidity defense. The references cite to no less
`
`than twenty inventors who are based in California, all potential witnesses, and three corporate
`
`assignees that are based in California. See Google’s Motion to Transfer at 5-6. Sony
`
`incorporates Google’s list of third party invalidity witnesses by reference. According to public
`
`databases, at least eighteen of the prior art inventors continue to live or work in California. See
`
`Ex. D, Decl. of Shiina Akasaka ¶ 13; Ex. O-1 List of Inventors; Exs. O-2 to O-16, Supporting
`
`Evidence for List of Inventors.
`
`Finally, in BET’s infringement contentions to Sony, BET accused numerous products
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`made by companies unrelated to Sony, many of which Sony understands are based in California.
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`For example, BET accuses the following products/services of infringement: Android Market,
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`Google Play, YouTube, Netflix, Hulu Plus, Amazon (Prime) Instant Video, Kindle Store,
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`Windows Store, Xbox Video, Xbox Music, and Xbox Games. See Exs. P-1, P-2, P-3, BET
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`-10-
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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 13 of 22 PageID 127
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`Infringement Contentions. Sony believes that all of the aforementioned products are created by
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`companies that are either based in, or have offices in California.
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`III. APPLICABLE LAW
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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); Kerobo v. Southwestern Clean Fuels, Corp., 285 F.3d 531, 537 (6th Cir.
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`2002).
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`“Under the first part of the analysis, an adequate alternative forum must be identified.”
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`Wong v. PartyGaming, Ltd., 589 F.3d 821, 830 (6th Cir. 2009); Functional Pathways of Tenn.,
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`LLC v. Wilson Senior Care, Inc., 866 F. Supp. 2d 918, 930 (E.D. Tenn. 2012) (“The threshold
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`consideration is whether the action is one that could have originally been brought in the proposed
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`transferee district court.”).
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`“Once the moving defendant establishes the availability of another forum, the court
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`should consider the private interests of the parties,” which include: “the convenience of the
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`parties, the convenience of the witnesses, the location of sources of proof, where the operative
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`facts occurred, the relative ability of litigants to bear expenses in any particular forum, the
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`possibility of prejudice in either forum, and other practical problems affecting the case.” Karl
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`Storz Endoscopy-Am., Inc. v. Stryker Corp. et al., 2:07-cv-02702, 2008 U.S. Dist. LEXIS 50826,
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`at *5 (W.D. Tenn. July 1, 2008) (McCalla, J.) (citations omitted); Wong, 589 F.3d at 833 (private
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`factors include “ease of access to evidence, ability to obtain witness attendance, and practical
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`problems such as ease, expeditiousness, and expense.”).
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`The court may also consider public factors such as “administration difficulties for the
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`trial court, local interest in the litigation, and the law applicable to the controversy.” Zions First
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`Nat’l Bank v. Moto Diesel Mexicana, S.A. de C.V., 629 F.3d 520, 523 (6th Cir. 2010).
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`-11-
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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 14 of 22 PageID 128
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`“In addition, ‘the Court may consider any factor that may make any eventual trial easy,
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`expeditious, and inexpensive.’” Karl Storz Endoscopy-Am., Inc., 2008 U.S. Dist. LEXIS 50826,
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`at *5-6 (citations omitted).
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`IV. ANALYSIS
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`A.
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`This Case Could Have Been Brought in the Northern District of California.
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`As a threshold matter, this action could have been brought in the Northern District of
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`California, and thus may be transferred there. See Wong, 589 F.3d at 830. “Any civil action for
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`patent infringement may be brought in the judicial district where the defendant resides[.]”
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`28 U.S.C. § 1400(b). For venue purposes, a corporation is deemed to reside in any district within
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`which it is subject to personal jurisdiction. See 28 U.S.C. § 1391(c)(2), (d). SCEA, SEL, and
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`SoMC regularly conduct business in California; their respective employees work in multiple
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`locations in California, including in the Northern District of California. See SCEA Decl. ¶ 3;
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`SoMC Decl. ¶ 3; SEL Decl. ¶ 3. Thus, this case could have been brought in the Northern District
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`of California.
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`B.
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`1.
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`The Private Factors Strongly Favor a Transfer
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`It Is Clearly More Convenient for the Witnesses to Litigate this Action in the Northern
`District of California
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`“‘The convenience of the witnesses is probably the single most important factor in
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`transfer analysis.’” In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009) (quoting Neil
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`Bros. Ltd. v. World Wide Lines, Inc., 425 F. Supp. 2d 325, 329 (E.D.N.Y. 2006)). “[A]dditional
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`distance from home means additional travel time; additional travel time increases the probability
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`for meal and lodging expenses; and additional travel time with overnight stays increases the time
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`which these fact witnesses must be away from their regular employment.” Id. at 1343 (internal
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`citations omitted). “‘[W]hen the distance between an existing venue for trial of a matter and a
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`-12-
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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 15 of 22 PageID 129
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`proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses
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`increases in direct relationship to the additional distance to be traveled.’” Id. at 1343 (quoting In
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`re Volkswagen of Am., Inc., 545 F.3d 304, 317 (5th Cir. 2008) (en banc)) (marks omitted).
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`(a)
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`Sony Witnesses
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`California would be more convenient for Sony. All potential SCEA witnesses reside in
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`the Northern District of California. All potential SEL witnesses reside in the Southern District of
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`California, a 95-minute, $156.00 return flight from San Francisco, or in Northern California
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`itself. See Ex. Q-1, Kayak SAN to SFO. All of the relevant SoMC witnesses will likely be
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`based in the Northern District of California as well. Even if Atlanta-based SoMC witnesses are
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`called to California, the existing SoMC Northern California office will allow them to easily work
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`remotely, making the trip significantly less burdensome. See SoMC Decl. ¶ 7. If Japan-based
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`witnesses need to testify, California will be less burdensome, as California is significantly closer
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`to Japan than Tennessee and because there are direct flights from Japan to San Francisco, while
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`Sony is not aware of any to Memphis. See Ex. D, Decl. of Shiina Akasaka ¶ 32; Ex. Q-2, Kayak
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`NRT to SFO; Ex. Q-3, Kayak NRT to MEM; Ex. Q-4; Ex. Q-5. While we are not aware of Sony
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`witnesses in Europe, if there were, flights into San Francisco will also likely be more convenient
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`than Memphis. See Karl Storz Endoscopy-Am., Inc., 2008 U.S. Dist. LEXIS 50826, at *8
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`(“though the Western District of Tennessee is closer to Europe than the Northern District of
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`California, [the Western District] may be a less convenient destination because there are fewer
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`international air travel options available.”). Above, Sony has identified twenty-three Sony
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`witnesses who work or reside in California and are likely to have relevant information. There
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`are none who work or reside in Tennessee. There is no question that litigating this case in
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`Tennessee will be significantly more burdensome for Sony than in the Northern District of
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`California.
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`Case 2:12-cv-02826-JPM-tmp Document 25-1 Filed 01/28/13 Page 16 of 22 PageID 130
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`(b)
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`Third Party Witnesses
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`California will be more convenient for numerous third party witnesses. As stated above,
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`a large number of witnesses knowledgeable about the prior art work or reside in California,
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`including prior art that BET apparently deemed material to the patentability of the