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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
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`No.: 2:12-cv-02826-JPM-tmp
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`No.: 2:12-cv-02827-JPM-tmp
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`No.: 2:12-cv-02828-JPM-tmp
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`ORDER DENYING MOTION TO TRANSFER VENUE
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`Before the Court are the Motions to Transfer Venue Pursuant
`to 28 U.S.C. § 1404(a) (No. 12-cv-2826-JPM-tmp, ECF No. 25; No.
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`B.E. TECHNOLOGY, LLC,
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`Plaintiff,
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`SONY COMPUTER ENTERTAINMENT )
`AMERICA LLC,
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`Defendant.
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`B.E. TECHNOLOGY, LLC,
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`Plaintiff,
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`SONY MOBILE COMMUNICATIONS
`(U.S.A.) INC.,
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`Defendant.
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`B.E. TECHNOLOGY, LLC,
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`Plaintiff,
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`SONY ELECTRONICS INC.,
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`Defendant.
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`Case 2:12-cv-02826-JPM-tmp Document 40 Filed 07/19/13 Page 2 of 32 PageID 453
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`12-cv-2827-JPM-tmp, ECF No. 29; No. 12—cv-2828-JPM-tmp, ECF No.
`24), of Defendants Sony Computer Entertainment America LLC
`(“SCEA”), Sony Mobile Communications (U.S.A.) Inc. (“SMC”), and
`Sony Electronics Inc. (“SEL”) (collectively “Sony”),1 filed
`January 28, 2013.2 For the following reasons, the Motions are
`DENIED.
`I. BACKGROUND
`
`This case concerns Sony’s alleged infringement of United
`States Patent No. 6,771,290 (the “’290 patent”). (ECF No. 25-1
`at 1.) Plaintiff B.E. Technology, LLC (“B.E.”), is the assignee
`of the ’290 patent (ECF No. 32 at 2), currently owning “all
`right, title, and interest in the ’290 patent, and has owned all
`right, title, and interest throughout the period” of the alleged
`infringement. (See No. 12-cv-2826-JPM-tmp, ECF No. 1, ¶ 10;
`accord No. 12-cv-2827-JPM-tmp, ECF No. 1, ¶ 10; No. 12-cv-2828-
`JPM-tmp, ECF No. 1, ¶ 10.)
`
`1 SMC and SEL are affiliates of SCEA. (See No. 12-cv-2826-JPM-tmp, ECF No.
`25-1, at PageID 115.)
`2 SCEA, SMC, and SEL all support their Motions to Transfer Venue with the same
`Memorandum, attached to SCEA’s Motion to Transfer Venue at No. 12-cv-2826-
`JPM-tmp, ECF No. 25-1. (See, e.g., No. 12-cv-2827-JPM-tmp, ECF No. 29, at 1
`(“The facts and law supporting this relief are set forth in detail in the
`memorandum and exhibits supporting the same motion filed in the related
`action against defendant’s affiliate [SCEA] . . . . [SMC] incorporates that
`document in this motion by reference, to eliminate the necessity of the Court
`reviewing what would otherwise be extensive duplicate information.”); accord
`No. 12-cv-2828-JPM-tmp, ECF No. 24, at 1.) Additionally, B.E. Technology,
`LLC’s Responses to the Motions to Transfer Venue, and SCEA, SEL, and SMC’s
`Replies in support of their Motions to Transfer Venue are identical.
`Accordingly, the Court will refer to the Memorandum in Support of the Motions
`to Transfer Venue (ECF No. 25-1), the Response in opposition to the Motions
`to Transfer Venue (ECF No. 32), and the Reply in support of the Motions to
`Transfer Venue (ECF No. 35) on SCEA’s docket, No. 12-cv-2826-JPM-tmp.
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`2
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`A. Civil Case No. 12-cv-2826-JPM-tmp
`B.E. alleges that SCEA 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 of
`the ’290 patent either literally or under the doctrine of
`equivalents.” (ECF No. 1 ¶ 11.) The SCEA products alleged to
`infringe the ’290 patent “include Game Consoles: [Playstation
`(“PS”)] 2, PS 3, PS Vita.” (Id.)
`B.E. filed a Complaint in this Court on September 21, 2012.
`(ECF No. 1.) SCEA filed its Answer to the Complaint on December
`31, 2012 (ECF No. 21), and its Motion to Transfer Venue on
`January 28, 2013 (ECF No. 25). On February 7, 2013, SCEA filed
`a Motion to Stay pending resolution of its Motion to Transfer
`Venue. (ECF No. 28.) The Court granted SCEA’s Motion to Stay
`on February 11, 2013. (ECF No. 31.) B.E. filed its Response in
`opposition to SCEA’s Motion to Transfer Venue on February 14,
`2013. (ECF No. 32.) With leave of Court (ECF No. 34), SCEA
`filed a Reply in support of its Motion to Transfer on March 4,
`2013 (ECF No. 35).
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`B. Civil Case No. 12-cv-2827-JPM-tmp
`B.E. alleges that SMC 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 of the
`’290 patent either literally or under the doctrine of
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`equivalents.” (ECF No. 1 ¶ 11.) The SMC products alleged to
`infringe the ’290 patent “include Smart Phones: Xperia
`Smartphones.” (Id.)
`B.E. filed a Complaint in this Court on September 21, 2012.
`(ECF No. 1.) SMC filed its Answer to the Complaint on December
`31, 2012 (ECF No. 25), and its Motion to Transfer Venue on
`January 28, 2013 (ECF No. 29). On February 7, 2013, SMC filed a
`Motion to Stay pending resolution of its Motion to Transfer
`Venue. (ECF No. 32.) The Court granted SMC’s Motion to Stay on
`February 11, 2013. (ECF No. 35.) B.E. filed its Response in
`opposition to SMC’s Motion to Transfer Venue on February 14,
`2013. (ECF No. 36.) With leave of Court (ECF No. 38), SMC
`filed a Reply in support of its Motion to Transfer on March 4,
`2013 (ECF No. 39).
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`C. Civil Case No. 12-cv-2828-JPM-tmp
`B.E. alleges that SEL 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 of
`the ’290 patent either literally or under the doctrine of
`equivalents.” (ECF No. 1 ¶ 11.) The SEL products alleged to
`infringe the ’290 patent “include Smart Phones: Xperia
`Smartphones; Smart TVs: LED HX750 Internet TVs, LED EX640
`Internet TVs, Google TV; Smart Blu-Ray/DVD Player: Sony 3D Blu-
`Ray Disc Player, Sony Streaming Player; Game Consoles: PS 2, PS
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`3, PS Vita; e-Readers: Reader PRST1, Reader PRST2; Tablets:
`Xperia Tablet S, Sony Tablet S, Sony Tablet P.” (Id.)
`B.E. filed a Complaint in this Court on September 21, 2012.
`(ECF No. 1.) SEL filed its Answer to the Complaint on December
`31, 2012 (ECF No. 20), and its Motion to Transfer Venue on
`January 28, 2013 (ECF No. 24). On February 7, 2013, SEL filed a
`Motion to Stay pending resolution of its Motion to Transfer
`Venue. (ECF No. 27.) The Court granted SEL’s Motion to Stay on
`February 11, 2013. (ECF No. 30.) B.E. filed its Response in
`opposition to SEL’s Motion to Transfer Venue on February 14,
`2013. (ECF No. 31.) With leave of Court (ECF No. 33), SEL
`filed a Reply in support of its Motion to Transfer on March 4,
`2013 (ECF No. 34).
`D. Motion to Transfer Venue3
`Sony seeks to transfer this case to the Northern District
`of California. (See ECF No. 25-1 at 1.)
`SCEA is headquartered in Foster City, California, in
`the Northern District of California. (Id. at 4.) SEL is
`headquartered in San Diego, California, in the Southern District
`of California. (Id. at 5.) SEL also has a large facility in
`San Jose, California, in the Northern District of California.
`(Id.) SMC “is a wholly owned indirect subsidiary of Sony
`
`3 All references to the Memorandum in support of the Motion to Transfer Venue,
`Response in opposition to the Motion to Transfer Venue, and Reply in support
`of the Motion to Transfer Venue, will be to those documents filed in Civil
`Case No. 12-cv-2826-JPM-tmp. See supra note 2 and accompanying text.
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`Corporation” and employs approximately 125 people in its Redwood
`City, California, office, in the Northern District of
`California. (Id. at 6.) The other major United States SMC
`office is located in Atlanta, Georgia. (Id.)
`Sony argues that the case should be transferred “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 the Northern District of California. (Id. at 1.)
`In support, Sony asserts the following: that the relevant
`discovery and proofs for trial will primarily relate to
`technical product information, marketing and sales information,
`and prior art; that these materials will be not be located in
`the Western District of Tennessee; that the relevant Sony
`witnesses and documents will be in the Northern District of
`California or within close proximity of that District; that the
`relevant prior-art witnesses and third-party witnesses will be
`in the Northern District of California or within close proximity
`of that District; and that there is no evidence that B.E.
`performs any business in Tennessee. (Id. at 1.)
`B.E. opposes Sony’s Motion to Transfer Venue. (ECF
`No. 32.) B.E. is a limited-liability company incorporated in
`Delaware. (Id. at 2.) B.E. was originally registered in
`Michigan, but formally registered to conduct business in
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`Tennessee in September 2012. (Id. at 3.) 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, 2.) 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 lived in the Western District of Tennessee since 2006,
`and that “Hoyle has directed B.E.’s business from this District
`since at least 2008.” (Id. at 1.) B.E. states that Hoyle “runs
`the business of B.E. from his home office, including meeting
`with the B.E. Board of Directors, filing patent applications,
`and coordinating the enforcement of B.E.’s intellectual property
`rights.” (Id. at 3.) B.E. also argues that its corporate
`documents are located in this District, including documents
`relating to the “conception and reduction to practice” of the
`patents-in-suit. (Id. at 8.)
`II. STANDARD
`
`Sony moves the Court to transfer this case to the Northern
`District of California pursuant to 28 U.S.C. § 1404(a). (ECF
`No. 25-1 at 1.) 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
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`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
`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
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`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
`favor of transfer); Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623, 633 (W.D. Mich. 2009) (considering
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`additional factors such as the relative docket congestion of the
`transferor and transferee districts).
`
`Initially, B.E. argues that there is a strong presumption
`in favor of its choice of forum, and that 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 5-8.) 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
`be considered, but is entitled to less deference. Discussing
`the difference between the common-law doctrine of forum non
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`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.
`A 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
`he desires to transfer the litigation is the more convenient one
`vis a vis the Plaintiff’s initial choice.” Roberts Metals,
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`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
`
`Sony asserts that B.E. could have brought this action in
`the Northern District of California. (See ECF No. 25-1 at 12.)
`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
`this suit in the Northern District of California as personal
`jurisdiction over Sony 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 to transfer this case to the Northern District
`of California pursuant to § 1404(a).
`A. Convenience of the Witnesses
`When asserting that a transferee district is more
`convenient for witnesses, a party “must produce evidence
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`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, 2011 WL 1898238, at *3 (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.
`
`Sony contends that witness convenience favors transfer to
`the Northern District of California. (See ECF No. 25-1 at 12-
`15; ECF No. 35 at 6-7.) To support this contention, Sony
`asserts that “[a]ll potential SCEA witnesses reside in the
`Northern District of California[, a]ll potential SEL witnesses
`reside in [California], . . . [and a]ll of the relevant SMC
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`witnesses will likely be based in the Northern District of
`California as well.” (ECF No. 25-1 at 13.) Sony further
`asserts that even if Sony employees, like the SMC employees
`based in Atlanta, Georgia, are called to California for
`litigation, the existing SMC office in the Northern District of
`California will allow “them to easily work remotely, making the
`trip significantly less burdensome.” (Id.) Likewise, if
`employees located in Japan are needed to testify, there are
`direct flights from Japan to San Francisco, California, making
`the transferee district the more convenient forum. (Id.)
`
`Sony lists twenty-three employees that are likely to have
`information relevant to the instant litigation. (See id. at 4-
`7.)
`Regarding SCEA, Sony states that “all of [its] known
`prospective witnesses are locate at or near its offices in . . .
`the Northern District of California,” and Sony names John
`Koller, Vice President, Product Marketing and Aaron Wong, Senior
`Lead Accountant, as its “expected sales, finance, and marketing
`witnesses in connection with its accused products.” (Liu Decl.,
`ECF No. 25-2, ¶ 7.)
`Regarding SEL, Sony states that it has relevant witnesses
`in both its San Diego, California, and San Jose, California,
`locations, relating to the engineering, strategy, and marketing
`of the accused products. (See Seymour Decl., ECF No. 25-3,
`
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`¶¶ 8-9.) Sony contends that the fourteen employees named in the
`Declaration of Matthew Seymour, Director of Product Marketing
`for SEL, “may have relevant information.” (Id. ¶ 9.) Sony also
`admits that SEL’s “counterparts in Japan” are also “likely to
`have relevant knowledge of SEL’s accused products. (ECF No. 25-
`1 at 5.)
`Regarding SMC, Sony states that all of SMC’s “technical
`witnesses will likely be based” in the Northern District of
`California. (Id. at 6.) To support its contention, Sony
`specifically lists seven employees located in the transferee
`district as witnesses with relevant information. (Capper Decl.,
`ECF No. 25-4, ¶ 7.) Sony also admits that potential SMC
`witnesses “may also be located at the Atlanta[, Georgia]
`facility.” (Id.) Sony contends that these employees “regularly
`commute to the California office,” thus travel to the transferee
`district is “less burdensome than to most other U.S. locations.”
`(Id.)
`Sony further asserts that it will likely need to take
`discovery from numerous third parties named in B.E.’s
`infringement contentions and witnesses knowledgeable about prior
`art, many of whom will be located in California. (ECF No. 25-1
`at 14.)
`
`In response, B.E. argues that Sony has failed to meet its
`burden because it has provided little information regarding the
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`nature of the proposed witnesses’ testimony, instead relying
`upon the raw numbers of identified people with relevant
`knowledge. (ECF No. 32 at 10.) Although B.E. does not
`affirmatively identify any witnesses of its own, Hoyle is the
`inventor of the patent-in-suit and a party, and it is therefore
`presumed his testimony will be necessary and material to B.E.’s
`case. B.E. states that Hoyle is located in the Western District
`of Tennessee. (Id. at 1-2.)
`
`Because the convenience of party and non-party witnesses is
`given different weight, the Court will analyze the potential
`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 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
`
`
`
`Sony asserts that the Northern District of California would
`be a more convenient forum for Sony employees. (ECF No. 25-1 at
`13.) Sony contends that all potential SCEA witnesses reside in
`the Northern District of California; that potential SEL
`witnesses reside in the both the Southern District of California
`
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`and the Northern District of California; that all relevant SMC
`witnesses are likely located in the Northern District of
`California; that any SMC witnesses located in Atlanta will be
`able to work remotely in the SMC Northern California office; and
`that if any Japan-based witnesses are needed, there are direct
`flights from Japan to San Francisco, while there are no such
`direct flights from Japan to Tennessee. (Id.) Sony asserts
`that, as it has “identified twenty-three Sony witnesses who work
`or reside in California and are likely to have relevant
`information,” there “is no question that litigating the case in
`Tennessee will be significantly more burdensome for Sony than in
`the Northern District of California.” (Id.)
`
`Sony further states that B.E. has “only one potential
`witness . . . located in Tennessee: [] Hoyle, the inventor of
`the ’290 Patent and CEO of [B.E.]” (Id. at 14.) Although Sony
`recognizes that there will be some burden for Hoyle having to
`travel to California, Sony asserts that the burden to Hoyle “is
`vastly smaller than what would be imposed on the numerous Sony
`witnesses.” (Id. at 14-15.)
`B.E. argues that Sony has failed to satisfy its burden
`because Sony has only made “vague representations concerning
`witness inconvenience” and has not asserted any “particularized
`information enabling the Court to ascertain how much weight to
`give the claim of inconvenience.” (ECF No. 32 at 11.) In
`
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`support, B.E. states that Sony has failed to provide the
`“subject matter on which [the employees] will testify” or the
`“burdens the employees would endure by traveling to Tennessee.”
`(Id.)
`Sony does not satisfy its burden in demonstrating that the
`convenience of its employees favors transfer to the Northern
`District of California. First, the Court agrees that many of
`Sony’s employees related to the development and operation of the
`accused products are located in the transferee district and that
`their testimony is likely material. Sony, however, has not
`provided any indication of the necessity of those employees to
`its business. As a result, the Court cannot assess the degree
`to which the business of Sony’s various entities would be
`disrupted compared to the disruption B.E. will endure due to its
`CEO’s absence should the case be transferred. Additionally,
`while Sony argues that the burden of proceeding in the Northern
`District of California is reduced when comparing its own
`employee witnesses to B.E.’s one likely witness, Hoyle (ECF No.
`25-1 at 14-15), the Court finds that transfer to the Northern
`District of California would only shift the burden of
`inconvenience from one party to another. 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
`
`
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`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)).
`Second, while B.E. did not specifically identify any
`witnesses, it is presumed that Hoyle, as CEO and inventor of the
`patent-in-suit, will be a key witness. B.E., however, does not
`have the burden to identify more witnesses for the purposes of
`this Motion. Instead, Sony has the burden to give information
`sufficient to enable this Court “to ascertain how much weight to
`give a claim of inconvenience.” Rinks, 2011 WL 691242, at *3.
`Despite B.E. not identifying any witnesses, Sony’s general
`identification of material witnesses who are Sony employees does
`not satisfy its burden on this factor. A simple numerical
`advantage in potential witnesses is insufficient on the issues
`raised by a motion to transfer.
`
`Third, Sony does not provide any evidence showing its
`employees will be unwilling to testify in this district if asked
`to do so or how such employees will be “severely inconvenienced”
`if the case proceeds in this district. See Esperson, 2010 WL
`4362794, at *8. Moreover, 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
`
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`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 Sony’s
`employees will be able to attend absent any evidence to the
`contrary.
`Moreover, B.E. argues that “[i]t is likely that Sony’s
`California-based employees will be deposed in California where
`B.E.’s lead counsel is based.” (ECF No. 32 at 12.) 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).
`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).
`
`
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`Sony argues that “California will be more convenient for
`numerous third party witnesses,” as a large number of the prior-
`art witnesses and other defendants sued by B.E. reside in
`California. (ECF No. 25-1 at 14-15.)4 Sony asserts that it will
`need to take discovery from third-party witnesses in the
`Northern District of California as they may be crucial to Sony’s
`defense. (Id. at 14.) Further, Sony asserts that many relevant
`third-party witnesses are within the subpoena power of the
`Northern District of California, whereas Sony will be unable to
`compel these witnesses to trial in Tennessee. (Id. at 17; ECF
`No. 35 at 5.) Sony also argues that it would be “unable to
`compel any such California witnesses to testify at trial” in the
`Western District of Tennessee, “thereby seriously prejudicing
`Sony’s defenses.” (ECF No. 25-1 at 17.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because Sony
`has not sufficiently addressed the “relevance, materiality, and
`importance of the testimony” of the alleged third-party
`witnesses. (ECF No. 32 at 13.) B.E. further argues that prior-
`art testimony is “almost certain to be severely limited at the
`time of trial” and, therefore, such testimony does not weigh in
`favor of transfer. (Id. at 12.)
`
`
`4 Sony incorporates by reference the list of third-party invalidity witnesses
`in Google’s Motion to Transfer Venue. (ECF No. 25-1 at 10)
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`The availability of compulsory process for unwilling