Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 1 of 26 PageID 134
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
`
`SONY COMPUTER
`ENTERTAINMENT AMERICA
`LLC,
`
`Defendant.
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
`
`SONY MOBILE COMMUNICATIONS
`(USA) INC.,
`
`Defendant.
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
`
`SONY ELECTRONICS INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Case No. 2:12-CV-2826 JPM tmp
`
`
`
`JURY DEMAND
`
`REQUEST HEARING ON MOTION
`
`Case No. 2:12-CV-2827 JPM tmp
`
`
`
`JURY DEMAND
`
`REQUEST HEARING ON MOTION
`
`
`Case No. 2:12-cv-2828 JPM tmp
`
`JURY DEMAND
`
`REQUEST HEARING ON MOTION
`
`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO DEFENDANTS’ MOTION TO
`TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a) TO THE U.S. DISTRICT
`COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 2 of 26 PageID 135
`
`Dated: February 14, 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
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`
`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 3 of 26 PageID 136
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`II.
`
`III.
`IV.
`
`V.
`VI.
`
`
`INTRODUCTION ............................................................................................................. 1
`STATEMENT OF FACTS ................................................................................................ 2
`A.
`B.E. Technology, L.L.C ......................................................................................... 2
`B.
`B.E. v. The Sony Defendants ................................................................................. 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 ............................................................................ 10
`b.
`Non-Party Witnesses .................................................................... 12
`Location of Sources of Proof ................................................................... 13
`The Sony 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 Northern District of California Would Delay Trial ......... 16
`2.
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 16
`REQUEST FOR ORAL ARGUMENT ........................................................................... 18
`CONCLUSION ................................................................................................................ 18
`
`3.
`4.
`
`C.
`
`-i-
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 4 of 26 PageID 137
`
`
`
`
`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) .....................................................................................3, 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
`
`Ellipsis, Inc. v. Colorworks, Inc.,
`329 F. Supp. 2d 962 (W.D. Tenn. 2004) ..................................................................................15
`
`Esperson v. Trugreen Ltd. P’ship,
`2010 WL 4362794 (W.D. Tenn. Oct. 5, 2010) ..................................................................11, 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
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008)..........................................................................................12, 13
`
`Kerobo v. Southwestern Clean Fuels Corp.,
`285 F.3d 531 (6th Cir. 2002) .....................................................................................................3
`
`Koh v. Microtek Int’l, Inc.,
`250 F. Supp. 2d 627 (E.D. Va. 2003) ......................................................................................10
`
`L & P Prop. Mgmt. Co. v. JTMD, LLC,
`2007 WL 295027 (E.D. Mich. Jan. 29, 2007)........................................................................7, 8
`
`ii
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 5 of 26 PageID 138
`
`
`TABLE OF AUTHORITIES
`(CONT.)
`
`Federal Cases
`
`Page(s)
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)................................................................................................14
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ........................................................................9, 17
`
`Max Rack, Inc. v. Hoist Fitness Sys., Inc.,
`2006 WL 640497 (S.D. Ohio March 10, 2006) .......................................................................14
`
`MCNIC Oil & Gas Co. v. IBEX Resources Co., L.L.C.,
`23 F. Supp. 2d 729 (E.D. Mich. 1998) .......................................................................................4
`
`In re Microsoft,
`630 F.3d 1361 (Fed. Cir. 2011)..............................................................................................6, 7
`
`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) ...................................................................3, 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
`
`Rinks v. Hocking,
`2011 WL 691242 (W.D. Mich. Feb. 16, 2011)................................................................ passim
`
`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
`
`- iii -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 6 of 26 PageID 139
`
`
`TABLE OF AUTHORITIES
`(CONT.)
`
`Federal Cases
`
`Page(s)
`
`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) ...........................................................................10, 11
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................7
`
`Statutes
`
`28 U.S.C. § 1404 ..............................................................................................................................2
`
`28 U.S.C. § 1404(a) ...................................................................................................................3, 18
`
`Fed. R. Civ. P. 45(b)(2)..................................................................................................................13
`
`Rules
`
`
`
`- iv -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 7 of 26 PageID 140
`
`
`I.
`
`INTRODUCTION.
`
`Plaintiff B.E. Technology, L.L.C. (“B.E.”) has filed separate cases against defendants
`
`Sony Computer Entertainment America LLC (“SCEA”), Sony Electronics Inc. (“SEL”), and
`
`Sony Mobile Communications (U.S.A.) Inc. (“SoMC”) (together, “the Sony defendants”) arising
`
`from the infringement of United States Patent No. 6,771,290. The Sony defendants have filed a
`
`common motion to transfer venue that has been incorporated and adopted by each as its own.
`
`For the convenience of the Court, B.E. responds to the Sony defendants jointly.
`
`The ’290 patent describes and claims an invention related to user interfaces for
`
`maintaining, organizing, and communicating information accessible to a computer network such
`
`as the Internet and, in particular, to user interfaces that provide the user with availability to that
`
`information in a personalized manner. Plaintiff B.E. Technology, L.L.C. (“B.E.”) has brought
`
`this action because the Sony defendants have infringed B.E.’s patents in this District and across
`
`the United States. The inventor, Martin David Hoyle, is also the Chief Executive Officer of B.E.
`
`Mr. Hoyle has lived in the Western District of Tennessee since 2006 and currently resides at 116
`
`W. Viking Drive, Cordova, Tennessee, part of the City of Memphis. Mr. Hoyle has directed
`
`B.E.’s business from this District since at least 2008.
`
`Relying on a more than decade-old B.E. business plan to try to cast doubt on B.E.’s
`
`connection to this District and to portray B.E. as a forum shopper, the Sony defendants have
`
`asked the Court to transfer this case from the inventor’s and the plaintiff company’s home
`
`District to what appears to be one of the Sony defendants’ home, the Northern District of
`
`California. This case is not like others in which plaintiffs take steps to manufacture venue. The
`
`Western District of Tennessee is, and has long been, the physical location and home of B.E. and
`
`its Chief Executive Officer. The Sony defendants cannot show otherwise.
`
`1
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 8 of 26 PageID 141
`
`
`Disregarding relevant facts showing Mr. Hoyle’s and B.E.’s longstanding connection to
`
`this District, the Sony defendants argue that transfer to the Northern District of California would
`
`be more convenient because SCEA is headquartered in Foster City, California, SEL maintains a
`
`facility in San Jose, California, and SoMC has an office in Redwood City, California. Transfer
`
`to California might be more convenient for the Sony defendants, but California would be less
`
`convenient for B.E. Transfer under 28 U.S.C. § 1404 requires a “more convenient forum,” not
`
`merely a “forum likely to prove equally convenient or inconvenient,” or “a forum the defendant
`
`finds more to its liking.” Because the Sony defendants can offer no more, their motions to
`
`transfer should be denied.
`
`II.
`
`STATEMENT OF FACTS.
`
`A.
`
`B.E. Technology, L.L.C.
`
`B.E. is a Delaware limited liability company. Declaration of Martin David Hoyle
`
`(“Hoyle Decl.”) ¶ 5. Martin David Hoyle, who goes by David, founded B.E. in 1997 to develop
`
`Internet-related technologies. Id. B.E. is the assignee of United States Patent No. 6,771,290 (the
`
`“’290 patent”) (the “patent-in-suit”). Id. ¶ 7. Mr. Hoyle has been B.E.’s Chief Executive Officer
`
`since 2008. Id. ¶ 6. He previously held other positions with B.E., including serving as its
`
`President from 1997 to 2001. Id. Mr. Hoyle is the named inventor of the patent-in-suit.1 Id. ¶ 7.
`
`In April 2006, Mr. Hoyle and his family moved from Mandeville, Louisiana to Eads,
`
`Tennessee. Id. ¶ 2. They left Louisiana in the aftermath of Hurricane Katrina. Id. Mr. Hoyle
`
`has remained in the Memphis area, and in this judicial district, ever since. See id. ¶¶ 2-4. In
`
`2012, after contemplating a return to Louisiana, Mr. Hoyle and his wife moved to Cordova, in
`
`the city of Memphis and also in this District. Id. ¶ 4.
`
`
`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
`
`- 2 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 9 of 26 PageID 142
`
`
`B.E. originally maintained its registered office in Michigan where some of its members
`
`and its accountant reside, id. ¶ 5, but it formally registered to conduct business in Tennessee in
`
`2012. Id. ¶ 8. Mr. 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. ¶ 6.
`
`B.
`
`B.E. v. The Sony Defendants
`
`B.E. filed its Complaints in these matters on September 21, 2012.2 SCEA D.E. 1; SEL
`
`D.E. 1, SoMC D.E. 1. The Sony defendants filed their Answers on December 31, 2012. SCEA
`
`D.E. 21; SEL D.E. 20, SoMC D.E. 25. The Sony defendants’ cases are three of nineteen cases
`
`B.E. has filed in the Western District of Tennessee for the infringement of the patent-in-suit and
`
`related patents not asserted against the Sony defendants. The defendants in the B.E. cases
`
`include several of the world’s most sophisticated technology companies, each of which regularly
`
`conducts business on a massive scale in this District.
`
`III. THE LAW GOVERNING MOTIONS TO TRANSFER.
`
`“For the convenience of parties and witnesses, in the interest of justice, a district court
`
`may transfer any civil action to any other district or division where it might have been brought.”
`
`28 U.S.C. § 1404(a). A decision to transfer venue is made “on an individual basis by
`
`considering convenience and fairness.” Kerobo v. Southwestern Clean Fuels Corp., 285 F.3d
`
`531, 537 (6th Cir. 2002) (internal quotes omitted). The “balance of convenience must weigh
`
`heavily in favor of the transfer.” Nationwide Mut. Life Ins. v. Koresko, 2007 WL 2713783, at *5
`
`(S.D. Ohio Sept. 14, 2007).
`
`
`2 All citations to the docket in B.E. v. SCEA, Case Number 2:12-cv-2826 will be reflected as
`“SCEA D.E.” All citations to the docket in B.E. v. SoMC, Case Number 2:12-cv-2827 will be
`reflected as “SoMC D.E.” All citations to the docket in B.E. v. SEL, Case Number 2:12-cv-2828
`will be reflected as “SEL D.E.”
`
`- 3 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 10 of 26 PageID 143
`
`
`“As a general rule, there is a ‘strong presumption’ in favor of the plaintiff’s selection of
`
`forum, and the plaintiff’s choice should not be altered ‘unless the defendant carries his burden of
`
`demonstrating that the balance of convenience strongly favors transfer.’” Hunter Fan Co. v.
`
`Minka Lighting, Inc., 2006 WL 1627746, at * 2 (W.D. Tenn. June 12, 2006) (McCalla, J.)
`
`(quoting Plough, Inc. v. Allergan, Inc., 741 F. Supp. 144, 148 (W.D. Tenn. 1990)) (denying a
`
`motion to transfer even though the majority of defendant’s witnesses and documents were
`
`located in California and California was the epicenter of the accused infringing activity). “When
`
`a plaintiff has selected its home forum, this choice is given particular weight.” Id. (citing Tuna
`
`Processors, Inc. v. Hawaii Int’l Seafood, 408 F. Supp. 2d 358, 360 (E.D. Mich. 2005)).
`
`The threshold question on any motion to transfer is whether the plaintiff could have filed
`
`the action in the transferee forum. See Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
`
`2003 WL 21244142, at *6 (W.D. Tenn. May 28, 2003); MCNIC Oil & Gas Co. v. IBEX
`
`Resources Co., L.L.C., 23 F. Supp. 2d 729, 739 (E.D. Mich. 1998) (same). If so, then the
`
`“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.’” Moses v.
`
`Business Card Express, Inc., 929 F.2d 1131, 1137 (6th Cir. 1991) (quoting Stewart
`
`Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 30 (1988)).
`
`IV.
`
`TRANSFER IS NOT APPROPRIATE.
`
`B.E. agrees that its patent infringement claims could have been brought in the Northern
`
`District of California because the Sony defendants infringe the patent-in-suit there, just as they
`
`do in this District, and the Sony defendants are based or have operations in the Northern District
`
`of California. The relevant question presented by the Sony defendants’ motions is therefore
`
`whether the Sony defendants have met their high burden to establish that the Northern District of
`
`- 4 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 11 of 26 PageID 144
`
`
`California is “a more convenient forum,” not merely an “equally convenient or inconvenient”
`
`forum when compared to the Western District of Tennessee. Van Dusen v. Barrack, 376 U.S.
`
`612, 645-46 (1964). The Sony defendants have not met this burden.
`
`A.
`
`B.E.’s Choice of Forum is Entitled to Substantial Weight.
`
`As mentioned above, it is well-settled that a plaintiff’s choice of forum is entitled to
`
`substantial weight. Hunter Fan Co., 2006 WL 1627746, at *2; see also Imagepoint, Inc. v.
`
`Keyser Indus., Inc., 2005 WL 1242067, at *3 (E.D. Tenn. May 25, 2005) (explaining the
`
`plaintiff’s “choice of forum will be given deference”); Hanning v. New England Mut. Life Ins.
`
`Co., 710 F. Supp. 213, 214-15 (S.D. Ohio 1989) (“considerable weight”). The Western District
`
`of Tennessee is B.E.’s principal place of business and its Chief Executive Officer, who is the
`
`named inventor, lives here. B.E.’s choice of forum should be accorded substantial weight.
`
`Disregarding the relevant facts, the Sony defendants argue that B.E.’s choice of venue
`
`should be afforded little weight because “Mr. Hoyle appears to have never done business in the
`
`state related to [B.E.] besides his presumed involvement in filing [B.E.]’s patent infringement
`
`lawsuits here.” SCEA D.E. 25-1 at 18-19.3 This is not true. The Western District of Tennessee
`
`is and has been the place from which Mr. Hoyle has controlled and directed B.E. business
`
`activities since at least 2008. Hoyle Decl. ¶ 6. While those activities include filing patent
`
`infringement lawsuits—the first of which was filed in 2012—Mr. Hoyle has nevertheless been
`
`operating B.E.’s business in this state since 2008.
`
`The Sony defendants urge the Court to avoid the significance of Mr. Hoyle’s presence in
`
`this District pointing out that B.E. “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
`
`3 Unless explicitly stated otherwise, citations will be made to the memorandum of points and
`authorities filed in Case No. 12-cv-2826 because substantive moving papers were not filed in
`Case Nos. 12-cv-2827 and 12-cv-2828.
`
`- 5 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 12 of 26 PageID 145
`
`
`nineteen patent infringement lawsuits.” SCEA D.E. 25-1 at 2. Again, the Sony defendants
`
`ignore the four years during which Mr. Hoyle ran B.E. from Tennessee, as opposed to earlier
`
`periods where B.E. was controlled by individuals in other states. Moreover, the Sony defendants
`
`cite no authority establishing that the existence of a business registration is critical to
`
`determining a plaintiff’s connection to a chosen forum. Indeed, it is not. Courts are instructed to
`
`find “the place of actual direction, control and coordination.” In re Microsoft, 630 F.3d 1361,
`
`1364 (Fed. Cir. 2011). Mr. Hoyle’s office in Cordova is the place from which Mr. Hoyle has
`
`controlled and directed B.E. business activities since becoming Chief Executive Officer. Hoyle
`
`Decl. ¶ 6.
`
`Not only is a business registration not a prerequisite to establishing a connection to a
`
`forum, B.E. does not rely on the fact that it is registered to conduct business in Tennessee as a
`
`basis for establishing its connection to the District. B.E. registered because it has a connection to
`
`Tennessee; it did not register to establish a connection. If the timing of B.E.’s registration is to
`
`be questioned, it should be understood that the registration was made after Mr. Hoyle chose to
`
`remain in Tennessee, rather than return to Louisiana. Id. ¶ 4. When B.E. was preparing to file
`
`this action and Mr. Hoyle discovered that B.E. had not registered to do business in Tennessee,
`
`the registration was made. Id. ¶ 8.
`
`The Sony defendants also question B.E.’s connection to this District by observing that
`
`“recent patent publications continue to list Louisiana as [Mr. Hoyle’s] residence.” SCEA D.E.
`
`25-1 at 19. The Sony defendants offer no information about Mr. Hoyle’s personal situation or
`
`the circumstances that led him briefly to seek to establish residence in New Orleans when the
`
`December 2011 patent application was filed. See Hoyle Decl. ¶ 4. Nor can the Sony defendants
`
`present any information that demonstrates Mr. Hoyle’s statements in this Court are inconsistent
`
`- 6 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 13 of 26 PageID 146
`
`
`with the representation made to the Patent Office about his residency. Mr. Hoyle is a resident of
`
`this District and his presence and residence here have nothing at all do with a desire to
`
`manufacture venue.
`
`The Sony defendants point to a May 2000 B.E. business plan apparently to suggest that
`
`B.E. operates from outside the Western District of Tennessee. SCEA D.E. 25-1 at 8 (“Michigan-
`
`based Mark McKinley, co-managed [B.E.] from Michigan where he had ‘[s]ignifigant control of
`
`[B.E.’s] day-to-day business’ since at least May, 2000.”). The problem, however, for the Sony
`
`defendants is that much like the document itself, the information contained in it is woefully out
`
`of date. Mr. McKinley, for example, has had no responsibility for conducting the business of
`
`B.E. since 2008 when Mr. Hoyle was named Chief Executive Officer. Hoyle Decl. ¶ 6. The
`
`presumed location of B.E.’s former employees or managers is of no relevance to the question of
`
`B.E.’s present connection to the Western District of Tennessee.
`
`Mr. Hoyle and B.E. are not recent transplants to the Western District of Tennessee. Nor
`
`was Mr. Hoyle’s move to the District, six years before the filing of this action, a scheme
`
`designed to construct the appearance of a connection to this forum. Unlike the cases on which
`
`the Sony defendants rely where the plaintiffs’ contacts with the chosen forum were recent or
`
`manufactured for the purpose of litigation, Mr. Hoyle has been physically present in this District
`
`since 2006, and B.E. since at least 2008. Compare Hoyle Decl. ¶¶ 2-7 with In re Microsoft
`
`Corp., 630 F.3d at 1362 (“[Plaintiff] is operated from the United Kingdom by the patent’s co-
`
`inventor and company’s managing member” and employed no individuals at its office in the
`
`Eastern District of Texas.); In re Zimmer Holdings, 609 F.3d 1378, 1381 (Fed. Cir. 2010)
`
`(“[Plaintiff] transported copies of its patent prosecution files from Michigan to its Texas office
`
`space, which it shares with another of its trial counsel’s clients.”); L & P Prop. Mgmt. Co. v.
`
`- 7 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 14 of 26 PageID 147
`
`
`JTMD, LLC, 2007 WL 295027, at *3 (E.D. Mich. Jan. 29, 2007) (“Plaintiffs do not plan to call
`
`any of its Michigan employees as witnesses in this matter; and [] Plaintiffs do not anticipate that
`
`any of its documents in Michigan would be used in the litigation.”).
`
`The Sony defendants cannot overcome the significance of Mr. Hoyle’s presence in the
`
`District. Mr. Hoyle is B.E.’s CEO, has been since 2008, and operates B.E. from this District.
`
`B.E.’s records, including documents demonstrating the conception and reduction to practice of
`
`Mr. Hoyle’s inventions, are physically located in the Western District of Tennessee. These facts
`
`are not recent developments or fictitious arrangement by counsel strategically to place important
`
`witnesses or evidence in the Western District of Tennessee. B.E.’s contacts with this District
`
`were not manufactured for litigation and as a result, B.E.’s choice of forum is entitled to
`
`“substantial weight.”
`
`B.
`
`Private Factors Favor B.E.’s Choice of Forum.
`
`While B.E.’s choice of forum is entitled to substantial weight, the Court is nevertheless
`
`required to evaluate private and public factors in determining whether to grant the Sony
`
`defendants’ motion. “The private interests of the parties that courts consider when determining
`
`whether to transfer a case include: the convenience of the parties, the convenience of witnesses,
`
`the location of sources of proof, where the operative facts occurred, the relative ability of
`
`litigants to bear expenses in any particular forum, and other practical problems affecting the
`
`case.” Hunter Fan, 2006 WL 1627746, at *2.
`
`1.
`
`Convenience of the Parties Weighs Against Transfer.
`
`The Western District of Tennessee is more convenient for B.E. than the Northern District
`
`of California. As previously explained, B.E. and its CEO, the inventor of the patents-in-suit,
`
`reside within the District. B.E.’s corporate documents and records are here as well. Outside of
`
`witness convenience, the Sony defendants do not make an explicit argument that they will be
`
`- 8 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 15 of 26 PageID 148
`
`
`inconvenienced by litigating this case in Tennessee. It is reasonable to require companies with
`
`the wealth and size of the Sony defendants to litigate in jurisdictions in which they regularly
`
`conduct business. See Lucent Techs., Inc. v. Aspect Telecomms. Corp., 1997 WL 476356, at *4
`
`(E.D. Pa. Aug. 20, 1997) (finding it reasonable to force a public company with “$300 million a
`
`year in sales and approximately $216 million in current assets, to travel to places where it is
`
`subject to jurisdiction in order to defend its corporate interests”). The Sony defendants are
`
`subsidiaries of a large and wealthy company: Sony Corporation. Sony Corporation reported for
`
`the three-months ending December 31, 2012 that it generated $19,089,000,000 in net sales, with
`
`net income of $40,000,000. Declaration of Daniel Weinberg (“Weinberg Decl.”) Ex. A. Sony
`
`Corporation further reported $42,760,000,000 in total current assets. Id. As of February 12,
`
`2013, Sony had a market capitalization in excess of $14,730,000,000, and, to defend it in this
`
`action, it has retained lawyers from Memphis and New York City. It is doubtful that the Sony
`
`defendants will suffer hardship or inconvenience by litigating in the Western District of
`
`Tennessee.
`
`2.
`
`Convenience of the Witnesses Weighs Against Transfer.
`
`The Sony defendants argue that the Northern District of California would be “more
`
`convenient” venues for its own witnesses because it purports to have more party witnesses than
`
`B.E. Compare SCEA D.E. 25-1 at 14(“There is only one potential [B.E.] witness that is located
`
`in Tennessee: Mr. Hoyle, the inventor of the ’290 Patent and CEO of [B.E.].”) with Declaration
`
`of Jennifer Y. Lui (“Lui Decl.”) ¶ 3 (“SCEA has approximately 895 employees working in its
`
`Foster City offices.”); Declaration of Matthew Seymour (“Seymour Decl.”) ¶ 5 (“Approximately
`
`245 employees work at the [SEL] San Jose facility . . .”); Declaration of Susana Capper (“Capper
`
`Decl.”) ¶ 3 (SoMC “employs approximately 125 people [in its Redwood City, California
`
`office]”). It is “the materiality and importance of the testimony of prospective witnesses, and not
`
`- 9 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Document 36 Filed 02/14/13 Page 16 of 26 PageID 149
`
`
`merely the number of witnesses, [that] is crucial to this inquiry.” Rinks v. Hocking, 2011 WL
`
`691242, at *3 (W.D. Mich. Feb. 16, 2011) (citing Viron Int’l Corp. v. David Boland, Inc., 237 F.
`
`Supp. 2d 812, 816 (W.D. Mich. 2002)).
`
`The Sony defendants offer precious little about what the witnesses will say and why they
`
`are important to this case. “To sustain a finding on [the convenience of the witnesses] . . . the
`
`party asserting witness inconvenience ‘has the burden to proffer, by affidavit or otherwise,
`
`sufficient details respecting the witnesses and their potential trial testimony to enable the court to
`
`assess the materiality of evidence and the degree of inconvenience.’” Rinks, 2011 WL 691242,
`
`at *3 (quoting Koh v. Microtek Int’l, Inc., 250 F. Supp. 2d 627, 636 (E.D. Va. 2003)); Samsung
`
`Elecs. Co. v. Rambus, Inc., 386 F. Supp. 2d 708, 718 (E.D. Va. 2005) (same). District courts
`
`typically require affidavits or declarations that contain admissible evidence setting forth “who
`
`the key witnesses will be and what their testimony will generally include.” Rinks, 2011 WL
`
`691242, at *3 (quoting Adoma v. Univ. of Phoenix, Inc., 711 F. Supp. 2d 1142, 1151 (E.D. Cal.
`
`2010)); see also Board of Trs. v. Baylor Heading & Air Conditioning, Inc., 702 F. Supp. 1253,
`
`1258 (E.D. Va. 1988) (“Witness convenience . . . cannot be assessed in the absence of reliable
`
`information identifying the witnesses involved and specifically describing their testimony.”).
`
`The Sony defendants provide none of that.
`
`a. Party Witnesses.
`
`SCEA claims that its “known prospective witnesses are located at or near its offices in
`
`Foster City.” SCEA D.E. 25-1 at 4. SEL claims that its “California employees, along with their
`
`counterparts in Japan, are likely to have relevant knowledge of SEL’s accused products. 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.” Id. at 5 (internal
`
`citations omitted). SoMC similarly claims that “[a]ll U.S. SoMC technical witnesses will likely
`
`- 10 -
`
`

`
`Case 2:12-cv-02827-JPM-tmp Docum