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`
`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`
`
`Civil Action No. 2:12-cv-2829 JPM
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`)
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff,
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`v.
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`MICROSOFT CORPORATION,
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`Defendant.
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`
`
`MEMORANDUM IN SUPPORT OF DEFENDANT MICROSOFT CORPORATION’S
`MOTION TO TRANSFER VENUE TO THE WESTERN DISTRICT OF
`WASHINGTON, OR IN THE ALTERNATIVE, TO THE
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`
`
`
`Bradley E. Trammell (TN #13980)
`Adam Baldridge (TN #023488)
`Baker, Donelson, Bearman, Caldwell &
`Berkowitz, P.C.
`165 Madison Avenue, Suite 2000
`Memphis, TN 38103
`Telephone: 901.577.2121
`Email: btrammell@bakerdonelson.com
` abaldridge@bakerdonelson.com
`
`
`Kelly C. Hunsaker (Pro Hac Vice)
`Leeron G. Kalay (Pro Hac Vice)
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`Email: hunsaker@fr.com
`Email: kalay@fr.com
`
`Attorneys for Defendant
`MICROSOFT CORPORATION
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`
`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION .................................................................................................................. 1 
`
`I. 
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`II.  STATEMENT OF FACTS ..................................................................................................... 2 
`
`III.    LEGAL STANDARD ............................................................................................................ 5 
`
`IV.   ARGUMENT .......................................................................................................................... 7 
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`A. This Case Could Have Been Brought in the Western District of Washington or the
`Northern District of California .................................................................................... 7 
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`
`B. The Private Interest Factors Favor Transfer to the Western District of
`Washington or the Northern District of California ..................................................... 7 
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` 1.   Relative Ease of Access to Sources of Proof Favors Transfer ................................ 7 
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`2.   The Cost of Attendance by the Parties and Convenience to Most of the
` Likely Witnesses Favor Transfer ............................................................................ 9 
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` 3. The Availability of Compulsory Process to Secure the Attendance of Witnesses
`Favors Transfer ..................................................................................................... 10 
`
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`C.   The Public Interest Factors Favor Transfer to the Western District of Washington or
`the Northern District of California ............................................................................ 11 
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`1.   The Relative Local Interests of the Competing Venues Support Transfer ........... 11 
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`2. Administrative Difficulties Flowing from Court Congestion Weigh in
`
` Favor of Transfer ................................................................................................. 12 
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`3.  The Other Factors That the Court May Consider do Not Weigh Against Transfer
`............................................................................................................................... 12 
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` D.   B.E. Technology’s Forum Choice is not Entitled to Deference in This Case ......... 13 
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`V.  CONCLUSION ..................................................................................................................... 15 
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
`
`Ferens v. John Deere Co.,
`494 U.S. 516 (1990) ...................................................................................................................5
`
`Geotag, Inc. v. Armoatique, Inc.,
`Case No. 2:10-cv-570 (E.D. Tex. Jan 14, 2013) ......................................................................12
`
`Gulf Oil Corp. v. Gilbert,
`330 U.S. 501 (1947) ...................................................................................................................5
`
`Helder v. Hitachi Power Tools, USA Ltd.,
`764 F. Supp. 93 (E.D. Mich. 1991) ............................................................................................6
`
`Hertz Corp. v. Friend,
`130 S.Ct. 1181 (2010) ..........................................................................................................7, 14
`
`In re Acer America Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)................................................................................................14
`
`In re EMC Corp.,
`677 F.3d 1351 (Fed. Cir. 2012)................................................................................................12
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)........................................................................................ passim
`
`In re Hoffmann-La Roche Inc.
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................8, 11, 13, 14
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)........................................................................................6, 8, 14
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)......................................................................................1, 6, 7, 9
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)..............................................................................................5, 9
`
`In re Zimmer Holdings, Inc.,
`609 F.3d 1378 (Fed. Cir. 2010)...................................................................................2, 6, 13,14
`
`Karl Storz Endoscopy America, Inc., v. Styrker Corp.,
`No. 2:07-cv-02702-JPM-sta, 2008 WL 2690084 (W.D. Tenn. July 1, 2008) ...........................5
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`
`Koster v. Lumbermens Mut. Cas. Co.,
`330 U.S. 518 (1947) .................................................................................................................13
`
`Mead Corp. v. Oscar J. Boldt Constr. Co.,
`508 F. Supp. 193 (S.D. Ohio 1981) ...........................................................................................6
`
`Moses v. Bus. Card Exp., Inc.,
`929 F.2d 1131 (6th Cir. 1991) ...................................................................................................5
`
`Piper Aircraft Co. v. Reyno,
`454 U.S. 235 (1981) ...............................................................................................................5, 6
`
`Returns Distribution Specialists, LLC v. Playtex Prods., Inc.,
`No. 02-1195-T, 2003 WL 21244142 (W.D. Tenn. May 28, 2003) ...................................2, 6, 9
`
`Sinochem Int'l Co. v. Malaysia Int'l Shipping Corp.,
`549 U.S. 422 (2007) .................................................................................................................14
`
`Stewart Org., Inc. v. Ricoh Corp.,
`487 U.S. 22 (1988) .....................................................................................................................6
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) .................................................................................................................13
`
`Zide Sport Shop of Ohio, Inc. v. Ed Tobergte Assoc., Inc.,
`16 F. App’x 433 (6th Cir. 2001) ..............................................................................................13
`
`STATUTES
`
`28 U.S.C. § 1391(c) .........................................................................................................................7
`
`28 U.S.C. § 1400 ..............................................................................................................................7
`
`28 U.S.C. § 1400(b) .........................................................................................................................7
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`28 U.S.C. § 1404(a) ............................................................................................................... passim
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`I.
`
`INTRODUCTION
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`Defendant Microsoft Corporation (“Microsoft”) respectfully moves to transfer this action
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`pursuant to 28 U.S.C. §1404(a) for the convenience of the parties and witnesses and in the
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`interest of justice. Until recently, B.E. Technology LLC (“B.E. Technology”) presented itself as
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`a Michigan company. B.E. Technology’s business plan stated that its principal office of record
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`was in Michigan; the patents asserted in this action were prosecuted by a Michigan law firm; and
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`its recent filings with the U.S. Patent and Trademark Office continue to provide a Michigan
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`address. It was not until September 6, 2012, that B.E. Technology registered with the Tennessee
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`Secretary of State to conduct business in this state. B.E. Technology admits that this registration
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`was done in preparation for litigation. The very next day, B.E. Technology filed the first of
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`nineteen lawsuits in the Western District of Tennessee alleging patent infringement.
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`None of the companies sued by B.E. Technology are based in Tennessee. Microsoft is a
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`Washington corporation with its principal place of business in the Western District of
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`Washington. On January 7, 2013, B.E. Technology provided its first allegations against specific
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`Microsoft products. Microsoft has determined that for the products accused by B.E. Technology,
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`the vast majority of witnesses, documents, and other physical evidence are expected to be located
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`in the Western District of Washington and the Northern District of California, where Microsoft
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`has operations relevant to the accused products. Only, one fact witness – the named inventor of
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`the patents-in-suit – appears to own property in the Western District of Tennessee, and
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`documents show that he recently held himself out as a resident of Louisiana. The Federal Circuit
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`has repeatedly instructed that “in a case featuring most witnesses and evidence closer to the
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`transferee venue with few or no convenience factors favoring the venue chosen by the plaintiff,
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`the trial court should grant a motion to transfer.” In re Nintendo Co., Ltd., 589 F.3d 1194, 1198
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`(Fed. Cir. 2009); see also Returns Distribution Specialists, LLC v. Playtex Prods., Inc., No. 02-
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`1195-T, 2003 WL 21244142, at *9 (W.D. Tenn. May 28, 2003) (ordering transfer where “the
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`overwhelming inconvenience to the witnesses outweighs the Plaintiff’s interest in choosing their
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`own forum.”).
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`Regardless of how long the inventor claims to reside in Tennessee, it is undisputed that
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`B.E. Technology – the plaintiff – was not registered to conduct business in the District until
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`September 2012. Plaintiff’s connection to the forum is little more than “recent, ephemeral, and
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`an artifact of litigation,” and exhibits conduct disfavored by the courts. In re Zimmer Holdings,
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`Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010). As detailed herein, the balance of private and public
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`interests weighs in favor of transfer to the Western District of Washington, or alternatively, to
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`the Northern District of California in accordance with 28 U.S.C. §1404(a).
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`II.
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`STATEMENT OF FACTS
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`B.E. Technology was formed as a limited liability company under the laws of the State of
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`Delaware in 1997. [Declaration of Leeron G. Kalay in Support of Microsoft’s Motion to
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`Transfer (“Kalay Decl.”), Ex. A.] B.E. Technology registered with the Michigan Secretary of
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`State on April 11, 2001, listing “Big Easy Technologies, LLC as its tradestyle name.” [Kalay
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`Decl., Ex. B (MI Sec. of State Record).] B.E. Technology’s business plan states that its
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`“principal office of record is in Bay City, Michigan, and its operations are headquartered in New
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`Orleans, Louisiana.” [Kalay Decl., Ex. C (May 2000 Business Plan).] Much of the company’s
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`former management, including its former CEO and its former head of new product development
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`appear to still reside in Michigan. [See, e.g., Kalay Decl., Exs. D-F.] B.E. Technology’s
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`ongoing communications with the U.S. Patent and Trademark Office still provide a Michigan
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`address. Indeed, all of B.E. Technology’s patents and recently published applications list either
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`Bay City, Michigan or Saginaw, Michigan as the location for assignee B.E. Technology, LLC.
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`[See, e.g., Kalay Decl., Ex. G (U.S. Patent Pub. No. 20120158512)]1
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`On September 6, 2012, the day before filing the first of nineteen lawsuits, B.E.
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`Technology LLC registered to conduct business in Tennessee. [Kalay Decl., Ex. J.] The address
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`provided to the Secretary of State is a private residence apparently owned by Mr. Martin David
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`Hoyle, the named inventor of the patents-in-suit. [Id. (listing B.E. Technology’s Principal
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`address as 116 W. Viking Dr., Cordova, TN 38018-7261); Kalay Decl., Ex. K. (Property Record
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`for 116 W. Viking Dr., Cordova, TN 38018-7261] Although Mr. Hoyle owns property in
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`Tennessee, in December 2011 B.E. Technology represented to the Patent Office that Mr. Hoyle
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`is a resident of New Orleans, Louisiana – not Tennessee. [Kalay Decl., Ex. L (excerpt from U.S.
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`Patent Pub. No. 2012/0158512 file history); see also Kalay Decl., Ex., M (U.S. Patent Pub. No.
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`2008/0288874, filed Apr. 28, 2008)]
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`B.E. Technology filed its Complaint in this action on September 21, 2012. [D.I. 1
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`(Complaint)] B.E. Technology alleges that Microsoft infringes U.S. Patent Nos. 6,628,314 and
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`6,771,290. B.E. Technology’s complaint alleges the patents relate to “demographically targeted
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`advertising” and “interfaces for maintaining, organizing and communicating information
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`accessible to a computer network such as the Internet and, in particular, to user interfaces that
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`provide the user with availability to that information in a personalized manner,” respectively.
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`[D.I. 1 at 2-3] In its January 7, 2013 infringement contentions, B.E. Technology specifically
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`1 On their face, both patents-in-suit list Bay City, Michigan as the location of B.E. Technology.
`According to current USPTO records, B.E. Technology still lists a Michigan address for the
`assignee of both patents-in-suit. [Kalay Decl., Ex. H (USPTO patent assignment query results
`showing single assignment-of-record of the ’314 patent from Mr. Hoyle to “B.E. Technology,
`LLC, 106 South Walnut Street, Bay City, Michigan 48706”); Ex I (USPTO patent assignment
`query results showing single assignment-of-record of the ’290 patent from Mr. Hoyle to “B.E.
`Technology, LLC, 106 South Walnut Street, Bay City, Michigan 48706”).]
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`accuses “the following of Defendant’s products and/or services of infringing the Asserted Claims
`of the ’314 Patent: Bing Ads, Microsoft Advertising, [and] Windows Ads in App.”2 B.E.
`Technology’s infringement contentions also accuse “the following of Defendant’s products
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`and/or services of infringing the Asserted Claims of the ’290 Patent: Microsoft Surface,
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`Microsoft Xbox 360 . . . as well as Xbox Live, Xbox Music, Apps Marketplace, Windows Store,
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`Xbox Video, and Xbox Games.” [Kalay Decl., Ex. N (B.E. Technology’s Infringement
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`Contentions)]
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`Microsoft is a Washington corporation with its principal place of business in Redmond,
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`Washington. Most if not all of the core Microsoft employees who designed and developed the
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`accused Microsoft Surface and Microsoft Xbox 360 consoles, as well as those who designed and
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`developed Xbox Live, Apps Marketplace, Windows Store, Xbox Video, and Xbox Games are
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`based in the Western District of Washington.3 [Declaration of Tom Bailey in Support of
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`Microsoft’s Motion to Transfer (“Bailey Decl.”), ¶4] Most if not all of the core Microsoft
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`employees who designed and developed Microsoft’s Bing Ads, Microsoft Advertising, and
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`Windows Ads in App are based in either the Western District of Washington, or in the Northern
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`District of California, where Microsoft maintains offices and employs more than 1,000
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`employees, more than 100 of whom work on Bing Ads, Microsoft Advertising or Windows Ads
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`in App. [Id., ¶ 5-6.] Therefore, the potential Microsoft witnesses in this case who can provide
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`testimony on the operation of the numerous accused Microsoft products are located in the
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`2 Contrary to the specificity required by Local Patent Rule 3.1(b), B.E. Technology’s
`infringement contentions also purport to accuse “any other products and/or services identified
`in the attached Appendix A, and all reasonably similar products and/or services” and “attached
`Appendix B and all reasonably similar products and/or services.”
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`3 Members of the Xbox Music development team are located in both Redmond, Washington and
`Paris, France. [Id.]
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`Western District of Washington or the Northern District of California. Similarly, most if not all
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`relevant Microsoft documents and electronic files concerning the design and development of the
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`accused Microsoft products are maintained or primarily accessible from Microsoft’s offices in
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`the Western District of Washington or the Northern District of California. [Id., ¶ 4.]
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`III. LEGAL STANDARD
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`“Change of venue in patent cases, like other civil cases, is governed by 28 U.S.C.
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`§ 1404(a).” In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). Congress enacted
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`Section 1404(a) to permit the transfer of actions to a more convenient federal forum. Ferens v.
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`John Deere Co., 494 U.S. 516, 522 (1990); see also Piper Aircraft Co. v. Reyno, 454 U.S. 235,
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`254 (1981) (noting that Section 1404(a) was intended to permit “easy change of venue.”).
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`Motions to transfer venue require a two-pronged analysis. 28 U.S.C. § 1404(a). First,
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`the court must determine whether the plaintiff could have originally filed suit in the proposed
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`venue for transfer. Moses v. Bus. Card Exp., Inc., 929 F.2d 1131, 1137 (6th Cir. 1991). Second,
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`the Court should consider private and public interest factors affecting the convenience of the
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`forum. Piper Aircraft, 454 U.S. at 241.4 Ultimately, “the Court may consider any factor that
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`may make any eventual trial easy, expeditious, and inexpensive.” Karl Storz Endoscopy
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`America, Inc., v. Styrker Corp., No. 2:07-cv-02702-JPM-sta, 2008 WL 2690084 at *2 (W.D.
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`4 Private factors include: “[1] relative ease of access to sources of proof; [2] availability of
`compulsory process for attendance of unwilling, and the cost of obtaining attendance of willing,
`witnesses; [3] possibility of view of premises, if view would be appropriate to the action; and
`[4] all other practical problems that make trial of a case easy, expeditious and inexpensive.”
`Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). Public factors include: “[5] the
`administrative difficulties flowing from court congestion; [6] the ‘local interest in having
`localized controversies decided at home’; [7] the interest in having the trial of a diversity case in
`a forum that is at home with the law that must govern the action; [8] the avoidance of
`unnecessary problems in conflict of laws, or in the application of foreign law; and [9] the
`unfairness of burdening citizens in an unrelated forum with jury duty.” Piper Aircraft, 454 U.S.
`at 241 n. 6 (quoting Gulf Oil, 330 U.S. at 509).
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`Tenn. July 1, 2008) (quoting Helder v. Hitachi Power Tools, USA Ltd., 764 F. Supp. 93, 96 (E.D.
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`Mich. 1991) (internal quotations omitted)).
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`Although plaintiff’s choice of forum may be considered, where an action has only a
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`limited connection with the forum, the plaintiff’s choice is to be accorded little weight in
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`resolving a motion to transfer. In re Zimmer, 609 F.3d at 1381; see also Mead Corp. v. Oscar J.
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`Boldt Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981); Piper Aircraft, 454 U.S. at 255-56.
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`This is particularly true in the context of a patent infringement action, where most or all of the
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`witnesses, documents, and operative events have no connection to the chosen forum, but are
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`instead located primarily in the defendant’s respective home district. See In re Genentech, Inc.,
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`566 F.3d 1338, 1345 (Fed. Cir. 2009); In re Nintendo, 589 F.3d at 1198 (“[I]n a case featuring
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`most witnesses and evidence closer to the transferee venue with few or no convenience factors
`
`favoring the venue chosen by the plaintiff, the trial court should grant a motion to transfer.”);
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`Returns Distribution Specialists, 2003 WL 21244142 at *9 (ordering transfer where “the
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`overwhelming inconvenience to the witnesses outweighs the Plaintiff’s interest in choosing their
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`own forum.”).
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`The Supreme Court has also counseled that a section 1404(a) analysis should account for
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`a party’s pre-filing conduct. See Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988). As
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`recently reiterated by the Federal Circuit, “[t]he Supreme Court has long urged courts to ensure
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`that the purposes of jurisdictional and venue laws are not frustrated by a party’s attempt at
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`manipulation.” In re Microsoft Corp., 630 F.3d 1361, 1364 (Fed. Cir. 2011). Specifically:
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`If the record reveals attempts at manipulation—for example, that the alleged,
`“nerve center” is nothing more than a mail drop box, a bare office with a
`computer, or the location of an annual executive retreat—the court should instead
`take as the “nerve center” the place of actual direction, control, and coordination,
`in the absence of such manipulation.
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`Id. (quoting Hertz Corp. v. Friend, 130 S.Ct. 1181, 1195 (2010) (internal quotation marks
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`omitted)). The registration of a Tennessee corporation days before filing suit is the very type of
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`pre-suit conduct that cannot and should not defeat the proper, convenient and just transfer of this
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`action to the Western District of Washington, or alternatively to the Northern District of
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`California.
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`IV. ARGUMENT
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`A.
`
`This Case Could Have Been Brought in the Western District of Washington
`or the Northern District of California
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`This case could have been brought in the Western District of Washington in the first
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`instance. Pursuant to 28 U.S.C. § 1400, a patent infringement action may be brought in the
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`district where the defendant resides. 28 U.S.C. § 1400(b). For purposes of venue, a corporation
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`is deemed to reside in any district where it is subject to personal jurisdiction at the time the suit is
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`filed. 28 U.S.C. § 1391(c). Microsoft’s corporate headquarters are located in Redmond,
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`Washington, which is within the Western District of Washington. [See Bailey Decl., ¶ 3.]
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`Alternatively, this case could have been brought in the Northern District of California.
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`As noted above, Microsoft maintains offices and employs more than 1,000 employees within the
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`Northern District of California. [Id. at ¶ 5.] Most of these employees are located at Microsoft’s
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`Silicon Valley Campus, which is within the Northern District of California. The work at
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`Microsoft’s Silicon Valley Campus is relevant to this case.
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`B.
`
`The Private Interest Factors Favor Transfer to the Western District of
`Washington or the Northern District of California
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`1.
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`Relative Ease of Access to Sources of Proof Favors Transfer
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`“In patent infringement cases, the bulk of the relevant evidence usually comes from the
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`accused infringer. Consequently, the place where the defendant’s documents are kept weighs in
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`favor of transfer to that location.” In re Nintendo, 589 F.3d at 1199 (Fed. Cir. 2009) (quoting In
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`re Genentech, 566 F.3d at 1345 (internal quotation marks omitted)). The design and
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`development of the accused Microsoft products occurred in either the Western District of
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`Washington or the Northern District of California.
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`Access to testimony from Microsoft witnesses on core issues of infringement and validity
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`is overwhelmingly easier and less costly and disruptive in these districts. Additionally, most if
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`not all of the relevant Microsoft documents and electronic files concerning the design and
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`development of the accused Microsoft products, including source code, are kept in and/or are
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`accessible from Microsoft’s offices in the Western District of Washington or the Northern
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`District of California. [Bailey Decl., ¶ 4 and 6.] None of the design or development for the
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`Microsoft products discussed above took place or is taking place in the Western District of
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`Tennessee. [Id., ¶ 7.] Based on B.E. Technology’s Local Patent Rule 3.1 infringement
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`contentions, the “bulk of relevant evidence” will relate to the accused products and will be
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`located in the Western District of Washington or the Northern District of California, weighing
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`strongly in favor of transfer.
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`The plaintiff in this action is B.E. Technology – not the named inventor, Mr. Hoyle. B.E.
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`Technology does not appear to have any business operations in Tennessee beyond the present
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`litigations. Whatever documents B.E. Technology may have possess in Tennessee are likely to
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`have been sent there in anticipation of litigation. See In re Microsoft, 630 F.3d at 1365; In re
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`Hoffmann-La Roche Inc. 587 F.3d 1333, 1337 (Fed. Cir. 2009). Nor can the quantity of any B.E.
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`Technology documents in Tennessee compare to the volume of documents congregated on the
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`west coast and the burden on Microsoft to bring numerous witnesses cross-country, which would
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`not be incurred if the case were to proceed in the Western District of Washington or the Northern
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`District of California. See In re Genentech, 566 F.3d at 1346 (noting that when the bulk of the
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`documents are located in the transferee forum, transfer avoids the imposition of “a significant
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`and unnecessary burden on the petitioners to transport documents.”). Moreover, any documents
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`B.E. Technology may have in Tennessee have necessarily already been sent (or soon will be) to
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`its own outside counsel in the Northern District of California. Overall, this factor strongly
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`weighs in favor of transfer to the Western District of Washington or, alternatively, to the
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`Northern District of California.
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`2.
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`The Cost of Attendance by the Parties and Convenience to Most of the
`Likely Witnesses Favor Transfer
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`The Federal Circuit has noted that “convenience of the witnesses is probably the single
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`most important factor in transfer analysis.” In re Genentech, 566 F.3d at 1343; see also Returns
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`Distribution Specialists, 2003 WL 21244142 at *8. “Additional distance [from home] means
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`additional travel time; additional travel time increases the probability for meal and lodging
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`expenses; and additional travel time with overnight stays increases the time which these fact
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`witnesses must be away from their regular employment.” Nintendo, 589 F.3d at 1199 (citing In
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`re TS Tech, 551 F.3d at 1320).
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`Microsoft’s Redmond headquarters is the strategic center of Microsoft’s business
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`operations, and key decisions regarding the sales, marketing, and product direction of the
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`company as a whole are made within the Western District of Washington. [Bailey Decl., ¶ 3.]
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`Most, if not all, of the Microsoft designers, managers, and engineers who designed and
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`developed the accused products are based in the Western District of Washington or the Northern
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`District of California. [See id., ¶ 4 and 6.]
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`B.E. Technology has no business operations besides pursuit of this litigation. The only
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`likely witness potentially residing in Tennessee is Mr. David Hoyle, the named inventor of the
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`patents-in-suit and apparent CEO of B.E. Technology. The convenience of one party witness
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`does not justify the inconvenience, cost and business disruption that would be imposed upon all
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`other witnesses from Microsoft and third parties.5 B.E. Technology cannot legitimately dispute
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`that the Western District of Washington and Northern District of California are far more
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`convenient forums for the likely Microsoft and third party witnesses. On balance, this weighs in
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`favor of transfer to the Western District of Washington or, alternatively, to the Northern District
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`of California.
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`3.
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`The Availability of Compulsory Process to Secure the Attendance of
`Witnesses Favors Transfer
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`Compulsory process to require a non-party witness to appear at trial or to require that
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`other sources of proof be brought to trial by a nonparty, are compelling facts favoring transfer in
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`the transfer analysis. In re Genentech, 566 F.3d at 1345 (“[T]here is a substantial number of
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`witnesses within the subpoena power of the Northern District of California and no witness who
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`can be compelled to appear in the Eastern District of Texas. The fact that the transferee venue is
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`a venue with usable subpoena power here weighs in favor of transfer, and not only slightly.”).
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`Microsoft expects a number of third-party prior art witnesses may be called upon to
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`testify in this matter. For example, Intel, which is based in the Northern District of California,
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`has a number of prior art patents relating to customized web information. [Kalay Decl., Exs. O-
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`P] Further, there is a substantial amount of likely prior-art products developed by internet
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`5 Although the case is in its early stages, Microsoft expects that various third-party prior art
`witnesses will be located in Northern California. For example, U.S. Patent No. 6,128,663, lists
`an inventor from Campbell, CA; U.S. Patent No. 6,285,985, lists an inventor from Cupertino,
`CA; U.S. Patent No. 6,285,987, lists an inventor from San Francisco, CA; U.S. Patent No.
`5,740,549, lists inventors in San Francisco and Cupertino, CA; U.S. Patent No. 5,794,210 lists
`inventors and an assignee from Berkeley, CA.
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`Similarly, Microsoft’s own MSN services, which were publicly used in the mid-1990s are
`likely to be cited as prior art to the asserted claims. A number of the engineers that worked on
`these early services may no longer be party employees but may reside in the Western District
`of Washington.
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`advertising companies located in California, such as NetGravity and PointCast. [See, e.g., Kalay
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`Decl., Exs. Q-R] Based on a reasonable investigation, Microsoft is currently unaware of a
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`single, non-party fact witness located within the subpoena powers of this Court. Accordingly
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`this factor weighs in favor of transfer.
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`C.
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`The Public Interest Factors Favor Transfer to the Western District of
`Washington or the Northern District of California
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`1.
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`The Relative Local Interests of the Competing Venues Supports Transfer
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`The relative local interests of the possibl