Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 1 of 24 PageID 404
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff/Counter-Defendant,
`
`v.
`
`MICROSOFT CORPORATION,
`
`Defendant/Counterclaimant.
`
`
`
`Civil Action No. 2:12-cv-2829 JPM-tmp
`
`JURY DEMAND
`
`REQUEST HEARING ON MOTION
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO DEFENDANT’S MOTION TO
`TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`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.
`
`
`
`Dated: February 4, 2013
`
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 2 of 24 PageID 405
`
`TABLE OF CONTENTS
`
`
`Page
`
`INTRODUCTION ............................................................................................................. 1
`
`STATEMENT OF FACTS ................................................................................................ 2
`
`A.
`
`B.
`
`B.E. Technology, L.L.C ......................................................................................... 2
`
`B.E. v. Microsoft .................................................................................................... 3
`
`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
`
`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
`
`A.
`
`B.
`
`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 4
`
`Private Factors Favor B.E.’s Choice of Forum ...................................................... 7
`
`1.
`
`2.
`
`3.
`
`4.
`
`Convenience of the Parties Weighs Against Transfer ............................... 8
`
`Convenience of the Witnesses Weighs Against Transfer .......................... 8
`
`a.
`
`b.
`
`Party Witnesses ............................................................................ 10
`
`Non-Party Witnesses .................................................................... 11
`
`Location of Sources of Proof ................................................................... 13
`
`Microsoft Would Not Be Materially Burdened Bearing The
`Expense of Litigating in the Western District of Tennessee .................... 15
`
`C.
`
`Public Factors Favor B.E.’s Choice of Forum ..................................................... 16
`
`1.
`
`2.
`
`Transfer to the Northern District of California and the Western
`District of Washington Would Delay Trial .............................................. 16
`
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 17
`
`CONCLUSION ................................................................................................................ 18
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`
`
`- i -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 3 of 24 PageID 406
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`Page
`
`Adoma v. Univ. of Phoenix, Inc.,
`711 F. Supp. 2d 1142 (E.D. Cal. 2010) .....................................................................................9
`
`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) .....................................................................................9, 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) ..................................................................10, 16
`
`Hanning v. New England Mut. Life Ins. Co.,
`710 F. Supp. 213 (S.D. Ohio 1989) ...........................................................................................5
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................5
`
`Hunter Fan Co. v. Minka Lighting, Inc.,
`2006 WL 1627746 (W.D. Tenn. June 12, 2006) (McCalla, J.) ....................................... passim
`
`Imagepoint, Inc. v. Keyser Indus., Inc.,
`2005 WL 1242067 (E.D. Tenn. May 25, 2005) .........................................................................4
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................12
`
`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) ...................................................................................8, 9
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)..........................................................................................14, 15
`
`- ii -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 4 of 24 PageID 407
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ..............................................................................8
`
`Page
`
`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 Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)..............................................................................................5, 6
`
`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
`
`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) ........................................................................................3
`
`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)..............................................................9, 12, 13
`
`Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc.,
`138 F.R.D. 89 (N.D. Ohio 1991) ............................................................................................10
`
`Samsung Elecs. Co. v. Rambus, Inc.,
`386 F. Supp. 2d 708 (E.D. Va. 2005) ........................................................................................9
`
`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
`
`
`
`- iii -
`
`
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 5 of 24 PageID 408
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ...................................................................................................................4
`
`Page
`
`Viron Int’l Corp. v. David Boland, Inc.,
`237 F. Supp. 2d 812 (W.D. Mich. 2002) ..................................................................................9
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`RULES
`
`Fed. R. Civ. P. 45(b)(2)..................................................................................................................13
`
`STATUTES
`
`28 U.S.C. § 1404 ..............................................................................................................................2
`
`28 U.S.C. § 1404(a) ...................................................................................................................3, 18
`
`
`
`
`
`- iv -
`
`
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 6 of 24 PageID 409
`
`
`I.
`
`INTRODUCTION.
`
`This case arises from the infringement by defendant Microsoft Corporation (“Microsoft”)
`
`of United States Patents Nos. 6,628,314 and 6,771,290. These patents describe and claim
`
`inventions relating to user interfaces for accessing computer applications and information to
`
`provide advertising over a computer network. Plaintiff B.E. Technology, L.L.C. (“B.E.”) has
`
`brought this action because Microsoft has 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 it as a forum shopper, Microsoft has asked the Court to
`
`transfer this case from the inventor’s and the plaintiff company’s home District to Microsoft’s
`
`home, the Western District of Washington (or alternatively, to the Northern District of California
`
`where other B.E. defendants have sought transfer). But the Western District of Tennessee is, and
`
`has long been, the physical location and home of B.E. and its Chief Executive Officer. Microsoft
`
`cannot disprove that.
`
`Despite Mr. Hoyle’s and B.E.’s longstanding connection to this District, Microsoft argues
`
`that transfer to the Western District of Washington would be more convenient because its
`
`headquarters is located in Redmond, Washington and the facilities relevant to this case can be
`
`found there. Alternatively, Microsoft contends that it would be more convenient to transfer the
`
`case to the Northern District of California; the same district to which other B.E. defendants have
`
`sought transfer and where Microsoft maintain additional facilities related to this action. Transfer
`
`to Washington or California might be more convenient for Microsoft, but there is no room for
`
`
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 7 of 24 PageID 410
`
`
`debate that it 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 Microsoft can offer
`
`no more, its motion 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 Patents Nos. 6,628,314
`
`(the “’314 patent”) and 6,771,290 (the “’290 patent”) (together, the “patents-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 patents-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.
`
`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
`
`
`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
`
`- 2 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 8 of 24 PageID 411
`
`
`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. Microsoft.
`
`B.E. filed its Complaint in this matter on September 21, 2012. D.E. 1. Microsoft filed its
`
`Answer on December 31, 2012, acknowledging that venue is proper in this District. D.E. 27 ¶ 5
`
`(“Microsoft does not deny venue is technically proper in this District”). This is one of nineteen
`
`cases B.E. has filed in the Western District of Tennessee for the infringement of the patents-in-
`
`suit and a related patent not asserted against Microsoft. The defendants in these 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).
`
`“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
`
`- 3 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 9 of 24 PageID 412
`
`
`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 Microsoft infringes there, just as it does in this District, and
`
`Microsoft is based in the Northern District of California. The relevant question presented by
`
`Microsoft’s motion is therefore whether Microsoft has met its high burden to establish that the
`
`Northern District of 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). Microsoft has not made that showing.
`
`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
`
`- 4 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 10 of 24 PageID 413
`
`
`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.
`
`Microsoft argues that B.E.’s choice of venue should be disregarded “to avoid ‘forum
`
`shopping.’” D.E. 30-1 at 13. B.E. is not forum shopping and Microsoft’s assertion to the
`
`contrary makes no sense. Mr. Hoyle is not a recent transplant to the Western District of
`
`Tennessee. Nor was his move to the District, six years before the filing of this action, the first
`
`step in a slow-developing scheme to construct the appearance of a connection to the forum. Mr.
`
`Hoyle has been physically present in this District since 2006, and B.E. since at least 2008. Hoyle
`
`Decl. ¶¶ 2-7. Moreover, the physical location of B.E.’s records, including documents
`
`demonstrating the conception and reduction to practice of Mr. Hoyle’s inventions, is neither a
`
`recent development nor a fictitious arrangement by counsel strategically to place important
`
`evidence in the Western District of Tennessee. Id. ¶ 7.
`
`There is no similarity between these facts and the facts of the cases on which Microsoft
`
`relies. See In re Microsoft Corp., 630 F.3d 1361, 1362 (Fed. Cir. 2011) (“[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 Hoffman-La Roche,
`
`Inc., 587 F.3d 1333, 1336-37 (Fed. Cir. 2009) (“[T]here appears to be no connection between
`
`this case and the Eastern District of Texas except that in anticipation of this litigation,
`
`[plaintiff’s] counsel in California converted into electronic format 75,000 pages of documents
`
`demonstrating conception and reduction to practice and transferred them to the offices of its
`
`litigation counsel in Texas.”); In re Zimmer Holdings, 609 F.3d 1378, 1381 (Fed. Cir. 2010)
`
`- 5 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 11 of 24 PageID 414
`
`
`(“[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.”).
`
`Microsoft mostly avoids the significance of Mr. Hoyle’s presence in this District, arguing
`
`instead that “[r]egardless of how long the inventor claims to reside in Tennessee, it is undisputed
`
`that B.E. Technology—the plaintiff—was not registered to conduct business in the District until
`
`September 2012.” D.E. 30-1 at 2. Microsoft cites no authority establishing that the existence of
`
`a business registration is important, much less relevant, to demonstrating a plaintiff’s connection
`
`to a chosen forum. To the contrary, as Microsoft explains, the court should identify the
`
`company’s “‘nerve center[,]’ the place of actual direction, control and coordination.” D.E. 30-1
`
`at 6 (citing In re Microsoft, 630 F.3d at 1364). Mr. Hoyle’s office in Cordova is B.E.’s “nerve
`
`center.” It 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. Microsoft can muster no evidence to the
`
`contrary.
`
`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. Regardless, B.E. does not contend that its contacts with the
`
`forum are established by its registration.
`
`- 6 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 12 of 24 PageID 415
`
`
`Microsoft also questions B.E.’s connection to this District by observing that “in
`
`December 2011 B.E. Technology represented to the Patent Office that Mr. Hoyle is a resident of
`
`New Orleans, Louisiana—not Tennessee.” D.E. 30-1 at 3. Microsoft offers 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 Microsoft present any information that demonstrates Mr. Hoyle’s statements
`
`in this Court are inconsistent 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.
`
`Finally, Microsoft points to a May 2000 B.E. business plan apparently to establish that
`
`B.E. operates from outside the Western District of Tennessee. In particular, Microsoft states
`
`“[m]uch of the company’s former management, including its former CEO and its former head of
`
`new product development appear to still reside in Michigan.” D.E. 30-1 at 2. 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 is B.E.’s current CEO, has
`
`been since 2008, and operates B.E. from this District. The existence and whereabouts of
`
`individuals identified in a nearly thirteen year old document changes none of that. B.E.’s
`
`contacts with the forum were not manufactured for litigation and as a result, its 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 Microsoft’s
`
`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
`
`- 7 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 13 of 24 PageID 416
`
`
`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, Microsoft does not make an explicit argument that it will be
`
`inconvenienced by conducting litigation in Tennessee. It is reasonable to require companies with
`
`the wealth and size of Microsoft 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”). Microsoft is a large and wealthy
`
`company. It reported for the fiscal quarter ending December 31, 2012 that it generated
`
`$21,456,000,000 in revenue, with operating income of $7,771,000,000. Declaration of Daniel
`
`Weinberg (“Weinberg Decl.”) Ex. A. Microsoft further reported $128,683,000,000 in total
`
`assets, including $6,017,000,000 in cash and cash equivalents. As of February 4, 2013,
`
`Microsoft had a market capitalization of $230,760,000,000, and, to defend it in this action, it has
`
`retained lawyers from Memphis and Redwood City, California. It is doubtful that Microsoft will
`
`suffer hardship or inconvenience by litigating in the Western District of Tennessee.
`
`2.
`
`Convenience of the Witnesses Weighs Against Transfer.
`
`Microsoft argues that the Western District of Washington and the Northern District of
`
`California would be “far more convenient” venues for its own witnesses because it purports to
`
`- 8 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 14 of 24 PageID 417
`
`
`have more party witnesses than B.E. Compare D.E. 30-1 at 9-10 (“The only likely witness
`
`potentially residing in Tennessee is Mr. David Hoyle, the named inventor of the patents-in-suit
`
`and apparent CEO of B.E. Technology.”) with Declaration of Tom Bailey (“Bailey Decl.”) ¶¶ 3
`
`(“Microsoft currently has over 40,000 employees working in its Washington State facilities.”); 5
`
`(“Microsoft currently has more than 1000 employees within the Northern District of
`
`California.”). 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 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)).
`
`Microsoft offers precious little about whom the witnesses are that will be inconvenienced
`
`by the case staying in Tennessee, what they 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
`
`- 9 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 15 of 24 PageID 418
`
`
`the witnesses involved and specifically describing their testimony.”). Microsoft provides none of
`
`that.
`
`a. Party Witnesses.
`
`Microsoft claims that the “core Microsoft employees” who developed the accused
`
`products are “based in the Western District of Washington or the Northern District of
`
`California,” D.E. 30-1 at 4, but offers no particularized information enabling the Court to
`
`ascertain how much weight to give the claim of inconvenience. Microsoft fails to identify any
`
`witnesses by name, position title, location, the subject matter on which they will testify, or the
`
`burdens they would endure by traveling to Tennessee to testify. Microsoft merely states that:
`
`
`
`“Most if not all of the core Microsoft employees who designed and developed
`
`Microsoft’s Surface, Xbox 360 consoles, Xbox Live, Apps Marketplace,
`
`Windows Store, Xbox Video, and Xbox Games are based in the Western District
`
`of Washington.” Bailey Decl. ¶ 4.
`
`
`
`
`
`“Most if not all of the core Microsoft employees who designed and developed
`
`Xbox Music are based in Redmond, WA or Paris, France.” Id.
`
`“Most if not all of the core Microsoft employees who designed and developed
`
`Microsoft’s Bing Ads, Microsoft Advertising, and Windows Ads in App are
`
`based in the Western District of Washington or the Northern District of
`
`California.” Id. ¶ 6.
`
`“[A] party that ‘fails to identify the witnesses’ and ‘what their testimony would be’ cannot
`
`establish that a particular forum is inconvenient.” Esperson v. Trugreen Ltd. P’ship, 2010 WL
`
`4362794, at *8 (W.D. Tenn. Oct. 5, 2010) (quoting Roberts Metals, Inc. v. Florida Props. Mktg.
`
`Grp., Inc., 138 F.R.D. 89, 93 (N.D. Ohio 1991), aff’d per curiam, 22 F.2d 1104 (6th Cir. 1994)).
`
`- 10 -
`
`

`
`Case 2:12-cv-02829-JPM-tmp Document 38 Filed 02/04/13 Page 16 of 24 PageID 419
`
`
`Microsoft’s vague representations concerning the location of “most if not all” of its employees
`
`do not meaningfully aid in the evaluation of the witness inconvenience factor.
`
`Microsoft also does not provide admissible evidence of the costs expected to be incurred
`
`or how its global operations would be disrupted by the case staying in Tennessee. Microsoft
`
`merely argues that the “convenience of one party witness does not justify the inconvenience, cost
`
`and business disruption that would be imposed upon all other witnesses from Microsoft . . . .”
`
`D.E. 30-1 at 9-10. That’s it. Microsoft fails to provide the names, position titles, or
`
`responsibilities of a single anticipated witness, the cost Microsoft would incur by sending a
`
`witness to Tennessee to testify, or how their absence from Washington, California or France
`
`would disrupt Microsoft’s global business operations.
`
`Finally, Microsoft has not shown that all of its witnesses will necessarily be forced to
`
`testify in Tennessee. Typically, though not always, depositions are taken in locations convenient
`
`for the witnesses or subject to agreements between the parties mindful of witness convenience.
`
`It is likely that Microsoft’s California-based employees will be deposed in California where
`
`B.E.’s lead counsel is based. See Hunter Fan, 2006 WL 1627746, at *2 (witness convenience
`
`does not favor transfer where plaintiff “plans to t