`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`
`
`
`
`B.E. TECHNOLOGY, LLC,
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
` No.: 2:12-cv-02829-JPM-tmp
`
`
`ORDER DENYING MOTION TO TRANSFER VENUE
`
`
`
`Before the Court is Defendant Microsoft Corporation’s
`(“Defendant” or “Microsoft”) Motion to Transfer Venue Pursuant
`to 28 U.S.C. § 1404(a), filed January 18, 2013. (ECF No. 30.)
`For the reasons that follow, the Motion is DENIED.
`I. BACKGROUND
`
`This case concerns Defendant Microsoft’s alleged
`infringement of United States Patent No. 6,628,314 (the “‘314
`patent”) and United States Patent No. 6,771,290 (the “‘290
`patent”). (ECF No. 1.) Plaintiff B.E. Technology, LLC
`(“Plaintiff or “B.E.”) is the assignee of both the ‘314 and ‘290
`patents (ECF No. 38 at 2), currently owning “all right, title,
`and interest throughout the period of the infringement” in the
`respective patents (ECF No. 1 ¶¶ 13, 16).
`B.E. alleges that Microsoft infringed the ‘314 patent “by
`using a method of providing demographically targeted advertising
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 2 of 31 PageID 547
`
`that directly infringes at least Claim 11 of the ‘314 patent
`either literally or under the doctrine of equivalents.” (Id.
`¶ 14.) Further, B.E. alleges that Microsoft infringed the ‘290
`patent “by using, selling, and offering to sell in the United
`States tablet computer products that directly infringe at least
`Claim 2 of the ‘290 patent either literally or under the
`doctrine of equivalents.” (Id. ¶ 17.)
`B.E. filed a Complaint in this Court on September 21, 2012.
`(ECF No. 1.) Microsoft filed its Answer to the Complaint on
`December 31, 2012 (ECF No. 27), and its Motion to Transfer Venue
`on January 18, 2013 (ECF No. 30). B.E. filed its Memorandum in
`Opposition to Defendant’s Motion to Transfer Venue on February
`4, 2013. (ECF No. 38.) With leave of Court, Microsoft filed a
`Reply Memorandum in Support of Its Motion to Transfer on
`February 21, 2013. (ECF No. 45.) On February 8, 2013,
`Microsoft filed a Motion to Stay pending resolution of its
`Motion to Transfer Venue. (ECF No. 40.) The Court granted
`Microsoft’s Motion to Stay on February 11, 2013. (ECF No. 41.)
` Microsoft seeks to transfer this case to the Western
`District of Washington, or, in the alternative, to the Northern
`District of California. (ECF No. 30 at 1.) To support its
`Motion, Microsoft contends that “the vast majority of witnesses,
`documents, and other physical evidence are expected to be
`located in the Western District of Washington and the Northern
`
`
`
`2
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 3 of 31 PageID 548
`
`District of California, where Microsoft has operations relevant
`to the accused products.” (ECF No. 30-1 at 1.) Further,
`Microsoft asserts that “various third-party prior art witnesses
`will be located in Northern California,” and “a number of the
`engineers that worked on” Microsoft’s MSN Services and are
`potential witnesses, but are no longer employed by Microsoft,
`“may reside in the Western District of Washington.” (Id. at 10
`n.5.)
`B.E. opposes Microsoft’s Motion to Transfer. B.E. is a
`limited-liability company incorporated in Delaware. (ECF No. 1
`¶ 2.) B.E. was originally registered in Michigan, but formally
`registered to conduct business in Tennessee in September 2012.
`(ECF No. 38 at 2.) B.E. contends that Memphis, Tennessee, is
`its principal place of business. (ECF No. 1 ¶ 2.) Martin David
`Hoyle (“Hoyle”), B.E.’s founder and CEO, is the named-inventor
`of the ‘314 patent. (ECF No. 38 at 1, 2.) Hoyle asserts he has
`been a resident of Tennessee since April, 2006. (Id.)
`B.E. argues that transfer is inappropriate because it has
`substantial connections with this district. B.E. argues that
`Hoyle has been “present in this District since 2006, and B.E.
`since at least 2008,” and that this district is B.E.’s principal
`place of business. (Id. at 5.) B.E. also argues that its
`corporate documents, including documents relating to the
`
`
`
`3
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 4 of 31 PageID 549
`
`“conception and reduction to practice” of the patent-in-suit,
`are located in this District. (Id. at 5.)
`II. STANDARD
`Microsoft moves the Court to transfer this case to the
`Western District of Washington, or, alternatively, to the
`Northern District of California, pursuant to 28 U.S.C. §
`1404(a). (ECF No. 30 at 1.) The statute provides that “[f]or
`the convenience of the parties and witnesses, in the interest of
`justice, a district court may transfer any civil action to any
`other district or division where it might have been brought.”
`28 U.S.C. § 1404(a). “As the permissive language of the
`transfer statute suggests, district courts have ‘broad
`discretion’ to determine when party ‘convenience’ or ‘the
`interest of justice’ make a transfer appropriate.” Reese v. CNH
`Am. LLC, 574 F.3d 315, 320 (6th Cir. 2009).
`
`In determining whether to transfer a case under § 1404(a),
`the court must first determine whether the claim could have been
`brought in the transferee district. 28 U.S.C. § 1404(a)
`(allowing transfer to any other district in which the claim
`“might have been brought”). Once the court has made this
`threshold determination, the court must then determine whether
`party and witness “convenience” and “the interest of justice”
`favor transfer to the proposed transferee district. Reese, 574
`F.3d at 320; Esperson v. Trugreen Ltd., No. 2:10-cv-02130-STA-
`
`
`
`4
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 5 of 31 PageID 550
`
`cgc, 2010 WL 4362794, at *5 (W.D. Tenn. Oct. 5, 2010), adopted
`2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010). In weighing these
`statutory factors, the court may still consider the private- and
`public-interest factors set forth in the pre-Section 1404(a)
`case, Gulf Oil v. Gilbert, 330 U.S. 501, 508-09 (1947), but
`courts are not burdened with “preconceived limitations derived
`from the forum non conveniens doctrine.” Norwood v.
`Kirkpatrick, 349 U.S. 29, 31 (1955) (quoting All States Freight
`v. Modarelli, 196 F.2d 1010, 1011 (3d Cir. 1952)) (internal
`quotation marks omitted); Esperson, 2010 WL 4362794, at *5. The
`United States Court of Appeals for the Sixth Circuit has stated
`that when deciding “a motion to transfer under § 1404(a), a
`district court should consider the private interests of the
`parties, including their convenience and the convenience of
`potential witnesses, as well as other public-interest concerns,
`such as systemic integrity and fairness, which come under the
`rubric of ‘interests of justice.’” Moore v. Rohm & Haas Co.,
`446 F.3d 643, 647 n.1 (6th Cir. 2006).
`Additionally, the “interest of justice” factor has been
`interpreted broadly by courts, influenced by the individualized
`circumstances of each case. The United States Court of Appeals
`for the Federal Circuit has set forth a non-exhaustive list of
`pertinent public-interest factors:
`
`
`
`5
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 6 of 31 PageID 551
`
`The public interest factors include (1) the
`administrative
`difficulties
`flowing
`from
`court
`congestion; (2) the local interest in having localized
`interests decided at home; (3) the familiarity of the
`forum with the law that will govern the case; and (4)
`the avoidance of unnecessary problems of conflicts of
`laws or in the application of foreign law.
`
`In re Acer Am. Corp., 626 F.3d 1252, 1254 (Fed. Cir. 2010); see
`also In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir.
`2009) (finding the local-interest factor weighed heavily in
`favor of transfer); Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623, 633 (W.D. Mich. 2009) (considering
`additional factors such as the relative docket congestion of
`each district).
`
`Initially, B.E. argues that there is a strong presumption
`in favor of its choice of forum, and its choice of forum should
`not be disturbed unless the defendant carries its burden to
`demonstrate that the balance of convenience strongly favors
`transfer. (ECF No. 30 at 4-6.) B.E.’s argument is erroneously
`derived from the more stringent forum-non-conveniens standard.
`Compare Hunter Fan Co. v. Minka Lighting, Inc., No. 06–2108
`M1/P, 2006 WL 1627746 (W.D. Tenn. June 12, 2006) (applying the
`appropriate private- and public-interest factors but relying on
`the forum-non-conveniens doctrine to accord strong deference to
`the plaintiff’s choice of forum), with OneStockDuq Holdings,
`LLC v. Becton, Dickinson, & Co., No. 2:12–cv–03037–JPM–tmp, 2013
`WL 1136726, at *3 (W.D. Tenn. Mar. 18, 2013), and Roberts
`
`
`
`6
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 7 of 31 PageID 552
`
`Metals, Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89,
`92-93 (N.D. Ohio 1991) (recognizing defendants need to make a
`lesser showing to overcome plaintiff’s choice of forum under
`§ 1404(a)), aff’d per curiam, 22 F.3d 1104 (6th Cir. 1994).
`Although there is a strong presumption in favor of the
`plaintiff’s choice of forum under the doctrine of forum non
`conveniens, under § 1404(a), a plaintiff’s choice of forum may
`be considered, but is entitled to less deference. Discussing
`the difference between the common-law doctrine of forum non
`conveniens and the federal transfer-of-venue statute in Norwood,
`the Supreme Court stated,
`When Congress adopted § 1404(a), it intended to
`do more than just codify the existing law on forum non
`conveniens. . . . [W]e believe that Congress, by the
`term “for the convenience of parties and witnesses, in
`the interest of justice,” intended to permit courts to
`grant
`transfers
`upon
`a
`lesser
`showing
`of
`inconvenience. This is not to say that the relevant
`factors have changed or that the plaintiff’s choice of
`forum is not to be considered, but only that the
`discretion to be exercised is broader.
`
`Norwood, 349 U.S. at 32; see also Lemon v. Druffel, 253 F.2d
`680, 685 (6th Cir. 1958) (“The choice of the forum by the
`petitioner is no longer as dominant a factor as it was prior to
`the ruling in Norwood v. Kirkpatrick[.]”); Esperson, 2010 WL
`4362794, at *5-6.
`Defendant’s burden under § 1404(a) is to demonstrate that a
`change of venue to the transferee district is warranted. See
`
`
`
`7
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 8 of 31 PageID 553
`
`Eaton v. Meathe, No. 1:11-cv-178, 2011 WL 1898238, at *2 (W.D.
`Mich. May 18, 2011); Amphion, Inc. v. Buckeye Elec. Co., 285 F.
`Supp. 2d 943, 946 (E.D. Mich. 2003); Roberts Metals, Inc., 138
`F.R.D. at 93. “Merely shifting the inconvenience from one party
`to another does not meet Defendant’s burden.” McFadgon v. Fresh
`Mkt., Inc., No. 05-2151-D/V, 2005 WL 3879037, at *2 (W.D. Tenn.
`Oct. 21, 2005). “[T]he movant must show that the forum to which
`he desires to transfer the litigation is the more convenient one
`vis a vis the Plaintiff’s initial choice.” Roberts Metals,
`Inc., 138 F.R.D. at 93 (quoting Mead Corp. v. Oscar J. Boldt
`Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981)) (internal
`quotation marks omitted). If the court determines that the
`“balance between the plaintiff’s choice of forum and defendant’s
`desired forum is even, the plaintiff’s choice of [forum] should
`prevail.” Stewart v. Am. Eagle Airlines, Inc., No. 3:10-00494,
`2010 WL 4537039, at *2 (M.D. Tenn. Nov. 3, 2010).
`III. ANALYSIS
`Microsoft asserts that B.E. could have brought this action
`in the Western District of Washington, or, alternatively, in the
`Northern District of California. (See ECF No. 30-1 at 7.) B.E.
`does not dispute the assertion that the case could have been
`brought in the Northern District of California. (See ECF No. 38
`at 4.) The Court agrees with the parties that B.E. could have
`brought suit in the Northern District of California as personal
`
`
`
`8
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 9 of 31 PageID 554
`
`jurisdiction over Microsoft exists in that district. The Court
`also agrees with Microsoft that the case could have been brought
`in the Western District of Washington for the same reason.
`Therefore, the only issue remaining is whether the balance of
`the statutory factors — the convenience to the witnesses, the
`convenience to the parties, and the interest of justice — favors
`transfer to the Western District of Washington. The Court will
`address each statutory factor separately and balance these
`factors to determine whether transfer to the Western District of
`Washington, or the Northern District of California, is proper
`pursuant to § 1404(a).
`A. Convenience of the Witnesses
`When asserting that a transferee district is more
`convenient for witnesses, a party “must produce evidence
`regarding the precise details of the inconvenience” of the forum
`chosen by the plaintiff. Esperson, 2010 WL 4362794, at *8. To
`satisfy its burden, the movant must do “more than simply
`assert[] that another forum would be more appropriate for the
`witnesses; he must show that the witnesses will not attend or
`will be severely inconvenienced if the case proceeds in the
`forum district.” Id. (quoting Roberts Metals, Inc., 138 F.R.D.
`at 93). Further, “[t]o sustain a finding on [this factor] . . .
`the party asserting witness inconvenience has the burden to
`proffer, by affidavit or otherwise, sufficient details
`
`
`
`9
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 10 of 31 PageID 555
`
`respecting the witnesses and their potential testimony to enable
`a court to assess the materiality of evidence and the degree of
`inconvenience.” Eaton, 2011 WL 1898238, at *3 (quoting Rinks v.
`Hocking, 1:10-CV-1102, 2011 WL 691242, at *3 (W.D. Mich. Feb.
`16, 2011)) (internal quotation marks omitted). It is the
`“materiality and importance of the testimony of prospective
`witnesses, and not merely the number of witnesses,” that is
`crucial to this inquiry. Rinks, 2011 WL 691242, at *3.
`Microsoft contends that witness convenience favors transfer
`to the Western District of Washington or the Northern District
`of California. (ECF No. 30-1 at 4-5, 8-9, ECF No. 39 at 4-6.)
`To support this contention, Microsoft asserts that a majority of
`the witnesses on which it intends to rely are located in the
`transferee district, or the alternative transferee district.
`These witnesses include Microsoft’s employees in both districts
`and at least five non-party witnesses related to prior art
`likely located in the Northern District of California. (ECF No.
`30-1 at 4-5, 10 n.5; ECF No. 39 at 4-6.)
`In response, B.E. does not affirmatively identify any
`witnesses it may call. As Hoyle is the inventor of the patent-
`in-suit and a party, it is presumed his testimony will be
`necessary and material to B.E.’s case. B.E. states that Hoyle
`is located in the Western District of Tennessee. (ECF No. 38 at
`1.)
`
`
`
`10
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 11 of 31 PageID 556
`
`Because the convenience of party and non-party witnesses is
`given different weight, the Court will analyze the witnesses
`separately. See Azarm v. $1.00 Stores Servs., Inc., No. 3:08-
`1220, 2009 WL 1588668, at *4 (M.D. Tenn. June 5, 2009) (“[T]he
`convenience of potential non-party witnesses, who are not
`subject to the control of the parties, is a particularly weighty
`consideration, because it is generally presumed that party
`witnesses will appear voluntarily in either jurisdiction, but
`non-party witnesses, with no vested stake in the litigation, may
`not.”).
`
`1. Party Witnesses
`Microsoft argues that “the potential Microsoft witnesses in
`this case who can provide testimony on the operation of the
`numerous accused Microsoft products are located in the Western
`District of Washington or the Northern District of California.”
`(ECF No. 30-1 at 4-5.) Specifically, Microsoft contends that
`“[m]ost if not all of the core Microsoft employees who designed
`and developed the accused Microsoft Surface and Microsoft Xbox
`360 consoles, as well as those who designed and developed Xbox
`Live, Apps Marketplace, Windows Store, Xbox Video, and Xbox
`Games are based in the Western District of Washington.” (Id. at
`4 (citing Bailey Decl., ECF No. 31, ¶ 4).) Microsoft also
`contends that “[m]ost if not all of the core Microsoft employees
`who designed and developed Microsoft Xbox Music are based in
`
`
`
`11
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 12 of 31 PageID 557
`
`Redmond, [Washington,] or Paris, France.” (Id. at 4 n.3 (citing
`Bailey Decl., ECF No. 31, ¶ 4).) Additionally, Microsoft
`contends that the employees who “designed and developed
`Microsoft’s Bing Ads, Microsoft Advertising, and Windows Ads in
`App are based in either the Western District of Washington, or
`in the Northern District of California.” (Id. (citing Bailey
`Decl., ECF No. 31, ¶¶ 5-6).) Regarding its facilities in the
`Northern District of California, Microsoft asserts that there
`are “more than 1000 employees” located there, with “more than
`100” who “work on Bing Ads, Microsoft Advertising or Windows Ads
`in App.” (Id. (citing Bailey Decl., ECF No. 31, ¶¶ 5-6).) In
`its Reply, Microsoft defends its general identification of
`potential employee-witnesses by stating that identifying its
`witnesses with more specificity at this early stage in the
`litigation would be “unduly burdensome” and “contrary to
`‘Congress’ intent to prevent the waste of time, energy and money
`and to protect litigants, witnesses and the public against
`unnecessary inconvenience and expense.’” (ECF No. 45 at 5-6
`(quoting In re EMC Corp., Misc. No. 142, 2013 WL 324154, at *2
`(Fed. Cir. Jan. 29, 2013)).)
`Microsoft notes generally that travel to the transferor
`district would impose an inconvenience for its witnesses, but
`does not provide any evidence showing that its employees will be
`unwilling to testify in the Western District of Tennessee if
`
`
`
`12
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 13 of 31 PageID 558
`
`asked to do so. (ECF No. 30-1 at 10.) Further, Microsoft only
`states generally that the absence of these potential employee-
`witnesses from Microsoft’s offices would adversely affect its
`operations. (See id. at 10); see also Esperson, 2010 WL
`4362794, at *8. Courts have noted that “normally a corporation
`is able to make its employees available to testify when needed.”
`Clark v. Dollar Gen. Corp., No. 3-00-0729, 2001 U.S. Dist. LEXIS
`25975, at *9 (M.D. Tenn. Mar. 6, 2001); see also Zimmer Enters.
`v. Atlandia Imps., Inc., 478 F. Supp. 2d 983, 991 (S.D. Ohio
`Mar. 14, 2007) (finding that the convenience of witnesses who
`are employees “will not ordinarily be considered, or at least,
`that the convenience of such employees will not generally be
`given the same consideration as is given to other witnesses”).
`Accordingly, it appears that Microsoft’s employees will be able
`to attend absent any evidence to the contrary.
`Therefore, regarding Microsoft employees, Microsoft does
`not satisfy its burden. Microsoft argues that the burden of
`proceeding in either proposed transferee district is reduced
`when comparing its own employee witnesses to B.E.’s one likely
`witness, Hoyle. (ECF No. 30-1 at 9.) The Court finds that this
`only shifts the burden of inconvenience from one party to
`another. In the instant case, the Court agrees that Microsoft’s
`employees related to the development and operation of the
`accused products are located in both proposed transferee
`
`
`
`13
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 14 of 31 PageID 559
`
`districts, and that their testimony is likely material.
`Microsoft, however, has only provided a general statement about
`the necessity of those employees to its business and has not
`indicated how many employees it would be inclined to call as
`potential witnesses. As a result, the Court cannot assess the
`degree to which Microsoft’s business would be disrupted compared
`to the disruption B.E. will endure due to its CEO’s absence
`should the case be transferred. Accordingly, the Court finds
`transfer would only shift the inconvenience to B.E. See
`McFadgon, 2005 WL 3879037, at *2.
`Therefore, because § 1404(a) provides for transfer “to a
`more convenient forum, not to a forum likely to prove equally
`convenient or inconvenient,” distance of travel for employee
`witnesses does not weigh in favor of transfer. Hunter Fan, 2006
`WL 1627746, at *2 (citing Van Dusen v. Barrack, 376 U.S. 612,
`645-46 (1964)).
`Microsoft further argues that this factor strongly favors
`transfer because its employees are located in both proposed
`transferee districts, whereas B.E. has only one likely witness,
`Hoyle, who is also an interested party. (ECF No. 30-1 at 9-10.)
`Microsoft asserts that “[t]he convenience of one party witness
`does not justify the inconvenience, cost and business disruption
`that would be imposed upon all other witnesses from Microsoft
`and third parties.” (Id. at 10.) Although Microsoft does not
`
`
`
`14
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 15 of 31 PageID 560
`
`specifically list its witnesses, and though its assertion is
`imprecise as to the materiality of the witnesses’ testimony, it
`is not asserted that their testimony will not be relevant and
`material in this case. Microsoft’s general statement, however,
`that it believes its employees in both California and Washington
`are material does not aid the court in assessing (1) what the
`testimony of such additional material witnesses will be; (2)
`whether such witnesses will be unable to attend; or (3) whether
`and to what extent such witnesses will be inconvenienced by
`testifying in this district.
`Microsoft relies on a United States District Court for the
`Eastern District of Virginia case, Koh v. Microtek
`International, Inc., 250 F. Supp. 2d 627 (E.D. Va. 2003), for
`the proposition that although a motion to transfer must normally
`contain specifics as to the “names, titles and locations of
`witnesses and the content of their testimony” (ECF No. 45 at 5
`(quoting ECF No. 38 at 9)), district courts can infer witnesses
`are located near the infringing activities and “that witnesses
`involved in design and manufacture of the accused products are
`material.” (ECF No. 45 at 5 (quoting Koh, 250 F. Supp. 2d at
`636-37) (internal quotation marks omitted).) Recognizing that
`Koh is persuasive authority, the Court also notes that Microsoft
`misapplies it to the facts of the instant case. In Koh, the
`court stated, “although the Movants have not set out
`
`
`
`15
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 16 of 31 PageID 561
`
`specifically any potential testimony, they have identified one
`individual who is located in California and two entities located
`in California, which participated in conception and reduction to
`practice of the accused product.” Koh, 250 F. Supp. 2d at 637.
`In the instant case, Microsoft has not identified specific
`witnesses that “participated in [the] conception and reduction
`to practice of the accused products.” To the contrary,
`Microsoft has only generally asserted that “most, if not all” of
`its employees working on the accused products are located in
`either proposed transferee district. (Bailey Decl., ECF No. 31,
`¶¶ 4-5.) Microsoft further notes that it has “more than 100
`employees” in the Northern District of California working on
`some of the accused products. (Id. ¶ 5.) These generalizations
`do not assist the Court in determining how many employee-
`witnesses Microsoft will actually seek to call, or whether the
`Western District Washington or the Northern District of
`California would be the more convenient forum for those
`potential witnesses. Microsoft cannot rely on such “bare
`allegations” to satisfy its burden. Esperson, 2010 WL 4362794,
`at *8.
`While B.E. did not specifically identify any witnesses, it
`is presumed that Hoyle, as CEO and inventor of the patent-in-
`suit, will be a key witness. B.E., however, does not have the
`burden to identify more witnesses for the purposes of this
`
`
`
`16
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 17 of 31 PageID 562
`
`Motion. Despite B.E. not identifying any individuals,
`Microsoft’s general identification of material witnesses who are
`Microsoft employees does not satisfy its burden on this factor.
`A simple numerical advantage is insufficient on the issues
`raised by a motion to transfer.
`Moreover, B.E. argues that “[i]t is likely that Microsoft’s
`California-based employees will be deposed in California where
`B.E.’s lead counsel is based.” (ECF No. 38 at 11.) This
`further indicates that the witness-convenience factor does not
`weigh in favor of transfer. See Hunter Fan, 2006 WL 1627746, at
`*2 (finding relevant that the plaintiff planned to take
`depositions of the defendant’s witnesses in California in
`determining that the witness convenience factor did not favor
`transfer).
`2. Non-Party Witnesses
`While convenience to party witnesses is an important
`consideration, “it is the convenience of non-party witnesses,
`rather than employee witnesses . . . that is the more important
`factor and is accorded greater weight.” Steelcase Inc. v. Smart
`Techs., 336 F. Supp. 2d 714, 721 (W.D. Mich. Mar. 5, 2004)
`(citation omitted) (internal quotation marks omitted).
`Microsoft argues that “a number of third-party prior art
`witnesses may be called upon to testify in this matter.” (ECF
`No. 30-1 at 10.) Microsoft states that it intends to rely on at
`
`
`
`17
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 18 of 31 PageID 563
`
`least five non-party witnesses who have knowledge of prior art
`related to the patent-in-suit, all of whom are likely located in
`the Northern District of California, as well as witnesses from
`other internet advertising companies located in California.
`(Id. at 10-11 & n.5.) Microsoft also asserts that it may seek
`to call former Microsoft engineers involved with MSN services,
`which it contends is prior art, potentially located in the
`Western District of Washington. (Id. at 10 n.5.) To support
`its contention, Microsoft submits information from a LexisNexis
`public information search for six prior-art witnesses,
`indicating their last-known addresses. (ECF No. 45 at 7 (citing
`ECF No. 45-1).) Microsoft claims that it will not be able to
`compel these witnesses to testify at trial if the case remains
`in Tennessee, but will be able to compel the California witness
`to testify at trial in the Northern District of California, or
`compel the Washington witnesses if the case is transferred to
`the Western District of Washington. (ECF No. 30-1 at 10-11; ECF
`No. 45 at 6-7.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Microsoft has not established that the “third party testimony
`will be material or important.” (ECF No. 38 at 11-12.) B.E.
`further argues that prior-art testimony is “almost certain to be
`
`
`
`18
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 19 of 31 PageID 564
`
`severely limited at the time of trial” and, therefore, such
`testimony does not weigh in favor of transfer. (Id. at 12.)
`B.E. acknowledges that Microsoft has identified specific
`third-party witnesses located in the Northern District of
`California regarding prior art and that those witnesses would be
`subject to its subpoena power, but states that, as Microsoft has
`requested the case be transferred to the Western District of
`Washington, “California-based third-parties equally are no more
`subject to compulsory process in Washington than they are in
`Tennessee.” (Id. at 13.) B.E. notes that Microsoft concedes
`that it will be able to subpoena these potential third-party
`witnesses for testimony or document production in their home
`districts. (Id.) Further, B.E. argues that Microsoft “does not
`address the relevance, materiality, and importance of the
`testimony any witness who allegedly could not be subpoenaed
`might give.” (Id.)
`The availability of compulsory process for unwilling
`witnesses is a consideration closely related to the convenience-
`of-witnesses factor and the costs of procuring the witness, and
`therefore is an important consideration for the Court. See,
`e.g., In re Acer, 626 F.3d at 1255; Rinks, 2011 WL 691242, at
`*4. Whether this factor should be given considerable weight
`depends on the materiality of the testimony to the resolution of
`the case. Rinks, 2011 WL 691242, at *4. A federal court in the
`
`
`
`19
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 20 of 31 PageID 565
`
`Northern District of California would be able to compel the
`majority of the identified prior-art witnesses to testify at
`trial. See Fed. R. Civ. P. 45(b)(2). In contrast, the majority
`of the prior-art witnesses would not be subject to the subpoena
`power in this district or the Western District of Washington,
`see Fed. R. Civ. P 45(c)(3)(A)(ii), but would be available for
`deposition in the Northern District of California if unwilling
`to testify in this District. Therefore, the testimony of such
`witnesses potentially would “not be live and therefore could be
`less persuasive.” Rinks, 2011 WL 691242, at *4.
`The Court finds that Microsoft has met its burden to show
`the nature of the third-party witnesses testimony, and that the
`testimony is likely material to Microsoft’s invalidity and non-
`infringement contentions. To the extent the non-party
`witnesses’ testimony may be presented by deposition, witness
`inconvenience would not be an issue. While Microsoft sets forth
`the fact that the prior-art witnesses would not be subject to
`subpoena in the Western District of Tennessee, the Court
`recognizes that the same is true if the case is transferred to
`the Western District of Washington – the district in which
`Microsoft primarily seeks transfer. Microsoft’s general
`statement is not sufficient to allow the Court to determine
`whether live testimony of Microsoft’s non-party witnesses is
`necessary. As a result, this factor weighs only slightly in
`
`
`
`20
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 21 of 31 PageID 566
`
`favor of transfer to the Northern District of California, and
`does not weigh in favor of transfer to the Western District of
`Washington.
`B. Convenience of the Parties
`Microsoft argues that the convenience of the parties
`requires the Court transfer this action to the Western District
`of Washington, or, alternatively, to the Northern District of
`California. (ECF No. 30-1 at 1.) While Microsoft organizes its
`arguments somewhat differently than the Court, the Court finds
`the considerations relevant to the convenience-of-the-parties
`factor are the location of the sources of proof and the parties’
`financial hardships due to litigation in the chosen forum.
`1. Location of Sources of Proof
`Microsoft argues that “most if not all relevant Microsoft
`documents and electronic files concerning the design and
`development of the accused Microsoft products are maintained or
`primarily accessible from Microsoft’s offices in the Western
`District of Washington or the Northern District of California.”
`(ECF No. 30-1 at 5.) More specifically, Microsoft contends that
`the documents, source code, and files relating to “Microsoft’s
`Surface, Xbox 360 consoles, Xbox Live, Xbox Music, Apps
`Marketplace, Windows Store, Xbox Video, and Xbox Games” are
`located or “are accessible from Microsoft’s Western District of
`Washington offices” (Bailey Decl., ECF No. 31, ¶ 4); and that
`
`
`
`21
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 53 Filed 07/16/13 Page 22 of 31 PageID 567
`
`the documents, source code, and files relating to “Microsoft’s
`Bing Ads, Microsoft Advertising, and Windows Ads in App” are
`located or “accessible from Microsoft’s offices in the Western
`District of Washington or the Northern District of California.”
`(Id. ¶ 6.) Microsoft argues that, while B.E. may have documents
`in the transferor district, it is likely that B.E. has already
`produced its relevant documents and the quantity