`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
`
`GOOGLE INC.,
`
`Defendant.
`
`
`
`Case No. 2:12-cv-2830 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)
`
`
`
`Dated: January 7, 2013
`
`
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`Daniel J. Weinberg (CA Bar No. 227159)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`
`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 2 of 22 PageID 193
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ............................................................................................................. 1
`
`STATEMENT OF FACTS ................................................................................................ 2
`
`A.
`
`B.
`
`B.E. Technology, L.L.C ......................................................................................... 2
`
`B.E. v. Google ........................................................................................................ 2
`
`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 ...................................................... 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`Convenience of the Parties Weighs Against Transfer ............................... 7
`
`Convenience of the Witnesses Weighs Against Transfer .......................... 7
`
`a.
`
`b.
`
`Party Witnesses .............................................................................. 8
`
`Non-Party Witnesses .................................................................... 10
`
`Location of Sources of Proof ................................................................... 12
`
`Google Would Not Be Materially Burdened Bearing The Expense
`of Litigating in the Western District of Tennessee .................................. 13
`
`C.
`
`Public Factors Favor B.E.’s Choice of Forum ..................................................... 14
`
`1.
`
`2.
`
`Transfer to the Northern District of California Would Delay Trial ......... 14
`
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 15
`
`CONCLUSION ................................................................................................................ 16
`
`V.
`
`
`
`- i -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 3 of 22 PageID 194
`
`
`
`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Page(s)
`
`Adoma v. Univ. of Phoenix, Inc.,
`711 F. Supp. 2d 1142 (E.D. Cal. 2010) .....................................................................................8
`
`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) ......................................................................................13
`
`Board of Trs. v. Baylor Heading & Air Conditioning, Inc.,
`702 F. Supp. 1253 (E.D. Va. 1988) ...........................................................................................8
`
`Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623 (W.D. Mich. 2009) .................................................................................12
`
`Duramed Pharms., Inc. v. Watson Labs., Inc.,
`2008 U.S. Dist. LEXIS 103398 (D. Nev. Dec. 12, 2008) ........................................................10
`
`E2Interactive, Inc. v. Blackhawk Network, Inc.,
`2010 WL 3937911 (W.D. Wis. Oct. 6, 2010) ..........................................................................14
`
`Ellipsis, Inc. v. Colorworks, Inc.,
`329 F. Supp. 2d 962 (W.D. Tenn. 2004) ..................................................................................13
`
`Esperson v. Trugreen Ltd. P’ship,
`2010 WL 4362794 (W.D. Tenn. Oct. 5, 2010) ....................................................................9, 14
`
`Hanning v. New England Mut. Life Ins. Co.,
`710 F. Supp. 213 (S.D. Ohio 1989) ...........................................................................................4
`
`Hunter Fan Co. v. Minka Lighting, Inc.,
`2006 WL 1627746 (W.D. Tenn. June 12, 2006) ............................................................. passim
`
`Imagepoint, Inc. v. Keyser Indus., Inc.,
`2005 WL 1242067 (E.D. Tenn. May 25, 2005) .........................................................................4
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................5
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)................................................................................................13
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)..................................................................................................5
`
`- ii -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 4 of 22 PageID 195
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`Page
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................10
`
`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
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ........................................................................7, 16
`
`Max Rack, Inc. v. Hoist Fitness Sys., Inc.,
`2006 WL 640497 (S.D. Ohio March 10, 2006) .......................................................................12
`
`MCNIC Oil & Gas Co. v. IBEX Resources Co., L.L.C.,
`23 F. Supp. 2d 729 (E.D. Mich. 1998) .......................................................................................3
`
`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, 13
`
`Optima, Inc. v. Republic Indus., Inc.,
`1995 WL 72430 (E.D. La. Feb. 21, 1995) ..............................................................................16
`
`Parsons v. Chesapeake & Ohio Ry. Co.,
`375 U.S. 71 (1963) ...................................................................................................................14
`
`Plough, Inc. v. Allergan, Inc.,
`741 F. Supp. 144 (W.D. Tenn. 1990) ........................................................................................3
`
`Qarbon.com v. eHelp Corp.,
`315 F. Supp. 2d 1046 (N.D. Cal. 2004) ...................................................................................10
`
`Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
`2003 WL 21244142 (W.D. Tenn. May 28, 2003) .....................................................................3
`
`Rinks v. Hocking,
`2011 WL 691242 (W.D. Mich. Feb. 16, 2011)................................................................ passim
`
`
`
`- iii -
`
`
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 5 of 22 PageID 196
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc.,
`138 F.R.D. 89 (N.D. Ohio 1991) ..............................................................................................9
`
`Page
`
`Samsung Elecs. Co. v. Rambus, Inc.,
`386 F. Supp. 2d 708 (E.D. Va. 2005) ........................................................................................8
`
`Siteworks Solutions, LLC v. Oracle Corp.,
`2008 WL 4415075 (W.D. Tenn. Sept. 22, 2008) .....................................................................13
`
`Stewart Organization, Inc. v. Ricoh Corp.,
`487 U.S. 22 (1988) ....................................................................................................................4
`
`Surface Shields, Inc. v. Poly-Tak Prot. Sys.,
`213 F.R.D. 307 (N.D. Ill. 2003) ...............................................................................................10
`
`Tuna Processors, Inc. v. Hawaii Int’l Seafood,
`408 F. Supp. 2d 358 (E.D. Mich. 2005) ....................................................................................3
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ...................................................................................................................4
`
`Viron Int’l Corp. v. David Boland, Inc.,
`237 F. Supp. 2d 812 (W.D. Mich. 2002) ..................................................................................9
`
`FEDERAL STATUTES
`
`28 U.S.C. § 1404 ..............................................................................................................................1
`
`28 U.S.C. § 1404(a) ...................................................................................................................3, 16
`
`RULES
`
`Fed. R. Civ. P. 8 .............................................................................................................................10
`
`Fed. R. Civ. P. 12(b)(6)..................................................................................................................10
`
`Fed. R. Civ. P. 12(f) .......................................................................................................................10
`
`Fed. R. Civ. P. 45(b)(2)..................................................................................................................11
`
`
`
`
`
`- iv -
`
`
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 6 of 22 PageID 197
`
`
`I.
`
`INTRODUCTION.
`
`This case arises from the infringement by defendant Google, Inc. (“Google”) 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. The inventor, Martin David Hoyle, who is also the Chief
`
`Executive Officer of plaintiff B.E. Technology, L.L.C. (“B.E.”), 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. B.E. has brought this action because Google has infringed B.E.’s
`
`patents in this District and across the United States.
`
`Perhaps operating under a misunderstanding about why and when Mr. Hoyle moved to
`
`this District and about Mr. Hoyle’s connection to B.E., Google has asked the Court to transfer
`
`this case from the inventor’s and the plaintiff company’s home District to Google’s home, the
`
`Northern District of California. This case is not, however, like others in which plaintiffs take
`
`steps to manufacture venue. The Western District of Tennessee has long been the physical
`
`location and home of B.E. and its CEO who is the inventor of the asserted patents.
`
`Ignoring completely the relevant facts establishing Mr. Hoyle’s and B.E.’s longstanding
`
`connection to this District, Google argues that transfer to the Northern District of California
`
`would be more convenient because its global headquarters is located in Mountain View,
`
`California and its witnesses and documents can be found there. Transfer to California might be
`
`more convenient for Google, but 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
`
`Google can offer no more, its motion to transfer should be denied.
`
`
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 7 of 22 PageID 198
`
`
`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.
`
`B.
`
`B.E. v. Google.
`
`B.E. filed its Complaint in this matter on September 21, 2012. D.E. 1. Google filed its
`
`Answer on December 31, 2012 admitting that “venue is proper.” D.E. 25. 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 Google. The defendants in these cases
`
`
`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
`
`- 2 -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 8 of 22 PageID 199
`
`
`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
`
`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
`
`- 3 -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 9 of 22 PageID 200
`
`
`“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 Google infringes there, just as it does in this District, and Google is
`
`based in the Northern District of California. The relevant question presented by Google’s
`
`motion is therefore whether Google 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). Google 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
`
`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.
`
`- 4 -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 10 of 22 PageID 201
`
`
`
`Without any mention of the relevant facts, Google argues that B.E.’s choice of venue
`
`should be disregarded because its “contacts to this district are minimal and unrelated to this
`
`action.” D.E. 22-1 at 13. That is not true. Unlike the cases on which Google relies where the
`
`plaintiffs’ contacts with the chosen forum were recent or manufactured for the purpose of
`
`litigation, Mr. Hoyle has been physically present in this District since 2006, and B.E. since at
`
`least 2008. Compare Hoyle Decl. ¶¶ 2-7 with In re Microsoft Corp., 630 F.3d 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) (“[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.”).
`
`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. 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. Mr.
`
`Hoyle, as CEO and inventor, will likely be a key B.E. witness, but Google makes no mention of
`
`him, and it makes no attempt to overcome the significance of his presence in the District. B.E.’s
`
`- 5 -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 11 of 22 PageID 202
`
`
`contacts with the forum were not manufactured for litigation and as a result, its choice of forum
`
`is entitled to “substantial weight.”
`
`Google seeks to undercut B.E.’s obvious connection to the District by pointing out that
`
`B.E. “registered to do business in the Western District of Tennessee just one day before initiating
`
`its litigations against 19 defendants in this District.” D.E. 22-1 at 1. B.E. does not rely on the
`
`simple fact that it is registered to conduct business in Tennessee as a basis for establishing B.E.’s
`
`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. Hoyle Decl. ¶ 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. Google’s assault on this straw man is not sufficient to
`
`carry its burden.
`
`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 Google’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 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.
`
`- 6 -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 12 of 22 PageID 203
`
`
`
`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, Google 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 Google 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”). Google is a large and wealthy company. It reported
`
`for the fiscal quarter ending September 2012 that it generated $14,101,000,000 in revenue, with
`
`operating income of $2,736,000,000. Declaration of Daniel Weinberg (“Weinberg Decl.”) Ex.
`
`A. Google reported 2011 revenue of $37,905,000,000 and $11,742,000,000 of operating income.
`
`Id., Ex. B. Google further reported $52,758,000,000 in total current assets, including
`
`$9,983,000,000 in cash and cash equivalents. As of January 3, 2013, Google had a market
`
`capitalization in excess of $237,000,000,000, and, to defend it in this action, it has retained
`
`lawyers from New York City, Washington D.C., and Memphis. It is doubtful that Google will
`
`suffer hardship or inconvenience by litigating in the Western District of Tennessee.
`
`2.
`
`Convenience of the Witnesses Weighs Against Transfer.
`
`Google argues that the Northern District of California would be a more convenient venue
`
`for its own witnesses because, “[s]imply put, it is more convenient for witnesses to testify at
`
`home.” By the same logic, transfer to the Northern District of California would be equally
`
`inconvenient to B.E.’s witnesses, none of whom is located in the Northern District of California.
`
`- 7 -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 13 of 22 PageID 204
`
`
`Moreover, Google offers precious little about who the witnesses are, 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 v. Hocking, 2011
`
`WL 691242, at *3 (W.D. Mich. Feb. 16, 2011) (quoting Koh v. Microtek Int’l, Inc., 250 F. Supp.
`
`2d 627, 636 (E.D. Va. 2003)); Samsung Elecs. Co. v. Rambus, Inc., 386 F. Supp. 2d 708, 718
`
`(E.D. Va. 2005) (same). District courts typically require affidavits or declarations that contain
`
`admissible evidence setting forth “who the key witnesses will be and what their testimony will
`
`generally include.” Rinks, 2011 WL 691242, at *3 (quoting Adoma v. Univ. of Phoenix, Inc.,
`
`711 F. Supp. 2d 1142, 1151 (E.D. Cal. 2010)); see also Board of Trs. v. Baylor Heading & Air
`
`Conditioning, Inc., 702 F. Supp. 1253, 1258 (E.D. Va. 1988) (“Witness convenience . . . cannot
`
`be assessed in the absence of reliable information identifying the witnesses involved and
`
`specifically describing their testimony.”). Google provides none of that.
`
`a.
`
`Party Witnesses.
`
`Google claims that the “relevant engineers and employees” who are likely to be party
`
`witnesses would be inconvenienced if the case remains in Tennessee, but offers no particularized
`
`information enabling the Court to ascertain how much weight to give the claim of inconvenience.
`
`Google 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.
`
`Google merely states that its “employees most knowledgeable of the design, development and
`
`operation of, and the financial information regarding these products and services are located in
`
`Mountain View, California.” Declaration of Abeer Dubey (“Dubey Decl.”) ¶ 4. “[A] party that
`
`‘fails to identify the witnesses’ and ‘what their testimony would be’ cannot establish that a
`
`- 8 -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 14 of 22 PageID 205
`
`
`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)).
`
`The evidence on which Google relies leaves open the possibility that some Google
`
`employees who may be called to testify reside outside the Northern District of California. See
`
`Dubey Decl. ¶ 4 (“To the extent any such individuals may be located outside Mountain View,
`
`California, they would report to Google’s headquarters in Mountain View, California.”)
`
`(emphasis added). Google’s vague representations concerning witness inconvenience do not
`
`meaningfully aid in the evaluation of this factor. 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 (citing Viron Int’l Corp. v. David Boland, Inc., 237
`
`F. Supp. 2d 812, 816 (W.D. Mich. 2002)).
`
`Google also fails to provide admissible evidence establishing how travel from California
`
`to Tennessee would impose “significant inconvenience for Google’s witnesses.” D.E. 22-1 at 9.
`
`It does not address the availability of commercial flights between the Northern District of
`
`California and the Western District of Tennessee or how long the trip takes, and it does not assert
`
`that Google will not cover any travel expenses of its employee witnesses.
`
`Google also does not provide admissible evidence of how its global operations would be
`
`adversely affected by the case staying in Tennessee. Google merely states that “the Google
`
`employees who are likely to serve as trial witnesses are a core group of employees, whose
`
`absence would adversely affect Google’s operations.” Id. That’s it. Google fails to provide the
`
`names, position titles, or responsibilities of the “core group” of employees or how their absence
`
`from California would harm Google’s global business operations.
`
`- 9 -
`
`
`
`Case 2:12-cv-02830-JPM-tmp Document 29 Filed 01/07/13 Page 15 of 22 PageID 206
`
`
`
`Finally, Google 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 Google’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 take the depositions of witnesses who are California residents,
`
`including Defendant’s employees, in California”).
`
`b.
`
`Non-Party Witnesses.
`
`Google next argues that the case should be transferred because third-party witnesses,
`
`“including inventors and assignees of relevant prior art” are located outside the Western District
`
`of Tennessee. See D.E. 22-1 at 9-10. While the convenience of third party witnesses is a
`
`consideration in evaluating a motion to transfer, it is not entitled to great weight where, as here,
`
`the movant fails to establish that the third party testimony will be material or important. See
`
`Rinks, 2011 WL 691242, at *3 (stating “the materiality and importance of the testimony of the
`
`prospective witness” is “crucial to this inquiry”).
`
`Google lists eleven United States patents that it contends “may be prior art.”2 D.E. 22-1
`
`at 5-6. Prior art inventor testimony may not be used to vary the words of the alleged prior art
`
`and admissible prior art inventor testimony is almost certain to be severely limited by the time of
`
`trial. See, e.g., Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1375 (Fed. Cir. 2008)
`
`(affirming order limiting prior art inventor’s testimony to the “actual words and content” of the
`
`2 While Google identifies potential prior art in the motion to transfer, it failed to identify any
`prior art in its subsequently-filed answer and affirmative defense of invalidity, D.E. 25, despite
`the requirements that answers and affirmative defenses be adequately pled under Fed. R. Civ. P.
`8 and capable of withstanding a challenge under Rule 12(b)(6) or Rule 12(f). See Surface
`Shields, Inc. v. Poly-Tak Prot. Sys., 213 F.R.D. 307, 308 (N.D. Ill. 2003); Duramed Pharms.,
`Inc. v. Watson Labs., Inc., 2008 U.S. Dist. LEXIS 103398, at *10-11 (D. Nev. Dec. 12, 2008);
`Qarbon.com v. eHelp Corp., 315 F. Supp. 2d 1046, 1050-51 (N.D. Cal. 2004).
`
`- 10 -
`
`
`
`Case 2:12-cv-02830-JPM-