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Case 2:12-cv-02830-JPM-tmp Document 45 Filed 05/24/13 Page 1 of 26 PageID 524
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
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`B.E. TECHNOLOGY, LLC,
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`Plaintiff,
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`GOOGLE INC.,
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`Defendant.
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`No.: 2:12-cv-02830-JPM-tmp
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`ORDER DENYING MOTION TO TRANSFER VENUE
`
`
`Before the Court is Defendant Google Inc.’s (“Defendant” or
`“Google”) Motion to Transfer Venue Pursuant to 28 U.S.C.
`§ 1404(a), filed December 18, 2012. (ECF No. 22.) For the
`reasons that follow, the Motion is DENIED.
`I. BACKGROUND
`
`This case concerns Defendant Google’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. 29 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 Google infringed the ‘314 patent “by
`using a method of providing demographically targeted advertising
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`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 Google 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.) Google filed its Motion to Transfer Venue on
`December 18, 2012 (ECF No. 22.), and filed its Answer to the
`Complaint on December 31, 2012 (ECF No. 25). B.E. filed its
`Memorandum in Opposition to Defendant’s Motion to Transfer Venue
`on January 7, 2013. (ECF No. 29.) With leave of Court, Google
`filed a Reply Memorandum in Support of Its Motion to Transfer on
`January 29, 2013. (ECF No. 37.) On February 7, 2013, Google
`filed a Motion to Stay pending resolution of its Motion to
`Transfer Venue. (ECF No. 39.) The Court granted Google’s
`Motion to Stay on February 11, 2013. (ECF No. 42.)
`Google seeks to transfer this case to the Northern District
`of California, where its headquarters are located. (ECF No. 22-
`1 at 1.) To support its Motion, Google contends that all
`products and services of which it is alleged to have infringed
`were developed and have been operated from the Northern District
`of California, and, as such, “all witnesses, documents, and
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`other relevant evidence” regarding the accused products are
`located in that district. (Id. at 2.) Further, Google asserts
`that a majority of third-party witnesses on whom it intends to
`rely are also located in or around the Northern District of
`California. (Id. at 1.)
`B.E. opposes Google’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. 29 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 both the ‘314 and ‘290 patents. (ECF No. 29 at 1.) Hoyle
`has been a resident of Tennessee since April, 2006. (Id. at 2.)
`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 this district is B.E.’s principal
`place of business. (Id. at 4-5.) B.E. also argues that none of
`its witnesses are located in the Northern District of
`California. (Id. at 7.) Further, B.E. argues that its
`corporate documents, including documents relating to the
`“conception and reduction to practice” of the patents-in-suit,
`are located in this District. (Id. at 4, 5, 7.)
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`II. STANDARD
`
`Google moves the Court to transfer this case to the
`Northern District of California pursuant to 28 U.S.C. § 1404(a).
`(ECF No. 22-1 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-
`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
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`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:
`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.
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`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. 29 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
`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).
`
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`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
`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
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`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
`
`Google asserts that B.E. could have brought this action in
`the Northern District of California. (See ECF No. 22-1 at 7.)
`B.E. does not dispute this assertion. (See ECF No. 29 at 4.)
`The Court agrees with the parties that B.E. could have brought
`suit in the Northern District of California as personal
`jurisdiction over Google exists in that district. 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 Northern District of California. The Court will address
`each statutory factor separately and balance these factors to
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`determine whether transfer to 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
`respecting the witnesses and their potential testimony to enable
`a court to assess the materiality of evidence and the degree of
`inconvenience.” Eaton v. Meathe, No. 1:11-cv-178, 2011 WL
`1898238, at *3 (W.D. Mich. May 18, 2011) (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.
`
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`Google contends that witness convenience favors transfer to
`
`the Northern District of California. (ECF No. 37 at 5.) To
`support this contention, Defendant asserts that a majority of
`the witnesses on which it intends to rely are located in that
`district. These witnesses include at least two material
`witnesses who are Google employees and at least ten non-party
`witnesses.
`
`In response, B.E. argues that “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.” (See ECF No. 29 at 7.) B.E. identifies Hoyle, the
`named-inventor of the patents-in-suit and founder and CEO of
`B.E., as its key witness who is located in the Western District
`of Tennessee. (ECF No. 29 at 5, 7-8.)
`
`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.”).
`
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`1. Party Witnesses
`
`
`Google asserts that “Google employees most knowledgeable
`
`about the design, development and operation of its advertising
`and its tablet computer products . . . are located in the
`Northern District of California.” (ECF No. 22-1 at 4.) In its
`Reply, Google specifically lists two employees, Oren Zamir and
`Wei-Hsin Lee, as two individuals who are most knowledgeable
`about the design, development, and operation of the accused
`products and services. (ECF No. 37 at 7; ECF No. 37-1 ¶ 3.)
`Google further asserts that it “believes that additional
`material witnesses are also located in the Northern District of
`California but is unable to identify those witnesses because
`B.E.’s infringement contentions lack specificity as to the
`functionality of the accused products and services that
`allegedly infringe.” (ECF No. 37 at 7.)
`Google does not provide any evidence showing that any
`employees will be unwilling to testify in this district if asked
`to do so or how such employees will be “severely inconvenienced”
`if the case proceeds in this district. See Esperson, 2010 WL
`4362794, at *8. Moreover, 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
`
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`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 Google’s
`employees will be able to attend absent any evidence to the
`contrary.
`Therefore, regarding Google employees, Google cannot
`satisfy its burden. Google argues that due to the distance
`between Memphis and the Northern District of California,
`approximately 1800 miles, travel to Memphis “would impose a
`significant inconvenience for Google’s witnesses.” (ECF No. 22-
`1 at 9-10.) Yet, the same is true for B.E.’s witnesses, which
`B.E. asserts do not reside in the Northern District of
`California. (ECF No. 29 at 7.) 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)).
`Google further argues that because it intends to call “at
`least a dozen witnesses, including material witnesses, located
`in the Northern District of California,” and because B.E. only
`identified one witness, Hoyle, this factor weighs in favor of
`
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`transfer. (ECF No. 37 at 5.) With respect to the material
`witnesses, Google does specifically list two employees who have
`particular knowledge about the “design, development and
`operation of the accused products and services.” (ECF No. 37 at
`7; ECF No. 37-1 ¶ 3.) Although this assertion is imprecise as
`to the materiality of the testimony of the named individuals, it
`is not asserted that their testimony will not be relevant and
`material in this case. Google’s general statement, however,
`that it believes other material witnesses are located in
`California 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. Google cannot rely on such “bare
`allegations” to satisfy its burden. Esperson, 2010 WL 4362794,
`at *8. Google, therefore, has only identified two material
`witnesses on whom it intends to rely for purposes of transfer
`under § 1404(a).
`While B.E. did not specifically identify any witnesses
`beyond Hoyle, B.E. does not have the burden to do so. Despite
`B.E. not identifying any individuals beyond Hoyle, Google’s
`identification of two material witnesses who are Google
`employees does not satisfy its burden on this factor. A simple
`
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`numerical advantage is insufficient on the issues raised by a
`motion to transfer.
`Moreover, B.E. argues that “[i]t is likely that Google’s
`California-based employees will be deposed in California where
`B.E.’s lead counsel is based.” (ECF No. 29 at 10.) 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). Google
`asserts that it intends to rely on at least ten non-party
`witnesses who have knowledge about prior art related to the
`patents in suit. (ECF No. 22-1 at 5; ECF No. 37 at 5.) Google
`states that it intends to subpoena “at least the inventors
`and/or assignees of the patents for documents, and seek their
`testimony, as part of its invalidity defense.” (ECF No. 22-1 at
`
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`6.) Google further contends that these witnesses “are all
`located in the Northern District of California or on the West
`Coast.” (ECF No. 22-1 at 9-10.) To support its contention,
`Google listed the ten witnesses and their last-known addresses.
`(ECF No.22-1 at 5-6.) Google further claims that it has
`confirmed that at least six of the witnesses reside in the
`Northern District of California and “that all but one of the
`prior art patents have either an inventor or assignee who
`resides in the District.” (ECF No. 37 at 8.)
`Google argues that to satisfy its invalidity defense,
`Google will need to subpoena these witnesses for documents and
`depositions. (ECF No. 22-1 at 10.) Additionally, Google argues
`that some of the non-party witnesses “may become key witnesses
`for Google’s defense at trial.” (Id.) Google 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
`witnesses to testify at trial in the Northern District of
`California. (Id.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Google has not established that the “third party testimony will
`be material or important.” (ECF No. 29 at 10.) B.E. argues
`that Google has not stated the “relevance, materiality, and
`importance” of the non-party witnesses’ testimony. (Id. at 11-
`
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`12.) B.E. further argues that prior-art testimony is “almost
`certain to be severely limited at the time of trial” and,
`therefore, such testimony does not weigh in favor of transfer.
`(Id. at 10-11.)
`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
`Northern District of California would be able to compel the
`prior-art witnesses to testify at trial. See Fed. R. Civ. P.
`45(b)(2). In contrast, the prior-art witnesses would not be
`subject to the subpoena power in this district, 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.
`Google, however, has not disclosed the particulars of the
`testimony of the potential non-party witnesses, nor why
`depositions of non-party witnesses would be inadequate and live
`
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`testimony from non-party witnesses required. To the extent the
`non-party witnesses’ testimony may be presented by deposition,
`witness inconvenience would not be an issue. Google merely
`states that some of the prior art witnesses “may become key
`witnesses for Google’s defense at trial.” (ECF No. 22-1 at 10.)
`This general statement is not sufficient to allow the Court to
`determine whether live testimony of Google’s non-party witnesses
`is necessary. Further, Google does not state whether it is
`aware that any of the non-party witnesses would be unwilling to
`testify in this district if asked to do so. As a result, this
`factor does not weigh in favor of transfer.
`B. Convenience of the Parties
`Google argues that the Northern District of California is
`
`“clearly a more convenient venue for this litigation.” (See ECF
`No. 22-1 at 1.) While Google 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
`
`
`
`Google argues that “the vast majority of potentially
`relevant documents related to the research, design, development
`and sales of any of the potentially implicated instrumentalities
`and products is located in the Northern District of California.”
`
`
`
`17
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 45 Filed 05/24/13 Page 18 of 26 PageID 541
`
`(ECF No. 22-1 at 8.) Google contends that the volume of these
`“potentially relevant documents . . . far exceeds the volume of
`documents in Tennessee.” (ECF No. 37 at 4.)
`
`B.E. argues that, because its CEO resides in the Western
`District of Tennessee, its corporate documents and records,
`“including documents demonstrating the conception and reduction
`to practice of [the patents-in-suit],” are located in the
`Western District. (ECF No. 29 at 5, 7.) B.E. notes that while
`Google’s sources of proof are located in the Northern District
`of California, B.E.’s own sources of proof are located in
`Tennessee and have been maintained there for years. (Id. at
`12.) B.E. also contends that “the location of relevant
`documentary evidence is increasingly less important in deciding
`motions to transfer,” and that because documents can be
`exchanged electronically – and because Google certainly has
`familiarity with electronic document transfer – the weight given
`this factor should be minimal. B.E. finally argues that this
`factor does not weigh in favor of transfer because “it can be
`expected that Google will eventually produce its documents to
`B.E.’s lead counsel in California, not to B.E. in Tennessee.”
`(Id. at 13.)
`
`As an initial matter, the Court disagrees with B.E.’s
`contention that advances in electronic document transfer reduce
`the importance of the location-of-sources-of-proof factor. This
`
`
`
`18
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 45 Filed 05/24/13 Page 19 of 26 PageID 542
`
`notion has been expressly rejected by the Federal Circuit. See,
`e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224
`(Fed. Cir. 2011) (reversing a district court that did not
`consider the factor, stating, “While advances in technology may
`alter the weight given to these factors, it is improper to
`ignore them entirely”); In re Genentech, Inc., 566 F.3d 1338,
`1345-46 (Fed. Cir. 2009) (finding clear error where a district
`court “minimized the inconvenience of requiring the petitioners
`to transport their documents by noting that ‘[t]he notion that
`the physical location of some relevant documents should play a
`substantial role in the venue analysis is somewhat antiquated in
`the era of electronic storage and transmission’” (quoting
`Sanofi-Aentis Deutschland GmbH v. Genentech, Inc., 607 F. Supp.
`2d 769, 777 (E.D. Tex. 2009))).
`
`The Court agrees that it is likely that the sheer volume of
`documents Google has in its possession outnumbers the patent-
`related documents in B.E.’s possession, but the Court disagrees
`that this is enough to tip the balance in favor of transfer.
`The Court finds that both parties maintain documents in their
`respective districts; that both sets of documents will be
`integral to the proceedings; and that Google will be expected to
`serve its documents on B.E.’s counsel in Northern California,
`not in the Western District of Tennessee (see ECF No. 29 at 13).
`Google’s reliance on In re Nintendo and L&P Property Management
`
`
`
`19
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 45 Filed 05/24/13 Page 20 of 26 PageID 543
`
`Co. v. JTMD, LLC, No. 06-13311, 2007 WL 295027 (E.D. Mich. Jan.
`29, 2007), is misplaced. (See ECF No. 22-1 at 8.) In both of
`those cases the courts found there were no relevant documents in
`the transferor district, therefore transfer was appropriate.
`See In Re Nintendo, 589 F.3d at 1199-1200; L&P Prop. Mgmt. Co.,
`2007 295027, at *4. In the instant case, B.E. has shown that
`relevant documents are located in Tennessee. Taken together,
`the aforementioned facts indicate that as to the location of the
`sources of proof, the Northern District of California is a
`somewhat more convenient venue for the parties to the instant
`case. This factor, however, is not sufficient, by itself, to
`require transfer.
`2. Financial Hardships Attendant to Litigating in
`the Chosen Forum
`
`Google argues that a “vast majority of the relevant
`
`engineers and employees work and/or reside in the Northern
`District of California, and none are located in Tennessee.”
`(ECF No. 22-1 at 9.) As a result, Google contends that travel
`to Tennessee would “impose a significant inconvenience for
`Google’s witnesses,” and as the likely trial witnesses are a
`“core group of employees,” their absence “would adversely affect
`Google’s operations.” (ECF No. 22-1 at 9.)
`B.E. states that it “would face a financial burden by
`having to litigate in the Northern District of California.”
`
`
`
`20
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 45 Filed 05/24/13 Page 21 of 26 PageID 544
`
`(ECF No. 29 at 14.) B.E.’s CEO Hoyle states that “B.E. will
`incur expenses it will not incur if the case remains in
`Memphis.” (Hoyle Aff., ECF No. 29-1, ¶ 9.) B.E. also states
`that “[i]t is reasonable to require companies with the wealth
`and size of Google to litigate in jurisdictions in which they
`regularly conduct business.” (ECF No. 29 at 7.)
`The Court has considered “the relative ability of litigants
`to bear expenses in any particular forum” among the factors in a
`§ 1404(a) case. Ellipsis, Inc. v. Colorworks, Inc., 329 F.
`Supp. 2d 962, 970 (W.D. Tenn. 2004). In the instant case,
`B.E.’s CEO stated that the company will incur additional
`expenses, but it has not shown with any specificity how
`detrimental those expenses would be to the company. Further,
`while Hoyle stated that his personal financial status would be
`adversely affected by litigating in the Northern District of
`California, he did not state why or how his personal finances
`would impact B.E., the party to the instant case. (ECF No. 29-1
`¶ 9.) B.E. has shown that Google has the ability to bear
`expenses in this forum (see ECF No. 29-3; ECF No. 29-4), but the
`Court does not find this to be a dispositive factor in denying
`Google’s Motion. But see Siteworks Solutions, LLC v. Oracle
`Corp., No. 08-2130-A/P, 2008 WL 4415075, at *4 (W.D. Tenn. Sept.
`22, 2008) (finding the relative financial strengths of the
`parties did not weigh in favor of transferring the case, as the
`
`
`
`21
`
`

`
`Case 2:12-cv-02830-JPM-tmp Document 45 Filed 05/24/13 Page 22 of 26 PageID 545
`
`party opposed to transfer showed it “ha[d] no net worth, very
`little revenue, no gross profits, no assets, and [would have to]
`borrow from its owners in order to pay the litigation
`expenses”). The Court finds that the evidence presented is
`insufficient to make a showing that B.E. or Google will be
`adversely affected by litigating in either forum. The paramount
`consideration remains whether the Northern District of
`California is more convenient to the parties than B.E.’s chosen
`forum.
`With respect to conve

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