Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 1 of 19 PageID 103
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`B.E. TECHNOLOGY, L.L.C.,
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`
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`
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`Defendant.
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`
`
`DEFENDANT’S MEMORANDUM IN SUPPORT OF ITS MOTION
`TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`
`
`
`
`
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`
`
`
`
`
`
`
`
`v.
`
`Plaintiff,
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`
` Civil Action No. 2:12-cv-02831 – JPM–tmp
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`
`
`
`APPLE INC.,
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`

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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 2 of 19 PageID 104
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`TABLE OF CONTENTS
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`Page
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`I. 
`II. 
`III. 
`IV. 
`
`V. 
`
`INTRODUCTION ............................................................................................................. 1 
`STATEMENT OF FACTS ................................................................................................ 2 
`ARGUMENT..................................................................................................................... 4 
`THIS ACTION COULD HAVE BEEN BROUGHT IN THE NORTHERN
`DISTRICT OF CALIFORNIA .......................................................................................... 6 
`THE PRIVATE INTEREST FACTORS FAVOR TRANSFER TO THE
`NORTHERN DISTRICT OF CALIFORNIA ................................................................... 6 
`The majority of documents relevant to this action are located in the
`A. 
`Northern District of California................................................................... 6 
`Cost of attendance for the parties and the convenience of willing
`witnesses favor transfer.............................................................................. 7 
`Availability of compulsory process in California favors transfer.............. 8 
`No practical problems preclude transfer to the Northern District of
`California and no factors favor keeping this case or the related
`cases in this District. .................................................................................. 9 
`THE PUBLIC INTEREST FACTORS FAVOR TRANSFER TO THE
`NORTHERN DISTRICT OF CALIFORNIA ................................................................. 12 
`VII.  B.E.’S CHOICE OF VENUE IS NOT ENTITLED TO DEFERENCE.......................... 13 
`VIII.  CONCLUSION................................................................................................................ 14 
`
`B. 
`
`C. 
`D. 
`
`VI. 
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 3 of 19 PageID 105
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`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cherokee Export Co. v. Chrysler Int’l. Corp.,
` No. 96-1745 (6th Cir. 1998) ......................................................................................................5
`
`Cont’l First Fed., Inc. v. Watson Quality Ford, Inc.,
`No. 3:08–0954 (M.D. Tenn. 2010) ............................................................................................5
`
`Hertz Corp. v. Friend,
`130 S. Ct. 1181, 1195 (2010).....................................................................................................6
`
`In re Acer America Corp.,
`
`626 F.3d 1252 ..........................................................................................................................11
`
`In re EMC Corporation,
`677 F.3d 1351 (Fed. Cir. 2012)................................................................................................10
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)....................................................................................5, 7, 8, 12
`
`In re Hoffman-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................12
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2010)................................................................................................13
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................7
`
`In re Volkswagen of America, Inc.,
`545 F.3d 304 (Fed. Cir. 2008)....................................................................................................4
`
`In re Zimmer Holdings, Inc.,
`609 F.3d 1378 (Fed. Cir. 2010)........................................................................................ passim
`
`L&P Prop. Mgmt. Co. v. JTMD, LLC,
`No. 06-13311 (E.D. Mich. 2007)..................................................................................... passim
`
`Moses v. Bus. Card Exp., Inc.,
`929 F.2d 1131 (6th Cir. 1991) ................................................................................................5
`
`Quality Gold, Inc. v. West,
`No. 1:11-CV-891 (S.D. Ohio 2012)...........................................................................................5
`
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 4 of 19 PageID 106
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`Returns Distribution Specialists, LLC v. Playtex Prods., Inc.,
`No. 02-1195-T (W.D. Tenn. 2003)....................................................................................2, 5, 8
`
`WiAV Networks, LLC v. 3Com Corp.,
` No. C 10-03448 WHA (N.D. Cal. 2010) )...............................................................................10
`
`STATUTES
`
`28 U.S.C. §§ 1391(b) .......................................................................................................................6
`
`28 U.S.C. § 1391(c) .........................................................................................................................6
`
`28 U.S.C. § 1400(b) .........................................................................................................................6
`
`28 U.S.C. § 1404(a) ............................................................................................................... passim
`
`OTHER AUTHORITIES
`
`Federal Rule of Civil Procedure 42 ...............................................................................................10
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 5 of 19 PageID 107
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`
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`I.
`
`INTRODUCTION
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`Defendant Apple Inc. (“Apple”) respectfully moves to transfer this action to the Northern
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`District of California under 28 U.S.C. § 1404(a) for the convenience of the parties and witnesses
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`and in the interests of justice. In September of 2012, Plaintiff B.E Technology, Inc. (“B.E.”)
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`filed nineteen separate complaints in this District, accusing a large number of independent
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`companies—the vast majority of which are located on the West Coast and primarily in northern
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`California—of separately and independently infringing one or both of two B.E.-owned patents
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`relating to targeted internet advertising. The lawsuits accuse a broad range of the defendants’
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`respective unrelated products and services, including desktop computers, laptops, mobile phones
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`and websites. The patents were prosecuted by non-Tennessee law firms and assigned to a non-
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`Tennessee plaintiff with no known business operations in the State of Tennessee and which filed
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`for authority to do business in this State just one day before filing the first of its nineteen
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`lawsuits.
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`Not a single named defendant is based in Tennessee. Apple’s headquarters, including its
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`design and development facilities relevant to this litigation, are located in the Northern District
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`of California. The same is true of a large majority of the defendants in the other 18 cases, and
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`the overwhelming majority of defendants are located on the West Coast. Upon information and
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`belief, many and possibly all of the defendants in these 18 cases will be seeking transfer to the
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`Northern District of California either as their jurisdiction of choice or in the alternative. Not a
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`single relevant document is known to be located in this District. Nor are there any known third-
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`party witnesses located here, with the possible exception of the named inventor on the two
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`patents, and there is conflicting evidence regarding his residency.
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`On these facts, the Northern District of California is plainly the more convenient forum in
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`which to litigate B.E.’s claims against Apple and, to the extent the Court considers the other
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 6 of 19 PageID 108
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`
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`cases in the analysis, the claims against all the other defendants.1 In this Circuit, when the
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`transferee venue is clearly more convenient, a transfer should be ordered notwithstanding
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`plaintiff’s choice of venue. Returns Distribution Specialists, LLC v. Playtex Prods., Inc., No. 02-
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`1195-T, 2003 WL 21244142, at *6 (W.D. Tenn. 2003) (ordering transfer where “the
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`overwhelming inconvenience to the witnesses outweighs the Plaintiff’s interest in choosing their
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`own forum.”). That is particularly true where, as here, plaintiff has little or no actual business
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`connection to the chosen district and has established a nominal presence only for purposes of
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`manipulating venue. See In re Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010).
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`Accordingly, pursuant to 28 U.S.C. § 1404(a), this case should be transferred from this
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`venue to the Northern District of California.
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`II.
`
`STATEMENT OF FACTS
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`B.E. Technology sued Apple on September 22, 2012. (Complaint, Dkt. 1). B.E. has no
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`known business operations in the State of Tennessee—other than suing non-Tennessee
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`companies in this District—and filed for authority to do business in this State just sixteen days
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`before suing Apple and only one day before filing the first of its nineteen cases. (Ex. A (B.E.’s
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`Tennessee business registration, September 6, 2012)). In fact, as recently as June 2012, the
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`United States Patent & Trademark Office (“USPTO”) identified B.E.’s location as Saginaw,
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`Michigan. (Ex. B, U.S. Pat. Publ. No. 20120158512). B.E.’s filing with the Tennessee Secretary
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`of State lists its principal place of business in what appears to be a private house in Cordova,
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`Tennessee. (Ex. A). An attorney for B.E. has acknowledged that the company’s Tennessee
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`1 As discussed below, Apple believes that the transfer analysis under Section 1404(a) must stand on its own merits
`with respect to each defendant and that the pendency of separate cases against other defendants should not be used
`to defeat an otherwise meritorious motion to transfer. To the extent the Court does consider this motion in the
`context of all the pending B.E. cases, the West Coast location of the vast majority of the other defendants, a majority
`of which are located or have major business operations in the Northern District of California, plainly favors transfer.
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 7 of 19 PageID 109
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`
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`operations consist of enforcing these patents. (See Ex. C2).
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`B.E.’s Complaint against Apple alleges infringement of two patents, U.S. Patent Nos.
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`6,628,314 (the “‘314 patent”) and 6,771,290 (the “’290 patent”) (collectively the “patents-in-
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`suit”). Both patents-in-suit identify Martin David Hoyle of Louisiana as the sole inventor. (Dkt.
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`1, Ex. A & B). Although B.E.’s California-based lead attorney, Robert Freitas, appears to have
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`told reporters that Mr. Hoyle is the founder of B.E. and moved to Tennessee in 2006 (Ex. C), a
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`patent application filed in December 2011 and published in June 2012 lists Mr. Hoyle’s
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`residence as New Orleans, LA. (Ex. B). Mr. Freitas and his firm are based out of Redwood
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`City, California, which is in the Northern District of California. (See http://www.ftklaw.com).
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`Both patents-in-suit were prosecuted by the law firm of Reising, Ethington, Barnes, Kisselle,
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`P.C. (Dkt. 1, Ex. A & B). The Reising firm has offices in Michigan and Texas, and does not
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`appear to have any connection to Tennessee. (See http://www.reising.com/contact.php).
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`Defendant Apple is a California corporation with its principal place of business in
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`Cupertino, which is located in the Northern District of California. (Ex. D (Decl. at ¶ 3)).
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`Apple’s management and primary research and development facilities are located in the Northern
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`District of California. (Id. at ¶ 3). The Apple employees most knowledgeable about design,
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`development and operation of its accused products are located in the Northern District of
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`California. (Id. at ¶ 4). While Apple has retail stores in Tennessee, it has no relevant business
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`operations in this State. (Id. at ¶ 5). To Apple’s knowledge, no Apple employees involved in the
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`development or management of the accused products work in the Western District of Tennessee.
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`(Id. at ¶ 5). B.E.’s Complaint targets a large portion of Apple’s product line, including the iPad,
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`iPod touch, iPhone, Macbook Pro, Macbook Air, Mac mini, iMac, and Apple TV, all of which
`
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`2 “Memphis area firm sues tech giants for patent infringement,” Ted Evanoff, The Commercial Appeal, November
`20, 2012.
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 8 of 19 PageID 110
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`are designed and developed in or near Apple’s Cupertino headquarters. Apple’s corporate
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`operations are also centered in northern California and, therefore, relevant marketing, sales and
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`financial documents related to Apple’s accused products are located in the Northern District of
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`California. No such evidence is known to exist in the Western District of Tennessee.
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`B.E. filed this case as part of a broad litigation campaign against a number of companies,
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`including Google, Motorola Mobility Holdings LLC (“Motorola”), Amazon Digital Services,
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`Inc., Facebook, Inc., LinkedIn Corp., Groupon, Inc., Pandora Media, Inc., Twitter, Inc., Barnes
`
`& Noble, Samsung Telecommunications America, LLC, Samsung Electronics America, Inc.,
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`Sony Computer Entertainment, Sony Mobile Communications, Sony Electronics, Inc., Microsoft
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`Corp., Apple, Inc., Spark Networks, Inc., People Media, Inc., and Match.com L.L.C.
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`(collectively, the “Defendants”).3 Upon information and belief, the defendants in a total of
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`fourteen of the nineteen B.E. cases are either based in California or have substantial operations
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`there, with a large majority of those based in the Northern District of California. To Apple’s
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`knowledge, none of the defendants has any relevant business operations in this District.
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`III.
`
`ARGUMENT
`
`Section 1404(a) states that “[f]or 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). “[T]he underlying premise of § 1404(a) is that
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`courts should prevent plaintiffs from abusing their privilege [of choosing venue] under § 1391 by
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`subjecting defendants to venues that are inconvenient under the terms of § 1404(a).” In re
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`Volkswagen of America, Inc., 545 F.3d 304, 313 (Fed. Cir. 2008). While plaintiffs have the
`
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`3 Case Nos. 12-cv-02830, 12-cv-02866, 12-cv-02767, 12-cv-02769, 12-cv-02772, 12-cv-02781,
`12-cv-02782, 12-cv-02783, 2:12-cv-02823, 12-cv-02824, 12-cv-02825, 2:12-cv-02826, 12-cv-
`02827, 12-cv-02828, 12-cv-02829, 12-cv-02831, 12-cv-02832, 12-cv-02833, and 12-cv-02834,
`respectively (collectively, the “B.E. Litigations”).
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 9 of 19 PageID 111
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`
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`privilege of filing their claims in any judicial division appropriate under the general venue
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`statute, “§ 1404(a) tempers the effects of the exercise of this privilege” by allowing courts to
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`transfer civil actions to a more convenient venue. Id.
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`In the Sixth Circuit, the “threshold” determination for the district court under Section
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`1404(a) is whether the claims could have been brought in the proposed transferee district.
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`Returns Distribution Specialists, 2003 WL 21244142, at *6. The district court must then
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`consider the convenience of the parties and witnesses in both forums, balancing several private
`
`and public interest factors. Moses v. Bus. Card Exp., Inc., 929 F.2d 1131, 1138 (6th Cir. 1991);
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`Cont’l First Fed., Inc. v. Watson Quality Ford, Inc., No. 3:08–0954, 2010 WL 1836808 (M.D.
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`Tenn. 2010). The private interest factors include “(1) the relative ease of access to sources of
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`proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the
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`cost of attendance for willing witnesses; and (4) all other practical problems that make trial [of a
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`case] easy, expeditious and inexpensive.” Quality Gold, Inc. v. West, No. 1:11-CV-891, 2012
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`WL 1883819, at *2 (S.D. Ohio, 2012) (citing In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed.
`
`Cir. 2009); see also Cherokee Export Co. v. Chrysler Int’l. Corp., No. 96-1745, 142 F.3d 432,
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`1998 WL 57279, at *3 (6th Cir. 1998). The public interest factors include 1) the administrative
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`difficulties flowing from court congestion; 2) the localized interest in having localized interests
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`decided at home; 3) the familiarity of the forum with the law that will govern the case; and 4) the
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`avoidance of unnecessary problems of conflicts of laws or in the application of foreign law.” Id.
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`While a plaintiff’s choice of venue is generally entitled to “some deference, it is not
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`sacrosanct, and will not defeat a well-founded motion for change of venue.” L&P Prop. Mgmt.
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`Co. v. JTMD, LLC, No. 06-13311, 2007 WL 295027, at *3 (E.D. Mich. 2007) (internal citation
`
`omitted); Returns Distribution Specialists, 2003 WL 21244142, at *9 (ordering transfer where
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 10 of 19 PageID 112
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`“the overwhelming inconvenience to the witnesses outweighs the Plaintiff’s interest in choosing
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`their own forum.”). Furthermore, if a party’s presence in a venue “appears to be recent,
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`ephemeral, and an artifact of litigation” it is subject to close scrutiny “to ensure that the purposes
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`of jurisdictional and venue laws are not frustrated by a party’s attempts at manipulation.”
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`Zimmer Holdings, 609 F.3d at 1381 (citing Hertz Corp. v. Friend, 130 S. Ct. 1181, 1195 (2010)).
`
`IV.
`
`THIS ACTION COULD HAVE BEEN BROUGHT IN THE NORTHERN
`DISTRICT OF CALIFORNIA
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`28 U.S.C. § 1400(b) provides that “any civil action for patent infringement may be
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`brought in the judicial district where the defendant resides, or where the defendant has
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`committed acts of infringement and has a regular and established place of business.” 28 U.S.C. §
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`1391(c) further provides that for purposes of venue, a defendant that is a corporation shall be
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`deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time
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`the action is commenced. Apple’s alleged acts of infringement are manufacturing, using, selling
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`or offering for sale various computer products. (Dkt. 1 at ¶¶ 12-17.). Apple resides in California
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`and sells its computers and other products in California. (Ex. D at ¶ 3). Therefore, this case
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`could have been brought in the Northern District of California. 28 U.S.C. §§ 1391(b); 1400(b).
`
`
`V.
`
`THE PRIVATE INTEREST FACTORS FAVOR TRANSFER TO THE
`NORTHERN DISTRICT OF CALIFORNIA
`
`A.
`
`The majority of documents relevant to this action are located in the Northern
`District of California.
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`The two private interest factors associated with the availability of the parties’ evidence,
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`i.e. the location of documents and the convenience of willing witnesses, tilt strongly in favor of
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`transfer to the Northern District of California.
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`“In patent infringement cases, the bulk of the relevant evidence usually comes from the
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`accused infringer. Consequently, the place where the defendant’s documents are kept weighs in
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 11 of 19 PageID 113
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`favor of transfer to that location.” In re Nintendo Co., Ltd., 589 F.3d 1194, 1199 (Fed. Cir.
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`2009) (citing In re Genentech, 566 F.3d at 1345). Here, virtually all of the relevant documents
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`related to research, design, development and sales of Apple products are located in the Northern
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`District of California. (Ex. D at ¶ 4). No relevant documents or other evidence are uniquely
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`located in the Western District of Tennessee. Thus, the vast majority of physical and
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`documentary evidence relevant to the issues of Apple’s alleged infringement, invalidity, and
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`damages is located in California, and none is known to be located in Tennessee. In contrast,
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`Plaintiff B.E. does not appear to have any business operations in Tennessee other than asserting
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`these patents and, therefore, it is not likely to have a large number of documents relevant to this
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`litigation.
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`This factor weighs heavily in favor of a transfer to the Northern District of California.
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`L&P Prop. Mgmt. Co., No. 06-13311, 2007 WL 295027, at *5 (finding this factor weighed in
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`favor of transfer where “[a]ll of Defendants’ documents are located at their headquarters in [the
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`transferee district]… [and] Plaintiffs have not identified any sources of evidence … that exist in
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`[the transferring district]”); Just Intellectuals, 2010 WL 5129014, at *4 (same).
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`B.
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`Cost of attendance for the parties and the convenience of willing witnesses
`favor transfer.
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`The Apple employees with knowledge relevant to this litigation are located in northern
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`California, over 1,700 miles from Memphis. “Additional distance [from home] means additional
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`travel time; additional travel time increases the probability for meal and lodging expenses; and
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`additional travel time with overnight stays increases the time which these fact witnesses must be
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`away from their regular employment.” Nintendo, 589 F.3d at 1199 (citing In re TS Tech, 551
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`F.3d at 1320). Simply put, it is more cost-efficient and more convenient for witnesses to testify
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`at home. And, the fact that some witnesses may be located in other judicial districts does not
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 12 of 19 PageID 114
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`change the analysis, as the destination venue need not be more convenient for all witnesses.
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`Instead, this factor favors transfer when, as in this case, a substantial number of material
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`witnesses reside in the transferee venue. See In re Genentech, 566 F.3d at 1345.
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`In contrast to the large number of potential witnesses located in the Northern District of
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`California and the likely disruption to Apple’s business, there is only one potential witness – the
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`named inventor and founder of B.E.– who even claims to reside in Tennessee and, based on the
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`statements attributed to B.E.’s lead counsel, he is an interested party. (Exhibit C.) Because an
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`overwhelming majority of the known likely witnesses live over 1,700 miles from Memphis,
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`Tennessee, this factor strongly favors transfer. See, e.g., L&P Prop. Mgmt. Co., No. 06-13311,
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`2007 WL 295027, at * 5 (finding this factor weighed heavily in favor of transfer where all of
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`defendants’ witnesses were located outside the transferring district and plaintiff had not
`
`identified any witnesses who resided in the transferring district). This factor further weighs in
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`favor of transfer where, as here, the witnesses likely to be called at trial are important to the
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`operation of defendant’s business. Returns Distribution Specialists, 2003 WL 21244142, at *7.
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`Apple’s engineers, designers, and software developers likely to be called at trial are integral
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`contributors to Apple’s operations, and the disruption caused by taking them away from their
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`jobs to testify in Tennessee is not offset by any corresponding inconvenience in asking B.E.’s
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`founder, who appears to be an interested party, to travel to California, especially given that
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`California is the home of the majority of his targeted defendants.
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`C.
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`Availability of compulsory process in California favors transfer.
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`With respect to compulsory process, this case is in the early stages and the parties have
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`not identified relevant third-party witnesses. However, given that the Federal Circuit recognizes
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`that, in a patent case the bulk of the relevant evidence comes from the infringer, it also stands to
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`reason that third-parties with relevant information related to infringement and damages are more
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 13 of 19 PageID 115
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`likely to be located near the alleged infringer. To the extent any of Apple’s accused products or
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`the content of its applications have been created, maintained, or serviced using contractors,
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`vendors, or other third-parties, then those parties are more likely to be based in California and
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`subject to that Court’s jurisdiction.
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`Further, Apple and its co-defendants are in the process of identifying likely prior art.
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`Thus far, the parties have identified at least twelve prior art patents with clear ties to companies
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`or inventors in the Northern District of California.4 These patents name nine different inventors
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`and seven different companies that were based in the Northern District of California during
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`prosecution of these patents. In order to prepare its invalidity defenses, the parties will likely
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`need to gather documents and information through deposition from many of these individuals
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`and companies. To date, no potential third party witnesses residing in the Western District of
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`Tennessee have been identified. The only possible exception is the inventor, but he is an
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`interested party who clearly does not require a subpoena to secure his participation.
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`Accordingly, this factor weighs in favor of transfer. See, e.g., Just Intellectuals, 2010 WL
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`5129014, at *4 (finding this factor weighed in favor of transfer where “non-party witnesses
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`likely reside… outside of the [transferring district.]”).
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`D.
`
`No practical problems preclude transfer to the Northern District of
`California and no factors favor keeping this case or the related cases in this
`District.
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`The only “practical problem” that B.E. might argue tilts against transfer is the pendency
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`of its other cases in this district and that all defendants may not move to transfer to the Northern
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`District of California. That is a “problem” of B.E.’s own making, to frustrate the defendants’
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`ability to transfer to more convenient forums. Under recent Federal Circuit precedents, it would
`
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`4 U.S. Patent Nos. 5,263,164, 5,696,965, 5,710,884, 5,717,923, 5,740,549, 5,794,210, 5,948,061, 6,128,663,
`6,151,643, 6,285,985, 6,285,987 and U.S. Patent Publication No. 2001/0011226.
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 14 of 19 PageID 116
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`be inappropriate to rely on the pendency of the other cases to deny Apple’s meritorious 1404(a)
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`transfer motion.
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`The Federal Circuit dealt with a similar situation in Zimmer Holdings. There, the court
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`held that the mere presence of other cases in the district asserting the same patent did not
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`outweigh other convenience factors favoring transfer. Zimmer Holdings, 609 F.3d at 1382. In so
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`ruling, the court noted that each case involved different accused products, resulting in
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`“significantly different discovery, evidence, proceedings, and trial” for the cases. Id. This is
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`especially true where, as here, there are no common defendants between the cases. Id.
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`In another recent case, the Federal Circuit cautioned strongly against lumping unrelated
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`defendants together simply to suit the plaintiff’s tactical preferences: “Each defendant has
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`simply been thrown into a mass pit with others to suit plaintiff’s convenience. In this
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`connection, the accused defendants—who will surely have competing interests and strategies—
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`are also entitled to present individualized assaults on questions of non-infringement, invalidity,
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`and claim construction.” In re EMC Corporation, 677 F.3d 1351, 1355 (Fed. Cir. 2012) (quoting
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`with approval WiAV Networks, LLC v. 3Com Corp., No. C 10-03448 WHA, 2010 WL 3895047,
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`at *2 (N.D. Cal. 2010)).
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`While EMC addressed the issue of joinder, denying transfer and consolidating cases for
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`most major pre-trial activities is functionally indistinguishable from improper joinder. And,
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`while the EMC opinion acknowledges that courts have discretion under Fed.R.Civ.P. 42 to
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`consolidate cases for pre-trial management, there is nothing in the opinion that indicates that
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`such discretion may extend to forcing a lengthy period of consolidation in an inconvenient
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`forum, particularly one with no connection to the parties and no particularized interest in the
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`dispute. Indeed, allowing a plaintiff to avoid transfer in such a manner would once again
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 15 of 19 PageID 117
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`elevate judicial efficiency and “plaintiff’s choice of forum” to determinative factors, even though
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`the Federal Circuit’s most recent precedents dictate that they may not trump the other factors
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`where those other factors all tilt in favor of transfer. That is particularly true when none of the
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`parties have substantive business operations in this transferor state and substantial numbers of
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`parties and witnesses are located in the transferee district. See In re Acer America Corp., 626
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`F.3d 1252 (Fed.Cir. 2012) (abuse of discretion to deny transfer where no party was
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`headquartered in this district, but several parties and witnesses including the inventors and
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`prosecuting attorneys, were located in the transferee district). Instead, where cases are pending
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`in an inconvenient forum to which the parties have no relevant ties, Apple respectfully suggests
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`that the proper course of action is to transfer each case to a more convenient forum and, if the
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`plaintiff or defendants see a value in consolidation, they may petition the Judicial Panel on
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`Multidistrict Litigation for an order transferring the actions for consolidated pre-trial proceedings
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`under 28 USC § 1407.
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`Despite ties to Tennessee that are at best tenuous, B.E. chose to file suit here against
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`nineteen different defendants, a majority of which are headquartered or have substantial
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`operations on the West Coast. To Apple’s knowledge, none of the defendants have relevant
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`business operations in the Western District of Tennessee. And, as was the case in Zimmer
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`Holdings, B.E. does not even have substantial operations in this District, having applied to do
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`business in Tennessee the day before filing its first litigation here. There is no overlap in the
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`accused products between unrelated defendants. Thus, any practical problems raised by the
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`number of pending cases in this District involving B.E. must be discounted and do not outweigh
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`the other convenience factors, all of which favor transfer. This case should proceed in the forum
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`Case 2:12-cv-02831-JPM-tmp Document 22-1 Filed 12/20/12 Page 16 of 19 PageID 118
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`that, on balance, is the most convenient for the parties in this case: the Northern District of
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`California.
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`VI.
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`THE PUBLIC INTEREST FACTORS FAVOR TRANSFER TO THE
`NORTHERN DISTRICT OF CALIFORNIA
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`The public interest factors also weigh in favor of transferring this case to the Northern
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`District of California. Of the factors set forth by the Sixth Circuit, only one is particularly
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`relevant in this case: the local interest in having localized interests decided at home.
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`California’s ties to this case overwhelm those of Tennessee. The Northern District of
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`California has significant connections to the events that gave rise to this and the related lawsuits,
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`as it is home to Apple’s development, design, marketing and sales activities related to all of the
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`accused products. See In re Genentech, 566 F.3d at 1347. There is no similar unique local
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`connection to the Western District of Tennessee. Apple does not have any design, development,
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`or manufacturing presence in Tennessee, and B.E. established its alleged “presence” in the State
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`immediately prior to this lawsuit, apparently for the sole purpose of suing in this District. See
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`infra, § VII. By contrast, the Northern District of California is the center of gravity of this case,
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`as it is home to Apple, all