Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 1 of 22 PageID 190
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Case No. No. 2:12-cv-02831-JPM tmp
`
`JURY DEMAND
`
`REQUEST HEARING ON MOTION
`
`
`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO DEFENDANT’S MOTION TO
`TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`Daniel J. Weinberg (CA Bar No. 227159)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`
`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
`
`
`
`Dated: January 7, 2013
`
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 2 of 22 PageID 191
`
`
`
`
`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. Apple........................................................................................................... 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
`
`Apple Would Not Be Materially Burdened Bearing The Expense
`of Litigating in the Western District of Tennessee .................................. 14
`
`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 ................................................................................................................ 17
`
`V.
`
`
`
`- i -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 3 of 22 PageID 192
`
`
`
`
`
`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) .................................................................................13
`
`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) ..................................................................................14
`
`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 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
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`- ii -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 4 of 22 PageID 193
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................11
`
`Page
`
`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
`
`L & P Prop. Mgmt. Co. v. JTMD, LLC,
`2007 WL 295027 (E.D. Mich. Jan. 29, 2007)............................................................................5
`
`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-02831-JPM-tmp Document 30 Filed 01/07/13 Page 5 of 22 PageID 194
`
`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) .....................................................................14
`
`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, 17
`
`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-02831-JPM-tmp Document 30 Filed 01/07/13 Page 6 of 22 PageID 195
`
`
`I.
`
`INTRODUCTION.
`
`This case arises from the infringement by defendant Apple Inc. (“Apple”) 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., Apple has asked the Court to transfer this
`
`case from the inventor’s and the plaintiff company’s home District to Apple’s home, the
`
`Northern District of California. This case is not, however, like others in which plaintiffs had
`
`taken 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, Apple argues that transfer to the Northern District of California would
`
`be more convenient because its headquarters is located in Cupertino, California and the facilities
`
`relevant to this case can be found there. Transfer to California might be more convenient for
`
`Apple, 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 Apple can offer no
`
`more, its motion to transfer should be denied.
`
`
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 7 of 22 PageID 196
`
`
`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. Apple.
`
`B.E. filed its Complaint in this matter on September 22, 2012. D.E. 1. Apple filed its
`
`Answer on December 31, 2012. D.E. 26. 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 Apple. The defendants in these cases include several of the world’s most
`
`
`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
`
`- 2 -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 8 of 22 PageID 197
`
`
`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
`
`“district court should consider the private interests of the parties, including their convenience and
`
`- 3 -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 9 of 22 PageID 198
`
`
`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 Apple infringes there, just as it does in this District, and Apple is
`
`based in the Northern District of California. The relevant question presented by Apple’s motion
`
`is therefore whether Apple 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). Apple 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.
`
`Without any mention of the relevant facts, Apple argues that B.E.’s choice of venue
`
`should be disregarded because its “contacts to this district are tenuous and unrelated to the
`
`factual substance of this action.” D.E. 22-1 at 14. That is not true. Unlike the cases on which
`
`Apple relies where the plaintiffs’ contacts with the chosen forum were recent or manufactured
`
`- 4 -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 10 of 22 PageID 199
`
`
`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 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.”); L & P Prop. Mgmt. Co. v.
`
`JTMD, LLC, 2007 WL 295027, *3 (E.D. Mich. Jan. 29, 2007) (“Plaintiffs do not plan to call any
`
`of its Michigan employees as witnesses in this matter; and [] Plaintiffs do not anticipate that any
`
`of its documents in Michigan would be used in the litigation.”).
`
`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 Apple makes no attempt to
`
`overcome the significance of his presence in the District. B.E.’s contacts with the forum were
`
`not manufactured for litigation and as a result, its choice of forum is entitled to “substantial
`
`weight.”
`
`Apple states that B.E.’s counsel “told reporters that Mr. Hoyle is the founder of B.E. and
`
`moved to Tennessee in 2006,” D.E. 22-1 at 3, but did not bother to address Mr. Hoyle’s
`
`longstanding presence in this District. Instead, Apple merely points to the existence of a
`
`- 5 -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 11 of 22 PageID 200
`
`
`December 2011 patent application that states Mr. Hoyle is a resident of New Orleans. Apple
`
`does not deny that Mr. Hoyle moved to Tennessee in 2006. Nor does it offer any other
`
`information about Mr. Hoyle’s personal situation or the circumstances that led him briefly to
`
`seek to establish residence in New Orleans. Hoyle Decl. ¶ 4. Mr. Hoyle is a resident of this
`
`District and his presence and residence here have nothing at all do with a desire to manufacture
`
`venue. Apple says nothing suggesting the contrary.
`
`Apple further seeks to undercut B.E.’s obvious connection to the District by pointing out
`
`that B.E. “registered to do business in this State one day before filing the first of nineteen
`
`complaints, apparently for the sole purpose of litigation.” D.E. 22-1 at 14. 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. Apple’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 Apple’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
`
`- 6 -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 12 of 22 PageID 201
`
`
`expenses in any particular forum, and other practical problems affecting the case.” Hunter Fan,
`
`2006 WL 1627746, at *2.
`
`1.
`
`Convenience of the Parties Weighs Against Transfer.
`
`The Western District of Tennessee is more convenient for B.E. than the Northern District
`
`of California. As previously explained, B.E. and its CEO, the inventor of the patents-in-suit,
`
`reside within the District. B.E.’s corporate documents and records are here as well. Outside of
`
`witness convenience, Apple 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 Apple to litigate in jurisdictions in which they regularly conduct business.2 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”). Apple is a large and wealthy company. It reported
`
`for the year ending September 29, 2012 that it generated $156,508,000,000 in net sales, with net
`
`income of $41,733,000,000. Declaration of Daniel Weinberg (“Weinberg Decl.”) Ex. A. Apple
`
`further reported $176,064,000,000 in total current assets, including $10,746,000,000 in cash and
`
`cash equivalents. As of January 7, 2013, Apple had a market capitalization in excess of
`
`$492,000,000,000. It is doubtful that Apple will suffer hardship or inconvenience by litigating in
`
`the Western District of Tennessee.
`
`2.
`
`Convenience of the Witnesses Weighs Against Transfer.
`
`Apple argues that the Northern District of California would be a more convenient venue
`
`for its own witnesses because, “[s]imply put, it is more cost-efficient and more convenient for
`
`
`2 Apple sells products on a massive scale in Tennessee and admits to operating “retail stores” in
`the State. D.E. 22-1 at 3.
`
`- 7 -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 13 of 22 PageID 202
`
`
`witnesses to testify at home.” D.E. 22-1 at 7. By the same logic, transfer to the Northern District
`
`of California would be expensive and inconvenient to B.E.’s witnesses, none of whom is located
`
`in the Northern District of California. Moreover, Apple 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.”). Apple provides
`
`none of that.
`
`a. Party Witnesses.
`
`Apple claims that the “engineers, designers, and software developers” 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. Apple 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. Apple merely states that “[t]he foreseeable Apple witnesses with knowledge of the
`
`- 8 -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 14 of 22 PageID 203
`
`
`research, design, and development of the accused products reside or work in or near Cupertino.”
`
`Declaration of Mark Buckley (“Buckley Decl.”) ¶ 4. “[A] party that ‘fails to identify the
`
`witnesses’ and ‘what their testimony would be’ cannot establish that a particular forum is
`
`inconvenient.” Esperson v. Trugreen Ltd. P’ship, 2010 WL 4362794, *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)). Apple’s vague representations
`
`concerning witness inconvenience do not meaningfully aid in the evaluation of this factor.
`
`Instead of providing information about the identity of likely witnesses and the subjects on
`
`which they will testify, Apple merely offers that there will likely be a larger number of witnesses
`
`in California than Tennessee. See D.E. 22-1 at 8 (“In contrast to the large number of potential
`
`witnesses located in the Northern District of California, there is one only potential witness—the
`
`named inventor and founder of B.E.—who even claims to reside in Tennessee and, based on the
`
`statements attributed to B.E.’s lead counsel, he is an interested party.”). 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)).
`
`Apple also does not provide admissible evidence of how its global operations would be
`
`adversely affected by the case staying in Tennessee. Apple merely argues that the “engineers,
`
`designers, and software developers likely to be called at trial are integral contributors to Apple’s
`
`operation, and the disruption caused by taking them away from their jobs to testify in Tennessee
`
`is not offset” by the corresponding inconvenience to B.E. D.E. 22-1 at 8. That’s it. Apple fails
`
`to provide the names, position titles, or responsibilities of the “integral contributors” or how their
`
`absence from California would disrupt Apple’s global business operations.
`
`- 9 -
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 30 Filed 01/07/13 Page 15 of 22 PageID 204
`
`
`Finally, Apple 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 Apple’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.
`
`While admitting that “the parties have not identified relevant third-party witnesses,” D.E.
`
`22-1 at 8, Apple next argues that the case should be transferred because potential prior art
`
`inventors identified through the collective efforts of Apple and its “co-defendants” are located
`
`outside the Western District of Tennessee, and some “were based in the Northern District of
`
`California during prosecution of these patents.” D.E. 22-1 at 9. 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”).
`
`Apple lists eleven United States patents and what appears to be an abandoned patent
`
`application that it contends may be prior art.3 D.E. 22-1 at 9, n.4. Prior art inventor testimony
`
`may not be used to vary the words of the alleged prior art and admissible prior art inventor
`
`3 While Apple 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. 26, despite the
`requirements that answers and affirmative defenses b