throbber
Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 1 of 27 PageID 751
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`
`
`
`B.E. TECHNOLOGY, LLC,
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`APPLE INC.,
`
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`No.: 2:12-cv-02831-JPM-tmp
`
`
`
`
`ORDER DENYING MOTION TO TRANSFER VENUE
`
`
`Before the Court is Defendant Apple Inc.’s (“Defendant” or
`“Apple”) Motion to Transfer Venue Pursuant to 28 U.S.C.
`§ 1404(a), filed December 20, 2012. (ECF No. 22.) For the
`reasons that follow, the Motion is DENIED.
`I. BACKGROUND
`
`This case concerns Defendant Apple’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. 30 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 Apple infringed the ‘314 patent “by using
`a method of providing demographically targeted advertising that
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 2 of 27 PageID 752
`
`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 Apple 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 22, 2012.
`(ECF No. 1.) Apple filed its Motion to Transfer Venue on
`December 20, 2012 (ECF No. 22.), and filed its Answer to the
`Complaint and Counterclaim on December 31, 2012 (ECF No. 26).
`B.E. filed its Memorandum in Opposition to Defendant’s Motion to
`Transfer Venue on January 7, 2013. (ECF No. 30.) With leave of
`Court, Apple filed a Reply Memorandum in Support of Its Motion
`to Transfer on January 29, 2013. (ECF No. 39.) On February 11,
`2013, Apple filed a Motion to Stay pending resolution of its
`Motion to Transfer Venue. (ECF No. 41.) The Court granted
`Apple’s Motion to Stay on February 11, 2013. (ECF No. 42.)
`Apple seeks to transfer this case to the Northern District
`of California, where its headquarters, design, and development
`facilities are located. (ECF No. 22-1 at 1.) To support its
`Motion, Apple notes that Plaintiff filed eighteen other cases
`involving the patents-in-suit, and the “large majority” of those
`named defendants are located in the Northern District of
`
`
`
`2
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 3 of 27 PageID 753
`
`California, as well. (Id. at 2.) Apple asserts that all of its
`potential witnesses are located in the Northern District of
`California. (Id. at 3.) Further, Apple asserts that “[n]ot a
`single relevant document is known to be located in” the Western
`District of Tennessee, and that there are no “known third-party
`witnesses” located in the transferor district. (Id. at 2.)
`B.E. opposes Apple’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. 30 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. 30 at 2.) Hoyle
`has been a resident of Tennessee since April, 2006. (Id.)
`B.E. argues that transfer is inappropriate because it has
`substantial connections with this district. B.E. argues that
`Hoyle has been “present in this District since 2006, and B.E.
`since at least 2008,” and this district is B.E.’s principal
`place of business. (Id. at 5.) B.E. also argues that none of
`its witnesses are located in the Northern District of
`California. (Id. at 8.) Further, B.E. argues that its
`corporate documents, including documents relating to the
`
`
`
`3
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 4 of 27 PageID 754
`
`“conception and reduction to practice” of the patents-in-suit,
`are located in this District. (Id. at 4-7.)
`II. STANDARD
`
`Apple 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
`
`
`
`4
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 5 of 27 PageID 755
`
`2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010). In weighing these
`statutory factors, the court may still consider the private- and
`public-interest factors set forth in the pre-Section 1404(a)
`case, Gulf Oil v. Gilbert, 330 U.S. 501, 508-09 (1947), but
`courts are not burdened with “preconceived limitations derived
`from the forum non conveniens doctrine.” Norwood v.
`Kirkpatrick, 349 U.S. 29, 31 (1955) (quoting All States Freight
`v. Modarelli, 196 F.2d 1010, 1011 (3d Cir. 1952)) (internal
`quotation marks omitted); Esperson, 2010 WL 4362794, at *5. The
`United States Court of Appeals for the Sixth Circuit has stated
`that when deciding “a motion to transfer under § 1404(a), a
`district court should consider the private interests of the
`parties, including their convenience and the convenience of
`potential witnesses, as well as other public-interest concerns,
`such as systemic integrity and fairness, which come under the
`rubric of ‘interests of justice.’” Moore v. Rohm & Haas Co.,
`446 F.3d 643, 647 n.1 (6th Cir. 2006).
`Additionally, the “interest of justice” factor has been
`interpreted broadly by courts, influenced by the individualized
`circumstances of each case. The United States Court of Appeals
`for the Federal Circuit has set forth a non-exhaustive list of
`pertinent public-interest factors:
`The public interest factors include (1) the
`administrative
`difficulties
`flowing
`from
`court
`congestion; (2) the local interest in having localized
`
`
`
`5
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 6 of 27 PageID 756
`
`interests decided at home; (3) the familiarity of the
`forum with the law that will govern the case; and (4)
`the avoidance of unnecessary problems of conflicts of
`laws or in the application of foreign law.
`
`In re Acer Am. Corp., 626 F.3d 1252, 1254 (Fed. Cir. 2010); see
`also In Re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir.
`2009) (finding the local-interest factor weighed heavily in
`favor of transfer); Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623, 633 (W.D. Mich. 2009) (considering
`additional factors such as the relative docket congestion of
`each district).
`
`Initially, B.E. argues that there is a strong presumption
`in favor of its choice of forum, and its choice of forum should
`not be disturbed unless the defendant carries its burden to
`demonstrate that the balance of convenience strongly favors
`transfer. (ECF No. 30 at 4-6.) B.E.’s argument is erroneously
`derived from the more stringent forum-non-conveniens standard.
`Compare Hunter Fan Co. v. Minka Lighting, Inc., No. 06–2108
`M1/P, 2006 WL 1627746 (W.D. Tenn. June 12, 2006) (applying the
`appropriate private- and public-interest factors but relying on
`the forum-non-conveniens doctrine to accord strong deference to
`the plaintiff’s choice of forum), with OneStockDuq Holdings,
`LLC v. Becton, Dickinson, & Co., No. 2:12–cv–03037–JPM–tmp, 2013
`WL 1136726, at *3 (W.D. Tenn. Mar. 18, 2013), and Roberts
`Metals, Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89,
`
`
`
`6
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 7 of 27 PageID 757
`
`92-93 (N.D. Ohio 1991) (recognizing defendants need to make a
`lesser showing to overcome plaintiff’s choice of forum under
`§ 1404(a)), aff’d per curiam, 22 F.3d 1104 (6th Cir. 1994).
`Although there is a strong presumption in favor of the
`plaintiff’s choice of forum under the doctrine of forum non
`conveniens, under § 1404(a), a plaintiff’s choice of forum may
`be considered, but is entitled to less deference. Discussing
`the difference between the common-law doctrine of forum non
`conveniens and the federal transfer-of-venue statute in Norwood,
`the Supreme Court stated,
`When Congress adopted § 1404(a), it intended to
`do more than just codify the existing law on forum non
`conveniens. . . . [W]e believe that Congress, by the
`term “for the convenience of parties and witnesses, in
`the interest of justice,” intended to permit courts to
`grant
`transfers
`upon
`a
`lesser
`showing
`of
`inconvenience. This is not to say that the relevant
`factors have changed or that the plaintiff’s choice of
`forum is not to be considered, but only that the
`discretion to be exercised is broader.
`
`Norwood, 349 U.S. at 32; see also Lemon v. Druffel, 253 F.2d
`680, 685 (6th Cir. 1958) (“The choice of the forum by the
`petitioner is no longer as dominant a factor as it was prior to
`the ruling in Norwood v. Kirkpatrick[.]”); Esperson, 2010 WL
`4362794, at *5-6.
`Defendant’s burden under § 1404(a) is to demonstrate that a
`change of venue to the transferee district is warranted. See
`Eaton v. Meathe, No. 1:11-cv-178, 2011 WL 1898238, at *2 (W.D.
`
`
`
`7
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 8 of 27 PageID 758
`
`Mich. May 18, 2011); Amphion, Inc. v. Buckeye Elec. Co., 285 F.
`Supp. 2d 943, 946 (E.D. Mich. 2003); Roberts Metals, Inc., 138
`F.R.D. at 93. “Merely shifting the inconvenience from one party
`to another does not meet Defendant’s burden.” McFadgon v. Fresh
`Mkt., Inc., No. 05-2151-D/V, 2005 WL 3879037, at *2 (W.D. Tenn.
`Oct. 21, 2005). “[T]he movant must show that the forum to which
`he desires to transfer the litigation is the more convenient one
`vis a vis the Plaintiff’s initial choice.” Roberts Metals,
`Inc., 138 F.R.D. at 93 (quoting Mead Corp. v. Oscar J. Boldt
`Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981)) (internal
`quotation marks omitted). If the court determines that the
`“balance between the plaintiff’s choice of forum and defendant’s
`desired forum is even, the plaintiff’s choice of [forum] should
`prevail.” Stewart v. Am. Eagle Airlines, Inc., No. 3:10-00494,
`2010 WL 4537039, at *2 (M.D. Tenn. Nov. 3, 2010).
`III. ANALYSIS
`
`Apple asserts that B.E. could have brought this action in
`the Northern District of California. (See ECF No. 22-1 at 6.)
`B.E. does not dispute this assertion. (See ECF No. 30 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 Apple 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
`
`
`
`8
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 9 of 27 PageID 759
`
`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
`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
`
`
`
`9
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 10 of 27 PageID 760
`
`“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.
`
`Apple contends that witness convenience favors transfer to
`the Northern District of California. (ECF No. 22-1 at 7-9, ECF
`No. 39 at 7-8.) To support this contention, Apple asserts that
`a majority of the witnesses on which it intends to rely are
`located in the transferee district. These witnesses include
`Apple’s employees; employees of third parties such as Netflix
`and Hulu, both of which are non-parties to the instant
`litigation that B.E. has indicated produce products that
`infringe the patents-in-suit; and approximately nine non-party
`witnesses related to prior art. (ECF No. 22-1 at 7-9; ECF No.
`39 at 7-8.)
`
`In response, B.E. argues that “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.” (ECF No. 30 at 8.) 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. (Id. 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-
`
`
`
`10
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 11 of 27 PageID 761
`
`1220, 2009 WL 1588668, at *4 (M.D. Tenn. June 5, 2009) (“[T]he
`convenience of potential non-party witnesses, who are not
`subject to the control of the parties, is a particularly weighty
`consideration, because it is generally presumed that party
`witnesses will appear voluntarily in either jurisdiction, but
`non-party witnesses, with no vested stake in the litigation, may
`not.”).
`1. Party Witnesses
`
`
`
`Apple asserts that “Apple employees most knowledgeable
`about the design, development and operation of its accused
`products are located in the Northern District of California.”
`(ECF No. 22-1 at 3.) Apple also states that, to its knowledge,
`“no Apple employees involved in the development or management of
`the accused products work in the Western District of Tennessee.”
`(Id.) In its Reply, Apple defends its general identification of
`potential employee-witnesses by stating, “it is permissible to
`infer, absent any contrary evidence from the non-movant, that
`witnesses are located at or near the center of the allegedly
`infringing activities and that witnesses involved in the design
`and manufacture of the accused products are material.” (ECF No.
`39 at 7 (quoting Koh v. Microtek, Int’l, Inc., 250 F. Supp. 2d
`627, 636-37 (E.D. Va. 2003)) (internal quotation marks
`omitted).)
`
`
`
`11
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 12 of 27 PageID 762
`
`Apple 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
`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 Apple’s
`employees will be able to attend absent any evidence to the
`contrary.
`Therefore, regarding Apple employees, Apple cannot satisfy
`its burden. Apple argues that due to the distance between
`Memphis and the Northern District of California, approximately
`1800 miles, travel to Memphis would be burdensome, less cost-
`efficient, and less convenient. (ECF No. 22-1 at 7.) 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. 30 at
`8.) Therefore, because § 1404(a) provides for transfer “to a
`
`
`
`12
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 13 of 27 PageID 763
`
`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)).
`Apple further argues that “this factor strongly favors
`transfer” because “an overwhelming majority of the known likely
`witnesses” are located in the transferee district and it is
`likely that Apple’s business will be disrupted, whereas B.E.
`only identified one witness, Hoyle, who is also an interested
`party. (ECF No. 22-1 at 8.) Although Apple does not
`specifically list its witnesses, and though its assertion is
`imprecise as to the materiality of the witnesses’ testimony, it
`is not asserted that their testimony will not be relevant and
`material in this case. Apple’s general statement, however, that
`it believes 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. Apple relies on a United States District Court
`for the Eastern District of Virginia case, Koh v. Microtek
`International, Inc., 250 F. Supp. 2d 627 (E.D. Va. 2003), for
`the proposition that although a motion to transfer must normally
`
`
`
`13
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 14 of 27 PageID 764
`
`contain specifics as to the “names, titles and locations of
`witnesses and the content of their testimony,” that, “absent
`contrary evidence from the non-movant,” district courts can
`infer witnesses are located near the infringing activities and
`“that witnesses involved in the design and manufacture of the
`accused products are material.” (ECF No. 39 at 7 (quoting Koh,
`250 F. Supp. 2d at 636-37) (internal quotation marks omitted).)
`Recognizing that Koh is persuasive authority, the Court also
`notes that Apple misapplies it to the facts of the instant case.
`In Koh, the court stated, “although the Movants have not set out
`specifically any potential testimony, they have identified one
`individual who is located in California and two entities located
`in California, which participated in conception and reduction to
`practice of the accused product.” Koh, 250 F. Supp. 2d at 637.
`In the instant case, Apple has not identified specific witnesses
`that “participated in [the] conception and reduction to practice
`of the accused products.” To the contrary, Apple has only
`generally asserted that “[t]he foreseeable Apple witnesses with
`knowledge of the research, design, and development of the
`accused products reside or work in or near Cupertino[,
`California].” (Buckley Aff., ECF No. 22-5 ¶ 4.) Apple cannot
`rely on such “bare allegations” to satisfy its burden.
`Esperson, 2010 WL 4362794, at *8.
`
`
`
`14
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 15 of 27 PageID 765
`
`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, Apple’s
`general identification of material witnesses who are Apple
`employees does not satisfy its burden on this factor. A simple
`numerical advantage is insufficient on the issues raised by a
`motion to transfer.
`Moreover, B.E. argues that “[i]t is likely that Apple’s
`California-based employees will be deposed in California where
`B.E.’s lead counsel is based.” (ECF No. 30 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).
`Initially, Apple admits that it has “not identified relevant
`
`
`
`15
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 16 of 27 PageID 766
`
`third-party witnesses.” (ECF No. 22-1 at 8.) Apple later
`asserts, however, that it will likely rely on approximately nine
`non-party witnesses, all of whom are likely located within the
`transferee district, who have knowledge about prior art related
`to the patents-in-suit. (Id. at 9.) Apple states that it “will
`likely need to gather documents and information through
`deposition from many of these individuals” in preparation of its
`invalidity defenses. (Id.)
`Apple also contends that because B.E. added additional
`products produced by non-parties - namely Hulu, Netflix, and
`YouTube - when it provided its infringement contentions, there
`is an increased likelihood “that testimony will be required of
`non-party witnesses who possess material information, but who
`are unwilling to testify.” (ECF No. 39 at 8.) Apple contends
`that each of these entities is located in California, with
`Netflix and Hulu located within the transferee district. (Id.
`at 6.) As a result, Apple argues that the Northern District of
`California is the more convenient district.
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Apple has not established that the “third party testimony will
`be material or important.” (ECF No. 30 at 10.) B.E. argues
`that Apple has not stated the “relevance, materiality, and
`importance of the testimony any witness who allegedly could not
`
`
`
`16
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 17 of 27 PageID 767
`
`be subpoenaed might give.” (Id. at 11.) 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 likely be able to compel
`the non-party witnesses to testify at trial. See Fed. R. Civ.
`P. 45(b)(2). In contrast, the non-party 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.
`Apple, 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
`
`
`
`17
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 18 of 27 PageID 768
`
`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. Apple merely
`states that it “will likely need to gather documents and
`information through deposition” from these individuals to
`prepare its invalidity defenses. (ECF No. 22-1 at 9.)
`Regarding the third-party witnesses of Hulu, Netflix, and
`YouTube, Apple merely states that their testimony is “likely”
`required. (ECF No. 39 at 7.) These general statements are not
`sufficient to allow the Court to determine whether live
`testimony of Apple’s non-party witnesses is necessary. Further,
`Apple 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. (But see id. at 8 (“Because B.E. has accused
`additional products of non-parties, it has increased the
`likelihood that testimony will be required of non-party
`witnesses who possess material information, but who are
`unwilling to testify.”).) As a result, this factor does not
`weigh in favor of transfer.
`B. Convenience of the Parties
`Apple argues that the Northern District of California is
`
`“plainly the more convenient forum in which to litigate B.E.’s
`claims against Apple.” (ECF No. 22-1 at 1.) While Apple
`organizes its arguments somewhat differently than the Court, the
`
`
`
`18
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 19 of 27 PageID 769
`
`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
`
`
`
`Apple argues that “the vast majority of physical and
`documentary evidence relevant to the issues of Apple’s alleged
`infringement, invalidity, and damages is located in California,
`and none is known to be located in Tennessee.” (ECF No. 22-1 at
`7.) Apple contends that the “bulk of documents relevant to this
`case are likely to come from Apple, and now Netflix, Hulu and
`YouTube, increasing the weight of [this factor].” (ECF No. 37
`at 6.)
`
`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. 30 at 5, 7.) B.E. notes that while
`Apple’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
`
`
`
`19
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 20 of 27 PageID 770
`
`electronically, 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 Apple 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
`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 Apple has in its possession, as well as the
`
`
`
`20
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 21 of 27 PageID 771
`
`potentially discoverable documents of third-parties, 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 Apple 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. 30 at 13).
`Apple’s reliance on In re Nintendo and L&P Property Management
`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.
`
`21
`
`
`
`
`
`

`
`Case 2:12-cv-02831-JPM-tmp Document 45 Filed 06/20/13 Page 22 of 27 PageID 772
`
`2. Financial Hardships Attendant to Litigating in
`the Chosen Forum
`
`Apple argues that its employees with “knowledge relevant to
`
`this litigate are located in California, over 1,700 miles from
`Memphis.” (ECF No. 22-1 at 7.) As a result, Apple contends
`that “it is more cost-efficient and more convenient for
`witnesses to testify at home,” and the “engineers, designers,
`and software developers likely to be called at trial are
`integral contributors to Apple’s operations, and the disruption
`caused by taking them away from their jobs to testify in
`Tennessee is not offset by any corresponding inconvenience” to
`B.E. (ECF No. 22-1 at 7-8.)
`B.E. states that it “would face a financial burden by
`having to litigate in the Northern District of California.”
`(ECF No.

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket