Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 1 of 23 PageID 255
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff,
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`v.
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`SPARK NETWORKS, INC.,
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`Defendant.
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`Case No. 2:12-cv-2832 JPM tmp
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`JURY DEMAND
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`REQUEST FOR HEARING ON MOTION
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`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.
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`
`
`Dated: January 7, 2013
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`
`

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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 2 of 23 PageID 256
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`
`I.
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`II.
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`III.
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`IV.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................................. 1
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`STATEMENT OF FACTS ................................................................................................ 2
`
`A.
`
`B.
`
`B.E. Technology, L.L.C ......................................................................................... 2
`
`B.E. v. Spark Networks, Inc ................................................................................... 2
`
`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
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`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
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`A.
`
`B.
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`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 4
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`Private Factors Favor B.E.’s Choice of Forum ...................................................... 6
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`1.
`
`2.
`
`3.
`
`4.
`
`Convenience of the Parties Weighs Against Transfer ............................... 6
`
`Convenience of the Witnesses Weighs Against Transfer .......................... 7
`
`a.
`
`b.
`
`Party Witnesses .............................................................................. 8
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`Non-Party Witnesses .................................................................... 10
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`Location of Sources of Proof ................................................................... 12
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`Spark 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 Central District of California Would Not Materially
`Delay Trial While 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
`
`V.
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`CONCLUSION ................................................................................................................ 17
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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 3 of 23 PageID 257
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`
`
`
`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Page(s)
`
`Adoma v. Univ. of Phoenix, Inc.,
`711 F. Supp. 2d 1142 (E.D. Cal. 2010) .....................................................................................7
`
`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) .......................................................................................7, 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) ..............................................................8, 11, 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 Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................5
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)..................................................................................................5
`
`
`
`

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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 4 of 23 PageID 258
`
`TABLE OF AUTHORITIES
`(CONTINUED)
`
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`Page
`
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................10
`
`Kerobo v. Southwestern Clean Fuels Corp.,
`285 F.3d 531 (6th Cir. 2002) .....................................................................................................3
`
`Koh v. Microtek Int’l, Inc.,
`250 F. Supp. 2d 627 (E.D. Va. 2003) .......................................................................................7
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ............................................................................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
`
`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
`
`Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc.,
`138 F.R.D. 89 (N.D. Ohio 1991) ..............................................................................................8
`
`- 2 -
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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 5 of 23 PageID 259
`
`TABLE OF AUTHORITIES
`(CONTINUED)
`
`
`Page
`
`
`
`
`Samsung Elecs. Co. v. Rambus, Inc.,
`386 F. Supp. 2d 708 (E.D. Va. 2005) ........................................................................................7
`
`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) ..................................................................................8
`
`FEDERAL STATUTES
`
`28 U.S.C. § 1404 ..........................................................................................................................1, 2
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`28 U.S.C. § 1404(a) ...................................................................................................................3, 17
`
`35 U.S.C. § 102(e) .........................................................................................................................12
`
`RULES
`
`Fed. R. Civ. P. 8 .............................................................................................................................10
`
`Fed. R. Civ. P. 45(b)(2)..................................................................................................................11
`
`Rule 12(b)(6) ..................................................................................................................................10
`
`Rule 12(f) .......................................................................................................................................10
`
`
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`- 3 -
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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 6 of 23 PageID 260
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`I.
`
`INTRODUCTION.
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`This case arises from the infringement by defendant Spark Networks, Inc. (“Spark”) of
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`United States Patent No. 6,628,314. This patent describes and claims inventions relating to user
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`interfaces for accessing computer applications and information to provide advertising over a
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`computer network. The inventor, Martin David Hoyle, who is also the Chief Executive Officer
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`of plaintiff B.E. Technology, L.L.C. (“B.E.”), has lived in the Western District of Tennessee
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`since 2006 and currently resides at 116 W. Viking Drive, Cordova, Tennessee, part of the City of
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`Memphis. B.E. has brought this action because Spark has infringed B.E.’s patent in this District
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`and across the United States.
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`Perhaps operating under a misunderstanding about why and when Mr. Hoyle moved to
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`this District and about Mr. Hoyle’s connection to B.E., Spark has asked the Court to transfer this
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`case from the inventor’s and the plaintiff company’s home District to Spark’s home, the Central
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`District of California, or alternatively, to the Northern District of California. This case is not,
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`however, like others in which plaintiffs have taken steps to manufacture venue. The Western
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`District of Tennessee has long been the physical location and home of B.E. and its CEO who is
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`the inventor of the asserted patent.
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`Ignoring completely the relevant facts establishing Mr. Hoyle’s and B.E.’s longstanding
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`connection to this District, Spark argues that transfer to the Central District of California would
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`be more convenient because its headquarters is located in Beverly Hills and its witnesses and
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`documents can be found there. Transfer to California might be more convenient for Spark, but it
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`would be less convenient for B.E. Transfer under 28 U.S.C. § 1404 requires a “more convenient
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`forum,” not merely a “forum likely to prove equally convenient or inconvenient,” or “a forum
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`the defendant finds more to its liking.” Because Spark can offer no more, its motion to transfer
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`should be denied.
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`

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`II.
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`STATEMENT OF FACTS.
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`A.
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`B.E. Technology, L.L.C.
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`B.E. is a Delaware limited liability company. Declaration of Martin David Hoyle
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`(“Hoyle Decl.”) ¶ 5. Martin David Hoyle, who goes by David, founded B.E. in 1997 to develop
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`Internet-related technologies. Id. B.E. is the assignee of United States Patent Nos. 6,628,314
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`(the “’314 patent”) (the “patent-in-suit”). Id. ¶ 7. Mr. Hoyle has been B.E.’s Chief Executive
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`Officer since 2008. Id. ¶ 6. He previously held other positions with B.E., including serving as
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`its President from 1997 to 2001. Id. Mr. Hoyle is the named inventor of the patent-in-suit.1
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`Id. ¶ 7.
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`In April 2006, Mr. Hoyle and his family moved from Mandeville, Louisiana to Eads,
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`Tennessee. Id. ¶ 2. They left Louisiana in the aftermath of Hurricane Katrina. Id. Mr. Hoyle
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`has remained in the Memphis area, and in this judicial district, ever since. See id. ¶¶ 2-4. In
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`2012, after contemplating a return to Louisiana, Mr. Hoyle and his wife moved to Cordova, in
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`the city of Memphis and also in this District. Id. ¶ 4.
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`B.E. originally maintained its registered office in Michigan where some of its members
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`and its accountant reside, id. ¶ 5, but it formally registered to conduct business in Tennessee in
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`2012. Id. ¶ 8.
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`B.
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`B.E. v. Spark Networks, Inc.
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`B.E. filed its Complaint in this matter on September 22, 2012. D.E. 1. Spark filed its
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`Answer on December 31, 2012. D.E. 21. This is one of nineteen cases B.E. has filed in the
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`Western District of Tennessee for the infringement of the patent-in-suit and two related patents
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`not asserted against Spark. The defendants in these cases include several of the world’s most
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`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
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`sophisticated technology and Internet companies, each of which regularly conducts business on a
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`massive scale in this District.
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`III. THE LAW GOVERNING MOTIONS TO TRANSFER.
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`“For the convenience of parties and witnesses, in the interest of justice, a district court
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`may transfer any civil action to any other district or division where it might have been brought.”
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`28 U.S.C. § 1404(a). A decision to transfer venue is made “on an individual basis by
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`considering convenience and fairness.” Kerobo v. Southwestern Clean Fuels Corp., 285 F.3d
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`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
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`(S.D. Ohio Sept. 14, 2007).
`
`“As a general rule, there is a ‘strong presumption’ in favor of the plaintiff’s selection of
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`forum, and the plaintiff’s choice should not be altered ‘unless the defendant carries his burden of
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`demonstrating that the balance of convenience strongly favors transfer.’” Hunter Fan Co. v.
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`Minka Lighting, Inc., 2006 WL 1627746, at * 2 (W.D. Tenn. June 12, 2006) (McCalla, J.)
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`(quoting Plough, Inc. v. Allergan, Inc., 741 F. Supp. 144, 148 (W.D. Tenn. 1990)) (denying a
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`motion to transfer even though the majority of defendant’s witnesses and documents were
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`located in California and California was the epicenter of the accused infringing activity). “When
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`a plaintiff has selected its home forum, this choice is given particular weight.” Id. (citing Tuna
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`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
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`the action in the transferee forum. See Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
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`2003 WL 21244142, at *6 (W.D. Tenn. May 28, 2003); MCNIC Oil & Gas Co. v. IBEX
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`Resources Co., L.L.C., 23 F. Supp. 2d 729, 739 (E.D. Mich. 1998) (same). If so, then the
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`“district court should consider the private interests of the parties, including their convenience and
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`the convenience of potential witnesses, as well as other public-interest concerns, such as
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`systemic integrity and fairness, which come under the rubric of ‘interests of justice.’” Moses v.
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`Business Card Express, Inc., 929 F.2d 1131, 1137 (6th Cir. 1991) (quoting Stewart
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`Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 30 (1988)).
`
`IV.
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`TRANSFER IS NOT APPROPRIATE.
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`B.E. agrees that its patent infringement claims could have been brought in the Central
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`District of California because Spark infringes there, just as it does in this District, and Spark is
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`based in the Central District of California. Likewise, B.E. could have asserted its claims against
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`Spark in the Northern District of California because Spark infringes there. The relevant question
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`presented by Spark’s motion is therefore whether Spark has met its high burden to establish that
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`the Central District of California is “a more convenient forum,” not merely an “equally
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`convenient or inconvenient forum” when compared to the Western District of Tennessee. Van
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`Dusen v. Barrack, 376 U.S. 612, 645-46 (1964). Spark has not made that showing.
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`A.
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`B.E.’s Choice of Forum is Entitled to Substantial Weight.
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`As mentioned above, it is well-settled that a plaintiff’s choice of forum is entitled to
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`substantial weight. Hunter Fan Co., 2006 WL 1627746, at *2; see also Imagepoint, Inc. v.
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`Keyser Indus., Inc., 2005 WL 1242067, at *3 (E.D. Tenn. May 25, 2005) (explaining the
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`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
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`named inventor, lives here. B.E.’s choice of forum should be accorded substantial weight.
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`Without any mention of the relevant facts, Spark argues that B.E.’s choice of venue
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`should be disregarded because its “contacts with this district are minimal, recent, and apparently
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`calculated merely as a litigation tactic.” D.E. 20-1 at 17. That is not true. Unlike the cases on
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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 10 of 23 PageID 264
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`which Spark relies where the plaintiffs’ contacts with the chosen forum were recent or
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`manufactured for the purpose of litigation, Mr. Hoyle has been physically present in this District
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`since 2006, and B.E. since at least 2008. Compare Hoyle Decl. ¶¶ 2-7 with In re Microsoft
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`Corp., 630 F.3d 1361, 1362 (Fed. Cir. 2011) (“[Plaintiff] is operated from the United Kingdom
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`by the patent’s co-inventor and company’s managing member” and employed no individuals at
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`its office in the Eastern District of Texas.); In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1336-
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`37 (Fed. Cir. 2009) (“[T]here appears to be no connection between this case and the Eastern
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`District of Texas except that in anticipation of this litigation, [plaintiff’s] counsel in California
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`converted into electronic format 75,000 pages of documents demonstrating conception and
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`reduction to practice and transferred them to the offices of its litigation counsel in Texas.”); In re
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`Zimmer Holdings, 609 F.3d 1378, 1381 (Fed. Cir. 2010) (“[Plaintiff] transported copies of its
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`patent prosecution files from Michigan to its Texas office space, which it shares with another of
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`its trial counsel’s clients.”).
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`Mr. Hoyle is not a recent transplant to the Western District of Tennessee. Nor was his
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`move to the District, six years before the filing of this action, the first step in a slow-developing
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`scheme to construct the appearance of a connection to the forum. Moreover, the physical
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`location of B.E.’s records, including documents demonstrating the conception and reduction to
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`practice of Mr. Hoyle’s inventions, is neither a recent development nor a fictitious arrangement
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`by counsel strategically to place important evidence in the Western District of Tennessee. Mr.
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`Hoyle, as CEO and inventor, will likely be a key B.E. witness, but Spark makes no mention of
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`his presence in the District, and it makes no attempt to overcome the significance of his presence
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`here. B.E.’s contacts with the forum were not manufactured for litigation and as a result, its
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`choice of forum is entitled to “substantial weight.”
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`Spark seeks to undercut B.E.’s obvious connection to the District by pointing out that
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`B.E. “registered to do business in the Western District of Tennessee just one day before initiating
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`litigation for infringement of the ‘314 patent against Spark, and 10 other defendants, in this
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`District.” D.E. 20-1 at 1. B.E. does not rely on the simple fact that it is registered to conduct
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`business in Tennessee as a basis for establishing B.E.’s connection to the District. B.E.
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`registered because it has a connection to Tennessee; it did not register to establish a connection.
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`If the timing of B.E.’s registration is to be questioned, it should be understood that the
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`registration was made after Mr. Hoyle chose to remain in Tennessee, rather than return to
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`Louisiana. Hoyle Decl. ¶ 4. When B.E. was preparing to file this action and Mr. Hoyle
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`discovered that B.E. had not registered to do business in Tennessee, the registration was made.
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`Id. ¶ 8. Regardless, B.E. does not contend that its contacts with the forum are established by its
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`registration. Spark’s assault on this straw man is not sufficient to carry its burden.
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`B.
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`Private Factors Favor B.E.’s Choice of Forum.
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`While B.E.’s choice of forum is entitled to substantial weight, the Court is nevertheless
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`required to evaluate private and public factors in determining whether to grant Spark’s motion.
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`“The private interests of the parties that courts consider when determining whether to transfer a
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`case include: the convenience of the parties, the convenience of witnesses, the location of
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`sources of proof, where the operative facts occurred, the relative ability of litigants to bear
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`expenses in any particular forum, and other practical problems affecting the case.” Hunter Fan,
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`2006 WL 1627746, at *2.
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`1.
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`Convenience of the Parties Weighs Against Transfer.
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`Spark shockingly states that “B.E. is an entity with a tenuous presence at best in
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`Tennessee,” that its “ties to this District are . . . effectively nonexistent,” and that “given B.E.’s
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`lack of significant connection to the State of Tennessee, [the Central District of California] is at
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`least equally convenient for B.E.” as the Western District of Tennessee. D.E. 20-1 at 9. The
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`Western District of Tennessee is far more convenient for B.E. than the Central District of
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`California. As previously explained, B.E. and its CEO, the inventor of the patent-in-suit, reside
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`within the District. B.E.’s corporate documents and records are here as well. Spark cannot
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`establish that the Central District of California is a more convenient forum while literally
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`ignoring these facts or blinding itself to them.
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`2.
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`Convenience of the Witnesses Weighs Against Transfer.
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`Spark argues that “it would be significantly less convenient for Spark to litigate this case
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`in Tennessee,” because “Spark employees—including management and engineers—who are
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`knowledgeable regarding facts relevant to this litigation work and/or reside in the Central
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`District of California.” D.E. 20-1 at 9, 10. By the same logic, transfer to the Central District of
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`California would be equally inconvenient to B.E.’s witnesses, none of whom work and/or reside
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`in the Central District of California. Moreover, Spark offers precious little about who the
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`witnesses are, what they will say, and why they are important to this case. “To sustain a finding
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`on [the convenience of the witnesses] . . . the party asserting witness inconvenience ‘has the
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`burden to proffer, by affidavit or otherwise, sufficient details respecting the witnesses and their
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`potential trial testimony to enable the court to assess the materiality of evidence and the degree
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`of inconvenience.’” Rinks v. Hocking, 2011 WL 691242, at *3 (W.D. Mich. Feb. 16, 2011)
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`(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
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`*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.
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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 13 of 23 PageID 267
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`Va. 1988) (“Witness convenience . . . cannot be assessed in the absence of reliable information
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`identifying the witnesses involved and specifically describing their testimony.”). Spark provides
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`none of that.
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`a.
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`Party Witnesses.
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`Spark claims that its employees who are likely to be party witnesses would be
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`inconvenienced if the case remains in Tennessee, but offers no particularized information
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`enabling the Court to ascertain how much weight to give the claim of inconvenience. Spark fails
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`to identify any witnesses by name, position title, location, the subject matter on which they will
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`testify, or the burdens they would endure by traveling to Tennessee to testify. Spark merely
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`states that its “employees knowledgeable regarding Spark’s marketing activities, corporate
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`strategy, finances, and operations work at Spark’s Beverly Hills, California headquarters.”
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`Declaration of Joshua A. Kreinberg (“Kreinberg Decl.”) ¶ 9; see also id. ¶ 11 (“Spark employees
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`knowledgeable regarding the presentation of advertising on Spark’s websites work at Spark’s
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`Beverly Hills, California headquarters.”). “[A] party that ‘fails to identify the witnesses’ and
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`‘what their testimony would be’ cannot establish that a particular forum is inconvenient.”
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`Esperson v. Trugreen Ltd. P’ship, 2010 WL 4362794, *8 (W.D. Tenn. Oct. 5, 2010) (quoting
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`Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89, 93 (N.D. Ohio 1991),
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`aff’d per curiam, 22 F.2d 1104 (6th Cir. 1994)). Spark’s vague representations concerning
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`witness inconvenience do not meaningfully aid in the evaluation of this factor. It is “the
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`materiality and importance of the testimony of prospective witnesses, and not merely the number
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`of witnesses, [that] is crucial to this inquiry.” Rinks, 2011 WL 691242 at *3 (citing Viron Int’l
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`Corp. v. David Boland, Inc., 237 F. Supp. 2d 812, 816 (W.D. Mich. 2002)).
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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 14 of 23 PageID 268
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`Spark also fails to provide admissible evidence establishing how travel from California to
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`Tennessee would impose “significant inconvenience for Spark’s witnesses.” D.E. 10-1 at 10. It
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`does not address the availability of commercial flights between the Central District of California
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`and the Western District of Tennessee or how long the trip takes, and it does not assert that Spark
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`will not cover any travel expenses of its employee witnesses.
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`Spark also does not provide admissible evidence of how its operations would be
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`adversely affected by the case staying in Tennessee. Spark merely states that the “employees
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`most likely to have knowledge relevant to Spark’s websites, and the appearance and use of
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`advertising on those websites, are officers managers, and/or supervisors at Spark whose absence
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`from their ordinary duties at Spark for any extended period of time would be detrimental to
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`Spark’s continued, successful business operations.” Id.; see also Kreinberg Decl. ¶ 12 (same).
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`That’s it. Spark fails to provide the names, position titles, or responsibilities of the employees
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`likely to possess the necessary knowledge, how their absence from California would be
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`detrimental to Spark’s business operations, or how likely it is that their absence would be for an
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`“extended period of time.”
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`Finally, Spark has not shown that all of its witnesses will necessarily be forced to testify
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`in Tennessee. Typically, though not always, depositions are taken in locations convenient for the
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`witnesses or subject to agreements between the parties mindful of witness convenience. It is
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`likely that Spark’s California-based employees will be deposed in California where B.E.’s lead
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`counsel is based. See Hunter Fan, 2006 WL 1627746, at *2 (witness convenience does not favor
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`transfer where plaintiff “plans to take the depositions of witnesses who are California residents,
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`including Defendant’s employees, in California”).
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`Case 2:12-cv-02832-JPM-tmp Document 26 Filed 01/08/13 Page 15 of 23 PageID 269
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`b.
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`Non-Party Witnesses.
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`Spark next argues that the case should be transferred because third-party witnesses,
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`including “Google and Google’s engineers . . . who are involved in serving advertising on
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`Spark’s websites,” and “inventors . . . who are knowledgeable about prior art” are located outside
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`the Western District of Tennessee and in California. See D.E. 20-1 at 10-11. While the
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`convenience of third party witnesses is a consideration in evaluating a motion to transfer, it is not
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`entitled to great weight where, as here, the movant fails to establish that the third party testimony
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`will be material or important. See Rinks, 2011 WL 691242, at *3 (stating “the materiality and
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`importance of the testimony of the prospective witness” is “crucial to this inquiry”).
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`Spark lists five United States patents that it contends “may be prior art.”2 D.E. 20-1 at 6.
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`Prior art inventor testimony may not be used to vary the words of the alleged prior art and
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`admissible prior art inventor testimony is almost certain to be severely limited by the time of
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`trial. See, e.g., Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1375 (Fed. Cir. 2008)
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`(affirming order limiting prior art inventor’s testimony to the “actual words and content” of the
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`patent application). Therefore, the testimony of these so-called California-based prior art
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`inventors does not weigh in favor of transfer.
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`Spark also fails to establish that its infringement arises exclusively from its use of
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`Google’s “Dart For Publishers” service, as opposed to instrumentalities it designed, developed,
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`and operates. See Declaration of Gregory J. Franchina ¶ 8. Thus, Spark has not established that
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`the testimony of third party Google engineers will be material, important or even required. D.E.
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`2 While Spark 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. 21, despite the
`requirements that answers and affirmative defenses be adequately pled under Fed. R. Civ. P. 8
`and capable of withstanding a challenge under Rule 12(b)(