Case 2:12-cv-02834-JPM-tmp Document 37 Filed 02/22/13 Page 1 of 25 PageID 366
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`
`
`Case No. 2:12-cv-02834 JPM tmp
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`JURY DEMAND
`
`REQUEST HEARING ON MOTION
`
`))))))))))
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`
`
`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff/Counter-Defendant,
`
`v.
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`MATCH.COM L.L.C.,
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`Defendant/Counterclaimant.
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`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO
`DEFENDANT’S MOTION TO TRANSFER VENUE
`
`
`
`Dated: February 22, 2013
`
`
`
`
`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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`TABLE OF CONTENTS
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`
`Page
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`
`
`
`I.
`II.
`
`III.
`IV.
`
`V.
`VI.
`
`
`C.
`
`INTRODUCTION ............................................................................................................. 1
`STATEMENT OF FACTS ................................................................................................ 2
`A.
`B.E. Technology, L.L.C ......................................................................................... 2
`B.
`B.E. v. Match ......................................................................................................... 3
`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
`A.
`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 4
`B.
`Private Factors Favor B.E.’s Choice of Forum ...................................................... 8
`1.
`Convenience of the Parties Weighs Against Transfer ............................... 8
`2.
`Convenience of the Witnesses Weighs Against Transfer .......................... 9
`a.
`Party Witnesses ............................................................................ 10
`b.
`Non-Party Witnesses .................................................................... 11
`Location of Sources of Proof ................................................................... 13
`Match Would Not Be Materially Burdened Bearing The Expense
`of Litigating in the Western District of Tennessee .................................. 15
`Public Factors Favor B.E.’s Choice of Forum ..................................................... 16
`1.
`Transfer to the Northern District of California and the Northern
`District of Texas Would Delay Trial ....................................................... 16
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 17
`REQUEST FOR ORAL ARGUMENT ........................................................................... 19
`CONCLUSION ................................................................................................................ 19
`
`3.
`4.
`
`2.
`
`-i-
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`Case 2:12-cv-02834-JPM-tmp Document 37 Filed 02/22/13 Page 3 of 25 PageID 368
`
`
`TABLE OF AUTHORITIES
`
`Federal Cases
`
`Page(s)
`
`Adoma v. Univ. of Phoenix, Inc.,
`711 F. Supp. 2d 1142 (E.D. Cal. 2010)....................................................................................10
`
`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) ................................................................................14, 15
`
`Board of Trs. v. Baylor Heading & Air Conditioning, Inc.,
`702 F. Supp. 1253 (E.D. Va. 1988) .........................................................................................10
`
`Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623 (W.D. Mich. 2009) .................................................................................14
`
`E2Interactive, Inc. v. Blackhawk Network, Inc.,
`2010 WL 3937911 (W.D. Wis. Oct. 6, 2010) ..........................................................................16
`
`Ellipsis, Inc. v. Colorworks, Inc.,
`329 F. Supp. 2d 962 (W.D. Tenn. 2004) ............................................................................15, 16
`
`Esperson v. Trugreen Ltd. P’ship,
`2010 WL 4362794 (W.D. Tenn. Oct. 5, 2010) ..................................................................10, 11
`
`Hanning v. New England Mut. Life Ins. Co.,
`710 F. Supp. 213 (S.D. Ohio 1989) ...........................................................................................5
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................7
`
`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, 4
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................12
`
`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) ......................................................................................10
`
`ii
`
`

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`Case 2:12-cv-02834-JPM-tmp Document 37 Filed 02/22/13 Page 4 of 25 PageID 369
`
`
`TABLE OF AUTHORITIES
`(CONT.)
`
`Federal Cases
`
`Page(s)
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011),...............................................................................................14
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ..............................................................................8
`
`Max Rack, Inc. v. Hoist Fitness Sys., Inc.,
`2006 WL 640497 (S.D. Ohio March 10, 2006) .......................................................................14
`
`MCNIC Oil & Gas Co. v. IBEX Resources Co., L.L.C.,
`23 F. Supp. 2d 729 (E.D. Mich. 1998) .......................................................................................4
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)..............................................................................................5, 6
`
`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, 15
`
`Parsons v. Chesapeake & Ohio Ry. Co.,
`375 U.S. 71 (1963) ...................................................................................................................16
`
`Plough, Inc. v. Allergan, Inc.,
`741 F. Supp. 144 (W.D. Tenn. 1990).........................................................................................3
`
`Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
`2003 WL 21244142 (W.D. Tenn. May 28, 2003) .....................................................................4
`
`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) .......................................................................................11, 13
`
`Samsung Elecs. Co. v. Rambus, Inc.,
`386 F. Supp. 2d 708 (E.D. Va. 2005) ......................................................................................10
`
`- iii -
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`

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`Case 2:12-cv-02834-JPM-tmp Document 37 Filed 02/22/13 Page 5 of 25 PageID 370
`
`
`TABLE OF AUTHORITIES
`(CONT.)
`
`Federal Cases
`
`Page(s)
`
`Siteworks Solutions, LLC v. Oracle Corp.,
`2008 WL 4415075 (W.D. Tenn. Sept. 22, 2008) .....................................................................16
`
`Stewart Organization, Inc. v. Ricoh Corp.,
`487 U.S. 22 (1988) .....................................................................................................................4
`
`Tuna Processors, Inc. v. Hawaii Int’l Seafood,
`408 F. Supp. 2d 358 (E.D. Mich. 2005) .....................................................................................4
`
`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, 11
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................8
`
`Federal Statutes
`
`28 U.S.C. § 1404 ..............................................................................................................................2
`
`28 U.S.C. § 1404(a) .........................................................................................................................3
`
`Fed. R. Civ. P. 45(b)(2)..................................................................................................................13
`
`Rules
`
`
`
`- iv -
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`
`I.
`
`INTRODUCTION.
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`This case arises from the infringement by defendant Match.com, Inc. (“Match”) 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. Plaintiff B.E. Technology, L.L.C. (“B.E.”) has brought this action because
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`Match has infringed B.E.’s patent in this District and across the United States. The inventor,
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`Martin David Hoyle, is also the Chief Executive Officer of B.E. Mr. Hoyle has lived in the
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`Western District of Tennessee since 2006 and currently resides at 116 W. Viking Drive,
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`Cordova, Tennessee, part of the City of Memphis. Mr. Hoyle has directed B.E.’s business from
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`this District since at least 2008.
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`Disregarding critical facts establishing B.E.’s connection to this District, and relying on
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`dated information from a more than decade-old B.E. business plan, Match has asked the Court to
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`transfer this case from the inventor’s and the plaintiff company’s home District to the Northern
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`District of California (or alternatively, to the Northern District of Texas Match’s principal place
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`of business and where all of its employees relevant to this action are located). This case does not
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`involve a plaintiff taking steps to manufacture venue as Match contends. The Western District of
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`Tennessee is, and has long been, the physical location and home of B.E. and its Chief Executive
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`Officer, who is the inventor of the patent-in-suit. Match cannot disprove that.
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`Despite Mr. Hoyle’s and B.E.’s longstanding connection to this District, and having no
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`real connection to the Northern District of California, D.E. 32-1 at 11, Match argues that transfer
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`to the Northern District of California would be more convenient because other defendants sued
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`by B.E. have sought transfer there. Importantly, Match admits that it has absolutely no
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`connections to the Northern District of California. D.E. 32-1 at 6. Alternatively, Match
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`contends that it would be more convenient to transfer the case to the Northern District of Texas
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`1
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`where Match maintains all of its facilities relevant to this action. Transfer to California or Texas
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`might theoretically be more convenient for Match, but either location would be less convenient
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`for B.E. Transfer under 28 U.S.C. § 1404 requires a “more convenient forum,” not merely a
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`“forum likely to prove equally convenient or inconvenient,” or “a forum the defendant finds
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`more to its liking.” Because Match can offer no more, its motion to transfer should be denied.
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`II.
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`STATEMENT OF FACTS.
`
`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 No. 6,628,314 (the
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`“’314 patent”) (the “patent-in-suit”). Id. ¶ 7. Mr. Hoyle has been B.E.’s Chief Executive Officer
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`since 2008. Id. ¶ 6. He previously held other positions with B.E., including serving as its
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`President from 1997 to 2001. Id. Mr. Hoyle is the named inventor of the patent-in-suit.1 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. Mr. Hoyle runs the business of B.E. from his home office, including meeting with
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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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`the B.E. Board of Directors, filing patent applications, and coordinating the enforcement of
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`B.E.’s intellectual property rights. Id. ¶ 6.
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`B.
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`B.E. v. Match.
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`B.E. filed its Complaint in this matter on September 22, 2012. D.E. 1. Match filed its
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`Answer on December 31, 2012, acknowledging that venue is proper in this District. D.E. 19 ¶ 5
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`(“Match.com admits that venue is proper in this district.”). This is one of nineteen cases B.E. has
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`filed in the Western District of Tennessee for the infringement of the patent-in-suit and related
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`patents not asserted against Match. The defendants in these B.E. cases include several of the
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`world’s most sophisticated technology companies, each of which regularly conducts business on
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`a 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
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`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).
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`“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)).
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`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)).
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`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 Northern
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`District of California or the Northern District of Texas because Match infringes in both places,
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`just as it does in this District. The relevant question presented by Match’s motion is whether
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`Match has met its high burden to establish that the Northern District of California or the
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`Northern District of Texas is “a more convenient forum,” not merely an “equally convenient or
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`inconvenient” forum when compared to the Western District of Tennessee. Van Dusen v.
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`Barrack, 376 U.S. 612, 645-46 (1964). Match 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.
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`Co., 710 F. Supp. 213, 214-15 (S.D. Ohio 1989) (“considerable weight”). The Western District
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`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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`Match argues that B.E.’s contacts with this District are entitled to no weight because the
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`contacts were established in order to manipulate venue. D.E. 32-1 at 1. That is not true, see
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`Hoyle Decl. ¶¶ 2-7, and Match’s incorrect deductions about the relevant facts should be rejected.
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`For example, Match states that “[i]t was not until B.E. decided to sue in this District that it
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`conveniently began to change the location of its principal offices from Michigan to Tennessee
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`[and that] B.E. filed for authority to do business in this State just twenty-two days before suing
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`Match . . . ” D.E. 32-1 at 5 (emphasis omitted). B.E.’s principal office has been located in
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`Tennessee since at least 2008. Hoyle Decl. ¶ 6. People Media disregards that fact to focus on
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`when B.E. registered to conduct business in Tennessee. But the focus on the timing of the
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`business registration is misplaced because B.E. has never relied on the fact that it is registered to
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`conduct business in Tennessee as a basis for establishing its connection to the District. As
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`previously explained in opposition to other B.E. defendant motions to transfer, B.E. registered
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`because it has a connection to Tennessee; it did not register to establish a connection. See, e.g.,
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`Plaintiff [B.E.’s] Memorandum in Opposition to Defendant [Facebook Inc.’s] Motion to Transfer
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`Venue, D.E. 38 at 6, Case No. 2:12-cv-02769-JPM-tmp (January 31, 2013).
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`Match also wrongly states that “[B.E.] does not have any offices in Tennessee.” D.E. 32-
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`1 at 13-14. B.E. clearly has an office in Tennessee. It is Mr. Hoyle’s home office in Cordova
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`and it is the place from which Mr. Hoyle controls and directs B.E. business activities. Hoyle
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`Decl. ¶ 6. See In re Microsoft Corp., 630 F.3d 1361, 1364 (Fed. Cir. 2011) (explaining the court
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`should identify “the place of actual direction, control and coordination.”). People Media also
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`strangely adds that Mr. Hoyle “only recently decided to reside permanently in Tennessee;” id.
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`(emphasis added), apparently ignoring or discounting the previous six years when he also lived
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`in Tennessee. Mr. Hoyle has been physically present in this District since 2006, and B.E. since
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`at least 2008. Hoyle Decl. ¶¶ 2-7. Mr. Hoyle’s move to this District, six years before the filing
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`of this action, was not the first step in manufacturing venue; and his wife’s and his family’s
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`decision to buy a home in Cordova was not designed to create venue in this District. Hoyle Decl.
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`¶ 4.
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`In an attempt to further undermine B.E.’s connection to this District, Match oddly
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`proclaims that the “majority of B.E.’s witnesses and documents appear to be in either Michigan
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`or Louisiana . . .” and that the “only documents located in Tennessee belong to Mr. Hoyle.” D.E.
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`32-1 at 13-14. As B.E. wrote in opposition to Facebook’s motion to transfer, there are no
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`documents located in Louisiana, and few, if any relevant documents located in Michigan. The
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`relevant B.E. records, including documents demonstrating the conception and reduction to
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`practice of Mr. Hoyle’s inventions, are physically located in this District. Plaintiff [B.E.’s]
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`Memorandum in Opposition to Defendant [Facebook Inc.’s] Motion to Transfer Venue, D.E. 38
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`at 6, Case No. 2:12-cv-02769-JPM-tmp (January 31, 2013). This is not a recent development, a
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`fictitious arrangement strategically to place important evidence in the Western District of
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`Tennessee, and Match, if it has been paying attention, should already know this.
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`Match further questions B.E.’s connection to this District by pointing to the December
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`2011 patent application where Mr. Hoyle represented that he was a resident of New Orleans.
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`D.E. 32-1 at 4, 14. Like the other B.E. defendants that have previously argued the patent
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`application, Match fails to rebut or offer new information about Mr. Hoyle’s personal situation or
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`the circumstances that led him briefly to seek to establish residence in New Orleans when the
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`December 2011 patent application was filed. See Hoyle Decl. ¶ 4. Nor does Match present any
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`information that demonstrates Mr. Hoyle’s statements in this Court are inconsistent with the
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`representation made to the Patent Office about his residency. Mr. Hoyle is a resident of this
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`District and his presence and residence here have nothing at all do with a desire to manufacture
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`venue.
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`Next, Match points to dated information from a May 2000 B.E. business plan apparently
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`to establish that B.E. operates from outside the Western District of Tennessee. Nonsense. B.E.
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`plainly operates from within this District. For example, Match states “[o]f the three individuals
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`that play leading roles in B.E.’s management, only one is allegedly located in Tennessee, the
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`other two live and reside in Michigan.” D.E. 32-1 at 4. Only Mr. Hoyle plays a leading role in
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`the management of B.E. Hoyle Decl. ¶ 6. He is B.E.’s current CEO and has been since 2008.
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`Id. The presumed location of former employees or managers is of no relevance to this motion
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`and B.E.’s present connection to the Western District of Tennessee. The existence and
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`whereabouts of individuals identified in a nearly thirteen year old document changes none of
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`that.
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`There is no similarity between these facts and the facts of the cases on which Match
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`relies. See In re Microsoft Corp., 630 F.3d 1361, 1362 (Fed. Cir. 2011) (“[Plaintiff] is operated
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`from the United Kingdom by the patent’s co-inventor and company’s managing member” and
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`employed no individuals at its office in the Eastern District of Texas.); In re Hoffman-La Roche,
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`Inc., 587 F.3d 1333, 1336-37 (Fed. Cir. 2009) (“[T]here appears to be no connection between
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`this case and the Eastern District of Texas except that in anticipation of this litigation,
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`[plaintiff’s] counsel in California converted into electronic format 75,000 pages of documents
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`demonstrating conception and reduction to practice and transferred them to the offices of its
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`litigation counsel in Texas.”); In re Zimmer Holdings, 609 F.3d 1378, 1381 (Fed. Cir. 2010)
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`(“[Plaintiff] transported copies of its patent prosecution files from Michigan to its Texas office
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`space, which it shares with another of its trial counsel’s clients.”). B.E.’s contacts with the
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`forum were not manufactured for litigation and as a result, its choice of forum is entitled to
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`“substantial weight.”
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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 Match’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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`The Western District of Tennessee is more convenient for B.E. than the Northern District
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`of California. As previously explained, B.E. and its CEO, the inventor of the patents-in-suit,
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`reside within the District. B.E.’s corporate documents and records are here as well. Outside of
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`witness convenience, Match does not make an explicit argument that it will be inconvenienced
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`by conducting litigation in Tennessee. It is reasonable to require companies with the wealth and
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`size of Match to litigate in jurisdictions in which they regularly conduct business. See Lucent
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`Techs., Inc. v. Aspect Telecomms. Corp., 1997 WL 476356, at *4 (E.D. Pa. Aug. 20, 1997)
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`(finding it reasonable to force a public company with “$300 million a year in sales and
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`approximately $216 million in current assets, to travel to places where it is subject to jurisdiction
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`Case 2:12-cv-02834-JPM-tmp Document 37 Filed 02/22/13 Page 14 of 25 PageID 379
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`in order to defend its corporate interests”). Match is a subsidiary of a very wealthy company. As
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`a private company, B.E. does not have access to Match’s financial information; however,
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`Match’s parent company, IAC/Interactive Corp, reported for the fiscal quarter ending September
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`30, 2012 that Match generated $178,190,000 in revenue, with operating income of $56,078,000.
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`Declaration of Daniel Weinberg (“Weinberg Decl.”) Ex. A. As of February 21, 2013, Match’s
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`parent, IAC/Interactive Corp, had a market capitalization of $3,500,000,000, and to defend it in
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`this action, Match has retained lawyers from Nashville, Chicago, and Dallas. It is doubtful that
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`Match will suffer hardship or inconvenience by litigating in the Western District of Tennessee.
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`2.
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`Convenience of the Witnesses Weighs Against Transfer.
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`Match argues that the Northern District of California would be a “much more
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`convenient” venue because it “less burdensome and costly for the parties” and because “many of
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`Defendants’[2] witnesses are already located in California.” D.E. 32-1 at 12 (emphasis added).
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`None of Match’s potential witnesses are located within the Northern District of California and all
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`of Match’s potential witnesses that have technical knowledge relevant to the infringement of the
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`patent-in-suit are located in Dallas. See D.E. 32-1 at 17. Thus, in addition to being more
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`convenient to B.E. to litigate in this district, it is more convenient, and less disruptive for
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`Match’s Texas-witnesses to testify in this District than the Northern District of California.
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`Match’s reliance on the number of potential witnesses for the B.E. defendants is misplaced
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`because it is “the materiality and importance of the testimony of prospective witnesses, and not
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`merely the number of witnesses, [that] is crucial to this inquiry.” Rinks v. Hocking, 2011 WL
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`691242, at *3 (W.D. Mich. Feb. 16, 2011) (citing Viron Int’l Corp. v. David Boland, Inc., 237 F.
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`Supp. 2d 812, 816 (W.D. Mich. 2002)). Match has failed on this showing.
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`2 Presumably, Match is referring to other defendants accused of infringing B.E. patents in related
`actions pending before this Court, a reference it makes repeatedly to disguise the fact that it has
`no connection to the Northern District of California.
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`Case 2:12-cv-02834-JPM-tmp Document 37 Filed 02/22/13 Page 15 of 25 PageID 380
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`Match offers precious little about whom the witnesses are that will be inconvenienced by
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`the case staying in Tennessee, what they will say, and why they are important to this case. “To
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`sustain a finding on [the convenience of the witnesses] . . . the party asserting witness
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`inconvenience ‘has the burden to proffer, by affidavit or otherwise, sufficient details respecting
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`the witnesses and their potential trial testimony to enable the court to assess the materiality of
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`evidence and the degree of inconvenience.’” Rinks, 2011 WL 691242, at *3 (quoting Koh v.
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`Microtek Int’l, Inc., 250 F. Supp. 2d 627, 636 (E.D. Va. 2003)); Samsung Elecs. Co. v. Rambus,
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`Inc., 386 F. Supp. 2d 708, 718 (E.D. Va. 2005) (same). District courts typically require
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`affidavits or declarations that contain admissible evidence setting forth “who the key witnesses
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`will be and what their testimony will generally include.” Rinks, 2011 WL 691242, at *3 (quoting
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`Adoma v. Univ. of Phoenix, Inc., 711 F. Supp. 2d 1142, 1151 (E.D. Cal. 2010)); see also Board
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`of Trs. v. Baylor Heading & Air Conditioning, Inc., 702 F. Supp. 1253, 1258 (E.D. Va. 1988)
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`(“Witness convenience . . . cannot be assessed in the absence of reliable information identifying
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`the witnesses involved and specifically describing their testimony.”). Match provides none of
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`that.
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`a. Party Witnesses.
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`Match claims that its employees who are likely to be witnesses would be inconvenienced
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`if the case remains in Tennessee, but offers no particularized information enabling the Court to
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`ascertain how much weight to give the claim of inconvenience. Match fails to identify any
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`witnesses by name, position title, the subject matter on which they will testify, or the burdens
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`they would endure by traveling to Tennessee to testify. Match merely states that “[m]any of the
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`Defendants’ [potential] witnesses are already located in California.” D.E. 32-1 at 12. “[A] party
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`that ‘fails to identify the witnesses’ and ‘what their testimony would be’ cannot establish that a
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`particular forum is inconvenient.” Esperson v. Trugreen Ltd. P’ship, 2010 WL 4362794, at *8
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`Case 2:12-cv-02834-JPM-tmp Document 37 Filed 02/22/13 Page 16 of 25 PageID 381
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`(W.D. Tenn. Oct. 5, 2010) (quoting Roberts Metals, Inc. v. Florida Props. Mktg. Grp., Inc., 138
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`F.R.D. 89, 93 (N.D. Ohio 1991), aff’d per curiam, 22 F.2d 1104 (6th Cir. 1994)). Match’s vague
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`representations concerning witness inconvenience do not meaningfully aid in the evaluation of
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`this factor. It is “the materiality and importance of the testimony of prospective witnesses, and
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`not merely the number of witnesses, [that] is crucial to this inquiry.” Rinks, 2011 WL 691242 at
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`*3 (citing Viron Int’l Corp. v. David Boland, Inc.,