Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 1 of 11 PageID 414
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`DEFENDANT.
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`DEFENDANT MATCH.COM L.L.C.’S
`REPLY IN SUPPORT OF MOTION TO TRANSFER VENUE
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`INTRODUCTION.
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`I.
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`Despite the fact that B.E. is a seventy-four (74) person company, its opposition to
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`Match.com’s Motion to Transfer focuses solely on a single individual – Mr. Hoyle. B.E.’s
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`Response disregards its other members, its history of operations in Michigan, and the stronger
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`ties it has to multiple other jurisdictions, and remarkably argues that its supposed single and
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`recent tie to this District – Mr. Hoyle – sufficiently outweighs all other conveniences obtained by
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`transfer to justify denial of Match.com’s Motion.
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`Because most of the witnesses and evidence pertaining to this case are closer to the
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`transferee venue, with few or no convenience factors favoring B.E.’s chosen forum, Match.com
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`respectfully requests that the Court grant its Motion and transfer this case to the Northern District
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`of California, or alternatively, to the Northern District of Texas. In re Biosearch Techs. Inc., No.
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`995, 2011 WL 6445102, at *3 (Fed. Cir. Dec.22, 2011) (granting writ and ordering transfer).
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 1
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`Case No. 2:12-cv-02834-JPM-tmp
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`B.E. TECHNOLOGY, L.L.C.,
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`PLAINTIFF,
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`v.
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`MATCH.COM L.L.C.,
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 2 of 11 PageID 415
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`II.
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`ARGUMENT & AUTHORITIES.
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`A.
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`B.E.’s Choice of Forum is Not Entitled to Deference.
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`1.
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`B.E. Inappropriately Applies the Wrong Legal Standard.
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`B.E. improperly argues that its choice of forum is entitled to “substantial weight,” and
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`that Match.com cannot satisfy its burden of making a strong showing that transfer is required.
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`(Dkt. No. 37 at 5, 8). As Magistrate Judge Claxton recently found, however, “courts in this
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`circuit do not assign plaintiff’s choice [of forum] paramount importance.” Esperson v.
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`Truegreen Ltd. P’ship, No. 2:10-cv-02130, 2010 WL 4362794, at * 6 (W.D. Tenn. Oct. 5, 2010),
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`adopted 2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010) (granting motion to transfer). Instead,
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`they “simply treat it as one factor to be weighed equally with other factors.” Id. Furthermore,
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`movants seeking transfer must establish only that “the balance of the transfer factors
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`preponderate in favor of transfer.” Id. at * 4. Accordingly, B.E.’s arguments that Match.com
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`must satisfy some heightened standard and that B.E.’s choice of forum is entitled to substantial
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`deference applies the wrong legal standard.
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`2.
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`Contrary to B.E.’s Self-Serving Arguments, This District is Not B.E.’s
`Home Forum.
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`B.E.’s choice of forum is also not entitled to deference because this District is not B.E.’s
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`home forum. B.E. has no history of operations in this district. Although Mr. Hoyle recently
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`decided to reside permanently in this district, B.E. is the plaintiff, not Mr. Hoyle. Seventy-three
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`of B.E’s other members, which B.E. conveniently failed to identify or discuss, reside outside this
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`District. The Western District of Tennessee is “convenient” for exactly one person – Mr. Hoyle.
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`(Dkt. 32-1 at 4-5.)
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`Furthermore, despite B.E.’s claims that it is an established Tennessee company, the
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`evidence shows that it is a loosely-organized company that has been managed from Michigan,
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 2
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 3 of 11 PageID 416
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`where it has maintained a registered office for more than a decade, and where its accountant,
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`Randall Rupp, former managing member, Mark McKinley, and patent attorney, James D.
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`Stevens, all reside. (Dkt. 32-1 at 4-5). Mr. Hoyle’s claims that B.E’s failure to switch its
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`principal place business from Michigan to Tennessee in the six years since Mr. Hoyle
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`“relocated” to Tennessee amounted to a mere oversight lacks credibility. The only reasonable
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`inference that can be drawn from B.E’s activities is that it moved its principal place of business
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`to this District in anticipation of opposing motions to transfer pursuant to Section 1404(a).
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`Accordingly, B.E.’s contacts with this District are entitled to no weight in the transfer analysis.
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`In re Microsoft Corp., 630 F.3d 1361, 1364–65 (Fed. Cir. 2011) (actions to establish contacts in
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`Texas were venue manipulation and entitled to no weight).
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`a.
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`Mr. Hoyle’s Personal Contacts are Not Attributable to B.E.
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`Because B.E. has no history of operations in this District, B.E.’s Response focuses on
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`Mr. Hoyle’s personal and family contacts. These contacts, however, are not attributable to B.E.
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`and are not relevant to the transfer analysis. There is no evidence that B.E. and Mr. Hoyle are
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`alter egos. Before B.E. moved its principal place of business to Mr. Hoyle’s residence (one day
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`prior to initiating litigation in this District), B.E. and Mr. Hoyle always maintained separate
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`addresses. (Dkt. 32-4 at 2, (Ex. A-2)). Therefore, Mr. Hoyle’s personal contacts should be given
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`only minimal consideration in the transfer analysis.
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`b.
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`B.E.’s Statements Regarding its Contacts are Not Credible.
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`B.E.’s misleading statements regarding its purported contacts with this forum are entitled
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`to little or no weight. The overwhelming majority of its statements are inconsistent with pre-suit
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`statements it made to the State of Michigan and the United States Patent and Trademark Office.
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 3
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 4 of 11 PageID 417
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`Misleading Claim 1: “Mr. Hoyle has been physically present in this District since 2006, and
`B.E. since at least 2008.”
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`The assertion regarding Mr. Hoyle’s presence in this District is contradicted by a
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`document B.E. filed with the United States Patent Office in 2011, which states that Mr. Hoyle
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`was a resident of New Orleans, Louisiana. (Dkt. 32-1 at 13, Ex. A-3). The assertion is further
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`contradicted by Mr. Hoyle’s declaration, which states that he “took steps to establish residence
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`[in Louisiana] while my non-B.E. work required my presence in the Memphis area.” (Dkt. 37-1
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`at ¶ 4).
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`B.E.’s assertions regarding its presence in this District are also contradicted in numerous
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`other ways. First, B.E. offered no documentary evidence showing that it has ever done business
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`in Tennessee. Second, Michigan is the only state in which B.E. filed annual statements between
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`2008 and 2012. Third, in 2011, B.E. filed a document with the United States Patent Office that
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`identified Michigan as the location of its principal office. Fourth, Mr. Hoyle filed a Power of
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`Attorney with the Patent Office in 2011 that – again – identified Michigan as B.E.’s principal
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`office. Fifth, when B.E. registered to do business in Tennessee in September 2012, it answered
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`the question regarding prior business operations in the State by marking “N/A.” (Dkt. 32-6 at 2
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`(Ex. A-4)). Finally, B.E. held itself out as a Michigan based corporation with a Michigan
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`based managing member in public filings it made with the Michigan Secretary of State as
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`recently as February 10, 2013.1
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`B.E. either submitted incorrect statements to the Michigan Secretary of State, the
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`Tennessee Secretary of State, and the United States Patent and Trademark Office or it
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`1 This filing occurred after Match.com filed its Motion to Transfer, but before B.E. filed its
`Response. B.E.'s Response fails to address this filing. (See Exhibit A-1 attached hereto).
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 4
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 5 of 11 PageID 418
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`mischaracterized the strength of its ties to Tennessee in opposing Match.com’s Motion to
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`Transfer.
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`Misleading Claim 2: “B.E.’s documents, including those relating to the conception and
`reduction to practice of the inventions disclosed in those patents are physically located in
`Cordova, Tennessee, and have been located in the Western District of Tennessee since I
`moved here in 2006.”
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`The assertion that B.E.’s documents are located in this District is only partially true.
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`Mr. Hoyle’s declaration confirms that B.E. maintains a registered office in Michigan, and that
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`B.E.’s accountant, Randall Rupp, resides there. (Dkt. 37-1 at ¶ 5). Furthermore, B.E. does not
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`dispute that its patent prosecution attorney, James D. Stevens, lives in Michigan. (Dkt. 32-1 at 5,
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`Ex. A-9). The only reasonable inference based on these facts is that B.E.’s financial records, tax
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`records, and patent prosecution files all reside in Michigan or were located in Michigan until
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`B.E. decided to initiate its litigation strategy.
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`In similar circumstances, where patent owners have colored the facts in an attempt to
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`make their contacts with a forum seem more substantial, the Federal Circuit has not hesitated to
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`compel transfer. For example, in In re Zimmer Holdings, Inc., MedIdea’s business was centered
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`in Michigan, yet it established its principal place of business in Texas shortly before filing suit.
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`In re Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010). When Zimmer moved to
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`transfer, MedIdea argued that transfer was inappropriate because it filed suit in its home
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`jurisdiction. Id. The Federal Circuit ordered transfer, concluding that MedIdea was “attempting
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`to game the system by artificially seeking to establish venue by sharing office space with another
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`of the trial counsel’s clients.” Id. Like MedIdea, B.E. has no history of operations in this
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`District and its principal office in Mr. Hoyle’s residence is as recent and ephemeral as MedIdea’s
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`shared office space in the Eastern District of Texas. Id.
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 5
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 6 of 11 PageID 419
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`B.
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`The Private Interest Factors Favor Transfer.
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`1.
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`The Convenience of Relevant Witnesses Favors Transfer.
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`a.
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`The Location of Third Party Witnesses Favors Transfer.
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`B.E. asserts that the testimony of third party witnesses is irrelevant to the validity of the
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`patent-in-suit, and irrelevant to the transfer analysis. Contrary to B.E.’s arguments, however, the
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`Federal Circuit has acknowledged that prior art inventors’ testimony is relevant, and the location
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`of prior art inventors in the transferee district weighs in favor of granting a motion to transfer. In
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`re: Microsoft Corp., 630 F.3d 1361, 1362 (Fed. Cir. 2011) (granting writ of mandamus in-part
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`because the defendant’s witnesses relating to prior art were located in the transferee district).
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`B.E. also argues that the testimony of prior art witnesses is irrelevant to the validity of the
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`patent-in-suit because “prior art inventor testimony many not be used to vary the words of the
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`alleged prior art.” B.E.’s argument misapprehends the primary purpose of obtaining deposition
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`and trial testimony from prior art witnesses. Prior art witnesses are often the only source of
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`evidence regarding commercial products that may qualify as prior art under 35 U.S.C. § 102(g),
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`and such products often include addition invalidating feature that are not described in prior art
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`patents or publications. The availability of compulsory process to call prior art witnesses at trial
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`is highly relevant to the transfer analysis, and the location of Match.com’s third party prior art
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`witnesses in or near the Northern District of California weighs heavily in favor of transfer.
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`b.
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`The Cost and Convenience of Attendance for Willing
`Witnesses Favors Transfer.
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`B.E. argues that Match.com’s motion must be denied because it did not identify its trial
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`witnesses by name, title, location, and the content of their testimony. B.E.’s argument misstates
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`the law and would remarkably require a defendant to marshal its evidence and proof before
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`discovery ever took place in a case. The court in Koh v. Microtek International, Inc., which B.E.
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 6
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`cited in its Response, recognized that courts may infer that witnesses are located near the center
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`of the allegedly infringing activities, and that witnesses involved in the design and development
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`of accused products are material to the transfer analysis. The design and development of
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`Match.com’s allegedly infringing instrumentalities took place in Texas, and the overwhelming
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`majority of Match.com’s co-Defendants developed their systems in California. (Dkt. 32-1 at
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`6-7). Accordingly, both the Northern District of Texas and the Northern District of California
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`are more convenient forums for these witnesses.
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`Because Match.com filed its Motion to Transfer shortly after answering B.E’s complaint
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`and before discovery even began in this case, it is unreasonable – and contrary to Federal Circuit
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`precedent – for B.E. to demand that Match.com “identify any witnesses by name, position, title,
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`location, the subject matter on which they will testify, or the burdens they would endure by
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`traveling to Tennessee.” As the Federal Circuit held in In re Genentech, “[r]equiring a defendant
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`to show that the potential witness has more than relevant and material information at this point in
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`the litigation or risk facing denial of transfer on that basis is unnecessary.” In re Genentech, Inc.,
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`566 F.3d 1338, 1343-44 (Fed. Cir. 2009).
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`c.
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`the Only
`is
`Mr. Hoyle
`Inconvenienced by a Transfer.
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`Individual Who Would be
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`B.E. argues that any benefits that a transfer would convey to Match.com and third party
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`witnesses would be offset by inconveniences to B.E.’s witnesses. This argument is misleading
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`and improperly conflates its convenience with the convenience of Mr. Hoyle. Mr. Hoyle is only
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`1/74th of B.E. (Dkt. 32-6 at 2 (Ex. A-4)) B.E. offers no evidence showing that, as a whole, it
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`would be any more or less convenient for B.E. if Match.com’s Motion is granted. In fact, B.E.
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`employed Californian lawyers to litigate this dispute.
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 7
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 8 of 11 PageID 421
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`Furthermore, B.E. overstates the extent of the alleged inconvenience to Mr. Hoyle. The
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`involvement of Mr. Hoyle in this case is likely to be limited to (1) serving as a trial witness and,
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`(2) sitting for a deposition, which can easily be taken in Tennessee even if this case is
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`transferred. Mr. Hoyle may provide some guidance to B.E.’s counsel on the direction of this
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`case, but B.E’s counsel is located in the Northern District of California.
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`Finally, B.E. argument that transfer is improper in light of Match.com’s wealth is
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`improper. The juxtaposition of Match.com’s finances with those of Mr. Hoyle is improper and
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`irrelevant to the transfer analysis. Mr. Hoyle is not the Plaintiff, and B.E. has offered no
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`evidence regarding its financial condition or any burdens that it would face if the matter were
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`litigated in California or Texas. Mr. Hoyle’s purported inconvenience as a trial witness is minor
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`when balanced against the cost and inconvenience to the numerous other non-party witnesses
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`with relevant knowledge, who all reside in the Northern District of California.
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`C.
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`The Western District of Tennessee Has No More of an Interest in this
`Lawsuit than Any Other Forum.
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`B.E. asserts that “this District has a local interest in deciding whether one of its resident’s
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`patent rights have been violated and awarding an appropriate amount of damages.” (Dkt. 37 at
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`18). Once again, this argument confuses Mr. Hoyle, who is not the patent owner, with B.E.,
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`which has only an ephemeral presence in this District. B.E. also suggests that this District has a
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`local interest in deciding its claims because Match.com makes its website available to
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`Tennesseans. The Federal Circuit has unequivocally rejected this argument. The citizens of this
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`District do not have a substantial interest in this litigation merely because Match.com’s website
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`is available in Tennessee, as it is throughout the entire country. In re TS Tech USA Corp. 551,
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`F.3d 1315, 1321 (Fed. Cir. 2008).
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 8
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 9 of 11 PageID 422
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`D.
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`Transfer to the Northern District of California or the Northern District of
`Texas Would Not Delay Disposition of this Matter.
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`B.E.’s claim that delay to trial is an important factor in this case because it implicates its
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`right to exclude others from practicing its invention and/or its ability to assert its patents against
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`others is, at best, specious. B.E. has not moved for a preliminary injunction in this case, nor
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`would transfer prevent such a motion. Furthermore, transfer would not prevent B.E. from
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`asserting its patent rights against unidentified third parties. Finally, B.E. admits that transfer to
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`the Northern District of Texas would not significantly delay trial – the median time to trial in that
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`District is only one month longer than the time to trial in this District. (Dkt. 37 at 17).
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`Accordingly, this factor is neutral and cannot weigh for or against transfer under these facts.
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 9
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 10 of 11 PageID 423
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`Dated: March 11, 2013
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`Respectfully submitted,
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`By: /s/ Jonathan D. Rose
`Jonathan D. Rose (No. 20967)
`jrose@babc.com
`BRADLEY ARANT BOULT CUMMINGS LLP
`1600 Division Street, Suite 700
`Nashville, Tennessee 37203
`(615) 252-2308
`(615) 252-6308 Facsimile
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`Steven G. Schortgen, pro hac vice
`steve.schortgen@klgates.com
`Jennifer Klein Ayers, pro hac vice
`jennifer.ayers@klgates.com
`K&L GATES LLP
`1717 Main Street, Suite 2800
`Dallas, TX 75201
`(214) 939-5500
`(214) 939-5849 Facsimile
`
`Sanjay K. Murthy, pro hac vice
`sanjay.murthy@klgates.com
`Christopher E. Hanba, pro hac vice
`christopher.hanba@klgates.com
`K&L GATES LLP
`70 W. Madison Street
`Suite 3100
`Chicago, Illinois 60602-4207
`(312) 372-1121
`(312) 827-8000 Facsimile
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`ATTORNEYS FOR DEFENDANT
`MATCH.COM L.L.C.
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 10
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`Case 2:12-cv-02834-JPM-tmp Document 40 Filed 03/11/13 Page 11 of 11 PageID 424
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`CERIFICATE OF SERVICE
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`I hereby certify that on March 11, 2013, the foregoing is being served the foregoing via
`the Court’s Electronic Filing System, upon the following:
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`Craig Robert Kaufman
`Robert Edward Freitas
`Hsiang Hong Lin
`Qudas B. Olaniran
`Daniel J. Weinberg
`FREITAS TSENG & KAUFMAN, LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`
`Richard M. Carter
`Adam Calhoun Simpson
`MARTIN TATE MORROW & MARSTON
`International Place, Tower II
`6410 Poplar Ave., Ste. 1000
`Memphis, TN 38119
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`
`
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`
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` /s/ Jonathan D. Rose
`Jonathan D. Rose
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`DEFENDANT MATCH.COM’S REPLY IN
`SUPPORT OF MOTION TO TRASNFER VENUE – Page 11