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Case 2:12-cv-02834-JPM-tmp Document 45 Filed 07/16/13 Page 1 of 32 PageID 440
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
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`B.E. TECHNOLOGY, LLC,
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`Plaintiff,
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`MATCH.COM LLC,
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`Defendant.
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` No.: 2:12-cv-02834-JPM-tmp
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`
`ORDER DENYING MOTION TO TRANSFER VENUE
`
`
`
`Before the Court is Defendant Match.com LLC’s (“Defendant”
`or “Match.com”) Motion to Transfer Venue, filed February 5,
`2013. (ECF No. 32.) For the reasons that follow, the Motion is
`DENIED.
`I. BACKGROUND
`This case concerns Defendant Match.com’s alleged
`infringement of United States Patent No. 6,628,314 (the “‘314
`patent”). (ECF No. 1.) Plaintiff B.E. Technology, LLC
`(“Plaintiff or “B.E.”), is the assignee of the ‘314 patent (ECF
`No. 37 at 2), currently owning “all right, title, and interest
`in the ‘314 patent, and has owned all right, title, and interest
`throughout the period” of the alleged infringement (ECF No. 1
`¶ 10).
`B.E. alleges that Match.com infringed the ‘314 patent “by
`using a method of providing demographically targeted advertising
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`Case 2:12-cv-02834-JPM-tmp Document 45 Filed 07/16/13 Page 2 of 32 PageID 441
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`that directly infringes at least Claim 11 of the ‘314 patent
`either literally or under the doctrine of equivalents.” (Id.
`¶ 11.)
`B.E. filed a Complaint in this Court on September 22, 2012.
`(ECF No. 1.) Match.com filed its Answer to the Complaint and
`Counterclaim on December 31, 2012 (ECF No. 19), and its Motion
`to Transfer Venue on February 5, 2013 (ECF No. 32). B.E. filed
`its Memorandum in Opposition to Defendant’s Motion to Transfer
`Venue on February 22, 2013. (ECF No. 37.) With leave of Court,
`Match.com filed a Reply Memorandum in Support of Its Motion to
`Transfer on March 11, 2013. (ECF No. 40.) On February 11,
`2013, Match.com filed a Motion to Stay pending resolution of its
`Motion to Transfer Venue. (ECF No. 34.) The Court granted
`Match.com’s Motion to Stay on February 12, 2013. (ECF No. 35.)
`Match.com seeks to transfer this case to the Northern
`District of California, or, alternatively, to the Northern
`District of Texas, where its headquarters are located. (ECF No.
`32-1 at 1.) To support its Motion, Match.com contends that
`“cost and convenience of attendance” for witnesses and the
`“interests of justice” and judicial efficiency favor transfer to
`the Northern District of California. (Id.) Match.com argues
`that it “has already identified multiple non-party witnesses
`likely to have relevant information” regarding the patent-in-
`suit who are located in the Northern District of California.
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`(Id.) Further, Match.com asserts that it has no “offices
`employees, documents, computer source code, or any other
`business operations” in the Western District of Tennessee. (Id.
`at 1.)
`Alternatively, Match.com requests transfer to the Northern
`District of Texas, which is its principal place of business, the
`location of “all of [its] relevant documents,” and the location
`of “all of [its] employees with knowledge relevant to this
`litigation.” (Id. at 2.)
`B.E. opposes Match.com’s Motion to Transfer. B.E. is a
`limited-liability company incorporated in Delaware. (ECF No. 1
`¶ 2.) B.E. was originally registered in Michigan, but formally
`registered to conduct business in Tennessee in September 2012.
`(ECF No. 37 at 2.) B.E. contends that Memphis, Tennessee, is
`its principal place of business. (ECF No. 1 ¶ 2.) Martin David
`Hoyle (“Hoyle”), B.E.’s founder and CEO, is the named-inventor
`of the ‘314 patent. (ECF No. 37 at 1, 2.) Hoyle asserts he has
`been a resident of Tennessee since April, 2006. (Id.)
`B.E. argues that transfer is inappropriate because it has
`substantial connections with this district. B.E. argues that
`Hoyle has been “present in this District since 2006, and B.E.
`since at least 2008,” and that this district is B.E.’s principal
`place of business, from which “Hoyle controls and directs B.E.’s
`business activities.” (Id. at 5-6.) Further, B.E. argues that
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`its corporate documents, including documents relating to the
`“conception and reduction to practice” of the patent-in-suit,
`are located in this District. (Id. at 6.)
`II. STANDARD
`Match.com moves the Court to transfer this case to the
`Northern District of California, or, alternatively, to the
`Northern District of Texas, pursuant to 28 U.S.C. § 1404(a).
`(ECF No. 32.) The statute provides that “[f]or the convenience
`of the parties and witnesses, in the interest of justice, a
`district court may transfer any civil action to any other
`district or division where it might have been brought.” 28
`U.S.C. § 1404(a). “As the permissive language of the transfer
`statute suggests, district courts have ‘broad discretion’ to
`determine when party ‘convenience’ or ‘the interest of justice’
`make a transfer appropriate.” Reese v. CNH Am. LLC, 574 F.3d
`315, 320 (6th Cir. 2009).
`In determining whether to transfer a case under § 1404(a),
`the court must first determine whether the claim could have been
`brought in the transferee district. 28 U.S.C. § 1404(a)
`(allowing transfer to any other district in which the claim
`“might have been brought”). Once the court has made this
`threshold determination, the court must then determine whether
`party and witness “convenience” and “the interest of justice”
`favor transfer to the proposed transferee district. Reese, 574
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`F.3d at 320; Esperson v. Trugreen Ltd., No. 2:10-cv-02130-STA-
`cgc, 2010 WL 4362794, at *5 (W.D. Tenn. Oct. 5, 2010), adopted
`2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010). In weighing these
`statutory factors, the court may still consider the private- and
`public-interest factors set forth in the pre-Section 1404(a)
`case, Gulf Oil v. Gilbert, 330 U.S. 501, 508-09 (1947), but
`courts are not burdened with “preconceived limitations derived
`from the forum non conveniens doctrine.” Norwood v.
`Kirkpatrick, 349 U.S. 29, 31 (1955) (quoting All States Freight
`v. Modarelli, 196 F.2d 1010, 1011 (3d Cir. 1952)) (internal
`quotation marks omitted); Esperson, 2010 WL 4362794, at *5. The
`United States Court of Appeals for the Sixth Circuit has stated
`that when deciding “a motion to transfer under § 1404(a), a
`district court should consider the private interests of the
`parties, including their convenience and the convenience of
`potential witnesses, as well as other public-interest concerns,
`such as systemic integrity and fairness, which come under the
`rubric of ‘interests of justice.’” Moore v. Rohm & Haas Co.,
`446 F.3d 643, 647 n.1 (6th Cir. 2006).
`Additionally, the “interest of justice” factor has been
`interpreted broadly by courts, influenced by the individualized
`circumstances of each case. The United States Court of Appeals
`for the Federal Circuit has set forth a non-exhaustive list of
`pertinent public-interest factors:
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`The public interest factors include (1) the
`administrative
`difficulties
`flowing
`from
`court
`congestion; (2) the local interest in having localized
`interests decided at home; (3) the familiarity of the
`forum with the law that will govern the case; and (4)
`the avoidance of unnecessary problems of conflicts of
`laws or in the application of foreign law.
`
`In re Acer Am. Corp., 626 F.3d 1252, 1254 (Fed. Cir. 2010); see
`also In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir.
`2009) (finding the local-interest factor weighed heavily in
`favor of transfer); Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623, 633 (W.D. Mich. 2009) (considering
`additional factors such as the relative docket congestion of the
`transferor and transferee districts).
`Initially, B.E. argues that there is a strong presumption
`in favor of its choice of forum, and that its choice of forum
`should not be disturbed unless the defendant carries its burden
`to demonstrate that the balance of convenience strongly favors
`transfer. (ECF No. 37 at 4-8.) B.E.’s argument is erroneously
`derived from the more stringent forum-non-conveniens standard.
`Compare Hunter Fan Co. v. Minka Lighting, Inc., No. 06–2108
`M1/P, 2006 WL 1627746 (W.D. Tenn. June 12, 2006) (applying the
`appropriate private- and public-interest factors but relying on
`the forum-non-conveniens doctrine to accord strong deference to
`the plaintiff’s choice of forum), with OneStockDuq Holdings, LLC
`v. Becton, Dickinson, & Co., No. 2:12–cv–03037–JPM–tmp, 2013 WL
`1136726, at *3 (W.D. Tenn. Mar. 18, 2013), and Roberts Metals,
`
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`Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89, 92-93
`(N.D. Ohio 1991) (recognizing defendants need to make a lesser
`showing to overcome plaintiff’s choice of forum under
`§ 1404(a)), aff’d per curiam, 22 F.3d 1104 (6th Cir. 1994).
`Although there is a strong presumption in favor of the
`plaintiff’s choice of forum under the doctrine of forum non
`conveniens, under § 1404(a), a plaintiff’s choice of forum may
`be considered, but is entitled to less deference. Discussing
`the difference between the common-law doctrine of forum non
`conveniens and the federal transfer-of-venue statute in Norwood,
`the Supreme Court stated,
`When Congress adopted § 1404(a), it intended to
`do more than just codify the existing law on forum non
`conveniens. . . . [W]e believe that Congress, by the
`term “for the convenience of parties and witnesses, in
`the interest of justice,” intended to permit courts to
`grant
`transfers
`upon
`a
`lesser
`showing
`of
`inconvenience. This is not to say that the relevant
`factors have changed or that the plaintiff’s choice of
`forum is not to be considered, but only that the
`discretion to be exercised is broader.
`
`Norwood, 349 U.S. at 32; see also Lemon v. Druffel, 253 F.2d
`680, 685 (6th Cir. 1958) (“The choice of the forum by the
`petitioner is no longer as dominant a factor as it was prior to
`the ruling in Norwood v. Kirkpatrick[.]”); Esperson, 2010 WL
`4362794, at *5-6.
`Defendant’s burden under § 1404(a) is to demonstrate that a
`change of venue to the transferee district is warranted. See
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`Eaton v. Meathe, No. 1:11-cv-178, 2011 WL 1898238, at *2 (W.D.
`Mich. May 18, 2011); Amphion, Inc. v. Buckeye Elec. Co., 285 F.
`Supp. 2d 943, 946 (E.D. Mich. 2003); Roberts Metals, Inc., 138
`F.R.D. at 93. “Merely shifting the inconvenience from one party
`to another does not meet Defendant’s burden.” McFadgon v. Fresh
`Mkt., Inc., No. 05-2151-D/V, 2005 WL 3879037, at *2 (W.D. Tenn.
`Oct. 21, 2005). “[T]he movant must show that the forum to which
`he desires to transfer the litigation is the more convenient one
`vis a vis the Plaintiff’s initial choice.” Roberts Metals,
`Inc., 138 F.R.D. at 93 (quoting Mead Corp. v. Oscar J. Boldt
`Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981)) (internal
`quotation marks omitted). If the court determines that the
`“balance between the plaintiff’s choice of forum and defendant’s
`desired forum is even, the plaintiff’s choice of [forum] should
`prevail.” Stewart v. Am. Eagle Airlines, Inc., No. 3:10-00494,
`2010 WL 4537039, at *2 (M.D. Tenn. Nov. 3, 2010).
`III. ANALYSIS
`As an initial matter, Match.com asserts that it consents to
`jurisdiction in the Northern District of California. (See ECF
`No. 32 at 10.) While Match.com makes no explicit argument that
`the case could have been brought in the Northern District of
`Texas, the Court finds that jurisdiction there would be proper,
`as it is Match.com’s principal place of business and the
`allegedly infringing acts took place there. B.E. does not
`
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`dispute that the instant case could have been brought in either
`proposed transferee district. (See ECF No. 37 at 4.) The Court
`agrees that B.E. could have brought suit in the Northern
`District of California or the Northern District of Texas.
`Therefore, the only issue remaining is whether the balance of
`the statutory factors — the convenience to the witnesses, the
`convenience to the parties, and the interest of justice — favors
`transfer to the Northern District of California or the Northern
`District of Texas. The Court will address each statutory factor
`separately and balance these factors to determine whether
`transfer to the Northern District of California or the Northern
`District of Texas is proper pursuant to § 1404(a).
`A. Convenience of the Witnesses
`When asserting that a transferee district is more
`convenient for witnesses, a party “must produce evidence
`regarding the precise details of the inconvenience” of the forum
`chosen by the plaintiff. Esperson, 2010 WL 4362794, at *8. To
`satisfy its burden, the movant must do “more than simply
`assert[] that another forum would be more appropriate for the
`witnesses; he must show that the witnesses will not attend or
`will be severely inconvenienced if the case proceeds in the
`forum district.” Id. (quoting Roberts Metals, Inc., 138 F.R.D.
`at 93). Further, “[t]o sustain a finding on [this factor] . . .
`the party asserting witness inconvenience has the burden to
`
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`proffer, by affidavit or otherwise, sufficient details
`respecting the witnesses and their potential testimony to enable
`a court to assess the materiality of evidence and the degree of
`inconvenience.” Eaton, 2011 WL 1898238, at *3 (quoting Rinks v.
`Hocking, 1:10-CV-1102, 2011 WL 691242, at *3 (W.D. Mich. Feb.
`16, 2011)) (internal quotation marks omitted). It is the
`“materiality and importance of the testimony of prospective
`witnesses, and not merely the number of witnesses,” that is
`crucial to this inquiry. Rinks, 2011 WL 691242, at *3.
`Match.com argues that considerations of witness convenience
`and cost weigh in favor of transfer to the Northern District of
`California. (ECF No. 32-1 at 2.) Match.com contends that the
`majority of its potential third-party witnesses are located in
`the Northern District of California. (Id. at 5-6.) Match.com
`also argues that “several other Defendants have identified at
`least eight additional patents constituting potential
`invalidating prior art with inventors and/or assignees in
`California.” (Id. at 6-7.) Alternatively, Match.com argues
`that the Northern District of Texas is the more convenient forum
`because all of its “employees with knowledge relevant to this
`litigation” are located there. (Id.)
`
`In response, B.E. does not affirmatively identify any
`witnesses it may call, but states that the Western District of
`Tennessee is more convenient for it than the Northern District
`
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`of California. (ECF No. 37 at 8.) As Hoyle is the inventor of
`the patent-in-suit and a party, it is presumed his testimony
`will be necessary and material to B.E.’s case. B.E. states that
`Hoyle is located in the Western District of Tennessee. (Id. at
`1-2.) B.E. also contends that the Western District of Tennessee
`is the more convenient forum for Match.com’s Texas-based
`employees. (Id. at 9.)
`Because the convenience of party and non-party witnesses is
`given different weight, the Court will analyze the witnesses
`separately. See Azarm v. $1.00 Stores Servs., Inc., No. 3:08-
`1220, 2009 WL 1588668, at *4 (M.D. Tenn. June 5, 2009) (“[T]he
`convenience of potential non-party witnesses, who are not
`subject to the control of the parties, is a particularly weighty
`consideration, because it is generally presumed that party
`witnesses will appear voluntarily in either jurisdiction, but
`non-party witnesses, with no vested stake in the litigation, may
`not.”).
`
`1. Party Witnesses
`Match.com does not present any argument or evidence showing
`that its party witnesses are located in the Northern District of
`California. Having established no connection to the Northern
`District of California regarding party witnesses, this factor
`does not weigh in favor of transfer.
`
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`Instead, Match.com relies on the declaration of Clark
`Rothrock, its Chief Technical Officer, who states, “[t]he
`employees who design and develop the accused instrumentalities
`are located in Dallas, Texas.” (Rothrock Decl., ECF No. 32-28,
`¶ 5.) Rothrock also states that “the employees responsible for
`maintaining” all of Match.com’s “sales, financial, or marketing
`documentat[ion]” are located in Dallas, Texas. (Id. ¶ 6.) In
`its Reply, Match.com defends its general identification of
`potential employee-witnesses by stating that identifying its
`witnesses with more specificity at this early stage in the
`litigation would be “unreasonable” and “contrary to Federal
`Circuit precedent.” (ECF No. 40 at 7 (citing In re Genentech,
`Inc., 566 F.3d 1338, 1343-44 (Fed. Cir. 2009)).)
`Match.com notes generally that travel to the transferor
`district would impose an inconvenience for its witnesses, but
`does not provide any evidence showing that its employees will be
`unwilling to testify in the Western District of Tennessee if
`asked to do so. (ECF No. 32-1 at 11.) Further, Match.com does
`not state that the absence of these potential employee-witnesses
`from its offices will have an adverse effect on Match.com’s
`operations. See Esperson, 2010 WL 4362794, at *8. Courts have
`noted that “normally a corporation is able to make its employees
`available to testify when needed.” Clark v. Dollar Gen. Corp.,
`No. 3-00-0729, 2001 U.S. Dist. LEXIS 25975, at *9 (M.D. Tenn.
`
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`Mar. 6, 2001); see also Zimmer Enters. v. Atlandia Imps., Inc.,
`478 F. Supp. 2d 983, 991 (S.D. Ohio Mar. 14, 2007) (finding that
`the convenience of witnesses who are employees “will not
`ordinarily be considered, or at least, that the convenience of
`such employees will not generally be given the same
`consideration as is given to other witnesses”). Accordingly, it
`appears that Match.com’s employees will be able to attend absent
`any evidence to the contrary.
`Therefore, regarding Match.com’s potential employee-
`witnesses, Match.com does not satisfy its burden. Match.com
`argues that the burden of proceeding in the Northern District of
`Texas is reduced when comparing its own employee witnesses and
`Hoyle, and the burden is the same when comparing travel to
`either proposed transferee district for B.E.’s potential
`witnesses whom Match.com believes reside in Michigan or
`Louisiana. (ECF No. 32-1 at 9, 13.) B.E. asserts, however,
`that it has no witnesses in Michigan or Louisiana, and that
`Hoyle is located in the transferor district. (ECF No. 37 at 6,
`9-11.) Accordingly, it is equally inconvenient for B.E.’s
`witness, Hoyle, to travel to the Northern District of Texas.
`The Court agrees that Match.com’s employees related to the
`development and operation of the accused products are located in
`the Northern District of Texas, and that their testimony is
`likely material. Match.com, however, has not indicated how many
`
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`employees it would be inclined to call as potential witnesses
`and has not provided any indication of the necessity of those
`employees to its business. As a result, the Court cannot assess
`the degree to which Match.com’s business would be disrupted
`compared to the disruption B.E. will endure due to its CEO’s
`absence should the case be transferred. Accordingly, the Court
`finds transfer would only shift the inconvenience to B.E. See
`McFadgon, 2005 WL 3879037, at *2.
`Therefore, because § 1404(a) provides for transfer “to a
`more convenient forum, not to a forum likely to prove equally
`convenient or inconvenient,” distance of travel for employee-
`witnesses does not weigh in favor of transfer. Hunter Fan, 2006
`WL 1627746, at *2 (citing Van Dusen v. Barrack, 376 U.S. 612,
`645-46 (1964)).
`Match.com further argues that this factor strongly favors
`transfer because its employees are located in the Northern
`District of Texas, whereas B.E. has only one likely witness,
`Hoyle, who is also an interested party. (ECF No. 32-1 at 5, 18;
`ECF No. 40 at 7-8.) Although Match.com does not specifically
`list its witnesses, and though its assertion is imprecise as to
`the materiality of the witnesses’ testimony, it is not asserted
`that their testimony will not be relevant and material in this
`case. Match.com’s general statement, however, that all of its
`employees are located in the Northern District of Texas does not
`
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`aid the court in assessing (1) what the testimony of such
`material witnesses will be; (2) whether such witnesses will be
`unable to attend; or (3) whether and to what extent such
`witnesses will be inconvenienced by testifying in this district.
`Match.com relies on a United States District Court for the
`Eastern District of Virginia case, Koh v. Microtek
`International, Inc., 250 F. Supp. 2d 627 (E.D. Va. 2003), for
`the proposition that although a motion to transfer must normally
`contain specifics as to the “names, titles, location, and the
`content of their testimony” (ECF No. 40 at 6), district courts
`can infer that witnesses are located near the infringing
`activities and “that witnesses involved in the design and
`manufacture of the accused products are material to the transfer
`analysis” (ECF No. 40 at 7). Recognizing that Koh is persuasive
`authority, the Court also notes that Match.com misapplies it to
`the facts of the instant case. In Koh, the court stated,
`“although the Movants have not set out specifically any
`potential testimony, they have identified one individual who is
`located in California and two entities located in California,
`which participated in conception and reduction to practice of
`the accused product.” Koh, 250 F. Supp. 2d at 637. In the
`instant case, Match.com has not identified specific witnesses
`that “participated in [the] conception and reduction to practice
`of the accused products.” To the contrary, Match.com has
`
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`generally asserted that all of its employees working on the
`accused products are located in the Northern District of Texas.
`(Rothrock Decl., ECF No. 32-28, ¶¶ 5-6.) These generalizations
`do not assist the Court in determining how many employee-
`witnesses Match.com will actually seek to call and whether they
`will be inconvenienced by testifying in the Western District of
`Tennessee. Match.com cannot rely on such “bare allegations” to
`satisfy its burden. Esperson, 2010 WL 4362794, at *8.
`While B.E. did not specifically identify any witnesses, it
`is presumed that Hoyle, as CEO and inventor of the patent-in-
`suit, will be a key witness. B.E., however, does not have the
`burden to identify more witnesses for the purposes of this
`Motion. Despite B.E. not identifying any witnesses, Match.com’s
`general identification of material witnesses who are Match.com
`employees does not satisfy its burden on this factor. A simple
`numerical advantage is insufficient on the issues raised by a
`motion to transfer. As a result, the witness-convenience factor
`does not weigh in favor of transfer.
`2. Non-Party Witnesses
`While convenience to party witnesses is an important
`consideration, “it is the convenience of non-party witnesses,
`rather than employee witnesses . . . that is the more important
`factor and is accorded greater weight.” Steelcase Inc. v. Smart
`
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`Techs., 336 F. Supp. 2d 714, 721 (W.D. Mich. Mar. 5, 2004)
`(citation omitted) (internal quotation marks omitted).
`Match.com does not present any argument or evidence that
`any of its potential third-party witnesses are located in the
`Northern District of Texas. Having established no connection to
`the Northern District of Texas regarding non-party witnesses,
`this factor does not weigh in favor of transfer.
`Instead, Match.com argues that it “is aware or at least
`nine individuals who possess knowledge regarding potentially
`invalidating prior art who live in or near California.” (ECF
`No. 32-1 at 6.) Match.com further argues that “several other
`Defendants have identified at least eight additional patents
`constituting potential invalidating prior art with inventors
`and/or assignees in California.” (Id. at 7.) To support its
`contention, Match.com submits these prior-art witnesses and
`their last-known addresses based on webpages and documents filed
`with the United States Patent and Trademark Office (Id. at 6-8
`(citing ECF Nos. 32-12 through 32-22).) Match.com argues that
`“depositions[] and live testimony of third-party witnesses
`located in the Northern District of California will be prevalent
`in this litigation.” (Id. at 11.) Match.com claims that it
`will not be able to compel these witnesses to testify at trial
`if the case remains in Tennessee, but will be able to compel
`
`
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`17
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`

`
`Case 2:12-cv-02834-JPM-tmp Document 45 Filed 07/16/13 Page 18 of 32 PageID 457
`
`those witnesses that live in California to testify at trial in
`the Northern District of California. (Id. at 10-11.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Match.com has not established that the “third party testimony
`will be material or important.” (ECF No. 37 at 12.) B.E.
`further argues that prior-art testimony is “almost certain to be
`severely limited at the time of trial” and, therefore, such
`testimony does not weigh in favor of transfer. (Id.)
`B.E. acknowledges that Match.com has identified specific
`third-party witnesses located in the Northern District of
`California regarding prior art and that those witnesses would
`not be subject to the Western District of Tennessee’s subpoena
`power, but states that Match.com has not “presented any evidence
`that the inventors and assignees are unwilling to testify in
`Tennessee or how they would be inconvenienced by testifying
`here.” (Id.) B.E. notes that Match.com concedes that it will
`be able to subpoena these potential third-party witnesses for
`testimony or document production in their home districts. (Id.
`13.) Further, B.E. argues that Match.com “does not address the
`relevance, materiality, and importance of the testimony any
`witness who allegedly could not be subpoenaed might give.”
`(Id.)
`
`
`
`18
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 45 Filed 07/16/13 Page 19 of 32 PageID 458
`
`The availability of compulsory process for unwilling
`witnesses is a consideration closely related to the convenience-
`of-witnesses factor and the costs of procuring the witness, and
`therefore is an important consideration for the Court. See,
`e.g., In re Acer, 626 F.3d at 1255; Rinks, 2011 WL 691242, at
`*4. Whether this factor should be given considerable weight
`depends on the materiality of the testimony to the resolution of
`the case. Rinks, 2011 WL 691242, at *4. A federal court in the
`Northern District of California would be able to compel the
`majority of the identified prior-art witnesses to testify at
`trial, whether these witnesses are located within the Northern
`District of California or elsewhere in the state. See Fed. R.
`Civ. P. 45(b)(2); Brackett v. Hilton Hotels Corp., 619 F. Supp.
`2d 810, 821 (N.D. Cal. 2008) (“The California district courts
`have the power to subpoena witnesses throughout the state
`pursuant to [Federal Rule of Civil Procedure]
`45(b)(2)(C) . . . .”). In contrast, the majority of the prior-
`art witnesses would not be subject to the subpoena power in this
`District or the Northern District of Texas, see Fed. R. Civ. P
`45(c)(3)(A)(ii), but would be available for deposition in the
`Northern District of California if unwilling to testify in this
`District. Therefore, the testimony of such witnesses
`potentially would “not be live and therefore could be less
`persuasive.” Rinks, 2011 WL 691242, at *4.
`
`
`
`19
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 45 Filed 07/16/13 Page 20 of 32 PageID 459
`
`The Court finds that Match.com has met its burden to show
`the nature of the third-party witnesses testimony, and that the
`testimony is likely material to Match.com’s invalidity and non-
`infringement contentions. To the extent the non-party
`witnesses’ testimony may be presented by deposition, however,
`witness inconvenience would not be an issue. While Match.com
`sets forth the fact that the prior-art witnesses would not be
`subject to subpoena in the transferor district, the Court
`recognizes that the same is true if the case is transferred to
`the Northern District of Texas. Match.com’s general statement
`is, therefore, insufficient to allow the Court to determine
`whether live testimony of Match.com’s non-party witnesses is
`necessary. As a result, this factor weighs only slightly in
`favor of transfer to the Northern District of California, and
`does not weigh in favor of transfer to the Northern District of
`Texas.
`B. Convenience of the Parties
`Match.com argues that the convenience of the parties
`requires the Court transfer this action to the Northern District
`of California, or, alternatively, to the Northern District of
`Texas. (ECF No. 32-1 at 1-2.) While Match.com organizes its
`arguments somewhat differently than the Court, the Court finds
`the considerations relevant to the convenience-of-the-parties
`
`
`
`20
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 45 Filed 07/16/13 Page 21 of 32 PageID 460
`
`factor are the location of the sources of proof and the parties’
`financial hardships due to litigation in the chosen forum.
`1. Location of Sources of Proof
`Regarding transfer to the Northern District of California,
`Match.com argues that many of the potential third-party
`witnesses are likely to have relevant documents located in that
`district. (ECF No. 32-1 at 14.) Match.com does not contend any
`of its own documentation is located in the Northern District of
`California, but that all of its “relevant documents are located
`in the Northern District of Texas, including, but not limited
`to, Match.com’s technical documents and source code and
`Match.com’s financial and marketing documents.” (ECF No. 32-1
`at 17 (citing Rothrock Decl., ECF No. 32-28, ¶¶ 5-6).)
`Additionally, Match.com presumes that B.E.’s documents are
`located in Michigan or Louisiana, not the Western District of
`Tennessee, as B.E.’s office address was listed on a 2011 patent
`application as Saginaw, Michigan, and Hoyle’s residence was
`listed as New Orleans, Louisiana. (ECF No. 32-1 at 13 (citing
`ECF No. 32-5).) To further support this presumption, Match.com
`argues that the Court should infer that B.E.’s “financial
`records, tax records, and patent prosecution files all reside in
`Michigan” because Hoyle stated that B.E.’s accountant and patent
`attorney live in Michigan, and B.E. maintained a registered
`office there. (ECF No. 40 at 5; see also ECF No. 32-1 at 13-
`
`
`
`21
`
`

`
`Case 2:12-cv-02834-JPM-tmp Document 45 Filed 07/16/13 Page 22 of 32 PageID 461
`
`14.) Match.com argues that “the burden associated with
`accessing [these documents] will be approximately the same,
`regardless of whether this litigation occurs in Tennessee or
`California.” (ECF No. 32-1 at 13.)
`B.E. argues that, because its CEO resides in the Western
`District of Tennessee, its corporate documents and records,
`“including documents demonstrating the conception and reduction
`to practice of [the patents-in-suit],” are located in the
`Western District of Tennessee. (ECF No. 37 at 6, 14.) B.E.
`notes that Match.com stated all of

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