Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 1 of 20 PageID 74
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`
` Civil Action No. 12-cv-02866 – JPM–tmp
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`
`
`
`
`
`
`v.
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`MOTOROLA MOBILITY
`HOLDINGS LLC,
`
`
`
`
`
`Defendant.
`
`
`DEFENDANT’S MEMORANDUM IN SUPPORT OF ITS
`MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`AND FOR EXPEDITED HEARING
`
`
`
`
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`
`
`
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`

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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 2 of 20 PageID 75
`TABLE OF CONTENTS
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`Page
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`
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`I.
`II.
`
`III.
`IV.
`
`
`V.
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`
`
`
`
`C.
`
`D.
`E.
`
`2.
`
`3.
`
`3.
`4.
`
`INTRODUCTION ............................................................................................................. 1
`BACKGROUND ............................................................................................................... 3
`A.
`The Nature of This Case ........................................................................................ 3
`B.
`The Locations of Witnesses and Evidence ............................................................ 4
`1.
`Most of Motorola’s Relevant Witnesses and Documents are
`Located in the Northern District of California........................................... 4
`Plaintiff’s “Connection” to This Forum Appears to Have Been
`Manufactured Solely for the Purposes of this Litigation........................... 5
`Potential Third Party Witnesses and Documents are Located
`Primarily in the Northern District of California ........................................ 5
`APPLICABLE LAW ......................................................................................................... 6
`ARGUMENT..................................................................................................................... 7
`A.
`This Case Could Have Been Brought in the Northern District of California ........ 7
`B.
`The Private Factors Favor Transfer to the Northern District of California ........... 8
`1.
`The Location of Sources of Proof in California Favors Transfer .............. 8
`2.
`Cost of Attendance for the Parties and the Convenience of
`Witnesses Favors Transfer......................................................................... 9
`Availability of Compulsory Process in California Favors Transfer ........ 10
`No Practical Problems Favor this District over the Northern
`District of California................................................................................ 11
`The Public Factors Favor Transfer to the Northern District of California .......... 12
`1.
`Court Congestion Does Not Weigh Against Transfer ............................. 12
`2.
`The Northern District of California Has a Substantial Connection
`to, and Local Interest in, the Adjudication of This Case ......................... 12
`Plaintiff’s Choice of Venue Is Not Entitled Deference ....................................... 13
`MDL Proceedings Should Not Be A Factor In This Transfer Motion ................ 14
`
`CONCLUSION................................................................................................................ 15
`
`i
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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 3 of 20 PageID 76
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`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Bennett v. Bed Bath and Beyond, Inc.,
`No. C 11–02220, 2011 WL 3022126 (N.D. Cal. July 22, 2011) .............................................14
`
`Cherokee Export Co. v. Chrysler Int’l. Corp.,
`No. 96-1745, 142 F.3d 432, 1998 WL 57279 (6th Cir. (Mich.), Feb. 2, 1998).........................7
`
`Cont’l First Fed., Inc. v. Watson Quality Ford, Inc.,
`No. 3:08–0954, 2010 WL 1836808 (M.D. Tenn., May 6, 2010)...............................................7
`
`In re Best Buy Co., Inc., California Song–Beverly Credit Card Act Litig.,
`804 F. Supp. 3d 1376 .........................................................................................................14, 15
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)....................................................................................7, 8, 9, 12
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)............................................................................................2, 13
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2010)............................................................................................1, 13
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)..............................................................................................8, 9
`
`In re Zimmer Holdings, Inc.,
`609 F.3d 1378 (Fed. Cir. 2010)..........................................................................................11, 13
`
`Just Intellectuals, PLLC v. Clorox Co.,
`No. 10-12415, 2010 WL 5129014 (E.D. Mich., Dec. 10, 2010) ...............................8, 9, 11, 13
`
`L&P Prop. Mgmt. Co. v. JTMD, LLC,
`No. 06-13311, 2007 WL 295027 (E.D. Mich., Jan 29, 2007) ...................................7, 8, 10, 13
`
`Lexecon Inc. v. Milberg Weiss Bershad Hynes & Lerach,
`523 U.S. 26 (1998)...................................................................................................................15
`
`Moses v. Bus. Card Express, Inc.,
`929 F.2d 1131 (6th Cir. 1991) ...............................................................................................6, 7
`
`Quality Gold, Inc. v. West,
`No. 1:11-CV-891, 2012 WL 1883819 (S.D. Ohio, May 22, 2012)...........................................7
`
`
`
`ii
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`

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`
`
`Returns Distribution Specialists, LLC v. Playtex Prods., Inc.,
`No. 02-1195-T, 2003 WL 21244142 (W.D. Tenn., May 28, 2003) ..................................6, 7, 9
`
`Stewart Org., Inc. v. Ricoh Corp.,
`487 U.S. 22 (1988).....................................................................................................................6
`
`U.S. ex rel. Kairos Scientia, Inc. v. Zinsser Co.,
`2011 WL 127852 (N.D. Ohio, Jan. 14, 2011)....................................................................12, 14
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964)...................................................................................................................6
`
`Winningham v. Biomet Orthopedics, LLC,
`No. C 12–00503 JSW, 2012 WL 3860806 (N.D. Cal., Aug. 31, 2012) ............................14, 15
`
`Zimmer Enters., Inc. v. Atlandia Imps., Inc.,
`478 F. Supp. 2d 983 (S.D. Ohio, 2007) ...................................................................................10
`
`STATUTES
`
`28 U.S.C. § 1391(c) .........................................................................................................................7
`
`28 U.S.C. § 1400..............................................................................................................................7
`
`28 U.S.C. § 1400(b) .........................................................................................................................7
`
`28 U.S.C. § 1404(a) .........................................................................................................................6
`
`OTHER AUTHORITIES
`
`U.S. Patent No. 6,628,314................................................................................................................3
`
`U.S. Patent No. 6,771,290................................................................................................................3
`
`
`
`iii
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`

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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 5 of 20 PageID 78
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`Defendant Motorola Mobility Holdings LLC1 respectfully moves this Court to transfer
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`this case to the Northern District of California, pursuant to 28 U.S.C. § 1404(a).
`
`I.
`
`INTRODUCTION
`
` The Western District of Tennessee has no interest in adjudicating this dispute, and
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`neither defendant B.E. Technology, L.L.C (“B.E.”) nor the operative set of facts in this case
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`have any meaningful connection to this District. In contrast, compelling reasons support
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`transferring this case to the Northern District of California.
`
`
`
`First, the Northern District of California has direct, concrete, and extensive connections
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`to this case, while the Western District of Tennessee has virtually none. B.E. was, up until
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`recently, a company based out of Saginaw, Michigan, and appears to have registered to do
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`business in the Western District of Tennessee just one day before initiating its litigations against
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`19 defendants in this District. Unsurprisingly, B.E.’s contacts with this District bear no relation
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`to any of the facts relevant to this lawsuit. In addition, B.E.’s lead counsel is located in the
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`Northern District of California. B.E’s contacts with this District therefore are minimal and
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`recent, and appear to have been manufactured solely for litigation purposes. Accordingly, B.E.’s
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`choice of venue is entitled to no deference. In re Microsoft Corp., 630 F.3d 1361, 1364 (Fed.
`
`Cir. 2010) (courts should not “honor connections to a preferred forum made in anticipation of
`
`litigation and for the likely purpose of making that forum appear convenient”).
`
`Second, the Northern District of California is both uniquely connected to and clearly a
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`more convenient venue for this litigation. Motorola is wholly owned by Google Inc. (“Google”),
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`which is headquartered in the Northern District of California and is exclusively run and operated
`
`
`1 Motorola Mobility Holdings LLC is not the proper entity as it does not use, make, sell, or offer
`to sell the Xyboard and Xoom tablets or the Atrix, Electrify 2, Defy XT, or Photon Q 4G LTE
`smartphones. The proper entity is Motorola Mobility LLC (“Motorola”).
`1
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`

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`
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`out of Mountain View, California. B.E. has preliminarily identified the accused features and
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`functionalities of the Motorola products, namely “products include[ing] Motorola tablets:
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`Xyboard and Xoom tablets; Motorola smartphones: Atrix, Electrify 2, Defy XT, Photon Q 4G
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`LTE,”2 -- all of which run Google’s Android operating system3-- and Google Play, a Google
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`product. As such, the vast majority of witnesses, documents, and other evidence related to the
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`research, design, function and operation of the Android operating system and ”Google Play,” are
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`located in Mountain View, with Google. Thus the vast majority of witnesses and documents
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`that Motorola believes are relevant to the issues of non-infringement are located in the Northern
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`District of California. Moreover, B.E. has asserted the patents at issue in this case against a total
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`of 18 other defendants in this District, a majority of whom are located on the West Coast, and a
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`large number of whom are also headquartered in the Northern District of California. Motorola is
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`aware that other defendants are likely to move to transfer venue,4 and that a majority will likely
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`request transfer to the Northern District of California. Also, a large number of third-party
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`witnesses likely to have knowledge and documents relevant to invalidity reside in California.
`
`Third, the Northern District of California possesses a unique, particularized local interest
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`in passing judgment on the products and technology—the design and development of which
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`occurred within its boundaries—now before this Court. See In re Hoffman-La Roche, Inc., 587
`
`F.3d 1333, 1336 (Fed. Cir. 2009) (finding a strong local interest where a case “calls into
`
`question the work and reputation of several individuals residing in or near that district.”) By
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`contrast, there is no unique local connection to the Western District of Tennessee, as Motorola
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`2 See Dkt. 1 (Complaint).
`3 See Ex. A (Declaration of Thomas V. Miller “Miller Decl.”) at ¶ 4.
`4 Google’s motion to transfer venue requesting transfer to the Northern District of California was
`filed contemporaneously with this motion. See Dkt. No. 22 in Civil Action No. 12-cv-02830.
`2
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`

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`does not operate in Tennessee and until very recently, B.E. did not have any contacts with this
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`District.
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`Given that the center of gravity of the accused activity is the Northern District of
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`California, and given the comparative absence of relevant defendant witnesses or evidence in the
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`Western District of Tennessee, the public and private factors relevant to venue transfer strongly
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`weigh in favor of transfer to the Northern District of California. Accordingly, Motorola’s motion
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`should be granted.
`
`II.
`
`BACKGROUND
`
`A.
`
`The Nature of This Case
`
`B.E. filed this case on October 2, 2012, as part of a broad litigation campaign against a
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`number of companies, including Motorola, Google, Amazon Digital Services, Inc., Facebook,
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`Inc., LinkedIn Corp., Groupon, Inc., Pandora Media, Inc., Twitter, Inc., Barnes & Noble,
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`Samsung Telecommunications America, LLC, Samsung Electronics America, Inc., Sony
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`Computer Entertainment, Sony Mobile Communications, Sony Electronics, Inc., Microsoft
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`Corp., Apple, Inc., Spark Networks, Inc., People Media, Inc., and Match.com L.L.C.
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`(collectively, the “Defendants”).5 B.E. accuses Motorola of infringing U.S. Patent No. 6,771,290
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`(“the ’290 Patent”) by allegedly “using, selling and offering to sell in the United States products”
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`including “Motorola tablets: Xyboard and Xoom tablets; Motorola smartphones: Atrix, Electrify
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`2, Defy XT, Photon Q 4G LTE.” See Compl., Dkt. No. 1. B.E. similarly accuses the other
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`Defendants of infringing either or both the ’290 Patent and U.S. Patent No. 6,628,314 (“the ’314
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`patent”). Motorola’s answer to B.E.’s Complaint is due December 31, 2012.
`
`
`5 Case Nos. 12-cv-02866, 12-cv-02830, 12-cv-02767, 12-cv-02769, 12-cv-02772, 12-cv-02781,
`12-cv-02782, 12-cv-02783, 2:12-cv-02823, 12-cv-02824, 12-cv-02825, 2:12-cv-02826, 12-cv-
`02827, 12-cv-02828, 12-cv-02829, 12-cv-02831, 12-cv-02832, 12-cv-02833, and 12-cv-02834,
`respectively (collectively, the “B.E. Litigations”).
`3
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`

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`
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`B.
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`The Locations of Witnesses and Evidence
`
`1.
`
`Most of Motorola’s Relevant Witnesses and Documents are Located in
`the Northern District of California.
`
`Based on the asserted claim of the asserted patent, Motorola believes the accused
`
`functionalities relate to the Google Android operating system and Google Play. The Northern
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`District of California, is the center of gravity for these products. Motorola is a Delaware
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`corporation with a principal place of business in Illinois. See Miller Decl. at ¶ 2. Motorola is a
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`wholly-owned subsidiary of Google, which has its headquarters in the Northern District of
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`California. See id. at ¶ 3. Motorola has offices in Sunnyvale, California which is located in the
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`Northern District of California. See id. at ¶ 5. The employees most knowledgeable about the
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`design, development and operation of the Android operating system, and Google Play, are
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`located in the Northern District of California. See id. at ¶ 5. As such, a vast majority of the
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`witnesses, documents, and other relevant evidence relating to the accused products are located in
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`the Northern District of California.6
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`Motorola does not have any offices, facilities or employees in Tennessee. See id. at ¶¶ 6-
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`7. Motorola is not aware of any documents related to the accused applications or products that
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`are located in Tennessee. See id. at ¶ 7. Motorola is not aware of any employees who work in
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`Tennessee with relevant knowledge concerning the accused products, or any other aspect of the
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`subject matter of this litigation. See id.
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`In contrast to B.E.’s limited connections to this forum – which appear to have been
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`manufactured solely for the purposes of filing this litigation – most of the foreseeable relevant
`
`
`6 Motorola acknowledges that there are likely some witnesses and documents relevant to other
`aspects of the accused products, such as the sales and marketing of the accused products, that
`may be located outside the Northern District of California. However, the majority of relevant
`documents and witnesses in this case, those related to the allegations of infringement in the
`Complaint, are located in the Northern District of California.
`4
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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 9 of 20 PageID 82
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`
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`defense witnesses and evidence related to the accused products, including those whom Motorola
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`anticipates including in their initial disclosures, are located within the Northern District of
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`California.
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`2.
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`Plaintiff’s “Connection” to This Forum Appears to Have Been
`Manufactured Solely for the Purposes of this Litigation.
`
`B.E. is a Delaware corporation. See Compl. (Dkt. No. 1) at ¶ 2. B.E.’s patent filings list
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`it as a Saginaw, Michigan-based company as recently as June 21, 2012. See Ex. B (Application
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`No. 13/328,743). In fact, according to the Tennessee Secretary of State website, it was not until
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`September 6, 2012 – the day before filing the first of its Litigations here – that Plaintiff even
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`registered to do business in Tennessee. See Ex. C (B.E. Filing Information). Plaintiff does not
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`offer any products for sale, and does not appear to even have an office in Memphis, which it now
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`alleges is its principal place of business. Indeed, Plaintiff’s counsel in this case is based in the
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`Northern District of California.
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`3.
`
`Potential Third Party Witnesses and Documents are Located Primarily
`in the Northern District of California.
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`Other third party witnesses are located outside of the Western District of Tennessee. The
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`attorney who filed and argued the applications for the patents-in-suit, James D. Stevens, is
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`located in Troy, Michigan. See Ex. D (www.reising.com/attorneys.php?t=stevens). Moreover, a
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`substantial number of other third-party witnesses and documents knowledgeable about prior art
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`to the’290 Patent also are located in California. These, include, for example, the named
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`inventors of at least the following patents:
`
`• U.S. Patent No. 5,740,549, with inventors in San Francisco and Cupertino,
`California (both in the Northern District of California);
`
`• U.S. Patent No. 5,263,164 with a named inventor in Rocklin, California and
`assignee in Redwood City, California (in the Central and Northern Districts of
`California);
`
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`5
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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 10 of 20 PageID 83
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`• U.S. Patent No. 5,696,965 whose named inventor is in Hillsboro, Oregon and
`assignee in Santa Clara, California (Northern District of California);
`
`• U.S. Patent No. 5,794,210 with inventors and assignee in Berkeley, California
`(Northern District of California);
`
`• U.S. Patent No. 5,710,884, with inventor from Hillsboro, Oregon and assignee in
`Santa Clara, California (Northern District of California); and
`
`• U.S. Patent No. 5,717,923, with inventors in Hillsboro, Oregon and assignee in
`Santa Clara, California (Northern District of California).
`
`Each of these patents may be prior art to the’290 Patent pursuant to 35 U.S.C. § 102(e).
`
`In connection with establishing that the technology disclosed in these patents is, in fact, prior art
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`to the’290 Patent, Motorola expects to subpoena at least the inventors and/or assignees of the
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`patents for documents, and seek their testimony, as part of its invalidity defense.
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`III. APPLICABLE LAW
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`Pursuant to 28 U.S.C. § 1404(a), for the “convenience of the parties and witnesses” and
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`“in the interest of justice,” a court may transfer a civil action to any judicial district in which it
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`could have been brought. 28 U.S.C. § 1404(a); see Moses v. Bus. Card Express, Inc., 929 F.2d
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`1131, 1137 (6th Cir. 1991). The Supreme Court of the United States has noted that Section
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`1404(a) is intended to give the district court discretion to adjudicate motions to transfer
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`according to an “individualized, case-by-case consideration of convenience and fairness.”
`
`Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988); Van Dusen v. Barrack, 376 U.S. 612,
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`622 (1964); Returns Distribution Specialists, LLC v. Playtex Prods., Inc., No. 02-1195-T, 2003
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`WL 21244142, at *6 (W.D. Tenn., May 28, 2003) (noting that a district court has “broad
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`discretion under section 1404(a) when determining whether to transfer a case”) (citation
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`omitted).
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`In the Sixth Circuit, the “threshold” determination for the district court under Section
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`1404(a) is whether the claims could have been brought in the proposed transferee district.
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`6
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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 11 of 20 PageID 84
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`
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`Returns Distribution Specialists, 2003 WL 21244142, at *6. The district court must then
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`consider the convenience of the parties and witnesses in both forums, balancing several private
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`and public interest factors. Moses, 929 F.2d at 1138; Cont’l First Fed., Inc. v. Watson Quality
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`Ford, Inc., No. 3:08–0954, 2010 WL 1836808 (M.D. Tenn., May 6, 2010).
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`The private interest factors include “(1) the relative ease of access to sources of proof; (2)
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`the availability of compulsory process to secure the attendance of witnesses; (3) the cost of
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`attendance for willing witnesses; and (4) all other practical problems that make trial [of a case]
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`easy, expeditious and inexpensive.” Quality Gold, Inc. v. West, No. 1:11-CV-891, 2012 WL
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`1883819, at *2 (S.D. Ohio, May 22, 2012) (citing In re Genentech, Inc., 566 F.3d 1338, 1342
`
`(Fed. Cir. 2009); see also Cherokee Export Co. v. Chrysler Int’l. Corp., No. 96-1745, 142 F.3d
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`432, 1998 WL 57279, at *3 (6th Cir. (Mich.), Feb. 2, 1998). The public interest factors include
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`“(1) the administrative difficulties flowing from court congestion; [and] (2) the localized interest
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`in having localized interests decided at home.” Id. Notably, while a plaintiff’s choice of venue
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`is generally entitled to “some deference, it is not sacrosanct, and will not defeat a well-founded
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`motion for change of venue.” L&P Prop. Mgmt. Co. v. JTMD, LLC, No. 06-13311, 2007 WL
`
`295027, at *3 (E.D. Mich., Jan 29, 2007) (internal citation omitted); Returns Distribution
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`Specialists, 2003 WL 21244142, at *9 (ordering transfer where “the overwhelming
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`inconvenience to the witnesses outweighs the Plaintiff’s interest in choosing their own forum.”).
`
`IV. ARGUMENT
`
`A.
`
`This Case Could Have Been Brought in the Northern District of California.
`
`Pursuant to 28 U.S.C. § 1400, a patent infringement action may be brought in the district
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`where the defendant resides. 28 U.S.C. § 1400(b). A corporate defendant “resides” in any
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`district in which it is subject to personal jurisdiction at the time the suit is filed. 28 U.S.C. §
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`1391(c). Motorola has operations located within the Northern District of California, and is
`7
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`wholly owned by Google, whose corporate headquarters and operations are located in the
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`Northern District of California. See Miller Decl. at ¶ 5. Accordingly, personal jurisdiction exists
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`and venue is proper in the Northern District of California. Consequently, Plaintiff could have
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`properly sued Motorola for patent infringement in this district.
`
`B.
`
`The Private Factors Favor Transfer to the Northern District of California.
`
`1.
`
`The Location of Sources of Proof in California Favors Transfer.
`
`The first private interest factor is the relative ease of access to sources of proof, which
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`takes into consideration the location of documents and physical evidence. Just Intellectuals,
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`PLLC v. Clorox Co., No. 10-12415, 2010 WL 5129014, at *4 (E.D. Mich., Dec. 10, 2010). “In
`
`patent infringement cases, the bulk of the relevant evidence usually comes from the accused
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`infringer. Consequently, the place where the defendant’s documents are kept weighs in favor of
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`transfer to that location.” In re Nintendo Co., Ltd., 589 F.3d 1194, 1199 (Fed. Cir. 2009) (citing
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`In re Genentech, 566 F.3d at 1345 (Fed. Cir. 2009)). Thus, the location of an alleged infringer’s
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`research and development-related documents and evidence is an important factor to consider.
`
`See Nintendo, 589 F.3d at 1199; L&P Prop. Mgmt. Co., 2007 WL 295027, at *4.
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`Here, the vast majority of the technical documents relevant to the research, design, and
`
`development of the Android operating system and Google Play, are located in the Northern
`
`District of California. See Miller Decl. at ¶ 5. While some documents and witnesses relevant to
`
`the sales and marketing of the accused products may not be located in the Northern District of
`
`California, none of Motorola’s relevant documents or other evidence are physically located in
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`Tennessee. See id. at ¶¶ 6-7. Thus, based on the allegations in the Complaint, most of the
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`physical and documentary evidence relevant to the issues of infringement will be found in
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`California. See id. at ¶ 5. This factor weighs heavily in favor of a transfer to the Northern
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`District of California. L&P Prop. Mgmt. Co., 2007 WL 295027, at *5 (finding this factor
`8
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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 13 of 20 PageID 86
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`weighed in favor of transfer where “[a]ll of Defendants’ documents are located … in [the
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`transferee district]… [and] Plaintiffs have not identified any sources of evidence … that exist in
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`[the transferring district]”); Just Intellectuals, 2010 WL 5129014, at *4 (same).
`
`2.
`
`Cost of Attendance for the Parties and the Convenience of Witnesses
`Favors Transfer.
`
`The cost of attendance for and convenience of the witnesses “is probably the single most
`
`important factor in transfer analysis.” In re Genentech, 566 F.3d 1338, 1343; see also Returns
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`Distribution Specialists, 2003 WL 21244142, at *8. “Additional distance [from home] means
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`additional travel time; additional travel time increases the probability for meal and lodging
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`expenses; and additional travel time with overnight stays increases the time which these fact
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`witnesses must be away from their regular employment.” Nintendo, 589 F.3d at 1199 (citing In
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`re TS Tech, 551 F.3d at 1320). Simply put, it is more convenient for witnesses to testify at home.
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`The proposed venue does not need to be more convenient for all of the witnesses. Instead, this
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`factor favors transfer when a substantial number of material witnesses reside in the transferee
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`venue. See In re Genentech, 566 F.3d at 1345. Additionally, this factor favors transfer where
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`witnesses likely to be called at trial are important to the operation of defendant’s business.
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`Returns Distribution Specialists, 2003 WL 21244142, at *7 (noting that “[i]t would be difficult
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`for Defendants to operate their businesses if their employees were required to be in Tennessee
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`during the trial of this matter.”)
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`Based on B.E.’s current allegations, the vast majority of the relevant engineers and
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`employees work and/or reside in the Northern District of California, and none are located in
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`Tennessee. See Miller Decl. at ¶¶ 5-7. Memphis, Tennessee is over 1,700 miles from the
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`Northern District of California, and travel there would impose a significant inconvenience for the
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`Google Android and California-based Motorola witnesses who are located in the Northern
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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 14 of 20 PageID 87
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`District of California. Moreover, the employees who are likely to serve as trial witnesses are a
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`core group of employees, whose absence would adversely affect the operations of Google and
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`Motorola. In addition, the relevant third party witnesses, including inventors and assignees of
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`relevant prior art, are all located in the Northern District of California or on the West Coast, and
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`travel to Memphis would be similarly inconvenient for them. See infra § B.3. Because a
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`majority of witnesses for Motorola live over 1,700 miles from Memphis, Tennessee, transfer is
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`strongly favored. See, e.g., L&P Prop. Mgmt. Co., 2007 WL 295027, at * 5 (finding this factor
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`weighed heavily in favor of transfer where all of defendants’ witnesses were located outside the
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`transferring district and plaintiff had not identified any witnesses who resided in the transferring
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`district).
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`3.
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`Availability of Compulsory Process in California Favors Transfer.
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`Another private interest factor to consider is the Court’s ability to compel non-party
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`witnesses to attend trial. Id. Non-party witnesses potentially critical to the claims and defenses
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`in this case reside in and are subject to compulsory process only in the Northern District of
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`California. Specifically, numerous inventors and assignees of relevant prior art are located in the
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`Northern District of California. For its invalidity defense, Motorola will need to subpoena these
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`third parties for documents and depositions. In addition, some of these third parties may become
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`key witnesses for Motorola’s defense at trial.
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`Thus, if this case remains in the Western District of Tennessee, Motorola will be unable
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`to compel any of the aforementioned witnesses, whose testimony is potentially critical to
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`Motorola’s defenses. However, Motorola can compel these witnesses to appear at trial in the
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`Northern District of California. Accordingly, this factor weighs in favor of transfer. See, e.g.,
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`Zimmer Enters., Inc. v. Atlandia Imps., Inc., 478 F. Supp. 2d 983, 993 (S.D. Ohio, 2007)
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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 15 of 20 PageID 88
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`
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`(ordering transfer in part in order to ensure the availability of process for a key witness); Just
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`Intellectuals, 2010 WL 5129014, at *4 (finding this factor weighed in favor of transfer where
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`“non-party witnesses likely reside in … some… are outside of the [transferring district.]”).
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`4.
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`No Practical Problems Favor this District over the Northern District of
`California.
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`
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`This case is analogous to In re Zimmer Holdings, Inc., 609 F.3d 1378, 1382 (Fed. Cir.
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`2010) where the Federal Circuit held that the existence of a co-pending litigation in this District
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`with a single overlapping patent, different products, and the lack of any defendant common to
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`both cases was insufficient to overcome the other convenience considerations given the
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`“significantly different discovery, evidence, proceedings, and trial” for the cases. B.E. chose to
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`file suit against 19 different defendants headquartered in various jurisdictions throughout the
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`United States, a majority of which are located on the West Coast. However, simply because B.E.
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`filed these cases in this District does not weigh in favor of mandating that all defendants stay in
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`this District. The Court should consider the facts specific to the parties in this case, namely
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`Motorola and B.E. Motorola has significant operations in the Northern District of California and
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`is wholly owned by Google, which is headquartered in and run and operated out of the Northern
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`District of California. B.E. has few, if any, substantial contacts to this District. This case should
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`proceed in the forum that, on balance, is the most convenient for the parties in this case: the
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`Northern District of California.
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`Case 2:12-cv-02866-JPM-tmp Document 18-1 Filed 12/19/12 Page 16 of 20 PageID 89
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`C.
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`The Public Factors Favor Transfer to the Northern District of California.
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`1.
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`Court Congestion does not Weigh Against Transfer.
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`While cases in the Northern District of California may take longer to reach resolution
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`than those in this District, such a fact does not weigh against transfer. In 2011, the median time
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`to trial for a civil case was 34.3 months in the Northern District of California, and 22.6 months in
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`the Western District of Tennessee. See Ex. E (Judicial Caseload Profiles). However, the average
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`docket of pending cases per judge in the same year was higher in the Western District of
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`Tennessee (499) than it was in the Northern District of California (475), and the average life
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`span of a case from filing to disposition was around three