Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 1 of 23 PageID 157
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`B.E. TECHNOLOGY, L.L.C.,
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`Plaintiff,
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`v.
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`MOTOROLA MOBILITY
`HOLDINGS LLC,
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`Defendant.
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`Case No. 2:12-cv-02866 JPM tmp
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`JURY DEMAND
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`REQUEST HEARING ON MOTION
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`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO
`DEFENDANT’S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
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`
`
`Dated: January 7, 2013
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`
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`Daniel J. Weinberg (CA Bar No. 227159)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`
`Attorneys for Plaintiff
`B.E. Technology, L.L.C.
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`

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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 2 of 23 PageID 158
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................................. 1
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`STATEMENT OF FACTS ................................................................................................ 2
`
`A.
`
`B.
`
`B.E. Technology, L.L.C ......................................................................................... 2
`
`B.E. v. Motorola ..................................................................................................... 2
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`THE LAW GOVERNING MOTIONS TO TRANSFER .................................................. 3
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`TRANSFER IS NOT APPROPRIATE ............................................................................. 4
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`A.
`
`B.
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`B.E.’s Choice of Forum is Entitled to Substantial Weight .................................... 4
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`Private Factors Favor B.E.’s Choice of Forum ...................................................... 6
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`1.
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`2.
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`3.
`
`4.
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`Convenience of the Parties Weighs Against Transfer ............................... 6
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`Convenience of the Witnesses Weighs Against Transfer .......................... 7
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`a.
`
`b.
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`Party Witnesses .............................................................................. 8
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`Non-Party Witnesses .................................................................... 10
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`Location of Sources of Proof ................................................................... 12
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`Motorola Would Not Be Materially Burdened Bearing The
`Expense of Litigating in the Western District of Tennessee .................... 14
`
`C.
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`Public Factors Favor B.E.’s Choice of Forum ..................................................... 14
`
`1.
`
`2.
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`Transfer to the Northern District of California Would Delay Trial ......... 14
`
`The Western District of Tennessee Has a Substantial Local Interest
`in the Vindication of B.E.’s Patent Rights ............................................... 15
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`CONCLUSION ................................................................................................................ 17
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`- i -
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`
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`I.
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`II.
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`III.
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`IV.
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`V.
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`

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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 3 of 23 PageID 159
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`
`
`TABLE OF AUTHORITIES
`
`
`FEDERAL CASES
`
`Page
`
`American S.S. Owners Mut. Prot. & Indem. Ass’n, Inc. v. Lafarge North Am., Inc.,
`474 F. Supp. 2d 474 (S.D.N.Y. 2002) ......................................................................................13
`
`Board of Trs. v. Baylor Heading & Air Conditioning, Inc.,
`702 F. Supp. 1253 (E.D. Va. 1988) ...........................................................................................8
`
`Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623 (W.D. Mich. 2009) .................................................................................13
`
`Duramed Pharms., Inc. v. Watson Labs., Inc.,
`2008 U.S. Dist. LEXIS 103398 (D. Nev. Dec. 12, 2008) ........................................................10
`
`E2Interactive, Inc. v. Blackhawk Network, Inc.,
`2010 WL 3937911 (W.D. Wis. Oct. 6, 2010) ..........................................................................14
`
`Ellipsis, Inc. v. Colorworks, Inc.,
`329 F. Supp. 2d 962 (W.D. Tenn. 2004) ..................................................................................14
`
`Esperson v. Trugreen Ltd. P’ship,
`2010 WL 4362794 (W.D. Tenn. Oct. 5, 2010) ....................................................................8, 14
`
`Hanning v. New England Mut. Life Ins. Co.,
`710 F. Supp. 213 (S.D. Ohio 1989) ...........................................................................................4
`
`Hunter Fan Co. v. Minka Lighting, Inc.,
`2006 WL 1627746 (W.D. Tenn. June 12, 2006) (McCalla, J.) ....................................... passim
`
`Imagepoint, Inc. v. Keyser Indus., Inc.,
`2005 WL 1242067 (E.D. Tenn. May 25, 2005) .........................................................................4
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)................................................................................................13
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................5
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)..................................................................................................5
`
`In re Zimmer Holdings,
`609 F.3d 1378 (Fed. Cir. 2010)..................................................................................................5
`
`
`
`- i -
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`

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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 4 of 23 PageID 160
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`TABLE OF AUTHORITIES
`(continued)
`
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................11
`
`Page
`
`Kerobo v. Southwestern Clean Fuels Corp.,
`285 F.3d 531 (6th Cir. 2002) .....................................................................................................3
`
`Lucent Techs., Inc. v. Aspect Telecomms. Corp.,
`1997 WL 476356 (E.D. Pa. Aug. 20, 1997) ........................................................................7, 16
`
`Max Rack, Inc. v. Hoist Fitness Sys., Inc.,
`2006 WL 640497 (S.D. Ohio March 10, 2006) .......................................................................12
`
`MCNIC Oil & Gas Co. v. IBEX Resources Co., L.L.C.,
`23 F. Supp. 2d 729 (W.D. Mich. 1998) .....................................................................................3
`
`Moses v. Business Card Express, Inc.,
`929 F.2d 1131 (6th Cir. 1991) ...................................................................................................4
`
`Nationwide Mut. Life Ins. v. Koresko,
`2007 WL 2713783 (S.D. Ohio Sept. 14, 2007) .........................................................................3
`
`Parsons v. Chesapeake & Ohio Ry. Co.,
`375 U.S. 71 (1963) ...................................................................................................................14
`
`Qarbon.com v. eHelp Corp.,
`315 F. Supp. 2d 1046 (N.D. Cal. 2004) ...................................................................................10
`
`Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
`2003 WL 21244142 (E.D. Tenn. May 28, 2003) .......................................................................3
`
`Rinks v. Hocking,
`2011 WL 691242 (W.D. Mich. Feb. 16, 2011)................................................................ passim
`
`Samsung Elecs. Co. v. Rambus, Inc.,
`386 F. Supp. 2d 708 (E.D. Va. 2005) ........................................................................................8
`
`Siteworks Solutions, LLC v. Oracle Corp.,
`2008 WL 4415075 (W.D. Tenn. Sept. 22, 2008) .....................................................................14
`
`Surface Shields, Inc. v. Poly-Tak Prot. Sys.,
`213 F.R.D. 307 (N.D. Ill. 2003) ...............................................................................................10
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ...................................................................................................................4
`
`- ii -
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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 5 of 23 PageID 161
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`
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`TABLE OF AUTHORITIES
`(continued)
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`FEDERAL STATUTES
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`Page
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`28 U.S.C. § 1404 ..........................................................................................................................1, 2
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`28 U.S.C. § 1404(a) ...................................................................................................................3, 17
`
`RULES
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`Fed. R. Civ. P. 8 .............................................................................................................................10
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`Fed. R. Civ. P. 12(b)(6)..................................................................................................................10
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`Fed. R. Civ. P. 12(f) .......................................................................................................................10
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`Fed. R. Civ. P. 45(b)(2)..................................................................................................................11
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`- iii -
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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 6 of 23 PageID 162
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`I.
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`INTRODUCTION.
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`This case arises from the infringement by defendant Motorola Mobility Holdings LLC
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`(“Motorola”) of United States Patent No. 6,771,290. The patent describes and claims inventions
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`relating to user interfaces for accessing computer applications and information to provide
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`advertising over a computer network. The inventor, Martin David Hoyle, who is also the Chief
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`Executive Officer of plaintiff B.E. Technology, L.L.C. (“B.E.”), has lived in the Western District
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`of Tennessee since 2006 and currently resides at 116 W. Viking Drive, Cordova, Tennessee, part
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`of the City of Memphis. B.E. has brought this action because Motorola has infringed B.E.’s
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`patent in this District and across the United States.
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`Perhaps operating under a misunderstanding about why and when Mr. Hoyle moved to
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`this District and about Mr. Hoyle’s connection to B.E., Motorola has asked the Court to transfer
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`this case from the inventor’s and the plaintiff company’s home District to Motorola’s home, the
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`Northern District of California. This case is not, however, like others in which plaintiffs take
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`steps to manufacture venue. The Western District of Tennessee has long been the physical
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`location and home of B.E. and its CEO who is the inventor of the asserted patents.
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`Ignoring completely the relevant facts establishing Mr. Hoyle’s and B.E.’s longstanding
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`connection to this District, Motorola argues that transfer to the Northern District of California
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`would be more convenient because the global headquarters of Google, Motorola’s parent
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`company, is located in Mountain View, California and Google’s witnesses and documents can be
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`found there. Motorola concedes, however, that relevant witnesses and documents may be found
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`at Motorola’s headquarters in Libertyville, Illinois. Transfer to California might be more
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`convenient for Motorola, but it would be less convenient for B.E. Transfer under 28 U.S.C. §
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`1404 requires a “more convenient forum,” not merely a “forum likely to prove equally
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`convenient or inconvenient,” or “a forum the defendant finds more to its liking.” Because
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`Motorola can offer no more, its motion to transfer should be denied.
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`II.
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`STATEMENT OF FACTS.
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`A.
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`B.E. Technology, L.L.C.
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`B.E. is a Delaware limited liability company. Declaration of Martin David Hoyle
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`(“Hoyle Decl.”) ¶ 5. Martin David Hoyle, who goes by David, founded B.E. in 1997 to develop
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`Internet-related technologies. Id. B.E. is the assignee of United States Patent No. 6,771,290 (the
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`“’290 patent”) (“patent-in-suit”). Id. ¶ 7. Mr. Hoyle has been B.E.’s Chief Executive Officer
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`since 2008. Id. ¶ 6. He previously held other positions with B.E., including serving as its
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`President from 1997 to 2001. Id. Mr. Hoyle is the named inventor of the patent-in-suit.1 Id. ¶ 7.
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`In April 2006, Mr. Hoyle and his family moved from Mandeville, Louisiana to Eads,
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`Tennessee. Id. ¶ 2. They left Louisiana in the aftermath of Hurricane Katrina. Id. Mr. Hoyle
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`has remained in the Memphis area, and in this judicial district, ever since. See id. ¶¶ 2-4. In
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`2012, after contemplating a return to Louisiana, Mr. Hoyle and his wife moved to Cordova, in
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`the city of Memphis and also in this District. Id. ¶ 4.
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`B.E. originally maintained its registered office in Michigan where some of its members
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`and its accountant reside, id. ¶ 5, but it formally registered to conduct business in Tennessee in
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`2012. Id. ¶ 8.
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`B.
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`B.E. v. Motorola
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`B.E. filed its Complaint in this matter on October 2, 2012. D.E. 1. Motorola filed its
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`Answer on December 31, 2012 admitting that “venue is proper.” D.E. 21. This is one of
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`nineteen cases B.E. has filed in the Western District of Tennessee for the infringement of the
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`1 In addition to his work for B.E., Mr. Hoyle is an independent technology consultant. Hoyle
`Decl. ¶ 9.
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`patent-in-suit and two related patents not asserted against Motorola. The defendants in these
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`cases include several of the world’s most sophisticated technology companies, each of which
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`regularly conducts business on a massive scale in this District.
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`III. THE LAW GOVERNING MOTIONS TO TRANSFER.
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`“For the convenience of parties and witnesses, in the interest of justice, a district court
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`may transfer any civil action to any other district or division where it might have been brought.”
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`28 U.S.C. § 1404(a). A decision to transfer venue is made “on an individual basis by
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`considering convenience and fairness.” Kerobo v. Southwestern Clean Fuels Corp., 285 F.3d
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`531, 537 (6th Cir. 2002) (internal quotes omitted). The “balance of convenience must weigh
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`heavily in favor of the transfer.” Nationwide Mut. Life Ins. v. Koresko, 2007 WL 2713783, at *5
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`(S.D. Ohio Sept. 14, 2007).
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`“As a general rule, there is a ‘strong presumption’ in favor of the plaintiff’s selection of
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`forum, and the plaintiff’s choice should not be altered ‘unless the defendant carries his burden of
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`demonstrating that the balance of convenience strongly favors transfer.’” Hunter Fan Co. v.
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`Minka Lighting, Inc., 2006 WL 1627746, at * 2 (W.D. Tenn. June 12, 2006) (McCalla, J.)
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`(quoting Plough, Inc. v. Allergan, Inc., 741 F. Supp. 144, 148 (W.D. Tenn. 1990)) (denying a
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`motion to transfer even though the majority of defendant’s witnesses and documents were
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`located in California and California was the epicenter of the accused infringing activity). “When
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`a plaintiff has selected its home forum, this choice is given particular weight.” Id. (citing Tuna
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`Processors, Inc. v. Hawaii Int’l Seafood, 408 F. Supp. 2d 358, 360 (E.D. Mich. 2005)).
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`The threshold question on any motion to transfer is whether the plaintiff could have filed
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`the action in the transferee forum. See Returns Distribution Spec., LLC v. Playtex Prods., Inc.,
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`2003 WL 21244142, at *6 (E.D. Tenn. May 28, 2003); MCNIC Oil & Gas Co. v. IBEX
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`Resources Co., L.L.C., 23 F. Supp. 2d 729, 739 (W.D. Mich. 1998) (same). If so, then the
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`“district court should consider the private interests of the parties, including their convenience and
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`the convenience of potential witnesses, as well as other public-interest concerns, such as
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`systemic integrity and fairness, which come under the rubric of ‘interests of justice.’” Moses v.
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`Business Card Express, Inc., 929 F.2d 1131, 1137 (6th Cir. 1991) (quoting Stewart
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`Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 30 (1988)).
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`IV.
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`TRANSFER IS NOT APPROPRIATE.
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`B.E. agrees that its patent infringement claims could have been brought in the Northern
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`District of California because Motorola infringes there, just as it does in this District. The
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`relevant question presented by Motorola’s motion is therefore whether Motorola has met its high
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`burden to establish that the Northern District of California is “a more convenient forum,” not
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`merely an “equally convenient or inconvenient” forum when compared to the Western District of
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`Tennessee. Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964). Motorola has not made that
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`showing.
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`A.
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`B.E.’s Choice of Forum is Entitled to Substantial Weight.
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`As mentioned above, it is well-settled that a plaintiff’s choice of forum is entitled to
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`substantial weight. Hunter Fan Co., 2006 WL 1627746, at *2; see also Imagepoint, Inc. v.
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`Keyser Indus., Inc., 2005 WL 1242067, at *3 (E.D. Tenn. May 25, 2005) (explaining the
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`plaintiff’s “choice of forum will be given deference”); Hanning v. New England Mut. Life Ins.
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`Co., 710 F. Supp. 213, 214-15 (S.D. Ohio 1989) (“considerable weight”). The Western District
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`of Tennessee is B.E.’s principal place of business and its Chief Executive Officer, who is the
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`named inventor, lives here. B.E.’s choice of forum should be accorded substantial weight.
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`Without any mention of the relevant facts, Motorola argues that B.E.’s choice of venue
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`should be disregarded because its “contacts to this district are minimal and unrelated to this
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`action.” D.E. 18-1 at 13. That is not true. Unlike the cases on which Motorola relies where the
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`plaintiffs’ contacts with the chosen forum were recent or manufactured for the purpose of
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`litigation, Mr. Hoyle has been physically present in this District since 2006, and B.E. since at
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`least 2008. Compare Hoyle Decl. ¶¶ 2-7 with In re Microsoft Corp., 630 F.3d 1361, 1362 (Fed.
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`Cir. 2011) (“[Plaintiff] is operated from the United Kingdom by the patent’s co-inventor and
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`company’s managing member” and employed no individuals at its office in the Eastern District
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`of Texas.); In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1336-37 (Fed. Cir. 2009) (“[T]here
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`appears to be no connection between this case and the Eastern District of Texas except that in
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`anticipation of this litigation, [plaintiff’s] counsel in California converted into electronic format
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`75,000 pages of documents demonstrating conception and reduction to practice and transferred
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`them to the offices of its litigation counsel in Texas.”); In re Zimmer Holdings, 609 F.3d 1378,
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`1381 (Fed. Cir. 2010) (“[Plaintiff] transported copies of its patent prosecution files from
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`Michigan to its Texas office space, which it shares with another of its trial counsel’s clients.”).
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`Mr. Hoyle is not a recent transplant to the Western District of Tennessee. Nor was his
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`move to the District, six years before the filing of this action, the first step in a slow-developing
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`scheme to construct the appearance of a connection to the forum. Moreover, the physical
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`location of B.E.’s records, including documents demonstrating the conception and reduction to
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`practice of Mr. Hoyle’s inventions, is neither a recent development nor a fictitious arrangement
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`by counsel strategically to place important evidence in the Western District of Tennessee. Mr.
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`Hoyle, as CEO and inventor, will likely be a key B.E. witness, but Motorola makes no mention
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`of him, and it makes no attempt to overcome the significance of his presence in the District.
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`B.E.’s contacts with the forum were not manufactured for litigation and as a result, its choice of
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`forum is entitled to “substantial weight.”
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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 11 of 23 PageID 167
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`Motorola seeks to undercut B.E.’s obvious connection to the District by pointing out that
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`B.E. “registered to do business in the Western District of Tennessee just one day before initiating
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`its litigations against 19 defendants in this District.” D.E. at 18-1 at 1. B.E. does not rely on the
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`simple fact that it is registered to conduct business in Tennessee as a basis for establishing B.E.’s
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`connection to the District. B.E. registered because it has a connection to Tennessee; it did not
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`register to establish a connection. If the timing of B.E.’s registration is to be questioned, it
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`should be understood that the registration was made after Mr. Hoyle chose to remain in
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`Tennessee, rather than return to Louisiana. Hoyle Decl. ¶ 4. When B.E. was preparing to file
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`this action and Mr. Hoyle discovered that B.E. had not registered to do business in Tennessee,
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`the registration was made. Id. ¶ 8. Regardless, B.E. does not contend that its contacts with the
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`forum are established by its registration. Motorola’s assault on this straw man is not sufficient to
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`carry its burden.
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`B.
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`Private Factors Favor B.E.’s Choice of Forum.
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`While B.E.’s choice of forum is entitled to substantial weight, the Court is nevertheless
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`required to evaluate private and public factors in determining whether to grant Motorola’s
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`motion. “The private interests of the parties that courts consider when determining whether to
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`transfer a case include: the convenience of the parties, the convenience of witnesses, the location
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`of sources of proof, where the operative facts occurred, the relative ability of litigants to bear
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`expenses in any particular forum, and other practical problems affecting the case.” Hunter Fan,
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`2006 WL 1627746, at *2.
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`1.
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`Convenience of the Parties Weighs Against Transfer.
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`The Western District of Tennessee is more convenient for B.E. than the Northern District
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`of California. As previously explained, B.E. and its CEO, the inventor of the patents-in-suit,
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`reside within the District. B.E.’s corporate documents and records are here as well. Outside of
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`witness convenience, Motorola does not make an explicit argument that it will be
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`inconvenienced by conducting litigation in Tennessee. It is reasonable to require companies with
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`the wealth and size of Motorola to litigate in jurisdictions in which they regularly conduct
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`business. See Lucent Techs., Inc. v. Aspect Telecomms. Corp., 1997 WL 476356, at *4 (E.D. Pa.
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`Aug. 20, 1997) (finding it reasonable to force a public company with “$300 million a year in
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`sales and approximately $216 million in current assets, to travel to places where it is subject to
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`jurisdiction in order to defend its corporate interests”). Motorola is a large and wealthy company
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`that is wholly-owned by an even larger and wealthier company. Google reported for the fiscal
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`quarter ending September 30, 2012 that Motorola generated $2,575,000,000 in revenue which
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`contributed to Google’s $2,176,000,000 of net income for the quarter. Declaration of Daniel
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`Weinberg (“Weinberg Decl.”) Ex. A. Google acquired Motorola for a reported $12,500,000,000.
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`To defend it in this action, Motorola has retained lawyers from New York City, Washington
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`D.C., and Memphis. It is doubtful that Motorola will suffer hardship or inconvenience by
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`litigating in the Western District of Tennessee.
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`2.
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`Convenience of the Witnesses Weighs Against Transfer.
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`Motorola argues that the Northern District of California would be a more convenient
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`venue for its own witnesses because, “[s]imply put, it is more convenient for witnesses to testify
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`at home.” D.E. 18-1 at 9. By the same logic, transfer to the Northern District of California
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`would be equally inconvenient to B.E.’s witnesses, none of whom is located in the Northern
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`District of California. Moreover, Motorola offers precious little about who the witnesses are,
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`what they will say, and why they are important to this case. “To sustain a finding on [the
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`convenience of the witnesses] . . . 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
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`trial testimony to enable the court to assess the materiality of evidence and the degree of
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`inconvenience.’” Rinks v. Hocking, 2011 WL 691242, at *3 (W.D. Mich. Feb. 16, 2011)
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`(quoting Koh v. Microtek Int’l, Inc., 250 F. Supp. 2d 627, 636 (E.D. Va. 2003)); Samsung Elecs.
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`Co. v. Rambus, Inc., 386 F. Supp. 2d 708, 718 (E.D. Va. 2005) (same). District courts typically
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`require affidavits or declarations that contain admissible evidence setting forth “who the key
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`witnesses will be and what their testimony will generally include.” Rinks, 2011 WL 691242, at
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`*3 (quoting Adoma v. Univ. of Phoenix, Inc., 711 F. Supp. 2d 1142, 1151 (E.D. Cal. 2010)); see
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`also Board of Trs. v. Baylor Heading & Air Conditioning, Inc., 702 F. Supp. 1253, 1258 (E.D.
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`Va. 1988) (“Witness convenience . . . cannot be assessed in the absence of reliable information
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`identifying the witnesses involved and specifically describing their testimony.”). Motorola
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`provides none of that.
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`a.
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`Party Witnesses.
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`Motorola claims that the “relevant engineers and employees” who are likely to be party
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`witnesses would be inconvenienced if the case remains in Tennessee, but offers no particularized
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`information enabling the Court to ascertain how much weight to give the claim of inconvenience.
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`Motorola fails to identify any witnesses by name, position title, location, the subject matter on
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`which they will testify, or the burdens they would endure by traveling to Tennessee to testify.
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`Motorola merely states that “the Google employees most knowledgeable of the design,
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`development and operation of Google’s Android operating system and Google play are located at
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`Google in Mountain View, California.” Declaration of Thomas V. Miller (“Miller Decl.”) ¶ 5.
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`“[A] party that ‘fails to identify the witnesses’ and ‘what their testimony would be’ cannot
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`establish that a particular forum is inconvenient.” Esperson v. Trugreen Ltd. P’ship, 2010 WL
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`4362794, *8 (W.D. Tenn. Oct. 5, 2010) (quoting Roberts Metals, Inc. v. Florida Props. Mktg.
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`Grp., Inc., 138 F.R.D. 89, 93 (N.D. Ohio 1991), aff’d per curiam, 22 F.2d 1104 (6th Cir. 1994)).
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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 14 of 23 PageID 170
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`Motorola’s vague representations concerning witness inconvenience do not meaningfully
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`aid in the evaluation of this factor. It is “the materiality and importance of the testimony of
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`prospective witnesses, and not merely the number of witnesses, [that] is crucial to this inquiry.”
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`Rinks, 2011 WL 691242, at *3 (citing Viron Int’l Corp. v. David Boland, Inc., 237 F. Supp. 2d
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`812, 816 (W.D. Mich. 2002)).
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`Moreover, Motorola’s admits that some Motorola employees who reside outside the
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`Northern District of California may be called to testify at a trial in Memphis. See D.E. 18-1 at 4,
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`n.6 (“Motorola acknowledges that there are likely some witnesses and documents relevant to
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`other aspects of the accused products, such as the sales and marketing of the accused products,
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`that may be located outside the Northern District of California.”). If the witnesses reside near
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`Motorola Illinois headquarters, trial in Memphis would be more convenient than the Northern
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`District of California.
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`Motorola also fails to provide admissible evidence establishing how travel from
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`California to Tennessee would impose “significant inconvenience for the Google Android and
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`California-based Motorola witnesses.” D.E. 18-1 at 9. It does not address the availability of
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`commercial flights between the Northern District of California and the Western District of
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`Tennessee or how long the trip takes, and it does not assert that Motorola will not cover any
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`travel expenses of its employee witnesses.
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`Motorola also does not provide admissible evidence of how its global operations would
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`be adversely affected by the case staying in Tennessee. Motorola merely states that “the
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`employees who are likely to serve as trial witnesses are a core group of employees, whose
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`absence would adversely affect the operations of Google and Motorola.” Id. at 10. That’s it.
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`Motorola fails to provide the names, position titles, or responsibilities of this “core group” of
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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 15 of 23 PageID 171
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`employees or how their absence from California or Illinois would harm Google’s or Motorola’s
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`global business operations.
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`Finally, Motorola has not shown that all of Google’s or its witnesses will necessarily be
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`forced to testify in Tennessee. Typically, though not always, depositions are taken in locations
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`convenient for the witnesses or subject to agreements between the parties mindful of witness
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`convenience. It is likely that Google’s and Motorola’s California-based employees will be
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`deposed in California where B.E.’s lead counsel is based. See Hunter Fan, 2006 WL 1627746,
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`at *2 (witness convenience does not favor transfer where plaintiff “plans to take the depositions
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`of witnesses who are California residents, including Defendant’s employees, in California”).
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`b.
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`Non-Party Witnesses.
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`Motorola next argues that the case should be transferred because third-party witnesses,
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`including “inventors and assignees of relevant prior art” are located outside the Western District
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`of Tennessee. See D.E. 18-1 at 9-10. While the convenience of third party witnesses is a
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`consideration in evaluating a motion to transfer, it is not entitled to great weight where, as here,
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`the movant fails to establish that the third party testimony will be material or important. See
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`Rinks, 2011 WL 691242, at *3 (stating “the materiality and importance of the testimony of the
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`prospective witness” is “crucial to this inquiry”).
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`Motorola list six United States patents that it contends “may be prior art to the ‘290
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`Patent.”2 D.E. 18-1 at 5-6. Prior art inventor testimony may not be used to vary the words of the
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`alleged prior art and admissible prior art inventor testimony is almost certain to be severely
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`2 While Motorola identifies potential prior art in the motion to transfer, it failed to identify any
`prior art in its subsequently-filed answer and affirmative defense of invalidity, D.E. 21, despite
`the requirements that answers and affirmative defenses be adequately pled under Fed. R. Civ. P.
`8 and capable of withstanding a challenge under Rule 12(b)(6) or Rule 12(f). See Surface
`Shields, Inc. v. Poly-Tak Prot. Sys., 213 F.R.D. 307, 308 (N.D. Ill. 2003); Duramed Pharms.,
`Inc. v. Watson Labs., Inc., 2008 U.S. Dist. LEXIS 103398, at *10-11 (D. Nev. Dec. 12, 2008);
`Qarbon.com v. eHelp Corp., 315 F. Supp. 2d 1046, 1050-51 (N.D. Cal. 2004).
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`Case 2:12-cv-02866-JPM-tmp Document 26 Filed 01/07/13 Page 16 of 23 PageID 172
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`limited by the time of trial. See, e.g., Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1375
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`(Fed. Cir. 2008) (affirming order limiting prior art inventor’s testimony to the “actual words and
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`content” of the patent application). Therefore, the testimony of these so-called west coast-based
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`prior art inventors and assignees does not weigh in favor of transfer.
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`Moreover, Motorola fails to establish the current locations of any of the inventors or
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`assignees, apparently relying exclusively on the dated information disclosed in the patents
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`themselves. Even if the Court were to assume that each inventor and assignee resides in the
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`same location he, she, or it did at the time the patents issued, some of which date back almost 20
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`years, more than half of the inventors reside outside the Northern District of California and three
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`of them reside in Oregon.
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`Motorola adds that the availability of compulsory process3 in California weighs in favor
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`of transfer because “Motorola will be unable to compel [numerous inventors and assignees of
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`relevant prior art]” to testify in Tennessee while it “can compel these w