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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
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`B.E. TECHNOLOGY, LLC,
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`Plaintiff,
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`v.
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`MOTOROLA MOBILITY
`HOLDINGS LLC,
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`Defendant.
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`No.: 2:12-cv-02866-JPM-tmp
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`
`ORDER DENYING MOTION TO TRANSFER VENUE
`
`
`Before the Court is Defendant Motorola Mobility Holdings
`LLC’s (“Defendant” or “Motorola”) Motion to Transfer Venue
`Pursuant to 28 U.S.C. § 1404(a), filed December 19, 2012. (ECF
`No. 18.) For the reasons that follow, the Motion is DENIED.
`I. BACKGROUND
`
`This case concerns Defendant Motorola’s alleged
`infringement of United States Patent No. 6,771,290 (the “‘290
`patent”). (ECF No. 1.) Plaintiff B.E. Technology, LLC
`(“Plaintiff or “B.E.”), is the assignee of the ‘290 patent (ECF
`No. 26 at 2), currently owning “all right, title, and interest
`in the ‘290 patent, and has owned all right, title, and interest
`throughout the period” of the alleged infringement (ECF No. 1
`¶ 10).
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`B.E. alleges that Motorola infringed the ‘290 patent “by
`using, selling, and offering to sell in the United States
`products that directly infringe at least Claim 2 of the ‘290
`patent either literally or under the doctrine of equivalents.”
`(Id. ¶ 11.) The Motorola products alleged to infringe the ‘290
`patent include “Motorola tablets: Xyboard and Xoom tablets;
`Motorola smartphones: Atrix, Electrify 2, Defy XT, Photon Q 4G
`LTE.” (Id.)
`B.E. filed a Complaint in this Court on October 2, 2012.
`(ECF No. 1.) Motorola filed its Motion to Transfer Venue on
`December 19, 2012 (ECF No. 18), and filed its Answer to the
`Complaint on December 31, 2012 (ECF No. 21). B.E. filed its
`Memorandum in Opposition to Defendant’s Motion to Transfer Venue
`on January 7, 2013. (ECF No. 26.) With leave of Court,
`Motorola filed a Reply Memorandum in Support of Its Motion to
`Transfer on January 30, 2013. (ECF No. 35.) On February 7,
`2013, Motorola filed a Motion to Stay pending resolution of its
`Motion to Transfer Venue. (ECF No. 38.) The Court granted
`Motorola’s Motion to Stay on February 11, 2013. (ECF No. 41.)
`While Motorola is a Delaware corporation with its principal
`place of business in Illinois, it seeks to transfer this case to
`the Northern District of California because it is a wholly owned
`subsidiary of Google, Inc. (“Google”), which is headquartered in
`the Northern District of California. (ECF No. 18-1 at 1, 4.)
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`To support its Motion, Motorola contends that all the “features
`and functionalities” of its products alleged to have infringed
`the ‘290 patent operate on Google’s Android operating system and
`Google Play, and were developed in the Northern District of
`California. (Id. at 2.) As a result, “the vast majority of
`witnesses and documents” regarding the accused products are
`located in that district. (Id.) Further, Motorola asserts that
`a majority of third-party witnesses on whom it intends to rely
`are also located in or around the Northern District of
`California. (Id.)
`B.E. opposes Motorola’s Motion to Transfer. B.E. is a
`limited liability company incorporated in Delaware. (ECF No. 1
`¶ 2.) B.E. was originally registered in Michigan, but formally
`registered to conduct business in Tennessee in September 2012.
`(ECF No. 26 at 2.) B.E. contends that Memphis, Tennessee, is
`its principal place of business. (ECF No. 1 ¶ 2.) Martin David
`Hoyle (“Hoyle”), B.E.’s founder and CEO, is the named-inventor
`of the ‘290 patent. (ECF No. 26 at 1, 2.) Hoyle has been a
`resident of Tennessee since April, 2006. (Id. at 1, 2.)
`B.E. argues that transfer is inappropriate because it has
`substantial connections with this district. B.E. argues that
`Hoyle has been “present in this District since 2006, and B.E.
`since at least 2008,” and this district is B.E.’s principal
`place of business. (Id. at 4-5.) B.E. also argues that none of
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`its witnesses are located in the Northern District of
`California. (Id. at 7.) Further, B.E. argues that its
`corporate documents, including documents relating to the
`“conception and reduction to practice” of the patents-in-suit,
`are located in this District. (Id. at 4, 5, 7.)
`II. STANDARD
`
`Motorola moves the Court to transfer this case to the
`Northern District of California pursuant to 28 U.S.C. § 1404(a).
`(ECF No. 18-1 at 1.) The statute provides that “[f]or the
`convenience of the parties and witnesses, in the interest of
`justice, a district court may transfer any civil action to any
`other district or division where it might have been brought.”
`28 U.S.C. § 1404(a). “As the permissive language of the
`transfer statute suggests, district courts have ‘broad
`discretion’ to determine when party ‘convenience’ or ‘the
`interest of justice’ make a transfer appropriate.” Reese v. CNH
`Am. LLC, 574 F.3d 315, 320 (6th Cir. 2009).
`
`In determining whether to transfer a case under § 1404(a),
`the court must first determine whether the claim could have been
`brought in the transferee district. 28 U.S.C. § 1404(a)
`(allowing transfer to any other district in which the claim
`“might have been brought”). Once the court has made this
`threshold determination, the court must then determine whether
`party and witness “convenience” and “the interest of justice”
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`favor transfer to the proposed transferee district. Reese, 574
`F.3d at 320; Esperson v. Trugreen Ltd., No. 2:10-cv-02130-STA-
`cgc, 2010 WL 4362794, at *5 (W.D. Tenn. Oct. 5, 2010), adopted
`2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010). In weighing these
`statutory factors, the court may still consider the private- and
`public-interest factors set forth in the pre-Section 1404(a)
`case, Gulf Oil v. Gilbert, 330 U.S. 501, 508-09 (1947), but
`courts are not burdened with “preconceived limitations derived
`from the forum non conveniens doctrine.” Norwood v.
`Kirkpatrick, 349 U.S. 29, 31 (1955) (quoting All States Freight
`v. Modarelli, 196 F.2d 1010, 1011 (3d Cir. 1952)) (internal
`quotation marks omitted); Esperson, 2010 WL 4362794, at *5. The
`United States Court of Appeals for the Sixth Circuit has stated
`that when deciding “a motion to transfer under § 1404(a), a
`district court should consider the private interests of the
`parties, including their convenience and the convenience of
`potential witnesses, as well as other public-interest concerns,
`such as systemic integrity and fairness, which come under the
`rubric of ‘interests of justice.’” Moore v. Rohm & Haas Co.,
`446 F.3d 643, 647 n.1 (6th Cir. 2006).
`Additionally, the “interest of justice” factor has been
`interpreted broadly by courts, influenced by the individualized
`circumstances of each case. The United States Court of Appeals
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`for the Federal Circuit has set forth a non-exhaustive list of
`pertinent public-interest factors:
`The public interest factors include (1) the
`administrative
`difficulties
`flowing
`from
`court
`congestion; (2) the local interest in having localized
`interests decided at home; (3) the familiarity of the
`forum with the law that will govern the case; and (4)
`the avoidance of unnecessary problems of conflicts of
`laws or in the application of foreign law.
`
`In re Acer Am. Corp., 626 F.3d 1252, 1254 (Fed. Cir. 2010); see
`also In Re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir.
`2009) (finding the local-interest factor weighed heavily in
`favor of transfer); Cincinnati Ins. Co. v. O’Leary Paint Co.,
`676 F. Supp. 2d 623, 633 (W.D. Mich. 2009) (considering
`additional factors such as the relative docket congestion of the
`transferor and transferee districts).
`
`Initially, B.E. argues that there is a strong presumption
`in favor of its choice of forum, and its choice of forum should
`not be disturbed unless the defendant carries its burden to
`demonstrate that the balance of convenience strongly favors
`transfer. (ECF No. 26 at 4-6.) B.E.’s argument is erroneously
`derived from the more stringent forum-non-conveniens standard.
`Compare Hunter Fan Co. v. Minka Lighting, Inc., No. 06–2108
`M1/P, 2006 WL 1627746 (W.D. Tenn. June 12, 2006) (applying the
`appropriate private- and public-interest factors but relying on
`the forum-non-conveniens doctrine to accord strong deference to
`the plaintiff’s choice of forum), with OneStockDuq Holdings,
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`LLC v. Becton, Dickinson, & Co., No. 2:12–cv–03037–JPM–tmp, 2013
`WL 1136726, at *3 (W.D. Tenn. Mar. 18, 2013), and Roberts
`Metals, Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89,
`92-93 (N.D. Ohio 1991) (recognizing defendants need to make a
`lesser showing to overcome plaintiff’s choice of forum under
`§ 1404(a)), aff’d per curiam, 22 F.3d 1104 (6th Cir. 1994).
`Although there is a strong presumption in favor of the
`plaintiff’s choice of forum under the doctrine of forum non
`conveniens, under § 1404(a), a plaintiff’s choice of forum may
`be considered, but is entitled to less deference. Discussing
`the difference between the common-law doctrine of forum non
`conveniens and the federal transfer-of-venue statute in Norwood,
`the Supreme Court stated,
`When Congress adopted § 1404(a), it intended to
`do more than just codify the existing law on forum non
`conveniens. . . . [W]e believe that Congress, by the
`term “for the convenience of parties and witnesses, in
`the interest of justice,” intended to permit courts to
`grant
`transfers
`upon
`a
`lesser
`showing
`of
`inconvenience. This is not to say that the relevant
`factors have changed or that the plaintiff’s choice of
`forum is not to be considered, but only that the
`discretion to be exercised is broader.
`
`Norwood, 349 U.S. at 32; see also Lemon v. Druffel, 253 F.2d
`680, 685 (6th Cir. 1958) (“The choice of the forum by the
`petitioner is no longer as dominant a factor as it was prior to
`the ruling in Norwood v. Kirkpatrick[.]”); Esperson, 2010 WL
`4362794, at *5-6.
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`Defendant’s burden under § 1404(a) is to demonstrate that a
`change of venue to the transferee district is warranted. See
`Eaton v. Meathe, No. 1:11-cv-178, 2011 WL 1898238, at *2 (W.D.
`Mich. May 18, 2011); Amphion, Inc. v. Buckeye Elec. Co., 285 F.
`Supp. 2d 943, 946 (E.D. Mich. 2003); Roberts Metals, Inc., 138
`F.R.D. at 93. “Merely shifting the inconvenience from one party
`to another does not meet Defendant’s burden.” McFadgon v. Fresh
`Mkt., Inc., No. 05-2151-D/V, 2005 WL 3879037, at *2 (W.D. Tenn.
`Oct. 21, 2005). “[T]he movant must show that the forum to which
`he desires to transfer the litigation is the more convenient one
`vis a vis the Plaintiff’s initial choice.” Roberts Metals,
`Inc., 138 F.R.D. at 93 (quoting Mead Corp. v. Oscar J. Boldt
`Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981)) (internal
`quotation marks omitted). If the court determines that the
`“balance between the plaintiff’s choice of forum and defendant’s
`desired forum is even, the plaintiff’s choice of [forum] should
`prevail.” Stewart v. Am. Eagle Airlines, Inc., No. 3:10-00494,
`2010 WL 4537039, at *2 (M.D. Tenn. Nov. 3, 2010).
`III. ANALYSIS
`
`Motorola asserts that B.E. could have brought this action
`in the Northern District of California. (See ECF No. 18-1 at 7-
`8.) B.E. does not dispute this assertion. (See ECF No. 26 at
`4.) The Court agrees with the parties that B.E. could have
`brought suit in the Northern District of California as personal
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`jurisdiction over Motorola exists in that district. Therefore,
`the only issue remaining is whether the balance of the statutory
`factors — the convenience to the witnesses, the convenience to
`the parties, and the interest of justice — favors transfer to
`the Northern District of California. The Court will address
`each statutory factor separately and balance these factors to
`determine whether transfer to the Northern District of
`California is proper pursuant to § 1404(a).
`A. Convenience of the Witnesses
`When asserting that a transferee district is more
`convenient for witnesses, a party “must produce evidence
`regarding the precise details of the inconvenience” of the forum
`chosen by the plaintiff. Esperson, 2010 WL 4362794, at *8. To
`satisfy its burden, the movant must do “more than simply
`assert[] that another forum would be more appropriate for the
`witnesses; he must show that the witnesses will not attend or
`will be severely inconvenienced if the case proceeds in the
`forum district.” Id. (quoting Roberts Metals, Inc., 138 F.R.D.
`at 93). Further, “[t]o sustain a finding on [this factor] . . .
`the party asserting witness inconvenience has the burden to
`proffer, by affidavit or otherwise, sufficient details
`respecting the witnesses and their potential testimony to enable
`a court to assess the materiality of evidence and the degree of
`inconvenience.” Eaton v. Meathe, No. 1:11-cv-178, 2011 WL
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`1898238, at *3 (W.D. Mich. May 18, 2011) (quoting Rinks v.
`Hocking, 1:10-CV-1102, 2011 WL 691242, at *3 (W.D. Mich. Feb.
`16, 2011)) (internal quotation marks omitted). It is the
`“materiality and importance of the testimony of prospective
`witnesses, and not merely the number of witnesses,” that is
`crucial to this inquiry. Rinks, 2011 WL 691242, at *3.
`
`Motorola contends that witness convenience favors transfer
`to the Northern District of California. (See ECF No. 18-1 at 4-
`6; ECF No. 35 at 5-7.) To support this contention, Motorola
`asserts that a majority of the witnesses on which it intends to
`rely are located in that district. These witnesses include
`Google employees “knowledgeable of the design, development and
`operation of Google’s Android operating system and Google play
`system” (Miller Aff., ECF No. 18-2, ¶ 5), “Motorola employees
`with knowledge of the accused products” (id. ¶ 6), and at least
`twelve non-party witnesses that are “located in or around the
`Northern District of California” (ECF No. 35 at 5).
`
`In response, B.E. argues that “transfer to the Northern
`District of California would be equally inconvenient to B.E.’s
`witnesses, none of whom is located in the Northern District of
`California.” (See ECF No. 26 at 7.) B.E. identifies Hoyle, the
`named-inventor of the patents-in-suit and founder and CEO of
`B.E., as its key witness who is located in the Western District
`of Tennessee. (Id. at 5-7.)
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`Because the convenience of party and non-party witnesses is
`
`given different weight, the Court will analyze the witnesses
`separately. See Azarm v. $1.00 Stores Servs., Inc., No. 3:08-
`1220, 2009 WL 1588668, at *4 (M.D. Tenn. June 5, 2009) (“[T]he
`convenience of potential non-party witnesses, who are not
`subject to the control of the parties, is a particularly weighty
`consideration, because it is generally presumed that party
`witnesses will appear voluntarily in either jurisdiction, but
`non-party witnesses, with no vested stake in the litigation, may
`not.”).
`1. Party Witnesses
`
`
`
`Motorola asserts that, “based on the asserted claim” of the
`‘290 patent, it “believes the accused functionalities relate to
`the Google Android operating system and Google Play.” (ECF No.
`18-1 at 4.) Motorola contends that the “employees most
`knowledgeable about the design, development and operation of the
`Android operating system, and Google play, are located in the
`Northern District of California.” (Id. (citing Miller Aff., ECF
`No. 18-2, ¶ 5).) Motorola also “acknowledges that there are
`likely some witnesses . . . 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,” but maintains that the “majority” are located
`within the transferee district. (ECF No. 18-1 at 4 n.6.)
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`Motorola contends that its identification of its own employees
`and Google’s employees is “sufficient ‘to enable the court to
`assess the materiality of evidence and the degree of
`inconvenience.’” (ECF No. 35 at 6 (quoting Rinks, 2011 WL
`691242, at *3).) Motorola further asserts that it attempted to
`specify its potential witnesses, but is “unable to identify
`specific material witnesses because B.E.’s infringement
`contentions lack specificity as to the functionality of the
`accused products and services that allegedly infringe.” (Id. at
`7.)
`Motorola does not provide any evidence showing that any
`employees will be unwilling to testify in this district if asked
`to do so or how such employees will be “severely inconvenienced”
`if the case proceeds in this district. See Esperson, 2010 WL
`4362794, at *8. Moreover, courts have noted that “normally a
`corporation is able to make its employees available to testify
`when needed.” Clark v. Dollar Gen. Corp., No. 3-00-0729, 2001
`U.S. Dist. LEXIS 25975, at *9 (M.D. Tenn. Mar. 6, 2001); see
`also Zimmer Enters. V. Atlandia Imps., Inc., 478 F. Supp. 2d
`983, 991 (S.D. Ohio Mar. 14, 2007) (finding that the convenience
`of witnesses who are employees “will not ordinarily be
`considered, or at least, that the convenience of such employees
`will not generally be given the same consideration as is given
`to other witnesses”). Accordingly, it appears that Motorola’s
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`and Google’s employees will be able to attend absent any
`evidence to the contrary.
`Therefore, regarding Motorola’s own employees or Google’s
`employees knowledgeable about the operating systems used in the
`accused products, Motorola cannot satisfy its burden. Motorola
`argues that due to the distance between Memphis and the Northern
`District of California, approximately 1800 miles, travel to
`Memphis “would impose a significant inconvenience for Google’s
`witnesses.” (ECF No. 18-1 at 9-10.) Yet, the same is true for
`B.E.’s witnesses, which B.E. asserts do not reside in the
`Northern District of California. (ECF No. 26 at 7.) Further,
`Motorola also has offices in Libertyville, Illinois, and as
`Libertyville is approximately 570 miles from Memphis, this
`district would be more convenient for any potential witnesses
`based in that location. Therefore, because § 1404(a) provides
`for transfer “to a more convenient forum, not to a forum likely
`to prove equally convenient or inconvenient,” distance of travel
`for employee witnesses does not weigh in favor of transfer.
`Hunter Fan, 2006 WL 1627746, at *2 (citing Van Dusen v. Barrack,
`376 U.S. 612, 645-46 (1964)).
`Motorola further argues that because “most of its witnesses
`. . . are located in or around the Northern District of
`California,” and because B.E. only identified one witness,
`Hoyle, this factor weighs in favor of transfer. (ECF No. 35 at
`
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`5.) With respect to the material witnesses, Motorola only
`generally identifies “employees” of both Google and Motorola who
`have particular knowledge about the “design, development and
`operation of the accused products and services.” (ECF No. 35 at
`6 (internal quotation marks omitted); see also Miller Aff., ECF
`No. 18-2, ¶ 5.) The affidavit supporting this assertion states,
`in pertinent part,
`a number of the individuals likely to have knowledge
`of the accused products and services are located in
`Northern California. The Google employees most
`knowledgeable of the design, development and operation
`of Google’s Android operating system and Google [P]lay
`are located at Google in Mountain View, California.
`In addition, some Motorola employees with knowledge of
`the accused products are located in California,
`including Sunnyvale and San Diego, California.
`
`(Miller Aff., ECF No. 18-2, ¶ 5.)
`
`Motorola cannot rely on such “bare allegations” to satisfy
`its burden. Esperson, 2010 WL 4362794, at *8. Motorola’s
`general statement that it believes material witnesses are
`located in California does not aid the court in assessing (1)
`what the testimony of such additional material witnesses will
`be; (2) whether such witnesses will be unable to attend; or (3)
`whether and to what extent such witnesses will be inconvenienced
`by testifying in this district. Additionally, Motorola misreads
`Rinks, wherein the court specifically stated, “Particularized
`information is necessary to enable a court to ascertain how much
`
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`weight to give a claim of inconvenience.” 2011 WL 691242, at
`*3.
`
`While B.E. did not specifically identify any witnesses
`beyond Hoyle, B.E. does not have the burden to do so. Despite
`B.E. not identifying any individuals beyond Hoyle, Motorola’s
`general identifications of “employees” of Google and Motorola as
`potential witnesses does not satisfy its burden on this factor.
`A simple numerical advantage is insufficient on the issues
`raised by a motion to transfer.
`Moreover, B.E. argues that “[i]t is likely that Google’s
`and Motorola’s California-based employees will be deposed in
`California where B.E.’s lead counsel is based.” (ECF No. 26 at
`10.) This further indicates that the witness-convenience factor
`does not weigh in favor of transfer. See Hunter Fan, 2006 WL
`1627746, at *2 (finding relevant that the plaintiff planned to
`take depositions of the defendant’s witnesses in California in
`determining that the witness convenience factor did not favor
`transfer).
`2. Non-Party Witnesses
`While convenience to party witnesses is an important
`consideration, “it is the convenience of non-party witnesses,
`rather than employee witnesses . . . that is the more important
`factor and is accorded greater weight.” Steelcase Inc. v. Smart
`Techs., 336 F. Supp. 2d 714, 721 (W.D. Mich. Mar. 5, 2004)
`
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`(citation omitted) (internal quotation marks omitted). Motorola
`asserts that it intends to rely on at least twelve non-party
`witnesses who have knowledge about prior art related to the
`patents in suit. (ECF No. 18-1 at 5-6; ECF No. 35 at 5.)
`Motorola states that it intends to subpoena “at least the
`inventors and/or assignees of the patents for documents, and
`seek their testimony, as part of its invalidity defense.” (ECF
`No. 18-1 at 6.) Motorola further contends that these witnesses
`“are all located in the Northern District of California or on
`the West Coast.” (ECF No. 18-1 at 10.) To support its
`contention, Motorola lists the ten witnesses and their last-
`known addresses. (ECF No. 18-1 at 5-6.) Motorola further
`claims that it has confirmed that at least six of the witnesses
`reside in the Northern District of California and “that all but
`one of the 10 prior art patents have either an inventor or
`assignee who resides in the District.” (ECF No. 35 at 7-8.)
`Motorola argues that to satisfy its invalidity defense,
`Motorola will need to subpoena these witnesses for documents and
`depositions. (ECF No. 18-1 at 10.) Additionally, Motorola
`argues that some of the non-party witnesses “may become key
`witnesses for Motorola’s defense at trial.” (Id.) Motorola
`claims that it will not be able to compel these witnesses to
`testify at trial if the case remains in Tennessee, but will be
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`able to compel the witnesses to testify at trial in the Northern
`District of California. (Id.)
`B.E. argues that the convenience of third-party witnesses
`is not entitled to great weight in the instant case because
`Motorola has not established that the “third party testimony
`will be material or important.” (ECF No. 26 at 10.) B.E.
`argues that Motorola has not stated the “relevance, materiality,
`and importance” of the non-party witnesses’ testimony. (Id. at
`11-12.) B.E. further argues that prior-art testimony is “almost
`certain to be severely limited at the time of trial” and,
`therefore, such testimony does not weigh in favor of transfer.
`(Id. at 10-11.)
`The availability of compulsory process for unwilling
`witnesses is a consideration closely related to the convenience-
`of-witnesses factor and the costs of procuring the witness, and
`therefore is an important consideration for the Court. See,
`e.g., In re Acer, 626 F.3d at 1255; Rinks, 2011 WL 691242, at
`*4. Whether this factor should be given considerable weight
`depends on the materiality of the testimony to the resolution of
`the case. Rinks, 2011 WL 691242, at *4. A federal court in the
`Northern District of California would be able to compel the
`prior-art witnesses to testify at trial. See Fed. R. Civ. P.
`45(b)(2). In contrast, the prior-art witnesses would not be
`subject to the subpoena power in this district, see Fed. R. Civ.
`
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`P 45(c)(3)(A)(ii), but would be available for deposition in the
`Northern District of California if unwilling to testify in this
`district. Therefore, the testimony of such witnesses
`potentially would “not be live and therefore could be less
`persuasive.” Rinks, 2011 WL 691242, at *4.
`Motorola, however, has not disclosed the particulars of the
`testimony of the potential non-party witnesses, nor why
`depositions of non-party witnesses would be inadequate and live
`testimony from non-party witnesses required. To the extent the
`non-party witnesses’ testimony may be presented by deposition,
`witness inconvenience would not be an issue. Motorola merely
`states that some of the prior-art witnesses “may become key
`witnesses for Motorola’s defense at trial.” (ECF No. 18-1 at
`10.) This general statement is not sufficient to allow the
`Court to determine whether live testimony of Motorola’s non-
`party witnesses is necessary. Further, Motorola does not state
`whether it is aware that any of the non-party witnesses would be
`unwilling to testify in this district if asked to do so. As a
`result, this factor does not weigh in favor of transfer.
`B. Convenience of the Parties
`Motorola argues that the Northern District of California is
`
`“clearly a more convenient venue for this litigation.” (See id.
`at 1.) While Motorola organizes its arguments somewhat
`differently than the Court, the Court finds the considerations
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`relevant to the convenience-of-the-parties factor are the
`location of the sources of proof and the parties’ financial
`hardships due to litigation in the chosen forum.
`1. Location of Sources of Proof
`
`
`
`Motorola argues that “the vast majority of potentially
`relevant documents related to the research, design, and
`development of the Android operating system and Google Play, are
`located in the Northern District of California.” (ECF No. 18-1
`at 8.) Motorola contends that the volume of these “potentially
`relevant documents . . . far exceeds the volume of documents in
`Tennessee.” (ECF No. 35 at 4.)
`
`B.E. argues that, because its CEO resides in the Western
`District of Tennessee, its corporate documents and records,
`“including documents demonstrating the conception and reduction
`to practice of [the patents-in-suit],” are located in the
`Western District. (ECF No. 26 at 5-6.) B.E. notes that while
`Motorola’s sources of proof are located in the Northern District
`of California, B.E.’s own sources of proof are located in
`Tennessee and have been maintained there for years. (Id. at
`12.) B.E. also contends that “the location of relevant
`documentary evidence is increasingly less important in deciding
`motions to transfer,” and that because documents can be
`exchanged electronically, the weight given this factor should be
`minimal. (Id. at 13.) B.E. finally argues that this factor
`
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`does not weigh in favor of transfer because “it can be expected
`that Motorola will eventually produce its documents to B.E.’s
`lead counsel in California, not to B.E. in Tennessee.” (Id.)
`
`As an initial matter, the Court disagrees with B.E.’s
`contention that advances in electronic document transfer reduce
`the importance of the location-of-sources-of-proof factor. This
`notion has been expressly rejected by the Federal Circuit. See,
`e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224
`(Fed. Cir. 2011) (reversing a district court that did not
`consider the factor, stating, “While advances in technology may
`alter the weight given to these factors, it is improper to
`ignore them entirely”); In re Genentech, Inc., 566 F.3d 1338,
`1345-46 (Fed. Cir. 2009) (finding clear error where a district
`court “minimized the inconvenience of requiring the petitioners
`to transport their documents by noting that ‘[t]he notion that
`the physical location of some relevant documents should play a
`substantial role in the venue analysis is somewhat antiquated in
`the era of electronic storage and transmission’” (quoting
`Sanofi-Aentis Deutschland GmbH v. Genentech, Inc., 607 F. Supp.
`2d 769, 777 (E.D. Tex. 2009))).
`
`The Court agrees that it is likely that the sheer volume of
`documents Motorola has in its possession outnumbers the patent-
`related documents in B.E.’s possession, but the Court disagrees
`that this is enough to tip the balance in favor of transfer.
`
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`The Court finds that both parties maintain documents in their
`respective districts; that both sets of documents will be
`integral to the proceedings; and that Motorola will be expected
`to serve its documents on B.E.’s counsel in Northern California,
`not in the Western District of Tennessee (see ECF No. 26 at 13).
`Motorola’s reliance on In re Nintendo and L&P Property
`Management Co. v. JTMD, LLC, No. 06-13311, 2007 WL 295027 (E.D.
`Mich. Jan. 29, 2007), is misplaced. (See ECF No. 18-1 at 8-9.)
`In both of those cases the courts found there were no relevant
`documents in the transferor district, therefore transfer was
`appropriate. See In Re Nintendo, 589 F.3d at 1199-1200; L&P
`Prop. Mgmt. Co., 2007 295027, at *4. In the instant case, B.E.
`has shown that relevant documents are located in Tennessee.
`Taken together, the aforementioned facts indicate that as to the
`location of the sources of proof, the Northern District of
`California is a somewhat more convenient venue for the parties
`to the instant case. This factor, however, is not sufficient,
`by itself, to require transfer.
`2. Financial Hardships Attendant to Litigating in
`the Chosen Forum
`
`Motorola argues that “the vast majority of the relevant
`
`engineers and employees work and/or reside in the Northern
`District of California, and none are located in Tennessee.”
`(ECF No. 18-1 at 9.) As a result, Motorola contends that travel
`
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`to Tennessee “would impose a significant inconvenience for the
`Google Android and California-based Motorola witnesses,” and as
`the likely trial witnesses are a “core group of employees,”
`their absence “would adversely affect the operations of Google
`and Motorola.” (Id. at 9-10.)
`B.E. states that it “would face a financial burden by
`having to litigate in the Northern District of California.”
`(ECF No. 26 at 14.) B.E.’s CEO Hoyle sta