2:12-cv-02767
W.D. Tenn.Jul 19, 2013Background
- B.E. Technology, LLC (assignee of U.S. Patent No. 6,771,290) sued Amazon alleging Kindle products infringe Claim 2 of the ’290 patent. Complaint filed Sept. 7, 2012.
- Amazon (Delaware corp., principal place of business Seattle) moved under 28 U.S.C. § 1404(a) to transfer the case from the Western District of Tennessee (Memphis) to the Northern District of California (Cupertino), arguing key engineers, source code, and prior-art witnesses are located there.
- B.E. (registered to do business in Tennessee; CEO/inventor Martin Hoyle lives in Tennessee and B.E. identifies Memphis as its principal place of business) opposed transfer, stressing its local connections, location of patent-conception documents, and hardship if forced to litigate in California.
- Court found threshold requirement met (case could have been brought in N.D. Cal.) and evaluated convenience-to-witnesses, convenience-to-parties (sources of proof and financial hardship), and interests of justice.
- Court determined: Amazon showed some relevant employee and non-party witnesses and documents are in California, but did not meet its burden to prove transfer would be clearly more convenient overall; B.E.’s local ties and presumed key witness (Hoyle) weighed against transfer.
- Result: Motion to transfer denied; stay lifted and case proceeded in Western District of Tennessee.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the case should be transferred under 28 U.S.C. § 1404(a) | Transfer is improper because B.E. has substantial ties to W.D. Tenn., key party witness (Hoyle) and patent-conception documents are in Tennessee | Transfer is appropriate because accused-product engineers, technical documents, source code, and numerous prior-art witnesses are in N.D. Cal. (or Seattle) | Denied — Amazon failed to show N.D. Cal. is clearly more convenient when balancing witnesses, parties, and interests of justice |
| Weight of party vs. non-party witness convenience | B.E. emphasized Hoyle’s importance and that its witnesses are local | Amazon emphasized numerous Amazon employee witnesses and multiple non-party prior-art witnesses in California | Court gave greater weight to non-party witness convenience but found Amazon’s showing insufficient to overcome B.E.’s ties; factor did not favor transfer overall |
| Importance of location of documentary sources given electronic discovery | B.E. argued location is less important today and many documents already produced | Amazon argued bulk of technical/source-code documents and other discovery are physically in California or Seattle and thus more convenient there | Court rejected minimizing this factor but found both sides maintain relevant documents; location favored N.D. Cal. only slightly and was not dispositive |
| Local interest and trial efficiency (interests of justice) | B.E. argued strong local interest because patent owner and inventor reside in district; faster trial median in W.D. Tenn. | Amazon argued N.D. Cal. has local interest because accused products were developed there; contended some efficiency benefits | Factor neutral-to-against transfer — local interests balanced; statistical timing factors neutral; transfer not warranted |
Key Cases Cited
- Reese v. CNH Am. LLC, 574 F.3d 315 (6th Cir.) (district courts have broad discretion under § 1404(a))
- Moore v. Rohm & Haas Co., 446 F.3d 643 (6th Cir.) (courts consider private-interest convenience and public-interest justice factors)
- Norwood v. Kirkpatrick, 349 U.S. 29 (U.S. 1955) (§ 1404(a) permits transfers on a lesser showing than forum non conveniens)
- In re Acer Am. Corp., 626 F.3d 1252 (Fed. Cir.) (public-interest factors list for venue transfers)
- In re Nintendo Co., Ltd., 589 F.3d 1194 (Fed. Cir.) (local-interest factor can strongly favor transfer)
- Van Dusen v. Barrack, 376 U.S. 612 (U.S.) (transfer statute aims for a more convenient forum, not one equally inconvenient)
- In re LinkAMedia Devices Corp., 662 F.3d 1221 (Fed. Cir.) (location of documents remains a relevant factor despite electronic discovery)
- In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir.) (district court must consider sources-of-proof factor and may not ignore physical document location)