888 F. Supp. 2d 342
E.D.N.Y2012Background
- EasyWeb filed a patent infringement suit against Facebook in the Southern District of New York.
- Facebook moved to transfer the case to the Northern District of California; the court denied the transfer.
- EasyWeb’s home district is New York, where its sole owner and employee resides.
- Operative facts and patents-in-suit were conceived, reduced to practice, and asserted largely in New York, with some related activity in California.
- Facebook argues most evidence and witnesses are in California; EasyWeb argues that both districts contain loci of operative facts and that the NY forum should be preserved due to plaintiff’s home status and financial burden on EasyWeb.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether 1404(a) transfer is warranted given the parties’ circumstances | Plaintiff’s home forum should be given deference and transfer would shift inconvenience | Transfer would promote convenience and access to witnesses and documents in California | Denied; plaintiff’s forum should not be disturbed given home status and factors balance against transfer |
| Locus of operative facts in patent case | Locus includes NY due to patent design/development and where the invention was developed | Locus lies where the infringing product was designed/developed (California) | Neutral; both districts are loci of operative facts and the factor does not dictate transferring |
| Convenience of witnesses | Many key witnesses are in NY; transferring would impose burden on plaintiff | Most relevant witnesses are in California; some may be outside the district | Neutral; at this stage, not clear who will be called or their materiality |
| Relative means of the parties | EasyWeb (a small NY company) would face significant financial burden litigating in CA | Facebook is a large corporation; burden on Facebook is less persuasive | Favors denial of transfer; plaintiff’s financial burden weighs against transfer |
| Familiarity with governing law and remaining factors | Governing patent law is universal; NY forum suitable | Governing law is federal patent law; both districts are capable | Neutral; no factor compels transfer |
Key Cases Cited
- D.H. Blair & Co., Inc. v. Gottdiener, 462 F.3d 95 (2d Cir. 2006) (broad discretion in § 1404(a) and balancing factors)
- Royal Ins. Co. of Am. v. United States, 998 F.Supp. 351 (S.D.N.Y. 1998) (plaintiff’s choice given weight but diminished when connection to forum is weak)
- Neil Bros. Ltd. v. World Wide Lines, Inc., 425 F.Supp.2d 325 (E.D.N.Y. 2006) (convenience of witnesses and locus of operative facts discussed in patent context)
- Children’s Network, LLC v. PixFusion LLC, 722 F.Supp.2d 404 (S.D.N.Y. 2010) (locus of operative facts may include where patent and infringing product were designed/developed/produced)
- Fuji Photo Film, Co. v. Lexar Media, Inc., 415 F.Supp.2d 370 (S.D.N.Y. 2006) (operative facts include design, development, production of patented product)
- TouchTunes Music Corp. v. Rowe Int’l Corp., 676 F.Supp.2d 169 (S.D.N.Y. 2009) (factors framed for § 1404(a) in patent context)