Realtime Data LLC v. Silver Peak Systems, Inc
6:17-cv-00071
| E.D. Tex. | Feb 3, 2017Background
- Realtime Data LLC sued Silver Peak, HPE, and HPES for patent infringement in the Eastern District of Texas; related suits against other defendants were filed the same day.
- Realtime alleged an "HP/Silver Peak" business alliance and joined HPE/HPES with Silver Peak under 35 U.S.C. § 299; defendants admitted participation in HP AllianceONE but Silver Peak denied substantive product-level collaboration.
- Realtime’s infringement contentions for Silver Peak name only Silver Peak products and do not reference HPE/HPES; likewise Realtime’s contentions against HPE/HPES do not reference Silver Peak.
- Silver Peak is headquartered in Santa Clara, California and maintains its technical documents, source code, sales, marketing, and financial files in the Northern District of California; Realtime primarily maintains relevant documents in its Texas and New York offices.
- Silver Peak moved to sever and transfer its claims to the Northern District of California under 28 U.S.C. § 1404(a); the Court considered joinder under 35 U.S.C. § 299 and the § 1404(a) private and public convenience factors.
- The Court severed Silver Peak from HPE/HPES (finding improper joinder under § 299) and granted transfer of Silver Peak’s claims to the Northern District of California after weighing convenience factors.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Silver Peak is properly joined with HPE/HPES under 35 U.S.C. § 299 | Realtime: Silver Peak and HPE/HPES have a joint "solution"/alliance and jointly validated/tested accused products, supporting joinder | Silver Peak: Products are independently designed to run on many servers; alliance is marketing-only and Realtime’s contentions do not tie Silver Peak products to HPE/HPES | Court: Severed claims — marketing alliance alone insufficient; Realtime’s contentions show no common accused product, so joinder improper under § 299 |
| Whether the Northern District of California is a clearly more convenient venue under 28 U.S.C. § 1404(a) | Realtime: Eastern District has local interest and faster median time to trial; many Realtime witnesses and some Silver Peak customers are in Texas | Silver Peak: Key documents, source code, employees, and likely third-party witnesses are in N.D. Cal., making it clearly more convenient | Court: Granted transfer — majority of private factors favor transfer and local interest slightly favors transfer; overall N.D. Cal. is clearly more convenient |
| Weight to give plaintiff’s choice of forum | Realtime: choice of forum entitled to deference given its offices in Texas | Silver Peak: deference reduced where operative facts and convenience favor transfer | Court: Realtime’s choice afforded less weight where convenience factors favor transfer |
| Consideration of third-party/prior-art witnesses in transfer analysis | Realtime: Prior-art/third-party witnesses are not uniquely tied to N.D. Cal; videotaped depositions are feasible | Silver Peak: Identified specific former employees and prior-art authors in N.D. Cal. who have relevant, unique knowledge | Court: Gave weight to identified former Silver Peak employee(s) in N.D. Cal.; prior-art authors unlikely to be trial witnesses; overall compulsory process and witness-cost factors favor transfer |
Key Cases Cited
- In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012) (Rule 20/joinder requires an aggregate of operative facts common to defendants)
- In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc) (moving party must show transferee venue is clearly more convenient under § 1404(a))
- Volkswagen AG v. Woodson, 371 F.3d 201 (5th Cir. 2004) (convenience factors for transfer analysis)
- In re Nintendo Co., Ltd., 589 F.3d 1194 (Fed. Cir. 2009) (accused infringer presumptively has greater volume of relevant evidence)
- In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) (location of accused infringer’s witnesses and documents given substantial weight)
- In re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009) (documents moved in anticipation of litigation are not considered; local interest when key witnesses reside in transferee district)
- In re Vicor Corp., [citation="493 F. App'x 59"] (Fed. Cir. 2012) (existence of multiple suits and judicial economy relevant to transfer analysis)