B.E. Technology, LLC v. Facebook, Inc.

957 F. Supp. 2d 926, 2013 WL 3724950, 2013 U.S. Dist. LEXIS 97490
CourtDistrict Court, W.D. Tennessee
DecidedJuly 12, 2013
DocketNo. 2:12-cv-02769-JPM-tmp
StatusPublished
Cited by12 cases

This text of 957 F. Supp. 2d 926 (B.E. Technology, LLC v. Facebook, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Tennessee primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
B.E. Technology, LLC v. Facebook, Inc., 957 F. Supp. 2d 926, 2013 WL 3724950, 2013 U.S. Dist. LEXIS 97490 (W.D. Tenn. 2013).

Opinion

ORDER DENYING MOTION TO TRANSFER VENUE

JON P. McCALLA, Chief Judge.

Before the Court is Defendant Face-book, Inc.’s (“Defendant” or “Faeebook”) Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a), filed January 10, 2013. (ECF No. 29.) For the reasons that follow, the Motion is DENIED.

I. BACKGROUND

This case concerns Defendant Face-book’s alleged infringement of United States Patent No. 6,628,314 (the “'314 patent”). (ECF No. 1.) Plaintiff B.E. Technology, LLC (“Plaintiff or “B.E.”), is the assignee of the '314 patent (ECF No. 38 at 2), currently owning “all right, title, and interest in the '314 patent, and has owned all right, title, and interest throughout the period” of the alleged infringement (ECF No. 1 ¶ 10).

B.E. alleges that Faeebook infringed the '314 patent “by using a method of providing demographically targeted advertising that directly infringes at least Claim 11 of the '314 patent either literally or under the doctrine of equivalents.” (Id. ¶ 11.)

B.E. filed a Complaint in this Court on September 7, 2012. (ECF No. 1.) Face-book filed its Answer to the Complaint on December 31, 2012 (ECF No. 27), and its Motion to Transfer Venue on January 10, 2013 (ECF No. 29). B.E. filed its Memorandum in Opposition to Defendant’s Motion to Transfer Venue on January 31, 2013. (ECF No. 38.) Faeebook filed an Amended Answer on February 8, 2013. (ECF No. 44.) With leave of Court, Face-book filed a Reply Memorandum in Support of Its Motion to Transfer on February 19, 2013. (ECF No. 50.) On January 31, 2013, Faeebook filed a Motion to Stay pending resolution of its Motion to Transfer Venue. (ECF No. 37.) The Court granted Facebook’s Motion to Stay on February 8, 2013. (ECF No. 43.)

Faeebook seeks to transfer this case to the Northern District of California, where its headquarters are located. (ECF No. 30 at 1.) To support its Motion, Faeebook contends that its headquarters and the “vast majority of [its] potentially relevant documentations and witnesses” are located in the Northern District of California. (Id.) Further, Faeebook asserts that it has [929]*929“identified nine individuals who possess knowledge regarding potentially invalidating prior art who live in or near the Northern District of California.” (Id.)

B.E. opposes Facebook’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. 38 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 '314 patent. (ECF No. 38 at 1, 2.) Hoyle asserts he 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 that this district is B.E.’s principal place of business. (Id. at 5.) B.E. also argues that none of its witnesses are located in the Northern District of California. (Id. at 8.) Further, B.E. argues that its corporate documents, including documents relating to the “conception and reduction to practice” of the patent-in-suit, are located in this District. (Id. at 6-7.)

II. STANDARD

Facebook moves the Court to transfer this case to the Northern District of California pursuant to 28 U.S.C. § 1404(a). (ECF No. 29.) 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” 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, 67 S.Ct. 839, 91 L.Ed. 1055 (1947), but courts are not burdened with “preconceived limitations derived from the forum non conveniens doctrine.” Norwood v. Kirkpatrick, 349 U.S. 29, 31, 75 S.Ct. 544, 99 L.Ed. 789 (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).

[930]*930Additionally, 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 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.,

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957 F. Supp. 2d 926, 2013 WL 3724950, 2013 U.S. Dist. LEXIS 97490, Counsel Stack Legal Research, https://law.counselstack.com/opinion/be-technology-llc-v-facebook-inc-tnwd-2013.