EasyWeb Innovations, LLC v. Facebook, Inc.

888 F. Supp. 2d 342, 2012 WL 3755410, 2012 U.S. Dist. LEXIS 123833
CourtDistrict Court, E.D. New York
DecidedAugust 30, 2012
DocketNo. 11-CV-5121 (JFB)(ETB)
StatusPublished
Cited by60 cases

This text of 888 F. Supp. 2d 342 (EasyWeb Innovations, LLC v. Facebook, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
EasyWeb Innovations, LLC v. Facebook, Inc., 888 F. Supp. 2d 342, 2012 WL 3755410, 2012 U.S. Dist. LEXIS 123833 (E.D.N.Y. 2012).

Opinion

REDACTED MEMORANDUM AND ORDER

JOSEPH F. BIANCO, District Judge:

Plaintiff, EasyWeb Innovations, LLC (“EasyWeb”), commenced this patent infringement action against Facebook, Inc. (“Facebook”).

Facebook has now moved to transfer this case to the Northern District of California. For the reasons set forth below, Facebook’s motion is denied. In particular, EasyWeb has chosen to file this suit in its home district. Not only is this District the home of EasyWeb and its sole owner and employee, but it is also one of the locations where the operative facts occurred — namely, the conception, reduction to practice, filing, and the assertion of the patents-in-suit. Although the allegedly infringing product was designed, developed, and produced by Faeebook in California (and, thus, many of the operative facts took place in California), the plaintiffs choice of forum is still entitled to great deference under these circumstances, and a balancing of the factors does not provide a sufficient basis to disturb the plaintiffs choice of forum in this particular case. Transfer of the case from New York to California will effectively shift the inconvenience from Facebook’s witnesses to the plaintiff. Moreover, the relative means of the parties strongly weighs against transfer. Facebook is a large corporation that has failed to demonstrate how flying its witnesses to New York will pose a significant burden on the corporation. In contrast, EasyWeb is a small company that has significant financial issues, and litigating this case in California will place a substantial financial burden on EasyWeb and its sole owner. Such a burden is unwarranted under the circumstances of this case, especially in light of the fact that this is plaintiffs home forum. In short, having fully considered the relevant factors, fairness and convenience do not support disturbing plaintiffs choiee-of-forum in this particular case and, thus, the motion to transfer the case to the Northern District of California is denied.

I. Background

A. Facts

The following facts are undisputed for the purposes of the motion unless otherwise noted.

John D. Codignotto (“Codignotto”) is the sole owner and employee of EasyWeb and alleges that he is the sole inventor of the patents-in-suit. (Declaration of John D. Codignotto, dated June 7, 2012 (the “Codignotto Deck”), at ¶¶ 1, 3-4.) Codignotto resides in Wantagh, New York, and has lived within the Eastern District (the “District”) for the majority of his life. (Id. at ¶ 2.) Plaintiff asserts that Codignotto operates other businesses, in addition to Easy-Web, and continues to consult within the District for various customers. (Id. at ¶ 3.) With respect to this case, Codignotto asserts the following:

By 1998, I conceived the idea that led to the patents-in suit, which involved ways of sending and publishing messages so that they could easily be seen by a mass audience.

(Id. at ¶ 4.) According to plaintiff, he reduced his ideas to practice in Wantagh, but financial resources were not available to enable its commercialization. (Plaintiffs Opposition to Facebook’s Motion to Change Venue (“Ph’s Opp.”) at 2.) In 1999, Codignotto filed a provisional patent application, that led to the patents-in-suit, using the same address in Wantagh that Easy-Web now uses. (Id.)

[346]*346Codignotto formed EasyWeb Technologies, Inc. (“EasyWeb Technologies”), in 2007 using the Wantagh, New York, address and assigned all of the patents-in-suit to EasyWeb Technologies. (Codignotto Decl. at ¶ 5.) Two years later, EasyWeb Technologies sued several defendants in this District for infringement of two of the same patents asserted in the instant case. (Pl.’s Opp. at 3 n. 2 (citing EasyWeb Techs., Inc. v. Blip Networks, Inc., Civ. A. No. 09-2027(LDW)(ETB) (E.D.N.Y. filed 2009)).) In 2011, Codignotto formed Easy-Web, with EasyWeb Technologies as its sole member, under New York law and using the same address as EasyWeb Technologies. (Codignotto Deck at ¶ 7.) On May 11, 2011, all rights to the patents-in-suit were assigned by EasyWeb Technologies to EasyWeb. (Id.) Codignotto also asserts that “[a]ll of the documents relating to the patents-in-suit are located in or near Nassau County, New York.” (Id. at ¶ 4.)

Facebook notes that “EasyWeb registered to do business in New York State less than five months before filing this lawsuit, and its principal place of business is a rented mailbox inside a UPS Store.” (Facebook’s Memorandum in Support of Facebook’s Motion to Change Venue (“Def.’s Br.”) at 1.) Plaintiff does not dispute that EasyWeb’s address is a “rented mailbox inside a UPS Store,” but states that Codignotto “[r]uns a small business that cannot afford to have the kind of headquarters and facilities that Facebook [has]” and that the mailing address was chosen because it is conveniently located two miles from Codignotto’s residence, which serves as his home office. (Ph’s Opp. at 3.) Codignotto asserts that “[d]ue to the difficult economic environment in the last several years, [his] businesses ... have not fared as well as [he] had hoped,” [redacted] (Id. at ¶ 13.) Thus, Codignotto states, “I cannot afford the additional time away from my businesses nor the additional expenses involved if this ease were transferred to California.” (Id. at ¶ 14.) Codignotto also notes, with respect to his several businesses, “[a]s the only employee, any of my time away from those businesses would shut down their operations.” (Id. at ¶ 3.)

Facebook’s headquarters and principal place of business is in the Northern District of California. (Def.’s Br. at 1.) Face-book contends that its knowledgeable employees, relevant documents, other sources of proof concerning the design, development and implementation of its allegedly infringing technology, and non-party individuals and companies, are located within the Northern District of California. (Id.) Facebook also argues that it has no connection to the Eastern District of New York as it “[h]as no offices or employees in the District, maintains no records in this District, owns no property in this District, and operates no servers in this District.” (Id. at 2.) As Facebook notes,

Facebook’s deep roots in the Silicon Valley are well known. Except for a few months in a Harvard dormitory in 2004, the vast majority of Facebook’s activities and operations have occurred in Palo Alto, California and more recently, at its current headquarters and principal place of business in Menlo Park, California. Both Palo Alto and Menlo Park are located in the Northern District of California.
Insofar as EasyWeb’s Amended Complaint accuses Facebook’s website and services, their design development, implementation and operation occurred primarily in either Palo Alto or Menlo Park. The vast majority of Facebook employees with knowledge of these activities are located at Facebook’s Menlo Park headquarters. In addition, the evidence that may be relevant to these activities — including technical, financial, [347]*347marketing, and advertising documents and information — are located in or accessible from its Menlo Park headquarters.

(Id. at 2-3 (citations and footnote omitted).)

EasyWeb acknowledges that Facebook does not have offices in this District; however, EasyWeb notes that Facebook has a large office in New York City with at least 100 employees. (Pl.’s Opp. Br.

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Bluebook (online)
888 F. Supp. 2d 342, 2012 WL 3755410, 2012 U.S. Dist. LEXIS 123833, Counsel Stack Legal Research, https://law.counselstack.com/opinion/easyweb-innovations-llc-v-facebook-inc-nyed-2012.