Carroll v. Texas Instruments Inc.

Filing 29

OPINION AND ORDER that defendant Texas Instruments, Inc.'s motion to transfer venue 19 is denied. Signed by Honorable Judge Myron H. Thompson on 5/1/2012. (Attachments: # 1 Civil Appeals Checklist)(jg, )

IN THE DISTRICT COURT OF THE UNITED STATES FOR THE
MIDDLE DISTRICT OF ALABAMA, NORTHERN DIVISION

CHESTER CARROLL,
Plaintiff,
v.
TEXAS INSTRUMENTS, INC.,
Defendant.

)
)
)
)
)
)
)
)
)

CIVIL ACTION NO.
2:11cv1037-MHT
(WO)

OPINION AND ORDER
Plaintiff Chester Carroll, an Alabama resident,
brought this patent-infringement suit against defendant
Texas

Instruments,

transfer

the

venue

Inc.
of

(“TI”),
this

which

action

has

from

moved

the

to

Middle

District of Alabama to the Northern District of Texas.
Jurisdiction is proper pursuant to 28 U.S.C. § 1338(a).
For the reasons that follow, TI’s transfer motion will be
denied.

I.
Carroll is a resident of Camp Hill, in

Tallapoosa

County, Alabama (which is located in the Middle District
of Alabama), and the inventor and owner of two patents.
He developed these two patents primarily in Tallapoosa
County during his time as a college professor at the
University

of

Alabama

and

Auburn

University

and

as

president of a military academy in Camp Hill. Carroll
alleges that TI directly and indirectly infringed his
patents through the manufacture and sale of 23 analog-todigital

converters

(“ADCs”),

which

fall

into

two

categories--the “High Speed ADC” accused products and the
“Precision ADC” accused products.
TI is a Delaware corporation with its principal place
of business in Dallas, Texas (which is located in the
Northern

District

of

Texas).

TI

is

also

a

large

international corporation: For 2011, it ranked 175 in the
Fortune

500;

operations

in

had

manufacturing,

more

than

35

2

design,

countries;

and

or

sales

generated

$ 13.7 billion in revenue. Given its size, many of the
engineers responsible for working on the products accused
of violating Carroll’s patents are located outside of
Dallas: Many are in Tuscan, Arizona, while others are in
Bangalore, India and Erlangen, Germany.
Carroll brought this lawsuit in the Middle District
of

Alabama,

the

district’s

Northern Division, whose seat is Montgomery.

TI seeks a

transfer

to

and,

the

in

particular,

Northern

District

in

of

Texas,

and

in

particular, to the Dallas Division. Therefore, the venue
dispute here is, at bottom, over whether the trial and
other proceedings in this case should be in Montgomery or
Dallas.

II.
28 U.S.C. § 1404(a) authorizes a district court to
transfer a civil action to any other district in which it
might have been brought “for the convenience of parties
and witnesses, in the interest of justice.”

3

Because

federal courts normally afford deference to a plaintiff’s
choice of forum, the burden is on the movant to show that
the suggested forum is more convenient or that litigation
there would be in the interest of justice. In re Ricoh
Corp., 870 F.2d 570, 573 (11th Cir. 1989). A district
court has “broad discretion in weighing the conflicting
arguments

as

to

venue,”

England

v.

ITT

Thompson

Industries, Inc., 856 F.2d 1518, 1520 (11th Cir. 1988),
but

must

engage

in

an

“individualized,

case-by-case

consideration of convenience and fairness.”

Stewart

Organization,

22,

Inc.

v.

Ricoh

Corp.,

487

U.S.

29

(1988).
In resolving a § 1404(a) motion, the court first
determines whether the action could have originally been
brought in the proposed district of transfer and, if so,
the court then weighs the convenience of the parties and
considers interests of justice to determine whether a
transfer is appropriate. C.M.B. Foods, Inc. v. Corral of
Md. Ga., 396 F. Supp.2d 1283, 1286 (M.D. Ala. 2005)

4

(Thompson, J.). Here, there is no question that this case
could have been originally brought in Dallas.
Accordingly, the court’s inquiry focuses solely on
whether the balance of justice and convenience favors
transfer. In making this determination, courts generally
consider a number of non-exhaustive factors, including
the following: the plaintiff’s initial choice of forum;
the convenience of the parties; the relative means of the
parties; the convenience of the witnesses; the relative
ease of access to sources of proof; the availability of
compulsory

process

for

witnesses;

the

location

of

relevant documents; the financial ability to bear the
cost of the change; and trial efficiency. See Manuel v.
Convergys Corp., 430 F.3d 1132, 1135 n.1 (11th Cir.
2005); Fedonczak v. State Farm Mut. Auto. Ins. Co., 2010
WL 1856080, at *2 (M.D. Ala. May 4, 2010) (Fuller, C.J.);
C.M.B. Foods, 396 F. Supp. 2d at 1286-87.
The Plaintiff’s Choice of Forum. Carroll resides in
the venue chosen for litigation: the Northern Division of

5

the Middle District of Alabama. Indeed, Camp Hill, his
home, is only about 65 miles from Montgomery, where his
case, if not transferred, will be tried. His choice of
venue is “entitled to considerable weight and should not
be disturbed unless other factors weigh strongly in favor
of transfer.”

Neil Bros. Ltd., v. World Wide Lines,

Inc., 425 F. Supp. 2d 325, 333 (E.D. N.Y. 2006) (Spatt,
J.); see Robinson v. Giarmarco & Bill, P.C., 74 F.3d 253
(11th Cir. 1996) (“The plaintiff's choice of forum should
not be disturbed unless it is clearly outweighed by other
considerations.”) (internal quotes and citation omitted).1

1. This case, therefore, can be distinguished from
those where, because “a plaintiff brings its charges in
a venue that is not its home forum,” the plaintiff’s
“choice of forum is entitled to less deference.” In re
Link_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed.
Cir. 2011); see also RSUI Indem. Co. v. Sealy Realty Co.,
Inc., 2012 WL 235520, at *3 (M.D. Ala. Jan. 25, 2012)
(Thompson, J.) (distinguishing between instances where a
“local entity seek[s] to litigate th[e] case on its home
turf” or where the forum has some connection to the
dispute and thus where “considerable deference would be
due” and those instances where the plaintiff brings “suit
outside its home forum and in a district with no
connection to the dispute”).
6

Convenience and Relative Means of the Parties. Taking
the

relative

means

and

convenience

of

the

parties

together, the court cannot conclude that these factors
weigh in favor of a transfer. On the one hand, while
Carroll does not argue that a transfer to Dallas would
create a financial burden (perhaps in part because his
counsel are located in California and would have to
travel regardless of whether the litigation venue were in
Montgomery or Dallas), he does contend that he would be
personally inconvenienced to a great extent. Carroll is
74 years old, and, in the past year, has been given
radiation treatment for cancer. While his cancer is now
in remission, he must follow-up quarterly to monitor his
cancer. He also takes care of his adult son’s family (a
wife and two children), due to his son’s recent serious
injury. Because of these circumstances, Carroll has left
the State of Alabama only once in the past three years.
The

court,

therefore,

finds

factually

not

only

that

Montgomery is more convenient for Carroll but also that

7

forcing

him

to

travel

to

Dallas

to

pursue

this

litigation, which may include several in-court pretrial
proceedings as well as trial, would be significantly
burdensome.
On

the

business

in

other

hand,

Dallas

with

and

its

its

principal

counsel

place

based

of

there,

litigating the case in the Northern District of Texas is
more

convenient

for

TI.

Nevertheless,

the

court

is

unaware of any circumstance that would make litigating
this case in Alabama significantly burdensome for TI.
On balance, therefore, given the substantial personal
inconvenience for Carroll to litigate this case in Texas
and given that the parties’ relative financial means do
not point one way or the other, the court finds that the
convenience and means of the parties weigh significantly
against

transfer.

See

Kolodziej

v.

Mason,

2011

WL

2009467, at *7 (N.D. Ga. May 20, 2011) (Carnes, C.J.)
(“When

evaluating

the

relative

convenience

of

the

parties, [t]ransfer should be denied if it would merely

8

shift

inconvenience

from

one

party

to

another.”)

(internal quotes and citations omitted).
Convenience of Witnesses. The “convenience for and
cost of attendance of witnesses,” In re Genentech, Inc.,
566 F.3d 1338, 1343 (Fed. Cir. 2009), are an important
factor and, for nonparty witnesses, are sometimes dubbed
the single most important factor in determining whether
the transfer of venue is proper. See, e.g., LaPenna v.
Cooper Tire & Rubber Co., 2011 WL 2669469, at *5 (M.D.
Ala. July 7, 2011) (Fuller, J.). Because this factor may
be so important, some courts view it as helpful if the
party

seeking

witnesses

to

transfer
be

called

“clearly
and

...

specif[ies]
make[s]

a

the

...

general

statement of what their testimony will cover.”

Neil

Bros., 425 F. Supp. 2d at 329. After that, the reasoning
continues, a district court may be able to “assess the
relevance and materiality of the information the witness
may provide.”

Genentech, 566 F.3d at 1343.

9

In any event, a court “should not merely tally the
number of witnesses who reside in the current forum in
comparison

to

the

transferee forum.”

number

located

in

the

proposed

Neil Bros., 425 F. Supp. 2d at 329

(internal quotes and citation omitted); see also Dale v.
United States, ___ F. Supp. 2d ___, 2012 WL 695591, at *1
(M.D. Fla. Mar. 5, 2012) (Presnell, J.) (noting that the
court “will not simply ‘tally the number of witnesses’ in
each

prospective

forum

to

determine

which

is

more

convenient”); Microspherix LLC v. Biocompatibles, Inc.,
2012 WL 243764, at *3 (S.D. Fla. Jan. 25, 2012) (Moore,
J.) (“In assessing the convenience of the witnesses, the
mere length of an individual parties’ list of potential
witnesses is not of great significance.).2
2. While a movant is not required to identify “key”
witnesses, Genentech, 566 F.3d at 1343-44, doing so may
significantly aid a defendant’s efforts in meeting its
burden of demonstrating that venue should be transferred,
and courts frequently focus on such “key witnesses.”
See, e.g., Dale, 2012 WL 695591, at *1; Kolodziej, 2011
WL 2009467, at *7 (“The convenience of the witnesses is
one of the most important factors in evaluating a motion
to transfer venue, with the main focus on “key
(continued...)
10

And

the

term

witnesses

may

have

two

different

practical meanings. First, there are the witnesses who
may have any conceivable knowledge about any conceivable
issue in the litigation. A lawyer’s initial list of these
witnesses may therefore go on for pages. Prior to trial,
these witnesses are usually questioned informally and, if
they have significant material information, questioned
formally (through depositions, affidavits, etc.) in the
communities where they live or work. For the most part,
the trial venue does raise a convenience issue for them.3
Second, there are witnesses who are likely to be called
at trial and for whom the convenience of the trial venue
can be an issue. This list comes from the first group and
can often end up being substantially smaller, often fewer
than a handful even though the first group was quite
large. On a transfer motion, all that the court is asking

2(...continued)
witnesses.”).
3. To be sure, pretrial discovery disputes involving
witnesses do arise. But these disputes rarely require a
witness’s appearance at court.
11

the parties to do is to make an educated guess as to the
size of the second group, that is, a guess with some
articulable reason to back it up.
Further, as stated, courts often distinguish between
party witnesses and nonparty witnesses: “Party witnesses
are the parties themselves”; they are often viewed as
“more willing to testify in a different forum,” a view
which often does not apply to non-party witnesses. Ramsey
v. Fox News Network, LLC, 323 F. Supp. 2d 1352, 1357
(N.D. Ga. 2004) (Thrash, J.). Employees of a company,
though not technically parties, may be so closely aligned
with their company that they may be viewed as “party
witnesses,” see, e.g., Merial Ltd. v. Intervet, Inc.,
2010 WL 942294, at *2 (M.D. Ga. Mar. 11, 2010) (Land,
J.); Ramsey, 323 F. Supp. 2d at 1354-56;

Gundle Lining

Const. Corp. v. Fireman's Fund Ins. Co., 844 F. Supp.
1163, 1166 (S.D. Tex. 1994) (Crone, M.J.).4

Accordingly,

4.
Alternatively, some courts view employee
witnesses as “non-party” witnesses, but treat them in the
same fashion as party witnesses: the significance of
(continued...)
12

the convenience of a nonparty witness may hold more
weight

than

that

of

a

party

witness.

ASD

Specialty

Healthcare, Inc. v. Letzer, 2010 WL 2952573, at *4 (M.D.
Ala. July 26, 2010) (Watkins, J.) (“The convenience of
non-party witnesses receives considerably more weight
than the convenience of parties or party-witnesses.”);
Kolodziej, 2011 WL 20009467, at *7.
Here,

the

only

nonparty

witnesses

expressly

identified as such are the attorneys who prosecuted the
patents-in-suit before the U.S. Patent and Trademark
Office and who are located in Atlanta, Georgia. At just
over 160 miles and a two-to-three hour drive for theses
witnesses, Montgomery is much closer and easier to access
than Dallas, which is almost 800 miles away and would

4(...continued)
these witnesses’ convenience is “diminished when the
witnesses, although in another district, are employees of
a party and their presence at trial can be obtained by
that party.” Trinity Christian Center of Santa Ana, Inc.
v. New Frontier Media, Inc., 761 F. Supp. 2d 1322, 1327
(M.D. Fla. 2010) (Wilson, M.J.); see also Bennett
Engineering Group, Inc. v. Ashe Industries, Inc., 2011 WL
836988, at *2 (M.D. Fla. 2011) (Antoon, J.).
13

almost certainly require these witnesses to fly and most
likely stay over night even for a one-day trip. Thus,
this factor tips heavily in favor of keeping this suit in
the Middle District of Alabama.5
As for party witnesses, on Carroll’s side the only
witness actually identified, and almost guaranteed to
testify

at

trial,

will

be

Carroll

himself,

who,

as

stated, resides in the Middle District of Alabama and
who, because of his personal and family circumstances,
has been able to leave the State only once in the last
three years. For Carroll, therefore, trial in Dallas
would pose a substantial hardship.
TI

has

pointed

to

scores

of

employee-engineers

scattered about the globe, who are closely aligned with
the company in this action and whom the court will

5. Given that no other nonparty witnesses have been
identified and the fact that the Atlanta attorneys are
more than 100 miles from both this court (in Montgomery)
and the transferee venue (in Dallas), no nonparty witness
may be compelled through either court’s subpoena power to
attend the hearing. See Fed. R. Civ. P. 45(b)(2)(C). This
factor is neutral.
14

therefore treat as “party witnesses.”

However, and more

significantly, TI has not identified actual witnesses but
rather has pointed to groups of its engineers, their
work, and their general locations. (However, regardless
as to whether these employee-engineers are treated as
party or non-party witnesses, the outcome here would be
the same. The question, discussed later, of which and how
many

of

these

employees

are

likely

trial

witnesses

applies regardless of whether they are treated as party
or non-party witnesses.)
Specifically, based upon numbers from the fourth
quarter of fiscal-year 2011, TI declares that, of the
approximately 80 engineers in the High Speed ADC product
group

(covering

20

of

the

23

accused

products),

approximately 45 are in Dallas and 35 are in India. TI
goes on to state that, for those in Dallas, the group of
engineers “control[s] the technical support, marketing,
business management, and product line management for the
High

Speed

ADC

accused

products

and

the

design

and

developmental testing for a portion of the High Speed ADC
15

Accused Products,” TI Br. 3 (Doc. No. 19, at 3), and the
group of 35 engineers in Bangalore “ha[s] responsibility
for the design and developmental testing for a portion
of” the High Speed ADC accused products. Venable Decl. 3
(Doc. No. 19-1, at 4). However, after making these broad
and vague statements, TI has not gone the further step of
helping the court to make an educated guess of which and
how

many

witnesses.

of

these

For

employees

example,

it

will
has

be
not

likely
provided

trial
the

information each, or even some, of these engineers might
have and what TI anticipates any particular engineer
might testify about regarding the accused products. TI
has not identified which of these individuals can testify
as to the actual products at issue in this case, or even
whether it will likely be all of them or only a few; TI
has not specified which “portion” of the products any
particular engineer will have design and development
information about; nor has TI clarified which of these
engineers

were

even

at

the

plant

when

the

relevant

products were designed. Cf. Baker v. RBS Wordplay, Inc.,
16

2010 WL 4065074, at *4 n.8 (S.D. Ala. Oct. 15, 2010)
(Steele,

C.J.)

(explaining

that,

when

examining

the

convenience of the witnesses, “courts place a premium on
specific information concerning the identity and location
of the affected witnesses, and the significance of their
potential

testimony”).

The

fact

that

a

cadre

of

80

engineers works in a product group does not, on the basis
of that fact alone, necessarily mean that all of them are
likely trial witnesses with material and reasonably nonduplicative knowledge6 about the products at issue here.7
Accordingly, for the High Speed ADC products, the court

6. The court refers to witnesses with reasonably
non-duplicative, rather than just non-duplicative,
knowledge because a party may sometimes want to present
duplicative witnesses on a hotly disputed or close
factual use.
7.
In its reply brief, TI seems to suggest, at
times, that all members of these groups have this
knowledge. The declaration in support of TI’s motion,
however, does not aver that all of these engineers
possess such knowledge; it speaks in terms of “groups,”
with possible or potential knowledge, and does not allege
that all engineers have actual knowledge relevant to the
products at issue in this suit. See Venable Decl. 3-5
(Doc. No. 19-1, at 4-6).
17

cannot adequately determine which or how many engineers
are likely trial witnesses.
The same problem applies to engineers identified as
potential

witnesses

(covering

the

from

TI’s

remaining

Precision

three

of

the

ADC
23

group
accused

products). Of this group, only 10 of 65 were located in
Dallas as of the fourth quarter of 2011, with 28 others
in Arizona and the remainder in either India or Germany.
As

before,

TI’s

information

with

regard

to

these

engineers’ potential testimony is somewhat vague and
over-inclusive:
that

are

“These individuals are part of teams

responsible

for

the

development

of”

the

Precision ADC accused products, and these “teams” are
responsible for developing one of the three products and
“potentially” the other two in the Precision ADC group.
TI Br. 4-5 (Doc. No. 19, at 4-5). Especially in the
context of a company as large and dispersed as TI, a
broad list of engineers in groups at various facilities
(some of whom may have no knowledge of material facts
relevant to this case) that is unaccompanied by any means
18

to determine which or how many are likely witnesses
leaves the court wanting in its ability to analyze truly
the

actual

interests

at

convenience-of-witnesses

stake
factor

and

thus

weighs

whether
in

the

favor

of

transfer. Cf. American Standard, Inc. v. Bendix Corp.,
487 F. Supp. 254, 262 (W.D. Mo. 1980) (Becker, J.) (“[I]f
the party moving for transfer under § 1404(a) merely
makes

a

general

allegation

that

witnesses

will

be

necessary, without identifying those necessary witnesses
and indicating what their testimony at trial will be, the
motion for transfer based on convenience of witnesses
will be denied.”).
To

be

sure,

“engineers/witnesses

TI’s
with

statement

knowledge

of

that
the

some

operative

facts are undeniably centered in Dallas” may be true.
Reply Br. 3 (Doc. No. 26-1, at 4). The problem, however,
as stated, is that TI’s identification of only “groups of
engineers” makes it impossible to determine how many of
these engineers are reasonably likely to be witnesses and
how many are located in Dallas, and therefore makes it
19

impossible to evaluate the convenience factor. A specific
showing of reasonably likely inconvenience would be more
helpful here. See Electronic Transaction Network v. Katz,
734 F. Supp. 492, 501-02 (N.D. Ga. 1989) (Forrester, J.).
Moreover, knowing which and how many of the employees
identified by TI are likely trial witnesses is important
not just to whether Carroll should have to go to Dallas
or

TI’s

Dallas

Montgomery.

For

employees
one,

in

should

relative

have

to

terms,

come

the

to

travel

inconvenience confronted by international witnesses could
be

significantly

different

from

that

confronted

by

domestic witnesses, and, in particular, that confronted
by

domestic

witnesses

located

near

one

of

the

two

potential venues. Because international witnesses will
have to travel a long distance regardless, the difference
for them between Montgomery and Dallas may be marginal.
Cf. Genentech, 566 F.3d at 1334 (“The witnesses from
Europe will be required to travel a significant distance
no matter where they testify.”); Neil Bros., 425 F. Supp.
2d at 330 (concluding that “it is only slightly less
20

convenient to travel from the United Kingdom to New York
than

it

is

to

travel

from

the

United

Kingdom

to

Tennessee.”). By contrast, the relative burden imposed on
domestic witnesses by having to travel to a different
domestic forum (as plaintiff Carroll would have to do if
the court were to grant the transfer motion or as TI’s
Dallas-based employee-witnesses would have to do if the
motion were denied) can be significant.
Thus, this relative-burden viewpoint, which looks at
the additional burden imposed by traveling to a forum by
witnesses that will have to travel significant distances
regardless and compares that against the burden on those
who

may

or

prominently

may

not

have

to

in

the

court’s

travel

at

analysis.

all,

figures

However,

as

mentioned, TI does not fully address how many of its
engineers are likely trial witnesses who will have to
travel internationally regardless (those in India and
Germany); who will have to travel domestically regardless
(those in Arizona); and who will not have to travel at
all if there is a transfer (those in Dallas).
21

To be sure, from TI’s identification of witness
groups, the court can get some impression (though rooted
more in possibility than probability) of the burden TI may
have to bear if the case is tried in Montgomery, but the
court must also be sensitive to two other things. First,
reliance on broad group identifications (without any
culling

down

to

those

who

are

reasonably

likely

to

testify) can come very close to mere head-counting, which
could

put

a

large

party

with

many

employees

at

a

significant advantage over a small party with few or no
employees. Second, this court is confronted with specific
evidence of the significant burden that a Dallas trial
would pose to Carroll. As stated, because of his personal
and family circumstances, Carroll has been able to leave
Alabama only once in the last three years. Carroll’s
specific

evidence

of

a

substantial

burden

is

more

compelling than the generalized, possibility-based feeling
that TI’s evidence gives, especially given that

the

number of likely witnesses with relevant, material, and

22

reasonably non-duplicative information might very well
still end up quite small.
The court would emphasize that it is not saying that
a party must identify with certainty all of its potential
witnesses, nor even that a party must present to the court
a full summary of the testimony of all its witnesses, for
litigation at the motion-to-transfer stage is often much
too early in the game to ask that. What the court is
saying is that the parties must help it pierce through
broad, indefinite contentions about what witnesses may be
called so that the court may make its own educated guess,
as best it can, as to what witnesses are likely to be
called. Courts that have suggested that parties provide
summaries of witness testimony have, obviously, used that
requirement to help make that guess, especially when a
party has essentially dumped on the court a list all or
a part of its company phone book. Requiring such summaries
may not be the only means to reach that goal. But, absent

23

such summaries, parties must make some effort through
other means to help the court.8
Here, this court sincerely doubts that TI will call
all

of

the

many

witnesses

from

the

groups

it

has

identified. Indeed, the court is certain that the number
of witnesses TI will call will more likely than not be
much, much smaller than the two groups TI has identified.
But,

how

much

smaller,

TI

has

offered

no

help

in

determining.
In sum, for witnesses in general (both party and
nonparty), the court cannot say that TI has adequately
demonstrated that Dallas is the more convenient forum.
Without

question,

convenient

for

a
the

Montgomery
Atlanta

trial

would

witnesses.

be

And,

more
more

importantly, the burden that a Montgomery trial would pose

8. Marshaling such evidence, even at the early stage
of litigation, should not be that difficult for attorneys
who have years of patent-litigation experience. Early
on, and although they be able to say for sure, such
attorneys should have some idea of how factually complex
and difficult a case is likely to be and how many
witnesses are likely to be called at trial.
24

to TI is too indeterminate and non-specific to warrant a
transfer in the face of the specific and substantial
burden that a Dallas trial would pose to Carroll.
Access to Evidence. The location of relevant evidence
and documents weighs in favor of transfer. “In patent
infringement cases, the bulk of the relevant evidence
usually comes from the accused infringer. Consequently,
the place where the defendant’s documents are kept weighs
in favor of transfer to that location.’”

Genentech, 566

F.3d at 1345 (quoting Neil Bros., 425 F. Supp. 2d at 330).
Accordingly, as TI argues, much of the evidence will be
located in Dallas, where TI has its hub of operations, or
either its offices in Tuscan, Bangalore, or Erlangen. TI
acknowledges that a significant amount of documentary
evidence could be located in any of these three non-Dallas
locations, but argues that, even if the evidence is
located

outside

of

Dallas,

given

its

intra-company

network, many of the documents can be securely and more
conveniently accessed from Dallas.

25

At the same time, however, the court recognizes that,
in the same way that technology will enable TI to access
documents in foreign locations from Dallas, technology has
also reduced the burden that will be imposed by litigating
in the current forum; indeed, if needed for trial, many
documents can be sent electronically at no burden and be
printed, as they would have to be regardless, locally.
Still, despite technology, the incremental burden based
upon the location of the documents remains cognizable.
Genentech, 566 F.3d at 1346. In the end, though this
factor, as stated, weighs in favor of transfer and though
technology has not made this factor a complete nullity,
it changes the analysis “only minimally.” Neil Bros., 425
F. Supp. 2d at 325; see also Polyform A.G.P. Inc. v.
Airlite Plastics, Co., 2010 WL 4068603, at *4 (M.D. Ga.
Oct. 15, 2010) (Land, J.) (agreeing that the physical
location

of

significant

relevant
given

the

documents

“is

widespread

not

use

particularly

of

electronic

document production”); but see Microspherix, 2012 WL
243764, at *3 (“In a world with fax machines, copy
26

machines, email, overnight shipping, and mobile phones
that can scan and send documents, the physical location
of documents is irrelevant.”).
Locus

of

Operative

Facts.

In

patent-infringement

cases, the “‘locus of operative facts usually lies where
the allegedly infringing product was designed, developed,
and produced.’”

Neil Bros., 425 F. Supp. 2d at 331; see

Medien Patent Verwaltung AG v. Warner Bros. Entm’t, Inc.,
749 F. Supp. 2d 188, 191-92 (S.D. N.Y. 2010) (Cedarbaum,
J.) (“‘Operative facts in a patent infringement action
include facts relating to the design, development, and
production of a patented product.’” (quoting Fuji Photo
Film Co., Ltd. v. Lexar Media, Inc., 415 F. Supp. 2d 370,
375 (S.D.N.Y. 2006) (McMahon, J.)); Invivo Research, Inc.
v. Magnetic Resonance Equip. Corp., 119 F. Supp. 2d 433,
439 (S.D.N.Y. 2000) (Sweet, J.) (same); Arete Power, Inc.
v. Beacon Power Corp., 2008 WL 508477, at *5 (N.D. Cal.
2008) (Brazil, M.J.) (same). This is so because, in a
patent-infringement

case,

the

“design,

development,

marketing, manufacture, and sale” of the accused products
27

will often be the primary issues for litigation. Polyform,
2010 WL 4068603, at *5; see id. at *5 & n.2 (explaining
that the locus of facts or “center of gravity” for a
patent-infringement case is where the accused product was
designed and developed). This factor weighs in favor of
transfer. While it is true that Carroll designed his
patents in this district, none of the design, manufacture,
or development of any of the 23 accused products took
place in Montgomery. Instead, all of it occurred in TI’s
offices, the largest of which is in Dallas. Thus, even
though not all of the planning and development took place
in Dallas (some took place in Arizona, Germany, and
India), the locus of facts appears to be more associated
with

Texas

than

Alabama.

Cf.

Pergo,

Inc.

v.

Shaw

Industries, Inc., 2003 WL 24129779, at *3 (N.D. Ga. Sept.
16, 2003) (Martin, J.) (“For patent infringement actions,
the center of the accused activity is the locus of
operative facts: ‘The trier of fact ought to be as close
as possible to the milieu of the infringing device and the
hub of activity centered around its production.’” (quoting
28

AMP Incorporated v. Burndy of Midwest, Inc., 340 F. Supp.
21, 24-25 (N.D. Ill. 1971) (Parsons, J.)).
Local Interest. Lastly, the court considers the local
interest

in

having

this

dispute

resolved

in

either

Montgomery or Dallas. To analyze this factor, the court
considers the “factual connection” the case has between
both venues. Fujitsu Ltd. v. Tellabs, Inc., 639 F. Supp.
2d 761, 769 (E.D. Tex. 2009) (Davis, J.). Here, the local
interest in having the case decided at “home” is evenly
split. On one hand, there is a clear factual connection
to

Alabama

registered

in
his

that

Carroll

patents

as

a

designed,
result

invented,

of

his

work

and
in

Alabama’s public universities and while living in this
district. In this respect, Alabama is deeply connected to
(and

invested

in)

these

patents,

which

makes

their

vindication, if infringed, a matter of local concern. At
the same time, given that, at least in part, TI designed
and developed the accused products in Dallas, where TI has
its

principal

place

of

business,

29

Texas

also

has

an

localized interest in trying the case at home. Id. This
factor is neutral.
Balance

of

Factors.

At

the

end

of

the

day,

considering the totality of the circumstances, the court
cannot conclude that the case should be transferred to the
Dallas. While it is true that the location of documents
favors transfer; that some (but not all) of the operative
facts do as well; and that some (but certainly far from
all) of TI’s witnesses are located in Dallas, TI has not
met its burden of demonstrating that justice and fairness
require a transfer in this case.
Instead, the fact that the trial of this case in
Dallas would be extremely difficult for Carroll in light
of his and his family’s personal circumstances; that the
relative means of the parties weighs against transfer;
that convenience for the Atlanta attorneys weighs against
transfer; that there are local interests at stake; and
that there must be some respect for Carroll’s choice of
forum, all counsel against transfer.

30

Moreover, even assuming that the weighing of factors
could be viewed as supporting transfer, it would be “only
slightly.”

Fedonczak, 2010 WL 1856080, at *4. In such a

case, and giving deference to Carroll’s choice of forum,
the court would conclude that transfer would not be in the
interest

of

justice.

See

id.

(citing

Johnston

v.

Foster-Wheeler Constructors, Inc., 158 F.R.D. 496, 503
(M.D. Ala. 1994) (Albritton, J.) (“If the transfer would
merely shift the inconvenience from one party to the
other, or if the balance of all factors is but slightly
in favor of the movant, the plaintiff's choice of venue
should be given deference.” (inner quotations omitted));
cf. In re Xoft, Inc., 435 F. App’x 948, 949 (Fed. Cir.
2011) (denying a petition for mandamus seeking a transfer
of

venue

where

the

district

court

“found

that

the

plaintiffs’ choice of forum favored denying the transfer
motion and that additional private interest factors either
weighed neutral or slightly favored transfer,” and that
other “public interest” factors were either neutral or did
not “strongly favor transfer”).
31

***
Accordingly,

it

is

ORDERED

that

defendant

Texas

Instruments, Inc.’s motion to transfer venue (Doc. No. 19)
is denied.
DONE, this the 1st day of May, 2012.
/s/ Myron H. Thompson
UNITED STATES DISTRICT JUDGE