Sprint Communications Company L.P. v. Time Warner Cable Inc. et al

Filing 55

MEMORANDUM AND ORDER denying 39 defendants' Motion to Transfer Case; and denying as moot 49 defendants' Motion to Sever and Stay. Signed by District Judge J. Thomas Marten on 1/18/2013. (mss)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
SPRINT COMMUNICATIONS COMPANY L.P.,
Plaintiff,
v.

Case No. 11-2686-JTM

TIME WARNER CABLE INC., et al.,
Defendants.
MEMORANDUM AND ORDER
The following matter comes to the court on defendants’ Motion to Transfer (Dkt.
39). Having considered the briefs and the evidence submitted with them, the court
denies the defendants’ motion to transfer this case to the U.S. District Court for the
District of Delaware. As a result, the court also denies defendants’ Motion to Sever &
Stay (Dkt. 49) as moot.
I. Factual Background
Plaintiff

Sprint

Communications

Company

L.P.

(“Sprint”)

is

a

telecommunications company headquartered in Overland Park, Kansas. It owns a
number of patents for VoP technology that are the subject of this lawsuit and two others
in the District of Kansas, Sprint Commc’ns Co. L.P. v. Comcast Cable Commc’ns, LLC, et al,
No. 11-2684-KHV and Sprint Commc’ns Co. L.P. v. Cable One, Inc., et al, No. 11-2685-RDR.
The defendants are also telecommunications companies that provide telephone services
in Kansas. Although most of the defendants are registered Delaware corporations, Time
Warner Entertainment-Advance/Newhouse Partnership is a partnership organized
under the laws of the State of New York, with its principal place of business in New

York City. The defendants in all three cases are otherwise headquartered, respectively,
in the states of Arizona (Cable One), Pennsylvania (Comcast), and New York (Time
Warner).
Previously, Sprint litigated several of the asserted patents for Voice-over-Packet
technology (“VoP”) in this district. First, in 2007, this district presided over the case
Sprint Commc’ns Co. L.P. v. Vonage Holdings Corp., et al, No. 05-2433-JWL, in which
Judge Lungstrum conducted a Markman hearing, construed patent claims, ruled on
summary judgment motions, and held a two-week jury trial. Sprint subsequently
litigated its VoP patents in Sprint Commc’ns Co. L.P. v. Big River Tel. Co., LLC, No. 082046-JWL, in which Judge Lungstrum presided.
Sprint filed the present VoP actions on December 19, 2011, once again choosing
the District of Kansas as its forum. Sprint previously moved to consolidate all of these
VoP cases in Kansas for pre-trial purposes, and the defendants did not object.
In April, 2011 a defendant in a fourth related case, Cox Communications, Inc.,
moved to dismiss for lack of personal jurisdiction and further moved to transfer Sprint’s
suit against it and other Cox entities to the District of Delaware. Concurrently, Cox filed
a declaratory judgment suit in Delaware seeking to invalidate the same patents asserted
by Sprint here and asserting infringement of two unrelated patents. In Delaware, Sprint
moved to sever the declaratory judgment claims and transfer the case to Kansas,
pursuant to the first-to-file rule and § 1404(a); to the best of this court’s knowledge, this
motion is still pending. Sprint also brought patent infringement counterclaims for seven

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unrelated patents in Delaware. On September 14, 2012, Judge Robinson granted transfer
of Sprint’s case against the Cox entities to the District of Delaware.
II. Legal Standard – Motion to Transfer
“For the convenience of 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 or to any district or division to which all parties have consented.” 28
U.S.C. § 1404(a). “Where an action might have been brought” includes only those
districts where the plaintiff “had a right to bring the suit originally.” Morris by Rector v.
Peterson, 759 F.2d 809, 812 (10th Cir. 1985).
In deciding a motion to transfer in the Tenth Circuit, the court is to weigh the
following discretionary factors:
the plaintiff's choice of forum; the accessibility of witnesses and other
sources of proof, including the availability of compulsory process to
insure attendance of witnesses; the cost of making the necessary proof;
questions as to the enforceability of a judgment if one is obtained; relative
advantages and obstacles to a fair trial; difficulties that may arise from
congested dockets; the possibility of the existence of questions arising in
the area of conflict of laws; the advantage of having a local court
determine questions of local law; and[ ] all other considerations of a
practical nature that make a trial easy, expeditious and economical.
Sprint Communications, L.P. v. Cox Communications, Inc., 2012 WL 4061509, at *13 (D.
Kan. Sept. 14, 2012) (citations omitted). “[U]nless the balance is strongly in favor of the
movant, the plaintiff’s choice of forum should rarely be disturbed.” Scheidt v. Klein, 956
F.2d 963, 965 (10th Cir. 1992). The burden of proving that the existing forum is
inconvenient lies with the moving party. Sprint, 2012 WL 4061509, at *13. “Merely
shifting the inconvenience from one side to the other, however, obviously is not a
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permissible justification for a change of venue.” Id. (quoting Emp’rs. Mut. Cas. Co. v.
Bartile Roofs, Inc., 618 F.3d 1153, 1167 (10th Cir. 2010)).
III. Analysis
The parties dispute whether this action could have been brought in the District of
Delaware because of a question regarding that district’s personal jurisdiction over
defendant Time Warner Entertainment-Advance/Newhouse Partnership. As a result of
this dispute, the defendants have filed a Motion to Sever and Stay (Dkt. 49) the
proceedings relating to that defendant. Granting this would allow the court to transfer
the case if it would otherwise be appropriate. The court first analyzes whether the
factors weigh in favor of transfer. The court finds that they do not. As a result, the court
need not address whether the case could have been brought in Delaware, and the
Motion to Sever is denied as moot.
A. Plaintiff’s Choice of Forum
Sprint chose to litigate these cases in Kansas for a reason. Sprint resides in
Kansas, conducts business here, and has previously sought to exercise its patent rights
in this district. The facts giving rise to this patent lawsuit are related to Kansas. Sprint
alleges that the defendants make, use, offer to sell, and sell products and services in
Kansas that infringe Sprint’s patents. Accordingly, the court finds that Sprint’s choice of
forum in Kansas should not be disturbed unless the balance of the remaining factors is
strongly in favor of transfer. See Scheidt, 956 F.2d at 965.

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B. Accessibility of Witnesses and Sources of Proof
In considering accessibility, convenience of witnesses is the most important
factor in deciding a motion under § 1404(a). Sprint, 2012 WL 4061509, at *14. Ease of
access to documents is not usually as important in patent infringement cases. Id.
(internal quotes and citation omitted). To show inconvenience for witnesses, the movant
must: (1) identify the witnesses and their locations; (2) indicate the quality or materiality
of their testimony; and (3) show that any such witnesses were unwilling to come to trial,
that deposition testimony would be unsatisfactory, or that the use of compulsory
process would be necessary. Emp’rs Mut. Cas. Co., 618 F.3d at 1169.
Sprint has submitted evidence of its anticipated witnesses. Most of these
witnesses are located in the Kansas City metropolitan area, and all of them are much
closer to Kansas City, Kansas (the designated place of trial) than Wilmington, Delaware.
Sprint has also submitted evidence that its documents related to the asserted patents are
located in Overland Park, Kansas.
The defendants provide evidence that their likely witnesses come from around
the country, but most are closer to Delaware than Kansas. Time Warner’s likely
witnesses will come from either New York City or Herndon, Virginia, each city being
just beyond 100 miles from the courthouse in Delaware and much farther from Kansas
City. Comcast’s likely witnesses will come from Philadelphia, which is approximately
30 miles from the federal courthouse in Delaware. Cable One’s likely witnesses will
come from Phoenix, which is closer to Kansas City. But none of the defendants
submitted any evidence about the potential witnesses who will be required to testify in
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this matter, whether they are subject to compulsory process, or whether their deposition
testimony will be adequate. See Emp’rs Mut. Cas. Co., 618 F.3d at 1169. Conclusory
assertions are insufficient. Id. Neither party submitted any evidence about the cost of
proof, although it is clear that it would be less costly for Sprint to litigate this matter in
Kansas because of the numerous witnesses located here.
Each case involves different defendants, so witnesses for each defendant would
potentially have to travel to Kansas only for the single trial involving the defendant they
are testifying for. However, Sprint is the plaintiff in all of these cases, so their witnesses
will presumably be involved in every case. Requiring four separate trips to Delaware
for Sprint’s witnesses would be much more inconvenient than the burden placed on the
defendants’ witnesses if the transfer is denied.
Following Judge Robinson’s order in Sprint, the court finds that these factors
weigh against transfer. See 2012 WL 4061509, at *15. However, the court notes that some
of the witnesses Sprint has identified are Sprint employees rather than third-party
witnesses, and Sprint has not established the “quality or materiality” of their
anticipated testimony. See Emp’rs Mut. Cas. Co., 618 F.3d at 1169. Accordingly, the court
does not find that this factor weighs strongly against transfer.
C. Enforceability of Judgment
There is no dispute as to whether this court can enforce a judgment against the
defendants. Because Kansas can enforce a judgment against all the defendants, this
factor weighs against transfer. See Sprint, 2012 WL 4061509, at *15 (holding that this
factor weighs strongly in favor of the case being decided by a court with the power to
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enforce a judgment against all parties). This factor does not weigh strongly against
transfer because the court has the option of severing and staying the claim that might
present an obstacle to enforcing a judgment from Delaware.
D. Difficulties that May Arise from Congestion
In considering this factor, “the most relevant statistics are the median time from
filing to disposition, median time from filing to trial, pending cases per judge, and
average weighted filings per judge.” Emp’rs Mut. Cas. Co., 618 F.3d at 1169 (citations
omitted). According to the most recently available statistics, Kansas has a much less
congested docket than Delaware.1 However, this does not provide any insight into how
quickly patent cases proceed to trial in either district. Defendant Comcast recently
obtained a trial date in Delaware in a patent infringement case against Sprint
approximately twenty-three months after the Rule 16(b) scheduling conference. This is
comparable to the twenty-one month pending period in this district in the case of Sprint
Commc’ns Co. L.P. v. Vonage Holdings Corp., No. 05-2433. Given these similarities
between the two district courts in the pace of patent cases, the court finds that this factor
is neutral.
E. Conflict of Laws and Questions of Local Law
The parties do not allege any issues that might implicate conflict of laws or facts
that would make it advantageous for this court to determine questions of local law. This

1

Delaware had the third highest number of average weighted filings per judge of any district in the U.S. with
832 filings in the most recent report; Kansas had less than half that number at 402 filings. See Administrative
Office of the United States Court, Federal Court Management Statistics, available at
http://www.uscourts.gov/Statistics/FederalCourtManagementStatistics/DistrictCourtsDec2011.aspx.

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court finds no obstacle to a fair trial in either venue. Accordingly, these factors are
neutral, and the court must next consider issues of judicial economy.
F. Judicial Economy and Other Practical Considerations
The defendants argue that this case should be transferred to Delaware, where
this district has already transferred Sprint’s case against the Cox entities on the same
issues. The defendants argue that the judicial economy of litigating these cases in the
same district outweighs all other factors that weigh against transfer. Sprint argues that
this court has familiarity with the patents and technology at issue in this case, so
keeping the cases in Kansas has its own efficiency advantage. It is true that Judge
Lungstrum has presided over two similar cases in this district. Although the defendants
argue that Judge Lungstrum is not currently presiding over any of the current cases, the
court has before it a motion to consolidate all of the cases, and Judge Lungstrum could
be available to preside over the consolidated case if the motion is granted.
The court certainly has an interest in avoiding duplicative litigation in this case.
However, even if severing one of the claims is unnecessary in order to properly transfer
the cases, this interest does not strongly weigh in favor of transfer. This is because there
are compelling judicial economy interests for either venue.
When this court decided to transfer Sprint’s case against Cox to Delaware, it
decided that “the court’s interest in avoiding duplicative and piecemeal litigation
strongly favor[ed] transfer.” Sprint, 2012 WL 4061509, at *16. This implies that the
sacrifice in judicial economy made by splitting the Sprint cases between Delaware and
Kansas was offset and outweighed by gains in judicial economy made by transferring
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the case. The gains in judicial economy in that case were that Delaware was the only
forum that had jurisdiction over all of the Cox defendants. Id. at *15–16.
Kansas has jurisdiction over all of the defendants and important experience with
the issues in this case. Even assuming that Delaware also has jurisdiction over all parties
involved, this gives it no advantage over Kansas. Additionally, litigation in multiple
districts would not result in inconsistent adjudications of the same patents, because all
of these cases would be heard by the Federal Circuit on appeal. See id. at 15. As a result,
the court finds that the judicial economy factor is neutral in this case.
In sum the court finds that the balance of convenience factors do not strongly
favor defendants’ request for transfer of this matter to Delaware such that Sprint’s
choice of forum in Kansas may be properly disturbed. The court declines to transfer the
matter under 28 U.S.C. § 1404(a).
IV. Conclusion
The court finds that the defendants have not met the burden of showing that the
factors weigh “strongly in favor” of a transfer. The court need not consider whether
Delaware would have jurisdiction over all the defendants. The defendants’ motion to
transfer is denied. Accordingly, the defendants’ motion to sever is denied as moot.

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IT IS THEREFORE ORDERED this 18th day of January, 2013, that the defendants’
motion to transfer (Dkt. 39) is denied, and the defendants’ motion to sever and stay
(Dkt. 49) is denied as moot.

s/ J. Thomas Marten
J. THOMAS MARTEN, JUDGE

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