SkyHawke Technologies, LLC v. DECA International Corp.

Filing 31

ORDER denying 20 Motion to Change Venue. Signed by Magistrate Judge Michael T. Parker on May 11, 2011. (jsm)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
JACKSON DIVISION
SKYHAWKE TECHNOLOGIES, LLC
V.

PLAINTIFF
CIVIL ACTION NO. 3:10cv708-TSL-MTP

DECA INTERNATIONAL CORP.

DEFENDANT

ORDER DENYING MOTION TO TRANSFER VENUE
This matter is before the court on the [20] Motion to Change Venue filed by Defendant
DECA International Corporation (DECA). Having duly considered the motion [20], the
applicable legal standards, and the other submissions by the parties, the court finds that the
motion should be DENIED.
Factual Background
Plaintiff Skyhawke Technologies, LLC (Skyhawke) accuses DECA of infringing on two
patents of which Skyhawke is the assignee–Patent No. 6,456,938 (hereinafter the “938 patent”),
entitled “Personal DGPS Golf Course Cartographer, Navigator and Internet Web Site with Map
Exchange and Tutor”, and Patent No. 7,118,498 (hereinafter the “498 patent”), entitled
“Personal Golfing Assistant and Method and System for Graphically Displaying Golf Related
information and for Collection, Processing and Distribution of Golf Related Data.” Skyhawke is
a limited liability company with its principal place of business in Ridgeland, Mississippi. DECA
is a California corporation with its principal place of business in La Palma, California. See Am.
Compl. [23]. DECA is a wholly-owned subsidiary of DECA System Inc., a Korean corporation.
See Def.’s Disclosure Statement [16]; Hong Decl. [20-1] at 3.

Skyhawke alleges that DECA has made, caused to be made, imported, caused to be
imported, used, offered to sell, sold, and caused to be sold products (i.e., the Golfbuddy World
Platinum product) in Mississippi, which has infringed, induced infringement, and/or contributed
to infringement on the 938 patent and the 498 patent. Am. Compl. [23] at 2-3.
In the instant motion [20], DECA asks the court to transfer this case from the Southern
District of Mississippi (hereinafter “Southern District”) to the Central District of California
(hereinafter “Central District”).
Transfer of Venue Standard
For the convenience of parties and witnesses and 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.A. § 1404(a). “[T]he plaintiff' choice of forum is clearly a factor to be considered but
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in and of itself it is neither conclusive nor determinative.” In re Horseshoe Entm't, 337 F.3d 429,
434 (5th Cir. 2003).
[W]hen the transferee venue is not clearly more convenient than the venue chosen
by the plaintiff, the plaintiff' choice should be respected. When the movant
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demonstrates that the transferee venue is clearly more convenient, however, it has
shown good cause and the district court should therefore grant the transfer.
In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008)(“Volkswagen II”). A decision
to transfer venue under Section 1404 is committed to the sound discretion of the transferring
judge. Jarvis Christian College v. Exxon Corp., 845 F.2d 523, 528 (5th Cir. 1988).
The threshold issue is whether the claim could have been filed in the judicial district to
which the movant is seeking to transfer the case. In re Volkswagen AG, 371 F.3d 201, 203 (5th
Cir. 2004)(“Volkswagen I”). Venue is proper in any district in which any defendant resides. 28

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U.S.C.A. §1391(b)(1). A defendant corporation is deemed to reside in any district in which it is
subject to personal jurisdiction at the time the action is commenced. Id. at §1391(c).
In order to determine the convenience to the parties and witnesses the court applies
private and public interest factors. Volkswagen I, 371 F.3d at 203. The private interest factors
include:
(1) the relative ease of access to sources of proof; (2) the availability of
compulsory process to secure the attendance of witnesses; (3) the cost of
attendance for willing witnesses; and (4) all other practical problems that make
trial of a case easy, expeditious and inexpensive.
Id. The public interest factors are as follows:
(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 conflict of laws of the application of foreign law.
Id.

Analysis
The court answers the threshold question of whether suit may have been brought against

DECA in the Central District in the affirmative, given that DECA is headquartered in the Central
District; thus, transfer of venue to the Central District is permissible under 28 U.S.C. § 1404(a).
Accordingly, the court finds it necessary to weigh the applicable private interest and public
interest factors to determine whether the Central District is the clearly more convenient venue
versus the plaintiff’s chosen venue, the Southern District. See Volkswagen II, 545 F.3d at 315.

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Private Interest Factors:
(1) Access to sources of proof 1
DECA avers that this factor weighs in its favor because the documents relating to design,
development, testing, and marketing of the product at issue, as well as product models and
prototypes, are located in its California headquarters. Def.’s Brief [21] at 9. In re Genentech,
Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009), states: “In patent infringement cases, the bulk of the
relevant evidence usually comes from the accused infringer. Consequently, the place where the
defendant' documents are kept weighs in favor of transfer to that location.” DECA argues that
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transport of the documents for trial will impose a significant and unnecessary burden. See id. at
1346 (holding that district court erred in denying a transfer where the plaintiff’s chosen venue
would impose a significant and unnecessary burden on the petitioners to transport documents that
would not be incurred in the requested venue).
DECA claims that other sources of proof are located at the facility of DECA System in
Bundang, Korea. Def.’s Brief [21] at 9. DECA argues that the Central District is 1,850 miles
closer to Korea than the Southern District, and thus, the more convenient forum. Id. Conversely,
Skyhawke argues that sources of proof found in Korea are located outside of the Central District,
thus this does not weigh in favor of transfer. Pl.’s Brief [25] at 11.
DECA also highlights the fact that Skyhawke’s 938 patent is for a product developed in
Wayne City, Illinois and suggests that all documents relating to this product’s development will
be found in Illinois–not Mississippi. Def’s Brief [21] at 9. Skyhawke denies this, and claims all
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Both DECA and Skyhawke argue that several of their witnesses reside in their respective
venues. These arguments are addressed more in-depth under the cost of attendance for witnesses factor.

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documents related to the 938 patent were transferred to Skyhawke’s possession. Pl.’s Brief [25]
at 10.
Skyhawke further argues that in addition to having its principal place of business in the
Southern District and employing ninety-six residents of the Southern District, all documents,
records, and other evidence relating to the inventions and prosecution histories of the two
Skyhawke patents at issue are located in the Southern District at its Ridgeland facility. Pl.’s Brief
[25] at 2, 10. Additionally, Skyhawke claims that documents relating to the development of the
498 product, financial records relating to damages incurred, documents relating to the
commercial success of the products at issue, and the alleged infringing devices that DECA sold
in Mississippi are all located in the Southern District. Id. at 10-11. Accordingly, Skyhawke urges
this court to find that this factor does not weigh in DECA’s favor where Skyhawke would be
equally as inconvenienced should its choice of venue be disturbed.
While the court agrees with the observation in the Genentech case that the bulk of the
evidence in patent matters is often presented by the alleged infringer – in this case DECA – it is
clear that SkyHawke maintains records in the Southern District that will be relevant. In re
Genentech, 566 F.3d at 1345. Moreover, while DECA has certainly not waived its rights to
contest venue by filing an answer and counterclaim, its pleadings suggest that SkyHawke’s
records will also be relevant. For example, DECA claims, inter alia, that the patents at issue are
invalid for SkyHawke’s failure to satisfy the statutory requirements of 35 U.S.C. §§101, et. seq.
See Answer to Am. Compl.[28]. Records and other evidence regarding SkyHawke’s compliance,
or lack thereof, with the statutory requirements are more likely to be in SkyHawke’s possession.
On balance, this factor is either neutral or very slightly favors DECA.
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(2) Compulsory process
DECA alleges that this court’s subpoena powers will not extend to any of the witnesses in
this case, given that a number of their identified witnesses reside in or near the Central District.
Def.’s Brief [21] at 8. DECA contends the fact that the Central District is “a venue with usable
subpoena power....weighs in favor of transfer, and not only slightly.” In re Genentech, 566 F.3d
at 1345. Conversely, Skyhawke argues that the Southern District has subpoena power over party
witnesses and that the analysis of this factor only applies to non-party witnesses. See Emanuel v.
SPX Corp., 2009 U.S. Dist. LEXIS 86094, at *16 n.2 (E.D. Tex. Sept. 21, 2009). Skyhawke
further asserts that this factor is neutral–and if not, weighs against transfer–because neither the
Central District nor the Southern District has compulsory process over any of the identified
witnesses from Korea2 or over Mr. Kent Barnard, the inventor of the 938 patent and a resident of
Indiana.
Skyhawke is correct in its assessment that the compulsory process factor
involves a factual analysis of non-party witnesses versus party witnesses. See NovelPoint
Learning LLC v. LeapFrog Enters., 2010 U.S. Dist. LEXIS 128906 at *17 (E.D. Tex. Dec. 6,
2010)(“This factor weighs heavily for transfer if the majority of non-party witnesses are located
within the [requested venue].”). It is unclear whether the identified witnesses at the DECA
System facility in Korea are non-party witnesses rather than party witnesses. Assuming they are
non-party witnesses, neither the Central District nor the Southern District could compel them to
appear at trial. The same can be said of the inventor of the 938 patent, an Indiana resident.

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Skyhawke notes that the witnesses from the Bundang, Korea facility are employees of DECA’s
parent company and suggests that, as such, they are likely party witnesses not third-party witnesses. Pl.’s
Brief [25] at 9.

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Accordingly, this factor is essentially neutral as to both parties. It is worth noting,
however, that “if this court cannot compel a witness' attendance at trial, neither party is
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prevented from using the witness' videotaped deposition at trial.” Symbol Technologies, Inc. v.
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Metrologic Instruments Inc., 450 F.Supp.2d 676, 679 (E.D.Tex.2006).
(3) Cost of attendance for witnesses
This factor has been referred to as the most important private interest. In re Genentech,
566 F.3d at 1343 (citations omitted). DECA estimates the distance between the two forums to be
1,850 miles, which makes travel for DECA’s witnesses inconvenient. Def’s Brief [21] at 6. The
Fifth Circuit has established the “100-mile rule,” which states: “When the distance between an
existing venue for trial of a matter and a proposed venue under § 1404(a) is more than 100 miles,
the factor of inconvenience to witnesses increases in direct relationship to the additional distance
to be traveled.” Volkswagen II, 545 F.3d at 317.
DECA identified three of its officers as material witnesses on the subjects of design,
development, and marketing of the alleged infringing product, all of whom reside in the Central
District of California. Def.’s Brief [21] at 5. DECA argues that these witnesses will incur a
“dramatic burden in terms of cost, time away from family, and time away from other personal
and professional obligations” if required to travel to the Southern District for trial. Id. To the
extent that former employees of DECA may be necessary witnesses, those former employees are
said to currently reside in the Los Angeles and Seattle, Washington areas–much closer to the
Central District than the Southern District. Id. The Fifth Circuit has recognized that witnesses
who must travel for trial incur not only a monetary burden, “but also the personal costs
associated with being away from work, family, and community.” Volkswagen II, 545 F.3d at 317.
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DECA argues that the previously identified witnesses who live in Korea will incur
greater costs due to a lack of direct flights from Seoul to Jackson, Mississippi. Def’s Brief [21] at
6. DECA identifies three officers from its parent-corporation DECA System as material
witnesses–Junha Park (Software Development Manager), Gisu Lee (Hardware Development
Manager), and Suk Chul Ham (Global Marketing Manager)– who may have knowledge
regarding the design, development, and/or marketing of the alleged infringing product.
According to DECA, the fact that there are no direct flights from Seoul, Korea to Jackson,
Mississippi and no direct flights from Los Angeles, California to Jackson, Mississippi should
weigh in its favor since this means increased costs and increased travel time for DECA’s
witnesses.3
Additionally, DECA suggests that should the inventor or anyone else involved in securing
the patent be identified as necessary third-party witnesses those witnesses would have no
connection to the Southern District. As a result, DECA argues that the Southern District would
be no more convenient for those potential witnesses than the Central District. Def.’s Brief [21] at
7.
For all of the aforementioned reasons, DECA argues that this factor overwhelmingly
weighs in its favor. See In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008) (holding
that district court erred in refusing to “considerably weigh” witness convenience in favor of

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In support of this argument, DECA cites Semiconductor Corp. v. Hynix Semiconductor, Inc.,
2010 U.S. Dist. LEXIS 104616 at *20 (E.D. Tex 2010)(“[T]he existence or non-existence of direct
flights can impact the analysis of travel time.”). It is of note that this case cites dicta in a footnote from
Volkswagen I wherein the Fifth Circuit, in calculating travel time for witnesses, makes note of the lack of
direct flights from the city where witnesses reside to the plaintiff’s chosen venue. See Volkswagen I, 371
F.3d at 205 n. 4.

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transfer, where the identified witnesses “would need to travel approximately 900 more miles” to
attend trial in the original venue versus the defendant’s requested venue); see also In re
Genentech, 566 F.3d at 1345 (finding error in the district court’s denial of transfer where a
“substantial number of material witnesses reside in the transferee venue...and no witnesses reside
within the [original forum]).
Conversely, Skyhawke has identified as material witnesses three of its officers, who are
inventors of the 498 product, and who all reside in the Southern District. Pl.’s Brief [25] at 7.
Skyhawke contends that their witnesses will be equally inconvenienced by traveling to the
Central District should venue be changed. Ultimately, Skyhawke argues that where a transfer in
venue would simply shift the inconvenience from one party to another, this factor is neutral and
does not support granting DECA’s motion. See Aloft Media, LLC v. Yahoo!, Inc., 2009 U.S. Dist.
LEXIS 48716 at *19 (E.D. Tex. June 10, 2009)(“Because the Northern District of California
would be more convenient for Defendants and their witnesses, and the Eastern District of Texas
would be more convenient for [Plaintiff] and its witnesses, this factor is neutral with regard to the
parties and their witnesses.”).
The Fifth Circuit has recognized that pursuant to the 100-mile rule the additional distance
to be traveled for trial in a proposed venue “means additional travel time; additional travel time
increases the probability for meal and lodging expenses; and additional travel time with
overnight stays increases the time which these fact witnesses must be away from their regular
employment.” Volkswagen I, 371 F.3d at 205. However, where a transfer in venue serves to shift
inconvenience from one party to the next, this factor does not weigh in favor of granting the
movant’s request given that the convenience of all parties and witnesses should be considered.
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See id. at 204. Thus, where DECA has identified three of its officers as essential witnesses and
Skyhawke has identified three of its officers as essential witnesses, this factor is neutral given
that a transfer of venue would result in transferring the increased costs and inconvenience to
Skyhawke.
A typical patent case involves witnesses who come from all over the country or world.
Symbol Technologies, 450 F. Supp. 2d at 679 (citation omitted). See Aloft Media, 2009 U.S. Dist.
LEXIS 48716 at *12 (“[T]his factor may weigh against transfer or be neutral when the relevant
witnesses are spread throughout the country or the world.”)(citations omitted). With regard to the
DECA System witnesses traveling from Korea, the court finds the increased travel time of the
witnesses from the DECA System facility in Korea may weigh in DECA’s favor, but only
slightly, as foreign travel will likely inconvenience these witnesses regardless of whether they are
traveling to the Central District or the Southern District. “Thus, regardless of where the trial is
held, many witnesses, including third-party witnesses, will likely need to travel a significant
distance.” Symbol Technologies, 450 F. Supp. at 679 (citation omitted).
(4) Other Practical Problems
DECA again argues that all documentary evidence and witnesses in this case are located
in either California and Korea and that in granting a transfer to a venue in closer proximity to the
relevant witnesses and evidence this court will further the interests of ease, expediency and cost
of trial. Def.’s Brief [21] at 10. Conversely, Skyhawke avers that to the extent DECA argues in
favor of a transfer because witnesses and evidence from Korea are closer to the Central District,
DECA is incorrect as a matter of law. See In re Genentech, 566 F.3d at 1344 (finding that district
court erred in giving significant weight to the inconvenience of European witnesses where
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witnesses would be traveling a significant distance no matter where they testified).
The factual considerations asserted by DECA in support of its contention that this factor
weighs in its favor are essentially restatements of previously asserted facts, namely that the
majority of the documents and witnesses in the instant case may be found in or in closer
proximity to the Central District. Given that DECA has not made any novel arguments nor
identified any other practical problems for the court’s consideration, the court finds this factor is
neutral.
Public Interest Factors:
(1) Local interest
DECA argues that its company employs over thirty local residents and has become a
prominent presence in the local economy of the Central District–generating $10 million in sales
in 2010 alone. Def.’s Brief [21] at 10. DECA emphasizes the fact that promotional events for its
product are held in conjunction with local golf retail stores and Southern-California-based golf
publications and that it has contributed to various local charitable organizations. DECA contends
that because the reputation and business activities of its officers and employees are at issue in
this case, the Central District has an interest in the outcome. See In re Hoffman-La Roche, 587
F.3d 1333, 1336 (Fed. Cir. 2009)(“[L]ocal interest in this case remains strong because the cause
of action calls into question the work and reputation of several individuals residing in or near that
district and who presumably conduct business in that community.”).
According to DECA, the only connection between the accused product and the Southern
District is the fact that the product is sold here. DECA purports sales in the Southern District to
be less than 0.12% of its nationwide sales in 2010. DECA avers that sale of the allegedly
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infringing product, without more, is insufficient to demonstrate a local interest for the purposes
of a transfer of venue analysis. Def’s Brief [21] At 11. In support of this argument, DECA cites
In re TS Tech USA Corp., 551 F.3d 1315, 1321 (Fed. Cir. 2008), a patent infringement case
which held that there was no local interest in the original venue merely because the accused
product was sold there given that none of the parties had an office in the plaintiff’s chosen venue,
no witnesses resided there, and no evidence was located there.
Skyhawke argues that its chosen venue is the venue wherein its sole facility was founded
in 1998, and as such Skyhawke’s presence in the Southern District is not “recent, ephemeral, [or]
an artifact of litigation.” In Re Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010).
Skyhawke submits that ninety-six residents of the Southern District, as well as all of its officers
and directors, work at its Ridgeland facility. Pl.’s Brief [25] at 13-14. Moreover, Skyhawke
emphasizes that DECA intended for its infringing product to be sold and used in Mississippi, as
evidenced by the digital maps of approximately one-hundred-fifty Mississippi golf courses
contained on its product. Id. at 14. For all of the aforementioned reasons, Skyhawke argues that
there is a strong local interest in prosecuting this matter in the Southern District.
The Federal Circuit in TS Tech found no local interest in the plaintiff’s chosen venue
because the only connection to that venue was that the infringing product was sold there. In so
finding, the court noted that there were no witnesses, no principal places of business of any party,
and no evidence located in the original venue. TS Tech, 551 F.3d at 1321. Conversely, in the
instant case, Skyhawke has a facility in Ridgeland, Mississippi, witnesses reside here, and
Skyhawke’s physical evidence is located at its facility. Moreover, as pointed to by Skyhawke,
DECA has presumably directed its product at Mississippi consumers given that the product
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contains digital maps of Mississippi golf courses. Accordingly, while DECA makes a valid
argument that the Central District has a local interest in this matter, the court finds the Southern
District likewise has a local interest that is equal to that of the Central District in that Skyhawke’s
sole facility, witnesses and documents are located in the Southern District and given that the
alleged infringing product is being sold here.4 Thus, the court finds this factor to be neutral.
(2) Administrative difficulties
DECA argues that disposition and trial timelines are slightly shorter in the Central
District as opposed to the Southern District. Def.’s Brief [21] at 12. DECA cites Administrative
Office of the United States Courts data,5 which lists the Central District median disposition time
as 5.6 months and median time to trial as 18.5 months. The Southern District’s median
disposition time is listed as 8.1 months with a median time to trial of 23.9 months. Thus, the
Southern District’s median time to trial is 5.4 months behind that of the Central District.
Skyhawke argues that this slightly shorter time frame should be accorded minimal weight, if any.
Moreover, Skyhawke notes that the Federal Circuit has referred to this as the “most speculative”
factor in the analysis. See In re Genentech, 566 F.3d at 1347.
“To the extent that court congestion is relevant, the speed with which a case can come to
trial and be resolved may be a factor.” Id.(citation omitted). The Federal Circuit in In re
Genentech further noted:
Without attempting to predict how this case would be resolved and which court
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That the infringing product is sold in the Southern District is given minimal consideration as it
is also sold in numerous other places.
5

http://www.uscourts.gov/Viewer.aspx?doc=/uscourts/Statistics/FederalJudicialCaseloadStatistics/2010/t
ables/C05Mar10.pdf (last visited May 4, 2011).

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might resolve it more quickly...when...several relevant factors weigh in favor of
transfer and others are neutral, then the speed of the transferee district court
should not alone outweigh all of those other factors.
Id.
While recognizing that this factor is clearly the most speculative, the court finds that a
difference of approximately five months in average time of disposition is significant enough to
slightly weigh in favor of DECA. However, given that the other factors are essentially neutral,
the court, in keeping with the reasoning of Genentech, affords this factor little weight.
(3) Forum’s Familiarity with the Governing Law and (4) Conflict of Law Problems
Both parties agree that the two remaining factors in the transfer of venue analysis are
neutral as to both parties.
Conclusion
This case could have been brought in either of the two jurisdictions at issue. This is not a
case such as TS Tech where the plaintiff had no real connection with the chosen forum, or such as
Genentech where a substantial number of material witnesses resided in the transferee venue and
no witnesses resided in the original forum. See TS Tech, 551 F.3d at 1321; see also Genentech,
566 F.3d at 1345. Here, SkyHawke has a substantial presence in this District, a number of
witnesses are located in this District and some key records are located in this District.
While not determinative, a plaintiff’s choice of venue is afforded deference. Volkswagen
II, 545 F.3d at 315. DECA has the burden of showing that its preferred venue is clearly more
convenient. See id. It failed to meet the burden as most of the factors in the analysis are neutral.
Only one or two slightly favor a transfer. A change of venue would simply transfer any
inconvenience DECA might suffer to SkyHawke. The plaintiff’s choice of forum should be
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upheld.
IT IS, THEREFORE, ORDERED, that Defendant DECA’s [20] Motion to Transfer
Venue is DENIED.
SO ORDERED, THIS the 11th day of May, 2011.
s/ Michael T. Parker
United States Magistrate Judge

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