Easyweb Innovations, LLC v. Facebook, Inc.

Filing 43

MEMORANDUM AND OPINION. For the reasons set forth in the attached Redacted Memorandum and Order, IT IS HEREBY ORDERED that defendant's motion to change venue is denied. SO ORDERED. Ordered by Judge Joseph F. Bianco on 8/30/2012. (O'Neil, Jacquelyn)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
_____________________
No 11-CV-5121 (JFB)(ETB)
_____________________

EASYWEB INNOVATIONS, LLC,
Plaintiff,
VERSUS

FACEBOOK, INC.,
Defendant.
___________________
REDACTED MEMORANDUM AND ORDER
August 30, 2012
___________________

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
Facebook in California (and, thus, many of
the operative facts took place in California),
the plaintiff’s 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 plaintiff’s 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
plaintiff’s home forum. In short, having
fully considered the relevant factors, fairness
and convenience do not support disturbing
plaintiff’s choice-of-forum in this particular
case and, thus, the motion to transfer the

Codignotto
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
EasyWeb,
with
EasyWeb Technologies as its sole member,
under New York law and using the same
address
as
EasyWeb
Technologies.
(Codignotto Decl. 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.)

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 Decl.”), 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
EasyWeb, and continues to consult within
the District for various customers. (Id. at
¶ 3.) With respect to this case, Codginotto
asserts the following:

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. (Pl.’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,” and that he

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. (Plaintiff’s
Opposition to Facebook’s Motion to Change
Venue (“Pl.’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
EasyWeb now uses. (Id.)

2

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, marketing, and advertising
documents and information – are
located in or accessible from its
Menlo Park headquarters.

is currently in debt, including over $120,000
in credit card debt to date. (Codignotto
Decl. at ¶¶ 11-12.) He asserts, and attaches
documentation from his bank account
statement in support, that he has personal
savings of only $1,678.25. (Id. at ¶ 13.)
Thus, Codignotto states, “I cannot afford the
additional time away from my businesses
nor the additional expenses involved if this
case 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.) Facebook
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,

(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. at 4.)
EasyWeb also points to the fact that
Facebook “[r]eceives a substantial amount
of revenue from advertisements that are sold
to New York area companies or that target
New York residents, including an estimated
reach of millions of people within the
District by Facebook alone.” (Id. at 5.)
However, at oral argument on July 11, 2012,
Facebook explained that, while the New
York office has recently advertised for
engineers, the engineers that would have
knowledge regarding the product and its
development are located in California.

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.

B. Procedural History
Plaintiff commenced this action on
October 20, 2011. On December 14, 2011,
defendant requested that the Court schedule
a pre-motion conference in anticipation of
its motion to dismiss. On January 3, 2012,
the Court held a pre-motion conference and
3

and fairness are considered on a case-bycase basis.” D.H. Blair & Co., Inc. v.
Gottdiener, 462 F.3d 95, 106 (2d Cir. 2006);
accord Publicker Indus. Inc. v. States (In re
Cuyahoga Equip. Corp.), 980 F.2d 110, 117
(2d Cir. 1992). In determining whether to
transfer venue, courts examine: (1) whether
the action could have been brought in the
proposed forum; and (2) whether the transfer
would “promote the convenience of parties
and witnesses and would be in the interests
of justice.” Clarendon Nat’l Ins. Co. v.
Pascual, No. 99 Civ. 10840 (JGK)(AJP),
2000 WL 270862, at *2 (S.D.N.Y. Mar. 13,
2000) (quoting Coker v. Bank of America,
984 F. Supp. 757, 764 (S.D.N.Y. 1997))
(other citations omitted).

set a briefing schedule. The motion to
dismiss was fully briefed as of March 27,
2012.
The parties were scheduled for oral
argument on the motion to dismiss for April
5, 2012. Prior to that date, defendant
requested a pre-motion conference in
anticipation of filing the pending motion to
transfer this case to the Northern District of
California. The Court adjourned the oral
argument on the motion to dismiss, without
date, pending the outcome of the motion to
transfer.
Defendant filed its motion to transfer on
May 17, 2012. Plaintiff filed its opposition
on June 8, 2012. Defendant filed its reply
on June 22, 2012. The parties participated
in oral argument on the motion to transfer on
July 11, 2012.
The Court has fully
considered all of the arguments presented by
the parties.

The parties do not dispute that this
action could have been brought in the
Northern District of California. Instead, the
parties focus on whether transfer would
promote the interests of justice and the
convenience of the parties. The Second
Circuit has summarized some of the factors,
among others, that a district court is to
consider in the exercise of its discretion:

II. DISCUSSION
A. Applicable Law

(1) the plaintiff’s choice of forum,
(2) the convenience of the witnesses,
(3) the location of relevant
documents and relative ease of
access to sources of proof, (4) the
convenience of the parties, (5) the
locus of operative facts, (6) the
availability of process to compel the
attendance of unwilling witnesses,
[and] (7) the relative means of the
parties.

Under 28 U.S.C. § 1404(a), “[f]or 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.” Section 1404(a) is intended “to
prevent waste of ‘time, energy and money’
and ‘to protect litigants, witnesses and [the]
public against unnecessary inconvenience
and expense.’” Mastercard Int’l Inc. v.
Lexcel Solutions, Inc., No. 03 Civ. 7157
(WHP), 2004 WL 1368299, at *5 (S.D.N.Y.
June 16, 2004) (quoting Van Dusen v.
Barrack, 376 U.S. 612, 616, 84 S.Ct. 805,
11 L.Ed.2d 945 (1964)). “District courts
have
broad
discretion
in
making
determinations of convenience under
Section 1404(a) and notions of convenience

D.H. Blair & Co., Inc., 462 F.3d at 106-07
(quoting Albert Fadem Trust v. Duke Energy
Corp., 214 F. Supp. 2d 341, 343 (S.D.N.Y.
2002)). Some courts have identified
additional factors, including (1) “the forum’s
familiarity with governing law,” and (2)
4

forum chosen by the plaintiff, Stein v.
Microelectronic Packaging, Inc., No. 98
Civ. 8952 (MBM), 1999 WL 540443, at *8
(S.D.N.Y. 1999), see also Wagner v. N.Y.
Marriott Marquis, 502 F. Supp. 2d 312, 317
(N.D.N.Y. 2007) (“The presumption
favoring plaintiff’s choice of forum,
however, is not so rigidly applied where, as
here, the cause of action arose outside of
that forum . . .” (citation omitted)); Royal
Ins. Co. of Am., 998 F. Supp. at 353 (“The
weight accorded to a plaintiff’s choice of
venue is significantly diminished, however
where the operative facts have no
connection to the chosen district.”);
Hernandez v. Graebel Van Lines, Inc., 761
F. Supp. 983, 990 (E.D.N.Y. 1991)
(“[W]here the transactions or facts giving
rise to the action have no material relation or
significant connection to the plaintiff’s
chosen forum, then the plaintiff’s choice is
not accorded the same ‘great weight’ and in
fact is given reduced significance.”); or (2)
where plaintiff’s residence is not the chosen
forum, see, e.g., De Jesus v. Nat’l R.R.
Passenger Corp., 725 F. Supp. 207, 208
(S.D.N.Y. 1989) (“A plaintiff’s choice of
forum is entitled to substantial weight. But
where a plaintiff chooses a forum that is not
his residence, that weight is diminished.”
(internal citations omitted)). Where the
selected forum is not connected in a
meaningful way to the operative facts and is
not the plaintiff’s residence, the deference to
the chosen forum is significantly
diminished.1 See, e.g., Eskofot A/S v. E.I. Du

“trial efficiency and the interest of justice,
based on the totality of the circumstances.”
Glass v. S & M NuTec, 456 F. Supp. 2d 498,
501 (S.D.N.Y. 2006); accord In re Hanger
Orthopedic Group, Inc. Sec. Litig., 418 F.
Supp. 2d 164, 167-68 (E.D.N.Y. 2006); see
also Dealtime.com v. McNulty, 123 F. Supp.
2d 750, 755 (S.D.N.Y. 2000) (collecting
cases).
There is no strict formula for the
application of these factors, and no single
factor is determinative. See, e.g., Hilti
Aktiengesellschaft v. Milwaukee Elec. Tool
Corp., No. 04 Civ. 629 (ARR)(ASC), 2004
WL 1812821, at *4 (E.D.N.Y. July 19,
2004); Indian Harbor Ins. Co. v. Factory
Mut. Ins. Co., 419 F. Supp. 2d 395, 402
(S.D.N.Y. 2005). Instead, these factors
should be applied and weighed in the
context of the individualized circumstances
of the particular case. The moving party,
Facebook, bears the burden of showing that
transfer is warranted in light of these factors.
See O’Hopp v. ContiFinancial Corp., 88 F.
Supp. 2d 31, 34 (E.D.N.Y. 2000) (citing
Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d
215, 218 (2d Cir. 1978)).
B. Analysis
1. Plaintiff’s Choice of Forum
It is well settled that the plaintiff’s
choice of forum is “given great weight.”
D.H. Blair & Co., Inc., 462 F.3d at 107
(citation omitted). Thus, “[a] plaintiff’s
choice of venue is entitled to significant
consideration and will not be disturbed
unless other factors weigh strongly in favor
of transfer.” Royal Ins. Co. of Am. v. United
States, 998 F. Supp. 351, 353 (S.D.N.Y.
1998) (citations omitted). However, courts
have noted that the weight given to this
factor is diminished where (1) the operative
facts have “little or no connection” with the

1

Plaintiff contends that “the rule that a plaintiff’s
chosen forum receives less deference when the
selected judicial district has little connection to the
operative facts applies only when the chosen forum is
not the plaintiff’s home forum.’” (Pl.’s Br. at 7-8
(citing Plevesky v. Suntrust Bank, 10-CV-2290
(JS)(ETB), 2010 WL 4879006, at *5 (E.D.N.Y. Nov.
22, 2010) (emphasis in original)).) However, the
Court disagrees. If there is little or no connection of
the operative facts to the chosen forum but it is the
plaintiff’s home district, the plaintiff’s choice of
forum is entitled to less deference even though it still
5

Pont De Nemours & Co., 872 F. Supp. 81,
96 (S.D.N.Y. 1995) (“The deference
accorded to plaintiff’s choice of forum . . . is
diminished substantially where the forum is
neither plaintiff’s home district nor the place
where the events or transactions underlying
the action occurred.”); Thomas Am. Corp. v.
Fitzgerald, No. 94 Civ. 0262 (CBM), 1994
WL 440935, at *5 (S.D.N.Y. Aug. 11, 1994)
(“[T]he plaintiff’s choice of forum is
accorded less weight where the plaintiff’s
chosen forum is neither plaintiff’s home nor
the place where the operative facts of the
action occurred.”). Moreover, “[w]here it
appears that the plaintiff was forum
shopping and that the selected forum has
little or no connection with the parties or the
subject matter, plaintiff’s choice of forum is
entitled to no weight whatever, and the
transfer of venue is appropriate.” Pierce v.
Coughlin, 806 F. Supp. 426, 429 (S.D.N.Y.
1992) (internal quotation marks and citation
omitted).

simply an indication of the small size of
EasyWeb and its limited financial resources.
Thus, notwithstanding the use of the post
office box, plaintiff’s choice of forum here
is entitled to deference as the plaintiff’s
home district.
Facebook also argues that plaintiff’s
choice of forum should not be given great
weight because the operative facts have no
connection to the District. (Def.’s Br. at 1112.) Plaintiff counters that the allegedly
infringed upon technology was created
within this District. As EasyWeb states,
All of the facts surrounding the
conception, reduction to practice,
filing, and assertion of the patents-insuit occurred in and around this
District. All of the facts surrounding
the operation of EasyWeb occurred
in this District. And all of the
essential testimony and documents
regarding those facts also are located
in or near the District.

In the instant case, EasyWeb is owned
by one individual, Codignotto, who has
resided within the District for the majority
of his life and currently lives in Wantaugh,
New York. Although EasyWeb’s business
address is a post office box inside of a UPS
Store, defendant has pointed to no authority
to support the position that simply because
plaintiff’s business address is a post office
box that his choice of forum automatically
should be granted less weight. In other
words, in this case, it is clear from the
record that the use of the post office box is
not an indication of an attempt at forum
shopping because it is clear that the home
district for EasyWeb and its owner is this
District. Instead, the post office box is

(Pl.’s Opp. Br. at 4 (emphasis in original).)
However, Facebook contends that, in patent
infringement cases, the locus of operative
facts is only where the allegedly infringing
product was designed, developed, and
produced – not where the patent-in-suits
were developed. (Def.’s Br. at 9.) As will be
discussed in more detail infra, the Court
disagrees with Facebook and concludes that
the place where the patented invention was
developed and the place where the allegedly
infringing products are developed are both
loci of operative facts. See, e.g., Devenshield
Inc. v. First Choice Armor & Equip., Inc.,
No. 5:10-CV-1140 (GTS/DEP), 2012 WL
1069088, at *13 (N.D.N.Y. Mar. 29, 2012)
(“venue analysis may demonstrate that there
[are] multiple loci of operative facts”)
(collecting cases). Thus, in this case, the
operative facts do have a clear connection to

carries some deference as the home district. Of
course, where the chosen forum is not the plaintiff’s
home district and has little or no connection to the
operative facts, then the deference is significantly
diminished.
6

testimony.” Pall Corp. v. PTI Techs., Inc.,
992 F. Supp. 196, 198 (E.D.N.Y. 1998)
(quoting Laumann Mfg. Corp. v. Castings
USA Inc., 913 F. Supp. 712, 720 (E.D.N.Y.
1996)). As discussed below, at this stage of
the litigation, it is unclear whether
Facebook’s witnesses would be more
inconvenienced by a trial in this District, or
whether
plaintiff
would
be
more
inconvenienced if this case was transferred
to the Northern District of California.
Accordingly, this factor is neutral.

the District as the place where the patentsin-suit were designed, developed, and
patented. Although operative facts also
occurred in California, EasyWeb’s choice of
forum it is still entitled to great deference in
this case as the plaintiff’s home district and
as one of the loci of the operative facts.
2. Convenience of Witnesses
In deciding whether to disturb the
plaintiff’s choice of forum, the convenience
of the witnesses is generally the most
important factor in the transfer analysis.
See, e.g., DLJ Mortgage Capital, Inc. v.
Cameron Fin. Group, Inc., No. 07 Civ. 3746
(LAP), 2007 WL 4325893, at *5 (S.D.N.Y.
Dec. 4, 2007) (“[T]he convenience of
witnesses is typically the most important
factor in a motion pursuant to § 1404(a).”);
accord Neil Bros. Ltd. v. World Wide Lines,
Inc., 425 F. Supp. 2d 325, 329 (E.D.N.Y.
2006) (“The convenience of the witnesses is
probably the single most important factor in
the transfer analysis.”); Wagner, 502 F.
Supp. 2d at 315 (“[T]he convenience of both
party and non-party witnesses is probably
the single-most important factor in the
analysis of whether transfer should be
granted.” (internal quotation marks and
citation omitted)); see also Viacom Int’l, Inc.
v. Melvin Simon Prods., Inc., 774 F. Supp.
858, 868 (S.D.N.Y. 1991) (“The core
determination under § 1404(a) is the center
of gravity of the litigation, a key test of
which is the convenience of witnesses.
Courts routinely transfer cases when the
principal events occurred, and the principal
witnesses are located, in another district.”
(citations omitted)).

Facebook has submitted the declaration
of Kelly Simpson (“Simpson”), an
Intellectual Property Paralegal employed by
Facebook.
In Simpson’s Declaration,
Simpson states that, “[t]he vast majority of
Facebook employees knowledgeable about
the design, development and operation of
the www.facebook.com website are located
at Facebook’s Menlo Park headquarters.”
(Declaration of Kelly Simpson, dated May
16, 2012 (the “Simpson Decl.”), at ¶ 5.)
Moreover, Simpson declares that,
Facebook has no offices, property, or
servers located in the Eastern District
of New York, and none of its
employees work in the Eastern
District of New York. Facebook does
not store any of its documents or
records in the Eastern District of
New York.
None of the
development or management of
Facebook’s technology for its
website and services occurs in the
Eastern District of New York.
(Id. at ¶ 7.) Thus, Simpson alleges that none
of Facebook’s potential witnesses are
located in the Eastern District of New York.
Moreover, Vidya Bhakar (“Bhakar”), an
attorney with Cooley LLP, attorneys for
defendant, submitted a declaration that

Generally, the moving party submits an
affidavit explaining why the transferee
forum is more convenient, which includes
“the potential principal witnesses expected
to be called and the substance of their
7

alleges that over 40 individuals and entities2
are “[b]elieved to be located in the Northern
District of California [and] have been
identified as authors, inventors, owners, or
custodians of prior art potentially relevant to
this case.” (Declaration of Vidya Bhakar,
dated May 17, 2012 (“Bhaker Decl.”), at
¶ 2.) However, while these individuals and
entities have been identified as sources of
potentially material information, Facebook
has not provided an actual witness list or

indicated
approximately
how
many
witnesses they intend to call. In fact,
Facebook argues that they are not required
to submit a witness list when making a
motion to transfer because the convenience
of witnesses is not their only reason for
transfer.
(Defendant’s Reply Brief in
Support of Its Motion to Transfer Venue
(“Def.’s Reply. Br.”) at 5.) Moreover,
Facebook points to the fact that the
Amended Complaint is vague with respect
to the accused products, and thus, Facebook
should not be faulted for failing to identify
specific witnesses and testimony. (Id.)
Accordingly, Facebook generally argues
that, since it is undisputed that
www.facebook.com was developed in the
Northern District of California, “specifying
individuals by name is clearly unnecessary.
Instead the vast majority, if not all, of
Facebook’s key witnesses and evidence will
be found there.” (Id.)

2

Bhakar’s Declaration lists the following individuals
and entities:
Jack Hong (Palo Alto, CA), George Toye
(Foster City, CA), Stanford University
(Stanford, CA), Toshio Kanoh (Mountain
View, CA), Gregory J. Wolff (Mountain
View, CA), Ricoh Corporation (Menlo Park,
CA), Jonathan J. Hull (Cupertino, CA),
Mark Peairs (Menlo Park, CA), John Cullen
(Redwood City, CA), Michael Baxter
(Sunnyvale, CA), Shanuanu Narayen
(Sunnyvale, CA), Wu Wong (Los Altos,
CA), Steve Morris (Palo Alto, CA), Chan
Chiu (Sunnyvale, CA), Cecilia Zhao
(Newark, CA), Aditya Khosla (Mountain
View, CA), James Lei (Cupertino, CA),
Annette M. Adler (Palo Alto, CA), Kenneth
P. Fishkin (Redwood City, CA), Matthew E.
Howard (San Francisco, CA), Randy Shoup
(San Francisco, CA), Mark N. Hayne (San
Jose, CA). Todd A. Cass (San Francisco,
CA), Catherine C. Marshall (Mountain
View, CA), Alexander E. Silverman (Menlo
Park, CA), Philippe Tarbouriech (San
Franscisco, CA), Kurt Piersol (Santa Cruz,
CA), Mohammad A. Safai (Los Altos, CA),
Agilente Technologies (Palo Alto, CA),
Peter F. King (Half Moon Bay, CA)
StephenStephen S. Boyle (Fremont, CA),
Lawrence M. Stein (San Carlos, CA), Alain
S. Rossmann (Palo Alto, CA), Bruce V.
Schwarts (San Mateo, CA), Mark G,
Lentczner (Mountain View, CA), Openwave
Systems, Inc. (Redwood City, CA), Intel
Corporation (Santa Clara, CA), Xiaoan Hou
(Santa Clara, CA), Yahya Hamadani
(Sunnyvale, CA), Matthew A. Markus (San
Francisco, CA), LSI Corporation (Milpitas,
CA), and Chris Cheah (San Jose, CA).

On the other hand, just as it is clear that
the majority of Facebook witnesses would
be located in the Northern District of
California, the majority, if not all of
plaintiff’s witnesses will clearly be located
within this District. As discussed supra,
EasyWeb has one employee, Codignotto,
who resides within this District and it would
be inconvenient for him to travel to the
Northern District of California. It is not clear
at this juncture if plaintiff intends to call any
additional witnesses from this District.
While Facebook may ultimately have
more witnesses than plaintiff that need to
travel to this District, at this stage of the
litigation, it is unclear how many witnesses
they intend to call, or the materiality of their
testimony. See, e.g., Aloft Media, LLC v.
Adobe Sys. Inc., Civil Action No. 6:07-cv355, 2008 WL 819956, at *5 (E.D. Tex.
Mar. 25, 2008) (concluding that cost of
attendance of willing witnesses was neutral

(Bhakar Decl. at ¶ 2.)
8

Facebook argues that the location of
EasyWeb’s documents is irrelevant because
“[i]t is the location of the development and
production of the allegedly infringing
product, as well as the documents related to
such product, that is the relevant factor.” (Id.
(citing Ratner v. Martel Electronics
Corporation, 07-CV-4742 (JS)(ARL), at
*15, Sept. 30, 2008, ECF No. 52.)
However, the Court does not view this factor
as particularly significant given the
technological age in which we live, with the
widespread use of, among other things,
electronic document production. See, e.g.,
Am. S.S. Owners Mut. Prot. and Indem.
Ass’n, Inc. v. Lafarge N. Am., Inc., 474 F.
Supp. 2d 474, 484 (S.D.N.Y. 2007) (“The
location of relevant documents is largely a
neutral factor in today’s world of faxing,
scanning, and emailing documents.”);
DiStefano v. Carozzi N. Am., Inc., No. 98
Civ. 7137 (SJ), 2002 WL 31640476, at *4
(E.D.N.Y. Nov. 16, 2002) (“Although the
location of relevant documents is entitled to
some weight when determining whether a
case should be transferred, modern
photocopying technology deprives this issue
of practical or legal weight.” (citations
omitted)).

where movant “has not shown that [the 47
identified prior art witnesses located near
transferee forum] are likely to testify at
trial” even “[t]hough it may be more
convenient for [them] to testify [there]”); see
also Orb Factory, Ltd. v. Design Sci. Toys,
Ltd., 6 F. Supp. 2d 203, 208-09 (S.D.N.Y.
1998) (“Vague generalizations and failure to
clearly specify the key witnesses to be
called, along with a statement concerning
the nature of their testimony, are an
insufficient basis upon which to grant a
change of venue under § 1404(a).”). In
addition, while plaintiff has indicated that
Codignotto will be a witness, it is entirely
possible that plaintiff will call additional
witnesses that will be inconvenienced if this
case is transferred. Thus, at this point, the
Court finds that this factor is neutral as it
relates to the transfer analysis.
However, even assuming arguendo that
Facebook will have to call a number of
California residents as witnesses and that
this factor favors transfer, the Court
concludes that the other factors – especially,
the fact that this is plaintiff’s home district
and the relative means of the parties
(including plaintiff’s precarious financial
condition) – still outweigh this factor for the
reasons discussed in this Memorandum and
Order.

4. Convenience of the Parties
In terms of the convenience of the
parties, the Court recognizes that “‘[w]here
transfer
would
merely
shift
the
inconvenience from one party to the other,’
the Court should leave plaintiff’s choice of
venue undisturbed.” See Wagner, 502 F.
Supp. 2d at 316 (quoting Wilshire Credit
Corp. v. Barrett Capital Mgmt. Corp., 976
F. Supp. 174, 182 (W.D.N.Y. 1997));
accord Schieffelin & Co. v. Jack Co. of
Boca, Inc., 725 F. Supp. 1314, 1322
(S.D.N.Y. 1989). However, “transfer of
venue may be appropriate where
inconvenience for the party moving for

3. Location of Documents
With respect to the location of
documents, Facebook argues that “[r]elevant
documentation
and
evidence
about
Facebook’s activities and operations
concerning its website and services can also
be found at its Menlo Park headquarters
including evidence (such as financial
marketing, and advertising documents and
information) that may potentially relate to
EasyWeb’s damages and willfulness
allegations.” (Def.’s Br. at 10.) Moreover,
9

Martel Electronics Corporation, in which
Judge Seybert ruled that in a patent
infringement case the locus of operative
facts was in the District of New Hampshire
“[b]ecause the alleged infringing product
was designed, developed, and produced by
[the defendant] in New Hampshire.”
(Memorandum and Order, 07-CV-4742
(JS)(ARL), at *14, Sept. 30, 2008, ECF No.
52.) Moreover, Judge Seybert held that
“[p]laintiff’s contention that his documents
and records are located in New York is
irrelevant; it is the location of the
development and production of the allegedly
infringing product, as well as the documents
related to such product, that is relevant to
this factor.” Id. at *15 (citing Fuji Film Co.
v. Lexar Media, Inc., 415 F. Supp. 2d 370,
374 (S.D.N.Y. 2006)).

transfer could be completely eliminated
without substantially adding to the nonmoving party’s inconvenience.” Frame v.
Whole Foods Mkt., Inc., No. 06 Civ 7058
(DAB), 2007 WL 2815613, at *6 (S.D.N.Y.
Sept. 24, 2007).
Here, transferring venue to the Northern
District of California will simply shift the
inconvenience from plaintiff to defendant.
As explained supra, EasyWeb’s location,
and its sole employee, Codignotto, is in the
District.
According to Facebook’s
representations that the majority of their
employees with any material knowledge are
located in the Northern District of
California, it is entirely possible that transfer
would
completely
eliminate
any
inconvenience to defendant.
However,
transferring to the Northern District of
California will substantially add to
plaintiff’s inconvenience and place an
enormous financial burden on plaintiff in
litigating this case. Thus, this factor weighs
against transfer of this action to the Northern
District of California.

However, several districts courts within
this Circuit have had a more expansive view
of the locus of operative facts in patent
cases. As plaintiff notes in its opposition, in
Children’s Network, LLC v. PixFusion LLC,
the court held that “[i]n patent cases, the
locus of operative facts usually lies where
either the patent-in-suit or the allegedly
infringing product was designed, developed,
and produced.” 722 F. Supp. 2d 404, 413
(S.D.N.Y.
2010)
(emphasis
added)
(“because both the validity of, and
[defendant’s] alleged infringement of, the
patents-in-suit are at issue here, the loci of
operative facts are New York, Philadelphia,
and potentially Ireland.”). Other courts have
reached a similar conclusion. See, e.g.,
Devenshield Inc. v. First Choice Armor &
Equipment, Inc., No. 5:10-CV-1140
(GTS/DEP), 2012 WL 1069088, at *13
(N.D.N.Y. Mar. 29, 2012) (“Operative facts
in a patent infringement action include those
relating to the design, development, and
production of a patented product.”)
(collecting cases); Fuji Photo Film, 415 F.
Supp. 2d at 375 (“Operative facts in a patent

5. Locus of Operative Facts
The parties dispute whether the locus of
operative facts is the location where the
allegedly infringing technology was created
(i.e., the Northern District of California), or
where the initial technology was created and
where the patents-in-suit were developed
(i.e., the Eastern District of New York).
Facebook argues that “[i]n patent
infringement cases, the locus of operative
facts usually lies where the allegedly
infringing product was designed, developed,
and produced” (Def.’s Br. at 9 (citing Neil
Bros. Ltd. v. World Wide Lines, Inc., 425 F.
Supp. 2d 325, 331 (E.D.N.Y. 2006).) In
support of this position, defendant relies
heavily on an unreported decision, Ratner v.
10

in this case.4 See, e.g., Defenshield Inc. v.
First Choice Armor & Equip., Inc., No.
5:10-CV-1140 (GTS/DEP), 2012 WL
1069088, at *13 (N.D.N.Y. Mar. 29, 2012)
(“Because Plaintiff’s patented product is
designed, developed, and manufactured in
transferor forum, and Defendants’ allegedly
infringing product is designed, developed,
and manufactured in the proposed
transferee’s forum, the Court finds that [the]
location of none of the events is
determinative.”); Atl. Recording Corp. v.
Project Playlist, Inc., 603 F. Supp. 2d 690,
697 (S.D.N.Y. 2009) (“Because both
districts are loci of operative facts, this
factor is neutral in the analysis.”). However,
even if this Court found that the locus of
operative facts was in the Northern District
of California, based on the other factors
considered, and in particular plaintiff’s
choice of forum and the relative means of
the parties, the Court would still deny
defendant’s motion to transfer based upon a
balancing of all the factors.

infringement action include facts relating to
the design, development, and production of
a patented product.” (internal quotation
marks omitted)); accord Medien Patent
Verwaltung
AG
v.
Warner
Bros.
Entertainment, Inc., 749 F. Supp. 2d 188,
191-92 (S.D.N.Y. 2010); TouchTunes Music
Corp. v. Rowe Int’l Corp., 676 F. Supp. 2d
169, 175 (S.D.N.Y. 2009); see also A&A
Jewellers Ltd. v. Commemorative Brands,
Inc., No. 03-CV-6151E(F), 2004 WL
912929, at *1 n.14 (W.D.N.Y. Mar. 30,
2004). In fact, in a recent decision by Judge
Seybert denying a motion to transfer in a
patent suit, Judge Seybert did not construe
the factor regarding the locus of operative
facts as narrowly as Facebook suggests from
the Ratner decision and, instead, adopts the
Children’s Network position. See Audiovox
Corp. v. South China Enterprise, Inc., No.
No. 11-CV-5142 (JS)(GRB), 2012 WL
3061518, at *8 (E.D.N.Y. July 26, 2012)
(“‘[i]n patent cases, the locus of operative
facts usually lies where either the patent-insuit or the allegedly infringing product was
designed, developed, and produced,’
Children’s Network, 722 F. Supp. 2d at 413,
and, here, the Patents-In-Suit were
developed by inventors in New York and the
allegedly infringing products were produced
in Hong Kong.”).

6. Availability of Process to Compel the
Attendance of Unwilling Witnesses

This Court agrees with Children’s
Network framework and concludes that, in
patent cases, the locus of operative facts can
include the district where either the patentin-suit or the allegedly infringing product
was designed, developed, and produced.3
Here, because both districts in this case are
loci of operative facts, this factor is neutral

Rules 45(b)(2) and 45(c)(3)(A)(ii) of the
Federal Rules of Civil Procedure prohibit a
subpoena from directing a witness to travel
more than 100 miles. Fed. R. Civ. P. 45.
There is no indication that any non-party
witnesses would refuse to appear and, thus,
this factor is neutral. Although Facebook
notes that potential witnesses would be
outside of the District’s ability to be
subpoenaed, they have not indicated that
such witnesses would be unwilling to
appear.

3

4

To the extent that operative facts exist in more than
one district but the more important operative facts
may lie in one particular district given the center of
the dispute, that reality will usually be measured and
properly weighed in one or more of the other transfer
factors, including the convenience of the witnesses
and parties, as well as the location of the documents.

The Court notes that, in patent cases, another
relevant consideration for this factor may be the area
where the allegedly infringing product was sold or
offered. See, e.g., Defenshield Inc. v. First Choice
Armor & Equip., Inc., No. 5:10-CV-1140
(GTS/DEP), 2012 WL 1069088, at *13 (N.D.N.Y.
Mar. 29, 2012) (discussing sales issue).
11

unrelated business expenses have not been
successful.” (Def.’s Reply at 7.)

7. Relative Means of the Parties
“Where a disparity exists between the
means of the parties, such as in the case of
an individual suing a large corporation, the
court may consider the relative means of the
parties in determining where a case should
proceed.”
800-Flowers,
Inc.
v.
Intercontinental Florist, Inc., 860 F. Supp.
128, 135 (S.D.N.Y. 1994); see also Dwyer v.
Gen. Motors Corp., 853 F. Supp. 690, 69394 (S.D.N.Y. 1994) (denying transfer where
“[p]laintiffs are individuals who are suing a
large
corporation
which
possesses
considerably greater financial assets.)

However, Codignotto has explained in
his declaration that EasyWeb has never
received any revenue, and thus does not
have a bank account. (Codignotto Decl. at
¶ 9.)
Moreover, plaintiff has attached
EasyWeb Technologies’ most recent bank
statement, showing a balance of $1,127.75.
(Id. at ¶ 10.) Although Facebook is correct
that the plaintiff in this case is EasyWeb,
and not EasyWeb Technologies, as
discussed supra, EasyWeb was only formed
in 2011 with EasyWeb Technologies as its
sole member. (Id. at ¶ 7.) Thus, EasyWeb
Technologies’ financial status is relevant to
this analysis.
In addition, although
Facebook argues that Codignotto’s personal
financial situation is not relevant, the Court
disagrees. Facebook does not dispute that
EasyWeb’s sole owner and employee is
Codignotto. Accordingly, the Court finds
that the financial information provided by
plaintiff is sufficient to demonstrate that
litigating this case in the Northern District of
California would be financially burdensome
to plaintiff, and that the relative means of
the parties heavily favors a denial of
transfer.

Although EasyWeb is a corporation,
there is no dispute that it is a small
corporation that is solely owned by
Codignotto. Moreover, as discussed supra,
Codignotto, as well as his businesses, have
suffered financially, and as a result, are in
substantial debt. Thus, EasyWeb argues that
it cannot afford the expense of litigating in
California. This Court agrees that the
relative means of the parties, including the
precarious financial situation of plaintiff,
strongly favors denial of defendant’s motion
to transfer.
Facebook attempts to argue that the
means of the parties is a neutral factor.
However, that is clearly not the case. In
contrast to EasyWeb, Facebook is a large
corporation. Facebook attempts to point to
the fact that EasyWeb has only provided the
financial status of Codignotto, rather than
EasyWeb, and thus has not met its burden.
As Facebook argues “Mr. Codignotto’s
declaration is exceedingly ambiguous as to
whether EasyWeb has or is receiving outside
financing for this litigation. He merely
claims that EasyWeb Technologies, Inc., a
holding company for EasyWeb, has limited
money in its bank account and that his other

Additionally, Facebook does not dispute
that it is a large corporation and that
EasyWeb is a small corporation that is
solely owned by Codgnotto.
While
Facebook has argued that it would be
inconvenient for it to litigate this case in
New York, it has not suggested, unlike
EasyWeb, that it would be a financial
hardship to litigate this case in New York.
Thus, this factor strongly favors denial of
the transfer motion.

12

defendant has not met its burden by
demonstrating that the above-referenced
factors, as well as the totality of the
circumstances and the interests of justice,
warrant transfer of this action to the
Northern District of California.

8. Familiarity with the Governing Law
With respect to the forum’s familiarity
with the governing law, the Court finds that
this factor is neutral. This District and the
Northern District of California are equally
familiar with, and capable of applying, the
legal principles necessary to adjudicate
plaintiff’s federal patent claims. See Farrior
v. George Weston Bakeries Distrib., Inc.,
No. 08-CV-2705 (JFB)(WDW), 2009 WL
113774, at *8 n. 6 (E.D.N.Y. Jan. 15, 2009).
(noting that either federal district court in
question had necessary expertise to evaluate
federal FLSA claim); Earley v. BJ’s
Wholesale Club, Inc., No. 06 Civ. 3529
(WHP), 2007 WL 1624757, at *3 (S.D.N.Y.
June 4, 2007) (“[A]ny district would be
presumed to have expertise in adjudicating
Plaintiff’s FLSA claims.”); Neil Brothers
Ltd., 425 F. Supp. 2d at 333 (“Where, as
here, the law to be applied is federal patent
law, the factor is neutral.”).

IV. CONCLUSION
For the reasons set forth herein,
defendant’s motion to change venue,
pursuant to Section 1404(a), is denied.
SO ORDERED.

_________________
JOSEPH F. BIANCO
United States District Judge
Dated: August 30, 2012
Central Islip, NY
***

9. Remaining Factors
Plaintiff is represented by Alan S. Kellman,
Esq., John Michael Desmarais, Esq., and
Xiao Li, Esq., of Demarais LLP, 230 Park
Avenue, New York, New York 10169.
Defendant is represented by Heidi L. Keefe,
Esq., Jonathan P. Bach, Esq., and Vidya
Bhakar, Esq., of Cooley LLP, Five Palo Alto
Square, 3000 El Camino Real, Palo Alto,
CA 94306 and 1114 Avenue of the
Americas, New York, New York 10036.

With respect to the relative docket
conditions of the two districts in question,
the Court does not view this factor as
significant in this case. The Court is fully
capable of adjudicating plaintiff’s claims in
a timely manner, and there is no indication
that the situation in the Northern District of
California would be any different.
Similarly, the Court does not find any
basis to conclude that “the interests of
justice” factor – a separate component of the
§ 1404(a) analysis – weighs in favor of
transfer. Instead, the Court finds that such
interests support transfer under the totality
of circumstances outlined herein.
In sum, after carefully considering the
parties’ submissions and the applicable law,
the Court concludes in its discretion that the
13