B.E. Technology, L.L.C. v. LinkedIn Corporation

Filing 44

ORDER denying 21 Motion to Change Venue and LIFTING stay. Signed by Chief Judge Jon Phipps McCalla on 7/19/13. (McCalla, Jon)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE

B.E. TECHNOLOGY, LLC,
Plaintiff,
v.
LINKEDIN CORPORATION,
Defendant.

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No.: 2:12-cv-02772-JPM-tmp

ORDER DENYING DEFENDANT’S MOTION TO TRANSFER VENUE

Before the Court is Defendant LinkedIn Corporation’s
(“Defendant” or “LinkedIn”) Motion to Transfer Venue Pursuant to
28 U.S.C. § 1404(a) and for Expedited Consideration, filed
January 3, 2013.

(ECF No. 21.)

For the reasons that follow,

the Motion is DENIED.
I.

BACKGROUND
This case concerns Defendant LinkedIn’s alleged

infringement of United States Patent No. 6,628,314 (the “‘314
patent”).

(ECF No. 1.)

Plaintiff B.E. Technology, LLC

(“Plaintiff or “B.E.”), is the assignee of the ‘314 patent (ECF
No. 30 at 2), currently owning “all right, title, and interest
in the ‘314 patent, and has owned all right, title, and interest
throughout the period” of the alleged infringement (ECF No. 1
¶ 10).

B.E. alleges that LinkedIn infringed the ‘314 patent “by
using a method of providing demographically targeted advertising
that directly infringes at least Claim 11 of the ‘314 patent
either literally or under the doctrine of equivalents.”

(Id.

¶ 11.)
B.E. filed a Complaint in this Court on September 7, 2012.
(ECF No. 1.)

LinkedIn filed its Answer on December 31, 2012

(ECF No. 19) and its Motion to Transfer Venue on January 3, 2013
(ECF No. 21).

B.E. filed its Response in Opposition to

Defendant’s Motion to Transfer Venue on January 22, 2013.
No. 30.)

With leave of Court, LinkedIn filed a Reply Memorandum

in Support of Its Motion to Transfer on February 1, 2013.
No. 36.)

(ECF

On February 11, 2013, LinkedIn filed a Motion to Stay

pending resolution of its Motion to Transfer Venue.
37.)

(ECF

(ECF No.

The Court granted LinkedIn’s Motion to Stay on February

12, 2013.

(ECF No. 38.)

LinkedIn seeks to transfer this case to the Northern
District of California, where its headquarters are located.
(ECF No. 21-1 at 1.)

To support its Motion, LinkedIn contends

that all products and services of which it is alleged to have
infringed were developed and have been operated from the
Northern District of California.

(Id.)

LinkedIn states that

its “employees, including engineering and financial personnel,”
and its “relevant technical documents and computer source code
2

are located in the Northern District of California.”
see also id. at 4-5.)

(Id. at 1;

Further, LinkedIn asserts that a majority

of third-party witnesses on whom it intends to rely are also
(Id. at 5.)

located in the Northern District of California.
B.E. opposes LinkedIn’s Motion to Transfer.

B.E. is a

limited-liability company incorporated in Delaware.
¶ 2.)

(ECF No. 1

B.E. was originally registered in Michigan, but formally

registered to conduct business in Tennessee in September 2012.
(ECF No. 30 at 2.)

B.E. contends that Memphis, Tennessee, is

its principal place of business.

(ECF No. 1 ¶ 2.)

Martin David

Hoyle (“Hoyle”), B.E.’s founder and CEO, is the named-inventor
of the ‘314 patent.

(ECF No. 30 at 1, 2.)

resident of Tennessee since April 2006.

Hoyle has been a

(Id. at 1, 2.)

B.E. argues that transfer is inappropriate because it has
substantial connections with this district.

B.E. argues that

Hoyle has been present in the Western District of Tennessee
since 2006, and B.E. “since at least 2008,” and that this
district is B.E.’s principal place of business.

(Id. at 5.)

B.E. also argues that none of its witnesses are located in the
Northern District of California.

(Id. at 7.)

Further, B.E.

argues that its corporate documents, including documents
relating to the “conception and reduction to practice” of the
patent-in-suit, are located in this District.

3

(Id. at 6.)

II. STANDARD
LinkedIn moves the Court to transfer this case to the
Northern District of California pursuant to 28 U.S.C. § 1404(a).
(ECF No. 21-1 at 1.)

The statute provides that “[f]or the

convenience of the 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.”
28 U.S.C. § 1404(a).

“As the permissive language of the

transfer statute suggests, district courts have ‘broad
discretion’ to determine when party ‘convenience’ or ‘the
interest of justice’ make a transfer appropriate.”

Reese v. CNH

Am. LLC, 574 F.3d 315, 320 (6th Cir. 2009).
In determining whether to transfer a case under § 1404(a),
the court must first determine whether the claim could have been
brought in the transferee district.

28 U.S.C. § 1404(a)

(allowing transfer to any other district in which the claim
“might have been brought”).

Once the court has made this

threshold determination, the court must then determine whether
party and witness “convenience” and “the interest of justice”
favor transfer to the proposed transferee district.

Reese, 574

F.3d at 320; Esperson v. Trugreen Ltd., No. 2:10-cv-02130-STAcgc, 2010 WL 4362794, at *5 (W.D. Tenn. Oct. 5, 2010), adopted
2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010).

In weighing these

statutory factors, the court may still consider the private- and
4

public-interest factors set forth in the pre-Section 1404(a)
case, Gulf Oil v. Gilbert, 330 U.S. 501, 508-09 (1947), but
courts are not burdened with “preconceived limitations derived
from the forum non conveniens doctrine.”

Norwood v.

Kirkpatrick, 349 U.S. 29, 31 (1955) (quoting All States Freight
v. Modarelli, 196 F.2d 1010, 1011 (3d Cir. 1952)) (internal
quotation marks omitted); Esperson, 2010 WL 4362794, at *5.

The

United States Court of Appeals for the Sixth Circuit has stated
that when deciding “a motion to transfer under § 1404(a), a
district court should consider the private interests of the
parties, including their convenience and the convenience of
potential witnesses, as well as other public-interest concerns,
such as systemic integrity and fairness, which come under the
rubric of ‘interests of justice.’”

Moore v. Rohm & Haas Co.,

446 F.3d 643, 647 n.1 (6th Cir. 2006).
Additionally, the “interest of justice” factor has been
interpreted broadly by courts, influenced by the individualized
circumstances of each case.

The United States Court of Appeals

for the Federal Circuit has set forth a non-exhaustive list of
pertinent public-interest factors:
The
public
interest
factors
include
(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 conflicts of
laws or in the application of foreign law.
5

In re Acer Am. Corp., 626 F.3d 1252, 1254 (Fed. Cir. 2010); see
also In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir.
2009) (finding the local-interest factor weighed heavily in
favor of transfer); Cincinnati Ins. Co. v. O’Leary Paint Co.,
676 F. Supp. 2d 623, 633 (W.D. Mich. 2009) (considering
additional factors such as the relative docket congestion of
each district).
Initially, B.E. argues that there is a strong presumption
in favor of its choice of forum, and that its choice of forum
should not be disturbed unless the defendant carries its burden
to demonstrate that the balance of convenience strongly favors
transfer.

(ECF No. 30 at 4-6.)

B.E.’s argument is erroneously

derived from the more stringent forum-non-conveniens standard.
Compare Hunter Fan Co. v. Minka Lighting, Inc., No. 06–2108
M1/P, 2006 WL 1627746 (W.D. Tenn. June 12, 2006) (applying the
appropriate private- and public-interest factors but relying on
the forum-non-conveniens doctrine to accord strong deference to
the plaintiff’s choice of forum), with OneStockDuq Holdings, LLC
v. Becton, Dickinson, & Co., No. 2:12–cv–03037–JPM–tmp, 2013 WL
1136726, at *3 (W.D. Tenn. Mar. 18, 2013), and Roberts Metals,
Inc. v. Florida Props. Mktg. Grp., Inc., 138 F.R.D. 89, 92-93
(N.D. Ohio 1991) (recognizing defendants need to make a lesser
showing to overcome plaintiff’s choice of forum under
§ 1404(a)), aff’d per curiam, 22 F.3d 1104 (6th Cir. 1994).
6

Although there is a strong presumption in favor of the
plaintiff’s choice of forum under the doctrine of forum non
conveniens, under § 1404(a), a plaintiff’s choice of forum may
be considered, but is entitled to less deference.

Discussing

the difference between the common-law doctrine of forum non
conveniens and the federal transfer-of-venue statute in Norwood,
the Supreme Court stated,
When Congress adopted § 1404(a), it intended to
do more than just codify the existing law on forum non
conveniens. . . . [W]e believe that Congress, by the
term “for the convenience of parties and witnesses, in
the interest of justice,” intended to permit courts to
grant
transfers
upon
a
lesser
showing
of
inconvenience.
This is not to say that the relevant
factors have changed or that the plaintiff’s choice of
forum is not to be considered, but only that the
discretion to be exercised is broader.
Norwood, 349 U.S. at 32; see also Lemon v. Druffel, 253 F.2d
680, 685 (6th Cir. 1958) (“The choice of the forum by the
petitioner is no longer as dominant a factor as it was prior to
the ruling in Norwood v. Kirkpatrick[.]”); Esperson, 2010 WL
4362794, at *5-6.
LinkedIn’s burden under § 1404(a) is to demonstrate that a
change of venue to the transferee district is warranted.

See

Eaton v. Meathe, No. 1:11-cv-178, 2011 WL 1898238, at *2 (W.D.
Mich. May 18, 2011); Amphion, Inc. v. Buckeye Elec. Co., 285 F.
Supp. 2d 943, 946 (E.D. Mich. 2003); Roberts Metals, Inc., 138
F.R.D. at 93.

“Merely shifting the inconvenience from one party

7

to another does not meet Defendant’s burden.”

McFadgon v. Fresh

Mkt., Inc., No. 05-2151-D/V, 2005 WL 3879037, at *2 (W.D. Tenn.
Oct. 21, 2005).

“[T]he movant must show that the forum to which

he desires to transfer the litigation is the more convenient one
vis a vis the Plaintiff’s initial choice.”

Roberts Metals,

Inc., 138 F.R.D. at 93 (quoting Mead Corp. v. Oscar J. Boldt
Constr. Co., 508 F. Supp. 193, 198 (S.D. Ohio 1981)) (internal
quotation marks omitted).

If the court determines that the

“balance between the plaintiff’s choice of forum and defendant’s
desired forum is even, the plaintiff’s choice of [forum] should
prevail.”

Stewart v. Am. Eagle Airlines, Inc., No. 3:10-00494,

2010 WL 4537039, at *2 (M.D. Tenn. Nov. 3, 2010).
III. ANALYSIS
LinkedIn asserts that B.E. could have brought this action
in the Northern District of California.

(See ECF No. 21-1 at

7.)

B.E. does not dispute this assertion.

(See ECF No. 30 at

4.)

The Court agrees with the parties that B.E. could have

brought suit in the Northern District of California as personal
jurisdiction over LinkedIn exists in that District.

Therefore,

the only issue remaining is whether the balance of the statutory
factors — the convenience to the witnesses, the convenience to
the parties, and the interest of justice — favors transfer to
the Northern District of California.

The Court will address

each statutory factor separately and balance these factors to
8

determine whether transfer to the Northern District of
California is proper pursuant to § 1404(a).
A.

Convenience of the Witnesses

When asserting that a transferee district is more
convenient for witnesses, a party “must produce evidence
regarding the precise details of the inconvenience” of the forum
chosen by the plaintiff.

Esperson, 2010 WL 4362794, at *8.

To

satisfy its burden, the movant must do “more than simply
assert[] that another forum would be more appropriate for the
witnesses; he must show that the witnesses will not attend or
will be severely inconvenienced if the case proceeds in the
forum district.”
at 93).

Id. (quoting Roberts Metals, Inc., 138 F.R.D.

Further, “[t]o sustain a finding on [this factor] . . .

the party asserting witness inconvenience has the burden to
proffer, by affidavit or otherwise, sufficient details
respecting the witnesses and their potential testimony to enable
a court to assess the materiality of evidence and the degree of
inconvenience.”

Eaton, 2011 WL 1898238, at *3 (quoting Rinks v.

Hocking, 1:10-CV-1102, 2011 WL 691242, at *3 (W.D. Mich. Feb.
16, 2011)) (internal quotation marks omitted).

It is the

“materiality and importance of the testimony of prospective
witnesses, and not merely the number of witnesses,” that is
crucial to this inquiry.

Rinks, 2011 WL 691242, at *3.

9

LinkedIn contends that witness convenience favors transfer
to the Northern District of California.
ECF No. 36 at 5-7.)

(ECF No. 21 at 9-11;

To support this contention, LinkedIn

asserts that all of the witnesses on which it intends to rely
are located in the transferee district.

These witnesses include

“employees, including engineering and financial personnel,” and
numerous non-party prior-art witnesses. (ECF No. 21-1 at 1, 5;
ECF No. 36 at 5-6.)
In response, B.E. argues that transfer to the Northern
District of California would be equally disruptive to its
business and inconvenient to B.E.’s witnesses, “none of whom is
located in the Northern District of California.”
7.)

(ECF No. 30 at

B.E. identifies Hoyle, the named-inventor of the patent-in-

suit and founder and CEO of B.E., as its key witness who is
located in the Western District of Tennessee.

(Id. at 5-6.)

Because the convenience of party and non-party witnesses is
given different weight, the Court will analyze the witnesses
separately.

See Azarm v. $1.00 Stores Servs., Inc., No. 3:08-

1220, 2009 WL 1588668, at *4 (M.D. Tenn. June 5, 2009) (“[T]he
convenience of potential non-party witnesses, who are not
subject to the control of the parties, is a particularly weighty
consideration, because it is generally presumed that party
witnesses will appear voluntarily in either jurisdiction, but

10

non-party witnesses, with no vested stake in the litigation, may
not.”).
1.

Party Witnesses

LinkedIn asserts that “all of [its] potentially relevant
witnesses . . . are located in the Northern District of
California.”

(ECF No. 21-1 at 5.)

In its Reply, LinkedIn

argues that it need not identify these potential witnesses by
name “[b]ecause all of LinkedIn’s potential witnesses reside in
the Northern District of California, and the topics of their
testimony are not in doubt.”

(ECF No. 36 at 6.)

LinkedIn

provided the Court with the Declaration of Ashvin Kannan, its
Director of Engineering, which states, “Engineers who may have
knowledge regarding any advertising features on LinkedIn’s
website and any technology that supports those features work in
the Mountain View[, California,] headquarters.”

(Kannan Decl.,

ECF No. 21-2, ¶ 7.)
LinkedIn does not provide any evidence showing that any
employees will be unwilling to testify in this district if asked
to do so, but notes generally that the potential employeewitnesses will be inconvenienced due to “multi-leg flights to
Tennessee to testify at trial, likely involving overnight stays
away from family and work.”

(ECF No. 36 at. 6-7.)

Esperson, 2010 WL 4362794, at *8.

See

LinkedIn states that its

engineers are “important” to its business and therefore their
11

“absence for significant periods of time would adversely affect
operations.”

(ECF No. 21-1 at 10.)

Courts have noted that

“normally a corporation is able to make its employees available
to testify when needed.”

Clark v. Dollar Gen. Corp., No. 3-00-

0729, 2001 U.S. Dist. LEXIS 25975, at *9 (M.D. Tenn. Mar. 6,
2001); see also Zimmer Enters. v. Atlandia Imps., Inc., 478 F.
Supp. 2d 983, 991 (S.D. Ohio Mar. 14, 2007) (finding that the
convenience of witnesses who are employees “will not ordinarily
be considered, or at least, that the convenience of such
employees will not generally be given the same consideration as
is given to other witnesses”).

Accordingly, it appears that

LinkedIn’s employees will be able to attend absent any evidence
to the contrary.
Therefore, regarding LinkedIn employees, LinkedIn does not
satisfy its burden.

LinkedIn argues that due to the distance

between Memphis and the Northern District of California,
approximately 1800 miles, and the lack of direct flights between
any of the three major airports in Northern California – San
Jose, Oakland, or San Francisco – and Memphis, travel to Memphis
would impose a significant inconvenience.
10.)

(ECF No. 21-1 at 9-

Yet, the same is true for B.E.’s witnesses, which B.E.

asserts do not reside in the Northern District of California.
(ECF No. 30 at 7.)

LinkedIn’s reliance on Returns Distribution

Specialists, LLC v. Playtex Products, Inc., No. 02-1195-T, 2003
12

WL 21244142 (W.D. Tenn. May 28, 2003), for the proposition that
this factor “weighs even more heavily in favor of transfer where
the witnesses forced to travel are important to the defendant’s
business and their attendance at trial and other proceedings in
a distant forum could disrupt those operations” (ECF No. 21-1 at
10) is misplaced.

In Returns Distribution Specialists, the

court found that this factor weighed heavily in favor of
transfer because the defendant “presented unrefuted evidence
that certain witnesses that it expects to call to testify at
trial are a ‘core group of employees’ and that it would be
severely disruptive to its business if these employees were all
out of town at the same time.”

Returns Distribution

Specialists, 2003 WL 21244142, at *7.

In the instant case, the

Court agrees that all of LinkedIn’s employees are located in the
transferee district, and that that their testimony is likely
material.

Unlike Returns Distribution Specialists, however,

LinkedIn has only provided a general statement about the
necessity of its engineers to its business and has not indicated
how many engineers it would be inclined to call as potential
witnesses.

Further, LinkedIn’s general statement that its

operation would “adversely affected” by employee absence for
“significant periods of time” does not provide the Court with
any indication as to what constitutes either “adverse” effects
or a “significant” period of time.
13

As a result, the Court

cannot assess the degree to which LinkedIn’s business would be
disrupted compared to the disruption B.E. will endure due to its
CEO’s absence should the case be transferred.

Accordingly, the

Court finds transfer would only shift the inconvenience to B.E.
See McFadgon, 2005 WL 3879037, at *2.
Therefore, because § 1404(a) provides for transfer “to a
more convenient forum, not to a forum likely to prove equally
convenient or inconvenient,” distance of travel for employee
witnesses does not weigh in favor of transfer.

Hunter Fan, 2006

WL 1627746, at *2 (citing Van Dusen v. Barrack, 376 U.S. 612,
645-46 (1964)).
LinkedIn further argues that because it intends to call
employee witnesses located in the transferee district and
because B.E. only identified one witness, Hoyle, this factor
weighs in favor of transfer.

(ECF No. 36 at 6-7.)

The Court

acknowledges that the testimony of LinkedIn employees is likely
material and that these employees are located in the transferee
district.

While B.E. did not specifically identify any

witnesses beyond Hoyle, however, B.E. does not have the burden
to do so.

Despite B.E. not identifying any individuals beyond

Hoyle, LinkedIn’s identification of all its engineers with
“knowledge regarding any advertising features on LinkedIn’s
website and any technology that supports those features,” and
employees with knowledge of its “sales, finance, and marketing
14

operations” as material witnesses does not satisfy its burden on
this factor.

(Kannan Decl., ECF No. 21-2, ¶¶ 7-8.)

A simple

numerical advantage is insufficient on the issues raised by a
motion to transfer.
Moreover, B.E. argues that “[i]t is likely that LinkedIn’s
California-based employees will be deposed in California where
B.E.’s lead counsel is based.”

(ECF No. 30 at 10.)

This

further indicates that the witness-convenience factor does not
weigh in favor of transfer.

See Hunter Fan, 2006 WL 1627746, at

*2 (finding relevant that the plaintiff planned to take
depositions of the defendant’s witnesses in California in
determining that the witness convenience factor did not favor
transfer).
2.

Non-Party Witnesses

While convenience to party witnesses is an important
consideration, “it is the convenience of non-party witnesses,
rather than employee witnesses . . . that is the more important
factor and is accorded greater weight.”

Steelcase Inc. v. Smart

Techs., 336 F. Supp. 2d 714, 721 (W.D. Mich. Mar. 5, 2004)
(citation omitted) (internal quotation marks omitted).

LinkedIn

asserts that, at the time of the filing of its Motion, it had
identified “at least twelve prior art patents with clear ties to
companies and inventors in the Northern District of California.”
(ECF No. 21-1 at 12.)

LinkedIn states that in order to
15

“prepare its defenses,” it “will need to gather documents and
obtain testimony from these individuals and companies in
California.”

(Id. at 12.)

LinkedIn further contends that if

the case remains in the transferor district, it would “be forced
to present critical prior art testimony trough deposition
transcript instead of live testimony – which will greatly
undercut its ability to put on an effective defense at trial.”
(Id.)

LinkedIn finally asserts that it would be unable to

secure the attendance of these potential prior-art witnesses by
subpoena if the case remains in the transferor district and that
it is “highly doubtful” that these witnesses would be “willing
to voluntarily travel across the country to testify at trial in
Tennessee.”

(ECF No. 36 at 8.)

B.E. argues that the convenience of third-party witnesses
is not entitled to great weight in the instant case because
LinkedIn has not established that the “third party testimony
will be material or important.”

(ECF No. 30 at 10.)

B.E.

asserts that LinkedIn has not stated the “relevance,
materiality, and importance” of the non-party witnesses’
testimony.

(Id. at 12.)

B.E. further argues that prior-art

testimony is “almost certain to be severely limited at the time
of trial” and, therefore, such testimony does not weigh in favor
of transfer.

(Id. at 10-11.)

Additionally, B.E. contends that

LinkedIn has “failed to establish the current locations of any
16

of the inventors or assignees,” and “has not presented any
evidence that the inventors and assignees are unwilling to
testify in Tennessee or how they would be inconvenienced by
testifying here.”

(Id. at 11.)

The availability of compulsory process for unwilling
witnesses is a consideration closely related to the convenienceof-witnesses factor and the costs of procuring the witness, and
therefore is an important consideration for the Court.

See,

e.g., In re Acer, 626 F.3d at 1255; Rinks, 2011 WL 691242, at
*4.

Whether this factor should be given considerable weight

depends on the materiality of the testimony to the resolution of
the case.

Rinks, 2011 WL 691242, at *4.

A federal court in the

Northern District of California would be able to compel the
prior-art witnesses residing in the that District or within the
state of California to testify at trial.

See Fed.

R. Civ. P.

45(b)(2); Brackett v. Hilton Hotels Corp., 619 F. Supp. 2d 810,
821 (N.D. Cal. 2008) (“The California district courts have the
power to subpoena witnesses throughout the state pursuant to
[Federal Rule of Civil Procedure] 45(b)(2)(C) . . . .”).

In

contrast, the prior-art witnesses would not be subject to the
subpoena power in this district, see Fed. R. Civ. P
45(c)(3)(A)(ii), but would be available for deposition in the
Northern District of California if unwilling to testify in this
district.

Therefore, the testimony of such witnesses
17

potentially would “not be live and therefore could be less
persuasive.”

Rinks, 2011 WL 691242, at *4.

The Court finds that LinkedIn has met its burden to show
the nature of the prior-art witnesses’ testimony, and that the
testimony is likely material to LinkedIn’s invalidity and noninfringement contentions.

LinkedIn, however, has only stated

generally that depositions of non-party witnesses would be
inadequate and live testimony from non-party witnesses required.
To the extent the non-party witnesses’ testimony may be
presented by deposition, witness inconvenience would not be an
issue.

LinkedIn states that these prior-art witnesses will be

necessary for trial, but recognizes that “likely many more” nonparty witnesses will be necessary.

(ECF No. 21-1 at 12.)

This

general statement relating to the number of non-party witnesses,
combined with the general statement that without transfer
LinkedIn would be forced to present “critical prior art
testimony through deposition transcript instead of live
testimony” which would “undercut its ability to put on an
effective defense at trial,” is not sufficient to allow the
Court to determine (1) the number of non-party witnesses
LinkedIn requires;

and (2) whether live testimony of these non-

party witnesses is necessary.

Further, LinkedIn is only able to

estimate that it is “highly doubtful” that any of the non-party
witnesses would be unwilling to testify in this District if
18

asked to do so.

As a result, this factor does weighs only

slightly in favor of transfer.
B.

Convenience of the Parties

LinkedIn argues that the “connections of this case are much
stronger to the Northern District of California than the Western
District of Tennessee.”

(ECF No. 21-1 at 2.)

While LinkedIn

organizes its arguments somewhat differently than the Court, the
Court finds the considerations relevant to the convenience-ofthe-parties factor are the location of the sources of proof and
the parties’ financial hardships due to litigation in the chosen
forum.
1.

Location of Sources of Proof

LinkedIn argues that all of its “relevant documents,”
“technical documentation and computer source code related to the
accused advertising–related technology,” and “all information
related to [its] U.S. sales, finances, and marketing operations”
are maintained in the Northern District of California.
21-1 at 8.)

(ECF No.

LinkedIn contends that B.E. has only produced 222

documents in its initial disclosures relating to the conception
and reduction to practice of the ‘314 Patent, and that “the size
of this production belied B.E.’s claim of inconvenience,
considering that the bulk of discovery in this case and a
significantly greater number of documents are located in
California at LinkedIn’s offices.”
19

(ECF No. 36 at 4.)

Further,

LinkedIn notes that as these documents have already been
produced, there is no ongoing inconvenience to B.E. relating to
the sources of proof.

(Id.)

B.E. argues that, because its CEO resides in the Western
District of Tennessee, its corporate documents and records,
“including documents demonstrating the conception and reduction
to practice of [the patent-in-suit],” are located in the Western
District.

(ECF No. 30 at 6, 12.)

B.E. notes that while

LinkedIn’s sources of proof are located in the Northern District
of California, B.E.’s own sources of proof are located in
Tennessee and have been maintained there for years.
12.)

(Id. at

B.E. also contends that “the location of relevant

documentary evidence is increasingly less important in deciding
motions to transfer,” and that because documents can be
exchanged electronically the weight given this factor should be
minimal.

(Id. at 13.)

B.E. finally argues that this factor

does not weigh in favor of transfer because “it can be expected
that LinkedIn will eventually produce its documents to B.E.’s
lead counsel in California, not to B.E. in Tennessee.”

(Id.)

As an initial matter, the Court disagrees with B.E.’s
contention that advances in electronic document transfer reduce
the importance of the location-of-sources-of-proof factor.

This

notion has been expressly rejected by the Federal Circuit.

See,

e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224
20

(Fed. Cir. 2011) (reversing a district court that did not
consider the factor, stating, “While advances in technology may
alter the weight given to these factors, it is improper to
ignore them entirely”); In re Genentech, Inc., 566 F.3d 1338,
1345-46 (Fed. Cir. 2009) (finding clear error where a district
court “minimized the inconvenience of requiring the petitioners
to transport their documents by noting that ‘[t]he notion that
the physical location of some relevant documents should play a
substantial role in the venue analysis is somewhat antiquated in
the era of electronic storage and transmission’” (quoting
Sanofi-Aentis Deutschland GmbH v. Genentech, Inc., 607 F. Supp.
2d 769, 777 (E.D. Tex. 2009))).
The Court agrees that it is likely that the sheer volume of
documents LinkedIn has in its possession outnumbers the patentrelated documents in B.E.’s possession, and that B.E. has
already produced documents related to the conception and
reduction to practice of the ‘314 Patent, but the Court
disagrees that this is enough to tip the balance in favor of
transfer.

The Court finds that both parties maintain documents

in their respective districts; that both sets of documents will
be integral to the proceedings; and that LinkedIn will be
expected to serve its documents on B.E.’s counsel in Northern
California, not in the Western District of Tennessee.
LinkedIn’s reliance on In re Acer is misplaced.
21

(See ECF No. 36

at 4.)

In In re Acer, the Federal Circuit found that “no party

identified any likely source of proof” in the transferor
district.

In re Acer, 626 F.3d at 1256.

To the contrary, in

the instant case B.E. has shown that its records – which
include, but are not necessarily limited to, “documents
demonstrating the conception and reduction to practice of” the
‘314 Patent - are located in Tennessee.
12.)

(See ECF No. 30 at 6,

Taken together, the aforementioned facts indicate that as

to the location of the sources of proof, the Northern District
of California is a somewhat more convenient venue for the
parties to the instant case.

This factor, however, is not

sufficient, by itself, to require transfer.
2.

Financial Hardships Attendant to Litigating in
the Chosen Forum

LinkedIn argues that its employee-witnesses with relevant
knowledge to the instant case are all located in the Northern
District of California.

(ECF No. 21-1 at 9.)

As a result,

LinkedIn contends that travel to Tennessee would impose a
significant inconvenience to its witnesses in terms of cost and
the disruption to the witnesses’ lives.

(Id. at 9-10.)

Additionally, LinkedIn argues that the absence of its employeewitnesses from the LinkedIn headquarters in the transferee
district would “adversely affect operations.”

22

(Id. at 10.)

B.E. states that it “would face a financial burden by
having to litigate in the Northern District of California.”
(ECF No. 30 at 14.)

B.E.’s CEO Hoyle states that “B.E. will

incur expenses it will not incur if the case remains in
Memphis.”

(Hoyle Decl., ECF No. 30-1, ¶ 9.)

B.E. also states

that “[i]t is reasonable to require companies with the wealth
and size of LinkedIn to litigate in jurisdictions in which they
regularly conduct business.”

(ECF No. 30 at 7.)

The Court has considered “the relative ability of litigants
to bear expenses in any particular forum” among the factors in a
§ 1404(a) case.

Ellipsis, Inc. v. Colorworks, Inc., 329 F.

Supp. 2d 962, 970 (W.D. Tenn. 2004).

In the instant case,

B.E.’s CEO stated that the company will incur additional
expenses, but it has not shown with any specificity how
detrimental those expenses would be to the company.

Further,

while Hoyle stated that his personal financial status would be
adversely affected by litigating in the Northern District of
California, he did not state why or how his personal finances
would impact B.E., the party to the instant case.
Decl., ECF No. 30-1, ¶ 9.)

(See Hoyle

B.E. has shown that LinkedIn has the

ability to bear expenses in this forum (see ECF No. 30-3), but
the Court does not find this to be a dispositive factor in
denying LinkedIn’s Motion.

But see Siteworks Solutions, LLC v.

Oracle Corp., No. 08-2130-A/P, 2008 WL 4415075, at *4 (W.D.
23

Tenn. Sept. 22, 2008) (finding the relative financial strengths
of the parties did not weigh in favor of transferring the case,
as the party opposed to transfer showed it “ha[d] no net worth,
very little revenue, no gross profits, no assets, and [would
have to] borrow from its owners in order to pay the litigation
expenses”).

The Court finds that the evidence presented is

insufficient to make a showing that B.E. or LinkedIn will be
adversely affected by litigating in either forum.

The paramount

consideration remains whether the Northern District of
California is more convenient to the parties than B.E.’s chosen
forum.
With respect to convenience, the Court finds this factor
does not weigh in favor of transfer.

While LinkedIn has made a

showing that its business would be disrupted by the absence of
its proposed witnesses, B.E. has made an equal showing that its
business would be disrupted in having to prosecute the instant
case in California.

LinkedIn has shown that the Northern

District of California would be a more convenient forum for it,
but it has not shown that the Northern District of California is
a more convenient forum for both parties.

As a result, the

hardship to LinkedIn does not indicate transfer is more
convenient.

24

C.

Interests of Justice

LinkedIn argues that transfer to the Northern District of
California is appropriate based on additional considerations
that pertain to the interests-of-justice factor.
at 14-15; ECF No. 36 at 8-9.)

(ECF No. 21-1

These considerations include the

“public-interest concerns, such as systemic integrity and
fairness,” of the proceedings.

See Moore, 446 F.3d at 647 n.1.

In the instant case, the Court will consider the relative trial
efficiency of the transferee and transferor districts and the
localized interest in the litigation.
1.

Trial Efficiency

LinkedIn argues that while the Western District of
Tennessee has a shorter median time from filing to trial, “the
median time from filing to final disposition of cases in the
Western District of Tennessee is longer than in the Northern
District of [California].”

(ECF No. 36 at 9.)

LinkedIn admits,

however, that in general this factor is neutral.

(Id.)

B.E. argues that transfer to the Northern District of
California “would likely delay trial of this case by at least
one year.”

(ECF No. 30 at 15.)

B.E. cites the 2011 Federal

Court Management Statistics for both districts to illustrate
that the median time from filing to trial in the Northern
District of California was 35.4 months, while the median time

25

from filing to trial in the Western District of Tennessee was
20.8 months.

(Id. (citing ECF No. 30-4).)

The Court agrees with LinkedIn and finds this factor
neutral to its determination of whether the Northern District of
California is the more convenient forum.
2.

Local Interest

LinkedIn argues that the Northern District of California
has strong local ties to the instant case because LinkedIn is
located there, its employees are located there, the sources of
proof are located there, and the alleged infringement took place
there.

(ECF No. 21-1 at 15.)

LinkedIn also asserts that B.E.’s

ties to the Western District of Tennessee should be discounted
because it manufactured those ties in anticipation of
litigation.

(Id.)

LinkedIn also argues that the Northern

District of California has a “strong local interest in
adjudicating claims calling into question the activities of
companies and employees who, like LinkedIn and its employees,
reside in the District.”

(Id. (citing In re Hoffman-LaRoche,

Inc., 587 F.3d 1333, 1336 (Fed. Cir. 2009)).)
B.E. argues that the Western District of Tennessee has a
substantial local interest in the instant case because the
holder of the patent-in-suit is located in this District and
because LinkedIn has allegedly infringed the patent in this
District.

(ECF No. 30 at 15-16.)
26

B.E. also asserts that its

ties to Tennessee are not “recent, ephemeral, or manufactured
for the purposes of litigation.”

(Id. at 15)

Hoyle stated that

he has resided in the Western District of Tennessee since 2006,
that Memphis is B.E’s principal place of business, and that the
sources of proof pertinent to the instant case are located in
the District.

(Hoyle Decl., ECF No. 30-1, ¶¶ 2-4, 7-8.)

The Court finds that this factor does not weigh in favor of
transfer.

While LinkedIn has strong local ties to the Northern

District of California, the Court finds that B.E.’s connection
to the Western District of Tennessee was not manufactured for
the purposes of litigation.

B.E.’s founder and CEO, who is also

the holder of the patent-in-suit, has resided in the District
for seven years.

B.E.’s connections, therefore, are neither

“recent” nor “ephemeral.”

As a result, LinkedIn has not

demonstrated that the Northern District of California’s local
interest outweighs that of the Western District of Tennessee.
IV.

CONCLUSION
For the foregoing reasons, the Court finds that, in

balancing the statutory factors, LinkedIn has not demonstrated
that the Northern District of California is a more convenient
forum than the Western District of Tennessee.

Therefore,

LinkedIn’s Motion to Transfer Venue is DENIED.
Accordingly, the Court hereby LIFTS the February 12, 2013,
stay of all proceedings.

(ECF No. 38.)
27

Regarding Plaintiff’s

Motion to Dismiss and Motion to Strike, filed January 25, 2013
(ECF No. 33), Defendant shall have thirteen (13) days from the
date of entry of this Order, up to and including August 1, 2013,
to file its Response.

IT IS SO ORDERED this 19th day of July, 2013.

s/ Jon P. McCalla________
CHIEF U.S. DISTRICT JUDGE

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