B.E. Technology, L.L.C. v. Pandora Media, Inc.

Filing 43

ORDER denying 19 Motion to Change Venue. Signed by Chief Judge Jon Phipps McCalla on 7/12/13. (McCalla, Jon)

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

B.E. TECHNOLOGY, LLC,
Plaintiff,
v.
PANDORA MEDIA, INC.,
Defendant.

)
)
)
)
)
)
)
)
)

No.: 2:12-cv-02782-JPM-cgc

ORDER DENYING DEFENDANT’S MOTION TO TRANSFER VENUE

Before the Court is Defendant Pandora Media, Inc.’s
(“Defendant” or “Pandora”) Motion to Transfer Venue Pursuant to
28 U.S.C. § 1404(a), filed December 26, 2012.

(ECF No. 19.)

For the reasons that follow, the Motion is DENIED.
I.

BACKGROUND
This case concerns Defendant Pandora’s alleged infringement

of United States Patent No. 6,628,314 (the “‘314 patent”).
No. 1.)

(ECF

Plaintiff B.E. Technology, LLC (“Plaintiff or “B.E.”),

is the assignee of the ‘314 patent (ECF No. 27 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 Pandora 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 10, 2012.
(ECF No. 1.)

Pandora filed its Motion to Transfer Venue on

December 26, 2012 (ECF No. 19), and filed its Answer to the
Complaint on December 31, 2012 (ECF No. 20).

B.E. filed its

Response in Opposition to Defendant’s Motion to Transfer Venue
on January 14, 2013.

(ECF No. 27.)

With leave of Court,

Pandora filed a Reply Memorandum in Support of Its Motion to
Transfer on February 1, 2013.

(ECF No. 33.)

On February 8,

2013, Pandora filed a Motion to Stay pending resolution of its
Motion to Transfer Venue.

(ECF No. 35.)

The Court granted

Pandora’s Motion to Stay on February 8, 2013.

(ECF No. 36.)

Pandora seeks to transfer this case to the Northern
District of California, where its headquarters are located.
(ECF No. 19-1 at 1.)

To support its Motion, Pandora 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.)

Pandora states that its

“management, along with it primary research, development, and
engineering facilities, are located in the Northern District of
California,” and that “the vast majority of Pandora’s
potentially relevant defense witnesses and evidence related to
the research, design, and development of the accused
2

applications, including those whom Pandora anticipates including
in its initial disclosure, are located within” the transferee
district, as well.

(Id. at 3-4.)

Further, Pandora asserts that

a majority of third-party witnesses on whom it intends to rely
are also located in the Northern District of California.

(Id.

at 1.)
B.E. opposes Pandora’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. 27 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. 27 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 this District since 2006, and B.E.
since at least 2008,” and this district is B.E.’s principal
place of business.

(Id. at 4-5.)

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

3

“conception and reduction to practice” of the patent-in-suit,
are located in this District.

(Id. at 4, 5, 7.)

II. STANDARD
Pandora moves the Court to transfer this case to the
Northern District of California pursuant to 28 U.S.C. § 1404(a).
(ECF No. 19-1 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
4

2010 WL 4337823 (W.D. Tenn. Oct. 27, 2010).

In weighing these

statutory factors, the court may still consider the private- and
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
5

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.
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 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. 27 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

6

(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).
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.
Defendant’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.

7

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

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
Pandora asserts that B.E. could have brought this action in
the Northern District of California.

(See ECF No. 19-1 at 8.)

B.E. does not dispute this assertion.

(See ECF No. 27 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 Pandora 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
8

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
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 v. Meathe, No. 1:11-cv-178, 2011 WL

1898238, at *3 (W.D. Mich. May 18, 2011) (quoting Rinks v.
Hocking, 1:10-CV-1102, 2011 WL 691242, at *3 (W.D. Mich. Feb.
16, 2011)) (internal quotation marks omitted).
9

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.

Pandora contends that witness convenience favors transfer
to the Northern District of California.

(ECF No. 33 at 3-6.)

To support this contention, Pandora asserts that a majority of
the witnesses on which it intends to rely are located in that
district.

These witnesses include at least five material

witnesses who are Pandora employees and at least five non-party
witnesses.
In response, B.E. argues that “transfer to the Northern
District of California would be equally inconvenient to B.E.’s
witnesses, none of whom is located in the Northern District of
California.”

(ECF No. 27 at 7.)

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, 7-8.)

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
10

witnesses will appear voluntarily in either jurisdiction, but
non-party witnesses, with no vested stake in the litigation, may
not.”).
1.

Party Witnesses

Pandora asserts that “the key witnesses in this case . . .
will be Pandora employees at Pandora’s offices in Oakland[,
California,] who were responsible for the design and development
of the accused applications.”

(ECF No. 19-1 at 10.)

In its

Reply, Pandora specifically lists five employees that “might
testify at trial” because of their knowledge of Pandora’s
operations.

(ECF No. 33 at 6; Morgan Decl., ECF No. 33-1, ¶ 3.)

Pandora further states that “other Pandora executives, engineers
and employees in the Oakland area also could testify on behalf
of Pandora.”

(ECF No. 37 at 6.)

Pandora does not provide any evidence showing that any
employees will be unwilling to testify in this district if asked
to do so, though it has indicated that Pandora would be
inconvenienced by their absence.
at *8.

See Esperson, 2010 WL 4362794,

Nevertheless, 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
11

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 Pandora’s

employees will be able to attend absent any evidence to the
contrary.
Therefore, regarding Pandora employees, Pandora cannot
satisfy its burden.

Pandora argues that due to the distance

between Memphis and the Northern District of California,
approximately 1800 miles, travel to Memphis “would impose a
significant inconvenience.”

(ECF No. 19-1 at 10-11.)

Yet, the

same is true for B.E.’s witnesses, which B.E. asserts do not
reside in the Northern District of California.
7.)

(ECF No. 27 at

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)).
Pandora further argues that because it intends to call
multiple witnesses located in the Northern District of
California, and because B.E. only identified one witness, Hoyle,
this factor weighs in favor of transfer.

(ECF No. 33 at 4.)

With respect to the material witnesses, Pandora does
12

specifically list five employees who “might testify at a trial
on behalf of Pandora because they are knowledgeable about
Pandora and its operations.”
ECF No. 33-1 ¶ 3.)

(ECF No. 33 at 6; Morgan Decl.,

Although this assertion is imprecise as to

the materiality of the testimony of the named individuals, and
whether they are sure to testify, it is not asserted that their
testimony will not be relevant and material in this case.
Pandora’s general statement, however, that it believes “other
Pandora executives, engineers and employees” in the transferee
district would be material witnesses (see ECF No. 33 at 6), does
not aid the court in assessing (1) what the testimony of such
additional material witnesses will be; (2) whether such
witnesses will be unable to attend; or (3) whether and to what
extent such witnesses will be inconvenienced by testifying in
this district.

Pandora cannot rely on such “bare allegations”

to satisfy its burden.

Esperson, 2010 WL 4362794, at *8.

Pandora, therefore, has only identified five material witnesses
on whom it intends to rely for purposes of transfer under
§ 1404(a).
While B.E. did not specifically identify any witnesses
beyond Hoyle, B.E. does not have the burden to do so.

Despite

B.E. not identifying any individuals beyond Hoyle, Pandora’s
identification of five material witnesses who are Pandora
employees and may testify does not satisfy its burden on this
13

factor.

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 Pandora’s
California-based employees will be deposed in California where
B.E.’s lead counsel is based.”

(ECF No. 27 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).

Pandora

asserts that it intends to rely on non-party witnesses who have
knowledge about five prior-art patents related to the patent-insuit.

(ECF No. 19-1 at 5-6; ECF No. 33 at 6-7.)

Pandora states

that “the inventors and assignees identified on the face of
these patents are potential witnesses to be deposed or called to
testify at trial by Pandora, and the relevant documents in their
14

possession may also be required for this litigation.”
22-1 at 5.)

(ECF No.

Pandora further contends that many of these

witnesses are located in California, including the transferee
district.

(Id.)

To support its contention, Pandora cites the

locations of the inventors and assignees as indicated on their
respective patents.

(Id. at 5-6; ECF No. 19-8.)

Pandora also

indicates another potential third-party witness, the attorney
who filed and prosecuted the ‘314 Patent, is located in Troy,
Michigan.

(ECF No. 19-1 at 6.)

Pandora claims that it will not

be able to compel these witnesses to testify at trial if the
case remains in Tennessee, but will be able to compel the priorart witnesses to testify at trial in the Northern District of
California, and that the “relative cost of obtaining the
attendance of a willing non-party witness will be comparatively
lower in California than in” the transferor district.

(ECF No.

19-1 at 9.)
B.E. argues that the convenience of third-party witnesses
is not entitled to great weight in the instant case because
Pandora has not established that the “third party testimony will
be material or important.”

(ECF No. 27 at 10.)

B.E. argues

that Pandora has not stated the “relevance, materiality, and
importance” of the non-party witnesses’ testimony “who allegedly
could not be subpoenaed.”

(Id. at 11-12.)

B.E. further argues

that prior-art testimony is “almost certain to be severely
15

limited by the time of trial” and, therefore, such testimony
does not weigh in favor of transfer.

(Id. at 10-11.)

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 to testify at trial.
45(b)(2).

See Fed.

R. Civ. P.

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

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

Rinks, 2011 WL 691242, at *4.

Pandora, however, has not disclosed the particulars of the
testimony of the potential non-party witnesses, nor why
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,
16

witness inconvenience would not be an issue.

Pandora merely

states that the named prior-art witnesses are “potentially
critical to the claims and defenses in this case.”
1 at 9.)

(ECF No. 19-

This general statement is not sufficient to allow the

Court to determine whether live testimony of Pandora’s non-party
witnesses is necessary.

Further, Pandora does not state whether

it is aware that any of the non-party witnesses would be
unwilling to testify in this district if asked to do so.

As a

result, this factor does not weigh in favor of transfer.
B.

Convenience of the Parties

Pandora argues that the Northern District of California is
“clearly more convenient for the parties.”

(ECF No. 19-1 at 1.)

While Pandora organizes its arguments somewhat differently than
the Court, the Court finds the considerations relevant to the
convenience-of-the-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

Pandora argues that “most, if not all, Pandora documents
related to the research, design, and development of Pandora’s
Internet radio services are located in the Northern District of
California.”

(ECF No. 19-1 at 8.)

As a result, Pandora

contends that the “vast majority of the physical and documentary
evidence relevant to the issues of Pandora’s alleged
17

infringement, invalidity, and damages” is also located in the
transferee district.

(Id. at 9.)

Pandora contends that the

volume of these documents “vastly exceeds the volume of
documents in Tennessee.”

(ECF No. 33 at 7.)

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 of Tennessee.

(ECF No. 27 at 5.)

B.E. notes that

while Pandora’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 Pandora 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,

18

e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224
(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 Pandora has in its possession outnumbers the patentrelated documents in B.E.’s possession, 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 Pandora will be expected
to serve its documents on B.E.’s counsel in Northern California,
not in the Western District of Tennessee (see ECF No. 27 at 13).
Pandora’s reliance on L&P Property Management Co. v. JTMD, LLC,
No. 06-13311, 2007 WL 295027 (E.D. Mich. Jan. 29, 2007), is
19

misplaced.

(See ECF No. 19-1 at 9.)

In that case the court

found there were no relevant documents in the transferor
district, therefore transfer was appropriate.
Mgmt. Co., 2007 295027, at *4.

See L&P Prop.

In the instant case, B.E. has

shown that relevant documents are located in Tennessee.

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

Pandora argues that its potential witnesses work in the
Northern District of California and none are located in the
Western District of Tennessee.

(ECF No. 19-1 at 10-11.)

As a

result, Pandora contends that travel to Tennessee would “impose
a significant inconvenience,” and as the likely trial witnesses
are “vital to Pandora’s business operations,” their absence
“would adversely affect Pandora.”

(Id. at 11.)

In contrast,

Pandora argues that “any inconvenience in asking B.E.’s sole
known employee, who is also an interested party and the named
inventor, to travel to California will not offset the
interruption in Pandora’s business operations caused by taking

20

several Pandora employees from their jobs to testify in
Tennessee.”

(Id.)

B.E. states that it “would face a financial burden by
having to litigate in the Northern District of California.”
(ECF No. 27 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. 27-1, ¶ 9.)

B.E. also states

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

(ECF No. 27 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. 27-1, ¶ 9.)

(See Hoyle

B.E. has shown that Pandora has the

ability to bear expenses in this forum (see ECF No. 27-3), but
the Court does not find this to be a dispositive factor in
21

denying Pandora’s Motion.

But see Siteworks Solutions, LLC v.

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

Pandora 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 Pandora does not indicate transfer is more
convenient.
22

C.

Interests of Justice

Pandora argues that transfer to the Northern District of
California is appropriate based on additional considerations
that pertain to the interests-of-justice factor.
at 12-17; ECF No. 33 at 9.)

(ECF No. 19-1

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

Pandora argues that while the Western District of Tennessee
“has a shorter median time from filing to trial, and fewer
intellectual property cases, . . . the average docket of pending
cases per judge [is] higher” in the Western District of
Tennessee than in the Northern District of California.
33 at 9.)

(ECF No.

Pandora admits, however, that in general this factor

is neutral because the Western District of Tennessee has
established local patent rules and the statistics of each
district are negligible to the determination of convenience.
(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. 27 at 15.)

B.E. cites the 2011 Federal
23

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

(Id. (citing ECF No. 27-4).)

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

Local Interest

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

(ECF No. 19-1 at 13.)

Pandora

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.)

Pandora also argues

that the Northern District of California has a local interest
because “the conduct of companies, employees and third parties
within the district has been asserted to give rise to
liability.”

(Id.)

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 here.
15.)

(ECF No. 27 at

B.E. also asserts that its ties to Tennessee are not
24

“recent, ephemeral, or manufactured for the purposes of
litigation.”

(Id.)

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. 27-1, ¶¶ 2-4, 7-8.)
The Court finds that this factor does not weigh in favor of
transfer.

While Pandora 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, Pandora 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, Pandora has not demonstrated
that the Northern District of California is a more convenient
forum than the Western District of Tennessee.

Therefore,

Pandora’s Motion to Transfer Venue is DENIED.
Accordingly, the Court hereby LIFTS the February 8, 2013,
stay of all proceedings.

(ECF No. 36.)
25

Regarding the Court’s

February 12, 2013, Order granting Defendant’s Motion for
Extension of Time to File a Response to Plaintiff’s Motion to
Strike Defenses (ECF No. 37), Defendant shall have fourteen (14)
days from the date of entry of this Order, up to and including
July 26, 2013, to file its Response.

IT IS SO ORDERED this 12th day of July, 2013.
/s/ Jon P. McCalla_______
CHIEF U.S. DISTRICT JUDGE

26