DietGoal Innovations LLC v. Time, Inc.

Filing 61

MEMORANDUM OPINION and ORDER - case be transferred to the Eastern District of Virginia. Signed by Magistrate Judge Roy S. Payne on 3/25/13. (ehs, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
DIETGOAL INNOVATIONS LLC
v.
TIME INC.

§
§
§
§
§

Case No. 2:12-CV-337-JRG-RSP

MEMORANDUM ORDER
Before the Court is Defendant Time Inc.’s Motion to Transfer Venue to the Southern
District of New York (Dkt. No. 15, filed August 8, 2012). Time argues that the Southern District
of New York is a clearly more convenient forum for this case. Plaintiff DietGoal Innovations
LLC opposes transfer. After considering all of the record evidence and weighing the various
factors, the Court finds that the Eastern District of Virginia is a clearly more convenient venue
that has superior connections to this case as compared to either venue proposed by the parties.
APPLICABLE LAW
Section 1404(a) provides that “[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.” 28 U.S.C. § 1404(a) (2006). The first inquiry when
analyzing a case’s eligibility for 1404(a) transfer is “whether the judicial district to which
transfer is sought would have been a district in which the claim could have been filed.” In re
Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“In re Volkswagen I”).
Once that threshold is met, courts analyze both public and private factors relating to the
convenience of parties and witnesses as well as the interests of particular venues in hearing the
case. See Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963); In
re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d
1315, 1319 (Fed. Cir. 2009). The private factors are: 1) the relative ease of access to sources of

proof; 2) the availability of compulsory process to secure the attendance of witnesses; 3) the cost
of attendance for willing witnesses; and 4) all other practical problems that make trial of a case
easy, expeditious, and inexpensive. In re Volkswagen I, 371 F.3d at 203; In re Nintendo, 589
F.3d at 1198; In re TS Tech, 551 F.3d at 1319. The public factors are: 1) the administrative
difficulties flowing from court congestion; 2) the local interest in having localized interests
decided at home; 3) the familiarity of the forum with the law that will govern the case; and 4) the
avoidance of unnecessary problems of conflict of laws or in the application of foreign law. In re
Volkswagen I, 371 F.3d at 203; In re Nintendo, 589 F.3d at 1198; In re TS Tech, 551 F.3d at
1319.
The plaintiff’s choice of venue is not a factor in this analysis. In re Volkswagen of Am.,
Inc., 545 F.3d 304, 314-15 (5th Cir. 2008) (“In re Volkswagen II”). Rather, the plaintiff’s choice
of venue contributes to the defendant’s burden in proving that the transferee venue is “clearly
more convenient” than the transferor venue. In re Volkswagen II, 545 F.3d at 315; In re
Nintendo, 589 F.3d at 1200; In re TS Tech, 551 F.3d at 1319. Furthermore, though the private
and public factors apply to most transfer cases, “they are not necessarily exhaustive or
exclusive,” and no single factor is dispositive. In re Volkswagen II, 545 F.3d at 314-15.
Timely motions to transfer venue “should [be given] a top priority in the handling of [a
case],” and “are to be decided based on ‘the situation which existed when suit was instituted.’”
In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003); In re EMC Corp., Dkt. No. 2013M142, 2013 WL 324154 (Fed. Cir. Jan. 29, 2013) (quoting Hoffman v. Blaski, 363 U.S. 335, 443
(1960)).

-2-

DISCUSSION
A.

Proper Venues
The parties do not dispute that this case could have been brought in the Southern District

of New York or the Eastern District of Texas. DietGoal contends that this suit could be brought
in the Eastern District of Virginia, and Time “[does] not contest jurisdiction in the EDVA for
purposes of this case . . . .” (Dkt. No. 57.)
B.

Private Interest Factors
1.

Cost of Attendance for Willing Witnesses

“The convenience of the witnesses is probably the single most important factor in a
transfer analysis.” In re Genentech, Inc., 566 F.3d 1388, 1342 (Fed. Cir. 2009). While the Court
must consider the convenience of both the party and non-party witnesses, it is the convenience of
non-party witnesses that is the more important factor and is accorded greater weight in a transfer
of venue analysis. Aquatic Amusement Assoc., Ltd. v. Walt Disney World Co., 734 F.Supp. 54,
57 (N.D.N.Y. 1990); see also Wright & Miller, Federal Practice and Procedure § 3851. “A
district court should assess the relevance and materiality of the information the witness may
provide.” In re Genentech, Inc., 566 at 1343. However, there is no requirement that the movant
identify “key witnesses,” or show “that the potential witness has more than relevant and material
information . . . .” Id. at 1343-44.
Defendant Time Inc.’s Witnesses
Time’s principal place of business is in New York City. (Mot. at 3.) Todd Chandler,
Amanda Hanes, and Shannon King are employees with technical, marketing or financial
knowledge relevant to the accused realsimple.com website. (Id.) These witnesses are located in
New York City. (Id.) New York City is within the Southern District of New York.

-3-

Plaintiff DietGoal’s Witnesses
Timothy Salmon and Daniel Mitry, the managing members of DietGoal, reside in New
York City. Given Time’s contention that Mr. Salmon and Mr. Metry have merely acquired the
asserted patent in order to bring this suit, they appear to have little relevant evidence to offer as
compared to normal “party” witnesses.
Third Party Witnesses
Inventor and Practicing Entity
Dr. Oliver Alabaster, the inventor of the asserted patent, is a third party witness who
resides in Alexandria, Virginia. (Resp. at 9; Mot. at 4.) Dr. Alabaster is also the founder and
chief executive officer of DietFit, Inc., the third party entity that practices the asserted patent.
DietFit is located in Alexandria, Virginia. (Id.) Alexandria is located in the Eastern District of
Virginia.
After the Court ordered the parties to submit limited supplemental briefing directed to
whether this case could have been brought in the Eastern District of Virginia, Defendant
questioned for the first time whether Dr. Alabaster is in fact a third-party witness. (Dkt. No. 57
at 1-2.)

The basis for this contention is that DietGoal’s initial disclosures identified Dr.

Alabaster as a member of DietGoal. DietGoal has submitted evidence showing that it lawyers
erred in identifying Dr. Alabaster as a member of DietGoal, and clarified that his only
relationship to DietGoal is that he is entitled to royalty payments. (Dkt. Nos. 58 and 59.) The
Court accepts DietGoal’s representations, and accordingly finds that Dr. Alabaster is properly
considered a third-party witness.

-4-

Prosecuting Attorney
Steven Kelber, the attorney that prosecuted the asserted patent, has an office in Bethesda,
Maryland. (Mot. at 7-8.) Bethesda is in the District of Maryland. However, Mr. Kelber is
within the subpoena power of the Eastern District of Virginia.
Prior Art Witnesses
According to Time, there are 11 relevant prior art U.S. patents and patent applications.
All are cited on the face of the asserted patent. 2 of the references list inventors in New York, 2
of the references list inventors in Virginia, and the remaining inventors are in other states or
overseas. (Mot. at 8.)
Time contends that “the technology underlying the accused recipe search feature of the
Real Simple Website was originally developed by Time as the “AOL Food Recipe Finder.”
(Lachow Decl. at 2, Dkt. No. 15-1.) Gail Horwood, Ira Tau, and Lisa Michurski are former
Time employees that continue to work in “New York City or its vicinity.” (Id.) However, there
is no explanation of what evidence these witnesses could offer that is material and not
cumulative to evidence available from Time’s current employees, such as Ms. Hanes (who Time
admits has knowledge of the prior development efforts). (Id.)
Finally, Time identifies unspecified employees of Conde Nast as potential prior art
witnesses.

The basis for this contention is a declaration by Time’s lawyer stating that

Epicurious.com may be prior art. This contention is based upon a May 10, 2000 archived
version of Epicurious.com obtained from the Internet Archive. Conde Nast is presently located
in New York City, but Time speculates that Conde Nast’s employees knowledgeable with the
website as it existed in 2000 were located in New York City, and that they remain at Conde Nast
today.

-5-

After considering all the evidence relevant to the convenience factor, the Court finds that
the convenience of the witnesses weighs slightly more in favor of transferring this case to the
Eastern District of Virginia, but also weighs in favor of transferring this case to the Southern
District of New York. The Eastern District of Virginia appears to be the most convenient forum
for the specifically identified third party witnesses such as Dr. Alabaster and Mr. Kelber. Dr.
Alabaster, as an inventor and executive of a practicing entity, appears to be a particularly
important third party witness. The Court gives less weight to Time’s former employees because
there is evidence that current employees can provide testimony regarding the prior development
efforts.
2.

Relative Ease of Access to Sources of Proof

“In patent infringement cases, the bulk of the relevant evidence usually comes from the
accused infringer. Consequently, the place where the defendant’s documents are kept weighs in
favor of transfer to that location.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)
(citation omitted). “Time’s principal technical, marketing, and financial documentation related
to the Real Simple Website is located in New York.” (Lachow Decl. at 2, Dkt. No. 15-1.)
DietGoal does not identify any particular sources of its own proof. There is likely to be
discoverable evidence from Dr. Alabaster and DietFit, which are located in Alexandria, Virginia.
Given that the parties do not describe the type or quantity of evidence at any location, the Court
finds that this factor should be given less weight. Nonetheless, this factor weighs in favor of
transferring this case to the Southern District of New York and the Eastern District of Virginia.
3.

Availability of Compulsory Process to Secure the Attendance of Witnesses

Time’s former employees and DietGoal’s two members are within the subpoena power of
the Southern District of New York. There may be 2 prior art witnesses each within the subpoena
power of the Southern District of New York and the Eastern District of Virginia. Dr. Alabaster
-6-

(inventor) and Mr. Kelber (prosecuting attorney) are witnesses within the subpoena power of the
Eastern District of Virginia. Neither party has identified any witnesses that are within the
subpoena power of the Eastern District of Texas. The Court finds that this factor weighs in favor
of transferring this case to the Southern District of New York and the Eastern District of
Virginia.
4.

All Other Practical Problems that Make Trial of a Case Easy, Expeditious,
and Inexpensive

The Court finds that this factor weighs in favor of transfer to the Eastern District of
Virginia. There are no pending cases involving DietGoal in the Southern District of New York,
but at least two other cases have been transferred to the Eastern District of Virginia.
C.

Public Interest Factors
1.

Local Interest in Having Localized Interests Decided at Home

Time argues that the Southern District of New York has a substantial connection to this
case because the Real Simple websites management, content, and editing teams are based there,
and DietGoal’s members are residents. The Court observes that the Eastern District of Virginia
has a strong localized interest in this case because it is the situs of the inventive activity, and the
entity formed to commercialize and practice the invention (DietFit) is presently located in the
district. The Court finds that this factor weighs in favor of transfer to either the Southern District
of New York or the Eastern District of Virginia.
2.

Familiarity of the Forum With the Law that Will Govern the Case,
Administrative Difficulties Flowing From Court Congestion, and
Avoidance of Unnecessary Problems of Conflict of Laws or in the
Application of Foreign Law

The Court finds that the remaining public interest factors are neutral.

-7-

CONCLUSION
After considering all of the relevant evidence and factors, the Court finds that Eastern
District of Virginia is a clearly more convenient venue. Accordingly, it is ORDERED that this
case be transferred to the Eastern District of Virginia.
SIGNED this 3rd day of January, 2012.
SIGNED this 25th day of March, 2013.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

-8-