DietGoal Innovations LLC v. Hearst Communications, Inc. d/b/a Seventeen Magazine
Filing
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MEMORANDUM OPINION AND ORDER - ORDERED that this case be transferred to the Eastern District of Virginia. Signed by Magistrate Judge Roy S. Payne on 6/19/2013. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
DIETGOAL INNOVATIONS LLC
v.
HEARST COMMUNICATIONS, INC.
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Case No. 2:12-CV-563-JRG-RSP
MEMORANDUM ORDER
Before the Court is Defendant Hearst Communications, Inc.’s Motion to Dismiss or in
the Alternative to Sever and Transfer to the Southern District of New York (Dkt. No. 3, filed
August 31, 2012). Hearst 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)).
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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 Hearst “[does] not oppose transfer of this case to the
Eastern District of Virginia on that basis . . .” (Dkt. No. 46.)
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 Hearst’s Witnesses
In support of its motion, Hearst relies on a declaration by Mark Weinberg, vice president
of programming and product strategy for Heart Magazine Digital Media. (Weinberg Decl., Dkt.
No. 3-2.) According to Mr. Weinberg, “Hearst’s employees involved with the [accused] ‘meal
maker’ tool are located in New York, New York.”
(Id. at 2.)
Mr. Weinberg continues:
“[t]echnical and business decisions regarding www.seventeen.com, including the ‘meal maker’
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tool, are made in New York, New York.” (Id.) Mr. Weinberg does not identify any employees
in particular, or identify the number of relevant witnesses in New York. Hearst also relies on a
supplemental declaration by Ravi Sitwala, an attorney in Hearst’s Office of General Counsel.
(Sitwala Decl., Dkt. No. 46-1.) According to Mr. Sitwala, “the Seventeen [Magazine] witnesses
. . . are all located in the Southern District of New York.” Further, Mr. Sitwala claims that Mr.
Weinberg “is now a former employee and therefore a non-party to the case,” but does not allege
that Mr. Weinberg possesses any documents, information, or knowledge not already possessed
by current Hearst employees. (Id.)
Plaintiff DietGoal’s Witnesses
Timothy Salmon and Daniel Mitry, the managing members of DietGoal, reside in New
York City. Mr. Salmon and Mr. Mitry are not inventors. Neither party’s brief offers an
explanation of what relevant testimony Mr. Salmon or Mr. Mitry may offer.
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. (Mot. at 7.) 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. (Resp. at 3.) 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. 46
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
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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. No. 48.) The Court
accepts DietGoal’s representations, and accordingly finds that Dr. Alabaster is properly
considered a third-party witness.
Prosecuting Attorney
Steven Kelber, the attorney that prosecuted the asserted patent, has an office in Bethesda,
Maryland. (Mot. at 7.) Bethesda is in the District of Maryland. However, Mr. Kelber is within
the subpoena power of the Eastern District of Virginia.
Other Third Party Witnesses
According to Mr. Weinberg, the accused “meal maker” tool was developed by “Hearst, in
conjunction with a third-party,” in New York, New York. (Weinberg Decl. at 3.) Mr. Weinberg
did not state where the employees involved in the development reside, and did not identify which
third parties were allegedly involved in the “meal maker” tool’s development, or where those
third parties reside. (Id.)
Prior Art Witnesses
Neither party addresses the location of prior art witnesses. However, there are 11 U.S.
patents and patent applications that have previously been identified by other defendants as
potential prior art. 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 5.)
After considering all the evidence relevant to the convenience factor, the Court finds that
the convenience of the witnesses weighs 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
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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.
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). “Documents relevant to the ‘meal maker’ tool are in New York, New York.”
(Weinberg Decl. at 2.)
DietGoal does not identify any particular sources of its own proof. There is likely to be
discoverable evidence from Dr. Alabaster and DietFit, which would be 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
DietGoal’s two members and Mr. Weinberg1 are the only specifically identified nonparty witnesses that are within the subpoena power of the Southern District of New York. There
may be two prior art witnesses each within the subpoena power of the Southern District of New
York and the Eastern District of Virginia. Dr. Alabaster (inventor) and Mr. Kelber (prosecuting
1
For the sake of this motion, it is assumed that Mr. Weinberg is in fact a non-party
witness, but that fact has not been conclusively determined. As noted above, neither party
alleges that Mr. Weinberg possesses any knowledge not already possessed by current Hearst
employees.
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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 three other related cases are pending in the Eastern District of Virginia.
C.
Public Interest Factors
1.
Local Interest in Having Localized Interests Decided at Home
Hearst argues that the Southern District of New York has a substantial connection to this
case because Hearst is principally located in New York, and it is where its senior managers
reside. (Mot. at 8.) 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 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.
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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 date.
Jun 19, 2013
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