Database Sync Solutions LLC v. International Business Machines Corporation

Filing 64

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 08/11/2014. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
DATABASE SYNC SOLUTIONS LLC
v.
INTERNATIONAL BUSINESS
MACHINES CORPORATION

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Case No. 2:13-CV-214- JRG-RSP

MEMORANDUM ORDER
Before the Court is International Business Machines Corporation’s (“IBM”) Motion to
Transfer Venue to the Northern District of California (Dkt. 30, filed March 6, 2014). IBM
argues that the Northern District of California is a clearly more convenient forum for this case.
Plaintiff DSS opposes transfer. After considering all of the record evidence and weighing the
various factors, the Court finds that IBM has failed to carry its burden of showing that the
Northern District of California is a clearly more convenient venue for this case.
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 Venue
Neither party disputes that venue is proper either in the Eastern District of Texas or the

Northern District of California as to DSS and IBM.
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.
IBM’s motion sets forth a series of statements alleging that the convenience prong
weighs in favor of transfer. However, it is clear to the Court that many of the statements in
IBM’s Motion are – at best – incomplete. For example, IBM’s declarant identifies three parties
with “decision making responsibilities” as to the accused product. (Dkt. 21-2 at 1.) IBM’s
Motion focuses much energy on the fact that one of those three decision makers is located in the
Northern District of California. (See, e.g., Mot. at 4-5.) However, IBM fails to disclose to the
Court in its Motion that the other two decision makers are located in Austin, Texas: over a
thousand miles closer to this District than to the Northern District of California.The remaining

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potential party witnesses identified by IBM appear to be geographically scattered, with several
residing closer to the Eastern District of Texas (“roughly ten or twenty” employees in Austin that
formerly worked on the design and development of the accused product prior to 2013, and “at
most six” thereafter) and at least one that is closer to the Northern District of California. (Dkt.
21-2 at 2; Dkt. 30 at 12-13.) For its part, DSS identifies some allegedly relevant party witnesses
that reside closer to the Eastern District of Texas than to the Northern District of California,
although it is not clear how important these witnesses will be to this case.1 While IBM identifies
several third party witnesses, it appears that the only of those witnesses with information relevant
to case are likely to be the two named inventors of the patent-in-suit, who were at one time
affiliated with a company named “YOUnite.” Neither party seems to dispute that the two
inventors likely reside closer to the Northern District of California than the Eastern District of
Texas.
The Court finds that whatever relevant party witnesses DSS has are likely within the
Eastern District of Texas. The named inventors of the suit appear to be located in or near the
Northern District of California. Two of the three “decision makers” on the accused product –
who appear to be, by far, the most relevant witnesses in the case – as well as several other
persons with substantive experience with and knowledge of the development of the accused
product, are all substantially closer to the Eastern District of Texas than to the Northern District of
California. IBM has failed to show that this factor favors transfer.

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IBM also alleges that DSS’s presence in this District is solely to manipulate venue, but there is no
evidence that that is the case. Indeed, DSS’s headquarters, like many other technology-oriented businesses, is
located in a major metropolitan area, and is mere miles from an IBM office housing nearly 300 employees. (See Dkt.
30 at 5.) The Court also observes that, while it is of minimal relevance for the instant analysis, IBM’s statements
about the principal location of DSS appear to be flatly incorrect, and even the documents cited by IBM clearly
demonstrate the inaccuracy of those contentions. (Dkt. 22-1.)

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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).
IBM’s Motion states that it does not know of any documentary evidence in the Eastern
District, and also states that “[s]ignificant documents are also kept within the Northern District of
California.” (Mot. at 5.) What IBM omits from its Motion, however, is the fact that its master
source code repository for the accused product is located in Austin, TX and IBM’s electronic
documents are stored on three different servers: Austin, TX, Poughskeepsie, New York, and San
Jose, California. (Dkt. 30 at 6.) Thus, it appears that all of IBM’s relevant documents are
located close to both districts in question, and in fact, the most relevant documents are
substantially closer to the Eastern District of Texas than the Northern District of California.
There does not appear to be any dispute between the parties that whatever relevant documents
are possessed by DSS, those documents are all located within the Eastern District of Texas.
The Court finds that this factor strongly weighs against transfer.
3.

Availability of Compulsory Process to Secure the Attendance of Witnesses

The only witnesses discussed in any detail in the parties’ briefing are the named inventors
of the patent-in-suit. DSS claims it has an agreement requiring the inventors to assist upon its
request. IBM argues that that agreement is irrelevant. The Court disagrees, and notes that it can –
and will, if necessary – compel DSS to take all steps to secure the attendance of relevant
witnesses at trial, which it appears would suffice here. Notwithstanding this fact, however, IBM
is correct that – despite the mitigating effect of the agreement in question – ultimately, the Court

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does appear to lack compulsory process over the named inventors in the unlikely event it
becomes necessary here. Accordingly, the Court finds this factor slightly favors transfer.
4.

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

IBM has presented no factual basis or argument to suggest that this factor favors transfer.
C.

Public Interest Factors
1.

Local Interest in Having Localized Interests Decided at Home

IBM first argues that the Northern District of California has a local interest in this case
because of “key IBM employees.” (Mot. at 10-11.) To the extent that IBM’s position is staked
upon a connection not to “the events that gave rise to this suit,” as suggested by In re
Volkswagen II, but rather a connection of some residents of the Northern District of California,
financial or otherwise, to IBM itself – the Court notes that this raises troubling fairness
implications and affords it little weight. 545 F.3d at 318. More importantly, though, is IBM’s
contention that “any alleged infringement by IBM would necessarily be connected to significant
events in [the Northern District of California] because of the development that took place there.
(Mot. at 11.) If true, this would indeed be relevant, but IBM’s contention is not supported by the
record before the Court. Rather, under IBM’s own proffered theory, the fact that it appears that
most of the development of the accused product took place in Texas rather than California does
not support transfer. Accordingly, the Court finds that this factor slightly weighs against
transfer.
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 IBM has
failed to meet its burden of showing that the transferee venue is “clearly more convenient” than
the transferor venue. Accordingly, the Motion is DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 11th day of August, 2014.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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