Babbage Holdings, LLC v. Ubisoft, Inc. et al

Filing 59

MEMORANDUM ORDER. Signed by Judge Rodney Gilstrap on 09/29/2014. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
BABBAGE HOLDINGS, LLC,
Plaintiff,
v.
UBISOFT, Inc., et al.,
Defendants.

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Case No. 2:13-CV-758-JRG

MEMORANDUM ORDER
Before the Court is Defendants Ubisoft, Inc. and Ubisoft Holdings, Inc. (collectively
“Ubisoft”)’s Motion to Transfer Venue to the United States District Court for the Northern
District of California (Dkt. No. 30, filed February 21, 2014.) Ubisoft moves the Court to transfer
this case to the Northern District of California under 35 U.S.C. § 1404(a).
This is one of many cases filed by Plaintiff Babbage Holdings, LLC alleging
infringement of U.S. Patent No. 5,561,811 (hereinafter “’811 patent”) in this Court. The ’811
patent relates to a multi-user multi-device system enables more than one user to control a single
screen. Each user controls stored applications using one or more input devices, and the system
produces a consistent view of all the applications on a single screen.
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 of 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 “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

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instituted.’” In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003); In re EMC Corp., Dkt.
No. 2013-M142, 2013 WL 324154 (Fed. Cir. Jan. 29, 2013) (quoting Hoffman v. Blaski, 363
U.S. 335, 443 (1960)).
“The idea behind s 1404(a) is that where a ‘civil action’ to vindicate a wrong—however
brought in a court—presents issues and requires witnesses that make one District Court more
convenient than another, the trial judge can, after findings, transfer the whole action to the more
convenient court.” Van Dusen, 376 U.S. at 622 (quoting Cont'l Grain Co. v. The FBL-585, 364
U.S. 19, 26 (1960)) “Section 1404(a) is intended to place discretion in the district court to
adjudicate motions for transfer according to an ‘individualized, case-by-case consideration of
convenience and fairness.’” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting
Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)). Section 1404(a) requires this discretionary
“individualized, case-by-case consideration of convenience and fairness.” In re Genentech, Inc.,
566 F.3d 1338, 1346 (Fed. Cir. 2009) (quoting Van Dusen, 376 U.S. at 622).
DISCUSSION
As an initial point, Ubisoft did not file an individualized motion to transfer in this case.
Instead, Ubisoft filed a collective motion to transfer along with six other unrelated defendants.
Each of these defendants, including Ubisoft, filed an identical motion to transfer in its individual
case. The collective motion addresses the facts of the unrelated defendants as a group and argues
the transfer factors as a group. In this case, Plaintiff Babbage’s response was individualized to
its case with Ubisoft. Ubisoft’s Reply was also a collective reply—identical to the one filed in
six other cases—that did not specifically address Babbage’s individualized response.

In

addressing Ubisoft’s Motion to Transfer, the Court considers only the evidence presented in the
collective motion that is specific to Ubisoft and its case.

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A.

Proper Venue
The Northern District of California and the Eastern District of Texas are proper venues.

B.

Private Interest Factors
1.

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).
Ubisoft includes a February 19, 2014, declaration by Ms. Christele Jalady, Deputy
General Counsel of Ubisoft Entertainment, S.A., which is not a party to this case.
No. 30-7.)

(Dkt.

According to Ms. Jalady, Ubisoft, Inc., “is a California corporation with its

headquarters located in San Francisco, California and is a wholly-owned subsidiary of Ubisoft
S.A.”1 (Id.) “Ubisoft Holdings, Inc. is no longer in existence as it was merged into Ubisoft, Inc.
in March 2012.” (Id. at 1-2.) “The research, design and development of Ghost Recon: Future
Soldier was performed principally by Ubisoft S.A. 's studio located in Paris, France with support
from its studios in Bucharest, Romania; Kiev, Ukraine; Cary, North Carolina.”2 (Id. at 2.)
“Ubisoft did not develop Ghost Recon: Future Soldier, but any documents in the possession of
Ubisoft regarding the design and development of Ghost Recon: Future Soldier reside at Ubisoft's
headquarters in San Francisco, California.”3 (Id.) “Ubisoft distributes Ghost Recon: Future
Soldier in the United States.” (Id.) “The quality assurance testing for Ghost Recon: Future
1

San Francisco, California is located in the Northern District of California.

2

Neither Ms. Jalady nor Ubisoft provides any additional detail on the Cary, North
Carolina studio.
3

Ms. Jalady’s declaration defines “Ubisoft” as “Ubisoft, Inc.”

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Soldier was performed and/or led by Ubisoft S.A.'s studio in Romania.”4 (Id.) “Ubisoft did not
perform any quality assurance testing for Ghost Recon: Future Soldier. “Any documents in
Ubisoft's possession relating to quality assurance testing of Ghost Recon: Future Soldier can be
found at Ubisoft's headquarters in San Francisco, California.” (Id.) “[A]ll of Ubisoft's known
prospective witnesses with information relating to Ghost Recon: Future Soldier are located at or
near its San Francisco office.” (Id.) “In particular, Ubisoft's employees knowledgeable about
and prospective witnesses relating to the sales, finance, and marketing of Ghost Recon: Future
Soldier in the United States - including prospective witness Loic Arnans (sales and marketing) all work in San Francisco, California and documents relating to the same can be found there.”
(Id.) “Any Ubisoft employees knowledgeable about the sales, finance or marketing of Ghost
Recon: Future Soldier all work in San Francisco, California.” (Id. at 2-3.)
Babbage is a Texas limited liability company whose principal and representatives are all
located in Dallas, Texas. Babbage represents that its documents are located in Dallas, Texas.
Babbage provides charts detailing numerous potential party and non-party sources of evidence in
the U.S. and whether or not this forum is closer for those parties. Babbage presents evidence that
the developer of an accused Ubisoft product is located in this district.
Ubisoft argues that the Babbage’s charts address video games that were not specifically
listed in Babbage’s complaint. Ubisoft’s argument—that Babbage’s complaint is limited to
specifically accused games—is somewhat perplexing as Babbage’s complaint accused both
Ubisoft’s video games that practice the ’811 patent generally and a specific exemplary game.
The Court is concerned that, if Ubisoft is operating under a theory that the case only concerns the

4

Neither Ms. Jalady nor Ubisoft provides any additional detail on what other entities
were “led” by Ubisoft S.A.’s studio in Romania.

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specifically accused game and not Ubisoft’s video games generally, relevant evidence might
have been excluded.
Ubisoft presents evidence that, with the exception of a Cary, North Carolina location, all
of the development and testing of the exemplary game occurred in Europe. Ubisoft does not
provide any evidence as to the Cary, North Carolina location. It appears that that the North
Carolina location involved in the “research, design and development” of an accused product is
Red Storm Entertainment, which is located in Cary, North Carolina. (See Resp. at 3.) Based on
a purported interview with “Tommy Jacob, creative director on the multiplayer experience at
Red Storm Entertainment,” it appears that Red Storm assisted on, at least, the multiplayer aspects
of

the

accused

game.

See

http://www.primagames.com/games/ghost-recon-future-

soldier/strategy/ghost-recon-future-soldier-red-storm-multiplayer-t (last visited September 25,
2014). Ubisoft presents evidence that its employees generally (and one witness specifically)
“knowledgeable about” the “sales, finance, and marketing” of the accused product are located in
San Francisco, California. Ubisoft does not address the relevance of the developer of the Ubisoft
product in this district.
The weight of the evidence presented by Ubisoft’s for this factor does not meet its
burden. This factor weighs against transferring to the Northern District of California.
2.

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 1338, 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 15 Charles Alan Wright & Arthur R. Miller, Federal Practice and
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Procedure § 3851 (3d ed. 2012). “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.
Ubisoft’s motion provides a chart indicating that its “Relevant Witness & Document
Location[s]” are San Francisco, California and Paris, France.5 Ubisoft’s motion provides a chart
indicating that its “Development & Testing Location[s]” are Paris, France and Romania. Ubisoft
argues that the Northern District of California is more convenient for specific potential third
party witnesses. Ubisoft does not address Red Storm in Cary, North Carolina or the developer in
this district.
Babbage provides the names of five specific potential witnesses in Dallas, Texas.
Babbage. Babbage provides charts detailing potential third parties in the U.S. and their relative
distances between the two forums.
The weight of the evidence presented by Ubisoft for this factor does not meet its burden.
This factor weighs against transferring to the Northern District of California.
3.

Availability of Compulsory Process to Secure the Attendance of Witnesses

The weight of the evidence presented by Ubisoft for this factor does not meet its burden.
This factor weighs against transferring to the Northern District of California.
1

4.

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

Ubisoft argues that its San Francisco, California witnesses would have to travel a shorter
distance to reach the Northern District of California than they would to reach the Eastern District

5

San Francisco, California is located in the Northern District of California.

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of Texas. Ubisoft argues that the non-party inventor would not have to travel if the case were
transferred. (Mot. at 12.)
Babbage provides evidence that its Dallas, Texas witness would have to travel a shorter
distance to reach the Eastern District of Texas than they would to reach the Northern District of
California. Babbage provides evidence that this District would be a less expensive venue for
traveling witnesses. Babbage provides charts detailing potential third parties in the U.S. and
their relative distances between the two forums. Babbage argues that this suit is one of twelve
cases before this court concerning infringement of the ’811 patent, and that judicial economy
weighs in favor of trying those cases in the same court.
The weight of the evidence presented by Ubisoft for this factor does not meet its burden.
This factor weighs against transferring to the Northern District of California.
C.

Public Interest Factors
1.

Administrative Difficulties Flowing From Court Congestion

The speed with which a case can come to trial and be resolved is a factor in the transfer
analysis. A proposed transferee court’s “less congested docket” and “[ability] to resolve this
dispute more quickly” is a factor to be considered. In re Hoffman-La Roche, 587 F.3d 1333,
1336 (Fed. Cir. 2009). This factor is the “most speculative,” and in situations where “several
relevant factors weigh in favor of transfer and others are neutral, the speed of the transferee
district court should not alone outweigh all of those other factors.” In re Genentech, 566 F.3d at
1347.
Ubisoft argues that an average time to trial of between two to three years is equivalent.
Babbage argues that this District has a six month faster time to trial than the Northern District of

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California, and that this Court has already held a scheduling conference and provided the case
with a schedule.6
The weight of the evidence presented by Ubisoft for this factor does not meet its burden.
This factor weighs against transferring to the Northern District of California.
2.

Local Interest in Having Localized Interests Decided at Home

This factor considers the interest of the locality of the chosen venue in having the case
resolved there. Volkswagen I, 371 F.3d at 205-06. This consideration is based on the principle
that “[j]ury duty is a burden that ought not to be imposed upon the people of a community [that]
has no relation to the litigation.”
This factor weighs in favor of transferring to the Northern District of California.
3-4.

Familiarity of the Forum With the Law that Will Govern the Case and
Avoidance of Unnecessary Problems of Conflict of Laws or in the
Application of Foreign Law

These factors are neutral.
CONCLUSION
A movant seeking to transfer bears the evidentiary burden of establishing that the
movant’s desired forum is clearly more convenient than the forum where the case was filed.
Having considered the evidence presented by the Parties in view of the applicable law, the Court
finds that the weight of the evidence presented by Ubisoft does not meet its burden of
establishing that the Northern District of California is a clearly more convenient forum than the
Eastern District of Texas. For the reasons set forth above, the Court hereby DENIES Ubisoft’s
6

Federal Court Management Statistics for the twelve months ending in September 30,
2013, which appear to be the closest available to this case’s filing date (September 23, 2013),
recite a median time to trial of 20.5 months in this District and 27.4 months in the Northern
District
of
California.
See
http://www.uscourts.gov/Statistics/FederalCourtManagementStatistics/district-courts-september2013.aspx (last visited September 25, 2014.)

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Motion to Transfer Venue to the United States District Court for the Northern District of
California (Dkt. No. 30).

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 29th day of September, 2014.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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