Phoenix Licensing, L.L.C. et al v. Royal Caribbean Cruises, Ltd.

Filing 26

MEMORANDUM ORDER - Signed by Magistrate Judge Roy S. Payne on 12/22/2014. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
§
PHOENIX LICENSING, L.L.C., ET AL.
§
§
Case No. 2:13-cv-1095-JRG-RSP
v.
§
§
ROYAL CARIBBEAN CRUISES LTD.
§
MEMORANDUM ORDER
Before the Court is Royal Caribbean Cruises, Ltd.’s (“Royal Caribbean”) Motion to
Transfer Venue to the Southern District of Florida (Dkt. 18, filed March 20, 2013). Royal
Caribbean argues that the Southern District of Florida is a clearly more convenient forum for this
case. Plaintiff Phoenix Licensing, LLC (“Phoenix”) opposes transfer. After considering all of the
record evidence and weighing the various factors, the Court finds that Royal Caribbean has
failed to carry its burden of showing that the Southern District of Florida is a clearly more
convenient venue for this case.
BACKGROUND AND PROCEDURAL HISTORY
Plaintiff Phoenix Licensing, LLC (“Phoenix”) is an Arizona limited liability company
with its principal place of business in Scottsdale, Arizona. (Dkt. 1.) On December 11, 2013,
Phoenix filed this suit against Royal Caribbean Cruises Ltd. (“Royal Caribbean”), a Liberian
corporation headquartered in Miami, Florida. (Dkt. 18.) In its original complaint against Royal
Caribbean, Phoenix accused Royal Caribbean of infringing U.S. Patent No. 5,987,434, U.S.
Patent No. 7,890,366, and U.S. Patent No. 8,352,317. (Dkt. 1.) Royal Caribbean now moves the
Court pursuant to 28 U.S.C. § 1404(a) to transfer this action to the United States District Court
for the Southern District of Florida. (Dkt. 18.)

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
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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. 2013-M142,
2013 WL 324154 (Fed. Cir. Jan. 29, 2013) (quoting Hoffman v. Blaski, 363 U.S. 335, 443
(1960)).
DISCUSSION
A.

Proper Venue
Neither party disputes that venue is proper either in the Eastern District of Texas or the

Southern District of Florida as to Phoenix and Royal Caribbean.
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

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witnesses,” or show “that the potential witness has more than relevant and material
information . . . .” Id. at 1343–44.
Royal Caribbean’s motion sets forth a series of statements alleging the convenience
prong weighs in favor of transfer. However, it is clear the statements in Royal Caribbean’s
motion place heavy emphasis on its own witnesses without setting forth a thorough analysis of
Phoenix witnesses and third-party witnesses. In one example, Royal Caribbean identifies two
purported “key” witnesses as residing within the Southern District of Florida. (Mot. at 10.) In
another example, Royal Caribbean represents that several of its anticipated party witnesses are
located within the Southern District of Florida. (Id.) Royal Caribbean’s representation of the
importance of these witnesses, however, is highly speculative. See, e.g., (id.) (“These party
witnesses likely have important information regarding the design, development, implementation,
and maintenance of the Accused Communications . . . ”) (emphasis added); (Sanguinetti Decl. at
¶¶ 7, 8 (Dkt. 18-9) and Matas Declaration at ¶ 7, (Dkt. 18-8)) (stating that these purported “key”
witnesses “may have testimony relevant to Royal Caribbean International’s consumer marketing
communications.”) (emphasis added). At best, therefore, these facts only weigh slightly in favor
of transfer.
Additionally, Royal Caribbean cites a non-party Georgia-based witness as supporting its
contention that the facts of this suit favor transfer. (Mot. at 10.) Presumably premising its
conclusion on the geographical proximity of Georgia and Florida, Royal Caribbean concludes
that the Southern District of Florida would be “significantly more convenient” as to this
particular witness. (Id.) If the Southern District of Florida is indeed “significantly more
convenient” to Royal Caribbean’s Atlanta-based witness as Royal Caribbean suggests (Mot. at
10), it would logically follow that the Eastern District of Texas is “significantly more

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convenient” to each and every one of Phoenix’s Arizona- and California-based party and thirdparty witnesses, including those specifically identified by Royal Caribbean. (Mot. at 9.) Were the
Court the accept Royal Caribbean’s premise to be true, it must conclude that this fact weighs
slightly against transfer.
Accordingly, taken as a whole, this factor is neutral.
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).
Royal Caribbean’s motion states that it “is unaware of any documents relating to the
Accused Communications located in Texas.” (Mot. at 7.) Moreover, Royal Caribbean states that
it “anticipates that most, if not all, of the documents relating to the Accused Communications are
located in Defendant’s southern Florida Offices.” See (id.) (citing Sanguinetti Decl. at ¶ 5 (Dkt.
18-9) and Matas Declaration at ¶ 5, (Dkt. 18-8)). The documents cited in these portions of the
two declarations, however, are limited to those documents relevant to “the marketing department
and marketing database analytics team . . . ” and “marketing communication strategy and
implementation for the Royal Caribbean International brand . . . .” (Sanguinetti Decl. at ¶ 5 (Dkt.
18-9) and Matas Declaration at ¶ 5, (Dkt. 18-8)). Royal Caribbean proffers no additional
evidence within these cited portions regarding documentation other than marketing-based
information, such as, for example, financial information, strategy-based documents, management

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documentation, etc. 1 Rather, Royal Caribbean merely states that its declarants are “not aware of
any [other documents] that are located in Texas.”). (Id.) (emphasis added).
Equally, Phoenix proffers evidence of some relevant documentation physically located
within the Eastern District of Texas. See, e.g., (Libman Decl. at ¶ 3, Dkt. 20-1) (discussing
corporate and intellectual property-based documentation located in Tyler, Texas). Because both
Plaintiff and Defendant have merely illustrated that some of its documentation is located within
the transferor and transferee districts, respectively, this factor neither weighs for or against
transfer.
Accordingly, evaluated as a whole, this factor is neutral.
3.

Availability of Compulsory Process to Secure the Attendance of Witnesses

Under Federal Rule of Civil Procedure 45 (as recently amended), this Court may enforce
a subpoena issued to any nonparty witness in the State of Texas to appear at trial, provided the
party does not incur substantial expense. FED. R. CIV. P. 45(c)(1)(B). Similarly, the Court may
enforce any subpoena for a deposition to be taken within its boundaries, provided that the
deposition is taken no more than 100 miles from a location where the person resides, is
employed, or regularly transacts business in person. See id. at (a)(2), (c)(1)(A), (d)(3)(a).
Moreover, party witnesses do not require compulsory process for trial and are not given much
weight in this factor. Rather, the focus of this factor is on witnesses for whom compulsory
process to attend trial might be necessary.
Royal Caribbean identifies three witnesses it contends are outside of the subpoena power
of the Eastern District of Texas; two of whom—Lillian Murphy and Lee-Ann Vermaak—it
1

Notably, although the Sanguinetti Declaration states “[a]ny documents that may not be
located in southern Florida can be accessed from RCL’s southern Florida location,” (emphasis
added) the declaration is completely silent as to whether these documents can be accessed from
Texas as well. (Sanguinetti Decl. at ¶ 5 (Dkt. 18-9).

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contends are within the subpoena power of the Southern District of Florida. (Mot. at 8.) The third
witness Royal Caribbean identifies, along with potential third-party witnesses it represents
Plaintiff will likely rely upon, are neither located in Texas nor Florida. (Id. at 3, 8–9.) For its
part, Phoenix does not specifically identify any third-party witnesses located within the Eastern
district of Texas.
By Royal Caribbean’s own admission, the two third-party witnesses identified to be
within the subpoena power of the Southern District of Florida—and outside the subpoena power
of the Eastern District of Texas—are the same witnesses identified in its discussion of willing
witnesses. See (Mot. at 9) (identifying Lillian Murphy and Lee-Ann Vermaak under the heading,
“Cost of Attendance for Willing Witnesses”) (emphasis added); (Sanguinetti Decl. at ¶¶ 7, 8
(Dkt. 18-9) and Matas Declaration at ¶ 7, (Dkt. 18-8)) (same). The fact that these witnesses are
willing witnesses does not weigh in favor of transfer. Moreover, Royal Caribbean’s reliance on
these and other witnesses is speculative at best. See (id.) (stating that these purported “key”
witnesses “may have testimony relevant to Royal Caribbean International’s consumer marketing
communications.”) (emphasis added). At best, this only weighs slightly in favor of transfer.
On the other hand, Phoenix sets forth evidence establishing Royal Caribbean’s activities
within the State of Texas. See, e.g., (Wang Decl. at ¶¶ 6–8, Dkt. 20-2) (proffering significant
evidence of Royal Caribbean’s operational- and advertising-based activities within the Southern
District of Texas and the Eastern District of Texas). Pursuant to the Federal Rules, this Court
may enforce a subpoena issued to any nonparty witness in the State of Texas to appear at trial,
provided the party does not incur substantial expense. 2 FED. R. CIV. P. 45(c)(1)(B). Indeed, under
2

Given the Federal Rules of Civil Procedure, the Court strains to understand how
Defendant’s Galveston-based activities are “wholly immaterial to the venue analysis” as Royal
Caribbean contends. (Reply at 5 n.4.)

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the Federal Rules, Phoenix could compel attendance at trial as to any witnesses located within
the State of Texas involved in Royal Caribbean’s operations and ongoing activities within the
state. These facts weigh against transfer.
Accordingly, evaluated as a whole, this factor weighs slightly against transfer.
4.

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

Although Royal Caribbean presents arguments to suggest that transfer would neither
adversely affect the parties’ efforts expended thus far, nor judicial economy, it fails to present the
Court with any evidence supporting a theory as to why transfer to the Southern District of
Florida would make trial of the instant suit easier, expeditious, or inexpensive. Indeed, Royal
Caribbean’s own arguments appear to suggest that this factor is, at best, neutral. See, e.g., (Mot.
at 11) (“[I]t would not be wasteful of judicial resources to transfer this action now.”); (id.)
(“[T]here are no practical considerations that weigh against transfer to the Southern District of
Florida.”).
Phoenix, on the other hand, cites numerous instances of this Court’s previous and
ongoing involvement with related suits, some of which involve one or more of the patents-insuit in the instant suit. (Response at 11.) Moreover, prior to the date of Phoenix’s response to
Royal Caribbean’s instant motion, the Court set a scheduling conference for the instant dispute
and set critical dates in its Docket Control Order, including dates of compliance with this Court’s
local rules as to the parties’ invalidity and infringement contention deadlines. (Id.) (citing critical
docket entries from the lead case of which the instant suit is consolidated within).
Accordingly, evaluated as a whole, the Court finds this factor weighs slightly against
transfer.

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C.

Public Interest Factors
1.

Local Interest in Having Localized Interests Decided at Home

Royal Caribbean argues the Southern District of Florida has a local interest in this case
because, among other things, “Defendant is headquartered in that district . . . .” (Mot. at 13.) To
the extent Royal Caribbean’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 Southern District of Florida, financial or otherwise, to Royal Caribbean itself, the Court
notes that this raises troubling fairness implications and affords it little weight. 545 F.3d at 318.
Indeed, while the concentration of Royal Caribbean’s corporate activities may take place in or
near the Southern District of Florida, Royal Caribbean has a significant commercial presence
across the country and in this District.
In its final argument under this heading, 3 Royal Caribbean contends “the outcome of this
proceeding will have a direct financial impact on Defendant and Defendant’s reputation as well
as the reputation of its employees.” (Mot. at 13.) Even assuming this to be true, the Court is not
persuaded that this fact favors transfer for several reasons. First, the same may be said about
Phoenix within this District. For example, Phoenix proffered evidence that it maintains an office
within the Eastern District of Texas. (Libman Decl. at ¶ 3, Dkt. 20-1.) Although the record
reflects that Royal Caribbean employs more employees within Southern District of Florida
district than Phoenix does within the Eastern District of Texas, it equally follows that the
outcome of this proceeding will have a direct impact on Phoenix and Phoenix’s reputation as
well within this District given its ties to the Eastern District of Texas.
3

The Court acknowledges Royal Caribbean’s additional points under this heading
regarding relevant documentation and witnesses relating to the Accused Communications. These
arguments, however, have been addressed under one or more previous headings above and, thus,
the Court will not readdress those arguments here.
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Second, Royal Caribbean’s reputation-based arguments as to the Southern District of
Florida are belied by its strong nationwide presence and its significant ties to Texas. See, e.g.,
(Wang Decl. at ¶¶ 6–8, Dkt. 20-2) (marshalling significant evidence of Royal Caribbean’s
operational- and advertising-based activities within the Southern District of Texas and the
Eastern District of Texas). Indeed, with such a strong presence within these two Texas districts,
the impact of this suit on Royal Caribbean would equally apply to this District as well.
Accordingly, at best, this factor is neutral.
2.

Administrative Difficulties Flowing From Court Congestion

Royal Caribbean argues this prong favors transfer to the Southern District of Florida.
Specifically, in supporting its arguments, Royal Caribbean cites two data points from which it
ostensibly desires the Court to infer that transfer to the Southern District of Florida would
alleviate any perceived administrative difficulties flowing from court congestion in the Eastern
District of Texas. (Mot. at 12) (comparing the 2013 median time from filing a civil action to
disposition and the 2013 median time from filing a civil action to trial of the transferor and
transferee districts). The limited set of data Royal Caribbean cites is insufficient to demonstrate
that this prong weighs in favor of transfer. As Royal Caribbean notes in its briefing, this factor is
often speculative and case-disposition statistics may not always tell the story. (Id.) (citing In re
Genentech, Inc., 566 F.3d 1388, 1342 (Fed. Cir. 2009)).
Accordingly, the Court finds this factor to be neural.
3.

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

The Court finds that the remaining public interest factors are neutral. Indeed, Royal
Caribbean itself concedes that the remaining two factors are neutral. See (Mot. at 13) (“[B]oth
[transferee and transferor districts] have significant experience in handling patent infringement
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cases, this factor favors neither district.”); (id. at 14) (arguing the “Avoidance of Unnecessary
Problems of Conflicts of Law” prong to be neutral as well).
CONCLUSION
.

A motion to transfer venue should only be granted upon a showing that the transferee

venue is “clearly more convenient” than the venue chosen by the plaintiff. In re Nintendo Co.,
589 F.3d at 1197; In re Genentech, Inc., 566 F.3d at 1342 (Fed. Cir. 2009). After weighing the
evidence as a whole, the Court finds that this is not such a situation. Three factors weigh slightly
against transfer and the remaining factors are neutral. Not one factor weighs in favor of transfer.
On balance, Royal Caribbean has fallen short of meeting its burden to show that the Southern
District of Florida would be a clearly more convenient forum than the Eastern District of Texas.
Accordingly, Royal Caribbean’s Motion to Transfer Venue (Dkt. 18) is DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 22nd day of December, 2014.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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