Gonzalez v. New Life Ventures, Inc.

Filing 18

MEMORANDUM ORDER -. Signed by Magistrate Judge Roy S. Payne on 1/25/2016. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
EMMANUEL C. GONZALEZ,

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Plaintiff,
v.
NEW LIFE VENTURES, INC.,

Defendant.

Case No. 2:14-cv-907-JRG-RSP

MEMORANDUM ORDER
Pending Before the Court is Defendant New Life Ventures, Inc.’s (New Life) Motion to
Transfer Venue Pursuant to 28 U.S.C. § 1404(a). (Dkt. No. 16.)1 New Life contends that this
case should be transferred to the United States District Court for the Southern District of Florida.
Plaintiff Emmanuel Gonzalez opposes transfer. (Dkt. No. 89.) The Court has considered the
evidence and weighed the factors. The Court finds that NLV has not shown that transfer is
warranted.
BACKGROUND
Gonzalez accuses the website sugardaddie.com (the Accused Website) of infringing five
patents for which he is the named inventor. (See Dkt. No. 16 at 2 (“Gonzalez accuses [New Life]
of infringing five patents . . . all generally related to digitally labelling websites.”).) Gonzalez
lives in Cebu, Philippines, Makati City, Philippines, or British Columbia, Canada. (Dkt. No. 16
at 2; Dkt. No. 60-6 at 11.) New Life designs and operates the Accused Website from North
Miami, Florida. (Dkt. No. 16 at 1.)
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All citations to “Dkt. No. 16” are to docket number 16 in Gonzalez v. New Life Ventures, 2:14cv-907-JRG-RSP. All citations to other docket numbers are to docket numbers in Gonzalez v.
New Life Ventures, 2:14-cv-906-JRG-RSP.

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). 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.

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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. Although 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
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)).
A.

Proper Venue
The parties do not dispute that venue is proper in both the Eastern District of Texas and

the Southern District of Florida.
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).
New Life asserts that the proof in this case is more accessible from the Southern District
of Florida. It states that “all documentary evidence about how the Accused Website operates

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. . . is in the Southern District of Florida.” (Dkt. No. 16 at 5.) It further states that the Accused
Website was developed in the Southern District of Florida and that all of the design, marketing,
sales, finance, and technical documents in the possession of New Life are maintained in the
Southern District of Florida. (Dkt. No. 16 at 5; Dkt. No. 16-1 ¶4 (“[New Life] creates and keeps
its records in its Florida office, including any technical documents and all marketing and
advertising material. The Florida office is also where NLV makes all design, marketing, sales,
and financial decisions.”).)
Gonzalez, in contrast, claims that “[t]here are [] a number of additional third parties . . .
from whom discovery will likely be pursued in this case.” (Dkt. No. 89 at 5.) For example,
Gonzalez states that the attorneys who prosecuted the Asserted Patents are in Colorado and
California. (Dkt. No. 89 at 5.) He also states that New Life has adopted another defendant’s
invalidity contentions which identify witnesses in Washington, California, and Ohio. (See Dkt.
No. 89 at 5; Dkt. No. 89-6 at 9.)
The parties do not dispute that New Life’s sources of proof are in Miami. Furthermore,
the parties do not dispute that the third-party sources of proof are primarily in Seattle and San
Francisco. New Life’s sources or proof are more accessible from the Southern District of Florida.
However, most third-party sources of proof are at least as accessible from the Eastern District of
Texas as from the Southern District of Florida. (See Dkt. No. 89 at 5 (“[T]he Eastern District of
Texas is plainly more convenient from Denver, Colorado and Atherton, California than the
Southern District of Florida.”)); Dkt. No. 89 at 7 (“[W]ith respect to the cited prior art located in
Seattle, Marshall is more convenient than Miami.”).) The Court finds that this factor weighs in
favor of transfer but not heavily.

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2.

Cost of Attendance for Willing Witnesses

New Life states that the parties have identified only two relevant New Life witnesses:
Steven Pasternack and Jonathan Homewood. (Dkt. No. 16 at 6.) It further states that Mr.
Pasternack and Mr. Homewood live in the Southern District of Florida. (Dkt. No. 16 at 6.) New
Life asserts, for this reason, “transfer to the Southern District of Florida will greatly reduce cost
and enhance convenience for these witnesses.” (Dkt. No. 16 at 6.) New Life further asserts that
the Eastern District of Texas and the Southern District of Florida are equally convenient for
Gonzalez because he lives in the Philippines or Canada. (Dkt. No. 16 at 6.)
Gonzalez responds by stating that “almost all known third parties to this litigation are
located closer to Marshall than to Miami, and the cost for such witnesses to attend trial in
Marshall is less than the cost of attendance in Miami.” (Dkt. No. 89 at 7.) Gonzalez contends,
“[f]or example, with respect to the cited prior art located in Seattle, Marshall is more convenient
than Miami.” (Dkt. No. 89 at 7.)
“The convenience of the witnesses is probably the single most important factor in a
transfer analysis.” In re Genentech, 566 F.3d at 1342. 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
Procedure § 3851 (3d ed. 2012).
“A district court should assess the relevance and materiality of the information the
witness may provide.” In re Genentech, 566 at 1343. However, there is no requirement that the

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movant identify “key witnesses,” or show “that the potential witness has more than relevant and
material information . . . .” Id. at 1343-44.
The parties do not dispute that Mr. Pasternack and Mr. Homewood live in Miami.
Furthermore, the parties do not dispute that the third-party witnesses are principally located in
Seattle, San Francisco, and Denver. While New Life has shown that Mr. Pasternack and Mr.
Homewood would find trial in the Southern District of Florida more convenient, it also declares
that they would not be incovenienced by trial in California. (See Dkt. No. 16-1 ¶5.) New Life,
however, has not shown that the third-party witnesses would find trial in the Southern District of
Florida more convenient. For example, New Life has not presented facts which refute
Gonzalez’s claim that the third-party witnesses in Seattle would find a trial in the Eastern District
of Texas more convenient than a trial in the Southern District of Florida. (Dkt. No. 89-1 ¶6; Dkt.
No. 89-7 at 2-3; Dkt. No. 95 at 3.) Accordingly, the Court finds that this factor does not favor
transfer.
3.

Availability of Compulsory Process to Secure the Attendance of Witnesses

Rule 45 provides that this Court may command a person who “resides, is employed, or
regularly transacts business in person” in Texas to attend trial in Marshall if that person “would
not incur substantial expense.” Fed. R. Civ. P. 45(c)(1)(B). This Court also may command a
person to attend a deposition “within 100 miles of where the person resides, is employed, or
regularly transacts business in person.” Fed. R. Civ. P. 45 (a)(2); see Fed. R. Civ. P. 45 (c)(1)(A)
& (d)(3)(a). Party witnesses often do not require compulsory process, therefore, the Court’s
analysis of this factor focuses on third-party witnesses for whom compulsory process to attend
trial might be necessary.

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The parties both state that this factor is neutral as to transfer. (Dkt. No. 16 at 6; Dkt. No.
89 at 6.) The Court agrees and finds that this factor is neutral.
4.

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

New Life returned Gonzalez’s summons on October 30, 2014. New Life filed this motion
to transfer on May 18, 2015, seven-and-a-half months later. (Dkt. No. 16.) The Court finds that
this factor does not favor transfer because of New Life’s delay.
C.

Public Interest Factors
1.

Administrative Difficulties Flowing From Court Congestion

The Southern District of Florida has a significantly faster average time-to-trial for civil
cases in general. (Dkt. No. 16 at 9.) The Eastern District of Texas has a slightly faster average
time-to-trial for patent cases in general. (Dkt. No. 89-9 at 2.) The Court finds that the time
necessary to prepare this case for trial is not clear. Therefore, the Court finds that this factor is
neutral as to transfer.
2.

Local Interest in Having Localized Interests Decided at Home

New Life contends that the residents of the Southern District of Florida have a greater
interest in this case because the “lawsuit [] calls into question the activities of [New Life’s]
personnel residing and doing business within the Southern District of Florida.” (Dkt. No. 16 at
8.) Gonzalez responds by stating that the residents of the Eastern District of Texas have an
interest in this case because “nearly 150 of [New Life’s] registered users are located in this
District.” (Dkt. No. 89 at 9.)
The residents of the Southern District of Florida have a greater interest in resolving this
dispute. New Life is based in the Southern District of Florida and has shown that significantly

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more users of the Accused Website are located in the Southern District of Florida. (See Dkt. No.
89-6 at 7-8.)
3.

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

The parties agree these factors are neutral as to transfer. (Dkt. No. 16 at 9; Dkt. No. 89 at
9.)
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CONCLUSION
Two factors weigh against transfer and two factors weighs in favor of transfer. The
remaining factors are neutral. A motion to transfer venue should be granted only when the
moving party shows that one venue is “clearly more convenient” than another. In re Nintendo
Co., 589 F.3d at 1197; In re Genentech, Inc., 566 F.3d at 1342 (Fed. Cir. 2009). The Court has
considered the evidence as a whole and finds that New Life has not shown that this case should
be transferred to the Southern District of Florida. Defendant New Life Ventures, Inc.’s Motion to
Transfer Venue Pursuant to 28 U.S.C. § 1404(a) (Dkt. No. 16) is DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 25th day of January, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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