Acoustic Technology, Inc. v. Silver Springs Networks, Inc.

Filing 69

MEMORANDUM OPINION AND ORDER granting 32 MOTION to Change Venue filed by Silver Springs Networks, Inc. At the conclusion of twenty days from the entry of this Order, the clerk shall TRANSFER the case to the United States District Court for the Northern District of California. Docket control order is VACATED. Signed by Magistrate Judge Roy S. Payne on 3/25/2017. (slo, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ACOUSTIC TECHNOLOGY, INC.,

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§ Case No. 2:16-CV-00831-JRG-RSP
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§

v.
SILVER SPRING NETWORKS, INC.,

MEMORANDUM OPINION AND ORDER
Acoustic Technology, Inc. (“ATI”) accuses Silver Spring Networks, Inc. (“Silver Spring”)
of infringing United States Patent Nos. 5,986,574 and 6,509,841, both of which generally relate to
automated technology for reading utility meters. See Am. Compl. ¶¶ 13-20, ECF No. 49. Silver
Spring moves to change venue to the United States District Court for the Northern District of
California under 28 U.S.C. § 1404(a). Def.’s Venue Mot., ECF No. 32. For the following reasons,
Silver Spring’s motion is GRANTED.
BACKGROUND
ATI is a Massachusetts corporation headquartered in East Boston, Massachusetts.
Bassiouni Decl. ¶ 3, February 2, 2017, ECF No. 48-1. ATI does not have employees or a place of
business in Texas, other than a registered agent for service of process in Dallas, Texas. See Collins
Decl. ¶ 8, Sept. 29, 2016, ECF No. 32-2. ATI does, however, market, sell, and maintain emergency
notification warning systems in Texas and within the Eastern District of Texas. Bassiouni Decl.
¶¶ 5-6. As a result, ATI has generated sales and paid Texas franchise taxes. Id. ¶ 8. ATI does not
do business in California. Id. ¶ 10.
Silver Spring is a Delaware corporation that has been headquartered in Northern California
since 2003, first in Redwood City, California and more recently in San Jose, California.
Dresselhuys Decl. ¶ 3, Nov. 3, 2016, ECF No. 32-1. Members of Silver Spring’s leadership team
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and employees with technical knowledge of Silver Spring’s products live and work in Northern
California, with the exception of one Vice President who lives and works from his home in
Fairhope, Alabama. Id. ¶¶ 4-12. Silver Spring maintains product records and unreleased prototypes
at its headquarters in San Jose. Id. ¶ 14. Aside from one Silver Spring field employee who works
one day per week from his home in Lewisville, Texas, Silver Spring does not have any employees,
documents, assets, or offices in the district. Id. ¶ 17. Silver Spring’s only physical presence in
Texas is a facility in San Antonio and the 37 employees that work there. Def.’s Interrog. Resp. 6,
ECF No. 48-11.
DISCUSSION
A district court can transfer a case to another district where the case might have been
brought for “the convenience of parties and witnesses” and “in the interests of justice.” 28 U.S.C.
§ 1404(a). Transfer of a case serves the interests of justice if the party seeking a change of venue
shows the transferee district to be “clearly more convenient” than the transferor district. In re
Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (“Volkswagen II”). Public and private
interest factors guide the analysis. In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004)
(“Volkswagen I”). The private factors include:
(1) ease of access to evidence (“sources of proof”);
(2) subpoena power over potential witnesses;
(3) cost of attendance for willing witnesses; and
(4) other practical problems.
Volkswagen II, 545 F.3d at 315. The public factors include:
(1) administrative difficulties flowing from court congestion;
(2) 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.

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Volkswagen I, 371 F.3d at 203. To meet the burden of showing that the Northern District of
California is clearly more convenient, Silver Spring must show that these private and public
interest factors on balance weigh in favor of transfer. See id.
Before assessing the relevant factors, the threshold question is whether the case could have
been brought in the transferee district. Volkswagen II, 545 F.3d at 312. “Any civil action for patent
infringement may be brought in the judicial district where the defendant resides.” 28 U.S.C.
§ 1400(b); see also 28 U.S.C. §§ 1391(b)-(c) (venue is proper where defendants reside, and a
corporate defendant is “deemed to reside in any judicial district in which it is subject to personal
jurisdiction”). Because Silver Spring is headquartered in the Northern District of California, ATI’s
patent infringement action could have been brought there. ATI does not contend otherwise.
Turning to the relevant factors, Silver Spring contends that “[v]irtually all of Silver
Spring’s documentary evidence that is potentially relevant to this litigation is located at Silver
Spring’s corporate headquarters in San Jose, California.” Def.’s Venue Mot. 8, ECF No. 32. Such
evidence includes (1) documents related to the design and development of Silver Spring products,
(2) physical prototypes, and (3) documents related to the sales, licensing, and marketing of Silver
Spring products. Id. (citing Dresselhuys Decl. ¶ 14, ECF No. 32-1). In addition, Silver Spring
highlights that all of its potential (non-expert) witnesses live and work in Northern California. Id.
The Court agrees that Silver Spring’s evidence and witnesses support transfer. Relevant
evidence in patent cases often comes from the accused infringer. In re Genentech, Inc., 566 F.3d
1338, 1345 (Fed. Cir. 2009). Thus, the place where the defendant’s documents are kept weighs in
favor of transfer to that location. Id. Aside from Silver Spring’s documents, Silver Spring witnesses
are all located in Northern California, and access to those witnesses will be more convenient from
the transferee district.

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ATI downplays the significance of Silver Spring’s physical evidence. ATI argues, for
example, that Silver Spring can just as conveniently access its documents from Texas as it can
from California, and that Silver Spring’s document production has thus far not been hampered,
despite the fact that the case has been pending in this district. ATI Resp. Br. 8-9, ECF No. 48.
ATI’s arguments are based in part on one of Silver Spring’s Interrogatory answers, in which Silver
Spring stated that “from a purely technical standpoint, Silver Spring’s electronically stored data
can be accessed by Silver Spring employees with appropriate credentials using a Virtual Private
Network over the internet, from either San Antonio, San Jose, or San Francisco.” Def.’s Interrog.
Resp. 7-8, ECF No. 48-11.
While ATI’s arguments are not illogical, precedent largely forecloses them. Aside from
Silver Spring’s potential prototype exhibits, the physical location of documents should perhaps not
significantly affect the Court’s transfer analysis in the modern technological age. See, e.g.,
Mohamed v. Mazda Motor Corp., 90 F.Supp.2d 757, 778 (E.D. Tex. 2000). This rationale has
nevertheless been rejected by both the Fifth and Federal Circuits. “That access to some sources of
proof presents a lesser inconvenience now than it might have absent recent developments does not
render [the sources of proof] factor superfluous.” Volkswagen II, 545 F.3d at 316. Similarly, the
Federal Circuit has suggested that—notwithstanding where or how documents are produced during
discovery—the expense of transporting documents to trial is one that cannot be ignored. See In re
Genentech, Inc., 566 F.3d 1338, 1346 (Fed. Cir. 2009) (“Keeping this case in the Eastern District
of Texas will impose a significant and unnecessary burden on the petitioners to transport
documents that would not be incurred if the case were to proceed in the Northern District of
California.”).

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ATI similarly downplays the significance of Silver Spring’s witnesses. According to ATI,
Silver Spring’s corporate representative admitted during deposition that members of Silver
Spring’s leadership team would not likely testify at trial. ATI Resp. Br. 9-10, ECF No. 48 (citing
Dresselhuys Dep. 59:23-63:5). While a district court should assess the “relevance and materiality
of the information the witness may provide,” however, it is not necessary for a party “to show that
the potential witness has more than relevant and material information.” In re Genentech, 566 F.3d
at 1343. Silver Spring’s leadership and technical employees undoubtedly have relevant and
material information. Even if all members of Silver Spring’s team do not testify at trial, the
transferee district will at least be more convenient for those that do testify.
ATI adds little to counterbalance the locus of Silver Spring’s evidence and witnesses. ATI
contends that Silver Spring’s San Antonio employees have knowledge of the accused system, and
thus this district would be more convenient for those employees. ATI Resp. Br. 10-11, ECF No.
48. Testimony from Silver Spring’s Executive Vice President, Mr. Dresselhuys, however, rebuts
this contention. Mr. Dresselhuys testified at the hearing that Silver Spring’s San Antonio office is
simply a satellite office. The San Antonio office maintains only payroll and expense related
documents, the office is not involved with the development or deployment of the accused
automatic meter reading technology, and there are no physical documents or evidence related to
the accused technology in the San Antonio office.
ATI highlights that Silver Spring executed a contract in 2016 to install a system that
allegedly uses the accused technology in several counties in the Eastern District of Texas. ATI
Resp. Br. 3-4, ECF No. 48 (citing Dresselhuys Dep. 70:2-9, 78:14-17; 80:23-81:15). According to
ATI, “[t]he progress of the [ ] contract will accordingly be a key issue in this case.” Id. at 11. ATI’s
argument, however, is not supported by the record. As Silver Spring points out, the contract has

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not secured regulatory approval yet, and even if the contract is approved, Silver Spring’s
technology would not be deployed in or near this district until both asserted patents have expired.
See Dresselhuys Decl. 76:8-25; 87:4-17, Jan. 25, 2017, ECF No. 50-2; see also Adaptix, Inc. v.
HTC Corp., 937 F. Supp. 2d 867, 876-77 (E.D. Tex. 2013) (Transfer motions “are to be decided
based on the situation which existed when suit was instituted.”).
The relative convenience of and subpoena power over non-party witnesses does not
meaningfully affect the considerations supporting transfer. Although the parties dispute the
significance of non-party witnesses and whether such witnesses will be necessary, Silver Spring
suggests that if its utility customers’ deployment of the accused technology becomes an issue, one
of its largest utility customers is located in Northern California. Dresselhuys Decl. ¶ 16, ECF No.
32-1. Trial for such non-party witnesses would therefore be more convenient in the Northern
District of California. Subpoena power over these witnesses could also be a consideration. See
Fed. R. Civ. P. 45(a)(2), 45(c)(1).
For its part, ATI highlights a non-party inventor of one of the asserted patents who lives in
Philadelphia, Pennsylvania, and other inventors who are believed to live near Philadelphia. See
ATI Resp. Br. 12-13. Although there is no evidence of the relative inconvenience these non-party
inventors would face if forced to attend trial in the Northern District of California, the Court at
least credits ATI with the existence of these potential non-party witnesses and their location under
the Fifth Circuit’s “100-mile” rule. See Volkswagen I, 371 F.3d at 204-05 (“When the distance
between an existing venue for trial of a matter and a proposed venue under § 1404(a) is more than
100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional
distance to be traveled.”). The non-party inventors, however, are not enough to shift the balance
in favor of keeping the case in this district.

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The public interest factors do not significantly affect the balance of factors supporting
transfer. ATI contends that local interest weighs against transfer because Silver Spring has signed
a contract to deploy products within several counties in the district. ATI Resp. Br. 14-15, ECF No.
48. Even if the presence of Silver Spring products would give rise to local interest in a patent case
in this district, however, the contract that will potentially implicate the district has not yet been
approved much less resulted in the deployment of any products or services in the district. See
Dresselhuys Decl. 76:8-25; 87:4-17, ECF No. 50-2. The local interest in Northern California is
less contingent, to the extent it exists. See In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1336
(Fed. Cir. 2009); see also TriStrata Tech., Inc. v. Emulgen Labs., Inc., 537 F. Supp. 2d 635, 643
(D. Del. 2008) (local interest in patent actions generally a fiction). Finally, ATI suggests that
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“comparative court congestion weighs against transfer,” ATI Resp. Br. 14-15, ECF No. 48, but
there is little evidence to support this argument.
CONCLUSION
In light of the foregoing, the Court concludes that Silver Spring has shown the Northern
District of California to be the clearly more convenient venue. Accordingly, Silver Springs’ motion
to change venue, ECF No. 32, is GRANTED. At the conclusion of twenty days from the entry of
this Order, the clerk shall TRANSFER the case to the United States District Court for the Northern
District of California. In light of the pending transfer, the docket control order is VACATED.
SIGNED this 3rd day of January, 2012.
SIGNED this 25th day of March, 2017.

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ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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