Net Navigation Systems, LLC v. Extreme Networks, Inc.

Filing 25

MEMORANDUM ORDER DENYING re 13 Opposed MOTION to Change Venue filed by Extreme Networks, Inc.. Signed by Magistrate Judge Amos L. Mazzant on 10/27/14. (cm, )

United States District Court
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION

NET NAVIGATION SYSTEMS, LLC

§
§
§
§
§

V.
EXTREME NETWORKS, INC.

CASE NO. 4:13-CV-254
Judge Mazzant

MEMORANDUM ORDER DENYING DEFENDANT EXTREME NETWORKS, INC.’S
MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
Pending before the Court is Defendant Extreme Networks, Inc.’s Motion to Transfer
Venue Pursuant to 28 U.S.C. § 1404(a) (Dkt. #13). After considering the motion, the responses,
and the relevant pleadings, the Court finds the motion is denied.
BACKGROUND
Plaintiff Net Navigation Systems, LLC (“Net Navigation”) filed this litigation asserting
that Defendant Extreme Networks, Inc.’s (“Extreme”) Black Diamond X8 and Black Diamond
8000 series of switches and routers infringe U.S. Patent Nos. 6,434,145 (the “‘145 Patent”) and
6,625,122 (the “‘122 Patent”) (Dkt. #1, ¶¶ 12, 17). Net Navigation is a Texas limited liability
company with its headquarters in Round Rock, Texas (Dkt. #15 at 2, Declaration of Brent
Farney, ¶ 2). Extreme is a Delaware corporation headquartered in San Jose, California (Dkt. #13
at 2, Declaration of Richard Graham, ¶ 2).
On April 23, 2014, Net Navigation filed four lawsuits in this district claiming
infringement of the ‘122 and ‘145 Patents.1 Two of these cases have been dismissed, and this
case and one other case involving the same patents remain pending before the undersigned.
Extreme is the only defendant that has moved for a transfer of venue; therefore, the undersigned
1

In addition to the present suit, Net Navigation filed the following actions on April 23, 2014: Net Navigation
Systems, LLC v. Avaya Inc., No. 4:14-cv-252 (E.D. Tex. Apr. 23, 2014); Net Navigation Systems, LLC v. Arista
Networks, Inc., No. 4:14-cv-251 (E.D. Tex. Apr. 23, 2014); and Net Navigation Systems, LLC v. Telefonaktiebolaget
LM Ericsson, No. 4:14-cv-253 (E.D. Tex. Apr. 23, 2014).
1

will be resolving the disputes regarding the patents at issue in at least one suit before it regardless
of whether this litigation is transferred.
In addition, this Court has presided over four previous lawsuit in which Net Navigation
asserted infringement of the ‘122 and ‘145 Patents.2 This Court conducted a Markman hearing
on November 14, 2012, and issued its claim construction order construing the terms of both
patents on December 11, 2012. See Net Navigation Systems, LLC v. Cisco Systems, Inc., No.
4:11-cv-660 (E.D. Tex. Dec. 11, 2012).
On July 29, 2014, Extreme filed its motion to transfer to the Northern District of
California (Dkt. #13). On August 18, 2014, Net Navigation filed its response (Dkt. #15). On
August 29, 2014, Extreme filed its reply (Dkt. #18). On September 8, 2014, Net Navigation filed
its sur-reply (Dkt. #19).
LEGAL STANDARD
Extreme moves to transfer venue to the Northern District of California pursuant to 28
U.S.C. § 1404(a), which permits a district court to transfer any civil case “[f]or the convenience
of parties and witnesses, in the interest of justice...to any other district or division where it might
have been brought.” 28 U.S.C. § 1404(a). “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)). The purpose of 28 U.S.C. §
1404(a) “is to prevent the waste ‘of time, energy and money’ and ‘to protect the litigants,
witnesses and the public against unnecessary inconvenience and expense…’” Van Dusen v.

2

Net Navigation Systems, LLC v. Cisco Systems, Inc., No. 4:11-cv-660 (E.D. Tex. Dec. 11, 2012); Net Navigation
Systems, LLC v. AT&T Inc., No. 4:13-cv-190 (E.D. Tex. Apr. 30, 2013); Net Navigation Systems, LLC v. Huawei
Technologies Co., Ltd., No. 4:11-cv-662 (E.D. Tex. Dec. 11, 2012); and Net Navigation Systems, LLC v. AlcatelLucent, No. 4:11-cv-663 (E.D. Tex. Dec. 11, 2012).
2

Barrack, 376 U.S. 612, 616 (1964). As transfer of venue is not a matter of substantive patent
law, case law from the Court of Appeals for the Fifth Circuit governs this motion. See In re TS
Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).
The threshold inquiry when determining eligibility for transfer is “whether the judicial
district to which transfer is sought would have been a district in which the claim could have been
filed,” or whether all parties have consented to a particular jurisdiction. In re Volkswagen AG,
371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). Once that threshold inquiry is met, the
Fifth Circuit has held that “[t]he determination of ‘convenience’ turns on a number of public and
private interest factors, none of which can be said to be of dispositive weight.” Action Indus.,
Inc. v. U.S. Fid. & Guar. Co., 358 F.3d 337, 340 (5th Cir. 2004). The private interest factors
include (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; (4)
all other practical problems that make trial of a case easy, expeditious and inexpensive. In re
Volkswagen of America, Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc) (“Volkswagen II”).
The public interest factors include (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. Id. These factors are not
exhaustive or exclusive, and no single factor is dispositive. Id.
The party seeking transfer of venue must show good cause for the transfer. Volkswagen
II, 545 F.3d at 315. The moving party must show that the transferee venue is “clearly more
convenient” than the transferor venue. Volkswagen II, 545 F.3d at 315. The plaintiff’s choice of
venue is not a factor in this analysis, but rather contributes to the defendant’s burden to show

3

good cause for the transfer. Volkswagen II, 545 F.3d at 313 & 314 n.10 (“[W]hile a plaintiff has
the privilege of filing his claims in any judicial division appropriate under the general venue
statute, § 1404(a) tempers the effects of the exercise of this privilege.”). However, “when the
transferee venue is not clearly more convenient than the venue chosen by the plaintiff, the
plaintiff’s choice should be respected.” Id. at 315.
ANALYSIS
The first issue that the Court must determine is whether the suit could have been filed
originally in the destination venue. Volkswagen II, 545 F.3d at 312. Net Navigation does not
dispute that the Northern District of California is a proper venue for this case. As this matter is
not in dispute, Extreme meets the threshold inquiry for a transfer of venue analysis.
A.

Public Interest Factors
The Fifth Circuit applies four non-exclusive public interest factors in determining a §

1404(a) venue transfer question – (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 conflicts of law or the application of foreign law.
1. The administrative difficulties flowing from court congestion
In considering this factor, the speed with which a case can come to trial and be resolved
may be a factor. In re Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009) (citing Gates
Learjet Corp v. Jenson, 743 F.2d 1325, 1337 (9th Cir. 1984) (“[T]he real issue is not whether
[transfer] will reduce a court’s congestion but whether a trial may be speedier in another court
because of its less crowded docket.”)). The Federal Circuit has noted that this factor appears to
be the most speculative, and case-disposition statistics may not always tell the whole story. Id.

4

The most recent statistics obtained by this Court for the 12-month period ending in June
30, 2014, indicate that the median time from filing to trial in civil cases in the Eastern District of
Texas was 27.9 months, as compared to 31.0 months in the Northern District of California.3 The
median time from filing to disposition in the Eastern District of Texas was 9.0 months and 8.2
months in the Northern District of California.
This factor weighs against transfer, as this case could be brought to trial more quickly in
the Eastern District of Texas, particularly given this Court’s familiarity with the patents at issue.
2. The local interest in having localized interests decided at home
The second public interest factor is the local interest in having localized interests decided
at home. Volkswagen II, 545 F.3d at 315. “Jury duty is a burden that ought not to be imposed
upon the people of a community which has no relation to the litigation.” Affinity Labs of Texas
v. Samsung Electronics Co., Ltd., 968 F. Supp. 2d 852, 855 (E.D. Tex. 2013) (citing Volkswagen
I, 371 F.3d at 206)). The mere sale of “several” or “some” of the allegedly infringing products in
a given district is not enough to shift this factor in favor of one party. See TS Tech, 551 F.3d at
1321.
Extreme asserts that this factor weighs in favor of transfer because the Northern District
of California is home to Extreme, its documents are located there, and it maintains its
headquarters and many of its employees there. Further, the accused products were designed and
developed in the Northern District of California, by employees that still reside there. Net
Navigation contends that this factor is neutral, as both districts have an interest in deciding this
dispute. Net Navigation argues that local interest in the context of patent litigation is generally
neutral, given that federal law governs the patent claims and is applied neutrally in all
3

 See Federal Court Management Statistics, June 2014,
www.uscourts.gov/Statistics/FederalCourtManagementStatistics/district-courts-june-2014.aspx, accessed October
21, 2014.
5

jurisdictions. Further, Net Navigation contends that the presence of Ericsson AB headquarters in
Plano, Texas, gives this jurisdiction a local interest in this dispute. Net Navigation asserts that
Ericsson AB is one of Extreme’s “major customers accounting for 10% or more of [Extreme’s]
net revenue” (Dkt. #15 at 13 (citing Ex. B at 7, C-G)).
The Court agrees that this factor weighs in favor of transfer. The Northern District of
California is home to Extreme, the location where some of its employees are located, and it is
where the accused products were developed.
3. The familiarity of the forum with the law that will govern the case
The parties do not dispute that both courts are familiar with the relevant law.
Accordingly, the Court agrees with the parties that this factor is neutral.
4. The avoidance of unnecessary problems in conflict of laws
As this is a patent case arising under federal law, there are no issues relating to conflict of
laws. The court agrees with the parties that this factor is neutral.
B. The Private Interest Factors
The Fifth Circuit also considers four non-exclusive “private” factors – (1) the relative
ease of access to sources of proof; (2) the availability of compulsory process to secure the
attendance of willing witnesses; (3) the cost of attendance for willing witnesses; and (4) all other
practical problems that make a trial easy, expeditious, and inexpensive. Volkswagen II, 545 F.3d
at 315.
1. The relative ease of access to sources of proof
The first private interest factor is the relative ease of access to the sources of proof.
Volkswagen I, 371 F.3d at 203. “The Fifth Circuit has cautioned this factor remains relevant
despite technological advances having made electronic document production commonplace.”

6

DataQuill, Ltd. v. Apple Inc., No. A-13-CA-706-SS, 2014 WL 2722201, at *3 (W.D. Tex. June
13, 2014) (citing Volkswagen II, 545 F.3d at 316)). “The Federal Circuit has observed that ‘[i]n
patent infringement cases, the bulk of the relevant evidence usually comes from the accused
infringer,’ and therefore the location of the defendant’s documents tends to be the more
convenient venue.’” Id. (citing Genentech, 566 F.3d at 1345). It is presumed that the bulk of the
discovery material related to a corporate party is located in that party’s corporate headquarters.
In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010).
Extreme contends that the bulk of its relevant documents, including technical, sales,
marketing, and financial documents are “located in or otherwise available in its San Jose
headquarters” (Dkt. #13 at 5). Net Navigation contends that the bulk of its documents are
located in Round Rock, Texas, or in Georgetown, Texas (Dkt. #15 at 8). Net Navigation asserts
that because Extreme admits that its documents are either located in the Northern District of
California, or otherwise available there, that indicates that Extreme will suffer no hardship in
transporting its documents to Sherman, Texas, for this litigation.
The Court agrees with Extreme that the bulk of relevant documents are located in the
Northern District of California. However, given the fact that some documents will have to be
transported to the Northern District of California, and that relevant documents also exist in
Texas, the Court finds this factor weighs only slightly in favor of transfer.
2. The availability of compulsory process to secure the attendance of witnesses
The second private interest factor is the availability of compulsory process to secure the
attendance of witnesses. Volkswagen I, 371 F.3d at 203. A court cannot compel nonparty
witnesses to travel more than 100 miles, unless it is within the same state and will not cause the
witnesses to incur substantial travel expenses. FED. R. CIV. P. 45(c)(3)(A)(ii), 45(c)(3)(B)(iii).

7

Extreme argues that the Northern District of California has subpoena power over the sole
living inventor on the ‘145 Patent, the two prosecuting attorneys on the patents-in-suit, the
former Extreme employees who are knowledgeable about the original design and development of
the accused products, and certain Broadcom employees who have information relating to the
chip sets and processors used by Extreme in the accused products that is not otherwise available
to Extreme.
Net Navigation contends that Extreme’s argument fails because it has not identified any
witness that would refuse to testify in the Eastern District of Texas, and that Net Navigation
failed to identify any witnesses of Broadcom that are specifically located in the Northern District
of California. Net Navigation identifies one likely expert witness within the subpoena power of
this Court, as well as its manager who is located in Texas.
Extreme identifies five current employees, two former employees, one inventor, and two
patent prosecution attorneys who are the most likely witnesses, and who all work or reside in the
Northern District of California. There are two witnesses identified by Net Navigation subject to
the subpoena power of the Eastern District of Texas. This factor weighs in favor of transfer.
3. The cost of attendance for willing witnesses
The third private interest factor is the cost of attendance for willing witnesses.
Volkswagen I, 371 F.3d at 203. In Volkswagen II, the Fifth Circuit noted that “[a]dditional
distance means additional travel time; additional travel time increases the probability for meal
and lodging expenses; and additional travel time with overnight stays increases the time in which
these fact witnesses must be away from their regular employment.” Volkswagen II, 545 F.3d at
317. The Fifth Circuit established the “100-mile” rule to determine the convenience of the
transferee district to the witnesses and parties. “When the distance between an existing venue for

8

trial of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of the
convenience to witnesses increases in direct relationship to the additional distance to be
traveled.” Volkswagen I, 371 F.3d at 204-05. The “100-mile” rule applies because the Northern
District of California is more than 100 miles from Sherman, Texas. See id. When inconvenience
would exist in either potential venue, merely shifting inconvenience from one party’s witnesses
to the other is insufficient to affect a transfer of venue analysis. In re Google Inc., 412 F. App’x
295, 296 (Fed. Cir. 2011).
As stated above, Extreme identifies five current employees, two former employees, one
inventor, and two patent prosecution attorneys who are their most likely witnesses, and who all
work or reside in the Northern District of California. Net Navigation identified one likely expert
witness within 100 miles of this Court, and its manager who is located in Round Rock, Texas
and will likely testify. Its remaining witnesses are in diverse locations, such as Missouri and
Pennsylvania, which Net Navigation asserts is substantially closer to the Eastern District of
Texas than the Northern District of California.
Transferring this action from the Eastern District of Texas to the Northern District of
California would increase the distance that Net Navigation’s witnesses must travel by
approximately twelve hundred miles. Denying Extreme’s motion would require its witnesses in
California to travel about fifteen hundred miles. Extreme has only demonstrated to this Court
that granting its motion would serve to transfer the inconvenience from Extreme’s witnesses to
Net Navigation’s witnesses. That is insufficient to shift this factor in favor of the transferee
venue. This factor is neutral.

9

4. All other practical problems that make trial easy, expeditious, and inexpensive
All of the public and private interest factors are part of a transfer of venue analysis, but
“judicial economy can be a ‘paramount consideration.’” In re Vistaprint, 628 F.3d 1342, 1347
(Fed. Cir. 2010) (quoting In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009)).
While previous litigation is not dispositive, familiarity with the patents-in-suit gained through
conducting claim construction can weigh heavily in favor of maintaining the action in that court.
See id. at 1344, 1347 n.3.
This Court has extensive prior experience with the patents-in-suit, especially given the
fact that the undersigned conducted a Markman hearing and issued a claim construction order
regarding the patents-in-suit.

Given the complexity of the technology involved, the Court

appointed, and consulted with, a technical advisor in the prior cases who examined the patentsin-suit and helped the Court understand the technical background of the patents. Further, there is
another case currently pending before the undersigned that has not moved for transfer, and will
remain before the undersigned for all pre-trial matters. As of the current date, a scheduling order
has been entered in both cases setting the claim construction briefing schedule and hearing date
for the same dates. Separating these two cases would require two separate courts to decide many
of the same issues, many of which have previously been considered by this Court, which is a
waste of judicial resources and could lead to inconsistent results. In short, the Court finds that its
experience gained in the prior litigation, coupled with the fact that there is another pending case
proceeding on the same schedule regarding the same patents-in-suit, weighs heavily against
transfer. See Lonestar Inventions L.P. v. Sony Elecs. Inc., No. 6:10-cv-588, 2011 WL 3880550,
at *4 (E.D. Tex. Aug. 29, 2011) (“The parties and the judiciary would benefit from the Court’s
familiarity with the patent-in-suit, which would require a substantial investment of time, energy

10

and money to replicate. Accordingly, gains in judicial economy derived from the Court’s prior
experience with the patent-in-suit weighs against transfer.”) (quoting ColorQuick, LLC v.
Vistaprint Ltd., No. 6:09-cv-323, 2010 WL 5136050, at *7 (E.D. Tex. Jul. 22, 2010), aff’d 628
F.3d 1342 (Fed. Cir. 2010)). Transfer would result in duplicative and repetitive efforts in
multiple courts, increasing the burden of time, resources, and money on the judicial system and
the parties. See ColorQuick, 2010 WL 5136050, at *7-8 (“[T]he Court should not ‘permit a
situation in which two cases involving precisely the same issues are simultaneously pending in
different District Courts leads to the wastefulness of time, energy and money that § 1404(a) was
designed to prevent.’”) (quoting Continental Grain Co. v. The FBL-585, 364 U.S. 19, 26 (1960)).
This factor weighs heavily against transfer.
CONCLUSION
Public interest factor 1 – the administrative difficulties flowing from court congestion –
weighs against transfer, public interest factor 2 – the local interest in having the case tried in
Michigan – weighs in favor of transfer, while the remaining public interest factors are neutral.
Private interest factor 1 and 2 – the ease of access to sources of proof and availability of
compulsory process – weigh slightly in favor or in favor of transfer, and factor 3 – the cost of
attendance for willing witnesses – is neutral. Private interest factor 4 – all other practical
problems that make trial of a case easy, expeditious, and inexpensive – weighs heavily against
transfer.
Extreme has not met its burden to demonstrate that the Northern District of California is a
“clearly more convenient” forum than the Eastern District of Texas. The factors that favor
transfer include the local interest of the Northern District of California as the “home” of
Extreme; the access to sources of proof that are generally available there or that can be made

11

available there; and the availability of compulsory process of witnesses. Heavily outweighing
these factors is the fact that this Court has extensive experience with these same patents,
including a Markman hearing and claim construction order, and it is much more efficient to
conduct the two co-pending trials of these patents-in-suit in one forum. Further, the Eastern
District of Texas can bring the case to trial faster than the Northern District of California, and the
remaining factors are neutral. Thus, the Court finds that the judicial economy vastly outweighs
the factors favoring transfer, and Extreme has not met its burden to demonstrate that the

.

Northern District of California is “clearly more convenient.” This case should remain in the
Eastern District of Texas.
Accordingly, it is ORDERED that Defendant Extreme Networks, Inc.’s Motion to
Transfer Venue Pursuant to 28 U.S.C. § 1404(a) (Dkt. #13) is DENIED.

SIGNED this 27th day of October, 2014.

___________________________________
AMOS L. MAZZANT
UNITED STATES MAGISTRATE JUDGE

12