Realtime Data LLC v. Fujitsu America, Inc. et al

Filing 42

MEMORANDUM OPINION AND ORDER GRANTING 33 Joint MOTION to Change Venue / Defendants Quantum Corporation and Fujitsu America, Inc.'s Motion to Transfer this Case to the Northern District of California Pursuant to 28 U.S.C. § 1404(A) filed by Quantum Corporation. Signed by Magistrate Judge John D. Love on 2/27/17. (mjc, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
REALTIME DATA, LLC,
Plaintiff,

v.
FUJITSU AMERICA, INC. and
QUANTUM CORPORATION,

Defendants.

§
§
§
§
§
§
§
§
§
§
§
§
§

CIVIL ACTION NO. 6:16-CV-01035
RWS-JDL

JURY TRIAL DEMANDED

MEMORANDUM OPINION AND ORDER
Before the Court is Defendant Quantum Corporation (“Quantum”) and Fujitsu America,
Inc.’s (“FAI”) Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404. (Doc. No. 33.) Plaintiff
Realtime Data LLC (“Realtime”) has filed an Opposition (Doc. No. 39), Defendants have filed a
Reply (Doc. No. 40), and Realtime has filed a Sur-Reply (Doc. No. 41).
After consideration of the parties’ arguments and for the reasons stated herein, the Court
GRANTS Defendants’ Motion to Transfer Venue. (Doc. No. 33.)
I.

BACKGROUND
On July 21, 2016, Realtime sued Defendants for patent infringement. (Doc. No. 1.)

Earlier that year, in February and June of 2016, Realtime filed four other cases also alleging
infringement of a number of overlapping patents. See Realtime Data LLC v. Hewlett Packard
Enterprise Co., No. 6:16-cv-86 (E.D. Tex. Feb. 26, 2016); Realtime Data LLC v. Savvis
Comm’ns Corp., No. 6:16-cv-87 (E.D. Tex. Feb. 26, 2016); Realtime Data LLC v. Dell, Inc., No.
6:16-cv-00089 (E.D. Tex. Feb. 26, 2016); Realtime Data LLC v. Rackspace US, Inc., No. 6:161

cv-00961 (E.D. Tex. Jun. 29, 2016). Each of these matters was also assigned to Judge Schroeder
and referred to the undersigned.
In its Complaint, Realtime alleges that Defendants have entered into a “commercial
partnership” where Quantum supplies its DXi deduplication software technology to FAI for
incorporation into FAI’s products, including FAI’s ETERNUS CS800 product. (Id. at ¶ 4.) In
its Answer to the Complaint, FAI denies that it has a commercial partnership with Quantum, but
admits that its ETERNUS CS800 product uses Quantum’s DXi deduplication software. (Doc.
No. 24, ¶4.) In Quantum’s Answer, Quantum admits “that it has licensed one or more versions
of Quantum DXi software to [FAI]” and denies Realtime’s remaining allegations. (Doc. No. 28,
¶4.)
Realtime is a New York limited liability company with its principal place of business
located at 116 Croton Lake Road, Katonah, New York 10536. (Doc. No. 1, ¶ 1.) Realtime also
maintains offices in Tyler, Texas and Plano, Texas, where Realtime purports to keep
substantially all of its documents relevant to this case. (Id.; Doc. No.39-2 (“Tashjian Decl.”), ¶
5.) Realtime asserts that one of its relevant witnesses is located in this District and four are
located in the state of New York. (Tashjian Decl., ¶¶7, 9.)
Quantum is a Delaware Corporation with its principal place of business located in San
Jose, California. (Doc. No. 1, ¶3; Doc. No. 28, ¶3.) Quantum asserts that “[s]ubstantial portions
of the technology accused of infringement in this case were developed in San Jose.” (Doc. No.
34, (“Mintz Decl.”), ¶2.)

Specifically, Quantum asserts that the “research, design and

development activities for the accused products in this litigation are split between San Jose,
California; Irvine, California; and Adelaide, Australia.” (Id. at 4.) Quantum also asserts that its
marketing and sales activities are “primarily directed” from San Jose, California. (Id.) Quantum

2

asserts that it has five potential witnesses located in San Jose, three in Irvine, and two in
Australia. (Id. at ¶¶5-8.) It also asserts that it has three former employees with relevant
knowledge who work for competitors in the Bay Area. (Id. at ¶¶5, 10.) Quantum states that
source code production for this litigation will likely need to be facilitated by one of its engineers
located in Irvine, California. (Id. at ¶9.)
FAI is a California Corporation with its principal place of business located in Sunnyvale,
California. (Doc. No. 24, ¶2.) FAI asserts that the majority of the design, manufacturing, and
testing of FAI’s accused products occurs outside of the United States, but FAI maintains an
engineering department in Sunnyvale, California to address customer requests and “because the
United States is an important market.” (Doc. No. 33-15 (“Owens Decl.”), ¶3.) FAI further
asserts that the finance and marketing of the ETERNUS products are directed from Sunnyvale,
California and that documents related to those efforts are maintained in Sunnyvale. (Doc. No.
33-16 (“Lam Decl.”), ¶¶3, 6; Doc. No. 33-14 (“Kalra Decl.”), ¶5, 6.) FAI does not specifically
identify any witnesses with relevant information. However, two of its four declarants, each of
whom is located in Sunnyvale, California, state that to the extent their knowledge of the
ETERNUS products is relevant, they would be willing to testify. (Kalra Decl., ¶8; Owens Decl.,
¶8.)
In their Motion, Defendants state that FAI’s accused ETERNUS products that are sold in
the U.S. either do not include deduplication technology or use Quantum’s deduplication
technology. (Doc. No. 33, at 2; see also Doc. No. 35-1 (“Valiante Decl.”), ¶7; Owens Decl., ¶7.)
Defendants also note that the “substantive infringement allegations in the Complaint are directed
to Quantum’s data deduplication functionality.” (Doc. No. 33, at 2 (citing Doc. No. 1, ¶¶11-55).)
Thus, according to Defendants, “this case is really about Quantum’s data deduplication

3

technology and the location of Quantum’s documents and witnesses should be given more
weight in the transfer analysis than FAI’s.” (Id. at 2.)

II.

APPLICABLE LAW
Section 1404(a) provides that “[f]or the convenience of the 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 goals of § 1404(a) are to prevent
waste of time, energy, and money, and also to protect litigants, witnesses, and the public against
unnecessary inconvenience and expense. Van Dusen v. Barrack, 376 U.S. 612, 616 (1964).
Ultimately it is within a district court’s sound discretion to transfer venue pursuant to 28 U.S.C.
§ 1404(a), but the court must exercise its discretion in light of the particular circumstances of the
case. Hanby v. Shell Oil Co., 144 F. Supp. 2d 673, 676 (E.D. Tex. 2001); Mohamed v. Mazda
Corp., 90 F. Supp. 2d 757, 768 (E.D. Tex. 2000). The party seeking transfer must show good
cause for the transfer. In re Volkswagen of America, Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en
banc) (“Volkswagen II”).

To show good cause, the moving party must demonstrate the

transferee venue is clearly more convenient. Id.
When deciding whether to transfer venue, a district court balances the private interests of
the parties and the public interests in the fair and efficient administration of justice. The private
interest factors the court considers 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 AG, 371 F.3d 201, 203 (5th Cir. 2004)
(“Volkswagen I”). The public interest factors are: (1) the administrative difficulties flowing from

4

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 laws or in the application of foreign law. Id.
III.

DISCUSSION
Realtime does not dispute that venue would be proper in the Northern District of

California. The Court thus proceeds to analyze the private and public interest factors under
§1404(a).
A.

Private Interest Factors
1.

The relative ease of access to sources of proof

As Defendants note, this factor remains a part of the transfer analysis despite
technological advances that have lightened the inconvenience of transporting large amounts of
documents. Volkswagen II, 545 F.3d at 316. Courts analyze this factor in light of the distance
evidence must be transported from its existing location to the trial venue. See id. The accused
patent infringer is presumed to have the greater volume of documents relevant to the litigation
such that more weight is placed on the location of the accused infringer’s documents. See, e.g.,
in re Nintendo Co., Ltd., 589 F.3d 1194, 1199 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d
1338, 1345 (Fed. Cir. 2009); Volkswagen II, 545 F.3d at 314-15. Documents that have been
moved to a particular venue in anticipation of litigation are not considered in this analysis. In re
Hoffman-La Roche Inc., 587 F.3d 1333, 1336-37 (Fed. Cir. 2009).
To meet its burden under this factor, Defendants must identify their sources of proof with
some specificity such that the Court may determine whether transfer to a particular district will
increase the convenience of the parties. J2 Global Comm’ns, Inc. v. Proctus IP Solutions, Inc.,
No. 6:08-cv-211, 2009 WL 440525, at *2 (E.D. Tex. Feb. 20, 2009); see also Invitrogen v. Gen.

5

Elec. Co., No. 6:08-cv-113, 2009 WL 331889, at *3 (E.D. Tex. Feb. 9, 2009) (finding that
general statements that relevant documents were located in either England or New Jersey “fail to
show that transfer would make access to sources of proof either more or less convenient for the
parties.”)
Realtime does not dispute Defendants’ contention that Quantum’s deduplication
technology is the main focus of Realtime’s case, and thus Quantum’s documents and witnesses
should be given more weight. (See Doc. No. 33, at 2.) In its declaration, Quantum states that the
research, design, and development of the accused products are split between San Jose,
California; Irvine, California; and Adelaide, Australia and relevant documents “concerning these
aspects of the accused products will largely be found in these respective offices.” (Mintz Decl.,
¶4.) Quantum further states that its marketing and sales activities are directed from San Jose,
California and thus relevant documents will “largely be found” in that office. (Id.) Quantum
states that “[i]f the production of source code becomes necessary in this action, it is likely that
one of the engineers who work in Irvine, California will be needed to assist with the process of
selecting the source code and making it available for production in a secure, reviewable format.”
(Id. at ¶9.) Quantum states that it would be more convenient to have a source code inspection
take place in San Jose than in this District because its Irvine employee “would be able to conduct
business in the San Jose office in conjunction with the litigation-related trip.” (Id.)
FAI has submitted four declarations in support of Defendants’ Motion. Mr. Kalra, FAI’s
Vice President of Finance and Corporate Controller, states that the financial system of record for
the accused products is located in Sunnyvale, California. (Kalra Decl., ¶6.) In addition, Mr.
Kalra states that his team “maintains some hard copy documents, also located in Sunnyvale,
California.” (Id.) Mr. Owens, FAI’s Senior Director of Engineering for Enterprise Products and

6

Solutions, states that the design, manufacturing and testing of the ETERNUS products is
performed outside the United States.

(Owens Decl., ¶3.)

Mr. Owens states that FAI’s

engineering department in the United States “maintains some electronic and hard copy
documents relating to the ETERNUS line of storage systems. These documents are located in
Sunnyvale.” (Id. at ¶6.) Mr. Lam, Vice President of Enterprise Business and Strategy for Fujitsu
Technology and Business of America, states that information relating to FAI’s U.S. marketing
“is contained in computer databases that reside in our multi-building campus in Sunnyvale.”
(Lam Decl., ¶6.) Mr. Lam states that his team also maintains hard copy documents relating to
marketing of the accused products in Sunnyvale. (Id.) Mr. Lam notes that he also oversees field
System Engineers, two of whom are based in Texas, but “[e]xcept for the personal records that
might be maintained by the two field System Engineers based in Texas,” marketing documents
relating to the field teams’ work are “maintained” in Sunnyvale. (Id. at ¶¶7-8.) Mr. Valiante,
FAI’s Vice President of Sales and Channels, likewise states that “much of FAI’s information
relating to U.S. sales is contained in computer databases which reside in our multi-building
campus in Sunnyvale.” (Valiante Decl., ¶6.) Mr. Valiante states that FAI also maintains hard
copy documents relating to sales in Sunnyvale. (Id.) Mr. Valiante oversees two sales persons
located in this District but states that “[e]xcept for the personal records that might be maintained
by the two sales persons based in the Eastern District of Texas, [sales] documents are not located
in the Eastern District of Texas.” (Id.)
Realtime emphasizes that all of its relevant documents are housed in this district.
(Tashjian Decl., ¶5.) Realtime argues that Defendants’ electronic documents minimize any
inconvenience on the parties to transport documents to this District. (Doc. No. 39, at 6.)
Realtime also argues that FAI has not clearly identified its documents and also “clearly has at

7

least some relevant documents in Texas.” (Id. at 7.) Realtime argues that many of Quantum’s
sources of proof are located outside of the Northern District of California in either Irvine or
Australia. (Id.) Realtime further notes that “there is no requirement that source code production
must occur physically in the district where this case is pending” and is thus irrelevant to the
analysis. (Id. at 7-8.)
Although Realtime’s relevant documents and evidence are housed in this district, the
location of Realtime’s documents and witnesses is afforded less weight than the location of
Defendants’ documents and witnesses. See Genentech, 566 F.3d at 1345 (“[T]he bulk of the
relevant evidence usually comes from the accused infringer.”) On the other hand, Quantum has
indicated that many of its relevant categories of documents are housed in San Jose or Irvine,
California. Likewise, FAI has indicated that to the extent it has documents located in the United
States, almost all of its relevant documents are located in Sunnyvale. The fact that some of
Defendants’ sources of proof are located in Australia or elsewhere overseas does not weigh
heavily in the Court’s analysis because that evidence will need to be transported regardless of
whether the case is transferred or remains in this district. Id. at 1346. Meanwhile, the burden of
transporting documents from Quantum’s Irvine office would be significantly lighter than would
be if the case were to proceed in this district. This factor weighs in favor of transfer.
2.

The availability of compulsory process

This factor will weigh more heavily in favor of transfer when more third-party witnesses
reside within the transferee venue. See Volkswagen II, 545 F.3d at 316. The Court gives more
weight to specifically-identified witnesses and affords less weight to vague assertions that
witnesses are likely located in a particular forum. See Novelpoint Learning v. Leapfrog Enter.,

8

No. 6:10-cv-229, 2010 WL 5068146, at *6 (E.D. Tex. Dec. 6, 2010); West Coast Trends, Inc. v.
Ogio Int’l, Inc., No. 6:10-cv-688, 2011 WL 5117850, at *3 (E.D. Tex. Oct. 27, 2011).
Quantum identifies three former employee witnesses who reside in the Northern District
of California: Mr. Jeffrey Tofano, Quantum’s former Chief Technology Officer; Mr. Brian
DeForest, a former Quantum engineering manager; and Mr. Jim Kahn, a former Quantum
software engineer. (Mintz Decl., ¶¶10-11.) Quantum states that Mr. Tofano led Quantum’s
advanced development team for five years and was responsible for the development of
Quantum’s accused product. (Id. at ¶10.) Meanwhile, Mr. DeForest and Mr. Kahn worked on
the development of the accused product from 2011 through 2014 and “may have information
concerning the accused instrumentalities’ functionality during that time that current employees
may not possess.” (Id. at ¶11.) Quantum notes that each of these individuals is now employed
by a Quantum competitor and thus Quantum believes that they would not “voluntarily appear at
the trial in this matter, especially if trial is held in a remote location.”

(Id. at ¶¶10-11.)

Defendants also identify several authors of prior art patents and publications who reside in the
San Francisco Bay Area. (Doc. No. 33, Exs. A-L.) Defendants note that the patents and
publications written by these authors are highly relevant to their claims and defenses. (See Doc.
No. 33, at 6-7.) Neither FAI nor Realtime identify any additional potential third party witnesses.
Realtime argues that “Defendants fail to show that any of these alleged third-party witnesses
have any unique knowledge of relevant facts not already held by party-controlled witnesses.”
(Doc. No. 39, at 8.) Realtime also asserts that Mr. DeForest and Mr. Kahn have duplicative
knowledge. (Id.) Realtime also challenges Quantum’s assertion that these two witnesses would
be hostile, stating that their current employer “is not a competitor with respect to the products
accused in this case.” (Id. at 8-9 (emphasis in original).) Realtime argues that Defendants’

9

alleged prior art witnesses should not be considered in the analysis.

(Id.)

Realtime also

emphasizes that witnesses can easily appear at trial via videotaped deposition.

(Id. at 9.)

Realtime argues that Defendants fail to demonstrate the likelihood of their identified third party
witnesses actually testifying at trial. (Id. at 10.)
Although Quantum does not explicitly say that it plans to call its three proposed thirdparty witnesses at trial, it has identified the nature of the information these individuals possess
and explained why they might serve as important witnesses in this matter. Further, Quantum has
indicated that it believes these witnesses may be hostile because they work for Quantum
competitors. Realtime’s argument that two of the witnesses would not be hostile because their
current employer is not a competitor of Quantum specifically with respect to the accused
products draws too thin of a distinction. Realtime has not provided any other argument or
evidence to rebut Quantum’s understanding that these witnesses are hostile This identification
enables the Court to give proper weight to each of these witnesses. The Court is particularly
persuaded that Mr. Tofano, Quantum’s former Chief Technical Officer, may have important
knowledge related to this case given that, according to Quantum’s declarant Ms. Mintz, he “was
responsible for the development of the DXi product.” (Mintz Decl., ¶10.)
With respect to Defendant’s identified prior art inventors, as this court has previously
noted, “inventors of prior art rarely, if ever, actually testify at trial.” PersonalWeb Techs. LLC v.
NEC Corp. of Am., Inc., No. 6:11-cv-655, 2013 WL 9600333, at *8 n. 13 (E.D. Tex. Mar. 21,
2013). Because Defendants have not specifically stated whether they intend to depose some or
all of these witnesses, let alone whether they are expected to be called at trial, the Court does not
weigh them in the convenience analysis.

10

On the other side of the scale, Realtime has not identified any non-party witnesses.
While the Court recognizes Realtime’s suggestion of playing videotaped depositions at trial may
be a viable option under Rule 45, such a suggestion does not address the potential value to be
added by having a witness testify in person at trial. As in previous cases, the Court will not
speculate as to whether the videotaped testimony of any of Defendants’ proposed witnesses
would be sufficient if played at trial in comparison to live testimony.
Given

Defendants’

representation—unchallenged

by Realtime—that

Quantum’s

technology will be the focal point of this action, the Court is not concerned that FAI has not
identified any additional potential third party witnesses on Defendants’ side of the scale.
Weighing Quantum’s three former employees located in the Northern District of California
against Realtime’s zero witnesses within this Court’s subpoena power, this factor weighs in favor
of transfer.
3.

The cost of attendance for willing witnesses

This factor gives broad “consideration [to] the parties and witnesses in all claims and
controversies properly joined in a proceeding.” Volkswagen I, 371 F.3d at 204. All potential
material and relevant witnesses must be taken into account. See id.
Quantum identifies five San Jose-based employees, three Irvine-based employees, and
two Australia-based employees as potential witnesses with knowledge relevant to this case.
(Mintz Decl., ¶¶6-8.) Quantum admits that it has a small office in Richardson, Texas, but states
that “its employees do not work on deduplication or the line of products that appears to be
accused in the Complaint in.” (Id. at ¶3.) FAI does not specifically identify any willing
witnesses, although two of its declarants state that to the extent the operation or sales of FAI’s
ETERNUS products are “relevant to this case, I or others . . . might be potential witnesses at

11

trial.” (Kalra Decl., ¶8; Owens Decl., ¶8.) Each of FAI’s declarants note that they are located in
Sunnyvale, much closer to courthouses in the Northern District of California than to the
courthouse in this district. (Id.; see also Lam Decl., ¶9; Valiante Decl., ¶8.) FAI acknowledges
that it has an office in the Dallas area; that two members of the Fujitsu Technology and Business
of America, Inc. field System Engineering team are located in Dallas and Houston, respectively;
and that two sales representatives are located in this District. (Lam Decl., ¶7; Valiente Decl., ¶3,
5.) FAI does not state in its declaration whether or not the two field system engineers or two
sales representatives might have knowledge relevant to this matter. (See generally, Lam Decl.;
Valiente Decl.) FAI does note that it does not believe that “any sales employees in [the Dallas
office] would have any unique information regarding the ETERNUS line of storage systems.”
(Kalra Decl., ¶7.) Further, Defendants assert in their motion that “none of FAI’s witnesses or
documents that are likely to have unique discoverable information are located within the Eastern
District of Texas.” (Doc. No. 33, at 9.)
Realtime argues that since FAI has not provided full information for the four Texas
employees it has identified, “Plaintiff—and this Court—can only assume that they do have
relevant knowledge.” (Doc. No. 39, at 4.) Realtime also asserts that FAI has a second office in
Texas, and asserts that there are “numerous other employees in Texas who appear to have
relevant information regarding the accused products.”

(Id.)

With respect to Quantum’s

witnesses, Realtime argues that the Australian-based witnesses should not weigh in the transfer
analysis because they will need to travel a significant distance no matter where they testify. (Id.
at 5 (citing Genentech, 566 F.3d 1338, 1344 (Fed. Cir. 2009)).) Realtime further argues that
Quantum’s California witnesses appear to have overlapping, duplicative knowledge and that the
“vague, generalized” statements used to describe their potential testimony “are insufficient to

12

satisfy the significant burden on Defendant’s transfer motion.” (Id. at 5.) Realtime also argues
that Quantum would not be inconvenienced by litigating in Texas because it has a significant
customer in Richardson, Texas as well as an office there. (Id.) As to its own willing witnesses,
Realtime identifies Deepika Pagala, an electrical engineer employee located in Plano, Texas
(Tashjian Decl., ¶7) and four potential party witnesses in New York. (Id. at ¶¶2, 9.) Realtime
argues that if this case is transferred to the Northern District of California, its New York
witnesses will be required to travel twice as far as they would if trial is held in this District.
(Doc. No. 39, at 6.)
In reply, Defendants argue that the fact Quantum has a significant customer with an
office in Texas is inconsequential to the transfer analysis. (Doc. No. 40, at 1.) Defendants also
deny that FAI has a second office in Texas. (Id. at 2.) Defendants assert that the two FAI
employees in Texas “have no unique knowledge relevant to this case, and . . . have no reason to
be witnesses in this action.” (Id.) Defendants argue that their offices in Texas are the “sort of
regional office that this Court has held do not weigh significantly in the transfer analysis.” (Id.)
Defendants argue that Quantum has sufficiently identified the relevant knowledge possessed by
its proposed witnesses and emphasizes the shorter travel time from Irvine to San Jose than from
Irvine to Tyler. (Id. at 3.) Defendants argue that Realtime does not explain how its employee,
Ms. Pagala, has knowledge necessary to this case. (Id. at 3-4.)
As this Court has stated in previous cases, the fact that Realtime’s New York witnesses
have indicated that proceeding in this District will be more convenient for them is entitled to
little weight. Because Realtime’s named witnesses reside in New York, they “will be required to
travel a significant distance no matter where they testify.”

Genentech, 566 F.3d at 1345.

Accordingly, any added inconvenience to Realtime’s witnesses of traveling to California, rather

13

than to Texas, should not be overemphasized. With respect to Realtime’s electrical engineer
employee, Ms. Pagala, who resides in this District, Realtime has not responded to Defendants’
challenges regarding whether Ms. Pagala has relevant testimony. Indeed, beyond stating that
Ms. Pagala “assists in the development and licensing of Realtime’s intellectual property
portfolio,” Realtime has not indicated whether Ms. Pagala is expected to offer any relevant
testimony in this case.

(Tashjian Decl., ¶7.)

The Court does not afford great weight to this

potential Realtime witness, either.
It is troubling that FAI has not identified even a single potential party witness by name.
Likewise, Defendants have not completely rebutted Realtime’s challenge that FAI employees in
Texas may have relevant knowledge. Although Defendants state in their motion that “none of
FAI’s witnesses or documents likely to have unique discoverable information are located” in this
District (Doc. No. 33, at 9), FAI’s declarations are unclear as to who may or may not be involved
in testifying in this matter on behalf of FAI. However, again, Realtime has not challenged
Defendants’ assertion that “this case is really about Quantum’s data deduplication technology
and the location of Quantum’s documents and witnesses should be given more weight in the
transfer analysis than FAI’s.” (Doc. No. 33, at 2.) Given this unrebutted representation that
Quantum’s technology is the focal point of this litigation, the Court places more weight on
Quantum’s witnesses.
Quantum has identified five potential witnesses in San Jose, three in Irvine, and two in
Australia. (Mintz Decl., ¶¶6-8.) While the Court does not factor the Australian witnesses in the
analysis, Genentech, 566 F.3d at 1345, the Court does agree that it will be significantly less
burdensome for Quantum’s Irvine witnesses to travel to San Jose compared to this District. The
Court further finds that Quantum has sufficiently identified the basis for the proposed testimony

14

of each of its potential witnesses. Even though some of these witnesses may ultimately have
overlapping knowledge, Quantum has provided enough information to demonstrate at this stage
that each of its named individuals may have relevant testimony in this case. (See Mintz Decl.,
¶¶6-8.)
Realtime has one employee who resides in this District, but it is unclear whether she has
any relevant knowledge related to this litigation. (See Tashjian Decl., ¶7.) Meanwhile, Quantum
has submitted five willing witnesses who work in San Jose, California (Mintz Decl., ¶6) and
would be “unnecessarily inconvenienced by having to travel away from home to testify” in this
district. PersonalWeb Technolgies, LLC v. NEC Corp. of Am., Inc., No. 6:11-CV-655, 2013 WL
9600333, at *4 (E.D. Tex. Mar. 21, 2013). In addition, Quantum has identified three individuals
in Irvine, California (Mintz Decl., ¶7) who would be less burdened if this matter were to proceed
in the Northern District of California. This factor weighs in favor of transfer.
4.

Other practical problems

Practical problems include those that are rationally based on judicial economy. The
existence of duplicative suits involving the same or similar issues may create practical
difficulties that will effect transfer. In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed.
Cir. 2009) (“Volkswagen III”). Further, “the existence of multiple lawsuits involving the same
issues ‘is a paramount consideration when determining whether a transfer is in the interest of
justice.’” In re Vicor Corp., 493 F. App’x 59, 61 (Fed. Cir. 2012) (quoting Volkswagen III, 566
F.3d at 1351). The Court weighs this factor according to the situation that existed at the time the
action was initiated. See Hoffman v. Blaski, 363 U.S. 335, 343 (1960) (indicating motions to
transfer venue are to be decided based on “the situation which existed when the suit was
instituted.”); In re EMC Corp., 501 F. App'x 973, 975-76 (Fed. Cir. Jan. 29, 2013).

15

Defendants argue that this factor does not weigh strongly against transfer for two reasons.
(Doc. No. 33, at 13.) First, Defendants argue that there is at least one patent in this case, U.S.
Patent No. 9,054,728, with claims that have not yet been construed by this Court. (Id.) Second,
Defendants note that there is a Realtime case pending against Apple in the Northern District of
California with an overlapping patent. Defendants assert that “[g]iven the very early stage of the
Apple case, that Court could hold one joint claim construction hearing for both cases.” (Id. at
14.) Realtime notes that there are eight other cases pending before the Court in this District.
(Doc. No. 39, at 10.) Realtime emphasizes the district court’s experience with the patents-in-suit
from prior and pending litigation. (Id. at 11.) Realtime also notes that this Court has recently
construed the ’728 Patent and asserts that there is no longer an overlapping patent in the Apple
case because it was previously withdrawn from that matter. (Id.) Realtime states that “[t]he
mere fact that currently there is one case pending in N.D. Cal.—which does not involve[] any
overlapping or related patents—does not outweigh the significant judicial economy gains” from
proceeding in this District. (Id. at 12.)
At the time the Complaint was filed, Realtime’s case against Apple had only recently
been transferred to the Northern District of California. See Realtime Data, LLC d/b/a IXO v.
Apple, Inc., No. 3:16-cv-02595 (N.D. Cal. May 13, 2016). Thus, at that time, that Court did not
have substantial experience with respect to any of Realtime’s patents, including family members
of the patents-in-suit. On the other hand, at the time of the filing of this suit, there was at least
some benefit to having the same judge handle related pretrial issues, including pretrial issues
related to the four other Realtime cases filed in this District in February and June 2016. In re
EMC Corp., 501 F. App'x at 975-76; see Realtime Data LLC v. Hewlett Packard Enterprise Co.,
No. 6:16-cv-86 (E.D. Tex. Feb. 26, 2016); Realtime Data LLC v. Savvis Comm’ns Corp., No.

16

6:16-cv-87 (E.D. Tex. Feb. 26, 2016); Realtime Data LLC v. Dell, Inc., No. 6:16-cv-00089 (E.D.
Tex. Feb. 26, 2016); Realtime Data LLC v. Rackspace US, Inc., No. 6:16-cv-00961 (E.D. Tex.
Jun. 29, 2016). Although this Court also issued a memorandum opinion and order construing
claim terms in another set of Realtime cases with overlapping patents on July 28, 2016, the Court
will not consider this in its analysis because it issued the Order seven days after the Complaint in
the above-captioned matter was filed. See Realtime Data LLC v. Actian Corp., No. 6:15-cv00463, Doc. No. 362 (E.D. Tex. July 28, 2016); see in re EMC Corp., 501 F. App’x 973, 976
(Fed. Cir. 2013). The Court concludes that this factor is neutral.
B.

Public Interest Factors
1.

Local interest in having localized interests decided at home

“Jury duty is a burden that ought not to be imposed upon the people of a community
which has no relation to the litigation.” Volkswagen I, 371 F.3d at 206. Generally, however, local
interests that “could apply virtually to any judicial district or division in the United States” are
disregarded in favor of particularized local interests. In re TS Tech, 551 F.3d at 1321;
Volkswagen II, 545 F.3d at 318 (disregarding local interest of citizens who used the widely sold
product within the transferor venue in a products liability suit). Thus, when products are sold
throughout the United States, citizens of a venue do not have a particularized interest in deciding
the dispute simply based on product sales within the venue. Nintendo, 589 F.3d at 1198.
Defendants argue that the Northern District of California has a strong local interest in the
resolution of this litigation because Quantum is headquartered there and “developed substantial
portions of the accused technology there.” (Doc. No. 33, at 14.) Defendants further note that
“while FAI’s products were developed overseas, the accused deduplication functions were
developed by Quantum and FAI is also headquartered in the Northern District of California.”

17

(Id.) Realtime responds that Defendants’ argument should be rejected because California jurors
would be biased towards Defendants. (Doc. No. 39, at 13.) Realtime emphasizes that Quantum
has asserted that much of its technical documentation and source code is in Irvine and Australia,
not in the Northern District of California. (Id. at 12.) Realtime also again raises the fact that FAI
potentially has witnesses and documents in Texas. (Id.) Realtime further argues that its ties to
this district date back to 2009 and that “it simply cannot be said that N.D. Cal. has a greater
interest in this case.” (Id. at 12-13.)
The Court acknowledges that both Quantum and FAI have their U.S. headquarters in the
Northern District of California. However, this fact alone does not typically tip the scales in favor
of transfer. Phoenix Licensing, L.L.C. v. Royal Caribbean Cruises Ltd, No. 2:13-CV-1095-JRGRSP, 2014 WL 7272640, at *5 (E.D. Tex. Dec. 22, 2014). Further, because the development of
FAI’s products primarily occurred outside of the United States and Quantum has represented that
“the majority of the technical development of the accused products currently takes place” in its
Irvine office (Doc. No. 33, at 8), the Court does not believe this action calls into question the
work and reputation of individuals in the Northern District of California to the same extent as
other cases. Cf. In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1336 (Fed. Cir. 2009) (“[L]ocal
interest in this case remains strong because the cause of action calls into question the work and
reputation of several individuals residing in or near that district and who presumably conduct
business in that community.”); Eon Corp. IP Holdings, LLC v. Sensus, USA Inc., No. 2:10-cv448, 2012 WL 122562 (E.D. Tex. Jan. 9, 2012). On the other hand, this District has at least
some local interest given that Realtime has two offices and one employee here. Ultimately, it is
not clear that either district has a particularly strong localized interest, and thus finds this factor
is neutral.

18

2.

The Remaining Public Interest Factors

Both parties assert that the remaining three public interest factors are neutral. (Doc. No.
33, at 15; Doc. No. 39, at 13.) The Court agrees. The first public interest factor, administrative
issues related to congestion, is speculative in nature and cannot alone outweigh other factors. In
re Genentech, 566 F.3d 1338, 1347 (Fed. Cir. 2009). With respect to the third and fourth factors,
both courts are familiar with federal patent law and there are no conflicts to avoid.
IV.

CONCLUSION
For the reasons explained above, relative ease of access to sources of proof weighs in

favor of transfer; availability of compulsory process weighs in favor of transfer; cost of
attendance for willing witnesses weighs in favor of transfer; practical problems, including
judicial economy, are neutral; and all of the public interest factors are neutral. Defendants have
met their burden of showing that the Northern District of California is “clearly more convenient”
under the transfer factors.
Accordingly, Defendants’ Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404 (Doc.
No.33) is GRANTED.

So ORDERED and SIGNED this 27th day of February, 2017.

19