I/P Engine, Inc. v. AOL, Inc. et al

Filing 771

NOTICE by I/P Engine, Inc. Proffer of Evidence Related to Laches (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 PX 176, # 10 PX 408, # 11 PX 409, # 12 PX 410, # 13 PX 411, # 14 PX 412, # 15 PX 413, # 16 PX 414, # 17 PX 415, # 18 PX 416, # 19 PX 417 I, # 20 PX 417 II, # 21 PX 418, # 22 PX 419 I, # 23 PX 419 II, # 24 PX 421, # 25 DX 21, # 26 DX28, # 27 DX 255)(Sherwood, Jeffrey)

Exhibit E

Case 2:07-cv-00003-RBS-JEB Document 37

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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
Norfolk Division

LYCOS, INC.,
Plaintiff,
v.

ACTION NO. 2:07cv003

TIVO, INC.,
NETFLIX, INC., and
BLOCKBUSTER, INC.,
Defendants.
OPINION AND ORDER
This is a patent infringement action filed by plaintiff Lycos,
Inc. (“Lycos”), against defendants TiVo, Inc. (“TiVo”), Netflix,
Inc. (“Netflix”), and Blockbuster, Inc. (“Blockbuster”).

This

matter comes before the court on the defendants’ motion to transfer
venue. For the reasons set forth herein, the defendants’ motion to
transfer venue is GRANTED, and this action is transferred to the
United States District Court for the District of Massachusetts.
I.
A.

Factual and Procedural History

Procedural History
On January 3, 2007, Lycos filed this patent infringement

action against TiVo, Netflix, and Blockbuster.

In its complaint,

Lycos alleges that the defendants made, used, offered for sale,
sold, and/or imported products, methods, and/or systems covered by
U.S. Patent Number 5,867,799 (“the ’799 patent”) and U.S. Patent
Number 5,983,214 (“the ’214 patent”), which are owned by Lycos and

Case 2:07-cv-00003-RBS-JEB Document 37

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relate

technology.”

to

“information

filtering

Lycos

further

alleges that the defendants induced others to infringe these
patents and that the defendants committed contributory acts of
infringement.
Although

Lycos

filed

this

patent

infringement

action

on

January 3, 2007, the defendants were not served with the complaint
until April 30, 2007.

In the interim, the parties held settlement

discussions. In a letter dated January 29, 2007, counsel for Lycos
indicated that “Lycos believes Blockbuster’s recommendation system,
which is powered by ChoiceStream, directly implicates [Lycos’s
patents].” Defs.’ Mem. of Law in Supp. of Mot. to Transfer, Rusnak
Decl., Ex. 9.

Consequently, on April 30, 2007, ChoiceStream filed

a declaratory judgment action against Lycos in the United States
District

Court

for

the

District

of

Massachusetts.

In

ChoiceStream’s complaint, it asserts that the ’799 patent and the
’214 patent are invalid and not infringed.
On June 12, 2007, the defendants in this action filed the
instant motion to transfer venue, in which they ask this court to
transfer this action to the District of Massachusetts. On June 22,
2007, each of the defendants filed an answer asserting, like
ChoiceStream, that the ’799 patent and the ’214 patent are invalid
and not infringed.

On July 2, 2007, the court received Lycos’s

opposition to the motion to transfer venue.

On July 13, 2007, the

court received the defendants’ reply to Lycos’s opposition.

2

The

Case 2:07-cv-00003-RBS-JEB Document 37

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matter is now ripe for review.
B.

Relevant Facts
TiVo is a Delaware corporation with its principal place of

business

in

California.

TiVo

sells

digital

video

recorders

(“DVRs”) and corresponding services to customers throughout the
United States.

Its customers use TiVo’s DVRs and services to find

and digitally record television programming, which can then be
played back at the customer’s convenience.

TiVo’s customers have

access to a recommendation system that allegedly filters television
schedules

and

recommends

particular

shows

to

users.

The

recommendation system was designed and developed in California.
TiVo

electronically

transmits

television

program

guide

information and software updates from California to the DVRs
purchased by its customers.1

Thus, although TiVo’s DVRs and

services are purchased and used by consumers in the Commonwealth of
Virginia, TiVo has no resources, such as servers, computers,
documents, employees, or facilities, in Virginia.

Its employees

and documents relevant to this lawsuit are primarily located in
California.
Netflix is also a Delaware corporation with its principal
place of business in California.
movie rental service.

Netflix offers a subscription

After a person subscribes to Netflix’s

1

Information is also transmitted between TiVo’s servers and a
customer’s DVR when the customer uses TiVo’s recommendation system.
3

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service, the subscriber can select movies he or she wishes to view
on Netflix’s Internet website.

Netflix then mails the subscriber

digital video disks (“DVDs”) containing the selected movies.

The

DVDs are mailed from distribution centers located across the
country.

Netflix

also

distributes

movies

by

electronically

transmitting them via the Internet to its subscribers.

Its

subscribers can access a recommendation service, which generates
customized and personalized movie recommendations.
Netflix has subscribers in Virginia.

However, Netflix’s

online services were designed and developed in California, and it
operates its website from California.

Except for the resources

used in transmitting movies electronically to its customers, all of
the servers, processors, databases, and other resources used in the
operation of Netflix’s online service are located in California.
Netflix owns a single distribution system in Virginia, and it
transmits movies electronically via the Internet and mails DVDs to
subscribers from this location.

Nineteen employees work at the

distribution center, but none of these employees has knowledge
relevant to this action.

None of the documents possessed by

Netflix that are relevant to this action is located in Virginia.
Blockbuster is a Delaware corporation with its principal place
of business in Texas.

Blockbuster operates an online subscription

movie rental service that is similar to the online service operated
by Netflix.

Like Netflix, Blockbuster offers a recommendation

4

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system as part of its online subscription service.

Blockbuster’s

recommendation system is powered by software that was designed and
developed by ChoiceStream, Inc. (“ChoiceStream”).

ChoiceStream is

a Delaware corporation with its principal place of business in
Massachusetts.

There are no relevant Blockbuster or ChoiceStream

documents located in Virginia.

Also, neither Blockbuster nor

ChoiceStream has employees in Virginia who have knowledge relevant
to

this

action.

However,

ChoiceStream

has

employees

in

Massachusetts who possess information relevant to this action, and
Lycos has indicated that it “may need to take some discovery from
ChoiceStream.”

Pl.’s Opp’n to Defs.’ Mot. to Transfer at 12.

Lycos has its principal place of business in Massachusetts.
It was a Delaware corporation until 2004, when it reincorporated in
Virginia.

All of Lycos’s employees and facilities are located in

Massachusetts.
The inventions claimed in the ’799 patent and the ’214 patent
are derived from a common technical description.

Dr. Andrew Lang

(“Dr. Lang”) and Donald Kosak (“Kosak”) are the coinventors of both
patents.

Kosak is Lycos’s Chief Technology Officer and resides in

Massachusetts.

Dr. Lang is not employed by Lycos.

Dr. Lang

resides in Massachusetts but spends half his time working in
Pennsylvania.
Since the late 1980s, the Media Lab at the Massachusetts
Institute of Technology (“the Media Lab”) has been conducting and

5

Case 2:07-cv-00003-RBS-JEB Document 37

publishing
technology.

research

in

the

Filed 08/06/07 Page 6 of 24 PageID# 6

area

of

information

filtering

In rejecting some of the original claims of the

’799 patent on the ground of obviousness, the U.S. Patent and
Trademark Office (“PTO”) relied on a publication of a researcher at
the Media Lab, along with two other prior art references.2
defendants

assert

that

they

“expect

to

documents and witnesses at the Media Lab.”

require

discovery

The
of

Defs.’ Mem. of Law in

Supp. of Mot. to Transfer at 8.
II.

Analysis

“For 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.”
U.S.C. § 1404(a).
transfer

venue,

28

In deciding whether to grant a motion to

this

court

must

conduct

the

following

two

inquiries: “‘(1) whether the claims might have been brought in the
transferee forum; and (2) whether the interest of justice and
convenience of the parties and witnesses justify transfer to that
forum.’”

JTH Tax, Inc. v. Lee, 482 F. Supp. 2d 731, 735 (E.D. Va.

2007) (quoting Koh v. Microtek Int’l, Inc., 250 F. Supp. 2d 627,
630 (E.D. Va. 2003)).

2

Pursuant to 35 U.S.C. § 103(a), an invention is not
patentable “if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as
a whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art.”
6

Case 2:07-cv-00003-RBS-JEB Document 37

A.

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The District of Massachusetts Is a Proper Venue.
The court must address whether this action might have been

brought in the District of Massachusetts, as the defendants seek a
transfer of venue to that forum.3

Pursuant to 28 U.S.C. § 1400(b),

a civil action for patent infringement may be brought in any
district where the defendant resides.

When the defendant is a

corporation, it resides “in any judicial district in which it is
subject

to

commenced.”

personal

jurisdiction

28 U.S.C. § 1391(c).

at

the

time

the

action

is

Thus, to determine whether the

District of Massachusetts is a proper venue for this patent
infringement

action,

this

court

must

determine

whether

the

defendants are subject to personal jurisdiction there.
To determine whether the assertion of jurisdiction over a
defendant is proper, a district court must consider the following
two

issues:

authorizes

(1)
the

whether
exercise

the
of

forum

state’s

personal

long-arm

jurisdiction

statute

over

the

defendant; and (2) whether the exercise of personal jurisdiction
over the defendant comports with the requirements of the Due
Process Clause of the Fourteenth Amendment.

Chisholm v. UHP

Projects, Inc., 1 F. Supp. 2d 581, 584 (E.D. Va. 1998).

3

However,

Lycos has not contested the defendants’ assertion that the
District of Massachusetts is a proper venue for this action.
However, given that 28 U.S.C. § 1404(a) only authorizes this court
to transfer this action to a district or division “where it might
have been brought,” the court deems it appropriate to address in a
cursory manner whether Lycos could have brought this action in the
District of Massachusetts.
7

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because the reach of Massachusetts’s long-arm statute extends to
the outermost boundaries of the Due Process Clause, this court need
only address whether the exercise of personal jurisdiction over the
defendants would comport with the requirements of the Due Process
Clause.

Platten v. HG Bermuda Exempted Ltd., 437 F.3d 118, 135

(1st Cir. 2006).

To resolve this constitutional issue, the court

must first ask whether the defendants have the minimum contacts
with Massachusetts necessary to confer jurisdiction.

Lesnick v.

Hollingsworth & Vose Co., 35 F.3d 939, 944-45 (4th Cir. 1994).

If

so, the court must then consider whether the exercise of personal
jurisdiction “would offend traditional notions of fair play and
substantial justice.”
This

case

recommendation

Id. at 945.

arises
services

from
to

the

their

defendants’
customers

or

provision

of

subscribers

in

Massachusetts and throughout the United States via the Internet or
through other electronic means. To determine whether a defendant’s
“electronic contacts” with a forum state are sufficient to confer
jurisdiction, the Fourth Circuit has adopted the approach set forth
in Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D.
Pa. 1997).

ALS Scan, Inc. v. Digital Serv. Consultants, Inc., 293

F.3d 707, 713 (4th Cir. 2002).

Under this approach, a state has

the minimum contacts necessary to confer jurisdiction over a person
located outside the state “when that person (1) directs electronic
activity into the State, (2) with the manifested intent of engaging

8

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in business or other interactions within the State, and (3) that
activity creates, in a person within the State, a potential cause
of action cognizable in the State’s courts.”

Id. at 714.

Each of the defendants in this action transmits, as part of
its

recommendation

services,

information

to

persons

within

Massachusetts via the Internet or through other electronic means.
See Pl.’s Opp’n to Defs.’ Mot. to Transfer at 4-5, 7-8 (describing
the recommendation service offered by each defendant and explaining
that

the

defendants,

which

are

large

national

corporations,

purposefully direct products and services that utilize infringing
technology to their customers or subscribers).
defendants’

interactions

with

The nature of the

Massachusetts’s

residents

is

commercial, as each of the defendants charges its customers or
subscribers for the use of its services.

See id. at 7-8.

Further,

because these activities allegedly infringe Lycos’s patents, they
create a cause of action cognizable in federal courts, including
those lying in Massachusetts.
minimum

contacts

with

The defendants, therefore, have the

Massachusetts

necessary

to

confer

the

minimum

jurisdiction.
Having

determined

that

the

requirements

of

contacts test are met, the court must next turn to the issue of
whether

the

traditional

exercise
notions

of
of

Lesnick, 35 F.3d at 945.

personal
fair

play

jurisdiction
and

“would

substantial

offend

justice.”

In doing so, this court must consider

9

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“such factors as (a) the burden on the defendant, (b) the interests
of the forum state, (c) the plaintiff’s interest in obtaining
relief, (d) the efficient resolution of controversies as between
states, and (e) the shared interests of the several states in
furthering fundamental substantive social policies.”

Id. at 946.

In this case, Massachusetts would have a strong interest in this
action, as it is the home state of Lycos, the plaintiff. Moreover,
as noted above, each of the defendants purposefully directed
electronic

communications

Massachusetts,

and

commercial in nature.

the

to

customers

purpose

of

or

such

subscribers

communications

in
was

Under such circumstances, the exercise of

personal jurisdiction over the defendants by a Massachusetts court
would not be unfair or unreasonable.

See, e.g., Zippo, 952 F.

Supp. at 1127 (holding that forcing a defendant to defend a suit in
Pennsylvania was not unreasonable where the defendant allegedly
infringed trademarks owned by a corporation having its principal
place of business in Pennsylvania, and the defendant purposefully
chose to pursue profits in Pennsylvania).

For this reason, and

because the defendants have the minimum contacts with Massachusetts
necessary

to

confer

jurisdiction,

the

exercise

of

personal

jurisdiction by a Massachusetts court over the defendants would
comport with the requirements of the Due Process Clause of the
Fourteenth Amendment.

Accordingly, the District of Massachusetts

is a proper venue for this action.

10

See 28 U.S.C. § 1400(b); 28

Case 2:07-cv-00003-RBS-JEB Document 37

Filed 08/06/07 Page 11 of 24 PageID# 11

U.S.C. § 1391(c).
B.

Transfer to the District of Massachusetts Is Warranted.
Having determined that the District of Massachusetts is a

proper venue for this action, the court must next decide whether to
exercise its discretion to transfer this action there.

See Beam

Laser Sys., Inc. v. Cox Commc’ns, Inc., 117 F. Supp. 2d 515, 517
(E.D. Va. 2000) (“The decision whether to grant a motion to
transfer venue is within the sound discretion of the district
court.”).

In making this determination, the court must consider

the following factors related to convenience and justice: (1) the
plaintiff’s choice of venue; (2) the convenience of the parties and
witnesses; and (3) the interest of justice.

See, e.g., Agilent

Techs., Inc. v. Micromuse, Inc., 316 F. Supp. 2d 322, 326 (E.D. Va.
2004).4

4

In patent infringement actions, courts also consider whether
the forum where the case was filed or the forum to which a
defendant seeks a transfer is “the preferred forum” for the action.
See GTE Wireless, Inc. v. Qualcomm, Inc., 71 F. Supp. 2d 517, 519
(E.D. Va. 1999).
“The preferred forum” is the location of the
center of the accused activity. Id. In this case, the accused
activities are primarily the defendants’ acts of making, using,
offering for sale, selling, and/or importing products, methods,
and/or systems that allegedly infringe the ’799 patent and the ’214
patent. See Pl.’s Compl. ¶¶ 7, 11, 16. Because these activities
were not centered in Virginia or Massachusetts, neither of these
forums is “the preferred forum” for this action. Accordingly, the
court will determine whether to transfer this action based solely
on the three convenience and justice factors listed above. See,
e.g., Agilent Techs., 316 F. Supp. 2d at 326-30 & n.3 (concluding
that Virginia was not the preferred forum for the action and then
balancing the other three convenience and justice factors to
determine whether transfer to the Southern District of New York was
warranted).
11

Case 2:07-cv-00003-RBS-JEB Document 37

1.

Filed 08/06/07 Page 12 of 24 PageID# 12

The Plaintiff’s Choice of Venue

In balancing the convenience and justice factors, courts
generally give “substantial weight” to the plaintiff’s choice of
forum.

Telepharmacy Solutions, Inc. v. Pickpoint Corp., 238 F.

Supp. 2d 741, 743 (E.D. Va. 2003). However, the plaintiff’s choice
of forum is not entitled to substantial weight if the chosen forum
is not the plaintiff’s “home forum,” and the cause of action bears
little or no relation to the chosen forum.

Id.

Instead, “if there

is little connection between the claims and [the chosen forum],
that would militate against a plaintiff’s chosen forum and weigh in
favor of transfer to a venue with more substantial contacts.”

Koh

v. Microtek Int’l, Inc., 250 F. Supp. 2d 627, 635 (E.D. Va. 2003);
see Verosol B.V. v. Hunter Douglas, Inc., 806 F. Supp. 582, 593
(E.D. Va. 1992) (explaining that because “the cause of action is at
best only tenuously related to this forum, plaintiffs’ initial
venue choice will not impede transfer if the relevant § 1404(a)
factors point to another forum”); see also Airport Working Group of
Orange County, Inc. v. Dep’t of Def., 226 F. Supp. 2d 227, 230
(D.D.C. 2002) (“Deference to plaintiffs’ forum choice is diminished
where, as here, transfer is sought to the plaintiffs’ resident
forum.” (internal quotation omitted)).
In this case, Virginia is not the home forum of Lycos, which
has its principal place of business in Massachusetts.

Moreover,

this action has, at best, a tenuous connection with Virginia.

12

Case 2:07-cv-00003-RBS-JEB Document 37

Although

Lycos

is

Filed 08/06/07 Page 13 of 24 PageID# 13

incorporated

under

the

laws

of

Virginia,

Virginia’s laws of incorporation are not relevant to this lawsuit,
and Lycos has no employees or other physical presence within the
Commonwealth.
Lycos
allegedly

notes

that

infringing

defendants.

Virginia’s

products,

residents

methods,

purchase

and

and

use

systems

from

the

However, the defendants likely have this same contact

with every other state in this nation. It is well-settled that the
mere existence of limited sales activity within Virginia does not
require

this

court

to

give

the

plaintiff’s

choice

of

forum

substantial weight when balancing the convenience and justice
factors.

See, e.g., Acterna, L.L.C. v. Adtech, Inc., 129 F. Supp.

2d 936, 939 (E.D. Va. 2001) (affording the plaintiff’s choice of
forum only “very slight weight” where the defendant’s sales were
not “unique to Virginia” and less than ten percent of total sales
occurred here).

Moreover, the fact that Virginia’s residents use

the purportedly infringing products, methods, and systems avails
Lycos nothing, as Lycos is not suing those residents in this
action.

The acts relevant to this lawsuit, even with respect to

Lycos’s

allegations

contributory

that

infringement

the

defendants

and

induced

committed

other

to

acts

infringe

of
its

patents, are those of the defendants, not their customers and
subscribers.

The

design

and

manufacture

of

the

allegedly

infringing products, as well as the design and development of the

13

Case 2:07-cv-00003-RBS-JEB Document 37

purportedly
Virginia.5

infringing

online

Filed 08/06/07 Page 14 of 24 PageID# 14

services,

occurred

outside

of

Also, the allegedly infringing recommendation services

are provided by the defendants from locations outside of Virginia.
It is, therefore, not surprising that no relevant documents or
persons with knowledge relevant to this action are located here.
In light of the circumstances outlined above, this court gives
Lycos’s choice of forum only slight weight.

Lycos’s choice of the

Eastern District of Virginia as the forum for this action will thus
not impede transfer, if the other convenience and justice factors
point to the District of Massachusetts.

See Verosol B.V., 806 F.

Supp. at 593.
2.

The Convenience of the Parties and Witnesses

In evaluating the convenience of the parties, this court
considers factors such as the “ease of access to sources of proof,
the

cost

of

obtaining

the

attendance

of

witnesses,

and

the

availability of compulsory process.” Samsung Elecs. Co. v. Rambus,
Inc., 386 F. Supp. 2d 708, 717 n.13 (E.D. Va. 2005).

When

considering the convenience of witnesses, this court draws a
distinction between party-witnesses and non-party witnesses and

5

Netflix operates a distribution center in Virginia, from
which it mails DVDs and electronically transmits movies to
customers. But none of the employees who work at the distribution
center have knowledge relevant to this action, and there is no
indication that Netflix’s acts of mailing DVDs and transmitting
movies infringe Lycos’s patents.
Rather, the crux of Lycos’s
complaint is that the recommendation systems operated by Netflix
and the other defendants infringe the ’799 patent and the ’214
patent. See Pl.’s Opp’n to Defs.’ Mot. to Transfer at 8.
14

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affords greater weight to the convenience of non-party witnesses.
Id. at 718. The party asserting witness inconvenience must proffer
sufficient details regarding the witness and his or her testimony
to allow the court to assess both the materiality of the evidence
that the witness will offer and the inconvenience that will result
from

declining

to

transfer

the

action.

Id.

The

witness

convenience factor is less important when the appearance of the
witnesses can be secured without the necessity of compulsory
process.

Id. at 719.

On the other hand, greater weight is given

to the potential inconvenience of witnesses “whose testimony is
central to a claim and whose credibility is also likely to be an
important issue.”

Bd. of Trs., Sheet Metal Workers Nat’l Fund v.

Baylor Heating & Air Conditioning, Inc., 702 F. Supp. 1253, 1258
(E.D. Va. 1988).
At a threshold level, the court notes that there are no
relevant documents or persons with knowledge relevant to this
action located in Virginia.

The purportedly infringing products,

methods, and services of TiVo and Netflix were designed and
developed in California.

The documents and witnesses of TiVo and

Netflix are thus located in that state.
its

principal

place

of

business

is

in

Turning to Blockbuster,
Texas,

which

presumably the location of its documents and witnesses.

is

thus

However,

Blockbuster’s recommendation service, which allegedly infringes
Lycos’s patents, was designed by ChoiceStream, a corporation with

15

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Filed 08/06/07 Page 16 of 24 PageID# 16

its principal place of business in Massachusetts.
indicated

that

ChoiceStream.”

it

“may

need

to

take

some

Lycos has

discovery

from

Pl.’s Opp’n to Defs.’ Mot. to Transfer at 12.

ChoiceStream’s employees, all of which reside in Massachusetts,
“may be asked to testify about the technology at issue in this
case, ChoiceStream’s current products and services, its research,
design and development activities, the prior art, its own patent
pending

technology,

the

infringement

allegations

and

certain

financial issues related to Lycos’s claim for damages.”

Defs.’

Mem. of Law in Supp. of Mot. to Transfer, Gallagher Decl. ¶ 8.

The

fact that it would be more convenient for these non-party witnesses
to testify in Massachusetts, where they reside, weighs in favor of
transfer.
Lycos has its principal place of business in Massachusetts,
and all of its employees and documents are located there. As Lycos
asserts that it will be producing documents in electronic format,
the defendants may not need to conduct discovery of documents in
Massachusetts.
who

have

However, the fact remains that employees of Lycos

knowledge

Massachusetts.6

relevant

to

this

action

are

located

in

As these are party-witnesses, and it is not clear

whether their credibility will be an important issue, the court

6

For example, Kosak, one of the co-inventors of the patents at
issue in this lawsuit, works for Lycos in Massachusetts. Also, the
court notes that Lycos, in all likelihood, would call other
employees to testify regarding the damages that Lycos has suffered
as a result of the purported infringement of its patents.
16

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declines to give substantial weight to the fact that it would be
more convenient for them to testify in Massachusetts than in
Virginia.

Samsung Elecs., 386 F. Supp. 2d at 718.

Nevertheless,

the fact that the District of Massachusetts is a more convenient
forum for them weighs to some slight extent in favor of transfer.
The defendants have indicated that they plan to conduct
discovery of documents at the Media Lab in Massachusetts.

While

Massachusetts is certainly not the only location in this country
where prior art relevant to their affirmative defense of patent
invalidity may be located, the research of the Media Lab related to
information filtering technology, and one publication arising from
its research, formed the basis for a rejection of certain claims by
the PTO during the prosecution of the ’799 patent.

Under such

circumstances, it would be prudent for the defendants to ascertain
whether other publications of the Media Lab might provide a basis
for invalidating the ’799 patent, as well as the ’214 patent, which
arises from a similar technical specification as the ’799 patent.
Accordingly, the court deems it appropriate to afford some weight
to the fact that the defendants will be searching for relevant
prior art documents in Massachusetts.7

7

The defendants have also argued that important “prior art
witnesses,” including researchers at the Media Lab, are located in
Massachusetts. Defs.’ Mem. of Law in Supp. of Mot. to Transfer at
10. At this stage of the litigation, although it seems likely that
the defendants will be searching for prior art documents in
Massachusetts, it is entirely unclear whether that search will bear
fruit. Because the need for the “prior art witnesses” to testify
17

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In addition, the defendants direct the court’s attention to
the potential inconvenience of Dr. Lang, one of the co-inventors of
the ’799 patent and the ’214 patent.

The defendants explain that

Dr. Lang’s testimony will be relevant to their affirmative defense
of patent invalidity.

Dr. Lang, a non-party witness, resides in

Massachusetts, but he has agreed to testify in Virginia.

Thus,

there would be no need for the defendants to resort to compulsory
process to secure his attendance here.

In addition, at this early

stage of the litigation, it is not clear whether Dr. Lang’s
testimony will be critical to the issue of patent invalidity or
whether credibility will be an important issue with respect to any
testimony he may offer.

Thus, the court attributes only slight

weight to the fact that it would be more convenient for Dr. Lang,
a non-party witness, to testify in Massachusetts than in Virginia.8
In sum, there are no witnesses or relevant documents in
Virginia. On the other hand, Massachusetts is the location of some

in this action may never materialize, the court declines to give
any serious consideration to the inconvenience that these witnesses
would suffer, if asked to testify in Virginia, or the potential
costs of procuring their attendance here.
8

The court further notes that it might be easier for the
defendants to depose Dr. Lang, who resides in Massachusetts but
spends half his time working in Pennsylvania, if this action were
transferred to the District of Massachusetts. If this action were
transferred, the defendants might be able to schedule Dr. Lang’s
deposition to coincide with their need to appear in Massachusetts
for another reason, such as to attend a pretrial hearing. Thus, a
transfer of this action to the District of Massachusetts might make
this litigation more convenient for Dr. Lang himself, while also
making it easier for the defendants to access him.
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documents relevant to this lawsuit and is also the place of
residence and/or employment of certain non-party witnesses and
party-witnesses.

Therefore,

considerations

related

to

the

convenience of the parties and witnesses ultimately do weigh in
favor of transfer.
3.

The Interest of Justice

The interest of justice factor “encompasses public interest
factors aimed at systemic integrity and fairness.”

Byerson v.

Equifax Info. Servs., LLC, 467 F. Supp. 2d 627, 635 (E.D. Va. 2006)
(internal quotation omitted).

The most prominent elements of

systemic integrity are “judicial economy and the avoidance of
inconsistent judgments.”
considers

“docket

controversies

Id.

In evaluating fairness, this court

congestion,

decided

at

home,

interest

in

knowledge

of

having

local

applicable

law,

unfairness in burdening forum citizens with jury duty, and interest
in avoiding unnecessary conflicts of law.”

Id.

In this case, considerations related to systemic integrity
favor

transfer.

On

April

30,

2007,

the

same

day

that

the

defendants were served with the complaint in the instant action,
ChoiceStream filed a declaratory judgment action against Lycos in
the District of Massachusetts.

Like the defendants, ChoiceStream

contends that the ’799 patent and the ’214 patent are invalid and
not infringed.

Further, as Blockbuster’s recommendation system is

“powered” by ChoiceStream, the facts and legal issues relevant to

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the question of whether ChoiceStream infringed Lycos’s patents are
in all likelihood very similar to the facts and legal issues
relevant to the question of whether Blockbuster has infringed these
patents.

Under these circumstances, judicial economy, and thus

systemic integrity, would be furthered if both these cases were
litigated in the same forum.

See Samsung Elecs., 386 F. Supp. 2d

at 721 (explaining that “the litigation of related claims in the
same tribunal facilitates efficient, economical and expeditious
pre-trial proceedings and discovery, and prevents duplicative
litigation and inconsistent results” and that “[t]ransfer and
consolidation will serve the interest of judicial economy in most
cases where the related actions raise similar or identical issues
of fact and law” (internal quotations omitted)).
Lycos has come forward with two reasons why this court should
disregard the fact that ChoiceStream filed a declaratory judgment
action in the District of Massachusetts.

First, Lycos argues that

the declaratory judgment action was nothing more than a tactical
measure

to

manipulate

venue,

noting

ChoiceStream share the same counsel.

that

Blockbuster

and

However, Blockbuster and

ChoiceStream are separate business entities. Further, Lycos stated
in a letter to Blockbuster, one of ChoiceStream’s customers, that
“Blockbuster’s

recommendation

system,

which

is

ChoiceStream, directly implicates [Lycos’s patents].”

powered

Defs.’ Mem.

of Law in Supp. of Mot. to Transfer, Rusnak Decl., Ex. 9.

20

by

In light

Case 2:07-cv-00003-RBS-JEB Document 37

Filed 08/06/07 Page 21 of 24 PageID# 21

of these facts, the court cannot conclude that the filing of the
declaratory judgment action was a forum-shopping tactic.
Second,

Lycos

argues

that

transfer

to

inappropriate because of the first-to-file rule.

Massachusetts

is

Under the first-

to-file rule, the first-filed action is generally preferred when
two identical actions are pending in two federal courts.
Elecs., 386 F. Supp. 2d at 724.

Samsung

“The policy underlying the

first-to-file rule is the avoidance of duplicative litigation and
the conservation of judicial resources.”

Id.

In this case, the declaratory judgment action was filed after
Lycos filed this action,9 but it was filed by an entity that is not
a party to this action.
lacking.

Identity of parties is, therefore,

Also, as noted above, the court cannot conclude on the

facts of this case that the filing of the declaratory judgment
action was a forum-shopping tactic.

Furthermore, the transfer of

this action to the District of Massachusetts will likely serve,
rather than undermine, the primary purpose of the first-to-file
rule, because judicial economy may well be furthered if both this
action and the declaratory judgment action are litigated in the
same forum.
In addition to considerations of systemic integrity, this
court must also take account of considerations related to fairness.

9

The court notes, however, that Lycos served the complaint in
this action on the same day as ChoiceStream filed the declaratory
judgment action. See supra Part I.A.
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In this case, however, many of the fairness considerations are
irrelevant. For example, this action is not a “local controversy,”
and as it arises under federal patent law, there are no potential
conflicts of laws.

The District of Massachusetts is just as

capable of applying federal patent law as this court.
Lycos notes that relative docket conditions militate against
transfer, because this case would progress to trial at a more rapid
pace in this court than in the District of Massachusetts. However,
docket conditions are only “a minor consideration” where, as here,
the other convenience and justice factors weigh in favor of
transfer.

GTE Wireless, Inc. v. Qualcomm, Inc., 71 F. Supp. 2d

517, 520 (E.D. Va. 1999); see Cognitronics Imaging Sys., Inc. v.
Recognition Research Inc., 83 F. Supp. 2d 689, 699 (E.D. Va. 2000)
(explaining that docket conditions should not be the primary reason
for declining to transfer a case).

Moreover, the court deems it

particularly inappropriate to give substantial weight to docket
conditions

in

this

case,

because

Lycos

delayed

serving

the

defendants with its complaint until about four months after filing
this

action.

attributes

only

See

supra

very

Part

slight

I.A.

weight

conditions favor retaining this case.

Accordingly,
to

the

fact

the

that

court
docket

As the court concludes that

this factor is outweighed by considerations related to judicial
economy, the interest of justice factor favors transfer.

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Case 2:07-cv-00003-RBS-JEB Document 37

4.

Filed 08/06/07 Page 23 of 24 PageID# 23

Summary

Lycos’s choice of forum is not entitled to substantial weight
because the Eastern District of Virginia is not its “home forum,”
and this patent infringement action has little or no connection
with Virginia. Under such circumstances, the fact that Lycos chose
to file this action in this court does not impede transfer, if the
other convenience and justice factors point to another forum.
Factors related to the convenience of the parties and witnesses and
the interest of justice weigh in favor of transfer to the District
of Massachusetts.

To the extent it is appropriate to give any

weight at all to Lycos’s choice of forum, the fact that Lycos chose
to litigate in this forum is outweighed by these other factors.
Accordingly,

transfer

to

the

District

of

Massachusetts

is

appropriate.
IV.

Conclusion

For the reasons set forth above, the defendants’ motion to
transfer venue is GRANTED.

This matter is hereby TRANSFERRED to

the District of Massachusetts.

The Clerk shall take the necessary

steps to effect the transfer.
The Clerk is DIRECTED to send a copy of this Opinion and Order
to counsel for the plaintiff and the defendants.

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IT IS SO ORDERED.

/s/
Rebecca Beach Smith
UNITED STATES DISTRICT JUDGE
Norfolk, Virginia
August 3, 2007

24