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 F
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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
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relate
to
“information
filtering
technology.”
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
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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
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publishing
technology.
research
in
the
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
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A.
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
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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
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1.
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.
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Although
Lycos
is
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
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purportedly
Virginia.5
infringing
online
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.
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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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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
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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.
18
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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
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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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4.
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
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