Global Touch Solutions, LLC v. Microsoft Corporation et al

Filing 36

OPINION AND ORDER Granting 14 Motion to Transfer Case. Signed by District Judge Mark S. Davis and filed on 6/15/15. Copies distributed to all parties 6/15/15. (ldab, )

TJNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA

Norfolk Division

GLOBAL TOUCH SOLUTIONS,

LLC,

Plaintiff,
Civil No.

2:14cv346

Civil No.

2:14cv347

Civil No.

2:14cv390

Civil No.

2:14cv391

TOSHIBA CORPORATION and
TOSHIBA AMERICA INFORMATION

SYSTEMS,

INC.,
Defendants,

GLOBAL TOUCH SOLUTIONS,

LLC,

Plaintiff,

VIZIO,

INC.,
Defendant.

GLOBAL TOUCH SOLUTIONS,

LLC,

Plaintiff,
v.

APPLE,

INC.,
Defendant,

GLOBAL TOUCH SOLUTIONS,

LLC,

Plaintiff,
v.

MOTOROLA MOBILITY LCC,
Defendant.

GLOBAL TOUCH SOLUTIONS,

LLC,

Plaintiff,
Civil No.

v.

2:15cvl7

(formerly 3:14cv548)
MICROSOFT

CORPORATION and

NOKIA INC.,
Defendants.

OPINION AND

ORDER

I. Introductory Statement

The joinder provision of the America Invents Act ("AIA") has

had

an

evident

impact

on

the

procedural

handling

of

patent

infringement actions in scenarios where a plaintiff seeks to hold

multiple defendants liable based on similarly designed consumer

products.

35 U.S.C.

§ 299.

To the extent joinder of alleged

infringers was previously permitted in a patent case under Rule 20
of the Federal Rules of Civil Procedure, the AIA eliminated a patent
holder's ability to file a single civil action against multiple

industry competitors allegedly responsible for violating the same
patent or family of patents.

Moreover, once cases involving various

companies' similar accused products are separately filed,
expressly precludes consolidation "for trial."

the AIA

Id. ; see In re:

Maxim Integrated Products, Inc., Patent Litigation, 867 F. Supp. 2d

1333,

1335

patent

(J.P.M.L.

2012)

(" [T]he AIA changed the landscape of

litigation—particularly

the

filing

of

actions

against

multiple unrelated defendants and the right to a separate trial when
defendants are only accused of violating the same patent.") ; see also
H.R. REP. 112-98, at 54, reprinted in 2011 U.S.C.C.A.N. 67, 85 ("The

[AIA] also addresses problems occasioned by the joinder of defendants
(sometimes numbering in the dozens) who have tenuous connections to

the underlying disputes in patent infringement suits.").

While the practical effects of the AIA may still be unsettled
in light of its relative infancy, it appears that the serial filing
of separate patent infringement actions in the same court, on or about
the same date, against different corporate defendants, has become

the new normal in patent infringement litigation.

See Norman IP

Holdings, LLC v. Lexmark Int' 1, Inc., No. 6:12cv508, 2012 WL 3307942,

at *4 (E.D. Tex. Aug.

10, 2012)

("In response to the AIA's joinder

provision, plaintiffs now serially file multiple single-defendant

(or defendant group) cases involving the same underlying patents.") .
Such serial filing "presents administrative challenges for the Court
and, left unchecked, wastes judicial resources by requiring common
issues to be addressed individually for each case."

Id.

One of the

ways in which district courts have sought to temper the waste of
judicial resources is by consolidating associated patent actions for
pretrial matters, either invoking Federal Rule of Civil Procedure
42 for cases pending within a single district, or MDL cross-district

consolidation procedures in cases pending in multiple districts.
See DietGoal Innovations LLC v.

Wegmans Food Markets,

Inc.,

2:13cvl54, 2014 WL 2561222, at *2 (E.D. Va. June 6, 2014)

No.

(denying

a motion to sever one patent case from several others after the
district court had entered a sua sponte order consolidating the cases
under Rule 42 for all pretrial matters); Cellport Systems,
BMW of North America,

L.L.C., No.

14-cv-1631,

Inc. v.

2014 WL 6910293,

at

*l-2 (D. Colo. Dec. 9, 2014) ("Courts have held that [the AIA joinder

provision]

does not prevent

the

consolidation of

cases

against

accused infringers for pretrial matters." (emphasis added)); In re:
Bear Creek Techs, Inc.,
13 78 (J.P.M.L. 2012)

alter

our

authority

('722) Patent Litig., 858 F. Supp. 2d 1375,

("We find that the America Invents Act does not

to

order

pretrial

centralization

of

this

litigation."); In re: Maxim Integrated Products, 867 F. Supp. 2d at
1335 (reiterating that while MDL consolidation remains permissible

post-AIA, "the AIA's right to separate trials should be taken into

account when making the decision to centralize a given litigation,
inasmuch as the AIA is the new reality in patent litigation and its
right to separate trials could impact the Panel's calculus regarding

whether centralization benefits

'the convenience of parties and

witnesses' and 'will promote the just and efficient conduct' of the
litigation."

(quoting 28 U.S.C.

§ 1407(a)).

The filing of one or more motions seeking a discretionary
transfer of venue in associated patent actions raises additional

concerns, as the various defendants, witnesses, and sources of proof
relevant

to

separately

filed

patent

infringement

invariably be found in different districts.

actions

will

Balancing the complex

and competing factors raised in such motions presents difficult

questions, which in the pending cases include:

(1) Does it serve

justice and economy to split up five cases with similar allegations
of infringement when at least three,

and as many as eight, of the

same patents are asserted against the same types of consumer products
(laptops,

tablets,

etc.)

sold by industry competitors?

(2)

Does

refusal to transfer such cases in an effort to keep them together
create an incentive for plaintiffs to "manufacture venue" by filing
numerous similar actions in the same court,

around the same time,

in order to increase the pressure on the Court to reject any of the
defendants'

attempts

to

transfer an

individual

case?

(3)

Does

transferring all of the similar cases to a far "better" forum, which
necessarily cannot be the "best" forum as to each individual case,

best satisfy the convenience and justice factors, or does it allow
defendants to forum shop?

(4)

Does it

comport with justice to

require a plaintiff who filed multiple separate actions, as required
by the AIA, to not only leave its chosen forum as to those cases with
the

strongest transfer arguments,

but to have to simultaneously

litigate multiple (similar) patent cases on opposite coasts of the
United States?

Grappling with these competing considerations in light of the
circumstances presented in each of the five cases pending before this
Court, some of which present stronger arguments for transfer than
others,

necessarily

resolution.

requires

However,

the

Court

although less

to

reach

than perfect,

an

imperfect

this

Court's

resolution of the motions before it best comports with the § 1404(a)
convenience and justice factors.
II.

Factual and Procedural Background

Against such backdrop, currently before the Court are five
separate patent infringement actions filed by plaintiff Global Touch
Solutions,

LLC,

case

(1)

are:

("Plaintiff" or "GTS").

Toshiba Corporation

The defendant(s)

("Toshiba")

in each

and its American

subsidiary Toshiba American Information Systems, Inc. ("TAIS") ; (2)
Vizio,

Inc.

Mobility

("Vizio");

LLC

(3)

Apple,

("Motorola");

and

Inc.

("Apple");

(5)

(4)

Microsoft

("Microsoft") and its subsidiary Nokia Inc. ("Nokia") .x
separate

civil

cases

were

initially randomly

different district judges within this district.

Motorola

Corporation

These five

assigned

to

four

However, because

all five cases involve similar allegations, and share common patents
and common asserted claims, the four cases assigned to other judges

of this Court were reassigned to the undersigned judge (to whom the

1 The Court will refer herein to the individual cases by the name of the
defendant(s) , for example, the case involving Toshiba and TAIS will be
referred to as the "Toshiba/TAIS Action." Additionally, the Court will
collectively refer to the seven named defendants as "Defendants."

first case was assigned) for the purposes of economy, consistency,
and fairness.

Although the number and identity of the patents asserted in the
different actions varies somewhat,

least five patents in common.2

four of the five cases have at

The defendant (s) in each of the five

cases filed a motion seeking transfer to the Northern District of
California, with one defendant alternatively seeking transfer to the
Central District of California.

Plaintiff GTS opposes transfer in

each of the five cases, arguing in the Toshiba/TAIS Action that such
case could not have originally been filed in the Northern District
of California, and arguing in all cases that the named defendant(s)
fails

to

demonstrate

that

the

relevant

convenience

and justice

factors justify a transfer of venue.

Each motion to transfer in each of the five separately filed
cases must be analyzed on its own merits in order to determine:

(1)

whether such action could have been filed in the putative transferee

forum; and (2) whether transfer to such permissible transferee forum
would substantially advance interests of convenience and justice.

Although it is evident that each motion to transfer must stand on
its own,

Plaintiff has commendably acknowledged that if the first

test, the threshold test, is met in each of the five cases pending
before this Court, the Court must necessarily consider keeping the

2 Only three patents are asserted in the Toshiba/TAIS Action, but two of
these three patents are also asserted in the Apple Action, and all three
of them are asserted in the other pending actions.

cases together to promote judicial economy,

convenience of the

witnesses and parties (to include Plaintiff), and to lessen the risk
of inconsistent results.

2:14cv346, Hearing Tr. 38-40, ECF No. 57.

Defendants likewise contend in their Court filings that keeping the

cases together is preferable.

The motivation to keep the cases

together appears particularly acute when, as here, the cases involve
the same patents, the same patent claims, the same types of allegedly

infringing consumer products, and the identified potential forums,
the Northern/Central District of California and the Eastern District

of

Virginia,

are

on

opposite

approximately 3,000 miles

apart.

coasts

of

the

United

Although the parties

States,

are

in

apparent agreement that strong consideration should be given to
keeping the cases together, they disagree as to whether the cases
belong together in Virginia, or together in California.
III.

Standard for Transfer of Venue

Title 28 of the United States Code, Section 1404, establishes

that " [f]or 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 or to

any district or division to which all

parties have consented."

28 U.S.C. § 1404(a).3

3 If a case is filed in an improper venue, then 28 U.S.C. § 1406 governs
a motion seeking a transfer of venue.
However, here, none of the Defendants
assert that the instant venue is improper; rather, they argue that the
instant forum is inconvenient for the trial of these individual cases.

clarified in one of Microsoft's briefs,

2:15cvl7,

ECF No.

32,

As

whether

Although listed as the second clause in § 1404 (a) , the threshold
question when addressing a motion to transfer venue is "whether the
proposed transferee court is one in which the action originally may
have been brought."

BHP Int'l Inv., Inc. v. OnLine Exch., Inc., 105

F. Supp. 2d 493, 498 (E.D. Va. 2000) .

"In order to demonstrate that

an action might have been brought in a proposed transferee district,
a movant must establish that both venue and jurisdiction with respect

to each defendant is proper in the transferee district."
Microtek Int'l,

Inc.,

(emphasis added)

250 F.

Supp.

2d 627,

(citing LG Electronics Inc.

Computer Corp., 131 F. Supp. 2d 804,

630

(E.D.

Va.

Koh v.
2003)

v. Advance Creative

812 (E.D. Va.

2001)).

If the

claims could have been brought in the transferee court at the time

the action was filed, the subsequent decision to transfer venue is
within

the

discretion

of

the

court.

One

Beacon

Ins.

Co.

v.

JNB

Storage Trailer Rental Corp. , 312 F. Supp. 2d 824, 828 (E.D. Va. 2004)

(citing Verosol B.V. v. Hunter Douglas, Inc., 806 F. Supp. 582, 591
(E.D.

Va.

1992)) .

If a party seeking transfer makes the threshold showing that
the action could have been filed in the proposed transferee forum,

the

Court

then considers

"whether

the

interest

of

justice

and

convenience of the parties and witnesses justify transfer to that

Defendants' product sales and marketing efforts in this District constitute
sufficient contacts with this forum to confer jurisdiction on this Court
is a separate issue from determining whether this District is an
inconvenient forum for resolving the issues raised in Plaintiff's
complaints.

forum."

Koh,

250 F.

Supp. 2d at 630; see 28 U.S.C. § 1404(a);

TechnoSteel, LLC v. Beers Const. Co.,

2001)
from

(indicating that § 1404(a)
one

district

court

to

271 F.3d 151,

160 (4th Cir.

contemplates "transfer of a case

another

district

court

for

the

conveniences of the parties and witnesses—the only difference being
locale—without substantially affecting the rights of the parties").

In

conducting

the

convenience

and

justice

inquiry,

the

Court

considers several factors to determine whether to transfer venue,

including:

"'(1)

ease

of

access

to

sources

of

proof;

(2)

the

convenience of the parties and witnesses; (3) the cost of obtaining
the attendance of witnesses;
process;

home;

(6)

(4)

the availability of compulsory

(5) the interest in having local controversies decided at

in diversity cases,

the court's familiarity with the

applicable law; and (7) the interest of justice.'"
Co., 312 F. Supp. 2d at 828

at 498) .

One Beacon Ins.

(quoting BHP Int'1 Inv.,

105 F. Supp.

As prior decisions from this District have recognized, the

"principal factors" to consider are:

(1) the plaintiff's choice of

forum; (2) witness convenience and access to sources of proof;

party convenience; and (4) the interest of justice.
Supp. 2d at 633.

Koh,

(3)

250 F.

In weighing these factors, the Court is mindful

that "[t]he party seeking transfer bears the burden of proving that
the circumstances of the case are strongly in favor of transfer" and

that "transfer is not appropriate where it will only serve to shift
the balance of inconvenience from one party to the other."
10

Heinz

Kettler GMBH & Co. v. Razor USA, LLC, 750 F. Supp. 2d 660, 667-68

(E.D. Va. 2010) (internal quotation marks and citations omitted).
IV.

Discussion - Jurisdiction and Venue
A.

Standards

Jurisdiction of Transferee Forum

"As an initial matter,

the court must determine whether the

proposed transferee court is one in which the action originally may
have

been brought."

BHP

Int' 1

Inv. , 105

F.

Supp.

2d at

4 98.

Although application of the § 1404 (a) convenience and justice factors
is governed by the law of the regional circuits, Federal Circuit law
applies to the determination of whether a district court has personal
jurisdiction over a defendant in a patent case.

Avocent Huntsville

Corp. v. Aten Int'l Co., Ltd., 552 F.3d 1324, 1328 (Fed. Cir. 2008) .

"In order to establish personal jurisdiction in a patent infringement
case over a non-resident defendant whose products are sold in the
forum state, a plaintiff must show both that the state long arm

statute

applies

satisfied."

and

that

the

Commissariat

Optoelectronics

Corp.,

395

a

requirements
l'Energie

F.3d

1315,

of

due

1319

(Fed.

are

v.

Atomique

process

Mei

Chi

Cir.

2005)

(citations omitted).

Here,

all Defendants in the

five related patent cases seek

transfer to California, and "California's long-arm statute allows
courts to exercise personal jurisdiction over defendants to the
extent permitted by the Due Process Clause of
Constitution."

Harris Rutsky & Co. Ins.
11

the United States

Services,

Inc. v. Bell &

Clements Ltd., 328 F.3d 1122, 1129 (9th Cir. 2003)

Civ. Pro. § 410.10).

(citing Cal. Code

As explained by the Federal Circuit:

Because California's long-arm statute is co-extensive
with federal due process requirements, the jurisdictional
analyses under California law and federal law are the same.
Schwarzenegger v. Fred Martin Motor Co. , 374 F.3d 797, 801
(9th

Cir.

2004) .

The

constitutional

touchstone

for

determining whether an exercise of personal jurisdiction
comports with due process "remains whether the defendant
purposefully established 'minimum contacts' in the forum
State."
Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474
(1985) (quoting Int'l Shoe Co. v. Washington, 326 U.S. 310,

316 (1945)). . . . The Federal Circuit applies a three
prong test to determine if specific jurisdiction exists:
(1)
whether
the
defendant
purposefully
directed
activities at residents of the forum; (2) whether the claim
arises out of or relates to those activities; and (3)

whether assertion of personal jurisdiction is reasonable
and fair.
AkroCorp. v. Luker, 45 F.3d 1541, 1545-46 (Fed.
Cir. 1995); see also Schwarzenegger, 374 F.3d at 802.

Nuance Communications, Inc. v. Abbyy Software House, 626 F.3d 1222,
1230-31

(Fed.

Cir.

2010).

B. Propriety of Venue in Transferee Forum

To determine whether venue lies in a patent case in a proposed
transferee forum,

the Court must begin with the venue statute that

is specifically tailored to patent cases.

See 28 U.S.C. § 1400(b).

Such statute provides that venue in a patent infringement lawsuit
is proper in "the judicial district where the defendant resides, or

where the defendant has committed acts of infringement and has a
regular and established place of business."
While § 1400(b)

Id. (emphasis added).

does not define the term "resides," such term is

defined in § 1391.

Because the instant cases all involve defendants

12

that are corporations, and because the venue determination must be
made as

to a state

(California)

with multiple

federal judicial

districts, each defendant's residence is defined by § 13 91(d), which
states as

follows:

(d) Residency of corporations in States with multiple
districts.--For purposes of venue under this chapter
[chapter 87 of Title 28], in a State which has more than
one judicial district and in which a defendant that is a
corporation is subject to personal jurisdiction at the
time an action is commenced, such corporation shall be
deemed to reside in any district in that State within which
its contacts would be sufficient to subject it to personal
jurisdiction if that district were a separate State, and,
if there is no such district, the corporation shall be
deemed to reside in the district within which it has the

most significant contacts.

28 U.S.C. § 1391(d) (emphasis added) ; see LG Electronics, 131 F. Supp.

2d at 810 (highlighting, while interpreting an earlier version of
§ 1391, that "[b]ecause Chapter 87 of the Code includes § 1400(b),
the residence definition found in § 1391[d] applies to § 1400(b)");
see also VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574,
1578

(Fed.

Cir.
C.

1990).
State-wide vs.

District-wide Contacts

In conducting the jurisdictional and venue inquiries based on
the

standards

set

forth above,

in certain circumstances,

it

is

important to distinguish between the contacts considered for the
jurisdictional analysis, which look to a party's contacts with the

entire state, and the contacts considered for the venue analysis,
which as stated in § 1391(d) , are limited to those contacts with the

13

particular federal district within such state.

Accordingly,

in

conducting this two-pronged inquiry in the instant case:
First,

it must be shown,
"minimum

[California]

. . . that

contacts"

so that

with

[the defendant]

the

entire

state

has
of

"maintenance of the suit does not

offend traditional notions of fair play and substantial
justice."
International Shoe v. Washington, 326 U.S.
310, 316 (1945).
Second, personal jurisdiction having
been established, venue is proper in any district in which
there

are

also

sufficient

contacts

to

fulfill

the

International Shoe standard.
Finally, if a defendant's
contacts are spread throughout the state in such a manner
that there is no single district in which the requirements
of personal jurisdiction are satisfied, venue is proper
in the district with the "most significant contacts."
28
U.S.C.

Section 1391[d].

Hester Industries Inc. v. Stein Inc., No. 96-719-A, 1996 WL 710835,

at *3

(E.D. Va.

Oct.

3, 1996); see SKF Condition Monitoring,

Inc.

v. SAT Corp. , No. 07cvlll6, 2008 WL 706851, at *1 n.l (S.D. Cal. Feb.

27, 2008)

(explaining that "[i]n states with more than one federal

district, personal jurisdiction and venue for corporate defendants
are similar but not identical questions," with the jurisdictional
inquiry focusing on contacts "with the forum state," and the venue
inquiry focusing on contacts

"with the

forum district");

Avery

Dennison Corp. v. Alien Technology Corp., 632 F. Supp. 2d 700, 712

(N.D. Ohio 2008)

("The venue analysis is similar to the personal

jurisdiction analysis,
otherwise,
venue]

but, despite

the relevant contacts

[the plaintiff's]

contention

[for the purposes of analyzing

are limited to those in the Northern District of Ohio,

opposed to the entire state."); Bilek v. Burris,

14

No.

as

3:10-13-DCR,

2010 WL 4629616, at *8 (E.D. Ky. Nov. 8, 2010)

(explaining that, even

though the district court for the Eastern District of Kentucky "may
have personal jurisdiction over [the plaintiff's] unjust enrichment
claim" based on events occurring in the Western District of Kentucky,

venue

is

improper

in

the

Eastern

District

because

unlike

jurisdiction, venue requires a district by district analysis); see
also Autobytel, Inc. v. InswebCorp., No. 2:07cv524, 2009 WL 901482,

at *2 n.2 (E.D. Tex. Mar. 31, 2009)

("[P]ersonal jurisdiction only

requires that the necessary contacts are found within the forum

state, here the entire State of Texas." (citing International Shoe,
326 U.S.

at 317)).

D. Analysis of Jurisdiction and Venue in the
Five Cases Pending before this Court

1. Apple Action, Microsoft Action, & Motorola/Nokia Action

As stated in this Court's prior Order, ECF No. 31, the parties'

briefing demonstrates

that

there

is no dispute that

the Apple,

Microsoft, and Motorola/Nokia Actions could have been filed in the

Northern District of California.

As the basis for jurisdiction and

venue in the Northern District of California appears to be supported
by

the

respective

Defendants'

filings

and

is

unchallenged

by

Plaintiff in these three actions, no further analysis on this issue
is necessary.

Cf. Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed. Cir.

1995) (indicating that "where the plaintiff's factual allegations
are not directly controverted, they are taken as true for purposes

15

of

determining

jurisdiction")

(internal

quotation

marks

and

citations omitted).
2.

Vizio Action

Due to the lack of clarity in the initial record,

the Court

permitted additional briefing as to whether Vizio was in fact seeking
transfer to the Northern District of California and whether Vizio

was subject to suit in that district.4
received

a

supplemental

brief,

This Court subsequently

and

supporting

exhibits,

demonstrating that Vizio does in fact expressly request transfer to
the Northern District of California, and that venue is proper in that
district

on

the

basis

of

Vizio's

contacts

with

the

district.

Specifically, Vizio presented evidence that it sells its products,
including

the

allegedly

infringing

products,

both

directly

to

consumers in the Northern District of California through the Vizio

website and to large nationwide retailers, including Walmart, Best
Buy,

and

Target.

well-aware

that

Vizio's

such

evidence

retailers

have

demonstrates
physical

that

locations

it
in

is
the

Northern District of California and that they sell Vizio products
to end consumers from such stores.
32-5,

32-6,

ECF No. 32, at 4; ECF Nos. 32-4,

and 32-12.

4 Vizio, in the first instance, requests the transfer of its case to the
Northern

District

of

California

as

one

of

the

five

cases

for

which

Defendants collectively seek transfer.
In the event that this Court denies
the motions seeking to transfer all five cases to the Northern District
of California, Vizio alternatively requests transfer of the Vizio Action
to the Central District of California, Vizio's home forum.
Nos.

25,

32.
16

2:14cv347, ECF

Plaintiff's
acknowledges

response

that

"Vizio's

to

Vizio's

evidence

supplemental

goes

filing

toward particularized

targeting of the Northern District of California" and notes that "GTS
does not dispute those facts."

ECF No.

33.

The Court therefore

finds that Vizio has sufficiently demonstrated that Vizio was subject
to suit in the Northern District of California at the time the Vizio

Action was filed.5
3. Toshiba/TAIS Action

Due to the lack of clarity in the initial record as to the
asserted basis for jurisdiction and venue in the Northern District
of California as to Toshiba, a Japanese Corporation, and TAIS, an

American subsidiary of Toshiba that is responsible for distributing
Toshiba-branded

electronics,

the

Court

permitted

additional

briefing and subsequently held a hearing on these matters.

The

primary focus of the hearing was whether TAIS, headquartered in the
Central District of California,

had sufficient contacts with the

Northern District of California such that venue was proper in that

5 It is undisputed that Vizio is headquartered in the Central District of
California, and Vizio's activities within California appear to subject
Vizio to the jurisdiction of federal courts in any district within the state

of California. However, as discussed above, federal statute provides that
venue in a state with multiple judicial districts is to be determined based
on viewing each district as if it were a different state, 28 U.S.C.
§ 1391(d),

and

thus,

Vizio's

contacts

with

the

Northern

District

of

California were analyzed to determine if venue was proper there.
Because
it is undisputed that Vizio's contacts with the Northern District of
California are sufficient to satisfy the International Shoe standard, those
contacts not only establish that venue is proper in that district, but also
provide an alternative basis for that court to assert jurisdiction over
Vizio irrespective of the fact that Vizio is headquartered in California.
17

district

at

the

time

the

Toshiba/TAIS

Action

was

filed.

Also

addressed was the relationship between Toshiba and TAIS.

Based on the testimony presented at the hearing by Masa Okumura,
TAIS's "Director of Product Development" for PCs, laptops, tablets,
and other electronics,

that,

at

the

time

the Court finds that TAIS has demonstrated

the

Toshiba/TAIS

Action

was

filed,

both

jurisdiction and venue were proper in the Northern District of
California as to TAIS.

First, as to jurisdiction, it is undisputed

that TAIS is headquartered in the Central District of California.
Accordingly, federal courts in any district in California appear to

have jurisdiction over TAIS based on its continuous and systematic
activities

in

that

state.

Cf.

J.

Mclntyre

Machinery,

Ltd.

v.

Nicastro, 131 S. Ct. 2780, 2787 (2011) (plurality) ("Citizenship or

domicile—or,

by

analogy,

incorporation

or

principal

place

of

business for corporations—also indicates general submission to a
State's powers"
Brown,

131 S.

Second,

(citing Goodyear Dunlop Tires Operations,

Ct.

2846,

2854

S.A.

v.

(2011)).

even disregarding any of TAIS's activities that are

confined to the Central District of California, TAIS's purposeful,
longstanding, and intentional contacts with the Northern District

of California independently establish that both jurisdiction and
venue are proper in that court.

At the hearing before this Court,

Masa Okumura testified about TAIS's direct and purposeful targeting
of "enterprise customers" in the Northern District of California,
18

such as Oracle,

Intel,

Google,

and Applied Materials.

Hearing Tr. 15-20, ECF No. 57.

2:14cv34 6,

In the first half of 2014 (the period

immediately preceding the filing of the Toshiba/TAIS Action) TAIS
made

direct

sales

of

"a

few

thousand

units"

of

Toshiba-branded

products to three enterprise customers in the Northern District of

California and also had one employee "system engineer" that worked
in

that

district

"enterprise

in

order

customers"

Additionally,

Mr.

that

to

directly

are

located

interface
there.

Okumura testified that TAIS

with

Id.

TAIS's

at

20-21.

sold more

than a

hundred thousand Toshiba-branded laptops and tablets in the first
half of 2014 in the Northern District of California through sales
to national retail chains such as Best Buy,
others.

Id.

at

22-23.

Such

evidence

is

Costco,

Staples,

sufficient

to

and

render

jurisdiction and venue proper as to TAIS in the Northern District
of California.

Nuance Communications,

626 F.3d at 1230-31.

The Court likewise finds that Mr. Okumura's testimony,

when

considered in conjunction with the affidavit previously provided by
Masatsugu

Mukuge,

Toshiba's

"Chief

Specialist,"

sufficiently

demonstrates that at the time the Toshiba/TAIS Action was filed,

jurisdiction and venue were
California

as

to

proper in the Northern District of

Toshiba,

a

foreign

corporation.

As

to

jurisdiction, Toshiba has a wholly owned subsidiary (TAIS) located
in California for the purpose of distributing Toshiba's products
throughout

the

United

States,

to
19

include

within

the

state

of

California.

In

the

six

months

preceding

the

filing

of

the

Toshiba/TAIS action, TAIS sold over 370,000 Toshiba-branded laptops
and tablets in California.

2:14cv346, Hearing Tr. 23, ECF No. 57.

Additionally, Mr. Okumura, who works for TAIS, testified that it is
his

responsibility

to

"understand

the

U.S.

market

needs

and

understand technology trends in the United States" and to pass this
information on to Toshiba's product development team.

Id. at 15.

Mr. Okumura further testified that it was TAIS's understanding that

Toshiba's

intent was

for

"TAIS to

sell nationally,

which would

include Northern California, because it is a large market."

18.

Id. at

Mr. Mukuge's affidavit clearly confirmed such fact, indicating

that "Toshiba Corp. is aware and intends that the Accused Products
are or have been marketed and sold to customers in the Northern

District of California."

ECF No. 49 1 9 (emphasis added).

Jurisdiction over Toshiba in California for matters relating

to the sale of Toshiba products is appropriate because the record
demonstrates that the sale of Toshiba products in California "is not
simply an isolated occurrence, but arises from the efforts of the
manufacturer or distributor to serve directly or indirectly,

the

market for its product[s]" as Toshiba "delivers its products into
the

stream of

commerce

purchased by consumers

with

in

the

expectation

[California]."

Corp. v. Woodson, 444 U.S. 286, 297-98 (1980)

that

they will

be

World-Wide Volkswagen
(emphasis added); cf.

AFTG-TG, LLC v. Nuvoton Tech. Corp., 689 F.3d 1358, 1365 (Fed. Cir.

20

2012) (explaining that isolated and sporadic shipments into the forum
state by the

defendants

were

insufficient

to

contacts under any stream of commerce theory) .
have

a

well-established

operated

by

a

and

wholly-owned

long-standing

subsidiary

establish minimum

Not only does Toshiba
distribution

that

directly

network

targets

customers in California, but such subsidiary is itself headquartered
within California.

Nuance

Communications,

626

F.3d at

1232-34.

Applying the three part jurisdiction test articulated by the Federal
Circuit:

(1)

Toshiba purposefully directed its activities in an

effort to sell Toshiba products to California customers;

(2) the

instant allegations of patent infringement clearly arise out of and
are related to such sales; and (3) a California court's assertion

of jurisdiction over Toshiba is reasonable and fair in light of
Toshiba's working relationship with TAIS, a wholly owned subsidiary,
as both a long-standing affiliated distributor of Toshiba products
and as a research arm to gauge American consumers demand for Toshiba

products.
Solid,

18,

Inc.,

2014)

See Corning Optical Communications Wireless, Ltd. v.
No. 3:14cv367,

(concluding

2014 WL 4104058, at *3 (E.D. Va. Aug.

that

federal

courts

in

California

had

jurisdiction over a Korean supplier that distributed its products
in the United States through a California distributor because the

Korean company "knew it was affiliating itself with a business in
California in a manner that would lead to substantial contacts with

21

California")

(internal

quotation

marks

and

citations

omitted).

Stated differently:

[Toshiba] established a distribution system with [TAIS]
that was intended to deliver products to the U.S. market
[Toshiba] knew
via a [wholly] owned California entity.
the destination of its products, and its conduct and
connections with the forum state [of California] were such

that it should have reasonably have anticipated being
brought into court there.
Nuance Communications, 626 F.3d at 1234; see Beverly Hills Fan Co.

v. Royal Sovereign Corp.,
(discussing

various

21 F.3d 1558,

formulations

of

1566

the

(Fed.

"stream

Cir.

of

1994)

commerce"

jurisdictional theory, but noting that, under any version of the
test, exercising jurisdiction over a foreign defendant in a patent
infringement action is "consonant with due process" when a foreign
defendant, "acting in consort" with an American distributor, "placed
the accused [products] in the stream of commerce" knowing the "likely
destination of the products" and knowing that "their conduct and
connections

with

reasonably have

the

forum

state

were

such

anticipated

being

brought

that

into

they

court

should

there");

Fujitsu Ltd. v. Belkin Int'l, Inc., 782 F. Supp. 2d 868, 884 (N.D.
Ca. 2011)
on the

(finding jurisdiction over a Taiwanese corporation based

sale of such corporation's allegedly infringing goods in

California, noting that such finding did not depend on whether the
sales were made directly by the foreign corporation or through its
American

subsidiary

acting

comports with both the

as

the

distributor).

It

therefore

California long-arm statute and the due
22

process clause of the United States Constitution for any federal
court in California to exercise jurisdiction over Toshiba.
As to venue, unlike the district by district § 1391(d) analysis

performed for domestic corporations, Toshiba's status as a foreign

corporation

subject

to

automatically renders
California,

venue

regardless

individual district.

the

of

jurisdiction

proper

Toshiba's

See 28 U.S.C.

in any

of

California

federal

contacts

district

specific

§ 1391(c)(3)

courts

to

in

that

("For all venue

purposes-- ... a defendant not resident in the United States may
be sued in any judicial district."); Brunette Mach. Works, Limited
v. Kockum Industries, Inc., 406 U.S. 706, 714 (1972) (indicating that

the provision in § 1391 governing venue over a foreign defendant "is
properly regarded, not as a venue restriction at all, but rather as
a declaration of the long-established rule that suits against aliens
are wholly outside the operation of all the federal venue laws,
general and special"); In re Princeton Digital Image Corp., 496 F.

App'x 73, 75 (Fed. Cir. 2012) (noting that in Brunette, the Supreme
Court "reaffirmed the long-standing rule that a patent infringement
suit could be brought against a foreign defendant in any district
court, and was not restricted to where the defendant resides, commits

acts of infringement, or has a regular and established business as
otherwise required under the patent venue statute").
Summarizing the above, the Court finds that each Defendant in
all five pending actions has demonstrated that the Northern District
23

of California had jurisdiction over such party, and that venue was

proper in that district, such that each of the five pending cases
"could have been brought" in the Northern District of California at
the

time each case was

V.

Discussion -

filed.

§ 1404(a)

Convenience and Justice Factors

Once it is determined that an action could have been filed in

the

proposed

transferee

district,

the

subsequent

decision

to

transfer venue "is committed to the sound discretion of the district

court."

One Beacon Ins. Co. , 312 F. Supp. 2d at 828 (citing Verosol

B.V. , 806 F. Supp. at 591); see Gower v. Lehman, 799 F.2d 925, 927

(4th Cir.

1986)

("A section 1404(a)

transfer merely involves a

discretionary change to another district where the action could have

been brought.") .
various

ways

to

As previously set forth herein, although there are
formulate

the

relevant

considerations

for

determining whether a discretionary transfer is appropriate,

the

primary considerations are: (1) the plaintiff's choice of forum; (2)

witness convenience and access to sources of proof;
convenience; and (4) the interest of justice.

(3)

party

Koh, 250 F. Supp. 2d

at 633; JTH Tax, Inc. v. Lee, 482 F. Supp. 2d 731, 736 (E.D. Va. 2007) .
A.

Plaintiff GTS's Initial Choice of Forum

"Generally, the first factor-a plaintiff's choice of venue-is

given substantial weight as ' [i] t is well settled that a court should
rarely disturb a plaintiff's choice of forum unless the balance of

hardships clearly favor transfer.'"
24

Virginia Innovation Sciences,

Inc. v. Samsung Electronics Co., 928 F. Supp. 2d 863, 868 (E.D. Va.

2013)
Inc.

(alteration in original)
v.

Ralsky,

203

F.

Supp.

(quoting Verizon Online Services,
2d 601,

623-24

(E.D.

Va.

2002)).

However, because "the weight accorded a plaintiff's choice 'varies
in proportion to the connection between the forum and the cause of

action[,] ... a plaintiff's choice of its home forum is given more
weight than its choice of a foreign forum.'"

Acterna, L.L.C. v.

Adtech, Inc., 129 F. Supp. 2d 936, 938 (E.D. Va. 2001) (quoting GTE
Wireless, Inc. v. Qualcomm, Inc., 71 F. Supp. 2d 517, 519 (E.D. Va.
1999)).

Such distinction

carries

significance

because

when a

plaintiff chooses a forum other than its home "'it is often more
difficult

for

the plaintiff

to

convenient for the plaintiff. '"

show why such a

forum is more

Koh, 250 F. Supp. 2d at 634 (quoting

17 James Wm. Moore, et al. , Moore's Federal Practice § 111.13[1] [c]
(3d ed.

2002)).

Although the first step in the analysis typically looks to
whether a plaintiff has filed suit in its
opinions

from

prior

patent

cases

filed

"home forum," various
in

this

district

have

recognized that the label of "home forum" is not itself dispositive.
See Virginia Innovation Sciences, 928 F. Supp. 2d at 868 ("'Even when
the plaintiff sues in its home forum,

that fact is not by itself

controlling and the weight of that factor depends on the nexus tying
the case to the forum.'" (quoting Gebr. Brasseler GmbH & Co. KG. v.
Abrasive Tech.,

Inc.,

No.

I:08cvl246,

25

2009 WL 874513,

at *2

(E.D.

Va. Mar. 27, 2009)).

Multiple judges, including the undersigned,

have previously held in patent cases that it may be appropriate to
afford a plaintiff's choice of forum "minimal weight," when the
plaintiff

has

few

business

activities

in

the

district

and

is

appropriately classified as a "non-practicing entity," that "does
not

research

"acquires

and

patents,

develop

new

licenses

technology,"

the

but

technology,

instead

and

sues

merely

alleged

infringers."

Pragmatus AV, LLC v. Facebook, 769 F. Supp. 2d 991,

995 (E.D. Va.

2011); see Innovative Communications Techs., Inc. v.

Vivox,

Inc., No.

2:12cv7, 2012 WL 4738979, at *4

(E.D. Va.

Oct. 3,

2012) (giving "little or no weight" in favor of the plaintiff s chosen
forum based on plaintiff's "negligible" presence in the district,
noting that although the plaintiff asserted that its home office was
in Arlington, Virginia,

the plaintiff did not appear to have any

permanent employees that worked there); CIVIX-DDI, LLC v. Loopnet,

Inc., No. 2:12cv2, 2012 WL 3776688, at *3-4 (E.D. Va. Aug. 30, 2012)
(declining to give "great weight" to the plaintiff's choice of forum

because even assuming that Virginia was

technically plaintiff's

"principal place of business," the plaintiff did not challenge its
status as a "non-practicing" patent holding entity that lacked any
significant operations in this district, further noting that while
plaintiff's principle lived in the district,

he did not even work

full-time for the plaintiff); see also Bluestone Innovations, LLC
v. LG Electronics, Inc., 940 F. Supp. 2d 310, 314-15 (E.D. Va. 2013)
26

(applying "a form of hybrid deference" to the plaintiff's choice of
forum because although the record demonstrated that the plaintiff

had been "continuously in Virginia since its incorporation in 2009"

and had "five employees in its office," the plaintiff had acquired
the patent at issue from a related entity located in Texas only one
week before filing suit in Virginia).
Here, the Court has substantial reservations as to whether the

Eastern District of Virginia is properly deemed GTS's home forum,

and even if such finding is appropriate in the technical sense, the
Court has little difficulty concluding that Plaintiff's ties to this
forum are tenuous at best.

Moreover, this forum appears to have no

special status vis-a-vis the nationwide infringement alleged in the
five cases pending before this Court.
First, from Plaintiff's own submissions, it appears that GTS
is a "non-practicing entity" with (at best) a single-person office

in Virginia.
argument,

Plaintiff fails

suggesting

operations,

that

to advance any evidence,

GTS

has

"manufacturing

or even

facilities,

... or employees that are located in this district

besides its [president]."

Second,

although

CIVIX-DDI, LLC, 2012 WL 3776688, at *3.

the

above

facts

are

already

generally

unfavorable to GTS, such facts are called into question in light of
the evidence advanced by Defendants regarding GTS's status as a
properly
reveals

licensed
that

corporation.

during

the

Notably,

course
27

of

this

Defendants'
litigation,

evidence
Defendants

attempted to verify GTS's status as a valid business entity by

performing

online

searches

of

the

Virginia

State

Corporation

Commission's website and the Westlaw Delaware Business Registration
Records database.

Such electronic records revealed that,

in late

2014 around the time these five cases were filed in this Court,

Plaintiff was not registered to do business in Virginia and lacked

"good standing" in Delaware, its state of incorporation.6
2:14cv391,

ECF No.

23-6;

2:15cvl7,

ECF No.

See, e.g. ,

15-2.

Third, Defendants advance evidence that appears to demonstrate
that

Plaintiff

full-time

does

not

employee

in

Specifically,

even maintain

Defendants'

the

a

Eastern
photographic

dedicated

office

District

of

evidence

of

one

Virginia.
and

sworn

affidavits demonstrate that a site visit was performed at GTS's

claimed Virginia address, but rather than finding GTS's name in the
building directory or on the business suite that Plaintiff claims

as its physical address, Defendants located signs for two different

business entities that are operating from such same suite.7
e.g.,

2:14cv391, ECF No. 20; 2:15cvl7, ECF No. 15-6.

See,

In response

6 Microsoft/Nokia acknowledge in their briefing that GTS regained its "good
standing" in Delaware in late 2014, but note that such development occurred
after GTS's lack of good standing was highlighted in a brief filed in the
Toshiba/TAIS action.
2:15cvl7, ECF No. 19. Microsoft/Nokia and other
Defendants further highlight that GTS is a subsidiary of an active

California company, and Defendants thus argue that GTS exists in Virginia
for the sole purpose of filing suit in this district.

Id.

7 Defendants assert that the two entities found at the physical address are
operated by the same individual that acts as Plaintiff's president.

28

to such evidence, GTS has largely stood mute, as Plaintiff has not
advanced an affidavit from GTS's president, or any other employee
or owner of GTS.

Rather,

litigation counsel for GTS has advanced

a sworn affidavit asserting, without providing any factual details,
that "Seok Chan Baek is employed as the President of Global Touch
Solutions, LLC ("GTS") , which was incorporated in September of 2012,

and whose principal place of business has been in Vienna, Virginia
since GTS's incorporation."

2:14cv391, ECF No. 21.

The affidavit

further states that "Mr. Baek has resided in this District since 2006

. . . [and] is familiar with the business operations of GTS."

Id.

Nowhere in such affidavit does GTS explain what "operations" GTS
purportedly performs, nor does it assert that GTS has any business

documents located in Virginia.8
In this Court's view, failing to have a dedicated office in this

district, allowing corporate registrations and/or business licenses

to lapse, and advancing as the strongest argument for a legitimate
presence that the corporate president lives in the district and is

"familiar"

with

the

corporation's undisclosed

"operations,"

inadequate to demonstrate that GTS has sued in its
Moreover,

is

"home forum."

even if this district is assumed to be GTS's home forum

in the technical sense, as a non-practicing entity that does not even

8 As noted by Vizio, 2:14cv347, ECF No. 29, the Eastern District of Virginia
is purportedly the home forum of GTS and the home of its president, Mr.
Baek, and it would presumably have been a simple procedure to obtain an
affidavit from Mr.

Baek.

It is therefore curious that Mr.

himself submit an affidavit in support of GTS's filings.
29

Baek did not

maintain an office in this district with a single full-time employee,
GTS's choice of forum is afforded minimal weight by the Court.

See

Samsung Electronics Co., Ltd. v. Rambus, Inc., 386 F. Supp. 2d 708,
716 (E.D. Va. 2005) ("When the plaintiff's choice of forum is neither
the nucleus of operative facts, nor the plaintiff's home forum, the
plaintiff's choice is accorded less weight.").
Turning to the connection between the instant forum and the

facts of the five pending patent infringement actions, although the
Court does not question that the instant forum was a "permissible"
forum for the filing of these five suits, the fact that "Virginia's

residents purchase and use allegedly infringing products" and the
fact that some Defendants have stores or dedicated salespeople in

this district to market and sell such products is not unique to
Virginia even by Plaintiff's own allegations, and it appears that
Defendants "likely have this same contact with every other state in

this nation."

Lycos,

(E.D. Va. 2007) .

Inc. v. TiVo, Inc., 499 F. Supp.2d 685, 692

Accordingly, in light of GTS's tenuous ties to this

forum, the lack of any allegedly infringing activity occurring in

Virginia that is not also occurring in any other state with a large
customer base for electronics, and the fact that "[t]he design and
manufacture of the allegedly infringing products" as to each of the
five cases "occurred outside of Virginia,"

GTS's

"choice of

the

Eastern District of Virginia as the forum for th[ese] action [s] will

. . . not impede transfer,

if the other convenience and justice
30

factors point to the
6 92-93;

see

[Northern District of California]."

NanoEntek,

Inc.

v.

Bio-Rad

Laboratories,

Id. at

Inc.,

No.

2:llcv427, 2011 WL 6023189, at *3 (E.D. Va. Dec. 2, 2011) ("Mere sales

and marketing activity does not entitle [the plaintiff's] choice of
forum to substantial weight when none of the infringing products were

developed or produced in this District." (citing Agilent Techs., Inc.

v. Micromuse, Inc., 316 F. Supp. 2d 322, 327 (E.D. Va. 2004) ); Bascom
Research,

LLC v.

Facebook,

Inc.,

No.

l:12cvllll,

LEXIS 186712, at *2-4 (E.D. Va. Dec. 11, 2012)

choice

of

forum

"minimal

weight

due

to

2012 U.S.

Dist.

(giving Plaintiff's

the

plaintiff's

weak

connection to the Eastern District of Virginia" in a case where the

plaintiff had "no facilities, operations, offices, or employees that
are located in this district besides its principal," and while the

companies' principle was a long-term resident of Virginia, he did
"not appear to work full-time for the plaintiff").
B.

Witness Convenience & Access to Sources of Proof

"The convenience of the witnesses is of considerable importance

in determining whether a transfer of venue is appropriate under
Section 1404(a)," and if "reasonably possible,
preferred

to

other

means

of

presenting

Electronics Co., 386 F. Supp. 2d at 718.

live testimony is

evidence."

Samsung

Assessment of this factor

generally requires a court to consider,

among other things,

"'ease

the

of

witnesses,

access

to

sources

of

proof,

costs

of

obtaining

and the availability of compulsory process.'"
31

the

Lycos,

Inc. , 499 F. Supp. 2d at 693 (quoting Samsung Electronics Co., 386
F. Supp.

2d at

testimony that

717
is

n.13).

"Naturally,

merely cumulative,

in contrast

to witness

'greater weight

should be

accorded inconvenience to witnesses whose testimony is central to

a claim and whose credibility is also likely to be an important

issue.'"
Koh,

Samsung Electronics Co., 386 F. Supp. 2d at 718 (quoting

250 F. Supp.

2d at 636).

non-party witnesses should be

Additionally,

"the convenience of

afforded greater weight

[than the

convenience of party witnesses] in deciding a motion to transfer."
Id. at 719 (citing Koh, 250 F. Supp. 2d at 637).
As the parties seeking transfer, Defendants bear the burden of

demonstrating that the § 1404(a)
which is typically a high bar.

factors strongly favor transfer,

Bluestone Innovations, LLC, 940 F.

Supp. 2d at 316 n.9 (citing Koh, 250 F. Supp. 2d at 633) .

However,

here, because Plaintiff s choice of forum is afforded limited weight,
the metaphorical "bar"

has been lowered.

Id.

Moreover,

"[i]n a

patent infringement action, as a general rule 'the preferred forum

is that which is the center of the accused activity, '" and the "'trier
of fact ought to be as close as possible to the milieu of the

infringing device

production.'"

and the hub of activity centered around its

GTE Wireless, Inc., 71 F. Supp. 2d at 519 (quoting

Santrade Ltd. v. Berndorf ICB International Conveyor Belts,

Inc.,

No. 6:92-2032-3, 1992 WL 470482, at *2 (D.S.C. Oct. 29, 1992)); see

DietGoal Innovations LLC v. Wegmans Food Markets, Inc. , 993 F. Supp.
32

2d 594, 602

(E.D. Va.

2013)

("The location of the defendants is

particularly relevant . . . because in a patent infringement case,

the preferred

forum

is

frequently

the

center

of

the

accused

activity." (internal quotation marks and citations omitted)).9
To carry its burden in this district, the party seeking transfer

is generally

required to

"proffer,

by affidavit or otherwise,

sufficient details respecting the witnesses and their potential

testimony to enable the court to assess the materiality of evidence
and the degree of inconvenience."

Koh, 250 F. Supp. 2d at 636 (citing

Corry v. CFM Majestic, Inc., 16 F. Supp. 2d 660, 667 n.16 (E.D. Va.

1998)).

However,

in patent cases, it is "permissible to infer,

absent any contrary evidence from the non-movant, that witnesses are
located at or near the center of the allegedly infringing activities
and that witnesses involved in the design and manufacture of the

accused products are material."

Koh, 250 F. Supp.

(emphasis added)

16 F.

(citing Corry,

Supp.

2d at 636-37

2d at 667 n.16).

Although Federal Circuit law does not control the § 1404 (a) analysis,
the Federal Circuit has recognized the general proposition that,
because "'the bulk of the relevant evidence usually comes from the

accused infringer,

. . . the place where the defendant's documents

9 As previously recognized by the undersigned judge,

"the general rule

recommending the 'center of the accused activity' as the preferred forum

in patent infringement cases applies only when the plaintiff did not file
suit in its home forum."
Virginia Innovation Sciences, 928 F. Supp. 2d
at 869 n.2 (citing comScore, Inc. v. Integral Ad Science, Inc., 924 F. Supp.
2d 677, 684 (E.D. Va. 2013)).
However, here, as discussed above,
Plaintiff's ties to the instant forum are so tenuous that such preference

is applicable in this case.
33

are kept weighs in favor of transfer to that location.'"

In re

Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009) (quoting Neil
Bros.

Ltd.

(E.D.N.Y.

v.

World Wide Lines,

2006));

(transferring

Inc.,

see GTE Wireless,

the

case

to

425

Inc.,

California

as

F.
71

Supp.

2d 325,

F. Supp.

"the

2d at

central

330
519

issues

concerning the accused activity revolve around the cellular phones
which are designed and manufactured in San Diego") (emphasis added) .

Here, it should go without saying that the existence of five

separate cases necessarily means that there are varying "centers of
accused activities"

designed,

where the allegedly infringing products are

and thus,

there are varying locations where the most

material documents, and the persons identified by Defendants as the

most likely trial witnesses, can be found.10

However, although the

specific location of the documents and witnesses varies somewhat from
case to case, all cases involve specifically identified witnesses
and sources of proof on the west coast of the United States in relative
close proximity to the Northern District of California.

It appears

undisputed that Apple has the strongest argument for transfer to the
Northern District of California, as Apple has its company management,
research and development, and marketing offices primarily in or near
Apple's

headquarters

Northern District.

in

Cupertino,

California,

which is

in

the

2:14cv390, ECF No. 17-1; see Macronix Int'l Co.

10 Moreover, within the Microsoft/Nokia Action, there appears to be one
primary "hub of activity" for the Microsoft-branded products,
different "hub of activity" for the Nokia-branded products.
34

and

a

v. Spans ion Inc. , No. 3:13cv679, 2014 WL 934521, at *5 (E.D. Va. Mar.

10, 2014)

("The record shows that design,

research,

importation,

marketing, and sales activity was centered in the Northern District
of

California,

which

'permit[s]

the

inference

witnesses and documents are located in the

that

[Northern]

material

District of

California and will be more readily accessible' in that district than
this one." (alterations in original)
at

638)).

Defendant

Motorola

(quoting Koh, 250 F. Supp. 2d
has

also

provided

evidence

demonstrating that likely witnesses and sources of proof, to include

documents related to "the research design,

sales and marketing of

the Accused Products and the Accused Functionality" are located in
the Northern District of
physical facility.

integrated

where Motorola has a large

2:14cv3 91, ECF No.

provided evidence that

parts

California,

into

three

the

19.

Motorola has further

third-party suppliers that provide

accused devices:

(1)

are

located

in

California, with two of these suppliers located within the Northern
District; and (2) likely have information relevant to the Motorola

Action.

2:14cv3 91, ECF No. 19.

As to Nokia, its "principle place

of business" is in the Northern District of California where it makes

decisions regarding the sales and marketing of Nokia's products.
2:15cvl7,
activities"

ECF

No.

that

19-5.

occur

Nokia's

within

the

"research

United

States

and
all

development
occur

in

a

facility in the Southern District of California, and certain accused
devices were "developed wholly" at such facility.
35

2:15cvl7, ECF No.

19-4.

Similar

to

Motorola,

Nokia

has

provided

evidence

demonstrating that a third-party hardware supplier who provides
components associated with the display, touch screen, and/or power
management

capabilities

(which

appear

relevant

to

Plaintiff's

infringement claims) is located in Southern California.

Id.

Staying in the state of California, but leaving the Northern
District, Vizio has advanced evidence demonstrating that witnesses

and physical evidence are located at Vizio's "principle place of
business and headquarters" in the Central District of California,
which

is

several

hundred

miles

from

the

courts

of

the

Northern

District of California, rather than several thousand miles from this

Court.

2:14cv347, ECF No. 26-5.

Similarly, TAIS is a "California

corporation headquartered in and having
business in [the Central District of]

its

principle place of

California," 2:14cv346,

ECF

No. 20, although the record indicates that TAIS only advises parent
company Toshiba on the U.S. demand for electronics, with the hub of

design and development activity for Toshiba-branded products being
located in Japan.

2:14cv346, ECFNo. 20.

TAIS' s business documents

related to the sales and marketing of the allegedly infringing
products are

engineers

located in its

responsible

for

California headquarters,

testing

accused

tablets

located in the Central District of California,
in Tennessee.

Id.

36

with some

and

laptops

and others located

Leaving the state of California, but staying on the west coast,
Microsoft's headquarters and center of accused activity is located

in

Redmond,

2:15cvl7,

Washington,

ECF No.

where

19-1.

Microsoft

Microsoft

has

is

headquartered. 1X

also provided evidence

indicating that a third-party hardware component supplier that has

worked

with

Microsoft

capabilities

of

to

some

design

of

and

develop

Microsoft's

power-management

accused

products

is

headquartered in the Northern District of California, and has another
location in Redmond,

Washington.

2:15cvl7,

ECF No.

19-1.

Other

than retail stores operated by some of the named Defendants, it does
not appear that any of the Defendants maintain physical offices in
Virginia

that

contain

admissible

evidence

relevant

to

the

allegations in the respective complaints.12
Although some Defendants clearly have stronger ties

to the

Northern District of California than others, Defendants all assert

that witnesses and documents associated with Apple and believed to

be located in the Northern District of California would be necessary
in all pending actions as such materials and persons are relevant

11 Microsoft also indicates that some of the research and design activities
for

accused

2:15cvl7,

Microsoft

ECF No.

19.

products
However,

occurs

in

Fort

Collins,

Colorado.

Microsoft asserts that all of the Fort

Collins documents are also accessible from its worldwide headquarters in
Redmond, Washington.

12 Plaintiff initially asserted in the Toshiba/TAIS Action that TAIS may
have a physical office in Virginia, but TAIS provided responsive evidence
indicating that while TAIS previously had two offices in Virginia, one
closed in 2005 and the other closed in 2006.

37

2:14cv346, ECF No. 34.

to an anticipated invalidity defense associated with Apple's prior

art.13

See In re Microsoft Corp. , 630 F.3d 1361, 1363 (Fed. Cir. 2011)

(granting a petition for a writ of mandamus and directing the transfer
of a patent case from Texas to the Western District of Washington,
where Microsoft is headquartered, based on the plaintiff's tenuous
ties to Texas and the fact that the transferee district contained:

(1) all of defendant's "witnesses relating to sales, marketing and
product direction and prior art";

"relevant

documents

and

and (2) all of the defendant's

evidence

relating

to

the

marketing,

development, and design of the accused products" (emphasis added)).
Defendants further advance evidence indicating that several other

specifically identified "non-party" individuals appear to reside in
the Northern District of

California,

and are

likely sources of

testimony and documentary evidence in support of Defendants' cases.
See,

e.g.,

2:14cv3 91,

ECF No.

20.

As

explained by the Federal

Circuit while performing the § 1404(a) analysis under the law of the

Fifth Circuit:

make

clear

"Our prior orders in [patent] venue transfer cases

that

the

combination

of

multiple

parties

being

headquartered in or near the transferee venue and no party or witness
in the plaintiff[']s chosen forum is an important consideration."
In re Acer America Corp.,

626 F.3d 1252,

1254-55 (Fed.

Cir.

2010)

(emphasis added).

13 In all but the Apple Action, any individuals employed by Apple would be
"non-party" witnesses.
38

In addition to identifying where witnesses and sources of proof
are

located,

Vizio's

briefing

included

evidence

outlining

the

frequency and low-cost of flights for travel between the Central
District of California and the Northern District of California as

contrasted with flights between the Central District of California
and the Eastern District of Virginia.

32-3.

2:14cv347,

ECF Nos.

32-2,

Unsurprisingly to anyone who has ever taken a cross-country

flight, such evidence further demonstrates that litigating these
cases

in

the

convenient,

Northern

saving

District

both

time

of

California

and money,

for

would

be

far

more

certain party and

non-party witnesses.
On the other side of the ledger,
witnesses,

other than its president,

Eastern District of Virginia.

the

prosecuting

Maryland,

attorneys

GTS has not identified any
that are located within the

Plaintiff does represent that one of

for

the

patents

in

suit

resides

in

and proceeding in this district would clearly be more

convenient for such individual if he is ultimately necessary as a
trial witness.

238 F. Supp.

See Telepharmacy Solutions, Inc. v. Pickpoint Corp.,

2d 741,

744

(E.D. Va. 2003)

(indicating in an order

granting a § 1404 (a) motion to transfer that even though the plaintiff
identified some witness in Virginia that may be necessary at trial,
it was

"clear that

the majority of documentary and testimonial

evidence is available and most easily accessible in the Northern
District of

California").

Plaintiff's
39

failure

to

identify any

witnesses or evidence located in the state of Virginia other than

Plaintiff's president appears consistent with:

(1)

the fact that

Plaintiff itself does not appear to engage in any relevant activities
in this state; and (2)

Plaintiff's allegations as to Defendants'

alleged activities within the Eastern District of Virginia appears
limited to broad allegations that Defendants "transacted business"

and committed "direct acts of patent infringement, " in this district,

see, e.g., 2:14cv3 91, ECF No. 1 U 4, allegations that appear to be
equally applicable in every other judicial district within the United
States.14

On balance,

considering the above,

the Court finds that this

factor favors transfer of each of the pending cases to the Northern
District of California.

While evidence may be lacking as to whether

some of the specifically identified witnesses would be willing to
travel

from

the

west

coast

to

Virginia,

there

is

generalized

evidence, including affidavits, establishing the unremarkable fact
that cross-county travel will be more burdensome than travel within
the

state of

California

(or alternatively,

on the west

coast).

Notably, even in the absence of individualized proof regarding the

ability/willingness

of

potential

witness

to

travel,

"making

14 The inventor of the eight patents at issue across these five pending cases
resides in South Africa, and absent case-specific evidence (which has not
been presented by Plaintiff), such foreign individual's convenience, or
rather inconvenience, should he need to travel internationally to testify
at trial,

is deemed to be neutral as between this forum and the Northern

District of California.
Va.

Jaffe v. LSI Corp. , 874 F. Supp. 2d 499, 504 (E.D.

2012).
40

attendance more convenient or affordable for a willing witness still

weighs in favor of transfer,

just not as heavily."

Bluestone

Innovations, LLC, 940 F. Supp. 2d at 317 (citations omitted); cf.
Marsh v. United States, No. I:06cv93, 2007 WL 2021932, at *3 (W.D.

Va.

July 10,

2007)

(finding that,

even in the absence of the

identification of "specific witnesses," the record was sufficient
to demonstrate

"that all relevant witnesses would be located in

California" and that if the case were to remain in Virginia,

"the

costs of obtaining each witness would be much greater because the

necessary

witnesses

would be

required

to

travel

across

the

country") .15
In contrast to the comparatively centralized evidence on the
west coast, there no evidence suggesting that a single witness, other

than Plaintiff's president, is located in this district.

Similarly,

Plaintiff fails to assert that it possesses any relevant business
documents in this district.

As not a single non-party witness from

this forum has been identified, and multiple potential third-party

15 This Court recognizes the reality that, based on the allegations in
Plaintiff's complaints, and the early stage in the proceedings, it is
difficult for any Defendant to provide an accurate trial witness list or
to identify precisely what each witness will testify about.
See In re
Genentech,

Inc.,

566 F.3d at 1343

("A district court should assess the

relevance and materiality of the information the witness may provide."
(emphasis added)).
It is similarly difficult for any individuals
identified as being a "likely" witness to predict months, or even a year
or more, in advance whether he or she will be available for cross-country
travel at the time of the trial.
However, what is resoundingly clear from
the current record is that the vast majority of the witnesses and sources

of proof identified by the parties in these pending cases are located on
the west coast, geographically centered in the Northern District of
California.
41

witnesses are located in the Northern District of California,

the

proposed transferee venue "is a venue with usable subpoena power,"
and such fact "weighs in favor of transfer, and not only slightly."
In re Genentech,

Inc.,

566 F.3d at 1345.

C. Party Convenience

Tracking the analysis in the preceding section, the convenience
of

the

parties

California.

favors

transfer

to

the

Northern

District

of

Of the six Defendants selling brands of products that

allegedly infringe on the patents in suit, three are headquartered
in California (Apple, Vizio, Nokia) and another on the west coast

in far closer proximity to the Northern District of California than
this district (Microsoft).

See In re TS Tech USA Corp.,

551 F.3d

1315, 1321 (Fed. Cir. 2008) (holding that the district court "clearly
abused its discretion" in denying a § 1404 (a) motion to transfer venue

from Texas to Ohio, explaining that "the vast majority of identified
witnesses, evidence, and events leading to this case involve Ohio
or its neighboring state of Michigan"

(emphasis added)).

As Toshiba is headquartered in Japan, it can be argued that its
convenience is arguably neutral between the two potential forums as

the

transport

of

witnesses

and physical

evidence

will

require

international travel regardless of the location.

See Jaffe v. LSI

Corp. , 874 F. Supp.

(suggesting that

2d 499,

504

(E.D. Va.

international travel is always burdensome).

2012)

However, the fact that

Toshiba's subsidiary and American distributor TAIS is headquartered
42

in California and will presumably be presenting a unified defense
with Toshiba in the Toshiba/TAIS action likely makes the Northern

District

of

California

slightly

more

convenient

for

Toshiba.

Similarly, while Motorola appears to have primary operations in
Chicago,

Illinois,

it

also

has

a

large

California with hundreds of employees,

facility

in

Northern

which makes the Northern

District of California more convenient for Motorola.

Plaintiff's president, who lives in the Northern District of

Virginia,

of

course

finds

the

instant

forum

more

convenient.

However, Plaintiff does not appear to dispute the fact that GTS is

a non-practicing entity or that, at the time suit was filed, GTS
lacked a license to do business in Virginia, lacked "good standing"

in its state of incorporation, and was wholly owned by an "active"
California company.

Moreover, in light of the fact that GTS does

not appear to have any full-time employees, may not even have an
actual office, and has failed to articulate any corporate activities
tied to this district, the record fails to reveal that GTS possesses

any relevant evidence in this district.
failed

to

identify any

employees,

The fact that Plaintiff has

relevant

documents,

or

even

relevant classes of documents that it possesses in this forum reduces
the degree of inconvenience that GTS would suffer from a change of
venue.

On balance,

because although

the Court finds that this factor favors transfer

some degree

of
43

inconvenience

is

almost

always

shifted from a defendant to a plaintiff when that defendant's motion
to transfer venue is granted,
to

Plaintiff

in

this

case

the degree of inconvenience shifted

is

far

outweighed

by

the

degree

of

inconvenience avoided when the location of the sources of proof is
considered.

D.

Interests of Justice

As recently explained by another Judge of this Court:
The interests of
interest factors

justice factor "encompasses public
aimed at
'systemic integrity and
fairness,'" Byerson v. Equifax Info. Servs., LLC, 467 F.
Supp. 2d 627, 635 (E.D. Va. 2006) (quoting Samsung Elecs.
Co. v. Rambus, Inc., 386 F. Supp. 2d 708, 721 (E.D. Va.
2005) ), the most prominent elements of which are "judicial

economy and the avoidance of inconsistent judgments."
Id.
"Fairness is assessed by considering docket
congestion,
interest in having local controversies
decided at home, knowledge of applicable law, unfairness
in burdening forum citizens with jury duty, and interest
in avoiding unnecessary conflicts of law."
Id. (citing
Samsung, 386 F. Supp. 2d at 721 n.16).

Jaffe, 874 F. Supp. at 505.
a

party's

'attempt

manipulation.'"

to

"Systemic integrity also accounts for

game

the

Macronix Int'1,

federal

2014 WL 934521,

Samsung Electronics Co., 386 F. Supp.
Here,

nationwide

in

these

five

infringement

by

patent

large

courts

through

forum

at *7

(quoting

actions

alleging

2d at 721).

infringement

national

and/or

international

corporations, many of the above noted considerations do not apply,

as: (1) there is arguably no "locality" to these controversies; (2)
the case will be governed by federal law that any federal court is
equally capable of applying; and (3)
44

it would arguably be no more

fair to burden jurors of one district than another.

That said, the

fact that the majority of the Defendants across these five cases have
strong ties to California, and neither Plaintiff nor Defendants have

any strong ties to this forum, appears to slightly favor transfer
to California.

As

to judicial

economy and

the avoidance

of

inconsistent

judgments, this Court firmly believes that such factor significantly
favors keeping these cases together, whether it be in this Court,
or in the Northern District of California.

Ltd., 628 F.3d 1342, 1347 (Fed. Cir. 2010)

See In re Vistaprint

("[I]t is entirely within

the district court's discretion to conclude that in a given case the

§ 1404(a) factors of public interest or judicial economy can be of

paramount consideration' and as long as there is plausible support
of

record for that

conclusion we

will

not

second guess

such a

determination, even if the convenience factors call for a different

result.")

(internal

quotation

marks

and

citation

omitted).

Notwithstanding the AIA's recent impact on the joinder rules in
patent cases, Plaintiff does not dispute the benefit in keeping the
cases together, and acknowledged at a recent hearing conducted in
the Toshiba Action that keeping the cases together, from an economy
and resources perspective, makes sense for the Court and the parties.
Notably, if this Court considered each case in a vacuum, giving no

weight to concerns of economy and consistency, Plaintiff could be
in the undesirable position of being required to litigate the Apple
45

Action in the Northern District of California, the Vizio Action in

the Central District of California,16 at least one action in this
Court, with the remaining two actions either retained in this Court
or transferred to the Northern District of California alongside the

Apple Action.
Accordingly, in light of the fact that none of the five cases
have any notable ties to this District, the Apple and Motorola Actions

clearly have strong ties to the Northern District of California where

Apple and Motorola maintain large physical facilities with hundreds
of

employees

and

physical

evidence

that

is

material

to

the

infringement allegations, and all of the other related cases not only
could have been filed in the Northern District of California,

but

the other convenience and justice considerations make such forum far
more convenient than the Eastern District of Virginia,

the Court

finds that "judicial economy" strongly favors transfer of all five

cases to the Northern District of California. 17

Although the

16 Vizio is the only Defendant that alternatively moved for transfer to a
different district in the event that the cases were not kept together.

17 This Court recognizes that Multidistrict Litigation procedures may be
available to reclaim some degree of economy if some of the cases were
retained by this Court while others were transferred to the Northern
District of California and the Central District of California.

That said,

because the parties in this case appear to agree that the economies of
keeping these cases together benefit both Plaintiff and the Defendants,

and surely also will consume the least amount of judicial resources,

in

the context of this case the Court finds that there is a strong basis for

keeping the cases together.
Cf. Continental Grain Co. v. The FBL-585, 364
U.S. 19, 26 (1960) (noting in a case decided before the establishment of
the Judicial Panel on Multidistrict Litigation that "[t]o permit a
situation in which two cases involving precisely the same issues are
46

decisions regarding pre-trial consolidation procedures are plainly
in the purview of the transferee court,

this Court notes that the

Northern District of California has Local Rules specific to patent
cases stating that "[w]hen actions concerning the same patent are

filed within two years of each other by the same plaintiff, they will
be deemed related," and that "the Clerk will reassign the related

higher-numbered cases to the Judge assigned to the lowest-numbered
case."

N.D.

Cal.

Loc.

Patent R.

2-1.

This Court acknowledges that, in light of historical "time to
trial" data of the various federal districts, denying the motions
to transfer may result in a faster resolution of the instant cases.
However,

while

"relative

docket

conditions

are

considered

in

weighing the interest of justice," such factors are "not given great

force," particularly when the other convenience and justice factors
favor transfer.

Samsung Electronics Co.,

38 6 F. Supp. 2d at 723

(citing GTE Wireless, Inc. , 71 F. Supp. 2d at 520) .

Moreover, here,

" [n] either party has indicated that one court has a disproportionate
case burden compared to the other."

Bluestone Innovations, LLC, 940

F. Supp. 2d at 320; see comScore, Inc. v. Integral Ad Science, Inc.,
924 F. Supp. 2d 677,

docket

speed and

story.").

691 n.16

congestion

(E.D. Va.

do

not

2013)

("Raw numbers as to

necessarily

tell

the

whole

While speed to resolution/speed to trial is one of many

simultaneously pending in different District Courts leads to the
wastefulness of time, energy and money that § 1404(a) was designed to
prevent.").
47

factors appropriately considered in the

§ 1404(a)

analysis,

the

weight to be afforded this factor is further reduced when a plaintiff
both lacks legitimate ties to this district and the facts have no
special connection to this district, because the interests of justice

are not served by forum-shopping intended to take advantage of this
Court's "so-called 'rocket docket.'"

Samsung Electronics Co., 386

F. Supp. 2d at 723-24.18
E.

Summary

For the reasons set forth above,
tenuous

ties

to

this

district,

as

beginning with Plaintiff's

well

as

the

fact

that

these

nationwide infringement cases appear to have little, if any, special
connections to this forum, the Court finds that the application of
the relevant § 1404(a) convenience and justice factors warrant the

transfer of

all

five pending cases

to

the Northern District of

California.

Not only does the record indicate that nearly all of

the relevant documentary evidence is located within California or
nearby to California on the west coast, but the vast majority of the
identified witnesses, both party and non-party, appear to be located
in California or on the west coast.

therefore

does

more

than

merely

The evidence before the Court

demonstrate

that

District of California would be more convenient,

the

Northern

Defendants have

18 This Court does not suggest that a non-practicing entity deserves a less
timely resolution of its civil action based on its status as non-practicing.
However, here, Plaintiff has not presented evidence or argument suggesting
that any of the pending cases involve exigencies sometimes found in patent
litigation between active market competitors, such as when a competitor's
new product launch threatens to critically impact the shape of the market.
48

demonstrated that such forum "is comparatively the only convenient
and fair venue in which to try" these five related cases.
Microsoft Corp.,

In re

630 F.3d at 1365 (emphasis added).

Although this Court's analysis of the

guided by Fourth Circuit precedent,

§ 1404(a)

factors is

rather than Federal Circuit

precedent, this Court finds instructive the position consistently
taken by the Federal Circuit on this issue.

In In re Nintendo Co. ,

Ltd. , 589 F.3d 1194 (Fed. Cir. 2009), the Federal Circuit concluded
that the district court committed such a "clear abuse of discretion"

in declining to transfer the case pursuant to § 14 04 (a) that mandamus
relief was warranted.

as follows:

The Federal Circuit summarized its position

"This court has held and holds again in this instance

that in a case featuring most witnesses and evidence closer to the
transferee venue with few or no convenience factors favoring the
venue chosen by the plaintiff, the trial court should grant a motion
to transfer."

Id. at 1198 (emphasis added) ; see In re Apple, Inc.,

581 F. App'x886, 889 (Fed. Cir. 2014) (indicating, in another opinion
concluding that

the district

court committed a

"clear abuse of

discretion" by denying a § 1404(a) motion to transfer, that the fact
that "Apple identified at least eight prospective party witnesses
in the transferee venue with relevant material information,

while

[the defendant] failed to identify a single prospective witness in
the Eastern District of Texas," is a "strong showing of convenience

[that] weighs heavily in favor of transfer") (citing In re Nintendo
49

Co. , 589 F.3d at 1199-1200) ; see also In re Genentech, Inc. , 566 F.3d

at 1345

(noting,

in a discussion specifically tailored to patent

cases, that because "the bulk of the relevant evidence usually comes
from

the

accused

infringer,"

the

"place

where

the

defendant's

documents are kept weighs in favor of transfer to that location"
(internal quotation marks and citation omitted)).

As long-acknowledged by the United States Supreme Court, "the

purpose of [§ 1404(a)] is to prevent the waste of time, energy and
money and to protect litigants,

witnesses and the public against

unnecessary inconvenience and expense."

Van Dusen v. Barrack, 376

U.S. 612, 616 (1964) (internal quotation marks and citation omitted) .
On

this

record,

Defendants

have

sufficiently demonstrated

that

transferring these cases will prevent the waste of time, energy, and

money, while advancing the interests of justice.
motions

Each of the pending

to transfer is therefore GRANTED.
VI.

Conclusion

As set forth in detail above, the Court finds that each Defendant

in the five pending actions has demonstrated that, at the time the
relevant suit was filed,

the United States District Court for the

Northern District of California had jurisdiction over the named
Defendant (s)

and

that

venue

was

proper

in

that

Court.

After

considering the § 1404(a) convenience and justice factors, the Court
hereby GRANTS each of the Defendants' motions to transfer venue to
the Northern District of California in each of the associated cases

50

pending in this Court.

2:14cv346, ECF No.

25; 2:14cv390, ECF No.

16; 2:14cv391, ECF No.

14.

18; 2:14cv347,
16; 2:15cvl7,

ECF No.
ECF No.

Defendant Vizio's alternative request to transfer venue of the

Vizio Action to the Central District of California is DENIED as moot.

The Clerk is REQUESTED to send a copy of this Opinion and Order
to

all

counsel

IT

IS

SO

of

record.

ORDERED.

/s/TOnj&y
Mark
UNITED

Norfolk,

June

Virginia

IS , 2015

51

STATES

S.

Davis

DISTRICT JUDGE