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Ingeniador LLC v. Adobe Systems Incorporated

United States District Court, Fifth Circuit

January 9, 2014

INGENIADOR, LLC, Plaintiff,
v.
ADOBE SYSTEMS INCORPORATED, Defendant.

MEMORANDUM OPINION AND ORDER

RODNEY GILSTRAP, District Judge.

Before the Court is Defendant Adobe Systems Incorporated's ("Adobe") Motion To Transfer (Dkt. No. 14), filed March 22, 2013. Plaintiff Ingeniador, LLC ("Ingeniador") filed suit against Adobe on December 19, 2012, alleging infringement of U.S. Patent No. 6, 990, 629. By the present motion, Adobe moves the Court pursuant to 28 U.S.C. § 1404(a) to transfer the Ingeniador's claims to the United States District Court for the Northern District of California. After careful consideration of the parties' written submissions, the Court finds that the motion should be GRANTED for the reasons set forth herein.

I. Legal Standard

Section 1404(a) provides 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." 28 U.S.C. § 1404(a). The first inquiry when analyzing a case's eligibility for 1404(a) transfer is "whether the judicial district to which transfer is sought would have been a district in which the claim could have been filed." In re Volkswagen AG , 371 F.3d 201, 203 (5th Cir. 2004) ( Volkswagen I ).

Once that threshold is met, the movant has the burden of proving that the transferee venue is "clearly more convenient" than the transferor venue. In re Nintendo , 589 F.3d 1194, 1200 (Fed. Cir. 2009); In re TS Tech , 551 F.3d 1315, 1319 (Fed. Cir. 2008); In re Volkswagen of Am., Inc. , 545 F.3d 304, 315 (5th Cir. 2008) ( Volkswagen II ). In this regard, courts analyze both public and private factors relating to the convenience of parties and witnesses as well as the interests of particular venues in hearing the case. See Nintendo , 589 F.3d at 1198; TS Tech , 551 F.3d at 1319. The private factors include: (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious, and inexpensive. Nintendo , 589 F.3d at 1198; TS Tech , 551 F.3d at 1319; Volkswagen I , 371 F.3d at 203. The public factors include: (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws or in the application of foreign law. Nintendo , 589 F.3d at 1198; TS Tech , 551 F.3d at 1319; Volkswagen I , 371 F.3d at 203. Though the private and public factors apply to most transfer cases, "they are not necessarily exhaustive or exclusive, " and no single factor is dispositive. Volkswagen II , 545 F.3d at 314-15.

II. Analysis

A. Availability of the Transferee Venue

Adobe is headquartered in San Jose, California, which is in the Northern District of California. Under 28 U.S.C. § 1400(b), a civil action for patent infringement "may be brought in the judicial district where the defendant resides." Ingeniador does not dispute these facts or the controlling law. Accordingly, Ingeniador could have brought this suit originally in the Northern District of California, and the threshold inquiry of the transfer motion is satisfied.

B. Private Interest Factors

1. Relative Ease of Access to Sources of Proof

This being a patent case, it is likely that the bulk of the relevant evidence in this action will come from Adobe. See In re Genentech , 566 F.3d 1388, 1345 (Fed. Cir. 2009). Most of the documentary and source code evidence relating to the accused product resides on servers in San Jose (Dkt. No. 14-1, at 2). Some of Adobe's evidence resides on servers in Basel, Switzerland. Id. Ingeniador contends that Defendant's invalidity defense will require documents located in Sugar Land, Texas, and that Plaintiff will have relevant evidence located in Puerto Rico (Dkt. No. 21, at 5). No party contends that relevant evidence exists in the Eastern District of Texas. Though the Eastern District of Texas might serve as a central location that is roughly equal in convenience to parties in San Jose, Houston, and San Juan, and though in the modern era the inconvenience of making documents available some distance from their source is minimal, the Court nonetheless finds that, because the bulk of the relevant evidence likely resides in the Northern District of California, this factor favors transfer.

2. Availability of Compulsory Process

Under Federal Rule of Civil Procedure 45 (as recently amended), this Court may enforce a subpoena issued to any nonparty witness in the State of Texas to appear at trial, provided the party does not incur substantial expense. Fed.R.Civ.P. 45(c)(1)(B). The Fifth Circuit has, in the past, distinguished between the power to compel a nonparty witness's attendance at trial and "absolute" subpoena power, which appears to require that a Court be able to enforce subpoenas of nonparty witnesses for deposition as well as trial. See Volkswagen II , 545 F.3d at 316. Previous Courts seem to have assumed that a party residing or working more than 100 miles from the District Courthouse are "outside the Eastern District's subpoena power for deposition." See id. The amended Rule makes clear that this is not the case. Under Rule 45, a subpoena for attendance at a deposition must issue from "the court where the action is pending"; such a subpoena must be quashed by the district court of the place of compliance if it requires a person to travel more than "100 miles from where that person resides, is employed, or regularly transacts business in person" to attend the deposition. Fed.R.Civ.P. 45(a)(2), (c)(1)(A), (d)(3)(A). Thus, the question is not whether a nonparty witness resides or works themselves within 100 miles of the District Court, but whether there exists any point that is both within the district (and thus subject to the Court's subpoena power) and within 100 miles of the nonparty's location (and thus not subject to a motion to quash). The Court notes, however, that the convenience of compulsory process is also a consideration in this factor. See Volkswagen II , 545 F.3d at 316. Thus, the existence of an inconvenient location that is available for compulsory process will weigh less strongly than the existence of a convenient location.

Here, Adobe argues that the availability of compulsory process over Adobe's employees in California should weight this factor heavily toward transfer. Adobe's witnesses, however, are by admission witnesses over whom Adobe has control. These witnesses will not require compulsory process, and thus are not entitled to strong consideration for the purposes of this factor. See Texas Data Co. v. Target Brands, Inc. , 771 F.Supp.2d 630, 643-44 (E.D. Tex. 2011). Rather, the focus of this factor is on witnesses for whom compulsory process might be necessary. Plaintiff suggests that personnel from Schlumberger's Sugar Land, Texas headquarters, and one of the original prosecuting attorneys, who resides in Houston, may be relevant witnesses (Dkt. No. 21, at 9). The Court notes that both Houston and Sugar Land are within 100 miles of locations within this Court's Beaumont division, and thus these witnesses ...


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