United States District Court, E.D. Texas, Marshall Division
GLOBAL EQUITY MANAGEMENT (SA) PTY. LTD.,
ALIBABA.COM, INC.; ALIBABA GROUP HOLDING LIMITED, NIMBUS DEVELOPMENT INC.; ALIBABA.COM HONG KONG LTD.; EBAY INC.
MEMORANDUM OPINION AND ORDER
PAVNE UNITED STATES MAGISTRATE JUDGE.
the Court are the Alibaba, Nimbus, and eBay defendants'
motions to dismiss, or alternatively, to transfer the patent
infringement actions filed by Plaintiff Global Equity
Management (SA) Pty. Ltd. (“GEMSA”) to the
Northern District of California. The Court held a hearing on
March 13, 2017. For the following reasons, defendants'
motions are GRANTED.
defendants seeking transfer all have principal places of
business in Northern California or overseas. Alibaba.com and
Nimbus are Delaware corporations with their principal place
of business in San Mateo, California. Lee Decl. ¶ 3
(Case No. 2:15-cv-01702, Dkt. No. 16-1); Lee Decl. ¶ 2
(Case No. 2:16-cv-01074, Dkt. No. 12-1). Alibaba Singapore is
incorporated in and has its principal place of business in
Singapore. Id. ¶ 11. Alibaba Hong Kong is a
Hong Kong corporation with a principal place of business in
Hong Kong. Ho Decl. ¶ 3 (Case No. 2:16-cv-95, Dkt. No.
150-1). Alibaba Holding is incorporated in the Cayman Islands
and has a principal place of business in Hangzhou, China. Ho
Decl. ¶ 4 (Case No. 2:16-cv-01074, Dkt. No. 24-1). eBay
is a Delaware with a principal place of business in San Jose,
California. Whyte Decl. ¶ 5 (Case No. 2:16-cv-00098,
Dkt. No. 10-1).
is an Australian corporation with its principal place of
business in Warradale, South Australia. See Case No.
2:16-cv-00098, Dkt. No. 7 ¶ 1. Beginning on October 30,
2015, GEMSA filed 37 patent infringement actions in this
district in consecutive phases. Much of the procedural
history in these cases has been described in a previous
Order. See Case No. 2:16-cv-00098, Dkt. No. 107.
Briefly, because GEMSA's infringement allegations for
many defendants relied on the defendants' alleged
activity with Amazon Web Services, Inc.'s
(“Amazon”) web server, Amazon filed a declaratory
judgment action seeking a judgment of noninfringement or
invalidity in the Eastern District of Virginia. GEMSA
thereafter filed an action against Amazon in this district,
prompting Amazon to seek transfer to the Eastern District of
Virginia under the first-to-file rule, and prompting
Amazon's customers to seek a stay pending resolution of
the declaratory judgment action. Both Amazon's motion to
transfer and the customer defendants' motions to stay
were granted. See, e.g., Case No. 2:16-cv-00098,
Dkt. Nos. 107, 248.
infringement allegations with respect to three entities- the
Alibaba, Nimbus, and eBay defendants-are not based on alleged
activity involving Amazon's web server. The cases against
the Alibaba, Nimbus, and eBay defendants were originally
consolidated, but in light of the Court's transfer of the
Amazon case and stay of associated Amazon customer cases, the
cases against the Alibaba, Nimbus, and eBay defendants were
deconsolidated from the lead case. See Case No.
2:16-cv-00095, Dkt. No. 247. The remaining Alibaba, Nimbus,
and eBay defendants all move to dismiss GEMSA's actions,
or, alternatively, to transfer the actions to the Northern
District of California under 28 U.S.C. § 1404(a) or
Court can transfer a case to another district where the case
might have been brought for “the convenience of parties
and witnesses” and “in the interests of
justice.” 28 U.S.C. § 1404(a). Similarly, a case
filed in the “wrong division or district” may be
transferred “in the interest of justice . . . to any
district or division in which it could have been
brought.” 28 U.S.C. § 1406(a). Although certain
Alibaba and Nimbus defendants contest personal jurisdiction
and venue in this district, the Court need not resolve those
questions because whether to transfer a case may be evaluated
under either § 1404(a) or § 1406(a). See
Nationwide Bi-Weekly Admin., Inc. v. Belo Corp., 512
F.3d 137, 140 (5th Cir. 2007); Bentz v. Recile, 778
F.2d 1026, 1028 (5th Cir. 1985).
seeking transfer under § 1404(a) must show the
transferee district to be “clearly more
convenient” than the transferor district. In re
Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir.
2008) (“Volkswagen II”). The analysis
turns on public and private interest factors, no one of which
is given dispositive weight. See In re Volkswagen
AG, 371 F.3d 201, 203 (5th Cir. 2004)
(“Volkswagen I”). The private factors
include: (1) ease of access to evidence (“sources of
proof”); (2) subpoena power over potential witnesses;
(3) cost of attendance for willing witnesses; and (4) other
practical problems. Volkswagen II, 545 F.3d at 315.
The public factors include: (1) administrative difficulties
flowing from court congestion; (2) 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.
Volkswagen I, 371 F.3d at 203. Courts consider the
same or similar factors when assessing transfer under §
1406(a). See, e.g., Druid Grp., Inc. v.
Dorfman, No. 3:05 CV 00762 M, 2006 WL 2460553, at *4
(N.D. Tex. Aug. 22, 2006).
assessing the relevant factors, the threshold question is
whether the case could have been brought in the transferee
district. Volkswagen II, 545 F.3d at 312.
Alibaba.com, Inc. and eBay have principal places of business
in San Mateo, California, and San Jose, California,
respectively, and thus both of these defendants could have
been sued in the Northern District of California. Alibaba.com
Br. at 14; eBay Br. at 4. Although Alibaba Singapore, Alibaba
Holding, Alibaba Hong Kong, and Nimbus do not have a place of
business in the Northern District of California, these
defendants state that they “would not contest personal
jurisdiction or venue in that District for purposes of the
present case in view of the relative convenience of that
forum.” Alibaba.com Br. at 15; Alibaba Holding Br. at
15; Alibaba Hong Kong Br. at 15; Nimbus Br. at 13-14. GEMSA
does not contend that a district court in California would
not have had personal jurisdiction over any defendant nor
that venue would have been improper in the Northern District
of California. Accordingly, the Court is satisfied that
GEMSA's cases against the Alibaba, Nimbus, and the eBay
defendants could have been brought in the transferee
to the relevant factors, the Court finds that the private
interest factors weigh in favor of transfer. First, Alibaba,
Nimbus, and eBay's physical evidence and witnesses are
all primarily located in within the Northern District of
California or overseas. Second, to the extent that subpoena
power will be important at trial, the defendants identify at
least two specific non-party prior artists who live or work
within reach of the Northern District of California's
subpoena power. See Alibaba.com Br. at 18-19. Third,
the costs to the defendants' witnesses will be reduced if
those witnesses attend trial in California. See In re
Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009).
part, GEMSA adds little to balance against the considerations
highlighted by the defendants. GEMSA is an Australian company
with no connection to Texas or this District and thus would
be inconvenienced as much by a trial here as it would be by a
trial in Northern California. See Genentech, Inc.,
566 F.3d at 1344. While GEMSA identifies a number of
witnesses who live in or around Houston, Texas, all of whom
allegedly have knowledge of the earlier third party products
practicing the patent, see, e.g., Case No.
2:15-cv-1702, Dkt. No. 19 at 15, there is no persuasive
showing that they would be likely trial witnesses.
GEMSA's judicial economy arguments are not compelling.
GEMSA highlights, for example, that it filed other cases in
this district, implying that practical considerations or
administrative difficulties disfavor transfer. While it is
appropriate to consider co-pending cases involving the same
patent(s)-in-suit in some circumstances, see In re Barnes
& Noble, Inc., 743 F.3d 1381, 1383 n.1 (Fed. Cir.
2014), the moving defendants are the only defendants whose
cases have not already been stayed or transferred.
arguments regarding local interest are not sufficient to
shift the balance. GEMSA contends that “[b]ecause the
patents-in-suit were developed in and prosecuted from Texas
and this suit . . . calls into question the work and
reputation of individuals in or near the Eastern District of
Texas, this District has a local interest in the outcome of
the case.” See, e.g., Case No. 2:15-cv-1702,
Dkt. No. 19 at 18. As other district courts have recognized,
it is a generally a fiction that patent cases give rise to
local controversy or interest, particularly without record
evidence suggesting otherwise. See TriStrata Tech., Inc.
v. Emulgen Labs., Inc., 537 F.Supp.2d 635, 643 (D. Del.
2008). To the extent that local interests are implicated by
GEMSA's cases, because most of the witnesses GEMSA
identifies live or work in ...