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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., ET AL.,
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Plaintiffs,
v.
DISTINCTIVE DEVELOPMENT LTD.,
Defendant.
CASE NO. 6:12-CV-462-LED
(Lead Consolidated Case)
MEMORANDUM OPINION AND ORDER
Before the Court are the following seven motions to transfer venue to the Northern
District of California (“N.D. of California”): Defendant Distinctive Development Ltd.’s Motion
to Transfer Venue (6:12-CV-462, Dkt. No. 19); Defendant Electronic Arts Inc.’s Motion to
Transfer Venue to the N.D. of California (6:12-CV-463, Dkt No. 18); Defendant Gameloft
S.A.’s Motion to Transfer Venue (6:12-CV-466, Dkt. No. 18); Defendant Halfbrick Studios Pty
Ltd.’s Motion to Transfer Venue (6:12-CV-467, Dkt. No. 17); Defendant Laminar Research,
LLC’s Motion to Transfer Venue (6:12-CV-468, Dkt. No. 18); Defendant Mojang A.B.’s Motion
to Transfer Venue (6:12-CV-470, Dkt. No. 19); and Defendant Square Enix, Inc.’s Motion to
Transfer Venue (6:12-CV-472, Dkt. No. 18). For the reasons set forth below, the motions are
DENIED.
BACKGROUND
Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively “Uniloc”) filed
ten different lawsuits alleging that each individual Defendant infringes U.S Patent No. 6,847,067
by “making, using, offering for sale, selling and or importing Android based applications for usePage 2 PageID #: 218
on cellular phones and/or tablet devices that require communication with a server to perform a
license check to prevent unauthorized used of said application.” 6:12-CV-462—64, 466—72,
Dkt. No. 1 at 3. Defendant Electronic Arts, Inc. (“EA”) seeks transfer to the N.D. of California
under 28 U.S.C. § 1404(a). 6:12-CV-463, Dkt. No. 18. Defendants, Distinctive Development
Ltd. (“Distinctive”); Gameloft S.A. (“Gameloft”); Halfbrick Studios Pty Ltd. (“Halfbrick”);
Laminar Research LLC (“Laminar”); Mojang A.B. (“Mojang”); and Square Enix, Inc. (“Square
Enix”) (collectively, “Joining Defendants”), each filed a separate motion to transfer, but join and
incorporate by reference EA’s Motion to Transfer. 6:12-CV-462, Dkt. No. 19 at 1; 6:12-CV-466,
Dkt. No. 18 at 1; 6:12-CV-467, Dkt. No. 17 at 1; 6:12-CV-468, Dkt. No. 18 at 1; 6:12-CV-470,
Dkt. No. 19 at 1; 6:12-CV-472, Dkt. No. 18 at 1. This order addresses all seven transfer motions.
However, each defendant is evaluated individually. See Consolidation Order, 6:12-CV-462, Dkt.
No. 43 at 4 (“The Court will consider [motions to transfer] only as to the defendants in the
originally filed (member) cases, not as to all defendants in the pretrial consolidated case.”). As
there are many issues common to all defendants and the Parties incorporate by reference the
arguments made in EA’s Motion to Transfer, the Court addresses the common issues in relation
to EA’s motion and separately addresses issues unique to each defendant.
Defendants allege that transfer is warranted because relevant witnesses, including nonparty prior-art-system owners and inventors, are located in the N.D. of California. Uniloc asserts
that this District is more convenient for the majority of the witnesses and that Defendants do not
meet their burden of showing that the N.D. of California is “clearly more convenient,” thus,
transfer is not warranted. Page 3 PageID #: 219
APPLICABLE LAW
Defendants argue that they are entitled to transfer under 28 U.S.C. § 1404(a) to the N.D.
of California. 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.” The first inquiry when analyzing a case’s eligibility for(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) (“In re Volkswagen I”).
Once that threshold inquiry is met, 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 Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963);
In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009); In re TS Tech USA Corp., 551
F.3d 1315, 1319 (Fed. Cir. 2009). The private factors are: 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. In re Volkswagen I, 371 F.3d at 203; In re Nintendo, F.3d at 1198; In re TS Tech, 551 F.3d at 1319. The public factors are: 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. In re
Volkswagen I, 371 F.3d at 203; In re Nintendo, 589 F.3d at 1198.
The plaintiff’s choice of venue is not a factor in this analysis. In re Volkswagen of Am.,
Inc., 545 F.3d 304, 314-15 (5th Cir. 2008) (“In re Volkswagen II”). Rather, the plaintiff’s choicePage 4 PageID #: 220
of venue contributes to the defendant’s burden in proving that the transferee venue is “clearly
more convenient” than the transferor venue. In re Volkswagen II, 545 F.3d at 315; In re
Nintendo, 589 F.3d at 1200. Furthermore, though the private and public factors apply to most
transfer cases, “they are not necessarily exhaustive or exclusive,” and no single factor is
dispositive. In re Volkswagen II, 545 F.3d at 314–15.
ANALYSIS
Eligibility for Transfer
Defendant EA asserts that jurisdiction is proper in the N.D. of California because EA’s
Redwood City, California headquarters lie within the N.D. of California, and EA has the
requisite minimum contacts to be subject to personal jurisdiction there. Dkt. No. 18 at 2, 5. The
Joining Defendants state that they are also subject to the jurisdiction of N.D. of California
because they have offered for sale and sold products there. 6:12-CV-462, Dkt. No. 19 at 2; 6:12CV-466, Dkt. No. 18 at 2; 6:12-CV-467, Dkt. No. 17 at 2; 6:12-CV-468, Dkt. No. 18 at 2; 6:12CV-470, Dkt. No. 19 at 2; 6:12-CV-472, Dkt. No. 18 at 2. Uniloc admits that the cases could
have been brought in the N.D. of California. 6:12-CV-463, Dkt. No. 32 at 4. Thus, the threshold
inquiry is satisfied.
Public Factors
The Relative Ease of Access to Sources of Proof
Despite technological advances that certainly lighten the relative inconvenience of
transporting large amounts of documents across the country, this factor is still a part of the
transfer analysis. In re Volkswagen II, 545 F.3d at 316. Courts analyze this factor in light of the
distance that documents, or other evidence, must be transported from their existing location to
the trial venue. See Id. This factor will turn upon which party will most probably have the greaterPage 5 PageID #: 221
volume of documents relevant to the litigation and their presumed location in relation to the
transferee and transferor venues. See, e.g., In re Volkswagen II, 545 F.3d at 314–15; In re
Nintendo, 589 F.3d at 1199; In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009).
However, documents that have been moved to a particular venue in anticipation of a venue
dispute should not be considered. In re Hoffman-La Roche Inc., 587 F.3d 1333, 1336–37 (Fed.
Cir. 2009). Presumably, the bulk of the discovery material relating to a corporate party is located
at the corporate headquarters. See In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010).
EA argues that this factor favors transfer because its headquarters are located in the N.D.
of California and its relevant witnesses and documents are located on the West Coast. Dkt. No. at 6. EA also argues that documents related to two prior-art systems developed or obtained by
non-party companies GraphOn and InterTrust are likely located in the N.D. of California. Id. at. EA further contends that Uniloc’s relevant documents are located in Irvine, California, which
is closer to the N.D. of California. Id. at 6.
Uniloc responds that, by EA’s own admission, relevant EA documents are not located in
the N.D. of California, but in Los Angeles, California; Seattle, Washington; and Quebec,
Canada. Dkt. No. 32 at 8. Uniloc also argues that EA presents no evidence that prior art systems
exist or that any relevant evidence is in the possession of GraphOn or Intertrust. Id. at 9. Thus,
because EA’s statement that GraphOn and Intertrust are likely to have relevant documents is
pure speculation, it should be dismissed. Id. Finally, Uniloc states that the documents related to
this litigation, including those pertaining to prosecution, assignment, and the provisional
application, are located in its headquarters in the Eastern District of Texas, not in N.D. of
California as EA contends. Id. Page 6 PageID #: 222
None of the relevant documents are located in the N.D. of California. The accused
product, Bejeweled 2, was principally researched, designed, developed, and maintained in
Quebec, Canada and Los Angeles, California. Dkt. No. 18, Exhibit 1. Therefore, the documents
are located outside the N.D. of California. Some documents are also located in Seattle,
Washington. Id. While the documents located along the West Coast are located closer to the
N.D. of California, the documents located in Quebec, Canada are located closer to this District.
By contrast, Uniloc’s relevant documents are located in Plano, Texas, which is within the
Eastern District of Texas. While EA contends that GraphOn and Intertrust are likely to have
documents in the N.D. of California, EA fails to identify any specific relevant evidence that
might be located in that district. See Invitrogen Corp. v. GE, No. 6:08-CV-112, 2009 U.S. Dist.
LEXIS 9127, at *8 (E.D. Tex. Feb. 9, 2009) (“[G]eneral statements [referring to documents] fail
to show that transfer would make access to sources of proof either more or less convenient for
the parties.”) Still, even including these potential documents in the analysis, taking into account
the location of documents in relation to the transferee and transferor venues, neither venue is
clearly more accessible for a greater volume of documents. Therefore, this factor is neutral.
Square Enix
Square Enix argues that its relevant documents are located in N.D. of California as well
as overseas. 6:12-CV-472, Dkt. No. 18 at 2. Uniloc responds that Square Enix’s only activities in
California pertain to public relations, thus the documents located there are not relevant to the
issues of infringement or validity. 6:12-CV-472, Dkt. No. 32 at 2. Therefore, the documents
relevant to issues present in the case are located in Japan, not in California. Id.
The relevant documents are located in Japan as the research, design, development and
maintenance of the accused product, Final Fantasy III for Android devices, was performed inPage 7 PageID #: 223
Tokyo, Japan. 6:12-CV-472, Dkt. No. 18, Exhibit 1. Because overseas documents must be
transported a significant distance to either venue, the Court discounts them for purposes of this
analysis. See In re Genentech, 566 F.3d at 1344. Moreover, Uniloc’s relevant documents are
located in this District. Accordingly, this factor counsels against transfer.
Distinctive, Mojang, and Halfbrick
Distinctive is an English company. 6:12-CV-462, Dkt. No. 19, Exhibit 1. The documents
relating to the research, design, development and maintenance of the accused product, Rugby
Nations 11, are located at Distinctive’s headquarters in Sheffield, England. Id.
Mojang is incorporated and headquartered in Stockholm, Sweden. 6:12-CV-470, Dkt.
No. 19, Exhibit 1. The research, design, development and maintenance of Minecraft, the accused
product, was performed in Stockholm. Id. Thus, the relevant documents are located in Sweden.
Halbrick is an Australian company headquartered in Brisbane, Queensland, Australia.:12-CV-467, Dkt. No. 17, Exhibit 1. The documents regarding the design, development and
maintenance of the accused product, Fruit Ninja, are located in Australia. Id.
Distinctive, Mojang and Halfbrick’s relevant documents are located overseas. Because
the inconvenience for parties and witnesses located overseas does not carry much weight and
Uniloc’s relevant documents are located in this District, this factor counsels against transfer. In
re Genentech, 566 F.3d at 1344.
Gameloft and Laminar
Gameloft is a French corporation with offices in Paris, New York, Seattle, and San
Francisco. 6:12-CV-466, Dkt. No. 18, Exhibit 1. The documents relating to the research, design,
development, and maintenance of Uno, the accused product, are located in New York. Id. Page 8 PageID #: 224
Laminar is headquartered in South Carolina. 6:12-CV-468, Dkt. No. 18, Exhibit 1. The
documents regarding the design, development and maintenance of the accused product, X-Plane,
are located in Connecticut and in South Carolina. Id.
Gameloft and Laminar’s documents are located along the East Coast in New York,
Connecticut, and South Carolina. The greater volume of documents relevant to the litigation is
closer to this District, and not the N.D. of California. In re Nintendo, 589 F.3d at 1199.
Accordingly, this factor counsels against transfer.
The Availability of Compulsory Process to Secure the Attendance of Witnesses
This factor will weigh more heavily in favor of transfer when more third-party witnesses
reside within the transferee venue. See In re Volkswagen II, 545 F.3d at 316. The factor will
weigh the heaviest in favor of transfer when a transferee venue is said to have “absolute
subpoena power.” Id. “Absolute subpoena power” is subpoena power for both depositions and
trial. In re Hoffmann-La Roche Inc., 587 F.3d at 1338.
EA argues that the availability of compulsory process for non-party witnesses located in
California weighs in favor of transfer.1 6:12-CV-463, Dkt. No. 18 at 6. EA contends that the
accused product uses Google Play Licensing and that Chris Pruett and Daniel Galpin, non-party
Google employees with knowledge of Google Play Licensing, reside in the N.D. of California.
Id. EA also contends that the inventors and owners of prior-art patents are located in the N.D. of
California. Id. at 3.
Uniloc responds that EA does not show why the testimony of the witnesses named is
necessary, or how it would be relevant. 6:12-CV-463, Dkt. No. 32 at 6. Uniloc argues that Mr.
The Joining Defendants incorporate by reference EA’s arguments, but provide no other information regarding the
availibity of compulsory process for non-party witnesses. Therefore, the Court’s analysis of this factor also applies
to the Joining Defendants. Page 9 PageID #: 225
Pruett is no longer a Google employee and that EA provides no information concerning his
involvement with the accused instrumentality. Id. Uniloc also argues that Mr. Galpin does not
appear in EA’s initial disclosures; and the only information provided about him is an address in
Santa Cruz, California. Id. Furthermore, Uniloc argues that the location of Google’s employees
is irrelevant, as it does not accuse Google of infringement, but EA. Id. at 2. So, even if EA may
have borrowed code from Google, the relevant inquiry regarding infringement is based on the
operation of EA’s products. Id. Uniloc further argues that the testimony of inventors of alleged
prior-art patents is unnecessary as only the patents themselves are needed to use the references as
anticipatory prior art. Id. at 7. Finally, Uniloc contends that the patent-in-suit’s inventor and prior
owner, both non-party witnesses, are located in Atlanta, Georgia, and Freehold, New Jersey, thus
their locations do not favor transfer. Id.
EA points to the presence of Google and the development of Google Play in the N.D. of
California as supporting transfer. EA states that it worked with Chris Pruett, a Google employee,
regarding Google Play licensing. 6:12-CV-463, Dkt. No. 18, Exhibit 1. Google Play is a free,
publicly available service to distribute Android applications that allows license verification.:12-CV-463, Dkt. No. 18, Exhibit 3. To use the services, one need only agree to the Developer
Distribution Agreement and acquire a valid Developer Account. Id. EA has presented no
evidence of Google’s relevance to this case, other than the necessary contact with a Google
employee to distribute the accused application on the Google Play website. Further, neither party
has subpoenaed Google for any documents or for the deposition of any witness, nor stated that
Google is a necessary party in this case. See In re HTC Corp., 494 Fed. Appx. 81, 82 (Fed. Cir.
Sept. 20, 2012). Accordingly, there are no facts before the Court to support a contention that Page 10 PageID #: 226
Google has documents or witnesses relevant to this lawsuit, so EA fails to establish that Google’s
presence in the N.D. of California should serve as a basis for transfer of this case.
EA also points to inventors and owners of prior-art patents the reside in the N.D. of
California as supporting transfer. Uniloc points to two third-party witnesses, one in Georgia and
one in New Jersey which are outside the subpoena power of the N.D. of California. The number
of third-party witnesses located within the subpoena power of the N.D. of California is small,
and the majority of non-party witnesses are beyond the subpoena power of both the transferor
and transferee districts. At best, this factor slightly weighs in favor of transfer.
The Cost of Attendance for Willing Witnesses
This factor is analyzed giving broad “consideration [to] the parties and witnesses in all
claims and controversies properly joined in a proceeding.” In re Volkswagen I, 371 F.3d at 204.
All potential material and relevant witnesses must be taken into account for the transfer analysis,
irrespective of their centrality to the issues raised in a case or their likelihood of being called to
testify at trial. See In re Genentech, 566 F.3d 1343 (“Requiring a defendant to show that a
potential witness has more than relevant and material information at this point in the litigation or
risk facing denial of transfer on that basis is unnecessary.”).
The Fifth Circuit has adopted a “100-mile rule” to assist with analysis of this factor. See
In re Volkswagen I, 371 F.3d at 204–05. “When the distance between an existing venue for trial
of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of
inconvenience to witnesses increases in direct relationship to the additional distance to be
traveled.” Id. at 205. When applying the 100-mile rule, the threshold question is whether the
transferor and transferee venues are more than 100 miles apart. See In re Volkswagen II, 545
F.3d at 317; In re TS Tech, 551 F.3d at 1320. If so, then a court determines the respectivePage 11 PageID #: 227
distances between the residences (or workplaces) of all the identified material and relevant
witnesses and the transferor and transferee venues. See In re Volkswagen II, 545 F.3d at 317; In
re TS Tech, 551 F.3d at 1320. The 100-mile rule favors transfer (with differing degrees) if the
transferee venue is a shorter average distance from witnesses than the transferor venue. See In re
Volkswagen II, 545 F.3d at 317; In re TS Tech, 551 F.3d at 1320. However, the 100-mile rule
should not be rigidly applied. See In re Genentech, 566 F.3d at 1344. When a particular witness
will be required to travel “a significant distance no matter where they testify,” then that witness
is discounted for purposes of the 100-mile-rule analysis. Id. (discounting European witnesses and
documents transported from Washington D.C. in the convenience analysis when reviewing a
denial of transfer from Texas to California).
In cases where no potential witnesses are residents of the court’s state, favoring the
court’s location as central to all of the witnesses is improper. Id. at 1344. Finally, this factor
favors transfer when a “substantial number of material witnesses reside in the transferee venue”
and no witnesses reside in transferor venue regardless of whether the transferor venue would be
more convenient for all of the witnesses. Id. at 1344–45.
EA argues this factor favors transfer because all of its witnesses are located in California
or on the West Coast, so travel to the N.D. of California would be more convenient. 6:12-CV463, Dkt. No. 18 at 7. Uniloc responds that EA has only identified Mr. Boyapalle in Los
Angeles, California and Mr. Birkenshaw in Quebec, Canada. 6:12-CV-463, Dkt. No. 32 at 10.
So, while the N.D. of California would be more convenient for Mr. Boyapalle, the Eastern
District of Texas would be more convenient for Mr. Birkenshaw. Id. Uniloc argues that, if the
case were transferred, its employees would have to travel more than 1,700 miles from Plano,
Texas, in the Eastern District of Texas to the N.D. of California. Id. at 11. Furthermore, severalPage 12 PageID #: 228
willing non-party witnesses, including the inventor and the prosecuting attorneys, would be
significantly inconvenienced by having to travel a greater distance from Georgia, New Jersey,
and New York to California. Id.
Several of Uniloc’s witnesses live in Plano, Texas, which is within this District. Further,
all but one of the identified witnesses are much closer to Eastern District of Texas, than to the
N.D. of California. Therefore, the Eastern District of Texas is more convenient for the majority
of identified potential witnesses and this factor weighs against transfer.
Gameloft
Gameloft identifies one potential witness, Baudouin Corman, located in the N.D. of
California. 6:12-CV-466, Dkt. No. 18, Exhibit 1. Uniloc points out that the research, design,
development, and maintenance of the accused product was conducted by Adrien Gilmate in New
York. 6:12-CV-466, Dkt. No. 34 at 2.
On balance this factor weighs against transfer. Several of Uniloc’s witnesses live in
Plano, Texas, which is within this District. Further, all but one of the identified witnesses are
much closer to this District than to the N.D. of California. Therefore, the Eastern District of
Texas is more convenient for the majority of identified potential witnesses.
Square Enix
Square Enix argues that its relevant witnesses are located in the N.D. of California as
well as overseas. 6:12-CV-472, Dkt. No. 18 at 2. Uniloc responds that Square Enix fails to
identify any witnesses in the N.D. of California and that all relevant witnesses appear to be
located in Japan. 6:12-CV-472, Dkt. No. 32 at 2.
The research, design, development, maintenance and marketing decision regarding the
accused product, Final Fantasy III for Android devices, was performed by Square Enix Co.,Page 13 PageID #: 229
Ltd.’s employees in Tokyo, Japan. 6:12-CV-472, Dkt. No. 18, Exhibit 1. Thus, Square Enix’s
relevant witnesses are located in Japan. When a particular witness will be required to travel “a
significant distance no matter where they testify,” then that witness is discounted for purposes of
the 100-mile-rule analysis. See In re Genentech, 566 F.3d at 1344 (discounting European
witnesses in the convenience analysis when reviewing a denial of transfer from Texas to
California). Because all of the willing witnesses are located either within this district or live
much closer to this District than to the N.D. of California, this factor counsels against transfer.
Distinctive, Mojang, and Halfbrick
Distinctive identifies ten potential witnesses that worked on the research, design,
development and maintenance of the accused product and are located in Sheffield, England.:12-CV-462, Dkt. No. 19, Exhibit 1. Mojang states that its employees with knowledge of the
accused product are located in Stockholm, Sweden. 6:12-CV-470, Dkt. No. 19, Exhibit 1.
Halbrick states that its employees are located in Australia. 6:12-CV-467, Dkt. No. 17, Exhibit 1.
Distinctive, Mojang and Halfbrick’s relevant witnesses are located overseas. Witnesses
that are required to travel “a significant distance no matter where they testify,” are discounted for
purposes of the 100-mile-rule analysis. See In re Genentech, 566 F.3d at 1344. Because all of the
willing witnesses are located either within this district or live much closer to this District than to
the N.D. of California, this factor counsels against transfer.
Laminar
Laminar’s witnesses are located in Connecticut and in South Carolina. 6:12-CV-468, Dkt.
No. 18, Exhibit 1. Therefore, none of the willing witnesses are located in the N.D. of California.
As all of the witnesses either live within the Eastern District of Texas, or are located much closer
to this District than to the N.D. of California, this factor weighs against transfer.Page 14 PageID #: 230
Other Practical Problems
Practical problems include those that are rationally based on judicial economy.
Particularly, the existence of duplicative suits involving the same or similar issues may create
practical difficulties that will weigh heavily for or against transfer. In re Volkswagen of Am., Inc., F.3d 1349, 1351 (Fed. Cir. 2009) (“In re Volkswagen III”).
EA argues that this factor favors transfer because Uniloc has litigated cases in California
in the past.2 6:12-CV-463, Dkt. No. 18 at 7. EA also argues that, of the ten defendants that
Uniloc sued alleging infringement of the asserted patent, seven seek transfer to the N.D. of
California. Id. Uniloc responds that none of the cases it has litigated in California are related to
the current case or the patent-in-suit, therefore, there is no judicial economy to be gained by
transferring the case to the N.D. of California. 6:12-CV-463, Dkt. No. 32 at 12. Uniloc also
argues that transfer motions are evaluated as to the parties in a particular case, not collectively
across related cases. Id. Therefore, the fact that seven defendants seek transfer does not
necessarily mean that transfer is warranted. Id.
Uniloc sued ten defendants in ten separate cases in this District, alleging infringement of
the ‘067 patent. Seven Defendants seek transfer. Each moving Defendant is evaluated
individually. However, the existence of duplicative suits involving the same or similar issues
creates practical difficulties that counsel for the cases to be handled by the same court. See In re
Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed. Cir. 2010) (noting that it promotes judicial economy
for the same judge to hear related cases); In re Volkswagen III, 566 F.3d at 1351. As the Court
will construe the patent’s claims and rule on dispositive substantive motions in the cases before
The Joining Defendants merely incorporate by reference EA’s arguments as to this factor. Page 15 PageID #: 231
it, it is highly inefficient to transfer a related case when this Court must already oversee Uniloc
cases involving the patent-in-suit. Accordingly, this factor weighs against transfer.
Public Factors
The Administrative Difficulties Flowing from Court Congestion
The speed with which a case can come to trial and be resolved is a factor in the transfer
analysis. In re Genentech, 566 F.3d at 1347. This factor appears to be the most speculative, and
this factor alone should not outweigh other factors. Id.
Defendants argue that the time to trial is neutral because both the N.D. of California and
the Eastern District of Texas show similar time-to-trial statistics. 6:12-CV-463, Dkt. No. 18 at 9.
Uniloc counters that the median time to trial in this District is 2.17 years, contrasted with 2.72
years in the N.D. of California. 6:12-CV-463, Dkt. No. 32 at 13.
If a case is transferred to the N.D. of California, it would take approximately six months
longer for the cases to get to trial. Thus, the faster time to trial in the Eastern District of Texas
weighs against transfer.
The Local Interest in Having Localized Interests Decided at Home
The Fifth Circuit has explained that “[j]ury duty is a burden that ought not to be imposed
upon the people of a community which has no relation to the litigation.” In re Volkswagen I, 371
F.3d at 206. This factor analyzes the “factual connection” that a case has with both the transferee
and transferor venues. See id. Generally, local interests that “could apply virtually to any judicial
district or division in the United States” are disregarded in favor of particularized local interests.
In re Volkswagen II, 545 F.3d at 318 (in a products liability suit, disregarding local interest of
citizens who used the widely-sold product within the transferor venue); In re TS Tech, 551 F.3d
at 1321. Thus, when products are sold throughout the United States, citizens of a venue do notPage 16 PageID #: 232
have a particularized interest in deciding the dispute simply based on product sales within the
venue. In re Nintendo, 589 F.3d at 1198.
EA argues that Uniloc and the named Defendants have little connection to Texas. Dkt.
No. 18 at 8. Further, EA argues that Uniloc is a California entity that has utilized the California
courts, therefore, this factor favors transfer. Id. Uniloc counters that it is a Texas corporation,
headquartered in the Eastern District of Texas, and that Defendants incorrectly assert that Uniloc
is a California-based company. 6:12-CV-463, Dkt. No. 32 at 1, 12. Uniloc states that while it was
originally a Rhode Island corporation with offices in California and Texas, it became a Texas
corporation in 2010. Id. at 1. In April 2012, Uniloc closed its operations in California and
transferred its headquarters to Plano, Texas. Id. Uniloc further states that several full-time
employees and principals work in Uniloc’s Plano headquarters. Id. Therefore, Uniloc argues that
Texas has an interest in adjudicating this dispute. Id. at 12.
EA
Uniloc has maintained a place of business in the Eastern District of Texas since 2007.
Uniloc USA, Inc. v. Sony Corp. of Am., No. 6:10-CV-373, 2011 U.S. Dist. LEXIS 155927, at
*11. (E.D. Tex. Sept. 20, 2011). Uniloc is also headquartered in Plano, Texas, which is in this
District. Therefore, the Eastern District of Texas has a strong interest and connection to this
litigation. EA states that it is headquartered in Redwood City, California, which is in the N.D. of
California. Thus, the transferee venue also has a local connection to this litigation. All of these
interests are significant; therefore, neither venue’s interests outweigh those of the other venue.
This factor is neutral.
Gameloft
Gameloft is a French corporation with offices in Paris, New York, Seattle, and SanPage 17 PageID #: 233
Francisco. 6:12-CV-466, Dkt. No. 18, Exhibit 1. Therefore, the N.D. of California has a relation
to the litigation. Uniloc is headquartered within this District, in Plano, Texas. Thus, citizens of
this District also have a particularized interest in deciding the dispute. As neither venue’s
interests outweigh those of the other venue, this factor is neutral.
Square Enix
Square Enix states that it is a Washington corporation with its principal office located in
California. 6:12-CV-472, Dkt. No. 18, Exhibit 1. However, Square Enix only identifies offices
within the N.D. of California that belong to an affiliate, not to Square Enix itself. Because Uniloc
is headquartered within Eastern District of Texas and this District has a particularized local
interest in the dispute, while the N.D. of California does not, this factor counsels against transfer.
Distinctive, Mojang, Halfbrick, and Laminar
Distinctive is an English company headquartered in Sheffield, England. 6:12-CV-462,
Dkt. No. 19, Exhibit 1. Mojang is incorporated and headquartered in Stockholm, Sweden. 6:12CV-470, Dkt. No. 19, Exhibit 1. Halbrick is an Australian company headquartered in Brisbane,
Queensland, Australia. 6:12-CV-467, Dkt. No. 17, Exhibit 1. Laminar is headquartered in South
Carolina. 6:12-CV-468, Dkt. No. 18, Exhibit 1. Accordingly, the N.D. of California has no
relation to the litigation. On the other hand, Uniloc is headquartered in the Eastern District of
Texas. Therefore, this factor counsels against transfer.
The Familiarity of the Forum with the Law that Will Govern the Case and the Avoidance of
Unnecessary Problems of Conflict of Laws
Neither party addressed either factor, and neither factor appears to be relevant to this
transfer analysis. These factors are neutral. Page 18 PageID #: 234
The Balance of Factors Weighs Against Transfer
EA
Of the private factors, two weigh against transfer, one weighs slightly in favor of transfer,
and one is neutral. Of the four public factors, one weighs against transfer and three are neutral. In
total, three factors weigh against transfer, one weighs in favor of transfer, and the remaining four
are neutral. See Portal Techs. LLC v. Yahoo! Inc., 2012 WL 3242205, at *6 (E.D. Tex. Aug. 7,) (denying a motion to transfer when one factor favored transfer and two weighed against
transfer).
Gameloft
Of the private factors, three factors weigh against transfer and one weighs slightly in
favor of transfer. Of the public factors, one weighs against transfer and three are neutral. In total,
four factors weigh against transfer, one weighs slightly in favor of transfer, and the remaining
three are neutral.
Square Enix, Distinctive, Mojang, Halfbrick, and Laminar
Of the private factors, three factors weigh against transfer and one weighs slightly in
favor of transfer. Of the public factors, two weigh against transfer and two are neutral. In total,
five factors weigh against transfer, one weighs slightly in favor of transfer, and the remaining
two are neutral.
In sum, Defendants seek to transfer these cases to the N.D. of California because some
potential witnesses are located there. However, the majority of the evidence and the witnesses is
located overseas, in the Eastern District of Texas, or closer to this District. Thus, it cannot be
said that the N.D. of California is “clearly more convenient” than this District. See In re
Volkswagen II, 545 F.3d at 315. Therefore, transfer is not warranted.Page 19 PageID #: 235
CONCLUSION
For all the foregoing reasons, Defendants’ motions to transfer venue to the N.D. of
California are DENIED.
So ORDERED and SIGNED this 5th day of August, 2013.
__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., ET AL.,
§
§
§
§
§
§
§
§
§
§
Plaintiffs,
v.
DISTINCTIVE DEVELOPMENT LTD.,
Defendant.
CASE NO. 6:12-CV-462-LED
(Lead Consolidated Case)
MEMORANDUM OPINION AND ORDER
Before the Court are the following seven motions to transfer venue to the Northern
District of California (“N.D. of California”): Defendant Distinctive Development Ltd.’s Motion
to Transfer Venue (6:12-CV-462, Dkt. No. 19); Defendant Electronic Arts Inc.’s Motion to
Transfer Venue to the N.D. of California (6:12-CV-463, Dkt No. 18); Defendant Gameloft
S.A.’s Motion to Transfer Venue (6:12-CV-466, Dkt. No. 18); Defendant Halfbrick Studios Pty
Ltd.’s Motion to Transfer Venue (6:12-CV-467, Dkt. No. 17); Defendant Laminar Research,
LLC’s Motion to Transfer Venue (6:12-CV-468, Dkt. No. 18); Defendant Mojang A.B.’s Motion
to Transfer Venue (6:12-CV-470, Dkt. No. 19); and Defendant Square Enix, Inc.’s Motion to
Transfer Venue (6:12-CV-472, Dkt. No. 18). For the reasons set forth below, the motions are
DENIED.
BACKGROUND
Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively “Uniloc”) filed
ten different lawsuits alleging that each individual Defendant infringes U.S Patent No. 6,847,067
by “making, using, offering for sale, selling and or importing Android based applications for use
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on cellular phones and/or tablet devices that require communication with a server to perform a
license check to prevent unauthorized used of said application.” 6:12-CV-462—64, 466—72,
Dkt. No. 1 at 3. Defendant Electronic Arts, Inc. (“EA”) seeks transfer to the N.D. of California
under 28 U.S.C. § 1404(a). 6:12-CV-463, Dkt. No. 18. Defendants, Distinctive Development
Ltd. (“Distinctive”); Gameloft S.A. (“Gameloft”); Halfbrick Studios Pty Ltd. (“Halfbrick”);
Laminar Research LLC (“Laminar”); Mojang A.B. (“Mojang”); and Square Enix, Inc. (“Square
Enix”) (collectively, “Joining Defendants”), each filed a separate motion to transfer, but join and
incorporate by reference EA’s Motion to Transfer. 6:12-CV-462, Dkt. No. 19 at 1; 6:12-CV-466,
Dkt. No. 18 at 1; 6:12-CV-467, Dkt. No. 17 at 1; 6:12-CV-468, Dkt. No. 18 at 1; 6:12-CV-470,
Dkt. No. 19 at 1; 6:12-CV-472, Dkt. No. 18 at 1. This order addresses all seven transfer motions.
However, each defendant is evaluated individually. See Consolidation Order, 6:12-CV-462, Dkt.
No. 43 at 4 (“The Court will consider [motions to transfer] only as to the defendants in the
originally filed (member) cases, not as to all defendants in the pretrial consolidated case.”). As
there are many issues common to all defendants and the Parties incorporate by reference the
arguments made in EA’s Motion to Transfer, the Court addresses the common issues in relation
to EA’s motion and separately addresses issues unique to each defendant.
Defendants allege that transfer is warranted because relevant witnesses, including nonparty prior-art-system owners and inventors, are located in the N.D. of California. Uniloc asserts
that this District is more convenient for the majority of the witnesses and that Defendants do not
meet their burden of showing that the N.D. of California is “clearly more convenient,” thus,
transfer is not warranted.
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APPLICABLE LAW
Defendants argue that they are entitled to transfer under 28 U.S.C. § 1404(a) to the N.D.
of California. 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.” 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) (“In re Volkswagen I”).
Once that threshold inquiry is met, 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 Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963);
In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009); In re TS Tech USA Corp., 551
F.3d 1315, 1319 (Fed. Cir. 2009). The private factors are: 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. In re Volkswagen I, 371 F.3d at 203; In re Nintendo,
589 F.3d at 1198; In re TS Tech, 551 F.3d at 1319. The public factors are: 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. In re
Volkswagen I, 371 F.3d at 203; In re Nintendo, 589 F.3d at 1198.
The plaintiff’s choice of venue is not a factor in this analysis. In re Volkswagen of Am.,
Inc., 545 F.3d 304, 314-15 (5th Cir. 2008) (“In re Volkswagen II”). Rather, the plaintiff’s choice
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of venue contributes to the defendant’s burden in proving that the transferee venue is “clearly
more convenient” than the transferor venue. In re Volkswagen II, 545 F.3d at 315; In re
Nintendo, 589 F.3d at 1200. Furthermore, though the private and public factors apply to most
transfer cases, “they are not necessarily exhaustive or exclusive,” and no single factor is
dispositive. In re Volkswagen II, 545 F.3d at 314–15.
ANALYSIS
Eligibility for Transfer
Defendant EA asserts that jurisdiction is proper in the N.D. of California because EA’s
Redwood City, California headquarters lie within the N.D. of California, and EA has the
requisite minimum contacts to be subject to personal jurisdiction there. Dkt. No. 18 at 2, 5. The
Joining Defendants state that they are also subject to the jurisdiction of N.D. of California
because they have offered for sale and sold products there. 6:12-CV-462, Dkt. No. 19 at 2; 6:12CV-466, Dkt. No. 18 at 2; 6:12-CV-467, Dkt. No. 17 at 2; 6:12-CV-468, Dkt. No. 18 at 2; 6:12CV-470, Dkt. No. 19 at 2; 6:12-CV-472, Dkt. No. 18 at 2. Uniloc admits that the cases could
have been brought in the N.D. of California. 6:12-CV-463, Dkt. No. 32 at 4. Thus, the threshold
inquiry is satisfied.
Public Factors
The Relative Ease of Access to Sources of Proof
Despite technological advances that certainly lighten the relative inconvenience of
transporting large amounts of documents across the country, this factor is still a part of the
transfer analysis. In re Volkswagen II, 545 F.3d at 316. Courts analyze this factor in light of the
distance that documents, or other evidence, must be transported from their existing location to
the trial venue. See Id. This factor will turn upon which party will most probably have the greater
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volume of documents relevant to the litigation and their presumed location in relation to the
transferee and transferor venues. See, e.g., In re Volkswagen II, 545 F.3d at 314–15; In re
Nintendo, 589 F.3d at 1199; In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009).
However, documents that have been moved to a particular venue in anticipation of a venue
dispute should not be considered. In re Hoffman-La Roche Inc., 587 F.3d 1333, 1336–37 (Fed.
Cir. 2009). Presumably, the bulk of the discovery material relating to a corporate party is located
at the corporate headquarters. See In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010).
EA argues that this factor favors transfer because its headquarters are located in the N.D.
of California and its relevant witnesses and documents are located on the West Coast. Dkt. No.
18 at 6. EA also argues that documents related to two prior-art systems developed or obtained by
non-party companies GraphOn and InterTrust are likely located in the N.D. of California. Id. at
3. EA further contends that Uniloc’s relevant documents are located in Irvine, California, which
is closer to the N.D. of California. Id. at 6.
Uniloc responds that, by EA’s own admission, relevant EA documents are not located in
the N.D. of California, but in Los Angeles, California; Seattle, Washington; and Quebec,
Canada. Dkt. No. 32 at 8. Uniloc also argues that EA presents no evidence that prior art systems
exist or that any relevant evidence is in the possession of GraphOn or Intertrust. Id. at 9. Thus,
because EA’s statement that GraphOn and Intertrust are likely to have relevant documents is
pure speculation, it should be dismissed. Id. Finally, Uniloc states that the documents related to
this litigation, including those pertaining to prosecution, assignment, and the provisional
application, are located in its headquarters in the Eastern District of Texas, not in N.D. of
California as EA contends. Id.
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None of the relevant documents are located in the N.D. of California. The accused
product, Bejeweled 2, was principally researched, designed, developed, and maintained in
Quebec, Canada and Los Angeles, California. Dkt. No. 18, Exhibit 1. Therefore, the documents
are located outside the N.D. of California. Some documents are also located in Seattle,
Washington. Id. While the documents located along the West Coast are located closer to the
N.D. of California, the documents located in Quebec, Canada are located closer to this District.
By contrast, Uniloc’s relevant documents are located in Plano, Texas, which is within the
Eastern District of Texas. While EA contends that GraphOn and Intertrust are likely to have
documents in the N.D. of California, EA fails to identify any specific relevant evidence that
might be located in that district. See Invitrogen Corp. v. GE, No. 6:08-CV-112, 2009 U.S. Dist.
LEXIS 9127, at *8 (E.D. Tex. Feb. 9, 2009) (“[G]eneral statements [referring to documents] fail
to show that transfer would make access to sources of proof either more or less convenient for
the parties.”) Still, even including these potential documents in the analysis, taking into account
the location of documents in relation to the transferee and transferor venues, neither venue is
clearly more accessible for a greater volume of documents. Therefore, this factor is neutral.
Square Enix
Square Enix argues that its relevant documents are located in N.D. of California as well
as overseas. 6:12-CV-472, Dkt. No. 18 at 2. Uniloc responds that Square Enix’s only activities in
California pertain to public relations, thus the documents located there are not relevant to the
issues of infringement or validity. 6:12-CV-472, Dkt. No. 32 at 2. Therefore, the documents
relevant to issues present in the case are located in Japan, not in California. Id.
The relevant documents are located in Japan as the research, design, development and
maintenance of the accused product, Final Fantasy III for Android devices, was performed in
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Tokyo, Japan. 6:12-CV-472, Dkt. No. 18, Exhibit 1. Because overseas documents must be
transported a significant distance to either venue, the Court discounts them for purposes of this
analysis. See In re Genentech, 566 F.3d at 1344. Moreover, Uniloc’s relevant documents are
located in this District. Accordingly, this factor counsels against transfer.
Distinctive, Mojang, and Halfbrick
Distinctive is an English company. 6:12-CV-462, Dkt. No. 19, Exhibit 1. The documents
relating to the research, design, development and maintenance of the accused product, Rugby
Nations 11, are located at Distinctive’s headquarters in Sheffield, England. Id.
Mojang is incorporated and headquartered in Stockholm, Sweden. 6:12-CV-470, Dkt.
No. 19, Exhibit 1. The research, design, development and maintenance of Minecraft, the accused
product, was performed in Stockholm. Id. Thus, the relevant documents are located in Sweden.
Halbrick is an Australian company headquartered in Brisbane, Queensland, Australia.
6:12-CV-467, Dkt. No. 17, Exhibit 1. The documents regarding the design, development and
maintenance of the accused product, Fruit Ninja, are located in Australia. Id.
Distinctive, Mojang and Halfbrick’s relevant documents are located overseas. Because
the inconvenience for parties and witnesses located overseas does not carry much weight and
Uniloc’s relevant documents are located in this District, this factor counsels against transfer. In
re Genentech, 566 F.3d at 1344.
Gameloft and Laminar
Gameloft is a French corporation with offices in Paris, New York, Seattle, and San
Francisco. 6:12-CV-466, Dkt. No. 18, Exhibit 1. The documents relating to the research, design,
development, and maintenance of Uno, the accused product, are located in New York. Id.
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Laminar is headquartered in South Carolina. 6:12-CV-468, Dkt. No. 18, Exhibit 1. The
documents regarding the design, development and maintenance of the accused product, X-Plane,
are located in Connecticut and in South Carolina. Id.
Gameloft and Laminar’s documents are located along the East Coast in New York,
Connecticut, and South Carolina. The greater volume of documents relevant to the litigation is
closer to this District, and not the N.D. of California. In re Nintendo, 589 F.3d at 1199.
Accordingly, this factor counsels against transfer.
The Availability of Compulsory Process to Secure the Attendance of Witnesses
This factor will weigh more heavily in favor of transfer when more third-party witnesses
reside within the transferee venue. See In re Volkswagen II, 545 F.3d at 316. The factor will
weigh the heaviest in favor of transfer when a transferee venue is said to have “absolute
subpoena power.” Id. “Absolute subpoena power” is subpoena power for both depositions and
trial. In re Hoffmann-La Roche Inc., 587 F.3d at 1338.
EA argues that the availability of compulsory process for non-party witnesses located in
California weighs in favor of transfer.1 6:12-CV-463, Dkt. No. 18 at 6. EA contends that the
accused product uses Google Play Licensing and that Chris Pruett and Daniel Galpin, non-party
Google employees with knowledge of Google Play Licensing, reside in the N.D. of California.
Id. EA also contends that the inventors and owners of prior-art patents are located in the N.D. of
California. Id. at 3.
Uniloc responds that EA does not show why the testimony of the witnesses named is
necessary, or how it would be relevant. 6:12-CV-463, Dkt. No. 32 at 6. Uniloc argues that Mr.
1
The Joining Defendants incorporate by reference EA’s arguments, but provide no other information regarding the
availibity of compulsory process for non-party witnesses. Therefore, the Court’s analysis of this factor also applies
to the Joining Defendants.
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Pruett is no longer a Google employee and that EA provides no information concerning his
involvement with the accused instrumentality. Id. Uniloc also argues that Mr. Galpin does not
appear in EA’s initial disclosures; and the only information provided about him is an address in
Santa Cruz, California. Id. Furthermore, Uniloc argues that the location of Google’s employees
is irrelevant, as it does not accuse Google of infringement, but EA. Id. at 2. So, even if EA may
have borrowed code from Google, the relevant inquiry regarding infringement is based on the
operation of EA’s products. Id. Uniloc further argues that the testimony of inventors of alleged
prior-art patents is unnecessary as only the patents themselves are needed to use the references as
anticipatory prior art. Id. at 7. Finally, Uniloc contends that the patent-in-suit’s inventor and prior
owner, both non-party witnesses, are located in Atlanta, Georgia, and Freehold, New Jersey, thus
their locations do not favor transfer. Id.
EA points to the presence of Google and the development of Google Play in the N.D. of
California as supporting transfer. EA states that it worked with Chris Pruett, a Google employee,
regarding Google Play licensing. 6:12-CV-463, Dkt. No. 18, Exhibit 1. Google Play is a free,
publicly available service to distribute Android applications that allows license verification.
6:12-CV-463, Dkt. No. 18, Exhibit 3. To use the services, one need only agree to the Developer
Distribution Agreement and acquire a valid Developer Account. Id. EA has presented no
evidence of Google’s relevance to this case, other than the necessary contact with a Google
employee to distribute the accused application on the Google Play website. Further, neither party
has subpoenaed Google for any documents or for the deposition of any witness, nor stated that
Google is a necessary party in this case. See In re HTC Corp., 494 Fed. Appx. 81, 82 (Fed. Cir.
Sept. 20, 2012). Accordingly, there are no facts before the Court to support a contention that
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Google has documents or witnesses relevant to this lawsuit, so EA fails to establish that Google’s
presence in the N.D. of California should serve as a basis for transfer of this case.
EA also points to inventors and owners of prior-art patents the reside in the N.D. of
California as supporting transfer. Uniloc points to two third-party witnesses, one in Georgia and
one in New Jersey which are outside the subpoena power of the N.D. of California. The number
of third-party witnesses located within the subpoena power of the N.D. of California is small,
and the majority of non-party witnesses are beyond the subpoena power of both the transferor
and transferee districts. At best, this factor slightly weighs in favor of transfer.
The Cost of Attendance for Willing Witnesses
This factor is analyzed giving broad “consideration [to] the parties and witnesses in all
claims and controversies properly joined in a proceeding.” In re Volkswagen I, 371 F.3d at 204.
All potential material and relevant witnesses must be taken into account for the transfer analysis,
irrespective of their centrality to the issues raised in a case or their likelihood of being called to
testify at trial. See In re Genentech, 566 F.3d 1343 (“Requiring a defendant to show that a
potential witness has more than relevant and material information at this point in the litigation or
risk facing denial of transfer on that basis is unnecessary.”).
The Fifth Circuit has adopted a “100-mile rule” to assist with analysis of this factor. See
In re Volkswagen I, 371 F.3d at 204–05. “When the distance between an existing venue for trial
of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of
inconvenience to witnesses increases in direct relationship to the additional distance to be
traveled.” Id. at 205. When applying the 100-mile rule, the threshold question is whether the
transferor and transferee venues are more than 100 miles apart. See In re Volkswagen II, 545
F.3d at 317; In re TS Tech, 551 F.3d at 1320. If so, then a court determines the respective
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distances between the residences (or workplaces) of all the identified material and relevant
witnesses and the transferor and transferee venues. See In re Volkswagen II, 545 F.3d at 317; In
re TS Tech, 551 F.3d at 1320. The 100-mile rule favors transfer (with differing degrees) if the
transferee venue is a shorter average distance from witnesses than the transferor venue. See In re
Volkswagen II, 545 F.3d at 317; In re TS Tech, 551 F.3d at 1320. However, the 100-mile rule
should not be rigidly applied. See In re Genentech, 566 F.3d at 1344. When a particular witness
will be required to travel “a significant distance no matter where they testify,” then that witness
is discounted for purposes of the 100-mile-rule analysis. Id. (discounting European witnesses and
documents transported from Washington D.C. in the convenience analysis when reviewing a
denial of transfer from Texas to California).
In cases where no potential witnesses are residents of the court’s state, favoring the
court’s location as central to all of the witnesses is improper. Id. at 1344. Finally, this factor
favors transfer when a “substantial number of material witnesses reside in the transferee venue”
and no witnesses reside in transferor venue regardless of whether the transferor venue would be
more convenient for all of the witnesses. Id. at 1344–45.
EA argues this factor favors transfer because all of its witnesses are located in California
or on the West Coast, so travel to the N.D. of California would be more convenient. 6:12-CV463, Dkt. No. 18 at 7. Uniloc responds that EA has only identified Mr. Boyapalle in Los
Angeles, California and Mr. Birkenshaw in Quebec, Canada. 6:12-CV-463, Dkt. No. 32 at 10.
So, while the N.D. of California would be more convenient for Mr. Boyapalle, the Eastern
District of Texas would be more convenient for Mr. Birkenshaw. Id. Uniloc argues that, if the
case were transferred, its employees would have to travel more than 1,700 miles from Plano,
Texas, in the Eastern District of Texas to the N.D. of California. Id. at 11. Furthermore, several
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willing non-party witnesses, including the inventor and the prosecuting attorneys, would be
significantly inconvenienced by having to travel a greater distance from Georgia, New Jersey,
and New York to California. Id.
Several of Uniloc’s witnesses live in Plano, Texas, which is within this District. Further,
all but one of the identified witnesses are much closer to Eastern District of Texas, than to the
N.D. of California. Therefore, the Eastern District of Texas is more convenient for the majority
of identified potential witnesses and this factor weighs against transfer.
Gameloft
Gameloft identifies one potential witness, Baudouin Corman, located in the N.D. of
California. 6:12-CV-466, Dkt. No. 18, Exhibit 1. Uniloc points out that the research, design,
development, and maintenance of the accused product was conducted by Adrien Gilmate in New
York. 6:12-CV-466, Dkt. No. 34 at 2.
On balance this factor weighs against transfer. Several of Uniloc’s witnesses live in
Plano, Texas, which is within this District. Further, all but one of the identified witnesses are
much closer to this District than to the N.D. of California. Therefore, the Eastern District of
Texas is more convenient for the majority of identified potential witnesses.
Square Enix
Square Enix argues that its relevant witnesses are located in the N.D. of California as
well as overseas. 6:12-CV-472, Dkt. No. 18 at 2. Uniloc responds that Square Enix fails to
identify any witnesses in the N.D. of California and that all relevant witnesses appear to be
located in Japan. 6:12-CV-472, Dkt. No. 32 at 2.
The research, design, development, maintenance and marketing decision regarding the
accused product, Final Fantasy III for Android devices, was performed by Square Enix Co.,
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Ltd.’s employees in Tokyo, Japan. 6:12-CV-472, Dkt. No. 18, Exhibit 1. Thus, Square Enix’s
relevant witnesses are located in Japan. When a particular witness will be required to travel “a
significant distance no matter where they testify,” then that witness is discounted for purposes of
the 100-mile-rule analysis. See In re Genentech, 566 F.3d at 1344 (discounting European
witnesses in the convenience analysis when reviewing a denial of transfer from Texas to
California). Because all of the willing witnesses are located either within this district or live
much closer to this District than to the N.D. of California, this factor counsels against transfer.
Distinctive, Mojang, and Halfbrick
Distinctive identifies ten potential witnesses that worked on the research, design,
development and maintenance of the accused product and are located in Sheffield, England.
6:12-CV-462, Dkt. No. 19, Exhibit 1. Mojang states that its employees with knowledge of the
accused product are located in Stockholm, Sweden. 6:12-CV-470, Dkt. No. 19, Exhibit 1.
Halbrick states that its employees are located in Australia. 6:12-CV-467, Dkt. No. 17, Exhibit 1.
Distinctive, Mojang and Halfbrick’s relevant witnesses are located overseas. Witnesses
that are required to travel “a significant distance no matter where they testify,” are discounted for
purposes of the 100-mile-rule analysis. See In re Genentech, 566 F.3d at 1344. Because all of the
willing witnesses are located either within this district or live much closer to this District than to
the N.D. of California, this factor counsels against transfer.
Laminar
Laminar’s witnesses are located in Connecticut and in South Carolina. 6:12-CV-468, Dkt.
No. 18, Exhibit 1. Therefore, none of the willing witnesses are located in the N.D. of California.
As all of the witnesses either live within the Eastern District of Texas, or are located much closer
to this District than to the N.D. of California, this factor weighs against transfer.
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Other Practical Problems
Practical problems include those that are rationally based on judicial economy.
Particularly, the existence of duplicative suits involving the same or similar issues may create
practical difficulties that will weigh heavily for or against transfer. In re Volkswagen of Am., Inc.,
566 F.3d 1349, 1351 (Fed. Cir. 2009) (“In re Volkswagen III”).
EA argues that this factor favors transfer because Uniloc has litigated cases in California
in the past.2 6:12-CV-463, Dkt. No. 18 at 7. EA also argues that, of the ten defendants that
Uniloc sued alleging infringement of the asserted patent, seven seek transfer to the N.D. of
California. Id. Uniloc responds that none of the cases it has litigated in California are related to
the current case or the patent-in-suit, therefore, there is no judicial economy to be gained by
transferring the case to the N.D. of California. 6:12-CV-463, Dkt. No. 32 at 12. Uniloc also
argues that transfer motions are evaluated as to the parties in a particular case, not collectively
across related cases. Id. Therefore, the fact that seven defendants seek transfer does not
necessarily mean that transfer is warranted. Id.
Uniloc sued ten defendants in ten separate cases in this District, alleging infringement of
the ‘067 patent. Seven Defendants seek transfer. Each moving Defendant is evaluated
individually. However, the existence of duplicative suits involving the same or similar issues
creates practical difficulties that counsel for the cases to be handled by the same court. See In re
Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed. Cir. 2010) (noting that it promotes judicial economy
for the same judge to hear related cases); In re Volkswagen III, 566 F.3d at 1351. As the Court
will construe the patent’s claims and rule on dispositive substantive motions in the cases before
2
The Joining Defendants merely incorporate by reference EA’s arguments as to this factor.
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it, it is highly inefficient to transfer a related case when this Court must already oversee Uniloc
cases involving the patent-in-suit. Accordingly, this factor weighs against transfer.
Public Factors
The Administrative Difficulties Flowing from Court Congestion
The speed with which a case can come to trial and be resolved is a factor in the transfer
analysis. In re Genentech, 566 F.3d at 1347. This factor appears to be the most speculative, and
this factor alone should not outweigh other factors. Id.
Defendants argue that the time to trial is neutral because both the N.D. of California and
the Eastern District of Texas show similar time-to-trial statistics. 6:12-CV-463, Dkt. No. 18 at 9.
Uniloc counters that the median time to trial in this District is 2.17 years, contrasted with 2.72
years in the N.D. of California. 6:12-CV-463, Dkt. No. 32 at 13.
If a case is transferred to the N.D. of California, it would take approximately six months
longer for the cases to get to trial. Thus, the faster time to trial in the Eastern District of Texas
weighs against transfer.
The Local Interest in Having Localized Interests Decided at Home
The Fifth Circuit has explained that “[j]ury duty is a burden that ought not to be imposed
upon the people of a community which has no relation to the litigation.” In re Volkswagen I, 371
F.3d at 206. This factor analyzes the “factual connection” that a case has with both the transferee
and transferor venues. See id. Generally, local interests that “could apply virtually to any judicial
district or division in the United States” are disregarded in favor of particularized local interests.
In re Volkswagen II, 545 F.3d at 318 (in a products liability suit, disregarding local interest of
citizens who used the widely-sold product within the transferor venue); In re TS Tech, 551 F.3d
at 1321. Thus, when products are sold throughout the United States, citizens of a venue do not
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have a particularized interest in deciding the dispute simply based on product sales within the
venue. In re Nintendo, 589 F.3d at 1198.
EA argues that Uniloc and the named Defendants have little connection to Texas. Dkt.
No. 18 at 8. Further, EA argues that Uniloc is a California entity that has utilized the California
courts, therefore, this factor favors transfer. Id. Uniloc counters that it is a Texas corporation,
headquartered in the Eastern District of Texas, and that Defendants incorrectly assert that Uniloc
is a California-based company. 6:12-CV-463, Dkt. No. 32 at 1, 12. Uniloc states that while it was
originally a Rhode Island corporation with offices in California and Texas, it became a Texas
corporation in 2010. Id. at 1. In April 2012, Uniloc closed its operations in California and
transferred its headquarters to Plano, Texas. Id. Uniloc further states that several full-time
employees and principals work in Uniloc’s Plano headquarters. Id. Therefore, Uniloc argues that
Texas has an interest in adjudicating this dispute. Id. at 12.
EA
Uniloc has maintained a place of business in the Eastern District of Texas since 2007.
Uniloc USA, Inc. v. Sony Corp. of Am., No. 6:10-CV-373, 2011 U.S. Dist. LEXIS 155927, at
*11. (E.D. Tex. Sept. 20, 2011). Uniloc is also headquartered in Plano, Texas, which is in this
District. Therefore, the Eastern District of Texas has a strong interest and connection to this
litigation. EA states that it is headquartered in Redwood City, California, which is in the N.D. of
California. Thus, the transferee venue also has a local connection to this litigation. All of these
interests are significant; therefore, neither venue’s interests outweigh those of the other venue.
This factor is neutral.
Gameloft
Gameloft is a French corporation with offices in Paris, New York, Seattle, and San
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Francisco. 6:12-CV-466, Dkt. No. 18, Exhibit 1. Therefore, the N.D. of California has a relation
to the litigation. Uniloc is headquartered within this District, in Plano, Texas. Thus, citizens of
this District also have a particularized interest in deciding the dispute. As neither venue’s
interests outweigh those of the other venue, this factor is neutral.
Square Enix
Square Enix states that it is a Washington corporation with its principal office located in
California. 6:12-CV-472, Dkt. No. 18, Exhibit 1. However, Square Enix only identifies offices
within the N.D. of California that belong to an affiliate, not to Square Enix itself. Because Uniloc
is headquartered within Eastern District of Texas and this District has a particularized local
interest in the dispute, while the N.D. of California does not, this factor counsels against transfer.
Distinctive, Mojang, Halfbrick, and Laminar
Distinctive is an English company headquartered in Sheffield, England. 6:12-CV-462,
Dkt. No. 19, Exhibit 1. Mojang is incorporated and headquartered in Stockholm, Sweden. 6:12CV-470, Dkt. No. 19, Exhibit 1. Halbrick is an Australian company headquartered in Brisbane,
Queensland, Australia. 6:12-CV-467, Dkt. No. 17, Exhibit 1. Laminar is headquartered in South
Carolina. 6:12-CV-468, Dkt. No. 18, Exhibit 1. Accordingly, the N.D. of California has no
relation to the litigation. On the other hand, Uniloc is headquartered in the Eastern District of
Texas. Therefore, this factor counsels against transfer.
The Familiarity of the Forum with the Law that Will Govern the Case and the Avoidance of
Unnecessary Problems of Conflict of Laws
Neither party addressed either factor, and neither factor appears to be relevant to this
transfer analysis. These factors are neutral.
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The Balance of Factors Weighs Against Transfer
EA
Of the private factors, two weigh against transfer, one weighs slightly in favor of transfer,
and one is neutral. Of the four public factors, one weighs against transfer and three are neutral. In
total, three factors weigh against transfer, one weighs in favor of transfer, and the remaining four
are neutral. See Portal Techs. LLC v. Yahoo! Inc., 2012 WL 3242205, at *6 (E.D. Tex. Aug. 7,
2012) (denying a motion to transfer when one factor favored transfer and two weighed against
transfer).
Gameloft
Of the private factors, three factors weigh against transfer and one weighs slightly in
favor of transfer. Of the public factors, one weighs against transfer and three are neutral. In total,
four factors weigh against transfer, one weighs slightly in favor of transfer, and the remaining
three are neutral.
Square Enix, Distinctive, Mojang, Halfbrick, and Laminar
Of the private factors, three factors weigh against transfer and one weighs slightly in
favor of transfer. Of the public factors, two weigh against transfer and two are neutral. In total,
five factors weigh against transfer, one weighs slightly in favor of transfer, and the remaining
two are neutral.
In sum, Defendants seek to transfer these cases to the N.D. of California because some
potential witnesses are located there. However, the majority of the evidence and the witnesses is
located overseas, in the Eastern District of Texas, or closer to this District. Thus, it cannot be
said that the N.D. of California is “clearly more convenient” than this District. See In re
Volkswagen II, 545 F.3d at 315. Therefore, transfer is not warranted.
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CONCLUSION
For all the foregoing reasons, Defendants’ motions to transfer venue to the N.D. of
California are DENIED.
So ORDERED and SIGNED this 5th day of August, 2013.
__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE
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