EDTX & NDTX Monthly Wrap-Up — December 2019

This post summarizes three interesting opinions out of the Eastern District of Texas in December 2019.

Judge Rodney Gilstrap of the Eastern District of Texas (E.D.Tx.) recently denied three disputed transfer requests pursuant to 28 U.S.C. §1404(a).[1] In all three cases, the Court determined that Defendants failed to demonstrate that the proposed district was "clearly more convenient." Section §1404(a) provides that:

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.

Whether venue in E.D.Tx. was proper was not disputed in any of the cases before the Court. Rather, the parties disagreed whether Defendants' requests to transfer to the Central and Northern Districts of California were "clearly more convenient" per §1404(a).

The Court began by determining that each of the three cases met the threshold inquiry as they "could have been filed" in the Defendants' proposed district. See In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004). The Court then analyzed the relevant private and public transfer factors, an overview of which is provided in the table below.

Factor		Quest NetTech v. Apple (N.D.Cal.)	Rembrandt v. Apple (C.D.Cal.)	Vocalife v. Amazon (N.D.Cal.)
Private Factors	Access to sources of proof	For transfer	Against transfer	Against transfer
	Securing witnesses	Neutral	For transfer	Neutral
	Convenience of witnesses	For transfer	Against transfer	Neutral
	Judicial economy	Neutral	Against transfer	Neutral
Public Factors	Court congestion	Against transfer	Against transfer	Against transfer
	Local interests	Neutral	Neutral	Neutral
	Familiarity with the law	Neutral	N/A	N/A
	Other	N/A	Neutral	N/A

 

The Private Transfer Factors

In all three cases, the Court addressed four private factors: (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the convenience of attendance for willing witnesses, to include costs; and (4) factors associated with judicial economy. Volkswagen I, 371 F.3d at 203 (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)).

As to access to sources of proof—€”private factor (1)—€”the Court determined that this factor at times favored transfer and at others disfavored transfer[2]. In all cases, however, the weight of this factor was minimal given the electronic nature of the evidence. The Court concluded that the availability of compulsory process factor (2) was generally neutral, though in one instance weighed in favor of transfer because some of Defendant's fact witnesses "would be subject to compulsory process in the Central District of California."[3] However, in that instance the Court afforded it only slight weight because Defendant was only able to identify one witness likely to present relevant evidence to a jury. Id.

While no single factor was dispositive, the Court generally considered factor (3)—€”the convenience of the witnesses—€”most important. The result of the Court's analysis with respect to factor (3) differed in each of the three cases.[4] In the instance where the Court found that this factor favored transfer, however, its significance was mitigated by the fact that the identified witnesses were employees and thus under Defendant's control.[5] The final private factor (4) was generally neutral because of the lack of "duplicative suits involving the same or similar issues" in the Districts, but in one instance the Court determined that its familiarity with the Asserted Patents in a prior lawsuit outweighed Defendant's related pending lawsuits in the proposed district.[6]

The Public Transfer Factors

The Court next addressed the public factors implicated by transfer such as: (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. Volkswagen I, 371 F.3d at 203. In doing so, the Court noted that these factors are to be decided based on "the situation which existed when suit was instituted." Hoffman v. Blaski, 363 U.S. 335, 343 (1960).

Notably, regarding public factor (1), in all three cases the Court determined that E.D.Tx. was the preferred venue because its median time to trial for patent cases was shorter than either N.D.Cal. or C.D.Cal..[7] As for the remaining public factors, the Court either did not explicitly consider them or found them to be neutral. Interestingly, the Court reaffirmed an earlier determination in a different case that the presence of Amazon "fulfillment centers and lockers throughout Texas and the country" gave rise to a local interest.[8]

Weighing the Factors

In all three cases, the Court found that the evidence presented failed to demonstrate that the proposed district was "clearly more convenient."[9] And in the one case where Defendant's proposed district appeared to have a greater number of factors in its favor, the Court reasoned that while "clearly more convenient is [not necessarily] equal to "€˜clear and convincing,' a movant must show materially more than a mere preponderance of convenience," ultimately determining that a proposed district is not "clearly more convenient" if the forums are both roughly similar in terms of convenience.[10]

[1] See Quest NetTech Corporation v. Apple, Inc., Case No. 2:19-cv-00118, Dkt. No. 53 (Nov. 27, 2019); Rembrandt Technologies, LP v. Apple, Inc., Case No. 2:19-cv-00025, Dkt. No. 94 (Nov. 27, 2019); Vocalife LLC v. Amazon.com, Inc., Amazon.com, LLC., Case No. 2:19-cv-00123, Dkt. No. 57 (Nov. 27, 2019).

[2] Compare Quest NetTech at 6-7 with Rembrandt at 3-4; Vocalife at 6-7.

[3] Rembrandt at 5.

[4] Quest NetTech at 9-10; Rembrandt at 6-7; Vocalife at 9-11.

[5] Quest NetTech at 9-10.

[6] Rembrandt at 6.

[7] Quest NetTech at 10; Rembrandt at 6-7; Vocalife at 11.

[8] Vocalife at 12-13.

[9] Quest NetTech at 11-12; Rembrandt at 8; Vocalife at 14.

[10] Quest NetTech at 11.

Author: Michael Ellis