Case 5:13-cv-01356-EJD Document 1 Filed 03/26/13 Page 1 of 50
`Case 5:13-cv-01356—EJD Document 1 Filed 03/26/13 Page 1 of 50
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`CASE NO. 6:1 l-CV-GSS
`PATENT CASE
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`CASE NO. 6:11-CV-656
`PATENT CASE
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`§
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`§ §
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`§ §
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`§
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`§ §
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`§
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`§
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`§ §
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`§ §
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`vs.
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`NEC CORPORATION OF AMERICA, INC.
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`Defendant.
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`vs.
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`§
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`§ §
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`GOOGLE INC. AND YOUTUBE, LLC
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`”Defendants.
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`CASE NO. 6:11-CV—657
`PATENT CASE
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`§ §
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`§ §
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`§
`§
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`§ §
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`vs.
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`NETAPP, INC.
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`Defendant.
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`§
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`.44fimmfim.__mm.mnmpp.‘wn.."‘-lnaii{.;
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`_______________.__—————
`§
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`CASE NO. 6:11-CV-653
`PATENT CASE
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`§ § § § § § § § §
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`PERSONALWEB TECI-INOLGIES, LLC
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`Plaintiff,
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`VS.
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`AMAZON.COM, INC.; AMAZON WEB
`SERVICES LLC; AND DROPBOX, INC.
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`Defendants.
`_______________.____——-—-———
`§
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`§ § § § § § § § § 5
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`vs.
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`CARINGO, INC.
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`Defendant.
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`CASE NO. 6:11-CV-659
`PATENT CASE
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`_________________——-——-—-—-—
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`CASE NO. 6:11-CV-660
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`PATENT CASE
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`§ § § § § § § § §
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`VS.
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`EMC CORPORATION, AND
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`VMWARE, INC.
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`Defendants.
`______________._._.___—.—-—
`§
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`CASE NO. 6:11-CV-683
`PATENT CASE
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`§ § § § § § § § §
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`VS.
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`AUTONOMY, INC.
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`Defendant.
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`________—______._—_—————-—
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`CASE NO. 6:12-CV-662
`PATENT CASE
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`§
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`§ §
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`§ §
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`§
`§
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`§ §
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`§
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`vs.
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`FACEBOOK, INC.
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`Defendant.
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`MEMORANDUM OPINION AND ORDER
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`Before the Court are nine motions to transfer to the Northern District of California] and
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`seven motions to stay pending resolution of a motion to transfer.2 For the reasons set forth below,
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`the Court resolves the transfer motions as follows: 6:11-CV-655 (Docket No. 59) is DENIED;
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`6:11-CV-656 (Docket No. 23) is CONDITIONALLY GRANTED; 6:11-CV-65'? (Docket No.
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`27) is CONDITIONALLY GRANTED; 6:11-CV-658 (Docket No. 21) is DENIED; 6:1 l-CV-
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`659 (Becket No. 21) is DENIED; 6:11—CV-660 (Docket No. 13)
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`is CONDITIONALLY
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`GRANTED; 6:11-CV-683 (Docket No. 63) is DENIED; 6:11-CV-683 (Docket No. 75) is
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`DENIED; 6: 12-CV-662 (Docket No. 25) is CONDITIONALLY GRANTED.
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`The motions to stay (6:11-CV-655 (Docket No. 72); 6:11-CV-656 (Docket No. 115);
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`6:11-CV-657 (Docket No. 91); 6:11-CV-658 (Docket No. 106); 6:11-CV-660 (Docket No. 95);
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`6:11-CV—683 (Docket No. 123); 6: lZ-CV-662 (Docket No. 26)) are DENIED-AS-MOOT.
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`' 6:11-CV'-655 (Docket No. 59); 6:11-CV-656 (Docket No. 23); 6:11-CV-657 (Docket No. 27); 6:11-CV-658
`(Docket No. 21); 6:11-CV-659 (Docket No. 21); 6:11-CV-660 (Docket No. 13); 6:11-CV-683 (Docket No. 63);
`6:11-CV-683 (Docket No. 75); 6: lZ-CV-662 (Docket No. 25).
`1 6:11-CV-655 (Docket No. 72}; 6:11-CV-656 (Docket No. 115); 6:11-CV-657 (Docket No. 91); 6:11-CV—653
`(Docket No. 106); 6:1 l-CV-fififl (Docket No. 95); 6:] 1-CV—683 (Docket No. 123); 6:12—CV-662 (Docket No. 26).
`3
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`The Court will retain jurisdiction over all Defendants through the claim construction
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`process. All conditional
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`transfers will become effective the day the Court issues its claim
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`construction opinion.
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`:1. PersonalWeb
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`BACKGROUND
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`The Plaintiff PersonalWeb Technologies, LLC (“PersonalVlIeb”)3 is a small company
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`based in Tyler. 6:11—CV-656, Docket No. 40, at 2. PersonalWeb is organized under Texas law in
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`Smith County, and it has been operating in Tyler since its formation in 2010. 6:11-CV—655,
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`Docket No. 61, at 2. PersonalWeb has six full-time employees and nine part-time employees, all
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`based in Tyler. Id. It
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`is currently developing a product called StudyPods.‘1 Id. PersonalWeb
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`performs beta testing of StudyPods with students at the University of Texas at Tyler (“UTT”). Id.
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`PersonalWeb also operates a Capstone program with UTT where UTT students design and create
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`elements of StudyPods. Id. Many of PersonalWeb’s part-time employees are UTT students. Id.
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`PersonalWeb is a member of the Tyler Chamber of Commerce, and an East Texas architect
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`designed and constructed its office. Id. at 3.
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`b. Defendants
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`NEC Corporation of America, Inc. (“NECAM”) is headquartered in Irving, Texas. 6:]!-
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`CV-655, Docket No. 61, Ex. 1. Google, Inc. (“Google”) and YouTube LLC (“YouTube”) are
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`headquartered in Mountain View and San Bruno, California, respectively. 6:11-CV-656, Docket
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`No. 23, at 4. NetApp, Inc. (“NetApp”) is headquartered in Sunnyvale, California. 6:11-CV-657,
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` J
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`Inc. 6:] I-CV-683, Docket No. 31, Ex. 44.
`In May 20m, Claria Innovations, LLC formed PersonaiWeb,
`PersonalWeb, Inc. was incorporated in Smith County, Texas. Id. A few months later, PersonalWeb, Inc. reorganized
`into the Plaintiff, PersonalWeb Technologies, LLC. Id. PersonalWeb Technologies, LLC is also incorporated in
`Smith County, Texas. Id.
`‘ StudyPods is a “study-based search, chat and filing sharing platform.” 6:]1—CV—683, Docket No. 81, Ex. 45, a1 3.
`The goal of StudyPods is to enable students to collaborate with their peers in an online community. 6:1].CV-683.
`Docket No. Bl. Ex. 46, at 23.
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`4
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`Docket. No. 2?, at
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`I. Amazon.com,
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`Inc. and Amazon Web Services LLC (collectively
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`“Amazon”) are headquartered in Seattle. 6:11-cv—658, Docket No. 21, at 6. Dropb0x, Inc.
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`(“Dropbox”)
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`is headquartered in San Francisco.
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`Id. at 5. Caringo,
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`Inc.
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`(“Caringo”)
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`is
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`headquartered in Austin, Texas. 6:11-CV-659, Docket No. 21, at 1. EMC Corporation (“EMC”)
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`is headquartered in Massachusetts. 6:11-CV-660, Docket No.
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`13, at 7. VMware,
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`Inc.
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`(“VMware“) is headquartered in Palo Alto. Id. at 6. Hewlett-Packard Company (“HP") is
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`headquartered in Palo Alto. 6:11-CV-683, Docket No. 75, at 12. HP Enterprise Services, LLC
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`(“HPES”) is headquartered in Plano, Texas. 6:11-CV-683, Docket No. 86, at 3. Autonomy, Inc.
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`(“Autonomy”) maintains dual headquarters in San Francisco and the United Kingdom. 6:11-CV-
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`683, Dooket No. 87, at 4 n.3. Facebook, Inc. (“Facebook”) is headquartered in Menlo Park,
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`California. 6: l 2-CV-662, Docket No. 25, at 4.
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`c. The True Name Patents
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`The patents in this case (the “True Name” Patents) have a complex history, several
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`aspects 'of which are relevant to the Motions to Transfer. The True Name Patents were alt
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`invented by David Farber and Ronald Lachman5 and assigned to Kinetech, Inc. (“Kinetech”).
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`6:1 i-CV-6SS, Docket No. 59, at 5. In 2001, Kinetech began licensing the Tme Name portfolio to
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`a company called Brilliant Digital Entertainment (“BBB”) and its subsidiary Altnet,
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`Inc.
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`(“Altnet”). 6:11-CV-683, Docket No. 81, Ex. 35. In 2007, BDE acquired Kinetech and become
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`the owner of the True Name Patents.ti 6:11—CV-683, Docket No. 63, at S. In September 2011,
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`BDE assigned its interest in the True Name Patents to PersonalWeb. 6:11-CV-683, Docket No.
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`81, Ex. 45, at 4. As compensation for the Patents, BDE received a majority equity interest in
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`5 Farber is a resident of Oaji, California, and Lachman is a resident of Northbrook, Illinois. 6:11-CV-683, Docket
`No. 63, 815.
`6 BDE and its subsidiaries Kinetech and Altnet are all Delaware corporations headquartered in Studio City,
`California. 6:11-CV-683, Docket No. 63, at S.
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`PersonalWeb, and BDE’s CEO, Kevin Benneister, became the Non-Executive Chairman of
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`PersonalWeb’s Board of Directors. Id.
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`APPLICABLE LAW
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`Defendants argue they are entitled to transfer under 28 U.S.C. § 1404(a). Section 1404(a)
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`provides that “[fjor the convenience of parties and witnesses, in the interest ofjustice, a district
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`court may transfer any civil action to any other district or division where it might have been
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`bmught.” The first inquiry when analyzing a case’s eligibility for 1404(a’) transfer is “whether
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`the judicial district to which transfer is sought would have been a district in which the claim
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`could have been filed.” In re Volkswagen AG, 371 F.3d 201. 203 (5th Cir. 2004) (“In re
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`VoIkSWogen I”).
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`Once that threshold inquiry is met, courts analyze both public and private factors relating
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`to the convenience of parties and witnesses as well as the interests of particular venues in hearing
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`the case. See Humble 01'! & Ref Co. v. Bell Marine Sent, Inc, 321 F.2d 53, 56 (51h Cir. 1963);
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`In re Nintendo Co., Ltd, 589 F.3d 1194, 1198 (Fed. Cir. 2009); In re TS Tech USA Corp, 551
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`F.3d 1315, 1319 (Fed. Cir. 2009). The private factors are: l) the relative ease of access to sources
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`of proof; 2) the availability of compulsory process to secure the attendance of witnesses; 3) the
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`cost of attendance for willing witnesses; and 4) all other practical problems that make trial of a
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`case easy, expeditious, and inexpensive. In re Volkswagen 1, 371 F.3d at 203; In re Nintendo,
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`589 F.3d at 1198; In re TS Tech, 551 F.3d at 1319. The public factors are: 1) the administrative
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`difficulties flowing from court congestion; 2) the local
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`interest in having localized interests
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`decided at home; 3) the familiarity of the forum with the law that will govern the case; and 4) the
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`avoidance of unnecessary problems of conflict of laws or in the application of foreign law. In re
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`Volkswagen 1, 371 F.3d at 203; In re Nintendo, 589 F.3d at 1198; In re 125' Tech, 55! F.3d at
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`1319.
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`The plaintiff's choice of venue is not a factor in this analysis.T In re Volkswagen ofAm,
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`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
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`more convenient” than the transferor venue. In re Volkswagen II, 545 F.3d at 315; In re
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`Nintendo, 589 F.3d at 1200; In re 13' Tech, 551 F.3d at 1319. Furthermore, though the private
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`and public factors apply to most transfer cases, “they are not necessarily exhaustive or
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`exclusitle," and no single factor is dispositive. In re VoIkmagen II, 545 F.3d at 314—15.
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`8. The Relative Ease of Access to Sources of Proof
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`Despite technological advances that certainly lighten the relative inconvenience of
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`transporting large amounts of documents across the country, this factor is still a part of the
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`transfer analysis. In re Volkswagen II, 545 F.3d at 316. Courts analyze this factor in light of the
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`distance that documents, or other evidence, must be transported fi-om their existing location to
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`I" Only the Filth Circuit gives no deference to a plaintiff's choice of forum. All other circuits give some deference to
`a plaintiff’s choice of forum, although the degree of deference varies among the circuits. In several circuits, the
`plaintiff’s choice of forum is a specific factor in the transfer analysis. See DH. Blair & C0,, Gottdiener, 462 F.3d
`95, 107 (2d Cir. 2006); Jumara v. State Farm Ins. Co, 55 F.3d 873, 879 (3rd Cir. 1995); Jones v. GNC’ Franchising,
`Inc, 211 F.3d 495, 498 (9th Cir. 2000); Emp 'rs Mat. Cos. Co. v. Bartt'le Roofs, Inc, 618 F.3d 1153, 11670001 Cir.
`2010); Ernp 'rs Mm. Cos. Co. v. Bar-tile Roofs. Inc, 61 8 F.3d 1153, 1167 (10th Cir. 2010); In re Scott, 709 F.2d 71?,
`720 {D.C; Cir. 1983). In the remaining circuits, the plaintiff’s choice of forum is entitled to substantial deference.
`See Astra-Med. Inc. v. Nihon Kohden Ant, Inc, 591 F.3d 1, 13 (lst Cir. 2009) (“There is a strong presumption in
`favor of the plaintiff‘s choice of forum“) (internal quotations omitted); Collins v. Straight, Inc, 748 F.2d 916, 921
`(4th Cir. 1984) ("The plaintiff‘s choice of forum should rarely be disturbed”); Reese v. CNH Am. LLC, 574 F.3d
`315, 320 (6th Cir. 2009) (“Unless the balance is strongly in favor of the defendant, the plaintiff‘s choice of forum
`should rarely be disturbed." ; In re Nat 'I Presto Indus, Inc, 347 F.3d 662, 663—64 (7th Cir. 2003) (Posner, .1.) ("The
`plaintiffs choice of forum should rarely be disturbed"); In re Apple, Inc, 602 F.3d 909, 913 (8th Cir. 2010)
`(“Federal courts give considerable deference to a plaintiff‘s choice of forum"): Robinson v. Giarmarco 41: Bill, P. C.,
`74 F.3d 253, 260 (11th Cir. 1996) (“The plaintiffs choice of forum should not be disturbed unless it is clearly
`outweighed by other considerations”). Only the Filth Circuit gives no deference to a plaintiff‘s choice of forum.
`Since the Federal Circuit applies regional circuit law to transfer motions, see In re Link_A_Medt'a Devices Corp,
`662 F.3d 1221, 1222—23 (Fed. Cir. 2011), a plaintiff filing a patent case in Texas, Louisiana, or Mississippi is much
`more likely to be transferred than a plaintiff filing in the other 47 states. See. 12.3.. In re Aflnetrtx. Inc, 2010 WI.
`1525010, at *3 n3 (Fed. Cir. Apr. 13, 2010) (noting Fifth Circuit law is more favorable to transfer than Seventh
`Circuit law).
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`the trial venue. See id. This factor will turn upon which party, usually the accused infringer, will
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`most probably have the greater volume of documents relevant to the litigation and their
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`presumed location in relation to the transferee and transferor venues. See, e.g., In re Volkswagen
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`11, 545 F.3d at 314—15; In re Nintendo, 589 F.3d at 1199; In re Genentech, Inc, 566 F.3d 1338,
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`1345 (Fed. Cir. 2009). However, documents that have been moved to a particular venue in
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`anticipation of a venue dispute should not be considered. In re Hoflman—La Roche Inc, 587 F.3d
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`1333, 1336—3? (Fed. Cir. 2009).
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`b. The Availability of Compulsory Process to Secure the Attendance of Witnesses
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`This factor will weigh more heavily in favor of transfer when more third-party witnesses
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`reside within the transferee venue. See In re Volkswagen [1, 545 F.3d at 316. The factor will
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`weigh the heaviest
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`in favor of transfer when a transferee venue is said to have “absolute
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`subpoena power." Id. "Absolute subpoena power" is subpoena power for both depositions and
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`trial. In re Hoflmonn-La Roche Inc, 58? F.3d at 1338.
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`c. The Cost of Attendance for Willing Witnesses
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`This factor is analyzed giving broad “consideration [to] the parties and witnesses in all
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`claims and controversies properly joined in a proceeding." In re Volkswagen I, 371 F.3d at 204.
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`All potential material and relevant witnesses must be taken into account for the transfer analysis,
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`irrespective of their centrality to the issues raised in a case or their likelihood of being called to
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`testify at trial. See In re Genentech, 566 F.3d at 1343 (“Requiring a defendant to show that a
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`potential witness has more than relevant and material information at this point in the litigation or
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`risk facing denial of transfer on that basis is unnecessary”).
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`The Fifth Circuit has adopted a “100 mile rule" to assist with analysis of this factor. See
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`In re Volkswagen 1, 371 F.3d at 204—05. “When the distance between an existing venue for trial
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`of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of
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`inconvenience to witnesses increases in direct relationship to the additional distance to be
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`traveled." Id. at 205. When applying the “100 mile rule” the threshold question is whether the
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`transferor and transferee venues are more than 100 miles apart. See In re Volkswagen II, 545
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`F.3d at 317; In re IS 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
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`witnesses and the transferor and transferee venues. See In re Volkswagen II, 545 F.3d at 317; In
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`re 115' Tech, 551 F.3d at 1320. The “100 mile rule” favors transfer (with differing degrees) if the
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`transferee venue is a shorter average distance from witnesses than the transferor venue. See In re
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`Volkswagen II, 545 F.3d at 317; In re TS Tech, SSl F.3d at 1320. Furthermore, the existence or
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`non-existence of direct flights can impact the analysis of travel time. See In re Volkswagen I, 37]
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`F.3d at 204, n.3. Thus, regardless of the “straight line” distances calculated for the “100 mile
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`rule," if “travel time" distances favor the transferee venue, then this factor will favor transfer.
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`However, the “100 mile rule” should not be rigidly applied. See In re Genentech, 566 F.3d at
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`1344. When a particular witness will be required to travel “a significant distance no matter where
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`they testify," then that witness is discounted for purposes of the “100 mile rule" analysis. Id.
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`(discounting European witnesses and documents transported from Washington D.C.
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`in the
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`convenience analysis when reviewing a denial of transfer from Texas to California).
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`In cases where no potential witnesses are residents of the court‘s state, favoring the
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`court’s location as central to all of the witnesses is improper. Id. at 1344. Finally, this factor
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`favors transfer when a “substantial number of material witnesses reside in the transferee venue”
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`and no witnesses reside in transferor venue regardless of whether the transferor venue would be
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`more convenient for all of the witnesses. Id. at 1344—45.
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`d. Other Practical Problems
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`Practical problems include those that are rationally based on judicial economy.
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`Particularly, the existence of duplicative suits involving the same or similar issues may create
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`practical difficulties that will weigh heavily in favor or against transfer. In re Volknvagen ofAm..
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`Inc, 566 F.3d 1349, 1351 (Fed. Cir. 2009) (“In re Volkswagen III").
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`e. The Administrative Difficulties Flowing from Court Congestion
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`The speed with which a case can come to trial and be resolved is a factor in the transfer
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`analysis. In re Genenrech, 566 F.3d at 1347. This factor appears to be the most speculative, and
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`this factor alone should not outweigh other factors. Id.
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`f. The Local Interest in Having Localized Interests Decided at Home
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`The Filth Circuit has explained that “[i]ury duty is a burden that ought not to be imposed
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`upon the people of a community which has no relation to the litigation.“ In re Volkswagen I, 371
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`F.3d at 206. This factor analyzes the “factual connection" that a case has with both the transferee
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`and transferor venues. See r'd. Generally, local interests that “could apply virtually to any judicial
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`district or division in the United States” are disregarded in favor of particularized local interests.
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`In re Volkswagen I1, 545 F.3d at 318 (in a products liability suit, disregarding local interest of
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`citizens who used the widely-sold product within the transferor venue); In re TS Tech, 551 F.3d
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`at 1321. Thus, when products are sold throughoat 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
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`venue. In re Nintendo, 589 F.3d at l l98.
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`:1. Common Issues
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`ANALYSIS
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`This order addresses nine separate transfer motions, and all moving Defendants will be
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`evaluated individually. See Norman LP Holdings, LLC v. Lexmark 1111?, Inc, 2012 WL 3307942.
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`at *4 (ED. Tex. Aug. 10, 2012) (Davis, 1.). However, there are many issues common to all
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`Defendants that can be evaluated jointly. This section addresses those issues common to all
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`Defendants.
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`i. PersonalWeb’s Tyler Contacts
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`A consistent argument throughout all Defendants’ briefing is that the Court should not
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`consider PersonalWeb’s Tyler contacts in its transfer analysis. Defendants contend BDE
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`established and is now masquerading as PersonalWeb to establish venue in the Eastern District
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`of Texas. See, e.3:, 6: l 1-CV-656, Docket No. 23, at 3 (referring to PersonalWe-b as an “elaborate
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`construction of a shell company in Texas”). Defendants argue that because PersonalWeb has no
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`legitimate ties to East Texas, its Tyler connections should be given no weight. For the following
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`reasons, the Court rejects this contention and will consider PersonalWeb‘s Tyler contacts in the
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`transfer analysis.“
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`Defendants make two arguments
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`that PersonalWeb's Tyler contacts
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`should be
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`disregarded as “recent and ephemeral.” First, there is a close relationship between PersonalWeb
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`and BDE. For example, BDE maintains a controlling financial interest in PersonalWeb—BDE
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`assigned the True Name Patents to PersonalWeb in exchange for a controlling equity interest in
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`PersonalWeb. See 6:11-CV-683, Docket No. 63, at 5. There is also overlap between the boards
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`I The Court does not give weight to PersonalWeb's choice of venue. See In re Volkmagen H, 545 F.3d at 315.
`However,
`the Court does consider PersonalWeb‘s location in determining whether transfer would be more
`convenient for injust as the Court considers every other party’s location for the same purpose. See id.
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`of the two companies. Kevin Benneister, BDE‘s CEO and Director, serves as the Non-Executive
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`Chairman of PersonalWeb. 6:11—CV-658, Docket No. 21, at 1; 6:11-CV-683, Docket No. 75, at
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`4. Lastly, BDE extended credit
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`to PersonalWeb on multiple occasions to cover operating
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`expenses. 6:11-CV-683, Docket No. 81, Ex. 34. Despite the close relationship between the two
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`companies, Benneister asserts that BDE had no role in PersonalWeb’s formation. See 6:11-CV-
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`683, Docket No. 81, Ex. 35.
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`Second, PersonalWeb’s top two employees own homes in Southern California. Both
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`Michael Weiss and Wasef Kassis, PersonalWeb’s CEO and CTO, respectively, have homes in
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`California, and both regularly travel to California to visit family. 6:11-CV-656, Docket No. 23,
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`at 6. However, both men assert they spend at least 75% of their time in Tyler. Weiss represents
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`that he only owns a home in California because market conditions have prevented him from
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`selling his house. 6:11-CV-683, Docket No. 81, Ex. 45, at 3. Weiss stated that his house is on the
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`market, and the remainder of his family will move to Tyler when the house sells. Kassis
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`represents that he owns a home in California as an investment property. 6:11-CV-655, Docket
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`No. 40, Ex. 34, at 2.
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`Defendants also assert that a former part-time employee of PersonalWeb’s testimony
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`supports their argument. See 6:11—CV-656, Docket Nos. 10? & 108. However, considering the
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`employee’s testimony as a whole, the Court finds it so vague, multifaceted, and bizarre that the
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`Court gives little, if any, weight to the testimony.9
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`9 In May 2012, Jacob Drew approached Google‘s counsel stating that he was worried PersonalWeb's document
`retention policy might put him at risk of liability. Docket No. 108, Ex. 2, at 12. After hiring independent counsel for
`Mr. Drew. Google deposed him in September 2012. See r'a'. Drew testified that the company wanted to incorporate
`the True Name Patents into its StudyPods because it would improve the company‘s litigation position. Id. at 10. He
`also testified he “was told it was very important for PersonalWeb to be located in Tyler, Texas.” Id. Drew further
`stated he had a “volatile“ relationship with Michael Weiss, PersonalWeb‘s CEO, and that Weiss “yelled and
`screamed at him” on numerous occasions, making him feel physically unsafe. Id. at 12. Drew also believed Weiss
`“borderline assault[ed]” his wife. Id. Drew described Weiss as “unpredictable" and that “[he did not] know what this
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`Courts must ensure the purposes of venue laws are not frustrated by a party's attempt at
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`manipulation. See Hertz Corp. v. Friend, 130 S.Ct. 1181, 1195 (2010). Accordingly, a plaintifi‘s
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`contacts with its chosen forum must be disregarded if they are “recent, ephemeral, and an artifact
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`of litigation.” In re Zimmer Holdings, Inc, 609 F.3d 1378, 1381 (Fed. Cir. 2010).
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`All of the contacts found by the Federal Circuit to be “recent and ephemeral" are of
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`substantially less magnitude and longevity than PersonalWeb‘s contacts with Tyler. In In re
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`Hofiinm-La Roche Inc, 587 F.3d 1333 (Fed. Cir. 2009), a California-based plaintiff transferred
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`75,000 pages of documents to its litigation counsel’s office in Texas prior to litigation. Id. at
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`1337—38. If not for the litigation, there would have been no reason for the documents to be in
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`Texas. Id. at 1338. Because the documents had no legitimate connection to Texas, their “Texas"
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`ties were disregarded. See id. (“The assertion that these documents are “Texas” documents is a
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`fiction which appears to be [sic] have been created to manipulate the propriety of venue”).
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`In In re Zimmer Holdings, Inc, 609 F.3d 1378 (Fed. Cir. "2010), the plaintiff transferred
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`all its documents to Texas prior to litigation. Id. at 1381. It also established its “principal place of
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`business" in Texas, but its Texas “headquarters" were merely offices shared by another of its
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`trial counsel’s clients, and none of its employees actually worked at the Texas “headquarters."
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`guy is going to do when he stands up." Docket No. 110, Ex. 4, at 8. Among the more interesting portions of the
`deposition, Drew testified Weiss forced him to go “ghost hunting” with him where Drew was “chased by people [he]
`didn’t even know holding weapons in the woods.” See id. Despite his apparent fear for his own safety, Drew did not
`resign over Weiss's behavior. Docket No. 108, Ex. 2, at 12. Drew contends he ultimately resigned over concerns
`about PersonalWeb's document retention policy. Id. at [3. However, at the time of his resignation, Drew was also
`unhappy with his compensation. id. Despite a recent raise, Drew believed he was entitled to equity in a product he
`was developing. id. PersonalWeb is not the first company Drew left on less than cordial terms. Drew previously
`worked as a developer for a bank, but he was terminated when he refused to sign a proprietary rights agreement.
`Docket No. [17, Ex. 4, at 3. After his termination, Drew sought out various members of the media regarding policies
`enacted by the company he believed were unjust. 1d. at 6. He also established a blog criticizing his former
`employer’s corporate decisions. Id. at 5. Drew's quotes appeared in USA Today, and he even made an on-camera
`appearance on Nightline. Id. at 5-6. Drew also alleges he was contacted by a staff member of a United States senator
`to talk about new banking regulations and their impact on his former employer. id. at 8. Despite his apparent outrage
`at his former company’s policies. he never once challenged those polices during his employment. 1d. at 7.
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`1d; see also In re Apple, Inc, 2010 WL 1922942, at *1 (Fed. Cir. May 12, 2010) (giving no
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`weight to a plaintiff's Texas office when it shared the office with its litigation counsel).
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`In In re Microsofi Corn, 630 F.3d 1361 (Fed. Cir. 2011), the United Kingdom-based
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`plaintiff relocated its corporate headquarters to Tyler, moved all
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`its documents to its new
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`headquarters, and even incorporated in Texas. Id. at 1362. However,
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`the plaintiff had no
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`employees anywhere in the United States—its managing member
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`resided in the United
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`Kingdom—and it incorporated in Texas a mere sixteen days before filing suit. Id.
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`Unlike any of these cases, PersonalWeb is a legitimate company operating a legitimate
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`business in East Texas. PersonalWeb’s extensive Tyler contacts stand in stark contrast to the
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`"recent and ephemera " contacts of Hofiinan-La Roche, Zimmer Holdings, and Microsoft. Unlike
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`those cases, PersonalWeb genuinely established its corporate headquarters in Tyler over a year
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`before any suit was filed. It was founded and incorporated in Tyler. 6:11-CV-6SS, Docket No.
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`61, Ex. 39. Its sole office is in Tyler. M. It has fifteen employees, and all of them work in Tyler,
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`including its Chief Executive Officer and Chief Technical Officer.ID Id. The company leases
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`office space in downtown Tyler, houses all
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`its servers in Tyler, and maintains all company
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`documents in Tyler. 10'. The company is a member of the Tyler Chamber of Commerce, and its
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`CEO is a member of the Greater East Texas IT Professionals. Id. Further, the company hires
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`students from the University of Texas at Tyler to work part-time, and it established work-study
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`programs with UTT. Id. It also conducts beta testing of its Study Pods on the UTT campus. Id.
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`These are all activities of a company legitimately headquartered and doing business in Tyler,
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`Texas.
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`1” Defendants argue these contacts are minimized because Michael Weiss and Wasef Kassis both own homes in the
`Los Angeles area. However, both men declared they spend over “35% of their work time in Tyler. See 6:11-CV-655,
`Docket No. 61, Ex. 40, at 3; Ex. 34, at 2. The Court will not minimize PersonalWeb‘s East Texas contacts based on
`the personal decisions oftwo employees regarding the location oftheir families.
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`PersonalWeb‘s contacts to Tyler are much more significant than those this Court found
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`sufficient in Ealas Technologies, Inc. v. Adobe Systems, Inc, 2010 WL 3835762 (ED. Tex. Sep.
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`28, 2010) (Davis, J.), mandamus denied, In re Google Inc, 2011 WL 772875 (Fed. Cir. Mar. 4,
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`2011). Accordingly,
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`the Court will not disregard PersonalWeb’s Tyler contacts as a mere
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`“artifact of litigation."
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`[3. Common Transfer Factors
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`The following transfer factors are identical for each Defendant and can be evaluated
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`jointly: availability of compulsory process to secure the attendance of unwilling witnesses; all
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`other practical problems that make trial of a case easy, expeditious, and inexpensive;
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`administrative difficulties flowing from court congestion; familiarity of the forum with the law
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`that will govern the case; and avoidance of unnecessary problems of conflicts of laws or the
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`application of foreign laws.
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`i. The Availability of Compulsory Process to Secure the Attendance of
`Witnesses
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`The parties identified several groups of potentially relevant third-party witnesses. The
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`first group contains the two inventors of the True Name Patents—David Farber and Ronald
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`Lachmanflwho live in Ojai. California, and Northbrook, Illinois, respectively. 6:]1-CV-655,
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`Docket No. 59, at 5; Docket No. 61, Ex. 35. The prosecuting attorney of the True Name Patents,
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`Brian Siritzky,
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`lives in Potomac, Maryland. 6:11-CV-6SS, Docket No. 61, Ex. 38. The next
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`group of third—party witnesses contains employees of BDE, PersonalWeb’s corporate parent.
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`Kevin Benneister, the CEO and Director of BBB,” lives in Sydney, Australia, and Anthony
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`" Benneister is also the CEO and CFO of Altnet and Kine-tech. 6:1 l-CV—683, Docket No. 75, at 4.
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`Case 5:13-cv-01356-EJD Document 1 Filed 03/26/13 Page 16 of 50
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`Neumann, BDE‘s Vice President of Business Development,'2 lives in Southern California. 6: 12-
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`CV-662, Docket No. 32, at 4.
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`The third group of non-party witnesses are licensees of the True Name Patents.
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`Defendants identified two licensees of the Patents headquartered in the Bay Area. See 6:11-CV-
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`683, Docket No. 63, at 11. The last group of identified third-party witnesses are the so—called
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`“relevant prior art witnesses." The Defendants identified various inventors of prior art residing in
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`Northern California, including Dr. Martin Hellman, a Stanford professor whose patent was used
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`to reject claims of one of the True Name Patents during re-examination. Id. PersonalWeb
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`countered Defendants’ California witnesses by identif