IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF NORTH CAROLINA
`ASHEVILLE DIVISION
`CIVIL ACTION NO. 1:15-CV-00102-GCM
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`WINDY CITY INNOVATIONS, LLC,
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`Plaintiffs,
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`v.
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`FACEBOOK, INC.,
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`Defendants.
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`THIS MATTER is before the Court on Defendant Facebook, Inc.’s Motion to Change
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`ORDER
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`Venue (Doc. No. 25) and Redacted Memorandum in Support (Do. No. 26), filed on August 25,
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`2015. Pursuant to a court order, Defendant filed an unredacted version of its Memorandum on
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`September 2. (Doc. No. 28) Plaintiff filed its Memorandum in Opposition on September 11,
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`2015 (Doc. No. 29), and Defendant filed its Reply on November 21, 2015 (Doc. No. 30). The
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`case was reassigned to the undersigned on March 7, 2016, along with a case asserting similar
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`allegations against Microsoft Corp. (Windy City Innovations, LLC v. Microsoft Corp., 1:15-cv-
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`103-GCM (W.D.N.C. 2015)), and the parties’ motions are ripe for disposition. For the following
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`reasons, Defendant’s Motion will be GRANTED.
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`I. BACKGROUND
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`The Plaintiff in this matter, Windy City Innovations, Inc., is a Delaware limited liability
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`company with a principal place of business in Chicago, Illinois. (Compl. ¶ 1, Doc. No. 1)
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`Plaintiff has acquired the rights to four patents1 issued by the United States Patent and
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`1 The patent numbers are as follows: No. 8,407,356, entitled “Real Time Communications System”; No. 8,458,245,
`entitled “Real Time Communications System”; No. 8,473,552, entitled “Communications System”; and No.
`8,694,657, entitled “Real Time Communications System.”
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`Case 1:15-cv-00102-GCM Document 31 Filed 03/16/16 Page 1 of 8
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`Trademark Office between 2013 and 2014. (Compl. ¶¶ 6-10, Doc. No. 1) The named inventor
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`on the patents is Daniel Marks, a professor of electrical and computer engineering at Duke
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`University in Durham, North Carolina. (Compl. ¶¶ 11-15, Doc. No. 1) Although the Complaint
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`does not describe him as an employee of Windy City, Plaintiff’s Memorandum in Opposition
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`represents that Marks is now also its Chief Technology Officer. (Plaintiff’s Memorandum in
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`Opposition at 9, Doc. No. 29)
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`Defendant Facebook, Inc. is a Delaware corporation with a principal place of business in
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`Menlo Park, California. (Compl. ¶ 2, Doc. No. 1) The employees who are responsible for
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`developing the various portions of the Facebook website that Plaintiff alleges infringe its patents
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`are located primarily in Menlo Park, California. (Memorandum in Support at 8-10, Doc. No. 26;
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`Jordan Decl., Doc. No. 26-1) However, some relevant employees are located in other U.S. cities
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`or abroad. (Memorandum in Support at 2-5, Doc. No. 17)
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`On June 2, 2015, Plaintiff filed a complaint against Defendant in Asheville, North
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`Carolina, alleging infringement of Plaintiff’s four patents. (Doc. No. 1) The Complaint asserts
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`that venue is proper in the Western District of North Carolina because “Facebook has regularly
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`conducted business in this judicial district” and “has a regularly established place of business” in
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`Forest City, North Carolina. (Compl. ¶ 5, Doc. No. 1) Facebook concedes that it maintains a
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`data storage center in Forest City, North Carolina, but asserts that “no Facebook employee who
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`works at the Forest City data center was involved in the design and development” of the disputed
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`products, and that no documents that are relevant to this litigation are uniquely housed at that
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`facility. (Memorandum in Support at 4, Doc. No. 26; Jordan Decl. ¶¶ 8-9, Doc. No. 26-1)
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`Defendant filed a Motion to Dismiss on July 24, 2015 (Doc. No. 20), followed by a
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`Motion to Change Venue and Memorandum in Support on August 25 (Doc. No. 25, 26).
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`Case 1:15-cv-00102-GCM Document 31 Filed 03/16/16 Page 2 of 8
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`Plaintiff filed a Response in Opposition to the Motion to Dismiss on August 10 (Doc. No. 24),
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`and a Memorandum in Opposition to the Motion to Change Venue on September 11 (Doc. No.
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`29). Defendant’s Replies were filed on August 20 (Doc. No. 22) and September 21 (Doc. No.
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`30). Thus, both motions are ripe for disposition. Because the Court will grant Defendant’s
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`Motion to Transfer Venue, it will not address the Motion to Dismiss and will defer to the United
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`States District Court for the Northern District of California on that issue.
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`II. STANDARD OF REVIEW
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`United States Code Title 28 Section 1391(b) provides that a plaintiff may bring a civil
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`action in: (1) “a judicial district in which any defendant resides, if all defendants are residents of
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`the State in which the district is located”; (2) “a judicial district in which a substantial part of the
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`events or omissions giving rise to the claim occurred, or a substantial part of property that is the
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`subject of the action is situated”; or (3) “if there is no district in which an action may otherwise
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`be brought . . . any judicial district in which any defendant is subject to the court’s personal
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`jurisdiction.” As the Supreme Court has explained, “[w]hen venue is challenged, the court must
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`determine whether the case falls within one of the three categories set out in § 1391(b). If it
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`does, venue is proper.” Atl. Marine Constr. Co., Inc. v. U.S. Dist. Court, 134 S. Ct. 568, 578
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`(2013).
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`Section 1404(a) of the same Title provides, in relevant part: “For the convenience of
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`parties and witnesses, in the interest of justice, a district court may transfer any civil action to
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`any other district or division where it might have been brought . . . .” 28 U.S.C. § 1404(a).
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`Congress designed § 1404(a) as a “federal judicial housekeeping measure,” Van Dusen v.
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`Barrack, 376 U.S. 612, 636 (1964), that operates to “prevent the waste of time, energy, and
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`money and to protect litigants, witnesses and the public against unnecessary inconvenience and
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`Case 1:15-cv-00102-GCM Document 31 Filed 03/16/16 Page 3 of 8
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`expense,” id. at 616 (internal quotation marks and citation omitted). In a motion brought
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`pursuant to § 1404(a), the moving party bears the burden of establishing (1) that the plaintiff
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`could have brought the case in the transferee district and (2) that transfer would make the
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`litigation more convenient for the parties and for the witnesses, and would advance justice. See
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`Datasouth Computer Corp. v. Three Dimensional Techs., Inc., 719 F. Supp. 446, 450 (W.D.N.C.
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`1989). The district court retains “substantial discretion” to decide transfer motions by weighing
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`the various relevant factors. Id.
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`III. ANALYSIS
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`It is undisputed that this case could have been brought in the Northern District of
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`California. Thus, the question for this Court is whether transfer would promote convenience and
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`further the interests of justice. The Western District of North Carolina has consistently applied
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`an eleven-factor test in analyzing whether transfer would advance the interests of justice. Those
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`factors are:
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`(1) the Plaintiff’s choice of forum; (2) the residence of the parties; (3) the relative
`ease of access of proof; (4) the availability of compulsory process for the attendance
`of witnesses and the costs of obtaining attendance of willing witnesses; (5) the
`possibility of a view; (6) the enforceability of any judgment obtained; (7) the
`relative advantages and obstacles to a fair trial; (8) other problems which might
`make the litigation more expeditious and economical; (9) the administrative
`difficulties of court congestion; (10) the interest in having localized controversies
`resolved at home . . . ; and (11) the avoidance of issues involving conflict of laws.
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`Am. Motorists Ins. Co. v. CTS Corp., 356 F. Supp. 2d 583, 585 (2005).2
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`This Court ordinarily gives great weight to the Plaintiff’s choice of forum. See, e.g.,
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`BellSouth Telecommunications, Inc. v. N.C. Utilities Comm’n, 3:05-cv-345, 2005 WL 2416204
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`(W.D.N.C. 2005). However, as both parties acknowledge, the weight given to the plaintiff’s
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`2 The parties agree that the enforceability of judgment, the avoidance of conflicts of law issues, and the necessity of
`a view of Facebook’s premises are not implicated in this case. (Defendant’s Memorandum in Support at 24, 28 Doc.
`No. 26; Plaintiff’s Memorandum in Opposition at 6 n.7, Doc. No. 29)
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`“varies with the significance of the contacts between the venue chosen by plaintiff and the
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`underlying contacts.” Sandvik Intellectual Prop. AB v. Kennametal Inc., No. CIV. 1:09CV163,
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`2010 WL 1924504, at *6 (W.D.N.C. May 12, 2010) (quoting Koh v. Microtek Int’l, Inc., 250 F.
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`Supp. 2d 627, 635 (E.D. Va. 2003)). For this reason, where there is “little connection between
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`the claims and this judicial district,” a plaintiff’s choice of forum may be given little weight in
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`favor of transfer to “a venue with more substantial contacts.” Id. (quoting Koh, 250 F. Supp. 2d
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`at 635). As a general matter, then, a motion to transfer from the plaintiff’s chosen venue will
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`often be granted where this district “is neither the plaintiff’s residence, nor the place where the
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`operative events occurred.” Husqvarna AB v. Toro Co., No. 3:14-CV-103-RJC-DCK, 2015 WL
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`3908403, at *2 (W.D.N.C. June 25, 2015).
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`In this instance, the Court will give Plaintiff’s choice of forum little weight in its analysis.
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`Plaintiff has failed to identify any meaningful connection between this ligation and the Western
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`District of North Carolina. The allegedly infringing products were not invented here, nor has
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`their development and maintenance centered here. Plaintiff has identified no relevant witnesses
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`in this district, its patents were not acquired here, and Plaintiff does not reside here. To the
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`extent Plaintiff attempts to base an association with this district on its relationship with inventor
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`Daniel Marks, it establishes only a potential connection to the Eastern District of North Carolina.
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`(Plaintiff’s Memorandum in Opposition at 13, Doc. No. 29) Plaintiff’s insistence that it plans to
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`call an expert who resides in Virginia is even less availing. (Plaintiff’s Memorandum in
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`Opposition at 15, Doc. No. 29) Finally, Plaintiff suggests that the existence of a Facebook “data
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`center” in this district “establishes a firm connection to this controversy.” (Plaintiff’s
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`Memorandum in Opposition at 8-9, Doc. No. 29) The Court disagrees. Plaintiff alleges causes
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`of action for patent infringement, and no Facebook employee who works at the data center can
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`shed any light on whether that conduct occurred. (See Defendant’s Memorandum in Support at
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`10, Doc. No. 26) Thus, the existence of an unrelated Facebook facility does not establish a
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`relationship between Plaintiff’s claims and this district.
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`Plaintiff asserts that two other factors weigh against transfer. First, it claims that other
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`problems which might make the litigation more expeditious and economical “weigh heavily
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`against transfer.” (Plaintiff’s Memorandum in Opposition at 16, Doc. No. 29) This argument is
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`based on the pendency of the parallel litigation against Microsoft in this district. However, the
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`Court finds that both cases similarly lack a discernible connection to this district, and thus that
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`Plaintiff’s attempt to rely on this factor is entitled to no weight. Second, Plaintiff argues that
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`“court congestion” weighs against transfer to the Northern District of California—which
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`Facebook proposes and Microsoft would not object to. (Plaintiff’s Memorandum in Opposition
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`at 21-22, Doc. No. 29) Because the Northern District of California does appear to be slightly
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`more congested than this district, this factor weighs against granting Defendant’s Motion.
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`Nevertheless, “[d]ocket conditions, while a consideration, cannot be the primary reason
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`for retaining a case in this district.” Cognitronics Imaging Sys., Inc. v. Recognition Research,
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`Inc., 83 F.Supp.2d 689, 699 (E.D. Va. 2000); accord. PlayVision Labs, Inc., No. 3:14-CV-312-
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`GCM, 2014 WL 6472848, at *4. And in this case, the balance of the other relevant factors
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`favors transfer. Specifically, the residence of the defendants in these related actions, the ease of
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`access of proof, and the interest in making the litigation more expeditious and economical
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`suggest that it would be significantly more efficient and convenient to conduct this litigation in
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`the Northern District of California.
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`The alleged acts of infringement—the development of various aspects of Facebook’s
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`website and applications that Plaintiff complains about—all occurred in the Northern District of
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`California, and the relevant employees and documents are also located there. Plaintiff argues that
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`deposition testimony is inevitable (Plaintiff’s Memorandum in Opposition at 17, Doc. No. 29), and
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`a transfer to the Western District of Washington or Northern District of California would simply
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`shift the inconvenience of travel from Defendant to Plaintiff (Id. at 21). However, this Court agrees
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`with Defendant that Plaintiff has broadly alleged that its patents, developed by Marks, are being
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`infringed by a large number of Facebook products developed by numerous engineers.
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`(Defendant’s Memorandum in Support at 2-3, Doc. No. 26) Moreover, the only other witness that
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`Plaintiff has identified is its Virginia-based expert. It is undeniably easier and more cost effective
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`to transport two individuals to a major metropolis like Seattle or San Jose than it is to transport
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`numerous Facebook and Microsoft employees from the West Coast to the mountains of North
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`Carolina. Moreover, there is no indication that it would be at all convenient for Windy City,
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`located in Chicago, to travel in and out of Asheville—where it seems to have no business aside
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`from this litigation.
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`It also appears to the Court that the Western District of North Carolina has no local
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`interest in this case. By contrast, the Northern District of California has a strong local interest in
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`the technology community that has long resided there—including Facebook and Microsoft,
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`which maintain a presence in the district. Moreover, because Microsoft has consented to litigate
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`in that district, there will be no judicial efficiency cost incurred by transferring the case.
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`IV. CONCLUSION
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`In short, “[t]his Court cannot stand as a willing repository for cases which have no real
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`nexus to this district.” Cognitronics Imaging Sys., Inc., 83 F.Supp.2d at 699. The Court finds
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`that convenience to the parties and witnesses, as well as the interests of justice, favor transferring
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`this action to the Northern District of California.
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`THEREFORE, Defendant’s Motion to Transfer Venue (Doc. No. 25) is GRANTED.
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`This case is to be TRANSFERRED from the Western District of North Carolina to the Northern
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`District of California pursuant to 28 U.S.C. § 1404 for such further proceedings as that court may
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`deem appropriate.
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`SO ORDERED.
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`Signed: March 16, 2016
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