Ixi Mobile (R&D) Ltd. et al v. Apple, Inc.

OPINION AND ORDER re: (27 in 1:14-cv-07954-RJS) MOTION to Transfer Case Apple Inc.'s Notice of Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a). filed by Apple, Inc., (47 in 1:14-cv-04428-RJS) MOTION to Transfer Case. filed by Blackberry Limited, Blackberry Corporation, (44 in 1:14-cv-04355-RJS) MOTION to Transfer Case Samsung's Notice of Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a). filed by Samsung Electronics Co., Ltd., Samsung Telecommunications America, LLC, Samsung Electronics America, Inc. Weighing the factors set forth above and having considered all the facts and circumstances before it, the Court determines that Defendants have demonstrated by clear and convincing evidence that transfer of these three actions is appropriate. Accordingly, IT IS HEREBY ORDERED THAT Defendants' motions to transfer these actions to the Northern District of California are GRANTED. The Clerk of the Court is respectfully directed to terminate the motions pending at docket entries 44 in case number 14--cv-4355 (RJS), 47 in case number 14--cv-4428 (RJS), and 27 in case number 14-cv-7954 (RJS), and to close these cases. SO ORDERED. (As further set forth within this Order.) (Signed by Judge Richard J. Sullivan on 8/6/2015)

Northern District of California, cand-4:2015-cv-03755

Current View

Full Text

7 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK - - USDS SDNY DOCUMENT ELECTRONICALLY FILED DOC #: DATE FILED: 8 - 6 - 15 IXI MOBILE (R & D) LTD. and IXI IP LLC, Plaintiffs, - V No. 14 - cv - 4355 (RJS) SAMSUNG ELECTRONICS CO ., LTD, and SAMSUNG ELECTRONICS AMERICA, INC ., Defendants. IXI MOBILE (R & D) LTD. and IXI IP LLC, Plaintiffs, No. 14 - cv - 4428 (RJS) BLACKBERRY LIMITED and BLACKBERRY CORPORATION, Defendants. IXI MOBILE (R & D) LTD. and IXI IP LLC, Plaintiffs, No. 14 - cv - 7954 (RJS) APPLE INC. OPINION AND ORDER Defendant. RICHARD J. SULLIVAN, District Judge: Now before the Court are Defendants ' motions to transfer these three related patent infringement actions to the Northern District of California pursuant to 28U.S. C. § 1404 (a) . For the reasons set forth below, the Court grants Defendants ' motions to transfer. 7 I. BACKGROUND " Plaintiffs IXI Mobile (R & D) Ltd. and IXI IP LLC (collectively, " IXI") bring these three related actions against (i) Samsung Electronics Co ., Ltd. and Samsung Electronics America, Inc. (collectively, " Samsung"), (ii) BlackBerry Limited and BlackBerry Corporation (collectively, " BlackBerry '), and (iii) Apple Inc. ("Apple"), alleging infringement of three of IXI's patents under the patent laws of the United States, 35U.S. C. § 1 et seq. ? The first entity Plaintiff, IXI Mobile (R & D) Ltd ., is a developer and seller of wireless mobile devices. (No. 14 - cv - 4355 (RJS), Doc. No. 12; No. 14 - cv - 4428 (RJS), Doc. No. 1 1 2; No. 14 - cv - 7954 (RJS), Doc. No. 192 .) IXI Mobile (R & D) Ltd. is an Israeli corporation and, until June 2007, was headquartered in Northern California. (Id .; No. 14 - cv - 7954 (RJS), Doc. No. 30 1 2 – 4 .) The second entity Plaintiff, IXI IP LLC, is a New York limited liability company and a patent assertion entity that was formed in April 2014 - a little more than two months before IXI commenced the first of these actions. (No. 14 - cv - 4355 (RJS), Doc. No. 1 | 3; No. 14 - cv - 4428 (RJS), Doc. No. 1 9 3; No. 14 - cv _ 7954 (RJS), Doc. Nos. 1 9 3, 28 at 7, 30, 11 .) On June 5, 2014, IXI IP LLC received the patents - in - suit from IXI Mobile (R & D) Ltd. and then immediately licensed the patents back to IXI Mobile (R & D) Ltd. (No. 14 - cv - 4355 (RJS), Doc. No. 1872 – 3; No. 14 - cv 4428 (RJS), Doc. No. 1872 – 3; No. 14 - cv - 7954 (RJS), Doc. Nos. 1 11 2 – 3, 30 41 14 – 17 .) At a high level of generality and as set forth in greater detail in the three Complaints, the patents - in suit involve " mobile tethering " or hotspot technology, which enables a device to access a wide For the purposes of this Opinion and Order, the Court accepts all allegations in the Complaints (No. 14 - cv - 4355 (RJS), Doc. No. 1; No. 14 - cv - 4428 (RIS), Doc. No. 1; No. 14 - cy - 7954 (RUS), Doc. No. 1) as true. 2 In three joint stipulations dated May 11, 2015, the parties dismissed with prejudice all claims and counterclaims with respect to a fourth IXI patent,U.S. Patent No. 7, 426, 398. (No. 14 - cv - 4355 (RIS), Doc. No. 64; No. 14 - cv 4428 (RUS), Doc. No. 70; No. 14 - cv - 7954 (RIS), Doc. No. 50 .) IXI also initially named a third Samsung entity, Samsung Telecommunications America, LLC ("STA"), as a defendant in its Complaint, but on March 6, 2015, the parties stipulated to the dismissal, without prejudice, of all claims against STA. (No. 14 cv - 4355 (RIS), Doc. No. 59 .) 7 area network (such as the Internet) by way of a connection between the first device and a second, intermediary, device that has access to the wide area network. " (No. 14 - cv - 4355 (RJS), Doc. 20ce are: No. 1, 12; No. 14 - cv - 4428 (RJS), Doc. No. 1 1 9; No. 14 - cv - 7954 (RUS), Doc. No. 199 .) The patents - in - suit also concern technology pertaining to the remote control of mobile CO communication devices, including cellular telephones. (Id .) On February 3, 2015, Defendants filed the instant motions to transfer these actions to the ISI Northern District of California pursuant to 28U.S. C. § 1404 (a) . (No. 14 - cv - 4355 (RJS), Doc. No. 44; No. 14 - cv - 4428 (RJS), Doc. No. 47; No. 14 - cv - 7954 (RJS), Doc. No. 27 .) The motions were fully briefed by March 5, 2015. (No. 14 - cv - 4428 (RJS), Doc. No. 63; No. 14 - cv 7954 (RJS), Doc. No. 45 .) II. LEGAL STANDARD " A district court may transfer any civil action to any other district or division where it might have been brought. . . [ f ] or the convenience of parties and witnesses, in the interest of justice. . . . " 28U.S. C. § 1404 (a) . For a motion to transfer venue, the burden is on the moving party to show by " clear and convincing evidence " that transfer is proper. CYI, Inc. v. Ja - Ru, Inc ., 913 F. Supp. 2d 16, 18 (S. D. N. Y. 2012) (citing N. Y. Marine & Gen. Ins, Co. v. Lafarge N. Am. Inc ., 599 F. 3d 102, 113 – 14 (2d Cir. 2010)) . As the statute makes clear, Defendants must first show that the instant actions could have been brought originally in the transferee district. Whitehaus Collection v. Barclays Prods,, Ltd ., No. 11 - cv - 217 (LBS), 2011 WL 4036097, at * 1 (S. D. N. Y. Aug. 29, 2011) . Under 28U.S. C. $ 1391 (b) (2), venue may be laid in any judicial district " in which a substantial part of the events or omissions giving rise to the claim occurred. " The parties do not dispute that these actions could have been brought in the Northern District of California, the district where Apple is 7 headquartered (No. 14 - cv - 7954 (RJS), Doc. No. 29 13), BlackBerry has numerous offices and executives (No. 14 - cv - 4428 (RJS), Doc. No. 49 9 8), and the supplier of the Android operating system - the site of much of the allegedly infringing technology in Samsung's devices – is headquartered (No. 14 - cv - 4355 (RJS), Doc. Nos. 45 at 2, 46 - 1 9 9) . Indeed, IXI's counsel has admitted that " [ t ] here's absolutely no dispute " that the Northern District of California would be an appropriate venue for each of these actions. (No. 14 - cv - 7954 (RJS), Doc. No. 30 – 1 at 99, Ex. S at 5: 15 .) Having resolved that threshold question, the Court must then take into account the convenience of the parties and witnesses and the interest of justice. " District courts have broad discretion " in making these determinations. D. H. Blair & Co. v. Gottdiener, 462 F. 3d 95, 106 I TILLE (2d Cir. 2006); see also In re Cuyahoga Equip. Corp ., 980 F. 2d 110, 117 (2d Cir. 1992) ("[ M ] otions for transfer lie within the broad discretion of the district court " (citing Stewart Org ., Inc. v. Ricoh Corp ., 487U.S. 22, 29 (1988))) . In exercising their discretion under Section 1404 (a), courts are generally guided by several non - dispositive factors, including: (1) the convenience of witnesses; (2) the location of relevant documents and relative ease of access to sources of proof; (3) the convenience of the parties; (4) the locus of the operative facts; (5) the availability of process to compel the attendance of unwilling witnesses; (6) the relative means of the parties; (7) the forum's familiarity with the governing law; (8) the weight accorded the plaintiff's choice of forum; and (9) trial efficiency and the interests of justice, based on the totality of the circumstances. France Telecom S. A. v. Marvell Semiconductor, Inc ., No. 12 - cv - 4986 (JSR), 2012 WL 6808527, at * 1 (S. D. N. Y. Dec. 28, 2012) (quoting Tomita Techs. USA, LLC v. Nintendo Co ., 818 F. Supp. 2d 770, 772 (S. D. N. Y. 2011)); see also N. Y. Marine & Gen. Ins. Co ., 599 F. 3d at 112. The Court will address each of these factors in turn. 7 III. DISCUSSION A. Convenience of Witnesses " Courts typically regard the convenience of witnesses as the most important factor in considering a § 1404 (a) motion to transfer. " Whitehaus Collection, 2011 WL 4036097, at * 4 (quoting Herbert Ltd. P ' ship v. Elec. Arts Inc ., 325 F. Supp. 2d 282, 286 (S. D. N. Y. 2004)) . Among the various categories of witnesses, the convenience of non - party witnesses is weighted more heavily than that of party witnesses. See Indian Harbor Ins. Co. v. Factory Mut. Ins. Co ., 419 F. Supp. 2d 395, 402 (S. D. N. Y. 2005) (citing Royal & Sunalliance v. British Airways, 167 F. Supp. 2d 573, 577 (S. D. N. Y. 2001)) . Additionally, " [ w ] hen weighing the convenience of the witnesses, courts must consider the materiality, nature, and quality of each witness, not merely the number of witnesses in each district. " Millennium, L. P. v. Hyland Software, Inc ., No. 03 - cv 3900 (DC), 2003 WL 22928644, at * 3 (S. D. N. Y. Dec. 10, 2003) (citations omitted) . As numerous numerous courts have recognized, in patent infringement suits, " [ t ] he key witnesses [ ] . . . are UIT those officers and employees who are involved in the design, production, and sale of the products. " Id ., see also Int ' l Sec. Exch, LLC v. Chi. Bd. Options Exch. Inc ., No. 06 - cv - 13445 (RMB) (THK), 2007 WL 1541087, at * 3 (S. D. N. Y. May 24, 2007) ("In the context of a patent infringement suit, a court should give particular consideration to individuals who can testify about the technology of the allegedly infringing inventions ."), report and recommendation adopted by 2007 WL 2319128 (S. D. N. Y. Aug. 9, 2007); Fuji Photo Film Co. v. Lexar Media, Inc ., 415 F. Supp. 2d 370, 373 (S. D. N. Y. 2006) ("The key issues in a patent infringement suit involve the technology of the inventions claimed in the patents - in - suit. ') . Here, witness convenience overwhelmingly favors transferring these actions to the Northern District of California. It is telling that all three Defendants - Apple, BlackBerry, and 7 Samsung - are unaware of a single party or non - party witness located in New York with Te inawa knowledge of the design, development, or marketing of the relevant technologies. (No. 14 - cv 7954 (RJS), Doc. No. 29 115, 7 – 10, 12; No. 14 - cv - 4428 (RJS), Doc. No. 49 914, 7 – 8; No. 14 cv - 4355 (RJS), Doc. No. 46 – 198 .) Moreover, even IXI is unable to name a single party or non party witness located in or close to New York with knowledge of the design, development, or marketing of the relevant technologies. Specifically, IXI identifies merely two witnesses potentially located near New York – Steve Pederson from LXI IP LLC and an unnamed third party witness from Verizon Communications, Inc. (No. 14 - cv - 7954 (RIS), Doc. No. 31 at 15 – 16, 18 – 19, Doc. No. 34) - but their testimony undisputedly would not concern the technology of the allegedly infringing inventions. Thus, neither is a key witness, and the presence of these individuals is entitled to barely any weight. In marked contrast, an abundance of key party and non - party witnesses reside within or in close proximity to the Northern District of California. For example, every single one of Apple's likely party witnesses with knowledge of the design, development, and marketing of the relevant technologies resides and works within the Northern District of California. (No. 14 - cv 7954 (RJS), Doc. No. 29 TT 5, 12 .) Specifically, Apple has identified at least seven key party witnesses – Delziel Fernandes, Sergey Sitnikov, Andreas Wolf, Timm Hannon, Sean Kelly, ses Michael Chu, and Steve Gedikian - who all (1) work at Apple's Cupertino, California headquarters in the Northern District of California, and (2) live within the Northern District of California. (Id ., 12 .) Notably, all of these employees are " key witnesses, Millennium, L. P ., 2003 WL 22928644, at * 3, since all but Mr. Gedikian are engineers responsible for and possess knowledge of the technologies at issue, and Mr. Gedikian was responsible for marketing the was allegedly infringing technologies (No. 14 - cv - 7954 (RJS), Doc. No. 29 y 12) . In addition, 7 BlackBerry's Senior Technical Director, Michael Rybak - a party witness with knowledge of the relevant technologies, including prior art to the patents - in - suit - works in BlackBerry's Pleasanton, California office, which, like Apple's headquarters, is located i