Williamson v. Google Inc., C.A. No. 14-216-GMS (D. Del. Mar. 2, 2015)

8/9/2019 Williamson v. Google Inc., C.A. No. 14-216-GMS (D. Del. Mar. 2, 2015)

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

RICHARD A. WILLIAMSON, ON BEHALF

OF AND

AS

TRUSTEE FOR AT HOME

BONDHOLDERS' LIQUIDATING TRUST,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

OR ER

Civil Action No. 14-216-GMS

On February 19, 2014, the plaintiff Richard Williamson ( Williamson ) filed a patent

infringement suit against the defendant Google Inc. ( Google ), alleging infringement

of

U.S.

Patent Nos. 6,014,698 (''the '698 Patent ) and 6,286,045 ( the '045 Patent ). (D.I. 1.) Williamson

filed the action on behalf of and as trustee for the At Home Bondholders' Liquidating Trust

( Liquidating Trust ).

Presently before the court is Google's Motion to Transfer Case to the Northern District of

California. (D.I. 11.) For the following reasons, the court will transfer the case to the Northern

District ofCalifornia.

For the convenience ofparties and witnesses, in the interest of ustice, a district court may

transfer any civil action to any other district or division where it might have been brought. 28

U.S.C. § 1404(a). nder§ 1404(a), the court undertakes a two-step inquiry in order to resolve a

motion to transfer. First, the court must determine whether the action could have originally been

brought in the proposed transferee forum. Memory Integrity LL v Intel Corp. No. 13-1804-

GMS, 2015 WL 632026, at 2 (D. Del. Feb. 13, 2015).

If

yes, the court proceeds to the second



step and asks whether transfer would best serve the interests

of

justice and convenience.

Id

(quoting

Smart Audio Techs.

LLCv

Apple Inc.

910 F. Supp. 2d 718, 724 (D. Del. 2012)). These

interests are outlined in the Third Circuit's decision in Jumara v State Farm Insurance Co.

55

F 3d 873, 879-80 (3d Cir. 1995). The private interests may include the

plaintiffs

choice

of

forum,

the defendant's choice, where the claims arose, the convenience

of the parties, the convenience of

non-party witnesses (to the extent they would

be

unavailable), and the location of the books and

records.

Id

at 879. The public interests include the enforceability

of

the judgment, practical

considerations, any administrative difficulties arising from court congestion, and the trial judges'

familiarity with applicable state law in diversity cases.

Id

at 879-80.

Both parties agree that the first step is

satisfied-Williamson

could have filed suit in the

Northern Dist;rict

of

California. Thus, the court proceeds to consider the Jumara factors.

1

Plaintiff s Choice. Williamson is not at home in Delaware, and therefore his choice is

entitled to less deference. See In re Link A Media Devices Corp. 662 F.3d 1221, 1223 (Fed.

Cir. 2011). Williamson resides in New York, whereas the Liquidating Trust was formed in the

Northern District

of

California. Although it does not afford Williamson's choice paramount

consideration, the court nonetheless finds that some degree

of

heightened deference is

warranted. See Ithaca Ventures k.s. v Nintendo ofAm. Inc. No. 13-824-GMS, 2014 WL 4829027,

at *2-3 (D. Del. Sept. 25, 2014) (citing Shutte v Armco Steel Corp. 431F.2d22 (3d Cir. 1970)).

Defendant s Choice. Google seeks transfer to the Northern District ofCalifornia. Google

has legitimate reasons for seeking to litigate there, as its principal place

of

business is in Mountain

View, California.

DJ. 1

i 2.) Thus, Google's choice is entitled to

some-but

not overriding-

1

The parties agree that three of the public interest factors are irrelevant or neutral: enforceability of the

judgment, public policies

of

the fora, and the judges' familiarity with applicable state law. The court does not address

these factors.

2



deference.

See Intellectual Ventures I

LL

v

Altera Corp.

842 F Supp. 2d 744, 755 (D. Del.

2012) ( Under Third Circuit law, [a defendant's] preference for an alternative forum is not given

the same weight

as

Plaintiffs preference. ).

Where the Claims Arose While this factor is often neutral where the accused infringer

operates nationally, the court often takes into account where the infringing products originate-

i.e.

where they are designed, developed, manufactured, or marketed.

See Ithaca Ventures

2014

WL 4829027, at *3.

Linex Techs. Inc.

v

Hewlett-Packard Co.

No. 11-400-GMS, 2013 WL

105323, at *4 (D. Del. Jan. 7, 2013). Google designed and developed the accused AdSense product

in Mountain View; Google continues to develop and market AdSense from that location.

Therefore the infringement claims have deeper roots in the Northern District of California than

in the District ofDelaware.

See Linex Techs.

2013 WL 105323, at *4. This factor weighs slightly

in favor of transfer.

Convenience o the Parties Google is a Delaware corporation. Although the Federal

Circuit has warned against placing undue emphasis on a company's situs of incorporation in the

transfer calculus, see In re Link_A_Media 662 F.3d at 1224, Google's extensive history

of

litigating in the District ofDelaware and its considerable resources suggest that any inconvenience

to Google would be minimal. Nonetheless, the court agrees that, considering Google's logistics,

litigation in the Northern District of California would be

more

convenient.

n

contrast,

Williamson, on behalf

of

the Liquidating Trust, is in New York and will be required to travel

regardless of where this action takes place. He does not share the same logistic concerns as

Google. Moreover, he is no stranger to the Northern District of California the Liquidating Trust

was formed in the U.S. Bankruptcy Court for the Northern District of California. Although the

court certainly believes that Williamson's resources (as trustee) do not quite rival those of Google,

3



Williamson does not suggest that litigating in the Northern District of California would pose a

financial burden. At least a portion of Williamson's legal counsel is in fact already located within

the District. Additionally, the court is puzzled by Williamson's numerous references to the

efficiencies of litigating in New York City: he did not file this lawsuit in the Southern District of

New York, but rather in the District of Delaware. Thus, in the court's view, the convenience of

the parties weighs very slightly in favor of transfer.

Non Party Witnesses. Google has identified three

companies located

in the Northern

District

of California that

work within the relevant patented-technology industry. Google argues

that its invalidity contentions may rely on testimony from founders or inventors at these

companies, who would not be subject to Delaware's subpoena power. Williamson does not

identify any non-party witnesses who could only be compelled to testify in Delaware. Google

need not prove that [its identified witnesses] may actually be unavailable for trial in Delaware.

See Ithaca Ventures 2014 WL 4829027, at

5

(internal quotation marks omitted). [I]t is enough

that likely witnesses reside beyond the court's subpoena power and that there is reason to believe

that those witnesses will refuse to testify absent subpoena power.

Joao Control Monitoring

Sys.

LLCv

Ford Motor Co.

No. 12-cv-1479 (GMS), 2013 WL 4496644, at *6 (D. Del. Aug. 21,

2013). Google's identified witnesses have no relationship with Google, thus providing some

reason to believe that they would refuse to testify. This factor favors transfer.

Books and Records. Although the burden on defendants to produce books and records

has declined substantially with modern technology, the location

of

this evidence is still a factor to

be considered. See In re Link_A_Media 662 F.3d at 1224; Smart Audio Techs. LLC v Apple

Inc.

910

F.

Supp. 2d 718, 732 (D. Del. 2012). Google's documents are located in Mountain View.

Thus, this factor, at least to a degree, favors transfer.



Practical Considerations

As this is a public interest factor, the court must pay close

attention to the broader public costs ofli tigating in one forum versus the other, rather than rehash

the parties' convenience arguments. The location of non-party witnesses is relevant.

See Segan

LL

v Zynga Inc.,

No. 11-670-GMS, 2014 WL 1153388, at *4 (D. Del. Mar. 19, 2014)

( [T]ransfer to a district where numerous nonparty witnesses reside will reduce public costs. ).

The court has already discussed Google's non-party witnesses located in the Northern District

of

California. Aside from this, the court is not persuaded that the aggregate litigation costs would

be very different between the two Districts.

See Mite Networks Corp. v Facebook, Inc.,

943

F

Supp. 2d 463, 476 (D. Del. 2013). This factor slightly favors transfer.

Court Congestion The parties do not provide the court with meaningful data concerning

administrative difficulties or court congestion in the two Districts. While the relative size

of

the

respective caseloads is an inadequate justification for transfer alone, increased times from filing

to disposition and trial are important factors that do influence the court's calculus.

Ithaca

Ventures,

2014

W

4829027, at *6. Without data on resolution times, the court finds this factor

is neutral.

Local Interest The court is not convinced that either the District of Delaware or the

Northern District ofCalifornia has a local interest in the resolution of his patent infringement case,

which implicates markets on a national and international scale.

See id

at 7;

Helicos Bioscis. Corp.

v Illumina, Inc.,

858

F

Supp. 2d 367, 375 (D. Del. 2012). This factor is neutral.

On balance, the court finds that the

Jumara

factors as a whole weigh in favor

of

transfer.

IT IS HEREBY ORDERED THAT Google's Motion to Transfer Case to the Northern District of

5



California (D.I. 11) is GRANTED. This action is TRANSFERRED to the Northern District o

California.

Dated: March _:b___ 2015

2

The court declines to address Google s recently filed motion to stay proceedings pending inter p rtes

review.

D.1.

53.)

6

Williamson v. Google Inc., C.A. No. 14-216-GMS (D. Del. Mar. 2, 2015)

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