Dec 8, 2023

To print this article, all you need is to be registered or login on Mondaq.com. On November 6, 2023, Judge Albright denied Defendants AmazonServices LLC and eero LLC's Motion to Dismiss for ImproperVenue and to Transfer Venue to the Northern District ofCalifornia. On July 13, 2021, TrackThings LLC filed a complaint againstAmazon.com Inc., Amazon Services LLC, and eero LLC (which Amazonpurchased in 2019) alleging infringement of U.S. Patent Nos.9,642,017; 9,332,442; and 10,107,893, which are directed towireless networking technology that allows smart devices tocommunicate with each other. That case progressed throughinfringement contentions, disclosures, and Markmandecisions. After the defendants raised a meritorious standingchallenge, TrackThings filed a new Complaint on February 17, 2023,curing the standing defect and asserting the same patents.Defendants then filed this motion to transfer on April 7, 2023,alleging that venue is improper as to eero and that the NorthernDistrict of California is a clearly more convenient forum. I. EERO'S REGULAR AND ESTABLISHED PLACE OF BUSINESS Amazon did not contest that venue was proper in the WesternDistrict of Texas. TrackThings acknowledged that eero was notincorporated in Texas and therefore did not "reside"there under 28 U.S.C. § 1400(b). Eero alleged that it did nothave a "regular and established place of business" in thedistrict, and that all of its employees working in the district a)worked mostly in customer support roles and had nothing to do withthe technical design and development of the accused technology andb) were not required to live in the Western District or near anyparticular physical office. However, eero's employees in Texasworking "remotely" had access to Amazon's Tech Hublocated in Austin, Texas, and discovery revealed that many of themaccessed the office two to three times per week during the relevantperiod. The Court ruled that companies cannot have physical locationsavailable to employees, have their employees use those locations ona regular basis, but still escape venue because the employees arelabeled "remote" internally. II. TRANSFER ANALYSIS Judge Albright first concluded that the threshold determinationwas met—this case could have been brought in the NorthernDistrict of California. Next, Judge Albright examined the followingprivate and public interest factors to determine whether theNorthern District of California is a clearly moreconvenient forum than the Western District of Texas: A. Private Interest Factors The Cost of Attendance and Convenience for WillingWitnesses. The Court found that this factor, "themost important factor in the transfer analysis," is neutral.Amazon told the Court that its offices and presence in Austin andNDCA lessened the burden for testifying employees in either forum(including eero employees) as they could work from a convenientoffice while waiting. Given that Defendants' employees withknowledge reside in WDTX, NDCA, and New York and all ofPlaintiffs' witnesses reside in New Jersey, the Court foundthis factor neutral. The Availability of Compulsory Process to Secure theAttendance of Witnesses. The Court concluded that thisfactor slightly favors transfer because of specific non-partywitnesses identified in the invalidity contentions residing inNDCA. The Court also applied the Fifth Circuit's recentguidance in In re Planned Parenthood Federation of America,Inc. that even if this factor favors transfer, the weight isdiminished because neither party has alleged any of the witnessesmentioned are unwilling. The Relative Ease of Access to Sources ofProof. The Court concluded that this factor is neutral.Evidence showed relevant electronic documents were stored in Oregonor with third parties, but that any physical documents—noneof which had been identified—would be in NDCA. The FifthCircuit held in Planned Parenthood that the location ofevidence bears much more strongly when the evidence is physical innature. However, the Federal Circuit has held that it is an errorto conclude the factor is neutral because electronic documents areeasily accessible in both forums. Reconciling these, the Courtfound the factor is neutral. All Other Practical Problems That Make Trial of a CaseEasy, Expeditious, and Inexpensive. The Court found thisfactor weighed heavily against transfer given the Court'sfamiliarity with the patents from the previous case and theparties' agreement on an expedited schedule due to the progressmade in that case. B. Public Interest Factors Administrative Difficulties Flowing from CourtCongestion. The court found this factor neutral and indoing so noted that the Federal Circuit recently concluded thatthis factor should not weigh against transfer when the plaintiff isnot engaged in product competition in the marketplace and is notthreatened in the market in a way that might add urgency to caseresolution. Local Interest in Having Localized Interests Decided atHome. The Court found that this factor slightly favorstransfer. Defendants offered that NDCA had a local interest in thecase because its headquarters are there, but TrackThings pointedout that defendants have job openings in WDTX and received taxbreaks for facilities near Waco. The Court noted that those jobopenings and tax breaks do not relate to the issues or patents, andfurther noted that TrackThings is based in New Jersey and haslittle connection to WDTX beyond its choice of forum. Familiarity of the Forum with the Law That Will Governthe Case and Avoidance of Unnecessary Problems of Conflict of Lawsor in the Application of Foreign Law The Court found thatthis factor is neutral, and both parties agreed. The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circumstances. AUTHOR(S)