Judge Woods Transfers Case to Where the Witnesses and Documents Are Located
On June 11, 2019, District Judge Gregory Woods (S.D.N.Y.) granted Defendants HTC Corp.'s and HTC America, Inc.'s ("HTC America") (collectively, "HTC") motion to transfer a patent infringement case brought by Dynamic Data Technologies, LLC ("DDT") to the Western District of Washington ("W.D. Wash.") pursuant to 28 U.S.C. § 1404(a).
DDT is a Delaware company with its principal place of business in St. Paul, Minnesota. DDT obtained the asserted patents by assignment. The patents derive from the research and development of Koninklijke Philips N.V. ("Philips") and are directed to methods and systems for processing, filtering, encoding, and decoding images and videos. HTC Corp. is a Taiwanese company with its principal place of business in Taiwan. HTC America has its principal place of business in Seattle, Washington. HTC manufactures consumer electronics such as smartphones and virtual reality devices.
The parties did not dispute that the case could have been brought in W.D. Wash. The Court therefore focused its analysis on the nine factors that a court must weigh when determining whether to transfer pursuant to § 1404.
- The Convenience of Witnesses
The Court accorded meaningful weight to HTC's argument that its corporate witnesses are located in W.D. Wash. and in Taiwan. For the witnesses in Taiwan, HTC argued that W.D. Wash. would be more convenient due to the shorter travel distance compared to the Southern District of New York ("S.D.N.Y.") and due to the fact that visiting W.D. Wash. would be less disruptive to their regular duties because HTC has an office in W.D. Wash. DDT argued that S.D.N.Y. would be more convenient for third-party witnesses with knowledge of the patents, including inventors and prosecuting attorneys. But because DDT failed to provide a description of their anticipated testimony beyond general categories of information, the Court could not discern if any of the witnesses would provide material testimony. The Court accorded little weight to DDT's argument that S.D.N.Y. would be more convenient for the sixteen inventors located in Europe for the reason that they are located neither in the transferor forum nor the transferee forum. The Court determined that this factor weighs in favor of transfer.
- The Convenience of the Parties
The Court accorded significant weight to the fact that HTC America's principal place of business is in W.D. Wash. In contrast, because DDT is located in Minnesota, the Court found that DDT would not suffer an inconvenience irrespective of whether the case is transferred. The Court accorded little weight to DDT's arguments that DDT would have to obtain new counsel as a result of transfer and that the parties have a litigation history in S.D.N.Y. The Court determined that this factor weighs strongly in favor of transfer.
- The Location of Relevant Documents and the Relative Ease of Access to Sources of Proof
The Court determined that this factor weighs in favor of transfer. The Court noted that HTC America's headquarters and its documents are located in W.D. Wash. The Court also noted that it would be easier for HTC Corp. to ship documents to HTC America and for HTC Corp.'s employees to work out of HTC America's office in W.D. Wash. as compared to shipping documents to a location in S.D.N.Y.
- The Locus of Operative Facts
Although the accused products are designed and manufactured in Taiwan, HTC argued that W.D. Wash. is the locus of a number of operative facts because HTC markets, sells, and imports the accused products based on activity in its office in W.D. Wash. The Court determined that this factor weighs heavily in favor of transfer.
- Availability of Process to Compel the Attendance of Unwilling Witnesses
The Court determined that this factor is neutral because neither party asserted that a witness would be unwilling to testify in either forum.
- The Relative Means of the Parties
DDT argued that HTC is valued at $600MM whereas DDT is much smaller with a single employee. But DDT failed to provide documentation to show that a transfer would be unduly burdensome on its finances. The Court determined that this factor is neutral.
- The Forum's Familiarity with the Governing Law
The Court determined that this factor is neutral because the parties agreed so and because any district court is skilled to handle a patent case.
- The Weight Accorded the Plaintiff's Choice of Forum
The Court determined that this factor weighs in favor of transfer, but it accorded this factor limited weight because DDT is not a resident of S.D.N.Y.
- Trial Efficiency and the Interests of Justice
HTC cited data supporting its argument that both docket conditions and efficiency weigh in favor of transfer. The Court therefore determined that this factor weighs in favor of transfer.
Of the nine factors, only one—DDT's choice of forum—weighed against transfer, and even then, that factor was accorded little weight. Therefore, the Court granted HTC's motion to transfer.
Case: Dynamic Data Techs., LLC v. HTC Corp., No. 18-cv-10180, Dkt. No. 55 (S.D.N.Y. June 11, 2019).