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EAST\75589949.

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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
INNOVATIVE DISPLAY
TECHNOLOGIES LLC,
Plaintiff,
v.
BMW OF NORTH AMERICA, LLC &
BMW MANUFACTURING CO., LLC,
Defendants.
Civil Action No. 14-cv-00106-JRG
JURY TRIAL DEMANDED
BMW OF NORTH AMERICA, LLCS AND BMW MANUFACTURING CO., LLCS
MOTION AND MEMORANDUM IN SUPPORT OF MOTION TO TRANSFER VENUE
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TABLE OF CONTENTS
PAGE
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I. INTRODUCTION............................................................................................................ 1
II. FACTUAL BACKGROUND.......................................................................................... 2
A. IDT and The Allegations of Its Complaint. ....................................................... 2
B. BMW Parties. ....................................................................................................... 3
III. ARGUMENT.................................................................................................................... 5
A. Legal Standard. .................................................................................................... 5
B. The Private Interest Factors Strongly Favor Transfer to New Jersey. .......... 7
1. The Convenience and Cost of Attendance for Willing
Witnesses Strongly Favors Transfer. ..................................................... 7
2. The Ease of Access to Sources of Proof Strongly Favors
Transfer. ................................................................................................... 9
3. The Availability of Compulsory Process To Secure the
Attendance of Witnesses Is Either Neutral or Favors Transfer. ....... 10
4. The Other Practical Problems Factor Favors Transfer. ................ 11
C. The Public Interest Factors Favor Transfer. .................................................. 12
1. The District of New Jersey Has a Strong Local Interest In
Having This Dispute Decided There. ................................................... 12
2. The Administrative Difficulties Flowing From Court
Congestion Is a Neutral Factor. ............................................................ 13
3. The Familiarity of the Forum with the Governing Law and
Conflict of Laws Are Each Neutral Factors. ....................................... 13
D. Considerations of Judicial Economy Do Not Override the Compelling
Case For Transfer Here..................................................................................... 13
IV. CONCLUSION .............................................................................................................. 15
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TABLE OF AUTHORITIES
Page(s)
FEDERAL CASES
Balthasar Online, Inc. v. Network Solutions, LLC,
654 F. Supp.2d 546 (E.D.Tex. 2009).........................................................................................7
Balthaser Online, Inc. v. Kimberly-Clark Corp.,
No. 2:09-188-TJW, 2011 WL 1235143 (E.D. Tex. Mar. 30, 2011) ..........................................9
Baxter Healthcare Corp. v. Fresenius Med. Care Holdings, Inc.,
No. 2:06-CV-438(TJW), 2007 WL 433299 (E.D. Tex. Feb. 6, 2007) ....................................13
Core Wireless Licensing, S.A.R.I., v. Apple, Inc.,
6:12-cv-100-LED-JDL, slip op. (E.D. Tex. Feb. 22, 2013).....................................................13
GeoTag, Inc. v. Aromatique, Inc.,
No. 2:10-cv-570, Dkt. No. 585 (E.D. Tex. Jan. 14, 2013).......................................................14
In re Acer America Corp.,
626 F.3d 1252 (Fed. Cir. 2010)................................................................................................12
In re Genentech,
566 F.3d 1338 (Fed. Cir. 2009)..............................................................................................6, 9
In re Hoffman-La Roche Inc.,
587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................6
In re Horseshoe Entmt,
337 F.3d 429 (5th Cir. 2002) .............................................................................................11, 12
In re Microsoft Corp.,
630 F.3d 1361 (Fed. Cir. 2011)..............................................................................................6, 9
In re Morgan Stanley,
417 Fed. Appx. 947 (Fed. Cir. 2011)........................................................................................7
In re Nintendo Co.,
589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................6
In re Toyota Motor Corp.,
747 F.3d 1338 (Fed. Cir. 2014)........................................................................................2, 8, 10
In re Toyota Motor Corp.,
No. 2014-113, 2014 WL 1316595 (Fed. Cir. Apr. 3, 2014) ........................................6, 7, 8, 10
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In re TS Tech USA Corp.,
551 F.3d 1315 (Fed. Cir. 2008)................................................................................6, 11, 12, 13
In re Verizon Bus. Network Servs. Inc.,
635 F.3d 559 (Fed. Cir. 2011)..........................................................................................7, 9, 13
In re Vistaprint Ltd.,
628 F.3d 1342 (Fed. Cir. 2010)................................................................................................14
In re Volkswagen,
566 F.3d 1349 (Fed. Cir. 2009)............................................................................................6, 13
In re Volkswagen AG,
371 F.3d 201 (5th Cir. 2004) ....................................................................................................9
In re Volkswagen of Am., Inc.,
545 F.3d 304 (5th Cir. 2008), cert. denied, 129 S.Ct. 1336 (2009)...............................6, 11, 12
In re Zimmer Holdings, Inc.,
609 F.3d 1378 (Fed. Cir. 2010)............................................................................................6, 14
Mediostream, Inc., v. Microsoft Corp.,
No. 2:08-cv-3690, 2009 WL 3161380 (E.D. Tex. Sept. 30, 2009)............................................9
Promote Innovation LLC v. Schering Corp.,
No. 2:10-cv-248-TJW, 2011 WL 665817 (E.D. Tex. Feb. 14, 2011)......................................10
Remmers v. United States,
No. 1:09-CV-345, 2009 WL 3617597 (E.D. Tex. Oct. 28, 2009) .......................................7, 11
Shoemake v. Union Pac. R.R. Co.,
233 F. Supp. 2d 828 (E.D. Tex. 2002)...........................................................................7, 11, 12
The Whistler Group, Inc. v. PNI Corp.,
2003 WL 22939214 (N.D. Tex. Dec. 5, 2003) ........................................................................11
Volkwagen AG v. Dee Engg, Inc.,
No. 1:02-CV-1669- LJM, 2003 WL 1089515 (S.D. Ind. Mar. 4, 2003) ...................................7
Wireless Recognition Tech. v. A9.com, Inc.,
No. 2:10-cv-364 JRG, slip op. (E.D. Tex. Feb. 15, 2012) .......................................................13
FEDERAL STATUTES
28 U.S.C. 1404(a) ...........................................................................................................1, 5, 7, 13
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Defendants BMW of North America, LLC (BMWNA) and BMW Manufacturing Co.,
LLC (BMWMC) (collectively BMW), respectfully move pursuant to 28 U.S.C. 1404(a) to
transfer this case to the District of New Jersey.
I. INTRODUCTION
Plaintiff, Innovative Display Technologies, LLC (IDT) has sued BMW alleging
infringement of certain U.S. patents relating to light emitting panel assemblies. The named
inventors are apparently located in Ohio, as is the law firm that procured the patents from the US
Patent and Trademark Office. Plaintiff, a non-practicing entity formed by Acacia Research
Group just last year, has filed other lawsuits on many of these patents in the District of Delaware
and in this District. At least one other defendant in this district has moved to transfer its case and
that motion is fully briefed before this Court.
Defendant BMWNA imports and distributes BMW brand vehicles to a network of
independent dealers in the United States. BMWNAs corporate headquarters, sales staff, and
engineering staff are all located in Woodcliff Lake, New Jersey. This facility is the workplace
for nearly a thousand BMW employees, including all of the key personnel involved in the
importation, distribution, engineering, technical support, and sales and marketing of the car
models accused of infringing the patents at issue. BMWNAs corporate headquarters also
houses most, if not all, of defendants documents that are likely relevant to the issues in these
cases.
BMWMC manufactures sports activity vehicles including the BMW brand X3, X5, and
X6 vehicles in Greer, South Carolina. While BMWMCs corporate headquarters and staff are
located in South Carolina, a number of BMWMCs corporate officers work at the BMWNA
corporate headquarters in New Jersey and BMWMC employees travel there regularly.
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Given BMWs strong connections to New Jersey, the convenience of the inventors and
non-party witnesses, IDTs demonstrated willingness to litigate in the Northeast, and IDTs
limited connection to this district, the Court should transfer this case to New Jersey.
II. FACTUAL BACKGROUND
A. IDT and The Allegations of Its Complaint.
Plaintiff IDT is a Texas limited liability company registered at 1701 Directors Blvd.,
Suite 300, Austin TX 78744-1044, in the Western District of Texas. (Lavelle Dec., Exh. A).
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Acacia Research Group LLC, the parent of IDT, incorporated IDT on March 13, 2013. (Id.).
IDT is a non-practicing patent-holder that licenses and litigates patents. (Lavelle Decl., Exh. B).
IDT acquired the patents-in-suit by way of a series of assignments, with some of the
patents passing through Acacia. (Lavelle Decl., Exhs. D-L). IDT and Acacia acquired the
patents from the following companies, none of which are in Texas:
Solid State Opto Limited, Offshore Incorporations Centre, Tortola, British Virgin
Islands;
Rambus International Ltd., Codan Trust Company (Cayman) Limited, Grand
Cayman, Cayman Islands
Rambus Inc., Sunnyvale, CA; and
Rambus Delaware LLC, Becksville, OH.
IDT accuses BMW of infringing nine (9) patents. All the patents name Jeffrey R. Parker
as the lead inventor. (See Dkt. No. 8). On the face of the patents in suit, Mr. Parker is listed as
residing in Richfield, Ohio. (See, e.g., U.S. Patent No. 6,755,547, Dkt. No. 1-1). It is also
possible that Mr. Parker resides in California, where he is CEO of a company called SORAA.
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The Complaint alleges that IDTs principle place of business is at an address in Plano, TX
where Acacia has a facility. (Dkt. No. 8 at 1). In a recent Federal Circuit decision relating to
another Acacia subsidiary, the Federal Circuit gave weight to the subsidiarys Austin address as
listed in the Secretary of States records, rather than the office in Plano that Acacia maintains. In
re Toyota Motor Corp., 747 F.3d 1338, 1339 (Fed. Cir. 2014).
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(Lavelle Decl., Exh. C). Two of the nine asserted patents include co-inventors Mark D. Miller
and Thomas A. Hough, who are listed on the patents as residing in Parma, OH and Lakewood,
OH respectively. (See, e.g., U.S. Patent No. 6,508,563, Dkt. No. 1-8). None of the named
inventors live or work in Texas.
The attorney who prosecuted the patents-in-suit, Donald L. Otto, works at Renner, Otto,
Boisselle, & Sklar, LLP, in Cleveland OH. (Lavelle Decl., Exh. M). As a result, all relevant
information about the prosecution of the patents-in-suit, as well as their conception and reduction
to practice, resides outside of Texas. Texas is more than twice as far from Cleveland as New
Jersey. (Lavelle Decl., Exh. N).
IDT accuses BMW of infringing seven of the IDT patents by using a navigation/driver
information display in various models of BMW vehicles. (Dkt. No. 8). These patents have also
been asserted by IDT in other lawsuits it has filed in Delaware and in this District.
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IDT also accuses BMW of infringing the other two IDT patents related to LED tail lights
(Id. at 53, 58). So far as we can determine, these patents are not at issue in the other IDT
cases pending in Delaware or in this District.
B. BMW Parties.
Defendant BMWNA is a Delaware limited liability company located in Woodcliff Lake,
New Jersey. (Exh. P, Kent Dec. at 3). BMWNA is the U.S. importer and exclusive distributor
of BMW-brand passenger cars, sport activity vehicles, and motorcycles. (Kent Dec., 5).
BMWNA purchases these vehicles from its affiliated German company, BMW AG. Id.
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IDT has filed 28 cases in this District. (Nos. 13-cv-522, -523, -524, -525, -526, -527, -783, -
784, 14-cv-30, -106, -142, -143, -144, -145, -146, -200, -201, -202, -222, -300, -301, -302, -532,
-535, and -624). IDT, along with co-plaintiff Delaware Display Group, LLC has filed 7 cases
in Delaware. (Nos. 13-cv-2106, -2107, -2108, -2109, -2110, -2111, -2112)
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BMWNA imports these vehicles and distributes them through independent dealers throughout
the United States. Id. BMWNA also engages in marketing activities for sales of the BMW
vehicles. (Id.).
Woodcliff Lake is the home of BMWNAs corporate headquarters, its Technical Training
Center, and the BMW Groups sales headquarters for North America. (Id. at 3). BMWNA also
operates a Vehicle Preparation Center in Port Jersey, New Jersey. Id. More than 500 people
work directly for BMWNA at BMWNAs facilities in New Jersey. (Id. at 4). BMWNA
employs engineers and technical support personnel in Woodcliff Lake, New Jersey that
understand, analyze, and assist independent dealers with question on and repair of BMW
vehicles. (Id. at 6). BMWNA maintains a regional technical field force that provides support to
dealers. (Id.). BMWNAs technical service engineers are trained in New Jersey and Munich,
Germany. (Id.). When a regional technical service engineer has questions about how the
Accused Systems works, he contacts personnel in either New Jersey or Munich, Germany. (Id.).
BMW does not employ anyone in this district. (Id. at 4).
The key personnel having knowledge relevant to this case work at BMWNA in
Woodcliff Lake, NJ. (Id. at 8). For example, Hans-Juergen Mutschin is responsible for
technical issues that may arise with the vehicles head unit and the instrument cluster. (Id.).
Anthony Ascione is the Head of New Vehicle Sales at BMWNA in New Jersey, and as such, has
knowledge concerning the sales of the accused vehicles. (Id.). Also in New Jersey is Trudy
Hardy, BMWNAs Vice President of Marketing, who is knowledgeable of BMWNAs
marketing efforts related to both the Accused Car Models and the Accused Systems. (Id.).
BMWNA does not have any offices in this district. (Id. at 9).
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BMWNA creates and maintains all of its documents relevant to this case in New Jersey.
(Id. at 10). For example, BMWNAs headquarters in Woodcliff Lake houses documents and
records pertaining to the Accused Car Models it purchases from BMW AG, documents and
records related to the importation of the Accused Car Models into the United States, sales
information and documentation of BMWNAs sales of the Accused Car Models to independent
distributors throughout the United States, marketing and promotional materials related to the
Accused Car Models and the Accused Systems, including brochures, advertisements, catalogs,
press releases, website and internet materials, consumer studies, reports, and the like, technical
documents related to the Accused Systems and Accused Car Models received from BMW-
affiliated companies, including at least user manuals and specification sheets, and BMWNAs
entity-related corporate documents. (Id.). All necessary technical documents for all of the
automobiles and their systems are kept in New Jersey. (Id.). BMWNA does not maintain or
store any documents, relevant to this case or otherwise, in this district. (Id. at 11).
BMWMC is a Delaware limited liability company. BMWMC manufactures BMW brand
sport activity vehicles such as the X3, X5, and X6 models in Greer, South Carolina. (Exh. Q,
McCraw Dec. at 2, 4). Most all of the key managers and personnel at BMWMC having
knowledge relevant to BMW MCs activities work in the Greer, South Carolina area. (Id. at 5).
Some of BMW MCs corporate officers work at the BMW headquarters in New Jersey. (Id. at
6). BMW MC does not have any offices in this district. (Id. at 7).
III. ARGUMENT
A. Legal Standard.
For the convenience of parties and witnesses and in the interest of justice, 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). The party seeking transfer must show the transferee venue is clearly more
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convenient than the venue chosen by the plaintiff. In re Volkswagen of Am., Inc., 545 F.3d 304,
315 (5th Cir. 2008) (en banc) (Volkswagen II). However, the party seeking transfer need not
show that the factors favoring transfer substantially outweigh those disfavoring transfer or
even that the transferee forum is far more convenient. Id. at 314; In re Toyota, 747 F.3d at
1339-40. The party seeking transfer need only show that the balance tips in favor of the
transferee forum. Id.
The Fifth Circuit considers both private and public interest factors in evaluating transfers
sought for the parties convenience. Volkswagen II, 545 F.3d at 314 n.9. The private factors
include: (1) the relative ease of access to sources of proof; (2) the availability of compulsory
process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses;
and (4) all other practical problems that make the trial of a case easy, expeditious, and
inexpensive. Id. at 315 (internal quotations omitted). The public interest factors include: (1)
the administrative difficulties flowing from court congestion; (2) the local interest in having
localized interests decided at home; (3) the familiarity of the forum with the law that will govern
the case; and (4) the avoidance of unnecessary problems of conflict of laws [or in] the
application of foreign law. Id. In addition to these factors, courts consider judicial economy in
the determination of whether a transfer would be in the interests of justice under the statute. In
re Volkswagen, 566 F.3d 1349, 1351 (Fed. Cir. 2009).
Recently, the Federal Circuit has ordered transfer in a number of patent cases in which
there was little connection between the case and the forum from which transfer was sought. See
In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008); In re Genentech, 566 F.3d 1338 (Fed.
Cir. 2009); In re Hoffman-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Nintendo Co.,
589 F.3d 1194 (Fed. Cir. 2009); In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010); In
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re Microsoft Corp., 630 F.3d 1361 (Fed. Cir. 2011); In re Verizon Bus. Network Servs. Inc., 635
F.3d 559 (Fed. Cir. 2011); In re Morgan Stanley, 417 Fed. Appx. 947 (Fed. Cir. 2011) (non-
precedential); In re Toyota., 747 F.3d at 1338-40.
B. The Private Interest Factors Strongly Favor Transfer to New Jersey.
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1. The Convenience and Cost of Attendance for Willing Witnesses
Strongly Favors Transfer.
The key witnesses with information likely relevant to the issues of infringement and
alleged damages in this case are current and/or former New Jersey employees of BMWNA,
making transfer to District of New Jersey most convenient and cost effective for the witnesses.
The relative convenience of the witnesses is often recognized as the most important factor to be
considered when ruling on a motion under 1404(a). Remmers v. United States, No. 1:09-CV-
345, 2009 WL 3617597 at *5 (E.D. Tex. Oct. 28, 2009) (citations omitted). In terms of
witnesses, venue is considered convenient in the district or division where the majority of
witnesses are located. Shoemake v. Union Pac. R.R. Co., 233 F. Supp. 2d 828, 832 (E.D. Tex.
2002). When addressing this factor, the court considers not only the number of witnesses
located in the respective districts, but also the nature and quality of their testimony in
relationship to the issues in the case. Volkwagen AG v. Dee Engg, Inc., No. 1:02-CV-1669-
LJM, 2003 WL 1089515 at *4 (S.D. Ind. Mar. 4, 2003).
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As a threshold matter, BMW must establish that the action could have been brought in the
District of New Jersey. See Balthasar Online, Inc. v. Network Solutions, LLC, 654 F. Supp.2d
546, 549 (E.D.Tex. 2009). This is a low bar, requiring only that Defendants make a prima facie
case for personal jurisdiction in the transferee forum. See id. Here, Defendant BMWNA has a
regular and established place of business in the District of New Jersey and has engaged in the
accused infringing activity in that district. Similarly, Defendant BMWMC manufactures several
of the accused infringing automobile models which are sold in the District of New Jersey. Thus,
this case could have been brought in the District of New Jersey.
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Here, the location of potential witnesses favors transfer to the District of New Jersey. All
of the relevant BMWNA employees work in Woodcliff Lake, New Jersey, which is a mere 25
miles from the district courthouse in Newark. (See Lavelle Dec., Exh. P at 1). Woodcliff Lake
is approximately 1500 miles from Marshall, Texas. (Id. at 2). These will be the employees with
the most knowledge of the issues in the case regarding the operation of the accused features, and
will be the likely candidates to testify at depositions and at trial.
Defendant BMWMC is the manufacturer of only a subset of the vehicles at issue (the
sport-activity vehicles). So far as we have been able to determine, the accused products (LCD
displays and LED taillights) are supplied by vendors in assembled form. Thus, BMWMC
witnesses (who make certain of the accused vehicles) are unlikely to have any role in the merits
of this dispute. Nonetheless, BMWMC has a number corporate officers who work out of the
New Jersey office. To the extent they are called on to testify, it is undeniably more convenient
for the employee-witnesses of both BMW Defendants to attend trial in New Jersey as opposed to
having to travel to Marshall, Texas.
It is settled that the comparison between the transferor and transferee forums is not
altered by the presence of other witnesses and documents in places outside both forums. In re
Toyota, 747 F.3d at 1340. Nonetheless, it is likely that the third party witnesses, the named
inventors and patent attorney, if called to testify at trial, would find it more convenient to travel
to Newark, NJ. These witnesses are located in the Cleveland area, based on the information
listed on the patents. Cleveland is about 400 miles from Newark and much closer to Newark
than to Marshall. United currently offers six non-stop flights a day between Cleveland and
Newark. (See, e.g., Exh. R, United Flight Timetable). Hence, the inventors and attorney in
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Cleveland would likely prefer to appear for trial in Newark than to make the much longer trip to
Marshall.
In sum, it is more convenient to a greater number of witnesses to have this case litigated
in the District of New Jersey. Under the Fifth Circuits 100-mile rule, the factor of
inconvenience to every BMW witness and every third party witness increases dramatically by
having to travel to Marshall for trial. In re Volkswagen AG, 371 F.3d 201, 204-05 (5th Cir.
2004) (Volkswagen I). This factor thus strongly favors transfer. See In re Verizon, 635 F.3d at
562 (transferee court was far more convenient where many witnesses resided in transferee
district and none resided within 100 miles of the plaintiffs chosen forum); Balthaser Online, Inc.
v. Kimberly-Clark Corp., No. 2:09-188-TJW, 2011 WL 1235143, at *1, *3 (E.D. Tex. Mar. 30,
2011) (ordering transfer to District of New Jersey where one of six defendants and its witnesses
and evidence were located there).
2. The Ease of Access to Sources of Proof Strongly Favors Transfer.
The ease of access to sources of proof also strongly favors transfer to the District of New
Jersey. [T]his factor almost invariably turns on which party will most likely have the greater
volume of relevant documents and their presumed physical location in relation to the venues
under consideration. Mediostream, Inc., v. Microsoft Corp., No. 2:08-cv-3690, 2009 WL
3161380, at *3 (E.D. Tex. Sept. 30, 2009), order denying transfer revd by writ in In re Microsoft
Corp. 630 F.3d 1361, 1365 (Fed. Cir. 2011). In patent infringement cases, the bulk of the
relevant evidence usually comes from the accused infringer. Consequently, the place where the
defendants documents are kept weighs in favor of transfer to that location. In re Genentech,
566 F.3d at 1345.
Defendants will undoubtedly have the greater volume of documents and physical
evidence. For BMWNA, all of its relevant documentation is kept in Woodcliff Lake, New
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Jersey. (See Kent Dec. at 10). For Defendant BMWMC, its relevant documents will come from
either Woodcliff Lake or Greer, South Carolina. (See McCraw Dec. at 8). Any documents
located in South Carolina do not affect New Jerseys strength as a transferee forum, however. In
re Toyota, 747 F.3d at 1340.
While the amended complaint asserts that IDT maintains an office in this district, the
Secretary of State lists its location as Austin, Texas. Thus, to the extent IDT has any witnesses,
or relevant documents, presumably they are located in Austin. In the Toyota decision, the
Federal Circuit found transfer in order despite the fact that another Acacia subsidiary located in
Austin also claimed to use Acacias facility in Plano. 747 F.3d at 1339.
Moreover, IDT has filed at least seven actions on patents also at issue in this case in the
District of Delaware. (See fn. 2, supra). IDT thus cannot claim undue hardship from litigating
on these patents in the Northeast. Newark is only a short drive or train ride from Wilmington,
Delaware, where IDT has chosen to litigate on many of the patents at issue in this case.
Records of conception and reduction to practice will likely be found in Ohio, the where
the named inventors are listed as living and where their prosecuting attorney still resides and
practices. Thus, the concentration of BMW documents in and close to New Jersey weighs
strongly in favor of transfer.
3. The Availability of Compulsory Process To Secure the Attendance of
Witnesses Is Either Neutral or Favors Transfer.
The availability of compulsory process to secure the attendance of witnesses is either a
neutral factor or it favors transfer. This factor applies only to nonparty witnesses. See Promote
Innovation LLC v. Schering Corp., No. 2:10-cv-248-TJW, 2011 WL 665817 at *3 (E.D. Tex.
Feb. 14, 2011). Although discovery has not begun, it appears there are no witnesses within 100
miles of Marshall over which this Court could exercise its subpoena power. The District of New
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Jersey, however, would have subpoena power over any former BMWNA employees with
relevant knowledge who may still live in the area. This factor therefore at least modestly favors
transfer.
4. The Other Practical Problems Factor Favors Transfer.
The factor of other practical problems that make the trial of a case easy, expeditious, and
inexpensive favors transfer. Other practical problems include (i) the place of the alleged wrong;
(ii) the plaintiffs choice of forum; and (iii) the possibility of delay and prejudice if the case is
transferred. See Remmers, 2009 WL 3617597, at *6-8. In patent infringement cases, there is no
single place of alleged wrong. Courts, however, will look to the hub of infringing activity.
See, e.g., The Whistler Group, Inc. v. PNI Corp., 2003 WL 22939214 at *4 (N.D. Tex. Dec. 5,
2003). As set forth above, there is a significant hub of alleged infringing activity with respect to
the Defendants activities in Woodcliff Lake, New Jersey, and therefore that district is an
appropriate place of alleged wrong.
As to the plaintiffs choice of forum, the Fifth Circuit has stated this is a factor to be
considered, but that in and of itself this factor is neither conclusive nor determinative. In re
Horseshoe Entmt, 337 F.3d 429, 434 (5th Cir. 2003). Where the plaintiffs chosen forum has no
factual nexus to the case, that choice carries little significance if other factors weigh in favor of
transfer. Shoemake, 233 F. Supp. 2d at 830; Volkswagen II, 545 F.3d at 315.
Here, there is no factual nexus tying this case to this District. Although the BMW
automobiles accused of infringing the asserted patents may be sold in the Eastern District of
Texas, the Federal Circuit has held that where a defendant sells its products nationally, the mere
sale of those products in a particular district is irrelevant to whether that forum has an interest in
the case. In re TS Tech, 551 F.3d at 1321. IDTs choice of forum, therefore, should be accorded
little weight.
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As for the possibility of delay and prejudice, in In re Horseshoe Entmt, the Fifth Circuit
recognize[d] that in rare and special circumstances a factor of delay or of prejudice might be
relevant in deciding the propriety of transfer, but only if such circumstances are established by
clear and convincing evidence. 337 F.3d at 434; see also Shoemake, 233 F. Supp. 2d at 834-35.
Thus, IDT bears the burden to establish any delay or prejudice caused by the transfer of this
action. However, this case is in its infancy, discovery has not yet begun, and this Court has not
ruled on any substantive motions. There is therefore no delay or prejudice associated with the
transfer of this case.
C. The Public Interest Factors Favor Transfer.
1. The District of New Jersey Has a Strong Local Interest In Having
This Dispute Decided There.
The first public interest factorthe existence of a localized interestfavors transfer to
the District of New Jersey. First, the burden imposed on a jury member is lessened when the
dispute he or she is called to adjudicate involves local entities or events that occurred locally.
See Volkswagen II, 545 F.3d at 307-08, 316-18. Both the Fifth and Federal Circuits have
confirmed that localized interest for transfer purposes cannot be based upon availability of the
accused product in either the transferee or transferor forums, particularly when such products are
sold nationwide. See Volkswagen II, 545 F.3d at 318; TS Tech, 551 F.3d at 1321; In re Acer
America Corp., 626 F.3d 1252 at 1256 (Fed. Cir. 2010). Given the substantial bulk of witnesses
and evidence located in Woodcliff Lake, and the absence of any substantial business in the
Eastern District by any party, the District of New Jersey has a greater interest in this lawsuit than
this District. Because of the size of BMWs corporate headquarters and technical training
facility, a jury member from New Jersey would likely see the issues of this case having local
Case 2:14-cv-00106-JRG Document 22 Filed 06/16/14 Page 16 of 21 PageID #: 291
13
import. See Wireless Recognition Tech. v. A9.com, Inc., No. 2:10-cv-364 JRG, slip op. at 11-12
(E.D. Tex. Feb. 15, 2012).
2. The Administrative Difficulties Flowing From Court Congestion Is a
Neutral Factor.
The administrative difficulties flowing from court congestion, including the speed with
which a case can be resolved, is a neutral factor. As this Court has previously noted, this factor
is the most speculative, and a parties reliance on general civil statistics provide the Court with
little guidance as to the speed with which patent cases actually reach trial. See Core Wireless
Licensing, S.A.R.I., v. Apple, Inc., 6:12-cv-100-LED-JDL, slip op. at 8-9 (E.D. Tex. Feb. 22,
2013).
3. The Familiarity of the Forum with the Governing Law and Conflict of
Laws Are Each Neutral Factors.
The final two public interest factorsthe familiarity of the forum with the governing law
and the avoidance of problems with conflicts of laware both neutral factors in patent cases.
Federal courts are presumed to be equally familiar with patent law. In re TS Tech, 551 F.3d at
1320. And conflict of laws does not come into play because patent claims are governed by
federal law. Baxter Healthcare Corp. v. Fresenius Med. Care Holdings, Inc., No. 2:06-CV-
438(TJW), 2007 WL 433299, at *4 (E.D. Tex. Feb. 6, 2007).
D. Considerations of Judicial Economy Do Not Override the Compelling Case
For Transfer Here.
The Court ordinarily considers the existence of multiple lawsuits involving the same
issues to determine whether a transfer is in the interest of justice. Volkswagen, 566 F.3d at 1351.
However, [t]o interpret 1404(a) to hold that any prior suit involving the same patent can
override a compelling showing of transfer would be inconsistent with the policies underlying
1404(a). In re Verizon, 635 F.3d at 562. Therefore, a decision to deny transfer based solely
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14
on negligible judicial efficiencies may be such a clear abuse of discretion as to warrant
extraordinary relief. In re Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed. Cir. 2010); Zimmer, 609
F.3d at 1382. The Court will not permit the existence of separately filed cases to sway its
transfer analysis. Otherwise, a plaintiff could manipulate venue by serially filing cases within a
single district. GeoTag, Inc. v. Aromatique, Inc., No. 2:10-cv-570-JRG, Dkt. No. 585, at 10
(E.D.Tex. Jan. 14, 2013) (Lavelle Decl., Exh. O).
Here, IDT has filed other cases are pending before this court involving a subset of the
patents that are asserted against the BMW. The cases were filed in waves, and are at different
stages.
4
IDT has also filed a wave of cases in Delaware. However, to the best of our
knowledge, none of those cases involve auto manufactures and hence the claim construction
issues in this case could be quite different. Two of the patents asserted against BMW, the LED
tail light patents, are not asserted in any other case in this district in Delaware to our knowledge.
Hence, transfer of this single defendant case having unique patents asserted and a different
subject matter, automotive displays and tail lights, will not materially alter the burden on this
Court or on the transferee court. Multiple jurisdictions are already hearing these cases because
IDT chose to litigate that way. Transfer of this case to New Jersey, which is strongly supported
by the private factors, will have a negligible impact on the burden placed on the federal judiciary.
4
IDT filed a first wave of cases in Marshall, Texas against laptop computer manufacturers Acer,
Dell, HP, and mobile-phone manufacturers Huawei, BlackBerry, and ZTE in June 2013. IDT filed a
second wave of cases in Texas against Microsoft and Nokia in October 2013. IDT filed a case in
Texas against Apple January 2014, and then filed a third wave of cases in Texas against BMW, and
GPS manufacturers Garmin and TomTom, and camera manufacturers Canon, Nikon, and MiTAC in
February 2014. IDT filed a fourth wave of cases in Texas against other car companies in March
2014. IDT filed fifth and sixth waves of cases in April 2014, and followed those cases with a sole
case in May 2014.
Case 2:14-cv-00106-JRG Document 22 Filed 06/16/14 Page 18 of 21 PageID #: 293
15
IV. CONCLUSION
For the foregoing reasons, BMW respectfully requests that, for the convenience of the
parties and witnesses and in the interest of justice, the Court transfer this case to the District of
New Jersey.
Dated: June 16, 2014 Respectfully submitted,
/s/ Joseph P. Lavelle
Joseph P. Lavelle
D.C. Bar No. 367011
Andrew N. Stein
D.C. Bar No. 1005411
(both admitted in the EDTX)
DLA PIPER LLP (US)
500 Eighth Street N.W.
Washington, DC 20004
T: 202-799-4000
F: 202-799-5000
joe.lavelle@dlapiper.com
andrew.stein@dlapiper.com
Attorneys for Defendants
BMW of North America, LLC and
BMW Manufacturing Co., LLC
Case 2:14-cv-00106-JRG Document 22 Filed 06/16/14 Page 19 of 21 PageID #: 294
16
CERTIFICATE OF CONFERENCE WITH LOCAL RULE CV-7(H)
This is to certify that, per the requirements of Local Rule CV-7(h), on June 13, 2014,
Andrew N. Stein, an attorney at DLA Piper, LLP and counsel for Defendants BMW of North
America, LLC and BMW Manufacturing Co., LLC, conferred on behalf of Defendants with
Amir H. Alavi, counsel for Plaintiff Innovative Display Technologies LLC in a good faith
attempt to resolve the matter without court intervention. No agreement could be reached and the
discussion conclusively ended in an impasse, leaving the issue open for the court to resolve.
Plaintiff indicated that it opposes Defendants Motion to Transfer Venue.
/s/ Andrew N. Stein
Andrew N. Stein
Case 2:14-cv-00106-JRG Document 22 Filed 06/16/14 Page 20 of 21 PageID #: 295
17
CERTIFICATE OF SERVICE
The undersigned certifies that on this 16th day of June, 2014, all counsel of record who
are deemed to have consented to electronic service are being served with a copy of this document
through the Courts CM/ECF system under Local Rule CV-5(a)(3). Any other counsel of record
will be served by a facsimile transmission and/or first class mail.
/s/ Joseph P. Lavelle
Joseph P. Lavelle
Case 2:14-cv-00106-JRG Document 22 Filed 06/16/14 Page 21 of 21 PageID #: 296

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