Categories: Civil Procedure
      Date: Mar  9, 2014
     Title: In re Barnes & Noble: Need to Identify Inconvenience to Specific Witnesses to Support Transfer of Venue
Category: Civil Procedure 
By: Jesus Hernandez, Blog Editor/Contributor 
TitleIn re Barnes & Noble, Misc. No. 162 (Feb. 27, 2014).
IssueBarnes & Noble argued that only Hoyle [B.E. Tech. founder, the plaintiff, and inventor of patent at issue] is located in the Western District of Tennessee, whereas many of the relevant Barnes & Noble witnesses reside in California[…] California is where all of its relevant evidence is located […] [and] many third party witnesses with knowledge about potential prior art are closer to the transferee venue.
In re Barnes & Noble at *2 (text added).
HoldingBarnes & Noble has failed to meet its exacting burden to demonstrate that the district court was clearly and indisputably incorrect in concluding that the case should not have been transferred to the Northern District of California [because the plaintiff B.E. Tech.’s operational presence in the original venue is as equally compelling as Barnes & Noble’s grounds for transfer, and, as such, such evidence is not grounds to reverse the district court’s findings].
Id. at *5 (text added).

Procedural History
Barnes & Noble, Inc. (“Barnes & Noble”) seeks a writ of mandamus directing the United States District Court for the Western District of Tennessee to vacate its July 12, 2013 order denying Barnes & Noble’s motion to transfer the case to the District Court for the Northern District of California and remand with instructions to transfer the case. B.E. Technology, LLC (“B.E.”) opposes. Barnes & Noble replies.
In re Barnes & Noble at *2.
The district court denied the motion, agreeing with B.E. that the case should remain in Tennessee. The court acknowledged that party and non-party witnesses reside in California. However, because transfer would clearly impose the burden of travel and time away from home for any witness in Tennessee, the court found that the convenience of witness factor did not weigh in favor of transfer. The court further found fault with Barnes & Noble for not addressing how many of its employees would be unavailable to testify in Tennessee or why deposition testimony would not suffice in lieu of live testimony if the witnesses were unwilling to travel for trial.
Id. at *3.
Legal Reasoning (Reyna, Prost)
Legal StandardThe remedy of mandamus is available only in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power. […] That standard is an exacting one, requiring the petitioner to establish that the district court’s decision amounted to a failure to meaningfully consider the merits of the transfer motion. […] In reviewing a district court’s ruling on a motion to transfer pursuant to § 1404(a), we apply the law of the regional circuit, in this case the Sixth Circuit. See […].
In re Barnes & Noble at *3 (internal citations omitted).
Under 6th Circuit Precedent, Barnes & Noble Showing of Ties to N.D. Cal. Not Enough to Disturb District Court Decision
Failure to Identify Witnesses Unwilling to Travel to Original VenueBarnes & Noble cites no Sixth Circuit case that would suggest that the district court erred in requiring it to demonstrate its employees would be unwilling or unable to testify if the case was tried in the Western District of Tennessee.
In re Barnes & Noble at *4.
Distinguishing GenentechBarnes & Noble tries to draw comparisons between this case and In re Genentech, 566 F.3d 1338 (Fed. Cir. 2009), in which the original venue “indisputably ha[d] no connection to any of the witnesses or evidence related to the cause of action.” Id. at 1340-41. In this case, however, B.E. is based in the Western District of Tennessee, where its CEO and much of the relevant evidence are also found. This is thus not a situation where the district court has no meaningful connection to the case.
Connection to W.D. Ten. Not Manufactured[T]here is no indication on the record that B.E.’s connection to Tennessee was manufactured in anticipation of litigation to make the forum appear convenient. Based on the record in this case, “[c]ompelling considerations favor both parties’ positions, making it difficult to say that the district court would have abused its discretion had he picked either location as the more appropriate forum.” [...].
Id. at *5 (internal citations omitted).
The petition for writ of mandamus is denied.
In re Barnes & Noble at *5.

NEWMAN, Circuit Judge, dissenting. In re Barnes & Noble, Newman Op., at *1.
Case Should be TransferredRefusal to transfer this case should be reversed, and the writ of mandamus should issue to account for the extreme imbalance of convenience as between California and Tennessee.
In re Barnes & Noble, Newman Op., at *2.
Plaintiff single person, Accused includes thousands of employeesUntil just prior to filing this and 19 other pending infringement suits in the same forum, the plaintiff B.E. Technology, LLC was not registered to do business in the state of Tennessee. The company is run and operated by the patent owner out of his home. The plaintiff has no other employees, and does not make, use or sell the patented subject matter in Tennessee or elsewhere. The defendant Barnes & Noble has a large office in Palo Alto, California, where it employs over 400 people. The record states that Barnes & Noble employees that are most knowledgeable about the design, development, and operation of the accused product work in Palo Alto. The record also states that substantially all of the documents relating to the development, design, and components of the accused product are located in Barnes & Noble’s Palo Alto office, including documents relating to device and component specifications, design drawings, contracts with key commodity suppliers and software development plans.
Id. at *1-2.
Burden of InconvenienceTransferring this case would not simply shift the burden of inconvenience to B.E. Like the district court, my colleagues ignore the likelihood that a substantial number of witnesses, including non-party witnesses with relevant and material information regarding the prior art, are located in the Northern District of California, while only one witness is in the Western District of Tennessee. Thus, the convenience of two venues at issue in this case is simply not comparable. Moreover, all of Barnes & Noble’s evidence relating to the accused product is located in the Northern District of California, making it easier and more convenient to try this case in the transferee venue.
Id. at *2-3.
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