The second factor does not favor either venue because “the material events of a patent
infringement case do not revolve around a particular situs.” Sitrick v. FreeHand Systems, Inc., No.
02 C 1568, 2003 WL 1581741, at *3 (N.D. Ill. March 27, 2003). In other words, the comparison
involved in determining whether a patent has been infringed does not implicate specific location.
Id, citing Medi USA, L.P. v. Jobst Institute, Inc., 791 F. Supp. 208, 210 (N.D. Hl. 1992). It is
undisputed that Amazon’s alleged infringement occurred in every district in the country. Motion at
7. Therefore, this factor is neutral. See Colida v. Kyocera Wireless Corp., 02 C 7348, 2003 WL
1741396, at *2 (N.D. Ill. April 1, 2003)(situs of material events factor neutral in national patent
infringement action brought by foreign plaintiff).

The relative ease of access to sources of proof only slightly favors transfer. A majority of
the documents relevant to Pinpoint’s claims are at Amazon’s corporate headquarters in Seattle,
Washington. However, the copying and shipping of documents does not impose a significant
burden. All documents necessary to present both sides of the case can easily be transported to either
venue. Hanley v. Omare, Inc., 6 F.Supp.2d 770, 775 (N.D. Ill. 1998). Moreover, the servers that
operate Amazon’s website features, including the personalization features, are located in Washington
and Virginia. Accordingly, this factor carries little weight.

Witness convenience is the most important factor in determining whether transfer is
appropriate. Confederation Des Brasseries de Belgique, 2000 WL 88847, at *4. In considering this
factor, the court must look to the nature and quality of the witnesses’ testimony, not just the number
of witnesses in each venue. /d, The court must also consider whether these witnesses will be subject

to compulsory process and the cost to obtain attendance of willing witnesses. Id.



CONCLUSION

Amazon’s motions to sever, stay and transfer are denied.

September 18, 2003 ENTER:

rleagn IB Onlin,
Suzanne B. Conlon

United States District Judge


in the interests of justice. Pasulka v. Sykes, 131 F.Supp.2d 988, 994 (N.D. Ill. 2001), quoting
TruServ Corp. v. Neff, 6 F.Supp.2d 790, 793 (N.D. Ill. 1998). The parties agree that venue is proper
both in this court and the Western District of Washington. Therefore, Amazon’s motion turns on
whether transfer would be for the convenience of the parties and witnesses, and is in the interests of
justice.

A. Convenience of the Parties

In determining the convenience of the parties and witnesses, the court considers: (1) the
plaintiff’s choice of forum; (2) the site of material events; (3) the availability of evidence in each
forum; and (4) the convenience to the witnesses and parties of litigating in the respective forums.
Confederation Des Brasseries de Belgique v. Coors Brewing Co., No. 99 C 7526, 2000 WL 88847,
at *3 (N.D. Ill. Jan. 20, 2000). Amazon, as the moving party, bears the burden of showing that the
Western District of Washington is clearly more convenient than the Northern District of Hlinois.
Source Services Corp. v. Technisource, Inc., No. 95 C 1420, 1995 WL 493499, at *2 (N.D. Ill. Aug.
9, 1995). Venue should be transferred only if there is a clear balance of inconvenience in the
transferor district over the transferee district. Tsaparikos v. Ford Motor Co., No. 02 C 6899, 2002
WL 31844949 (N.D. Ill. Dec. 18, 2002).

A plaintiff's choice of forum is generally given substantial weight under § 1404(a).
Vandeveld v. Christoph, 877 F. Supp. 1160, 1167 (N.D. Ill. 1995). However, where the plaintiff's
choice is not its resident forum, the chosen forum is entitled to less deference. Bryant v, ITT Corp.,
48 F Supp.2d 829, 832 (N.D. Ill. 1999). The Northern District of Illinois is not Pinpoint’s resident
forum. Therefore, its choice of forum is not given great deference and is only one of many factors

the court considers. Plotkin v. IP Axess, Inc., 168 F.Supp.2d 899, 902 (N.D. Il. 2001).


Amazon names nine potential witnesses. Four of the witnesses currently work for Amazon
and five are former employees. Amazon’s current employees are irrelevant to the convenience
analysis. See Avesta Sheffield v. Olympic Continental Resources, L.L.C., No. 99 C 7647, 2000 WL
198462, at *6 (N.D. Ill. Feb. 14, 2000)(“It is presumed that a party’s employees will appear as
witnesses voluntarily”). Moreover, Amazon does not explain why former employees’ testimony is
necessary, Indeed, the former employees proposed testimony appears cumulative of current
employees’ proposed testimony regarding the development of Amazon’ s personalization technology.
Even if former employees’ testimony is necessary, Amazon fails to provide evidence that these
witnesses will not appear voluntarily or that their testimony cannot be offered through deposition.
Central States v. Kurtz Gravel Co., No. 98 C 2174, 1998 WL 684216, at *2 (N.D. Ill. Sept. 18,
1998)(lack of compulsory process does not compel transfer where there is no evidence that witnesses
are hostile or reluctant).

In contrast, Pinpoint submits evidence establishing that Chicago is a more convenient forum.
for its witnesses than Seattle. The inventors of Pinpoint patents reside in West Virginia, Maryland
and Pennsylvania. For these witnesses, Chicago is closer and poses lower travel expenses than
Seattle. Based on this record, witness convenience strongly weighs in favor of retaining this case.

The court also must consider the convenience of the parties in its § 1404(a) determination.
Specifically, the court should consider the parties’ respective residences and their ability to bear the
costs of litigating in a particular forum. Avesta Sheffield, 2000 WL 198462, at *7. Pinpoint is a
Texas corporation with its principal place of business in Fort Worth. Pinpoint maintains a Chicago
office and has retained Chicago counsel. Amazon is a Delaware corporation with its principal place

of business in Seattle. Amazon has retained local counsel, but is represented by California counsel.


Minute Order Form (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Judge

Suzanne B. Conlon Sitting Judge if Other

Notified counsel by telephone.
Docketing to mail notices.
Mail AO 450 form.

Copy to judge/magistrate judge.

35 68
courtroom
cB deputy's aassagqgd
initials pe
‘Date/time recgived in
contrat Clerk's Office

gyngd 1918

nae Wd BI a

SEP 15 2003

date docketed

docketing feputy initials

oniBi03

or Magistrate Judge than Assigned Judge
CASE NUMBER 03 C 4954 DATE 9/18/2003
CASE PINPOINT INC. vs. AMAZON.COM et al.
TITLE
[In the following box (a) indicate the party filing the motion, ¢.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

MOTION: of the motion being prescnted.]

DOCKET ENTRY:

qd) o Filed motion of [ use listing in “Motion” box above.]

(2) Oo Brief in support of motion due __

(G3) Q Answer brief to motion due . Reply to answer brief due___

(4) Oo Ruling/Hearing on set for at

(5) oO Status hearing[held/continued to] [set for/re-set for] on set for at

(6) oO Pretrial conference[held/continued to] [set for/re-set for] on set for at

(7) a Trial[set for/re-set for] on at

(8) oO [Bench/Jury trial] [Hearing] held/continued to at

(9) Oo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

COFRCP4(m) ClLocal Rule 41.1 CFRCP4I(a\(1) OO FRCP41(a)(2).

(10) Ml [Otherdocketentry] Defendant Amazon.com, Inc.’s motions to sever [21-1] and stay action against
Amazon.com’s co-defendants [21-2] and to transfer action against defendant Amazon.com, Inc. to the
Western District of Washington [21-3] are denied. ENTER MEMORANDUM OPINION AND ORDER.

(1) of [For further detail see order attached to the original minute order.]

No notices required, advised in open court. Document
. Number.
No notices required. number of notices
UY | Notices mailed by judge’s staff. 7

59

date mailed notice

pw

mailing deputy initials



As a result, Amazon’s lead counsel will need to travel whether the case remains here or is transferred
to Washington.

More importantly, Pinpoint has offered evidence that it is a one employee company with
2002 assets of $55,000. Amazon, a Fortune 500 company, had sales in excess of one billion dollars
in 2002. Under these circumstances, the court will not upset Pinpoint’s selection of this forum,
especially when Amazon fails to offer any evidence regarding its inability to litigate in Illinois. See
Avesta Sheffield, 2000 WL 198462, at *7 (transfer inappropriate where the transfer merely
transforms an inconvenience for one party into an inconvenience for the other).
B. Interests of Justice

Finally, the court must consider whether transfer is in the interest of justice. The interest of
justice analysis focuses on efficient functioning of the courts, rather than the private interests of the
litigants. TIG Ins. Co. V. Brightly Galvanized Products, Inc.,911 F.Supp. 344, 346 (N.D. Ill. 1996).
In determining the interest of justice, the court considers traditional notions of judicial economy,
such as (1) relations of the community to the issues; (2) ensuring a speedy trial; and (3) the
respective court’s familiarity with the applicable law. Avesta Sheffield, 2000 WL 198462, at *7.
Both districts are equally capable of resolving federal patent litigation of an international scope.
However, this court will ensure a speedy trial by setting a trial date at the status hearing on

September 23, 2003. Based on this record, transfer is inappropriate.


IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
PINPOINT, INC, SkP iy oma
Plaintiff, ) No. 03 € 4954
v. } Suzanne B. Conlon, Judge
AMAZON.COM, et al., }
Defendants. }

MEMORANDUM OPINION AND ORDER

Pinpoint Incorporated (“Pinpoint”) sues Amazon.com, Inc. (“Amazon”) and Babiesrus.com,
LLC, Borders Group, Inc., Borders, Inc., BeMusic, Inc. (incorrectly identified as CDnow, Inc.),
Egghead.com, Inc., Target Corporation, Toys “R” Us, Inc., Toysrus.com, Inc., Virgin Group Ltd. and
Walden Book Company, Inc. (incorrectly identified as Walden Books, Inc.)(collectively, “co-
defendants”) for patent infringement pursuant to 35 U.S.C. § 271 et seg. Amazon counterclaims for
a declaration of non-infringement and invalidity. Without citing a procedural basis for its motion,
Amazon moves to sever and stay this action against its co-defendants. Once the action is severed,
Amazon, a Delaware corporation with its principal place of business in Seattle, Washington,
contends transfer of its case to the Western District of Washington pursuant to 28 U.S.C. § 1404(a)
(“§ 1404(a)”) is appropriate.

DISCUSSION

I. Motion to Sever and Stay

Fed. R. Civ. P. 20(a) provides in relevant part:

4



All persons . . . may be joined in one action as defendants if there is asserted against

them, jointly, severally, or in the alternative, any right to relief in respect of or arising

out of the same transaction, occurrence, or series of transactions or occurrences and

if any question of law or fact common to all defendants will arise in the action.

Under Fed. R. Civ. P. 21, the court may sever any claim against a misjoined party. According to
Amazon, Pinpoint’s claims against its co-defendants should be severed and stayed because the co-
defendants are only peripherally involved in this litigation as Amazon customers.

Although the complaint alleges that the co-defendants are Amazon customers, Pinpoint’s
complaint can be read to include the co-defendants’ independent use of the personalization
technology at issue. Specifically, Pinpoint alleges each co-defendant “makes, uses, offers to sell,
and/or sells personalization technology.” Compl. at [29, 31, 33, 35, 37, 39, 41, 43,45. In addition,
Pinpoint claims its pre-suit investigation revealed that defendant CDnow, Inc. began using
personalization technology prior to its affiliation with Amazon. Affidavit of Daniel Henderson at
47. Amazon does not offer any evidence to the contrary. Nor does Amazon offer evidence that the
indemnification agreements with its co-defendants cover independent infringement. Indeed, not one
of the co-defendants joins in Amazon’s motion, despite representation by the same counsel. Absent
evidence that its co-defendants have not used the purportedly infringing technology outside of
Amazon, Amazon’s motion to sever and stay must be denied.

Il. Motion to Transfer

Even if the co-defendants have not independently used the purportedly infringing technology,

transfer to the Western District of Washington is inappropriate. To prevail on a motion to transfer

under § 1404(a), the movant must demonstrate: (1) venue is proper in both the transferor and

transferee court; (2) transfer is for the convenience of the parties and witnesses; and (3) transfer is