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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
CENDANT PUBLISHING, INC.
Plaintiff, v. AMAZON.COM, INC., Defendant.
1 1 1
Civil Action No.
1
1 1 1
COMPLAINT FOR PATENT INFRINGEMENT AND DEMAND FOR JURY TRIAL
Plaintiff, Cendant Publishing, Inc. ("Cendant Publishing"), by and through counsel, respectfully submit this Complaint against Amazon.com, Inc. ("Amazon"). In support thereof, Plaintiff alleges as follows: THE PARTIES 1. Plaintiff Cendant Publishing, Inc. is a Delaware corporation with its principal place of
business at 10750 West Charleston Blvd., Suite 130, Las Vegas, Nevada 89135.
2.
Upon information and belief, Defendant Amazon.com, Inc. is a Delaware corporation
with its principal executive offices at 1200 12thAvenue South, Suite 1200, Seattle, Washington 98114. Amazon operates an Internet-based marketplace selling millions of items including books as shown by its website at
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JURISDICTION AND VENUE
3. This Court has subject matter jurisdiction pursuant to 28 U.S.C. 3 1331 and 28 U.S.C.
5 1338(a).
4. This Court has personal jurisdiction over defendant Amazon because of, inter alia, its
incorporation in Delaware and its operation of its Internet website, arnazon.com, which is accessible to and marketed to residents of Delaware.
5.
Venue is proper in this Court pursuant to 28 U.S.C. 55 1391 @) and (c) and 1400@).
NATURE OF THE ACTION
6. Cendant Publishing brings this action for infringement of United States Patent No.
6,782,370 ("'370 patent"). A copy of the '370 patent is attached as Exhibit A hereto. 7. The '370 patent, entitled "System and Method for Providing Recommendation of
Goods or Services Based on Recorded Purchasing History" was duly and properly issued by the United States Patent and Trademark Office ("PT0'3 on August 24,2004. The '370 patent is valid and enforceable.
8.
Amazon operates an on-line marketplace through its amazon.com website. Amazon's
online marketplace uses numerous features which recommend other goods to potential customers based on prior customer purchasing history. Amazon's recommendation features, including, inter alia, "Customers who bought this book also bought," infhnge one or more claims of the '370 patent. 9. Cendant Publishing was the assignee of the '370 patent at the time it was issued.
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10.
Cendant Publishing is the owner of the '370 patent and has the right to sue for
infringement of the '370 patent.
CLAIM I Infringement of the '370 Patent 11. herein. 12. Court. 13. Amazon's continuing acts of infingement after notice of the '370 patent Amazon has infringed the '370 patent and will continue to do so unless enjoined by this Cendant Publishing realleges the allegations of Paragraphs 1 to 10 above as if set forth
constitute willful infringement of the '370 patent.
14.
Amazon's infiingement of the '370 patent has damaged Cendant Publishing and will
continue to cause Cendant Publishing harm unless enjoined by this Court.
DEMAND FOR JURY TRIAL
15.
Pursuant to Fed. R. Civ. P. 38 and District of Delaware L.R. 38.1, Cendant
Publishing respectfully requests a jury trial on all issues so triable.
PRAYER FOR RELIEF
WHEREFORE, Cendant Publishing prays for judgment as follows:
,
A.
Amazon;
That this Court adjudge and decree that the '370 patent is valid and infringed by
3
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B.
That this Court adjudge and decree that Amazon" infringement of the '370 patent
has been willful; C. That this Court permanently enjoin Amazon, its agents, servants, employees, attorneys,
and all others in active concert or participation with Amazon fi-om infringing the '370 patent;
D.
That this Court award Cendant Publishing damages adequate to compensate for
Amazon's infringement of the '370 patent;
E.
That this Court award Cendant Publishing its costs, disbursements, and attorneys' fees
for this action, including those pursuant to 35 U.S.C. 5 285;
F.
appropriate.
That Cendant Publishing be awarded such M e r relief as this Cowt may deem just and
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ASHBY & GEDDES
C
Steven J. B ~ M #2403) (I.D. John G. Day (LD. #2114) 222 Delaware Avenue, 17" Floor P.O. Box 11 50 Wilmington, Delaware 19899 (302) 654-1888
Attorneys for Plaintiff Cendant Publishing, Inc. Of Counsel:
Steven Liebennan Elizabeth A. Leff Brian Rosenbloom C. Nichole Gifford Rothwell, Figg, Ernst & Manbeck, P.C. 1425 K Street, N.W. Suite 800 Washington, D.C. 20005 (202) 783-6040
Dated: June 20,2005
158689
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EXHIBIT A
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(12)
United States Patent
Stack
(10) (45)
Patent No.: US 6,782,370 B1 Date of Patent: Aug. 24,2004
(54)
SYSTEM AND METHOD FOR PROVIDING RECOMMENDATION OF GOODS OR SERVICES BASED ON RECORDED PURCHASING HISTORY
Inventor:
FOREIGN PATENT DOCUMENTS OTHER PUBLICATIONS "How ICL Is Ensuring That Your Retailer Knows More About You Than You Know Yourself," Computergram International, Jun. 14, 1996.* Wilder, Clinton, "E-Commerce Emerges," Information Week, Jun. 14, 1996.* IBM press release, M2 Presswire, "Wide variety of retailers sign up for World Avenue, IBM's online shopping service.", Nov. 12, 1996.* Tadjer, Rivka, "Giving Content a Push," Communications Week, Jun. 2, 1997.* Broadvision press release, M2 Presswire, "Virgin Net teams with Broadvision to deliver personalised services on Virgin Online", Mav 15, 1996.* Lach, ~ennifir, "Reading your mind, reaching your wallet,", Nov. 1998.* Hof et al., "Amazon.com: The Wide World of E-Commerce," Business Week, Dec. 14, 1998.* PRNewswire, "Book Stacks Unlimited Announces Poetry Month Exhibit", Apr. 18, 1997.* Business Wire, CUC International Inc. offers consumers customized book recommendations through its book stacks subsidiary, Apr. 22, 1997.* Alexandria Digital Literature, www.alexlit.com, no date known.* Amazon.com, www.amazon.com, no date known.* "Amazon.com Catapults Electronic Commerce to Next Level With Powerful New Features", Sep. 23, 1997.*
(75) (73)
Charles Stack, Cleveland, OH (US)
Assignee: Cendant Publishing, Inc., Aurora, CO (US) Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.C. 154(b) by 1030 days.
(*)
(21) (22) (51) (52) (58)
Appl. No.: 081923,293 Filed:
Sep. 4, 1997
Int. CL7 ................................................ G06F 17/60 U.S. C1. .............................. 705110; 705126; 705114 Field of Search .............................. 705110, 26, 27, 705128, 29, 14; 2351376; 707110, 104.1 References Cited
U.S. PATENT DOCUMENTS
Hey ............................ 705127 Hey ............................ 705127 Atcheson et al. .............. 70713 Whiteis ...................... 7071102 Herz et al. .................. 7251116 Cragun et al. ................ 705110 Robinson .................... 7021179 Payton ....................... 45515.1 O'Brien et al. ............... 705114 Lang et al. .................... 70711 Chislenko et al. ............ 705127 Sheena et al. ................ 705110 Sutcliffe et al. ............... 70511 Chislenko et al. ............ 705110 Bergh et al. .................. 705110 Linden et al. ................ 705126 Geshwind ................... 7091236 Greening et al. ............. 705110
(56)
4,870,579 4,996,642 5,583,763 5,749,081 5,754,938 5,774,868 5,790,426 5,790,935 5,832,457 5,867,799 6,041,311 6,049,777 6,058,367 6,092,049 6,112,186 6,266,649 6,507,872 200110013009
A A A A A A A A A A A A A A A Bl B1 A1
* * * * * * * * * * * * * * * * * *
911989 211991 1211996 511998 511998 611998 811998 811998 1111998 211999 312000 412000 512000 712000 812000 712001 112003 812001
* cited by examiner
Primary Examiner4icholas D. Rosen (74) Attorney, Agent, or Firm4othwel1, Figg, Ernst & Manbeck (57)
ABSTRACT
A computer-implemented method and system utilizing a distributed network for the recommendation of goods andlor services to potential costumers based on a potential customer's selection of goods andlor services and a database of previous customer purchasing history. 16 Claims, 7 Drawing Sheets
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U S . Patent
A U ~24,2004 .
Sheet 1 of 7
US 6,782,370 BI
DISTRIBUTED NETWORK (INTERNET)
(CUSTOMER HISTORY DATABASE
\
1-
COMPUTER HOST
b3
DISTRIBUTED NETWORK (INTERNET)
OPERATOR lNTERFACE
FIG. 1
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U S . Patent
A U ~24,2004 .
Sheet 2 of 7
USER LOGS
ENTER HOST-COMPUTER WEBSITE SELECT BOOK
30
42
>
/ \
ANY BOOKS \ , AVAILABLE FOR RECOMMENDATIONS / YES
USER WITH OPTION TO HAVE BOOK RECOMMENDED
1
USER REQUESTS RECOMMENDATIONS
DnERMINING ALL PRMOUS CUSTOMERS WHO ALSO PURCHASED SELECTED BOOK DETERMINE ALL BOOKS PURCHASED BY PRMOUS CUSTOMERS WHO ALSO PURCHASED SELECTED BOOK
I
DETERMINE ALL BOOKS PURCHASED IN COMMON AMONG ALL PREVIOUS CUSTOMERS WHO ALSO PURCHASED SELECTED BOOK DISPLAY ALL BOOKS PURCHASED IN COMMON
-0 8
Lg0 FIG.2
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U S . Patent
A U ~24,2004 .
Sheet 3 of 7
BROWSE
SEARCH
ORDER
ACCOUNT
HELP -
FIG. 3A
SEARCH
AUTHOR
TITLE
KEYWORD
ISBN -
Poo
FIG. 38
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CLEAR AND PRESENT DANGER Search Type: TITLE
Title
Clear and Present Danqer Clear and Present Danqer (Thorndike Larqe Print Series)
Number of Books: Author
Clancy, Tom Cloncy, Tom Clancy, Tom Clancy, Tom/ Stiers, David Ogden ( h k ) Clancy, Tom
6
Date Bind Price
08/94 10/90 08/89 07/94 07/96 PAP $5.94 TRD $20.36 TRD TRD PAP $21.21 $17.00 $6.38
a
Clear and Present Danqer Clear and Present Danqer and Present Danqer
a Clear
FIG. 3C
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CLEAR AND PRESENT DANGER
Clancy, Tom
How Many Copies ?
PUBLISHER: BRKP CATEGORY: Movies PUB DATE: 08/94 BINDING: Paperback PRICE: US $6.99
ISBN: 0425 144372 BOOKMARKS: 5 YOU SAVE$1.05(15%)
AFFlNIN sM BY SAME PEN
YOUR PRICE: $5.94
MEMBER PRICE: $4.89
FIG. 3D
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L
of fin ilty n. 1similarity 2 close relationship; connection 3 liking
or inclination toward something
'
With Affinity, our own agent-based technology, you can explore the tastes of our other customers whobe bought this same book. it's completely anonymous, and requires no effort. Finally, a helpful recornmendotion service based on real people's real interests! Based on 5 years of our customer's buying history, we think you might enjoy the book(s) listed below, purchased by customers who enjoyed Clear and Present Danger.
Title
Author
the Dead -Crichton, Michael -Crichton, Michael -Cloncy, Tom -Cloncy, Tom -Cloncy, Tom -Clancy, Tom
Confidence In This Match
100% 100% 100% 100% 100% 100%
a Eaters of
Disclosure
a Red Storm Rising
Patriot Games The Sum of All Fears Debt of Honor
I
denotes additional information.
FIG. 3E
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U S . Patent
A U ~24,2004 .
Sheet 7 of 7
US 6,782,370 BI
OPERATOR
,
INPUT
F l
BASE
CUSTOMER HISTORY
SELECTED BOOK
SELECTION RULES
1
PROCESSOR
t/.23
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SYSTEM AND METHOD FOR PROVIDING RECOMMENDATION OF GOODS OR SERVICES BASED ON RECORDED PURCHASING HISTORY
5
According to another aspect of the invention, a confidence factor indicating the level of confidence in the strength of the recommendation may be provided. BRIEF DESCRIPTION OF THE DRAWINGS FIG. 1 is a block diagram showing one preferred embodiment of the present invention. FIG. 2 is a flow diagram showing one preferred embodiment of user interaction with a customer history database. FIG. 3 A is a depiction of the home page of the website as displayed to the user which provides the search option to the user. FIG. 3B is a depiction of the search page as displayed to the user where the user can search by author, title, keyword, or ISBN. FIG. 3C is a depiction of the search results page as displayed to the user where the user can select a particular book. FIG. 3D is a depiction of the book selection page as displayed to the user where the user can select to have recommendations of potential interest returned to him. FIG. 3E is a depiction of the recommendations result page as displayed to the user. FIG. 4 is a flow diagram showing one preferred embodiment of the computer-implemented systems' structure and data flow. DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENT
BACKGROUND OF THE INVENTION
1. Field Of The Invention The present invention relates to the use of computer systems to facilitate the recommendation of goods or services utilizing a distributed network such as the Internet, specifically to provide recommendations of goods or services that may be of interest to potential customers based on a potential customers' selection of goods or services and a database of previous customer history with respect to the selected goods or services. 2. Description Of The Background Art Providing recommendations of goods or services of interest to customers in a computer system environment has been based on demographic profiles and usually requires extensive customer participation and divulgence of personal information (for example, the input of: age, profession, hobbies, gender, . . . ) to create a user profile, which is then compared against other user profiles to determine possible items of interest to the user. The need for extensive customer input limits the appeal of these feedback systems because they require the user to expend substantial time and effort in addition to revealing personal details in order to obtain the requested information. The present invention allows potential customers to utilize a computer system interfaced with a distributed network to obtain recommendations of goods or services that may be of interest to them while substantially reducing the degree of customer input required in comparison to prior art systems. Instead of relying on the personal information provided by each potential customer as a basis for determining recommendations, the subject invention utilizes a customer activity history database to facilitate the determination of recommendations.
10
15
20
25
30
In the preferred embodiment, books are recommended over the Internet using World Wide Web technology although any communication medium could be used includ35 ing distributed networks such as Local Area Networks (LANs), Wide Area Networks (WANs), or Electronic Bulletin Board Systems (BBSs). For purposes of illustration, the areferred embodiment will be described in the context where the goods or services are books; however, the invention may 40 be practiced with respect to any good or service. With reference to FIG. 1 a remote user utilizing an SUMMARY OF THE INVENTION operator interface 1 accesses a distributed network commuA method for recommending goods or services is pronication medium 2, such as, for example, the Internet via the World Wide Web. The operator interface 1 may be any vided which allows the user of a computer system connected to a distributed network such as the Internet to receive 45 computer with a modem, network card or any other device including wireless devices utilized in computer systems to recommendations of goods or services of potential interest facilitate the transmission of data and may be found in based on a particular good or service selected by the user and personal computers used in households, business offices or previous customer buying history. The previous customer schools. The computer can be any device capable of probuying history is assembled by passively tracking and retaining or storing all purchasing decisions by previous so cessing data such as computers based on technology from customers. Apple Computer (e.g., The Macintosh, The Performa, the PowerMac series, etc.) or technology based on processors by The user first selects a particular good or service he may Intel, AMD, Cyrix, etc. and commonly referred to as IBM be interested in obtaining. This selection is treated as filter comaatibles. It should be noted however that a user need not data input to a host computers' data processor. The data processor then compares this input data with a customer 5s have a computer (i.e., a machine with processing power); a so-called "dummy terminal" being sufficient. Once logged activity history database to determine if there are any onto the Internet, the user accesses a host computer 3 by possible goods or services that can be recommended to the specifying a website domain address, as is well known. The user. If there are possible recommendations the user can host computer 3 contains information regarding goods or choose to have those goods or services recommended to him by the system. The data processor then utilizes the filter data 60 services (such as books) for sale and also contains a customer purchasing history database 4 which stores data input and the customer history database to determine all of describing all purchases of previous customers. the customers who have purchased the particular good or service selected by the user and all the goods or services One preferred method of retrieving recommendation those customers-have purchased. The goods or services information will be explained with reference to FIGS. 1, 2 purchased in common by this group of customers are 65 and 3A-3E, and will be described with particular reference returned as filtered output data and displayed to the user as to retrieving information regarding the purchase and recomrecommended goods or services. mendation of books.
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US 6,782,370 B1
3
4
At step 10, a user logs onto the Internet network, such as such as a mouse. The request is then transmitted to the host by obtaining access through an Internet service provider, and computer 3 via the Internet 2 and is processed at the host at step 20, the user enters the website by retrieving inforcomputer 3. To facilitate the processing and storage of data mation from host computer 3. each customer is assigned a unique customer ID and each A screen display 100 as shown in FIG. 3 A provides 5 book is identified by its unique ISBN. The host computer utilizes these elements to track and retain the identification various hypertext selections for various actions to be perof all customers and their purchases. The retained customer formed. As indicated, a user may choose to browse, search, purchasing history is stored in the customer history database order, retrieve account information, or request help. 4 and is accessed whenever a request for recommendations The user can select a book by choosing the Search function in FIG. 3A. Once the search function has been lo is submitted to the host computer. Utilizing the customer history database 4, the host comselected, the user may search for the book by either author, puter 3 searches all the books purchased by all the customers title, keyword or a International Standard Book Number who have purchased the particular book that was selected by (ISBN) as shown in FIG. 3B. the user. Titles which have been purchased in common neuser may utilize any of these to select a particular title. In FIG. 3C, a user has selected the title Clear among the are as for and present D~~~~~ by author T~~ clanCY, in l5 the user. This collaborative filter or intelligent agent is FIG, 3 ~any particular title may be available in a number of , superior to other methods because it uses actual customer different formats or editions. Once a specific title is selected purchasing history to assemble recommendations. It does from among the choices in FIG. 3C, the host computer 3 not require any customer effort nor impinge on customer determines if there are any possible recommendations availprivacy. The recommendations are then transmitted to the able for this particular book, ~f no other books are available 20 user via the Internet 2 and displayed on the user interface 1 in 3E. as recommendations, the host computer will not give the FIG. 4 illustrates one example of the system structure and user the option to request recommendations; the user can data flow. An operator enters input data 21 consisting of a still purchase the selected title or request other information concerning this book. If other books are available as rec- 25 selected book. This input data 21 is transmitted from the ommendations the option to request recommendations is operator to the processor 23 via a distributed network 22 supplied to the user in the form of a hypertext display as similar to the distributed networks described earlier with reference to block 2 in FIG. 1. The processor utilizes service. shown in FIG. 3D as the AfhityTM me system determines whether other books are available database selection rules 25 as explained above in conjuncthe customer history 30 tjon with the input data 21 to determine the recommendato be recommended by tlOnS that be accessed the database 26 which database 4. The customer history database includes three contains data On previous purchasing history. The relational database tables consisting of Customers, Orders recommendations are then transmitted from the processor 23 and I ~~h~ tables ~ related to each by keying unique ~ are ~ , to the operator as output data 24 via a distributed network as customer in the customer table to order numbers in the 2. Orders table and product identification numbers in the Items 35 previously described with reference The invention having been described, it will be apparent table. For example, books may be identified by their unique to those skilled in the art that the same may be varied in ISBN in the Items table, When a user has selected a many ways without departing from the spirit and scope of particular book, the system searches the database 4 to the invention. Any and all such modifications are intended to determine all previous customers who have purchased that book. If there exist in the database at least two other 40 be included within the scope of the following claims. I claim: customers who have purchased the user-selected book and 1. A com~uter-im~lemented method for the recornmenthose at least two customers have also purchased other dation of goods and/or services to potential customers over books (or other products) in common, then the m n i t y m a distributed network based on customer buying history hypertext link will appear in the display page for the selected book. If the search does not find at least two customers who 45 utilizing an information processing system containing Prohave purchased the selected book and who have also purcessing means having transmission means for receiving and chased another book in common, the AffinityTMhypertext transmitting data, and database storage means for storing link will not appear in the display page, Once the user information in database files, the method comprising the hypertext link, the books purchased steps of: activates the AfhityTM in common will be displayed, as shown in FIG. 3E. receiving customer commands specifying a particular good or service to be used as filter data; Another aspect of the invention is the indication of a storing information pertaining to goods andlor services "confidence match" factor as shown in FIG. 3E. The conpurchasing history of previous customers; fidence factor is calculated based on the frequency of appearance of the recommended books (or other items) in comparing said filter data with said stored information the histories of the customers who have purchased the 5s and determining whether, for said filter data, correselected book (or other item). For example, if ten customers sponding entries exist within the stored information; who purchased book A also purchased book B, the confiand dence factor in the recommendation of book B to a user who if corresponding entries exist, displaying the identity of selected book A would be 100%. If on the other hand only other goods andlor services purchased by said previous 7 of the ten customers who purchased bookA also purchased 60 customers who have purchased the good and/or service book B, the confidence factor for book B would be 70%. As used as said filter data. previously explained above, if none of the customers who 2. The method of claim 1 wherein said distributed netpurchased book A also purchased at least one other book in work is the Internet. common, the AEinityTMhypertext link would not be dis3. The method of claim 1 wherein said distributed netplayed. 65 work is-a Local Area Network. The user makes a request for recommended books by 4. The method of claim 1 wherein said distributed netselecting the M n i t y T Mhypertext using a tracking device work is a Wide Area Network.
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5
6
5. The method of claim 1 wherein said distributed net8. The system of claim 7 wherein said distributed network is the Internet. work is a Bulletin Board System. 9. The system of claim 7 wherein said distributed network 6. The method of claim 1 wherein said goods are books. is a Local Area Network. 7. A computer-implemented interactive system for assist10. The system of claim 7 wherein said distributed ing a potential customer in purchasing decisions from 5 network is a Wide Area Network. among a plurality of goods or services, the system compris11. The system of claim 7 wherein said distributed neting: work is a Bulletin Board System. an operator interface for enabling potential customers to 12. The system of claim 7 wherein said goods are books. input requests to said computer, including requests for: 13. The system of claim 7 wherein said operator interface lo the purchase of goods or services, is a personal computer. information concerning goods or services, 14. The system of claim 7 wherein said operator interface recommendations of goods or services based on operais a workstation. tor input; 15. The system of claim 7 wherein said operator interface a database maintained in said computer, containing inforis a dummy terminal. mation pertaining to goods andlor services purchasing 16. A computer program product having a computer history of previous customers; readable medium having computer readable code recorded means for processing inputted requests and for filtering thereon for the recommendation of goods or services in relevant history information regarding said inputted response to user input, comprising: requests from said database; input means for receiving user commands specifying a 20 particular good or service to be used as filter data; a distributed network for transmitting requests from said operator interface to said computer and for transmitting database storage means for the retention of data concernresponsive information from said computer to said ing goods or services purchase decisions of prior users; operator interface; and means for filtering said database storage means using said interface whereby goods andlor services identification 25 information corresponding to goods andlor services specified particular rood or service to obtain recommendations of other goods or services to a user based purchased by previous customers who have purchased on said inputted user commands. the goods andlor services requested by said potential customers are transmitted to said operator interface for use by said potential customers.
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UNITED STATES PATENT AND TRADEMARK OFFICE
CERTIFICATE OF CORRECTION
PATENT NO. : 6,782,370 B1 DATED : August 24,2004 INVENTOR(S) : Charles Stack Page 1 of 1
It is certified that error appears in the above-identified patent and that said Letters Patent is hereby corrected as shown below:
Column 6, Line 26, " rood should be -- good --.
Signed and Sealed this Sixteenth Day of November, 2004
JON W . DUDAS Director of the United States Patent and Trademark Ofice
Case 1:06-cv-00041-JJF
1s 44
(RCV.
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3/99)
CIVIL COVER SHEET
'fie JS-44 civil wvcr shcct and the information contained trercin neithcr.replace nor sup lcmcnt the filing and service of pludings or 0 t h papcrs as r uired ~~ hy law, except as rovidcd by local rules ofc?ur~.This Forn~, approved by LC lodieis1 &niacncs of the Unitcd States in Scptemba 1974, is requid% thc usc of (he Clerk o F C ~ u r for the purpose oiinlhillit~g civil dockct s h 4 . (SEE MSTRUCTIONS ON THE REVERSE OF THE FORM.) t the
I. (a) PLAlhTIPFS
I
DEFENDANTS
CENDANT PUBLISHING, I N C .
AMAZON.COM, INC.
*
@) County of Rcsidcncc of First Liaed Plaintiff (EXCEPT I U.S. PLAINTIFF CASE) N
County of Residence of Fimt Listcd (INUS. PLAlNTIFF CASES ONLY) NOTE: Ih' LAND CONDEhINAnON CASES. USE THE WCATIOE: OF TW:,
*Plaintiff is a Delaware corporation.
(c)
Attomcy's (Firm Name, Addmss, and Telcphonc Number)
m v INVOLVED.
Steven J. Balick Ashbv & Geddes 222 helaware Avenue 1 7 t h Floor ~ilmington,D E 19861 (302) 654- 1888
11. BASIS OF JURISDICTION
(~lau an
i one BOX o o t y o
I
Attorneys
(UKnown)
Unknown <
c h x fur PbiotiB and b e Box tor DcfmtLn~)
1111. CITIZENSHIP OF PRINCIPAL PARTIES(ftcc a n . . ~n h i
@nr Divmity Casa Only)
0 1 US. Government
PlaintiCT
3
Fcdcdcal Queslion (US. C;overnmnent Not a Pany)
Citkrn of This State
a
1
DEF 01
UEF
Incorporated or Principat Place of Busincss In This State
D4
04
El 2 U.S. Government
Defendant
2
02
Incorporated and Principal Place U 5 of Busincss In Anoihcr Stale
D5
IV. NATURE OF SUI r
CONTRACT
(Place an "X" in One Box Only)
TORTS
PERSONAL INJURY
1 PORFEITUREIPENALTI
1
BANKRUPTCY
1
OTHER STATUTES
3lOAirplaae 3 IS Airphnc Ralucl LLbdity 0 320 Asmilt. L ~ h B l
a
PERSONAL INJURY
362 Pcrsaual InjuryMcd. Malprrcticc fl 365 Personal Injury-
a
0 fl
0
0
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Case 1:06-cv-00041-JJF
Document 51-2
Filed 02/16/2006
Page 21 of 21
United States District Court for the District oi'Dela~\lare
Civil Action No.
05-
A 1 4
ACKNOWLEDGMENT OF RECEIPT FOR A 0 FORM 85
NOTICE OF A VAILABIZITY OF A UNITED STA TES MA GISTRATE JUDGE TO EXERCISE JURISDICTION
I HEREBY ACKNOWLEDGE RECEIPT OF
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Note: Completed receipt will be filed in the Civil Action
Case 1:06-cv-00041-JJF
Document 51-3
Filed 02/16/2006
Page 1 of 7
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Amazon countersues Cendant
By Paul Festa Staff Writer, CNET News.com Published: July 18, 2005, 12:18 PM PDT
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Amazon.com has accused Cendant of patent infringement in what it described as a purely defensive countersuit. Amazon late last month filed the claims in the U.S. District Court for the Western District of Washington, alleging that Cendant and subsidiaries Orbitz, Avis, Budget and Trilegiant infringed four patents held by Amazon. Cendant had sued Amazon for patent infringement in November. Following unsuccessful settlement negotiations, the company refiled its suit in June. Amazon subsequently filed its countersuit. Amazon has walked a fine line between decrying the state of software and business process patent litigiousness and building its own healthy patent portfolio. Amazon CEO Jeff Bezos has advocated patent reform for years.
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Amazon said its current patent action came only in self-defense. "The suit was filed in direct response to Cendant's refiling of their patent infringement suit," said Amazon spokeswoman Patty Smith. "This is the first time that we have asserted any of these four patents, and we would not have asserted them if Cendant had not filed against us. It's purely a defensive measure." Cendant did not immediately return calls seeking comment. The four patents in question are U.S. Patent No. 5,715,399: secure method and system for communicating a list of credit card numbers over a nonsecure network; No. 6,029,141: Internet-based customer referral system; No. 6,625,609: method and system for navigating within a body of data using one of a number of alternative browse graphs; and No. 6,629,079: method and system for electronic commerce using multiple roles.
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Case 1:06-cv-00041-JJF
Document 51-4
Filed 02/16/2006
Page 1 of 18
Case 1:06-cv-00041-JJF Document 51-4 Case 2:05-cv-01137-RSM Document 26
Filed 09/12/2005 Filed 02/16/2006
Page 1 of 17 Page 2 of 18
1 2 3 4 5 6 7 8 9 10 11 12 13 Plaintiffs, 14 v. 15 16 17 18 Defendants. 19 20 21 22 23 24 25 26
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
The Honorable R. Martinez
UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE
AMAZON.COM, INC., and A9.COM, INC.,
Case No. 05-01137 (RSM) PLAINTIFFS AMAZON.COM, INC. AND A9.COM, INC.'S OPPOSITION TO DEFENDANTS' MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a), OR, IN THE ALTERNATIVE, TO DISMISS, STAY, OR TRANSFER THE ACTION PURSUANT TO THE FIRSTTO-FILE RULE Noted for consideration September 16, 2005
CENDANT CORPORATION, TRILEGIANT CORPORATION, ORBITZ, LLC, ORBITZ, INC., BUDGET RENT A CAR SYSTEM, INC., and AVIS RENT A CAR SYSTEM, INC.,
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 2:05-cv-01137-RSM Document 26 Case 1:06-cv-00041-JJF Document 51-4
Filed 09/12/2005 Filed 02/16/2006
Page 2 of 17 Page 3 of 18
1 2 3 4 5 6 7 8 9 10 11 12 13 14 4. 15 16 17 18 19 20 21 22 23 24 25 26 II. 5. 3. 1. 2.
TABLE OF CONTENTS Page(s) INTRODUCTION .......................................................................................................................... 1 STATEMENT OF FACTS ............................................................................................................. 1 I. THIS ACTION SHOULD REMAIN IN THIS DISTRICT PURSUANT TO 28 U.S.C. § 1404(a) ............................................................. 3 A. B. Plaintiffs' Chosen Forum Should Be Afforded Substantial Deference .................. 3 Considerations of Convenience and Other Interests Do Not Favor Transfer to the District of Delaware.................................. 5 Transfer Would Not Promote the Convenience of the Parties and Witnesses.................................................. 5 Key Non-Party Witnesses Could Not Be Compelled to Testify at Trial in Delaware ............................................ 7 Transfer Will Not Promote Access to Relevant Documents or Other Evidence ..................................................... 7 This Action and the Delaware Action Could Not Be Feasibly Consolidated .............................................. 8 The Remaining Factors Do Not Support Transfer .................................... 10
THE FIRST-TO-FILE RULE DOES NOT APPLY......................................................... 11
CONCLUSION ............................................................................................................................. 12
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
-i-
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 2:05-cv-01137-RSM Document 26 Case 1:06-cv-00041-JJF Document 51-4
Filed 09/12/2005 Filed 02/16/2006
Page 3 of 17 Page 4 of 18
1 2 3 CASES 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26
TABLE OF AUTHORITIES Page(s)
Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d 622 (9th Cir. 1991), as amended, 20 U.S.P.Q.2d 1698 (9th Cir. June 5, 1991) ........................................................................... 12 Asymetrix Corp. v. Lex Computer and Management Corp., 1995 U.S. Dist. LEXIS 20388 (W.D. Wash. Jan. 25, 1995)..................................................... 8 Brayton Purcell, LLP v. Recordon & Recordon, 361 F. Supp. 2d 1135 (N.D. Cal. 2005) .................................................................................... 3 Cedars-Sinai Medical Ctr. v. Shalala, 125 F.3d 765 (9th Cir. 1997)................................................................................................... 11 Chrysler Capital Corp. v. Woehling, 663 F. Supp. 478 (D. Del. 1987) ............................................................................................... 8 Church of Scientology v. United States Dep't of the Army, 611 F.2d 738 (9th Cir. 1979).................................................................................................. 11 Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834 (9th Cir. 1986)............................................................................................. 4, 5, 7 Dwyer v. General Motors Corp., 853 F. Supp. 690 (S.D.N.Y. 1994)............................................................................................ 6 FUL, Inc. v. Unified Sch. Dist. Number 204, 839 F. Supp. 1307 (N.D. Ill. 1993) ........................................................................................... 7 Google, Inc. v. American Blind & Wallpaper Factory, Inc., 2004 U.S. Dist. LEXIS 27601 (N.D. Cal. April 8, 2004) ....................................................... 12 Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947) .............................................................................................................. 3, 7 Hyundai Space & Aircraft Co v. The Boeing Co., 1999 U.S. Dist. LEXIS 16025 (N.D. Cal. Oct. 12, 1999)......................................................... 4 In re Nat'l Presto Indus., 347 F.3d 662 (7th Cir. 2003)..................................................................................................... 5 Jones v. GNC Franchising, Inc., 211 F.3d 495 (9th Cir. 2000)..................................................................................................... 5
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
-ii-
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 2:05-cv-01137-RSM Document 26 Case 1:06-cv-00041-JJF Document 51-4
Filed 09/12/2005 Filed 02/16/2006
Page 4 of 17 Page 5 of 18
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26
TABLE OF AUTHORITIES (continued) Page(s) Kleinerman v. Luxtron Corp., 107 F. Supp. 2d 122 (D. Mass. 2000) ....................................................................................... 4 Knits `N' Tweeds, Inc v. Jones New York, 1979 U.S. Dist. LEXIS 14868 (E.D.N.Y. Jan. 25, 1979) ....................................................... 11 MasterCard Int'l, Inc. v. Lexcel Solutions, Inc., 2004 U.S. Dist. LEXIS 10906 (S.D.N.Y. June 18, 2004)....................................................... 12 Medi USA v. Jobst Inst., Inc., 791 F. Supp. 208 (N.D. Ill. 1992) ............................................................................................. 7 Pacesetter Systems, Inc. v. Medtronic, Inc., 678 F.2d 93 (9th Cir. 1982)..................................................................................................... 11 Pacific Car & Foundry Co. v. Pence, 403 F.2d 949 (9th Cir. 1968)..................................................................................................... 4 Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981) .................................................................................................................. 4 Recoton Corp. v. Allsop, Inc., 999 F. Supp. 574 (S.D.N.Y. 1998).......................................................................................... 10 Robinson Corp. v. Auto-Owners Ins. Co., 304 F. Supp. 2d 1232 (D. Haw. 2003) ................................................................................ 6, 10 Royal Queentex, Enters. v. Sara Lee Corp., 2000 U.S. Dist. LEXIS 10139 (N.D. Cal., Mar. 1, 2000) ..................................................... 6, 8 Schnabel v. Ramsey Quantitative Systems, Inc., 322 F. Supp. 2d 505 (S.D.N.Y. 2004)....................................................................................... 8 Smith v. S.E.C., 129 F.3d 356 (6th Cir. 1997)................................................................................................... 11 Steelcase, Inc. v. Haworth, Inc., 1996 U.S. Dist. LEXIS 20674 (C.D. Cal. May 15, 1996) ........................................................ 8 Symbol Techs., Inc. v. Intermec Techs. Corp., 2005 U.S. Dist. LEXIS 14415 (W.D. Wis., July 14, 2005) .................................................. 4, 9 Teknekron Software Systems, Inc. v. Cornell University, 1993 U.S. Dist. LEXIS 21337 (N.D. Cal. June 14, 1993) ........................................................ 8 Van Dusen v. Barrack, 376 U.S. 612 (1964) .................................................................................................................. 3
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM) -iiiPRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 2:05-cv-01137-RSM Document 26 Case 1:06-cv-00041-JJF Document 51-4
Filed 09/12/2005 Filed 02/16/2006
Page 5 of 17 Page 6 of 18
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 STATUTES
TABLE OF AUTHORITIES (continued) Page(s) Waste Distillation Tech., Inc. v. Toman, 775 F. Supp. 759 (D. Del. 1991) ............................................................................................... 7
28 U.S.C. § 1404(a) ........................................................................................................................ 3
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
-iv-
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 2:05-cv-01137-RSM Document 26 Case 1:06-cv-00041-JJF Document 51-4
Filed 09/12/2005 Filed 02/16/2006
Page 6 of 17 Page 7 of 18
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26
INTRODUCTION Defendants ask to transfer this action from this District, in which plaintiff Amazon.com, its employees, key non-party witnesses and relevant evidence are located, to the District of Delaware, a district with no parties, no witnesses and no evidence relevant to the action. The great deference that must be afforded plaintiffs' choice of forum cannot be overcome by defendants' purported desire to avoid the inconvenience of defending the action in this District, particularly where the proposed transfer would not alleviate any inconvenience but, at best, would have the effect of merely shifting it from defendants to plaintiffs. In the alternative, defendants contend that the "first-to-file" rule justifies the dismissal or stay of this action, or its transfer to the District of Delaware, where Cendant Publishing, Inc., who is not a party to this action, has filed a lawsuit against Amazon.com. The first-to-file rule simply does not apply here. This action and Cendant Publishing's Delaware action are entirely different, with different parties, different witnesses, different patents, and different issues. This action should remain in this District. STATEMENT OF FACTS On June 22, 2005, Amazon.com, Inc. ("Amazon.com") and its wholly-owned subsidiary A9.com, Inc. ("A9.com") filed this action for patent infringement against six defendants: Cendant Corporation, Trilegiant Corporation, Orbitz, LLC, Orbitz, Inc., Budget Rent A Car System, Inc., and Avis Rent A Car System, Inc. The action seeks injunctive relief and damages for defendants' infringement of four patents: U.S. Patent Nos. 5,715,399 ("the '399 patent"), 6,029,141 ("the '141 patent"), 6,629,079 ("the '079 patent"), and 6,625,609 ("the '609 patent"). Amazon.com owns the '399 patent, the '141 patent, and the '079 patent. Compl. ¶ 2. A9.com owns the '609 patent. Id. ¶ 3. Plaintiffs allege that each of these patents is infringed by certain of defendants' web sites and conduct relating to those web sites. Compl. ¶¶ 14, 20, 25, and 30. Although Amazon.com is incorporated in Delaware, its headquarters are in Seattle, Washington. Declaration of Kathryn Sheehan ("Sheehan Decl."), ¶ 2. All of Amazon.com's
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
-1-
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 2:05-cv-01137-RSM Document 26 Case 1:06-cv-00041-JJF Document 51-4
Filed 09/12/2005 Filed 02/16/2006
Page 7 of 17 Page 8 of 18
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current employees with knowledge relevant to this action work at Amazon.com's offices in Seattle. These employees include Jeff Bezos, Ellen Ratajak, Robert McDade and Anne Krook, each of whom is an inventor for one or more of the patents in suit, and each of whom has knowledge regarding, among other things, the subject matter, conception and reduction to practice of the claimed inventions. Id. ¶ 5. In addition, Amazon.com employees with information relating to damages issues, including Amazon.com's financial data and sales and marketing information, all work at Amazon.com's offices in Seattle. Id. ¶ 3. All of the documents that may be relevant to this action, including documents concerning the development of the patented inventions, financial documents, and documents relating to sales and marketing, are located in Seattle. Id. Several of the inventors for the patents in suit are no longer employed by Amazon.com but are very likely to have information relevant to this action, including knowledge of the conception and reduction to practice of the claimed inventions. These former employees include Sheldon Kaphan, Thomas Schonhoff, Joel Spiegel, Maryam Mohit, and Bonnie Bouman. Id. ¶ 6. All of these likely non-party witnesses reside in or near Seattle. In addition, the patent attorneys who prosecuted the patents in suit, Steven Lawrenz, Maurice Pirio, and Ronald Anderson, have knowledge relevant to the prosecution of the patents. These non-party witnesses also reside in or near Seattle. Id. ¶ 8. Like Amazon.com, plaintiff A9.com is incorporated in Delaware, but its headquarters are in Palo Alto, California. Id. ¶ 4. Amazon.com assigned the '609 patent to A9.com after the patent was issued. Id. For this reason, all witnesses with material information, including inventors, and all documents likely to be relevant to the part of the dispute that concerns the '609 patent are located in Seattle. Defendants propose to transfer this action to the District of Delaware. However, none of the defendants has offices in Delaware, no witnesses with relevant knowledge reside in Delaware, and no documents relevant to this action are located in Delaware. See Declaration of Eric J. Bock
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
-2-
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 1:06-cv-00041-JJF Document 51-4 Case 2:05-cv-01137-RSM Document 26
Filed 09/12/2005 Filed 02/16/2006
Page 8 of 17 Page 9 of 18
1 2 3 4 5 6 7 8 9 10 11 12 13
Decl. ("Bock Decl."), ¶¶ 8-11. As a justification for transfer, defendants repeatedly reference an action filed by non-party Cendant Publishing, Inc. against Amazon.com in the District of Delaware asserting infringement of U.S. Patent No. 6,782,370 ("the `370 patent"). Defs. Motion at 1, 3, 9, 11-12; Declaration of James V. Fazio ("Fazio Decl."), Ex. A. This Delaware action names Amazon.com as the sole defendant. Fazio Decl. ¶ 2, Ex. A. Cendant Publishing does not assert any claim against A9.com, and none of the defendants named by Amazon.com and A9.com in this action is involved in the Delaware action. Fazio Decl., Ex. A at ¶ 12; Compl. ¶¶ 4-8. The four patents at issue in this action are not part of the dispute in the Delaware action, and the single patent asserted in the Delaware action is not at issue in this action. Fazio Decl., Ex. A at ¶ 7; Compl. ¶¶ 1-3.1 I. THIS ACTION SHOULD REMAIN IN THIS DISTRICT PURSUANT TO 28 U.S.C. § 1404(a) A. Plaintiffs' Chosen Forum Should Be Afforded Substantial Deference
A plaintiff's choice of forum should rarely be disturbed. Brayton Purcell, LLP v. 14 Recordon & Recordon, 361 F. Supp. 2d 1135, 1143 (N.D. Cal. 2005) (quoting Gulf Oil Corp. v. 15 Gilbert, 330 U.S. 501, 508 (1947)). Transfer under 28 U.S.C. § 1404(a) is justified only where 16 the movant makes a clear showing that the inconvenience, burden and expense of litigating in the 17 plaintiff's chosen forum are so great that the interests of justice warrant moving the action to a 18 different forum. 28 U.S.C. § 1404(a); Van Dusen v. Barrack, 376 U.S. 612, 616 (1964) (purpose 19 of transfer is to "prevent the waste of time, energy, and money and to protect litigants, witnesses, 20 and the public against unnecessary inconvenience and expense"). 21 Defendants contend that plaintiffs are not entitled to a presumption in favor of their 22 chosen forum because they have engaged in "forum shopping." Defs. Motion at 8. Defendants 23 fail to explain how choosing to litigate in Amazon.com's home district a district in which 24 25 26
Defendants refer to discussions that took place between the parties before the filing of this action. Defs. Motion at 3. Defendants' characterizations of these discussions are grossly inaccurate and violate the parties' agreement that the discussions would be kept confidential and not used in litigation. In view of the parties' agreement, and the fact that these discussions are irrelevant to defendants' motion, Amazon.com and A9.com decline to comment on the content of these discussions. OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
1
-3-
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 1:06-cv-00041-JJF Document 51-4 Case 2:05-cv-01137-RSM Document 26
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plaintiffs' employees with relevant knowledge and all material non-party witnesses reside can possibly constitute forum shopping or be otherwise improper. To the contrary, the deference afforded a plaintiff's choice of forum is particularly great where the plaintiff chooses its home forum. Kleinerman v. Luxtron Corp., 107 F. Supp. 2d 122, 125 (D. Mass. 2000) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 (1981)). Defendants also contend that because the majority of their infringing activities occurred "in the Northeast" plaintiffs' choice of forum should be given no deference. Defs. Motion at 8. This is not the law, and none of the cases cited by defendants support this proposition. For example, in Pacific Car & Foundry Co. v. Pence, 403 F.2d 949 (9th Cir. 1968), the Ninth Circuit reversed the district court's denial of transfer where neither plaintiff nor defendant had substantive contacts with the forum selected, stating: "If the operative facts have not occurred within the forum of original selection and that forum has no particular interest in the parties or the subject matter, the plaintiff's choice is entitled only to minimal consideration." Id. at 954. The Court did not hold, as defendants claim, that if the infringing activity occurred outside of the district, plaintiffs' choice of forum should be disregarded.2 Here, many of the events relevant to this action, including conception, reduction to practice, and development of the patented inventions, occurred in Washington, and this District clearly has an interest in the plaintiffs and the subject matter of the dispute. To overcome the presumption in favor of Amazon.com and A9.com's choice of this District, defendants must show that the balance of conveniences and other considerations strongly favors transfer to the District of Delaware. See Piper Aircraft, 454 U.S. at 255-56; Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986). The factors that are
2 Defendants also mischaracterize Symbol Techs., Inc. v. Intermec Techs. Corp., 2005 U.S. Dist. LEXIS 14415 (W.D. Wis., July 14, 2005) and Hyundai Space & Aircraft Co v. The Boeing Co., 1999 U.S. Dist. LEXIS 16025 (N.D. Cal., Oct. 12, 1999). In both cases, the plaintiff, unlike Amazon.com, had no significant connection with the forum it had selected. Even so, neither court held that the plaintiff's choice of forum should be entirely disregarded. Instead, Symbol Technologies gave nearly dispositive weight to a contractual forum selection clause which specified the transferee district, and Hyundai Space & Aircraft found that other considerations of convenience weighed heavily in favor of transfer.
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
-4-
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 1:06-cv-00041-JJF Document 51-4 Case 2:05-cv-01137-RSM Document 26
Filed 09/12/2005 Filed 02/16/2006
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typically weighed against the plaintiff's choice of forum are: (1) the convenience of the parties and witnesses; (2) the availability of compulsory process for the attendance of non-party witnesses; (3) the ease of access to documentary and other evidence; (4) the feasibility of consolidation with other claims; (5) local interest in the controversy; (6) the familiarity of each forum with the applicable law; and (7) the relative court congestion and time to trial in each forum. Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99 (9th Cir. 2000); Decker Coal, 805 F.2d at 843. None of these factors favors transfer to the District of Delaware. B. Considerations of Convenience and Other Interests Do Not Favor Transfer to the District of Delaware 1. Transfer Would Not Promote the Convenience of the Parties and Witnesses
When plaintiffs and defendants are in different states, there is no choice of forum that will entirely avoid imposing inconvenience. In re Nat'l Presto Indus., 347 F.3d 662, 665 (7th Cir. 2003). As defendants acknowledge, all of Amazon.com's employee witnesses and key non-party witnesses are located in the Western District of Washington. Defs. Motion at 6, 8. Nevertheless, they urge the Court to find that because all of the defendants are headquartered "in the Northeast"3 transfer to the District of Delaware would be the most convenient forum for "the parties." Defs. Motion at 6. Given Amazon.com's location in the District and A9.com's location in California, the transfer defendants propose would only switch the supposed inconvenience from defendants to plaintiffs. When the inconveniences of alternative venues are comparable, or where transfer would merely shift the inconvenience from one party to another, the plaintiff's choice of forum should not be disrupted. Decker Coal, 805 F.2d at 843 (rejecting transfer that would "shift rather than eliminate the inconvenience"); In re Nat'l Presto Indus., 347 F.3d at 665 ("the tie is awarded to the plaintiff"; affirming denial of transfer even where the balance of convenience somewhat
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Defendants insist that the two defendants headquartered in Chicago Orbitz, LLC and Orbitz, Inc. are also located "in the Northeast."
OPPOSITION TO MOTION TO TRANSFER VENUE CASE NO. 05-01137 (RSM)
-5-
PRESTON GATES & ELLIS, LLP 925 FOURTH AVE., SUITE 2900 SEATTLE, WASHINGTON 98104-1158 Ph: 206.623.7580; Fax: 206.623.7022
Case 2:05-cv-01137-RSM Document 26 Case 1:06-cv-00041-JJF Document 51-4
Filed 09/12/2005 Filed 02/16/2006
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favored the movant). In any event, defendants exaggerate the anticipated inconvenience of travel between their headquarters and Seattle, Washington. With the exception of attendance at trial, none of defendants' witnesses will be required to travel to Seattle during the course of this proceeding. Unless other arrangements are made, defendants' witnesses will be deposed in the districts in which they reside, and the production of any evidence in these witnesses' possession can be handled without the need for cross-country travel. As for attendance at trial in Washington, the convenience of the parties does not weigh in favor of transfer when the movant will be required to travel whether the action is transferred or not. See Dwyer v. General Motors Corp., 853 F. Supp. 690, 693 (S.D.N.Y. 1994). As no parties, witnesses, or evidence are located in Delaware, defendants and their witnesses will need to travel whether the action proceeds in this District or in Delaware. Id.; see also Royal Queentex, Enters. v. Sara Lee Corp., 2000 U.S. Dist. LEXIS 10139, *20-21 (N.D. Cal., Mar. 1, 2000) (denying transfer where witnesses located in New York, Connecticut, Chicag
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