Judge Pitman Grants Motion To Transfer To The Northern District Of California Based On Multiple Factors Strongly Favoring Transfer

Defendant Tableau Software, LLC (Tableau) filed an opposed motion to transfer venue to the Northern District of California. On May 21, 2024, Judge Pitman granted Tableau's motion and transferred the proceeding between Tableau and iCharts LLC.

Plaintiff iCharts LLC (iCharts) filed suit against Tableau on October 10, 2023, for alleged infringement of three patents: U.S. Patent Nos. 8,271,892, 8,520,000, and 9,712,595 (the asserted patents). These patents claim systems and methods for creating, sharing, and embedding interactive charts. iCharts alleged that Tableau infringes the asserted patents through Tableau's products that incorporate modules facilitating interactive charts through templates, selection of data, and publishing the charts to other websites. On January 19, 2024, Tableau filed an opposed motion to transfer, arguing for the Northern District of California as the new forum.

After concluding that the case could have been brought in the Northern District of California because of a regular and established place of business, Judge Pitman examined the following private and public interest factors:

A. PRIVATE INTEREST FACTORS

1. Relative Ease of Access to Proof.

The court concluded that this factor strongly favored transfer. It found that Tableau's records and evidence of the accused products, Tableau's employees with knowledge of the relevant records, the lead inventor of the asserted patents and the related documents, and the prosecution attorneys' files pertaining to the asserted patents were all more easily accessible in the Northern District of California. The court disagreed with iCharts's argument that the evidence electronically stored on servers was equally accessible from anywhere. The court also found that because the bankruptcy proceedings of iCharts's predecessor were conducted in the Northern District of California and the trustee still resided there, transfer was supported.

2. Availability of Compulsory Process to Secure Attendance.

The court again found this factor strongly favored transfer. It considered only one of iCharts's non-party witnesses located in Texas, discounting the nine potential customer witnesses asserted by iCharts. Judge Pitman reasoned that as both parties are nationwide companies, iCharts did not sufficiently explain why customers in California would not have the same information as those in Texas. In contrast, Tableau identified five companies in the Northern District of California that may be prior art witnesses, as well as around 12 non-party witnesses, which included former executives of iCharts's predecessor, the bankruptcy trustee, and the prosecuting attorneys. The court factored in the location of most of these potential witnesses while not considering the presence of certain witnesses, including the lead inventor and his wife, owing to the fact that they were willing witnesses, and a former VP of marketing due to lack of an adequate allegation as to why his testimony would be relevant in this case. Based on the large disparity of potentially relevant non-party witnesses subject to compulsory process, the court found this factor strongly favored transfer.

3. Cost of Attendance.

The court determined this factor strongly favored transfer. The court gave great weight to Tableau's contentions of California and West Coast employees with greater knowledge of the accused products and access to relevant evidence. The court reasoned that even if some of these employees would have to travel from Seattle, this was more convenient than travelling to Texas. The court also heavily considered the fact that multiple important witnesses from iCharts's predecessor were located in the Northern District of California, including the lead inventor. The witnesses identified by iCharts did not weigh against transfer. There was no evidence to show Tableau's Austin employees had relevant knowledge, former iCharts customers on the East Coast were not shown to be unique from other customers, and a co-inventor residing in Germany would only be slightly more inconvenienced by having to go to California instead of Texas.

4. All Other Practical Problems That Make Trial of a Case Easy, Expeditious, and Inexpensive.

The court found this factor only marginally favored transfer. Judge Pitman found marginal support for transfer because of the location of both parties' lead counsel being in the Northern District of California. Otherwise, it wasn't shown to be relevant that the case was in the early stages of litigation, or that the Northern District of California had previously handled iCharts's predecessor's bankruptcy proceedings.

B. PUBLIC INTEREST FACTORS

1. Administrative Difficulties Flowing from Court Congestion.

The court concluded that this factor was neutral despite each party using statistics of the average time to trial in the respective districts. While the court acknowledged its own significant civil caseload, iCharts is not in a position of product competition in the marketplace, alleviating the urgency of case resolution.

2. Local Interest in Having Local Issues Decided at Home.

The court determined this factor heavily favored transfer. Despite a general presence of Tableau in Texas and a business partnership of iCharts in Austin, the court focused on the events that gave rise to the suit. These were the creation and development of the accused products, not the subsequent sales by Tableau or iCharts's sale of products in Texas. The court also credited Tableau's argument that many individuals in the Northern District of California had their work and reputation at stake with this suit.

3. Familiarity with the Law/Conflict of Laws.

The court, combining the last two public interest factors, determined each were neutral regarding transfer. The court agreed with iCharts, discounting Tableau's argument that a 2020 agreement may require interpretation under California law.

Judge Pitman granted Tableau's motion to transfer to the Northern District of California, noting that five factors weighed either strongly or slightly in favor of transferring, and none weighed against transfer. Thus, Tableau had shown that the Northern District of California was clearly more convenient than the Western District of Texas.

Brady Mills, summer associate, contributed to this blog.

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