Judge Netburn Grants Transfer Venue Motion

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On April 29, 2021, District Judge Sarah Netburn (S.D.N.Y.) granted defendant salesforce.com, Inc.’s ("Salesforce") motion for transfer of venue to the Northern District of California ("the NDCA")—where it is based—pursuant to 28 U.S.C. § 1404(a).

This case involves two patents to inventor Michael Kaufman that are directed to automatically generating user interfaces for large or complex databases. Kaufman sued Salesforce in August 2020, alleging that Safesforce's customer relationship management products infringe the patents. Salesforce is incorporated in Delaware and headquartered in the NDCA, where over 9,000 of its employees work. Its products are sold nationwide.

In deciding Salesforce's motion to transfer, the Court conducted the two-part analysis as provided in the language of 28 U.S.C. § 1404(a). As to the first part of the analysis, neither party disputed that the litigation could have been brought in the NDCA, given Salesforce's residence and regular and established place of business in the district. As to the second part of the analysis, the Court weighed the nine factors that courts in the Second Circuit consider in transfer of venue cases:

  1. Plaintiff's Choice of Forum: The Court found this factor to weigh against transfer because Kaufman is a resident of the Southern District of New York ("the SDNY") and the technology claimed in the patents-in-suit was invented in the SDNY.
  2. Convenience of Witnesses: The Court found this factor to weigh significantly in favor of transfer because of the "sheer" number of knowledgeable witnesses residing in the NDCA or on the West Coast. Salesforce had specifically identified a number of witnesses (both party and non-party witnesses) who were knowledgeable either about the accused products or the prior art upon which Salesforce would rely for its invalidity defense. On the other hand, Kaufman had identified only himself and his co-inventor, who resides in Virginia.
  3. Location of Relevant Documents and Relative Ease of Access to Sources of Proof: The Court found this factor to weigh only slightly in favor of transfer because although the majority of the relevant documents were stored in the NDCA and in Arizona, all of the production would be electronic.
  4. Convenience of Parties: The Court found this factor to be neutral because transfer of the case would serve to shift the burden from Salesforce to Kaufman.
  5. Locus of Operative Facts: The Court found this factor to weigh in favor of transfer because the design and development of the accused products took place in the NDCA.
  6. Availability of Process to Compel Attendance of Unwilling Witnesses: The Court found this factor to weigh strongly in favor of transfer because the prior art witnesses and Salesforce's former employees could be compelled to testify by the NDCA but not by the SDNY.
  7. Relative Means of Parties: The Court found this factor to be neutral because Kaufman had not offered documentation to show that transfer would be unduly burdensome to his finances.
  8. Forum's Familiarity with Governing Law: The Court found this factor to be neutral because any district court may handle a patent case with equal skill and neither party asserted that this factor weighs in favor of or against transfer.
  9. Trial Efficiency and Interests of Justice: The Court found this factor to weigh slightly against transfer because the parties have engaged in a fair amount of motion practice pending before the Court and have sought the Court's time for resolution of discovery disputes, and thus, the case has progressed past its earliest stage.

Having weighed all of the factors, the Court concluded that there is clear and convincing evidence that transfer is appropriate and outweighs Kaufman's interest in litigating in the SDNY.

Case: Kaufman v. Salesforce.com, Inc., No. 20-cv-06879, Dkt. No. 81 (S.D.N.Y. Apr. 29, 2021).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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