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Mirror Worlds Technologies, LLC v. Facebook Inc.

United States District Court, S.D. New York

November 22, 2017

MIRROR WORLDS TECHNOLOGIES, LLC, Plaintiff,
v.
FACEBOOK, INC., Defendant.

          MEMORANDUM OPINION & ORDER

          JOHN G. KOELTL, UNITED STATES DISTRICT JUDGE

         The plaintiff, Mirror Worlds Technologies, LLC ("Mirror Worlds"), filed this suit in the Southern District of New York against the defendant, Facebook, Inc. ("Facebook"), alleging that various features of Facebook's well-known social media website violate three patents owned by Mirror Worlds. Facebook has moved pursuant to 28 U.S.C, § 1404(a) to transfer this action to the Northern District of California, where Facebook's headquarters is located. Mirror Worlds opposes the motion. For the reasons that follow, the motion to transfer is denied.

         I.

         The relevant background facts, as alleged in Mirror Worlds's complaint and as contained in the affidavits, declarations, and exhibits submitted in connection with this motion, are as follows.

         This case involves three patents that together allegedly protect a technology that organizes computerized information in a searchable "time-ordered stream[]" rather than a "traditional folder and directory structure." Compl. ¶¶ 15, 16. The patents-in-suit are U.S. Patent No. 6, 006, 227 (the '"227 Patent"), U.S. Patent No. 7, 865, 538 (the “538 Patent"), and U.S. Patent No. 8, 255, 439 (the “439 Patent"). Compl. ¶¶ 7-9.

         The protected technology was invented in the 1990s. Compl. ¶ 14. Dr. David H. Gelernter, a professor of computer science at Yale University, and Eric Freeman, then a Ph.D student studying under Dr. Gelernter, are named as inventors on all three of the patents-in-suit. Compl. ¶¶ 7-9, 10, 24. Two of the patents-in-suit also name Randy Prager, Peter Sparago, and Stephen Marcaurele as inventors. Compl. ¶¶ 8-9.

         After 2001, an entity named "Mirror Worlds, LLC, " a Texas limited liability corporation with its principal place of business in Texas, acquired exclusive ownership rights to the '227 Patent and related patents. See Damstedt Decl. Ex. F ¶¶ 1, 7-9, A separate entity named "Mirror Worlds Technologies, LLC." - the plaintiff in the present action and the sole entity to which the Court refers as "Mirror Worlds" -- later acquired through assignment all rights, title, and interest to the '227 Patent. Damstedt Decl. Ex. E ¶ 6. Mirror Worlds also later acquired the same beneficial interest with regard to the '538 Patent and the '439 Patent. Compl. ¶ 6. The record does not contain any evidence that Mirror Worlds or Mirror Worlds, LLC, ever practiced the patents-at-issue.

         Mirror Worlds is a Texas limited liability corporation. Compl. ¶ 1, In 2013, Mirror Worlds's principal place of business was located in Tyler, Texas. Damstedt Decl. Ex. E I 4. Today, Mirror Worlds has a place of business in New York City. Compl. ¶ 1. Mirror Worlds is a wholly owned subsidiary of Network-1 Technologies, Inc., which is a Delaware corporation with its principal place of business in New York City. Wang Decl. Ex. 6, at 17. Mirror Worlds has three officers, two of whom serve as the sole members of the board of directors. Wang Decl. ¶ 2. Corey Horowitz, president and a board member, resides in Westport, Connecticut, and works in New York City and New Canaan, Connecticut. Niv Harizman, vice president, secretary, and a board member, resides and works in Westport, Connecticut. David Kahn, treasurer, resides and works in Long Island, New York. Id.

         On May 9, 2017, Mirror Worlds filed the present action against Facebook, alleging that Facebook's social media website infringes the patents-in-suit. See Compl. ¶¶ 57-85. Mirror Worlds accuses various aspects of the Facebook website of infringement, including features known as "News Feed, " "Activity Log, " "Events, " "Graph Search, " "Timeline, " "Social Graph, " and "TAG." Compl. ¶¶ 8 4-85.

         Facebook is a Delaware corporation with its principal place of business in Menlo Park, California. Duffey Decl, ¶ 2. Many of Facebook's employees work at its Menlo Park headquarters. Duffey Decl. ¶¶ 2-4. Facebook also has at least one New York City office. Duffey Decl. ¶ 6. Although Facebook's New York City office is "growing rapidly, " Wang Decl. Ex. 1 ("Duffey Dep."), at 12 6-27, Facebook employs far fewer people in New York than in Menlo Park. Duffey Decl. 1 6. In New York City, Facebook employs "engineers, data analysts, [and a] design team" for various products, as well as a "sales team, global sales operations, recruiting, creative design, human resources, facilities, [and a] culinary [team]." Duffey Dep. 126.

         II.

         Facebook has moved pursuant to 28 U.S.C. § 1404(a) to transfer this action to the Northern District of California. Section 1404(a) provides that, "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." There is no dispute that this action "might have been brought" in the Northern District of California.[1] Accordingly, the Court must determine whether a transfer to the Northern District of California should be ordered "for the convenience of the parties and witnesses, and in the interest of justice." 28 U.S.C. § 1404(a); see also Liberty Mut. Ins. Co. v. Fairbanks Co., 17 F.Supp.3d 385, 391 n.2 (S.D.N.Y. 2014).

         The Court of Appeals for the Federal Circuit directs district courts to apply regional circuit law when deciding whether to transfer a patent infringement case pursuant to § 1404(a). Storage Tech. ...


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