United States District Court, S.D. New York
MEMORANDUM OPINION & ORDER
G. KOELTL, UNITED STATES DISTRICT JUDGE
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
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
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.
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.
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
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
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.
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.
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. 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.
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. ...