Judge Albright Grants Transfer in Decapolis Systems, LLC v. eClinicalWorks, LLC, but Reiterates That Court Congestion, While Not Dispositive, Is Not Entitled to Less Weight Than Other Factors

On March 1, 2022, Judge Albright granted Defendant eClinicalWorks, LLC’s (“eClinical”) Motion to Transfer Venue to the District of Massachusetts. eClinical did not argue that the Western District of Texas, Waco Division (“WDTX”) was an improper venue, but rather that the District of Massachusetts “is simply a more convenient forum.”

Plaintiff Decapolis Systems, LLC (“Decapolis”) accuses Defendant of infringing two patents: U.S. Patent Nos. 7,464,040 and 7,490,048. Decapolis is a Florida LLC with its principal place of business in Florida. eClinical is a Massachusetts corporation, and Massachusetts is also its principal place of business.

Judge Albright found three of the eight factors favored transfer, two disfavored transfer, and three were neutral. In his opinion, Judge Albright also emphasized that “[t]he burden is not simply that the alternative venue is more convenient, but that it is clearly more convenient.” His analysis was as follows:

Private Interest Factors

1. The court found that the first factor, relative ease of access to sources of proof, favored transfer. The court found that “the allegedly infringing products ..., the eClinical employees with knowledge of the products … and all the related code” are all in Massachusetts. Although eClinical has an office in Austin, the court stated that “no proof is stored there and no employees in that office have relevant knowledge of the products.” Although the judge recognized Plaintiff’s argument that specific relevant documents kept in Massachusetts were not identified, he found that “[m]ore sources of proof likely reside in, and are likely more easily accessed in, [Massachusetts] than the WDTX.” The judge also underscored that Decapolis failed “to show that any relevant documents actually reside in the WDTX.”
2. The court found that the second factor, the availability of compulsory process to secure the attendance of witnesses, was neutral. Both parties agreed that there were no non-party witnesses that may require compulsory process.
3. The court found that the cost of attendance for willing witnesses favored transfer. The court emphasized that “time is a more important metric than distance.” eClinical’s party witnesses who were likely to testify were all located in Massachusetts. Decapolis argued that “the WDTX is a more convenient forum for its potential witnesses—the inventor, its retained technical consulting expert, and its damages expert.” However, the court found that “the convenience of expert witnesses—who are paid for their services and travel—is given little weight in the transfer analysis.” Otherwise, the court found that Decapolis’s inventor, who was located in New York, along with eClinical’s party witnesses, favored transfer.
4. The court found that the fourth factor, all other practical problems that make trial easy, expeditious, and inexpensive, disfavored transfer. Judge Albright found that the co-pending case in the Southern District of Florida was irrelevant for the case at hand. However, the court noted that the 14 active cases, including this one, by Decapolis regarding the same Decapolis patents, are still pending in the WDTX. Judicial economy, and the risk of inconsistent rulings, disfavored transfer.

Public Interest Factors

1. The court found that the first factor, administrative difficulties flowing from court congestion, disfavored transfer. In rejecting the argument that this factor should be given lesser weight, Judge Albright reiterated that the Federal Circuit “has only found that this factor should not by itself be dispositive in keeping a case in the transferor district; it has not held that this factor should receive lesser weight.” Judge Albright found that because the parties did not offer time-to-trial statistics for the District of Massachusetts, this factor disfavored transfer.
2. As to the second factor, the local interest in having localized interests decided at home, the court found that this factor favored transfer. The court found that even though “[t]he Federal Circuit has held that a generalized presence of office space is insufficient to give a district a local interest” and “eClinical has failed to show how their offices or employees in [Massachusetts] have engaged in any conduct relevant to the alleged infringement,” that “it can be presumed that some of the events giving rise to infringement occurred” in Massachusetts because it is eClinical’s home.
3. Both parties agreed that the third factor—the familiarity of the forum with the law that would govern the case—was neutral.
4. eClinical argued that this factor—avoidance of unnecessary problems of conflict of laws or in the application of foreign law—was neutral because there are no potential conflicts here, and the court agreed.