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Case Update: Motiva v. Nintendo - Officially moved to Washington

As we previously reported here, Motiva LLC sued Nintendo for allegedly infringing U.S. Pat. No. 7,292,151, which is directed to a "Human Movement Measurement System." The patent relates to "a system and methods for setup and measuring the position and orientation (pose) of transponders. More specifically, for training the user to manipulate the pose of the transponders through a movement trajectory, while guided by interactive and sensory feedback means, for the purposes of functional movement assessment for exercise, and physical medicine and rehabilitation." The suit was filed in the Eastern District of Texas.

In early 2009, Nintendo filed a motion requesting that the case be transferred to the Western District of Washington, the location of Nintendo?s principal place of business. Nintendo argued that not only were portions of physical and documentary evidence located in that district but also neither Nintendo nor Motiva were incorporated in Texas, had offices in Texas, or had any witnesses from Texas. On June 30, 2009, the Texas district court denied Nintendo?s request. Nintendo filed a motion asking the court to reconsider its decision, and also petitioned the U.S. Court of Appeals for the Federal Circuit ("Federal Circuit") to vacate the district court?s decision.

Specifically, Nintendo petitioned for a writ of mandamus alleging that the district court clearly abused its discretion when denying Nintendo?s request to transfer the suit to Washington. Citing the mounting pile of decisions transferring cases out of the very same district, including Volkswagen (545 F.3d 304), TS Tech (551 F.3d 1315) , and Genentech (566 F.3d 1338), the Federal Circuit held that ?the district court clearly abused its discretion in denying transfer from a venue with no meaningful ties to the case.? In fact, the Federal Circuit indicated that ?[t]his case appears to repeat the erroneous methodology that led this court to grant mandamus in TS Tech.? The decision continued to elaborate on the errors made by the district court, including:
(1) applied too strict of a standard to allow transfer;
(2) gave too much weight to the plaintiff?s choice of venue;
(3) misapplied the forum non conveniens factors;
(4) incorrectly assessed the 100-mile tenet;
(5) improperly substituted its own central proximity for a measure of convenience of the parties, witnesses, and documents; and
(6) glossed over a record without a single relevant factor favoring the plaintiffs chosen venue.

Specifically regarding the plaintiff?s choice of venue, the court again reiterated that the:

Fifth Circuit has unequivocally rejected the argument that citizens of the venue chosen by the plaintiff have a ?substantial interest? in adjudicating a case locally because some allegedly infringing products found their way into the Texas market.

This is especially pertinent to the gaming community, as it would be hard to imagine any given district in the United States where a gaming product (such as Nintendo?s Wii and/or its related peripherals) did not find its way into the local market. Similarly, the Federal Circuit took issue with the district court asserting Texas was an acceptable centralized location for witnesses, when in fact, no witnesses resided in that district. While not expressly stated in the decision, the court appeared to recognize that applying such a rule would affect several suits in which one witness resided west of Texas while another witness resided east of Texas. Again, given the nature of video game development and usage across the Internet, applying the district court?s rule could prevent a large portion of transfers for infringement suits involving video games.

Specifically regarding the 100-mile tenant, the Federal Circuit cited the Volkswagon decision, stating: ?[w]hen the distance between an existing venue for trial of a matter and a proposed venue under [the relevant statue] is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional distance to be travelled.? The Federal Circuit's decision can be read here.

It is important to note that several issues, including: 1) the appropriateness of Nintendo's methods seeking review of the district court?s denial to transfer the suit, and 2) the forum non conveniens factors to consider when deciding a motion to transfer venue, did not relate to substantive patent law, thus the Federal Circuit applied the law of the circuit which the district court is located, in this case the 5th Circuit.

On March 1, 2010, the district court vacated its June 30, 2009 order that denied Nintendo's Motion to Transfer and transferred the matter to the United States District Court for the Western District of Washington.

We will continue to follow the case as it resumes in the Western District of Washington.

Full post as published by Patent Arcade on March 15, 2010 (boomark / email).