Case 2:18-cv-00134-RWS Document 287 Filed 08/23/19 Page 1 of 9 PageID #: 14424
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CIVIL ACTION NO. 2:18-CV-00134-RWS
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`------------
`SEALED
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`§§§§§§§§§
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`OMNI MEDSCI, INC.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`ORDER
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`Before the Court is Defendant Apple, Inc.’s Motion to Transfer Venue to the Northern
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`District of California under 28 U.S.C. § 1404 (Docket No. 59). Apple contends that venue is
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`clearly more convenient in the Northern District of California. Apple filed a nearly identical
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`motion in the co-pending case between these parties, Case No. 2:19-cv-429, and the parties agree
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`there are no substantive differences between the two motions.
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`I.
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`Procedural Background
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`Plaintiff Omni MedSci, Inc. (“Omni MedSci”) brought case no. 2:18-cv-134 (“the ’134
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`case”) in this district, alleging that Apple infringes U.S. Patent Nos. 9,651,533, 9,757,040,
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`9,861,286 and 9,885,698.1 Six months later, Omni filed a second suit against Apple in this district,
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`2:18-cv-429 (“the ’429 case”), alleging infringement of U.S. Patent Nos. 10,098,546, 9,861,286,2
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`9,885,698,3 10,188,299 and 10,213,113. Both cases were brought on the same family of patents
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`and asserted against Apple’s family of smart watches.
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`1 Claims relating to the ’698 patent were subsequently dismissed.
`2 In the second suit, the ’286 patent is only asserted against Apple’s latest generation of smart watches.
`3 See supra note 1.
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`Petitioner Apple Inc. - Exhibit 1058, p. 1
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`After Omni MedSci filed its complaint, Apple waited six months to file the instant motion.
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`Apple then agreed to delay briefing by four more months, until after the Markman hearing. On
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`the eve of the Markman hearing, Apple moved to stay the case. As a result, the parties were not
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`fully heard on the instant motion until nearly one year after the case was filed. As a result of this
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`delay, fact discovery has closed and the case is in a very late phase.
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`II.
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`Factual Background
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`Apple is a Delaware corporation headquartered in Cupertino, California, within the
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`Northern District of California. Omni MedSci is a Michigan company headquartered in Ann
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`Arbor, Michigan. Dr. Mohammad Islam, Omni MedSci’s founder, President, Treasurer, Secretary,
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`Director, Chief Technology Officer and resident agent, is the sole named inventor of the asserted
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`patents. Dr. Islam also resides in Ann Arbor.
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`Venue discovery revealed that, though some of Apple’s documents are stored on servers
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`around the country, Apple’s witnesses and most third-party witnesses and documents are located
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`in California and a plurality are in the Northern District of California. As for links to this district,
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`Omni MedSci’s investigation revealed that one possible source of prior art is located in this district,
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`AMS-TAOS USA Inc. (“Taos”).4
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`that Apple has a facility in Austin, Texas, there is no evidence that it has any relevance to this case.
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`6 Although discovery revealed
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`4 Prior to the hearing on this motion, Apple stopped pursuing invalidity based on the Taos prior art. See Docket No.
`159.
`5 Between the ’134 and ’429 cases, Omni MedSci has alleged that four generations of Apple smart watches infringe
`Omni MedSci’s patents.
`6
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`Page 2 of 9
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`Petitioner Apple Inc. - Exhibit 1058, p. 2
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`Apple does not dispute that venue in this forum is proper. Instead, it contends that the
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`Northern District is clearly a more convenient forum for this dispute.
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`III.
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`Legal Standard
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`“For the convenience of parties and witnesses, in the interest of justice, a district court may
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`transfer any civil action to any other district or division where it might have been brought or to
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`any district or division to which all parties have consented.” 28 U.S.C. § 1404(a). The Fifth
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`Circuit has developed a test based on several private and public interest factors to determine
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`whether transfer is appropriate under § 1404(a). In re Volkswagen of Am., Inc., 545 F.3d 304, 315
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`(5th Cir. 2008) (“Volkswagen II”). The private interest factors include (1) the availability of
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`compulsory process to secure the attendance of witnesses; (2) the cost of attendance for willing
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`witnesses; (3) the relative ease of access to sources of proof and (4) all other practical problems
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`that make trial of a case easy, expeditious and inexpensive. Id. The public interest factors include
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`(1) the administrative difficulties flowing from court congestion; (2) the local interest in having
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`localized interests decided at home; (3) the familiarity of the forum with the law that will govern
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`the case and (4) the avoidance of unnecessary problems of conflict of laws. Id.
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`A plaintiff’s choice of venue is not an express factor in the analysis. Seven Networks, LLC
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`v. Google LLC, 2:17-CV-00442-JRG, 2018 WL 4026760, at *8 (citing Volkswagen II, 545 F.3d at
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`315). However, a moving defendant must demonstrate that the “that the transferee forum is
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`‘clearly more convenient.’ ” In re HP Inc., No. 2018-149, 2018 WL 4692486, at *2 (Fed. Cir.
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`Sept. 25, 2018) (alteration in original) (quoting In re Toyota Motor Corp., 747 F.3d 1338, 1341
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`(Fed. Cir. 2014)). By applying this elevated burden of proof, the plaintiff’s choice of forum is
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`given the appropriate deference. Seven Networks, 2018 WL 4026760, at *2 (citing Volkswagen II,
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`545 F.3d at 315).
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`Page 3 of 9
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`Petitioner Apple Inc. - Exhibit 1058, p. 3
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`“Motions to transfer venue are to be decided based on ‘the situation which existed when
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`suit was instituted.’ ” In re EMC Corp., 501 Fed. App’x 973, 976 (Fed. Cir. 2013) (quoting
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`Hoffman v. Blaski, 363 U.S. 335, 343 (1960)). However, the Court may consider circumstances
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`that were “apparent at the time the suit was filed.” Id.
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`IV.
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`Discussion
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`As an initial matter, Omni MedSci does not dispute that the case could have been brought
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`in the Northern District of California. Accordingly, the Court focuses its analysis on the
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`convenience factors.
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`A.
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`Private Interest Factors
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`As noted above, the private factors include: “(1) the relative ease of access to sources of
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`proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost
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`of attendance for willing witnesses; and (4) all other practical problems that make trial of a case
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`easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 315 (citing Piper Aircraft Co. v.
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`Reyno, 454 U.S. 235, 241 n.6 (1981)).
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`i.
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`Access to Sources of Proof
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`“The first factor focuses on the locations of sources of proof, such as documents and
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`physical evidence.” Remmers v. United States, No. CIV. A. 1:09-CV-345, 2009 WL 3617597, at
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`*4 (E.D. Tex. Oct. 28, 2009). “Courts analyze this factor in light of the distance that documents,
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`or other evidence, must be transported from their existing location to the trial venue.” Uniloc USA,
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`Inc. v. Activision Blizzard, Inc., No. 6:13-CV-256, 2014 WL 11609813, at *2 (E.D. Tex. July 16,
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`2014) (citing Volkswagen II, 545 F.3d at 316) (noting that this factor is still relevant even if
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`documents are stored electronically).
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`This factor turns on which party “most probably [has] the greater volume of documents
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`relevant to the litigation and their presumed location in relation to the transferee and transferor
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`Page 4 of 9
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`Petitioner Apple Inc. - Exhibit 1058, p. 4
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`venues.” Id. (citing In re Nintendo Co., 589 F.3d 1194, 1199 (Fed. Cir. 2009); In re Genentech,
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`Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009); Volkswagen II, 545 F.3d at 314–15). “In patent
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`infringement cases, the bulk of the relevant evidence usually comes from the accused infringer.
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`Consequently, the place where the defendant’s documents are kept weighs in favor of transfer to
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`that location.” In re Genentech, 566 F.3d at 1345 (citation omitted). “That access to some sources
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`of proof presents a lesser inconvenience now than it might have absent recent developments does
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`not render this factor superfluous.” Volkswagen II, 545 F.3d at 316.
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`Though the parties dispute where the servers that hold relevant documents are located,
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`Apple has established that sources of proof are more easily available in the Northern District of
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`California. As the defendant in a patent case, the bulk of the documents produced belong to Apple
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`and are more easily accessible where it maintains its headquarters.7 As to Omni MedSci, any
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`relevant documents they may produce are in Michigan, and Omni MedSci has no ties to this
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`district. The third-party documents in this district that may be relevant—prior art technology from
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`Taos and
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`are a small subset of the total
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`sources of proof. Accordingly, this factor weighs in favor of transfer.
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`ii.
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`The availability of compulsory process to secure the attendance of
`witnesses
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`This factor is directed towards unwilling third-party witnesses. Seven Networks, 2018 WL
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`4026760, at *7 (citing Volkswagen II, 545 F.3d at 316). “ ‘A district court should assess the
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`relevance and materiality of the information the witness may provide’ and where a party has
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`‘identified witnesses relevant to [the] issues [present in a case], [ ] the identification of those
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`witnesses weighs in favor of [the identifying party].’ ” Id. at *8 (quoting In re Genentech, 566
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`7 Though Apple maintains a facility in Austin, Texas, where documents may also be accessible, Apple’s only places
`of business in this district—the relevant inquiry—are two retail stores. Omni has not established that these locations
`can access any relevant documents.
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`Page 5 of 9
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`Petitioner Apple Inc. - Exhibit 1058, p. 5
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`F.3d at 1344). “[T]o properly analyze convenience, specific witnesses should be identified with,
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`at a minimum, a general statement providing the expected relevant and material information to the
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`litigation at hand.” Realtime Data, LLC v. Rackspace US, Inc., 2017 WL 772653, at *10 (E.D.
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`Tex. Feb. 28, 2017).
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`Apple identified six witnesses—four former Apple or Omni MedSci employees that
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`attended meetings with Dr. Islam between 2014 and 2016, a former Apple employee who helped
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`implement the accused functionality and the prosecuting attorney—and two entities
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`—that it contends are located in California and have relevant
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`information but are unwilling to attend trial. Apple has not established that its former employees
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`are unwilling, but has shown that there are no third-party witnesses, or at least very few, from
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`Texas. On the other hand, the third-party witnesses identified by Apple are in California, and
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`many of those are in the Northern District. Those witnesses are subject to compulsory service in
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`the Northern District of California. The number and relevance witnesses in California greatly
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`outweighs that of the possible Taos,
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` witnesses located in Texas, and thus, this
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`factor weighs in favor of transfer.
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`iii.
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`Costs of attendance for willing witnesses
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`When analyzing this factor, all parties and witnesses must be considered. In re Volkswagen
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`AG, 371 F.3d 201, 204 (5th Cir. 2004) (“Volkswagen I”). However, “[t]his factor [ ] primarily
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`concerns the convenience of nonparty witnesses.” Seven Networks, 2018 WL 4026760, at *10
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`(quotations omitted). A district court should assess the “relevance and materiality of the
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`information the witness may provide,” but it is not necessary for a party “to show that the potential
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`witness has more than relevant and material information.” In re Genentech, 566 F.3d at 1343.
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`Page 6 of 9
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`Petitioner Apple Inc. - Exhibit 1058, p. 6
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`Case 2:18-cv-00134-RWS Document 287 Filed 08/23/19 Page 7 of 9 PageID #: 14430
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`“When the distance between an existing venue for trial of a matter and a proposed venue
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`under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses increases in direct
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`relationship to the additional distance to be traveled.” Volkswagen I, 371 F.3d at 204–05.
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`Under this factor, Apple has shown that the Northern District of California is more
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`convenient for many witnesses and there are few witnesses who would find this district more
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`convenient. As noted above, the majority of witnesses reside in California, and many of them in
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`the Northern District. The remaining party witnesses are in Michigan. Though this district is
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`closer to Michigan than the Northern District of California, attending trial in California is far more
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`convenient for most witnesses. As such, this factor favors transfer.
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`iv.
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`Other Practical Problems
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`“Practical problems include those that are rationally based on judicial economy.” Eolas
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`Technologies, Inc. v. Adobe Sys., Inc., 6:09-CV-446, 2010 WL 3835762 (E.D. Tex. Sept. 28,
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`2010), aff’d, In re Google, Inc., 412 Fed. App’x. 295 (Fed. Cir. 2011). “[T]he existence of
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`duplicative suits involving the same or similar issues may create practical difficulties that will
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`weigh heavily in favor or against transfer.” Id.; see also Volkswagen II, 566 F.3d at 1351 (“ ‘[T]o
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`permit a situation in which two cases involving precisely the same issues are simultaneously
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`pending in different District Court leads to the wastefulness of time, energy and money that § 1404
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`was designed to prevent.’ ”) (quoting Continental Grain Co. v. The FBL-585, 364 U.S. 19, 26
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`(1960)). Because the Court is addressing the motions to transfer in both suits simultaneously, these
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`concerns are not present here, and this factor is neutral.
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`B.
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`Public Interest Factors
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`As explained supra, the public factors include: “(1) the administrative difficulties flowing
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`from court congestion; (2) the local interest in having localized interests decided at home; (3) the
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`familiarity of the forum with the law that will govern the case; and (4) the avoidance of
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`Page 7 of 9
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`Petitioner Apple Inc. - Exhibit 1058, p. 7
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`unnecessary problems of conflict of laws of the application of foreign law.” Volkswagen I, 371
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`F.3d at 203 (citing Piper Aircraft, 454 U.S. at 241 n.6).
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`i.
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`Court Congestion
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`“To the extent that court congestion is relevant, the speed with which a case can come to
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`trial and be resolved may be a factor” in the transfer analysis. In re Genentech, 566 F.3d at 1347.
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`This factor is the most speculative, and the speed of the transferee district court should not alone
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`outweigh the other factors. Id. The latest data show no significant difference in the time to trial
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`between this district and the Northern District of California—the median time to trial in this district
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`is 27 months, and the median time in the Northern District of California is 25.9 months. See
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`https://www.uscourts.gov/statistics/table/c-5/federal-judicial-caseload-statistics/2019/03/31.
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`However, the case is now in a late phase. Due to Apple’s briefing practices, including
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`waiting six months to file its motion then agreeing to delay briefing a further four months, until
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`after the Markman hearing, the case is well past discovery. It is unclear when the Northern District
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`of California will be able to set this matter for trial, and transfer now will delay resolution of this
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`case. Further, transferring the case will impose claim constructions on an unfamiliar court and
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`waste the resources exerted by this Court in becoming familiar with the case. The waste and delay
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`in time to trial created by Apple supports retaining the case before this Court. Accordingly, this
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`factor weighs heavily against transfer.
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`ii.
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`Local Interest
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`“The Court must also consider local interest in the litigation because ‘[j]ury duty is a burden
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`that ought not to be imposed upon the people of a community which has no relation to the
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`litigation.’ ” Mears Techs., Inc. v. Finisar Corp., No. 2:13-CV-376-JRG, 2014 WL 1652603, at
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`*4 (E.D. Tex. Apr. 24, 2014) (quoting Volkswagen I, 371 F.3d at 206). Patent cases concerning
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`nationally sold products do not typically include any particular localized interests. See In re TS
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`Page 8 of 9
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`Petitioner Apple Inc. - Exhibit 1058, p. 8
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`Tech USA Corp., 551 F.3d 1315, 1321 (Fed. Cir. 2008). Accordingly, this factor is neutral. See
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`Mears Techs., 2014 WL 1652603, at *4.
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`iii.
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`Familiarity of the Forum with Law
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`“Patent claims are governed by federal law, and as such both [courts are] capable of
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`applying patent law to infringement claims.” See In re TS Tech, 551 F.3d at 1320 (quotes omitted).
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`Accordingly, this factor is neutral as well. Id.
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`V.
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`Conclusion
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`In sum, three factors—access to sources of proof, availability of compulsory service, and
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`cost of attendance—favor transfer. But one—court congestion—weighs heavily against transfer.
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`However, the court congestion factor cannot, alone, outweigh the remaining factors. In re
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`Genentech, 566 F.3d at 1347. Thus, under the Fifth Circuit’s test, Apple has met its burden to
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`show that the Northern District of California is a clearly more convenient venue than this Court.
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`Accordingly, Apple’s Motion to Transfer Venue to the Northern District of California
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`Under 28 U.S.C. § 1404 (Docket No. 59) is GRANTED. This matter is TRANSFERRED to the
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`United States District Court for the Northern District of California. The Court’s previous order
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`requiring payment to the technical consultant shall remain in effect. It is further
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`ORDERED that Apple’s Motion to Stay Proceeding Pending Resolution of Motion to
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`Transfer Venue (Docket No. 116) and Apple’s Renewed Motion to Stay Proceedings Pending
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`Resolution of Apple’s Motion to Transfer Venue and Motion to Dismiss for Lack of Standing
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`(Docket No. 177) are DENIED-AS-MOOT.
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`Page 9 of 9
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`Petitioner Apple Inc. - Exhibit 1058, p. 9
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`.
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`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 14th day of August, 2019.
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