Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 1 of 21 PageID #: 393
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`SABLE NETWORKS, INC.; SABLE IP,
`LLC,
`
`
`
`v.
`
`HEWLETT PACKARD ENTERPRISE
`COMPANY; ARUBA NETWORKS, INC.,
`
`
`
`
`
`
`
`
`Plaintiffs,
`
`Defendants.
`
`
`
`
`
`
`
`
`Civil Action No. 5:20-cv-00120-RWS
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`
`
`DEFENDANTS’ MOTION TO TRANSFER TO THE
`UNITED STATES DISTRICT FOR THE NORTHERN DISTRICT OF CALIFORNIA
`PURSUANT TO 28 U.S.C. § 1404
`
`
`
`
`
`
`
`
`
`EX1044
`Palo Alto Networks v. Sable Networks
`IPR2020-01712
`
`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 2 of 21 PageID #: 394
`
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .............................................................................................................. 1
`
`LEGAL STANDARD ......................................................................................................... 2
`
`DEFENDANTS ARUBA AND HEWLETT PACKARD ENTERPRISE. ........................ 2
`
`TRANSFER IS REQUIRED IN THIS UNIQUELY CALIFORNIAN CASE. ................. 2
`
`A.
`
`B.
`
`This Action Could Have Been Brought in NDCA. ................................................. 2
`
`The Private Interest Factors Favor Transfer to NDCA. .......................................... 2
`
`1.
`
`Sources of Proof Are Overwhelmingly In NDCA. ..................................... 3
`
`i.
`
`ii.
`
`iii.
`
` Are in
`Defendants’ Relevant Documents
`NDCA. ............................................................................................ 3
`
`HPE’s Office in Plano Does Not Contain Trial Evidence. ............. 4
`
`Plaintiff’s Relevant Documents and Source Code Appear
`To Be Located in NDCA. ............................................................... 5
`
`2.
`
`Compulsory Process Is Much More Available in NDCA Than
`EDTX. ......................................................................................................... 6
`
`i.
`
`ii.
`
`Inventors ......................................................................................... 7
`
`Prosecution Counsel........................................................................ 7
`
`iii.
`
`Former Caspian Employees ............................................................ 8
`
`3.
`
`Witnesses Can Attend Trial More Easily in NDCA. .................................. 9
`
`i.
`
`ii.
`
`iii.
`
`EDTX Is Approximately 1,900 Miles Farther Than NDCA
`for Inventors, Prosecution Counsel, and Former Caspian
`Employees. .................................................................................... 10
`
`Relevant
`
` Witnesses Are In Northern California. ............... 10
`
`Relevant Sable Witnesses Are In NDCA...................................... 11
`
`4.
`
`Other Practical Considerations Do Not Weigh Against Transfer. ............ 12
`
`C.
`
`The Public Interest Factors Favor Transfer. ......................................................... 12
`
`1.
`
`2.
`
`3.
`
`Time to Trial Is Neutral. ........................................................................... 13
`
`Localized Interests Strongly Favor Transfer to NDCA. ........................... 13
`
`The Third and Fourth Factors Favor Transfer Because of
`California Contract Law Issues Related to Defendants’ Standing
`Defense. .................................................................................................... 14
`
`V.
`
`TRANSFER IS CONSISTENT WITH RECENT DECISIONS IN THIS
`DISTRICT AND THE FEDERAL CIRCUIT. ................................................................. 14
`
`VI.
`
`CONCLUSION ................................................................................................................. 15
`
`
`
`i
`
`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 3 of 21 PageID #: 395
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)............................................................................................7, 13
`
`Adaptix, Inc. v. HTC Corp.,
`937 F. Supp. 2d 867 (E.D. Tex. 2013) .......................................................................................6
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ............................................................................................9
`
`ContentGuard Holdings, Inc. v. Amazon.com, Inc.,
`No. 2:13-CV-1112-JRG, 2015 WL 1885256 (E.D. Tex. Apr. 24, 2015) ..................................9
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)........................................................................................ passim
`
`Godo Kaisha IP Bridge 1 v. Xilinx, Inc.,
`No. 217CV100JRGRSP, 2017 WL 4076052 (E.D. Tex. Sept. 14, 2017) ...................3, 5, 9, 13
`
`In re Google Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ............................................1, 3, 12
`
`Hammers v. Mayea-Chang,
`No. 2:19-CV-181-JRG, 2019 WL 6728446 (E.D. Tex. Dec. 11, 2019)
`(Gilstrap, C.J.) ............................................................................................................................4
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................13
`
`In re HP Inc.,
`No. 2018-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) ...............................................1, 3
`
`In re HP Inc.,
`No. 2020-140, 2020 WL 5523561 (Fed. Cir. Sept. 15, 2020) .........................................1, 3, 15
`
`Interactive Music Tech., LLC v. Roland Corp. U.S.,
`No. 6:07-CV-282-LED-JDL, 2008 WL 245142 (E.D. Tex. Jan. 29, 2008) ............................14
`
`Leroy v. Great W. United Corp.,
`443 U.S. 173 (1979) ...................................................................................................................4
`
`Parus Holdings Inc. v. LG Elecs. Inc.,
`2020 WL 4905809 (W.D. Tex. Aug. 20, 2020) .................................................................12, 13
`
`
`
`ii
`
`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 4 of 21 PageID #: 396
`
`
`
`In re Radmax, Ltd.,
`720 F.3d 285 (5th Cir. 2013) .....................................................................................................3
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)................................................................................................10
`
`Uniloc 2017 LLC v. Google LLC,
`No. 218CV00504JRGRSP, 2020 WL 3064460 (E.D. Tex. June 8, 2020) ....................6, 14, 15
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ...............................................................................................2, 10
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) (en banc) ...........................................................................2, 4, 16
`
`Statutes
`
`28 U.S.C. § 1404 .................................................................................................................... passim
`
`35 U.S.C. § 287 ................................................................................................................................6
`
`Other Authorities
`
`Rule 45(c).......................................................................................................................................15
`
`
`
`
`
`iii
`
`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 5 of 21 PageID #: 397
`
`
`
`I.
`
`INTRODUCTION
`
`This case belongs in California. This is a dispute between (a) California-headquartered
`
`corporations, (b) over patents purportedly originating from research in California, (c) issued to
`
`named inventors who overwhelmingly live in California, (d) conveyed to the plaintiff through
`
`California contracts, and (e) regarding accused devices
`
`.
`
`No party has relevant ties to Texas. Plaintiff Sable Networks, Inc. “is a corporation
`
`organized and existing under the laws of the State of California.” Complaint, Dkt. No. 1, at 8 ¶ 13.
`
`Sable’s purported headquarters, executives, and engineers appear to be located in the Northern
`
`District of California within minutes of Defendants’ headquarters. Relevant third parties also are
`
`in California. Sable alleges it acquired the asserted patents and a related product from Caspian
`
`Networks LLC. Caspian is defunct, but its remnants are in California, including former executives
`
`and engineers expected to be third-party witnesses. While Hewlett Packard Enterprise Company
`
`has an office in Plano, Texas, that is not an Aruba Networks, Inc. office and does not contain
`
`sources of proof.
`
`In a case such as this—where no party has relevant ties to Texas, and relevant party and
`
`third-party ties to California are overwhelming—transfer is both appropriate and mandatory. The
`
`facts of this case favor transfer even more than the facts of In re Google and In re HP I, where the
`
`plaintiff had an employee or kept an office in Texas. See In re Google Inc., No. 2017-107, 2017
`
`WL 977038 (Fed. Cir. Feb. 23, 2017); In re HP Inc., No. 2018-149, 2018 WL 4692486 (Fed. Cir.
`
`Sept. 25, 2018). “Given … HP’s presence in the transferee venue, and no readily apparent
`
`connection with the Eastern District of Texas,” “this is one of those cases” where transfer is
`
`required. In re HP Inc., No. 2020-140, 2020 WL 5523561, at *2 (Fed. Cir. Sept. 15, 2020). Thus,
`
`Defendants respectfully request transfer to NDCA under 28 U.S.C. § 1404.
`
`DEFENDANTS’ MOTION TO TRANSFER – Page 1
`
`
`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 6 of 21 PageID #: 398
`
`
`
`II.
`
`LEGAL STANDARD
`
`Under Fifth Circuit law, which governs the 28 U.S.C. § 1404 transfer inquiry in this case,
`
`the threshold question is whether the suit could have been brought in the proposed transferee
`
`district. See In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). If so, the
`
`Fifth Circuit instructs courts to consider several private and public interest factors to determine
`
`whether the transferee forum would be “clearly more convenient” than the transferor court,
`
`applying the private and public interest factors. In re Volkswagen of Am., Inc., 545 F.3d 304, 315
`
`(5th Cir. 2008) (en banc) (“Volkswagen II”).
`
`III. DEFENDANTS ARUBA AND HEWLETT PACKARD ENTERPRISE
`
`Aruba Networks, Inc. (“Aruba”) is a Silicon Valley networking company founded in
`
`Sunnyvale, California in 2002 and is currently headquartered in Santa Clara, California. See
`
`Declaration of Karthikeyan Ramachandran (“Ramachandran Decl.”), Ex. 1, ¶ 4. Aruba employs
`
`over 7,000 employees globally,
`
`
`
`acquired by, and is a wholly-owned subsidiary of, Hewlett Packard Enterprise (“HPE”). Id. at ¶ 3.
`
`Aruba does not have any offices in Texas. Id. at ¶ 11. The Accused Devices in this case are sold
`
`. See id. at ¶¶ 4, 8–9. In 2015, Aruba was
`
`by Aruba, not HPE.
`
`IV.
`
`TRANSFER IS REQUIRED IN THIS UNIQUELY CALIFORNIAN CASE
`
`A.
`
`This Action Could Have Been Brought in NDCA
`
`As an initial mater, this suit could have been brought in NDCA because both Defendants
`
`are headquartered there. See Complaint, Dkt. No. 1, at 9 ¶ 17–18.
`
`B.
`
`The Private Interest Factors Favor Transfer to NDCA
`
`In this case, the four private factors favor transfer. “[T]he case has no connection to the
`
`transferor forum and virtually all of the events and witnesses regarding the case…are in the
`
`DEFENDANTS’ MOTION TO TRANSFER – Page 2
`
`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 7 of 21 PageID #: 399
`
`
`
`transferee forum.” In re Radmax, Ltd., 720 F.3d 285, 290 (5th Cir. 2013). Given the overwhelming
`
`sources of party and non-party proof and witnesses located in Northern California, all parties’
`
`headquarters in NDCA, and plaintiffs’ lack of ties to Texas, Federal Circuit law compels transfer.
`
`See In re Google, 2017 WL 977038; In re HP I, 2018 WL 4692486; In re HP II, 2020 WL 5523561.
`
`1.
`
`Sources of Proof Are Overwhelmingly In NDCA
`
`i.
`
`Defendants’ Relevant Documents
`NDCA
`
` Are in
`
`“In patent infringement cases, the bulk of the relevant evidence usually comes from the
`
`accused infringer. Consequently, the place where the defendant’s documents are kept weighs in
`
`favor of transfer to that location.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009).
`
`“The Court presumes the bulk of discovery material relating to [the accused infringer] is at its
`
`corporate headquarters.” Godo Kaisha IP Bridge 1 v. Xilinx, Inc., No. 217CV100JRGRSP, 2017
`
`WL 4076052, at *3 (E.D. Tex. Sept. 14, 2017).
`
`
`
`Both HPE and Aruba are headquartered in NDCA—in San Jose and Santa Clara,
`
`respectively—which triggers the presumption that “the bulk of discovery material” will be in these
`
`locations. See Complaint, Dkt. No. 1, at 9 ¶ 17–18. The Complaint identifies five classes of
`
`products: the Aruba Switch Series, the HPE FlexNetwork Router Series, HPE FlexFabric
`
`Switches, Aruba Gateways, and Aruba Mobility Controllers product families (collectively, “the
`
`Accused Devices”). See Complaint, Dkt. No. 1, at 21 ¶ 86, 25 ¶ 106, 29 ¶ 127, 33 ¶ 151, 36–37
`
`¶ 171. The HPE FlexNetwork and FlexFabric devices
`
`
`
` and are sold by Aruba (the “
`
` Devices”). Ramachandran Decl, ¶¶ 6–7.
`
`
`
`
`
`
`
`. Ramachandran
`
`DEFENDANTS’ MOTION TO TRANSFER – Page 3
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`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 8 of 21 PageID #: 400
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`
`
`Decl., ¶ 12. As in In re Genentech, “all of [Defendants’] corporate documents relating to the
`
`development, manufacturing, and marketing of the accused infringing products are housed in
`
`[Defendants’ NDCA] headquarters.” 566 F.3d at 1345.
`
` Id. ¶ 12. Except for the
`
` Devices, the
`
`
`
`
`
`
`
`
`
`. Id. ¶ 14.
`
`Id. These sources of
`
`proof bear centrally on core disputed issues in the case, including alleged direct and indirect
`
`infringement. Because they are located primarily in Northern California and not in Texas, this
`
`factor heavily favors transfer.
`
`ii.
`
`HPE’s Office in Plano Does Not Contain Trial Evidence
`
`HPE’s office in Plano, Texas, which is identified by Sable in the Complaint, is irrelevant
`
`to the § 1404 analysis because it is not a source of trial proof. Cf. Complaint, Dkt. No. 1, at 9 ¶ 19
`
`(identifying HPE’s facility). To be clear, the office located at 6080 Tennyson Parkway in Plano,
`
`Texas, is an HPE office and not an Aruba office. Ramachandran Decl., ¶ 11. Furthermore, all of
`
`the Accused Devices identified in the Complaint fall within the Aruba organization, rather than
`
`HPE’s. Id. ¶¶ 6–7. Regardless, unlike a § 1406 analysis, which may generally consider a
`
`defendant’s “regular and established place of business” within the District, the § 1404 inquiry is
`
`“only focused on evidence that will be used at trial.” Hammers v. Mayea-Chang, No. 2:19-CV-
`
`181-JRG, 2019 WL 6728446, at *7 (E.D. Tex. Dec. 11, 2019) (emphasis added) (“[T]he inquiry
`
`regarding access to sources of proof correlates to production and presentation to the jury at trial.”
`
`(citing Volkswagen II, 545 F.3d at 316; Leroy v. Great W. United Corp., 443 U.S. 173, 183–84
`
`(1979))).
`
`As a result, if a proponent “does not explain how a particular source of proof will be used
`
`at trial,” then the uniform practice in this District is not to consider it in the § 1404 inquiry. Id.
`
`DEFENDANTS’ MOTION TO TRANSFER – Page 4
`
`

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`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 9 of 21 PageID #: 401
`
`
`
`(refusing to consider “generalized statements that do not specify the format, relevance, or identity
`
`of particular documents or physical evidence to be presented at trial”); Godo Kaisha, 2017 WL
`
`4076052, at *1, *5 (granting transfer notwithstanding defendant’s “sales offices” in Texas because
`
`plaintiff “fail[ed] to identify any specific witnesses or evidence within this District” at those offices
`
`while the defendant specifically “identified a number of party witnesses residing in Northern
`
`California”).
`
`Sable will not be able to tie HPE’s facility in Plano to this litigation, let alone to trial,
`
`because it does not contain sources of trial evidence.
`
`
`
`.
`
`Ramachandran Decl., ¶¶ 12–14. The mere existence of an HPE facility in this District is not
`
`enough—without a more particularized showing—to impact this factor.
`
`iii.
`
`Plaintiff’s Relevant Documents and Source Code Appear To
`Be Located in NDCA
`
`Based upon public information, relevant Sable documents appear to be located in
`
`California, at least presumptively. Godo Kaisha, 2017 WL 4076052, at *3 (presuming the bulk of
`
`corporate documentary evidence is located at corporate headquarters). The Complaint states that
`
`Sable is a California corporation. Complaint, Dkt. No. 1, at 8 ¶ 13. California state records show
`
`that Sable is headquartered in NDCA at 3171 Jay St., Santa Clara, California. See Exs. 2–4.
`
`As described under the next factor, NDCA is home to several Sable employees who work
`
`on products that the Complaint identifies as related to the Asserted Patents. Complaint, Dkt. No.
`
`1, at 6 (“Sable Networks, Inc. continued the product development efforts stemming from Dr.
`
`Roberts’ flow-based router technologies.”); id. at 4–5 ¶ 5, 6, (describing the Sable “Apeiro” as “a
`
`flow-based router” related to the Asserted Patents). “All source code and design documentation”
`
`for Apeiro appear to have been delivered to Sable in California as part of the patent purchase
`
`DEFENDANTS’ MOTION TO TRANSFER – Page 5
`
`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 10 of 21 PageID #: 402
`
`
`
`agreement. See Ex. 5 at Frame 0919 (transferring Apeiro source code and “source files pertaining
`
`to the development, design, document registry and technical publications” for Sable ASICs). To
`
`the extent these products practice the Asserted Patents, they may bear upon damages, marking
`
`under 35 U.S.C. § 287, and secondary considerations of non-obviousness.
`
`Sable also may possess inventorship documents within NDCA. The Complaint alleges the
`
`Asserted Patents were invented by employees of Caspian Networks Inc. before Caspian liquidated
`
`its assets and allegedly sold them to a Korean corporation called Mobile Convergence, Ltd.
`
`(“MCL”). Ex. 6. MCL later allegedly agreed to transmit to Sable’s California office “[a]ll relevant
`
`invention records,” “including blue prints [sic], white papers, engineer notebooks and related
`
`materials pertinent to the list of acquired assets.” See Ex. 5 at Frame 0922. These “invention
`
`records” are important sources of proof related to conception, diligence, and reduction to practice.
`
`2.
`
`Compulsory Process Is Much More Available in NDCA Than EDTX
`
`“‘Transfer is favored when a transferee district has absolute subpoena power over a greater
`
`number of non-party witnesses’ than the transferor district.” Uniloc 2017 LLC v. Google LLC, No.
`
`218CV00504JRGRSP, 2020 WL 3064460, at *4 (E.D. Tex. June 8, 2020) (quoting Adaptix, Inc.
`
`v. HTC Corp., 937 F. Supp. 2d 867, 874 (E.D. Tex. 2013)). “The fact that the transferee venue is
`
`a venue with usable subpoena power … weighs in favor of transfer, and not only slightly.” In re
`
`Genentech, 566 F.3d at 1345. The non-party witnesses who are likely central to the disputes in this
`
`case—including the inventors, prosecution counsel, and former Caspian employees—are almost
`
`uniformly located in California, and nearly all within the subpoena power of NDCA. Conversely,
`
`none appears to be located within the EDTX subpoena power.
`
`DEFENDANTS’ MOTION TO TRANSFER – Page 6
`
`

`

`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 11 of 21 PageID #: 403
`
`
`
`i.
`
`Inventors
`
`As shown below, seven of the nine living named inventors are within the subpoena power
`
`of NDCA. None are within subpoena power for EDTX. See Ex. 7.
`
`Patent #
`
`7,012,919
`
`
`8,085,775 and
`8,817,790
`
`
`8,243,593
`
`6,977,932
`
`
`
`Inventor
`Name
`Faizel Z.
`Lakhani
`John A.
`McBrayne
`Gary G.
`Croke
`Tricci Y.
`So
`Surya K.
`Pappu
`Paul
`Jezioranski
`Sharad R.
`Murthy
`Vishnu
`Natchu
`Scott
`Hauck
`
`Current Location Within NDCA
`Subpoena Power
`Yes
`
`San Francisco, CA
`
`Within EDTX
`Subpoena Power
`No
`
`San Jose, CA
`
`San Jose, CA
`
`Oceanside, CA
`
`Milpitas, CA
`
`Research Triangle
`Park, NC
`Menlo Park, CA
`
`Mountain View, CA
`
`Seattle, WA
`
`Yes
`
`Yes
`
`Yes
`
`Yes
`
`No
`
`Yes
`
`Yes
`
`No
`
`No
`
`No
`
`No
`
`No
`
`No
`
`No
`
`No
`
`No
`
`ii.
`
`Prosecution Counsel
`
`The prosecution firms for all Asserted Patents are located within NDCA. In re Acer Am.
`
`Corp., 626 F.3d 1252, 1255 (Fed. Cir. 2010) (identifying prosecution counsel as important
`
`witnesses). Prosecution counsel listed on the face of the ’932 Patent and the ’919 Patent was
`
`Martine Penilla & Gencarella, LLP (now named Penilla IP, APC), headquartered in NDCA in
`
`Sunnyvale, CA. See Exs. 8–9. Prosecution counsel listed on the face of the ’775 Patent, the ’532
`
`Patent, and the ’790 Patent was West & Associates, PC, headquartered in NDCA in Walnut Creek,
`
`CA. See Ex. 10. The lead prosecuting attorney listed on the face of these latter three patents, Stuart
`
`J. West, remains at the same firm and is a resident of NDCA. See Ex. 11.
`
`DEFENDANTS’ MOTION TO TRANSFER – Page 7
`
`

`

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`
`
`
`iii.
`
`Former Caspian Employees
`
`Sable’s Complaint goes on at length to describe that the Asserted Patents are purportedly
`
`the result of the “technologies developed by Dr. Roberts and Caspian Networks.” Complaint, Dkt.
`
`No. 1, at 5 ¶ 8; id. at 1–2 ¶ 1. Accordingly, former Caspian employees may be relevant to questions
`
`of conception, reduction to practice, diligence, damages generally, marking specifically, and
`
`secondary considerations of non-obviousness. See id. at 5 ¶ 8 & n.8 (“Sable Networks, Inc. was
`
`formed … to further develop and commercialize the flow-based networking technologies
`
`developed by Dr. Roberts and Caspian Networks.”). Based on publicly available documents, the
`
`following witnesses are former Caspian employees located in NDCA. Their former positions of
`
`authority, job responsibilities, and duration at Caspian make them potential trial witnesses. See Ex.
`
`12.
`
`Name
`
`Former Role(s)
`
`Trial
`Contribution
`
`Current
`Location
`
`All issues.
`
`All issues.
`
`
`San Francisco,
`CA
`Mountain
`View, CA
`
`Within
`NDCA
`Subpoena
`Power
`Yes
`
`Within
`EDTX
`Subpoena
`Power
`No
`
`Yes
`
`
`No
`
`Ownership,
`Damages
`(Licensing).
`Conception,
`Reduction to
`Practice,
`Diligence,
`Infringement,
`Marking
`(Apeiro)
`Conception,
`Reduction to
`Practice,
`
`San Francisco,
`CA
`
`San Francisco,
`CA
`
`Yes
`
`No
`
`Yes
`
`No
`
`Newark, CA
`
`Yes
`
`No
`
`Brad
`Wurtz
`Geoffrey
`Mattson
`
`Douglas
`Luftman
`
`Riad
`Hartani
`
`“President and CEO”
`at Caspian
`“Vice President of
`Engineering” at
`Caspian and “Chief
`Technical Officer and
`Founder” at Sable.
`“Vice President,
`General Counsel and
`Secretary of Caspian”
`“Chief Architect at
`Caspian (acquired by
`Sable), building
`Internet backbone
`routers.”
`
`Raul
`Herrera
`
`“Senior Hardware
`Engineer” at Caspian
`for 8.5 years and
`
`DEFENDANTS’ MOTION TO TRANSFER – Page 8
`
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`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 13 of 21 PageID #: 405
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`Name
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`Former Role(s)
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`Trial
`Contribution
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`Current
`Location
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`Within
`NDCA
`Subpoena
`Power
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`Within
`EDTX
`Subpoena
`Power
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`“Senior Hardware
`Engineer” at Sable
`for 11 years
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`Diligence,
`Infringement,
`Marking (Apeiro
`+ S-Series).
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`In sum, the locus of the aforementioned inventors, prosecution counsel, and former Caspian
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`employees within NDCA heavily weighs in favor of transfer of this case to NDCA. In re
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`Genentech is on all-fours in this respect: “As noted above, there is a substantial number of
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`witnesses within the subpoena power of the Northern District of California and no witness who
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`can be compelled to appear in the Eastern District of Texas. The fact that the transferee venue is a
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`venue with usable subpoena power here weighs in favor of transfer, and not only slightly.” 566
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`F.3d at 1345.
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`3. Witnesses Can Attend Trial More Easily in NDCA
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`“While the Court must consider the convenience of both the party and non-party witnesses,
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`it is the convenience of non-party witnesses that is the more important factor and is accorded
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`greater weight in a transfer of venue analysis.” ContentGuard Holdings, Inc. v. Amazon.com, Inc.,
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`No. 2:13-CV-1112-JRG, 2015 WL 1885256, at *8 (E.D. Tex. Apr. 24, 2015). Further, “this factor
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`weighs heavily for transfer when far more third-party witnesses reside in the transferee venue than
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`the transferor venue.” Godo Kaisha, 2017 WL 4076052, at *4 (citing In re Apple, Inc., 581 F.
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`App’x 886, 889 (Fed. Cir. 2014)) (emphasis added).
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`“Because it generally becomes more inconvenient and costly for witnesses to attend trial
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`the further they are away from home, the Fifth Circuit established in Volkswagen I a ‘100–mile’
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`rule, which requires that ‘[w]hen the distance between an existing venue for trial of a matter and a
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`proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses
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`DEFENDANTS’ MOTION TO TRANSFER – Page 9
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`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 14 of 21 PageID #: 406
`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 14 of 21 PageID #: 406
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`increases in direct relationship to the additional distance to be traveled. ”’ In re TS Tech USA Corp. .
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`551 F.3d 1315, 1320 (Fed. Cir. 2008) (quoting Volkswagen 1, 371 F.3d at 204—05).
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`i.
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`EDTX Is Approximately 1,900 Miles Farther Than NDCA for
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`Inventors, Prosecution Counsel,
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`and Former Caspian
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`Employees
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`As set forth in Section 1113.2, most inventors, prosecution counsel, and relevant former
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`Caspian employees are located within NDCA, predominantly either within San Francisco or in
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`nearby cities within NDCA (such as San Jose, Mountain View, and Menlo Park). Conversely, the
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`distance between the federal courthouses in NDCA (San Francisco. San Jose, and Oakland) and
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`Texarkana, TX is approximately 1,900 miles. Accordingly, this factor heavily favors transfer.
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`ii. Relevant- Witnesses Are In Northern California
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`Based upon the infringement allegations in Sable’s Complaint.—
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`,||
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`— Ramachandran
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`Dec!” 11 8-—
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`—- Id-—
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`—. Id. 1] 9. In addition to Declarant Karthik Ramachandran, likely
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`relevant Northern California-based witnesses and their knowledge include:
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`DEFENDANTS’ MOTION TO TRANSFER — Page 10
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`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 15 of 21 PageID #: 407
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`In addition, Sable’s Complaint names 13 current and former HPE and Aruba employees in
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`support of its infringement allegations. See Complaint, Dkt. No. 1, at 23–24 ¶ 100 n.19; id. at 32
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`¶ 145 n.21; id. at 35 ¶ 165 n.22; id. at 38–39 ¶ 186 n.23. Of the 13 people identified, 10 are in
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`California, with seven located in NDCA. Chessman Decl. ¶ 22; Ex. 13. None are in Texas. Id.
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`Accordingly, even by Sable’s Complaint, most witnesses are located in California and in NDCA.
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`. See
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`Ramachandran Decl., ¶ 15. None of those employees have knowledge or information that would
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`make them potential trial witnesses. Id.
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`. Accordingly, NDCA is more convenient for
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`Defendants’ witnesses.
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`iii.
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`Relevant Sable Witnesses Are In NDCA
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`Given that Sable is based in NDCA, it is unsurprising that relevant Sable witnesses appear
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`to live in or near its Santa Clara, CA headquarters. An important trial witness appears to be Mr.
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`Sanjay Oza, who is Sable’s registered corporate agent in California and has worked at Sable for
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`13 years. See Ex. 14 (listing Mr. Oza); Ex. 3 (most recent Sable filing confirming no change); Ex.
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`15 (showing years). Before that, he worked for Caspian for six years. See Ex. 15. As the
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`“Engineering Director” at Sable since November 2006, Mr. Oza describes his own extensive role
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`DEFENDANTS’ MOTION TO TRANSFER – Page 11
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`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 16 of 21 PageID #: 408
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`managing “Hardware Projects” and “Software Projects” related to “routing,” “network
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`infrastructure,” and a “hierarchical tunneling mechanism” used “to provide network partitioning.”
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`Id. Mr. Oza also “Create[s] and manage[s] yearly budget for the entire company operations” at
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`Sable. Id. Mr. Oza’s public statements reflect that Sable has “10–12 full time engineers” and “6–
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`8 contractors.” Id,. Consistent with that description, public indexes on LinkedIn identify 14 Sable
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`employees, including eight located in the United States, seven located in the San Francisco Bay
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`Area, and none located in Texas. See Ex. 16–17. The remaining employees located in India, Korea,
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`Saudi Arabia, and Japan do not materially alter the transfer analysis. Cf. Ex. 16. Accordingly,
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`NDCA appears to be more convenient for Sable’s witnesses.
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`4.
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`Other Practical Considerations Do Not Weigh Against Transfer
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`Co-pending cases in this District do not support transfer for at least three reasons. First,
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`defendants in each co-pending case in this District have moved to transfer to NDCA under § 1404.
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`Parus Holdings Inc. v. LG Elecs. Inc., 2020 WL 4905809, at *7 (W.D. Tex. Aug. 20, 2020)
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`(finding “the presence of co-pending litigation is neutral” because “the Court must also consider
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`the presence of co-pending motions to transfer”). Second, the sole fact of co-pending cases cannot
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`defeat transfer. In re Google, 2017 WL 977038, at *2 (rejecting “the mere co-pendency of related
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`suits in a particular district” as adequate basis to deny transfer where the defendant “has a strong
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`presence in the transferee district” and no other factors favor retention). Third, this case is in its
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`early stages. Parus, 2020 WL 4905809, at *7 (“[A]ny increase in judicial economy from the
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`Court’s experience in these early stages of litigation is likely to be limited.”).
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`C.
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`The Public Interest Factors Favor Transfer
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`Three of the four public interest factors favor transfer because of the threshold issues of
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`California law are bound up in Sable’s patent claims. The final factor—time to trial—is neutral.
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`DEFENDANTS’ MOTION TO TRANSFER – Page 12
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`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 17 of 21 PageID #: 409
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`1.
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`Time to Trial Is Neutral
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`While time to trial is a factor in the transfer analysis, “speed … should not alone outweigh
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`all [other] factors.” In re Genentech, 566 F.3d at 1347. Here, this factor is neutral. For cases that
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`proceed to trial, NDCA has a comparable median time to trial. According to Docket Navigator,
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`the all-time median time to trial in patent cases in NDCA has been 875 days compared with 878
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`days in EDTX. See Ex. 18. For patent cases with trials conducted in 2019, the median time to trial
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`in NDCA was 613 days compared with 712 days in EDTX. See Ex. 19.
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`2.
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`Localized Interests Strongly Favor Transfer to NDCA
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`A forum has a “strong” local interest when a “cause of action calls into question the work
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`and reputation of several individuals residing in or near that district.” In re Hoffmann-La Roche
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`Inc., 587 F.3d 1333, 1336 (Fed. Cir. 2009). Accordingly, this factor “strongly favors transfer” if
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`“[t]he company asserting harm and many of the companies alleged to cause that harm are all
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`residents of that [transferee] district, as are the inventor and patent prosecuting attorneys whose
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`work may be questioned at trial.” In re Acer Am., 626 F.3d at 1256; accord Godo Kaisha, 2017
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`WL 4076052, at *5 (explaining that “this factor should be weighed in [the transferee] venue’s
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`favor” when both plaintiffs and defendants “are all residents of that district”). In this case, NDCA
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`has all four of the relevant local interests identified by In re Acer. First, all parties are
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`headquartered in California. Second,
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`Sable’s current and former employees who worked on allegedly patent-practicing products, like
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`the Apeiro, also appear to be located in NDCA. Third, seven of nine living inventors are in NDCA.
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`Fourth, patent prosecution counsel is headquartered in NDCA. Conversely, EDTX presents no
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`comparable local interest. Accordingly, this factor strongly favors transfer.
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`DEFENDANTS’ MOTION TO TRANSFER – Page 13
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`Case 5:20-cv-00120-RWS Document 30 Filed 10/01/20 Page 18 of 21 PageID #: 410
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`3.
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`The Third and Fourth Factors Favor Transfer Because of California
`Contract Law Issues Related to Defendants’ Standing Defense
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`The third and fourth factors favor transfer. Defendants’ affirmative defense that