Case 6:20-cv-00804-ADA Document 35 Filed 01/25/21 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`EXPRESS MOBILE, INC.,
`
`Plaintiff,
`
`Civil Action No. 6:20-cv-00804-ADA
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`DEFENDANT GOOGLE LLC’S OPPOSED MOTION TO TRANSFER VENUE
`TO THE NORTHERN DISTRICT OF CALIFORNIA
`
`Page 1 of 22
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`GOOGLE EXHIBIT 1037
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`

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`Case 6:20-cv-00804-ADA Document 35 Filed 01/25/21 Page 2 of 22
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`
`
`TABLE OF CONTENTS
`
`Pages
`
`INTRODUCTION ...........................................................................................................................1
`
`I.
`
`BACKGROUND .................................................................................................................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Judge Seeborg Has and Will Continue to Extensively Analyze the
`Asserted Patents. ......................................................................................................2
`
`Google’s Witnesses and Documents Are Not in WDTX.........................................3
`
`Plaintiff Express Mobile Is Based in NDCA and Has No Ties to WDTX. .............4
`
`The Majority of Relevant Third-Party Witnesses Are Located in or Near
`NDCA. .....................................................................................................................4
`
`II.
`
`LEGAL STANDARD ..........................................................................................................6
`
`III.
`
`THIS CASE COULD HAVE BEEN FILED IN NDCA. ....................................................7
`
`IV.
`
`NDCA IS CLEARLY MORE CONVENIENT THAN WDTX. .........................................7
`
`A.
`
`The Conservation of Judicial Resources Weighs Heavily in Favor of
`Transfer. ...................................................................................................................7
`
`B.
`
`The Other Private Interest Factors Also Favor Transfer. .......................................10
`
`1.
`
`2.
`
`3.
`
`Cost of Attendance for Willing Witnesses Favors Transfer. .....................10
`
`Relative Ease of Access to Sources of Proof Favors Transfer. ..................11
`
`Availability of Compulsory Process to Secure the Attendance of
`Witnesses Heavily Favors Transfer. ..........................................................12
`
`C.
`
`The Public Interest Factors Also Favor Transfer. ..................................................13
`
`1.
`
`2.
`
`3.
`
`Administrative Difficulties Flowing from Court Congestion Are
`Neutral........................................................................................................13
`
`Local Interest Favors Transfer. ..................................................................14
`
`The Courts’ Familiarity with the Law and the Avoidance of
`Conflicts Concerning the Application of Foreign Law Factors
`Favor Transfer. ...........................................................................................15
`
`V.
`
`CONCLUSION ..................................................................................................................15
`
`
`
`i
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`Page 2 of 22
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`Case 6:20-cv-00804-ADA Document 35 Filed 01/25/21 Page 3 of 22
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`TABLE OF AUTHORITIES
`
`Pages
`
`
`
`CASES
`
`Affinity Labs of Texas, LLC v. Samsung Elecs. Co., Ltd.,
`No. 6:13-cv-364, 2014 WL 12570501 (W.D. Tex. June 11, 2014) .............................. 9, 14
`
`Aventis Pharm Inc. v. Teva Pharm. USA Inc.,
`No. 6-469, 2007 WL 2823296 (E.D. Tex. Sept. 27, 2007) ................................................. 8
`
`Datascape Ltd. v. Dell Techs., Inc.,
`No. 6:19-CV-00129-ADA, 2019 WL 4254069 (W.D. Tex. June 7, 2019) ...................... 15
`
`DataTreasury Corp. v. First Data Corp.,
`243 F. Supp. 2d 591 (N.D. Tex. 2003) ............................................................................... 8
`
`Evolutionary Intelligence, LLC v. Apple, Inc.,
`No. 6:12-CV-00783, 2013 WL 8360309 (E.D. Tex. Aug. 27, 2013) ............................... 14
`
`Express Mobile, Inc. v. Code & Theory LLC, No. 18-cv-04679-RS .............................................. 2
`
`Express Mobile, Inc. v. Facebook Inc.,
`6:20-cv-00803-ADA (filed Jan. 5, 2021) ............................................................................ 9
`
`Express Mobile, Inc. v. Pantheon Sys., Inc.,
` Case No. 18-cv-04688-RS, 2019 WL 477639 (N.D. Cal. Jan. 29, 2019) .......................... 2
`
`Express Mobile, Inc. v. Svanaco, Inc.,
`No. 2:17-cv-00130-JRG-RSP, 2018 WL 746472 (E.D. Tex. Feb. 7, 2018) ....................... 1
`
`Express Mobile, Inc. v. Wix.com, Ltd. et al.,
`No. 3:19-cv-06559-RS (N.D. Cal. Oct. 11, 2019) .............................................................. 3
`
`Front Row Techs., LLC v. MLB Advanced Media, L.P.,
`No. 12-1639, 2012 WL 12044383 (N.D. Tex. Dec. 17, 2012) ........................................... 8
`
`Hammond Dev. Int’l, Inc. v. Amazon.com, Inc.,
`No. 6:19-cv-00355-ADA, 2020 WL 6136783 (W.D. Tex. Mar. 30, 2020) ...................... 11
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010), as amended (Jan. 13, 2011)........................................... 14
`
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) ....................................................................... 10, 13, 14
`
`In re Apple Inc.,
`818 F. App’x 1001 (Fed. Cir. June 16, 2020) ..................................................................... 7
`
`
`
`iii
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`
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)....................................................................... 10, 11, 14, 15
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ................................................................................... 13
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)................................................................................... 10, 11
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)......................................................................................... 15
`
`In re HP Inc.,
`826 F. App’x 899 (Fed. Cir. 2020) ................................................................................... 14
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................... 6, 12
`
`In re Rembrandt Techs. LP Patent Litig.,
`899 F.3d 1254 (Fed. Cir. 2018)........................................................................................... 5
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014)..................................................................................... 6, 10
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ............................................................................................ 10
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ..................................................................................... passim
`
`In re Zimmer Holdings Inc.,
`609 F.3d 1378 (Fed. Cir. 2010)......................................................................................... 15
`
`InMotion Imagery Techs., LLC v. Imation Corp.,
`No. 2:12-CV-298-JRG, 2013 WL 1279055 (E.D. Tex. Mar. 26, 2013) ........................... 14
`
`Jackson v. Intel Corp.,
`No. 2:08-cv-154, 2009 WL 749305 (E.D. Tex. Mar. 19, 2009) ......................................... 8
`
`O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc.,
`No. 2:04-cv-359, 2006 WL 887391 (E.D. Tex. Mar. 28, 2006) ......................................... 8
`
`Regents of the Univ. of Cal. v. Eli Lilly & Co.,
`119 F.3d 1559 (Fed. Cir. 1997)........................................................................................... 6
`
`Shopify (USA), Inc. v. Express Mobile, Inc.,
`No. 19-MC-80251-TSH, 2019 WL 5893235 (N.D. Cal. Nov. 12, 2019) ..................... 5, 13
`
`iv
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`
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`Shopify Inc. v. Express Mobile, Inc.,
`No. 19-cv-439-RGA, 2020 WL 3432531 (D. Del. June 23, 2020)..................................... 1
`
`Therasense, Inc. v. Becton, Dickinson & Co.,
`649 F.3d 1276 (Fed. Cir. 2011)........................................................................................... 5
`
`Uniloc USA Inc. v. Box, Inc.,
`No. 1:17-cv-754-LY, 2018 WL 2729202 (W.D. Tex. June 6, 2018) ................................. 7
`
`VLSI Tech. LLC v. Intel Corp.,
`No. 6:19-CV-00254-ADA, 2019 WL 8013949 (W.D. Tex. Oct. 7, 2019) ....................... 10
`
`X.Commerce, Inc. v. Express Mobile, Inc.,
`No. 17-CV-02605-RS, 2018 WL 10704439 (N.D. Cal. Sept. 12, 2018) ............................ 2
`
`STATUTES
`
`28 U.S.C. § 1400(b) ........................................................................................................................ 7
`
`28 U.S.C. § 1404(a) .............................................................................................................. 1, 6, 10
`
`RULES
`
`Fed. R. Civ. P. 45(c) ..................................................................................................................... 12
`
`
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`v
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`
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`INTRODUCTION
`
`Defendant Google LLC (“Google”) requests that the Court transfer this action to the
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`Northern District of California (NDCA) pursuant to 28 U.S.C. § 1404(a). Judicial economy makes
`
`this case uniquely appropriate for transfer to NDCA. Plaintiff Express Mobile, Inc. (“Express
`
`Mobile”) has asserted the same five patents1 in 28 different cases in NDCA—a first flight of cases
`
`in 2017–2018, a second flight in 2019, a third flight in September 2020, and, after filing this case
`
`in WDTX, a fourth flight in November/December 2020. The Honorable Richard Seeborg of
`
`NDCA has presided over 27 of those cases for over 4 years—holding multiple conferences,
`
`resolving motions, and construing the claim terms. In five decisions, NDCA has analyzed the
`
`asserted claims and made numerous factual and legal determinations.2 Indeed, in one case
`
`(X.Commerce), Judge Seeborg construed the claims in 2018, received motions for summary
`
`judgment and to strike expert testimony in December 2020, and scheduled trial for June 2021.
`
`And in another (Wix.com), Judge Seeborg will preside over a claim construction hearing in March
`
`2021. Thus, Judge Seeborg is already familiar with relevant issues. Transferring this case to
`
`NDCA, where it likely would be assigned to Judge Seeborg because he is presiding over nine other
`
`pending cases involving the same asserted patents, would conserve judicial resources and avoid
`
`inconsistent results.
`
`
`1 U.S. Patent Nos. 6,546,397; 7,594,168; 9,063,755; 9,471,287; and 9,928,044 (together, the
`“Asserted Patents”).
`2 Other courts have also handled substantive aspects of these Express Mobile cases. See, e.g.,
`Express Mobile, Inc. v. Svanaco, Inc., No. 2:17-cv-00130-JRG-RSP, 2018 WL 746472 (E.D. Tex.
`Feb. 7, 2018) (construing terms in the ’397 and ’168 patents); Shopify Inc. v. Express Mobile, Inc.,
`No. 19-cv-439-RGA, 2020 WL 3432531 (D. Del. June 23, 2020) (construing terms in all five
`Asserted Patents). But as explained in this motion, NDCA has done so most frequently—and,
`given the sheer number (over two dozen cases) that Express Mobile has filed in that District both
`historically and very recently, NDCA will continue to have significant insight and familiarity with
`the same issues in dispute in this case.
`
`1
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`
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`In addition, both Google and Express Mobile have significant ties to NDCA. Google has
`
`been headquartered in NDCA since its founding in 1998. The Google employees responsible for
`
`the accused functionalities3 are in NDCA or New York; none are in WDTX. The first named
`
`inventor (who is also Express Mobile’s founder, current CTO, and former CEO) also resides in
`
`NDCA and has represented in other contexts that he would have difficulty traveling from there.
`
`Crucially, most known third-party witnesses with relevant information are also located in NDCA.
`
`And Express Mobile cannot claim any burden trying this case in NDCA—to the contrary, it chose
`
`to file 28 lawsuits there, including all eight of its most recent cases.
`
`By contrast, this case has no relevant connection to WDTX. Express Mobile has no offices
`
`or employees in, or ties to, this District. Likewise, Google is not aware of any employees in WDTX
`
`that are responsible for the accused functionalities. Nor are any known third-party witnesses in
`
`WDTX. Under these circumstances, NDCA is clearly more convenient.
`
`I.
`
`BACKGROUND
`
`A.
`
`Judge Seeborg Has and Will Continue to Extensively Analyze the
`Asserted Patents.
`
`In 2018, Judge Seeborg of NDCA construed eleven terms of the ’397 and ’168 Asserted
`
`Patents. X.Commerce, Inc. v. Express Mobile, Inc., No. 17-CV-02605-RS, 2018 WL 10704439
`
`(N.D. Cal. Sept. 12, 2018). (Chen Decl. ¶ 5.) In that case, Judge Seeborg also received motions
`
`for summary judgment and to strike expert testimony in December 2020, and scheduled trial for
`
`June 2021. (Id.) In January 2019, Judge Seeborg evaluated the ’397 and ’168 patents’ eligibility
`
`under §101. (Id. ¶ 6); Express Mobile, Inc. v. Code & Theory LLC, No. 18-cv-04679-RS, Express
`
`Mobile, Inc. v. Pantheon Sys., Inc., Case No. 18-cv-04688-RS, 2019 WL 477639 (N.D. Cal. Jan.
`
`29, 2019). In Express Mobile, Inc. v. Wix.com, Ltd. et al., No. 3:19-cv-06559-RS (N.D. Cal. Oct.
`
`
`3 The accused functionalities are part of Google Docs, Google Slides, and Google Ads.
`
`2
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`
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`11, 2019), which involves the same five Asserted Patents, Judge Seeborg has held two case
`
`management conferences and will hold a claim construction hearing in March 2021. (Chen Decl.
`
`¶ 8.)
`
`Judge Seeborg of NDCA is presiding over nine active litigations involving Express Mobile
`
`and the Asserted Patents (id. ¶ 13) and Express Mobile itself has indicated that the new cases filed
`
`in September, November, and December 2020 are related (1) to each other and (2) to the earlier
`
`Express Mobile cases (id. ¶ 10). In one of those cases, Microsoft, which was filed the same day
`
`as this case, Judge Seeborg has already held a case management conference and set deadlines,
`
`including a claim construction hearing in June 2021. (Id. ¶ 11.) For the cases filed in
`
`November/December 2020 (after this case was filed), Judge Seeborg has already set case
`
`management conferences for February/March 2021. (Id. ¶ 12.)
`
`B.
`
`Google’s Witnesses and Documents Are Not in WDTX.
`
`Express Mobile alleges that certain functionalities of Google Docs, Google Slides, and
`
`Google Ads infringe the five Asserted Patents. (See Dkt. No. 32 (“Am. Compl.”) ¶¶ 53-61, 68-
`
`83, 89-105, 112-125, 132-143.) Google’s Mountain View, California headquarters4—the strategic
`
`center of Google’s business—is located in NDCA, and has been since its founding in 1998. (See
`
`Declaration of Andre Golueke in Support of Motion to Transfer (“Golueke Decl.”) ¶¶ 2, 3.)
`
`Google’s Mountain View headquarters is its largest location of U.S. employees. (Id. ¶ 3.) The
`
`majority of Google’s U.S. employees work in various offices in NDCA. (Id.) Google has no
`
`offices in the Waco Division of WDTX. (See Chen Decl. ¶ 15.) Although Google has an office
`
`in Austin, Texas, it houses only a very small fraction of Google’s U.S. employees, and Google has
`
`not identified any employees in Texas who have worked on the design and development of the
`
`
`4 Google’s Mountain View headquarters includes offices in neighboring Sunnyvale, California
`(collectively “Mountain View”). (Golueke Decl. ¶ 3.)
`
`3
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`Case 6:20-cv-00804-ADA Document 35 Filed 01/25/21 Page 9 of 22
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`
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`accused functionalities. (Golueke Decl. ¶ 5.) For Google Ads and Google Docs/Slides, the most
`
`likely witnesses responsible for the accused functionalities are based in the San Francisco Bay
`
`Area, California, and New York City, respectively. (Golueke Decl. ¶¶ 5.ii, 5.i.)
`
`C.
`
`Plaintiff Express Mobile Is Based in NDCA and Has No Ties to WDTX.
`
`Express Mobile is a Delaware corporation with a primary place of business in NDCA.
`
`(Am. Compl. ¶ 2; Chen Decl. ¶ 19.) Specifically, Express Mobile is a non-practicing entity based
`
`in Novato, California. (See Am. Compl. ¶ 2; Chen Decl. ¶ 19, 21; see also id. ¶ 20 (forfeiture of
`
`Express Mobile’s registration in Texas)). And in NDCA, Express Mobile has ten active litigations
`
`involving the Asserted Patents.5 (Id. ¶ 13.) Express Mobile provides no indication that it has any
`
`connection to WDTX, nor that it is aware of any evidence in this District. Express Mobile’s current
`
`employees, including Steven Rempell6 (founder, named inventor on all five asserted patents,
`
`current CTO, and former CEO), Jeff Samuelson (CEO and Director), and Cheryl Kudelka (CFO),
`
`reside in NDCA. (Id. ¶¶ 21-24, 40-41.). None of the members listed on the Express Mobile
`
`website appear to reside in WDTX, nor is Google aware of any potential Express Mobile witnesses
`
`or documents located in WDTX. (Id. ¶¶ 21-29, 45.) And Mr. Rempell has stated that, due to his
`
`age and a prior accident, long distance travel—for example, from his NDCA residence to other
`
`states—is difficult for him. (Id. ¶ 42.)
`
`D.
`
`The Majority of Relevant Third-Party Witnesses Are Located in or
`Near NDCA.
`
`Third parties relevant to this lawsuit are located in NDCA, not WDTX. These NDCA-
`
`based third-party witnesses can be compelled to testify at trial in NDCA, but not here.
`
`
`5 Express Mobile has also asserted the same patents in the Eastern District of Texas, but all of
`those actions have been dismissed. (Chen Decl. ¶ 14.)
`6 Each asserted patent lists Steven H. Rempell as the first inventor and identifies Mr. Rempell as a
`resident of Novato, California, which is in NDCA. (Dkt. Nos. 32-1, 32-2, 32-6, 32-7, 32-8.)
`
`4
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`First, two of the named inventors are now third parties who reside in NDCA: Ken Brown
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`and Dave Chrobak. (Id. ¶¶ 35-37.) Mr. Brown is a named inventor on three of the asserted patents,
`
`and was Express Mobile’s VP of Product Development from 2005 to 2011. (Id. ¶¶ 35-36.) The
`
`same three patents also name another inventor, Mr. Chrobak, who was the lead software engineer
`
`at Express Mobile from 2007 to 2008. (Id. ¶¶ 35, 37.) Mr. Brown and Mr. Chrobak will likely
`
`have pertinent testimony about the conception of the claimed invention, the meaning of the
`
`asserted claims, the technology behind the patents, and what was invented and claimed. (Id. ¶ 44.)
`
`
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`Second, Express Mobile’s former attorneys, who have information relevant to whether the
`
`’397 patent is unenforceable due to inequitable conduct, are also in NDCA. These attorneys, James
`
`Drapinski and Steven Vosen, are based in Menlo Park and Alameda, California, respectively. (See
`
`id. at 28-29, 44.) They were responsible for the lapse of the maintenance fee of the ’397 patent
`
`and subsequent revival, and were subpoenaed by Shopify to testify on these issues. See Shopify
`
`(USA), Inc. v. Express Mobile, Inc., No. 19-MC-80251-TSH, 2019 WL 5893235 (N.D. Cal. Nov.
`
`12, 2019). Their testimony is relevant to Google’s potential defense that the patents may be
`
`unenforceable due to inequitable conduct.7 And, after considering Mr. Vosen’s testimony in
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`Shopify, NDCA found that Mr. Drapinksi may also have relevant information. Id.
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`Third, DSS, which has an NDCA office, has taken an ownership interest in Express Mobile
`
`and has licensed Express Mobile’s technology. (See Chen Decl. ¶¶ 30-33.) Indeed, the
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`relationship between DSS and Express Mobile will be important to explore at trial because DSS
`
`
`7 A patent is unenforceable if the owner engages in inequitable conduct by improperly certifying
`to the Patent Office that the failure to pay maintenance fee was unintentional. Shopify (USA), Inc.
`v. Express Mobile, Inc., No. 19-MC-80251-TSH, 2019 WL 5893235, at *2 (N.D. Cal. Nov. 12,
`2019); see In re Rembrandt Techs. LP Patent Litig., 899 F.3d 1254, 1272-75 (Fed. Cir. 2018);
`Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011) (“Inequitable
`conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a
`patent.”).
`
`5
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`
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`was involved in at least one of Express Mobile’s patent infringement actions—against the Alibaba
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`Group. (See id. ¶ 34.)
`
`Fourth, Akira Technologies, Inc. (“Akira”), which is also based in NDCA, is the assignee
`
`on the face of the ’168 patent and was the second assignee of the ’397 patent. (See id. ¶¶ 47-48).
`
`If Akira still has evidence relevant to the conception and ownership of the patents, it would likely
`
`be in NDCA.
`
`Finally, Google is not currently aware of any relevant third-party witnesses in WDTX.
`
`II.
`
`LEGAL STANDARD
`
`To evaluate transfer under § 1404(a), courts first consider “whether a civil action ‘might
`
`have been brought’ in the destination venue.” In re Volkswagen of Am., Inc., 545 F.3d 304, 312
`
`(5th Cir. 2008) (“Volkswagen II”) (citation omitted). If so, the court weighs eight private and
`
`public interest factors:
`
`(1) the relative ease of access to sources of proof; (2) the availability of compulsory
`process to secure the attendance of witnesses; (3) the cost of attendance for willing
`witnesses; and (4) all other practical problems that make trial of a case easy,
`expeditious and inexpensive. . . . [5] the administrative difficulties flowing from
`court congestion; [6] the local interest in having localized interest decided at home;
`[7] the familiarity of the forum with the law that will govern the case; and [8] the
`avoidance of unnecessary problems of conflict of laws [or in] the application of
`foreign law.
`
`Id. at 315 (citation omitted). Where the interests of judicial economy strongly favor transfer, the
`
`Federal Circuit has held that other factors may be “afforded little or no weight.” See Regents of
`
`the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed. Cir. 1997). The transferee forum
`
`is “clearly more convenient” where most potential witnesses and relevant evidence are
`
`concentrated in the transferee district. See In re Nintendo Co., 589 F.3d 1194, 1197 (Fed. Cir.
`
`2009). The presence of witnesses and evidence outside both fora does not factor into the analysis.
`
`See In re Toyota Motor Corp., 747 F.3d 1338, 1340 (Fed. Cir. 2014). Further, a plaintiff’s choice
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`6
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`
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`of venue is not an independent factor. Volkswagen II, 545 F.3d at 314 n.10. Nor should courts
`
`draw reasonable inferences or resolve factual conflicts in favor of the plaintiff because “[t]he
`
`plaintiff’s choice of forum is already protected by the elevated ‘clearly more convenient’
`
`standard.” In re Apple Inc., 818 F. App’x 1001, 1003 (Fed. Cir. June 16, 2020).
`
`III. THIS CASE COULD HAVE BEEN FILED IN NDCA.
`
`The threshold requirement for a transfer of venue is met here: Express Mobile could have
`
`brought this action in NDCA, where Google is headquartered and from where it offers the
`
`instrumentalities identified in Express Mobile’s infringement allegations. See 28 U.S.C. § 1400(b).
`
`IV. NDCA IS CLEARLY MORE CONVENIENT THAN WDTX.
`
`Analyzing the transfer factors demonstrates that litigating this case in NDCA would be
`
`clearly more convenient than litigating in WDTX: seven factors favor transfer, one is neutral, and
`
`no factors support litigating in WDTX. Under these facts, transfer is warranted.
`
`Factor
`All other practical problems that make trial of a case easy,
`expeditious, and inexpensive
`Cost of attendance for willing witnesses
`Relative ease of access to sources of proof
`Availability of the compulsory process
`Administrative difficulties flowing from court congestion
`Local interest in having localized interests decided at home
`Familiarity of the forum with the law that will govern the case
`Avoidance of unnecessary problems of conflict of laws
`
`More Convenient Venue
`NDCA (§IV.A)
`
`NDCA (§IV.B.1)
`NDCA (§IV.B.2)
`NDCA (§IV.B.3)
`Neutral (§IV.C.1)
`NDCA (§IV.C.2)
`NDCA (§IV.C.3)
`NDCA (§IV.C.3)
`
`
`
`A.
`
`The Conservation of Judicial Resources Weighs Heavily in Favor of
`Transfer.
`
`This private interest factor considers any practical problems, with a focus on
`
`“considerations of judicial economy and the existence of co-pending litigation,” Uniloc USA Inc.
`
`v. Box, Inc., No. 1:17-cv-754-LY, 2018 WL 2729202, at *4 (W.D. Tex. June 6, 2018). “Transfer
`
`is particularly appropriate where related cases involving the same issues are pending in another
`
`7
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`court.” DataTreasury Corp. v. First Data Corp., 243 F. Supp. 2d 591, 593 (N.D. Tex. 2003).
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`Indeed, courts in this Circuit have repeatedly recognized the importance of previously-filed
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`litigation of related patents in other districts in transferring cases to those districts.8
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`The conservation of judicial resources weighs heavily in favor of transferring this case to
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`NDCA. If transferred to NDCA, this case likely would be assigned to Judge Seeborg, who is
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`currently presiding over nine related cases.9 See N.D. Cal. Local Rule 3-12 on Related Cases.
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`Because Judge Seeborg has extensive familiarity with this patent family, as well as their underlying
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`technology and the issues involved, transfer would ensure that overlapping issues, such as the
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`validity and proper scope of the claims, are heard by the same judge that presided over earlier cases
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`involving the same patent family. See supra Section I.A; Jackson v. Intel Corp., No. 2:08-cv-154,
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`2009 WL 749305, at *4 (E.D. Tex. Mar. 19, 2009) (“[T]he knowledge and experience that the
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`judges of that district have developed with respect to the [asserted patent] cannot easily be
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`replicated in this district without a substantial duplication of effort.”). Transferring this case to
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`NDCA would avoid increased expense, redundant efforts, and potential inconsistencies that could
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`result from proceeding with this case here.
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`8 See, e.g., Front Row Techs., LLC v. MLB Advanced Media, L.P., No. 12-1639, 2012 WL
`12044383, at *5 (N.D. Tex. Dec. 17, 2012) (holding that overall interest of justice supported
`transfer and expressing concern about potential inefficiencies, inconsistencies, and increased
`expense that could result from piecemeal litigation where four related patents were already being
`litigated in the proposed transferee district); O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc.,
`No. 2:04-cv-359, 2006 WL 887391 (E.D. Tex. Mar. 28, 2006) (finding that the interests of justice
`support transfer where the first-filed suit involving a related patent was pending in N.D. Cal.);
`Aventis Pharm Inc. v. Teva Pharm. USA Inc., No. 6-469, 2007 WL 2823296, at *2 (E.D. Tex. Sept.
`27, 2007) (transferring case where plaintiff’s prior suits accusing related patents were pending in
`another district where the judge had “extensive familiarity” with the parties, accused product,
`theories of infringement, and prior art references and because it appeared plaintiff filed suit in a
`different forum because suit presented same issues that were unsuccessfully presented before prior
`judge).
`9 Indeed, Judge Seeborg is presiding over six out of seven actions that Express Mobile recently
`filed, in accordance with NDCA Local Rule 3-12. See supra Section I.A.
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`8
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`Case 6:20-cv-00804-ADA Document 35 Filed 01/25/21 Page 14 of 22
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`Courts in this district have ordered transfer under similar circumstances. In Affinity Labs
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`of Texas, LLC v. Samsung Elecs. Co., Ltd., the Court transferred a case to NDCA, which had a
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`pending lawsuit on related patents and was familiar with the patents. No. 6:13-cv-364, 2014 WL
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`12570501, at *2 (W.D. Tex. June 11, 2014). Here, the facts favor transfer even more strongly
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`because the patents are not just related; they are the same patents in the pending NDCA lawsuits.
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`In Affinity Labs, the Court noted that the transfer “will reduce a waste of judicial resources, given
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`the similarities between the patents and accused products.” Id. at *8. Here, transfer is also
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`warranted. As in Affinity, the transferee district is more familiar with the Asserted Patents. Further,
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`NDCA is overseeing ten pending cases on the Asserted Patents. Thus, transfer is appropriate, as
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`“[a] single court overseeing [related] cases ‘would avoid wasteful duplication of effort by two
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`courts on essentially the same issues.’” Id. (citation omitted).
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`Although related cases are also pending in other districts including NDCA, Delaware, and
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`the Middle District of Florida, transferring this case to NDCA consolidates more of these related
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`cases in existing venues, and the facts here do not support transfer to Delaware or the Middle
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`District of Florida. As for the judicial resources of this Court, this case is still in its infancy and
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`has not yet required significant resources from this Court. The Court decided that no case
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`management conference was necessary, set a claim construction hearing for August 3, 2021 (two
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`months after the NDCA Microsoft claim construction hearing), and an estimated trial date for
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`September 12, 2022. Also, Facebook, one of the other defendants in this District, has also moved
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`to transfer to NDCA, so there may soon be fewer co-pending litigations in WDTX. See Express
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`Mobile, Inc. v. Facebook Inc., 6:20-cv-00803-ADA, Dkt. No. 25 (filed Jan. 5, 2021). Where the
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`interests of judicial economy so strongly favor transfer, the Federal Circuit has held that other
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`factors may be “afforded little or no weight.” See Eli Lilly, 119 F.3d at 1565. Therefore, the Court
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`9
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`Case 6:20-cv-00804-ADA Document 35 Filed 01/25/21 Page 15 of 22
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`may transfer solely on the basis of judicial economy here. To the extent the Court finds it necessary
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`to analyze the remaining factors, they are addressed in turn below.
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`B.
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`The Other Private Interest Factors Also Favor Transfer.
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`1.
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`Cost of Attendance for Willing Witnesses Favors Transfer.
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`This factor considers cost of attendance for willing party and non-party witnesses. In re
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`Genentech, Inc., 566 F.3d 1338, 1343–45 (Fed. Cir. 2009). When considering the convenience of
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`witnesses, “the relative convenience to key witnesses is accorded greater weight[.]” VLSI Tech.
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`LLC v. Intel Corp., No. 6:19-CV-00254-ADA, 2019 WL 8013949 at *4 (W.D. Tex. Oct. 7, 2019).
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`Courts in the Fifth Circuit apply the “100-mile” rule: “When the distance between an existing
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`venue for trial of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor
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`of inconvenience to witnesses increases in direct relationship to the additional distance to be
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`traveled.” In re Volkswagen AG, 371 F.3d 201, 204-05 (5th Cir. 2004). That said, “[t]he
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`comparison between the transferor and transferee forums is not altered by the presence of other
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`witnesses . . . in places outside both forums.” In re Toyota Motor Corp., 747 F.3d at 1340; see
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`also In re Adobe Inc., 823 F. App’x 929, 931-32 (Fed. Cir. 2020).10 And in Genentech, the Federal
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`Circuit—applying Fifth Circuit law—held that “the ‘100-mile’ rule should not be rigidly applied”
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`where “witnesses . . . will be required to travel a significant distance no matter where they testify.”
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`Genentech, 566 F.3d at 1344. Thus, witnesses traveling from the East Coast would be only
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`“slightly more inconvenienced by having to travel to California” than to Texas. Id. at 1348; see
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`also In re Apple Inc., 979 F.3d 1332, 1341 (Fed. Cir. 2020). This factor overwhelmingly favors
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`transfer to NDCA.
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`10 Pursuant to In re Toyota, Google employees who work on the accused functionalities in New
`York City do not factor into the transfer analysis. See 747 F.3d at 1340.
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`10
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`Case 6:20-cv-00804-ADA Document 35 Filed 01/25/21 Page 16 of 22
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`Google has not identified any employees who have worked on the design or development