Case 6:20-cv-00505-ADA Document 27 Filed 11/05/20 Page 1 of 21
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Civil Action No. 6:20-cv-00505
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`JURY TRIAL DEMANDED
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`
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`
`
`Plaintiff,
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`NEONODE SMARTPHONE LLC,
`
`
`v.
`
`
`APPLE INC.
`
`
`
`
`Defendant.
`
`
`
`
`
`DEFENDANT APPLE INC.’S MOTION TO
`TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
`
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2015 - Page 1
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`

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`Case 6:20-cv-00505-ADA Document 27 Filed 11/05/20 Page 2 of 21
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`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1
`I.
`II. STATEMENT OF FACTS ................................................................................................. 2
`A.
`Nature of this Case .................................................................................................. 2
`
`B.
`
`C.
`
`D.
`
`Apple’s Relevant Witnesses and Documents are Located in Northern California . 3
`
`Neonode is a Wyoming Company with No Connections to Texas ........................ 5
`
`Relevant Third Party Witnesses are Located in California ..................................... 5
`
`III. LEGAL STANDARD ......................................................................................................... 7
`IV. THE NORTHERN DISTRICT OF CALIFORNIA IS CLEARLY THE MORE
`CONVENIENT VENUE .................................................................................................... 8
`A.
`The Private Interest Factors Favor Transfer ........................................................... 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`Relative Ease of Access to Sources of Proof Strongly Favors Transfer ..... 8
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`Availability of Compulsory Process Strongly Favors Transfor ................ 10
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`Attendance of Willing Witnesses Strongly Favors Transfor .................... 11
`
`All Other Practical Problems .................................................................... 13
`
`B.
`
`The Public Interest Factors Favor Transfer .......................................................... 14
`
`Court Congestion Is, At Worst, Neutral.................................................... 14
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`Local Interests Strongly Favor Transfer ................................................... 15
`
`Familiarity with the Governing Law and Conflicts of Law Are Neutral .. 15
`
`1.
`
`2.
`
`3.
`
`
`
`
`
`i
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`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2015 - Page 2
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`Case 6:20-cv-00505-ADA Document 27 Filed 11/05/20 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`In re Acer America Corp.,
`626 F.3d 1252 (2010) ...............................................................................................................12
`
`In re Adobe Inc.,
`No. 2020-126, 2020 WL 4308164 (Fed. Cir. Jul. 28, 2020) ..........................................8, 10, 13
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) ...................................................................................................10
`
`In re: Apple Inc.,
`2020 WL 3249953 (Fed. Cir. 2020)...............................................................................7, 11, 12
`
`Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P.,
`No. 6:150cv00091, 2016 WL 6909479 (W.D. Tex. Jan. 28, 2016) .....................................7, 11
`
`Collaborative Agreements, LLC. v. Adobe Sys. Inc.,
`No. 1:14-cv-356, 2015 WL10818739 (W.D. Tex. Aug. 21, 2015) ...........................................9
`
`DataQuill, Ltd. v. Apple Inc.,
`No. 13-cv- 706, 2014 WL 2722201 (W.D. Tex. June 13, 2014) .........................................8, 15
`
`Datascape, Ltd. v. Dell Techs., Inc.,
`No. 6:19-cv-00129-ADA, 2019 WL 4254069 (W.D. Tex. June 7, 2019) .........................13, 15
`
`Gemalto S.A. v. CPI Card Grp. Inc.,
`No. 15-CA-0910, 2015 WL 10818740 (W.D. Tex. Dec. 16, 2015) ........................................10
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)........................................................................................ passim
`
`In re Google Inc.,
`2017 WL 977038 (Fed. Cir. Feb. 23, 2017).............................................................................11
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..........................................................................................10, 15
`
`In re HP Inc.,
`No. 2018-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) .............................................8, 12
`
`In re Morgan Stanley,
`417 F. App’x 947 (Fed. Cir. 2011) ..........................................................................................14
`
`ii
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`Parus Holdings Inc. v. LG Elecs Inc. and LG Elecs U.S.A. Inc.,
`No. 6:19-cv-432-ADA, Dkt. 161 (W.D. Tex. Aug. 20, 2020) .............................................8, 12
`
`Peak Completion Techs., Inc. v. I-TEC Well Solutions, LLC,
`No. A-13cv-086-LY, 2013 WL 12121002 (W.D. Tex. June 26, 2013)...................................13
`
`Polaris Innovations Ltd. v. Dell, Inc.,
`No. 16-cv-451, 2016 WL 7077069 (W.D. Tex. Dec. 5, 2016) ............................................9, 13
`
`In re TS Tech USA Corp.,
`551 F.3d. 1315 (Fed. Cir. 2008).....................................................................................7, 12, 15
`
`Uniloc USA Inc. v. Box, Inc.,
`No. 1:17-cv-754-LY, 21018 ..........................................................................................9, 13, 14
`
`Via Vadis, LLC v. Netgear, Inc.,
`No. 14-cv-809, 2015 WL 10818675 (W.D. Tex. July 30, 2015) .............................................13
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ...........................................................................................7, 8, 12
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .......................................................................................1, 7, 8, 12
`
`Wet Sounds, Inc. v. Audio Formz, LLC,
`No. 17-cv-141, 2017 WL 4547916 (W.D. Tex. Oct. 11, 2017) ...............................8, 10, 13, 15
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. 16-cv-00447, 2017 WL 5505340 ........................................................................................9
`
`Statutes
`
`28 U.S.C. § 1404(a) .....................................................................................................................2, 7
`
`Fed. R. Civ. P. 45(c)(1)(A), (B) .....................................................................................................10
`
`
`
`iii
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`Google v. Neonode
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`I.
`
`INTRODUCTION
`
`This case involves a patent infringement dispute between a Wyoming holding company
`
`on the one hand and a California corporation on the other hand. None of the parties have a
`
`connection to Waco, Texas. As such, under a straightforward application of the Volkswagen
`
`factors, this case should be transferred to the Northern District of California because it is the
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`clearly more convenient venue. Indeed, this case has numerous, direct connections to the
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`Northern District of California but none to Waco, or even to Texas as a whole. Most notably, on
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`the undisputedly most critical factor in the transfer analysis—the location of relevant
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`witnesses—there are numerous Apple, Neonode, and third-party witnesses in the Northern
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`District of California, and not a single one in Waco. In particular, all likely Apple 30(b)(6)
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`witnesses are based in the Northern District of California. And, while Apple’s investigation is
`
`continuing, the relevant Neonode Inc. employees and third-parties Apple has identified thus far
`
`are all located in the Northern District of California.
`
`Indeed, all of the key factors favor transfer and none favor keeping this case in Waco.
`
`For example:
`
` The plaintiff, Neonode Smartphone LLC, is a Wyoming limited liability company
`with no known connection Waco – or even to Texas, for that matter.
` Neonode Inc., the original assignee of the Asserted Patents, has its principal place
`of business in San Jose, California.
` Defendant Apple is headquartered in the Northern District of California – the
`proposed transferee forum.
` There are at least nine, key party witnesses in the transferee forum, and none are
`located in Texas.
` The presently-identified third-party witnesses are located in the transferee forum
`or abroad, and none are located in the Western District of Texas.
` The accused technology was developed in the Northern District of California, and
`the key sources of proof are therefore located in the transferee forum.
`
`1
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`By contrast, this case has no meaningful connection to the Western District of Texas.
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`Neither Neonode nor the sole inventor of its patents is located in the Western District of Texas.
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`Apple is not aware of any relevant, non-cumulative documents or anticipated Apple or Neonode
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`witnesses located in the Western District of Texas. And while Apple maintains offices in the
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`Western District of Texas, Apple is not aware of any employees located there who were involved
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`in the development, design, engineering, or marketing of the accused functionalities. Nor is
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`Apple aware of any relevant, non-cumulative documents or evidence located there.
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`By any measure, the Northern District of California is a more appropriate venue, and this
`
`case should be transferred for the convenience of the parties and in the interest of justice. For
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`these reasons and those discussed below, Apple respectfully requests that the Court transfer this
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`case to the Northern District of California pursuant to 28 U.S.C. § 1404(a).
`
`II.
`
`STATEMENT OF FACTS
`
`A.
`
`Nature of this Case
`
`Neonode filed this patent infringement suit against Apple on June 8, 2020. Compl. ¶ 1.
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`Neonode accuses Apple of infringing U.S. Patent Nos. 8,095,879 and 8,812,993 (the “patents-in-
`
`suit”). Compl. ¶¶ 3-4. Plaintiff served its infringement contentions on October 16, 2020,
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`adding additional detail to its initial allegations. Ex. A (Declaration of B. Chen), Ex. B
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`(Neonode Inv. Cont.). Neonode accuses all Apple iPhone X, XR, XS, XS Max, 11, 11 Pro and
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`11 Pro Max devices, and iPad Pro third and fourth generation devices utilizing the “Swipe to
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`Open” and “Control Bar” features (Complaint ¶¶ 38, 93; see also Ex. B at chart 2, p. 1, 6, chart
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`3, p. 1, 3) of infringing the ’993 and ’879 Patents (respectively). Neonode accuses (i) iPhone 11,
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`iPhone 11 Pro, iPhone 11 Pro Max, iPad (7th generation), and iPad Pro (5th generation) devices,
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`(ii) all iPhone XR, iPhone 8, iPhone 8 Plus, iPad Mini (5th generation), iPad Air (3rd generation)
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`devices sold in or after September 2019 with iOS 13 or iPadOS loaded onto the device, and (iii)
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`2
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`all Apple devices to which iOS 13 or iPadOS was downloaded from a server owned and/or
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`operated by or at the direction of Apple using the “QuickPath” feature of infringing the ’879
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`patent (Complaint ¶ 43; see also Ex. B at chart 1, fn. 1). And Neonode accuses the mobile
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`devices that include code for enabling swipe typing functionality including at least the following:
`
`“Apple iPhone 4s, iPhone 5, iPhone 5C, iPhone 5s, iPhone 6, iPhone 6 Plus, iPhone SE, iPhone
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`6s, iPhone 6s Plus, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X, iPhone XR,
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`iPhone XS, iPhone XS Max, iPhone 11, iPhone 11 Pro, iPhone 11 Pro Max, iPad Air 2, iPad Air
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`(3d generation), iPad Pro (1st, 2nd, 3rd, 4th generations), and Apple Watch using third-party and
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`Apple “Swipe-Typing Keyboard App Devices” of infringing the ’879 patent. Complaint ¶¶ 48,
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`49, 55; see also Ex. B at chart 1, fn. 2.
`
`B.
`
`Apple’s Relevant Witnesses and Documents are Located in Northern
`California
`
`The accused activities are centered in the Northern District of California (“N.D. Cal.”).
`
`Apple is a California corporation headquartered in Cupertino, California, which is in N.D. Cal.
`
`Ex. C (Declaration of Mark Rollins) ¶ 3. Apple’s management, primary research and
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`development, and marketing facilities are located in or near Santa Clara County, California,
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`including cities such as Cupertino and Sunnyvale, all of which are located in N.D. Cal. Id. ¶ 3.
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`As of November, 2020, Apple has more than 35,000 employees who work in or near its
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`Cupertino headquarters. Id.
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`Apple’s employees who are most knowledgeable about the design and development,
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`marketing, and financial matters relating to the accused functionalities are located in N.D. Cal.
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`Id. ¶¶ 7, 13. For example, Apple’s likely engineering witnesses include Nima Parivar,
`
`Mohammed Jisrawi, Shubham Kedia, and Patrick Demasco. These individuals work on various
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`aspects of Apple’s touch technology, including the Human Interface Device, User Interface, and
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`3
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`Keyboard software development teams within Apple. Id. ¶¶ 8-11. None of their team members
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`are located in the Western District of Texas (“W.D. Tex.”). Id. Apple’s employees who are
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`most knowledgeable about marketing, including Stephen Tonna (a Product Marketing Manager
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`in the OS Product Marketing Group), are located in N.D. Cal. Id. ¶ 15. Apple’s employees who
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`are most knowledgeable about licensing, including Jayna Whitt, are primarily located in N.D.
`
`Cal. Id. ¶ 16. And Mark Rollins, Senior Finance Manager at Apple, is located in N.D. Cal.
`
`Id. ¶ 17. Put simply, none of the Apple employees with marketing, licensing, or financial
`
`information relevant to this case are located in W.D. Tex. Id. ¶¶ 15-17.
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`The electronic and paper records for the accused functionalities are predominantly
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`located in N.D. Cal. Id. ¶¶ 7, 13, 17. The design and development of the relevant functionalities
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`occurred predominantly in N.D. Cal. Id. ¶¶ 8-11. And the financial and marketing data relating
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`to the accused functionalities is located in N.D. Cal. Id. ¶¶ 15, 17. Apple has not identified any
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`relevant, non-cumulative documents or anticipated Apple witnesses in W.D. Tex. Id. ¶¶ 7-17.
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`Additionally, Apple individuals with relevant knowledge regarding the prior art are
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`located in N.D. Cal. For example, Mr. Randal Marsden is familiar with touchscreen keyboards
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`dating back to at least 2002 as a result of his work with Swype Inc. Id. ¶ 12. Mr. Marsden was a
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`co-founder of the company that ultimately became Swype Inc., and which developed a virtual
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`swipe keyboard for touchscreen smartphones and tablets. Id. Mr. Marsden is now employed by
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`Apple, and his primary workplace is in N.D. Cal. Id. Mr. Marsden’s knowledge regarding
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`Swype Inc. is additionally important because Swype Inc. and Nuance Communications (who
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`acquired Swype Inc. in 2011), previously offered one of the third-party Apps accused of
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`infringing the patents-in-suit. See Compl. ¶¶ 33-35.
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`4
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`Google v. Neonode
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`Apple is not aware of any relevant, non-cumulative documents related to the claims
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`asserted as to Apple in this case that are located in W.D. Tex. Id. ¶ 7-17. Apple is not aware of
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`any employees with relevant knowledge concerning the claims asserted against Apple in this
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`case, or any other aspect of the subject matter of this litigation, who work in W.D. Tex. Id.
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`C.
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`Neonode is a Wyoming Company with No Connections to Texas
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`Neonode is a not an entity that designs, engineers, or manufactures products embodying
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`the patents-in-suit. Rather, Neonode is a patent holding company, created on April 22, 2020
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`(less than two months before this action was filed) whose only operations are its ongoing
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`attempts to license the patents-in-suit and related patents together with its parent company,
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`Aequitas Technologies, LLC. According to Neonode’s Complaint, Neonode “is a limited
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`liability company organized under the laws of the State of Wyoming with a place of business at
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`30 N. Gould St., Suite R, Sheridan, WY 82801.” Compl. ¶ 6. Neonode’s only listed organizer is
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`Registered Agents, Inc. Ex. A, Ex. D (Neonode Articles of Organization).
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`D.
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`Relevant Third Party Witnesses are Located in California
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`There are a number of potentially relevant third-parties, none of which are located in
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`W.D. Tex. According to Neonode Inc.’s website, “Neonode Smartphone LLC is a subsidiary of
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`Aequitas Technologies LLC (“Aequitas”) and is an independent third-party with whom Neonode
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`Inc. has certain profit sharing rights from monetization of these patents according to an
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`agreement entered into by Neonode Inc. and Aequitas Technologies LLC in 2019.” Ex. A; Ex E
`
`(Neonode Inc. Press Release). According to Aequitas’ website, the company is located in Irvine,
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`California. Ex. A, Ex. F (Aequitas Contact Us Webpage). Neonode Inc., which is the original
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`assignee of the patents-in-suit, is a Delaware corporation with its principal place of business in
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`San Jose, California, in N.D. Cal. Ex. A, Ex. G (Oct. 23, 2020 Hrg. Tr.) at 10:5-6.
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`5
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`As the sole inventor of the patents-in-suit, Magnus Goertz is highly relevant to this case
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`because of his unique knowledge of the invention story behind the patents-in-suit. Compl. ¶ 8.
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`Based on publicly available information, Mr. Goertz is located in Sweden. Ex. A, Ex. H
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`(LinkedIn Profile of Magnus Goertz); Ex I (’993 Patent). While not located in N.D. Cal., N.D.
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`Cal. is equally convenient for Mr. Goertz as Texas given that Mr. Goertz will be traveling
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`internationally regardless. Similarly, movement of documents from Sweden to northern
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`California is equally convenient as it is to Texas. And the patents were prosecuted by the Soquel
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`Group, which is “headquartered near Silicon Valley in California and serv[ing] the surrounding
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`area, including San Francisco, San Mateo and Santa Clara County, Santa Cruz County, and
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`Monterey County,” all of which are located in N.D. Cal. Ex. A, Ex. J (Soquel Group Website).
`
`The Complaint alleges that Apple infringes Neonode’s patents by offering for download
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`two third-party keyboard Apps (GBoard and Swype), as well as offering for sale devices that
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`support those Apps. See Compl. ¶¶ 54-67. GBoard is a swipe typing keyboard App offered by
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`Google, Inc. which is headquartered in Mountain View, California in N.D. Cal. Ex. A, Ex K
`
`(Google Locations Webpage). Swype is also a swipe typing keyboard App previously offered by
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`Nuance Communications (formerly Swype Inc.). Ex. A, Ex. L (Nuance Swype Webpage).
`
`Nuance Communications is based in Boston, Massachusetts, but has offices in Agoura Hills and
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`San Mateo, California, both in the Central District and Northern District of California,
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`respectively. Ex. A, Ex. M (Nuance “Where we work” Webpage).
`
`The Complaint also alleges that, Joseph Shain, a representative of Neonode Inc. spoke
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`with two employees at Apple regarding Neonode’s patent portfolio. Compl. ¶¶ 28-30. Mr.
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`Shain, who initiated contact with Apple and who is Neonode Inc.’s Vice President of Intellectual
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`Property, appears to be located in N.D. Cal. Ex. A, Ex. N (LinkedIn Profile of Joseph Shain).
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`6
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`III. LEGAL STANDARD
`
`“For the convenience of parties and witnesses, in the interest of justice, a district court
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`may transfer any civil action to any other district or division where it might have been brought.”
`
`28 U.S.C. § 1404(a). Under section 1404(a), the moving party must first show that the claims
`
`“might have been brought” in the proposed transferee district. In re Volkswagen of Am., Inc.,
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`545 F.3d 304, 312-13 (5th Cir. 2008) (“Volkswagen II”). This first requirement is met given that
`
`Apple is a California corporation headquartered in Cupertino. See Dkt. 1, Compl at ¶ 7; Ex. C ¶
`
`3. Second, the movant must show “good cause” by demonstrating that the “transferee venue is
`
`clearly more convenient” than the transferor district. Volkswagen II at 315.
`
`In evaluating convenience, the district court weighs both private and public interest
`
`factors. In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). The private
`
`factors include: “(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.” Id. The public interest factors include: “(1) the administrative difficulties flowing
`
`from court congestion; (2) the local interest in having localized interests decided at home; (3) the
`
`familiarity of the forum with the law that will govern the case; and (4) the avoidance of
`
`unnecessary problems of conflict of laws of the application of foreign law.” Id.
`
`The convenience of the witnesses is the most important factor in the transfer analysis. In
`
`re: Apple Inc., 2020 WL 3249953, at *2 (Fed. Cir. 2020); Auto-Dril, Inc. v. Nat’l Oilwell Varco,
`
`L.P., No. 6:150cv00091, 2016 WL 6909479, at *7 (W.D. Tex. Jan. 28, 2016). Moreover, in a
`
`case featuring most witnesses and evidence closer to the transferee venue with few or no
`
`convenience factors favoring the venue chosen by the plaintiff, the trial court should grant a
`
`motion to transfer. Genentech, 566 F.3d at 1348; In re TS Tech USA Corp., 551 F.3d. 1315,
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`7
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`Case 6:20-cv-00505-ADA Document 27 Filed 11/05/20 Page 12 of 21
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`1322 (Fed. Cir. 2008); In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 (Fed. Cir. Sept. 25,
`
`2018); In re Adobe Inc., No. 2020-126, 2020 WL 4308164 (Fed. Cir. Jul. 28, 2020).1
`
`IV.
`
`THE NORTHERN DISTRICT OF CALIFORNIA IS CLEARLY THE MORE
`CONVENIENT VENUE
`
`A.
`
`The Private Interest Factors Favor Transfer
`
`The private interest factors strongly favor transfer because the overwhelming majority of
`
`witnesses and evidence in this case are located in N.D. Cal.
`
`1.
`
`Relative Ease of Access to Sources of Proof Strongly Favors Transfer
`
`“[T]he Fifth Circuit clarified that despite technological advances that make the physical
`
`location of documents less significant, the location of sources of proof remains a ‘meaningful
`
`factor in the analysis.’” Wet Sounds, Inc. v. Audio Formz, LLC, No. 17-cv-141, 2017 WL
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`4547916, at *2 (W.D. Tex. Oct. 11, 2017), report and recommendation adopted, No. 1:17-cv-
`
`141, 2018 WL 1219248 (W.D. Tex. Jan. 22, 2018) (quoting Volkswagen II, 545 F.3d at 316).
`
`“The Federal Circuit has observed that ‘[i]n patent infringement cases, the bulk of the relevant
`
`evidence usually comes from the accused infringer,’ and therefore the location of the defendant’s
`
`documents tends to be the more convenient venue.” DataQuill, Ltd. v. Apple Inc., No. 13-cv-
`
`706, 2014 WL 2722201, at *3 (W.D. Tex. June 13, 2014) (quoting In re Genentech, Inc., 566
`
`F.3d 1338, 1345 (Fed. Cir. 2009)). Where, as here, the primary documents are located in the
`
`transferor district, this factor weighs in favor of transfer. Parus Holdings Inc. v. LG Elecs Inc.
`
`and LG Elecs U.S.A. Inc., No. 6:19-cv-432-ADA, Dkt. 161 at 4, 7 (W.D. Tex. Aug. 20, 2020)
`
`(holding that the relative ease of access to sources of proof factor weighed in favor of transfer
`
`
`
`1 The plaintiff’s choice of venue is not a distinct factor in the analysis. Volkswagen II, 545 F.3d
`at 314-15. Nor is the location of counsel. Volkswagen I, 371 F.3d at 206.
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`8
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`because, as the accused infringer, LG “will have the bulk of the documents relevant to this case,”
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`which are located at LG’s facilities in N.D. Cal).
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`“In determining the east of access to sources of proof, the Court will look to the location
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`where the allegedly infringing products were research, designed, developed and tested.” XY,
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`LLC v. Trans Ova Genetics, LC, No. 16-cv-00447, 2017 WL 5505340, at *13 (W.D. Tex. April.
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`5, 20170; Uniloc USA Inc. v. Box, Inc., No. 1:17-cv-754-LY, 21018 WL 2729202, at *3 (W.D.
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`Tex. June 6, 2018) (finding that “it would be more inconvenient for Box to litigate in [Western
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`District of Texas] than for Uniloc to litigate in Northern California”); Collaborative Agreements,
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`LLC. v. Adobe Sys. Inc., No. 1:14-cv-356, 2015 WL10818739 *4 (W.D. Tex. Aug. 21, 2015).
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`When, as is the case here, the bulk of relevant evidence and witnesses are located in the
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`requested transferee district, the ease of access to evidence factor weighs in favor of transfer.
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`In Polaris Innovations Ltd. v. Dell, Inc., No. 16-cv-451, 2016 WL 7077069 (W.D. Tex.
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`Dec. 5, 2016), the defendant had an Austin office with 300 employees, including at least one
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`Austin based engineer with knowledge of the accused products. Id. at *3. Nevertheless, the Court
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`still found that the bulk of the evidence was in California, and that this factor thus weighed in
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`favor of transfer. Polaris Innovations, 2016 WL 7077069 at *5; Collaborative Agreements, 2015
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`WL 10818739, at *4 (finding that where key witnesses were located in N.D. Cal. “[t]he proof
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`surrounding Collaborative’s theories of infringement and damages will almost certainly lie with
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`Adobe in the Northern District of California.”).
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`The research, design, development, of the Accused Technology in the Accused Products
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`performed by Apple takes place in N.D. Cal., and all of the likely witnesses on this topic are
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`located in N.D. Cal. Ex. C 7-11. Likewise, the key Apple documents relating to the research,
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`design, development and operation of the Accused Technology were generated in N.D. Cal. Id.
`
`9
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`IPR2021-01041 (US 8,095,879)
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`Case 6:20-cv-00505-ADA Document 27 Filed 11/05/20 Page 14 of 21
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`In addition, Apple’s likely witnesses and the Apple documents concerning the marketing, sales
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`and financial information for the Accused Products are located in N.D. Cal. Id. ¶¶. 15, 17. The
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`same is true of Apple’s licensing functions. Id. ¶ 16. As such, the overwhelming majority of the
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`sources of proof regarding the Accused Technology and the Accused Products are in N.D. Cal.
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`Conversely, there are no unique, relevant sources of proof in W.D. Tex. First, Neonode
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`has no physical presence in W.D. Tex. Second, Apple’s relevant employees all are based in N.D.
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`Cal. Third, Apple is not aware of any third-party witnesses who reside in W.D. Tex. Indeed, the
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`relevant third parties Apple has been able to identify thus far are located in N.D. Cal. or abroad.
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`Given that there are numerous sources of proof in N.D. Cal. and none in W.D. Tex., this factor
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`clearly favors transfer. See Adobe, 2020 WL 4308164, at *2 (holding convenience of the
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`transferee venue factor strongly weighed in favor of transfer to N.D. Cal. because the defendant
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`and relevant third parties were located there).
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`2.
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`Availability of Compulsory Process Strongly Favors Transfor
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`Transfer is favored when a transferee forum has absolute subpoena power over a greater
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`number of third-party witnesses. In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1337-38 (Fed.
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`Cir. 2009); Genentech, 566 F.3d at 1345; Wet Sounds, 2017 WL 4547916 at *3. A court may
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`subpoena a witness to attend trial only (a) “within 100 miles of where the person resides, is
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`employed, or regularly transacts business in person,”; or (b) “within the state where the person
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`resides, is employed, or regularly transacts business in person.” Fed. R. Civ. P. 45(c)(1)(A), (B);
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`Gemalto S.A. v. CPI Card Grp. Inc., No. 15-CA-0910, 2015 WL 10818740, at *4 (W.D. Tex.
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`Dec. 16, 2015). Moreover, the ability to compel live trial testimony is crucial for evaluating a
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`witnesses’ testimony. Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992).
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`As set forth above in Section II.C., most of the key relevant third parties are located in
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`N.D. Cal. Neonode’s parent company, Aequitas Technologies, and its prosecution counsel,
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`10
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`Case 6:20-cv-00505-ADA Document 27 Filed 11/05/20 Page 15 of 21
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`Soquel Group, are located in N.D. Cal. Ex. A; Ex. G; Ex. F; Ex. J. Neonode Inc.’s principal
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`United States office is located in N.D. Cal., as is its Vice President of Intellectual Property
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`(Joseph Shain), who allegedly reached out to Apple regarding the patents-in-suit, is located in
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`N.D. Cal. Ex. A; Ex. G; Ex. N. Additionally, GBoard, one of the third-party swipe-typing
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`keyboard Apps named in the Complaint, is offered by Google, which is headquartered in N.D.
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`Cal. Ex. A; Ex. K. And Swype, the other third-party swipe-typing keyboard App named in the
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`Complaint was offered by Nuance Communications, which has a location in N.D. Cal., but no
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`locations in W.D. Tex. Ex. A; Ex. L. Compulsory process over these witnesses is therefore
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`available in N.D. Cal., but not in W.D. Tex.
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`Apple is not aware of a single third-party witness who would be within W.D. Tex.’s
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`subpoena power. Therefore, this factor weighs strongly in favor of transfer. Genentech, 566
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`F.3d at 1345 (concluding that compulsory-process factor “weighs in favor of transfer” where
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`“there is a substantial number of witnesses within the subpoena power of the Northern District of
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`California and no witness who can be compelled to appear in the Eastern District of Texas”).
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`3.
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`Attendance of Willing Witnesses Strongly Favors Transfor
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`The convenience for willing witnesses is the single most important factor in the transfer
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`analysis. See, Apple Inc., 2020 WL 3249953, at *2; In re Google Inc., 2017 WL 977038, at *3
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`(Fed. Cir. Feb. 23, 2017); Genentech, 566 F.3d at 1342; Auto-Dril, 2016 WL 6909479 at *7. As
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`discussed above, all of the likely Apple witnesses, as well as many of the Neonode and third-
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`party witnesses, are based in N.D. Cal. See infra Sec. II. These witnesses are a car ride from the
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`court house in N.D. Cal., but more than 1,500 miles and a lengthy plane ride from Texas.
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`If this case remains in Texas, the Apple witnesses would need to spend days away from
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`home and work, as opposed to several hours if the trial takes place in N.D. Cal. This travel
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`burden is not insignificant and has often been cited as a key reason why transfer is appropriate.
`
`11
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`Case 6:20-cv-00505-ADA Document 27 Filed 11/05/20 Page 16 of 21
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`E.g., Volkswagen II, 545 F.3d at 317 (“Witnesses not only suffer monetary costs, but also the
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`personal costs associated with being away from work, family and community.”). This length of
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`travel also imposes additional burdens beyond travel time, such as meal and lodging expenses.
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`Volkswagen I, 371 F.3d at 204-05; see also In re Acer America Corp., 626 F.3d 1252, 1255
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`(2010) (noting that in requiring party employees to travel for trial the parties would likely incur
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`significant expenses, as well as losses in productivity from time spent away from work).
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`For all of these reasons, it would be clearly more convenient for N.D. Cal. based
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`witnesses to attend trial in N.D. Cal. Volkswagen II, 545 F.3d at 317 (recognizing the “obvious
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`conclusion” that “it is more convenient for witnesses to testify at home”); see Apple, 581 F.
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`App’x at 889 (faulting district court for failing to follow the 100-mile rule); TS Tech, 551 F.3d at
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`1320 (“The district court’s disregard of the 100-mile rule constitutes clea