`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`JAPAN DISPLAY INC., PANASONIC
`LIQUID CRYSTAL DISPLAY CO., LTD.,
`
`Plaintiffs,
`
`v.
`
`TIANMA MICROELECTRONICS CO.
`LTD.,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`CIVIL ACTION NO. 2:20-CV-00283-JRG
`(LEAD CASE)
`
`CIVIL ACTION NO. 2:20-CV-00284-JRG
`CIVIL ACTION NO. 2:20-CV-00285-JRG
`(MEMBER CASES)
`
`MEMORANDUM OPINION AND ORDER
`
`Before the Court is Defendant Tianma Microelectronics Co. Ltd.’s (“Tianma”) Motion to
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`Transfer to the Central District of California (the “Motion”). (Dkt. No. 69). Having considered the
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`parties’ briefing and oral arguments at the Court’s hearing on August 17, 2021 (Dkt. No. 108), and
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`for the reasons stated herein, the Court is of the opinion that the Motion should be DENIED.
`
`I.
`
`BACKGROUND
`
`On August 31, 2020, Plaintiffs Japan Display Inc. (“JDI”) and Panasonic Liquid Crystal
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`Display Co., Ltd. (“Panasonic”) (collectively, “Plaintiffs”), both Japanese entities, filed suit for
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`patent infringement against Tianma, a Chinese entity. (See Dkt. No. 1 ¶¶ 1, 3–4). Plaintiffs filed
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`three separate actions against Tianma, which were later consolidated by the Court. (Dkt. No. 57).
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`Plaintiffs allege that Tianma infringes U.S. Patent Nos. 8,218,119; 10,139,687; 9,715,132;
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`9,793,299; 10,018,859; 8,218,118; 10,423,034; 10,330,989; 7,936,429; 9,310,654; 8,830,409;
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`9,817,288; 7,636,142; 7,385,665; and 9,939,698 (collectively, the “Patents-in-Suit”). (Lead Case
`
`No. 2:20-CV-283, Dkt. No. 1; Member Case No. 2:20-CV-284, Dkt. No. 1; Member Case No.
`
`2:20-CV-285, Dkt. No. 1).
`
`1
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 2 of 17 PageID #: 3607
`
`On June 15, 2021, Tianma filed this Motion seeking transfer of these actions to the United
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`States District Court for the Central District of California pursuant to 28 U.S.C. § 1404(a). (Dkt.
`
`No. 69). Much of the focus of the Motion is on evidence from Tianma’s U.S.-based subsidiary and
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`non-party, Tianma America, Inc. (“Tianma America”), which is headquartered in Chino,
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`California. (Id. at 4).
`
`II.
`
`LEGAL STANDARD
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`If venue is proper in the district where a case was originally filed, a federal district court
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`may transfer the case “[f]or the convenience of parties and witnesses” to “any other district or
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`division where it might have been brought.” 28 U.S.C. § 1404(a). Section 1404(a)’s threshold
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`inquiry is whether the case could initially have been brought in the proposed transferee forum.
`
`In re Volkswagen AG, 371 F.3d 201, 202–03 (5th Cir. 2004) [Volkswagen I]. The question of
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`whether a suit “might have been brought” in the transferee forum encompasses subject matter
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`jurisdiction, personal jurisdiction, and propriety of venue. See Hoffman v. Blaski, 363 U.S. 335,
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`343–44 (1960). Only if this statutory requirement is met should the Court determine whether
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`convenience warrants a transfer of the case. See Volkswagen I, 371 F.3d at 203; In re Volkswagen
`
`of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) [Volkswagen II]. The burden to prove that a case
`
`could have been brought in the transferee forum falls on the party seeking transfer. See id. at 315;
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`Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963).
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`If that inquiry is satisfied, the Court determines whether transfer is proper by analyzing and
`
`weighing various private and public interest factors. Id.; accord In re Nintendo Co., Ltd, 589, F.3d
`
`1194, 1198 (Fed. Cir. 2009); In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. 2020) (applying
`
`Fifth Circuit law). The private interest factors are “(1) the relative ease of access to sources of
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`proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost
`
`
`
`2
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 3 of 17 PageID #: 3608
`
`of attendance for willing witnesses; and (4) all other practical problems that make trial of a case
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`easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 315 (quoting Volkswagen I, 371
`
`F.3d at 203). The public interest factors are “(1) the administrative difficulties flowing from court
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`congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity
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`of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems
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`of conflict of laws [or in] the application of foreign law.” Id. (quoting Volkswagen I, 371 F.3d at
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`203) (alterations in original). The factors are neither exclusive nor exhaustive, and no one factor
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`is dispositive. Id.
`
`The burden to prove that a case should be transferred for convenience falls squarely on the
`
`moving party. See id. Although the plaintiff’s choice of forum is not a separate factor, respect for
`
`the plaintiff’s choice of forum is encompassed in the movant’s elevated burden to “clearly
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`demonstrate” that the proposed transferee forum is “clearly more convenient” than the forum in
`
`which the case was filed. Id. at 314–15; Apple, 979 F.3d at 1338. While “clearly more convenient”
`
`is not necessarily equivalent to “clear and convincing,” the moving party “must show materially
`
`more than a mere preponderance of convenience, lest the standard have no real or practical
`
`meaning.” Quest NetTech Corp. v. Apple, Inc., No. 2:19-CV-118, 2019 WL 6344267, at *7 (E.D.
`
`Tex. Nov. 27, 2019). In considering a transfer under § 1404(a), the Court may consider undisputed
`
`facts outside of the pleadings, but must draw all reasonable inferences and resolve factual disputes
`
`in favor of the non-movant. Vocalife LLC v. Amazon.com, Inc., No. 2:19-CV-00123, 2019 WL
`
`6345191, at *2 (E.D. Tex. Nov. 27, 2019); cf. Trois v. Apple Tree Auction Cent. Inc., 882 F.3d
`
`485, 492–93 (5th Cir. 2018) (reviewing a transfer under § 1406); Ambraco, Inc. v. Bossclip B.V.,
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`570 F.3d 233, 238 (5th Cir. 2009) (reviewing enforcement of a forum-selection clause).
`
`
`
`
`
`3
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 4 of 17 PageID #: 3609
`
`III. ANALYSIS
`
`a. Tianma Has Not Shown That These Cases Could Have Been Brought in
`the Central District of California
`
`
`
`As an initial matter, the Court must address the threshold question under § 1404—whether
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`these cases could have been initially brought in the proposed transferee forum. The parties gave
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`this issue cursory attention, at best, in their briefing and at the hearing. As a result, what is
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`contained in Tianma’s Motion and their arguments before the Court is insufficient to meet this
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`threshold burden.
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`Proving that the transferee forum has subject-matter jurisdiction, personal jurisdiction, and
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`proper venue is an explicit statutory requirement of the movant—not the respondent. It is also a
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`threshold question. See Volkswagen I, 371 F.3d at 203 (“[W]e have suggested that the first
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`determination to be made is whether the judicial district to which transfer is sought would have
`
`been a district in which the claim could have been filed.” (emphasis added)); Volkswagen II, 545
`
`F.3d at 312 (“The preliminary question under § 1404(a) is whether a civil action “might have been
`
`brought” in the destination venue.” (emphasis added)).
`
`The convenience analysis involves the careful weighing and balancing of the forum non
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`conveniens factors—a task committed to the discretion of the District Court. Id. at 312. However,
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`it is a separate and subsequent requirement from the moving party to show that the case could have
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`properly been brought in the transferee forum. This distinction is made explicit in the text of
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`§ 1404(a). The movant must satisfy both the statutory requirements and then clearly demonstrate
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`that the transfer is clearly more convenient. Id. at 315. If it has not been shown that the transferee
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`court could hear the case, the Court has no ability to transfer, regardless of how convenient or
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`inconvenient the transfer might be. See Hoffman, 363 U.S. at 340.
`
`
`
`4
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 5 of 17 PageID #: 3610
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`In its Motion, Tianma states “if Plaintiffs could bring this suit anywhere in the U.S., they
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`could have done so in the Central District of California.” (Dkt. No. 69 at 7). Tianma’s prevarication
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`falls short of its statutory burden. In their briefing, Plaintiffs did not argue that the action could
`
`have been brought in the transferee district. (Dkt. No. 85 at 3). Further, during the hearing, counsel
`
`for Plaintiffs acknowledged that Tianma’s statement was not a concession to the jurisdiction of the
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`transferee court. (Dkt. No. 108 at 24:10–25:7). The Court also notes that though this topic was
`
`raised and discussed, Tianma’s counsel did not address the threshold issue during the hearing,
`
`despite providing the Court with additional argument on other issues after the Court heard from
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`Plaintiffs’ counsel. Further, any lack of effort on Plaintiffs’ part did not lessen or eliminate what
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`was Tianma’s clear burden. Tianma’s silence at the hearing on this was deafening.
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`Earlier in the case, Tianma filed a Rule 12(b)(2) Motion to Dismiss Plaintiffs’ Complaint
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`for Lack of Personal Jurisdiction (the “Motion to Dismiss”), which was withdrawn. (Dkt. Nos. 21,
`
`65, 66). Although Tianma’s Motion to Dismiss was withdrawn, Tianma did not acknowledge that
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`it was subject to the personal jurisdiction of any U.S. court in its motion requesting withdrawal,
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`instead stating that its Motion to Dismiss was “meritorious and legally sound in substance.” (Dkt.
`
`No. 65 at 2–3). Tianma, apparently wanting to have its cake and eat it too, skirted the threshold
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`§ 1404 question while attempting to preserve a jurisdictional challenge—which challenge is no
`
`longer before the Court.
`
`“[T]he power of a District Court under § 1404(a) to transfer an action to another district is
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`made to depend not upon the wish or waiver of the defendant, but, rather, upon whether the
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`transferee district was one in which the action ‘might have been brought’ by the plaintiff.”
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`Hoffman, 363 U.S. at 343–44. Tianma did not meet its threshold burden to establish that this case
`
`
`
`5
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 6 of 17 PageID #: 3611
`
`could have been originally brought in the Central District of California. Accordingly, the Court
`
`denies Tianma’s Motion for that reason alone.
`
`b. Tianma Has Not Shown That the Central District of California is Clearly
`More Convenient
`
`
`
`Even if Tianma had adequately met its initial burden, the Court is of the opinion that
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`Tianma has not shown that the Central District of California is clearly more convenient under the
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`private and public interest factors.
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`i. PRIVATE INTEREST FACTORS
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`1. Relative Ease of Access to Sources of Proof
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`The first private factor, ease of access to sources of proof, considers “documents and
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`physical evidence” as opposed to witnesses. See Volkswagen II, 545 F.3d at 315; Apple, 979 F.3d
`
`at 1339–40. The Fifth and Federal Circuits have stressed that the physical location of such sources
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`of proof remains relevant notwithstanding technological advances in data storage, copying, and
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`transmission. See Volkswagen II, 545 F.3d at 316; In re Genentech, Inc., 566 F.3d 1338, 1346
`
`(Fed. Cir. 2009). However, parties must specifically identify sources of proof, explain their
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`relevance, and specifically identify the location of those sources. AGIS Software Dev. LLC v.
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`Huawei Device USA Inc., No. 2:17-cv-513, 2018 WL 2329752, at *5 (E.D. Tex. May 22, 2018);
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`Utterback v. Trustmark Nat’l Bank, 716 F. App’x 241, 245 n.10 (5th Cir. 2017) (“Additionally,
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`Utterback fails to identify with any specificity which witnesses and what evidence would be
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`inaccessible in Mississippi but readily available in Florida. Without more, we cannot credit such
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`vague and conclusional assertions.” (emphasis in original)).
`
`
`
`6
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 7 of 17 PageID #: 3612
`
`Tianma argues that the location of Tianma America in Chino, California favors transfer.1
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`(Dkt. No. 69 at 7–8). Tianma also points to a JDI subsidiary, JDI Display America, Inc. (“JDI
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`America”), which is based in Silicon Valley, California. (Id. at 3). Tianma states that U.S. sales of
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`the accused products are largely done via Tianma America and that evidence relating to such sales
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`is located in Tianma America’s California office. (Id. at 7–8). To the extent any technical
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`documents would be in Tianma America’s possession, such would be in California as well. (Id. at
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`8). Tianma acknowledges that it maintains electronic documents in California, which neither
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`weighs for or against transfer. (Id.). Tianma discounts proof associated with Texas sales
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`representative TriStar Group (“TriStar”), which is based in Dallas, Texas, on the basis that JDI has
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`not sought discovery from TriStar. (Id.).
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`In response, Plaintiffs argue that the first private factor is neutral because most of the
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`relevant documentary evidence is likely to come from China or Japan. (Dkt. No. 85 at 4). Tianma
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`America’s electronic documents in California do not tip the scale towards transfer. (Id. at 4–5).
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`Additionally, JDI America is based in the Northern District of California, not the Central District,
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`and the reality is that moving largely electronic documents from Silicon Valley to Los Angeles is
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`not clearly more convenient than moving them to Marshall. (Id. at 5). Importantly, Plaintiffs also
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`argue that Tianma has not identified particular documents located in California to be presented at
`
`trial. (Id. at 5–6).
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`The Fifth Circuit has explained that a decreased inconvenience in access to proof due to
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`technological advances “does not render this factor superfluous.” Volkswagen II, 545 F.3d at 316.
`
`
`1 While it was not improper for Tianma to substantially rely on Tianma America and other third parties in its Motion—
`in fact, third parties who are likely to be witnesses at trial should be considered by the Court under Volkswagen I—
`the Court notes that Tianma had an ample opportunity to join Tianma America as a necessary party under Fed. R. Civ.
`P. 19 and chose not to pursue that opportunity. See 371 F.3d at 204 (“[T]he witnesses whom the Volkswagen
`Defendants contemplate would testify in support of its claim . . . would certainly become ‘witnesses’ whose
`convenience should be assessed in deciding the motion to transfer.”).
`
`
`
`7
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 8 of 17 PageID #: 3613
`
`Similarly, the Federal Circuit found error in concluding that the ease-of-access factor was neutral
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`merely because “many of the documents were stored electronically[.]” In re TS Tech USA Corp.,
`
`551 F.3d 1315, 1321 (Fed. Cir. 2008) (citing Volkswagen II, 545 F.3d at 316); see also Genentech,
`
`566 F.3d at 1346 (citing Volkswagen II, 545 F.3d at 316). Thus, the physical location of evidence—
`
`even if stored electronically—remains a relevant consideration for the convenience analysis.
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`However, the realities of electronic retrieval and delivery is an established reality that must
`
`bear some weight even while not making this factor “superfluous.”
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`It appears that most of the documentary evidence in the possession of the parties would be
`
`in China or Japan.2 However, to the extent any documents are located in the United States, they
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`are likely to be found in Chino, where Tianma America is located and where U.S. sales records
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`are apparently kept, or Silicon Valley, the location of JDI America. Accordingly, the Court finds
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`that this factor weighs slightly in favor of transfer.
`
`2. Availability of Compulsory Process
`Attendance of Witnesses
`
`to Secure
`
`the
`
`The second private factor considered is the availability of compulsory process to secure the
`
`attendance of witnesses. Volkswagen II, 545 F.3d at 316. Federal district courts have the absolute
`
`power to compel attendance of a trial, hearing, or deposition “within 100 miles of where the person
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`resides, is employed, or regularly transacts business in person.” Fed. R. Civ. P. 45(c)(1)(A).
`
`Federal district courts have trial subpoena power over a person “within the state where the person
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`resides, is employed, or regularly transacts business in person, if the person . . . is a party or a
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`party’s officer; or . . . [if the person] is commanded to attend a trial and would not incur substantial
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`expense.” Fed. R. Civ. P. 45(c)(1)(B). As party witnesses almost invariably attend trial willingly,
`
`2 Counsel for Tianma acknowledged during the hearing that the majority of technical evidence, including that related
`to issues of infringement and validity of the patents, would be located outside of the United States. (Dkt. No. 108 at
`17:1–20, 18:2–4).
`
`8
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 9 of 17 PageID #: 3614
`
`“[t]his factor is directed towards unwilling third-party witnesses.” C&J Rent Servs., Inc. v. LEAM
`
`Drilling Sys., LLC, No. 2:19-cv-00079, 2019 WL 3017379, at *3 (E.D. Tex. July 10, 2019)
`
`(emphasis added).
`
`Tianma argues that JDI has not identified any third parties with relevant knowledge
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`residing within 100 miles of this district. (Dkt. No. 69 at 8–9). The exception would be witnesses
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`associated with TriStar. (Id. at 9). Tianma argues that TriStar’s sales are handled through Tianma
`
`America to begin with and the Plaintiffs are not seeking discovery from TriStar. (Id.). Tianma
`
`identifies six Tianma America employees who are located in Chino, California, which is in the
`
`Central District of California, as well as one employee located in Santa Clara, California, which is
`
`in the Northern District of California.3 (Id. at 5–6). Tianma America has two Texas-based
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`employees: a regional sales director in Austin and a field application engineer in Arlington. (Id. at
`
`6). Plaintiffs argue that compulsory process is not needed to secure the attendance of Tianma
`
`America witnesses and this factor is neutral. (Dkt. No. 85 at 6). Plaintiffs argue that the witnesses—
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`one of whom is not within the subpoena power of the Central District of California—are not clearly
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`relevant. (Id. at 7). However, even if the witnesses would provide relevant testimony, Tianma
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`America has closely coordinated with its parent company, Tianma, and there is no indication that
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`the witnesses would be unwilling to testify voluntarily. (Id.).
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`Although Tianma attempts to “double-count” the Tianma America witnesses under both
`
`this factor and the next, the Court will only count them under private interest factor number three.
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`AGIS, 2018 WL 2329752, at *3 (“[Private interest factors two and three] do not permit a single
`
`source of proof to or witness to be ‘double counted’ . . . .”). Based on representations by counsel
`
`3 The identified employees are: Shide “Eric” Cheng, CEO of Tianma America; Yuanzheng “Rob” Li, Director of
`Engineering; Jian Jun Li, Director of Sales; Dean Collins, Director of Marketing; Kristin Ling, Inside Sales Manager;
`Melody Wowczuk, Accounting; and Arthur Ceballos, Logistics Manager. (Dkt. No. 69 at 5). Mr. Collins works in
`Santa Clara, while the rest are located in Chino. (Id. at 6).
`
`9
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 10 of 17 PageID #: 3615
`
`as to foreign witnesses, the Court believes that process would likely be unnecessary for employees
`
`of Tianma America and JDI America. (Dkt. No. 108 at 30:21–31:1, 33:9–14 38:23–39:1). It is
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`unclear whether the same would be true for potential witnesses from Hitachi America Ltd.
`
`(“Hitachi America”). (Id. at 33:17–20). Having considered this factor, the Court finds it is
`
`essentially neutral.
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`3. Cost of Attendance for Willing Witnesses
`
`The third private factor, the cost of attendance for willing witnesses, has been described as
`
`the most important factor. See Genentech, 566 F.3d at 1343 (quoting Neil Bros. Ltd. v. World Wide
`
`Lines, Inc., 425 F. Supp. 2d 325, 329 (E.D.N.Y. 2006)). Courts properly give more weight to the
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`convenience of non-party witnesses than to party witnesses. See Frito-Lay N. Am., Inc. v.
`
`Medallion Foods, Inc., 867 F. Supp. 2d 859, 870–71 (E.D. Tex. 2012); State Street Capital Corp.
`
`v. Dente, 855 F. Supp 192, 198 (S.D. Tex. 1994). The Fifth Circuit has established what is
`
`commonly called the “100-mile rule”: when the distance between the transferor and proposed
`
`transferee venues exceeds 100 miles, “the factor of inconvenience to witnesses increases in direct
`
`relationship to the additional distance to be traveled.” Volkswagen I, 371 F.3d at 201; Genentech,
`
`566 F.3d at 1343; Apple, 979 F.3d at 1341. The distance from Los Angeles, California to Marshall,
`
`Texas is approximately 1,600 miles.
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`Tianma argues that the presence of willing witnesses in California favors transfer. (Dkt.
`
`No. 69 at 9). Third-parties Tianma America, JDI America, and Hitachi America Ltd. (“Hitachi
`
`America”) all have potential witnesses based in California. (Id.). Tianma also argues that party
`
`witnesses would have an easier time traveling to California from China or Japan than they would
`
`traveling to Marshall. (Id.). Lastly, Tianma points to expert witnesses for Plaintiffs who reside in
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`the State of Washington and Oregon, which are closer to the Central District of California. (Id. at
`
`
`
`10
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 11 of 17 PageID #: 3616
`
`10). Plaintiffs argue that Tianma’s argument regarding party witnesses should be given little
`
`weight, if any, because traveling from China or Japan would be a great distance whether it is to
`
`Los Angeles or Marshall. (Dkt. No. 85 at 8). Plaintiffs also argue that Tianma America witnesses’
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`convenience should be given little weight due to control by Tianma, and further, should not be
`
`considered under both private interest factors two and three. (Id. at 8–9). Plaintiffs argue that JDI
`
`America and Hitachi America witnesses were not identified by Tianma and that expert witness
`
`travel should be given little weight by the Court. (Id. at 9–10).
`
`It is clear that most witnesses associated with the parties in this case would travel from
`
`either China or Japan. Although the Fifth Circuit and Federal Circuit apply the “100-mile rule,”
`
`the Federal Circuit stated in Genentech that the 100-mile rule should not be rigidly applied where
`
`witnesses will have to travel a significant distance no matter where they testify. See 566 F.3d at
`
`1344. “Although it might be true that these individuals will need to travel a greater distance to
`
`reach [EDTX] than [CDCA] . . . in either instance these individuals will likely have to leave home
`
`for an extended period of time and incur travel, lodging, and related costs.” In re Apple, 979 F.3d
`
`1332, 1342 (Fed. Cir. 2020).
`
`Given the late stage of the case in which this Motion was brought, the Court and parties
`
`have the benefit of a clearer idea of key witnesses likely to appear at trial. See Genentech, 566 F.3d
`
`at 1343 (“A district court should assess the relevance and materiality of the information the witness
`
`may provide.”). Tianma has identified seven California-based Tianma America employees who
`
`may testify at trial, six of whom are located within the Central District of California. However,
`
`Tianma’s counsel indicated at the hearing that only one or two of these individuals were likely to
`
`actually testify at trial. (Dkt. No. 108 at 38:10–14, 17–21) (“I can represent . . . Mr. Eric Cheng,
`
`one of those folks who was identified in the papers, he will be on our witness list . . . at least one
`
`11
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 12 of 17 PageID #: 3617
`
`other person will be . . . .”). Likewise, the Court does not give much weight to TriStar or Tianma
`
`America witnesses located in Texas, because they are unlikely to be key witnesses at trial. JDI
`
`America and Hitachi America do not have employees identified as potential witnesses.4
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`Additionally, the Court does not assign much weight to the location of expert witnesses under this
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`factor, as such retained experts are generally well paid for their time and expenses. AGIS Software
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`Dev. LLC v. Apple, Inc., No. 2:17-CV-516-JRG, 2018 WL 2721826, at *6 (E.D. Tex. June 6, 2018)
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`(“[T]he Court finds it appropriate to give [experts’] convenience little weight, but not no weight.”).
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`Accordingly, the Court finds this factor neutral.
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`4. All Other Practical Problems That Make Trial of Case Easy,
`Expeditious, and Inexpensive
`
`
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`The fourth private factor, practical problems, includes concerns rationally based on judicial
`
`economy. Quest NetTech, 2019 WL 6344267, at *6; see also In re Vistaprint Ltd., 628 F.3d 1342,
`
`1346 (Fed. Cir. 2010). Tianma argues that the fourth private factor is neutral. (Dkt. No. 69 at 10).
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`The Patents-in-Suit have not been previously litigated in a patent infringement dispute and no
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`substantive proceedings have occurred yet in this case. (Id.). Tianma explains its delay in filing its
`
`Motion by arguing that Plaintiffs did not pursue discovery from Tianma America until just a few
`
`weeks before this Motion was filed. (Id. at 11). Tianma does note the Court’s schedule, including
`
`a claim construction hearing in mid-August and the fact discovery deadline in September. (Id.).
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`Plaintiffs argue that Tianma was dilatory in bringing this Motion and that the case has progressed
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`substantially, being set for trial in just a few months. (Dkt. No. 85 at 10). Plaintiffs note that by the
`
`time this Motion is decided, the Court will likely have conducted the Markman hearing,5 and
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`discovery will close in September. (Id. at 11). Tianma argues that Tianma America was
`
`
`4 Further, those entities are located in the Northern District California.
`5 Magistrate Judge Roy S. Payne conducted the claim construction hearing on August 12, 2021. (See Dkt. No. 104).
`
`
`
`12
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`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 13 of 17 PageID #: 3618
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`subpoenaed later in the case, but Plaintiffs argue in response that Tianma America was always at
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`issue in the case, noting that Tianma America is mentioned in the Complaint over 100 times. (Id.
`
`at 12).
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`This “judicial economy” factor weighs heavily against transferring this case, largely due to
`
`Tianma’s delay in bringing this motion. See Peteet v. Dow. Chem. Co., 868 F.2d 1428, 1346 (5th
`
`Cir. 1989) (“Parties seeking a change of venue should act with ‘reasonable promptness.’”;
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`Utterback v. Trustmark Nat’l Bank, 716 F. App’x 241, 245 (5th Cir. 2017) (“Utterback insists the
`
`timing of his motion is immaterial to the § 1404(a) analysis. Our caselaw suggests the opposite.”).
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`The Federal Circuit and Fifth Circuit have raised the issue on the other foot as well, criticizing
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`district courts for prioritizing the merits of a case while transfer motions were pending. See Apple,
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`979 F.3d at 1338, 1343 (“[T]he district court barreled ahead on the merits in significant respects .
`
`. . .”); In re Horseshoe Ent’t, 337 F.3d 429, 433 (5th Cir. 2003). The Court is obligated to resolve
`
`venue issues before reaching the merits of the case, and it follows that when a party chooses to
`
`prioritize litigating the merits before venue issues, that is a factor the Court should consider. In
`
`this case, the Plaintiffs filed their Complaint on August 31, 2020, and nearly ten months passed
`
`before Tianma filed this Motion.
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`Tianma’s stated reason for waiting so long was a subpoena directed to Tianma America in
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`April 2021—however, Tianma America is mentioned numerous times in Plaintiffs’ Complaint and
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`in briefing on Tianma’s withdrawn Motion to Dismiss. The claim construction hearing was held
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`on August 12, 2021, fact discovery will close on September 13, 2021, expert discovery will close
`
`on October 15, 2021, the pretrial conference is set for January 10, 2022, and jury selection is set
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`for February 7, 2022. (Dkt. No. 34). The Court has already conducted multiple discovery hearings
`
`13
`
`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 14 of 17 PageID #: 3619
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`in this case. (See generally Dkt. Nos. 94, 108). This investment of time and resources transpired
`
`largely due to Tianma’s delay in seeking a change of venue.
`
`Tianma represents that, should the Court grant its Motion, the parties would jointly request
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`a trial date from the California court before December 2022, when an inter partes review decision
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`is anticipated from the U.S. Patent and Trademark Office relating to the Patents-in-Suit. (Dkt. No.
`
`108 at 18:20–19:3). However, and as the Court noted at the hearing, the fact that such a request
`
`would be made would not guarantee that the trial date would fall within that timeframe, and even
`
`if it did, such a trial date would be ten months after the current trial date in this Court. (Id. at
`
`19:4–5, 22:3–12). Additionally, and as the Court noted at the hearing, the transferee court in the
`
`Central District of California would be well within its power to re-adjudicate certain issues,
`
`including claim construction. (Id. at 20:3–14). Said another way, Plaintiffs and Tianma would have
`
`little if any control as regards the transferee court’s docket or schedule.
`
`Transfer could very well put this case at the back of the line in the Central District of
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`California and subject this case to significant re-litigation. See Utterback, 716 F. App’x at 245
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`(“[I]t would emphatically not serve the interest of justice to allow [the moving party] to take a
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`second ‘bite[] at the apple’ in Florida, just after learning he would lose in Mississippi.”).
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`Accordingly, the Court finds that this factor substantially weighs against transfer.
`
`ii. PUBLIC INTEREST FACTORS
`
`1. Administrative Difficulties Flowing from Court Congestion
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`Tianma argues that this factor is neutral. (Dkt. No. 69 at 13). Citing Genentech, Tianma
`
`argues that the speed of the transferee court should not outweigh the other factors, and
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`acknowledges this district’s faster time to trial. (Id.) (citing 566 F.3d at 1347). In its reply brief,
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`Tianma argues that the Court’s trial date is subject to change in light of ongoing COVID
`
`14
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`JDI/PLD - EX. 2002
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`
`
`Case 2:20-cv-00283-JRG Document 115 Filed 08/25/21 Page 15 of 17 PageID #: 3620
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`restrictions in Japan, which could postpone depositions that must be taken. (Dkt. No. 90 at 5).
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`Plaintiffs argue that the first public factor weighs against transfer due to this Court’s faster time to
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`trial than the Central District of California. (Dkt. No. 85 at 13). Additionally, delays would almost
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`inevitably result due to the advanced stage of the case. (Id. at 13–14). With respect to depositions
`
`of Japanese witnesses causing delay, Plaintiffs note that several such depositions are presently
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`scheduled and ready to go forward. (Dkt. No. 97 at 3).
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`This Court has a faster time to trial compared to the Central District of California—as
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`acknowledged by Tianma in its motion. (See Dkt. No. 69 at 13; see also Dkt. No. 69-16; Dkt. No.
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`85-4). Further, the stage of the case has progressed to the point that a transfer would unavoidably
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`extend the time to trial in this matter even further. The Court finds that this factor weighs against
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`transfer.
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`2. The Local Interest in Having Localized Interests Decided at
`Home
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`“[J]ury duty is a burden that ought not to be imposed upon the people of a