Case 6:20-cv-01092-ADA Document 18 Filed 02/19/21 Page 1 of 19
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`
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`HD SILICON SOLUTIONS LLC,
`
`Plaintiff,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`
`Defendant.
`
`Civil Action No. 6:20-cv-1092-ADA
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`
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`MICROCHIP’S OPPOSED MOTION TO TRANSFER VENUE TO THE
`NORTHERN DISTRICT OF CALIFORNIA
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`
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`
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`MICROCHIP TECH. INC. - EXHIBIT 1011
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`Case 6:20-cv-01092-ADA Document 18 Filed 02/19/21 Page 2 of 19
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`Table of Contents
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`Page
`
`C.
`D.
`
`INTRODUCTION .............................................................................................................. 1
`FACTUAL BACKGROUND ............................................................................................. 2
`A.
`The Pleadings, Asserted Patents, And Accused Products....................................... 2
`B.
`Microchip’s Expected Witnesses And Other Evidence Are Located In The NDCA
`Or Nearby Arizona. ................................................................................................. 3
`Plaintiff’s Expected Witnesses Also Reside In California. .................................... 5
`Most Of The Known Third-Party Witnesses And Evidence Are Located In the
`NDCA—None Are Located In Texas. .................................................................... 6
`LEGAL STANDARD ......................................................................................................... 8
`THE NDCA IS A CLEARLY MORE CONVENIENT FORUM THAN THIS DISTRICT
`FOR THIS CASE. ............................................................................................................... 8
`A.
`This Case Could Have Been Filed In The NDCA. ................................................. 8
`B.
`All Private Interest Factors Heavily Favor Transfer To The NDCA. ..................... 9
`1.
`Relative Ease Of Access To Sources Of Proof ........................................... 9
`2.
`Availability Of Compulsory Process ........................................................ 10
`3.
`Cost Of Attendance For Willing Witnesses .............................................. 12
`4.
`There Are No Practical Problems Associated With Transfer To The
`NDCA ....................................................................................................... 13
`The Public Interest Factors Weigh In Favor Of Transfer. .................................... 13
`C.
`CONCLUSION ................................................................................................................. 15
`
`
`
`i
`
`I.
`II.
`
`III.
`IV.
`
`V.
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`Case 6:20-cv-01092-ADA Document 18 Filed 02/19/21 Page 3 of 19
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`
`
`Page(s)
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) ...................................................................................................10
`
`In re Apple,
`979 F.3d 1332 (Fed. Cir. 2020)..................................................................................8, 9, 10, 13
`
`Fintiv, Inc. v. Apple Inc.,
`No. 6:18-CV-00372-ADA, 2019 WL 4743678 (W.D. Tex. Sept. 13, 2019)
`(Albright, J.) .......................................................................................................................10, 14
`
`In re Genentech Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)......................................................................................1, 11, 14
`
`Parus Holdings Inc. v. LG Elecs. Inc.,
`No. 6:19-CV-00432-ADA, 2020 WL 4905809 (W.D. Tex. Aug. 20, 2020)
`(Albright, J) ..........................................................................................................................9, 13
`
`Polaris Innovations Ltd. v. Dell, Inc.,
`Civil Action No. SA-16-CV-451-XR, 2016 WL 7077069 (W.D. Tex. Dec. 5,
`2016) (Rodriguez, J.) ...........................................................................................................9, 12
`
`VLSI Tech. LLC v. Intel Corp.,
`No. 6:19-CV-00254-ADA, 2019 WL 8013949 (W.D. Tex. Oct. 7, 2019)
`(Albright, J.) .............................................................................................................................11
`
`In re Volkswagen of Am. Inc.,
`545 F.3d 304 (5th Cir. 2008) .....................................................................................................8
`
`XY, LLC v. Trans Ova Genetics, LC,
`Case No. W-16-CA-00447-RP, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017)
`(Manske, J.) ................................................................................................................................9
`
`Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................8
`
`28 U.S.C. § 1404(a) ............................................................................................................... passim
`
`Other Authorities
`
`L.R. CV-7.........................................................................................................................................1
`
`
`
`ii
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`Case 6:20-cv-01092-ADA Document 18 Filed 02/19/21 Page 4 of 19
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`I.
`
`INTRODUCTION
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`Defendant Microchip Technology Inc. (“Microchip”) moves to transfer this case to the
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`Northern District of California (“NDCA”) under 28 U.S.C. § 1404(a).1 It would be far more
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`convenient to litigate and try this case in the NDCA because the majority of party and non-party
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`witnesses are located there. The majority of the inventors and prior artists are located there, and
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`the likely Microchip witnesses are located there or in nearby Arizona. Indeed, even plaintiff HD
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`Silicon Solutions LLC’s (“HDSS”) likely trial witnesses are located in California since HDSS is
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`owned by a California corporation, and managed by two California residents. Conversely, this
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`case has no significant ties to the Western District of Texas. Its only real connection to this
`
`District is the fact that HDSS chose to file it here. Microchip is unaware of any third-party
`
`witnesses or evidence in Texas. Transfer for convenience is warranted for at least the following
`
`reasons.
`
`First, as the Court knows, in a patent case the bulk of the evidence comes from the accused
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`infringer. See In re Genentech Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009). Microchip’s
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`development and marketing of many of the myriad accused products occurred in the NDCA,
`
`giving the NDCA a local interest in resolving the disputes that gave rise to this suit. Most
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`Microchip engineers knowledgeable about the accused products are located in the NDCA and in
`
`neighboring Arizona. The bulk of Microchip’s technical and marketing documents are generated
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`and maintained in the NDCA and Arizona, not in Texas. By contrast, none of the known party
`
`witnesses likely to testify at trial are located in this District. For these reasons, the NDCA is clearly
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`the more convenient forum for litigation and trial of this dispute.
`
`
`1 On February 11, 2021, counsel for the parties conferred in a good-faith attempt to resolve this
`motion by agreement, as set forth in L.R. CV-7. This motion is opposed because Plaintiff does
`not agree to transfer the case to NDCA.
`
`
`
`
`1
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`Second, as the Court also knows, the convenience of third-party witnesses and ability to
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`compel their attendance at trial are the most important factors in the transfer analysis. Here, this
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`factor tips decidedly in favor of transfer to the NDCA. Most of the presently known third-party
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`witnesses are in California, and none of them reside in Texas. Many of the named inventors of the
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`Asserted Patents, and many named inventors of critical prior art identified to-date, reside in the
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`NDCA. Former Microchip employees having knowledge about the development and marketing
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`of the Accused Products are located in California. Conversely, to Microchip’s present knowledge,
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`there are no third-party witnesses residing in this District, or anywhere else in Texas for that matter.
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`Third, the parties’ connections to this District are highly attenuated. HDSS was only
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`recently formed as a Texas shell corporation. Microchip’s office in Austin does not have any
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`relevant witnesses, or employees dedicated to working on any of the accused features of the
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`Accused Products.
`
`In sum, this case involves a dispute between a shell plaintiff with California-resident
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`principals and an Arizona-based corporate defendant regarding products developed in California
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`and Arizona, with most party and non-party witnesses in California. It would be far more
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`convenient for the parties and non-party witnesses if this case were litigated and tried in the
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`NDCA. Therefore, Microchip respectfully moves to transfer the case to the NDCA.
`
`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`The Pleadings, Asserted Patents, And Accused Products
`
`HDSS filed this case against Microchip on November 30, 2020, alleging that Microchip
`
`infringes U.S. Patent Nos. 7,260,731 (the “’731 Patent”); 7,870,404 (the “’404 Patent”); 7,810,002
`
`(the “’002 Patent”); 6,748,577 (the “’577 Patent”); 7,154,299 (the “’299 Patent”); 7,302,619 (the
`
`“’619 Patent”); 6,774,033 (the “’033 Patent”) (collectively, the “Asserted Patents”) by making and
`
`selling certain Microchip products. Dkt. 1.
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`
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`2
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`In its Complaint, HDSS identifies the following products:
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`• Microchip’s PIC24 family of microcontrollers with eXtreme Low-Power or XLP
`technology (Dkt. 1, ¶¶ 16, 31);
`
`• Microchip’s PIC32MZ DA, PIC32MZ EF, and PIC32MK microcontrollers (Dkt. 1,
`¶ 109);
`
`• Microsemi PolarFire FPGAs (Dkt. 1, ¶¶ 91, 127);
`
`• SAM L11 microcontrollers with ARM TrustZone technology (Dkt. 1, ¶ 52); and
`
`• AT40K FPGAs (Dkt. 1, ¶ 71) (collectively, the “Accused Products”).
`
`Microchip answered the complaint on February 5, 2020 (Dkt. 15), and to date, no case
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`management conference has yet been set.
`
`B. Microchip’s Expected Witnesses And Other Evidence Are Located In The
`NDCA Or Nearby Arizona.
`
`Microchip is headquartered in Chandler, Arizona. Blixt Decl., ¶ 3.2 It also has a significant
`
`presence in San Jose, California, particularly for research and product development, with
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`approximately 920 employees in San Jose. Id. The majority of the Accused Products were
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`developed in California, or in nearby Arizona. None were developed in Texas.
`
`The AT40K products were designed, developed, and tested in San Jose, California, and
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`Chesapeake, Maryland, by Atmel Corp. (“Atmel”), a company that was based in Northern
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`California and acquired by Microchip. Id., ¶¶ 5-6. Microchip also continues to market and
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`provide customer support for this product from its San Jose office. Id., ¶ 7. Documents relevant
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`to the design, functionality, and marketing of the AT40K are generated and maintained in the
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`NDCA. Id., ¶ 8. No relevant and non-cumulative witnesses or evidence for the AT40K products
`
`are in Texas. Id., ¶¶ 6-9.
`
`
`2 This Motion is supported by the Declarations of Rachel M. Walsh (“Walsh Decl.”), Barry J. Blixt
`(“Blixt Decl.”), Mei-ling Chen (“Chen Decl.”), Jonathan W. Greene (“Greene Decl.”), and Neel
`Das (“Das Decl.”).
`
`
`
`3
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`PolarFire FPGAs were designed, developed, and tested largely in San Jose, California, with
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`support from Allentown, Pennsylvania, and Germany. Greene Decl. ¶ 5. These activities were
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`managed out of San Jose, California. Id. PolarFire FPGAs were originally offered by Microsemi
`
`Corp. (“Microsemi”), another company headquartered in California, or its predecessors. Id., ¶¶ 4-
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`5. Following its acquisition of Microsemi, Microchip continues to market and provide customer
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`support for this product primarily from its San Jose office in the NDCA. Id., ¶ 6. Documents
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`relevant to the design, functionality, and marketing of the PolarFire FPGAs are generated and
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`maintained in these locations. Id., ¶ 7. In comparison to the large teams in the NDCA, Microchip
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`only employs five employees in Texas that work on the PolarFire FPGAs. Id., ¶¶ 6, 9. These five
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`employees include one marketing employee currently working from home in Copper Canyon, two
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`customer support employees working from their homes near Dallas, and two field applications
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`engineers who assist with customer integration but generally do not have knowledge about internal
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`implementation details. Id. These employees are not likely to have detailed information about the
`
`accused hardware features of the Accused Products. Id.
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`The SAM L11 microcontrollers were originally developed by Atmel Corporation, a
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`company that was based in San Jose, California, and then acquired by Microchip. Das Decl., ¶ 8.
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`The SAM L11 microcontrollers were designed, developed, and tested primarily in San Jose,
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`California, with some assistance from India and France. Id., ¶ 9. Thus, potential Microchip
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`witnesses who are knowledgeable about the functionality of the SAM L11 products likely reside
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`in the NDCA. Id. Based on HDSS’s current allegations, much of the accused technology is
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`provided by ARM Ltd. (“ARM”). Id., ¶ 10. Third-party witnesses from ARM likely reside in the
`
`
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`4
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`
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`United Kingdom.3 Id. Microchip also provides ongoing marketing and customer support for these
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`products in the Arizona. Id., ¶ 11. No relevant and non-cumulative witnesses or evidence for the
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`SAM L11 products are in Texas. Id., ¶¶ 9-13.
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`The Microchip PIC24 and PIC32 families of products are designed, developed, and
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`marketed in Chandler, Arizona, and India. Chen Decl., ¶¶ 5-6; Das Decl. ¶ 5-6. Documents
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`relevant to the design, functionality, marketing, and finances of these products are generated and
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`maintained in Chandler. Chen Decl. ¶ 7; Das Decl. ¶ 7. No relevant and non-cumulative witnesses
`
`or evidence for the PIC24 and PIC32 products are in Texas. Chen Decl. ¶¶ 7-8; Das Decl. ¶¶ 5-7,
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`13.
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`Microchip’s Austin office houses approximately 186 of its roughly 18,000 global
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`employees (compared to more than 2000 in Chandler and more than 920 in the NDCA). Blixt
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`Decl., ¶ 3; Das Decl., ¶ 3. None of the employees in Microchip’s Austin office perform any
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`research or development that relates to any accused feature of any Accused Product. See Blixt
`
`Decl., ¶ 9; Chen Decl., ¶ 8; Greene Decl., ¶ 5; Das Decl., ¶ 13. None of Microchip’s employees
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`in Austin are specifically assigned to selling the Accused Products, nor do they have any relevant,
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`non-cumulative, or non-public information about the Accused Products. See Blixt Decl., ¶¶ 8-9;
`
`Chen Decl., ¶¶ 7-8; Greene Decl., ¶¶ 7-8; Das Decl. ¶¶ 7, 12-13.
`
`C.
`
`Plaintiff’s Expected Witnesses Also Reside In California.
`
`HDSS’s principals reside in California, making it likely that its relevant witnesses are
`
`located there as well. While HDSS is incorporated in Texas, it is a wholly-owned subsidiary of
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`Hongdun Group, Inc. (“Hongdun”), which is incorporated in California. See Dkt. 3; Walsh Decl.,
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`Ex. 1 (Hongdun Statement of Information). In fact, HDSS was incorporated shortly before this
`
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`3 ARM is based in the United Kingdom, but has its U.S. headquarters in San Jose, California. Das
`Decl., ¶ 10.
`
`
`
`5
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`Case 6:20-cv-01092-ADA Document 18 Filed 02/19/21 Page 9 of 19
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`lawsuit was filed and appears to be a shell company that Hongdun created to litigate the Asserted
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`Patents. See Dkt. 3; Walsh Decl., ¶ 9, and Ex. 2 (Hongdun website), Ex. 3 (Certificate of Formation
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`for Innovative Silicon Solutions, LLC), and Exs. 4-5 (Secretary of State documents changing name
`
`from Innovative Silicon Solutions, LLC to HD Silicon Solutions LLC). Based on the Secretary of
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`State filings for the two companies, the two common signatories, Fahim Aftab (also CEO of
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`Hongdun), and Muhammad Khilji (also CFO of Hongdun), both reside in California, not Texas.
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`Walsh Decl., Exs. 1 and 3. The Patent Assignment record also indicates that HDSS has used
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`Hongdun’s address in Lake Forest, California to conduct business related to the Asserted Patents.4
`
`Id., Ex. 6 at 2, 4-5.
`
`D. Most Of The Known Third-Party Witnesses And Evidence Are Located In
`the NDCA—None Are Located In Texas.
`
`Most of the known third-party witnesses are located in the NDCA, and Microchip is
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`unaware of any relevant third-party witnesses in Texas. For example, most of the Asserted Patents
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`were developed by employees of companies resident in the NDCA,5 and most of the named
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`inventors still reside in California. Walsh Decl., ¶ 10. This includes the following named inventors
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`located in California:
`
`Name
`Mira Ben-Tzur
`Dafna Beery
`Gorley Lau
`Krishnaswamy Ramkumar
`Sameer Halepete
`Andrew Read
`Keith Klayman
`
`Asserted Patent(s) Current Location
`’033
`Sunnyvale, CA
`’033
`Palo Alto, CA
`’033
`Fremont, CA
`’033
`San Jose, CA
`’731 and ’404
`San Jose, CA
`’731 and ’404
`Sunnyvale, CA
`’731, ’404, and ’002 Folsom, CA
`
`
`4 The address was later changed to Austin, TX.
`5 The ’731, ’404, and ’002 Patents were initially assigned to Transmeta Corp. (“Transmeta”) in
`Santa Clara, CA; the ’033 Patent was initially assigned to Cypress Semiconductor Corp.
`(“Cypress”) in San Jose, CA; and the ’619 Patent was initially assigned to Mindspeed
`Technologies Inc. (“Mindspeed”) in Newport Beach, CA. Dkt. 1, Exs. 1-3, 6-7; Walsh Decl., Ex.
`6 at 3 and Ex. 19.
`
`
`
`6
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`
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`Duncan Fisher
`
`’619
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`Mission Viejo, CA
`
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`Id. Based on Microchip’s investigation to date, none of the inventors on any of the Asserted
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`Patents are located in Texas. Id.
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`The Asserted Patents were acquired by HDSS from Intellectual Ventures LLC, on January
`
`10, 2020, making Intellectual Ventures a likely source of important information about patent
`
`valuation, among other relevant issues. Id., Ex. 6, 18. Intellectual Ventures has offices in
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`Bellevue, WA and Cupertino, CA, which is in the NDCA. Id., Ex. 7. Intellectual Ventures has no
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`known presence in Texas. Id.
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`Finally, because the vast majority of semiconductor research and development took place
`
`in the NDCA in the 1990s and early 2000s, much critical prior art was developed in the NDCA,
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`where many of the named inventors of these references still reside. In the early stages, Microchip
`
`has already identified a number of key prior art references that were developed in the NDCA by
`
`inventors who still reside in the NDCA. Id., Exs. 8-15, ¶ 20.
`Prior Art Patent(s) Asserted
`Patent(s)
`6,272,642, 6,347,379,
`’731 and ’404 San Jose, CA
`and 6,704,880
`6,347,379 and
`6,704,880
`2003/0101361
`2003/0101361
`6,522,001
`6,545,356
`5,675,262
`5,675,262 and
`6,242,947
`5,675,262
`
`Current Location
`
`’731 and ’404 Palo Alto, CA
`’731 and ’404 San Jose, CA
`’731 and ’404 Union City, CA
`’033
`San Francisco, CA
`’033
`Fremont, CA
`’299
`San Jose, CA
`’299
`San Jose, CA
`’299
`Los Gatos, CA
`
`Name
`
`Xia Dai (Intel)
`
`Borys S. Senyk (Intel)
`Satchit Jain (Intel)
`Siripong Sritanyaratana
`(Intel)
`Jigish D. Trivedi (Micron)
`Scott G. Meikle (Micron)
`Khue Duong (Xilinx)
`Stephen M. Trimberger
`(Xilinx)
`Bernard J. New (Xilinx)
`
`
`Id.
`
`
`
`7
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`III. LEGAL STANDARD
`
`Title 28 U.S.C. § 1404(a) provides that, for the convenience of parties and witnesses, a
`
`district court may transfer any civil action to any other district or division where it might have been
`
`brought or to any district or division to which all parties have consented. 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). If so, courts
`
`weigh four private and four public factors.
`
`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; (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
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`unnecessary problems of conflict of laws [or in] the application of foreign law.” Id. Each factor
`
`can favor transfer even if that factor is, standing alone, insufficient to warrant transfer. In re Apple,
`
`979 F.3d 1332, 1340 (Fed. Cir. 2020).
`
`IV.
`
`THE NDCA IS A CLEARLY MORE CONVENIENT FORUM THAN THIS
`DISTRICT FOR THIS CASE.
`
`Considering the public and private factors under Section 1404(a), the Northern District of
`
`California is the most convenient forum for this case for both party witnesses and essential third-
`
`party witnesses necessary for the litigation of this case. As a result, Microchip’s motion to transfer
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`this case to the NDCA should be granted.
`
`A.
`
`This Case Could Have Been Filed In The NDCA.
`
`
`
`8
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`Case 6:20-cv-01092-ADA Document 18 Filed 02/19/21 Page 12 of 19
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`As an initial matter, transfer is available to any venue where the case “might have been
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`brought.” 28 U.S.C. § 1404(a). This case could have been filed in the NDCA because Microchip
`
`has offices in the NDCA, and the Accused Products have been researched, designed, tested, and
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`marketed in the NDCA. 28 U.S.C. § 1400(b); Blixt Decl., ¶¶ 3, 5-6; Greene Decl., ¶¶ 5-6; Das
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`Decl., ¶ 9.
`
`B.
`
`All Private Interest Factors Heavily Favor Transfer To The NDCA.
`
`The private interest factors heavily favor transfer because most of the relevant party and
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`third-party witnesses and evidence are located in California, not Texas.
`
`1.
`
`Relative Ease Of Access To Sources Of Proof
`
`The ease of access to sources of proof is a significant factor in the transfer analysis. See
`
`Polaris Innovations Ltd. v. Dell, Inc., Civil Action No. SA-16-CV-451-XR, 2016 WL 7077069, at
`
`*6, *11 (W.D. Tex. Dec. 5, 2016) (Rodriguez, J.) (“ease of access to evidence” and “cost and
`
`convenience for traveling witnesses” are “the most important factors”). To determine the ease of
`
`access to sources of proof, the Court should look at “the location where the allegedly infringing
`
`products were researched, designed, developed and tested.” XY, LLC v. Trans Ova Genetics, LC,
`
`Case No. W-16-CA-00447-RP, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5, 2017) (Manske, J.).
`
`While electronic documents may be accessible anywhere, the Court “must adhere to the precedent
`
`of the Fifth Circuit when considering the location of relevant documents and information.” Parus
`
`Holdings Inc. v. LG Elecs. Inc., No. 6:19-CV-00432-ADA, 2020 WL 4905809, at *3 (W.D. Tex.
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`Aug. 20, 2020) (Albright, J).
`
`The majority of sources of proof for both Microchip and HDSS is located in California,
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`not Texas. Microchip researches, designs, develops, and tests the Accused Products largely in the
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`NDCA or Arizona, not in Texas. Blixt Decl., ¶ 6; Greene Decl., ¶ 5; Chen Decl., ¶ 5; Das Decl.,
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`¶ 9; see Apple, 979 F.3d at 1340 (“the movant need not show that all relevant documents are located
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`9
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`in the transferee venue to support a conclusion that the location of relevant documents favors
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`transfer.”). Most of the named inventors of the Asserted Patents are located in the NDCA, whereas
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`to Microchip’s present knowledge, no such relevant evidence is located in this District. Walsh
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`Decl., ¶ 10. Many named inventors of important prior art are also located in the NDCA. Id., ¶ 20.
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`Moreover, HDSS is a wholly-owned subsidiary of Hongdun Group, a patent monetization entity
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`located in California. See Dkt. 3; Walsh Decl., Exs. 1-2. Indeed, both executives for HDSS appear
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`to reside in California, suggesting that relevant HDSS witnesses and documents are located in
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`California, not Texas. Walsh Decl., Exs. 1 and 3, ¶ 9. Thus, the relative ease of access to sources
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`of proof heavily favors transfer to the NDCA.
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`2.
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`Availability Of Compulsory Process
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` “The Court considers the availability of compulsory process to secure the attendance of
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`witnesses, particularly non-party witnesses whose attendance may need to be secured by a court
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`order.” Fintiv, Inc. v. Apple Inc., No. 6:18-CV-00372-ADA, 2019 WL 4743678, at *5 (W.D. Tex.
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`Sept. 13, 2019) (Albright, J.). This is the most important factor because the ability to compel
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`appearance at trial is crucial for evaluating the “strength or weakness of the witness’ testimony.”
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`Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992).
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`Here, the ability to compel critical third-party witnesses to appear at trial makes the NDCA
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`clearly more convenient than this District. Indeed, most of the known third-party witnesses who
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`bear on both noninfringement and invalidity are located in the NDCA, while none are located in
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`Texas.
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`First, aside from the ’299 and ’577 Patents, which identify foreign inventors and a foreign
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`initial assignee, the rest of the Asserted Patents were initially assigned to companies headquartered
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`in California (Transmeta in Santa Clara, Cypress in San Jose, and Mindspeed in Newport Beach)
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`by inventors that reside in California. See n.5, supra. As charted in Section II.D, eight of the
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`10
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`named inventors reside in California, and six reside in the NDCA, with a seventh in nearby Folsom,
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`CA.6 Walsh Decl., ¶ 10. The remaining named inventors are located overseas, or in Washington
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`and Massachusetts, id., and are neutral to this factor. See Apple, 979 F.3d at 1342. These third-
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`party named inventors are likely to have information about the conception, reduction to practice,
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`and technical details for the Asserted Patents, but have no incentive to appear at trial. See VLSI
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`Tech. LLC v. Intel Corp., No. 6:19-CV-00254-ADA, 2019 WL 8013949, at *4 (W.D. Tex. Oct. 7,
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`2019) (Albright, J.) (“Because inventors’ testimony is extremely important, inventors are key
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`witnesses and the Court gives greater weight to their convenience.”). The NDCA has subpoena
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`power to compel these critical witnesses to appear at trial, whereas this District does not.
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`Second, Intellectual Ventures, a prior assignee of the Asserted Patents, is likely to have
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`important information about patent valuation and details about HDSS’s identification and
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`acquisition of the Asserted Patents. Intellectual Ventures has an office in Cupertino, CA, which
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`is in the NDCA. Walsh Decl., Ex. 7. It does not appear to have any offices in Texas. Id.
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`Third, in the early stages of this case, Microchip has already identified nine named
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`inventors of relevant prior art, as charted in Section II.D. On the other hand, Microchip is currently
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`not aware of any relevant prior art inventors in Texas who would potentially need to appear at trial.
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`These witnesses may have important information in support of Microchip’s invalidity defenses,
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`but they would have no incentive to appear at trial in this District and could not be compelled to
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`do so by this Court. The NDCA has subpoena power to compel these witnesses to appear at trial,
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`whereas this District does not.
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`6 Folsom, California is 108 miles away from the NDCA’s San Francisco courthouse and 102 miles
`away from the NDCA’s Oakland courthouse. Walsh Decl., ¶ 10.
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`11
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`Because many important third-party witnesses can be compelled to testify by and not this
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`District, this factor also weighs heavily in favor of transfer.
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`3.
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`Cost Of Attendance For Willing Witnesses
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`“The convenience of the witnesses is probably the single most important factor in transfer
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`analysis.” In re Genentech, 566 F.3d at 1343. “When the distance between an existing venue for
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`trial of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of
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`inconvenience to witnesses increases in direct relationship to the additional distance to be
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`traveled.” Id. Although more weight is given to non-party witnesses, “the court also appropriately
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`considers the cost of attendance of all willing witnesses.” Polaris, 2016 WL 7077069, at *6
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`(emphasis in original).
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`Here, the convenience of both party and third-party witnesses overwhelmingly favors
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`transfer to the NDCA. As discussed above, the vast majority of the third-party witnesses reside in
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`the NDCA or California. See Section IV.B.2, supra. To the extent any of these witnesses are
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`willing to appear at trial, it is significantly more convenient for them to attend trial in the NDCA
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`than it is to travel to Texas.
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`The convenience and cost for party witnesses to attend trial also favors transfer to the
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`NDCA. Microchip’s witnesses reside in the NDCA or Arizona, including the engineers who
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`researched, designed, and tested the Accused Products. See Blixt Decl., ¶ 6; Chen Decl., ¶ 5;
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`Greene Decl., ¶ 5; Das Decl., ¶ 9. The employees in Microchip’s Austin office do not have any
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`relevant, non-cumulative, or non-public information about the Accused Products. See Blixt Decl.,
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`¶¶ 8-9; Chen Decl., ¶¶ 7-8; Greene Decl., ¶¶ 7-8; Das Decl. ¶¶ 7, 12-13.
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`Moreover, though HDSS is incorporated in Texas, its potential witnesses appear to reside
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`in California. See Section II.C, supra. Hongdun is headquartered in California, where two high-
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`ranking employees common to HDSS and Hongdun (Mr. Aftab and Mr. Khilji) reside. Id. It
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`would be much more convenient for even HDSS’s witnesses to take an hour-long flight within the
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`state than to travel to Waco, Texas.
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` “[T]he task of scheduling fact witnesses so as to minimize the time when they are removed
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`from their regular work or home responsibilities gets increasingly difficult and complicated when
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`the travel time from their home or work site to the court facility is five or six hours one-way as
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`opposed to 30 minutes or an hour.” Wet Sounds, Inc. v. Audio Formz, LLC, 2017, A-17-CV-141-
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`LY, WL 4547916, at *3 (W.D. Tex. Oct. 11, 2017) (Austin, J.). Here, many of the fact witnesses
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`would only be a short drive away from the NDCA courthouses, or at worst an hour-long flight
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`away. See Walsh Decl., ¶ 11. On the other hand, the same witnesses would have to travel to an
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`airport, fly for over three and a half hours before driving another 90 minutes to Waco, adding up
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`to five or six hours of