Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 1 of 21
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`XR COMMUNICATIONS, LLC, dba
`VIVATO TECHNOLOGIES,
`
`v.
`
`HP INC.,
`
`Plaintiff,
`
`Defendant.
`
`Civil No. 6:21-cv-00694-ADA
`
`JURY TRIAL REQUESTED
`
`DEFENDANT HP INC.’S OPPOSED MOTION TO TRANSFER VENUE TO
`THE NORTHERN DISTRICT OF CALIFORNIA UNDER 28 U.S.C. § 1404(a)
`
`1
`
`APPLE 1038
`Apple et al. v. XR Commc'ns
`IPR2022-00367
`
`

`

`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 2 of 21
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1 
`
`FACTUAL BACKGROUND ............................................................................................. 1 
`
`A. 
`
`HP’s Relevant Witnesses and Documents Are Located in Northern California
`and Taiwan .............................................................................................................. 2 
`XR’s Principal Place of Business in California ...................................................... 3 
`B. 
`LEGAL STANDARD ......................................................................................................... 3 
`
`The Northern District of California Is Clearly the More Convenient Venue ..................... 5 
`
`A. 
`B. 
`
`Venue is Proper in the Northern District of California ........................................... 5 
`The Private Interest Factors Favor Transfer to Northern District of California ..... 5 
`1. 
`Willing Witnesses Convenience Favors Transfer ....................................... 5 
`2. 
`The Availability of Compulsory Process in NDCA Favors Transfer ......... 6 
`3. 
`The Relative Ease of Access to Sources of Proof Favors Transfer ............ 9 
`4. 
`Transfer Presents No Practical Problems .................................................. 10 
`The Public Interest Factors Favor Transfer .......................................................... 12 
`1. 
`NDCA Has a Strong Local Interest in This Dispute ................................. 12 
`2. 
`Court-Congestion is Neutral and Should Be Given Little Weight ........... 13 
`3. 
`The Remaining Public-Interest Factors Are Neutral ................................ 13 
`CONCLUSION ................................................................................................................. 14 
`
`C. 
`
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`
`
`2
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`

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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)..................................................................................................6
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) .....................................................................................................7
`
`In re Apple Inc.,
`No. 2021-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) ......................................... passim
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ............................................................................................6
`
`In re Apple, Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)........................................................................................ passim
`
`In re Dish Network L.L.C.,
`No. 2021-182, 2021 WL 4911981 (Fed. Cir. Oct. 21, 2021)........................................... passim
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)..................................................................................................6
`
`In re Google Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ................................................5, 10
`
`In re Google LLC,
`2021 WL 3378938 (Fed Cir. 2021)..........................................................................................13
`
`HD Silicon Sols. LLC v. Microchip Tech., Inc.,
`No. W-20-CV-01092-ADA, 2021 WL 4953884 (W.D. Tex. Oct. 25, 2021) ......................6, 10
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................6
`
`In re HP Inc.,
`826 Fed. Appx. 899 (Fed. Cir. 2020) ...............................................................................4, 6, 10
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) ........................................... passim
`
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ........................................................................................ passim
`
`3
`
`

`

`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 4 of 21
`
`In re Juniper Networks, Inc., No. 2021-156,
`2021 WL 4519889 (Fed. Cir. Oct. 4, 2021) .............................................................................13
`
`In re Morgan Stanley,
`417 F. App’x 947 (Fed. Cir. 2011) ..........................................................................................13
`
`In re Netscout Sys., Inc.,
`No. 2021-173, 2021 WL 4771756 (Fed. Cir. Oct. 13, 2021).................................................4, 5
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................4
`
`In re Pandora Media, LLC,
`No. 2021-172, 2021 WL 4772805 (Fed. Cir. Oct. 13, 2021).................................................4, 7
`
`Parus Holdings Inc. v. LG Elecs. Inc.,
`No. 6:19-cv-00432, 2020 WL 4905809 (W.D. Tex. Aug. 20, 2020) ......................................11
`
`In re Quest Diagnostics Inc.,
`No. 2021-193, 2021 WL 5230757 (Fed. Cir. Nov. 10, 2021) ...................................................6
`
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) .......................................................................................... passim
`
`Super Interconnect Techs. LLC v. Google LLC,
`No. 6:21-cv-00259-ADA, slip op. (W.D. Tex. Nov. 8, 2021) .............................................9, 10
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)................................................................................................14
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .......................................................................................3, 4, 6, 10
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .........................................................................................1, 3, 5, 6
`
`W. Prop. Holdings, LLC v. Aequitas Cap. Mgmt., Inc.,
`392 P.3d 770 (Or. App. 2017)....................................................................................................8
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. 16-cv-00447-RP, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) ........................................9
`
`Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................5
`
`28 U.S.C. § 1404(a) ...............................................................................................................3, 5, 10
`
`4
`
`

`

`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 5 of 21
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c)(1) ....................................................................................................................7
`
`
`
`
`5
`
`

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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 6 of 21
`
`I.
`
`INTRODUCTION
`
`This is a patent infringement case between two companies based in California. XR
`
`Communications, LLC, dba Vivato Technologies (“XR”), is a Delaware LLC, with its principal
`
`place of business in California. HP Inc. (“HP”) is a Delaware corporation, with its principal
`
`place of business in California. Accordingly, this case has numerous connections to the Northern
`
`District of California (“NDCA”), and no connection to Waco. A straightforward application of
`
`the Volkswagen factors shows that this case should be transferred to NDCA. In particular, the
`
`majority of HP’s likely witnesses are based in Palo Alto, California and Taiwan. They will find
`
`NDCA a less costly and more convenient forum to appear for trial. Additionally, suppliers,
`
`inventors, prosecuting attorneys, and witness involved in the valuation of XR’s patents can be
`
`compelled to produce documents and testimony in NDCA. With both parties based in California
`
`and the company from which the patented technology originates having been based in NDCA,
`
`NDCA has a greater local interest in this case than Waco. Additionally, from other XR
`
`litigation, NDCA has familiarity with the underlying technology. In stark contrast, Waco has no
`
`connection to any witness or any event in this case. All of the key venue factors favor transfer to
`
`NDCA, and none favors keeping this case in Waco. The motion thus should be granted.
`
`II.
`
`FACTUAL BACKGROUND
`
`XR accuses HP of infringing U.S. Patent No. 10,715,235 (“’235 patent”) (the “Asserted
`
`Patent”). Compl. ¶ 1. Specifically, XR accuses HP consumer and commercial computers that
`
`use the IEEE 802.11ac wave 2 standard alone, or the 802.11ac wave 2 standard and/or the
`
`802.11ax or Wi-Fi 6 standard supporting MIMO and/or MU-MIMO technologies, of
`
`infringement (collectively “Accused Products.”) Ex. A (XR’s 2022-02-25 Supplemental
`
`Infringement Contentions).
`
`The Accused Functionality is contained in the WiFi modules of the Accused Products.
`
`1
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`6
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 7 of 21
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`XR’s infringement allegations show this locus of Accused Functionality. For example, XR
`
`accuses HP’s Envy 15 Laptop of infringement based on the product’s support of MU-MIMO
`
`technology. Ex. A (XR’s 2022-02-25 Supplemental Infringement Contentions) at 1, 50, 51. To
`
`support its allegation, XR generally points to the publicly available product datasheet. Id. The
`
`HP Envy 15 Laptop’s datasheet states that its wireless connectivity is provided by third party
`
`Intel:
`
`
`
`Id.; see also id. Ex. 13 (HP ENVY datasheet) at n. 20 (“All performance specifications represent
`
`the typical specifications provided by HP’s component manufacturers; actual performance may
`
`vary either higher or lower.”) (emphasis added). Aside from twice mentioning HP’s datasheet in
`
`its 93-page infringement chart, XR bases infringement allegations solely on the WiFi standards
`
`for IEEE 802.11ac and/or 802.11ax. XR does not cite to any other HP-related documentation or
`
`any HP-provided component or feature.
`
`A.
`
`HP’s Relevant Witnesses and Documents Are Located in Northern
`California and Taiwan
`
`HP is headquartered in Palo Alto, California, which is in NDCA. Thatcher Decl. ¶ 6.
`
`The HP employees likely to testify at trial about marketing, sales, finance, and patent licensing
`
`related to the Accused Products are all located in NDCA. Id. ¶¶ 13-16. None is located in
`
`WDTX. Id. The HP teams who work on the Accused Products, and have knowledge about their
`
`development, product management, marketing, sales, and financial accounting are based
`
`primarily in Palo Alto, California; Spring, Texas; and Taipei, Taiwan. Id. ¶ 17.
`
`Third parties Intel, Realtek, and Qualcomm supply HP with the WiFi modules used in the
`
`Accused Products that provide the Accused Functionality. Id. ¶ 18. Intel’s headquarters is in
`
`2
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`7
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 8 of 21
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`Santa Clara, California in NDCA. Id. Realtek’s headquarters is in Hsinchu, Taiwan, with its
`
`U.S. office in San Jose, California in NDCA. Id. And Qualcomm’s headquarters is in San
`
`Diego, California. Id. The HP employees that evaluate, select, test, and manage the WiFi
`
`modules are based in Taiwan. Id. ¶ 19. Accordingly, the electronic and paper records related to
`
`the Accused Products are created and stored in or are more easily accessible from NDCA and
`
`Taiwan, than from WDTX. Id. ¶ 23.
`
`B.
`
`XR’s Principal Place of Business in California
`
`According to the Complaint, XR’s “principal place of business at 2809 Ocean Front
`
`Walk, Venice, California 90291.” Compl. ¶ 10. The company from which XR acquired the
`
`patent family to which the Asserted Patent belongs, Vivato, was located in San Francisco, CA.
`
`Ex. 5. At least four of the named inventors and three of the prosecuting attorneys reside in
`
`California. Exs. 1-4, 8.
`
`
`
`III. LEGAL STANDARD
`
`“For the convenience of parties and witnesses, in the interest of justice, a district court
`
`may transfer any civil action to any other district or division where it might have been brought.”
`
`28 U.S.C. § 1404(a). In analyzing a motion to transfer under § 1404(a), the law of the regional
`
`circuit applies. In re Samsung Elecs. Co., 2 F.4th 1371, 1375 (Fed. Cir. 2021); In re Apple, Inc.,
`
`979 F.3d 1332, 1336 (Fed. Cir. 2020) (“Apple II”).
`
`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., 545 F.3d 304,
`
`312-13 (5th Cir. 2008) (“Volkswagen II”). Second, the movant must show “good cause” by
`
`demonstrating that the “transferee venue is clearly more convenient” than the transferor district.
`
`Id. at 315. In evaluating convenience, courts weigh both private and public interest factors. In
`
`3
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`8
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 9 of 21
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`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 most important factor in the transfer analysis is the convenience of the witnesses. In
`
`re Apple Inc., No. 2021-181, 2021 WL 5291804, at *3-4 (Fed. Cir. Nov. 15, 2021) (“Apple IV”);
`
`Samsung, 2 F.4th at 1379; In re Dish Network L.L.C., No. 2021-182, 2021 WL 4911981, at *2
`
`(Fed. Cir. Oct. 21, 2021); In re Hulu, LLC, No. 2021-142, 2021 WL 3278194, at *5 (Fed. Cir.
`
`Aug. 2, 2021). This convenience includes party witnesses, as well as third-party witnesses. In re
`
`Pandora Media, LLC, No. 2021-172, 2021 WL 4772805, at *3-4 (Fed. Cir. Oct. 13, 2021); In re
`
`Netscout Sys., Inc., No. 2021-173, 2021 WL 4771756, at *3 (Fed. Cir. Oct. 13, 2021); In re
`
`Juniper Networks, Inc., 14 F.4th 1313, 1318-19 (Fed. Cir. 2021) (“Juniper I”); Samsung, 2 F.4th
`
`at 1379. Where most witnesses and evidence are closer to the transferee venue with few or no
`
`convenience factors favoring the plaintiff’s chosen venue, the case should be transferred. See In
`
`re HP Inc., 826 Fed. Appx. 899, 904 (Fed. Cir. 2020); Apple IV, 2021 WL 5291804, at *4-5; In
`
`re Nintendo Co., 589 F.3d 1194, 1198 (Fed. Cir. 2009); Juniper I, 14 F.4th at 1323; Samsung, 2
`
`F.4th at 1379; Apple II, 979 F.3d at 1342.
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`4
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`IV.
`
`The Northern District of California Is Clearly the More Convenient Venue
`A.
`
`Venue is Proper in the Northern District of California
`
`The threshold inquiry under § 1404(a) “is whether [the] civil action might have been
`
`brought in the destination venue.” Volkswagen II, 545 F.3d at 312. This first requirement is met
`
`here because HP is headquartered in NDCA. Thatcher Decl. ¶ 6; 28 U.S.C. 1400(b)(“action for
`
`patent infringement may be brought in the judicial district where the defendant resides. . . .”).
`
`B.
`
`The Private Interest Factors Favor Transfer to Northern District of
`California
`
`The private interest factors strongly favor transfer because the overwhelming majority of
`
`witnesses and evidence in this case is located in or is more easily accessible from NDCA.
`
`1. Willing Witnesses Convenience Favors Transfer
`
`The Federal Circuit has repeatedly recognized the importance of employee witnesses
`
`residing in the transferee venue, the convenience of which a district court may not disregard.
`
`Apple IV, 2021 WL 5291804, at *3; Juniper I, 14 F.4th at 1319; Samsung, 2 F.4th at 1379; Hulu,
`
`2021 WL 3278194, at *5; Apple II, 979 F.3d at 1341-42; In re Google Inc., No. 2017-107, 2017
`
`WL 977038, at *3 (Fed. Cir. Feb. 23, 2017) (“Google I”).
`
`Here, HP’s employees who are most knowledgeable about the marketing, sales,
`
`financials, and patent licensing related to the Accused Products are all located in NDCA.
`
`Thatcher Decl. ¶¶ 13-16. Each of these witnesses is a car ride from the courthouses in NDCA,
`
`but more than 1,500 miles and a lengthy plane ride from WDTX. If this case remains in WDTX,
`
`HP’s NDCA-based witnesses would need to spend days away from home and work, as opposed
`
`to several hours if the trial takes place in NDCA. This travel burden is significant and makes
`
`transfer appropriate. See e.g., Volkswagen II, 545 F.3d at 317; Netscout, 2021 WL 4771756, at
`
`*3. This length of travel also imposes additional burdens beyond travel time, such as meal and
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`5
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`10
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 11 of 21
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`lodging expenses. In re Acer Am. Corp., 626 F.3d 1252, 1255 (Fed. Cir. 2010); Volkswagen I,
`
`371 F.3d at 204-05. It would be more convenient for NDCA-based witnesses to attend trial in
`
`NDCA. Volkswagen II, 545 F.3d at 317; see also Apple II, 979 F.3d at 1341-42.
`
`With respect to the Accused Functionality in the Accused Products, as discussed below
`
`concerning the availability of compulsory process in NDCA, third party WiFi module suppliers
`
`are more knowledgeable than HP employees. The HP employees that evaluate, select, test, and
`
`manage integration of those modules, however, are in Taiwan. Thatcher Decl. ¶ 19. NDCA
`
`would also be more convenient for any necessary Taiwan-based witnesses because it is closer
`
`than WDTX, and more importantly accessible by regular direct flights whereas there are no
`
`direct flights from Taipei to Waco or Austin. Prescott Decl. ¶ 15.
`
`In contrast, WDTX is not convenient for any likely HP trial witness. None resides within
`
`this district or within 100 miles of this Court. In situations like this one, where most of the likely
`
`trial witnesses are in the transferee district, the witness convenience factor weighs in favor of
`
`transfer. See HP Inc., 826 Fed. Appx. at 902 (where HP identified several witnesses in NDCA
`
`and no key witnesses resided in the Eastern District of Texas, this factor weighed in favor of
`
`transfer); see also In re Quest Diagnostics Inc., No. 2021-193, 2021 WL 5230757, at *3 (Fed.
`
`Cir. Nov. 10, 2021); Apple II, 979 F.3d at 1341-42; In re Genentech, Inc., 566 F.3d 1338, 1343
`
`(Fed. Cir. 2009); HD Silicon Sols. LLC v. Microchip Tech., Inc., No. W-20-CV-01092-ADA,
`
`2021 WL 4953884, at *5 (W.D. Tex. Oct. 25, 2021).
`
`2.
`
`The Availability of Compulsory Process in NDCA Favors Transfer
`
`Transfer is favored when a transferee forum has absolute subpoena power over a greater
`
`number of third-party witnesses. In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1337-38 (Fed.
`
`Cir. 2009); Genentech, 566 F.3d at 1345; Hulu, 2021 WL 3278194, at *4 n.2; In re Apple, Inc.,
`
`581 F. App’x 886, 889 (Fed. Cir. 2014) (“Apple I”) (This factor “weigh[s] heavily in favor of
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`11
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 12 of 21
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`transfer when more third-party witnesses reside within the transferee venue than reside in the
`
`transferor venue.”). The ability to compel live trial testimony is crucial for evaluating a witness’
`
`testimony. Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992). The need to compel a
`
`witness is presumed when there is no indication that they are willing. Pandora Media, 2021 WL
`
`4772805, at *3; see also Dish Network, 2021 WL 4911981, at *3. A subpoena may only compel
`
`an individual to testify at trial or in a deposition “within the state” or “within 100 miles of where
`
`the person resides, is employed, or regularly transacts business in person.” Fed. R. Civ. P.
`
`45(c)(1).
`
`Here, the Accused Functionality is contained in the WiFi modules incorporated into HP’s
`
`Accused Products. HP sources those modules from third parties Intel, Realtek, and Qualcomm.
`
`Thatcher Decl. ¶ 18. Intel’s headquarters are in NDCA, Realtek’s in Taiwan with its U.S.
`
`presence in NDCA, and Qualcomm’s in San Diego, California. Id. Given the focus of XR’s
`
`infringement contentions on WiFi standards, HP’s WiFi module suppliers are more
`
`knowledgeable about the Accused Functionality than HP. Thus, the presence of HP’s supplier
`
`Intel in NDCA and the presence of HP’s supplier Qualcomm in California weigh in favor of
`
`transfer.
`
`Additionally, HP has identified at least 10 other potential trial witnesses within NDCA’s
`
`subpoena power. As an initial matter, four of the named inventors are located in California:
`
`Siavash Alamouti in Oakland (Ex. 1, Alamouti LinkedIn Profile); Hujun Yin and Praveen
`
`Mehrotra1 in San Jose (Ex. 2, Yin LinkedIn Profile; Ex. 3, Mehrotra BeenVerified Results); and
`
`Bobby Jose in San Diego (Ex. 4, Jose LinkedIn Profile). These named inventors are likely to
`
`
`1 According to this public search, the only “Praveen Mehrotra” who used to live in Spokane, WA
`– Mr. Mehrotra’s location listed on the Asserted Patent – now lives in San Jose, CA.
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`12
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 13 of 21
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`have relevant information about conception and reduction to practice. XR itself identifies Dr.
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`Alamouti as a “key innovator” in the field. Compl. ¶ 11.
`
`Moreover, Ken Biba, the former CEO of Vivato (the company from which XR acquired
`
`the patent family) is located in San Francisco, CA. Ex. 5 (Assignment Chain and Data Sheet for
`
`’329 Application); Ex. 6 (Biba LinkedIn Profile). XR identifies Mr. Biba as “key.” Compl. ¶11.
`
`When Mr. Biba was at Vivato, Vivato was a small company developing the technology reflected
`
`in the Asserted patent family. Ex. 7 (Vivato CEO Search, 10/27/2003); Dkt. No. 1, Ex. A (’235
`
`Patent). Mr. Biba is very likely to have knowledge about the technology at issue and about any
`
`Vivato product that may have practiced the Asserted Patent.
`
`Furthermore, NDCA has subpoena power over at least five witnesses involved in the
`
`prosecution, valuation, and sale of Vivato’s patents. Three California attorneys prosecuted the
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`Asserted Patent: Glen Nuttall in Irvine; Vladislav Teplitskiy in Orange County; and Nicholas
`
`Transier in San Diego. Ex. 8 (Powers of Attorney and Attorney Profiles). Moreover, around
`
`2008, Vivato’s patent portfolio—which includes the family that led to the Asserted Patent—was
`
`part of an attempted sale that culminated in foreclosure proceedings. See W. Prop. Holdings,
`
`LLC v. Aequitas Cap. Mgmt., Inc., 392 P.3d 770, 773–74, 780 (Or. App. 2017); Ex. 9
`
`(Commercial Security Agreement, at frame 712). As part of this transaction, some of Vivato’s
`
`shareholders, via a newly formed LLC, were responsible for valuing Vivato’s patent portfolio.
`
`W. Prop. Holdings, 392 P.3d at 773. Those shareholders included Michael Haycox and Chris
`
`Thomas, who are both located in California. Ex. 10 (W. Prop. Holdings Business Entity Search).
`
`No shareholders are located in Texas. Id. Mr. Haycox and Mr. Thomas are likely to have
`
`information relevant to damages, as well as details about the sale and foreclosure proceedings
`
`relevant to XR’s standing.
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`In contrast to the 10 individual third party witnesses and the component supplier within
`
`NDCA’s subpoena power, WDTX only has subpoena power over one relevant third party –
`
`named inventor Marcus Da Silva. “[W]here, as here, [HP] has identified multiple third-party
`
`witnesses and shown that they are overwhelmingly located within the subpoena power of only
`
`the transferee venue, this factor favors transfer.” Hulu, 2021 WL 3278194, at *4. The presence
`
`of HP’s former Senior Director of HP’s Communication Technologies in WDTX does not
`
`change this balance. Thatcher Decl. ¶¶ 21-22. He is only one person and does not have unique
`
`knowledge about the Accused Functionality of the Accused Products. Any relevant knowledge
`
`he possesses is duplicative of willing witnesses - the relevant members on his former team who
`
`are all based in Taiwan and acting Senior Director of HP’s Communication Technologies who is
`
`based in Spring, Texas. Id. ¶¶ 19, 21, 22.
`
`3.
`
`The Relative Ease of Access to Sources of Proof Favors Transfer
`
`The location of sources of proof also favors transfer. This factor remains a meaningful
`
`component in the transfer analysis. See Juniper I, 14 F.4th at 1321(citing Volkswagen II, 545
`
`F.3d at 316); see also Dish Network, 2021 WL 4911981, at *2. “In patent infringement cases,
`
`the bulk of the relevant evidence usually comes from the accused infringer. Consequently, the
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`place where the defendant’s documents are kept weighs in favor of transfer to that location.”
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`Apple II, 979 F.3d at 1340. “In determining the ease of access to sources of proof, the Court will
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`look to the location where the allegedly infringing products were researched, designed,
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`developed and tested.” XY, LLC v. Trans Ova Genetics, LC, No. 16-cv-00447-RP, 2017 WL
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`5505340, at *13 (W.D. Tex. Apr. 5, 2017). “[T]he movant need not show that all relevant
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`documents are located in the transferee venue to support a conclusion that the location of
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`relevant documents favors transfer.” Super Interconnect Techs. LLC v. Google LLC, No. 6:21-
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`cv-00259-ADA, slip op. at 12 (W.D. Tex. Nov. 8, 2021).
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 15 of 21
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`HP creates and stores the vast majority of documents relating to research, design, and
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`development of the Accused Products in NDCA or elsewhere,2 not in WDTX. Thatcher Decl. ¶
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`23. Similarly, the HP documents concerning marketing, sales, financials, and patent licensing
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`for the Accused Products are kept in NDCA, not in WDTX. Id.. HP does not have any
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`documents relevant to this case located in WDTX. Id.. On balance, the relative ease of access to
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`sources of proof in NDCA, therefore, weighs in favor of transfer. See HP Inc., 826 Fed. Appx.
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`at 902 (with no party in the Eastern District of Texas and the existence of physical sources of
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`proof in NDCA, the relative ease of access factor weighed in favor of transfer to NDCA); Apple
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`IV, 2021 WL 5291804, at *2; Juniper I, 14 F.4th at 1321; Super Interconnect, slip op. at 12; HD
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`Silicon Sols., 2021 WL 4953884, at *3.
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`4.
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`Transfer Presents No Practical Problems
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`No “other practical problems” exist here that would make trial more “easy, expeditious
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`and inexpensive” in either NDCA or WDTX. Volkswagen I, 371 F.3d at 203. Although XR
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`sued others on the Asserted Patent in WDTX, co-pending litigation, alone, does not weigh
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`against transfer. “To hold otherwise, [the Court] would be effectively inoculating a plaintiff
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`against convenience transfer under § 1404(a) simply because it filed related suits against
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`multiple defendants in the transferor district. This is not the law under the Fifth Circuit.”
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`Google I, 2017 WL 977038, at *3.
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`Co-pending litigation is given even less weight when, as here, the co-pending suits
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`“involve different defendants with different hardware and different software” making them
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`“likely to involve significantly different discovery and evidence.” DISH Network, 2021 WL
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`4911981, at *4. Here, XR’s co-pending cases involve different defendants, different products,
`
`
`2 With respect to integration of the relevant WiFi modules, HP keeps the majority of those
`documents in Taiwan. Thatcher Decl. ¶¶ 19, 23.
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 16 of 21
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`and even different product categories. Compare, e.g., Dkt. No. 1 (accusing laptops and
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`desktops) with XR Commc’ns v. Cisco, Case No. 6:21-cv-00623, Dkt. No. 1 ¶ 24 (accusing
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`access points and routers). Thus, this case is “likely to involve significantly different discovery
`
`and evidence” from XR’s other cases. Apple IV, 2021 WL 5291804, at *4 (where co-pending
`
`“suit involves different defendants and different accused products,” it is likely to involve
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`“significantly different discovery, evidence, proceedings, and trial” and therefore “any
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`‘incremental gains in keeping [this] case in the Western District of Texas’ are insufficient ‘to
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`justify overriding the inconvenience to the parties and witnesses’”); DISH Network, 2021 WL
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`4911981 at *4; Samsung, 2 F.4th at 1379-80.
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`
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`Moreover, all the co-pending XR cases in WDTX are pre-Markman, whereas NDCA has
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`already invested substantial resources familiarizing itself with the technology. See XR
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`Commc’ns, LLC v. Ruckus Wireless, Inc., No. 18-cv-01992-WHO, 2021 WL 3918136 (N.D. Cal.
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`Sep. 1, 2021); XR Commc’ns, LLC v. ARRIS Sols., Inc., No. 18-cv-2736-WHO; XR Commc’ns,
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`LLC v. Ruckus Wireless, Inc., 21-cv-4679-WHO. The XR NDCA cases relate to patents whose
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`inventors overlap with the Asserted Patent and related technology. In 2021, NDCA issued a
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`twenty-five-page claim construction order, demonstrating its familiarity with XR and the
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`relevant technology. Ruckus Wireless, 2021 WL 3918136.
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`
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`Finally, the Court “must . . . consider the presence of co-pending motions to transfer.”
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`Parus Holdings Inc. v. LG Elecs. Inc., No. 6:19-cv-00432, 2020 WL 4905809, at *7 (W.D. Tex.
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`Aug. 20, 2020). In the co-pending WDTX cases, there are three pending motions to transfer to
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`NDCA. XR Commc’ns LLC v. Apple, Inc., Case 6:21-cv-00620-ADA, Dkt. No. 22 (W.D. Tex.
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`Dec. 10, 2021); XR Commc’ns LLC v. Google LLC, Case No. 6:21-cv-00625, Dkt. No. 23 (W.D.
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`Tex. Nov. 24, 2021); XR Commc’ns LLC v. Amazon.com, Inc., Case No. 6:21-cv-00619, Dkt. 23
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 17 of 21
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`(W.D. Tex. Sept. 7, 2021). Additionally, Dell has filed a motion for intra-district transfer. XR
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`Commc’ns LLC v. Dell Techs., Case No. 6:21-cv-00646-ADA, Dkt. No. 33 (W.D. Tex. March
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`15, 2022). These motions further negate any relevance of XR’s co-pending cases. Overall, “any
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`‘incremental gains in keeping this case in the [WDTX]’ are insufficient to justify overriding the
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`inconvenience to the parties and witnesses” discussed above. Apple IV, 2021 WL 5291804, at *4
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`(quoting Samsung, 2 F.4th at 1380).
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`C.
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`The Public Interest Factors Favor Transfer
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`The public interest factors also favor transfer because NDCA has a strong local interest in
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`this dispute between two California-headquartered companies.
`
`1.
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`NDCA Has a Strong Local Interest in This Dispute
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`“Local interests are not a fiction” and deserve due consideration in the transfer analysis.
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`See Samsung, 2 F.4th at 1380. NDCA has a strong local interest in this matter because it is the
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`location with the most “significant connections between [the venue] and the events that gave rise
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`to [the] suit.” Apple II, 979 F.3d at 1344-45 (original emphasis); see also Dish Network, 2021
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`WL 4911981, at *3; Juniper I, 14 F.4th at 1319-20. HP is headquartered in NDCA. Thatcher
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`Decl. ¶ 6. HP employees in NDCA make the sales, marketing, financial, and patent licensing
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`decisions related to the Accused Products. Id. ¶ 12. Intel, one of HP’s two suppliers of the WiFi
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`modules incorporated into the Accused Products that provide the Accused Functionality, is
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`headquartered in NDCA. Id. ¶ 18.
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`Even plaintiff XR has strong ties to California. Its headquarters are in California.
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`Compl. ¶ 10. And, XR acquired the Asserted Patent family from Vivato – a company which
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`operated out of San Francisco. Ex. 5. Accordingly, NDCA has a strong interest in the outcome
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`of this litigation.
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`In contrast, WDTX has no interest in this case. Other than HP product sales – which
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`Case 6:21-cv-00694-ADA Document 27 Filed 04/08/22 Page 18 of 21
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`occur nationally