Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 1 of 22 PageID #: 1546
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`v.
`
`HEWLETT PACKARD ENTERPRISE
`COMPANY, ARUBA NETWORKS, INC.
`
`
`Defendants.
`
`
`
`
`HEWLETT PACKARD ENTERPRISE COMPANY’S AND ARUBA NETWORKS, LLC’S
`OPPOSED MOTION TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF
`CALIFORNIA UNDER 28 U.S.C. § 1404
`
`
`
`BILLJCO, LLC,
`
`
`
`BILLJCO, LLC,
`
`
`v.
`
`CISCO SYSTEMS, INC.,
`
`
`Plaintiff,
`
`
`Defendant.
`
`Plaintiff,
`
`
`Case No. 2:21-cv-00181-JRG
`(Lead Case)
`
`
`Case No. 2:21-cv-00183-JRG
`(Member Case)
`
`
`
`
`
`
`
`
`
`Exhibit 1017
`IPR2022-00426
`Page 1 of 22
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`

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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 2 of 22 PageID #: 1547
`
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................................1 
`
`BACKGROUND FACTS .....................................................................................................1 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`HPE and Aruba .........................................................................................................1 
`
`The Accused Products ..............................................................................................2 
`
`Plaintiff and the Asserted Patents ............................................................................3 
`
`Relevant Third Parties ...............................................................................................4 
`
`LEGAL STANDARDS .........................................................................................................5 
`
`ARGUMENT .......................................................................................................................6 
`
`A. 
`
`B. 
`
`This Action Could Have Been Brought in the Northern District of
`California ..................................................................................................................7 
`
`The Private Interest Factors Favor Transfer to the Northern District of
`California ..................................................................................................................7 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`The Relative Ease of Access to Sources of Proof ...........................................7 
`
`The Availability of Compulsory Process to Secure Attendance of
`Witnesses ...................................................................................................10 
`
`The Cost of Attendance for Willing Witnesses .............................................11 
`
`All Other Practical Problems That Make Trial Easy, Expeditious,
`and Inexpensive .........................................................................................13 
`
`C. 
`
`The Public Interest Factors Also Favor Transfer ......................................................13 
`
`1. 
`
`2. 
`
`3. 
`
`The Local Interest in Having Localized Interests Decided at Home .............13 
`
`The Administrative Difficulties Flowing From Court Congestion ................14 
`
`The Remaining Public Interest Factors are Neutral ......................................15 
`
`V. 
`
`CONCLUSION ..................................................................................................................15 
`
`
`
`
`
`
`
`ii
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`Exhibit 1017
`IPR2022-00426
`Page 2 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 3 of 22 PageID #: 1548
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)................................................................................................11
`
`Adaptix, Inc. v. HTC.,
`937 F. Supp. 2d 867 (E.D. Tex. Mar. 28, 2013) ......................................................................12
`
`In re Adobe Inc.,
`823 Fed. App’x 929 (Fed. Cir. 2020) .......................................................................................15
`
`Affinity Labs of Tex. v. Samsung Elecs. Co.,
`968 F. Supp. 2d 852 (E.D. Tex. 2013) .....................................................................................13
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) ...................................................................................................11
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)............................................................................................7, 15
`
`Auto. Body Parts Ass’n v. Ford Glob. Techs., LLC,
`2015 U.S. Dist. LEXIS 1987 (E.D. Tex. Jan. 7, 2015) .................................................... passim
`
`B/E Aerospace, Inc. v. Zodiac Aerospace,
`2018 WL 7140299 (E.D. Tex. Nov. 29, 2018) ..........................................................................9
`
`BillJCo, LLC v. Apple Inc.,
`Case No. 6:21-cv-00528 (W.D. Tex. May 25, 2021) ................................................................3
`
`BillJCo, LLC v. Apple, Inc.,
`Case No. 6:21-cv-528 (W.D. Tex. Sep. 10, 2021) .....................................................................4
`
`BillJCo, LLC v.. Cisco Systems, Inc.,
`Case No. 2:21-cv-181 (E.D. Tex. Aug. 2, 2021) .......................................................................4
`
`BillJCo, LLC v. Cisco Systems, Inc.,
`Case No. 2:21-cv-181 (E.D. Tex. May 25, 2021) ......................................................................3
`
`City of New Orleans Emps. Ret. Sys. ex rel. BP P.L.C. v. Hayward,
`508 F. App’x 293 (5th Cir. 2013) ..........................................................................................6, 9
`
`In re Cray,
`871 F.3d 1355 (Fed. Cir. 2017)..................................................................................................7
`
`E-Sys. Design, Inc. v. Mentor Graphics Corp.,
`2018 U.S. Dist. LEXIS 92797 (E.D. Tex. Jun. 1, 2018) ......................................................5, 14
`
`iii
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`Exhibit 1017
`IPR2022-00426
`Page 3 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 4 of 22 PageID #: 1549
`
`
`
`In re Genentech,
`566 F.3d 1338 (Fed. Cir. 2009)..................................................................................5, 7, 10, 11
`
`In re Hoffman-LaRoche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..........................................................................................10, 14
`
`Luminati Networks v. Netnut Ltd.,
`2020 U.S. Dist. LEXIS 248534 (E.D. Tex. Dec. 21, 2020) .......................................................7
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................5
`
`Parity Networks, LLC v. Juniper Networks, Inc.,
`2018 U.S. Dist. LEXIS 227498 (E.D. Tex. Aug. 10, 2018) ......................................................8
`
`In re Samsung Elecs. Co., Ltd.,
`2 F.4th 1371 (Fed. Cir. 2021) ..................................................................................................15
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)..................................................................................................5
`
`Uniloc USA v. Apple Inc.,
`2019 WL 2066121 (W.D. Tex. Apr. 8, 2019)..........................................................................12
`
`Viking Techs. v. Assurant, Inc.,
`2021 U.S. Dist. LEXIS 154161 (E.D. Tex. Jun. 21, 2021) 1 ........................................... passim
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .............................................................................................5, 6, 7
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ........................................................................................... passim
`
`WiAV Networks, LLC v. 3Com Corp.,
`2010 WL 11484491 (E.D. Tex. Jul. 15, 2010) ..................................................................10, 13
`
`Statutes
`
`35 U.S.C. § 1404 .................................................................................................................... passim
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c)(3) ..................................................................................................................10
`
`iv
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`Exhibit 1017
`IPR2022-00426
`Page 4 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 5 of 22 PageID #: 1550
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`
`
`I.
`
`INTRODUCTION
`
`This is a lawsuit against Hewlett Packard Enterprise Company (“HPE”), a company birthed in
`
`Northern California, and its Northern California-based subsidiary, Aruba Networks, LLC (“Aruba”)1,
`
`where only Aruba products are accused of infringement and the allegations are based on compliance
`
`with the iBeacon standard of a third party headquartered in Northern California—Apple Inc. The
`
`Northern District of California is at the heart of this case, and the bulk of the discovery will center
`
`there. It is the location of Aruba’s headquarters, where the accused products were designed and
`
`developed, where Aruba’s witnesses are located, and where third party, Apple, its documents, and its
`
`witnesses are located. Therefore, this case should be transferred to the Northern District of California
`
`under 35 U.S.C. § 1404 for the convenience of the parties and witnesses.
`
`II.
`
`BACKGROUND FACTS
`
`Plaintiff filed its complaint for patent infringement against HPE and its Northern California-
`
`based subsidiary, Aruba, on May 25, 2021. Case No. 2:21-cv-00183, Dkt. 1. In the Complaint,
`
`Plaintiff alleges that Defendants infringe U.S. Patent Nos. 8,671,804 (“the ’804 Patent”), 10,292,011
`
`(“the ’011 Patent”), and 10,477,994 (“the ’994 Patent”) (collectively “Asserted Patents”). Id., ¶ 2.
`
`Plaintiff alleges infringement based on access points and beacon devices made by Aruba that use
`
`Bluetooth Low Energy (“BLE”) protocols and Apple’s iBeacon standard. Id., ¶¶ 20, 27-29 (accusing
`
`“Instrumentalities implement[ing] certain features of different beacon specifications and protocols
`
`including Apple, Inc.’s iBeacon standard”).
`
`A.
`
`HPE and Aruba
`
`The Hewlett-Packard Company originated in a garage during the 1930s in Palo Alto,
`
`
`1 Plaintiff incorrectly identified Aruba Networks, Inc. as a named defendant. Aruba Networks, Inc.
`no longer exists as it was converted from a corporation to a limited liability company in October
`of 2020, before the Complaint was filed.
`
`1
`
`Exhibit 1017
`IPR2022-00426
`Page 5 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 6 of 22 PageID #: 1551
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`
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`California, and is one of the founding companies, if not the original founder, of Silicon Valley. In
`
`November 2015, the Hewlett-Packard Company separated into two entities, HP Inc. and Defendant
`
`HPE. Declaration of Ben Dunsbergen (“Dunsbergen Decl.”), Ex. A, ¶ 3. HPE was headquartered in
`
`San Jose, California, until its recent relocation to Houston, Texas, in December 2020. Id., ¶ 5.
`
`The infringement allegations in this lawsuit concern products designed, developed,
`
`manufactured, and sold by Aruba. Id., ¶ 6. Aruba was founded in Sunnyvale, California in 2002, and
`
`acquired by Hewlett-Packard Company in March 2015. Id., ¶ 2. It currently operates as a subsidiary of
`
`HPE, with its headquarters in San Jose, California. Id., ¶ 4. Aruba currently employs
`
`
`
`individuals in Northern California. Id., ¶ 7.
`
`Aruba’s research, development, sales, and marketing activities are led from its San Jose,
`
`California headquarters. Id., ¶ 8. Although the company operates other offices in U.S. and foreign
`
`locations, it has no office in Plano, Texas, as (incorrectly) alleged in the Complaint. Id., ¶ 10; see also
`
`Case No. 2:21-cv-00183, Dkt. 1, ¶ 7. While there are some HPE sales team members in Plano, they
`
`are dedicated to supporting products in HPE’s Compute, Storage, and Services lines of business—
`
`businesses distinct from and that do not include the Accused Products. Dunsbergen Decl., ¶ 11. Aruba’s
`
`team relevant to the Accused Products and the allegations concerning those products is not in Texas.
`
`Id., ¶¶ 12-18. To the extent that Aruba interfaces with third parties regarding the development of
`
`the Accused Products and the specific alleged functionality at the heart of Plaintiff’s infringement
`
`allegations, those activities occurred in California. Id.
`
`B.
`
`The Accused Products
`
`Plaintiff alleges that certain Aruba access and beacon points that implement the Apple iBeacon
`
`standard infringe the Asserted Patents. See Case No. 2:21-cv-00183, Dkt. 1, ¶¶ 20, 27-29 (accusing
`
`“Instrumentalities implement[ing] certain features of difference beacon specifications and protocols
`
`including Apple, Inc.’s iBeacon standard”). In its Complaint, Plaintiff identifies the Aruba 300, 310,
`
`2
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`Exhibit 1017
`IPR2022-00426
`Page 6 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 7 of 22 PageID #: 1552
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`
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`320, and 330 series Access Points, as well as two models of Aruba Beacons (Products JX984A,
`
`JX985A), two models of Aruba USB Beacons (Products JW315A, JW316A), and one model of the
`
`Aruba Event Beacon (Product JX986A) (collectively, the “Accused Products”). See id., ¶ 27. These
`
`access and beacon points were designed, developed, made and sold by Aruba in California, but not in
`
`Texas. Dunsbergen Decl., ¶¶ 6, 8-10, 12-18.
`
`In its infringement contentions served on September 15, 2021, Plaintiff purports to chart “HPE
`
`Accused Products.” See BillJCo, LLC’s Disclosure of Asserted Claims and Infringement Contentions
`
`(“Infringement Contentions”), Exhibit 1 to the Declaration of R. Prey (“Prey Decl.”) (Ex. B), at 3.
`
`However, Plaintiff has accused only Aruba products, and none from HPE. Id.; see Dunsbergen Decl.,
`
`¶ 6. The contentions center on Aruba products’ alleged use of “BLE (Bluetooth Low Energy) beacon
`
`technology to broadcast data packets” in “compliance with the Apple Proximity Beacon Specification,”
`
`and points to iBeacon Data packet fields and content to allegedly explain how the Accused Products
`
`infringe. See Infringement Contentions at 2; Case No. 2:21-cv-00183, Dkts. 1-7, 1-8, 1-9.
`
`C.
`
`Plaintiff and the Asserted Patents
`
`Plaintiff BillJCo appears to be a non-practicing entity, also going by the name of LBX
`
`Technologies. Prey Decl., Ex. 2; see also Infringement Contentions at 3 (no BillJCo products that
`
`practice the Asserted Patents per P.R. 3-1(f) disclosure). It does not appear to have a website, and its
`
`“principal place of business” is listed as being at the same residential address as the named inventor of
`
`the Asserted Patents, William J. Johnson, in Flower Mound, Texas. Prey Decl., Ex. 2. Mr. Johnson is
`
`Plaintiff’s only member. See Prey Decl., Ex. 3 (BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-00528,
`
`Dkt. 1, ¶ 4 (W.D. Tex. May 25, 2021) (identifying Mr. Johnson as the “sole member of BillJCo”).)
`
`Plaintiff is asserting the same three patents against HPE and Aruba that it is concurrently
`
`asserting against two other technology companies that allegedly use the same beacon technology.
`
`Id.; Prey Decl., Ex. 5 (BillJCo, LLC v. Cisco Systems, Inc., Case No. 2:21-cv-181, Dkt. No. 1 (E.D.
`
`3
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`Exhibit 1017
`IPR2022-00426
`Page 7 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 8 of 22 PageID #: 1553
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`
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`Tex. May 25, 2021).) Notably, Apple, who upon information and belief is the creator of the
`
`iBeacon standard, and concurrently defending a parallel lawsuit in the Western District of Texas,
`
`has moved to transfer its case to the Northern District of California under 28 U.S.C. § 1404(a).
`
`Prey Decl., Ex. 6 (BillJCo, LLC v. Apple, Inc., Case No. 6:21-cv-528, Dkt. 26 (W.D. Tex. Sep. 10,
`
`2021).) Cisco Systems Inc., who is currently defending a parallel lawsuit in this Court, also has its
`
`principal place of business in San Jose, California, which is within the Northern District of
`
`California. Prey Decl., 7 (BillJCo, LLC v.. Cisco Systems, Inc., Case No. 2:21-cv-181, Dkt. No.
`
`18, ¶ 5 (E.D. Tex. Aug. 2, 2021).)
`
`D.
`
`Relevant Third Parties
`
`Plaintiff’s allegations against Aruba’s products rely on their alleged compliance with
`
`Apple’s iBeacon standard, as well as purported use of BLE. Case No. 2:21-cv-00183, Dkt. 1, ¶¶
`
`27-29. In its companion case against Apple, which Apple has moved to transfer to Northern California,
`
`Plaintiff has accused Apple’s BLE iBeacon based technology of infringement. See BillJCo, LLC v.
`
`Apple Inc., Case No. 6:21-cv-528, Dkt. 1 at 6.
`
`Public records indicate that Apple is headquartered in Cupertino, California, which is in
`
`the Northern District of California. BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Dkt. 26 at 2.
`
`Apple’s management and primary research and development facilities are also, upon information
`
`and belief, in Cupertino. Id. at 2-3 (citing Rollins Decl. ¶ 3). Apple has disclosed that the vast
`
`majority of its work on designing, developing, and implementing the accused beacon technology
`
`takes place in Cupertino. Id. at 3 (citing Rollins Decl. ¶¶ 3, 7-9). In its transfer motion, Apple
`
`identified its relevant witnesses, all of whom are in the Northern District of California. Id. (citing
`
`Rollins Decl. ¶¶ 8, 9, 12-14).
`
`The Bluetooth Special Interest Group (“Bluetooth SIG”) is the standards organization that
`
`oversees the development of Bluetooth standards and the licensing of the Bluetooth technologies. Prey
`
`4
`
`Exhibit 1017
`IPR2022-00426
`Page 8 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 9 of 22 PageID #: 1554
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`
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`Decl., Ex. 4; see also BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Dkt. 26 at 7 (citing Huang
`
`Decl.). The Bluetooth SIG is in Kirkland, Washington. Prey Decl., Ex. 4. Aruba expects that any
`
`evidence from the Bluetooth SIG will be found in Washington, which is its only location. See id.
`
`III.
`
`LEGAL STANDARDS
`
`28 U.S.C. § 1404(a) gives courts the discretion to transfer a civil case “[f]or the convenience
`
`of parties and witnesses, in the interest of justice . . . to any other district or division where it might
`
`have been brought.” 28 U.S.C. § 1404(a). “Under Fifth Circuit law, a motion to transfer venue should
`
`be granted upon a showing that the transferee venue is ‘clearly more convenient’ than the venue chosen
`
`by the plaintiff.” In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). The purpose of §
`
`1404(a) “is to prevent the waste of time, energy and money and ‘to protect the litigants, witnesses and
`
`the public against unnecessary inconvenience and expense.’” Auto. Body Parts Ass’n v. Ford Glob.
`
`Techs., LLC, 2015 U.S. Dist. LEXIS 1987, at *3 (E.D. Tex. Jan. 7, 2015) (quoting Van Dusen v.
`
`Barrack, 376 U.S. 612, 616 (1964)).
`
`Courts first determine “whether the judicial district to which transfer is sought would have been
`
`a district in which the claim could have been filed, or whether all parties have consented to a particular
`
`jurisdiction.” E-Sys. Design, Inc. v. Mentor Graphics Corp., 2018 U.S. Dist. LEXIS 92797, at *2-3
`
`(E.D. Tex. Jun. 1, 2018) (citing In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen
`
`I”)). Then, the Fifth Circuit’s public and private interest factors are weighed. Volkswagen I, 371 F.3d at
`
`203; Viking Techs. v. Assurant, Inc., 2021 U.S. Dist. LEXIS 154161, at *5-6 (E.D. Tex. Jun. 21, 2021)
`
`1. Cases in this district are transferred where the balance of those factors show that another venue is
`
`“clearly more convenient.” In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc)
`
`(“Volkswagen II”). The key private interest factors include convenience and costs to parties and third
`
`party witnesses, availability of compulsory process, and ease of access to proof. In re Genentech, 566
`
`F.3d 1338, 1342-45 (Fed. Cir. 2009); see also In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir.
`
`5
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`Exhibit 1017
`IPR2022-00426
`Page 9 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 10 of 22 PageID #: 1555
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`
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`2009) (“This court has held and holds again in this instance that in a case featuring most witnesses and
`
`evidence closer to the transferee venue with few or no convenience factors favoring the venue chosen
`
`by the plaintiff, the trial court should grant a motion to transfer.”); Viking Techs., 2021 U.S. Dist. LEXIS
`
`15416, at *12 (“The third private interest factor considers the cost of attendance for willing witnesses.
`
`The Federal Circuit has described this factor as being the most important.”).2
`
`IV. ARGUMENT
`
`The center of gravity of this case is unquestionably in the Northern District of California.
`
`Plaintiff’s Complaint accuses only Aruba products of infringement, and does so on the basis of alleged
`
`compliance with a standard created by a third party that is headquartered in California, and that itself
`
`has moved to transfer its parallel case to Northern California. BillJCo, LLC v. Apple Inc., Case No.
`
`6:21-cv-528, Dkt. 26. The documents and witnesses relevant to this case are located in California and
`
`not in Texas. Aruba’s headquarters are in Northern California, and Aruba does not maintain any
`
`facilities, design, develop, or manufacture the Accused Products in Texas. Dunsbergen Decl., ¶¶ 4, 7-
`
`10.
`
`When analyzing the convenience of a particular venue, courts must look to where witnesses
`
`and documents relevant to this case are located. City of New Orleans Emps. Ret. Sys. ex rel. BP P.L.C.
`
`v. Hayward, 508 F. App’x 293, 297-98 (5th Cir. 2013). Here, because the teams and decisionmakers
`
`responsible for the design, development, marketing, and/or management of the Accused Products are
`
`centrally in California (and not, by contrast, in Texas), and because the infringement accusations rely
`
`upon a standard created by a third party headquartered in California (and who itself is seeking transfer
`
`of its parallel case to California), the convenience factors support a transfer of venue to the Northern
`
`District of California.
`
`
`2 The plaintiff’s choice of venue is not a distinct factor in the analysis. Volkswagen II, 545 F.3d at
`314-15. Nor is the location of plaintiff’s counsel. Volkswagen I, 371 F.3d at 206.
`
`6
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`Exhibit 1017
`IPR2022-00426
`Page 10 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 11 of 22 PageID #: 1556
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`
`
`A.
`
`This Action Could Have Been Brought in the Northern District of California
`
`Plaintiff could have brought this action in the Northern District of California because
`
`personal jurisdiction and venue are both proper there. See § 1404(a); Volkswagen I, 371 F.3d at
`
`203. HPE’s subsidiary, Aruba, has its headquarters and principal place of business in San Jose,
`
`California. See Dunsbergen Decl., ¶ 4. The design, development, marketing, and product
`
`management of the Accused Products are focused in California. Id., ¶¶ 6-9. Thus, HPE and Aruba
`
`are subject to personal jurisdiction in the Northern District of California. See, e.g., Luminati
`
`Networks v. Netnut Ltd., 2020 U.S. Dist. LEXIS 248534, at *5 (E.D. Tex. Dec. 21, 2020). Aruba’s
`
`California headquarters is also a regular and established place of business for purposes of
`
`establishing proper venue. See 28 U.S.C. § 1400(b); In re Cray, 871 F.3d 1355, 1362-63 (Fed. Cir.
`
`2017). Thus, this suit could have been—and, indeed, should have been—brought in the Northern
`
`District of California.
`
`B.
`
`The Private Interest Factors Favor Transfer to the Northern District of California
`
`The private interest factors strongly favor transfer to the Northern District of California. These
`
`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.” Volkswagen
`
`II, 545 F.3d at 315.
`
`1.
`
`The Relative Ease of Access to Sources of Proof
`
`This factor “relates to the ease of access to non-witness evidence, such as documents and
`
`physical evidence.” In re Apple Inc., 979 F.3d 1332, 1339 (Fed. Cir. 2020). Non-witness evidence
`
`relating to the alleged infringement in this case is centered in California. “In patent infringement cases,
`
`the bulk of the relevant evidence usually comes from the accused infringer. Consequently, the place
`
`where the defendant’s documents are kept weighs in favor of transfer to that location.” Genentech, 566
`
`7
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`Exhibit 1017
`IPR2022-00426
`Page 11 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 12 of 22 PageID #: 1557
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`
`
`F.3d at 1345. “The Fifth Circuit has cautioned this factor remains relevant despite technological
`
`advances having made electronic document production commonplace.” Auto. Body Parts, 2015 U.S.
`
`Dist. LEXIS 1987, at *13; see also Parity Networks, LLC v. Juniper Networks, Inc., 2018 U.S. Dist.
`
`LEXIS 227498, at *5 (E.D. Tex. Aug. 10, 2018) (finding that this factor supported transfer when the
`
`defendant’s relevant sources of proof were in its California headquarters).
`
`In this case, the sources of proof in the Northern District of California include Aruba and third-
`
`party Apple. Dunsbergen Decl., ¶¶ 4, 7-9, 13-18. Employees at Aruba’s headquarters in San Jose,
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`California, make the decisions regarding product development, management, manufacture, marketing,
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`and sales of the Accused Products. Dunsbergen Decl., ¶ 14. The relevant Aruba witnesses, who are all
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`in California, and their relevant knowledge include:
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` Ben Dunsbergen (Vice President of Engineering, Aruba; San Jose, California): knowledge or
`information of product management, development, design, testing, and/or operation of one or
`more of the Aruba AP and Beacon Products;
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` Deven Patel (AP Hardware Manager, Aruba; San Jose, California): knowledge or information
`of product management, development, design, testing, and/or operation of one or more of the
`Aruba AP and Beacon Products;
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` Phillip Carranco (Regulatory Compliance Manager, Aruba; San Jose, California): knowledge
`or information of product management, development, design, testing, and/or operation of one
`or more of the Aruba AP and Beacon Products; and
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` Steve Brar (Senior Director, Product Marketing, Aruba Global Marketing; Roseville,
`California): knowledge or information of product marketing and advertising of one or more of
`the Aruba AP and Beacon Products.
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`Id., ¶ 18. Aruba’s documents relevant to this case are located in California. Id., ¶¶ 15-17. Thus, this
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`factor favors transfer. See, e.g., Parity Networks, 2018 U.S. Dist. LEXIS 227498 at *5.
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`This Court faced a similar circumstance in Auto. Body Parts. See 2015 U.S. Dist. LEXIS 1987.
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`8
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`IPR2022-00426
`Page 12 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 13 of 22 PageID #: 1558
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`There, “the bulk of the relevant evidence regarding the creation of the design” of the accused
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`automotive products was in Michigan, while there were “absolutely no documents or other physical
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`evidence located in the Eastern District of Texas.” Id. at *15; see also B/E Aerospace, Inc. v. Zodiac
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`Aerospace, 2018 WL 7140299, *7-8 (E.D. Tex. Nov. 29, 2018) (recommending transfer to
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`California because the “bulk of the sources of proof, including documents and witnesses, are
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`located on the West Coast,” and the “bulk of the relevant evidence will likely come from the
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`defendant accused of making and selling.”). The same is true here: discovery on the research,
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`development, design, operation, marketing, and sale of the accused products will come from Northern
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`California—both from Aruba and third parties, including Apple. HPE’s office in Plano will not be the
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`focus of any discovery. Dunsbergen Decl., ¶¶ 11-12. Even with HPE’s headquarters located in Texas
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`(but outside this District), the Plano-based sales staff is responsible primarily for products in HPE’s
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`lines of business, none of which are at issue in this litigation, and not Aruba’s products. Id. The
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`
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`employees in this district with any connection to the Accused Products have a peripheral one at best,
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`and more significantly, support and report to Aruba teams in California. Id. The Accused Products were
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`not developed in Texas and decisionmakers overseeing those products are located outside of Texas.
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`Id., ¶¶ 6, 13-18 Thus, as in Auto. Body Parts, because there is no evidentiary connection to this District,
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`this factor strongly favors transfer. See 2015 U.S. Dist. LEXIS 1987 at *15. Moreover, the inquiry for
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`this factor focuses on where documents relevant to this case are located. City of New Orleans, 508 F.
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`App’x at 297 (affirming transfer to where “the relevant documents . . . could be found,” despite
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`presence of documents “of questionable relevance” in the transferor forum) (quotations omitted);
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`Volkswagen II, 545 F.3d at 315 (analyzing only location of documents “relating to the accident” at
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`issue). There are no such documents in Texas. Dunsbergen Decl., ¶¶ 13-18.
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`Further, in addition to third-party Apple, who is located in California, Aruba expects that the
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`9
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`IPR2022-00426
`Page 13 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 14 of 22 PageID #: 1559
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`
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`Bluetooth SIG, located in the state of Washington, will have relevant documents given that Plaintiff
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`accuses Aruba’s alleged use of iBeacon and BLE technology in this case. See BillJCo, LLC v. Apple
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`Inc., Case No. 6:21-cv-528, Dkt. 26 at 7 (citing Huang Decl.); Prey Decl., Ex. 4. Because Apple’s
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`relevant evidence is in California, and because the Bluetooth SIG is in Washington, there are no unique,
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`relevant sources of proof in this District. Id.
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`2.
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`The Availability of Compulsory Process to Secure Attendance of
`Witnesses
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`This factor “generally favor[s] transfer when more non-party witnesses reside within the
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`proposed venue than in the current venue.” WiAV Networks, LLC v. 3Com Corp., 2010 WL 11484491,
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`at *3 (E.D. Tex. Jul. 15, 2010) (citing Volkswagen II, 545 F.3d at 316). “A court cannot compel nonparty
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`witnesses to travel more than 100 miles, unless it is within the same state and will not cause the
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`witnesses to incur substantial travel expenses.” Auto. Body Parts, 2015 U.S. Dist. LEXIS 1987, at *16
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`(citing Fed. R. Civ. P. 45(c)(3)(A)(ii), 45(c)(3)(B)(iii)).
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`The availability of compulsory process factor favors transfer because HPE and Aruba are
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`unaware of any relevant third-party witnesses who would be within the subpoena power of this district.
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`See Genentech, 566 F.3d at 1345 (compulsory-process factor “weighs in favor of transfer” where “no
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`witness [] can be compelled to appear in the Eastern District of Texas”); In re Hoffman-LaRoche, Inc.,
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`587 F.3d 1333, 1337-38 (Fed. Cir. 2009) (transfer favored when transferee forum has absolute
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`subpoena power over a greater number of third party witnesses). The Northern District of California
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`has subpoena power over third-party Apple, and thus has greater ability to compel witnesses on
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`relevant technical topics for both deposition and trial. Genentech, 566 F.3d at 1345 (“The fact that the
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`transferee venue is a venue with usable subpoena power here weighs in favor of transfer[.]”); see Viking
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`Techs., 2021 U.S. Dist. LEXIS 15416, at *11 (“Party witnesses are generally deemed to be willing
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`witnesses, so this factor is directed more to third-party witnesses.”). In its own motion to transfer, Apple
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`10
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`IPR2022-00426
`Page 14 of 22
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`Case 2:21-cv-00181-JRG Document 34 Filed 10/04/21 Page 15 of 22 PageID #: 1560
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`
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`has identified at least five witnesses in the Northern District of California who would testify about,
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`among other things, the iBeacon technology at the core of Plaintiff’s infringement contentions against
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`the Aruba products. See BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Dkt. 26 at 9 (citing
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`Rollins Decl. ¶¶ 8, 9, 12-14). Moreover, the ability to compel live trial testimony is crucial for
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`evaluating a witnesses’ testimony. Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992).
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`Since the Northern District of California is the center of this dispute where third-party
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`witnesses have been identified, and there are no third-party witnesses in the Eastern District of Texas,
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`this factor strongly weighs in favor of transfer.
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`3.
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`The Cost of Attendance for Willing Witnesses
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`The convenience of witnesses is the “single most important factor in transfer analysis.”
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`Genentech, 566 F.3d at 1343. The Fifth Circuit’s “100-mile” rule is applied to “determine the
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`convenience of the transferee district to the witnesses and parties.” Auto. Body