Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 1 of 17 PageID #: 1697
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`BILLJCO, LLC,
`
`Plaintiff,
`
`
`
`
`
`v.
`
`CISCO SYSTEMS, INC.,
`
`
`
`Defendants.
`
`Case No. 2:21-cv-181
`
`
`
`CISCO SYSTEMS INC’S MOTION TO TRANSFER VENUE
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`
`
`
`
`
`
`
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`
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`Exhibit 1016
`IPR2022-00426
`Page 1 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 2 of 17 PageID #: 1698
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`
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`TABLE OF CONTENTS
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`Page
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`I.
`
`INTRODUCTION .............................................................................................................. 1
`
`II.
`
`BACKGROUND ................................................................................................................ 1
`
`A.
`
`B.
`
`Procedural History .................................................................................................. 1
`
`The Developers of the Accused Technology, as Well as Other Third-Party
`Witnesses, are in Northern California ..................................................................... 2
`
`C.
`
`Cisco and its Relevant Witnesses Are Also in Northern California ....................... 2
`
`III.
`
`LEGAL STANDARD ......................................................................................................... 3
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`IV.
`
`ARGUMENT ...................................................................................................................... 4
`
`A.
`
`B.
`
`BillJCo Could Have Filed This Case in the Northern District of California .......... 4
`
`Private-Interest Factors Heavily Favor Transfer..................................................... 5
`
`1.
`
`2.
`
`3.
`
`The sources of proof are in California ........................................................ 5
`
`No compulsory process exists over relevant third-party witnesses in
`this District .................................................................................................. 7
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`Costs and burdens for willing witnesses are significantly less in
`California than in this District..................................................................... 7
`
`4.
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`Other practical concerns favor transfer ....................................................... 9
`
`C.
`
`Public-Interest Factors Favor Transfer ................................................................... 9
`
`1.
`
`2.
`
`3.
`
`California has a strong local interest in this case ........................................ 9
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`Court congestion favors transfer ............................................................... 10
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`The other public interest factors are neutral ............................................. 11
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`V.
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`CONCLUSION ................................................................................................................. 12
`
`
`
`i
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`Exhibit 1016
`IPR2022-00426
`Page 2 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 3 of 17 PageID #: 1699
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)..................................................................................................7
`
`Adaptix, Inc. v. HTC,
`837 F.Supp.2d 867 (E.D. Tex. Marh. 28, 2013) ....................................................................6, 9
`
`In re Adobe,
`No: 6:19-cv-00527-ADA (Fed. Cir. 2020) ..............................................................................11
`
`Am. Traffic Sols., Inc. v. B&W Sensors LLC,
`No. 1:12-CV-504, 2013 WL 12138770 (E.D. Tex. Jan 14, 2013) ............................................9
`
`In re Apple, Inc.,
`No. 2021-187, slip. op. (Fed. Cir. Oct. 1, 2021) ........................................................................8
`
`In re Apple, Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)................................................................................................11
`
`Auto. Body Parts Ass’n v. Ford Glob. Techs., LLC,
`2015 U.S. Dist. LEXIS 1987 (E.D. Tex. Jan. 7, 2015) ..............................................................8
`
`Creswell Holdings LLC v. Lenovo (U.S.) Inc.,
`No. 4:15-CV-407, 2016 WL 615652 (E.D. Tex. Feb. 16, 2016) .............................................10
`
`E-Sys. Design, Inc. v. Mentor Graphics, Corp,
`No. 4:17-CV-00682, 2018 WL 2463795 (E.D. Tex. June 1, 2018) ........................................10
`
`In re EMC Corp., Decho Corp. and Iomega Corp.,
`677 F.3d 1351 (Fed. Cir. 2012)..................................................................................................3
`
`EON Corp. IP Holdings v. Sensus, USA, Inc.,
`2012 WL 122562 (E.D. Tex. Jan. 9, 2012) ................................................................................6
`
`Groupchatter, LLC v. Landis + Gyr Techs.,
`2016 WL 541516 (E.D. Tex. Feb. 11, 2016) .............................................................................9
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)..............................................................................................7, 9
`
`In re Hoffman-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)l ..............................................................................................10
`
`ii
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`Exhibit 1016
`IPR2022-00426
`Page 3 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 4 of 17 PageID #: 1700
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`
`
`Network-1 Sec. Solutions, Inc. v. D-Link Corp.,
`433 F. Supp. 2d 795 (E.D. Tex. 2006) .......................................................................................5
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)..............................................................................................3, 9
`
`On Semiconductor Corp. v. Hynix Semiconductor, Inc.,
`No. 6:09-CV-390, 2010 WL 3855520 (E.D. Tex. Sept. 30, 2010) ............................................6
`
`Optimum Power Solutions LLC v. Apple, Inc.,
`794 F. Supp. 2d 696 (E.D. Tex. 2011) .......................................................................................4
`
`In re Radmax, Ltd.,
`720 F.3d 285, 288 (5th Cir. 2013) .............................................................................................6
`
`Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc.,
`No. 2:09-cv-200-TJW, 2011 WL 2937365 (E.D. Tex. July 19, 2011) ..............................11, 12
`
`TiVo, Inc. v. AT&T, Inc.,
`2010 WL 11436066 (E.D. Tex. Sept. 17, 2010) ........................................................................5
`
`In re Samsung Elecs. Co., Ltd.,
`2 F.4th 1371, 1380-81 (Fed. Cir. 2021) ...................................................................................11
`
`In re TOA Technologies,
`543 F. App’x 1006 (Fed. Cir. 2013) ..........................................................................................6
`
`In re TS Tech. USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)................................................................................................11
`
`Viking Techs. v. Assurant, Inc.,
`2021 WL 3520756 (E.D. Tex. June 21, 2021) .........................................................................10
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .................................................................................................3, 4
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .................................................................................................4, 8
`
`Statutes
`
`28 U.S.C. § 1331 ..............................................................................................................................4
`
`28 U.S.C. §1404(a) ................................................................................................................ passim
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`
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`iii
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`Exhibit 1016
`IPR2022-00426
`Page 4 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 5 of 17 PageID #: 1701
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`
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`I.
`
`INTRODUCTION
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`As evidenced by motions to transfer by both Apple and Hewlett Packard Enterprises
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`(“HPE”), this lawsuit is deeply rooted in the Northern District of California. The accused
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`technologies were developed by Apple, and as laid out by Apple’s motion to transfer from the
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`Western District of Texas (Ex. A), the overwhelming majority of sources of proof lie in Northern
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`California. The story is largely the same for Cisco’s sources of proof, as Cisco’s relevant witnesses
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`and documents are found in Northern California as well. The collective motions to transfer of
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`Apple, HPE, and Cisco will allow this case to be conducted in a single forum that is most
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`convenient to numerous witnesses across three cases, and to satisfy the important goal of judicial
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`economy that is critical in the § 1404(a) analysis. Accordingly, Cisco respectfully requests that the
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`Court transfer this matter to the Northern District of California.
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`II.
`
`BACKGROUND
`
`A.
`
`Procedural History
`
`On May 25, 2021, BillJCo filed a civil complaint in this Court against Cisco, alleging
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`patent infringement of three U.S. Patents based on sales of products that implement features of
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`Apple’s iBeacon standard for use in iOS and Android apps. D.I. 1, ⁋ 25.
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`On the same day, BillJCo also filed complaints against Apple in the Western District of
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`Texas, and HPE in the Eastern District of Texas. BillJCo, LLC v. Apple Inc., Civil Action No. 6-
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`21-cv-00528 (W.D. Tex); BillJCo, LLC v. Hewlett Packard Enterprise Company and Aruba
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`Networks, Inc., Civil Action No. 2-21-cv-00183 (E.D. Tex). These two complaints allege
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`infringement of the same patents asserted against Cisco, by use of the same iBeacon standard
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`developed by Apple (“accused technology”).
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`
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`Exhibit 1016
`IPR2022-00426
`Page 5 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 6 of 17 PageID #: 1702
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`
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`B.
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`The Developers of the Accused Technology, as Well as Other Third-Party
`Witnesses, are in Northern California
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`Third-party witnesses with knowledge relating to the technologies at issue, including
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`inventors and authors of the prior art for the Patents-in-Suit, are located in Northern California. In
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`particular, Apple—whose iBeacon standard is the target of BillJCo’s allegations—is located in
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`Cupertino, California, in the Northern District of California. The “vast majority” of Apple
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`personnel that developed the accused technology are located in Cupertino, California. Ex. A at 3,
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`7. The research, design and development of Apple iBeacon technology occurred and persists in
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`the Northern District of California. Id. at 14. At least five witnesses in the parallel Apple
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`proceeding are located in the Northern District of California. Id. at 9. Apple employees are
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`expected to be key witnesses in not only the Apple case, but in the Cisco case, since BillJCo’s
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`allegations against Cisco relate to the same Apple-developed technologies on which Apple is
`
`accused. And unsurprisingly, Apple’s documents relevant to its iBeacon standard (the accused
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`technology), as well as documents related to marketing, sales, and financial information are also
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`located in Northern California. Id. at 7.
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`In addition, the Bluetooth Special Interest Group (“Bluetooth SIG”), the standards
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`organization that oversees the development of Bluetooth standards and the licensing of the
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`Bluetooth technologies, is located in Kirkland, Washington. Ex E, Decl. of Louis Campbell,
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`Exhibit 3. Cisco expects that Bluetooth SIG will be a potential witness with relevant documents
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`given that BillJCo claims the technology at issue in this case is “Bluetooth Low Energy (“BLE”)
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`beacon technology.”
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`C.
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`Cisco and its Relevant Witnesses Are Also in Northern California
`
`Cisco is headquartered in San Jose, California, which is within the Northern District of
`
`California. D.I. 1, ¶ 5. Cisco’s management and primary research and development facilities are
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`2
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`Exhibit 1016
`IPR2022-00426
`Page 6 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 7 of 17 PageID #: 1703
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`located in Cisco’s Corporate Headquarters in San Jose, California. Ex. B, Decl. of June Haase, at
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`¶ 4. And 14,140 Cisco employees are based in the Northern District of California (out of 38,376
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`employees nationwide). Id., ¶¶ 4-5. Cisco’s connection to the San Francisco Bay Area is no secret.
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`For example, Cisco’s name was taken from the last five letters of “San Francisco” and Cisco’s
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`corporate logo is a stylized form of the Golden Gate Bridge. Id. Similarly, Cisco’s development
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`of the accused products is based in Cisco offices in the Northern District of California (San Jose
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`and San Francisco). Ex. C, Decl. of Lucas Hanson, at ¶ 8; Ex. D, Decl. of Neil Kulkarni, at ¶ 6.
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`This includes the Cisco employees most knowledgeable regarding the development of the accused
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`products. Ex. C at ¶ 8; Ex. D at ¶ 6. And while Cisco has satellite offices in Richardson, Texas and
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`Spring, Texas within this District, where 1,801 people are employed collectively, none of the
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`accused products were developed there (or anywhere in Texas) and none of the employees
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`responsible for developing the accused products are located in Texas. Ex. B, ¶ 6; Ex. C at ¶¶ 8-9;
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`Ex. D at ¶¶ 6-7.
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`III. LEGAL STANDARD
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`Section 1404(a) allows a district court to transfer any civil action to any other district or
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`division where the action might have been brought for the convenience of the parties and witnesses
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`and in the interest of justice. See 28 U.S.C. § 1404(a). To determine whether to grant a motion to
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`transfer under Section 1404(a), the Court should balance the private convenience interests of the parties
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`and the public interest in the fair and efficient administration of justice—i.e., the “private” and “public”
`
`interest factors. See, e.g., In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004); In re Nintendo Co.,
`
`589 F.3d 1194, 1197 (Fed. Cir. 2009). In patent cases, the Federal Circuit applies the law of the
`
`appropriate regional circuit to venue issues. See In re EMC Corp., Decho Corp. and Iomega Corp.,
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`677 F.3d 1351, 1354 (Fed. Cir. 2012). Fifth Circuit law applies to the Court’s determination of whether
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`transfer is warranted.
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`3
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`Exhibit 1016
`IPR2022-00426
`Page 7 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 8 of 17 PageID #: 1704
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`
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`“The first inquiry when analyzing a case’s eligibility for 1404(a) transfer is ‘whether the
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`judicial district to which transfer is sought would have been a district in which the claim could have
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`been filed.’” Optimum Power Solutions LLC v. Apple, Inc., 794 F. Supp. 2d 696, 700 (E.D. Tex. 2011)
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`(citations omitted). “Once that threshold inquiry is met, courts analyze both public and private factors
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`relating to the convenience of parties and witnesses as well as the interests of particular venues in
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`hearing the case.” Id. There are four private factors: “1) the relative ease of access to sources of
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`proof; 2) the availability of compulsory process to secure the attendance of witnesses; 3) the cost
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`of attendance for willing witnesses; and 4) all other practical problems that make trial of a case
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`easy, expeditious, and inexpensive.” Volkswagen AG, 371 F.2d at 203. And there are also four
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`public factors: “1) the administrative difficulties flowing from court congestion; 2) the local
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`interest in having localized interests decided at home; 3) the familiarity of the forum with the law
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`that will govern the case; and 4) the avoidance of unnecessary problems of conflict of laws or in
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`the application of foreign law.” Id. “The plaintiff’s choice of venue is not a factor in this analysis.”
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`Optimum Power Solutions, 794 F. Supp.2d at 700 “Rather, the plaintiff’s choice of venue
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`contributes to the defendant’s burden in proving that the transferee venue is ‘clearly more
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`convenient’ than the transferor venue.” Id. (quoting In re Volkswagen of Am., Inc., 545 F.3d 304,
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`315 (5th Cir. 2008)).
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`IV. ARGUMENT
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`A.
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`BillJCo Could Have Filed This Case in the Northern District of California
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`There is no question that BillJCo could have brought its claims in the Northern District of
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`California. Cisco is incorporated in Delaware, and is headquartered in the Northern District.
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`Subject matter jurisdiction is proper under 28 U.S.C. § 1331 because BillJCo asserts federal patent
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`law claims, and all federal courts, including the Northern District of California, have federal
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`4
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`Exhibit 1016
`IPR2022-00426
`Page 8 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 9 of 17 PageID #: 1705
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`
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`question jurisdiction over such claims. Because this action could have been brought in the Northern
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`District of California, the transfer analysis turns on the weight of the public and private factors.
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`B.
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`Private-Interest Factors Heavily Favor Transfer
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`All four private interest factors weigh heavily in favor of transfer to the Northern District
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`of California.
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`1.
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`The sources of proof are in California
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`The vast majority of relevant evidence in this matter is likely to come from Apple, the
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`developer of the accused technology. TiVo, Inc. v. AT&T, Inc., 2010 WL 11436066 (E.D. Tex.
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`Sept. 17, 2010). As Apple has made clear through its transfer motion, all of this work was
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`performed, and the associated evidence lies, in Northern California. Ex. A at 6-7. Cisco will, of
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`course, provide evidence regarding its incorporation of Apple’s standard into Cisco’s products,
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`but the relevant Cisco witnesses similarly reside in the Northern District of California. Ex. C at ¶¶
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`1, 8; Ex. D at ¶¶ 1, 6. Moreover, Apple’s documents and witnesses, which are undoubtedly relevant
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`to the case, all reside in that District. Ex. A (BillJCo v. Apple, Case No. 6:21-cv-00528, Motion to
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`Transfer Venue) at 6-7.
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`Finally, witnesses are “of immense importance” if they have “personal knowledge of
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`relevant prior art [because they] have the possible power of proving the plaintiff’s patent invalid.”
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`Network-1 Sec. Solutions, Inc. v. D-Link Corp., 433 F. Supp. 2d 795, 803 (E.D. Tex. 2006). Cisco’s
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`employee Matthew Gast, who lives and works in the Northern District, is an author of a prior art
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`book regarding the prior art IEEE 802.11 wireless networking standard relevant to the invalidity
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`of the asserted patents, as well as a book regarding the accused iBeacon standard. Ex. B at ¶ 7; Ex.
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`E, Declaration of Louis Campbell, at ¶¶ 2-3, Ex. 1, Ex. 2.
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`There are nearly no relevant sources of proof available only in the Eastern District of Texas.
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`Apple knows of no witnesses or documents related to the accused technology that are located in
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`5
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`Exhibit 1016
`IPR2022-00426
`Page 9 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 10 of 17 PageID #: 1706
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`
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`Texas, let alone this District. Ex. F, Declaration of Mark Rollins in support of Apple’s transfer
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`motion, at ¶¶ 7-11. Cisco also knows of no witnesses related to the accused Cisco products located
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`in Texas. Ex. C at ¶ 9; Ex. D at ¶ 7. As for Cisco documents, any relevant electronic Cisco
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`documents may be accessed from any jurisdiction, and after a reasonable investigation, Cisco is
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`unaware of any physical documents located in this district.1 The sole source of evidence that is
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`available only in the Eastern District of Texas appears to be the named inventor, Bill J. Johnson.
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`D.I. 1 at ¶ 13.
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`The presence of the inventor in this District does not outweigh the presence of all the other
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`evidence in the Northern District of California. Indeed, this Court has regularly transferred cases
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`where the plaintiff was present in the Eastern District of Texas. See Adaptix, Inc. v. HTC., 937 F.
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`Supp. 2d 867, 875 (E.D. Tex. Mar. 28, 2013) (transferring to Northern California where “former…
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`President and CEO, as well as one of the inventors of the patented technology” live in the Eastern
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`District); EON Corp. IP Holdings v. Sensus, USA, Inc., 2012 WL 122562 (E.D. Tex. Jan. 9, 2012)
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`(transferring despite Plaintiff’s “headquarters in the Eastern District”). The presence of the
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`overwhelming majority of evidence in the Northern District of California, and the lack of the same
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`in the Eastern District of Texas, strongly favors transfer. On Semiconductor Corp. v. Hynix
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`Semiconductor, Inc., No. 6:09-CV-390, 2010 WL 3855520, at *4 (E.D. Tex. Sept. 30, 2010)
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`
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`1 As this court is aware, servers located in this district host many of Cisco’s electronic documents. But, the mere
`fact electronic documents may be hosted on servers present in this district should be given little to no weight in the
`transfer analysis because “[t]he critical inquiry ‘is relative ease of access, not absolute ease of access.’” In re TOA
`Technologies, 543 F. App’x 1006, 1009-10 (Fed. Cir. 2013) (quoting In re Radmax, Ltd., 720 F.3d 285, 288 (5th
`Cir. 2013). Because electronic documents can be accessed with equal ease in any jurisdiction––through electronic
`means––their relative ease of access is the same in any jurisdiction. In such cases, this factor should instead turn on
`the location of sources of evidence that are uniquely located in one jurisdiction. Id. (reversing denial of motion to
`transfer for imputing location of electronic documents that were “effectively stored everywhere” to the Eastern
`District of Texas rather than focusing on the location of sources of proof that were available only in another district).
`Here, the unique sources of evidence are Cisco witnesses, Apple’s witnesses, and Apple’s documents, all of which
`are found in the Northern District of California.
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`6
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`Exhibit 1016
`IPR2022-00426
`Page 10 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 11 of 17 PageID #: 1707
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`(transfer granted where “majority of [defendants’] U.S. documents” were merely “closer” to the
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`transferee venue than to the Eastern District of Texas).
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`2.
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`No compulsory process exists over relevant third-party witnesses in
`this District
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`Apple, not Cisco, is the developer of the accused technology standard in this case. Leaving
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`this case in the Eastern District of Texas puts Cisco in the precarious position of going to trial
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`without compulsory process over the witnesses who actually developed the technologies at issue.
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`The forum with the power to compel critical testimony from third-party Apple is the
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`Northern District of California. Current and former Apple employees possessing unique
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`knowledge about the Accused Infringing Instrumentalities, as well as relevant prior art, patent
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`applications, and prior art publications are located in the Northern District of California. Ex. A at
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`9. At least five Apple employees likely to testify in the parallel proceeding are located in the
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`Northern District, and other Apple employees likely to be witnesses in the parallel proceeding are
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`located there as well. Id. In addition, at least two third-party witnesses who developed the BLE
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`and iBeacon technology, Rob Mayor and Jason Giles, are located in the Northern District of
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`California, while none are in the Eastern District of Texas. Ex. F at ¶¶ 7-9. In this situation, “[t]he
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`fact that the transferee venue is a venue with usable subpoena power … weighs in favor of transfer,
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`and not only slightly.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009); see also In re
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`Acer Am. Corp., 626 F.3d 1252, 11255 (Fed. Cir. 2010) (the subpoena power of the transferee
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`court “surely tips in favor of transfer”).
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`3.
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`Costs and burdens for willing witnesses are significantly less in
`California than in this District
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`The convenience afforded to willing witnesses—“the single most important factor in the
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`transfer analysis”—heavily favors litigating this case in Northern California. Genentech, 566 F.3d
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`at 1343. “Additional distance [from home] means additional travel time; additional travel time
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`7
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`Exhibit 1016
`IPR2022-00426
`Page 11 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 12 of 17 PageID #: 1708
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`
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`increases the probability for meal and lodging expenses; and additional travel time with overnight
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`stays increases the time which these fact witnesses must be away from their regular employment.”
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`Volkswagen of Am., 545 F.3d at 317. Moreover, where the distance is greater than 100 miles, “the
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`factor of inconvenience to witnesses increases in direct relationship to the additional distance to
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`be traveled.” Id.
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`The overwhelming majority of witnesses essential to the determination of this matter,
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`including employees of Apple and Cisco, are located in the Northern District of California. Ex. A
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`at 1, 3, 9, 14; Ex. C at ¶ 8; Ex. D at ¶ 6. Litigating this case in the Eastern District of Texas would
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`impose a significant hardship on these witnesses, who are nearly 2,000 miles from this Court.
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`Especially where there are no direct flights to Marshall, Texas, from Northern California. Ex. E, ¶
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`11; see In re Apple, Inc., No. 2021-187, slip. op. at 4 (Fed. Cir. Oct. 1, 2021) (granting mandamus
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`petition to vacate order transferring case from Austin, Texas, to Waco, Texas due, in part, to the
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`lack of direct flights from Northern California to Waco).2
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`By contrast, BillJCo has identified only one witness in the Eastern District of Texas—
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`William J. Johnson—the named inventor of the asserted patents and principal of the Plaintiff
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`“Billjco.” But, the purpose of § 1404(a) “is to prevent the waste of time, energy and money and ‘to
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`protect the litigants, witnesses and the public against unnecessary inconvenience and expense.’” Auto.
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`Body Parts Ass’n v. Ford Glob. Techs., LLC, 2015 U.S. Dist. LEXIS 1987, at *3 (E.D. Tex. Jan. 7,
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`2015). Plaintiff does “not share this concern” because it does not “make, manufacture, or sell any
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`products.” Id. at *9.
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`
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`2 Documents and witnesses from third party Bluetooth SIG will likely be in the Western District of Washington
`where the Bluetooth SIG is located. Ex. E, Exhibit 3. Accessing these sources of proof will require travel from both
`the Northern District of California and the Eastern District of Texas, but the Northern District of California is
`marginally more convenient than the Eastern District of Texas because the Northern District of California is closer.
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`8
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`Exhibit 1016
`IPR2022-00426
`Page 12 of 17
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`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 13 of 17 PageID #: 1709
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`Where, like here, the vast majority of witnesses are in the transferee district, transfer is
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`strongly favored. See, e.g., Genentech, 566 F.3d at 1343; Groupchatter, LLC v. Landis + Gyr
`
`Techs., 2016 WL 541516 (E.D. Tex. Feb. 11, 2016); Adaptix, Inc. v. HTC Corp., 937 F. Supp. 2d
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`867 (E.D. Tex. 2013).
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`4.
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`Other practical concerns favor transfer
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`The final factor, judicial efficiency, heavily favors transfer, because it will allow the
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`consolidation of discovery and motions practice across all three cases brought by BillJCo. Apple
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`and HPE, both of which are accused on Apple’s iBeacon technology, have also moved to transfer
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`their respective cases to the Northern District of California. The identicality of BillJCo’s
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`allegations means that witness and testimonial evidence are certain to overlap, resulting in
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`duplicative motions practice and discovery requests. Transfer “would allow [the] cases to be
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`consolidated and prosecuted together” and “help consolidate judicial resources by obviating the
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`need for extensive motion practice.” Am. Traffic Sols., Inc. v. B&W Sensors LLC, No. 1:12-CV-
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`504, 2013 WL 12138770, at *5 (E.D. Tex. Jan 14, 2013). In addition, the Markman and discovery
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`processes could be consolidated to avoid overlapping case timelines and inconsistent rulings.
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`Moving Cisco’s case along with the Apple and HP cases will satisfy the goals of judicial economy,
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`and strongly favors transfer.
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`C.
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`Public-Interest Factors Favor Transfer
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`Analysis of the public interest factors also favors transfer. Northern California has a strong
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`local interest in hearing this case, and its courts are relatively less congested when compared to
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`this District’s. The other public factors are neutral.
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`1.
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`California has a strong local interest in this case
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`The Northern District of California has a compelling interest in this case. The accused
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`technology was developed by Apple in Northern California, and the relevant Apple employees
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`9
`
`Exhibit 1016
`IPR2022-00426
`Page 13 of 17
`
`

`

`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 14 of 17 PageID #: 1710
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`
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`reside there. Ex. A at 6, 7, 9, 14. The Cisco personnel responsible for incorporating those accused
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`technologies into Cisco products reside in Northern California as well. Ex. C at ¶ 8; Ex. D at ¶ 6.
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`Accordingly, this case “calls into question the work and reputation of several individuals residing
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`in or near [the Northern District of California] and who presumably conduct business in that
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`community.” In re Hoffman-La Roche Inc., 587 F.3d 1333, 1336 (Fed. Cir. 2009). Even if the
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`accused technology had not been developed in Northern California, “the public interest is greater
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`… where [Defendant] is headquartered.” Id. Both Apple and Cisco are headquartered in Northern
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`California, and Cisco employs 14,140 people within that District, all of which favors transfer. See
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`E-Sys. Designs, Inc. v. Mentor Graphics Corp., 2018 WL 2463795, at *6 (E.D. Tex. Jun. 1, 2018)
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`(“[T]he public interest is greater in the [transferee venue] where [defendant] is headquartered and
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`where nearly 1,000 of its employees reside.”); Ex. B at ¶ 4. By contrast, “the Eastern District of
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`Texas has a less significant connection to this litigation,” because neither the corporate
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`headquarters nor the employees who developed the technology are there. Creswell Holdings LLC
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`v. Lenovo (U.S.) Inc., No. 4:15-CV-407, 2016 WL 615652, at *3 (E.D. Tex. Feb. 16, 2016). Sales
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`of the accused products across the United States, including in the Eastern District of Texas, cannot
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`negate these shortcomings to establish “a meaningful connection to the case.” Nintendo, 589 F.3d
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`at 1198. California’s public interest in its business and employee’s reputations therefore favors
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`transfer.
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`2.
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`Court congestion favors transfer
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`The administrative difficulties flowing from court congestion favor transfer to the Northern
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`District for “the speedy and efficient administration of justice.” Viking Techs. v. Assurant, Inc.,
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`2021 WL 3520756 at * 5 (E.D. Tex. June 21, 2021). This Court’s docket is substantially burdened
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`when compared to the Northern District of California’s. This Court currently has 484 pending
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`patent cases being presided over by 11 judges. Ex. E at ¶ 4. The Northern District of California
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`10
`
`Exhibit 1016
`IPR2022-00426
`Page 14 of 17
`
`

`

`Case 2:21-cv-00181-JRG Document 36 Filed 10/11/21 Page 15 of 17 PageID #: 1711
`
`
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`has only 267 pending patent cases, being presided over by 18 different judges. Id. at ¶ 5. Since
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`January 1, 2021, 355 patent cases have been filed in this District, while only 143 patent cases have
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`been filed in the Northern District of California. Id. at ¶¶ 7-8. Patent cases in the Northern District
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`of California also have a historically shorter time to dismissal than the Eastern District of Texas—
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`a median of 258 days to dismissal in the Northern District of California, compared with 211 days
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`in this district since 2009. Id. at ¶¶ 9-10. Simply put, the Eastern District of Texas is more
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`congested than the Northern District of California.
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`Plaintiff may point to this Court’s practice of setting an early trial date as weighing against
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`transfer. But a fast-paced prospective schedule should not be assigned significant weight in the
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`transfer analysis. See, e.g., In re Apple Inc., 979 F.3d 1332, 1344 (Fed. Cir. 2020) (“The district
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`court misapplied the law … by relying too heavily on the scheduled trial date. We have previously
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`explained that a court’s general ability to set a fast-paced schedule is not particularly relevant”);
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`In re Samsung Elecs. Co., Ltd., 2 F.4th 1371, 1380-81 (Fed. Cir. 2021) (“[W]e cannot say that the
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`prospective speed with which this case might be brought to trial is of particular significance in
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`these cases.”); In re Adobe Inc., 823 Fed. App’x 929, 932 (Fed. Cir. 2020) (“The [court congestion]
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`factor concerns whether there is an appreciable difference in docket congestion between the two
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`forums… Nothing about the court’s general ability to set a schedule directly speaks to that issue.”).
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`Accordingly, this factor favors transfer.
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`3.
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`The other public interest factors are neutral
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`The three remaining public interest factors are neutral. There are no perceived conflicts of