Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`BILLJCO, LLC,
`
`Plaintiff,
`
`v.
`
`APPLE INC.
`
`Defendant.
`
`Case No. 6:21-cv-528-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`APPLE INC.’S OPPOSED MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C.
`§ 1404(a)
`
`
`
`
`
`Exhibit 1019
`IPR2022-00426
`Page 1 of 21
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`

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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 2 of 21
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ...............................................................................................................1
`
`FACTS .................................................................................................................................2
`
`A.
`
`B.
`
`Plaintiff BillJCo .......................................................................................................2
`
`Defendant Apple ......................................................................................................2
`
`LEGAL STANDARD ..........................................................................................................3
`
`THE NORTHERN DISTRICT OF CALIFORNIA IS CLEARLY THE MORE
`CONVENIENT VENUE FOR THIS CASE. ......................................................................5
`
`A.
`
`B.
`
`This Case Could Have Been Brought In NDCA. ....................................................5
`
`The Private Interest Factors Favor Transfer to NDCA. ...........................................5
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Relative Ease Of Access To Sources Of Proof Strongly Favors
`Transfer. .......................................................................................................5
`
`The Availability Of Compulsory Process Is, At Worst, Neutral. ................8
`
`The Attendance Of Willing Witnesses Strongly Favors Transfer. ..............8
`
`The “All Other Practical Problems” Factor Is Neutral Or Favors
`Transfer. .....................................................................................................11
`
`C.
`
`The Public Interest Factors Favor Transfer To NDCA. .........................................12
`
`1.
`
`2.
`
`3.
`
`The Administrative Difficulties Flowing From Court Congestion
`Factor Favors Transfer To NDCA. ............................................................12
`
`The Local Interest Factor Strongly Favors Transfer To NDCA. ...............13
`
`Familiarity With The Governing Law And Conflicts Of Law Are
`Neutral Factors. ..........................................................................................14
`
`V.
`
`CONCLUSION ..................................................................................................................14
`
`
`
`
`
`i
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`Exhibit 1019
`IPR2022-00426
`Page 2 of 21
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 3 of 21
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`10Tales, Inc. v. TikTok, Inc.,
`No. 6:20-CV-00810-ADA, Dkt. No. 88 (W.D. Tex. May 21, 2021)...........................1, 7, 8, 14
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)..................................................................................................9
`
`In re Adobe Inc.,
`823 Fed.Appx. 929 (Fed. Cir. 2020) ........................................................................................13
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) .....................................................................................................8
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)............................................................................................5, 12
`
`In re: Apple Inc.,
`No. 2020-127, 2020 WL 3249953 (Fed. Cir. 2020) ..............................................................4, 8
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ......................................................................................4, 10
`
`Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P.,
`No. 6:15-cv-00091, 2016 WL 6909479 (W.D. Tex. Jan. 28, 2016) ......................................4, 9
`
`CloudofChange, LLC v. NCR Corp.,
`No. 6:19-cv-00513, 2020 WL 6439178 (W.D. Tex. Mar. 17, 2020) .........................................5
`
`Collaborative Agreements, LLC. v. Adobe Sys. Inc.,
`No. 1-14-CV-356, 2015 WL10818739 (W.D. Tex. Aug. 21, 2015) .........................................6
`
`Datascape, Ltd. v. Dell Techs., Inc.,
`No. 6:19-cv-00129-ADA, 2019 WL 4254069 (W.D. Tex. June 7, 2019) .........................10, 13
`
`Flexiworld Techs., Inc. v. Amazon.com, Inc. et al.,
`No. 6:20-cv-00553-ADA, Dkt. No. 101 (W.D. Tex. Aug. 2, 2021) ................................ passim
`
`Gemalto S.A. v. CPI Card Grp. Inc.,
`No. 15-CA-0910, 2015 WL 10818740 (W.D. Tex. Dec. 16, 2015) ..........................................8
`
`In re Genentech, Inc.
`566 F.3d 1338 (Fed. Cir. 2009)........................................................................................ passim
`
`
`
`ii
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`Exhibit 1019
`IPR2022-00426
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 4 of 21
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`In re Google Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ......................................................9
`
`Page(s)
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)............................................................................................8, 13
`
`In re HP Inc.,
`No. 2018-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) .............................................5, 10
`
`InfoGation Corp. v. Google LLC,
`No. 6:20-CV-00366-ADA, Dkt. No. 65 (W.D. Tex. April 29, 2021) .............................1, 2, 10
`
`MasterObjects, Inc. v. Facebook, Inc.,
`No. 6:20-cv-00087-ADA, Dkt. No. 86 (W.D. Tex. July 13, 2021) .........................................10
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................4
`
`Peak Completion Techs., Inc. v. I-TEC Well Solutions, LLC,
`No. A-13-cv-086-LY, 2013 WL 12121002 (W.D. Tex. June 26, 2013) .................................10
`
`Polaris Innovations Ltd. v. Dell, Inc.,
`No. 16-CV-451, 2016 WL 7077069 (W.D. Tex. Dec. 5, 2016) ..........................................6, 10
`
`Ret. Sys. ex rel. BP P.L.C. v. Hayward,
`508 F. App’x 293 (5th Cir. 2013) ..............................................................................................6
`
`In re Samsung Elecs. Co., Ltd.,
`2 F.4th 1371 (Fed. Cir. 2021) ............................................................................................11, 13
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014)..................................................................................................4
`
`In re TS Tech USA Corp.,
`551 F.3d. 1315 (Fed. Cir. 2008).....................................................................................5, 10, 14
`
`In re Uber Techs.,
`852 Fed.Appx. 542 (Fed. Cir. 2021) ........................................................................................11
`
`Uniloc USA Inc. v. Box, Inc.,
`No. 1:17-CV-754-LY, 2018 WL 2729202 (W.D. Tex. June 6, 2018)...........................6, 10, 11
`
`Via Vadis, LLC v. Netgear, Inc.,
`No. 14-cv-809, 2015 WL 10818675 (W.D. Tex. July 30, 2015) .............................................10
`
`
`
`iii
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`Exhibit 1019
`IPR2022-00426
`Page 4 of 21
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 5 of 21
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .............................................................................................4, 5, 9
`
`Page(s)
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ........................................................................................... passim
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. 16-ca-00447, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) ..............................................6
`
`Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................5
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c)(1)(A), (B) .......................................................................................................8
`
`
`
`
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`iv
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`Exhibit 1019
`IPR2022-00426
`Page 5 of 21
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 6 of 21
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`
`
`I.
`
`INTRODUCTION
`
`This is a patent case with no connection to this District. Under a straightforward
`
`application of the Volkswagen factors, this case should be transferred to the Northern District of
`
`California because it is the clearly more convenient venue.
`
`Indeed, all of the key factors favor transfer and none favor keeping this case in this
`
`District. Notably:
`
`• There are at least five key party witnesses in NDCA, and no potential witnesses who
`
`reside in the District;
`
`• The plaintiff, BillJCo, LLC, has no known connection to this District;
`
`• The key sources of proof are in NDCA, and none are in Texas;
`
`• NDCA has a local interest in this case because Apple is based there, and the accused
`
`features were predominantly developed there; and
`
`• This case is in its early stages with discovery stayed and the Markman hearing more
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`than five months away.
`
`This case falls squarely into the category of recent cases where the Court has granted
`
`transfer under 1404(a) based, in large part, on the location of relevant witnesses -- the most
`
`critical factor in the transfer analysis. See Flexiworld Techs., Inc. v. Amazon.com, Inc. et al., No.
`
`6:20-cv-00553-ADA, Dkt. No. 101 (W.D. Tex. Aug. 2, 2021); 10Tales, Inc. v. TikTok, Inc., No.
`
`6:20‑CV‑00810‑ADA, Dkt. No. 88 (W.D. Tex. May 21, 2021); InfoGation Corp. v. Google LLC,
`
`No. 6:20‑CV‑00366‑ADA, Dkt. No. 65 (W.D. Tex. April 29, 2021). Here, as in Flexiworld,
`
`10Tales, and InfoGation, there are no likely witnesses in this District and many likely witnesses
`
`in the transferee district, here, the NDCA. Because none of the other factors weigh against
`
`
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`1
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 7 of 21
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`
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`transfer, the result here should be no different than in Flexiworld, 10Tales, and InfoGation -- this
`
`case should be transferred to the NDCA.
`
`II.
`
`FACTS
`
`Plaintiff BillJCo, LLC (“BillJCo”) filed suit on May 25, 2021, accusing a variety of
`
`Apple iPhones and iPads (the “accused products”) of infringing U.S. Patent Nos. 8,566,839 (the
`
`’839 Patent); 8,639,267 (the ’267 Patent); 8,761,804 (the ’804 Patent); 9,088,868 (the ’868
`
`Patent); 10,292,011 (the ’011 Patent); and 10,477,994 (the ’994 Patent) (collectively the
`
`“asserted patents”) based on BillJCo’s assertion that the accused products “conform to and
`
`implement the iBeacon protocol and infringe the Patents-in-Suit.” Dkt. No. 1 (“Compl.”), ¶¶ 36-
`
`37. According to BillJCo, the asserted patents “relate to specific and particularized inventions
`
`for, and associated with, this beacon technology and the related protocols and specifications
`
`which facilitate and enable aspects of the beacon technology ecosystem including devices
`
`capable of implementing beacon standards and specifications, manufacturers of beacon
`
`transmitting devices, application developers, and beacon deployers.” Id., ¶ 21. BillJCo’s
`
`complaint broadly accuses iOS products, such as iPhones and iPads, that allegedly “conform to
`
`and implement the iBeacon protocol” (the “accused feature”). Id., ¶ 36.
`
`A.
`
`Plaintiff BillJCo
`
`Plaintiff BillJCo is Texas limited liability corporation headquartered in Flower Mound,
`
`Texas, and founded by Bill Johnson. Compl., ¶ 4. BillJCo does not have any known ties to this
`
`District. BillJCo has one member, Mr. Bill Johnson, who is one of the two named inventors of
`
`the asserted patents and resides at the same location from which BillJCo operates.
`
`B.
`
`Defendant Apple
`
`Apple is a California corporation, employing more than 35,000 people who work in or
`
`around its headquarters in Cupertino. See Declaration of Mark Rollins (“Rollins Decl.”), ¶ 3.
`
`
`
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`2
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`Exhibit 1019
`IPR2022-00426
`Page 7 of 21
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 8 of 21
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`
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`Apple’s management and primary research and development facilities are located in Cupertino.
`
`Id. Apple has teams of engineers who design, develop, and implement the accused features in
`
`the accused products. Rollins Decl. ¶¶ 3, 7-9. The vast majority of that work takes place at
`
`Apple’s Cupertino headquarters. Id. Similarly, the relevant Apple employees involved in the
`
`marketing, licensing, and sales of the accused products work in or near Cupertino. Id., ¶¶ 10-14.
`
`Based on Apple’s understanding of BillJCo’s allegations, the following is a list of the
`
`U.S.-based Apple employees who are likely witnesses in this case, and the likely subject matter
`
`of their testimony. All of these people, and the majority of their relevant U.S.-based teams, are
`
`located in NDCA:
`
`Name
`
`Title
`
`Relevance
`
`Jason Giles
`
`Robert Mayor
`
`Wiley Hodges
`
`Software
`Development
`Engineering Director
`Software
`Development
`Engineering Director
`Product Management
`Director
`
`Jeffrey Lasker
`
`Principal Counsel
`
`Mark Rollins
`
`Finance Manager
`
`Knowledgeable about the research, design,
`and development of the accused features.
`Mr. Giles is located in NDCA.
`Knowledgeable about the research, design,
`and development of the accused features.
`Mr. Mayor is located in NDCA.
`Knowledgeable about the marketing of the
`accused features and products. Mr.
`Hodges is located in NDCA.
`Knowledgeable about Apple’s patent
`licensing and pre-suit communications
`between the parties. Mr. Lasker is located
`in NDCA.
`Knowledgeable about Apple’s financial
`records and about financial data relating to
`sales of the accused products. Mr. Rollins
`is located in NDCA.
`
`Rollins Decl. ¶¶ 8, 9, 12-14.
`
`III. LEGAL STANDARD
`
`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,
`
`
`
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`3
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`IPR2022-00426
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 9 of 21
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`
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`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.
`
`Volkswagen II at 315. As shown below, both are true here.
`
`In evaluating convenience, the district court weighs both private and public interest
`
`factors. In 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 transferee
`
`venue need only be “clearly more convenient,” not “far more convenient,” for transfer to be
`
`appropriate. In re Toyota Motor Corp., 747 F.3d 1338, 1341 (Fed. Cir. 2014).
`
`The convenience of the witnesses is the most important factor in the transfer analysis. In
`
`re: Apple Inc., No. 2020-127, 2020 WL 3249953, at *2 (Fed. Cir. 2020); In re Genentech, Inc.
`
`566 F.3d 1338, 1343 (Fed. Cir. 2009); Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P., No. 6:15-cv-
`
`00091, 2016 WL 6909479, at *7 (W.D. Tex. Jan. 28, 2016). Moreover, “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.” In
`
`re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009); see also, e.g., In re Toyota Motor
`
`Corp., 747 F.3d 1338, 1341 (Fed. Cir. 2014); In re Apple, Inc., 581 F. App’x 886, 889 (Fed. Cir.
`
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`4
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`Exhibit 1019
`IPR2022-00426
`Page 9 of 21
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 10 of 21
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`
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`2014); Genentech, 566 F.3d at 1348; In re TS Tech USA Corp., 551 F.3d. 1315, 1322 (Fed. Cir.
`
`2008); In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 (Fed. Cir. Sept. 25, 2018).1
`
`IV.
`
`THE NORTHERN DISTRICT OF CALIFORNIA IS CLEARLY THE MORE
`CONVENIENT VENUE FOR THIS CASE.
`
`A.
`
`This Case Could Have Been Brought In NDCA.
`
`As any patent suit may be brought in “the judicial district where the defendant resides,”
`
`28 U.S.C. § 1400(b), and Apple is headquartered in Cupertino, California, within NDCA (see
`
`Rollins Decl., ¶ 3), venue would be proper in NDCA.
`
`B.
`
`The Private Interest Factors Favor Transfer to NDCA.
`
`The private interest factors strongly favor transfer to NDCA because the overwhelming
`
`majority of the witnesses and evidence in this case are located there.
`
`1.
`
`The Relative Ease Of Access To Sources Of Proof Strongly Favors
`Transfer.
`
`When, as here, the bulk of relevant evidence is located in the requested transferee district,
`
`the ease of access to evidence factor strongly favors transfer. “This factor relates to the ease of
`
`access to non-witness evidence, such as documents and other physical evidence . . . .” In re
`
`Apple Inc., 979 F.3d 1332, 1339 (Fed. Cir. 2020). “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.” In re Genentech,
`
`Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009) (internal quotation marks omitted). Despite advances
`
`in technology that simplify transfer of some electronic files, “precedent dictates the Court
`
`consider where sources of proof are physically located.” CloudofChange, LLC v. NCR Corp.,
`
`No. 6:19-cv-00513, 2020 WL 6439178, at *3 n.2 (W.D. Tex. Mar. 17, 2020); see Volkswagen II,
`
`
`1 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.
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`5
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`Exhibit 1019
`IPR2022-00426
`Page 10 of 21
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 11 of 21
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`545 F.3d at 316. “In determining the ease of access to sources of proof, the Court will look to
`
`the location where the allegedly infringing products were researched, designed, developed and
`
`tested.” XY, LLC v. Trans Ova Genetics, LC, No. 16-ca-00447, 2017 WL 5505340, at *13 (W.D.
`
`Tex. Apr. 5, 2017); Uniloc USA Inc. v. Box, Inc., No. 1:17-CV-754-LY, 2018 WL 2729202, at
`
`*3 (W.D. Tex. June 6, 2018).
`
`In Polaris Innovations Ltd. v. Dell, Inc., No. 16-CV-451, 2016 WL 7077069 (W.D. Tex.
`
`Dec. 5, 2016), the defendant had an Austin office with 300 employees, including at least one
`
`Austin-based engineer with knowledge of the accused products. Id. at *3. Nevertheless, the
`
`Court found that the bulk of the evidence was in California, and that this factor thus weighed in
`
`favor of transfer. Polaris Innovations, 2016 WL 7077069, at *5; see also Uniloc USA, 2019 WL
`
`2066121, at *2; Collaborative Agreements, LLC. v. Adobe Sys. Inc., No. 1-14-CV-356, 2015
`
`WL10818739, at *4 (W.D. Tex. Aug. 21, 2015). This Court recently reached a similar
`
`conclusion in Flexiworld. Flexiworld, No. 6:20-cv-00553-ADA, Dkt. No. 101 at 8-9.
`
`Similarly, while Apple maintains offices in this District, the legally-mandated inquiry is
`
`where documents relevant to this case are located—and none of those are in Texas. Rollins
`
`Decl. ¶¶ 7-14; City of New Orleans Emps.’ Ret. Sys. ex rel. BP P.L.C. v. Hayward, 508 F. App’x
`
`293, 297 (5th Cir. 2013) (affirming transfer to where “the relevant documents . . . could be
`
`found,” despite presence of documents “of questionable relevance” in the transferor forum
`
`(quotations omitted)); Volkswagen II, 545 F.3d at 316 (analyzing only location of documents
`
`“relating to the accident” at issue). Apple’s witnesses with knowledge potentially relevant to this
`
`case—software engineers, product managers, marketing, licensing, and finance personnel—have
`
`all confirmed that Apple’s relevant documents are in California. Rollins Decl. ¶¶ 7-14.
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`6
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`Exhibit 1019
`IPR2022-00426
`Page 11 of 21
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 12 of 21
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`
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`Whatever Apple documents are located in this District are not relevant to the claims or defenses
`
`in this case. Id.
`
`Specifically, the overwhelming majority of the research, design, and development of the
`
`accused features took place, and continues to take place, at Apple’s Cupertino headquarters, with
`
`only a handful of team members located in other states. Rollins Decl., ¶¶ 7-9. The key Apple
`
`documents relating to the research, design, development, and operation of the accused features
`
`were generated primarily in NDCA. Id., ¶ 7; Flexiworld, No. 6:20-cv-00553-ADA, Dkt. No. 101
`
`at 9; TikTok, No. 6:20‑CV‑00810‑ADA, Dkt. No. 88 at 4-5. The relevant source code associated
`
`with the accused features was developed and tested in NDCA, and access to that source code is
`
`controlled on a need-to-know basis, accessible by Apple employees working on the accused
`
`features in NDCA. Rollins Decl., ¶ 7. In addition, Apple’s documents concerning the
`
`marketing, sales and financial information for the accused products are all located in or around
`
`Cupertino, California. Id., ¶¶ 10, 12, 14. The same is true of Apple’s licensing documents. Id.,
`
`¶¶ 10, 13. As such, the overwhelming majority of the sources of proof regarding the accused
`
`features and the accused products are in NDCA.
`
`Further, the Bluetooth Special Interest Group (“Bluetooth SIG”), the standards
`
`organization that oversees the development of Bluetooth standards and the licensing of the
`
`Bluetooth technologies, is located in Kirkland, Washington. Huang Decl., Ex. 1. Apple expects
`
`that Bluetooth SIG will be a potential witness with relevant documents given that BillJCo claims
`
`the technology at issue in this case is “Bluetooth Low Energy (“BLE”) beacon technology.”
`
`Compl., ¶ 3. Because the Bluetooth SIG is located only in Washington, Apple expects that its
`
`documentary evidence will also be found in Washington. Conversely, there are no unique,
`
`relevant sources of proof in this District.
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`7
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`Exhibit 1019
`IPR2022-00426
`Page 12 of 21
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`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 13 of 21
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`2.
`
`The Availability Of Compulsory Process Is, At Worst, Neutral.
`
`The availability of compulsory process factor favors transfer because Apple is not aware
`
`of any third-party witnesses who would be within the subpoena power of this District. See
`
`Genentech, 566 F.3d at 1345 (compulsory-process factor “weighs in favor of transfer” where “no
`
`witness [] can be compelled to appear in the Eastern District of Texas”); In re Hoffman-La
`
`Roche, Inc., 587 F.3d 1333, 1337-38 (Fed. Cir. 2009) (transfer favored when transferee forum
`
`has absolute subpoena power over a greater number of third-party witnesses). A court may
`
`subpoena a witness to attend trial only (a) “within 100 miles of where the person resides, is
`
`employed, or regularly transacts business in person”; or (b) “within the state where the person
`
`resides, is employed, or regularly transacts business in person.” Fed. R. Civ. P. 45(c)(1)(A), (B);
`
`Gemalto S.A. v. CPI Card Grp. Inc., No. 15-CA-0910, 2015 WL 10818740, at *4 (W.D. Tex.
`
`Dec. 16, 2015). The ability to compel live trial testimony is crucial for evaluating a witnesses’
`
`testimony. Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992).
`
`Apple is not currently aware of any third-party witnesses who would be within this
`
`District’s subpoena power. The Bluetooth SIG, the standards organization that oversees the
`
`development of Bluetooth standards and the licensing of the Bluetooth technologies, is located in
`
`Kirkland, Washington, which is a significant distance from this District. Huang Decl., Ex. 1.
`
`This factor is, at worst, neutral. See, e.g., TikTok, No. 6:20‑CV‑00810‑ADA, Dkt. No. 88
`
`at 6 (finding that “neither party has successfully identified a single non-party witness in this
`
`District for which this Court’s subpoena power would be necessary”).
`
`3.
`
`The Attendance Of Willing Witnesses Strongly Favors Transfer.
`
`The single most important factor in the transfer analysis is the convenience of willing
`
`witnesses, and that factor strongly favors transfer here. See Apple Inc., 2020 WL 3249953, at *2;
`
`
`
`
`8
`
`Exhibit 1019
`IPR2022-00426
`Page 13 of 21
`
`

`

`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 14 of 21
`
`
`
`In re Google Inc., No. 2017-107, 2017 WL 977038, at *3 (Fed. Cir. Feb. 23, 2017); Genentech,
`
`566 F.3d at 1342; Auto-Dril, 2016 WL 6909479 at *7.
`
`Apple’s investigation has revealed at least five likely Apple witnesses who are based in
`
`NDCA, and none in WDTX. See Rollins Decl., ¶¶ 8, 9, 12-14. Given that the accused products
`
`were developed primarily at Apple’s Cupertino headquarters, the likely witnesses who will
`
`testify about the accused features are located in NDCA. Id. The same is true of Apple’s likely
`
`witnesses knowledgeable about the marketing, sales and financial information for the accused
`
`products, as well as the likely witness on Apple’s licensing function. Id. ¶¶ 12, 14. These
`
`witnesses are all a short car ride from the courthouses in NDCA (e.g., 15 minutes from San
`
`Jose), but more than 1,500 miles and a lengthy plane ride from Waco, Texas. Huang Decl., Exs.
`
`2, 3. Where the distance between two districts exceeds 100 miles, “the factor of inconvenience
`
`to witnesses increases in direct relationship to the additional distance to be traveled.”
`
`Volkswagen I, 371 F.3d at 204-05.
`
`If this case remains in this District, the Apple 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 not insignificant and often is cited as a key reason why transfer is warranted. See
`
`Volkswagen II, 545 F.3d at 317 (“Witnesses not only suffer monetary costs, but also the personal
`
`costs associated with being away from work, family and community.”); Flexiworld, Dkt. No. 101
`
`at 14 (finding that for the cost of attendance factor, “the question is not whether a witness is
`
`willing to travel but whether it will be convenient”) (emphasis in original). This length of travel
`
`also imposes additional burdens beyond travel time, such as meal and lodging expenses.
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`Volkswagen I, 371 F.3d at 204-05; see also In re Acer Am. Corp., 626 F.3d 1252, 1255 (Fed. Cir.
`
`2010) (in requiring party employees to travel for trial, the parties would likely incur significant
`
`
`
`
`9
`
`Exhibit 1019
`IPR2022-00426
`Page 14 of 21
`
`

`

`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 15 of 21
`
`
`
`expenses for airfare, meals, lodging, as well as losses in productivity from time spent away from
`
`work). For all of these reasons, it would be clearly more convenient for NDCA-based witnesses
`
`to attend trial in NDCA. Volkswagen II, 545 F.3d at 317 (recognizing the “obvious conclusion”
`
`that “it is more convenient for witnesses to testify at home”); see Apple, 581 F. App’x at 889
`
`(noting district court’s failure to follow the 100-mile rule); InfoGation, No.
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`6:20‑CV‑00366‑ADA, Dkt. No. 65 at 8 (finding this factor favors transfer where “[t]he majority
`
`of both party and non-party witnesses will be located either within the SDCA or in the state of
`
`California and the cost of attendance for these witnesses will be less if the case is tried in the
`
`SDCA than if it were tried in WDTX”); TS Tech, 551 F.3d at 1320 (“The district court’s
`
`disregard of the 100-mile rule constitutes clear error.”).
`
`On the other hand, Apple is not aware of a single relevant witness in this District.
`
`BillJCo’s apparent lone employee, inventor William Johnson, appears to reside in Flower
`
`Mound, Texas, in the EDTX. Where the vast majority of likely witnesses are in the transferee
`
`district and none are in the transferor district, this factor strongly favors transfer. See
`
`MasterObjects, Inc. v. Facebook, Inc., No. 6:20-cv-00087-ADA, Dkt. No. 86 (W.D. Tex. July
`
`13, 2021); HP, 2018 WL 4692486, at *3; Genentech, 566 F.3d at 1343; Wet Sounds, 2017 WL
`
`4547916, at *3; Via Vadis, LLC v. Netgear, Inc., No. 14-cv-809, 2015 WL 10818675, at *2
`
`(W.D. Tex. July 30, 2015); Datascape, Ltd. v. Dell Techs., Inc., No. 6:19-cv-00129-ADA, 2019
`
`WL 4254069, at *2 (W.D. Tex. June 7, 2019); Uniloc USA, 2019 WL 2066121, at *3; see also
`
`Polaris Innovations, 2016 WL 7077069, at *9.
`
`To try to resist transfer, BillJCo likely will point to Apple’s facilities in Austin. But
`
`although Apple has facilities in Austin, the relevant witnesses in this case are located in NDCA,
`
`not Austin. See Rollins Decl. ¶¶ 7-15; see also Uniloc USA, 2019 WL 2066121 at *3; Peak
`
`
`
`
`10
`
`Exhibit 1019
`IPR2022-00426
`Page 15 of 21
`
`

`

`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 16 of 21
`
`
`
`Completion Techs., Inc. v. I-TEC Well Solutions, LLC, No. A-13-cv-086-LY, 2013 WL
`
`12121002 at *3 (W.D. Tex. June 26, 2013) (presence of an office and personnel in the district
`
`did not weigh against transfer because those individuals were not likely witnesses).
`
`Indeed, Judge Yeakel reached this very conclusion in deciding that Apple cases should be
`
`transferred to NDCA because the relevant Apple witnesses were located there, including a case
`
`that related to the same iBeacon technology and accused products accused in this case. See
`
`Uniloc USA, 2019 WL 2066121, at *3. Moreover, the Federal Circuit has expressly noted that
`
`the convenience of party witnesses should be factored into the analysis. See In re Samsung
`
`Elecs. Co., Ltd., 2 F.4th 1371, 1379 (Fed. Cir. 2021) (granting writ of mandamus and concluding
`
`that the district court erred by giving “no weight to the presence of possible party witnesses in
`
`Northern California despite this court holding that the district court must consider those
`
`individuals,” particularly where “likely witnesses are in Northern California and none in the
`
`Western District of Texas”); In re Uber Techs., 852 Fed.Appx. 542, 544 (Fed. Cir. 2021)
`
`(granting writ of mandamus and concluding that “[t]he district court here relied on the same
`
`improper grounds as in Samsung to diminish the clear convenience of the Northern District of
`
`California.”). Therefore, the most important factor in the transfer analysis strongly favors
`
`transfer.
`
`4.
`
`The “All Other Practical Problems” Factor Is Neutral Or Favors
`Transfer.
`
`The final private interest factor, “all other practical problems that make trial of a case
`
`easy, expeditious and inexpensive,” is either neutral or favors transfer here. No court has
`
`previously overseen a case regarding the asserted patents until BillJCo filed this case and two
`
`other cases in the Eastern District of Texas, all on or about May 2021. BillJCo has filed two
`
`lawsuits in the Eastern District of Texas on three of the six asserted patents, so it is already
`
`
`
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`11
`
`Exhibit 1019
`IPR2022-00426
`Page 16 of 21
`
`

`

`Case 6:21-cv-00528-ADA Document 26 Filed 09/10/21 Page 17 of 21
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`
`
`litigating these patents in multiple districts. Defendant Cisco Systems, Inc. is headquartered in
`
`NDCA and defendant Aruba Networks, Inc. is also headquartered in NDCA. Huang Decl., Exs.
`
`4, 5. Indeed, because BillJCo has elected to spread its three lawsuits across two different judicial
`
`districts (all of which could have been filed in NDCA), it cannot be heard to complain about
`
`relocating this particular litigation to the clearly more convenient venue, NDCA.
`
`C.
`
`The Public Interest Factors Favor Transfer To NDCA.
`
`The public interest factors are all either neutral or favor transfer to NDCA.
`
`1.
`
`The Administrative Difficulties Flowing From Court Congestion
`Factor Favors Transfer To NDCA.
`
`The first public interest factor, the administrative difficulties flowing from court
`
`congestion, favors transfer to N