Case 6:21-cv-00165-ADA Document 22 Filed 05/04/21 Page 1 of 22
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`
` v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Case No. 6:21-cv-00165-ADA
`
`JURY TRIAL DEMANDED
`
`DEFENDANT APPLE INC.’S MOTION TO
`TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
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`TABLE OF CONTENTS
`
`
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .............................................................................................................. 1
`
`STATEMENT OF FACTS ................................................................................................. 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Nature of this Case .................................................................................................. 2
`
`Apple’s Relevant Witnesses and Documents are Located in Northern California . 2
`
`CPC is an Australian Company with No Connections to Texas ............................. 5
`
`Relevant Third Party Witnesses are Located in Hong Kong .................................. 6
`
`LEGAL STANDARD ......................................................................................................... 6
`
`The Northern District of California Is Clearly the More Convenient Venue ..................... 7
`
`A.
`
`The Private Interest Factors Favor Transfer ........................................................... 7
`
`1.
`
`2.
`
`3.
`
`4.
`
`Relative Ease of Access to Sources of Proof .............................................. 8
`
`Availability of Compulsory Process ......................................................... 10
`
`Attendance of Willing Witnesses.............................................................. 11
`
`All Other Practical Problems .................................................................... 13
`
`B.
`
`The Public Interest Factors Favor Transfer .......................................................... 13
`
`1.
`
`2.
`
`3.
`
`Court Congestion ...................................................................................... 13
`
`Local Interests ........................................................................................... 14
`
`Familiarity with the Governing Law and Conflicts of Law ...................... 15
`
`V.
`
`CONCLUSION ................................................................................................................. 15
`
`
`
`
`
`
`
`
`
`i
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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`In re Acer America Corp.,
`626 F.3d 1252 (2010) ...............................................................................................................11
`
`In re Adobe Inc.,
`No. 2020-126, 2020 WL 4308164 (Fed. Cir. Jul. 28, 2020) ................................................7, 12
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) ...................................................................................................10
`
`In re: Apple Inc.,
`2020 WL 3249953 (Fed. Cir. 2020)...............................................................................7, 11, 12
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)........................................................................................ passim
`
`Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P.,
`No. 6:150cv00091, 2016 WL 6909479 (W.D. Tex. Jan. 28, 2016) .....................................7, 11
`
`Collaborative Agreements, LLC. v. Adobe Sys. Inc.,
`No. 1:14-cv-356, 2015 WL10818739 (W.D. Tex. Aug. 21, 2015) .......................................8, 9
`
`CPC Patent Techs. Pty Ltd. v. HMD Global Oy,
`Civ. No. 6:21-cv-166 ...............................................................................................................13
`
`In re CPC,
`Case 5:21-mc-80091-SVK (N.D. Ca., April 22, 2021) (Ex. C) .................................................9
`
`DataQuill, Ltd. v. Apple Inc.,
`No. 13-cv- 706, 2014 WL 2722201 (W.D. Tex. June 13, 2014) .............................................15
`
`Finjan LLC v. Cisco Sys. Inc.,
`Civ. No. 17-cv-72-BLF, Dkt. 738 (N.D.C.A. Dec. 16, 2020) (setting trial for June 3, 2021).14
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)................................................................................7, 10, 11, 12
`
`In re Google Inc.,
`2017 WL 977038 (Fed. Cir. Feb. 23, 2017).............................................................................11
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..........................................................................................10, 15
`
`ii
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`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................7
`
`Parus Holdings Inc. v. LG Elecs. Inc. and LG Elecs. U.S.A. Inc.,
`No. 6:19-cv-432-ADA, Dkt. 161 (W.D. Tex. Aug. 20, 2020) ...................................................8
`
`Peak Completion Techs., Inc. v. I-TEC Well Solutions, LLC,
`No. A-13cv-086-LY, 2013 WL 12121002 (W.D. Tex. June 26, 2013)...................................12
`
`In re TracFone Wireless, Inc.,
`Case No. 2021-136, Dkt. 11 (Fed. Cir. Apr. 20, 2021)............................................7, 11, 12, 15
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)............................................................................................6, 15
`
`Uniloc USA Inc. v. Box, Inc.,
`No. 1:17-cv-754-LY, 21018 ................................................................................................8, 13
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ...............................................................................................7, 11
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .......................................................................................1, 6, 7, 11
`
`Wet Sounds, Inc. v. Audio Formz, LLC,
`No. 17-cv-141, 2017 WL 4547916 (W.D. Tex. Oct. 11, 2017) .....................................8, 10, 12
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. 16-cv-00447, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) ..............................................8
`
`Statutes
`
`28 U.S.C. § 1404(a) .....................................................................................................................1, 6
`
`28 U.S.C. § 1782(a) .........................................................................................................................9
`
`
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`I.
`
`INTRODUCTION
`
`This is a patent infringement case with no connection to Texas. The plaintiff, CPC, is an
`
`Australian patent holding company, and the defendant, Apple, is a California corporation. This
`
`case has numerous, direct connections to the Northern District of California but none to Texas,
`
`much less Waco. A straightforward application of the Volkswagen factors shows that this case
`
`should be transferred to the Northern District of California, where Apple is headquartered and
`
`where the majority of its likely witnesses are located. All of the key factors favor transfer, and
`
`none favor keeping this case in Waco.
`
`While Apple maintains offices in the Western District of Texas, the groups at Apple that
`
`designed and developed the accused functionality are not located in Texas, and Apple is not aware
`
`of any employees located there who were involved in the development of the accused
`
`functionalities or with any issues implicated in this case. The accused technology was developed
`
`in the Northern District of California, the Czech Republic, and Florida. Apple’s key witnesses all
`
`reside in one of these three locations, with the bulk residing in the Northern District of California.
`
`No witnesses are located in Texas. Nor is Apple aware of any relevant documents or evidence
`
`located there.
`
`By any measure, the Northern District of California is a more appropriate venue, and this
`
`case should be transferred for the convenience of the parties and in the interest of justice. For these
`
`reasons and those discussed below, Apple respectfully requests that the Court transfer this case to
`
`the Northern District of California pursuant to 28 U.S.C. § 1404(a).
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`
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`II.
`
`STATEMENT OF FACTS
`
`A.
`
`Nature of this Case
`
`CPC filed this patent infringement suit against Apple on February 23, 2021. Compl. at p. 8.
`
`CPC accuses Apple of infringing U.S. Patent Nos. 8,620,039, 9,269,208 and 9,665,705 (the
`
`“Asserted Patents”). Compl. ¶ 1. CPC accuses “Apple iPhone type cellular phones and Apple
`
`iPad type tablets, including the Apple iPhone X and any Apple product or device that is
`
`substantially or reasonably similar” equipped with Face ID of infringing the ’208 and ’705 Patents.
`
`Compl. Exs. F, H. CPC also accuses “Apple iPhone type cellular phones and Apple iPad type
`
`tablets, including the Apple iPhone SE (2nd generation) and any Apple product or device that is
`
`substantially or reasonably similar” equipped with Touch ID of infringing the ’208 and ’705
`
`Patents. Compl. Exs. G, I. Finally, CPC accuses “Apple iPhones, iPads equipped with Apple Card
`
`or device that is substantially or reasonably similar” of accusing the ’039 patent. Compl. Ex. J.
`
`The charts attached to the complaint alleging infringement target aspects of Apple’s Touch
`
`ID, Face ID, and Apple Wallet functionality. Compl. Exs. F-J. The groups that develop the
`
`specific technology implicated by these allegations are not located in Texas, but are located in
`
`California, the Czech Republic, or Florida.
`
`B.
`
`Apple’s Relevant Witnesses and Documents are Located in Northern
`California
`
`Apple is a California corporation headquartered in Cupertino, California, which is in the
`
`Northern District of California (“NDCA”). Ex. A (Decl. of K. Quisenberry); Ex. B (Decl. of M.
`
`Rollins) ¶ 3. Apple’s management, primary research and development, and marketing facilities
`
`are located in or near Santa Clara County, California, including cities such as Cupertino and
`
`Sunnyvale, all of which are located in NDCA. Id. As of April, 2021, Apple has more than 35,000
`
`employees who work in or near its Cupertino headquarters. Id.
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`2
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`Apple’s accused Touch ID functionality grew out of an acquisition of a company called
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`AuthenTec, which Apple acquired in 2012. Id. ¶ 9. Dale Setlak and Michael Boshra are two
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`Apple employees from AuthenTec who have knowledge of the history of the development of
`
`biometric security technology in the industry and at Apple, including aspects of the accused
`
`functionality at issue in this case. Id. ¶¶ 9, 10. Mr. Setlak was a co-founder of AuthenTec. Id.
`
`¶ 9. Mr. Setlak’s primary workplace is in Melbourne, Florida, and Mr. Boshra is based in NDCA.
`
`Id. ¶¶ 9, 10. Apple anticipates that both gentlemen are likely witnesses in this case.
`
`The groups within Apple that are responsible for the design, development, and engineering
`
`of the accused functionality of Touch ID, Face ID, and Apple Wallet are located in either
`
`Cupertino, California (NDCA); Prague, Czech Republic (“Prague”); or Melbourne, Florida
`
`(“Melbourne”). Id. ¶¶ 8-13. The accused functionality identified by CPC implicates work from
`
`teams that include the Core Biometrics Team (fingerprint and face acquisition), Security
`
`Engineering and Architecture Team (fingerprint and face matching in the SEP), the Algorithms
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`Team (fingerprint and face matching), and Apple Wallet Apps & Framework Team (application
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`of Touch ID and Face ID to Apple Card as used within the Apple Wallet). Id. Specifically:
`
` Rob Yepez is the Director of the I/O & Sensors Software Group at Apple, which
`
`oversees the Core Biometrics Team. Mr. Yepez is located in NDCA, as are the
`
`majority of the Core Biometrics Team. Id. ¶ 11.
`
` Libor Sykora is a Software Development Manager on the Security Engineering and
`
`Architecture Team at Apple. Mr. Sykora is located in Prague, but confirmed that
`
`the majority of those he works with on the accused features are located in NDCA,
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`Prague, or Melbourne. Id. ¶ 12.
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` Tony Diederich is a Software Development Engineering Manager on the Wallet
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`Apps & Framework Team at Apple. Mr. Diederich is located in NDCA, as are all
`
`of the members of his team. Id. ¶ 13.
`
`Thus, Apple’s likely engineering witnesses include Dale Setlak, Michael Boshra, Rob
`
`Yepez, Libor Sykora, and Tony Diederich, or members of their various teams. These engineers
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`work on various aspects of Apple’s biometric security technology, including the overall
`
`architecture of Touch ID and Face ID, the Secure Enclave Processor (SEP), the Secure Element
`
`(SE), and the associated sensor software. Id. ¶¶ 8-13. A number of these engineers also have
`
`knowledge relevant to Apple’s Apple Wallet and Apple Card technology. Id. Neither they nor
`
`any of their team members are located in the Western District of Texas (“WDTX”). Id.
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`Apple’s employees who are most knowledgeable about marketing, licensing, and finance
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`related to the accused products are all located in NDCA. Id. ¶¶ 14-19. Vitor Silva is a Product
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`Marketing Manager in the Worldwide Marketing Group and is located in NDCA. Id. ¶ 16. Ashish
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`Nagre is the Product Management Leader of the Apple Card and Apple Cash Group and is located
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`in NDCA. Id. ¶ 17. Mr. Silva and Mr. Nagre are knowledgeable regarding marketing for the
`
`accused features within the accused products. Id. ¶¶ 16, 17. Brian Ankenbrandt is knowledgeable
`
`about Apple’s intellectual property licensing practices relevant to this case and is located in
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`NDCA. Id. ¶ 18. Mr. Ankenbrandt was also involved in pre-suit communications with Charter
`
`Pacific Corporation Ltd. Compl. Exs. D; E. Mark Rollins is a Senior Finance Manager at Apple
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`who is knowledgeable regarding financial information relating to the Accused Products and
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`Features and is located in NDCA. Id. ¶ 19. Apple is not aware of any Apple employees with
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`marketing, licensing, or financial information relevant to this case that are located in WDTX. Id.
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`¶¶ 14-19. Apple also is not aware of any other employees with relevant knowledge concerning
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`the claims asserted against Apple that are located in WDTX. Id.
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`The electronic and paper records for the accused functionalities are predominantly located
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`in and accessible from NDCA. Id. ¶ 8. The design and development of the relevant functionalities
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`occurred predominantly in NDCA, with some work done in Prague and Melbourne. Id. ¶¶ 8-13.
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`The financial, licensing, and marketing data relating to the accused functionalities is also located
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`in NDCA. Id. ¶ 14. Apple has not identified any relevant documents that were generated or are
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`stored in WDTX. Id. ¶¶ 8-19.
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`In short, Apple’s anticipated witnesses and documentation are located primarily in the Bay
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`Area, with some in Prague and Florida. No anticipated witnesses or documentation are located in
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`WDTX.
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`C.
`
` CPC is an Australian Company with No Connections to Texas
`
`According to the Complaint, “CPC is an Australian corporation having its principal place
`
`of business located at Level 1, 18 Tedder Avenue, Main Beach, Queensland 4217, Australia”.
`
`Compl. ¶ 3. While the Complaint states that “CPC is an investment company focused on biometric
`
`technology including mobile device security, credit card security, and mobile payments,” (Compl.
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`¶ 4) CPC appears to be nothing more than a patent holding company that acquired the Asserted
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`Patents in satisfaction of a security interest owed by the Asserted Patents’ former owner,
`
`Securicom.1 Nothing in the complaint suggests CPC designs, engineers, or sells any product or
`
`
`1 The inventor, Mr. Christopher Burke, and his company Securicom, and its parent corporation
`Microlatch, have been involved in disputes over the ownership of the Asserted Patents in court in
`Australia. The apparent, current resolution has been to divest Mr. Burke and Securicom of
`ownership of the patents in favor of CPC. See, e.g., https://www.charpac.com.au/charter-pacific-
`acquires-biometric-security-patents-in-securicom-liquidation/. It appears that Mr. Burke has
`instigated another
`litigation against CPC
`to
`regain control of his patents. See
`https://www.microlatch.hk/post/christopher-burke-sues-charter-pacific.
` Resolution of
`these
`issues is not necessary for purposes of this brief.
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`service. CPC is a subsidiary of Charter Pacific Corporation Ltd., an Australian investment
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`company. Compl. ¶ 16. Neither CPC, nor Charter Pacific Corporation, appear to be in the business
`
`of providing any product related to biometric security, mobile device security, credit card security,
`
`or mobile payments.
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`D.
`
`Relevant Third Parties are Located in the APAC Region
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`No potentially relevant third parties are located in WDTX. Christopher Burke is the sole-
`
`inventor of the patents-in-suit. Compl. ¶ 4. Apple understands Mr. Burke lives in Hong Kong as
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`opposed to Australia, but the difference does not matter for purposes of this motion. According to
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`CPC’s Complaint, “CPC acquired [the Asserted Patents] from biometric technology pioneer
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`Securicom (NSW) Pty Ltd” in 2019. Id. at ¶ 4. As the original assignee of the Asserted Patents,
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`Securicom might have information relevant to the prosecution, conception, and reduction to
`
`practice, of the Asserted Patents. Based on publicly available information, Securicom, to the
`
`extent it still exists, is located in Australia.
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`III. LEGAL STANDARD
`
`“For the convenience of parties and witnesses, in the interest of justice, a district court may
`
`transfer any civil action to any other district or division where it might have been brought.”
`
`28 U.S.C. § 1404(a). In analyzing a motion to transfer under § 1404(a), the law of the regional
`
`circuit applies. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).
`
`Under section 1404(a), the moving party must first show that the claims “might have been
`
`brought” in the proposed transferee district. In re Volkswagen of Am., Inc., 545 F.3d 304, 312-13
`
`(5th Cir. 2008) (“Volkswagen II”). This first requirement is certainly met given that Apple is a
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`California corporation headquartered in Cupertino. See Compl. ¶ 5; Ex. B ¶ 3.
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`Second, the movant must show “good cause” by demonstrating that the “transferee venue
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`is clearly more convenient” than the transferor district. Volkswagen II at 315. In evaluating
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`convenience, the district court weighs both private and public interest factors. In re Volkswagen
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`AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). The private factors include: “(1) the
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`relative ease of access to sources of proof; (2) the availability of compulsory process to secure the
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`attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical
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`problems that make trial of a case easy, expeditious and inexpensive.” Id. The public interest
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`factors include: “(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 of the
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`application of foreign law.” Id.
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`The convenience of the witnesses is the most important factor in the transfer analysis. In
`
`re: Apple Inc., 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. 6:150cv00091, 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.,
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`589 F.3d 1194, 1198 (Fed. Cir. 2009); see also, e.g., In re TracFone Wireless, Inc., Case No. 2021-
`
`136, Dkt. 11 (Fed. Cir. Apr. 20, 2021); In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020); In re
`
`Adobe Inc., No. 2020-126, 2020 WL 4308164 (Fed. Cir. Jul. 28, 2020).2
`
`IV.
`
`The Northern District of California Is Clearly the More Convenient Venue
`
`A.
`
`The Private Interest Factors Favor Transfer
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`The private interest factors strongly favor transfer because the overwhelming majority of
`
`witnesses and evidence in this case are located in or are more easily accessible from NDCA.
`
`
`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 counsel. Volkswagen I, 371 F.3d at 206.
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`1.
`
`Relative Ease of Access to Sources of Proof
`
`“[T]he Fifth Circuit clarified that despite technological advances that make the physical
`
`location of documents less significant, the location of sources of proof remains a ‘meaningful
`
`factor in the analysis.’” Wet Sounds, Inc. v. Audio Formz, LLC, No. 17-cv-141, 2017 WL 4547916,
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`at *2 (W.D. Tex. Oct. 11, 2017), report and recommendation adopted, No. 1:17-cv- 141, 2018 WL
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`1219248 (W.D. Tex. Jan. 22, 2018) (internal citations omitted). “In patent infringement cases, the
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`bulk of the relevant evidence usually comes from the accused infringer. Consequently, the place
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`where the defendant’s documents are kept weighs in favor of transfer to that location.” In re Apple
`
`Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020) (internal citation omitted). Where, as here, the primary
`
`documents are located in the transferor district, this factor weighs in favor of transfer. Id. (holding
`
`“the district court erred by failing to meaningfully consider the wealth of important information in
`
`NDCA” when Apple’s relevant evidence was stored in NDCA, and none were stored in WDTX);
`
`see also Parus Holdings Inc. v. LG Elecs. Inc. and LG Elecs. U.S.A. Inc., No. 6:19-cv-432-ADA,
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`Dkt. 161 at 4, 7 (W.D. Tex. Aug. 20, 2020).
`
`“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-cv-00447, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5,
`
`2017); Uniloc USA Inc. v. Box, Inc., No. 1:17-cv-754-LY, 21018 WL 2729202, at *3 (W.D. Tex.
`
`June 6, 2018); Collaborative Agreements, LLC. v. Adobe Sys. Inc., No. 1:14-cv-356, 2015
`
`WL10818739, at *4 (W.D. Tex. Aug. 21, 2015). When, as is the case here, the bulk of relevant
`
`evidence and witnesses are located in the requested transferee district, the ease of access to
`
`evidence factor weighs in favor of transfer.
`
`The research, design, and development of the Accused Features in the Accused Products
`
`takes place primarily in NDCA, and all of the likely witnesses on this topic, to whom electronically
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`stored documents and source code are accessible, are located primarily in NDCA (with a few
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`located in Prague and Melbourne). Ex. B ¶¶ 8-13. Likewise, the key Apple documents relating to
`
`the research, design, and development of the Accused Features were generated and are stored
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`primarily in NDCA. Id. In addition, Apple’s likely witnesses and the Apple documents concerning
`
`the marketing, sales and financial information for the Accused Products are located in NDCA. Id.
`
`¶¶ 14-19. The same is true of Apple’s licensing functions. Id. ¶ 18. Thus, the overwhelming
`
`majority of the sources of proof regarding the Accused Technology and the Accused Products are
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`in NDCA.
`
`Notably, CPC has asserted as much in a recent court filing. It filed a request for a Discovery
`
`Assistance Order under 28 U.S.C. § 1782(a). In re CPC, Case 5:21-mc-80091-SVK (N.D. Ca.,
`
`April 22, 2021) (Ex. C). 3 CPC’s request seeks discovery from Apple in support of a German
`
`patent infringement action that CPC intends to pursue relating to a German patent corresponding
`
`to the ’705 patent asserted in this case. Id. at 2. CPC filed that request in the NDCA, asserting
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`that “virtually all” discovery from Apple will come from the NDCA:
`
`Apple’s headquarters are located in this Judicial District. Apple has been
`headquartered in Cupertino, California since 1976. In re Apple, Inc., 743 F.3d
`1377, 1379 (2014) (Newman, J, Dissenting). Apple’s management and primary
`research and development facilities are also located in Cupertino where Apple
`employs over 13,000 people. Id. at 1379-80. The research, design, and
`development of the iPhone took place in Cupertino and virtually all Apple
`business documents and records relating to the research, design, development,
`marketing strategy, and product revenue for the accused products are located in
`or near Cupertino. Id. at 1380.
`
`Id. at 6 (page 4 of the memorandum filed in support of the request).
`
`
`3 Magistrate Judge Cousins subsequently denied CPC’s 1782 motion. Order Denying Ex Parte
`Application for Discovery, Dkt. 5, In re CPC, Case 5:21-mc-80091-SVK (N.D.Ca., April 27,
`2021).
`
`9
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`Case 6:21-cv-00165-ADA Document 22 Filed 05/04/21 Page 14 of 22
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`Conversely, there are no unique, relevant sources of proof in WDTX. First, CPC has no
`
`presence in WDTX. Second, Apple’s relevant employees, to whom electronically stored
`
`documents and source code are accessible, all are based in NDCA, Prague, or Melbourne. Third,
`
`Apple is not aware of any third-party witnesses who reside in WDTX. Indeed, the relevant third
`
`parties Apple has been able to identify thus far are located abroad. To the extent these third parties
`
`have relevant sources of proof, it will be located with them. Given that there are numerous sources
`
`of proof in NDCA and none in WDTX this factor clearly favors transfer. See Apple, 979 F.3d at
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`1339-40 (District Court failed to give proper weight to Apple’s NDCA sources of evidence).
`
`2.
`
`Availability of Compulsory Process
`
`Transfer is favored when a transferee forum has absolute subpoena power over a greater
`
`number of third-party witnesses. In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1337-38 (Fed. Cir.
`
`2009); Genentech, 566 F.3d at 1345; Wet Sounds, 2017 WL 4547916, at *3. 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). Moreover,
`
`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).
`
`As set forth above in Section II.C., the key relevant third party is located in Hong Kong.
`
`Inventor Christopher Burke is located in Hong Kong. Apple is not aware of a single third-party
`
`witness who would be within WDTX’s subpoena power. Therefore, this factor weighs in favor of
`
`transfer, or is at worst, neutral. Genentech, 566 F.3d at 1345 (concluding that compulsory-process
`
`factor “weighs in favor of transfer” where “there is a substantial number of witnesses within the
`
`subpoena power of the Northern District of California and no witness who can be compelled to
`
`appear in the Eastern District of Texas”).
`
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`Case 6:21-cv-00165-ADA Document 22 Filed 05/04/21 Page 15 of 22
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`3.
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`Attendance of Willing Witnesses
`
`The convenience for willing witnesses is the single most important factor in the transfer
`
`analysis. See, Apple Inc., 2020 WL 3249953, at *2; In re Google Inc., 2017 WL 977038, at *3
`
`(Fed. Cir. Feb. 23, 2017); Genentech, 566 F.3d at 1342; Auto-Dril, 2016 WL 6909479, at *7. As
`
`discussed above, all of the likely Apple witnesses are based in NDCA. See infra Sec. II. These
`
`witnesses are a car ride from the courthouse in NDCA, but more than 1,500 miles and a lengthy
`
`plane ride from Texas. None of the likely Apple or CPC witnesses are located in Texas.
`
`If this case remains in Texas, 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 has often been cited as a key reason why transfer is appropriate. E.g.,
`
`Volkswagen II, 545 F.3d at 317. This length of travel also imposes additional burdens beyond
`
`travel time, such as meal and lodging expenses. Volkswagen I, 371 F.3d at 204-05; see also In re
`
`Acer America Corp., 626 F.3d 1252, 1255 (2010). 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, 979 F.3d at 1341-42.
`
`Although some relevant Apple witnesses reside in Florida and the Czech Republic, the
`
`recent Federal Circuit decision on mandamus from this Court in In re TracFone Wireless
`
`reaffirmed the approach in its Genentech and Apple decisions that in the situation where witnesses
`
`are already travelling a long distance to appear at either venue, the relative proximity of one venue
`
`over another does not matter. Case No. 2021-136, Dkt. 11 at *5-6 (Fed. Cir., April 20, 2021).
`
`Citing the rationale in the Genentech and Apple decisions, the Federal Circuit noted that in the
`
`context of the “100 mile rule,” it should not be rigidly applied “where ‘witnesses . . . will be
`
`required to travel a significant distance no matter where they testify.’” Id. at *5. Here, the
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`Case 6:21-cv-00165-ADA Document 22 Filed 05/04/21 Page 16 of 22
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`witnesses in Prague and Florida will have to travel significant distances regardless of whether the
`
`case is in Texas or California. As in TracFone, it would be error to find “any inconvenience to
`
`these individuals outweighed the convenience of having several party witnesses be able to testify
`
`at trial without having to leave home.” Id. at *6.
`
`On the other hand, there is not a single anticipated witness (or even relevant employee) in
`
`WDTX. Even the Plaintiff in this case, an Australia-based patent holding company, has no
`
`operations or relevant witnesses in Texas. In situations like this, where most of the likely witnesses
`
`are in the transferee district, this factor weighs in favor of transfer. See TracFone, Case No. 2021-
`
`136, Dkt. 11 at *5-6; Apple, 979 F.3d at 1341-42; HP, 2018 WL 4692486, at *3; Genentech, 566
`
`F.3d at 1343; Wet Sounds, 2017 WL 4547916, at *3.
`
`Litigants previously have pointed to Apple facilities in Austin to resist transfer to
`
`California. CPC may do so here, but any such argument would be meritless. Even if a company
`
`has a presence in the transferor district, this factor still favors transfer if those connections are not
`
`tied to the particular case. See Adobe, 2020 WL 4308164, at *3 (holding that NDCA was more
`
`convenient even though defendant had employees in Austin, Texas “that may have relevant
`
`information.”). The relevant witnesses in this case are located primarily in NDCA (with some in
`
`Prague and Florida), and none at the Austin facilities. See Ex. B ¶¶ 8-19; see also Apple, 979