Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 1 of 21
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`XR COMMUNICATIONS, LLC, dba,
`VIVATO TECHNOLOGIES,
`
` v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 6:21-cv-00620-ADA
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`DEFENDANT APPLE INC.’S OPPOSED MOTION TO TRANSFER VENUE TO THE
`NORTHERN DISTRICT OF CALIFORNIA
`
`APPLE ET AL. 1037
`
`1
`
`

`

`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 2 of 21
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`BACKGROUND ................................................................................................................ 1
`
`III.
`
`LEGAL STANDARD ......................................................................................................... 2
`
`IV.
`
`THE NORTHERN DISTRICT OF CALIFORNIA IS A CLEARLY MORE
`CONVENIENT VENUE TO LITIGATE THIS CASE THAN THIS DISTRICT ............. 3
`
`A.
`
`B.
`
`This Case Could Have Been Brought In The Northern District Of California. ...... 3
`
`The Private Interest Factors Favor Transfer. .......................................................... 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`Relevant Sources Of Proof Are In The Northern District Of
`California. ................................................................................................... 3
`
`The Compulsory-Process Factor Strongly Favors Transfer. ....................... 5
`
`The Convenience Of Party And Non-Party Witnesses Favors
`Transfer. ...................................................................................................... 8
`
`Other Practical Problems Associated With Trying This Case Are
`Neutral....................................................................................................... 10
`
`C.
`
`The Public Interest Factors Favor Transfer. ......................................................... 12
`
`1.
`
`2.
`
`3.
`
`California, Where This Case Arises, Has A Strong Local Interest. .......... 12
`
`Administrative Difficulties Flowing From Court Congestion Are
`Neutral And Should Be Given Little Weight. ........................................... 14
`
`The Remaining Public-Interest Factors Are Neutral. ............................... 15
`
`V.
`
`CONCLUSION ................................................................................................................. 15
`
`2
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`

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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`Cases
`
`DataQuill, Ltd. v. Apple Inc.,
`No. A-13-CA-706-SS, 2014 WL 2722201 (W.D. Tex. June 13, 2014) ................................... 15
`
`HD Silicon Sols. LLC v. Microchip Tech. Inc.,
`No. W-20-CV-01092-ADA, 2021 WL 4953884 (W.D. Tex. Oct. 25, 2021) ............................. 8
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010) .......................................................................................... 12, 13
`
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) ........................................................................................... 14
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) .................................................................................. 3, 5, 13, 15
`
`In re Apple Inc.,
`No. 21-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) ........................................................ 4
`
`In re Apple, Inc.,
`581 F. App'x 886 (Fed. Cir. 2014) ............................................................................................ 10
`
`In re DISH Network L.L.C.,
`No. 2021-182, 2021 WL 4911981 (Fed. Cir. Oct. 21, 2021) ................................................... 11
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) .............................................................................................. 4, 8
`
`In re Google Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ..................................................... 11
`
`In re Google LLC,
`No. 2021-171, 2021 WL 4592280 (Oct. 6, 2021) ................................................................. 8, 14
`
`In re Google LLC,
`No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sept. 27, 2021) ............................................ 12, 15
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) .................................................................................................. 5
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) ............................................ 6, 7, 15
`
`In re Juniper Networks, Inc.,
`14 F. 4th 1313 (Fed. Cir. Sept. 24, 2021) ............................................................................. 4, 14
`
`3
`
`

`

`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 4 of 21
`
`In re Juniper Networks, Inc.,
`No. 2021-156, 2021 WL 4519889 (Fed. Cir. Oct. 4, 2021) ............................................... 13, 14
`
`In re NetScout Sys., Inc.,
`No. 2021-173, 2021 WL 4771756 (Fed. Cir. Oct. 13, 2021) ................................................... 14
`
`In re Pandora Media, LLC,
`No. 2021-172, 2021 WL 4772805 (Fed. Cir. Oct. 13, 2021) ................................................. 5, 8
`
`In re Quest Diagnostics Inc.,
`No. 2021-193, 2021 WL 5230757 (Fed. Cir. Nov. 10, 2021) .................................................. 10
`
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ............................................................................................. 12, 13
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014) .................................................................................................. 3
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ............................................................................................. passim
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .............................................................................................. 2, 5, 9
`
`Parus Holdings Inc. v. LG Elecs. Inc.,
`No. 6:19-cv-00432, 2020 WL 4905809 (W.D. Tex. Aug. 20, 2020) ....................................... 11
`
`W. Prop. Holdings, LLC v. Aequitas Cap. Mgmt., Inc.,
`392 P.3d 770 (Or. App. 2017) .................................................................................................... 7
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. W-16-CA-00447-RP, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) .................................. 4
`
`Statutes
`
`28 U.S.C. § 1400(b) ........................................................................................................................ 3
`
`28 U.S.C. § 1404(a) ........................................................................................................................ 2
`
`Fed. R. Civ. P. 45(c)(1) ................................................................................................................... 5
`
`4
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`

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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 5 of 21
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`I.
`
`INTRODUCTION
`
`From any perspective, this case belongs in California. Both parties—defendant Apple and
`
`plaintiff XR Communications (“XR”)—are headquartered in California. The accused Apple
`
`products were designed, developed, tested, and marketed in California. Apple’s technical,
`
`marketing, and financial documents, as well as all of Apple’s witnesses, are in California. Key
`
`third-party witnesses are also in California. The accused functionality—related to WiFi
`
`“beamforming”— is supplied by chips that Apple
`
`engineers designed, developed, and tested that functionality. And the attorneys who prosecuted the
`
`patent-in-suit, individuals who valued it, and several named inventors are also in California.
`
`In contrast to its strong California ties, this case’s connection to Texas is almost
`
`nonexistent. XR is neither located in Texas nor performs business there. No Apple engineers who
`
`are involved with the accused technology are located in Texas. Nor is anyone on Apple’s marketing
`
`or finance teams in Texas. And none of those Apple employees interact with individuals located
`
`in Texas as part of their work. Because the Northern District of California (“NDCA”) is a clearly
`
`more convenient forum, Apple respectfully requests the Court grant its motion to transfer.
`
`II.
`
`BACKGROUND
`
`Apple is a California corporation, employing more than 35,000 people who work in or
`
`around its headquarters in Cupertino, California, in the NDCA. (Ex. A, Declaration of Mark
`
`Rollins (“Rollins Decl.”) at ¶ 3.) Apple’s primary management, research and development,
`
`marketing, finance, and sales personnel are in or near Cupertino. (Id.)
`
`In this case, XR accuses many of Apple’s WiFi-compatible products (“Accused Products”)
`
`of infringing United States Patent 10,715,235 (the ’235 Patent).1 Dkt. No. 1 at 8–9. Specifically,
`
`1 XR’s Complaint accuses certain iPhones, iPads, MacBooks, Macs, and Apple TV devices. Dkt.
`No. 1 at ¶ 22.
`
`5
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`

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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 6 of 21
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`XR accuses functionalities allegedly performed by the WiFi chip in each Accused Product that can
`
`be used to support the “beamforming” of WiFi transmissions by an access point. Dkt. 1 at 4, 10–
`
`11.
`
` And the Apple engineers with knowledge of the accused beamforming feature are in
`
`California; none are in Texas. (Id. at ¶¶ 6–7, 10)
`
`Even XR’s ties are to California, not Texas. XR is headquartered in California. Dkt. No. 1
`
`at 5. It has no identifiable Texas offices or employees, nor has it appointed a Texas business agent
`
`or a representative for service. (Ex. B, Franchise Tax Account Status.) Moreover, XR acquired the
`
`patent family related to the ’235 Patent from Vivato—a company operating in California when
`
`those patents were developed. (Ex. C, Assignment Chain and Data Sheet for ’329 Application, at
`
`1–2, 10.) And when XR prosecuted the ’235 Patent, it did so using California lawyers. (Ex. D,
`
`’235 Patent Prosecuting Attorney Profiles.)
`
`III.
`
`LEGAL STANDARD
`
`A court may grant a motion to transfer “[f]or the convenience of parties and witnesses” and
`
`“in the interest of justice . . . .” 28 U.S.C. § 1404(a). The “preliminary question” is whether a civil
`
`action “might have been brought” in the judicial district to which a transfer is requested. In re
`
`Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) (“Volkswagen II”).
`
`A series of private and public interest factors govern the remainder of the transfer analysis.
`
`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
`
`6
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 7 of 21
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`process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and
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`(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).
`
`IV.
`
`THE NORTHERN DISTRICT OF CALIFORNIA IS A CLEARLY MORE
`CONVENIENT VENUE TO LITIGATE THIS CASE THAN THIS DISTRICT
`
`A.
`
`This Case Could Have Been Brought In The Northern District Of California.
`
`Apple is headquartered in Cupertino, California, within the NDCA. (Rollins Decl. at ¶ 3.)
`
`Because any patent suit may be brought in “the judicial district where the defendant resides,”
`
`28 U.S.C. § 1400(b), this case could have been brought in the NDCA.
`
`B.
`
`The Private Interest Factors Favor Transfer.
`
`Apple’s relevant witnesses and documents are in the NDCA. In addition, third-party
`
`engineers
`
` are located in the
`
`NDCA. The NDCA—but not this Court—has trial subpoena power over these engineers.
`
`Meanwhile, based on Apple’s investigation, no Apple,
`
`, or XR employees with plausibly
`
`relevant knowledge are in the WDTX. The private interest factors thus heavily favor transfer.
`
`1. Relevant Sources Of Proof Are In The Northern District Of California.
`
`The location of Apple’s sources of proof 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). “What matters” for this analysis is “the ease of
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`7
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 8 of 21
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`access in the Western District of Texas relative to the ease of access in the Northern District of
`
`California.” In re Apple Inc., No. 21-181, 2021 WL 5291804 at *2 (Fed. Cir. Nov. 15, 2021).
`
`Consistent with this, “while electronic storage of documents makes them more widely accessible
`
`than was true in the past, that does not make the sources-of-proof factor irrelevant.” In re Juniper
`
`Networks, Inc., 14 F. 4th 1313, 1321 (Fed. Cir. Sept. 24, 2021). For patent cases, because “the bulk
`
`of the relevant evidence usually comes from the accused infringer,” transfer is favored to “where
`
`the defendant’s documents are kept.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)
`
`(internal quotation marks omitted).
`
`Apple’s relevant sources of proof are in the NDCA. Documents relating to the accused
`
`technology—for example, specifications for the WiFi chips in the Accused Products—are located
`
`in the NDCA. (Rollins Decl. at ¶ 6.) Likewise, Apple’s marketing, licensing, sales, and financial
`
`information about the Accused Products are located in the NDCA. (Id. at ¶¶ 11–15.) Apple does
`
`not have any relevant documents in the WDTX, nor do its Texas-based employees have electronic
`
`access to the relevant NDCA-based documents. (Id. at ¶¶ 6–10.) The fact that the “documentary
`
`evidence relevant to this action are maintained in the Northern District of California” and not in
`
`the WDTX, favors transfer. In re Apple, 2021 WL 5291804 at *2.
`
`In addition to Apple’s documents, the Court also considers “the location where the
`
`allegedly infringing products were researched, designed, developed and tested.” XY, LLC v. Trans
`
`Ova Genetics, LC, No. W-16-CA-00447-RP, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5, 2017).
`
` And Apple engineers in the NDCA
`
`worked
`
` to test these chips and integrate them into the Accused Products. (Id. at
`
`¶ 7.) Thus,
`
` and the Apple products into which they are integrated,
`
`are “researched, designed, developed, and tested” in the NDCA.
`
`8
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 9 of 21
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`Given these facts, as with other cases transferred to the NDCA, the “records relating to the
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`research and design of the accused products, and marketing, sales, and financial information for
`
`the accused products” are in the NDCA. In re Apple, Inc., 979 F.3d at 1340. As such, “the wealth
`
`of important information in NDCA” favors transfer. Id.
`
`2. The Compulsory-Process Factor Strongly Favors Transfer.
`
`Next, the compulsory-process factor strongly favors transfer when, as here, the transferee
`
`court has subpoena power over a greater number of third-party witnesses. In re Hoffmann-La
`
`Roche Inc., 587 F.3d 1333, 1337–38 (Fed. Cir. 2009); Volkswagen II, 545 F.3d at 316–17. A
`
`subpoena may compel an individual to testify at trial or in a deposition only “within the state” or
`
`“within 100 miles of where the person resides, is employed, or regularly transacts business in
`
`person.” Fed. R. Civ. P. 45(c)(1).
`
`describes “the subject matter of [the ’235 Patent] in this infringement action” as the
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`“beamforming” functionality in certain WiFi products, and cites the IEEE 802.11 WiFi Standards
`
`sixty-three times in its allegations. Dkt. No. 1 at 4.
`
` XR
`
`Courts have recognized that the location of third parties with knowledge of the accused
`
` witnesses are] willing,” these
`2 Because Apple has received “no indication that [the
`witnesses are “presumed to be unwilling.” In re Pandora Media, LLC, No. 2021-172, 2021 WL
`4772805, at *3 (Fed. Cir. Oct. 13, 2021).
`
`9
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 10 of 21
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`technology—
`
`—weighs heavily in favor of
`
`transfer. For example, in In re Hulu, LLC, a plaintiff accused Hulu of patent infringement based
`
`on its “delivery of streaming video content.” No. 2021-142, 2021 WL 3278194, at *1 (Fed. Cir.
`
`Aug. 2, 2021). In turn, Hulu “explained that it delivers its streaming content via various ‘third
`
`party content delivery networks’ or ‘CDNs.’” Id. Hulu represented that “engineers and support
`
`representatives from these CDNs [have] knowledge regarding how Hulu delivers streamed content
`
`through CDNs.” (Ex. V, Hulu, LLC’s Petition for Writ of Mandamus, at 8.) The CDNs were
`
`located in California, pushing the compulsory-process factor in favor of transfer. In re Hulu, 2021
`
`WL 3278194 at *3.
`
`, other third-party potential trial witnesses
`
`knowledgeable about the technology at issue are within the reach of the NDCA’s subpoena power.
`
`Three of the named inventors of the ’235 Patent are located in California: Siavash Alamouti in
`
`Oakland (Ex. E, LinkedIn Profile of Siavash Alamouti) and Hujun Yin and Praveen Mehrotra in
`
`San Jose (Ex. F, LinkedIn Profile of Hujun Yin; Ex. G,3 US Directory Record for Praveen
`
`Mehrotra).4 These inventors are likely to have relevant information about conception and reduction
`
`to practice. The co-founder and former CEO of Vivato, Ken Biba, also is in the NDCA. (Ex. J,
`
`LinkedIn Profile of Ken Biba.) During his tenure, Vivato was a small company that was developing
`
`3 According to this public search, the only “Praveen Mehrotra” who used to live in Spokane, WA—
`Mr. Mehrotra’s location listed on the ’235 Patent—now lives in San Jose, CA.
`
`4 A fourth inventor, Bobby Jose, is located in San Diego, California. (Ex. H, LinkedIn Profile of
`Bobby Jose.) Because Mr. Jose is currently an Apple employee, his presence in California is
`relevant to the convenience factor rather than the compulsory-process factor. It would take about
`1.5 hours for Mr. Jose to travel from San Diego to San Francisco, as compared to 5.5 hours to
`travel from San Diego to Waco. (Ex. I, Apple Witness Travel Times at 6, 10, 14–19.)
`
`10
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`

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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 11 of 21
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`(and prosecuting) the technology claimed in the ’235 Patent family. (Ex. K, Vivato Continues CEO
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`Search, 10/27/2003); Dkt. No. 1, Ex. A (’235 Patent) at 2. As the founder and CEO of Vivato
`
`during that time, Mr. Biba is likely to have knowledge of the technology at issue, state of the art,
`
`and any Vivato products practicing the patent. Indeed, even XR asserts that Mr. Biba is a “key”
`
`individual in the field. Dkt. No. 1 at ¶ 11.
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`Moreover, the NDCA has subpoena power over several witnesses involved in the
`
`prosecution, valuation, and sale of Vivato’s patents. Three California attorneys prosecuted the ’235
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`Patent: Glen Nuttall in Irvine; Vladislav Teplitskiy in Orange County; and Nicholas Transier in
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`San Diego. (Ex. D.) And around 2008, Vivato’s patent portfolio—which then included the family
`
`that resulted in the ’235 Patent—was part of an attempted sale that culminated in foreclosure
`
`proceedings. See W. Prop. Holdings, LLC v. Aequitas Cap. Mgmt., Inc., 392 P.3d 770, 773–74,
`
`780 (Or. App. 2017); (Ex. L, Commercial Security Agreement, at frame 712). Some of Vivato’s
`
`shareholders, via a newly formed an LLC, were responsible for valuing Vivato’s patent portfolio
`
`as part of this transaction. W. Prop. Holdings, 392 P.3d at 773. Those shareholders included
`
`Michael Haycox and Chris Thomas, both located in California. (Ex. M, W. Prop. Holdings
`
`Business Entity Search.) No shareholders are located in Texas. (Id.) Mr. Haycox and Mr. Thomas
`
`are likely to have information relevant to damages as well as details about the sale and foreclosure
`
`proceedings which are relevant to XR’s standing.
`
`In contrast to the many witnesses within the NDCA’s subpoena power, the WDTX only
`
`has subpoena power over one named inventor, Marcus Da Silva. But Mr. Da Silva’s location is
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`clearly outweighed by his fellow inventors and numerous other third-party witnesses in California.
`
`“[W]here, as here, [Apple] has identified multiple third-party witnesses and shown that they are
`
`overwhelmingly located within the subpoena power of only the transferee venue, this factor favors
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`transfer.” In re Hulu, 2021 WL 3278194, at *4.
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`11
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 12 of 21
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`3. The Convenience Of Party And Non-Party Witnesses Favors Transfer.
`
`The most important transfer factor, the convenience and cost of attendance to the relevant
`
`witnesses, also favors transfer. In re Genentech, 566 F.3d at 1343. Convenience “is an important
`
`consideration for both party witnesses and non-party witnesses.” In re Pandora Media, 2021 WL
`
`4772805, at *3. A witness’s affiliation with a party “does not negate the inconvenience and cost
`
`to those individuals to travel a significant distance to testify.” In re Google LLC, No. 2021-171,
`
`2021 WL 4592280, at *4 (Oct. 6, 2021) (internal quotation marks omitted). In fact, “this Court
`
`should not accord the convenience of party witnesses less weight.” HD Silicon Sols. LLC v.
`
`Microchip Tech. Inc., No. W-20-CV-01092-ADA, 2021 WL 4953884, at *5 (W.D. Tex. Oct. 25,
`
`2021).
`
`Of the party witnesses, all relevant Apple employees who would testify at trial are located
`
`in California. As explained above, Apple’s engineers who are knowledgeable about the accused
`
`functionality and who
`
` are located in
`
`the NDCA. (Rollins Decl. at ¶¶ 6–8.) And all of Apple’s employees with relevant knowledge as
`
`to marketing, finance, sales, and licensing of the Accused Products are in the NDCA, too. (Id. at
`
`¶¶ 5, 11–15.) Specific relevant Apple witnesses in the NDCA include at least:
`
`• Tushar Shah, a Platform Architect Engineer in the Wireless Group, who is
`
`knowledgeable about the accused beamforming function and worked
`
`to identify and evaluate technical requirements for the WiFi chips in the Accused
`
`Products;
`
`• Mark Rollins, a Finance Manager, who is knowledgeable about Apple’s sales and
`
`financial information regarding the Accused Products;
`
`• Scott Brodrick, a Product Marketing Manager, who is knowledgeable about the
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`marketing of the Accused Products; and
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`12
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 13 of 21
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`•
`
`Jeff Lasker, a Principal Counsel for IP Transactions, who is knowledgeable about
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`Apple’s patent-licensing activities related to WiFi technologies.
`
`(Id. at ¶¶ 7, 12–15.) In contrast, no relevant Apple witness works in Texas, works with anyone in
`
`Texas, or travels to Texas in connection with their work on the Accused Products. (Id. at ¶¶ 5–15.)
`
`No one in Apple’s Austin location is working on—or accesses documents about—the relevant
`
`WiFi technology. (Id. at ¶ 10.)
`
`Given their locations, it would be significantly more convenient for each of Apple’s
`
`witnesses to attend trial in California than in Texas. 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. This is particularly true
`
`when “the travel time from their home or work site to the court facility is five or six hours one-
`
`way as opposed to 30 minutes or an hour.” Id. at 205. Here, Waco is at least 1,700 miles from the
`
`NDCA. (Ex. I at 1.) It would take witnesses leaving Apple’s Cupertino headquarters less than an
`
`hour to reach the courthouses in Oakland or San Francisco, and a mere fifteen minutes by car to
`
`reach the courthouse in San Jose. (Id. at 11–13.) A trip to Waco, on the other hand, would be over
`
`five times as long: at least a 5.5-hour, multi-leg flight to Waco or a 3.5-hour flight to either Dallas
`
`or Austin plus a one hour, forty-minute trip by car to Waco. (Id. at 1–10.)
`
`Conversely, the inconvenience of a trial in Waco is, as the Fifth Circuit put it, “obvious”:
`
`“‘Additional distance means additional travel time; additional travel time increases the probability
`
`for meal and lodging expenses; and additional travel time with overnight stays increases the time
`
`which these fact witnesses must be away from their regular employment.’” Volkswagen II, 545
`
`F.3d at 317 (quoting Volkswagen I, 371 F.3d at 205). The inconvenience is compounded by there
`
`being “no major airport in the Waco Division”; instead, the Waco courthouse is “more than 100
`
`miles from the nearest airport with direct flights” to many major cities. In re Quest Diagnostics
`
`13
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 14 of 21
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`Inc., No. 2021-193, 2021 WL 5230757, at *2 (Fed. Cir. Nov. 10, 2021). Further, to the extent that
`
`XR intends to call any employee witnesses, they would be located in XR’s California office, and
`
`XR cannot plausibly argue that the WDTX is more convenient than the NDCA for them.
`
`The NDCA also is clearly more convenient for the non-party witnesses. As an initial
`
`matter, to the extent that the Court determines that the
`
` engineers, inventors, prosecuting
`
`attorneys, and individuals responsible for valuing the patent who are located in California
`
`(discussed supra at 7) do not count in the compulsory-process factor, their convenience is entitled
`
`to consideration under this factor.5 Further, many of the named inventors for the ’235 Patent who
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`are not located in the NDCA are significantly closer to the NDCA than WDTX—including James
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`Brennan in Seattle, WA, Yang-Seok Choi in Portland, OR, and Robert Conley in Liberty Lake,
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`WA. (Ex. N, LinkedIn Profile of James Brennan; Ex. O, LinkedIn Profile of Yang-Seok Choi; Ex.
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`P, LinkedIn Profile of Robert Conley.) For each of these inventors, the flight time to a trial in the
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`NDCA is only 2 to 2.5 hours, as compared to 5 or 6 hours to Waco. (Ex. I at 20–30.) Witness
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`convenience thus strongly favors transfer.
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`4. Other Practical Problems Associated With Trying This Case Are Neutral.
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`No “other practical problems” exist here that would make trial more “easy, expeditious and
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`inexpensive” in either the NDCA or WDTX. Volkswagen I, 371 F.3d at 203. Although XR has
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`sued other defendants over the patent-in-suit in the WDTX, the mere fact of co-pending litigation,
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`alone, does not weigh against transfer. “To hold otherwise, [the Court] would be effectively
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`inoculating a plaintiff against convenience transfer under § 1404(a) simply because it filed related
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`5 Apple is not arguing that the convenience of these witnesses should be double-counted; however,
`their convenience is entitled to consideration under either the compulsory-process or willing-
`witness factors. “Whether these identified [non-party] witnesses are willing to attend trial or not,
`the location of the witnesses and costs associated with travel to the [Western] District of Texas are
`relevant to the convenience analysis.” In re Apple, Inc., 581 F. App'x 886, 889, n.1 (Fed. Cir.
`2014).
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`14
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 15 of 21
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`suits against multiple defendants in the transferor district. This is not the law under the Fifth
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`Circuit.” In re Google Inc., No. 2017-107, 2017 WL 977038, at *3 (Fed. Cir. Feb. 23, 2017). Co-
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`pending litigation is given even less weight when, as here, the “co-pending suits in the Western
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`District of Texas involve different defendants with different hardware and different software”
`
`making them “likely to involve significantly different discovery and evidence.” In re DISH
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`Network L.L.C., No. 2021-182, 2021 WL 4911981, at *4 (Fed. Cir. Oct. 21, 2021). Here, XR’s co-
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`pending cases feature different defendants, different products, and even different categories of
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`products. Compare, e.g., Dkt. No. 1 (accusing smartphones and laptops) with XR Commc’ns v.
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`Cisco, Case No. 6:21-cv-00623, Dkt. No. 1 at ¶ 24 (accusing “access points and routers”). XR’s
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`case against Apple is thus “likely to involve significantly different discovery and evidence” from
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`its other cases. In re DISH, 2021 WL 4911981 at *4.
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`Further, all of the co-pending lawsuits in the WDTX are at extremely early stages. No
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`schedule has been set or trial date fixed in any of them. This Court has not yet decided any motions
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`or invested resources into these cases. Additionally, the Court “must . . . consider the presence of
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`co-pending motions to transfer.” Parus Holdings Inc. v. LG Elecs. Inc., No. 6:19-cv-00432, 2020
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`WL 4905809, at *7 (W.D. Tex. Aug. 20, 2020). Here, two other defendants already have sought
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`dismissal or transfer to the NDCA. XR Commc’ns LLC v. Google LLC, Case No. 6:21-cv-00625,
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`Dkt. No. 23 (W.D. Tex. Nov. 24, 2021); XR Commc’ns LLC v. Amazon.com, Inc., Case No. 6:21-
`
`cv-00619, Dkt. 23 (W.D. Tex. Sept. 7, 2021). This further negates any relevance of XR’s co-
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`pending litigation.
`
`In contrast to the early stage of proceedings in the WDTX, the NDCA has been handling
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`three cases filed by XR against other defendants since 2018. These cases concern patents, such as
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`U.S. Patent No. 7,062,296, that are in the same family as the ’235 Patent and involve the WiFi
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`beamforming technology at issue here. See XR Commc’ns, LLC v. Ruckus Wireless, Inc., No. 18-
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`15
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 16 of 21
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`cv-01992-WHO; XR Commc’ns, LLC v. ARRIS Sols., Inc., No. 18-cv-2736-WHO; XR Commc’ns,
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`LLC v. Ruckus Wireless, Inc., 21-cv-4679-WHO. The NDCA has invested substantial resources in
`
`familiarizing itself with the accused technology and issuing substantive orders. For instance, the
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`NDCA issued a twenty-five-page claim construction order in XR’s case against Ruckus Wireless.
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`Ruckus Wireless, No. 18-cv-01992-WHO, 2021 WL 3918136 (Sept. 1, 2021, N.D. Cal.). Indeed,
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`in that order, the NDCA court used some of the very terms at issue in the patent-in-suit here,
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`including “transmission peaks and transmission nulls.” Id. at *2, 10, 14; see Dkt. No. 1, Ex. A at
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`cl. 8. This underscores the NDCA’s preexisting familiarity with XR and its beamforming patents,
`
`favoring transfer.
`
`C.
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`The Public Interest Factors Favor Transfer.
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`California has a strong local interest in this case because the events, products, and parties
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`involved in this suit are centered there. When “the accused products were designed and developed
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`in the transferee venue and are not related to [Apple’s] presence in Texas,” the local interest weighs
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`“strongly in favor of transfer.” In re Google LLC, No. 2021-170, 2021 WL 4427899, at *6 (Fed.
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`Cir. Sept. 27, 2021). As the remaining public interest factors are neutral or carry little weight, the
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`public interest factors strongly favor transfer.
`
`1. California, Where This Case Arises, Has A Strong Local Interest.
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`In evaluating the local-interest factor, “if there are significant connections between a
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`particular venue and the events that gave rise to a suit, this factor should be weighed in that venue’s
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`favor.” In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010). When “third parties
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`researched, designed, and developed” the technology in the NDCA, “[t]hese are significant factors
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`that give the Northern District of California a legitimate interest in adjudicating the cases ‘at
`
`home.’” In re Samsung Elecs. Co., 2 F.4th 1371, 1380 (Fed. Cir. 2021).
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`16
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`Case 6:21-cv-00620-ADA Document 22 Filed 12/10/21 Page 17 of 21
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`As explained above, the NDCA has the most significant connections to the events giving
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`rise to this suit. Apple is a California corporation headquartered in the NDCA, and the Apple
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`employees associated with the accused WiFi functionality in the Accused Products are located in
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`the NDCA. (Rollins Decl. at ¶¶ 3, 6–15)
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` Even XR has strong ties to California. It is headquartered in California and
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`acquired the ’235 Patent family from Vivato—a company which was operating in California. (Ex.
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`C at 10.) Accordingly, California has the strongest interest in the outcome of this case. To try the
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`case anywhere else would deprive the NDCA its “legitimate interest in adjudicating the case[] ‘at
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`home.’” In re Samsung Elecs., 2 F.4th at 1