Case 6:21-cv-00694-ADA Document 55 Filed 08/17/22 Page 1 of 15
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`XR COMMUNICATIONS, LLC, DBA
`VIVATO TECHNOLOGIES,
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`v.
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`HP INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 6:21-CV-694-ADA
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`FILED UNDER SEAL
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`ORDER GRANTING DEFENDANT’S MOTION TO TRANSFER VENUE UNDER 28
`U.S.C. § 1404(a)
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`Before the Court is Defendant HP Inc.’s (“HP”) Motion to Transfer Venue under 28
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`U.S.C. § 1404(a) to the Northern District of California (“NDCA”). ECF No. 27. Plaintiff XR
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`Communications LLC dba Vivato Technologies (“Vivato”) filed its Response (ECF No. 50),
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`and Defendant filed its Reply (ECF No. 52). After careful consideration of the parties’ briefs
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`and the applicable law, the Court GRANTS Defendant’s Motion to Transfer to the Northern
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`District of California.
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`I. FACTUAL BACKGROUND
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`Plaintiff filed this lawsuit accusing Defendant of infringing on claims 8 and 12 of U.S.
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`Patent No. 10,715,235 (the “’235 Patent”). ECF No. 1. The ’235 Patent describes a transmitted
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`beam-forming network that “routes data-communication transmission to the client devices via
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`directed communication beams that are emanated from an antenna assembly.” ECF No. 1-1 at
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`25. Plaintiff alleges that Defendant manufactures, uses, and sells products (“Accused
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`1
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`APPLE 1046
`Apple et al. v. XR Commc'ns
`IPR2022-01155
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`Case 6:21-cv-00694-ADA Document 55 Filed 08/17/22 Page 2 of 15
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`Products”) that practice the technology of the ’235 Patent. ECF No. 1 at 8. The Accused
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`Products include several HP laptop and desktop computers. Id. at 8–9.
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`HP is a corporation organized under the laws of Delaware. ECF No. 18 at 12.
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`Its principal place of business is in Palo Alto, California. Id. HP maintains offices in both
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`the transferor and transferee districts: one located in Palo Alto, California, and another in
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`Austin, Texas. Id. at 4, 12. HP conducts tests and manages integration of its WiFi modules
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`in Taipei, Taiwan. ECF No. 27 at 6.
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`Vivato is a limited liability company organized under the laws of Delaware with its
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`principal place of business in Venice, California. ECF No. 1 at 5. Vivato has filed seven separate
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`cases in this District that all assert infringement of the ’235 Patent. ECF No. 50 at 7. See
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`XR Commc’ns LLC v. Amazon.com, Inc. et al., No. 6:21-CV-00619-ADA (W.D. Tex. June
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`16, 2021); XR Commc’ns LLC v. ASUSTeK Comput. Inc., No. 6:21-CV-00622-ADA (W.D.
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`Tex. June 16, 2021); XR Commc’ns LLC v. Google LLC, No. 6:21-CV-00625-ADA (W.D. Tex.
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`June 16, 2021); XR Commc’ns LLC v. Samsung Elecs. Co., LTD et al., No. 6:21-CV-00626-
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`ADA (W.D. Tex. June 16, 2021); XR Commc’ns LLC v. Dell Techs. Inc. et al., No. 6:21-
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`CV-00646-ADA (W.D. Tex. June 22, 2021); XR Commc’ns LLC v. Apple, Inc., No. 6:21-
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`CV-00620-ADA (W.D. Tex. June 16, 2021); XR Commc’ns LLC v. Microsoft Corp., No.
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`6:21-CV-00695-ADA (W.D. Tex. July 1, 2021). Vivato has also filed an additional case
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`for related patents with overlapping inventors. See XR Commc’ns LLC v. Cisco Sys., Inc. et
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`al., No. 6:21-CV-00623-ADA (W.D. Tex. June 16, 2021).
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`II.(cid:3)LEGAL STANDARD
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`In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law
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`of the regional circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).
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`28 U.S.C. § 1404(a) provides that “[f]or the convenience of parties and witnesses, . . . a
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`district court may transfer any civil action to any other district or division where it might
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`have been brought or to any district or division to which all parties have consented.”
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`“Section 1404(a) is
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`Case 6:21-cv-00694-ADA Document 55 Filed 08/17/22 Page 3 of 15
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`intended to place discretion in the district court to adjudicate motions for transfer according to
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`an ‘individualized, case-by-case consideration of convenience and fairness.’” Stewart Org.,
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`Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622
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`(1964)).
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`The preliminary question under Section 1404(a) is whether a civil action “might have
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`been brought” in the transfer destination venue.” In re Volkswagen of Am., Inc., 545 F.3d 304,
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`312 (5th Cir. 2008) (hereinafter “Volkswagen II”). If the destination venue would have been a
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`proper venue, then “[t]he determination of ‘convenience’ turns on a number of public and
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`private interest factors, none of which can be said to be of dispositive weight.” Action Indus.,
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`Inc. v. U.S. Fid. & Guar. Co., 358 F.3d 337, 340 (5th Cir. 2004). The private factors include:
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`“(1) the relative ease of access to sources of proof; (2) the availability of compulsory process
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`to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4)
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`all other practical problems that make trial of a case easy, expeditious and inexpensive.” In re
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`Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (hereinafter “Volkswagen I”) (citing Piper
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`Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)). The public factors include: “(1) the
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`administrative difficulties flowing from court congestion; (2) the local interest in having
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`localized interests decided at home; (3) the familiarity of the forum with the law that will
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`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. Courts evaluate these factors based on the situation which
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`existed at the time of filing rather than relying on hindsight knowledge of the defendant’s forum
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`preference. Hoffman v. Blaski, 363 U.S. 335, 343 (1960).
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`The burden to prove that a case should be transferred for convenience falls squarely on
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`the moving party. Volkswagen II, 545 F.3d at 315. The burden that a movant must carry is not
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`that the alternative venue is more convenient, but that it is clearly more convenient. Id. at 314
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`n.10. Although the Vivato’s choice of forum is not a separate factor entitled to special weight,(cid:3)
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`respect for the Vivato’s choice of forum is encompassed in the movant’s elevated burden to
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`“clearly demonstrate” that the proposed transferee forum is “clearly more convenient” than the
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`forum in which the case was filed. Id. at 315. While “clearly more convenient” is not
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`necessarily equivalent to “clear and convincing,” the moving party “must show materially more
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`than a mere preponderance of convenience, lest the standard have no real or practical meaning.”
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`Quest NetTech Corp. v. Apple, Inc., No. 2:19-CV-118, 2019 WL 6344267, at *7 (E.D. Tex.
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`Nov. 27, 2019).
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`III.(cid:3)DISCUSSION
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`The threshold determination in the § 1404(a) analysis is whether this case could initially
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`have been brought in the destination venue—the Northern District of California. HP
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`asserts that this case could have originally been brought in the NDCA because it is
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`headquartered in Palo Alto, California. ECF No. 27 at 5. Vivato does not contest this point.
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`This Court finds that venue would have been proper in the NDCA had Vivato originally filed
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`this case there. Thus, the Court proceeds with its analysis of the private and public interest
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`factors to determine if the NDCA is clearly more convenient than the Western District of
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`Texas (“WDTX”).
`A. The Private Interest Factors
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`i. The Relative Ease of Access to Sources of Proof
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`“In considering the relative ease of access to proof, a court looks to where documentary
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`evidence, such as documents and physical evidence, is stored.” Fintiv Inc. v. Apple Inc., No.
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`6:18-CV-00372, 2019 WL 4743678, at *2 (W.D. Tex. Sept. 10, 2019). “[T]he questions is
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`relative ease of access, not absolute ease of access.” In re Radmax, 720 F.3d 285, 288 (5th Cir.
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`2013) (emphases in original). “In patent infringement cases, the bulk of the relevant evidence
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`usually comes from the accused infringer. Consequently, the place where the defendant’s
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`documents are kept weighs in favor of transfer to that location.” In re Apple Inc., 979 F.3d
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`1332, 1340 (Fed. Cir. 2020) (quoting In re Genentech, 566 F.3d 1388, 1345 (Fed. Cir. 2009)).
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`HP contends that documents relating to marketing, sales, financials, and patent licensing
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`for the Accused Products are kept in the NDCA. ECF No. 27 at 10. Additionally, HP’s research,
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`design, and development documents are primarily in NDCA, Spring, Texas, and Taiwan. Id. at
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`2.(cid:3)Vivato has two primary responses to HP’s claims. First, Vivato states that HP’s motion did(cid:3)
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`not identify physical documents and was vague about the location of electronic documents.
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`ECF No. 50 at 2. Second, Vivato argues that the files are likely electronic and can be accessed
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`as easily in Texas as in California. Id. at 2–3.
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`The Fifth Circuit has stressed the importance of not relying on technological
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`improvements in electronic discovery to hold that accessing remotely stored documents favors
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`one forum over another. Volkswagen II, 545 F.3d at 316. And the Federal Circuit has agreed
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`that the ability to access documents remotely does not render this factor superfluous. In re
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`Juniper Networks, Inc., 14 F.4th 1313, 1321 (Fed. Cir. 2021). The “location of document
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`custodians and location where documents are created and maintained, which may bear on the
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`ease of retrieval,” are still relevant. In re Google LLC, No. 2021-178, 2021 WL 5292267, at *2
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`(Fed. Cir. Nov. 15, 2021) (citing In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013)). Even
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`if the physical location of HP’s documents is entirely unknown, the fact that documents are
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`created and maintained in the NDCA is still relevant.
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`The sources of proof in the present case come primarily from NDCA, Taiwan, and
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`Spring, Texas. ECF No. 27 at 2. Taiwan likely has the most relevant evidence in this case
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`because the documents there are technical in nature and are necessary for Vivato to develop its
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`infringement case. Id. at 10. The evidence abroad favors neither district as inspection of those
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`documents could be made in either California or Texas. HP also has documents related to the
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`design, development, marketing, and sales of the Accused Products on the computers of
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`employees in the NDCA, Taiwan, and Spring, Texas. EFC No. 28 ¶ 23. Although the documents
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`in Spring would likely be more accessible in the WDTX, the documents in Palo Alto are already
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`in the transferee forum. The final group of relevant evidence would be HP’s sales and financial
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`information, which would be highly relevant to damages. Those documents are in the NDCA.
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`ECF No. 27 at 10. As most of the relevant evidence usually comes from the accused infringer,
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`and HP contends that no relevant documents are stored in WDTX, it is likely that documentary
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`evidence is more easily accessible in the NDCA.
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`For those reasons, the Court finds that this factor favors transfer.
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`ii. The Availability of Compulsory Process to Secure the Attendance of Witnesses
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`Under the Federal Rules, a court may subpoena a witness to attend trial only (a) “within
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`100 miles of where the person resides, is employed, or regularly transacts business in person”;
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`or (b) “within the state where the person resides, is employed, or regularly transacts business
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`in person, if the person . . . is commanded to attend a trial and would not incur substantial
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`expense.” Fed. R. Civ. P. 45(c)(1)(A), (B)(ii). Under this factor, the Court focuses on “non-
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`party witnesses whose attendance may need to be secured by a court order.” Fintiv, Inc., No.
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`6:18-CV-00372, 2019 WL 4743678 at *5 (citing Volkswagen II, 545 F.3d at 316). This factor
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`“weigh[s] heavily in favor of transfer when more third-party witnesses reside within the
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`transferee venue than reside in the transferor venue.” In re Apple, 581 F. App’x 886, 889 (Fed.
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`Cir. 2014).
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`The parties identify several third-party witnesses in this case. The first group of
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`witnesses is the named inventors. HP identifies four named inventors in California and one
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`named inventor in Texas who hold information regarding conception and reduction to practice.
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`ECF No. 27 at 7–9. The inventors include Siavash Alamouti (NDCA), Hujun Yin (NDCA),
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`Praveen Mehrotra (NDCA), Bobby Jose (NDCA), and Marcus Da Silva (WDTX). Id. Vivato
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`suggests that HP has not sufficiently verified the residence of the individuals who allegedly
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`reside in California. ECF No. 50 at 4. Vivato argues that “assuming” one of eight individuals
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`who appear in an internet search for Praveen Mehrotra living in San Jose with connections to
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`Spokane, Washington is unreliable evidence. Id. Further, Vivato contends that the LinkedIn
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`profile for Hujun Yin does not exist. Id. Praveen Mehrotra’s location on the asserted patent is
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`Spokane, Washington, and HP provided some evidence of his location using an image of an
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`internet search. ECF No. 27-4. Although HP’s evidence of Mr. Mehrotra’s location is weak at
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`best, the Court can infer that Mr. Mehrotra is located in the NDCA. The Court finds that four
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`named inventors reside in the NDCA and one in the WDTX. The Court also notes that it is
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`unlikely each named inventor has unique information about the patent.
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`The second group of third-party witnesses is former HP and Vivato employees. These
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`individuals are
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`is the former “(cid:3)
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` and Ken Biba. ECF No. 28 ¶ 21–22; ECF No. 27 at 8.
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`” living in the WDTX. ECF No.
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`28 ¶ 21. Mr. Biba is the former CEO of Vivato and lives in California. ECF No. 27 at 8. Neither
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`party contests the relevance of these two witnesses. Vivato argues, however, that the Court
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`should not give Mr. Biba any weight in the analysis as he is a “willing witness.” ECF No. 50
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`at 5; ECF No. 50-1 ¶ 4. Specifically, the Chan Declaration reveals he is willing to travel to this
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`District. Id. It is difficult to imagine that Mr. Biba is willing to travel from California to Waco
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`to testify, yet is unwilling to travel within the state to testify. The Court will therefore consider
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`him a willing witness, who is not properly analyzed under this factor.
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`The third group includes witnesses involved in business transactions with HP and
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`Vivato. Glen Nuttall, Vladislav Teplitskiy, and Nicholas Transier are three California attorneys
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`who prosecuted the patent of the Accused Products. ECF No. 27 at 8. Michael Haycox and
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`Chris Thomas, shareholders involved in “valuing Vivato’s patent portfolio,” are in California.
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`Id. HP contends that the shareholders have “information relevant to damages . . . sale and
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`foreclosure proceedings relevant to [Vivato]’s standing.” Id. Vivato argues that the attorneys
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`are unlikely to have relevant knowledge, and the Court should not give them any weight. ECF
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`No. 50 at 4. Vivato further contends that even if the Court gives the attorneys weight, they are
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`in Southern California. Id. Vivato states that the Court should not give Mr. Haycox or Mr.
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`Thomas weight as they do not have any useful knowledge and have been “cherry-picked.” Id.
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`at 5. HP provides reasoning for their selection and contests that these individuals were picked
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`solely for venue purposes. ECF No. 52 at 2–3. Vivato does not provide evidence to negate the
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`relevance of the third-party witnesses in this category. HP alleges these individuals have
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`information relevant to conception, reduction to practice, prosecution, and damages. Id. The
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`Court finds that five witnesses related to various business dealings live in California.
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`Finally, HP contends that Intel, Realtek, and Qualcomm are important third-party
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`witnesses because each supplied HP with the accused WiFi modules. ECF No. 27 at 2–3. HP
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`does not list any specific employees but does claim that Intel and Realtek have offices in the
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`NDCA, and Qualcomm has an office in San Diego, California. Further, HP states the employees
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`who “evaluate, select, test and manage the WiFi modules” are in Taiwan, which is not within
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`the reach of this Court or the NDCA. Id. Vivato argues that Intel and Qualcomm have offices
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`in Austin and that Realtek has no U.S. locations on their website. ECF No. 50 at 5. The Court
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`does not find any employees from Intel, Realtek, or Qualcomm that weigh in favor or against
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`under this factor.
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`In sum, two third-party witnesses would be subject to compulsory process in the
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`WDTX. These include one named inventor and one former HP employee. By contrast, nine
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`third-party witnesses would be subject to compulsory process in the NDCA. Because four of
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`those witnesses are inventors who worked on the same patent, their testimony would likely be
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`duplicative. Although HP has not shown why one inventor would have materially different
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`testimony over another, there are still more third-party witnesses within the subpoena power of
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`the NDCA.
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`For those reasons, the Court finds this factor weighs in favor of transfer.
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`iii. The Cost of Attendance and Convenience for Willing Witnesses
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`The most important factor in the transfer analysis is the convenience of the witnesses.
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`In re Genentech, Inc., 566 F.3d at 1343. When analyzing this factor, the Court should consider
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`all potential material and relevant witnesses. Alacritech Inc. v. CenturyLink, Inc., No. 2:16-CV-
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`00693, 2017 WL 4155236, at *16 (E.D. Tex. Sept. 19, 2017). “When the distance between an
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`existing venue for trial of a matter and a proposed venue under §1404(a) is more than 100
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`miles, the factor of inconvenience to witnesses increases in direct relationship to the additional
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`distance to be travelled.” Volkswagen II, 545 F.3d at 317 (quoting Volkswagen I, 371 F.3d at
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`203). But it is unclear when the 100-mile rule applies, as the Federal Circuit has stated that
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`courts should not apply the rule “rigidly” in some cases where witnesses would be required to
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`travel a significant distance no matter where they testify. In re Apple, 979 F.3d at 1341
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`(discussing witnesses traveling from New York) (citing Volkswagen II, 545 F.3d at 317). “[T]he
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`inquiry should focus on the cost and inconvenience imposed on the witnesses by requiring them
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`to travel to a distant forum and to be away from their homes and work for an extended period
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`of time.” In re Google, LLC, No. 2021-170, 2021 WL 4427899, at *4 (Fed. Cir. Sept. 27, 2021).
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`The Federal Circuit has indicated that time away from an individual’s home is a more important
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`metric than distance. Id.
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`There are two groups of witnesses that this Court must consider. The first group of
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`witnesses is employees “who are most knowledgeable about the marketing, sales, financials,
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`and patent licensing related to the Accused Products.” ECF No. 27 at 5. HP has identified seven
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`of these employees that are located in the NDCA. ECF No. 28 at 3–4. HP has also identified
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`two witnesses who worked with the accused technology in Texas, one of which lived in the
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`WDTX. Id. at 5. HP contends that this witness is the only relevant party that resides in the
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`WDTX. Id. Although HP does have a large presence in this District with its Austin office, HP
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`contends that none of the employees who live or work in the Austin office have decision-
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`making authority on the accused technology. Id at 6.
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`The second group of witnesses consists of eleven employees that evaluate, select, test,
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`and manage integration of the WiFi modules in the Accused Products. ECF No. 28 at 4–5. All
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`these employees live and work in Taipei, Taiwan. Id at 5. The Federal Circuit has instructed
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`that when the witness must travel a significant distance no matter where they testify, the
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`difference between traveling to California and Texas is slight at best. Genetech, 566 F.3d at
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`1344 (stating that the circuit said “the ‘100-mile’ rule should not be rigidly applied” and that
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`“witnesses from Europe [would] be required to travel a significant distance no matter where
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`they testify” when comparing travel to the NDCA and Eastern District of Texas); In re Apple,
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`979 F.3d at 1342 (discussing witnesses traveling from New York) (citing Volkswagen II, 545
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`F.3d at 317). HP thus overstates the difference in travel to the NDCA versus the WDTX because(cid:3)
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`employees from Taiwan would have to travel a significant distance no matter where they testify.
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`Those witnesses will be removed from their communities for roughly the same amount of time
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`should they travel to either district. The foreign employees have a neutral effect on the transfer
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`analysis in the present case.
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`Lastly, the Court considers Mr. Biba, who, as discussed above, should be considered a
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`willing witness. Although he indicated he would be willing to travel to the WDTX, the fact that
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`he lives in California would make travel to the NDCA more convenient.
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`Because eight willing witnesses reside in the NDCA and only one lives in the WDTX,
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`the Court finds that this factor favors transfer.
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`iv. All Other Practical Problems that Make Trial of a Case Easy, Expeditious and
`Inexpensive
`When considering the private interest factors, courts must consider “all other practical
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`problems that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d
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`at 314. “Particularly, the existence of duplicative suits involving the same or similar issues may
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`create practical difficulties that will weigh heavily in favor or against transfer.” PersonalWeb
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`Techs., LLC v. NEC Corp. of Am., Inc., No. 6:11-CV-655, 2013 WL 9600333, at *5 (E.D. Tex.
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`Mar. 21, 2013). “[W]here there is a co-pending litigation . . . involving the same patent-in-
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`suit, . . . pertaining to the same underlying technology and accusing similar services, . . . the
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`Federal Circuit cannot say the trial court clearly abuses its discretion in denying transfer.” In
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`re Vistaprint Ltd., 628 F.3d at 1346 n.3.
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`HP asserts that there are no practical problems associated with transfer. ECF No. 27 at
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`10. Vivato contends that transfer is impractical because seven other cases involving the same
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`patent are pending in this Court. ECF No. 50 at 7. Furthermore, Vivato argues there is another
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`case involving a different patent with similar technology creating substantial overlap between
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`the cases. Id. at 8. HP rebuts, stating, “a plaintiff should not be able to bootstrap a defendant
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`into an inconvenient forum merely by suing them along with others in the same forum.” ECF
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`No. 52 at 4.
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`The existence of seven co-pending cases raises substantial practical problems in
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`transferring this case. Transferring this case to California could create practical difficulties,
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`including two court’s ruling on the same patents asserted by the same plaintiff, and the risk of
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`inconsistent rulings.
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`Trying all seven cases in this Court would maintain judicial economy and avoid
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`practical problems. However, all cases related to this one are in the early stages of trial, and
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`four have pending motions to transfer. This Court has recognized that it “must also consider
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`the presence of co-pending motions to transfer.” Parus Holdings Inc. v. LG Elecs. Inc., No.
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`6:19-CV-00432-ADA, 2020 WL 4905809, at *7 (W.D. Tex. Aug. 20, 2020); See In re Google
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`Inc., No. 2017-107, 2017 WL 977038, at *2 (Fed. Cir. Feb. 23, 2017) (“Based on the district
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`court's rationale, therefore, the mere co-pendency of related suits in a particular district would
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`automatically tip the balance in non-movant's favor regardless of the existence of co-pending
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`transfer motions and their underlying merits. This cannot be correct.”). The other defendants’
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`motions to transfer are still pending, and the Court will evaluate each individually. As a result,
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`the co-pending cases are neutral with respect to transfer.
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`For those reasons, the Court finds that this factor is neutral.
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`B. The Public Interest Factors
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`i. Administrative Difficulties Flowing from Court Congestion
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`This factor concerns whether there is an appreciable difference in docket congestion
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`between the two forums. See In re Juniper Networks, Inc., 14 F.4th at 1322. This factor
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`considers “[t]he speed with which a case can come to trial and be resolved.” In re Genentech,
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`Inc., 566 F.3d at 1347. Additionally, court congestion is considered “the most speculative”
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`factor, and when “relevant factors weigh in favor of transfer and others are neutral, then the
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`speed of the transferee district court should not alone outweigh all those other factors.” Id.
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`HP argues that this factor is neutral, because Vivato is a patent holding company and is
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`not under time pressure. ECF No. 27 at 13. HP suggests this factor is still neutral even if Vivato
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`needs a quick resolution. Id. Vivato argues that this factor disfavors transfer because the case
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`will come to trial and be resolved faster in this Court. ECF No. 50 at 8. Vivato cites the Federal
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`Court Management Statistics to show that this Court would resolve this case faster. Id.
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`Specifically, Vivato points out that a case takes approximately three and a half years to reach
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`trial in NDCA. Id. HP contrasts those statistics with the fact that this Court is more congested
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`with 800 patent cases compared to the NDCA’s 300 patent cases. ECF No. 27 at 13. Vivato
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`argues that despite having more cases, the case will still reach trial faster in this Court. ECF
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`No. 50 at 9. Neither party considers the Court’s non-patent docket, which does impact time to
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`trial.
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`The Court finds that this factor is neutral. Any difference in docket congestion and time-
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`to-trial is negligible. And even if this Court would weigh this factor in favor of transfer, the
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`Federal Circuit has repeatedly diminished its importance in the transfer analysis, at least as
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`compared to the other factors. In re Genentech, Inc., 566 F.3d at 1347.
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`For those reasons, the Court finds this factor is neutral.
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`ii. Local Interest in Having Localized Interests Decided at Home
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`Under this factor, the Court must evaluate whether there is a local interest in deciding
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`local issues at home. Volkswagen II, 545 F.3d at 317. Local interests in patent cases “are not a
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`fiction.” In re Samsung Elecs. Co., 2 F.4th 1371, 1380 (Fed. Cir. 2021). “A local interest is
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`demonstrated by a relevant factual connection between the events and the venue.” Word to Info,
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`Case 6:21-cv-00694-ADA Document 55 Filed 08/17/22 Page 13 of 15
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`Inc. v. Facebook, Inc., No. 3:14-CV-04387-K, 2015 WL 13870507, at *4 (N.D. Tex. Jul. 23,
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`2015). “[T]he sale of an accused product offered nationwide does not give rise to a substantial
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`interest in any single venue.” In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir.
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`2009). “This factor most notably regards not merely the parties’ significant connections to each
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`forum writ large, but rather the ‘significant connections between a particular venue and the
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`events that gave rise to a suit.’” In re Apple, 979 F.3d at 1344 (quoting In re Acer Am. Corp.,
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`626 F.3d 1252, 1256 (Fed. Cir. 2010)) (emphasis in original). But courts should not heavily
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`weigh a party’s general contacts with a forum that is untethered from the lawsuit, such as a
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`general presence. Id. Moreover, “little or no weight should be accorded to a party’s ‘recent and
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`ephemeral’ presence in the transferor forum, such as by establishing an office in order to claim
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`a presence in the district for purposes of litigation.” In re Juniper Networks, Inc., 14 F.4th at
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`1320 (quoting In re Microsoft Corp., 630 F.3d 1361, 1365 (Fed. Cir. 2011)). To determine
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`which district has the stronger local interest, the Court looks to where the events forming the
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`basis for infringement occurred. See In re Juniper Networks, Inc., 14 F.4th at 1320.
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`HP contends this factor heavily favors transfer because both parties in the present case
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`have strong ties to NDCA. HP’s headquarters, where sales, marketing, financial, and patent
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`licensing decisions related to the Accused Products are made, is in the NDCA. ECF 27 at 12.
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`Additionally, Vivato is headquartered in California and the company that Vivato acquired the
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`accused technology from was headquartered out of San Francisco, California. Id. Vivato
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`responds that HP employs 151 personnel in an office within the WDTX. While Vivato is correct
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`that HP advertises and sells their product within the WDTX, they have not demonstrated that
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`HP targets the WDTX specifically beyond HP’s nationwide marketing strategy. Additionally,
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`Vivato cannot establish that the employees in HP’s Austin office are relevant to the present case
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`before this Court.
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`For these reasons, the Court finds that this factor weighs in favor of transfer.
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`Case 6:21-cv-00694-ADA Document 55 Filed 08/17/22 Page 14 of 15
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`iii. Familiarity of the Forum with the Law That will Govern the Case
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`Both parties agree that this factor is neutral.
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`iv. Avoidance of Unnecessary Problems of Conflict of Laws or in the Application of
`Foreign Law
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`Both parties agree that this factor is neutral.
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`IV. CONCLUSION
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`Having considered the private and public interest factors, the Court’s conclusions for
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`each factor are summarized in the following table:
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`Factor
`
`The Court’s Finding
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`Relative ease of access to sources of proof
`
`Favors transfer
`
`Availability of compulsory process to secure the attendance
`of witnesses
`
`Favors transfer
`
`Cost of attendance for willing witnesses
`
`Favors transfer
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`All other practical problems that make trial of a case easy,
`expeditious and inexpensive
`
`Neutral
`
`Administrative difficulties flowing from court congestion
`
`Neutral
`
`Local interest
`
`Favors transfer
`
`Familiarity of the forum with law that will govern case
`
`Neutral
`
`Problems associated with conflict of law
`
`Neutral
`
`Four of the eight factors are neutral. Four factors favor transfer, and no factors disfavor
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`transfer. The NDCA is in a better position to secure the attendance of more witnesses via
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`compulsory process, has easier access to sources of proof, has a greater interest in the outcome
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`Case 6:21-cv-00694-ADA Document 55 Filed 08/17/22 Page 15 of 15
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`of the case, and is more affordable for willing witnesses to attend. Accordingly, Defendant has
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`met its burden by showing that transfer to the NDCA is clearly more convenient.
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`IT IS ORDERED that Defendant’s Motion to Transfer Venue to the Northern District
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`of California is GRANTED.
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`SIGNED this 1st day of Agust, 2022.
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