Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS,
`WACO DIVISION
`
`XR COMMUNICATIONS, LLC, dba
`VIVATO TECHNOLOGIES,
`
`Plaintiff,
`
`-vs.-
`
`AMAZON.COM, INC., AMAZON.COM
`SERVICES LLC, and EERO LLC,
`
`Defendants.
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`The Honorable
`Alan D. Albright
`
`No.: 6:21-cv-00619-ADA
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ OPPOSED MOTION TO TRANSFER VENUE UNDER
`28 U.S.C. § 1404(a) TO THE NORTHERN DISTRICT OF CALIFORNIA
`
`
`

`

`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 2 of 21
`
`TABLE OF CONTENTS
`
`INTRODUCTION -------------------------------------------------------------------------------------------- 1
`
`FACTUAL BACKGROUND ------------------------------------------------------------------------------- 2
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`THE PARTIES, THE PATENTS, AND THE PRODUCTS ------------------------- 2
`
`EERO’S WITNESSES AND EVIDENCE ARE IN NDCA -------------------------- 2
`
`AMAZON’S WITNESSES AND EVIDENCE ARE IN NDCA -------------------- 3
`
`XR’S LIKELY EVIDENCE AND WITNESSES ARE IN CALIFORNIA -------- 4
`
`NON-PARTY WITNESSES ARE IN OR NEAR NDCA ---------------------------- 4
`
`LEGAL STANDARD ---------------------------------------------------------------------------------------- 6
`
`ARGUMENT ------------------------------------------------------------------------------------------------- 7
`
`I.
`
`II.
`
`XR Could Have Filed This Case in NDCA --------------------------------------------- 7
`
`NDCA Is “Clearly More Convenient” Than WDTX ---------------------------------- 8
`
`A.
`
`The Private Factors Favor Transfer to NDCA --------------------------------- 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`Relative Ease of Access to Sources of Proof -------------------------- 8
`
`Availability of Compulsory Process to
`Secure the Attendance of Witnesses ----------------------------------- 9
`
`Cost of Attendance for Willing Witnesses --------------------------- 11
`
`Other Practical Problems------------------------------------------------ 13
`
`B.
`
`The Public Factors Favor Transfer to NDCA --------------------------------- 14
`
`1.
`
`2.
`
`3.
`
`4.
`
`Court Congestion--------------------------------------------------------- 14
`
`Local Interest ------------------------------------------------------------- 14
`
`Familiarity with Governing Law -------------------------------------- 15
`
`Avoidance of Conflicts -------------------------------------------------- 15
`
`CONCLUSION ----------------------------------------------------------------------------------------------- 15
`
`-i-
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`

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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 3 of 21
`
`Cases:
`
`Page(s):
`
`TABLE OF AUTHORITIES
`
`10Tales, Inc. v. TikTok Inc.,
`No. 6:20-CV-810-ADA, 2021 WL 2043978 (W.D. Tex. May 21, 2021) -------------------------- 8
`
`Action Indus., Inc. v. U.S. Fid. & Guar. Co.,
`358 F.3d 337 (5th Cir. 2004) -------------------------------------------------------------------------- 6, 7
`
`HD Silicon Sols. LLC v. Microchip Tech. Inc.,
`No. W-20-CV-01092-ADA, 2021 WL 4953884 (W.D. Tex. Oct. 25, 2021) --------------------- 11
`
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) --------------------------------------------------------------------- 12
`
`In re Apple Inc.,
`No. 2021-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021)--------------------------------------- 13
`
`In re Atlassian Corp. PLC,
`No. 2021-177, 2021 WL 5292268 (Fed. Cir. Nov. 15, 2021)------------------------------- 8, 14, 15
`
`In re Dish Network LLC,
`No. 2021-182, 2021 WL 4911981 (Fed. Cir. Oct. 21, 2021) ------------------------------------ 9, 13
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ----------------------------------------------------------------- 8, 11, 14
`
`In re Google LLC,
`No. 2021-171, 2021 WL 4592280 (Fed. Cir. Oct. 6, 2021) --------------------------------- 9, 11, 12
`
`In re Google LLC,
`No. 2021-178, 2021 WL 5292267 (Fed. Cir. Nov. 15, 2021)------------------------------------- 8, 9
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) ------------------------------------------------------------------------- 14
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) ----------------------------------- 10, 12
`
`In re Juniper Networks, Inc.,
`No. 2021-156, 2021 WL 4519889 (Fed. Cir. Oct. 4, 2021) ----------------------------------------- 14
`
`In re NetScout Sys., Inc.,
`No. 2021-173, 2021 WL 4771756 (Fed. Cir. Oct. 13, 2021) --------------------------------------- 13
`
`In re Quest Diagnostics Inc.,
`No. 2021-193, 2021 WL 5230757 (Fed. Cir. Nov. 10, 2021)--------------------------------------- 12
`
`-ii-
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`

`

`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 4 of 21
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014) -------------------------------------------------------------------------- 7
`
`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) ---------------------------------------------------------------------- 7, 8, 12
`
`In re Volkswagen of Am., Inc.,
`566 F.3d 1349 (Fed. Cir. 2009) ------------------------------------------------------------------------- 13
`
`MasterObjects, Inc. v. Amazon.com, Inc.,
`No. 20 CV 3478 (PKC), 2020 WL 6075528 (S.D.N.Y. Oct. 15, 2020) ---------------------------- 8
`
`Parus Holdings Inc. v. LG Elecs. Inc.,
`No. 6:19-cv-432, 2020 WL 4905809 (W.D. Tex. Aug. 20, 2020) --------------------------------- 14
`
`Vocalife LLC v. Amazon.com, Inc.,
`No. 2:19-CV-123-JRG, 2019 WL 6345191 (E.D. Tex. Nov. 27, 2019) --------------------------- 8
`
`XR Commc’ns LLC v. Apple Inc.,
`No. 6:21-cv-620-ADA --------------------------------------------------------------------------------- 1, 14
`
`XR Commc’ns LLC v. Google LLC,
`No. 6:21-cv-625-ADA ------------------------------------------------------------------------ 1, 10, 12, 14
`
`XR Commc’ns LLC v. HP Inc.,
`No. 6:21-cv-694-ADA --------------------------------------------------------------------------------- 1, 14
`
`XR Commc’ns LLC v. Ruckus Wireless, Inc.,
`No. 18-CV-01992-WHO --------------------------------------------------------------------------------- 14
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. W-16-CA-447-RP, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) ----------------------------- 8
`
`Statutes:
`
`28 U.S.C. § 1404 ------------------------------------------------------------------------------------------- 1, 6
`
`Rules:
`
`Fed. R. Civ. P. 45 ---------------------------------------------------------------------------------------------- 9
`
`
`
`
`
`-iii-
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 5 of 21
`
`INTRODUCTION
`
`The Northern District of California (“NDCA”) is the most convenient venue for this patent
`
`lawsuit. Both eero LLC (“eero”) and the relevant Amazon entity, Lab126, are headquartered there.
`
`NDCA is where Defendants designed and developed the accused products. And many relevant
`
`non-parties—such as named inventors, Defendants’ suppliers of chips related to the accused WiFi
`
`functionality, and prior art witnesses—are based in NDCA, in California, or nearby in the Pacific
`
`Northwest. Even Plaintiff is headquartered in California. California is thus where likely witnesses
`
`and sources of proof are concentrated, making NDCA a clearly more convenient forum. In
`
`contrast, little to no sources of proof are in the Western District of Texas (“WDTX”).
`
`On September 7, 2021, eero moved to dismiss or, in the alternative, transfer this action to
`
`NDCA because venue is improper in this District as to eero, and transfer of all three related
`
`Defendants would serve the interests of justice. ECF No. 23. That motion remains fully briefed,
`
`and should the Court grant that motion and transfer all parties to this action to NDCA, the present
`
`Motion would be rendered moot. Defendants nevertheless present this Motion because the Court
`
`has set a Markman hearing for June of this year and, even if the Court were to deny the earlier
`
`motion to dismiss, this action should be transferred on convenience grounds.
`
`Defendants thus request transfer under 28 U.S.C. § 1404(a). Every convenience factor but
`
`one favors NDCA. Indeed, Google, Apple, and HP requested transfer of their cases involving the
`
`same Plaintiff and patents to NDCA for similar reasons as Defendants here—NDCA is where the
`
`parties, witnesses, and documents are concentrated. XR Commc’ns LLC v. Google LLC, No. 6:21-
`
`cv-625-ADA, ECF No. 25; XR Commc’ns LLC v. Apple Inc., No. 6:21-cv-620-ADA, ECF No. 22;
`
`XR Commc’ns LLC v. HP Inc., No. 6:21-cv-694-ADA, ECF No. 27.
`
`
`
`-1-
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`

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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 6 of 21
`
`FACTUAL BACKGROUND
`THE PARTIES, THE PATENTS, AND THE PRODUCTS
`
`I.
`Plaintiff XR Communications, LLC (“XR”) d/b/a Vivato Technologies (“Vivato”) alleges
`
`that eero, Amazon.com, Inc., and Amazon.com Services LLC (collectively, “Defendants”) infringe
`
`two patents concerning “Directed Wireless Communication.” (ECF No. 1 (“Compl.”) ¶¶25, 44.)
`
`XR specifically accuses the WiFi functionality in the eero Pro 6, eero 6, eero Pro, eero, eero 6
`
`extender, and eero Beacon (“Accused eero Products”), and the Amazon Fire TV Stick 4K Max,
`
`Fire TV Stick 4K, Fire TV Stick, Fire TV Stick Lite, Fire TV Cube, and Echo Show 10 (2nd–3rd
`
`Gen) (“Accused Amazon Products”). (Id. ¶¶26, 46; Ex.11 (XR Supp. IC Chart excerpts).)
`
`EERO’S WITNESSES AND EVIDENCE ARE IN NDCA
`
`II.
`eero’s likely witnesses and evidence regarding the Accused eero Products are in NDCA.
`
`eero teams run and manage eero’s product development, engineering, and sales and marketing
`
`functions out of eero’s San Francisco headquarters—within NDCA. (Lindsay2 ¶¶3, 6; Compl. ¶18
`
`(admitting eero’s “principal place of business” is in San Francisco).) eero personnel based in San
`
`Francisco researched, designed, and developed the Accused eero Products. (Lindsay ¶5.) eero
`
`engineers create, maintain, and access technical documents and source code mainly from eero’s
`
`offices around San Francisco. (Id. ¶7.) eero product data in the United States is hosted on
`
`employees most knowledgeable about the WiFi functionality in the eero Accused products
`
` is based in New York. (Id. ¶5.) eero’s likely witness on sales and marketing
`
` are based in San Francisco, and another
`
`
`
`
`
`
`
` (Id.) Three eero
`
`
`1 “Ex. _” refers to exhibits to the Declaration of Robert Cruzen, filed with this motion.
`2 “Lindsay” refers to the Declaration of Dana Lindsay; “Bhavsar” refers to the Declaration of
`Chirag Bhavsar; “Joshi” refers to the Declaration of Avinash Joshi; and “Caruccio” refers to the
`Declaration of Enerino Caruccio, all filed with this motion.
`
`-2-
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`

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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 7 of 21
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` is based in San Francisco. (Lindsay ¶¶2–3.) In contrast, WDTX has little to no connection
`
`to eero. eero has no facilities, product engineering teams, or
`
` servers in Texas.
`
`(Lindsay ¶¶7–9; ECF No. 23 at 2–3.) While some eero employees work remotely from home in
`
`Texas, most are in customer support. (Lindsay ¶10.) No employee in Texas developed, or has
`
`unique personal knowledge about, Accused eero Products beyond what eero’s NDCA-based
`
`engineers have. (Id.)
`
`III. AMAZON’S WITNESSES AND EVIDENCE ARE IN NDCA
`Amazon’s witnesses and evidence regarding the Accused Amazon Products are
`
`concentrated in NDCA. The relevant Amazon entity, known as Lab126, designed and developed
`
`the WiFi functionality in the Accused Amazon Products out of Lab126’s Sunnyvale, CA
`
`headquarters—within NDCA. (Bhavsar ¶¶2, 5; Joshi ¶¶2, 4.) Most technical documentation on
`
`WiFi functionality in the Accused Amazon Products was created and is maintained by Lab126
`
`engineers in Sunnyvale, CA. (Bhavsar ¶8; Joshi ¶7.) Amazon product data in the United States is
`
`hosted on
`
` (Bhavsar ¶8; Joshi ¶7.) Amazon’s
`
`likely sales, financial, and marketing witness
`
` is based in Seattle at Amazon
`
`headquarters. (Caruccio ¶¶1, 3; Compl. ¶¶16–17.) Amazon employees most knowledgeable about
`
`the WiFi functionality of the Accused Amazon Products
`
`
`
` are based in Sunnyvale, CA. (Bhavsar ¶7; Joshi ¶6.) In
`
`contrast, WDTX has little to no connection to the Accused Amazon Products. While Amazon has
`
`Texas facilities, Amazon did not design or develop the Accused Amazon Products there. (Bhavsar
`
`¶¶10–11; Joshi ¶7.) Only one Lab126 employee who had design input on the relevant functionality
`
`of Accused Amazon Products is in WDTX. (Joshi ¶8.) Little to no relevant technical, financial, or
`
`marketing documents for the Accused Amazon Products were created or maintained in WDTX,
`
`nor are the relevant servers there. (Bhavsar ¶¶9–10; Joshi ¶¶9–10; Caruccio ¶4.)
`
`-3-
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`

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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 8 of 21
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`IV. XR’S LIKELY EVIDENCE AND WITNESSES ARE IN CALIFORNIA
`XR’s evidence and witnesses are tied to California, not Texas. XR claims a principal place
`
`of business in Venice, CA. (Compl. ¶10.) XR bought Vivato’s assets out of foreclosure. (Ex. 2
`
`(Aequitas opinion); Ex. 3 (assignment); Ex. 4 (Sidley Decl.).) Vivato, formerly an Oregon
`
`company, now lists a Solana Beach, CA headquarters. (Ex. 5.) XR and Vivato do not appear to
`
`have any personnel, offices, or facilities in Texas. XR has not alleged a connection to WDTX. The
`
`patent file wrappers list a San Diego, CA address for Vivato co-founder Kai Hansen. (Exs. 6–7.)
`
`NON-PARTY WITNESSES ARE IN OR NEAR NDCA
`
`V.
`Non-parties with knowledge of the development, inventorship, ownership, valuation, and
`
`invalidity of the asserted patents are also in or near NDCA. First, ten of the eleven named inventors
`
`had West Coast residences, according to the patents. (ECF Nos. 1-1, 1-2.) Based on public
`
`information, four now reside in California: Siavash Alamouti (Oakland, CA), Praveen Mehrotra
`
`(San Jose, CA–having moved from Washington), Hujun Yin (Saratoga, CA–having moved from
`
`Washington and forming XINJI Technology, Inc. in NDCA), and Bobby Jose (San Diego, CA)
`
`(Exs. 8–11); four live in the Pacific Northwest: Yang-Seok Choi (Portland, OR); James Brennan
`
`(Greater Seattle Area); Robert Conley (Liberty Lake, WA); Eduardo Casas (British Columbia,
`
`Canada). (Exs. 12–15); two live outside the West Coast and Texas: William Crilly (Dunbarton,
`
`NH) and Vahid Tarokh (Durham, NC) (Exs. 16–17); and only one, Marcus Da Silva, resides in
`
`Texas. (Ex. 18.) XR identified five of the named inventors, but not Da Silva, as “key innovators
`
`in the wireless communication field.” (Compl. ¶11.) XR also listed Ken Biba as a “key
`
`innovator”—Biba is based in San Francisco and was Vivato’s CEO when the provisional patent
`
`applications were filed. (Ex. 19; ECF Nos. 1-1, 1-2.) Based on public records, XR does not
`
`currently employ these individuals. (Exs. 8–19.) These witnesses very likely have unique, relevant
`
`information on the development, inventorship, ownership, and value of the asserted patents.
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`-4-
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 9 of 21
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`Second, Amazon has identified three former employees who worked on WiFi connectivity
`
`on the Accused Amazon Products:
`
`, CA (development on Fire TV Stick
`
`4K),
`
`, CA (development on Fire TV Cube), and
`
`
`
`, CA (
`
` chip selection). (Joshi ¶6.) All three live in NDCA and likely have
`
`unique, relevant knowledge on the development of the accused functionality. (Id.; Exs. 20–22.)
`
`Third, the attorneys who prosecuted the asserted patents, Vlad Teplitskiy, Glen Nuttall,
`
`and Nicholas Transier, and the law firm Klein, O’Neill & Singh, LLP (the USPTO-listed contact
`
`for the asserted patents), are based in California. (Exs. 23.) Carl Schwedler, the lawyer who
`
`handled the assignment of the parent patent application, is based in California. (Ex. 24.) These
`
`lawyers likely possess information on patent prosecution and inventorship. (Exs. 6, 7 & 25.)
`
`Fourth, non-party witnesses with information on the ownership and valuation of the
`
`asserted patents are in or closer to NDCA than WDTX. Vivato apparently defaulted on a bridge
`
`loan arranged by Oregon-based firms, Aequitas Capital Management (“Aequitas”) and Western
`
`Property Holdings, LLC (“WPH”), leading to Aequitas’s acquisition of Vivato assets, including
`
`the parent application to the asserted patents. (Ex. 2; ECF Nos. 1-1, 1-2 (claiming priority to ’329
`
`application); Ex. 25, at Reel: 020174 Frame: 0712 (assignment of ’329 application).) WPH sued
`
`Aequitas in Oregon due to, among other things, the low proceeds from the sale of Vivato patent
`
`portfolio to XR. (Ex. 2.) Ron Chaffee, Vivato CEO at that time, and WPH associates, such as
`
`Michael J. Haycox and Chris Thomas, likely have knowledge about this dispute over the value of
`
`Vivato’s patent portfolio, including the parent application of the asserted patents. (Exs. 26–27.)
`
`Haycox, Thomas, and Chaffee do not appear to work for XR, and reside in California. (Id.)
`
`Fifth, Defendants have identified invalidating prior art references and will likely seek
`
`discovery from at least six NDCA-based witnesses knowledgeable about this art, including named
`
`-5-
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 10 of 21
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`inventors of U.S. Patent 6,738,020 (Erik Lindskog of Cupertino, CA and Mitchell D. Trott of San
`
`Mateo, CA); U.S. Patent 6,233,466 (Piu Wong of Los Gatos, CA); U.S. Patent No. 7,248,841
`
`(Brian Agee of San Jose, CA); U.S. Publication No. 2001/0031647 (Shimon Scherzer of
`
`Sunnyvale, CA); and Derek Gerlach (San Anselmo, CA), a named inventor and author of five prior
`
`art references identified in Defendants’ Invalidity Contentions. (Exs. 28–33.) Defendants also will
`
`likely seek discovery on prior art systems relating to mesh networking, mesh network topologies,
`
`and WiFi components from companies headquartered in NDCA, like Google LLC (Mountain
`
`View, CA); Cisco Systems, Inc. (San Jose, CA); Netgear, Inc. (San Jose, CA); Cisco Meraki (San
`
`Francisco, CA); Mesh Dynamics, Inc. (Santa Clara, CA); Juniper Networks, Inc. (Sunnyvale, CA),
`
`and Fortinet, Inc. (Sunnyvale, CA). (Exs. 34–40.)
`
`Finally, Defendants are likely to rely on sources of proof from
`
`
`
` which are Defendants’ suppliers of chips that provide the accused WiFi
`
`functionality in the Accused Products. (Bhavsar ¶¶11–12; Joshi ¶12–14; Lindsay ¶13.)
`
`NDCA. (Ex. 43.) While
`
`—in NDCA. (Exs. 41–42.)
`
`—in
`
`
`
`—in NDCA. (Ex. 44.) Each chip supplier necessarily has relevant information on the accused
`
`WiFi functionality in the Accused Products. (Bhavsar ¶¶ 12–13; Joshi ¶11; Lindsay ¶13.)
`
`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). Determining convenience turns on public and private interest factors, none of
`
`which can be said to be of dispositive weight. Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358
`
`F.3d 337, 340 (5th Cir. 2004). The private factors include:
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 11 of 21
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`(1) the relative ease of access to sources of proof; (2) the availability
`of compulsory process to secure the attendance of witnesses; (3) the
`cost of attendance for willing witnesses; and (4) all other practical
`problems that make trial of a case easy, expeditious and inexpensive.
`
`
`In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004). The public 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. A plaintiff’s choice of venue is not an independent factor in the transfer analysis, and courts
`
`must not give it inordinate weight. In re Volkswagen of Am., Inc., 545 F.3d 304, 314 n.10, 315 (5th
`
`Cir. 2008). A movant for transfer must show that the alternative venue is “clearly more
`
`convenient.” Id. at 315. A proposed transferee forum is “clearly more convenient” where most
`
`potential witnesses and relevant evidence are concentrated in the transferee district. In re Toyota
`
`Motor Corp., 747 F.3d 1338, 1340–41 (Fed. Cir. 2014).
`
`ARGUMENT
`XR COULD HAVE FILED THIS CASE IN NDCA
`
`I.
`As a threshold matter, XR could have filed its complaint in NDCA. As XR admits, eero
`
`has a principal place of business in San Francisco, CA, making NDCA a proper venue against
`
`eero. (Compl. ¶18; Ex. 45.) Amazon.com Services, LLC employs thousands and has many offices
`
`and facilities in the San Francisco Bay Area. (Ex. 46 (SF Chronicle article); Ex. 47 (DNB for
`
`Amazon.com Services, LLC.) And the Amazon entity that developed the Amazon Accused
`
`Products, Amazon Lab126, has its headquarters in Sunnyvale, CA, making venue proper against
`
`Amazon Defendants in NDCA. (ECF No. 23, at 11–12; Lindsay ¶3; Bhavsar ¶2; Joshi ¶2; Ex. 48.)3
`
`
`3 Courts have long recognized that suits could be brought against Amazon.com, Inc. in NDCA.
`Vocalife LLC v. Amazon.com, Inc., No. 2:19-CV-123-JRG, 2019 WL 6345191, at *3 (E.D. Tex.
`
`
`-7-
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 12 of 21
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`II.
`
`NDCA IS “CLEARLY MORE CONVENIENT” THAN WDTX
`The Private Factors Favor Transfer to NDCA
`A.
`Relative Ease of Access to Sources of Proof
`1.
`In patent cases, the bulk of the relevant evidence usually comes from the accused infringer.
`
`10Tales, Inc. v. TikTok Inc., No. 6:20-CV-810-ADA, 2021 WL 2043978, at *2 (W.D. Tex. May
`
`21, 2021). “Consequently, the place where the defendant’s documents are kept weighs in favor of
`
`transfer to that location.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009). Fifth Circuit
`
`precedent specifies that the physical location of electronic documents is relevant to this factor.
`
`Volkswagen, 545 F.3d at 316; In re Atlassian Corp. PLC, No. 2021-177, 2021 WL 5292268, at *2
`
`(Fed. Cir. Nov. 15, 2021). The location of document custodians and where documents were created
`
`and are maintained also bear on this factor. In re Google LLC, No. 2021-178, 2021 WL 5292267,
`
`at *2 (Fed. Cir. Nov. 15, 2021). Finally, courts “look to the location where the allegedly infringing
`
`products were researched, designed, developed and tested.” XY, LLC v. Trans Ova Genetics, LC,
`
`No. W-16-CA-447-RP, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5, 2017).
`
`Here, the bulk of relevant physical evidence is most easily accessed in NDCA. (Lindsay
`
`¶5–7; Bhavsar ¶¶5–8; Joshi ¶¶4–8.) eero teams researched, designed, developed, and tested the
`
`Accused eero Products at eero headquarters in San Francisco, CA, so most of eero’s physical
`
`evidence and custodians are in NDCA. (Lindsay ¶¶3, 5–7; Ex. 45.) Amazon teams researched,
`
`designed, and developed the Accused Amazon Products at Lab126 headquarters in Sunnyvale,
`
`CA, so most of Amazon’s physical evidence and custodians are in NDCA. (Bhavsar ¶¶2, 5–8;
`
`
`Nov. 27, 2019) (finding suit could have been brought in NDCA because “Amazon has design and
`development facilities for the Accused Products in the Northern District of California.”);
`MasterObjects, Inc. v. Amazon.com, Inc., No. 20 CV 3478 (PKC), 2020 WL 6075528, at *1
`(S.D.N.Y. Oct. 15, 2020) (observing case could have been brought against Amazon in NDCA).
`XR has not alleged that NDCA is an improper venue in any pleading, including its opposition to
`eero’s motion to dismiss. (ECF No. 33 (no challenge to propriety of NDCA as venue).)
`
`-8-
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 13 of 21
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`Joshi ¶¶2, 4–7; Ex. 48.) Defendants’ technical documents in the United States are hosted on servers
`
`in
`
` (Lindsay ¶7; Bhavsar ¶8; Joshi ¶7.) Amazon generates
`
`and maintains its sales, financial, and marketing records in Seattle and not in Texas. (Caruccio
`
`¶¶3–4.) And Seattle is over 1,200 miles closer to NDCA than WDTX, so access to that physical
`
`evidence is easier from NDCA compared to WDTX. (Ex. 49 (Google Maps).)
`
`Like eero and Lab 126, XR and Vivato headquarters are in California. (Compl. ¶10; Exs.
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`5, 45 & 48.) Vivato’s website lists no offices in Texas, and XR has not alleged any connection to
`
`Texas. XR and Vivato do not appear to conduct any business in Texas, so it is implausible that
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`WDTX provides easier access to their sources of proof. This factor thus weighs heavily for
`
`transfer. In re Google LLC, No. 2021-171, 2021 WL 4592280, at *6–7 (Fed. Cir. Oct. 6, 2021)
`
`(transfer where no sources of proof were in WDTX, but “a significant number of documents” were
`
`created and maintained in NDCA); Google, 2021 WL 5292267, at *2 (transfer where “relevant
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`documents were created and maintained” in NDCA).
`
`2.
`
`Availability of Compulsory Process to
`Secure the Attendance of Witnesses
`
`A court may only subpoena witnesses “(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, if the person (i) is a party or a
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`party’s officer, or (ii) is commanded to attend trial and would not incur substantial expense.” Fed.
`
`R. Civ. P. 45(c)(1). When there is no indication that a non-party witness is willing, the witness is
`
`presumed to be unwilling and considered under the compulsory process factor. In re Dish Network
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`LLC, No. 2021-182, 2021 WL 4911981, at *3 (Fed. Cir. Oct. 21, 2021). If movant shows multiple
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`non-party witnesses are within the subpoena power of only the transferee venue, this factor
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`-9-
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 14 of 21
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`overwhelmingly favors transfer even without a showing of unwillingness. In re Hulu, LLC, No.
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`2021-142, 2021 WL 3278194, at *4 (Fed. Cir. Aug. 2, 2021).
`
`Here, most relevant non-party witnesses reside or are employed in California, and thus
`
`within NDCA’s subpoena power.4 Based on residence and employment, as evidenced by
`
`Defendants’ investigation thus far, NDCA has subpoena power that WDTX likely lacks over at
`
`least eight potential NDCA-based witnesses including three former Amazon employees
`
`
`
`; three named inventors (Alamouti, Mehrotra, Yin); a former Vivato CEO (Biba); and
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`a person with knowledge on Vivato’s patent portfolio value (Haycox). (Exs. 20–22, 8–10, 19, 26,
`
`27.) NDCA also has subpoena power that WDTX likely lacks over at least six NDCA-based
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`individuals with knowledge on prior art identified by Defendants including inventors/authors
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`Lindskog, Trott, Wong, Scherzer, Agee, and Gerlach, all of whom reside in NDCA. (Exs. 28–33.)
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`Only one witness, DeSilva, falls within WDTX’s subpoena power. (Ex. 18.) But XR did not
`
`identify DeSilva as “key.” (Compl. ¶11.) Further, based on public information on U.S. corporate
`
`headquarters, NDCA has subpoena power over at least three of Defendants’ California-based WiFi
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`chip supplier companies,
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`subpoena power over
`
` (Exs. 41–42, 44.) NDCA likely has
`
`
`
`—in NDCA. (Ex. 43.) Also, seven NDCA-based companies likely possess relevant
`
`system prior art: Google LLC, Cisco Systems, Inc., Netgear, Inc., Cisco Meraki, Mesh Dynamics,
`
`Inc., Juniper Networks, Inc., and Fortinet, Inc. (Exs. 34–40.) In Google, XR identified only
`
`Alamouti and Brennan as willing nonparty witnesses out of 11 named inventors. No. 6:21-cv-625-
`
`ADA, ECF No. 33-1, ¶17. This factor thus favors transfer because at least 14 non-party witnesses
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`and 12 corporations should be presumed unwilling, and likely fall within NDCA subpoena power.
`
`
`4 The relevant knowledge and subjects of testimony for these non-parties are described above in
`Factual Background, Section V.
`
`-10-
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 15 of 21
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`3.
`The convenience and cost of attendance of witnesses is probably the most important factor
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`Cost of Attendance for Willing Witnesses
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`in the transfer analysis. Genentech, 566 F.3d at 1343. “When the distance between an existing
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`venue for trial of a matter and a proposed venue under §1404(a) is more than 100 miles, the factor
`
`of inconvenience to witnesses increases in direct relationship to the additional distance to be
`
`traveled.” Id. at 1343; Volkswagen, 371 F.3d at 204–05. A witness’s affiliation with a party “does
`
`not negate the inconvenience and cost to those individuals to travel a significant distance to
`
`testify.” Google, 2021 WL 4592280, at *4 (citation omitted). In fact, “this Court should not accord
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`the convenience of party witnesses less weight.” HD Silicon Sols. LLC v. Microchip Tech. Inc.,
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`No. W-20-CV-01092-ADA, 2021 WL 4953884, at *5 (W.D. Tex. Oct. 25, 2021).
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`For Defendants’ likely willing witnesses, the inconvenience and cost of attendance in
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`WDTX would be significantly worse than in NDCA. Amazon’s likely technical witnesses
`
`
`
` are based at Lab126 headquarters, only 11.7 miles away from an
`
`NDCA courthouse. (Bhavsar ¶¶5–7 (identifying individuals familiar with WiFi chip hardware);
`
`Joshi ¶¶6–7 (identifying individuals familiar with WiFi chip software); Ex. 50.) Four of eero’s
`
`likely witnesses
`
` are based at eero headquarters,
`
`only 1.9 miles away from an NDCA courthouse. (Lindsay ¶¶2–3, 5; Ex. 51.) For these nine willing
`
`witnesses, travel to these courthouses would not require a flight or overnight stay. In contrast,
`
`flying to Waco requires over five hours of travel via a connecting flight, and likely requires an
`
`overnight stay—increasing the cost of attendance. (Exs. 52–53.) For Amazon’s Seattle-based
`
`witness on financial topics
`
`, the NDCA courthouse in San Francisco is about a two-
`
`hour flight away. (Ex. 54.) WDTX is over 1,200 miles farther from Seattle than NDCA. (Ex. 49.)
`
`Flights from Seattle to Waco require a connection and take over five hours, and likely require an
`
`overnight stay. (Exs. 56.) Further, witness inconvenience based on travel to WDTX is amplified
`
`-11-
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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 16 of 21
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`because there is “no major airport in the Waco Division,” and “the Waco courthouse is more than
`
`100 miles from the nearest airport with direct flights” to many major cities. In re Quest Diagnostics
`
`Inc., No. 2021-193, 2021 WL 5230757, at *2 (Fed. Cir. Nov. 10, 2021). On top of added cost, the
`
`long, overnight trips to Waco would lead to lost productivity and disruption to the witnesses’ lives
`
`while “being away from work, family, and community.” Volkswagen, 545 F.3d at 317. And
`
`COVID precautions weigh against lengthy travel for private and public reasons. Even with trial in
`
`Austin, air travel from Seattle or NDCA respectively takes four or three hours. (Exs. 68–70.) And
`
`witnesses would likely need to stay overnight. With 9 out of 11 Defendants’ witnesses in NDCA,
`
`transfer is proper since Defendants have “identified a significant number of [their] own employees
`
`as potential witnesses who reside in [NDCA].” In re Adobe Inc., 823 F. App’x 929, 931 (Fed. Cir.
`
`2020); Google, 2021 WL 4592280, at *4 (transfer where most witnesses were in NDCA compared
`
`to one in WDTX); Hulu, 2021 WL 3278194, at *5 (transfer where an “overwhelming number of
`
`potential witnesses [were] in or near California compared to the two … in Texas”). Defendants
`
`have identified no eero or Amazon witnesses in WDTX with unique knowledge, and do not intend
`
`to call any such witnesses at trial. (Lindsay ¶10; Bhavsar ¶11; Joshi ¶8.)
`
`If XR plans to call its employees or officers, travel to NDCA would also cost less because
`
`XR is based in Venice, CA and Vivato is based in Solana Beach, CA. (Compl. ¶10; Ex. 5.) Vivato
`
`co-founder Kai Hansen, who signed substitute oaths during prosecution, listed a San Diego address
`
`during prosecution. (Exs. 6–7.) NDCA is less than a two-hour flight away from Venice, Solana
`
`Beach, or San Diego. (Exs. 57, 59.) In contrast, Waco requires a connecting flight and travel of
`
`almost five hours. (Exs. 58 & 60.) Austin requires about a three-hour flight. (Exs. 61–62.)
`
`Travel to NDCA would cost far less for likely willing non-party witnesses too. In Google,
`
`No. 6:21-cv-625-ADA, which involves the same Plaintiff and accused patents, XR identified only
`
`-12-
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`

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`Case 6:21-cv-00619-ADA Document 46 Filed 04/20/22 Page 17 of 21
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`Alamouti and Brennan as willing witnesses out of all