Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 1 of 22
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`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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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Case No. 6:21-cv-625-ADA
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`Defendant.
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`GOOGLE LLC’S OPPOSED MOTION TO TRANSFER VENUE PURSUANT TO
`28 U.S.C. § 1404(a) TO THE NORTHERN DISTRICT OF CALIFORNIA
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`PUBLIC VERSION
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`Exhibit 1110
`Page 01 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 2 of 22
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`TABLE OF CONTENTS
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`Page
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`Google’s Relevant Evidence And Witnesses Are In the NDCA, Not In The
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`THE NDCA IS A CLEARLY MORE CONVENIENT FORUM THAN THE
`
`FACTUAL BACKGROUND ..........................................................................................................1
`A.
`WDTX......................................................................................................................2
`B.
`XR’s Evidence And Witnesses Are Not In The WDTX..........................................3
`C.
`Many Relevant Third-Party Witnesses Are In Or Near California ..........................3
`LEGAL STANDARD ......................................................................................................................5
`I.
`WDTX..................................................................................................................................6
`A.
`XR Could Have Brought This Action In The NDCA ..............................................6
`B.
`All Private Interest Factors Favor Transfer To The NDCA ....................................6
`1.
`Cost of attendance for willing witnesses heavily favors transfer ................6
`2.
`Relative ease of access to sources of proof favors transfer .........................8
`3.
`Availability of compulsory process favors transfer .....................................9
`4.
`There are no practical problems with transferring this case ......................11
`The Public Interest Factors Also Strongly Weigh In Favor Of Transfer ...............12
`1.
`NDCA has a strong local interest in this dispute .......................................12
`2.
`Court congestion weighs in favor of transfer .............................................13
`3.
`The remaining public interest factors are neutral ......................................14
`CONCLUSION ..............................................................................................................................14
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`C.
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`i
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`Exhibit 1110
`Page 02 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 3 of 22
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`10Tales, Inc. v. TikTok Inc.,
`No. 6:20-CV-00810-ADA, 2021 WL 2043978 (W.D. Tex. May 21, 2021) .....................6, 7, 8
`
`Adaptix, Inc. v. HTC Corp.,
`937 F. Supp. 2d 867 (E.D. Tex. Mar. 28, 2013) ........................................................................9
`
`Correct Transmission LLC v. ADTRAN, Inc.,
`No. 6:20-CV-00669-ADA, 2021 WL 1967985 (W.D. Tex. May 17, 2021) .....................11, 13
`
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) ............................................................................................8
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ..........................................................................................10
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)............................................................................................8, 13
`
`In re Apple Inc.,
`No. 2021-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) .................................................11
`
`In re Cray Inc.,
`871 F.3d 1355 (Fed. Cir. 2017)..................................................................................................6
`
`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)..............................................................................................1, 6
`
`In re Google Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ....................................................12
`
`In re Google LLC,
`No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sept. 27, 2021) .............................................6, 13
`
`In re Google LLC,
`No. 2021-171, 2021 WL 4592280 (Fed. Cir. Oct. 6, 2021)...................................................8, 9
`
`In re Google LLC,
`No. 2021-178, 2021 WL 5292267 (Fed. Cir. Nov. 15, 2021) ...................................................9
`
`
`
`ii
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`Exhibit 1110
`Page 03 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 4 of 22
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`
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................12
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) .....................................................8
`
`In re Juniper Networks, Inc.,
`No. 2021-160, 2021 WL 4343309 (Fed. Cir. Sept. 24, 2021) .................................................14
`
`In re NetScout Sys., Inc.,
`No. 2021-173, 2021 WL 4771756 (Fed. Cir. Oct. 13, 2021)...................................................11
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)....................................................................................1, 5, 6, 13
`
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ..................................................................................6, 10, 11, 13
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014)..................................................................................................5
`
`In re Tracfone Wireless, Inc.,
`No. 2021-136, 852 F. App’x 537 (Fed. Cir. 2021) ..................................................................12
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)..........................................................................................13, 14
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .................................................................................................7, 8
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) (en banc) ...........................................................................5, 7, 13
`
`Moskowitz Family LLC v. Globus Med.,
`No. 6:19-cv-00672-ADA, 2020 U.S. Dist. LEXIS 145438 (W.D. Tex. July 2,
`2020) ........................................................................................................................................12
`
`RPB Safety, LLC v. Tru-Vision Plastics, Inc.,
`No. 6:18-CV-00367-ADA, 2019 WL 10349405 (W.D. Tex. Feb. 20, 2019) ..........................10
`
`Super Interconnect Techs. v. Google LLC,
`6:21-cv-259-ADA, Dkt. 49 (W.D. Tex. Nov. 8, 2021)..............................................................8
`
`W. Prop. Holdings, LLC v. Aequitas Cap. Mgmt., Inc.,
`392 P.3d 770 (Or. App. 2017)....................................................................................................5
`
`XR Commc’ns, LLC v. Amazon.com, Inc. et al.,
`6:21-cv-00619-ADA, Dkt. 23 (W.D. Tex. Sept. 7, 2021) .......................................................11
`
`
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`iii
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`Exhibit 1110
`Page 04 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 5 of 22
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`XR Commc’ns, LLC v. Ruckus Wireless, Inc.,
`No. 18-cv-01992-WHO, 2021 WL 3918136 (N.D. Cal. Sept. 1, 2021) ..................................12
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`Statutes
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`28 U.S.C. § 1400(b) .........................................................................................................................6
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`28 U.S.C. § 1404(a) .............................................................................................................1, 3, 5, 7
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`Other Authorities
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`Fed. R. Civ. P. 45 .......................................................................................................................9, 10
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`
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`iv
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`Exhibit 1110
`Page 05 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 6 of 22
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`Google LLC (“Google”) requests transfer of this action to the Northern District of
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`California (“NDCA”) under 28 U.S.C. § 1404(a) because the NDCA is a clearly more convenient
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`forum for this lawsuit.
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`Plaintiff XR Communications, LLC (“XR”) has no relevant connections to this District. In
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`fact, XR is a Delaware limited liability company with a principal place of business in Venice,
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`California. Moreover, a substantial number of relevant witnesses are located in California,
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`including in the NDCA. For example, key Google personnel with knowledge about the
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`technology, financials, and marketing of the accused products live and work in the NDCA. A
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`substantial portion of the sources of proof are also created and maintained in the NDCA, at
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`Google’s headquarters. In addition, a number of relevant third parties, including employees of
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`, which designs processors in the accused products that implement
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`the accused functionality, as well as the prosecuting attorneys for the patents-in-suit, are also
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`located in the NDCA and elsewhere in California. In contrast, the only potentially relevant witness
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`located in the Western District of Texas (“WDTX”) appears to be one of 11 named inventors of
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`the patents-in-suit, who is not, according to XR, among the “key innovators in the wireless
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`communication field.”
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`Where, as here, “the transferee venue is ‘clearly more convenient’ than the venue chosen
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`by the plaintiff,” the case should be transferred. In re Nintendo Co., 589 F.3d 1194, 1197 (Fed.
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`Cir. 2009) (quoting In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009)).
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`FACTUAL BACKGROUND
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`On June 16, 2021, XR filed this lawsuit against Google, alleging infringement of U.S.
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`Patent Nos. 10,594,376 (the “’376 patent”) and 10,715,235 (the “’235 patent”). For the ’376
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`patent, XR accuses “Wi-Fi access points and routers supporting MU-MIMO, including without
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`limitation access points and routers utilizing the IEEE 802.11ac standard,” and specifically
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`Exhibit 1110
`Page 06 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 7 of 22
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`identifies “Google Nest Wifi Router, Google Nest Wifi point, [and] Google Wifi” as infringing.
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`Dkt. 1 ¶ 22. According to XR, each of these products “is an apparatus for communication data on
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`an IEEE 802.11ac data communications network.” Id. ¶ 24. For the ’235 patent, XR accuses
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`“products supporting MU-MIMO technologies,” and identifies “Google Nest Cam IQ Outdoor,
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`Google Nest Cam IQ Indoor, Pixel 5, Pixel 4a (5G), Pixel 4a, Google Pixelbook Go, [and] Nest
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`Hello Doorbell” as infringing. Id. ¶ 41. Throughout its Complaint, XR relies on the IEEE 802.11ac
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`standard to allege infringement of both patents. Id. ¶¶ 25-30, 43-45; see also id. ¶ 47 (alleging
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`inducement based on Google purportedly providing “instructions for using the ’235 Accused
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`Products . . . to utilize their 802.11ac beamforming and/or MU-MIMO functionalities”).
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`A.
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`Google’s Relevant Evidence And Witnesses Are In the NDCA, Not In The
`WDTX
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`Google is headquartered in the NDCA (Mountain View, California), and the majority of
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`its U.S. workforce is in the NDCA. Rope Decl.1 ¶ 3. Google witnesses with relevant technical
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`knowledge about the accused functionality in the accused products are located in the NDCA. Id.
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`¶¶ 6-7, 12-13, 18-19, 24-25. Google witnesses with relevant financial and marketing knowledge
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`about the accused products are also located in and around the NDCA. Id. ¶¶ 6, 9-12, 15-18, 21-
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`24, 27-29. Google’s witness knowledgeable about Google’s license agreements is also located in
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`the NDCA. Id. ¶ 30. As with the 11 identified Google witnesses, relevant technical, financial, and
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`marketing documents for the accused products are also created and maintained by employees in
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`and around the NDCA. Id. ¶ 34; see id. ¶¶ 12, 18, 24. None of these documents are created or
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`maintained in WDTX. See id. ¶¶ 31-34. Although Google has offices in Austin, the parties have
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`not identified any Google employees in the WDTX who are likely witnesses for technical,
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`financial, or marketing issues for the accused products. Id.
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`1 “Rope Decl.” refers to the Declaration of Andrew Rope, filed herewith.
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`2
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`Exhibit 1110
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 8 of 22
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`B.
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`XR’s Evidence And Witnesses Are Not In The WDTX
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`XR is a Delaware company with its principal place of business in Venice, California. Dkt.
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`1 ¶ 10. XR purports to be a continuation of a company known as “Vivato,” which XR alleges was
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`founded in 2000. Dkt. 1 ¶ 11. The Vivato.com website shows only a corporate headquarters in
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`Solana Beach, California and a business development office in New York, New York. Lee Decl.2
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`¶ 4. Similarly, the patents-in-suit, which issued in 2020, both identify XR in Solana Beach,
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`California as “applicant.” Dkt. 1-1 at 1, 1-2 at 1. During prosecution leading to the patents-in-
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`suit, Kai Hansen acting for XR listed his residence as San Diego, California when he signed
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`substitute statements in lieu of inventor oaths. Lee Decl. ¶ 5, Ex. 4. XR does not appear to have
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`any connection to the WDTX and has not alleged that it has any such connection. See generally
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`Dkt. 1 ¶¶ 10-15.
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`C. Many Relevant Third-Party Witnesses Are In Or Near California
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`Third parties involved in the alleged invention, prosecution, and ownership of the patents-
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`in-suit—such as the named inventors, prosecuting attorneys, and parties involved in patent
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`valuation—are almost entirely located outside the WDTX. Of the 11 named inventors of the
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`patents-in-suit, based on public information, three reside in the NDCA, including Siavash
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`Alamouti, whom the Complaint identifies as one of “several key innovators in the wireless
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`communication field.” Dkt. 1 ¶ 11; Lee Decl. ¶¶ 6-8. Six other named inventors also reside outside
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`Texas, including four who are located in the Pacific Northwest in Washington, Portland, and
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`British Columbia. Lee Decl. ¶¶ 9-14. Although at least one of the named inventors of the patents-
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`in-suit, Marcus Da Silva, appears to reside in the WDTX, neither he nor the remaining named
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`2 “Lee Decl.” refers to the Declaration of Nicholas Lee in Support of Google LLC’s Opposed
`Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a) to the Northern District of California,
`filed herewith.
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`3
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`Exhibit 1110
`Page 08 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 9 of 22
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`
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`inventor3 is listed among the “key innovators” identified in the Complaint. See Lee Decl. ¶ 15;
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`Dkt. 1 ¶ 11. The two prosecuting attorneys for the patents-in-suit also reside in California. Lee
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`Decl. ¶¶ 16-17. In addition, Ken Biba, the former CEO of Vivato whom XR alleges is one of
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`“several key innovators in the wireless communication field” (Dkt. 1 ¶ 11) is located in San
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`Francisco, in the NDCA. Lee Decl. ¶ 18.
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`Moreover, Google’s suppliers of the chips that implement the accused IEEE 802.11ac
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`standard in the accused products are nonparties
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` Rope Decl. ¶¶ 8, 14, 20, 26.
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`, California, and the majority of Google’s primary points of contact for the
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`chips used in Google’s accused products are based in San Jose, California, located in NDCA. Id.
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`¶¶ 8, 20; Lee Decl. ¶ 19.
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`, California, in the NDCA, and
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`Google’s primary points of contact for the relevant chips are two
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` employees in the NDCA.
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`Id. ¶ 20; Rope Decl. ¶ 14.
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` California, also within the
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`NDCA. Lee Decl. ¶ 21. Details concerning the operations of these chips are known to their
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`respective manufacturers,
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`, but not to Google. Rope Decl. ¶¶ 8, 14,
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`20, 26.
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`Finally, individuals knowledgeable about the valuation of the patents-in-suit are located in
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`or near California. Both patents-in-suit claim priority as divisional applications from Application
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`No. 10/700,329 (the “’329 Application”). Dkt. 1-1 at 2, 1-2 at 2. The portfolio including the ’329
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`Application served as security for a loan by Aequitas Capital Management (“Aequitas”) to Vivato
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`Networks, Inc. Lee Decl. ¶ 22, Ex. 21 at Frame 0712 (identifying ’329 Application). A group of
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`3 Google has been unable to verify the location of named inventor Bobby Jose, whose residence
`on the patents-in-suit is given as Veradale, Washington.
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`4
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`Exhibit 1110
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 10 of 22
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`
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`investors associated with Vivato Networks formed Western Property Holdings, LLC (“Western
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`Property”) to help finance the loan. Lee Decl. ¶ 23, Ex. 22 ¶ 4. Aequitas foreclosed on that loan,
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`and the patents were sold at a “sheriff’s sale” to XR. See W. Prop. Holdings, LLC v. Aequitas Cap.
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`Mgmt., Inc., 392 P.3d 770, 773-74 (Or. App. 2017). Western Property subsequently sued Aequitas
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`due to, inter alia, the allegedly low value of the sale. Id. at 774. Individuals associated with
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`Western Property, who have knowledge at least about the valuation of Vivato’s patent portfolio,
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`are located in California, including Michael J. Haycox and Chris Thomas, who is located in the
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`NDCA. Lee Decl. ¶ 24. Ron Chaffee, also located in California, was the CEO of Vivato at the
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`time of that lawsuit and has knowledge about the valuation of Vivato’s portfolio. Lee Decl. ¶ 25.
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`LEGAL STANDARD
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`To evaluate transfer under 28 U.S.C. § 1404(a), courts first consider “whether a civil action
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`‘might have been brought’ in the destination venue.” In re Volkswagen of Am., Inc., 545 F.3d 304,
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`312 (5th Cir. 2008) (en banc) (“Volkswagen II”). If so, courts weigh eight private interest and
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`public interest factors:
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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[;] … [5] the
`administrative difficulties flowing from court congestion; [6] the local
`interest in having localized interests decided at home; [7] the familiarity of
`the forum with the law that will govern the case; and [8] the avoidance of
`unnecessary problems of conflict of laws [or in] the application of foreign
`law.
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`Id. at 315 (internal citations and quotation marks omitted).
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`The proposed transferee forum is “clearly more convenient” where, as here, most potential
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`witnesses and relevant evidence are concentrated in the transferee district. In re Toyota Motor
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`Corp., 747 F.3d 1338, 1341 (Fed. Cir. 2014); see also Nintendo, 589 F.3d at 1198-200. The
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`determination is not whether the “transferee forum is far more convenient.” Toyota, 747 F.3d at
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`5
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`Exhibit 1110
`Page 10 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 11 of 22
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`
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`1341 (emphasis in original). Nor does plaintiff’s choice of venue carry any weight. Nintendo, 589
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`F.3d at 1200. “Courts may consider undisputed facts outside the pleadings, but must draw all
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`reasonable inferences and resolve all factual conflicts in favor of the non-moving party.” 10Tales,
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`Inc. v. TikTok Inc., No. 6:20-CV-00810-ADA, 2021 WL 2043978, at *2 (W.D. Tex. May 21, 2021)
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`(citations omitted).
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`I.
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`THE NDCA IS A CLEARLY MORE CONVENIENT FORUM THAN THE WDTX
`
`A.
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`XR Could Have Brought This Action In The NDCA
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`As XR admits, Google’s principal place of business is in Mountain View, California, in
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`the NDCA. See Dkt. 1 ¶ 16. Thus, XR could have filed this lawsuit in the NDCA, where Google
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`has a “regular and established place of business.” 28 U.S.C. § 1400(b); In re Cray Inc., 871 F.3d
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`1355, 1360 (Fed. Cir. 2017). Accordingly, the transfer analysis turns on weighing the private and
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`public interest factors.
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`B.
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`All Private Interest Factors Favor Transfer To The NDCA
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`The private factors strongly favor transfer to the NDCA because it is more convenient for
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`all Google witnesses and the vast majority of third-party witnesses. Moreover, the NDCA has
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`subpoena power over significant third-party witnesses in California. In contrast, other than the
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`presence of one non-“key” inventor, this case has no connection to the WDTX.
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`1.
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`Cost of attendance for willing witnesses heavily favors transfer
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`The “single most important factor in [the] transfer analysis” is the convenience and cost
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`for witnesses to travel and attend trial. Genentech, Inc., 566 F.3d at 1343 (citation omitted). The
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`analysis “must consider” the convenience of “possible party witnesses.” In re Samsung Elecs. Co.,
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`2 F.4th 1371, 1379 (Fed. Cir. 2021); see also In re Google LLC, No. 2021-170, 2021 WL 4427899,
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`at *4 (Fed. Cir. Sept. 27, 2021) (“While it is true that the witnesses in the Northern District of
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`California are largely affiliated with the parties, that does not negate the inconvenience and cost
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`6
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`Exhibit 1110
`Page 11 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 12 of 22
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`
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`to those individuals to travel a significant distance to testify.”). Under the Fifth Circuit’s 100-mile
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`rule, “[w]hen the distance between an existing venue for trial . . . and a proposed venue under §
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`1404(a) is more than 100 miles, the factor of inconvenience to witnesses increases in direct
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`relationship to the additional distance to be traveled.” In re Volkswagen AG, 371 F.3d 201, 204-
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`05 (5th Cir. 2004) (“Volkswagen I”). However, witnesses that reside distant from either California
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`or WDTX “will be inconvenienced by extensive travel regardless of the forum and thus the ‘100-
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`mile’ rule should not be rigidly applied.” 10Tales, 2021 WL 2043978, at *4 (citation omitted).
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`This factor strongly favors transfer to the NDCA. Google’s key employees with relevant
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`technical, financial, and marketing knowledge of the accused products, as well as Google
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`personnel with knowledge of Google’s patent licenses, are all in or around the NDCA. Rope Decl.
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`¶¶ 5-7, 9-13, 15-19, 21-25, 27-30; see 10Tales, Inc., 2021 WL 2043978, at *3 (“[T]his Court has
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`previously recognized Google’s strong presence in the NDCA.”). These include at least the four
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`key engineers for the accused products, specifically identified in the Rope Declaration, as well as
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`the seven key employees with substantial marketing or financial knowledge of the accused
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`products, or of Google’s licenses. For these likely witnesses, “it is more convenient [] to testify at
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`home” in the NDCA. See Volkswagen II, 545 F.3d at 317. There is no direct flight from the Bay
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`Area to Waco. Traveling to Waco from the Bay Area requires nearly five hours of flight time
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`(including a layover in Dallas), not including time spent traveling to and from and waiting at the
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`airport. Lee Decl. ¶ 26. The long trips and overnight stays in Waco will lead to lost productivity
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`and disruption to the witnesses’ lives while “being away from work, family, and community.”
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`Volkswagen II, 545 F.3d at 317. By contrast, if this case were transferred to the NDCA, Google
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`employees could readily travel back and forth between court and their homes—a “30 minutes [to]
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`an hour” commute—as compared to traveling “five or six hours one-way” by plane to Waco. See
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`7
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`Exhibit 1110
`Page 12 of 22
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`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 13 of 22
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`
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`Volkswagen I, 371 F.3d at 205 (“[T]he task of scheduling fact witnesses so as to minimize the time
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`when they are removed from their regular work or home responsibilities gets increasingly difficult
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`and complicated when the travel time from their home or work site to the court facility is five or
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`six hours one-way as opposed to 30 minutes or an hour.”). Although one relevant Google
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`employee is based in Kirkland, Washington, travel between there and the NDCA is far shorter than
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`to Waco. Lee Decl. ¶¶ 27-28.
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`Transfer is thus appropriate because Google has “identified a significant number of its own
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`employees as potential witnesses who reside in the [NDCA].” In re Adobe Inc., 823 F. App’x 929,
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`931 (Fed. Cir. 2020); see also In re Google LLC, No. 2021-171, 2021 WL 4592280, at *4 (Fed.
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`Cir. Oct. 6, 2021) (factor weighs in favor of transfer to NDCA despite witness residing in Texas);
`
`In re Hulu, LLC, No. 2021-142, 2021 WL 3278194, at *5 (Fed. Cir. Aug. 2, 2021) (finding in favor
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`of transfer where an “overwhelming number of potential witnesses from Hulu [were] in or near
`
`California compared to the two from SITO in Texas”). This most important factor strongly favors
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`transfer.4
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`2.
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`Relative ease of access to sources of proof favors transfer
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`As this Court has noted, “[i]n patent infringement cases, the bulk of the relevant evidence
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`usually comes from the accused infringer.” 10Tales, 2021 WL 2043978, at *2 (citing In re Apple
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`Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020)). Here, the relevant sources of proof were created and
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`maintained in the NDCA or elsewhere on the West Coast, and therefore more easily accessed from
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`
`4 The convenience of relevant third-party witnesses in and around the NDCA, identified above,
`would weigh further in favor of transfer. These include, for example, three named inventors in
`the NDCA and six other named inventors elsewhere in the Pacific Northwest, for whom the
`NDCA is more convenient than the WDTX. However, as Google does not currently know
`whether any are willing witnesses, it has discussed such third-party witnesses only in connection
`with the availability of compulsory process factor, below. See Super Interconnect Techs. v.
`Google LLC, 6:21-cv-259-ADA, Dkt. 49 at 6 (W.D. Tex. Nov. 8, 2021).
`
`
`
`8
`
`Exhibit 1110
`Page 13 of 22
`
`

`

`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 14 of 22
`
`
`
`the NDCA than the WDTX. See In re Google LLC, No. 2021-178, 2021 WL 5292267, at *2 (Fed.
`
`Cir. Nov. 15, 2021) (finding district court erred in not “considering the location of document
`
`custodians and location where documents are created and maintained, which may bear on the ease
`
`of retrieval”). Google’s technical, financial, and marketing documents relevant to the accused
`
`products are created and maintained by employees located in or near Google’s Mountain View
`
`headquarters. See Rope Decl. ¶¶ 12, 18, 24, 34. Google is not aware of any key witnesses in the
`
`WDTX who maintain documents concerning the research, development, marketing, financials, or
`
`pre-suit discussion for the accused products. See id. ¶¶ 31-33. Further, key third-party
`
`documentary evidence is located in California, such as
`
`
`
`documents. Id. ¶¶ 8, 14, 20, 26.
`
`In contrast, Google is unaware of relevant sources of proof in the WDTX. Indeed, XR
`
`does not appear to conduct any business activities in this District. Supra at p. 3. This factor thus
`
`favors transfer. See In re Google LLC, 2021 WL 4592280, at *6-7 (finding in favor of transfer
`
`where no sources of proof were present in WDTX, but “a significant number of documents” were
`
`“created and are maintained” in the NDCA); In re Google LLC, 2021 WL 5292267, at *2 (finding
`
`in favor of transfer where “relevant documents were created and maintained by Google in the
`
`[NDCA]”).
`
`3.
`
`Availability of compulsory process favors transfer
`
`“Transfer is favored” where, as here, a transferee district like the NDCA, “has absolute
`
`subpoena power over a greater number of non-party witnesses.” Adaptix, Inc. v. HTC Corp., 937
`
`F. Supp. 2d 867, 874 (E.D. Tex. Mar. 28, 2013). A court may subpoena a person (a) within 100
`
`miles of where a person resides or works, or (b) within the state when the witness is a party, an
`
`officer of the party, or would not incur substantial expense to attend trial. Fed. R. Civ. P. 45(c)(1).
`
`
`
`9
`
`Exhibit 1110
`Page 14 of 22
`
`

`

`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 15 of 22
`
`
`
`Here, Google has identified 13 witnesses who are within the subpoena power of the NDCA,
`
`but not the WDTX. First, at least eight material third-party witnesses are located in the NDCA,
`
`including three individuals from
`
` three named inventors of the patents-in-
`
`suit, the former CEO of Vivato, Ken Biba, and Chris Thomas, an individual knowledgeable about
`
`the valuation of Vivato’s patent portfolio. See supra at pp. 3-5. Moreover,
`
` which has unique
`
`knowledge of the accused technology, is headquartered in the NDCA. See In re Samsung, 2 F.4th
`
`at 1379 (“[B]ecause these potential witnesses reside in Northern California, transfer ensures that
`
`the transferee court could compel these individuals to appear.”). In addition, five third-party
`
`witnesses are located elsewhere in California, within the subpoena power of the NDCA, including
`
`one individual from
`
`, the two prosecuting attorneys of the patents-in-suit, and two
`
`individuals knowledgeable about patent valuation, Michael J. Haycox and Ron Chaffee. Rope
`
`Decl. ¶ 20; Lee Decl. ¶¶ 16-17, 24-25. Given the frequent, inexpensive, and relatively short flights
`
`to the NDCA from other parts of the state, these witnesses would not incur substantial expense to
`
`attend. E.g., Lee Decl. ¶¶ 29-31. “Regardless, ‘[w]hen travel over 100 miles could impose
`
`substantial expense on [ ] witness[es], the party that served the subpoena may pay that expense
`
`and the court can condition enforcement of the subpoena on such payment.’” RPB Safety, LLC v.
`
`Tru-Vision Plastics, Inc., No. 6:18-CV-00367-ADA, 2019 WL 10349405, at *4 (W.D. Tex. Feb.
`
`20, 2019) (quoting Fed. R. Civ. P. 45(c)(1)(B)(ii) advisory committee note to 2013 amendment).
`
`In contrast, the WDTX would have subpoena power only over one of the 11 named inventors of
`
`the patents-in-suit (who may be a willing witness).
`
`Thus, this factor heavily favors transfer. See In re Apple, Inc., 581 F. App’x 886, 889 (Fed.
`
`Cir. 2014) (“This factor will weigh heavily in favor of transfer when more third-party witnesses
`
`reside within the transferee venue than reside in the transferor venue.”).
`
`
`
`10
`
`Exhibit 1110
`Page 15 of 22
`
`

`

`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 16 of 22
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`
`
`4.
`
`There are no practical problems with transferring this case
`
`“[T]his Court has previously held that the last private interest factor favors transfer when
`
`most witnesses are present in the transferee forum and the plaintiff has no presence in the Western
`
`District.” Correct Transmission LLC v. ADTRAN, Inc., No. 6:20-CV-00669-ADA, 2021 WL
`
`1967985, at *5 (W.D. Tex. May 17, 2021). Due to the majority of potential Google witnesses
`
`being in the NDCA, and the fact that XR has no presence in WDTX, this factor also favors transfer.
`
`Further, that XR filed other cases in the WDTX involving common patents-in-suit does not
`
`weigh against transfer.5 In re NetScout Sys., Inc., No. 2021-173, 2021 WL 4771756, at *5 (Fed.
`
`Cir. Oct. 13, 2021) (rejecting that “the mere co-pendency” of cases “in a particular district
`
`automatically tips the balance in the non-movant’s favor”); see also In re Apple Inc., No. 2021-
`
`181, 2021 WL 5291804, at *4 (Fed. Cir. Nov. 15, 2021) (where co-pending “suit involves different
`
`defendants and different accused products,” it is likely to involve “significantly different
`
`discovery, evidence, proceedings, and trial” and therefore “any ‘incremental gains in keeping [this]
`
`case in the Western District of Texas’ are insufficient ‘to justify overriding the inconvenience to
`
`the parties and witnesses’”) (citing In re Samsung, 2 F.4th at 1380); In re DISH Network L.L.C.,
`
`No. 2021-182, 2021 WL 4911981, at *1, 3-4 (Fed. Cir. Oct. 21, 2021) (ordering transfer, despite
`
`four co-pending suits accusing other set-top box providers of infringing the same patents, because
`
`“any judicial economy considerations in keeping this case in Texas are insufficient to outweigh”
`
`the other factors). Notably, no schedule has been set yet in the WDTX and this Court has not had
`
`the opportunity or need to analyze the patents-in-suit. In contrast, the NDCA recently issued a
`
`claim construction order involving XR’s patent, U.S. Patent No. 6,611,231 (the “’231 patent”).
`
`
`5 In addition, defendant eero LLC has moved to dismiss for improper venue or, in the alternative,
`transfer to the NDCA. XR Commc’ns, LLC v. Amazon.com, Inc. et al., 6:21-cv-00619-ADA,
`Dkt. 23 (W.D. Tex. Sept. 7, 2021).
`
`
`
`11
`
`Exhibit 1110
`Page 16 of 22
`
`

`

`Case 6:21-cv-00625-ADA Document 25 Filed 12/01/21 Page 17 of 22
`
`
`
`See XR Commc’ns, L