Case 2:21-cv-00310-JRG Document 111 Filed 03/28/22 Page 1 of 9 PageID #: 2775
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CIVIL ACTION NO. 2:21-CV-00310-JRG
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`TQ DELTA, LLC,
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`Plaintiff,
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`v.
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`COMMSCOPE HOLDING COMPANY,
`INC.,
` COMMSCOPE
`INC.,
`ARRIS
`INTERNATIONAL LIMITED,
`ARRIS
`GLOBAL LTD., ARRIS US HOLDINGS,
`INC., ARRIS SOLUTIONS, INC., ARRIS
`TECHNOLOGY,
`INC.,
`
`ARRIS
`ENTERPRISES, LLC,
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`Defendants.
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`§
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`ORDER
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`Before the Court is Defendants’ Opposed Motion to Transfer Venue to The District of
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`Delaware (Dkt. No. 32) (the “Motion”). In the Motion, Defendants CommScope Holding
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`Company, Inc., CommScope Inc., ARRIS US Holdings, Inc., ARRIS Solutions, Inc., ARRIS
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`Technology, Inc., and ARRIS Enterprises, LLC (collectively, “CommScope”) request the Court
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`transfer the above-captioned case to the District of Delaware under 28 U.S.C. § 1404(a).
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`Having considered the Motion, the associated briefing, and for the reasons set forth below,
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`the Court finds that the Motion should be DENIED.
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`I.
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`BACKGROUND
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`Plaintiff TQ Delta, LLC (“TQ Delta”) filed the above-captioned action against
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`CommScope on August 13, 2021, alleging infringement of United States Patent Nos. 7,453,881
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`(“the ’881 Patent”); 7,570,686 (“the ’686 Patent”); 7,844,882 (“the ’882 Patent”); 8,090,008 (“the
`TQ Delta Exhibit 2016
`COMMSCOPE, INC. v. TQ DELTA LLC
`IPR2023-00066
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`1
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`’008 Patent”); 8,276,048 (“the ’048 Patent”); 8,462,835 (“the ’835 Patent”); 8,468,411 (“the ’411
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`Patent”); 8,937,988 (“the ’988 Patent”); 9,094,348 (“the ’348 Patent”); 9,154,354 (“the ’354
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`Patent”); 9,485,055 (“the ’055 Patent”); 10,567,112 (“the ’112 Patent”); and 10,833,809 (“the ’809
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`Patent”) (collectively, the “Asserted Patents”). (Dkt. No. 1.)
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`TQ Delta is a is a limited liability company organized and existing under the laws of the
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`State of Delaware and having a principal place of business in Austin, Texas. Defendants
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`CommScope Holding Company, Inc., CommScope Inc., ARRIS US Holdings, Inc., ARRIS
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`Solutions, Inc., ARRIS Technology, Inc., and ARRIS Enterprises LLC are corporations organized
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`and existing under the laws of the State of Delaware and can be served through their respective
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`registered agents in Wilmington, DE. Defendants ARRIS International Limited f/k/a Arris
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`International plc and ARRIS Global Ltd. are corporations duly organized and existing under the
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`laws of England and Wales.
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`II.
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` LEGAL STANDARD
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`In evaluating a motion to transfer pursuant to § 1404(a), the Court considers the Fifth
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`Circuit’s non-exhaustive list of private and public interest factors. In re Volkswagen AG, 371 F.3d
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`201, 203 (5th Cir. 2004) (“Volkswagen І”). The private interest factors include: (1) “the relative
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`ease of access to sources of proof;” (2) “the availability of compulsory process to secure the
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`attendance of witnesses;” (3) “the cost of attendance for willing witnesses;” and (4) “all other
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`practical problems that make trial of a case easy, expeditious and inexpensive.” Id. The public
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`interest factors include: (1) “the administrative difficulties flowing from court congestion;” (2)
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`“the local interest in having localized interests decided at home;” (3) “the familiarity of the forum
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`with the law that will govern the case;” and (4) “the avoidance of unnecessary problems of conflict
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`of laws.” Id.
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`To support a claim for transfer under § 1404(a), a movant must demonstrate that the
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`transferee venue is “clearly more convenient” than the current District. In re Volkswagen of Am.,
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`Inc., 545 F.3d 304, 315 (5th Cir. 2008) (“Volkswagen II”). The elevated burden to show that the
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`transferee forum is “clearly more convenient” reflects the respect owed to the Plaintiff’s choice of
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`forum. In re Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed. Cir. 2010).
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`III. ANALYSIS
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`A. The relative ease of access to sources of proof disfavors transfer.
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`CommScope argues that this factor “weighs in favor of transfer” because it has not
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`identified any “documentary evidence located within the Eastern District of Texas” and the District
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`of Delaware has conducted “extensive litigation of the Asserted Patents.” (Dkt. No. 32 at 9-10.)
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`TQ Delta responds that this factor weighs against transfer because “both TQ Delta and
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`CommScope have sources of proof in Texas, including in this District.” (Dkt. No. 89 at 4.) In
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`particular, TQ Delta argues that it “has kept evidence in this District at the home office of TQ
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`Delta’s Managing Director, Mark Roche, who has worked and resided in Plano since March 2020,”
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`and “[t]he balance of TQ Delta’s evidence is in Austin.” (Id. at 4.) TQ Delta further contends that
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`“CommScope also appears to have relevant sources of proof in this District,” including at
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`“CommScope’s Richardson office” that “employs almost 300 employees, including the President
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`and CEO (Mr. Treadway).” (Id. at 5.) CommScope does not address or refute TQ Delta’s
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`arguments in its Reply. (Dkt. No. 92.)
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`The Court agrees with TQ Delta and concludes that this factor disfavors transfer.
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`CommScope has identified no sources of proof in Delaware and failed to deny or even discuss the
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`potential and actual sources of proof TQ Delta identified in Texas and in this District. The District
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`of Delaware’s experience with some of the Asserted Patents in this case does not impact this factor.
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`While the court only gives minimal weight to TQ Delta’s assertions that CommScope “appears to
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`have” relevant evidence in this District and acknowledges that both parties’ documents are likely
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`available electronically, the fact remains that TQ Delta squarely identified its own documents that
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`are kept in this District and put forward a plausible contention that CommScope also keeps
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`documents here. CommScope offers nothing to balance the scales. As a result, the Court
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`concludes that this factor disfavors transfer.
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`B. The availability of compulsory process to secure the attendance of witnesses
`disfavors transfer.
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`CommScope argues that this factor favors transfer because “[t]here are no known third-
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`party witnesses located within the Eastern District of Texas” and “third-party witnesses relevant
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`to this case,” such as Broadcom—which is located in San Jose, California—have “participated
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`actively in the Delaware cases.” (Dkt. No. 32 at 10.)
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`TQ Delta responds that “[t]here are non-party potential witnesses in this District and
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`elsewhere in Texas—all of whom are subject to this Court’s absolute subpoena power under Rule
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`45.” (Dkt. No. 89 at 5.) TQ Delta specifically identifies five “prior artists CommScope identified
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`in its Invalidity Contentions” who reside within this District. (Id.) TQ Delta further identifies two
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`former CommScope employees and twenty-four additional prior artists identified by CommScope,
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`all of whom reside in Texas. Lastly, TQ Delta identifies AT&T, which is headquartered in Dallas,
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`Texas, and is “a major customer of CommScope’s Accused Products.” (Id. at 7.)
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`In reply, CommScope argues that the witnesses identified by TQ Delta are not important
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`or likely to testify based on the fact that those same witnesses “ha[ve] not testified in either of the
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`two Delaware trials to date.” (Dkt. No. 92 at 5.)
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`The Court agrees with TQ Delta that this factor disfavors transfer. TQ Delta named at least
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`five individuals living in this District and twenty-seven additional individuals living in Texas, all
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`of whom appear to have knowledge that is potentially material and relevant to this case.
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`CommScope named no witnesses within the subpoena power of the District of Delaware. Rather,
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`CommScope once again attempts to improperly import consideration of the Delaware Court’s
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`experience with related patents into this factor. Such considerations are not relevant here.1 Beyond
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`that, CommScope merely argues that the specific witnesses named by TQ Delta are not actually
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`important to the case or likely to testify at trial. However, the Federal Circuit has repeatedly
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`cautioned against requiring a party “to show that [a] potential witness has more than relevant and
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`material information at this point in the litigation.” In re Hulu, LLC, No. 2021-142, 2021 WL
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`3278194, at *3 (Fed. Cir. Aug. 2, 2021); Netflix, 2022 WL 167470 at *3 (concluding that the
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`parties need only provide a “sufficient explanation of why the identified third-party . . . likely had
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`information relevant and material to the issues to be litigated in this case”). All identified third-
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`party witnesses appear to have relevant and material information at this point in the case. On
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`balance, TQ Delta has named over thirty individuals subject to compulsory process in this District
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`and CommScope has named none in Delaware. Without something more, the Court concludes
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`that this factor disfavors transfer.
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`C. The cost of attendance for willing witnesses disfavors transfer.
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`CommScope argues that its witnesses with likely relevant information “reside in Georgia,
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`Pennsylvania, California, and Austin, Texas” and “[f]or some of those witnesses, it would be more
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`convenient and less costly to travel to Delaware than to Texas.” (Dkt. No. 32 at 11.) CommScope
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`also argues that because TQ Delta’s witnesses “have previously appeared at trials conducted in the
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`1 CommScope’s arguments regarding Broadcom witnesses are likewise neither persuasive nor relevant. First,
`Broadcom’s willingness to participate in other cases says nothing about its willingness to participate in this case.
`Second, this factor concerns the ability of a district to compel participation by witnesses, something that neither this
`District nor the District of Delaware has over Broadcom.
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`District of Delaware, TQ Delta cannot be heard to complain that it would be inconvenient for them
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`to attend additional trials in Delaware.” (Id.)
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`TQ Delta responds that CommScope has named no willing witnesses in Delaware but
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`argues that “[t]here are relevant witnesses in this District” and “almost all of the witnesses are
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`closer to this Court than Delaware.” (Dkt. No. 89 at 8.) TQ Delta contends that its own CEO
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`resides in this District and another relevant TQ Delta employee resides in Austin, Texas. (Id.) With
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`regard to CommScope, TQ Delta argues that CommScope’s CEO works in this District and the
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`company has a “significant engineering group” in Austin, Texas. (Id.) TQ Delta goes on to name
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`six specific CommScope employees based in Austin. TQ Delta further notes that a CommScope
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`executive with relevant knowledge resides in San Antonio, Texas. (Id. at 10-11.) Lastly, TQ Delta
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`notes that this District would be a geographically more convenient location than Delaware for
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`CommScope’s employees based in California and Atlanta, Georgia. (Id. at 11.) In reply,
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`CommScope argues that “CommScope’s CEO obviously is not a witness” because he “has called
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`to the stand any CEO of CommScope or its predecessors in any prior Delaware trial.” (Dkt. No.
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`92 at 5.)
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`The Court agree with TQ Delta that this factor disfavors transfer. CommScope has named
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`no willing witnesses for whom Delaware would be more convenient that this District. Rather,
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`CommScope merely states without explanation that Delaware may be more convenient “for some”
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`unnamed allegedly relevant witnesses. The Court notes that CommScope included witnesses
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`residing Austin, Texas, in its generic list of those who may find Delaware more convenient, which
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`further strains the credibility of its argument. On the other hand, TQ Delta meticulously names
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`and lists potential witnesses from both parties, as well as third parties, who reside in Texas, this
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`District, or in geographic areas considerably closer to this District than to Delaware.
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`CommScope’s rebuttal arguments about which witnesses have and have not been called to the
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`stand in past cases in Delaware is not probative as to this factor and is afforded no weight. Thus,
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`the Court concludes that this factor disfavors transfer.
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`D. Other practical problems that make trial of a case easy, expeditious, and
`inexpensive weigh in favor of transfer.
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`CommScope argues that this factor favors transfer because the District of Delaware has
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`considerable experience with some of the patents-in-suit. Specifically, CommScope represents
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`that the District of Delaware “has already issued Markman opinions for six of the patents asserted
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`here,” “the ’112 Patent asserted against CommScope here is a continuation of the ’835 Patent
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`construed by Judge Andrews,” “three patents at issue in this case have been tried to a jury in the
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`Delaware case,” “litigation of two additional patents asserted here have proceeded through
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`dispositive motions,” and “TQ Delta admits that all of the Patents-in-Suit are related to similar
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`DSL technology.” (Dkt. No. 32 at 12.)
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`TQ Delta responds that over half of the patent-in-suit in this case are not asserted in the
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`Delaware case referenced by CommScope, “the patents that were asserted in [Delaware] do not
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`have the same asserted claims,” and “this case involves patents, standards [], products [], and
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`parties [] that are not at issue in the [Delaware] case.” (Dkt. No. 89 at 12.) TQ Delta goes on
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`describe numerous ways in which this case will require additional discovery, Markman
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`proceedings, and other issues regardless of the forum. (Id. at 12-13.)
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`The Court agrees with CommScope that this factor favors transfer. However, the Court
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`acknowledges that TQ Delta’s arguments are not without merit. This case involves thirteen patents
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`and fewer than half of those have been litigated at all in the District of Delaware. However, it is
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`undeniable that Delaware has considerable experience with the technology at issue. Thus, the
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`Court concludes that this factor favors transfer.
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`E. The public interest factors are neutral or slightly disfavor transfer.
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`CommScope argues that “the public interest factors also favor transfer or are neutral.”
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`(Dkt. No. 32 at 12.) With regard to local interests, CommScope argues that “District of Delaware
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`has a strong local interest in this dispute, as all parties involved in this litigation are Delaware
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`corporations or limited liability companies” (Id.) TQ Delta responds that “[t]his District has a
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`local interest given that Mr. Roche resides in this District, CommScope’s CEO lives in Dallas and
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`works at CommScope’s major office in this District, AT&T is in Dallas, [] TQ Delta is located
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`nearby in Austin,” and “the negotiations that led up to this case occurred in Austin.” (Dkt. No. 89
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`at 15.) The Court agrees with TQ Delta that this factor disfavors transfer. On balance, TQ Delta
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`has shown a much more thorough and substantial connection between both parties and this district.
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`CommScope relies entirely on corporate registration, which is at best a minor tie to the District of
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`Delaware. Constellation Techs. LLC v. Time Warner Cable Inc., 2014 U.S. Dist. LEXIS 132986,
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`at *11 (E.D. Tex. Sep. 23, 2014) (holding that parties’ incorporation in Delaware did not provide
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`a local interest because it was “not a connection to ‘the events that gave rise to this suit’”).
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`CommScope contends the remaining factors are neutral. TQ Delta responds that
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`administrative difficulty flowing from Court Congestion disfavors transfer because there are
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`“significant time-to-trial differences between this Court and Delaware” and cites specific statistics
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`showing the differences. (Dkt. No. 89 at 14.) The Court agrees with TQ Delta that this factor
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`disfavors transfer, although the Court does not give this factor dispositive weight. Regarding the
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`familiarity of the forum with the law that will govern the case, TQ Delta contends that it “asserts
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`that CommScope has relinquished its right to reasonable and non-discriminatory terms, including
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`under Texas state law” and “[t]hese Texas state-law claims . . . weigh against transferring this case
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`to another state that is not as familiar with Texas state law.” (Id. at 15.) In reply, CommScope
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`does not address or rebut this argument. As it is unrebutted, the Court concludes that this factor
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`disfavors transfer.
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`F. The totality of the factors fails to show that Delaware is a clearly more convenient
`forum.
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`In sum, three of the four private interest factors and three of the four public interest factors
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`disfavor transfers. The remaining public interest factor is neutral. The only factor that favors
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`transfer are the practical problems that make trial of a case easy, expeditious, and inexpensive in
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`Delaware due to that district’s experience with six of the thirteen patents at issues in this case. The
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`Court acknowledges that in certain cases considerations of judicial economy can outweigh
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`considerations of convenience. In re Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed. Cir. 2010)
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`(concluding considerations of convenience were outweighed by the Court’s “substantial
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`experience with the patent-in-suit”). However, in this case, CommScope relies entirely on the
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`Delaware litigation and effectively presents no arguments or evidence related to the other factors
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`in the transfer analysis. On the other hand, TQ Delta provides substantial and persuasive evidence
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`with regard to nearly all the factors. Thus, the Court concludes that Delaware’s experience with
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`some of the Asserted Patents cannot outweigh the six other factors that clearly disfavor transfer.
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`IV. CONCLUSION
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`For the reasons stated herein, Defendants’ Opposed Motion to Transfer Venue to The
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`District of Delaware (Dkt. No. 32) is DENIED.
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`9
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 28th day of March, 2022.
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