Case 1:23-cv-01212-ADA-DTG Document 137 Filed 10/05/23 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`QUANTUM IMAGING, LLC,
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`Plaintiff,
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`v.
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`SONY INTERACTIVE ENTERTAIN-
`MENT INC., ET AL.
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`Defendants.
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`CIVIL NO. 6:22-CV-00573-ADA-DTG
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`MEMORANDUM OPINION AND ORDER GRANTING
`DEFENDANTS’ MOTION TO TRANSFER UNDER 28 U.S.C. § 1404 (ECF NO. 55)
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`This is a suit filed by Plaintiff Quantum Imaging, LLC (“Quantum” or “Plaintiff”) alleging
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`patent infringement against defendants Sony Interactive Entertainment Inc. (“SIEI”); Sony Inter-
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`active Entertainment LLC (“SIE”); and Bluepoint Games, Inc. (“Bluepoint”), (collectively, “De-
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`fendants”).1 Before the Court is Defendants’ motion to transfer this case, for convenience, to the
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`Austin Division of the U.S. District Court for the Western District of Texas, filed October 21,
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`2022. ECF No. 55. Quantum filed opposition to the Motion on April 14, 2023. ECF No. 105.
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`Defendants replied on May 3, 2023. ECF No. 108. After considering the parties’ briefs, and the
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`applicable law, for the reasons discussed herein, the Court concludes that the Ausin Division is a
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`clearly more convenient venue to try this case and it is in the interest of justice for the Court to
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`transfer this case. Thus, the Court ORDERS that Defendants’ Motion to Transfer be GRANTED
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`in that this case be transferred to the Austin Division of the U.S. District Court for the Western
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`District of Texas but remain assigned to United States District Judge Alan D Albright, referred to
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`1 The Original Complaint named Sony Group Corporation, Sony Corporation of America, as de-
`fendants as well, but they have been dismissed from the case.
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`Case 1:23-cv-01212-ADA-DTG Document 137 Filed 10/05/23 Page 2 of 8
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`United States Magistrate Judge Derek T. Gilliland, and scheduled according to the current Sched-
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`uling Order. ECF Nos. 87, 136.
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`I.
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`FACTUAL BACKGROUND
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`Plaintiff is a Wyoming limited liability company headquartered in Casper, Wyoming. ECF
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`No. 1 ¶ 1 [hereinafter, “Compl.”]. The Asserted Patents’ inventor—Frances Barbaro Altieri—re-
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`sides in Belmont, Massachusetts. Her company, Barbaro Technologies, is based in Boston.
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`Quantum filed its complaint against Defendants on June 3, 2022, asserting that Defendants
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`infringed four Quantum patents—U.S. Patent No. 8,458,028 (the “’028 patent”) System and
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`Method for Integrating Business-related Content Into an Electronic Game; U.S. Patent No.
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`10,255,724 (the “’724 patent”) Interactive Virtual Thematic Environment; U.S. Patent No.
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`10,846,941 (the “’941 patent”) Interactive Virtual Thematic Environment; U.S. Patent No.
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`10,991,165 (the “’165 patent”) Interactive Virtual Thematic Environment (collectively, “the pa-
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`tents-in-suit”)—which claim devices and programs allowing users to engage in business-related
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`transactions and other functionalities while playing video games. Plaintiff identifies the Accused
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`Products in its complaint as including PlayStation Network, PlayStation VITA, PlayStation 4,
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`PlayStation VR, and PlayStation , as well as Bluepoint’s Demon’s Souls game software. Compl.
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`¶ 67.
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`Plaintiff alleges that Defendants infringe the patents-in-suit directly and indirectly by de-
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`velopment, design, manufacture, distribution, marketing, offering to sell, and selling infringing
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`products and services in this District. Compl. ¶ 7. SIE is a California limited liability company
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`with its worldwide headquarters and principal place of business in California. Compl. ¶ 5. SIEI is
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`SIE’s affiliate in Japan and is incorporated under the laws of Japan with its principal place of
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`business in Japan. Compl. ¶ 4. At the time of the Complaint, plaintiff alleges that Defendants were
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`Case 1:23-cv-01212-ADA-DTG Document 137 Filed 10/05/23 Page 3 of 8
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`seeking to hire dozens of employees in Austin. Plaintiff further alleges that Bluepoint is part of
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`PlayStation Studios, which is a division of Defendants SIE and SIEI. Bluepoint is incorporated in
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`Texas, with its headquarters and principal place of business in Austin, Texas. Compl. ¶¶ 6, 18.
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`Defendants allege, and plaintiff does not appear to dispute, that Bluepoint’s operations, personnel,
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`and documents—including hardware storing its electronic documents, and custodians who create
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`and maintain electronic documents—are all located in its Austin office, with the exception of some
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`remote workers who reside outside of Texas. Compl. ¶¶ 6, 18, 22-23; ECF No. 55 at 9. However,
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`no party has relevant facilities, operations, or documents in Waco.
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`II.
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`LEGAL STANDARD
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`The change of venue statute provides a district court authority to “transfer any civil action
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`to any other district or division where it might have been brought” for “the convenience of parties
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`and witnesses” and “in the interest of justice.” 28 U.S.C. § 1404(a). Regional Circuit law, here the
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`Fifth Circuit’s, governs this Court’s determination of whether to transfer. In re Genetech, Inc., 566
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`F.3d 1338, 1341–42 (Fed. Cir. 2009). The moving party has the burden to prove that a case should
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`be transferred for convenience. In re Volkswagen of Am., 545 F.3d 304, 314 (5th Cir. 2008) [here-
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`inafter Volkswagen II]. “The determination of ‘convenience’ turns on a number of public and pri-
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`vate interest factors, none of which can be said to be of dispositive weight.” Action Indus., Inc. v.
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`U.S. Fid. & Guar. Co., 358 F.3d 337, 340 (5th Cir. 2004) (footnote omitted). The private interest
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`factors include: “(1) the relative ease of access to sources of proof; (2) the availability of compul-
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`sory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses;
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`and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive.”
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`In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) [hereinafter Volkswagen I] (citing Piper
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`Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)). The public factors include: “(1) the
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`administrative difficulties flowing from court congestion; (2) the local interest in having localized
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`interests decided at home; (3) the familiarity of the forum with the law that will govern the case;
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`and (4) the avoidance of unnecessary problems of conflict of laws of the application of foreign
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`law.” Id.
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`III. ANALYSIS
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`As to the threshold inquiry, Defendants admit that this suit could have been brought in the
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`Austin Division. ECF No. 55 at 6. Plaintiff does not dispute this. Thus, the Court analyzes the
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`private and public interest factors.
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`A. The Private Interest Factors
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`1. The Relative Ease of Access to Sources of Proof
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`“[I]n patent infringement cases, the bulk of the relevant evidence usually comes from the
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`accused infringer.” In re Nintendo Co. Ltd., 589 F.3d 1194, 1199 (Fed. Cir. 2009) (applying 5th
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`Circuit law). However, “the accessibility of electronic storage of documents is not a fact that
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`should weigh against transfer.” Corrino Holdings LLC v. Expedia, Inc., 2022 WL 1094621, at *2
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`(W.D. Tex. Apr. 12, 2022) (citing In re Juniper, 14 F.4th 1313, 1322 (Fed. Cir. 2021)).
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`Defendant argues that this factor favors transfer because its technical documents relevant
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`to the Accused Products are created and maintained by custodians in either the Austin Division or
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`outside of Texas, but not in the Waco Division. ECF No. 55 at 9. Defendant is not otherwise aware
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`of any sources of proof located in Waco. ECF No. 55 at 8. Plaintiff argues that this factor is neutral.
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`ECF No. 105 at 8. Plaintiff argues that “Demon Souls’ sources of proof are not exclusively in
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`Austin—they are also in Japan.” Id. Plaintiff asserts that because defendant’s documents are lo-
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`cated on servers, they are accessible anywhere in the world. ECF No. 105 at 9–10. But Plaintiff
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`concedes that no “relevant documents or document custodians are in Waco.” ECF No. 105 at 10.
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`2. The Availability of Compulsory Process to Secure the Attendance of Witnesses
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`Under the Federal Rules, a court may subpoena a witness to attend trial only (a) “within
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`100 miles of where the person resides, is employed, or regularly transacts business in person”; or
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`(b) “within the state where the person resides, is employed, or regularly transacts business in per-
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`son, if the person . . . is commanded to attend a trial and would not incur substantial expense.” Fed.
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`R. Civ. P. 45(c)(1)(A), (B)(ii). Under this factor, the Court focuses on non-party witnesses whose
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`attendance may need to be secured by a court order. Fintiv Inc. v. Apple, Inc., 2019 WL 4743678,
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`at *14 (W.D. Tex. Sept. 13, 2019) (citing Volkswagen II, 545 F.3d at 316). Defendants argue the
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`Waco and Austin Divisions would have the same subpoena power and Plaintiff agrees. ECF No.
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`55 at 14; ECF No. 105 at 14. This Court agrees.
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`3. The Cost of Attendance and Convenience for Willing Witnesses
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`“The convenience of witnesses is the single most important factor in the transfer analysis.”
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`Sonrai Memory Ltd. v. Oracle Corp., 6:21-cv-116-ADA, 2022 WL 315023, at *2 (W.D. Tex. Feb.
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`2, 2022). The Federal Circuit has stated “the inquiry should focus on the cost and inconvenience
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`imposed on the witnesses by requiring them to travel to a distant forum and to be away from their
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`homes and work for an extended period of time.” In re Google, LLC, No. 2021- 70, 2021 WL
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`4427899, at *4 (Fed. Cir. Sept. 27, 2021).
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`Defendants argue that this factor favors transfer because there are willing witnesses in the
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`Austin Division who are current employees of the defendant companies. By contrast, there are no
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`employees of the parties in the Waco Division. Austin has Bluepoint’s only office (and thus its
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`operations, employees, and evidence) and an SIE office. For example, Defendant points out that
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`Plaintiff’s Complaint emphasizes that 68 Bluepoint employees are located in Austin, one potential
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`Bluepoint witness resides in Austin, 18 open SIE employment positions are based in Austin,
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`“Defendants” and “PlayStation” were advertising several Austin-based employment positions at
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`the time of the filing of the Complaint, and eleven named Austin-based SIE employees are key
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`witnesses. ECF No. 55 at 10–11 (citing Compl. ¶¶ 9, 21–23; 25-38). Plaintiff disagrees and alleges
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`that witnesses in Oklahoma, Japan, and Boston will find Waco more convenient. Plaintiff also
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`concedes that witnesses living in Austin, or even exurbs such as Hutto, would enjoy “additional
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`convenience” with a trial in the Austin Division. Neither party has identified any witnesses residing
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`in the Waco Division.
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`4. All Other Practical Problems That Make Trial of a Case Easy, Expeditious,
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`and Inexpensive
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`When considering the private interest factors, courts must also consider “all other practical
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`problems that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at
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`314. Defendant argues that this factor favors transfer because the case has not yet reached Mark-
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`man and the pleadings are not yet settled. Plaintiff argues that this factor weighs against transfer
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`because the parties have engaged in substantial merits discovery. Generally, the stage the case is
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`not something that makes trial easier, more expeditious, or less expensive. Iida v. Intel Corp., 2023
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`WL 5216813, at *3 (W.D. Tex. Aug. 1, 2023). The Court can also alleviate this factor by keeping
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`the case on Judge Albright’s docket, with a referral to Judge Gilliland for pretrial matters, and
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`maintain the current case schedule.
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`B. The Public Interest Factors
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`1. Administrative Difficulties Flowing from Court Congestion
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`This factor concerns “whether there is an appreciable difference in docket congestion be-
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`tween the two forums.” In re Adobe Inc., 823 Fed. App’x 929, 932 (Fed. Cir. 2020). It considers
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`the “[t]he speed with which a case can come to trial and be resolved.” In re Genentech, Inc., 566
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`F.3d at 1347. The Federal Circuit has stated that this factor is “the most speculative” factor. Id.
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`Defendants conclude that “this factor is neutral” because plaintiff does not practice the
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`patent. ECF No. 55 at 15 (citing In re WMS Gaming Inc., 564 F. App’x 579, 581 (Fed. Cir. 2014)
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`(finding no reason to “assign significant weight in the transfer analysis” to this factor where plain-
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`tiff does not practice the patent and “is not in need of a quick resolution of this case”)). Plaintiff
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`asserts that court congestion weighs against transfer, however, Plaintiff does not provide evidence
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`showing that the Austin Division is more congested than the Waco Division.
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`2. Local Interest in Having Localized Interests Decided at Home
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`Under this factor, the Court must evaluate whether there is a local interest in deciding local
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`issues at home. Volkswagen II, 545 F.3d at 317. Local interests in patent cases “are not a fiction.”
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`In re Samsung Elecs. Co., 2 F.4th 1371, 1380 (Fed. Cir. 2021). A local interest is demonstrated by
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`a relevant factual connection between the events that gave rise to a suit and the venue. In re Apple,
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`979 F.3d 1332, 1344 (Fed. Cir. 2020).
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`Defendants argue that this factor “strongly favors transfer.” ECF No. 55 at 15. Defendants
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`point to the fact that no accused Products were designed, developed, and tested in Waco, but at
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`least some were in Austin. In particular, Bluepoint’s Demon’s Souls underwent all three stages at
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`its Austin offices. Plaintiff argues that this factor is neutral as to transfer.
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`3. Familiarity of the Forum with the Law That will Govern the Case
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`The parties agree that this factor has no bearing on the outcome of this Motion.
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`4. Avoidance of Unnecessary Problems of Conflict of Laws or in the Application
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`of Foreign Law
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`The parties agree that this factor does not affect the outcome of this Motion.
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`IV.
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`CONCLUSION
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`When considering all of the factors and the Court’s ability to maintain the current case
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`schedule by retaining this case on Judge Albright’s docket and the referral to Judge Gilliland, the
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`Court finds that Defendants have met their burden to show that the Austin Division is a clearly
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`more convenient venue. Volkswagen II, 545 F.3d at 314 n.10. For that and the foregoing reasons,
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`it is the ORDER of this Court the Defendant’s Motion to Transfer to the Austin Division of the
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`U.S. District Court for the Western District of Texas in the above-styled case is GRANTED and
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`this case is ORDERED to be TRANSFERRED to the Austin Division, remain assigned to United
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`States District Judge Alan D Albright, referred to United States Magistrate Judge Derek T. Gilli-
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`land, and maintained on its current Scheduling Order. ECF Nos. 87, 136.
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`5th
`SIGNED this _____ day of October, 2023.
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`__________________________________
`Derek T. Gilliland
`United States Magistrate Judge
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