Case 6:22-cv-00105-ADA Document 113 Filed 12/27/22 Page 1 of 23
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`GREENTHREAD, LLC
`Plaintiff
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`-vs-
`INTEL CORPORATION, DELL
`INC., AND DELL TECHNOLOGIES
`INC.
`Defendants.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
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`6:22-CV-105-ADA
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`
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`MEMORANDUM OPINION AND ORDER
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`Came for consideration is Defendant Intel’s Opposed Motion to Sever Plaintiff’s Claims
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`against Intel, Transfer Venue of Those Claims to Oregon, and Stay Claims Against Dell Based on
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`Accused Intel Products (the “Motion”). ECF No. 60. After carefully reviewing the Motion, the
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`related pleadings, and the applicable law, the Court is of the opinion that Defendant’s Motion
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`should be GRANTED.
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`I.
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`BACKGROUND
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`Plaintiff Greenthread, LLC (“Greenthread”) sued Intel Corporation (“Intel”) and Dell
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`Inc./Dell Technologies Inc. (“Dell”), for alleged infringement of patents directed to certain
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`manufacturing steps for semiconductor devices. ECF No. 38 ¶¶ 1–2. Certain of Greenthread’s
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`claims against Dell are based on Dell’s incorporation of accused Intel processors and flash memory
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`products (the “Accused Intel Products”) into Dell products. Id. ¶¶ 61–62. Greenthread’s Complaint
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`asserts the patents-in-suit against Intel “semiconductor products that practice the claimed
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`inventions, including Intel Accused CPUs and Intel Accused Flash Memory Products.” Id. ¶ 49.
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`Greenthread accuses Intel of infringement based on certain manufacturing steps undertaken for the
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`Accused Intel Products—specifically, “process steps for creating regions with graded dopant
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`1
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`Greenthread Ex 2004, p.1 of 23
`Cirrus Logic, et. al. v. Greenthread
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`concentrations.” Id. ¶ 52. Greenthread accuses Dell of infringing the patents-in-suit by “making,
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`using, offering to sell, selling within, and/or importing into the United States Dell-Intel Accused
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`Products.” Id. ¶ 63. Greenthread defines “Dell -Intel Accused Products” as “Dell Products
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`incorporating or comprising Intel Accused Products,” including “Intel Accused CPUs and Intel
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`Accused Flash Memory Products.” Id. ¶¶ 61–62; see also ECF No. 38-8 at 7–8. Greenthread also
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`accuses Dell of infringement based on separate flash memory products sold by Micron and
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`Western Digital and image sensors sold by Sony. ECF No. 38 ¶¶ 64–81.
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`II.
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`LEGAL STANDARD
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`A. Severance
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`A “court may sever any claim against a party” to facilitate transfer. In re Nintendo of Am.,
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`Inc., 756 F.3d 1363, 1366 (Fed. Cir. 2014). “[T]he guiding principles” of the customer-suit
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`doctrine “are efficiency and judicial economy.” Spread Spectrum Screening LLC v. Eastman
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`Kodak Co., 657 F.3d 1349, 1357 (Fed. Cir. 2011). Under this doctrine, a stay of claims against
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`downstream customer defendants is warranted where the case against the manufacturer has the
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`potential to resolve the major issues against those customer defendants. Id. at 1358. “When a patent
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`holder sues multiple accused infringers, it may be proper for a court to sever certain claims against
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`one or more of the accused infringers.” Collaborative Agreements, LLC v. Adobe Sys. Inc., No. 1-
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`14-CV-356-LY, 2015 WL 10818739, at *2 (W.D. Tex. Aug. 21, 2015) (citing Fed. R. Civ. P. 21).
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`The Court has the power to sever the claims against properly joined Defendants and to stay the
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`proceedings as to any of them. Id; see also In re Nintendo, 756 F.3d at 1365-66) (explaining that
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`where suit is brought against a manufacturer and its customers, the action against the customers
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`may be properly severed and stayed pending resolution of the case against the manufacturer to
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`promote judicial economy.).
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`2
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`To determine whether to sever claims when a plaintiff sues both a supplier and its customer
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`for infringement, the Court should consider whether: “(1) the claim to be preserved is peripheral
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`to the remaining claims; (2) the adjudication of the remaining claims is potentially dispositive of
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`the severed claim; and (3) the transfer of the remaining claims is warranted under 28 U.S.C. §
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`1404(a).” Collaborative Agreements, LLC, 2015 WL 10818739, at *2.
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`B. Transfer
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`In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of
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`the regional circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). Title 28
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`U.S.C. § 1404(a) provides that “[f]or the convenience of parties and witnesses, in the interest of
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`justice, a district court may transfer any civil action to any other district or division where it might
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`have been brought or to any district or division to which all parties have consented.” “Section
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`1404(a) is intended to place discretion in the district court to adjudicate motions for transfer
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`according to an ‘individualized, case-by-case consideration of convenience and fairness.’” Stewart
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`Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. Barrack, 376 U.S. 612,
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`622 (1964)).
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`“The preliminary question under § 1404(a) is whether a civil action ‘might have been
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`brought’ in the [transfer] destination venue.” In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir.
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`2008) (“Volkswagen II”). If the destination venue would have been a proper venue, then “[t]he
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`determination of ‘convenience’ turns on a number of public and private interest factors, none of
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`which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358
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`F.3d 337, 340 (5th Cir. 2004). The private factors include: “(1) the relative ease of access to sources
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`of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the
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`cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a
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`3
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`case easy, expeditious and inexpensive.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004)
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`(“Volkswagen I”) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)). The public
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`factors include: “(1) the administrative difficulties flowing from court congestion; (2) the local
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`interest in having localized interests decided at home; (3) the familiarity of the forum with the law
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`that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws of the
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`application of foreign law.” Id.
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`A. Severance
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`III.
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`ANALYSIS
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`The Court “must weigh carefully the comparative inconvenience of splitting the suit versus
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`the advantages to be gained from a partial transfer” when considering sever-and-transfer requests.
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`See In re: AMAZON.COM, INC., No. 2022-157, 2022 WL 17688072, at *3 (Fed. Cir. Dec. 15,
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`2022) (citing Def. Distributed v. Bruck, 30 F.4th 414, 428 (5th Cir. 2022) (internal quotation marks
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`and citation omitted). The inclusion of a defendant only peripherally involved in, or indirectly
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`connected to, the alleged wrongdoing should not preclude severance and partial transfer to a more
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`convenient forum. See Nintendo, 756 F.3d at 1366.
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`In this case, the Court first need analyze whether Dell is truly a customer of Intel as it
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`relates to the Accused Intel Products. The rationale underlying the customer-suit doctrine is that
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`where there is a manufacturer who is the true defendant in the dispute, the court should not impose
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`the burdens of litigation on the customer. In re Nintendo, 756 F.3d at 1365.
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`In Nintendo, the plaintiff filed suit in an Eastern District of Texas court against Nintendo
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`and eleven of its customer-retailers. Id. at 1364. Our sister court found that the customer-suit
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`doctrine did not apply because the manufacturer and customer were joined in the same suit. Id.
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`The Federal Circuit reversed the district court’s ruling while still applying the reasoning of the
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`4
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`customer-suit doctrine. See id. at 1365 (“While the circumstances of this case differ from those of
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`the customer-suit exception . . . the same general principles govern in that Nintendo is the true
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`defendant.”) (internal citations omitted). The Federal Circuit found that severance was appropriate
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`because the plaintiff had no claim against the customer-retailers unless the infringement claims
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`against the manufacturer-defendant were successful. Id. at 1366. The appeals court concluded that
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`severing and staying the actions against the customer-retailers was appropriate, especially since
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`the customer-retailers stipulated to be bound by the judgment against the manufacturer defendant.
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`Here, Intel is the manufacturer defendant analogous to Nintendo in the Federal Circuit case.
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`Dell is analogous to the customer-retailers in Nintendo with respect to claims related to the accused
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`Intel processors, because Dell was not involved in the design, development, or manufacture of the
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`infringing technology in the Accused Intel Products, which it incorporates into its own products.
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`Greenthread, however, asserts that Dell the Accused Intel Products. ECF No. 83 at
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`3–4. It contends that
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` Id. Greenthread also asserts that Dell and Intel
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` the Accused Intel Products
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`to
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` Id. at 4.
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`The Court agrees with Intel that Greenthread accuses Intel of infringing through its
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`products’ graded dopant profiles, and it alleges Dell infringes by incorporating these Intel
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`components. ECF No. 38 ¶¶ 1–2; 61–62. Any
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`by Intel and Dell focuses on the
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`Greenthread does not show that Dell has substantive knowledge about the patent infringement
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`alleged by Greenthread.
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`5
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` which weighs in favor of finding that Greenthread’s claims against
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`Dell are peripheral. ECF No. 60 at 5.
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`retailers in Nintendo,
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`Dell, like the customer-
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`. ECF
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`No. 91 at 3 n. 4. Allowing the claims based on the Accused Intel products to proceed against Dell
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`would subject it to unnecessary burden.
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`This case differs from Nintendo, though, because Greenthread amended its Complaint to
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`accuse Dell of infringement based on products sold by unrelated manufacturers before Intel filed
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`this Motion. ECF No. 38 ¶¶ 64–81 (asserting infringement claims against Dell based on Micron,
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`Sony, and Western Digital products). Greenthread argues that because of this, severance is
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`improper because Dell is not a “peripheral defendant.” ECF No. 83 at 6. It cites to Fractus, S.A. v.
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`AT&T Mobility LLC to support its contention that severance is inappropriate, because the claims
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`against Dell based on unrelated manufacturers’ products are entirely unrelated to the claims sought
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`to be severed. Id. at 8–9 (citing No. 2:18-CV-00135-JRG, 2019 WL 3253639, at *4 (E.D. Tex.
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`July 19, 2019)). But the Court finds Fractus inapplicable. There, the manufacturer intervened and
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`voluntarily joined the suit and waived any misjoinder defense. See Fractus, 2019 WL 3253639, at
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`*1– 2, 8. Also,
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` the Fractus customers refused to be bound by any findings against the
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`manufacturer, and that case did not involve transfer. Id. at *5.
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`Yet because Greenthread asserts additional claims against Dell unrelated to the Accused
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`Intel Products, it cannot be said that all remaining claims against Dell are peripheral. Adjudication
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`6
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`of the severed claims would not be dispositive of the remaining claims against Dell unrelated to
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`the Accused Intel Products. Thus, the Court does not find it appropriate to determine whether
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`severance is proper based solely on the customer-suit exception doctrine.
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`The Court need also consider Intel’s transfer request as part of its severance analysis. See
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`Shifferaw v. Emson USA, 2010 WL 1064380, at *4 (E.D. Tex. Mar. 18, 2010). Indeed, the Federal
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`Circuit recently reproached this Court for failing to assess the advantages to be gained from a
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`partial transfer (based on the transfer factors) and then determine whether those benefits are
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`“outweighed by the judicial economy considerations of having all claims determined in a single
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`lawsuit.” In re: AMAZON.COM, INC., 2022 WL 17688072, at *3 (quoting In re Rolls Royce Corp.,
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`775 F.3d 671, 681 (5th Cir. 2014)). There, the Federal Circuit explained that, once severed, the
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`transfer factors weighed heavily in favor of transferring the claims against the manufacturer to
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`another forum. Id. This Court, then, need also consider whether severance is still appropriate to
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`facilitate transfer of Greenthread’s claims against Intel.
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`B. Transfer
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`Under 28 U.S.C. § 1404(a), “[f]or the convenience of parties and witnesses, in the interest
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`of justice,” this Court may transfer a case to any district where the case could have been brought.
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`28 U.S.C. § 1404(a). When evaluating a request for transfer, courts in the Fifth Circuit weigh four
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`private interest factors: “(1) the relative ease of access to sources of proof; (2) the availability of
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`compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing
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`witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and
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`inexpensive.” In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. 2020) (quoting Volkswagen I, 371
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`F.3d at 203). Courts in this Circuit also consider four public interest factors: “(1) the administrative
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`difficulties flowing from court congestion; (2) the local interest in having localized interests
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`7
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`decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4)
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`the avoidance of unnecessary problems of conflict of laws [or of] the application of foreign law.”
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`Id. (quoting Volkswagen I, 371 F.3d at 203).
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`1. Venue and Jurisdiction in the Transferee Forum
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`Greenthread could have brought its claims against Intel in Oregon, as Intel has a regular
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`and established place of business in Hillsboro, Oregon, and it has sufficient minimum contacts
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`there such that personal jurisdiction is proper. See 28 U.S.C. § 1400(b). Greenthread contends that
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`venue and jurisdiction are not proper in Oregon only as to Dell. ECF No. 83 at 7–8. The Court
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`disregards this argument in its partial transfer analysis of the claims against Intel.
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`2. Private Interest Factors
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`a. Cost of Attendance of Willing Witnesses
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`The most important factor in the transfer analysis is the convenience of the witnesses. See
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`In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009). The Fifth Circuit has established the
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`“100-mile rule,” providing that “[w]hen the distance between an existing venue for trial of a matter
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`and a proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to
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`witnesses increases in direct relationship to the additional distance to be traveled.” Volkswagen I,
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`371 F.3d at 204–05. Yet the Federal Circuit has refused to apply the rule “rigidly,” such as where
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`it may “result in all identified witnesses having to travel away from their home and work in order
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`to testify in Texas, which would ‘produce results divorced from’ the rule’s underlying rationale.”
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`In re Google LLC, No. 2021-170, 2021 WL 4427899, at *5 (Fed. Cir. Sept. 27, 2021) (quoting In
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`re TracFone Wireless, Inc., 852 F. App’x 537, 539 (Fed. Cir. 2021)). This has led the Federal
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`Circuit to disregard distance altogether in favor of considering travel-time statistics. See In re
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`Google LLC, 2021 WL 4427899, at *12 (“[T]ime is a more important metric than distance.”). Or
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`8
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`to simply disregard any difference in convenience between the relevant fora where it is comfortable
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`concluding that a witness would have to travel a significant distance no matter if the action is
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`transferred or not. See In re Apple, 979 F.3d at 1342 (discussing witnesses traveling from New
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`York to either Texas or California venues); In re Genentech, Inc., 566 F.3d at 1344 (stating that
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`the 100-mile rule should not be “rigidly” applied in the context of foreign witnesses); In re
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`Pandora Media, LLC, No. 2021-172, 2021 WL 4772805, at *6 (Fed. Cir. Oct. 13, 2021). It has
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`even gone as far as opining that “[t]he comparison between the transferor and transferee forum is
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`not altered by the presence of other witnesses and documents in places outside both forums.” In re
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`Toyota Motor Corp., 747 F.3d 1338, 1340 (Fed. Cir. 2014); In re Google LLC, No. 2021-170,
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`2021 WL 4427899, at *4 (Fed. Cir. Sept. 27, 2021).
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`Intel asserts that transfer is warranted here because “[p]otential Intel trial witnesses who
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`are involved with and knowledgeable about these processors’ manufacturing process are located
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`in Oregon.” ECF No. 60 at 2; ECF No. 60-1 ¶¶ 7–9. It identifies Kaizad Mistry, Corporate Vice
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`President, Strategy and Technology for Business Enablement and Technology Development,
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`located in Hillsboro, Oregon, who was responsible for overseeing design and development for the
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`manufacturing process technologies for the accused processors. Id. Ray Cotner is Vice President
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`and Director of LTD Thin Films Technology, located in Hillsboro, Oregon, and is responsible for
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`managing the engineering teams that research and design the diffusion and thin-film process steps
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`used to fabricate the accused Intel processors. Id. Leonard Pipes is the Ion Implant Engineering
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`Manager and Principal Engineer, located in Hillsboro, Oregon, and is responsible for overseeing
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`the Ion Implantation team that researches and designs the ion implantation process steps used to
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`introduce dopants into the accused Intel processors. Curtis Tsai, Senior Principal Engineer, is in
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`Hillsboro, Oregon, and contributes to device design and integration for the accused Intel
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`9
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`processors. Id. Greenthread does not challenge the relevancy of these witnesses, and the Court
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`finds that Intel provides sufficient information to identify these witnesses as material and relevant.
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`Intel also identifies other potential trial witnesses with information regarding the accused
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`manufacturing steps for the accused Intel flash memory products in Northern California and in
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`China. ECF No. 60 at 3. Greenthread, again, does not challenge that these witnesses are relevant,
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`nor that it would be more convenient for them to attend trial in Oregon. While the Court generally
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`finds that witnesses in China are given little to no weight, it acknowledges that the witnesses in
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`Northern California would likely find trial more convenient in Oregon. See In re Genentech, Inc.,
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`566 F.3d at 1344 (stating that the 100-mile rule should not be “rigidly” applied in the context of
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`foreign witnesses).
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`Alternately, Intel maintains that no potential Intel witnesses with relevant knowledge are
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`in this District. ECF No. 60 at 12. It asserts also that there are no potential non-party witnesses in
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`this District. Id. Yet Greenthread contends that Intel’s Austin-based employees are intimately
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`involved in the technology at issue. ECF No. 83 at 9. In support of this contention, it points to
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`testimony from the head of Intel’s
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` who stated that Austin-based engineers
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`includes the
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` ECF No. 83-2 at 70:9-
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`13. It explains that
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` is the CPU component that Greenthread reverse engineered before
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`filing the Complaint and is the focus of the infringement contentions. ECF No. 38-9 at 10
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`Greenthread also asserts that
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` of Intel’s Dell sales team is in this District, and that no
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`one responsible for selling or marketing Intel’s products to Dell is in Oregon. ECF No.83 at 5.
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`Among the Dell sales team members in this District is a lead account manager for the
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`10
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`ECF No. 83 at 5. Greenthread relies on the convenience of these Dell witnesses for its
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`opposition to the Motion, since it maintains that severance is inappropriate. Id. at 11. But this
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`reliance is misplaced, as the Court will not consider the convenience of these potential witnesses
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`in its analysis of whether transfer of Intel’s claims is appropriate.
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`Moreover, Greenthread asserts that Dr. Rao, the only inventor of the patents-in-suit, is
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`likely to be Greenthread’s main witness at trial, and he is in Dallas. ECF No. 83 at 3. Dr. Rao is
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`medically unable to travel to Oregon, thus Greenthread contends that this should weigh against
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`transfer. Id. The Court agrees that inventors’ testimony is very important and that it would be
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`more convenient for Dr. Rao to travel to this District for trial.
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`As to Greenthread’s contention regarding the
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`, Intel counters that the
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`dopant profiles are the relevant technology, and that the Austin engineers on Intel’s
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` do not work on the technology that implements those profiles, including for Intel’s
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`ECF No. 91 at 3. Intel also argues that Greenthread’s “conclusory assertion” that the Intel sales
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`employees in Austin are relevant to damages is insufficient in comparison to the specific relevant
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`witnesses Intel identified. Id. (citing Led Wafer Solutions, LLC v. Samsung Elecs. Co., Ltd., No.
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`6:21-CV-00292-ADA, Dkt. 95 at 12 (W.D. Tex. Aug. 25, 2022)).
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`The Court finds that this factor weighs in favor of transfer. The Court accords weight to
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`Dr. Rao’s convenience as a key witness for Greenthread and for whom Greenthread asserts that
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`travel to Oregon would be impossible. On the other hand, Intel identifies multiple witnesses in
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`Oregon and in Northern California for whom trial in Oregon would be more convenient. Likewise,
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`the Court does not find that Greenthread provides enough factual information for the Intel
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`witnesses it identified to keep the scales from tipping towards transfer. While the unidentified
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`Austin-based engineers may have relevant information on the
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`, based on the record before
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`it, the Court finds that this is insufficient in comparison to the identified witnesses in Oregon and
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`in Northern California with relevant and material knowledge of the accused dopant profiles.
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`Regarding the sales teams, the Court accords some weight to the fact that Greenthread
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`elicited testimony from Intel’s corporate witness that Intel has sales teams in this District,
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`especially considering that Intel does not directly dispute that these witnesses are relevant. ECF
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`No. 83-7 at 23:6–24:14; see also ECF No. 91 at 3–4 (contending only that Greenthread’s assertion
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`that the Intel sales employees is conclusory). But the Court finds that this is likewise insufficient
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`when compared to the relevant witnesses located in or closer to Oregon, given that Greenthread
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`does not provide any more explanation as to the testimony it expects to elicit from these witnesses.
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`Finally, Greenthread asserts that even for the Intel witnesses in Oregon or in California, Intel’s
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`private airplane shuttle service for its employees would make travel “very convenient.” ECF No.
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`83 at 5. The Court finds this argument unpersuasive, though, as trial in Oregon would likely still
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`be more convenient than traveling to this District.
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`Conclusion. On balance, the Court finds this factor weighs in favor of transfer.
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`b. Relative Ease of Access to Sources of Proof
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`“In considering the relative ease of access to proof, a court looks to where documentary
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`evidence, such as documents and physical evidence, is stored.” Fintiv, Inc. v. Apple Inc., No. 6:18-
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`cv-00372-ADA, 2019 WL 4743678, at *5 (W.D. Tex. Sept. 10, 2019). This factor relates to the
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`relative—not absolute—ease of access to non-witness evidence. See In re Radmax, 720 F.3d at
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`288; In re Apple, 979 F.3d at 1339. “[T]he movant need not show that all relevant documents are
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`located in the transferee venue to support a conclusion that the location of relevant documents
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`favors transfer.” In re Apple, 979 F.3d at 1340; In re Juniper Networks, Inc., 14 F.4th 1313, 1321
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`12
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`(Fed. Cir. 2021) (“We have held that the fact that some evidence is stored in places other than
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`either the transferor or the transferee forum does not weigh against transfer.”).
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`The Fifth Circuit has held that, even in the context of electronic documents that can be
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`accessed anywhere on earth, this factor is not superfluous. See Volkswagen II, 545 F.3d at 316; see
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`also In re Dish Network LLC, No. 2021-182, 2021 WL 4911981, at *6 (Fed. Cir. Oct. 21, 2021).
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`Though having consistently characterized that holding as antiquated in the setting of a modern
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`patent dispute, this Court will continue to analyze this factor with a focus on the location of:
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`physical documents and other evidence; and the hardware storing the relevant electronic evidence.
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`See Def. Distributed v. Bruck, 30 F.4th 414, 434 & n.25 (5th Cir. 2022) (giving weight to the
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`location of servers hosting the electronic documents in dispute). The Federal Circuit has held,
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`however, that it is error not to also consider: “the location of document custodians and location
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`where documents are created and maintained, which may bear on the ease of retrieval.” In re
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`Google LLC, No. 2021-178, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15, 2021); see also Def.
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`Distributed, 30 F.4th at 434 & n.25 (considering, under this factor, where the “research, design,
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`development, manufacturing, and publishing” of the allegedly offending files occurred). Finally,
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`evidence located at a party’s office that is not a “place of regular business” may be discounted. See
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`In re Google LLC, No. 2022-140, 2022 WL 1613192, at *4 (Fed. Cir. May 23, 2022).
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`The Court finds that this factor favors transfer. Intel argues that relevant document
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`custodians who create and maintain documents are located primarily in Oregon or in Northern
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`California, so access to sources of proof is relatively easier in Oregon than in this District. ECF
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`No. 60 at 13. It also asserts that the technical documents that show the details of manufacturing
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`process technology for the Accused Intel Products are stored on secure servers at Intel facilities
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`outside of Texas, and that Intel is unaware of any relevant evidence regarding its accused
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`13
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`Case 6:22-cv-00105-ADA Document 113 Filed 12/27/22 Page 14 of 23
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`manufacturing process technology that is physically stored in this District. Id. While Intel asserts
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`that its servers and physical documents are “outside of Texas,” it does not specify where, except
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`to note that the servers are at Intel facilities. ECF No. 60-1 ¶ 9; ECF No. 60-4 ¶ 10. Greenthread
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`challenges that Intel failed to show that relevant sources of proof are exclusively available in
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`Oregon. Id. Indeed, the Fifth Circuit recently stated, “[t]he location of evidence bears much more
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`strongly on the transfer analysis when, as in Volkswagen, the evidence is physical in nature.” In re
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`Planned Parenthood Fed’n of Am., Inc., No. 22-11009, 2022 WL 16549164, at *3 (5th Cir. Oct.
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`31, 2022). But based on the lack of evidence regarding storage of hard copies, that neither party
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`presents any evidence of Intel’s sources of proof in this District, and that the relevant document
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`custodians are primarily in Oregon and in Northern California, this weighs in favor of transfer.
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`Greenthread alternately contends that its documents are in Dallas, some of which are not
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`in electronic format. ECF No. 83 at 10. The Court accords this weight but recognizes, as it has
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`done many times before, that “in patent infringement cases, the bulk of the relevant evidence
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`usually comes from the accused infringer. Consequently, the place where the defendant’s
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`documents are kept weighs in favor of transfer to that location.” In re Genentech, 566 F.3d at 1345.
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`Greenthread’s reliance on Dell’s documents in this District is also insufficient, as the Court has
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`already determined it will not include Dell in this partial transfer analysis. Here, the Court agrees
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`with Intel that its relevant document custodians who create and maintain documents are located
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`primarily in Oregon or in Northern California, so access to sources of proof is likely relatively
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`easier in Oregon than in this District.
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`Conclusion. On balance, this factor weighs in favor of transfer.
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`14
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`Case 6:22-cv-00105-ADA Document 113 Filed 12/27/22 Page 15 of 23
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`c. Availability of Compulsory Process
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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
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`person, if the person . . . is commanded to attend a trial and would not incur substantial expense.”
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`Fed. R. Civ. P. 45(c)(1)(A), (B)(ii); Gemalto S.A. v. CPI Card Grp. Inc., No. 15-CA-0910, 2015
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`WL 10818740, at *4 (W.D. Tex. Dec. 16, 2015). Under this factor, the Court focuses on non-party
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`witnesses whose attendance may need to be secured by a court order. Fintiv, 2019 WL 4743678,
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`at *14 (citing Volkswagen II, 545 F.3d at 316). This factor “weigh[s] heavily in favor of transfer
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`when more third-party witnesses reside within the transferee venue than reside in the transferor
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`venue.” In re Apple, Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014). When “there are several
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`witnesses located in the transferee forum and none in the transferor forum,” this factor favors
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`transfer. In re Google, No. 2021-171, 2021 WL 4592280, at *5 (Fed. Cir. Oct. 6, 2021). Further,
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`this Court cannot “discount” third-party “entities” having pertinent information in the transferee
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`venue “just because individual employees were not identified.” In re Apple Inc., No. 2021-181,
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`2021 WL 5291804, at *8 (Fed. Cir. Nov. 15, 2021) (quoting In re HP Inc., 826 F. App’x 899, 903
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`(Fed. Cir. 2020)).
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`The Federal Circuit has held that, under Fifth Circuit law, “when there is no indication that
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`a non-party witness is willing, the witness is presumed to be unwilling and considered under the
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`compulsory process factor.” In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir.
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`Sept. 25, 2018); see also In re Hulu, LLC, No. 2021-142, 2021 WL 3278194, at *4 (Fed. Cir. Aug.
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`2, 2021) (“[W]here . . . the movant has identified multiple third-party witnesses and shown that
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`Case 6:22-cv-00105-ADA Document 113 Filed 12/27/22 Page 16 of 23
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`they are overwhelmingly located within the subpoena power of only the transferee venue, this
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`factor favors transfer even without a showing of unwillingness for each witness”).
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`Intel claims that this factor is neutral, as it is unaware of any non-party witnesses in Texas
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`or in Oregon. ECF No. 60 at 14. On the other hand, Greenthread contends that if severance and
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`transfer are granted, then Dell will not be a party to the Oregon suit and Dell witnesses would be
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`beyond the scope of compulsory process. ECF No. 83 at 10. Greenthread does not explain how
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`Dell witnesses would be relevant after severance, given that no Dell products would be at issue
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`after severance and transfer. Thus, the Court again concludes that these witnesses are irrelevant to
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`its partial transfer analysis.
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`Conclusion. The Court finds that neither party has identified relevant non-party witnesses
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`in Texas or in Oregon. Th