Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`MIDLAND-ODESSA DIVISION
`
`RESONANT SYSTEMS, INC. d/b/a
`RevelHMI,
`
`Case No. 7:23-cv-00077-DC
`
`Plaintiff,
`
`JURY TRIAL DEMANDED
`
` v.
`
`APPLE INC.,
`
`Defendant.
`
`DEFENDANT APPLE INC.’S OPPOSED MOTION TO
`TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
`
`
`
`APPLE 1036
`
`1
`
`

`

`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 2 of 21
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTON ................................................................................................................ 1
`
`STATEMENT OF FACTS ................................................................................................. 2
`
`A.
`
`B.
`
`C.
`
`Resonant Accuses Features Developed by Apple Almost Entirely in NDCA........ 2
`
`Resonant is a Washington Company with No Apparent Ties to Texas .................. 4
`
`Many Third Party Witnesses are in NDCA and None are in WDTX ..................... 4
`
`LEGAL STANDARD ......................................................................................................... 5
`NDCA IS CLEARLY MORE CONVENIENT THAN WDTX......................................... 6
`A.
`This Case Could Have Been Brought in NDCA ..................................................... 6
`
`B.
`
`The Private Interest Factors Favor Transfer ........................................................... 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`Relative Ease of Access to Sources of Proof Strongly Favors Transfer ..... 6
`
`Availability of Compulsory Process Favors Transfer ................................. 8
`
`Convenience of Witnesses Strongly Favors Transfer ............................... 10
`
`Other Practical Problems are Neutral or Slightly Favor Transfer ............. 12
`
`C.
`
`The Public Interest Factors Favor Transfer .......................................................... 12
`
`1.
`
`2.
`
`3.
`
`Court Congestion is Neutral or Slightly Favors Transfer ......................... 12
`
`Local Interest Strongly Favors Transfer ................................................... 13
`
`Familiarity with the Governing Law and Conflicts of Law are Neutral ... 14
`
`V.
`
`CONCLUSION ................................................................................................................. 14
`
`i
`
`2
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`

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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)............................................................................................8, 11
`
`In re Adobe Inc.,
`No. 2020-126, 2020 WL 4308164 (Fed. Cir. Jul. 28, 2020) ......................................................6
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) .....................................................................................................9
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)........................................................................................ passim
`
`In re Apple Inc.,
`No. 2021-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) .............................................9, 13
`
`In re Apple Inc.,
`No. 2022-128, 2022 WL 1196768 (Fed. Cir. Apr. 22, 2022), cert. denied sub
`nom. CPC Pat. Techs. PTY Ltd. v. Apple Inc., 143 S. Ct. 206, 214 L. Ed. 2d 80
`(2022) ...................................................................................................................................8, 13
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ............................................................................................9
`
`Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P.,
`No. 6:15-CV-00091, 2016 WL 6909479 (W.D. Tex. Jan. 28, 2016) ........................................5
`
`Collaborative Agreements, LLC. v. Adobe Sys. Inc.,
`No. 1-14-CV-356, 2015 WL 10818739 (W.D. Tex. Aug. 21, 2015) ........................................6
`
`Datascape, Ltd. v. Dell Techs., Inc.,
`No. 6:19-cv-00129-ADA, 2019 WL 4254069 (W.D. Tex. June 7, 2019) ...............................10
`
`In re DISH Network L.L.C.,
`856 F. App’x 310 (Fed. Cir. 2021) ..........................................................................................13
`
`Fintiv, Inc. v. Apple Inc.,
`No. 6:18-CV-00372-ADA, 2019 WL 4743678 (W.D. Tex. Sept. 13, 2019) ............................9
`
`Gemalto S.A. v. CPI Card Grp. Inc.,
`No. 15-CA-0910, 2015 WL 10818740 (W.D. Tex. Dec. 16, 2015) ..........................................9
`
`
`
`ii
`
`3
`
`

`

`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 4 of 21
`
`
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)..................................................................................5, 6, 10, 12
`
`In re Google LLC,
`58 F.4th 1379 (Fed. Cir. 2023) ................................................................................................12
`
`In re Google LLC,
`No. 2023-101, 2023 WL 1425780 (Fed. Cir. Feb. 1, 2023) ......................................................9
`
`In re Hoffman-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)........................................................................................5, 9, 13
`
`In re HP Inc.,
`No. 2018-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) .................................................10
`
`In re Hulu LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) .....................................................9
`
`InfoGation Corp. v. Google LLC,
`No. 6:20-CV-00366-ADA, 2021 WL 5547070 (W.D. Tex. Apr. 29, 2021) .....................10, 11
`
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ..................................................................................................5
`
`Koss Corp. v. Plantronics, Inc.,
`No. 6:20-CV-00663-ADA, 2021 WL 2075685 (W.D. Tex. May 20, 2021) .............................7
`
`Magic Cross Ranch, L.P. v. Manion,
`No. 3:12-CV-00541-P, 2012 WL 13027449 (N.D. Tex. Sept. 25, 2012) ................................14
`
`In re Morgan Stanley,
`417 F. App’x 947 (Fed. Cir. 2011) ..........................................................................................12
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................5
`
`TC Heartland LLC v. Kraft Foods Group Brands LLC,
`137 S. Ct. 1514 (2017) ...............................................................................................................6
`
`In re TracFone Wireless, Inc.,
`852 F. App’x 537 (Fed. Cir. 2021) ......................................................................................5, 10
`
`In re TS Tech.,
`551 F.3d 1315 (Fed. Cir. 2008)................................................................................................14
`
`Uniloc USA, Inc. v. Apple Inc.,
`No. A-18-CV-990-LY, 2019 WL 2066121 (W.D. Tex. Apr. 8, 2019) ....................................10
`
`
`
`iii
`
`4
`
`

`

`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 5 of 21
`
`
`
`Uniloc USA Inc. v. Box, Inc.,
`No. 1:17-CV-754-LY, 2018 WL 2729202 (W.D. Tex. June 6, 2018).....................................13
`
`USTA Tech., LLC v. Google LLC,
`Case No. W-22-CA-01214-XR, 2023 WL 4833481 (W.D. Tex. July 26, 2023) ........6, 8, 9, 12
`
`Via Vadis, LLC v. Netgear, Inc.,
`No. 14-cv-809, 2015 WL 10818675 (W.D. Tex. July 30, 2015) .............................................10
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .........................................................................................5, 10, 13
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ...........................................................................................1, 5, 11
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. W-16-CA-00447-RP, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) .................................6
`
`Statutes
`
`28 U.S.C. § 1404(a) ...............................................................................................................5, 8, 10
`
`35 U.S.C. § 1400(b) .........................................................................................................................6
`
`
`
`
`
`
`
`
`iv
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`5
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`

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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 6 of 21
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`
`
`I.
`
`INTRODUCTON
`
`This case has numerous, direct relevant connections to the Northern District of California
`
`(“NDCA”) and no relevant connection to the Western District of Texas (“WDTX”), much less
`
`Midland. As such, under a straightforward application of the Volkswagen factors, this case should
`
`be transferred to NDCA, the clearly more convenient venue.
`
`On the most critical factor in the transfer analysis—the convenience of witnesses—there
`
`are numerous relevant witnesses in NDCA and none in WDTX. This is unsurprising because the
`
`features and functionalities accused of infringement in this case were developed almost entirely in
`
`NDCA, where Apple is headquartered. In particular, at least
`
` Apple employees with knowledge
`
`relevant to the case—including Apple engineers knowledgeable about the accused technology,
`
`Apple employees with knowledge of sales and other financial information related of the accused
`
`products, Apple’s patent licensing personnel, and Apple employees knowledgeable about relevant
`
`prior art—reside and work in NDCA. Accordingly, almost all relevant documents originated from,
`
`and are stored in, NDCA; all relevant Apple documents are accessible from NDCA; and Apple
`
`prior art samples and prototypes are stored in NDCA. Although Apple maintains some offices and
`
`employees in Texas, Apple is not aware of any unique connection between those offices or
`
`employees and this case.
`
`
`
`Plaintiff Resonant Systems, Inc. d/b/a RevelHMI (“Resonant”), a Washington-based non-
`
`practicing entity, does not appear to have any ties to Texas, much less WDTX, either. Resonant’s
`
`complaint alleges no facts describing operations or employees in Texas, and Apple has not
`
`discovered evidence of any such ties. To the contrary, Apple’s investigation yielded facts that
`
`support transfer—one of the named inventors on all asserted patents resides in NDCA, and all
`
`other named inventors reside in Washington.
`
`
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`1
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`6
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`

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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 7 of 21
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`
`
`
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`Similarly, the only potentially relevant third parties Apple has identified so far
`
`
`
` are either in NDCA or are otherwise
`
`outside of WDTX’s subpoena power. As such, Apple has not identified any relevant persons or
`
`entities, including third parties, with connections to Texas.
`
`
`
`Because all factors either favor transfer or are neutral, and no factor favors keeping this
`
`case in WDTX, this case should be transferred to NDCA.
`
`II.
`
`STATEMENT OF FACTS
`
`A.
`
`Resonant Accuses Features Developed by Apple Almost Entirely in NDCA
`
`Resonant filed this patent infringement suit in WDTX against Apple on June 1, 2023,
`
`alleging infringement of U.S. Patent Nos. 8,093,767, 8,860,337, 9,941,830, and 11,152,882 (the
`
`“Asserted Patents”). First Amended Complaint, Dkt. No. 20 (“FAC”) at ¶ 1. Specifically,
`
`Resonant accuses “Apple products with Taptic Engine technology, including without limitation
`
`iPhone products, MacBook products, and Apple Watch products” of infringing the Asserted
`
`Patents. FAC at Ex. 2 at 1, Ex. 4 at 1, Ex. 6 at 1, Ex. 8 at 1; see also FAC at ¶¶ 10, 16, 22, 28.
`
`Since its founding in 1976, Apple has been headquartered in Cupertino, California (in
`
`NDCA) and employs more than 36,000 people statewide. See Ex. 1 at 1; Ex. 2 at 3; FAC at ¶ 3.
`
`Apple’s management, primary research and development, and marketing facilities are all in
`
`NDCA. See Ex. 1 at 1; Ankenbrandt Decl. at ¶ 5; Zhang Decl. at ¶¶ 4–8; Spevak Decl. at ¶ 4.
`
`Apple engineers who research, design, develop, and implement the Taptic Engines in the accused
`
`products are almost all in California, and nearly all reside and work in NDCA from Apple’s
`
`headquarters. Zhang Decl. at ¶¶ 4–8. The engineers who do not work in NDCA are almost all in
`
`, California. Id. The one engineer who works outside of California resides in
`
`.
`
`Id. Nearly all Apple employees involved with Apple’s patent licensing as well as those
`
`knowledgeable about sales and financial information for the accused products likewise reside and
`
`2
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`7
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`

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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 8 of 21
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`
`
`work in NDCA. Ankenbrandt Decl. at ¶ 5; Spevak Decl. at ¶ 4. The list below identifies Apple
`
`employees with relevant information in this case and the likely subject matter of their testimony.
`
`•
`
` teams are responsible for and have knowledge of the research,
` engineers across
`design, development, and implementation of the Taptic Engines in the accused products.
`Zhang Decl. at ¶¶ 4–8. Of those,
` engineers reside and work in NDCA,
`
`. Id. None are in Texas. Id. None
`routinely travel to Texas for work, nor do any work with anyone in Texas. Id. at ¶ 9.
`
`• Brian Ankenbrandt is a Senior Manager at Apple and is knowledgeable about Apple’s
`intellectual property licensing practices relevant to this case. Ankenbrandt Decl. at ¶¶ 1,
`4. Mr. Ankenbrandt is in NDCA. Id. at ¶ 1.
`
`• Catherine Spevak is a Finance Manager at Apple and is knowledgeable about sales and
`financial information regarding the accused products. Spevak Decl. at ¶¶ 1, 4. Ms. Spevak
`is in NDCA. Id. at ¶ 1.
`
`• Robin Goldberg is a Discovery Manager at Apple who is knowledgeable about Apple’s
`inventory of potential prior art products. Goldberg Decl. at ¶¶ 1, 3. Ms. Goldberg is in
`NDCA. Id. at ¶ 1.
`
`Hence, at least
`
` Apple employees with relevant knowledge reside in NDCA and
`
`
`
`. While there may be Apple store employees in WDTX with general knowledge about the
`
`sales of the accused produces in WDTX, those individuals do not have any unique knowledge
`
`relevant to this case and were not involved in the design or development of the Taptic Engines in
`
`the accused products; Apple therefore has not identified any as a relevant witness in this case.
`
`Moreover, Apple’s investigation has not identified anyone with relevant information about the
`
`Taptic Engines in the accused products in WDTX. See Ankenbrandt Decl. at ¶ 5; Zhang Decl. at
`
`¶ 9; Spevak Decl. at ¶ 4.
`
`Similarly, the electronic and paper records related to the development of the Taptic Engines
`
`in the accused products are predominantly generated from, stored in, and/or accessible from
`
`NDCA. Zhang Decl. at ¶ 10. The financial and licensing documents relevant to this case are
`
`likewise located primarily in NDCA. Spevak Decl. at ¶ 4; Ankenbrandt Decl. at ¶ 6. Apple is not
`
`aware of any relevant, unique documents located in Texas. See id.; Zhang Decl. at ¶ 10.
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`3
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`8
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`

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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 9 of 21
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`
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`In short, Apple’s anticipated witnesses and relevant documents are almost all in California
`
`and highly concentrated in NDCA. No anticipated witness, document, or evidence is in WDTX.
`
`B.
`
`Resonant is a Washington Company with No Apparent Ties to Texas
`
`According to the First Amended Complaint, Resonant is “a corporation organized and
`
`existing under the laws of the state of Washington, with a place of business at 520 South King
`
`Street, Seattle, Washington 98104.” FAC, ¶ 2. Robin Elenga, Resonant’s founder and president,
`
`appears to be based in Seattle, Washington. Ex. 3 at 1. Mr. Elenga is a named inventor on all four
`
`Asserted Patents, and the lead inventor on three. Resonant is a patent holding company, and its
`
`only apparent operations consist of attempted licensing and litigation related to the Asserted
`
`Patents and related patents. See, e.g., Ex. 4 at 1 (a research company’s report on RevelHMI,
`
`showing a total of six employees including the founder); Ex. 5 at 1 (Resonant’s Crunchbase profile,
`
`indicating between 1–10 employees); Ex. 6 (Resonant’s official website—linked on its LinkedIn
`
`and Crunchbase profiles—which is blank); see also, generally FAC (Resonant’s FAC provides no
`
`description of its business other than patent ownership). Resonant does not appear to design or
`
`manufacture any product, let alone any product that practices the Asserted Patents. See id. Thus,
`
`Resonant’s relevant witnesses and documents appears to be only in Washington, and Resonant has
`
`no apparent ties to WDTX or Texas.
`
`C. Many Third Party Witnesses are in NDCA and None are in WDTX
`
`Relevant third parties are located in NDCA including: one named inventor of the asserted
`
`patents (Brian Marc Pepin), Ex. 7, and
`
`
`
`, Zhang Decl. at ¶ 11.
`
`Apple’s investigation has failed to identify a relevant third party located in WDTX.
`
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`4
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`9
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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 10 of 21
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`
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`III. LEGAL STANDARD
`
`“For the convenience of parties and witnesses, in the interest of justice, a district court may
`
`transfer any civil action to any other district or division where it might have been brought.” 28
`
`U.S.C. § 1404(a). The movant must show “good cause” by demonstrating that the “transferee
`
`venue is clearly more convenient” than the transferor district. In re Volkswagen of Am., Inc., 545
`
`F.3d 304, 315 (5th Cir. 2008) (“Volkswagen II”).
`
`In evaluating convenience, the district court weighs both private and public interest
`
`factors.1 In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). The private
`
`factors include: “(1) the relative ease of access to sources of proof; (2) the availability of
`
`compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing
`
`witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and
`
`inexpensive.” Id. The public interest factors include: “(1) the administrative difficulties flowing
`
`from court congestion; (2) the local interest in having localized interests decided at home; (3) the
`
`familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary
`
`problems of conflict of laws of the application of foreign law.” Id.
`
`The convenience of the witnesses is the most important factor. See In re Genentech, Inc.,
`
`566 F.3d 1338, 1343 (Fed. Cir. 2009); Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P., No. 6:15-CV-
`
`00091, 2016 WL 6909479, at *7 (W.D. Tex. Jan. 28, 2016). Thus, the proposed transferee forum
`
`is “clearly more convenient” where, as here, most potential witnesses and relevant evidence are in
`
`the transferee district and few or none are in the transferor venue. In re Nintendo Co., Ltd., 589
`
`F.3d 1194, 1198 (Fed. Cir. 2009); see also In re Hoffman-La Roche Inc., 587 F.3d 1333, 1336–37
`
`
`
`1 The plaintiff’s choice of venue is not a distinct factor in the analysis. Volkswagen II, 545 F.3d at
`314–15. Nor is the location of counsel. Volkswagen I, 371 F.3d at 206.
`
`5
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`10
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`

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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 11 of 21
`
`
`
`(Fed. Cir. 2009); In re Juniper Networks, Inc., 14 F.4th 1313, 1323 (Fed. Cir. 2021); In re
`
`TracFone Wireless, Inc., 852 F. App’x 537 (Fed. Cir. 2021); In re Apple Inc., 979 F.3d 1332
`
`(Fed. Cir. 2020); In re Adobe Inc., No. 2020-126, 2020 WL 4308164 (Fed. Cir. Jul. 28, 2020);
`
`USTA Tech., LLC v. Google LLC, Case No. W-22-CA-01214-XR, 2023 WL 4833481, at *3–4
`
`(W.D. Tex. July 26, 2023) (granting motion to transfer venue); Collaborative Agreements, LLC.
`
`v. Adobe Sys. Inc., No. 1-14-CV-356, 2015 WL 10818739 (W.D. Tex. Aug. 21, 2015).
`
`IV. NDCA IS CLEARLY MORE CONVENIENT THAN WDTX
`
`A.
`
`This Case Could Have Been Brought in NDCA
`
`A patent infringement case “may be brought in the judicial district where the defendant
`
`resides.” 35 U.S.C. § 1400(b). And a corporate defendant “resides” in its state of incorporation.
`
`TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017). Thus, this case
`
`could have been brought in NDCA because Apple is incorporated in California. FAC, ¶ 3.
`
`B.
`
`The Private Interest Factors Favor Transfer
`
`The private interest factors strongly favor transfer because the relevant witnesses and
`
`evidence are almost all in NDCA and none are in WDTX.
`
`1.
`
`Relative Ease of Access to Sources of Proof Strongly Favors Transfer
`
`“In patent infringement cases, the bulk of the relevant evidence usually comes from the
`
`accused infringer. Consequently, the place where the defendant’s documents are kept weighs in
`
`favor of transfer to that location.” Genentech, 566 F.3d at 1345. “In determining the ease of access
`
`to sources of proof, the Court will look to the location where the allegedly infringing products
`
`were researched, designed, developed and tested.” XY, LLC v. Trans Ova Genetics, LC, No. W-
`
`16-CA-00447-RP, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5, 2017).
`
`Here, almost all research, design, development, and implementation of the accused features
`
`occurred or presently occurs in NDCA, at or near Apple’s Cupertino headquarters. See Zhang
`
`6
`
`11
`
`

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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 12 of 21
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`
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`Decl. at ¶¶ 4–8. NDCA is the primary location where Apple engineers developed the Taptic
`
`Engine, as well as the accused products more generally, and it is also where the engineers who
`
`work on the Taptic Engine today now reside. Zhang Decl. at ¶¶ 4–8. Accordingly, electronic
`
`documents and source code relating to the Taptic Engines in the accused products were
`
`predominantly generated in and are accessed from NDCA. Zhang Decl. at ¶ 10. For the same
`
`reason, physical evidence, including Apple’s prototypes and potential prior art products relevant
`
`to Apple’s invalidity defenses, are stored in NDCA.2 Id.; Goldberg Decl. at ¶ 3. Likewise, Apple’s
`
`financial documents relating to sales of the accused products, as well as Apple’s patent license
`
`agreements, are predominantly generated in and accessed from NDCA. Spevak Decl. at ¶ 4;
`
`Ankenbrandt Decl. at ¶ 6. In addition, third parties with potentially relevant documents, including
`
`a named inventor of all Asserted Patents and
`
` are in NDCA. See
`
`supra Section II.C. This also weighs in favor of transfer. See Koss Corp. v. Plantronics, Inc., No.
`
`6:20-CV-00663-ADA, 2021 WL 2075685, *3 (W.D. Tex. May 20, 2021) (“[Movant]’s showing
`
`that additional, third-party documents . . . are located in NDCA further tips the scales in favor of
`
`transfer.”). As such, nearly all the relevant sources of proof are in NDCA.
`
`
`
`Importantly, Apple is not aware of any relevant sources of proof uniquely in WDTX or
`
`Texas. None of Apple’s work relating to the accused technology was performed in WDTX. See
`
`Zhang Decl. at ¶¶ 9–10; Spevak Decl. at ¶ 4; Ankenbrandt Decl. at ¶ 6. Moreover, Resonant does
`
`
`
`2 For example, under Resonant’s apparent theory of infringement for claim 1 of the ’830 Patent,
`FAC at Ex. 6, and upon information and belief, Apple’s iPhone 4 and iPhone 4S each has a linear
`resonance actuator with a housing, a moveable component, a power supply, user-input features, a
`driving component that drives the moveable component to oscillate within the housing; and a
`control component that controls supply of power from the power supply to the driving component
`to cause the moveable component to oscillate at a frequency and an amplitude specified by one or
`more stored values.
`
`7
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`12
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`

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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 13 of 21
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`
`
`not allege that the claimed invention of the Asserted Patents was developed in WDTX. And there
`
`is no indication that Resonant practices any of the asserted patents in WDTX (or anywhere else).
`
`The only tie to Texas Resonant has identified is several Apple office locations in Texas
`
`(FAC at ¶ 7), but these are irrelevant to the issues in this case. See In re Apple Inc., No. 2022-128,
`
`2022 WL 1196768, at *3 (Fed. Cir. Apr. 22, 2022), cert. denied sub nom. CPC Pat. Techs. PTY
`
`Ltd. v. Apple Inc., 143 S. Ct. 206, 214 L. Ed. 2d 80 (2022) (“[A] party’s ‘general presence in a
`
`particular district’ does not alone ‘give that district a special interest in the case.’” (internal citation
`
`removed)). Sources of proof must be “relevant to the issues in this case” to affect the transfer
`
`analysis. USTA, 2023 WL 4833481 at *5. Here, there are no unique sources of proof relevant to
`
`this case in those offices. See Zhang Decl. at ¶ 10; Spevak Decl. at ¶ 4; Ankenbrandt Decl. at ¶ 6.
`
`Even if, hypothetically, some tidbits of relevant information are in WDTX that Apple’s
`
`investigation so far has not uncovered, “[t]he mere presence of records in both the NDCA and the
`
`WDTX does not render this factor neutral. The quantity and substance of [Apple]’s documents
`
`bearing on the accused instrumentalities, which are created and maintained in the NDCA, are of
`
`significantly greater importance to the transfer analysis.” Id.; see also Apple, 979 F.3d at 1339–
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`40 (“[M]ovant need not show that all relevant documents are located in the transferee venue to
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`support a conclusion that the location of relevant documents favors transfer.”).
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`Given that NDCA is the center of the relevant sources of proof and WDTX has no known
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`unique sources of proof, this factor clearly favors transfer.
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`2.
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`Availability of Compulsory Process Favors Transfer
`
`The availability of compulsory process also favors transfer in this case. See In re Acer Am.
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`Corp., 626 F.3d 1252, 1255 (Fed. Cir. 2010) (stating a court’s ability to compel testimony and the
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`production of documents through its subpoena power is “an important factor in the § 1404(a)
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`calculus.”). The compulsory process factor focuses on “non-party witnesses whose attendance
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`may need to be secured by a court order.” Fintiv, Inc. v. Apple Inc., No. 6:18-CV-00372-ADA,
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`2019 WL 4743678, at *5 (W.D. Tex. Sept. 13, 2019) (citing Volkswagen II, 545 F.3d at 316). This
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`factor “weigh[s] heavily in favor of transfer when more third-party witnesses reside within the
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`transferee venue than reside in the transferor venue.” In re Apple, Inc., 581 F. App’x 886, 889
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`(Fed. Cir. 2014); Hoffman-La Roche, 587 F.3d at 1337–38.
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`A court may subpoena a witness to attend trial only (a) “within 100 miles of where the
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`person resides, is employed, or regularly transacts business in person” or (b) “within the state
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`where the person resides, is employed, or regularly transacts business in person, if the person . . .
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`is commanded to attend a trial and would not incur substantial expense.” Fed. R. Civ. P.
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`45(c)(1)(A), (B); Gemalto S.A. v. CPI Card Grp. Inc., No. 15-CA-0910, 2015 WL 10818740, at
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`*4 (W.D. Tex. Dec. 16, 2015). Moreover, the ability to compel live trial testimony is crucial for
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`evaluating a witnesses’ credibility. Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992).
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`Here, the availability of compulsory process clearly favors transfer because several
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`potentially relevant third-party witnesses are in NDCA, and none are in WDTX. See supra Section
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`II.C.; In re Hulu LLC, No. 2021-142, 2021 WL 3278194, *4 (Fed. Cir. Aug. 2, 2021) (finding this
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`factor favors transfer where “multiple third-party witnesses . . . are overwhelmingly located within
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`the subpoena power of only the transferee venue”); In re Google LLC, No. 2023-101, 2023 WL
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`1425780, *3 (Fed. Cir. Feb. 1, 2023) (finding that eleven witnesses in the transferee district versus
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`three witnesses in the transferor district weighs “firmly” in favor of transfer); USTA, 2023 WL
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`4833481 at *4–5 (similar).
`
`At least
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` potentially relevant non-party witnesses are subject to compulsory process in
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`the NDCA District Court, which has subpoena power over individuals in California. See In re
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`Apple Inc., No. 2021-181, 2021 WL 5291804, *3 (Fed. Cir. Nov. 15, 2021) (noting that third
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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 15 of 21
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`
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`parties with office in California are subject to NDCA’s subpoena power). One is Brian Marc
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`Pepin, a named inventor on all Asserted Patents, who resides in NDCA. See supra Section II.C.
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`The other
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` non-party witnesses are
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`
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`. See supra Section II.C.
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`Because the NDCA has usable subpoena power over the third-party witnesses likely to
`
`possess relevant information in this case, and WDTX does not, this factor clearly weighs in favor
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`of transfer. See Genentech, 566 F.3d at 1345 (“The fact that the transferee venue is a venue with
`
`usable subpoena power here weighs in favor of transfer, and not only slightly.”).
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`3.
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`Convenience of Witnesses Strongly Favors Transfer
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`The convenience of witness factor is “probably the single most important factor in [the]
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`transfer analysis.” Genentech, 566 F.3d at 1343. “When the distance between an existing venue
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`for trial . . . and a proposed venue under § 1404(a) is more than 100 miles, the factor of
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`inconvenience to witnesses increases in direct relationship to the additional distance to be
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`traveled.” Volkswagen I, 371 F.3d at 204–05.
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`The convenience of witnesses strongly favors transfer in this case, as nearly all Apple
`
`witnesses and third-party witnesses are in NDCA, and no relevant witness is in WDTX. See supra
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`Section II; see also, e.g., TracFone, 852 F. App’x at 539–40; Apple, 979 F.3d at 1341–42; In re HP
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`Inc., No. 2018-149, 2018 WL 4692486, at *3 (Fed. Cir. Sept. 25, 2018); Genentech, 566 F.3d at
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`1343; Via Vadis, LLC v. Netgear, Inc., No. 14-cv-809, 2015 WL 10818675, at *2 (W.D. Tex. July
`
`30, 2015); Datascape, Ltd. v. Dell Techs., Inc., No. 6:19-cv-00129-ADA, 2019 WL 4254069
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`(W.D. Tex. June 7, 2019); Uniloc USA, Inc. v. Apple Inc., No. A-18-CV-990-LY, 2019 WL
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`2066121, at *3 (W.D. Tex. Apr. 8, 2019); Polaris Innovations, 2016 WL 7077069, at *9;
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`InfoGation Corp. v. Google LLC, No. 6:20-CV-00366-ADA, 2021 WL 5547070, at *4 (W.D. Tex.
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`Apr. 29, 2021).
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`15
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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 16 of 21
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`
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` the engineers involved in, or knowledgeable about, research, design,
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`development, and implementation of the Taptic Engines in the accused products are in California,
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`and nearly all are in NDCA. See supra Section II.A. Apple personnel with relevant knowledge
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`about licensing, finance, and potential prior art are also in NDCA. Id. And a named inventor of
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`each Asserted Patent is in NDCA. See supra Section II.C.
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`Each of these witnesses is a short car ride from the NDCA courthouse (e.g., 15 minutes
`
`from San Jose), but more than 1,000 miles (as the crow flies) from Midland, Texas, with no direct
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`flights available. See Exs. 8–9. If this case proceeds in WDTX, testifying will require Apple’s
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`NDCA witnesses to fly for at least six hours, including at least one layover. Id. That estimate
`
`does not account for time traveling to and from airports, waiting at the airports, renting cars or
`
`finding rides, and traveling to and from hotels.
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` the few
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`Resonant witnesses in Washington can take a direct, 1.5- or 2-hour flight to NDCA, respectively,
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`but would have comparable burdens to NDCA witnesses if required to testify in WDTX. Compare
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`Exs. 10–11 with Exs. 12–13.
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`This travel burden is not insignificant and has been cited as a key reason why transfer is
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`often appropriate. See, e.g., Volkswagen II, 545 F.3d at 317 (witnesses may suffer “personal costs
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`associated with being away from work, family and community”); In re Acer, 626 F.3d at 1255
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`(noting that requiring multiple employees of a party to travel from NDCA to Eastern Texas would
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`“incur significant expenses for airfare, meals, and lodging, as well as losses in productivity from
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`time spent away from work”); Apple, 979 F.3d at 1341–42 (“Additional distance means additional
`
`travel time; additional travel time increases the probability for meal and lodging expenses; and
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`additional travel time with overnight stays increases the time which these fact witnesses must be
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`away from their regular employment. Furthermore, the task of scheduling fact witnesses so as to
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`Case 7:23-cv-00077-DC Document 37 Filed 10/10/23 Page 17 of 21
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`minimize the time when they are removed from their regular work or home responsibilities gets
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`increasingly difficult and complicated when the travel time from their home or work site to the
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`court facility is five or six hours one-way as opposed to 30 minutes or an hour.”).
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`Hence, the most important factor in the transfer analysis—the convenience of the
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`witnesses—clearly