Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 1 of 19 PageID #: 19283
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`WI-LAN INC.,
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`MEMORANDUM OPINION AND ORDER
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`
`INTRODUCTION
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`Pending before the Court is the Defendants’ Motion to Sever and Transfer Venue to United
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`States District Court for the Southern District of California (Dkt. No. 130) and Sierra Wireless
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`America, Inc.’s Supplemental Motion to Sever and Transfer Venue to United States District Court
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`for the Southern District of California (Dkt. No. 144). The Court held a hearing on December 14,
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`2012 and heard argument on both motions. The Moving Defendants1 seek to sever Exedea, Inc.
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`out of the consolidated action, to stay the severed out Exedea action, and to transfer the Plaintiff’s
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`claims against the Moving Defendants to the Southern District of California (SDCA). Sierra joins
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`in the Moving Defendants’ motion to sever and transfer, and additionally moves to be severed into
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`a separate case.
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`
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`1 The Moving Defendants are collectively Apple Inc., Alcatel-Lucent USA Inc., Hewlett-Packard Company, HTC
`Corporation, HTC America, Inc., Kyocera Communications, Inc., Novatel Wireless, Inc., Sierra Wireless America,
`Inc., and Dell Inc.
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`1
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` CASE NO. 2:11-CV-68-JRG
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` CONSOLIDATED WITH
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` CASE NO. 2:12-cv-600-JRG
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`§§§§§§§§§§
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`I.
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`
`v.
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`HTC CORP., et al.,
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`
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`Plaintiff,
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`Defendants.
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`

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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 2 of 19 PageID #: 19284
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`Wi-LAN sued HTC Corp., HTC America, and Exedea in the Marshall Division on
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`February 2, 2011 (the “HTC Action”). See Cause No. 2:11-cv-68. On August 23, 2011,
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`Defendants HTC Corp., HTC America, and Exedea filed a motion to change venue to the Western
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`District of Washington. See Dkt. No. 20. That motion was denied by this Court. See Dkt. No. 92.
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`Then, on September 1, 2011, Wi-LAN filed a second suit against HTC America and the other
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`seven Moving Defendants in the Tyler Division (the “Apple Action”). See Wi-LAN v. Apple Inc., et
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`al., Cause No. 2:11-cv-453. On February 21, 2012, the defendants in the Apple Action filed a
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`Motion to Transfer Venue from the Tyler Division to SDCA. The Apple Action was subsequently
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`transferred to the Marshall Division under the first-to-file rule on September 14, 2012, and the
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`motion to transfer to SDCA was denied without prejudice. The two cases were consolidated into
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`this action for all pretrial purposes, except for venue, on October 10, 2012.
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`III.
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`SEVERANCE OF EXEDEA
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`The Court first considers the Moving Defendants’ request to sever and stay Exedea (the
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`“Severance Motion”). The Moving Defendants contend that they were improperly joined with
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`Exedea in this lawsuit under In re EMC (In re EMC I), 677 F.3d 1351 (Fed. Cir. 2012) and Rule 20.
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`They are argue that Exedea was nothing more than a “paper” company with no employees that
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`functioned simply to import a single third-party product and transfer title of that product to a
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`distribution center on behalf of HTC. The Moving Defendants argue that their accused products
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`and processes are different from Exedea’s because Exedea has no sales operations and make none
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`of its own products. They also contend that severance and a stay is appropriate because Exedea is
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`no longer an active company and, in addition, Exedea has agreed to be bound by any judgment
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`2
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 3 of 19 PageID #: 19285
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`against HTC in this case.
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`In response, Wi-LAN contends that Defendants’ Severance Motion is procedurally
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`defective—namely, that the motion to sever is (1) untimely because the facts on which the
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`severance argument is based have been known since the HTC Action was filed, and (2) that the
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`Defendants in the Apple action have no standing to seek severance of Exedea, who is not a party in
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`their case. The Court will address the timeliness of the severance argument with the issue of
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`transfer.
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`The Court agrees with Wi-LAN on the issue of standing because a consolidation of two
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`similar cases under Rule 42 does not merge the two suits “into a single cause, or change the rights
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`of the parties, or make those who are parties in one suit parties in another.” Johnson v. Manhattan
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`Ry Co., 289 U.S. 479, 496-97 (1933). Only HTC Corp. and HTC America may move to sever
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`Exedea from their case. By joining the Severance Motion, the Defendants in the Apple action are
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`essentially asking the Court to undo the Consolidation Order because of Exedea.2 The Court is not
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`persuaded to do so. Instead, the Court construes the Severance Motion as brought by HTC Corp.
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`and HTC America only.
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`In the In re EMC I opinion, the Federal Circuit clarified the test for joinder by holding that
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`“[c]laims against independent defendants (i.e., situations in which the defendants are not acting in
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`concert) cannot be joined under Rule 20’s transaction-or-occurrence test unless the facts
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`underlying the claim of infringement asserted against each defendant share an aggregate of
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`operative facts.” 677 F.3d at 1359. In addition, “joinder is not appropriate where different products
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`or processes are involved.” Id. “Unless there is an actual link between the facts underlying each
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`2 The Consolidation Order states that the cases are consolidated “for all pretrial issues (except venue).” (Dkt. No.
`107.)
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`3
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 4 of 19 PageID #: 19286
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`claim of infringement, independently developed products using differently sourced parts are not
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`part of the same transaction, even if they are otherwise coincidentally identical.” Id. Under Rule
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`20, joinder is proper where: (1) the claims against the defendants arise out of the “same
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`transaction, occurrence, or series of transactions or occurrences,” and (2) there is a “question of
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`law or fact common to all defendants.” Id. at 1356.
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`Wi-LAN filed the HTC Action against HTC Corp., HTC America, and Exedea, Inc. on
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`February 2, 2011, with allegations that certain HTC products infringe its patents. HTC Corp., HTC
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`America, and Exedea, Inc. are all part of the same HTC corporate family and the allegedly
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`infringing activities all involve a common supply chain in which Exedea plays a critical role. HTC
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`Corp., located in Taiwan, manufactured and designed the Nexus One Phone and shipped the phone
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`to the U.S. See Dkt. No. 154, Ex. H2 (Maron Dep.) at 87:2-88:18; 92:3-93:15; 164:12-165:21.
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`Exedea accepted the shipment, signed for it, took title to the phones and ensured that the phones
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`arrived at the sole distributor, Brightpoint in Indiana. Id. at 87:2-88:18; 90:19-91:5; 92:3-93:15;
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`94:11-18. HTC America was then responsible for marketing and selling the HTC phones
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`manufactured by HTC Corp. and delivered to Brightpoint by Exedea. Id. at 164:12-165:21;
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`166:18-167:2. This series of steps constituting the HTC supply chain was created and implicated
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`as part of the HTC corporate family’s marketing strategy. No one has seriously claimed that
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`Exedea is an independent entity and not part and parcel of the HTC corporate group.
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`The facts underlying the claim of infringement asserted against each HTC Defendant share
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`an aggregate of operative facts adequate to meet Rule 20’s transaction-or-occurrence test. The
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`HTC Defendants are all part of the same corporate family that together manufactured, distributed,
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`and sold the same accused products. As a result, the Court is persuaded that these facts fall within
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`4
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 5 of 19 PageID #: 19287
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`the guidance of In re EMC I; thus, joinder of the HTC Defendants is appropriate in this case.
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`Accordingly, the request of HTC Corp. and HTC America for severance of Exedea is DENIED.
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`As a consequence of this holding, the Moving Defendants’ request to stay the case as to Exedea is
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`MOOT.
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`IV.
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`TRANSFER OF THE HTC ACTION
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`Having denied severance of Exedea from the HTC Action, the Court now turns to whether
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`the HTC Action should be transferred to SDCA.3 The initial question in applying the provisions of
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`§ 1404(a) is whether the suit could have originally been brought in the proposed transferee district.
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`In re Volkswagen AG (Volkswagen I), 371 F.3d 201, 203 (5th Cir. 2004). For purposes of venue, a
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`corporation is deemed to reside in any district where it is subject to personal jurisdiction. 28 U.S.C.
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`§ 1391(c).
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`HTC Corporation is organized and existing under the laws of Taiwan and has its principal
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`place of business in Taoyuan, Taiwan. HTC America, Inc., a subsidiary of HTC Corp., is a
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`Washington corporation with its principal place of business in Bellevue, Washington. Exedea, Inc.
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`is now dissolved, but it was formerly a corporation organized under the laws of Texas. Exedea’s
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`sole function within the HTC corporate structure was to take title to imported phones from
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`overseas before transferring them to a third-party distribution center in Indiana. Exedea’s
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`corporate dissolution occurred during the pendency of this lawsuit and, according to Texas law, its
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`existence continues for the purposes of this suit and the present motion to transfer. See TEXAS
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`BUSINESS ORGANIZATIONS CODE § 11.356.
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`3 Pursuant to the Consolidation Order and Rule 42, the Court considers the Moving Defendants’ motion to transfer
`venue to SDCA separately for each consolidated action.
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`5
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 6 of 19 PageID #: 19288
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`Neither Moving Defendants nor HTC Defendants provide argument on whether the HTC
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`Action could have been originally brought in SDCA with Exedea as a party. Instead, the Moving
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`Defendants relied on the strength of their motion to sever and dismissed the possibility of an
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`alternative outcome. See Dkt. No. 130 at 7 (“Because Exedea should be severed from the Moving
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`Defendants, it is not necessary to show that personal jurisdiction [in SDCA] exists over Exedea.”).
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`This is HTC Defendants’ second bite at the apple seeking to transfer this case from the Eastern
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`District of Texas (“EDTX”). This Court previously denied a motion to transfer to the Western
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`District of Washington filed by the HTC Defendants due to Exedea’s lack of activities in that
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`district. The Court explained in its earlier Order that “[t]estimony from HTC’s own 30(b)(6)
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`witness makes it clear that Exedea provided nothing more than ‘inventory management services’
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`in connection with the shipment of Nexus One phones from Google’s manufacturer (HTC Corp. in
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`Taiwan) to Google’s distributor (Brightpoint in Indiana).” Dkt. No. 92, at 5 (citations omitted).
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`None of the parties claim that those facts and circumstances have changed. Although this motion
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`was filed almost two years after the Complaint and more than a year after the first transfer motion,
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`HTC Defendants provide less evidence now than they did before attempting to show that SDCA
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`has a stronger jurisdictional claim over Exedea than the Western District of Washington. As a
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`result, the Court finds that the HTC Defendants have failed to provide even a scintilla of evidence
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`to overcome the initial jurisdictional threshold question. While the delay in seeking transfer to
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`SDCA is significant in this instance and would likely weigh against transfer in a § 1404(a)
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`analysis, no such assessment needs to be made since the initial threshold has not been crossed by
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`movants.
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`6
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 7 of 19 PageID #: 19289
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`Indeed, the record reflects that the Moving Defendants are keenly aware of the problems
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`Exedea poses to their transfer request. When the Court inquired why Exedea should be severed out
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`without also severing out HTC (since their accused infringement relates to the same products),
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`Defendants admitted that “the main reason is because it helps with the transfers.” 12/14/2012 Tr. at
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`85:17-18. The HTC Defendants have failed to satisfy the threshold question of whether this action
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`could have originally been brought in SDCA. This was the HTC Defendants’ burden and they have
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`failed to meet it, instead opting to rely on securing a severance, which has now been denied.
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`Accordingly, transfer of the HTC Action to SDCA is DENIED.
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`V.
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`TRANSFER OF THE APPLE ACTION
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`The Court now separately considers whether the Apple Action should be transferred to
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`SDCA. Change of venue is governed by 28 U.S.C § 1404(a). Under § 1404(a), “[f]or the
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`convenience of parties and witnesses, in the interest of justice, a district court may transfer any
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`civil action to any other district court or division where it might have been brought.” 28 U.S.C. §
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`1404(a). However, a motion to transfer venue should only be granted upon a showing that the
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`transferee venue is “clearly more convenient” than the venue chosen by the plaintiff. In re
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`Nintendo Co., 589 F.3d 1194, 1197 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1388, 1342
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`(Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008); In re
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`Volkswagen of America, Inc. (Volkswagen II), 545 F.3d 304, 315 (5th Cir. 2008).
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`The initial question in applying the provisions of § 1404(a) is whether the suit could have
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`originally been brought in the proposed transferee district. Volkswagen I, 371 F.3d at 203. If the
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`transferee district is a proper venue, then the court must weigh the relative public and private
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`factors of the current venue against the transferee venue. Id. In making such a convenience
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`7
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 8 of 19 PageID #: 19290
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`determination, the Court considers several private and public interest factors, none of which are
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`given dispositive weight. Id. The private interest factors include: “(1) the relative ease of access to
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`sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses;
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`(3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial
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`of a case easy, expeditious and inexpensive.” Nintendo, 589 F.3d at 1198; Genentech, 566 F.3d at
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`1342; TS Tech., 551 F.3d at 1319; Volkswagen II, 545 F.3d at 315. The public interest factors
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`include: “(1) the administrative difficulties flowing from court congestion; (2) the local interest in
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`having localized interests decided at home; (3) the familiarity of the forum with the law that will
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`govern the case; and (4) the avoidance of unnecessary problems of conflict of laws [in] the
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`application of foreign law.” Nintendo, 589 F.3d at 1198; Genentech, 566 F.3d at 1342; TS Tech.,
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`551 F.3d at 1319; Volkswagen II, 545 F.3d at 315.
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`a.
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`Proper Venue
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`The Moving Defendants contend that they are each subject to personal jurisdiction in
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`SDCA either because they reside in the district, or offer for sale, or sell accused products in that
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`district, to have contacts sufficient to establish jurisdiction there. Wi-LAN does not argue to the
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`contrary. Therefore, the initial threshold in this case has been met and analysis of the public and
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`private interests cited above must next be considered and weighed.
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`b.
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`Private Interest Factors
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`i.
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`Relative Ease of Access to Sources of Proof
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`Despite technological advances in transportation of electronic documents, physical
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`accessibility to sources of proof continues to be a valid private interest factor. See Volkswagen II,
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`545 F.3d at 316; TS Tech, 551 F.3d at 1321. Indeed, the Federal Circuit has indicated that access to
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 9 of 19 PageID #: 19291
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`an alleged infringer’s proof is important to venue transfer analyses in patent infringement cases.
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`See Genentech, 566 F.3d at 1345 (“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.”).
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`The Moving Defendants who are parties to the Apple Action are Apple Inc.,
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`Alcatel-Lucent USA
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`Inc., Hewlett-Packard Company, HTC America,
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`Inc., Kyocera
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`Communications, Inc., Novatel Wireless, Inc., Sierra Wireless America, Inc., and Dell Inc.
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`(“Apple Defendants”). Kyocera was severed out of this case on March 3, 2013, and is not
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`considered to be a Moving Defendant to this motion. See Dkt. No. 287.
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`Of the seven remaining Apple Defendants, only two have headquarters within
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`SDCA—Sierra and Novatel. See Dkt. No. 130 at 8. However, Sierra Wireless America, Inc.
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`(Sierra) also stores source code and employs development engineers with knowledge of the
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`accused products outside of California, including, in Richmond, New Jersey, Canada, France,
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`Hong Kong, and China. See Dkt. No. 154, Ex. G1. Novatel Wireless, Inc. (Novatel) designs, tests,
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`and sells the majority of its accused products from offices in SDCA. However, the parties dispute
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`whether Novatel’s wholly-owned subsidiary, Enfora (located in Richardson, Texas, and which is
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`within EDTX) also has documents related to the development of the accused products.
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`Apple, Inc. (Apple) has its headquarters in the Northern District of California and also
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`operates a substantial campus in Austin, Texas. Apple’s Austin office primarily houses accounting
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`and finance documents, some of which may be relevant to damages in this case. See Dkt. No. 154,
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`Ex. E1.
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`HTC America is headquartered in Washington but retains 22 employees with offices and
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`9
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 10 of 19 PageID #: 19292
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`documents in Texas. Wi-LAN has specifically identified 8 Texas employees with information
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`relevant to the testing, performance, sales, and/or marketing of HTC accused devices. See Dkt. No.
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`154, Blackstone Decl. ¶¶73-76. HTC also identified three regional sales managers located within
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`EDTX. Id. ¶¶ 74-76. Additionally, a significant portion of HTC’s research, design and testing
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`takes place in Taiwan with its parent, HTC Corp. Id. ¶¶69-72.
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`Hewlett-Packard Company (HP) is headquartered in Palo Alto, California and also
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`maintains several facilities in Texas. HP submitted a declaration stating that the “location
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`primarily responsible for the products made or sold by HP that are identified in Plaintiff’s
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`infringement contentions is Houston, Texas.” See Dkt No. 154, Ex. D1 ¶4. Additionally, members
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`of the relevant Communications Technology team are located in both Houston, Texas and Taipei,
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`Taiwan. Id. ¶3.
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`Dell, Inc. (Dell) is headquartered in Round Rock, Texas (near Austin) and keeps its
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`operations, finance, sales, and marketing teams there. See Dkt. No. 154, Ex. C1. Although most of
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`Dell’s engineering activity is in Sunnyvale, California, or in Taiwan, some product planning and
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`engineering resources are also located in Round Rock. Id.
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`Alcatel-Lucent USA Inc. (Alcatel) maintains a 1,500 person corporate campus in Plano,
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`Texas, which is within EDTX. See Dkt No. 154, Ex. B1. Wi-LAN has specifically identified 26
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`Alcatel employees who work in the research and development area of the accused products, 25 of
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`whom are located in Plano. Id. Ex. B5 and B6. Additionally, 56 relevant sales personnel are
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`located in Texas. Id. Ex. B6 and B9. Furthermore, Alcatel’s President and Director, Treasurer, and
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`Chief Financial Officer all maintain offices and relevant documents in the EDTX in Plano. Id.
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`Blackstone Decl. ¶21.
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`10
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`Wi-LAN Inc. (Wi-LAN) is a Canadian corporation with its principal place of business in
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`Ottawa, Canada, and with its American headquarters in Florida, both of which are closer to EDTX
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`than SDCA. See Dkt. No. 154, Blackstone Decl. ¶¶5-6. Wi-LAN also has an office in Marshall,
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`Texas, which is within EDTX, and maintains most of its relevant documents in Texas as a result of
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`prior litigation. Id. ¶¶6-7. These documents include the files of Wi-LAN’s patent prosecution
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`attorneys, Mr. Dawes and Mr. Morgan, who have both indicated that they do not have any
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`additional information not already produced. See Dkt. No. 154, Ex. J1 and J2.
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`Wi-LAN’s infringement allegations also implicate third party chipmakers, and as such, the
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`Court will consider relative access to third-party sources of proof in analyzing this factor. The
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`parties have identified three relevant third-party chip suppliers: Qualcomm, Texas Instruments
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`(TI), and Sequans. Qualcomm’s corporate headquarters is located in San Diego, California.
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`Qualcomm’s Vice President of Real Estate and Facilities has submitted a declaration that
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`Qualcomm’s evidence is “either stored in or accessible from” San Diego. See Dkt. No. 130-2, ¶5.
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`TI is headquartered in Dallas, Texas, though the parties dispute whether TI’s relevant documents
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`are located in Sunnyvale, California, or Texas. Sequans is headquartered in France, and has U.S.
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`offices in Minnesota. Additionally, Wi-LAN submits that it is in the process of gathering relevant
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`third-party evidence from sources other than chipmakers, and such evidence is scattered all around
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`the United States.
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`On balance, the Court finds that Wi-LAN has shown that significant sources of proof exist
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`within or substantially close to EDTX. Six of the seven Apple Defendants maintain offices,
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`employees, or have related companies in Texas: Alcatel is based in EDTX; Novatel’s subsidiary,
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`Enfora, is located within EDTX; HP has testified their relevant documents are in Houston; Dell
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 12 of 19 PageID #: 19294
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`and Apple have large corporate campuses in Austin; and HTC has multiple employees with
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`knowledge within EDTX and throughout Texas. Moreover, four Apple Defendants have relevant
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`documentation stored overseas, which is equally inconvenient to both EDTX and SDCA. Of the
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`three third-party chip suppliers, only Qualcomm is located within SDCA, while TI is based in
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`Dallas. In support of transfer, two of the seven Apple Defendants have headquarters within SDCA
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`and two others have headquarters in other parts of California. On balance, the Apple Defendants
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`have not established that significant sources of proof exist in SDCA as compared to EDTX.
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`Accordingly, the Court finds this factor weighs against transfer.
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`ii.
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`Availability of Compulsory Process
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`The second private interest factor is the availability of compulsory process to secure the
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`attendance of non-party witnesses. A venue that has “absolute subpoena power for both deposition
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`and trial” is favored over one that does not. Volkswagen II, 545 F.3d at 316. Rule 45 of the
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`Federal Rules of Civil Procedure limits the court’s subpoena power by protecting non-party
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`witnesses who work or reside more than 100 miles from the courthouse. Id.
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`Here, the Apple Defendants have not specifically identified any non-party witness in this
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`case who is within the subpoena power of SDCA. The Apple Defendants point out that SDCA is
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`the only forum with absolute subpoena power over Qualcomm. They argue the important of this
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`fact because Qualcomm is “likely [to] supply the primary technical witnesses that will testify at
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`trial.” See Dkt. No. 130 at 11. However, the Apple Defendants are asking the Court to attribute
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`more weight based on this assertion of a potential likelihood that an un-named and otherwise
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`unidentified third-party witness may or may not be used for trial sometime in the future. Indeed,
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`there exists the equal possibility that no Qualcomm witness will testify at trial and SDCA’s
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 13 of 19 PageID #: 19295
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`absolute subpoena power will not be utilized. Absent more concrete information, the Court cannot
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`conduct a fair and meaningful analysis of whether SDCA or any other district may be more
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`convenient for non-party witnesses. It is worth recalling that the Moving Defendants bear this
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`burden to supply trustworthy and concrete information of the type missing here.
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`On the other hand, Wi-LAN has identified a scant few non-party witnesses that are within
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`the subpoena power of EDTX. These witnesses include several employees from Enfora, a
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`subsidiary of Novatel (whose relevance is still in dispute), and a former Alcatel employee in
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`Richardson, Texas. On weighing the facts, the Court finds that EDTX is only slightly stronger in
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`this regard than SDCA. Accordingly, this factor weighs slightly against transfer.
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`iii.
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`Cost of Attendance for Willing Witnesses
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`The third private interest factor is the cost of attendance for willing witnesses. “The
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`convenience of the witnesses is probably the single most important factor in a transfer analysis.”
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`In re Genentech, Inc., 556 F.3d at 1342. The Court in Volkswagen I explained:
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`[T]he factor of inconvenience to witnesses increases in direct relationship to
`the additional distance to be traveled. Additional distance means additional travel
`time; additional travel time increases the probability for meal and lodging
`expenses; and additional travel time with overnight stays increases the time which
`these fact witnesses must be away from their regular employment.
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`371 F.3d at 205. Although the court must consider the convenience of both the party and
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`non-party witnesses, “it is the convenience of non-party witnesses…that is the more important
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`factor and is accorded greater weight in a transfer of venue analysis.” Mohamed v. Mazda Motor
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`Corp., 90 F.Supp.2d 757, 775 (E.D. Tex. 2000); see also id. at 204 (requiring courts to
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`“contemplate consideration of the parties and witnesses”); Fujitsu Ltd. v. Tellabs, Inc., 639 F.
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`Supp. 2d 761, 765-66 (E.D. Tex. 2009).
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 14 of 19 PageID #: 19296
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`Here, the only third-party witnesses clearly identified by both parties are the three patent
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`prosecution attorneys: Daniel Dawes, Kevan Morgan and Ryan Dodge. Mr. Dawes resides in
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`Huntington Beach, California, and Mr. Morgan and Mr. Dodge reside in Seattle, Washington. Mr.
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`Morgan has testified that traveling to Texas would be more convenient for him than traveling to
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`San Diego. See Dkt. No. 154, Ex. J1. However, for Mr. Dawes and Mr. Dodge, SDCA would be
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`the more convenient forum for travel purposes.
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`Wi-Lan also identified two inventors of the asserted patents, Michael Fattouche and Hatim
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`Zaghloul. Both inventors submitted declarations that traveling to Texas for trial would be more
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`convenient for them than traveling to San Diego. Id. Ex. I1 and I2. Additional third parties
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`Wi-LAN identified include a participant in the 802.11 standards-setting process who resides in
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`Allen, Texas, a former Alcatel employee in Richardson, Texas, six Enfora employees in
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`Richardson, Texas, and four former Wi-LAN employees who reside in Eastern Canada. See
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`Blackstone Decl. ¶¶56, 84-49, 108, 114 115. Both Allen and Richardson, Texas are within EDTX.
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`Regarding party witnesses, the Court’s discussion of the first factor reveals that they are
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`widespread indeed and are scattered throughout California, Washington, Texas, Canada and
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`Taiwan. Whether this case moves to SDCA or stays in EDTX, the majority of party witnesses will
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`have to travel a significant distance. On balance, the Court finds this factor to be neutral.
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`iv.
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`Other Practical Problems
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`Practical problems include those that are rationally based on judicial economy. Eolas
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`Tech., Inc. v. Adobe Sys., Inc., 2010 WL 3835762, at *6 (denying a request to sever defendants),
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`aff’d In re Google, Inc., 412 Fed. Appx. 295 (Fed. Cir. 2011); see also Volkswagen II, 566 F.3d
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`1349, 1351 (Fed. Cir. 2009) (quoting Continental Grain Co. v. The FBL-585, 364 U.S. 19, 26
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 15 of 19 PageID #: 19297
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`(1960) (“[T]he existence of multiple lawsuits involving the same issues is a paramount
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`consideration when determining whether a transfer is in the interest of justice … [T]o permit a
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`situation in which two cases involving precisely the same issues are simultaneously pending in
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`different District Court leads to the wastefulness of time, energy and money that § 1404 was
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`designed to prevent.”)).
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`
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`Wi-LAN, Inc. v. Apple, Inc., et al., Cause No. 6:11-cv-453 was consolidated with Wi-LAN,
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`Inc. v. HTC Corp. et al., Cause No. 2:11-cv-68 for all pretrial issues, except venue, to promote
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`judicial economy and to conserve the parties’ resources. See Dkt. No. 107. The Court has denied
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`transfer of the HTC Action to SDCA. The Moving Defendants (with the exception of Sierra) do
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`not appear to dispute the consolidation since they jointly filed the present motion to transfer.
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`Moreover, both the Apple Action and the HTC Action share a common defendant – HTC America,
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`Inc. To transfer the Apple Action to SDCA while keeping the HTC Action here would
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`unavoidably risk duplicative proceedings between two different district courts and create the
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`inherent danger of potentially inconsistent rulings. On balance, the Court finds that the traditional
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`notions of judicial economy weigh against transfer in this case.
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`c.
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`Public Interest Factors
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`Having addressed the private interest factors in the § 1404(a) transfer analysis, the Court
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`now turns to the public interest factors.
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`i.
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`Administrative difficulties flowing from court congestion
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`The Apple Defendants submit that the difference in court congestion is neutral, while
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`Wi-LAN asserts that this case can be tried more expeditiously in Texas because the trial is set for
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`October 2013. Time to trial statistics in EDTX is 28.4 months compared to 32.5 months in SDCA.
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 16 of 19 PageID #: 19298
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`See Dkt. No. 154, Ex. O1 compared to Ex. O2. The difference of four months is not substantial and
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`typically would render this factor neutral. However, the Apple Action was filed on September 1,
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`2011, and now trial is only three months away. Even if transfer was granted when this motion was
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`filed in November 2012, trial set in SDCA would most likely be later than October 2013.
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`Accordingly, on balance, the Court finds this factor weighs against transfer.
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`ii.
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`Local interest in having localized interests decided at home
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`Both sides agree that the local interest factor is neutral.
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`iii.
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`Familiarity of the forum with the law that will govern the case
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`Wi-LAN argues this factor weighs against transfer because the counterclaims in this case
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`present complex state law questions that will be governed by Texas law. Although that may be the
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`case, the Court finds that this case primarily sounds in federal patent law. Therefore, this factor
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`weighs only slightly against transfer, or at the best for movant, is neutral.
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`iv.
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`Problems of conflict of laws
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`Similarly, Wi-LAN argues that this Court is more familiar with the Texas law that will
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`apply to the choice of forum issues presented by the counterclaims. Without getting to the merits
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`of the counterclaims, the Court finds that this factor weighs only slightly against transfer, or at the
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`best for movant, is neutral.
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`d.
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`Conclusion
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`On weighing the evidence, four factors weigh against transfer, while the other factors are
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`either slightly against transfer or are, at best for the movant, neutral. No factor clearly favors
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`transfer to SDCA. The balance of the private and public factors demonstrates that the Apple
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`Defendants have fallen short of meeting their burden to show that transfer is clearly more
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`Case 2:11-cv-00068-JRG Document 445 Filed 07/17/13 Page 17 of 19 PageID #: 19299
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`convenient.4 Accordingly, transfer to the Southern District of California is DENIED.
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`VI. SEVERANCE OF SIERRA
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`Lastly, the Court turns to Sierra’s Supplemental Motion to Sever and Transfer Venue to
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`SDCA (Dkt. No. 144). Sierra argues that joinder in the Apple Action is improper because the
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`defendants market and sell different products or processes. Sierra points out that its accused
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`products were independently developed and tested, and that the o