Case 2:17-cv-00514-JRG Document 98-13 Filed 12/27/18 Page 1 of 23 PageID #: 3634
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`Exhibit 12
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`Case 2:17-cv-00514-JRG Document 98-13 Filed 12/27/18 Page 2 of 23 PageID #: 3635
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
`INC.,
`UNILOC USA,
`LUXEMBOURG, S.A.,
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`v.
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`APPLE INC.,
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`Plaintiffs,
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`Defendant.
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` UNILOC
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`CIVIL ACTION NO. 2:17-CV-00258-JRG
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`§
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`§
`§
`§
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`§
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`§
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`MEMORANDUM ORDER AND OPINION
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`Before the Court is Defendant Apple Inc.’s Motion to Transfer Venue to the Northern
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`District of California (Dkt. No. 25). This Motion is brought pursuant to 28 U.S.C. § 1404(a).
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`Having considered the Parties’ arguments and for the reasons set forth below, the Court finds that
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`the Motion should be and hereby is GRANTED. It is therefore ORDERED that the above-
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`captioned case be transferred to the Northern District of California.
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`I.
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`BACKGROUND
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`A. The Parties
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`Plaintiff Uniloc USA, Inc. is a Texas corporation and has maintained offices in Plano since
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`2007 and in Tyler since 2009. (Dkt. No. 30 at 2–3.) Defendant Apple Inc. (“Apple”) is a California
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`corporation with a principal place of business in the Northern District of California. (Dkt. No. 25
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`at 1.)
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`B. Procedural History
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`On April 3, 2017, Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (“Uniloc”)
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`filed suit against Apple, alleging infringement of U.S. Patent Nos. 9,414,199; 8,838,976; and
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`Case 2:17-cv-00514-JRG Document 98-13 Filed 12/27/18 Page 3 of 23 PageID #: 3636
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`8,239,852. (Dkt. No. 1.) On June 16, 2017, Apple filed this Motion to Transfer Pursuant to §
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`1404(a) (“Motion to Transfer”). (Dkt. No. 25.) Five days later, Apple filed a Motion for Leave to
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`Propound Venue Discovery (“Motion to Propound”). (Dkt. No. 27.) In its Motion to Propound,
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`Apple asserted that Uniloc’s representations in its § 1404(a) briefing in this case (and in prior cases
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`before this Court) appeared “inconsistent with a host of public evidence.” (Id. at 1.) Apple
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`specifically directed the Court’s attention to discrepancies with respect to the residences of Uniloc
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`Luxembourg S.A.’s CEO and Uniloc USA, Inc.’s president. (Dkt. No. 44 at 1–2.)
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`On July 21, 2017, this Court granted Apple’s Motion to Propound, allowing for limited
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`discovery in the form of a four-hour deposition and responses to pre-approved interrogatories. (Id.)
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`The Court also granted Apple and Uniloc leave to file supplemental briefs related to venue, after
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`such discovery was completed. (Id. at 4.) The Court held a hearing on the instant Motion on
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`October 27, 2017. (Dkt. No. 88.)
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`C. Uniloc’s Representations and Contradictions
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`1. Uniloc’s Representations
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`Uniloc made the following representations in its § 1404(a) briefing prior to venue
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`discovery:
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`Uniloc represented that its principal place of business is in Plano, Texas. (Dkt. No. 30 at 2;
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`Dkt. No. 30-7, Burdick Decl. ¶ 7.) According to Uniloc’s Response, Mr. Craig Etchegoyen, the
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`CEO of Uniloc Luxembourg S.A., and Mr. Sean Burdick, Uniloc USA, Inc.’s president and general
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`counsel, have resided in Kona, Hawaii and Plano, Texas, respectively, “since well before [the date
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`of the Complaint].” (Dkt. No. 30 at 2.) Mr. Etchegoyen specifically represented in his declaration
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`in this case that as of April 3, 2017, he has not resided or maintained a residence in the State of
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`California. (Dkt. No. 36 at 1.) Similarly, according to Uniloc, Mr. Burdick does not live or work
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`in California. (Dkt. No. 43 at 2 n.3 (“Oddly, Apple also repeats its erroneous assertion that Uniloc’s
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`IP counsel lives and works in California. As stated in the Declaration of Uniloc’s IP counsel, Sean
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`Burdick, he resides and works in Plano, Texas.”) (citations omitted).) Uniloc also represented that
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`in April 2017, it had “only one” full-time employee, Tanya Kiatkulpiboone, working out of its
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`Irvine, California office. (Dkt. No. 30-7, Burdick Decl. ¶ 10.)
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`In addition to Mr. Burdick, Uniloc identified two potential witnesses who work at its Plano
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`office: Sharon Seltzer and Kristina Pangan. (Dkt. No. 30 at 8; Dkt. No. 30-7, Burdick Decl. ¶ 12.)
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`Uniloc made similar representations in its response to a § 1404(a) motion in another case before
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`this Court, Uniloc v. Apple, Case No. 2:16-cv-638 (“Apple 1”). Response to Motion to Change
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`Venue, Uniloc v. Apple, Case No. 2:16-cv-638, Dkt. No. 21, at 8 (E.D. Tex. Nov. 29, 2016)
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`(“Uniloc’s declarant identifies three potential party witnesses who work at its Plano office (its
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`President Mr. Burdick, Sharon Seltzer and Kristina Pangan).”). In its Reply (Dkt. No. 40), Apple
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`argued that Uniloc’s identification of Sharon Seltzer and Christina Pangan as party witnesses
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`carried no weight because in Apple 1, after this Court denied Apple’s motion to transfer under §
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`1404(a), Uniloc later represented to Apple that Ms. Seltzer and Ms. Pangan had “relatively little
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`information to provide.” (Dkt. No. 40-2, Ex. 33 at 29 (“Kris Pangan and Sharon Setzler [sic] each
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`have relatively little information to provide. As such, Uniloc recommends that you withdraw their
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`notices.”).) However, in its Sur-Reply (Dkt. No. 43) to the instant Motion, Uniloc insisted that Ms.
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`Seltzer and Ms. Pangan “have some relevant knowledge” in this case. (Dkt. No. 43 at 5 (“As Uniloc
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`only has four full-time employees, three of which are based in Plano, it should not be surprising
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`that Ms. Seltzer and Ms. Pangan have some relevant knowledge of Uniloc’s business.”) (citations
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`omitted).)
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`In addition to witnesses, Uniloc represented it has “physical documents relating to the
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`patents asserted in this case” at its Plano office. (Dkt. No. 30-7, Burdick Decl. ¶ 11.) In its Response
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`(Dkt. No. 3) and Sur-Reply (Dkt. No. 43), Uniloc did not explain what types of documents were
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`stored in its Plano office. (Id.) Uniloc has made these same representations with respect to Uniloc’s
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`witnesses and relevant documents before the Court in multiple cases. See, e.g., Response to Motion
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`to Change Venue, Uniloc v. Apple, Case No. 2:16-cv-638, Dkt. No. 21 (E.D. Tex. Nov. 29, 2016);
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`Declaration of Sean Burdick in Support of Plaintiff’s Opposition to Defendant VoxerNet LLC’s
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`Motion to Transfer Venue, Uniloc USA, Inc., et. al v. Voxernet LLC, Case No. 2:16-cv-644, Dkt.
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`No. 21-1, ¶ 11 (E.D. Tex. Oct. 10, 2016); Declaration of Sean Burdick in Support of Plaintiff’s
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`Opposition to Defendant’s Motion to Transfer Venue to the Northern District of California, Uniloc
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`USA, Inc., et. al v. Huawei Enterprise Inc., 6:16-cv-99, Dkt. No. 28-1, ¶ 12 (E.D. Tex. July 22,
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`2016).
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`2. Facts Revealed After Venue Discovery
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`After the Court ordered venue discovery, responses to Apple’s interrogatories and Sean
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`Burdick’s 30(b)(6) deposition revealed the following facts about Uniloc’s witnesses, places of
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`business, and relevant documents:
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`Uniloc has three offices: a Plano, Texas office, a Tyler, Texas office, and a Newport Beach,
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`California office (relocated from its prior Irvine, California office). (Dkt. No. 60-1, Ex. A at 47:14–
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`20, 57:4–10, 94:1–10.) Although Uniloc asserted on multiple occasions that Mr. Etchegoyen and
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`Mr. Burdick have not resided or maintained a residence in the State of California as of April 3,
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`2017, and filed signed declarations affirming such representations in this case, Mr. Burdick
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`testified in its 30(b)(6) deposition that Mr. Etchegoyen currently maintains a residence in Newport
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`Beach. (Dkt. No. 60-1, Ex. A at 160:3–16.) Mr. Etchegoyen uses the single-family residence in
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`Newport Beach “when he is doing business in Orange County.” (Id. at 160:15–16.) He has owned
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`this property “at least since 2010.” (Id. at 160:3–7.) Since 2017, Mr. Etchegoyen has spent about
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`twenty percent of his time in either Newport Beach or Irvine, California. (Dkt. No. 60-2, Ex. B at
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`2.) Similarly, since 2015, Mr. Burdick has spent only “about 1/3 of his time in Plano, Texas.” (Id.)
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`The remainder of his time is spent in Boise, Idaho, Newport Beach, California, and Irvine,
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`California. (Id.) Although Uniloc originally stated that it had “only one” full-time employee, Tanya
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`Kiatkulpiboone, in Irvine, California,1 (Dkt. No. 30 at 2), discovery has revealed that Mr. Drake
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`Turner, Uniloc Luxembourg’s chief financial officer, resides and works in southern California,
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`albeit from home rather than Uniloc’s Irvine and Newport Beach offices. (Dkt. No. 60-1, Ex. A at
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`153:2–154:11.) Mr. Turner, who prepares Uniloc’s financial documents and negotiates terms with
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`lending companies that have security interests in Uniloc’s patents, is in a position to have relevant
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`and material information in this case. (Dkt. No. 60-1, Ex. A at 153:2–25 (“He negotiates terms
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`with companies like Fortress that lend money.”); Order Denying Motion to Change Venue, Uniloc
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`v. Google, Case No. 2:16-cv-566, Dkt. No. 75, at 7 (E.D. Tex. May 15, 2017) (“Fortress, located
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`in the Northern District of California, has a security interest in all three [of Uniloc’s] asserted
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`patents.”).)2
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`In 2016, Uniloc’s CEO represented to Chief Judge Clark that “Uniloc USA has two
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`headquarters,” the office in Plano and the office presently located in Newport Beach (that was
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`relocated from Irvine). (Dkt. No. 25, Ex. 5 ¶ 2.) In its Response (Dkt. No. 30), Uniloc vehemently
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`insisted that Uniloc’s principal place of business is only in Plano, Texas. (Dkt. No. 30 at 1–2
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`(“Although Uniloc has been based in Plano for years, Apple attempts to exaggerate Uniloc’s ties
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`to California.”).)3 However, discovery has expanded the Court’s understanding of the use and
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`implementation of Uniloc’s Newport Beach office. According to Mr. Burdick:
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`1 Ms. Kiatkulpiboone, one of the prosecuting attorneys of the patents-in-suit, currently resides in Napa, California,
`which is in the Northern District of California. (Dkt. No. 60-1, Ex. A at 50:10–19.)
`2 In addition to Mr. Turner, an additional Uniloc Luxembourg board member, Mr. Chad Meisinger, resides in southern
`California. (Dkt. No. 60-1, Ex. A at 59:6–17.)
`3 When asked why Mr. Etchegoyen represented that Uniloc had a headquarters in California in a signed declaration in
`2016, Mr. Burdick testified that Mr. Etchegoyen “has dozens of documents to sign every day, and my belief is and my
`testimony today is that he just simply didn’t scrutinize [the declaration] as closely as he should have before authorizing
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`A. The Newport Beach office is primarily an executive office for meetings, in-
`person meetings, [and] phone conferences. We discuss at the executive levels
`the business of the company, both Uniloc USA business and Uniloc
`Luxembourg business.
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`(Dkt. No. 60-1, Ex. A at 47:14–25.) Despite Mr. Burdick’s assertion that Uniloc does not have a
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`principal place of business in southern California, he admitted that Uniloc has held around 100
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`“top-level strategy meetings” in southern California in the last three years alone. (Id. at 54:8–
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`55:11.) During these meetings, Uniloc strategizes both “for whom [Uniloc] acquires patents,” and
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`how to “negotiate and prepare for negotiations with outside counsel with other factions that do due
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`diligence for us.” (Id. at 54:20–55:10.) In addition to these management meetings, Uniloc
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`Luxembourg’s CEO holds monthly meetings in southern California with its CFO. (Id. at 175:4–
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`13.) Uniloc’s Newport Beach office “is primarily an executive office,” used for meetings to discuss
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`“at the executive levels the business of the company, both Uniloc USA business and Uniloc
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`Luxembourg business.” (Id. at 47:18–25.)
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`Discovery has revealed that there are no full-time employees working out of Uniloc’s Plano
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`office with knowledge of information relevant to case. Mr. Burdick, who spends approximately
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`one-third of his time in Plano, does not work full-time out of Uniloc’s Plano office. (Motion
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`Hearing, October 27, 2017, Dkt. No. 98 (“Hearing Tr.”) at 27:9–14 (“[Mr. Burdick] indicated he
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`spends as much of his time in California, roughly, as he does [in the Eastern District of Texas].
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`Second reason he’s not a full-time Uniloc employee is that he doesn’t actually spend all his
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`working time at Uniloc. Mr. Burdick . . . runs a private law practice up in Boise, Idaho, and devotes
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`about as much of his time to that as he spends [] in this district.”).) In addition, Ms. Pangan and
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`Ms. Seltzer do not have information relevant to this case. Despite Uniloc’s earlier representation
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`outside counsel to attach his signature to it.” (Dkt. No. 60-1, Ex. A at 71:1–25 (“[T]his statement about two
`headquarters, which is nonsense, is now rearing its ugly head again. And, you know, all I can testify to is that it’s an
`error.”).)
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`in its Sur-Reply that Ms. Seltzer and Ms. Pangan “have some relevant knowledge of Uniloc’s
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`business,” (Dkt. No. 43 at 5), Uniloc failed to identify either employee as a Uniloc employee
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`“whom Uniloc contends has information relevant to the Patents-in-Suit or to Uniloc’s claims in
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`this case” in its Responses to Apple’s Interrogatories (Dkt. No. 60-2, Ex. B at 1–2). When
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`questioned on Ms. Pangan’s work, Mr. Burdick admitted that Ms. Pangan’s role as a patent
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`paralegal for Uniloc is limited to tasks such as “filing documents” and preparing “shell responses.”
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`(Dkt. No. 60-1, Ex. A at 45:5–21.) Ms. Pangan is not involved in analyzing “the substance of
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`responses to office actions,” analyzing the “substance of claim amendments,” or the “drafting of
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`claims.” (Id. at 45:17–21.)
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`Finally, the documents that Uniloc has continuously represented are “relevant, physical
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`documents” are not solely available from its Plano office. (Dkt. No. 30 at 7.) Uniloc has three
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`categories of documents related to the patents-in-suit or to this case: (1) patent prosecution history
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`files; (2) prior art files in the same general technology fields as the patents-in-suit; and (3) Uniloc’s
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`settlement agreements in prior cases with similar patented technologies. (Dkt. No. 60-1, Ex. A at
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`93:5–94:10.) During Uniloc’s 30(b)(6) deposition, Mr. Burdick admitted that Uniloc’s patent
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`prosecution history files and prior art files in this case do not contain “anything substantive beyond
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`what’s contained in [Public] Pair,” the Patent and Trademark Office’s website that “allows the
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`general public to access and download copies of the prosecution histories for patents.” (Id. at 95:1–
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`23, 107:12–22.) Ultimately, Uniloc’s patent prosecution and prior art files are hard copy files,
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`maintained in Plano, that “more or less mirror” the files readily available on Public PAIR. (Id. at
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`94:3–24.) Approximately ninety-five percent of the prior art that Uniloc stores in its “prior art
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`library” was originally acquired in electronic form. (Id. at 119:11–15.)
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`In addition, the electronic versions of the prosecution histories for Uniloc’s patents-in-suit
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`are kept on a file server located in Irvine, California. (Id. at 103:8–104:6.) The electronic version
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`of Uniloc’s library of settlement agreements are similarly located on the file server in Irvine. (Id.
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`at 128:5–13.) The Irvine file server contains certain directories or areas that are accessible only to
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`Uniloc Luxembourg employees, as well as areas that are only accessible to Uniloc USA
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`employees. (Id. at 145:10–19.)
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`II.
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`LEGAL STANDARD
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`Section 1404(a) provides that “[f]or the convenience of parties and witnesses, in the interest
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`of justice, a district court may transfer any civil action to any other district or division where it
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`might have been brought.” 28 U.S.C. § 1404(a). However, a motion to transfer venue should only
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`be granted upon a showing that the transferee venue is “clearly more convenient” than the venue
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`chosen by the plaintiff. In re Nintendo Co., 589 F.3d 1194, 1197 (Fed. Cir. 2009); In re Genentech,
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`Inc., 566 F.3d 1388, 1342 (Fed. Cir. 2009).
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`The first inquiry when analyzing a case’s eligibility for § 1404(a) transfer is “whether the
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`judicial district to which transfer is sought would have been a district in which the claim could
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`have been filed.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). Once
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`that threshold is met, courts analyze both public and private factors relating to the convenience of
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`parties and witnesses, as well as the interests of particular venues in hearing the case. See Humble
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`Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963); In re Nintendo Co., Ltd.,
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`589 F.3d at 1198. The private factors are: (1) the relative ease of access to sources of proof; (2)
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`the availability of compulsory process to secure the attendance of witnesses; (3) the cost of
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`attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy,
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`expeditious, and inexpensive. Volkswagen I, 371 F.3d at 203. The public factors are: (1) the
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`administrative difficulties flowing from court congestion; (2) the local interest in having localized
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`interests decided at home; (3) the familiarity of the forum with the law that will govern the case;
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`and (4) the avoidance of unnecessary problems of conflict of laws or in the application of foreign
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`law. Volkswagen I, 371 F.3d at 203. These factors are to be decided based on “the situation which
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`existed when suit was instituted.” Hoffman v. Blaski, 363 U.S. 335, 343 (1960). Though the private
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`and public factors apply to most transfer cases, “they are not necessarily exhaustive or exclusive,”
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`and no single factor is dispositive. In re Volkswagen of Am., Inc., 545 F.3d 304, 314–15 (5th Cir.
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`2008) (“Volkswagen II”).
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`In the Fifth Circuit, the plaintiff’s choice of venue has not been considered a separate factor
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`in this analysis. Volkswagen II, 545 F.3d at 314–15. However, “[t]he Court must also give some
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`weight to the plaintiffs’ choice of forum.” Atl Marine Const. Co. v. U.S. Dist. Court for W. Dist.
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`Of Texas, 134 S. Ct. 568, 581 n.6 (2013) (citing Norwood v. Kirkpatrick, 349 U.S. 29, 32 (1955)).
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`“Plaintiffs are ordinarily allowed to select whatever forum they consider most advantageous
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`(consistent with jurisdictional and venue limitations), [and the Supreme Court has] termed their
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`selection ‘the plaintiff’s venue privilege.’” Id. at 581 (citing Van Dusen v. Barrack, 376 U.S. 612,
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`635 (1964)). In the Fifth Circuit, the “venue privilege” contributes to the defendant’s elevated
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`burden of proving that the transferee venue is “clearly more convenient” than the transferor venue.
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`Volkswagen II, 545 F.3d at 315; Nintendo, 589 F.3d at 1200; In re TS Tech USA Corp., 551 F.3d
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`1315, 1319 (Fed. Cir. 2008).
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`III. ANALYSIS
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`The Court will examine each of the applicable private and public factors listed above,
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`addressing the Parties’ specific arguments where applicable.
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`A. The Suit Could Have Been Brought in the Northern District of California
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`The parties do not dispute that this action could have been brought in the Northern District
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`of California. Thus, the threshold requirement for a § 1404(a) transfer has been satisfied.
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`B. Private Interest Factors
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`1. Relative Ease of Access to Sources of Proof
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`When considering the relative ease of access to sources of proof, a court looks to where
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`documentary evidence, such as documents and physical evidence, are stored. Volkswagen II, 545
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`F.3d at 316. Relevant evidence in patent cases often comes from the accused infringer and may
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`weigh in favor of transfer to that location. Genentech, 566 at 1345.
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`Uniloc asserts that it has physical documents relating to the patents-at-issue in its Plano
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`office. (Dkt. No. 30-7, Burdick Decl. ¶ 11.) However, the vast majority of Uniloc’s documents are
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`publicly available on the PTO’s Public PAIR website. (Dkt. No. 60-1, Ex. A at 107:7–22, 118:2–
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`24.) Uniloc’s physical documents in Plano consist of prosecution history, prior art, and settlement
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`documents. (Id. at 93:5–94:10.) Uniloc’s prosecution history records for the provisional patent
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`applications in this case do not contain “anything substantive[]” beyond what is reflected in the
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`publicly available versions of those file histories on PAIR. (Id. at 95:4–23, 107:17–22.) In addition,
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`approximately ninety-five percent of the Uniloc’s prior art documents are cited in some form of
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`patent office prosecution, downloaded from PAIR. (Id. at 107:7–16, 118:13–24, 119:11–22 (“Q.
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`Can you ballpark for me the proportion of the prior art in Uniloc’s prior art library that it originally
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`acquired in electronic form? A. It’s probably that same 95 percent approximation.”).) The
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`remaining documents, Uniloc’s settlement documents, are not publicly available. However, all of
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`Uniloc’s physical documents in Plano are also electronically stored in Uniloc’s file server, located
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`in Irvine, California. (Id. at 103:8–104:6.)
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`Although the Internet and the availability of online storage have significantly lightened the
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`relative inconvenience of transporting large amounts of documents across the country, the physical
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`accessibility to sources of proof remains a private interest factor to be considered. Until the
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`appellate courts address this reality, trial courts must continue to apply this factor consistent with
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`current precedent. See Volkswagen II, 545 F.3d at 316; In re TS Tech USA Corp., 551 F.3d 1315,
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`1320–21 (Fed. Cir. 2008); Genentech, 566 F.3d at 1345–46. Accordingly, this Court must give
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`Uniloc’s Plano documents some weight, regardless of their availability online and through their
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`servers. However, Uniloc’s Plano documents are not the only physical documents relevant to this
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`inquiry.
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`Uniloc’s infringement case relates to Apple’s Maps destination-prediction functionality,
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`Apple’s iOS software update process, and Apple’s use of Unique Device Identifiers (“UDIDs”).
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`(Dkt. No. 1 at 2–13; Dkt. No. 25-1, Michael Jaynes Decl. ¶ 6.) The electronic and paper records
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`of these technologies are located in or near Cupertino, California, within the Northern District of
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`California. (Dkt. No. 25-1, Michael Jaynes Decl. ¶ 7.) Documents concerning the marketing of the
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`accused technologies in the United States all reside in or near Cupertino. (Id. ¶ 14.) In addition,
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`physical alleged prior art, such as Google’s Google Now technology and its corresponding
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`products, are likely in the Northern District of California. (Dkt. No. 25 at 7 (“[T]he relevant Google
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`Now source code and design documents, and sample products running Google Now (such as the
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`Nexus 4 phone and Nexus 10 tablet) are likely located there.”); Dkt. No. 25-21, Ex. 19, D. Hoffman
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`Decl. ISO Google’s Mtn. to Transfer ¶¶ 6, 12.) Uniloc argues that Apple maintains “an admittedly
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`‘massive’ 1.1 million square feet facility in Austin, Texas at which it could also download
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`documents from its California headquarters.” (Dkt. No. 64 at 1.) For the same reasons that this
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`Court must give Uniloc’s physical documents in Plano some weight, regardless of the relative
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`inconvenience of downloading electronic copies from a website or Uniloc’s servers, this Court
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`must give weight to Apple’s physical documents and relevant physical prior art technologies
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`situated in the Northern District of California. See Genentech, 566 F.3d at 1345–46 (rejecting the
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`district court’s argument that the physical location of relevant documents is somewhat antiquated
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`in the era of electronic storage and transmission “because it would render this factor superfluous”).
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`Although Apple argues that it “identified a much greater volume of documents in the
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`Northern District than Uniloc did here,” this evidence does not support a finding that this factor
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`favors transfer. (Dkt. No. 40 at 3.) The Federal Circuit has stated that “[i]n patent infringement
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`cases, the bulk of the relevant evidence usually comes from the accused infringer. Consequently,
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`the place where the defendant’s documents are kept weighs in favor of transfer to that location.”
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`Genentech, 566 F.3d at 1345 (quoting Neil Bros. v. World Wide Lines, Inc., 425 F. Supp. 2d 325,
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`330 (E.D.N.Y. 2006)). However, as other courts have noted, a rigid application of this isolated
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`statement from Genentech “would seem to require the transfer of every patent infringement action
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`from the district of the victim to the district where the defendant is located, a patently absurd
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`result.” Choon’s Design, LLC v. Larose Indus., LLC, No. 13-13569, 2013 WL 5913691, at *3
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`(E.D. Mich. Nov. 1, 2013). Taking the Federal Circuit’s statement in Genentech to its extreme
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`would result in a transfer analysis where, in almost every patent case, an accused infringer would
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`have a built-in factor weighing in its favor. This should not be the proper result. Rather, when
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`considered in its proper context, the statement simply provides another piece of helpful guidance
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`to consider when evaluating this factor in the ordinary transfer analysis. In Genentech, the Federal
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`Circuit explained that all of the defendant’s documents were housed in the transferee venue, while
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`no evidence whatsoever was housed in the transferor venue. Genentech, 566 F.3d at 1345. When
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`considered in light of the other transfer factors, the circuit court concluded that the plaintiff’s
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`chosen venue had “no connection to any of the witnesses or evidence relevant to the cause of
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`action.” Id. at 1340–41. The same kind of a tenuous connection with the transferor venue does not
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`exist in this case.
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`Applying the law to the facts of this case, the Court finds that this factor is neutral. Uniloc
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`has documents housed in this District, and Apple has documents in California. Uniloc’s physical
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`documents relating to prior art and settlement are likely relevant to the Parties’ invalidity and
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`damages positions in this case, and Apple’s prior art and marketing physical documents are likely
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`relevant to the Parties’ infringement and invalidity positions. Although the relative volume of
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`documents may tilt in favor of defendants in some cases, such as Genentech, it does not do so here,
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`where the transferor District contains a substantial number of physical sources of proof.
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`2. Availability of Compulsory Process
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`This factor instructs the Court to consider the availability of compulsory process to secure
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`the attendance of witnesses, particularly non-party witnesses whose attendance may need to be
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`secured by a court order. Volkswagen II, 545 F.3d at 316. A district court’s subpoena power is
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`governed by Federal Rule of Civil Procedure 45. For purposes of § 1404(a), there are three
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`important parts to Rule 45. See VirtualAgility, Inc. v. Salesforce.com, Inc., No. 2:13-cv-00011-
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`JRG, 2014 WL 459719, at *4 (E.D. Tex. Jan. 31, 2014) (explaining 2013 amendments to Rule 45).
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`First, a district court has subpoena power over witnesses that live or work within 100 miles of the
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`courthouse. Fed. R. Civ. P. 45(c)(1)(A). Second, a district court has subpoena power over residents
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`of the state in which the district court sits—a party or a party’s officer that lives or works in the
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`state can be compelled to attend trial, and nonparty residents can be similarly compelled as long
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`as their attendance would not result in “substantial expense.” Fed. R. Civ. P. 45(c)(1)(B)(i)–(ii).
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`Third, a district court has nationwide subpoena power to compel a nonparty witness’s attendance
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`at a deposition within 100 miles of where the witness lives or works. Fed. R. Civ. P. 45(a)(2),
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`45(c)(1).
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`Apple has named multiple third-party witnesses residing within the Northern District of
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`California who are said to have worked on asserted prior art. (Dkt. No. 25 at 8; Dkt. No. 25-27,
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`Ex. 25.) Apple argues that these witnesses all worked on technology related to the functionalities
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`asserted in Uniloc’s patents-at-issue, and that all of these witnesses are subject to either the
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`absolute or trial subpoena power of the Northern District of California. (Dkt. No. 25 at 8–10.)
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`Apple has specifically identified each non-party witness it plans to call to trial, explained why that
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`witness’s testimony would be material and relevant to the case, and has submitted evidence before
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`this Court as to the current locations of such witnesses. (Id.; Dkt. No. 25-27, Ex. 25.) Further,
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`Apple identified Ms. Kiatkulpiboone, a prior Uniloc employee currently residing in the Northern
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`District of California, as one of the prosecuting attorneys on the patents-in-suit. (Dkt. No. 60 at 4;
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`Dkt. No. 25-13, Ex. 11 at 2.) Ms. Kiatkulpiboone is subject to the absolute subpoena power of the
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`Northern District. Although Uniloc argues that “all substantive papers” for the patents-in-suit were
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`signed by Mr. Burdick, Ms. Kiatkulpiboone, as the prosecuting attorney, likely has information
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`relevant to the issue of infringement or invalidity. Genentech, 566 F.3d at 1344 (“The petitioners
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`have identified witnesses relevant to those issues of [inequitable conduct, infringement, and
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`invalidity,] and the identification of those witnesses weighs in favor of transfer.”).
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`In contrast, Uniloc has not named any third-party witnesses residing within the Eastern
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`District of Texas with information “material or relevant” to the case. (Dkt. No. 30 at 9–11; Dkt.
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`No. 43 at 2–3; Dkt. No. 64 at 3–4.) Uniloc’s only reference to any potential third-party witnesses
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`are those “several former employees” referenced in Mr. Burdick’s declaration. (Dkt. No. 30-7,
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`Burdick Decl. ¶ 14.) However, Uniloc does not even identify what relevant information such
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`witnesses would have. (Id.); Genentech, 566 F.3d at 1343 (“A district court should assess the
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`relevance and materiality of the information the witness may provide.”). Rather, Uniloc generally
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`asserts that these witnesses have “historical knowledge regarding Uniloc’s business.” (Id.) In fact,
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`Uniloc has not disputed Apple’s assertion that Uniloc failed to present evidence of any third-party
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`witness within this District with “relevant and material information” to this litigation. (Dkt. No.
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`25 at 10; Dkt. No. 30 at 9–11; Dkt. No. 43 at 2–3; Dkt. No. 64 at 3–4.)
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`Based on such evidence, the Court finds that this factor weighs in favor of transfer.
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`3. Cost of Attendance for Willing Witnesses
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`“The convenience of the witnesses is probably the single most important factor in a transfer
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`analysis.” Genentech, 566 F.3d at 1342. “When the distance between an existing venue for trial of
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`a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience
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`to witnesses increases in direct relationship to the additional distance to be travelled.” Id. at 1343
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`(citing Volkswagen II, 545 F.3d at 317).
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`Uniloc has only one party witness who resides within the Eastern District of Texas: Mr.
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`Sean Burdick. Although Uniloc has represented, both in this case and in prior cases, that it has
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`three potential witnesses working from its Plano office, discovery has revealed that Uniloc does
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`not consider two of the three witnesses to have relevant information. (Dkt. No. 60-2, Ex. B at 1–
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`2.) Indeed, the record reflects that Uniloc has been aware of the actual number of