Case 2:17-cv-00516-JRG Document 76 Filed 06/06/18 Page 1 of 19 PageID #: 1374
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`v.
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`APPLE, INC.,
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`CIVIL ACTION NO. 2:17-CV-00516-JRG
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`Plaintiff,
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`Defendant.
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`§
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is Apple’s Motion to Transfer Venue under § 1404(a) to the Northern
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`District of California. (Dkt. No. 53). Having considered the Motion, the Court is of the opinion
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`the Motion should be DENIED for the reasons provided herein.
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`I.
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`LEGAL STANDARD
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`If venue in the district in which the case is originally filed is proper, the court may nonetheless
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`transfer a case based on “the convenience of parties and witnesses” to another district where the case
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`could have been brought. 28 U.S.C. § 1404(a). The first inquiry when analyzing a case’s eligibility
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`for § 1404(a) transfer is “whether the judicial district to which transfer is sought would have been
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`a district in which the claim could have been filed.” In re Volkswagen AG, 371 F.3d 201, 203 (5th
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`Cir. 2004) (“Volkswagen I”). “Any civil action for patent infringement may be brought in the
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`judicial district where the defendant resides, or where the defendant has committed acts of
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`infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b) (2012); TC
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`Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1519 (2017) (“§ 1400(b) ‘is the
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`sole and exclusive provision controlling venue in patent infringement actions.’” (quoting Fourco
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`1
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`Case 2:17-cv-00516-JRG Document 76 Filed 06/06/18 Page 2 of 19 PageID #: 1375
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`Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222, 229 (1957))). For purposes of § 1400(b), a
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`domestic corporation resides only in its state of incorporation. TC Heartland, 137 S. Ct. at 1521.
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`Once the initial threshold of proving the proposed transferee district is one where the suit
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`might have been brought is met, courts analyze both public and private factors relating to the
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`convenience of parties and witnesses as well as the interests of particular venues in hearing the
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`case. See Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963); In re
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`Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009). The private factors are: (1) the relative
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`ease of access to sources of proof; (2) the availability of compulsory process to secure the
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`attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical
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`problems that make trial of a case easy, expeditious, and inexpensive. Volkswagen I, 371 F.3d at
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`203 (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)). The public factors are: (1)
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`the administrative difficulties flowing from court congestion; (2) the local interest in having
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`localized interests decided at home; (3) the familiarity of the forum with the law that will govern
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`the case; and (4) the avoidance of unnecessary problems of conflict of laws or in the application
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`of foreign law. Id. These factors are to be decided based on “the situation which existed when suit
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`was instituted.” Hoffman v. Blaski, 363 U.S. 335, 343 (1960). Though the private and public factors
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`apply to most transfer cases, “they are not necessarily exhaustive or exclusive,” and no single
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`factor is dispositive. In re Volkswagen of Am., Inc., 545 F.3d 304, 314–15 (5th Cir. 2008)
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`(“Volkswagen II”).
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`While a plaintiff’s choice of venue is not an express factor in this analysis, the appropriate
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`deference afforded to the plaintiff’s choice is reflected by the defendant’s elevated burden of proof.
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`Id. at 315. In order to support its claim for a transfer under § 1404(a), the moving defendant must
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`demonstrate that the transferee venue is “clearly more convenient” than the venue chosen by the
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`plaintiff. Id.; accord In re Apple Inc., 456 F. App’x 907, 909 (Fed. Cir. 2012) (a movant must
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`“meet its burden of demonstrating [] that the transferee venue is ‘clearly more convenient.’”); id.
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`at 908 (transfer under § 1404 is mandated where venue is “far more convenient and fair.”). Absent
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`such a showing, however, the plaintiff’s choice is to be respected. Volkswagen II, 545 F.3d at
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`314–15. Additionally, when deciding a motion to transfer venue under § 1404(a), the court may
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`consider undisputed facts outside of the pleadings such as affidavits or declarations but it must
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`draw all reasonable inferences and resolve factual conflicts in favor of the non-moving party. See
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`Sleepy Lagoon, Ltd. v. Tower Group, Inc., 809 F. Supp. 2d 1300, 1306 (N.D. Okla. 2011); see also
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`Cooper v. Farmers New Century Ins. Co., 593 F. Supp. 2d 14, 18–19 (D.D.C. 2008).
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`II. DISCUSSION
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`Both Parties agree that the threshold issue of proper venue in the transferee district has
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`been met. (Dkt. No. 53 at 8 (“This case could have properly been brought in the Northern District
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`of California because that is where Apple resides.”); Dkt. No. 57 at 7 (“[T]his suit could have been
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`brought against Apple in the proposed transferee district”)). Accordingly, the Court proceeds to
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`the analysis of the private and public factors considered in analyzing the interests of justice under
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`§ 1404.
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`A. Private Factors
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`i.
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`Relative Ease of Access to Sources of Proof
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`In considering the relative ease of access to proof, a court looks to where documentary
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`evidence, such as documents and physical evidence, are stored. Volkswagen II, 545 F.3d at 316.
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`For this factor to weigh in favor of transfer, Apple must show that transfer to the Northern District
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`of California will result in more convenient access to sources of proof. See Diem LLC v.
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`BigCommerce, Inc., No. 6:17-cv-186, 2017 WL 6729907, at *2 (E.D. Tex. Dec. 28, 2017).
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`Apple submits that “Apple maintains all of its business records that are potentially relevant
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`to this case—such as research, development and marketing materials, financial and sales data
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`concerning the implicated products, and its patent licenses—in or near its corporate headquarters
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`in the Northern District of California, and none in Texas.” (Dkt. No. 53 at 9 (citing Dkt. No. 53–
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`1 at ¶¶ 14–15, 17–18, 22)). While Apple asserts that “no relevant sources of proof appear to be
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`meaningfully based in this District,” id., AGIS submits, through the declaration of its CEO, Mr.
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`Malcolm Beyer, Jr., the following facts:
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`1. AGIS Inc. began a corporate restructuring plan for “business growth purposes” in 2013
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`which culminated in 2017 with the formation of a parent Florida corporation, AGIS
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`Holdings, Inc., and two subsidiaries, AGIS, Inc., and the Plaintiff, AGIS, an LLC
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`organized under Texas law. (Dkt. No. 51-1 (Decl. of Mr. Malcolm Beyer (“Beyer
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`Decl.”) at 2)).
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`2. “AGIS holds assignment to each of the Patents-in-suit and licenses its patent portfolio,
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`including the Patents-in-suit to AGIS Inc.” (Id. at 3).
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`3. AGIS, Inc., has developed and sold its “LifeRing” and “ASSIST” products over the
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`prior 13 years and has conducted the “research, development, design, testing,
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`manufacture, marketing, contract procurement, and sales activities” for these products
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`in “Florida, Kansas, and Texas” and AGIS Inc’s “documents and other business related
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`records” are at those locations. (Id. at 4).
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`4. In addition, AGIS has identified “[a]n important non-party witness . . . Eric Armstrong,
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`a former AGIS Inc. employee who is now a consultant for AGIS,” who “is responsible
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`for designing and developing client-side and server-side software for the LifeRing and
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`Assist solutions” and who “lives and works in Allen, Texas, in this District.” (Dkt. No.
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`57 at 5). Mr. Armstrong “maintains, in this District, documents related to the design,
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`development, and marketing of AGIS Inc. software licensed under the Patents-in-Suit.”
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`(Dkt. No. 61 at 2).
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`Apple contests the relevance of Mr. Armstrong’s documentary evidence since “AGIS does
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`not allege that any of its own products practice the asserted claims—and Armstrong’s testimony,
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`according to AGIS, is therefore also irrelevant.” (Dkt. No. 59 at 4). However, as this Court noted
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`in its order in the co-pending consolidated case AGIS v. Huawei Device USA Inc., et al., “the
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`infringement contentions do not tell the whole story.” No. 2:17-cv-00513-JRG, 2018 WL 2329752,
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`at *5 (E.D. Tex. May 23, 2018) (“Huawei”). As in the Huawei case, the relevance of Mr.
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`Armstrong’s documentary evidence lies in Apple’s Answer, wherein it asserts a marking defense,
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`arguing that damages are barred as a result of a failure to mark by AGIS. (Dkt. No. 20 at 11
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`(“AGIS’s claims for damages is barred, in whole or in part, by 35 U.S.C. § 286 or 287.”)). Pursuant
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`to § 287, a plaintiff may defeat a marking defense by showing either: (1) the patented articles were
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`substantially consistently and continuously marked with the patent number during the entire period
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`the patented articles were sold, or (2) the alleged patented articles are not patented articles within
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`the meaning of § 287(a) because they do not meet all the elements of any of the claims of the
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`asserted patent. See Am. Med. Sys. v. Med. Eng’g Corp., 6 F.3d 1523, 1537 (Fed. Cir. 1993)
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`(“[O]nce marking has begun, it must be substantially consistent and continuous in order for the
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`party to avail itself of the constructive notice provisions of the statute.”); see also, e.g., Toro Co.
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`v. McCulloch Corp., 898 F. Supp. 679, 684 (D. Minn. 1995) (“A device is a ‘patented article’
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`under a patent when it contains all of the elements disclosed in any single claim of the patent.”).
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`As in Huawei, “by raising § 287 as an issue to be decided in this case, [Apple] has made the issue
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`of whether AGIS’s products––or the products of its affiliated companies––are covered by the
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`patents in suit a central issue and of primary concern to the issue of limiting damages in this suit.”
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`Huawei, 2018 WL 2329752, at *5.
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`AGIS also attacks Apple’s sources of proof. While Apple identified its Northern California
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`location as the location where it “maintains” all of its documentary evidence relevant to this case,
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`(Dkt. No. 53 at 9), Apple has apparently produced its source code not in Northern California, as
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`might be expected, but rather in New York, apparently for convenience. (Dkt. No. 74, Hr’g Tr. at
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`9:3–10:9 ).1 Yet Apple argues it is more convenient to produce the documentary evidence for trial
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`in Northern California. It is not clear where this documentary evidence resides now; the Court
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`will not speculate as to its current location or even existence. Regardless, it demonstrates the
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`frustration which Court regularly confronts with in determining issues of convenient venue while
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`technology advances and the practicalities of modern litigation move forward, each straining the
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`real-world applicability of the aging convenience tests which this Court is compelled to apply.
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`Even so, the Court notes that while AGIS argues that the ability of Apple to “exchange
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`electronically” the relevant documentary evidence in this case permits the Court to ignore the
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`location of any source of documentary evidence. “Despite technological advances in
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`transportation of electronic documents, physical accessibility to sources of proof continues to be a
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`private interest factor to be considered.” Implicit v. Trend Micro, No. 6:16-cv-00080-JRG, 2016
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`U.S. Dist. LEXIS 191571, at *5 (E.D. Tex. Sep. 1, 2016) (citing Volkswagen II, 545 F.3d at 316).
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`1(“THE COURT: Am I correct that Apple has already produced source code in this case?
`MR.STADNICK: That is correct.
`THE COURT: Tell me why it was produced in New York as opposed to Northern California.
` . . . .
`MR. STADNICK: . . . [F]or the convenience of having attorneys present to monitor the source code inspection.
` . . . . [T]he main source code base is in Northern California. I believe for purposes of convenience for the litigants
`and the party, for the purposes of the inspection, the relevant code was transferred to a stand-alone computer which
`was then transported to New York for the -- for the purposes of the inspection.”)
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`Similarly, Apple’s urging this Court to ignore AGIS’s sources of proof in this District are
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`equally unavailing. While it may be true that AGIS is a newly formed Texas company, the Court
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`inquired directly of Apple as to whether it had evidence to support its allegation of ephemeralness
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`against AGIS during argument on this Motion; Apple pointed to, in its words, “circumstantial
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`evidence,” but conceded that it lacked “concrete evidence that the business is actually a sham and
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`has no real operations” in this District. (Dkt. No. 74, Hr’g Tr. at 53-56).2 Accordingly, the Court
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`will not ignore AGIS’s documentary sources of proof in evaluating this factor. Additionally, even
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`if AGIS’s sources of proof were ignored, there is no similar basis to ignore Mr. Armstrong’s
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`office’s location as a primary source of documentary evidence for use in this litigation.
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`Accordingly, from the comparison presented above, Court finds that primary sources of
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`proof may be found both in this District and the proposed transferee district, along with many
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`sources of proof that are in other districts. On balance, the Court notes the generally heavier
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`2 (Hr’g Tr. at 53:14–54:6 (THE COURT: “But with regard to assertions of an entity being ephemeral, would you agree
`that that burden is not on the Plaintiff to disprove it’s ephemeral, it’s on you to prove that it really is material,
`substantive, but, in fact, ephemeral? Shouldn’t you have to show me that that’s what it is rather than call it that and
`then wait for them to disprove it?
`MR. STADNICK: I think ultimately, obviously, the burden of demonstrating that California is clearly more
`convenient than this court is on us.
`THE COURT: No question about that.
`MR. STADNICK: I think in dealing with this specific issue of whether their contact to the district is ephemeral, to the
`extent the burden is on us, we’ve more than provided ample circumstantial evidence just given the timing, the history,
`and the circumstances of AG – AGIS Software’s incorporation and establishment of an office here.”);
`id. at 55:24–56:5 (MR. STADNICK: “[M]y understanding of what the term ephemeral means in the cases that have
`used that language where the proof I believe that’s cited in the opinions as to why the Court was coming to the
`conclusion that the presence was recent and ephemeral typically wasn’t anything more than the relative timing of the
`establishment of the entity with the litigation.”);
`id. at 55:14–22 (THE COURT: “To me, when you make an affirmative assertion that an entity is ephemeral, you have
`a burden to prove that. And perhaps that’s provable with circumstantial evidence. Perhaps it’s provable with direct
`evidence. But anybody that raises an issue ought to carry the burden that goes with that issue and not try to raise it,
`and then say because they didn’t disprove the[y’re] ephemeral, you have to consider them such given that they were
`incorporated so close to the time they began the litigation.”);
`id. at 56:15–20 (MR. STADNICK: “I think I understand what Your Honor is saying, and if Your Honor thinks it’s
`our burden to come forth with concrete evidence that the business is actually a sham and has no real operations,
`we don’t have admissions from their witnesses or anything of that nature that I have to offer you on that.”)
`(emphasis added)
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`evidentiary burden with which defendants carry in patent infringement lawsuits.3 Taking into
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`account the location of primary sources of proof within this District, the Court finds that this factor
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`weighs only slightly in favor of transfer.
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`ii.
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`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 non-party 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 argues that “most of the likely third-party witnesses of which Apple is currently
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`aware, including an inventor and a prosecuting attorney, are likewise located in or near [the
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`Northern District of California], strongly favoring transfer.” (Dkt. No. 53 at 12.) Specifically,
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`3 “In patent infringement cases, the bulk of the relevant evidence usually comes from the accused infringer.
`Consequently, the place where the defendant’s documents are kept weighs in favor of transfer to that location.” In re
`Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009) (internal citation omitted).
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`Apple points out that “the attorney [Mr. Daniel Burns was] responsible for prosecuting four
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`patents-in-suit (comprising 241 of the 250 asserted claims)[, and] appears to be located in Santa
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`Clara, California—within the subpoena power of the Northern District of California.” (Id.)
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`However, as noted at argument by AGIS, “Mr. Burns is no longer an attorney at Goodwin Procter.
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`He is now in-house as an executive at Huawei FutureWei, which is a Defendant in one of the co-
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`companion cases. So he may very well be a party witness, and -- and I’m not even sure what he’ll
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`be able to testify to in light of the possible conflict, but it was an interesting discovery.” (Dkt. No.
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`74, Hr’g Tr. at 49:1–8). Interesting indeed.4 There is, now, conflicting information before the
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`Court which the Court is unsuited to resolve on this limited record. All factual disputes must be
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`drawn in favor of the nonmovant, requiring the Court accept that Mr. Burns is now a party witness
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`to a consolidated defendant. However, the Court is, at this juncture, unwilling to fully credit Mr.
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`Burns’ prospective testimony in this analysis as a third party witnesses, as his testimony may yet
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`be challenged by the Plaintiff on conflict grounds.5 Further, Mr. Burns’ testimony is not that of
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`4 Evidence supporting Mr. Burns’ alleged new employment was not submitted to the Court either before or following
`the hearing at which AGIS brought the issue to its attention. Attorney argument is not evidence upon which this Court
`may rely upon, but the Court may take judicial notice of certain facts “from sources whose accuracy cannot reasonable
`be questioned” and properly consider such facts in its analysis. Fed. R. Evid. 201(b). This permits the Court, where
`it has been made aware of a changed circumstance which may materially impact its analysis but the parties have failed
`to properly set such circumstance before the Court, to attempt to avoid any undue reliance on ‘stale’ factual bases.
`Accordingly, the Court takes judicial notice of the existence of Mr. Burns’ LinkedIn profile which indicates Mr. Burns’
`employment as described by AGIS at argument. See https://www.linkedin.com/in/danburnspatent. The Court does
`not take judicial notice of the truth of the representations made upon Mr. Burns’ profile, as such information is not
`“generally known within the trial court’s territorial jurisdiction” nor able to be “accurately and readily determined
`from sources whose accuracy cannot reasonably be questioned,” as required by Fed. R. Evid. 201(b). United States
`v. Safran Grp., No. 15-cv-00746-LHK, 2017 U.S. Dist. LEXIS 137264, at *24 (N.D. Cal. Aug. 25, 2017) (declining
`to take judicial notice of the substance of a LinkedIn profile where there was a “reasonable dispute as to the reliability
`of the substance of [the] LinkedIn profile.”). However, the existence of the profile itself and its indication of Mr.
`Burns’ employment as “Sr. Corporate IP Counsel at Futurewei Technologies, Inc.” is not able to be reasonably
`questioned. See United States ex rel. Hong v. Newport Sensors, Inc., No. 16-55851, 2018 U.S. App. LEXIS 7683, at
`*2 (9th Cir. Mar. 27, 2018) (holding a district court which took judicial notice of information on a website, “not for
`the truth of the information” but “merely to show that [the] information was publicly available,” did not abuse its
`discretion as “fact of the seven documents’ public availability was not disputed by the parties nor ‘subject to reasonable
`dispute.’”). Accordingly, the Court takes notice of the existence of the LinkedIn profile and the indication therein of
`Mr. Burns’ employment as “Sr. Corporate IP Counsel at Futurewei Technologies, Inc.”
`5 The Court does not suggest or prejudge this issue, merely notes that Plaintiff alluded to such a challenge at argument.
`(Dkt. No. 74, Hr’g Tr. at 49:7 (“I’m not even sure what he'll be able to testify to in light of the possible conflict”)).
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`the traditional independent third party; rather, as a party witness of a consolidated defendant, his
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`testimony is likely best considered as a result of a joint defense enterprise, coordinated by the
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`Defendants, collectively. The Court, in considering these complicating factors, finds that the
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`Northern District’s ability to compel Mr. Burns should be given weight but not to a great extent.
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`Apple also argues that “because the accused features were developed at Apple’s
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`headquarters in Northern California, any former Apple employees with relevant information are
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`likely still located there and would continue to be subject to the subpoena power of the Northern
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`District of California.” (Dkt. No. 53 at 12). However, at argument on this Motion, Apple
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`downplayed this as a strong support of transfer. (Dkt. No. 74 at 12:14–24).6 The Court has, in
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`other cases, found an “identified pool of third-party witnesses” to be “at some level, probative.”
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`Huawei, 2018 WL 2329752, at *6; see also Oyster Optics, LLC v. Coriant Am. Inc., No. 2:16-CV-
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`1302, 2017 WL 4225202, at *6 (E.D. Tex. Sept. 22, 2017) (holding that while defendant “did not
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`point to specific witnesses they would call (so that the Court may ascertain the applicability of
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`compulsory process over those witnesses),” defendant had, nonetheless “identified an established
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`pool of likely third party witnesses as to whom the Northern District clearly exercises compulsory
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`process.”); id. (noting that “greater specificity would certainly strengthen [defendant’s] position”
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`but that the showing was “relevant” and “at some level, . . . probative.”). However, the pool of
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`witnesses which Apple has identified in support of its motion is far more speculative than the pool
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`identified in those types of cases. As opposed to identifying potential third-party witnesses
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`currently employed by, for example, component manufacturers or application developers upon
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`6 (“THE COURT: There’s some talk in the briefing about you may have former employees, and if you do have former
`employees and if they are relevant witnesses, then you assume that they’re still going to be in Northern California.
`That looks to me, at least as to that component of this, looks like it’s speculation upon speculation, and I assume you
`don’t really disagree with that.
`MR. STADNICK: It’s certainly not the crux of our argument, and I wasn’t planning on pushing on that aspect of the
`potential witnesses here today.”).
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`whom the party defendant relies in manufacturing the accused device or practicing the accused
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`method, Apple points to a favorable geographic region as the “likely [] locat[ion]” of “any former
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`Apple employees with relevant information.” This is speculation on speculation and not sufficient
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`to weigh in favor of transfer.
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`AGIS identifies two third-party witnesses: Eric Armstrong, AGIS’s consultant, located in
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`this District, and AGIS’s technical expert, Joseph C. McAlexander, located nearby in Richardson,
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`Texas. (Dkt. No. 57 at 9). As discussed above, Mr. Armstrong’s evidence has been shown to be
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`relevant and his presence weighs against transfer, as he is subject to this Court’s subpoena power but
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`lies beyond the subpoena power of the Northern District of California. As to Mr. McAlexander,
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`however, as an expert witnesses, he properly counts as a willing witness and is considered under the
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`third factor. See Huawei, 2018 WL 2329752, at *3 (“Access to witnesses for presentation at trial,
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`which is the purpose of the venue transfer analysis, is properly considered under either the second
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`factor, relating to the Court’s subpoena power to compel testimony at trial, or the third factor, which
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`relates to the cost of attendance for willing witnesses. These factors do not permit a single source of
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`proof or witness to be ‘double counted’ or unduly influence the analysis.”) (citation omitted).
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`The Court, thus, finds that the only identified third-party witnesses properly considered under
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`this factor are Mr. Armstrong and Mr. Burns. The Court emphasizes that all parties carry a duty to
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`present to the Court more than suppositions and assumptions, reasonable or not. The Court is restrained
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`in its analysis by precedent and must support its findings and conclusions underlying its fact-intensive
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`inquiry into the relative convenience of the parties in presenting their cases at trial with more than a
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`scintilla of evidence here and a wisp of supposition there. Apple has presented no substantive evidence
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`under this factor as to its former employees, nor did Apple present any rebuttal to AGIS’s report of
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`Mr. Burns’ change in employment. The Court also found it appropriate, for the reasons discussed
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`above, to give the Northern District’s ability to compel Mr. Burns less weight under this factor given
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`Case 2:17-cv-00516-JRG Document 76 Filed 06/06/18 Page 12 of 19 PageID #: 1385
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`his potential irrelevance and quasi-party witness status. Additionally, while, in its reply Apple raised,
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`for the first time, the presence of “thirteen named inventors of patents relied upon by Apple in its
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`invalidity contentions are located in the Northern District of California” the Court cannot help but find
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`this speculative and of little consequence. In doing so, the Court considers when these supposed
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`witnesses were first identified, Apples’ admission at argument that “one or two might” testify at trial,
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`that “a couple of these individuals might be relevant at trial,” and Apple’s representation that their
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`investigation into the relevance of these individuals is ongoing and “depending on how that goes, there
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`is, you know, at least a good possibility that [the location of these individuals] should be afforded some
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`weight.” (Dkt. No. 74, Hr’g Tr. at 26:6; 26:17–18; 26:14–16). Accordingly, the Court finds this factor
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`to weigh against transfer.
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`iii. Cost of Attendance for Willing Witnesses
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`
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`The third private interest factor focuses on the cost of attendance for willing witnesses.
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`When considering this factor, the court should consider all potential material and relevant
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`witnesses. See Alacritech Inc. v. CenturyLink, Inc., No. 2:16-cv-693, 2017 WL 4155236, at *5
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`(E.D. Tex. Sept. 19, 2017). “When the distance between an existing venue for trial of a matter and
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`a proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses
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`increases in direct relationship to the additional distance to be travelled.” Id. at 1343 (citing
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`Volkswagen II, 545 F.3d at 317). However, as other courts applying Fifth Circuit venue law have
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`noted, the convenience of party witnesses is given little weight. See ADS Sec. L.P. v. Advanced
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`Detection Sec. Servs., Inc., No. A-09-CA-773-LY, 2010 WL 1170976, at *4 (W.D. Tex. Mar. 23,
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`2010), report and recommendation adopted in A-09-CA-773-LY (Dkt. No. 20) (Apr. 14, 2010)
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`(“[I]t is unclear whether Defendant is contending that the transfer would be more convenient for
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`non-party witnesses or merely for their own employee witnesses. If the Defendant is referring to
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`employee witnesses, then their convenience would be entitled to little weight.”); see also Frederick
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`Case 2:17-cv-00516-JRG Document 76 Filed 06/06/18 Page 13 of 19 PageID #: 1386
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`v. Advanced Fin. Sols., Inc., 558 F. Supp. 699, 704 (E.D. Tex. 2007) (“The availability and
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`convenience of party-witnesses is generally insignificant because a transfer based on this factor
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`would only shift the inconvenience from movant to nonmovant.”).
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`
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`First, the Court addresses the deferred consideration of Mr. McAlexander from above. The
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`Court has not had much cause to consider expert witnesses in its analysis of § 1404 motions.
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`However, on survey of Fifth Circuit precedent, the Court finds a variety of approaches. Compare
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`MedioStream, Inc. v. Acer Am. Corp., No. 2:07-cv-376, 2008 U.S. Dist. LEXIS 74066, at *10
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`(E.D. Tex. Sep. 26, 2008) (“The convenience of expert witnesses is generally accorded little weight
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`in the transfer analysis.”), Q W. Energy v. GE, No. 3:98-cv-1491-P, 1998 U.S. Dist. LEXIS 19771,
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`at *6 (N.D. Tex. Dec. 1, 1998) (same), and Ducote v. Cenac Towing Co., No. G-06-211, 2006 U.S.
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`Dist. LEXIS 52722, at *8 (S.D. Tex. July 13, 2006) (“[T]he testimony of an expert witness can be
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`compelled at trial and thus the convenience of experts is also given relatively lesser weight.”), with
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`Aloft Media, LLC v. Adobe Sys., No. 6:07-cv-355, 2008 U.S. Dist. LEXIS 23601, at *20 (E.D. Tex.
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`Mar. 25, 2008) (“Finally, a patent trial often revolves around the strength of expert witness
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`testimony, and many experts are also non-party witnesses”), Mortensen v. Maxwell House Coffee
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`Co., 879 F. Supp. 54, 56 (E.D. Tex. 1995) (“The vast majority of the witnesses, both fact and
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`expert, reside in the Southern District. None reside in the Eastern District. The Southern District
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`forum, therefore, offers lower costs for obtaining witnesses and other trial expenses.”), Cypress
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`Drilling, Inc. v. Griffin, No. 06-0556, 2006 U.S. Dist. LEXIS 52405, at *10 (W.D. La. July 31,
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`2006) (considering convenience of expert witness), and Verde v. Stoneridge, Inc., No. 6:14-cv-
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`157, 2014 U.S. Dist. LEXIS 197637, at *13 (E.D. Tex. Aug. 25, 2014) (same). Accordingly, the
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`Court finds it appropriate to give Mr. McAlexander’s convenience little weight, but not no weight.
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`13
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`Case 2:17-cv-00516-JRG Document 76 Filed 06/06/18 Page 14 of 19 PageID #: 1387
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`
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`Moving on, Apple submits that “[a]ll of Apple’s potentially relevant witnesses related to
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`the research, development, and marke