Case 2:17-cv-00676-RWS-RSP Document 21 Filed 12/07/17 Page 1 of 24 PageID #: 375
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`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Godo Kaisha IP Bridge 1
`
`vs.
`
`Intel Corporation
`
`Plaintiff,
`
`Defendant.
`
`
`
`
`
`Civil Action No. 2:17-cv-00676-RWS-RSP
`
`
`
`INTEL’S MOTION TO DISMISS FOR IMPROPER VENUE OR, IN
`THE ALTERNATIVE, TO TRANSFER TO THE DISTRICT OF OREGON
`
`
`
`
`
`

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`Case 2:17-cv-00676-RWS-RSP Document 21 Filed 12/07/17 Page 2 of 24 PageID #: 376
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`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ....................................................................................................................... 1
`
`Background ....................................................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`Godo Kaisha and the Asserted Patents Are Based in Japan, Not Texas ................. 2
`
`Intel and the Accused Technologies Are Based in Oregon, Not Texas .................. 3
`
`Third-Party Witnesses Are Based in Oregon, Not Texas ....................................... 6
`
`III.
`
`Legal Standard .................................................................................................................. 6
`
`IV. Argument ........................................................................................................................... 7
`
`A.
`
`B.
`
`Venue Is Improper under 28 U.S.C. § 1400(b). ...................................................... 8
`
`In the Alternative, the Convenience of the Parties and Witnesses and the
`Interests of Justice Compel Transfer of this Case to the District of Oregon ........ 10
`
`1.
`
`2.
`
`Godo Kaisha Could Have Filed This Case in the District of
`Oregon....................................................................................................... 11
`
`The Private-Interest Factors Heavily Favor Transfer to Oregon. ............. 11
`
`a.
`
`b.
`
`c.
`
`d.
`
`The sources of proof for this case are in or near Oregon. ............. 11
`
`No compulsory process exists over relevant third-party
`witnesses in this District. .............................................................. 12
`
`Costs and burdens for willing witnesses are significantly
`less in Oregon than this District. ................................................... 13
`
`No practical concerns outweigh the convenience of transfer
`to Oregon. ..................................................................................... 14
`
`3.
`
`The Public-Interest Factors Favor Transfer to Oregon ............................. 15
`
`a.
`
`b.
`
`Oregon has a strong local interest in this case. ............................. 15
`
`The remaining public-interest factors are neutral. ........................ 15
`
`V.
`
`Conclusion ....................................................................................................................... 15
`
`
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`
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`
`i
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`Case 2:17-cv-00676-RWS-RSP Document 21 Filed 12/07/17 Page 3 of 24 PageID #: 377
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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Battee v. Ben E. Keith Co.,
`No. 17-0161, 2017 WL 1832043 (E.D. Tex. May 5, 2017).....................................................14
`
`Bristol-Myers Squibb Co. v. Mylan Pharms.,
`No. 17-379, 2017 WL 3980155 (D. Del. Sept. 11, 2017) ..........................................................9
`
`Cannon Mfg. Co. v. Cudahy Packing Co.,
`267 U.S. 333 (1925) ...................................................................................................................8
`
`Deep Green Wireless, LLC. v. Ooma, Inc.,
`No. 16-604, 2017 WL 679643 (E.D. Tex. Feb. 21, 2017) .................................................13, 14
`
`Freudensprung v. Offshore Tech. Servs., Inc.,
`379 F.3d 327 (5th Cir. 2004) .....................................................................................................8
`
`Godo Kaisha IP Bridge 1 v. Broadcom Ltd.,
`No. 16-134 .....................................................................................................................2, 13, 14
`
`Hutchinson v. Tex. Historical Comm’n,
`No. 11-65, 2011 WL 6181601 (E.D. Tex. Sept. 12, 2011),
`report and recommendation adopted, 2011 WL 6181262 (E.D. Tex. Dec. 12,
`2011) ........................................................................................................................................15
`
`In re Cray Inc.,
`871 F.3d 1355 (Fed. Cir. 2017)..........................................................................................7, 8, 9
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)..........................................................................................12, 15
`
`In re Google Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ....................................................14
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................15
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)....................................................................................10, 11, 15
`
`In re TS Tech. Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)................................................................................................12
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ...............................................................................................7, 13
`
`ii
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`
`
`In re Zimmer Holdings, Inc.,
`609 F.3d 1378 (Fed. Cir. 2010)................................................................................................14
`
`Int’l Shoe Co. v. Washington,
`326 U.S. 310 (1945) .................................................................................................................11
`
`LoganTree LP v. Garmin Int’l, Inc.,
`No. 17-098, 2017 WL 2842870 (W.D. Tex. June 22, 2017) .....................................................9
`
`Network-1 Sec. Sols., Inc. v. D-Link Corp.,
`433 F. Supp. 2d 795 (E.D. Tex. 2006) .....................................................................................12
`
`On Semiconductor Corp. v. Hynix Semiconductor, Inc.,
`No. 09-390, 2010 WL 3855520 (E.D. Tex. Sept. 30, 2010) ....................................................12
`
`Phillips v. Baker,
`121 F.2d 752 (9th Cir. 1941) .....................................................................................................8
`
`Robinson v. Harley-Davidson Motor Co.,
`316 P.3d 287 (Or. 2013) ..........................................................................................................11
`
`Soverain IP, LLC v. AT&T, Inc.,
`No. 17-293, 2017 WL 5126158 (E.D. Tex. Oct. 31, 2017) .......................................................8
`
`TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
`137 S. Ct. 1514 (2017) ...............................................................................................................6
`
`Voxpath RS, LLC v. LG Elecs. U.S.A., Inc.,
`No. 10-160, 2012 WL 194370 (E.D. Tex. Jan. 23, 2012)........................................................14
`
`Statutes
`
`28 U.S.C. §§ .....................................................................................................................................7
`
`28 U.S.C. §§ 1331, 1338(a) ...........................................................................................................11
`
`28 U.S.C. § 1400(b) ............................................................................................................... passim
`
`28 U.S.C. § 1404(a) ...............................................................................................................2, 7, 14
`
`28 U.S.C. § 1406(a) .........................................................................................................................7
`
`35 U.S.C. § 101 et seq....................................................................................................................11
`
`Other Authorities
`
`U.S. Patent Nos. 5,953,635 ..............................................................................................................6
`
`U.S. Patent Nos. 6,649,515 ..............................................................................................................6
`
`iii
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`Case 2:17-cv-00676-RWS-RSP Document 21 Filed 12/07/17 Page 5 of 24 PageID #: 379
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`
`
`Exhibit 1
`Exhibit 2
`Exhibit 3
`
`Exhibit 4
`Exhibit 5
`Exhibit 6
`Exhibit 7
`Exhibit 8
`Exhibit 9
`Exhibit 10
`Exhibit 11
`Exhibit 12
`Exhibit 13
`Exhibit 14
`Exhibit 15
`Exhibit 16
`
`Exhibit 17
`Exhibit 18
`Exhibit 19
`Exhibit 20
`Exhibit 21
`Exhibit 22
`Exhibit 23
`Exhibit 24
`
`TABLE OF EXHIBITS
`
`IP Bridge, Inc., What We Do (retrieved Nov. 15, 2017)
`Texas Secretary of State Business Organizations Inquiry (“IP Bridge”)
`Texas Secretary of State Business Organizations Inquiry (“Godo Kaisha IP
`Bridge”)
`Texas Accurint Property Deeds (“Godo Kaisha IP Bridge”)
`Orbis, LinkedIn, and Facebook Profiles for Godo Kaisha Employees
`U.S. Patent No. 6,602,802 USPTO Assignment
`U.S. Patent No. 6,197,696 USPTO Assignment
`U.S. Patent No. RE41980 USPTO Assignment
`U.S. Patent No. 7,279,727 USPTO Assignment
`U.S. Patent No. 6,709,950 USPTO Assignment
`U.S. Patent No. 6,967,409 USPTO Assignment
`U.S. Patent No. 6,346,736 USPTO Assignment
`U.S. Patent No. 7,800,165 USPTO Assignment
`U.S. Patent No. 6,387,824 USPTO Assignment
`Panasonic Corp., Company Overview (retrieved Nov. 15, 2017)
`U.S. Patent and Trademark Office (USPTO) Filings for Inventors of the
`Patents-in-Suit
`’696 Patent Prosecuting Attorneys Practitioner Registration Profiles
`’980 Patent Prosecuting Attorneys Practitioner Registration Profiles
`’727 Patent Prosecuting Attorneys Practitioner Registration Profiles
`’950 Patent Prosecuting Attorneys Practitioner Registration Profiles
`’409 Patent Prosecuting Attorneys Practitioner Registration Profiles
`’736 Patent Prosecuting Attorneys Practitioner Registration Profiles
`’165 Patent Prosecuting Attorneys Practitioner Registration Profiles
`’824 Patent Prosecuting Attorneys Practitioner Registration Profiles
`
`iv
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`Case 2:17-cv-00676-RWS-RSP Document 21 Filed 12/07/17 Page 6 of 24 PageID #: 380
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`
`Exhibit 25
`Exhibit 26
`Exhibit 27
`Exhibit 28
`
`Exhibit 29
`Exhibit 30
`Exhibit 31
`Exhibit 32
`Exhibit 33
`Exhibit 34
`Exhibit 35
`Exhibit 36
`Exhibit 37
`Exhibit 38
`Exhibit 39
`
`Exhibit 40
`
`Exhibit 41
`
`Exhibit 42
`Exhibit 43
`Exhibit 44
`Exhibit 45
`Exhibit 46
`Exhibit 47
`Exhibit 48
`
`’802 Patent Prosecuting Attorneys Practitioner Registration Profiles
`Intel Corp., Intel in Oregon (retrieved Dec. 3, 2017)
`Hoovers Profile for McAfee, LLC (Nov. 16, 2017)
`McAfee, LLC., A Brand New McAfee Commits to Building a Safer Future
`(April 3, 2017)
`LinkedIn Profile of Ebrahim Andideh
`U.S. Patent No. 5,953,635
`U.S. Patent No. 5,270,264
`U.S. Patent No. 5,877,072
`LinkedIn Profile of Peter Moon
`U.S. Patent No. 6,649,515
`U.S. Patent No. 6,908,829
`Orbitz Flights Inquiry, PDX to SHV
`Orbitz Flights Inquiry, PDX to GGG
`Orbitz Flights Inquiry, PDX to DFW
`Google Maps Inquiry, Shreveport Regional Airport to U.S. District Court,
`Marshall, Texas
`Google Maps Inquiry, East Texas Regional Airport, Longview, Texas to U.S.
`District Court, Marshall, Texas
`Google Maps Inquiry, Dallas/Fort Worth International Airport to U.S. District
`Court, Marshall, Texas
`Timeanddate.com Inquiry, Distance from Portland Oregon to Tokyo, Japan
`Timeanddate.com Inquiry, Distance from Tyler, Texas to Tokyo, Japan
`Orbitz Flights Inquiry, NRT to PDX
`Orbitz Flights Inquiry, NRT to GGG
`Orbitz Flights Inquiry, NRT to SHV
`Orbitz Flights Inquiry, NRT to DFW
`LegalMetric, LegalMetric District Report, Texas Eastern District Court
`(September 2017)
`
`v
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`Case 2:17-cv-00676-RWS-RSP Document 21 Filed 12/07/17 Page 7 of 24 PageID #: 381
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`
`Exhibit 49
`
`Exhibit 50
`
`Exhibit 51
`
`Exhibit 52
`Exhibit 53
`Exhibit 54
`
`Exhibit 55
`Exhibit 56
`Exhibit 57
`Exhibit 58
`Exhibit 59
`Exhibit 60
`
`LegalMetric, LegalMetric District Report, Oregon District Court (September
`2017)
`S&P Global Market Intelligence, S&P Capital IQ Report for McAfee LLC
`(Dec. 4, 2017)
`S&P Global Market Intelligence, S&P Capital IQ Report for Intel Corp. (Dec.
`4, 2017)
`Orbis Company Report of IP Bridge, Inc.
`Intel Corp., Manufacturing Process: Copy Exactly! (retrieved Dec. 6, 2017)
`Google Maps Inquiry, Portland International Airport to U.S. District Court,
`Portland, Oregon
`Excerpts from Intel’s Annual Report 1978
`Intel Work-Life Balance
`Intel Security Group Website (Wayback Machine)
`Intel - Delaware Corporate Registration
`Google Maps Inquiry, Hillsboro, OR to U.S. District Court, Portland, OR
`Qorvo, Merger of RFMD and TriQuint Is Now Complete, Qorvo Emerges as a
`New Leader in RF Solutions (January 2, 2015)
`
`vi
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`
`I.
`
`INTRODUCTION
`
`Plaintiff Godo Kaisha IP Bridge 1 (“Godo Kaisha”), a Tokyo-based IP fund with no
`
`operations, offices, or employees in Texas, should not have brought this patent-infringement case
`
`here. It cannot legally maintain this case against Intel here under 28 U.S.C. § 1400(b). Intel is
`
`not incorporated in Texas and does not have a “regular and established place of business” in this
`
`District. To justify its choice of venue, Godo Kaisha alleges that Intel has two such places—a
`
`site in Plano and a site in Richardson. But, in fact, neither “place” renders venue in this District
`
`proper. The Plano site is not Intel’s. It is McAfee’s, a separate company that Intel divested in
`
`April 2017, six months before Godo Kaisha filed this suit. The Richardson site is a former
`
`Altera sales office, which Intel inherited when it acquired that company on December 28, 2015.
`
`That office is not “regular and established”—before Godo Kaisha filed its Complaint, Intel
`
`decided to consolidate the Richardson operations and employees into an existing Intel office
`
`outside this District in Dallas, Texas. That consolidation will be complete in a few weeks (by the
`
`end of 2017). Neither office therefore is an Intel “regular and established place of business” in
`
`this District.
`
`In the alternative, even if the Court finds venue proper, the Court should exercise its
`
`discretion to transfer this case to the District of Oregon. Intel is the only defendant in this case.
`
`The accused Intel technology was developed in Oregon and is manufactured in Oregon, at Intel’s
`
`main design and fabrication facilities. Intel documents related to the accused technology are in
`
`Oregon. Intel employees knowledgeable about the structure, function, design, development,
`
`manufacture, operation, sales, or marketing of that technology live and work in Oregon.
`
`Requiring these witnesses to travel almost 2,000 miles to this District would disrupt their lives
`
`and work.
`
`Godo Kaisha similarly lacks meaningful connections to this venue. The Tokyo-based IP
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`
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`

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`Case 2:17-cv-00676-RWS-RSP Document 21 Filed 12/07/17 Page 9 of 24 PageID #: 383
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`fund bought the asserted patents from Panasonic, a company likewise based in Japan. All 20
`
`inventors lived in Japan when the asserted patents were filed and presumably still live there
`
`today. Thus, in addition to the inconvenience to Intel and disrupting its operating business,
`
`keeping the case here would require these Japanese-based witnesses to fly over the more-
`
`convenient jurisdiction where venue lies (Oregon) to reach this District. Even the U.S.-based
`
`attorneys who prosecuted the asserted patents are located outside of this District. Godo Kaisha’s
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`sole connection to this District is its two prior suits against unrelated defendants. But neither
`
`case is pending—one has settled and the other was transferred—and the Court addressed only
`
`two of the nine patents at issue here in earlier claim-construction proceedings. Thus, these prior
`
`suits do not outweigh the overwhelming convenience to both parties of litigating this case in
`
`Oregon.
`
`Intel therefore respectfully requests that this case be dismissed for improper venue under
`
`28 U.S.C. § 1400(b), or, in the alternative, be transferred under 28 U.S.C. § 1404(a) or § 1406(a)
`
`to the District of Oregon, a more convenient forum and where venue indisputably lies.
`
`II.
`
`BACKGROUND
`
`A.
`
`Godo Kaisha and the Asserted Patents Are Based in Japan, Not Texas
`
`Godo Kaisha, “Japan’s first and only dedicated IP fund,” is based in Tokyo, Japan. Exs.
`
`1, 52.1 It is not registered to do business in Texas and has no property in this State. Exs. 2–4.
`
`All Godo Kaisha employees of which Intel is aware are located in Japan.2 Ex. 5. Godo Kaisha’s
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`Complaint identifies no witnesses or evidence—of its own or anyone else’s—within Texas,
`
`much less within this District. Godo Kaisha’s sole connection to this district is two earlier
`
`1 All Exhibit cites refer to the exhibits to the Declaration of Christopher M. Lawless.
`
`2 Although IP Bridge’s English website lists Hiromi Matsusaka as an employee, Intel has been
`unable to find any information about his current location.
`
`
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`2
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`

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`
`lawsuits: Godo Kaisha IP Bridge 1 v. Broadcom Ltd., No. 16-134, and Godo Kaisha IP Bridge 1
`
`v. Xilinx, Inc., No. 17-100. The Broadcom case settled before trial in May 2017, (Broadcom Dkt.
`
`No. 324), and this Court transferred the Xilinx case to California in September 2017, before any
`
`Markman hearing. Godo Kaisha IP Bridge 1 v. Xilinx, Inc., No. 17-100, 2017 WL 4076052, at
`
`*3 (E.D. Tex. Sept. 14, 2017).
`
`In this case, Godo Kaisha asserts nine patents against Intel that allegedly claim features
`
`of, and fabrication methods for, certain semiconductor structures (“Asserted Patents”). D.I. 1 ¶
`
`1. Panasonic (formerly Matsushita) assigned the Asserted Patents to Godo Kaisha in 2014. Exs.
`
`6–14. Panasonic’s principal place of business is in Osaka, Japan. Ex. 15. All 20 named
`
`inventors lived in Japan when the patents were filed and appear to live in Japan to this day. Ex.
`
`16. Attorneys in Washington, D.C. and Virginia prosecuted the Asserted Patents and still hold
`
`the powers of attorney for those patents.3 Exs. 17–25.
`
`B.
`
`Intel and the Accused Technologies Are Based in Oregon, Not Texas
`
`Intel is the world leader in semiconductor technology and microprocessor products. It is
`
`a Delaware corporation with its principal place of business in California. Exs. 51, 58. In 1978,
`
`Intel relocated its primary semiconductor design, development, and production facilities from
`
`Santa Clara, California to Hillsboro, Oregon. Ex. 55 at 18. These facilities, known as Intel’s
`
`Portland Technology Development (“PTD”), are home to Intel’s largest and most comprehensive
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`site in the world, with operations spanning five campuses with over 19,000 full-time employees.
`
`Ex. 26. Intel’s PTD follows a “Copy Exactly!” philosophy, meaning that the fabrication
`
`processes developed at these facilities are then replicated at Intel’s other “fabs” throughout the
`
`3 Four other attorneys practicing outside of Washington, D.C. and Virginia signed a power of
`attorney but did not sign any PTO submissions during prosecution. See Exs. 16, 20, 21, 22, 24,
`25 (showing attorneys Eisen, Friedman, Moore, and Kubasiewicz practicing in Maryland or
`Florida).
`
`
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`3
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`world. Ex. 53; Auth Decl. ¶ 9.
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`Godo Kaisha accuses Intel’s 14nm, 22nm, 32nm, and 45nm process node semiconductor
`
`products (“Accused Products”) of infringing the Asserted Patents. D.I. 1 ¶ 14. These Accused
`
`Products were developed and first manufactured in Intel’s PTD in Oregon under Intel’s “Copy
`
`Exactly!” philosophy. Auth Decl. ¶ 9. Accused Products are still manufactured in Oregon, and
`
`those Oregon-developed processes have also been implemented at Intel’s fabs in New Mexico,
`
`Arizona, Israel, and Ireland. Id. Thousands of Intel employees in Oregon are involved with the
`
`Accused Products. Id. ¶ 6. Many of those employees are involved with and knowledgeable
`
`about the research, development, and design of these products. For example, Chris Auth,
`
`Director of Advanced Transistor Development at Intel’s Hillsboro, Oregon campus, supervises
`
`approximately 100 individuals who researched, developed, engineered, and designed the
`
`Accused Products. Id. ¶¶ 3, 5, 7. Other Oregon-based employees knowledgeable about the
`
`research, development, and design of the Accused Products are Ian Post, Doug Ingerly, Chris
`
`Pelto, Ruth Brain, Tom Rong, Kevin Fischer, Shahriar Akbar, Anindya Dasgupta, and Bruce
`
`Tufts. Id. ¶ 7. Still other Intel employees located in Oregon are knowledgeable about earlier
`
`technologies that may be prior art to the Asserted Patents, including Brian Doyle, Jack
`
`Kavalieros, and Robert Chau. Id. Because the Accused Products and related processes were
`
`developed at Intel’s PTD in Oregon, documents relating to their research, development, and
`
`design are located in Oregon, including specifications, design documents, and other technical
`
`documents. Id. ¶ 8.
`
`Intel’s sales, marketing, and finance activities related to the Accused Products are also
`
`based predominantly at Intel’s Hillsboro, Oregon campus and at Intel’s corporate headquarters in
`
`Santa Clara, California. Id. ¶ 10. Most of the individuals knowledgeable about the sales,
`
`
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`4
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`marketing, and financing of the Accused Products, including Mr. Shannon Poulin, Vice President
`
`and General Manager, Industry Sales Group, are in Oregon or Northern California and
`
`documents relating to these activities are located there too. Id. Moreover, Intel operates a daily
`
`airplane shuttle between Intel’s U.S. offices, which includes the two-hour flight between its
`
`Santa Clara headquarters and Hillsboro, Oregon. Ex. 56.
`
`Intel does not own or rent any research, development, engineering, or design facilities in
`
`this District related to the Accused Products. Auth Decl. ¶ 9; Guesner Decl. Nor do any Intel
`
`employees who live in this District have particular knowledge, documentation, or job
`
`responsibilities relating to the design and development of the Accused Products. Auth Decl.
`
`¶ 11. Intel is also not aware of any such documents in this District. Id. ¶¶ 8, 11.
`
`Regarding its claim that venue is proper under § 1400(b), Godo Kaisha identifies two
`
`addresses in this District: 5000 Headquarters Drive in Plano, Texas (“Plano site”), and 3400
`
`Waterview Parkway, in Richardson, Texas (“Richardson site”). D.I. 1 ¶ 7. McAfee’s Plano site
`
`is not an Intel facility. Rather, it is owned by a distinct and separate entity, McAfee, a virus
`
`protection and internet security company, having no relation to the Accused Products. Ex. 27.
`
`Intel divested McAfee in April 2017, nearly six months before Godo Kaisha filed its Complaint.
`
`Ex. 28. Although Intel retains a minority ownership interest in McAfee, McAfee is a standalone
`
`corporation. Id. Intel and McAfee have separate headquarters and separate directors and
`
`officers. Id; compare Ex. 50 with Ex. 51. Even before the divestiture, the Plano site was not
`
`involved with Accused Products and instead provided computer and internet security products.
`
`Ex. 57; Guesner Decl. ¶ 7.
`
`The Richardson site is a sales office of the former Altera, a company Intel acquired in
`
`December 2015. D.I. 1 ¶ 7; Guesner Decl. ¶¶ 3-5. After the acquisition, Intel began
`
`
`
`5
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`consolidating Altera’s operations into existing Intel facilities. Id. ¶ 6. Before this case was even
`
`filed, Intel decided to close the Richardson sales office and consolidate it with a nearby Intel site.
`
`Id. ¶¶ 6-8. The Richardson site will be closed by the end of 2017 and its 11 employees will
`
`relocate to Intel’s Dallas office. Id. ¶ 9. Since the acquisition, the role of the Richardson site has
`
`remained limited to the sales and marketing of Altera products. Id. ¶¶ 4-5. The Richardson site
`
`did not design, develop, test, or manufacture any of the Accused Products, and no relevant
`
`witnesses or documents are located there. Id. ¶¶ 3-5.
`
`Finally, Intel has 16 “virtual” employees who live in the Eastern District. Ten of those
`
`virtual employees are assigned to the same Dallas office where the Richardson employees are
`
`moving. Kuz Decl. ¶ 3. The other six virtual employees work from their homes, not an Intel-
`
`owned or operated facility. Id.
`
`C.
`
`Third-Party Witnesses Are Based in Oregon, Not Texas
`
`Intel is not aware of any third-party witness relevant to this case in Texas or within 100
`
`miles of this District. By contrast, at least two former Intel employees still living and working in
`
`Oregon are knowledgeable about the prior art:
`
` Ebrahim Andideh was a Senior Principal Engineer at Intel from 1990 to 2008 and
`left Intel in 2013. Mr. Andideh is a named inventor on three prior art patents
`(U.S. Patent Nos. 5,953,635; 5,270,264; 5,877,072) and works at Qorvo, Inc. in
`Hillsboro, Oregon. Exs. 29–32.
`
` Peter Moon was a Senior Principal Engineer at Intel from 1988 to 2009. Mr.
`Moon is a named inventor on two prior art patents (U.S. Patent Nos. 6,649,515;
`6,908,829) and works at Qorvo, Inc. in Hillsboro, Oregon. Exs. 33–35, 60.
`
`III. LEGAL STANDARD
`
`Under 28 U.S.C. § 1400(b), “[a]ny civil action for patent infringement may be brought in
`
`the judicial district where the defendant resides, or where the defendant has committed acts of
`
`infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). The
`
`
`
`6
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`Supreme Court recently held that the first prong of § 1400(b), “where the defendant resides,”
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`“refers only to the State of incorporation.” TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
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`137 S. Ct. 1514, 1520 (2017). The second prong, a “regular and established place of business,”
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`requires that: “(1) there must be a physical place in the district; (2) it must be a regular and
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`established place of business; and (3) it must be the place of the defendant.” In re Cray Inc., 871
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`F.3d 1355, 1360 (Fed. Cir. 2017). “[T]he regular and established place of business standard
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`requires more than the minimum contacts necessary for establishing personal jurisdiction or for
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`satisfying the doing business standard of the general venue provision.” Id. at 1361.
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`Even if venue is proper under § 1400(b), a case may still be transferred under § 1404(a),
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`“[f]or the convenience of parties and witnesses, in the interest of justice, … to any other district
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`or division where it might have been brought ….” 28 U.S.C. § 1404(a). In the Fifth Circuit,
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`courts consider both private- and public-interest factors in deciding whether transfer is
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`appropriate:
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`Private Interest Factors: “(1) the relative ease of access to sources of proof; (2) the
`availability of compulsory process to secure the attendance of witnesses; (3) the
`cost of attendance for willing witnesses; and (4) all other practical problems that
`make trial of a case easy, expeditious and inexpensive.”
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`Public Interest Factors: “(1) the administrative difficulties flowing from court
`congestion; (2) the local interest in having localized interests decided at home; (3)
`the familiarity of the forum with the law that will govern the case; and (4) the
`avoidance of unnecessary problems of conflict of laws [or in] the application of
`foreign law.”
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`In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc).
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`IV. ARGUMENT
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`Because Intel does not have a “regular and established place of business” here, Godo
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`Kaisha cannot establish venue under 28 U.S.C. § 1400(b). The case should therefore be
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`dismissed. In the alternative, given the lack of meaningful connections to this District and the
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`substantial number of witnesses and documents in Oregon, the case should be transferred to the
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`District of Oregon under 28 U.S.C. §§ 1404(a), 1406(a).
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`A.
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`Venue Is Improper under 28 U.S.C. § 1400(b)
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`The Court should dismiss this case for improper venue. Intel does not “reside” in Texas
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`because it is incorporated in Delaware. Ex. 58. Nor does Intel have “a regular and established
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`place of business” in this District. 28 U.S.C. § 1400(b). The “main purpose” of the venue statute
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`is to permit venue only where the defendant has a “permanent” place of business. Cray, 871
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`F.3d at 1361, 1363. No such place exists here.
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`In its Complaint, Godo Kaisha identifies two physical “places” to support its venue
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`allegations: the Plano site and the Richardson site. D.I. 1 ¶ 7. The Plano site is not owned or
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`operated by Intel, but instead belongs to a separate company, McAfee, which Intel divested
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`months before Godo Kaisha filed its Complaint. Ex. 28. McAfee is a security software
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`company, and its Plano site had no involvement with the Accused Products, and no relevant
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`documents or witnesses exist there. Exs. 28, 57. Although Intel owns a minority stake in
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`McAfee, McAfee is a “standalone” company with separate headquarters, directors, and officers
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`from Intel. Ex. 28; compare Ex. 50 with Ex. 51; Freudensprung v. Offshore Tech. Servs., Inc.,
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`379 F.3d 327, 346 (5th Cir. 2004). Neither Intel nor McAfee “disregard[ed] corporate
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`separateness,” and thus, McAfee’s “presence in [this District] cannot be imputed to [Intel].”
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`Soverain IP, LLC v. AT&T, Inc., No. 17-293, 2017 WL 5126158, at *1 (E.D. Tex. Oct. 31,
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`2017); see also Cannon Mfg. Co. v. Cudahy Packing Co., 267 U.S. 333, 334-35 (1925). Because
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`Intel does not “actually engage in business from” Plano, that site cannot support venue in this
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`District. Cray, 871 F.3d at 1364.
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`The soon-to-be-closed Richardson site is also not an Intel “regular and established place
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`of business.” Under the plain language of § 1400(b), “the particular place of business
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`8
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`Case 2:17-cv-00676-RWS-RSP Document 21 Filed 12/07/17 Page 16 of 24 PageID #: 390
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`contemplated [i]s not any place where business might be transacted, however temporarily, but
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`must be a permanent place of business.” Phillips v. Baker, 121 F.2d 752, 756 (9th Cir. 1941).
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`The business must be operated “in a steady[,] uniform[,] orderly[, and] methodical manner” and
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`must be “settle[d] certainly or fix[ed] permanently.” Cray, 871 F.3d at 1362. The Richardson
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`site does not meet this legal standard. Intel made plans well before Godo Kaisha filed its
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`Complaint to consolidate this and other Altera sites into existing Intel sites. Guesner Decl. ¶¶ 6-
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`9. The Richardson site and 11 employees are moving to an existing Intel office, outside the
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`District, the week after Christmas 2017.4 Id. ¶ 9. The office will be closed by the end of 2017.
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`Id. Moreover, since Intel’s acquisition of Altera, the office’s sales efforts have remained limited
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`to Altera products, and no relevant witnesses or documents are located there. Id. ¶ 3-5. This
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`soon-to-be-closed site is not a “settle[d] certainly or fix[ed] permanently” place of Intel and
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`therefore is not a proper a basis for venue under §1400(b). Cray, 871 F.3d at 1362.
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`Godo Kaisha’s remaining allegations are irrelevant to the “regular and established place
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`of [Intel] business” standard. Although Godo Kaisha references Intel’s “third party distributors
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`in Plano and elsewhere in this judicial District,” D.I. 1 ¶¶ 7, 9, those are not “a place of the
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`defendant.” Cray, 871 F.3d at 1363 (emphasis in original); see also LoganTree LP v. Garmin
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`Int’l, Inc., No. 17-098, 2017 WL 2842870, at *2 (W.D. Tex. June 22, 2017) (sales of defendants’
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`products “to distributors in Texas Western will not establish venue”). Moreover, even if Intel’s
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`corporate websites are “accessible to residents of the State of Texas and this judicial District,”
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`D.I. 1 ¶ 10, a website is not a “physical place in the district.” Cray, 871 F.3d at 1360; Bristol-
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`Myers Squibb Co. v. Mylan Pharms., No. 17-379, 2017 WL 3980155, at *16 (D. Del. S