Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 1 of 27 PageID #: 3571
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`THE HILLMAN GROUP, INC.
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`Plaintiff,
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`v.
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`KEYME, LLC
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`Defendant.
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`Civil Action No. 2:19-cv-00209-JRG
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`REDACTED VERSION OF
`DOCUMENT FILED UNDER
`SEAL AT DKT. NO. 129
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`KEYME, LLC’S MOTION TO DISMISS FOR IMPROPER VENUE OR, IN THE
`ALTERNATIVE, TO TRANSFER TO THE SOUTHERN DISTRICT OF NEW YORK
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 2 of 27 PageID #: 3572
`Case 2:19-cv-00209—JRG Document 130 Filed 04/16/20 Page 2 of 27 PageID #: 3572
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 3 of 27 PageID #: 3573
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`
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`Introduction ..........................................................................................................................1
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`Statement Of The Issues ......................................................................................................2
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`III.
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`Overview Of Relevant Facts ................................................................................................2
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`A.
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`B.
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`C.
`
`D.
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`KeyMe Is A Delaware Corporation With No Employees In This District ..............2
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`Hillman Is A Delaware Corporation Headquartered In Ohio With Its Key-
`Duplication Business Located In Tempe, Arizona ..................................................3
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`Overview Of KeyMe Kiosks ...................................................................................4
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`KeyMe Employs New York Employees And A Network Of Independent
`Contractors To Perform Ancillary Services Relating To Its Kiosk Business ..........5
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`IV.
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`Venue Is Not Proper In This District ...................................................................................6
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`A.
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`B.
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`C.
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`Legal Standard .........................................................................................................6
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`KeyMe Does Not Reside In This District ................................................................7
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`KeyMe Does Not Have A Regular And Established Place Of Business In
`This District .............................................................................................................7
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`1.
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`2.
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`In re Google Established Controlling Precedent .........................................8
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`There Are No KeyMe Employees Or Agents That Regularly
`Conduct KeyMe’s Business In This District ...............................................9
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`D.
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`The Court Need Not Address The “Physical Place” Or “Place Of The
`Defendant” Elements .............................................................................................15
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`V.
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`In The Alternative, The Court Should Transfer This Action .............................................15
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`A.
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`B.
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`Applicable Law ......................................................................................................15
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`Private Interest Factors Favor Transfer To The Southern District Of New
`York .......................................................................................................................16
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`1.
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`2.
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`3.
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`Access To Sources Of Proof Favors Transfer ............................................16
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`Compulsory Process Is Neutral ..................................................................17
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`Cost Of Attendance Favors Transfer .........................................................17
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`4.
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`Other Practical Issues Are Neutral .............................................................18
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`C.
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`Public Interest Factors Favor Transfer ...................................................................18
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`1.
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`2.
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`3.
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`The Southern District of New York’s Interests .........................................18
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`Speed To Trial Is Neutral ...........................................................................18
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`Remaining Public Interest Factors are Neutral ..........................................19
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`D.
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`Transfer To The District Of Delaware Would Also Be Appropriate .....................19
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 5 of 27 PageID #: 3575
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`TABLE OF AUTHORITIES
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`Cases
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`Page
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`Godo Kaisha IP Bridge 1 v. Xilinx, Inc.,
` No. 17-100, 2017 WL 4076052 (E.D. Tex. Sept. 14, 2017) .................................................... 15
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`In re Cray Inc.,
` 871 F.3d 1355 (Fed. Cir. 2017)........................................................................................ 7, 8, 14
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`In re Genentech,
` 566 F.3d 1338 (Fed. Cir. 2009).......................................................................................... 14, 16
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`In re Google LLC,
` 949 F.3d 1338 (Fed. Cir. 2020).......................................................................... 1, 2, 8, 9, 10, 11
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`In re Hoffman-La Roche Inc.,
` 587 F.3d 1333 (Fed. Cir. 2009)................................................................................................ 17
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`In re TS Tech USA Corp.,
` 551 F.3d 1315 (Fed. Cir. 2008)................................................................................................ 14
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`Meyer v. Holley,
` 537 U.S. 280 (2003) ................................................................................................................. 11
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`Pac. Gas & Elec. Co. v. United States,
` 838 F.3d 1341 (Fed. Cir. 2016)................................................................................................ 12
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`Personal Audio LLC v. Google, Inc.,
` 280 F. Supp. 3d 922 (E.D. Tex. 2017) ................................................................................. 9, 15
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`Seven Networks, LLC v. Google LLC,
` 315 F. Supp. 3d 933 (E.D. Tex. 2018) ....................................................................................... 8
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`Stonite Prods. Co. v. Melvin Lloyd Co.,
`315 U.S. 561 (1942) .................................................................................................................... 7
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`TC Heartland LLC v. Kraft Foods Group Brands LLC,
` 137 S. Ct. 1514 (2017) ........................................................................................................... 7, 8
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`Wireless Recognition Techs. LLC v. A9.com, Inc.,
` No. 2:10-cv-364-JRG, 2012 WL 506669 (E.D. Tex. Feb. 15, 2012) ...................................... 17
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`28 U.S.C. § 1400(b) ............................................................................................................ 2, 7, 8, 9
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`Statutory Authorities
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`28 U.S.C. § 1404 ........................................................................................................................... 14
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`28 U.S.C. § 1406(a) ............................................................................................................ 1, 14, 18
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`28 U.S.C. § 1694 ............................................................................................................................. 9
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`Rules and Regulations
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`Fed. R. Civ. P. 45(c)(1)(A) ........................................................................................................... 16
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`Additional Authorities
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`Restatement (Third) of Agency § 1.01 ................................................................................... 11, 12
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`Restatement (Third) Of Agency § 1.02, cmt. b (2006) ................................................................. 13
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`EXHIBIT LIST
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`Exhibit
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`Document
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`A
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`B
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`C
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`D
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`E
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`F
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`G
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`H
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`[SEALED] 2019-09-11 Frank James Abbott Deposition
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`The Hillman Companies Inc., 10-K (2019)
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`[SEALED] KEYME-000007 - Service Agreement
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`[SEALED] KEYME-000117 - Term Of Use Agreement
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`[SEALED] 2019-11-06 KeyMe LLC’s Initial Disclosure Statement
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`2019-11-06 Hillman Initial and Additional Disclosures
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`Lex Machina Data re: Pending Cases
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`[SEALED] Declaration of Greg Marsh
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`iv
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 7 of 27 PageID #: 3577
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`I.
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`INTRODUCTION
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`Defendant KeyMe, LLC (“Defendant” or “KeyMe”) moves to dismiss the First Amended
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`Complaint (Dkt. No. 30) filed by Plaintiff, The Hillman Group, Inc. (“Plaintiff” or “Hillman”),
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`for improper venue or, in the alternative, to transfer this matter to the United States District Court
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`for the Southern District of New York pursuant to 28 U.S.C. § 1406(a).1
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`KeyMe previously (through prior counsel) filed motions to dismiss for improper venue
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`and to transfer. (Dkt. Nos. 12, 14, 41). The Court denied those motions without prejudice in
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`connection with its Order disqualifying prior counsel. (Dkt. No. 20, at 19-20). KeyMe hereby
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`renews those motions, guided in large part by the Federal Circuit’s precedential opinion in In re
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`Google LLC, 949 F.3d 1338 (Fed. Cir. 2020). That opinion, released after KeyMe’s prior venue
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`motions were fully briefed and the day before the stay imposed in this action, clarified a
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`“fundamental and recurring issue of patent law” over which the district courts had been in
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`disagreement: whether a “regular and established place of business” under the patent venue
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`statute “requires the regular presence of an employee or agent of the defendant conducting the
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`business.” Id. at 1343. The Court concluded that such “regular, physical presence” is required,
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`id. at 1345, and in so holding, effectively resolved the venue dispute in this case.
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`KeyMe’s employees and agents do not conduct regular business in this District. KeyMe
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`does not have employees in this District, period, but conducts its business solely through
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`automated, self-service kiosks. Hillman has admitted as much: “KeyMe’s business is key
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`duplication, and it regularly conducts that business in this District via its self-service kiosks….”
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`(Dkt. No. 47, at 1.) (emphasis added). Although third parties install and service the kiosks in this
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`District, these people are not KeyMe agents and, at any rate, do not conduct KeyMe’s “business”
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`1 KeyMe is filing a substantively similar motion in a related case between the parties, Civil
`Action No. 2:20-cv-00070-JRG (the “070 Action”). KeyMe is also filing a motion to consolidate
`the 070 Action with this action because the 070 Action violates the rule against claim splitting.
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`1
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 8 of 27 PageID #: 3578
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`because the services they perform are ancillary and cannot confer venue as a matter of law. See
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`In re Google, 949 F. 3d at 1346 (“Maintaining equipment is meaningfully different from—as
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`only ancillary to—the actual producing, storing, and furnishing to customers of what the
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`business offers.”).
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`Because KeyMe has no employees or agents regularly present and conducting KeyMe’s
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`business in this District, venue is improper and this Court should dismiss. Should the Court
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`determine not to dismiss this case, the Court should order transfer to the Southern District of
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`New York or the District of Delaware, venues that are proper under Section 1400(b) and far
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`more convenient than this District for witnesses, KeyMe, and primary counsel for the parties. As
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`outlined herein, the public and private interest factors weigh strongly in favor of transfer.
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`II.
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`STATEMENT OF THE ISSUES
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`Per Local Rule CV-7(a)(1), KeyMe identifies the issues to be decided by the Court:
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`1. Whether venue in this District is proper; and
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`2. Whether the Court should dismiss this case or transfer it to the Southern District of
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`New York or the District of Delaware, where venue is proper.
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`III. OVERVIEW OF RELEVANT FACTS
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`A.
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`KeyMe Is A Delaware Corporation With No Employees In This District
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`KeyMe is a Delaware corporation with headquarters in New York City. See Ex. H,
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`Declaration of Greg Marsh (“Marsh Decl.”) ¶¶ 4-5. KeyMe develops, monitors, and operates its
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`kiosks from its headquarters, and also employs fulfillment technicians in New York who
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`manually create duplicates of keys that its kiosks are unable to duplicate on site. Id. ¶ 16.
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`KeyMe’s executive team and other knowledgeable personnel work in its New York office. Id. ¶
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`5. KeyMe has no offices, real property, employees, or consultants in this District. Id. ¶ 19.
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`B.
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`Hillman Is A Delaware Corporation Headquartered In Ohio With Its Key-
`Duplication Business Located In Tempe, Arizona
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`Hillman is a Delaware corporation with its principal place of business in Cincinnati,
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`Ohio. Ex. B (Hillman 2019 10-K) at 1. Hillman earns revenue from a sprawling array of
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`products of which key duplication plays only a small part. “Product lines include thousands of
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`small parts such as fasteners and related hardware items; threaded rod and metal shapes; keys,
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`key duplication systems, and accessories; builder’s hardware; personal protective equipment,
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`such as gloves and eye-wear; and identification items, such as tags and letters, numbers, and
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`signs.” Id. at 2. While Hillman’s complaint alleges that it has three locations in this District, see
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`Dkt. No. 30 ¶ 11, Hillman’s most recent Form 10-K discloses only two, both in Tyler, Texas.
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`See id. at 16. These facilities account for about 202,000 (5.7%) of Hillman’s 3,519,000 square-
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`foot footprint, id., and deal not in key duplication but in “threaded self-drilling fasteners, foam
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`closure strips, and other accessories to the steel-frame, post-frame, and residential building
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`markets,” id. at 41.
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`Hillman’s “Consumer Connected Solutions” group, which includes its key-duplication
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`kiosks among a host of other offerings, accounted for less than 20% of its total revenues in 2019.
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`Id. at 48. Hillman “design[s], manufacture[s], and assemble[s] the key duplication kiosks in our
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`Tempe, Arizona facility.” Id. at 5. Hillman also has an office in Boulder, Colorado, the former
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`headquarters of Minute Key, which made self-service key-duplication kiosks; Hillman bought
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`Minute Key, including two of the patents asserted in this case, in August 2018. Id. at 16, 53.
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 10 of 27 PageID #: 3580
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`C.
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`Overview Of KeyMe Kiosks
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`KeyMe has deployed kiosks throughout the United States. Marsh Decl. 1] 12. The kiosks
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`are located inside larger retail stores, such as grocery, convenience, and hardware / home
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`improvement stores. Id. Approximately 30 kiosks are located in the Eastern District of Texas.
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`Id.
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`The kiosks “are self-service machines” operated by the customer, not by KeyMe. Ex. A
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`(Abbott Tr.) at 105: 15-20. Like a vending machine or ATM machine, there is no human
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`operator at thekiosk-—
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`— Marsh Decl. 1[ 13. Each kiosk has a power connection and an
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`Internet connection.
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`When a customer wishes to duplicate a key, he or she inserts that key into the kiosk.
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`Inside each kiosk is an inventory of key “blanks,” and mechanical components like clamps and
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`saws that hold and cut a key blank to create a duplicate key using KeyMe’s propiietaly and
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`patented technology. If the kiosk is able to create a duplicate from a blank within the machine,
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`the kiosk will create the new key and dispense it to the customer.—
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`to 24:12.
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`Ex. A (Abbott Tr.) at 22:2
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`D.
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`KeyMe Employs New York Employees And A Network Of Independent
`Contractors To Perform Ancillary Services Relating To Its Kiosk Business
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`KeyMe relies on a host of other companies to manufacture, deliver, install, and service its
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`kiosks.
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`To determine which store(s) to place kiosks in within this District,
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`IV. VENUE IS NOT PROPER IN THIS DISTRICT
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`A.
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`Legal Standard
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 13 of 27 PageID #: 3583
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`Venue lies only “in the judicial district where the defendant resides, or where the
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`defendant has committed acts of infringement and has a regular and established place of
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`business.” 28 U.S.C. § 1400(b). In responding to a motion to dismiss for improper venue in a
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`patent case, “the Plaintiff bears the burden of establishing proper venue.” In re ZTE (USA) Inc.,
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`890 F.3d at 1013. The Supreme Court and Federal Circuit have recognized that Congress passed
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`a venue statute specific to patent cases as a “restrictive measure” and have repeatedly “cautioned
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`against a broad reading of the venue statute.” See In re Cray Inc., 871 F.3d 1355, 1361 (Fed.
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`Cir. 2017) (quoting Stonite Prods. Co. v. Melvin Lloyd Co., 315 U.S. 561, 566 (1942)).
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`B.
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`KeyMe Does Not Reside In This District
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`KeyMe does not reside in this district. A domestic corporation resides “only in its State
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`of incorporation for purposes of the patent venue statute,” TC Heartland LLC v. Kraft Foods
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`Group Brands LLC, 137 S. Ct. 1514, 1517 (2017), and KeyMe is incorporated in Delaware.
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`Thus, venue is appropriate only if KeyMe “has committed acts of infringement and has a
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`regular and established place of business” in the District. 28 U.S.C. § 1400(b). KeyMe does not
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`dispute that the alleged “acts of infringement” – the operation of the kiosks by customers – take
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`place in this District.3 Thus, venue hinges entirely on whether KeyMe “has a regular and
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`established place of business” in this District.
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`C.
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`KeyMe Does Not Have A Regular And Established Place Of Business In This
`District
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`To prove that a defendant has the “regular and established place of business” required by
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`the venue statute, “(1) there must be a physical place in the district; (2) it must be a regular and
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`3 KeyMe denies that it has committed any acts of infringement in this or any other District.
`However, the “acts of infringement” prong is satisfied by the allegation of infringement, Seven
`Networks, LLC v. Google LLC, 315 F. Supp. 3d 933, 944-45 (E.D. Tex. 2018), and Hillman
`alleges that “KeyMe has committed acts of patent infringement within the Eastern District of
`Texas.” Dkt. 29-2 ¶ 9.
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`established place of business; and (3) it must be the place of the defendant.” Cray, 871 F.3d at
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`1360 (emphasis added). Unless plaintiff can establish all three elements, venue is improper. Id.
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`Hillman cannot meet its burden based on undisputed facts. The Federal Circuit recently
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`held that the “regular and established place of business” element “requires the regular presence
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`of an employee or agent of the defendant conducting the business.” In re Google, 949 F.3d at
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`1345. This element is lacking, and so venue is improper as a matter of law. KeyMe maintains
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`no offices here. No KeyMe employee or agent regularly conducts business in this District.
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`, but they are not KeyMe
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`agents and their activities do not qualify as KeyMe’s “business.”
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`1.
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`In re Google Established Controlling Precedent
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`The Federal Circuit’s recent opinion in In re Google dictates the outcome here. There,
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`the Court ruled that the presence of Google servers in this District did not suffice to make venue
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`proper. The Court recognized that Google conducts its business (including serving advertising
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`and content to users) through those servers, which operate inside datacenters owned by internet
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`service providers (ISPs) on terms negotiated between Google and the ISPs. 949 F.3d at 1340-41.
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`But the Court determined that the servers hosted at the ISP datacenters were not a “regular and
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`established place of business.” Id. at 1344.
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`Importantly, in so holding, the Court ruled that the patent venue statute at 28 U.S.C.
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`§ 1400(b) is “expressly linked” to the patent service statute, 28 U.S.C. § 1694; both contain the
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`phrase “regular and established place of business.” 949 F.3d at 1344. The Court reasoned that
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`because the service statute requires a “permanent agency,” meaning a “regular, physical presence
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`of an agent” within a district, so does the venue statute. Id. at 1344-45. The Court further held
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`that a machine cannot be considered an “agent” for purposes of the venue statute unless and until
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`there is “recognition that service could be made on a machine pursuant to 28 U.S.C. § 1694.” Id.
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 15 of 27 PageID #: 3585
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`at 1347. This recognition has not (and may never) occur. See also Personal Audio LLC v.
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`Google, Inc., 280 F. Supp. 3d 922, 934 (E.D. Tex. 2017) (“To conclude that [Defendant’s]
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`business was being carried out by [the equipment] would have far-reaching consequences that
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`distort the scope of the [venue] statute….”).
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`After laying out that law, the Court turned to whether Google had any agents with a
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`regular physical presence in this District—there, as here, it was undisputed that the defendant
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`had no employees here—the Court found that, although Google contracts with the ISPs to install
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`and service the servers, such activities do not constitute “conducting Google’s business within
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`the meaning of the [venue] statute.” Id. at 1345-46. The Court held, first, that “one-time” events
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`such as installation cannot constitute “regular and established” business. Id. at 1346. It further
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`distinguished maintenance activities, regardless of frequency, as “merely connected to, but [] not
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`themselves constitut[ing], the defendant’s conduct of business in the sense of production,
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`storage, transport, and exchange of goods or services.” Id. at 1347. Accordingly, the Court
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`issued a mandamus directing this Court to dismiss or transfer the case. Id.
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`2.
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`There Are No KeyMe Employees Or Agents That Regularly Conduct
`KeyMe’s Business In This District
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`For venue to be proper requires the “regular, physical presence of an employee or other
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`agent of the defendant conducting the defendant’s business” in this District. In re Google, 949
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`F.3d at 1345. This requirement is a two-part test. Venue is proper only if both elements are met.
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`First, Hillman must show the “regular, physical presence of an employee or other agent” in the
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`District. Second, said employee or agent must be “conducting the defendant’s business.”
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`Hillman cannot show demonstrate either element, let alone both.
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`“Conducting The Defendant’s “Business” - To begin with the latter element, KeyMe’s
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`business is the duplication of keys for a price. Hillman has previously acknowledged that within
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 16 of 27 PageID #: 3586
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`this District, this business is performed exclusively by KeyMe’s automated, self-service kiosks:
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`“The KeyMe places that do (1) solicit customers by advertising products, (2) accept orders from
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`those customers for those products, (3) accept payment from those customers for those products,
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`and (4) prepare and provide those products to those customers are its kiosks.” (Dkt. No. 70, at 7
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`(second emphasis added).) Thus, no KeyMe personnel are involved in the conduct of KeyMe’s
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`business, which is handled by the kiosks.
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`. “Business” under the venue statute does not
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`include “activities, such as maintenance, that are merely connected to, but do not themselves
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`constitute, the defendant’s conduct of business in the sense of production, storage, transport, and
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`exchange of goods or services.” In re Google, 949 F.3d at 1345-46. As described further below,
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`none of the third parties conduct KeyMe’s business under this standard, and so their activities are
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`irrelevant to the venue analysis.
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`“Employee Or Other Agent” - KeyMe has no employees regularly conducting business
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`in this District. Marsh Decl. ¶ 19 (“No KeyMe employees live or work in the Eastern District of
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`Texas.”). KeyMe anticipates that Hillman will point to the individuals who install and maintain
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`the kiosks as “agents” in order to support venue. It bears repeating that the Court need not reach
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`this issue because these third parties are not conducting KeyMe’s business; again, under the
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`venue statute, a person’s activities confer venue only if acting as an agent and regularly
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`conducting the defendant’s business. In re Google, 949 F.3d at 1345. But at any rate, the
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`agency prong is lacking because KeyMe does not exercise the requisite control over them.
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 17 of 27 PageID #: 3587
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`An agency relationship is “a fiduciary relationship that arises when one person (a
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`‘principal’) manifests assent to another person (an ‘agent’) that the agent shall act on the
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`principal’s behalf and subject to the principal’s control, and the agent manifests assent or
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`otherwise consents to act.” In re Google, 949 F.3d at 1345 (quoting the Restatement (Third) of
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`Agency § 1.01). “The essential elements of agency are (1) the principal’s right to direct or
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`control the agent’s actions, (2) the manifestation of consent by the principal to the agent that the
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`agent shall act on his behalf, and (3) the consent by the agent to act.” Id. (quoting Meyer v.
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`Holley, 537 U.S. 280, 286 (2003) (quotation marks omitted)). “The control necessary to
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`demonstrate an agency relationship requires that a ‘a principal [have] the right to give interim
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`instructions or directions to the agent once their relationship is established.’”4 Pac. Gas & Elec.
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`Co. v. United States, 838 F.3d 1341, 1360 (Fed. Cir. 2016) (quoting Restatement (Third) of
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`Agency § 1.01 cmt. f). None of KeyMe’s relationships with the third parties involved in
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`delivering, installing, servicing or otherwise maintaining kiosks in this District meet these
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`criteria.
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`As explained further below, KeyMe’s relationship with each of the third parties falls well
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`short of the level of control required to establish a principal/agent relationship.
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`4 “To determine whether an agency relationship exists,” federal courts have generally made
`their own common law, looking “to the Restatement of Agency.” Pac. Gas & Elec. Co. v.
`United States, 838 F.3d 1341, 1359 (Fed. Cir. 2016) (“The key to the existence of an agency
`relationship . . . is set forth in section 1.01 of the Restatement of Agency.”).
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 18 of 27 PageID #: 3588
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 19 of 27 PageID #: 3589
`Case 2:19-cv-00209—JRG Document 130 Filed 04/16/20 Page 19 of 27 PageID #: 3589
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 20 of 27 PageID #: 3590
`Case 2:19-cv-00209—JRG Document 130 Filed 04/16/20 Page 20 of 27 PageID #: 3590
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 21 of 27 PageID #: 3591
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`The Court Need Not Address The “Physical Place” Or “Place Of The
`Defendant” Elements
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`For venue to be proper, “(1) there must be a physical place in the district; (2) it must be a
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`regular and established place of business; and (3) it must be the place of the defendant.” Cray,
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`871 F.3d at 1360. Because element (2) is lacking, venue is improper and this Court need not
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`address elements (1) or (3).
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`V.
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`IN THE ALTERNATIVE, THE COURT SHOULD TRANSFER THIS ACTION
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`In addition to being statutorily defective, this District is clearly less convenient than the
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`Southern District of New York, where KeyMe’s headquarters, documents, and knowledgeable
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`personnel are located. Transfer is appropriate to the Southern District of New York because, as a
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`preliminary matter, this case could have been filed there because KeyMe is headquartered and
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`conducts its business there. Further, as detailed further below, the public and private interest
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`factors favor the Southern District of New York.
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`A.
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`Applicable Law
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`Where, as here, a case is brought in an improper venue, the court “shall dismiss, or if it be
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`in the interest of justice, transfer such case to any district or division in which it could have been
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 22 of 27 PageID #: 3592
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`brought.” 28 U.S.C. § 1406(a). Additionally, a case should be transferred to another district
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`under 28 U.S.C. § 1404 if the case could have been brought in that district and it would be
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`“clearly more convenient” to resolve the case there. In re Genentech, 566 F.3d 1338, 1342 (Fed.
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`Cir. 2009). Whether another district is more convenient is determined by analyzing “private”
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`and “public” interest factors. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).
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`The private interest factors are: “(1) the relative ease of access to sources of proof; (2) the
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`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 a trial easy,
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`expeditious and inexpensive.” Id. The public interest factors are: “(1) the administrative
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`difficulties flowing from court congestion; (2) the local interest in having localized interests
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`decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4)
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`the avoidance of unnecessary problems of conflicts of law [or in] the application of foreign law.”
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`Id.
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`B.
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`Private Interest Factors Favor Transfer To The Southern District Of New
`York
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`1.
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`Access To Sources Of Proof Favors Transfer
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`The overwhelming balance of relevant evidence and witnesses in this case lies in the
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`Southern District of New York. As with most patent cases, the “bulk of relevant evidence will
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`likely come from [KeyMe] as the accused infringer.” Godo Kaisha IP Bridge 1 v. Xilinx, Inc.,
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`No. 17-100, 2017 WL 4076052, *3 (E.D. Tex. Sept. 14, 2017); see also On Semiconductor, 2010
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`WL 3855520 at *4 (finding transfer appropriate where the “majority of [defendants’] U.S.
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`documents appear to be closer to the [transferee venue] than the Eastern District of Texas”).
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`As stated, KeyMe’s relevant evidence and witnesses are in the Southern District of New
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`York. KeyMe is headquartered in the New York. Marsh Decl. ¶ 5. KeyMe develops, monitors,
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`Case 2:19-cv-00209-JRG Document 130 Filed 04/16/20 Page 23 of 27 PageID #: 3593
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`and operates each accused product from within the Southern District of New York. Id. ¶¶ 5, 16.
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`. Id. ¶¶ 17-18. Every KeyMe witness listed in the parties’ initial disclosures work out of
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`KeyMe’s New York office. Exs. E (KeyMe Initial Disclosures), F (Hillman Initial Disclosures).
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`By contrast, no relevant evidence is located in the Eastern District of Texas. Neither
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`KeyMe nor Hillman disclosed a witness located in Texas in their initial disclosures. Exs. E, F.
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`Hillman’s presence in this District is unrelated to its key-duplication operations, which are based
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`in Boulder, Colorado and Tempe, Arizona. Ex. B (2019 10-K) at 5, 53.
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`2.
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`Compulsory Process Is Neutral
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`A court may compel a non-party witness to attend deposition or trial within 100 miles of
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`his or her residence. Fed. R. Civ. P. 45(c)(1)(A). KeyMe is not aware of any third-party
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`witnesses residing within 100 miles of this District or within 100 miles of the Southern District
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`of New York. Therefore, this factor is neutral.
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`3.
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`Cost Of Attendance Favors Transfer
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`Cost of attendance for witnesses substantially favors transfer to the Southern District of
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`New York, as neither parties’ witnesses reside in this Dis