Case 2:22-cv-00072-JRG Document 28 Filed 05/17/22 Page 1 of 8 PageID #: 497
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`
`
`CIVIL ACTION NO. 2:22-CV-00072-JRG
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`OLLNOVA TECHNOLOGIES LIMITED,
`
`
`
`v.
`
`ECOBEE TECHNOLOGIES ULC, d/b/a
`ECOBEE
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`§§
`
`
`
`
`
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`
`
`Before the Court is Defendant ecobee Technologies, ULC d/b/a ecobee’s (“ecobee” or
`
`“Defendant”) Motion to Transfer Venue to the Western District of Texas (the “Motion”). (Dkt.
`
`No. 12). In the Motion, Defendant requests that the Court transfer the above-captioned case from
`
`this District (the “EDTX”) to the Western District of Texas (the “WDTX”) pursuant to 28 U.S.C.
`
`§ 1404(a). Having considered the Motion, the relevant briefing, and the applicable law, the Court
`
`finds that the Motion should be and hereby is DENIED.
`
`I.
`
`
`
`BACKGROUND
`
`Plaintiff Ollnova Technologies Limited (“Ollnova” or “Plaintiff”) filed its complaint
`
`against ecobee on March 8, 2022, alleging that ecobee’s creation, use, and sale of certain smart
`
`home energy management products—such as
`
`the ecobee SmartThermostat, ecobee
`
`SmartThermostat with Voice Control, ecobee Smart Si Thermostat, ecobee3 SmartThermostat,
`
`ecobee4
`
`SmartThermostat,
`
`and
`
`ecobee3 Lite
`
`SmartThermostat
`
`(the
`
`“Accused
`
`Products”)—infringe U.S. Patent Nos. 8,224,282 (the “’282 Patent”), 7,746,887 (the “’887
`
`Patent”), 7,860,495 (the “’495 Patent”), and 8,264,371 (“the ’371 Patent”) (collectively, the
`
`

`

`Case 2:22-cv-00072-JRG Document 28 Filed 05/17/22 Page 2 of 8 PageID #: 498
`
`“Asserted Patents”). (No. 1 at ¶¶ 1, 9). Defendant filed the instant Motion one month later on April
`
`11, 2022, requesting that the Court transfer this case to the WDTX. (Dkt. No. 12).
`
`
`
`Plaintiff Ollnova is limited liability company organized and existing under the law of
`
`Ireland, with its principal place of business at The Hyde Building, Suite 23, The Park,
`
`Carrickmines, Dublin 18, Ireland. (Dkt. No. 1 at ¶ 2). Defendant ecobee is a British Columbia
`
`Unlimited Liability Company with its principal place of business at 25 Dockside Drive, Suite 700,
`
`Toronto, ON, Canada, M5A 0B5. (Id. at ¶ 3; Dkt. No. 12 at 5).
`
`II.
`
`
`
`LEGAL STANDARD
`
`In evaluating a motion to transfer pursuant to § 1404(a), the Court considers the Fifth
`
`Circuit’s non-exhaustive list of private and public interest factors. In re Volkswagen AG, 371 F.3d
`
`201, 203 (5th Cir. 2004) (“Volkswagen І”). The private interest factors include: (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.” Id. The public
`
`interest factors include: (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.” Id.
`
`
`
`To support a claim for transfer under § 1404(a), a movant must demonstrate that the
`
`transferee venue is “clearly more convenient” than the current District. In re Volkswagen of Am.,
`
`Inc., 545 F.3d 304, 315 (5th Cir. 2008) (“Volkswagen II”). The elevated burden to show that the
`
`transferee forum is “clearly more convenient” reflects the respect owed to the Plaintiff’s choice of
`
`forum. In re Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed. Cir. 2010).
`
`
`
`2
`
`

`

`Case 2:22-cv-00072-JRG Document 28 Filed 05/17/22 Page 3 of 8 PageID #: 499
`
`III. DISCUSSION
`
`
`
`As a preliminary matter, ecobee asserts—and “Ollnova does not dispute”—that this case
`
`could have originally been filed in the WDTX because ecobee is foreign defendant located in
`
`Canada, and “a foreign defendant may be sued in any judicial district under 28 U.S.C.
`
`§ 1391(c)(3).” (Dkt. No. 12 at 7; Dkt. No. 20 at 2). Accordingly, the Court analyzes the private
`
`and public interest factors to determine whether ecobee has met its burden of showing that the
`
`WDTX is clearly more convenient than the EDTX in this case.
`
`A.
`
`Defendant concedes that seven of the eight convenience factors are neutral.
`
`In its Motion, ecobee notes that “neither party resides in this District (or in Texas
`
`
`
`
`generally),” that “no known third-party witnesses reside[] in this District or in Texas generally,”
`
`that “any additional travel [required between the EDTX and WDTX] . . . would be insubstantial,”
`
`that the difference in time to trial between the EDTX and WDTX is “negligible,” that neither the
`
`EDTX nor the WDTX have a particularized local interest, and that both the EDTX and WDTX are
`
`“capable of applying patent law to infringement claims.” (Dkt. No. 12 at 11–15). Accordingly,
`
`despite its elevated burden to show that venue is clearly more convenient in the WDTX, ecobee
`
`concedes that seven of the eight convenience factors are neutral. (Id.).
`
`
`
`Plaintiff Ollnova agrees with Defendant ecobee that four of these seven factors—the “court
`
`congestion”, “local interest”, “familiarity with the law”, and “avoidance of conflicts of law”
`
`factors—are neutral. (Dkt. No. 20 at 2). However, Ollnova argues that the “relative ease of access
`
`to sources of proof”, “availability of compulsory process”, and “cost of attendance for willing
`
`witnesses” weigh against transfer and are not neutral. (Id.). For each of these three factors, Ollnova
`
`argues that “ecobee fails to carry its burden” to present any facts or evidence showing that the
`
`WDTX is more convenient. (Id. at 2–3). Accordingly, Ollnova asserts that “the facts governing
`
`
`
`3
`
`

`

`Case 2:22-cv-00072-JRG Document 28 Filed 05/17/22 Page 4 of 8 PageID #: 500
`
`venue are not clearly set forth, [thus] the Court cannot conclude that the proposed venue is ‘clearly
`
`more convenient.’” (Id. at 3) (quoting Hammers v. Mayae-Chang, No. 2:19-cv-00181-JRG, 2019
`
`WL 6728446, at *5 (E.D. Tex. Dec. 11, 2019)).
`
`
`
`Given that the parties agree that the “court congestion”, “local interest”, “familiarity with
`
`the law”, and “avoidance of conflicts of law” factors are neutral, the Court finds that these four
`
`factors are neutral. With respect to the “relative ease of access to sources of proof”, “availability
`
`of compulsory process”, and “cost of attendance for willing witnesses” factors, the Court likewise
`
`finds that these factors are also neutral. The parties have identified no sources of proof and no
`
`witnesses subject to compulsory process in either the EDTX or WDTX. Accordingly, with respect
`
`to these two factors, each district is equally convenient, and the factors are thus neutral. See
`
`Hammers, 2019 WL 6728446, at *10 (finding the sources of proof and compulsory process factors
`
`neutral where Defendant failed to identify specific sources of proof in the proposed transferee
`
`district and the reach of compulsory process was the same in both districts). Regarding the
`
`“convenience of willing witnesses” factor, the Court finds that this factor is neutral because
`
`witnesses travelling to Texas from outside the United States will have insubstantial differences in
`
`travel times between the WDTX and EDTX.
`
`B.
`
`The “other practical problems” factor standing alone does not warrant
`transfer under the facts of this case.
`
`After conceding that the “access to sources of proof”, “availability of compulsory process”,
`
`
`
`
`“cost of attendance for willing witnesses”, “administrative difficulties from court congestion”,
`
`“local interest”, “familiarity of the forum with the law”, and “avoidance of conflicts of law” factors
`
`are neutral, ecobee asserts that the “all other practical problems” factor singlehandedly weighs so
`
`heavily in favor of transfer that the Court should transfer this case to the WDTX. (Dkt. No. 12 at
`
`8–11, 13–14). To support its argument, ecobee claims that judicial economy and efficiency alone
`
`
`
`4
`
`

`

`Case 2:22-cv-00072-JRG Document 28 Filed 05/17/22 Page 5 of 8 PageID #: 501
`
`warrant “transfer[] from the [EDTX] to the [WDTX], where two recent related lawsuits involving
`
`some or all of the same Asserted Patents are currently pending.” (Id. at 2).
`
`
`
`First, ecobee notes that the law firm representing Ollnova, Russ August & Kabat (“RAK”),
`
`previously filed numerous lawsuits against ecobee in the WDTX on behalf of a completely
`
`different entity—EcoFactor, Inc. (Id. at 3–4). Defendant notes that EcoFactor, Inc. asserted
`
`infringement against some of the same Accused Products at issue in this case.1 (Id.). Second,
`
`ecobee asserts that on the same day this case was filed, “Ollnova [simultaneously] filed a separate
`
`lawsuit against Google LLC in the [WDTX], in which it alleges that Google infringes the same
`
`four Asserted Patents, as well as one additional patent.” (Id. at 5; Dkt. No. 12-4). Finally, ecobee
`
`notes that Ollnova filed suit against Emerson Electric Co., Verdant Environmental Technologies
`
`Inc., and Resideo Technologies, Inc. in the WDTX alleging infringement of the Asserted Patents
`
`over a month after this case was filed. (Dkt. No. 12 at 5; Dkt. No. 12-5). Given that all other factors
`
`are neutral, ecobee asserts that “judicial economy is of ‘paramount consideration’ and the multiple
`
`related suits in the WDTX weigh[] heavily in favor of transfer.” (Dkt. No. 22 at 5) (quoting In re
`
`Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010)). For example, ecobee argues that allowing
`
`multiple cases to proceed in separate venues could result in inconsistent determinations on matters
`
`such as claim construction and invalidity and notes that RAK has previously indicated that the
`
`WDTX has familiarity with the Asserted Patents. (Dkt. No. 12 at 9–11) (quoting DataTreasury
`
`Corp. v. First Data Corp., 243 F. Supp. 2d. 591, 595 (N.D. Tex. 2003)).
`
`
`1 ecobee further informs the Court that it has “serious concerns about whether RAK has used ecobee’s confidential
`information subject to protective orders that RAK became aware of from prior lawsuits when preparing and filing its
`claims in this lawsuit on behalf of Ollnova.” (Dkt. No. 12 at 4). ecobee then notes that it has filed a motion for sanctions
`against RAK in the WDTX, and seemingly argues based on pure speculation that transfer is justified because Ollnova
`“chose to file lawsuits in different districts of Texas, perhaps in an attempt to avoid the impact of ecobee’s motion for
`sanctions.” (Id. at 3, 9) (emphasis added). The Court finds such speculative and derogatory arguments inappropriate
`for the analysis of a motion to transfer for convenience. Should litigants believe they are entitled to relief based on a
`violation of Rule 11 or a protective order, such relief should be sought through a proper motion and not asserted as
`rank speculation in a motion seeking transfer under Section 1404(a).
`5
`
`
`
`

`

`Case 2:22-cv-00072-JRG Document 28 Filed 05/17/22 Page 6 of 8 PageID #: 502
`
`
`
`In response, Ollnova argues that ecobee admits that none of the seven other factors favor
`
`transfer and transfer should not solely turn on judicial economy under the facts of this case. (Dkt.
`
`No. 20 at 3). Ollnova asserts that ecobee has wholly failed to meet its burden to identify substantial
`
`witnesses or evidence in the proposed transferee venue. (Dkt. No. 26 at 3). Further, Ollnova argues
`
`that it is inappropriate to base transfer solely on considerations of judicial economy which arise
`
`“after the filing of the lawsuit or transfer motion.” (Id.) (quoting In re NetScout Sys., Inc. No.
`
`2021-173 2021 WL 4771756, at *5 (Fed. Cir. Oct. 13, 2021)).
`
`
`
`The Court finds Ollnova’s arguments persuasive. Notably, “considerations of judicial
`
`economy arising after the filing of the lawsuit or the transfer motion [are] irrelevant to the
`
`analysis.” In re NetScout, 2021 WL 4771756, at *4 (citing In re HP Inc., 826 F. App’x 899, 903
`
`n.2 (Fed. Cir. 2020); In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir. 2013)). The only case
`
`involving Ollnova and the Asserted Patents in the WDTX at the time this case was filed is the
`
`Google case. The Emerson et al case and Resideo case were filed after the instant case—and thus
`
`should not affect this Court’s weighing of the factors. (See Dkt. No. 26 at 3 (noting that the suits
`
`against Emerson, Verdant, and Resideo post-date the filing of this case)). Further, the only cases
`
`that pre-date this lawsuit in the WDTX involve the unrelated plaintiff EcoFactor, ecobee, and other
`
`unrelated defendants. (See Dkt. No. 20 at 5). Such being the case, they therefore likely “involve
`
`significantly different discovery and evidence” and do not alone indicate that the transferee forum
`
`is clearly more convenient with regard to this litigation between Ollnova and ecobee. See In re
`
`NetScout, 2021 WL 4771756, at *5. The Court finds that just as “the mere co-pendency of
`
`infringement suits in a particular district [does not] automatically tip[] the balance in the
`
`non-movant’s favor” so too does the mere co-pendency of infringement suits against separate,
`
`unrelated defendants asserted after the filing of the instant case automatically tip the balance in the
`
`
`
`6
`
`

`

`Case 2:22-cv-00072-JRG Document 28 Filed 05/17/22 Page 7 of 8 PageID #: 503
`
`movant’s favor. See In re Apple Inc., No. 2022-128, Dkt. No. 18, at 9 (Fed. Cir. Apr. 22, 2022).2
`
`Accordingly, and in light of the above, the Court finds that this factor is essentially neutral and
`
`does not favor transfer to such a degree to alone satisfy ecobee’s burden. After balancing all eight
`
`factors, the Court finds that the Motion should be denied. The Court further notes that Defendant’s
`
`argument—that transfer is warranted because related lawsuits are pending in the WDTX and
`
`Ollnova has failed to identify any evidence weighing against transfer—turns the transfer analysis
`
`on its head. (See Dkt. No. 22 at 2). The Fifth Circuit has made it clear that the movant bears the
`
`burden to show that transfer is “clearly more convenient” to prevail on a motion to transfer under
`
`Section 1404(a). Volkswagen II, 545 F.3d at 315. Absent such a showing by the defendant, a
`
`plaintiff’s choice of venue must be respected. (Id.). This deference to a plaintiff’s choice of venue
`
`remains even in the absence of evidence weighing against transfer.
`
`IV. CONCLUSION
`
`
`
`The Court finds that (1) the relative ease of access to sources of proof, (2) the availability
`
`of compulsory process, (3) the cost of witness attendance, (4) court congestion, (5) local interest,
`
`(6) the familiarity with governing law, and (7) the avoidance of conflicts of law factors are all
`
`neutral. The Court further finds that (8) the other practical problems factor slightly favors transfer,
`
`at best. The Court therefore finds that ecobee has not met its burden to show that transfer is clearly
`
`more convenient and that the Motion should be and hereby is DENIED.3
`
`
`
`
`
`
`2 If such were the case, foreign litigants asserting infringement against foreign infringers would be discouraged from
`asserting their claims against domestic infringers in subsequent suits lest they find themselves forcefully transferred
`to the venue of the second filed suit.
`3 The clearly more convenient standard is akin to the burden of clear and convincing evidence and must be materially
`more than a simple preponderance. This fact seems lost on ecobee.
`7
`
`
`
`

`

`Case 2:22-cv-00072-JRG Document 28 Filed 05/17/22 Page 8 of 8 PageID #: 504
`
`
`
`
`
`
`
`
`
`
`
`8
`
`.
`
`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
`
`So ORDERED and SIGNED this 17th day of May, 2022.
`
`