Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 1 of 22 PageID #: 10079
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendant.
`
` CIVIL ACTION NO. 2:22-cv-263-JRG
`
`
`
` JURY TRIAL DEMANDED
`
`SAMSUNG’S MOTION TO SEVER AND TRANSFER
`TO THE NORTHERN DISTRICT OF CALIFORNIA CLAIMS
`AGAINST GOOGLE FIND MY DEVICE
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 2 of 22 PageID #: 10080
`
`TABLE OF CONTENTS
`
`
`
`
`I.
`
`II.
`
`III.
`
`
`Page
`FACTUAL BACKGROUND ............................................................................................ 2
`A.
`PROCEDURAL HISTORY................................................................................... 2
`1.
`THE AGIS I ACTIONS AGAINST FMD WERE
`TRANSFERRED TO THE NDCA ............................................................ 2
`THIS CASE AND AGIS’S ADDITION OF SEPARATE FMD
`ALLEGATIONS ........................................................................................ 3
`ADDITIONAL AGIS-GOOGLE LITIGATION CONCERNING
`FMD ........................................................................................................... 4
`LOCATIONS OF PARTIES, GOOGLE’S FMD WITNESSES, AND
`THIRD PARTIES .................................................................................................. 4
`SEVERANCE AND TRANSFER ..................................................................................... 7
`A.
`AGIS’S CLAIMS BASED ON FMD SHOULD BE SEVERED FOR
`JUDICIAL ECONOMY AND TO FACILITATE TRANSFER TO THE
`NDCA .................................................................................................................... 7
`AGIS’S CLAIMS AGAINST FMD SHOULD BE TRANSFERRED TO
`THE NDCA ........................................................................................................... 9
`1.
`LEGAL STANDARD ................................................................................ 9
`2.
`AGIS COULD HAVE BROUGHT THIS CASE IN THE NDCA.......... 10
`3.
`ACCESS TO SOURCES OF PROOF STRONGLY FAVORS
`TRANSFER ............................................................................................. 10
`THE AVAILABILITY OF COMPULSORY PROCESS
`STRONGLY FAVORS TRANSFER ...................................................... 12
`THE COST OF ATTENDANCE FOR WILLING WITNESSES IS
`NEUTRAL ............................................................................................... 13
`THE PRACTICAL PROBLEMS FACTOR STRONGLY
`FAVORS TRANSFER ............................................................................ 13
`THE LOCAL INTEREST FACTOR STRONGLY FAVORS
`TRANSFER ............................................................................................. 14
`THE REMAINING FACTORS ARE NEUTRAL WITH
`RESPECT TO TRANSFER ..................................................................... 15
`CONCLUSION ................................................................................................................ 15
`
`2.
`
`3.
`
`B.
`
`B.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`i
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`

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`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 3 of 22 PageID #: 10081
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`TABLE OF AUTHORITIES
`
`
`
`
`Page
`
`CASES
`AGIS Software Dev. LLC v. Google LLC, No.,
`5:22-cv-04826-BLF (N.D. Cal.) ............................................................................................... 1
`AGIS Software Dev. LLC v. Samsung Elecs. Co.,
`No. 5:22-cv-04825-BLF ........................................................................................................... 1
`Content Guard Holdings, Inc. v. Amazon.com, Inc.,
`No. 2:13-CV-1112-JRG, 2015 WL 1263346 (E.D. Tex. Mar. 19, 2015) ................................. 7
`Google LLC v. AGIS Holdings,
`3:23-cv-3624 (N.D. Cal.) ........................................................................................................ 14
`Google LLC v. AGIS Holdings, Inc.,
`5:23-cv-03624-BLF (N.D. Cal.) ............................................................................................... 1
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)............................................................................................... 14
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ......................................................................................... 12
`In re DISH Network L.L.C.,
`No. 2021-182, 2021 WL 4911981 (Fed. Cir. Oct. 21, 2021).................................................. 12
`In re EMC Corp.,
`501 F. App’x 973 (Fed. Cir. 2013) ......................................................................................... 13
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)............................................................................................... 10
`In re Google LLC,
`58 F.4th 1379 (Fed. Cir. 2023) ......................................................................................... 10, 15
`In re Google LLC,
`No. 2022-140-42, 2022 WL 1613192 (Fed. Cir. May 23, 2022) ..................................... passim
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ......................................................................................... 11, 15
`In re Netflix, Inc.,
`No. 2022-110, 2022 WL 167470 (Fed. Cir. Jan. 19, 2022) .................................................... 12
`In re Nintendo Co.,
`544 F. App’x 934 (Fed. Cir. 2013) ........................................................................................... 9
`
`ii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 4 of 22 PageID #: 10082
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`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`In re Volkswagen AG, (Volkswagen I)
`371 F.3d 201 (5th Cir. 2004) .................................................................................................. 10
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .............................................................................................. 9, 13
`Realtime Data LLC v. Teradata Operations, Inc.,
`No. 6:15-CV-470-RWS-JDL, 2016 WL 235183 (E.D. Tex. Jan. 20, 2016) .......................... 14
`Vantage Point Tech., Inc. v. Amazon.com, Inc.,
`No. 2:13-CV-909-JRG, 2015 WL 123593, (E.D. Tex. Jan. 6, 2015) ....................................... 8
`Vantage Point Tech., Inc. v. Amazon.com, Inc.,
`No. 2:13-CV-909-JRG, 2015 WL 354026 (E.D. Tex. Jan. 26, 2015) ...................................... 8
`STATUTES
`28 U.S.C. § 1391(c)(3) .................................................................................................................. 10
`28 U.S.C. § 1404(a) ........................................................................................................................ 9
`RULES
`Fed. R. Civ. P. 45(c)(1) ................................................................................................................. 12
`
`
`
`iii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 5 of 22 PageID #: 10083
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`
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`Samsung respectfully requests that the Court sever AGIS’s recently added allegations
`
`against Google’s Find My Device (“FMD”) software and transfer them to the Northern District of
`
`California (“NDCA”). Severance is appropriate because FMD, which is developed by third-party
`
`Google, is unrelated to the U.S. government and Samsung software that AGIS has been accusing
`
`from the start of this case. Transfer is appropriate because the NDCA is clearly more convenient
`
`and is already handling three pending AGIS cases where FMD is accused on the same or related
`
`patents.1 Two of those cases are pending in the NDCA precisely because the Federal Circuit held
`
`that the NDCA was clearly more convenient and ordered the cases to be transferred there, after
`
`they were originally filed in this Court four years ago. In re Google LLC, No. 2022-140-42, 2022
`
`WL 1613192, at *1 (Fed. Cir. May 23, 2022) (“Google I”). Disregarding the Federal Circuit’s
`
`decision, AGIS has now decided to accuse Samsung and FMD again in this District.
`
`This District routinely severs and transfers claims against third-party functionality where,
`
`as here, it is also accused in another action and venue with overlapping infringement claims. Thus,
`
`severance is appropriate because FMD is already at issue in the three pending NDCA actions, two
`
`of which name Google (FMD’s supplier and developer) as a party and accused infringer.
`
`With respect to transfer, it is compelled here by the Federal Circuit’s Google I decision,
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`which found that the NDCA “is clearly the more convenient forum” for resolving AGIS’s claims
`
`against FMD. 2022 WL 1613192, at *3. The transfer factors now only further transfer. As was
`
`true when AGIS I was filed, witnesses knowledgeable about FMD include Google employees in
`
`the NDCA. While more recent FMD development has taken place at Google’s foreign offices,
`
`key Google employees who have worked on FMD are in the NDCA, including product managers
`
`
`1 AGIS Software Dev. LLC v. Samsung Elecs. Co., No. 5:22-cv-04825-BLF; AGIS Software Dev.
`LLC v. Google LLC, No., 5:22-cv-04826-BLF (N.D. Cal.) (the NDCA collectively referred to
`herein as “AGIS I”); and Google LLC v. AGIS Holdings, Inc., 5:23-cv-03624-BLF (N.D. Cal.).
`
`1
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`

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`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 6 of 22 PageID #: 10084
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`
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`responsible for FMD’s development and strategy and a Google employee identified in AGIS I who
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`worked on FMD’s original development. Plus, the AGIS I cases have now been pending in the
`
`NDCA for over a year, and Google has filed a motion for summary judgment for non-infringement
`
`with respect to FMD and invalidity of the same AGIS patents in this case, which is set for hearing
`
`next week on September 7. Thus, judicial economy and the avoidance of inconsistent decisions
`
`favor severing and transferring AGIS’s allegations against FMD to the NDCA.
`
`I.
`
`FACTUAL BACKGROUND
`
`A.
`
`Procedural History
`
`1.
`
`The AGIS I Actions Against FMD Were Transferred To The NDCA
`
`In November 2019, AGIS filed the AGIS I cases against both Samsung and Google in this
`
`Court alleging infringement based on FMD and Google Maps. Ex. A, Samsung I Complaint, at
`
`¶¶ 15-16; Ex. B, Google I Complaint, at ¶¶ 86-87. Against Google, AGIS asserted six patents,
`
`including all four patents at issue in this case—U.S. Patent Nos. 8,213,970 (’970 Patent), 9,467,838
`
`(’838 Patent), 9,749,829 (’829 Patent), and 9,820,123 (’123 Patent”)—and accused FMD of
`
`infringing all the patents except the ’123 Patent. Ex. B, Google I Complaint, at ¶¶ 86-87, 92-93.
`
`Similarly, AGIS accused Samsung of infringing the ’829 Patent based on Samsung devices
`
`including FMD. Ex. A, Samsung I Complaint, at ¶ 35.
`
`The AGIS I cases against Google and Samsung proceeded through discovery in this Court,
`
`until May 2022 when the Federal Circuit granted mandamus relief and ordered transfer to the
`
`NDCA, finding that it was “clearly the more convenient forum in the Google and Samsung cases.”
`
`Google I, 2022 WL 1613192. The Federal Circuit held that:
`
`- The Google witnesses knowledgeable about FMD and Google Maps (which was also accused)
`resided in the NDCA, making it a more convenient forum for those witnesses in the Google
`case and one in which their testimony could be compelled in the Samsung case (Id. at *3);
`
`2
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`

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`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 7 of 22 PageID #: 10085
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`
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`- Technical documents and source code relating to FMD and Maps were physically present
`and/or electronically accessible in the NDCA (Id.);
`
`- The NDCA had a local interest in resolving the claims because the accused functionalities,
`including FMD, were designed and developed by Google in the NDCA (Id. at *4) ; and
`
`- AGIS’s alleged Marshall office in this District was entitled to little weight because it was
`created to manipulate venue and no AGIS employees worked there. (Id..)
`
`Since transfer, AGIS I has been pending in the NDCA, with the Google case proceeding
`
`and the Samsung case stayed pending an ITC action (discussed below). AGIS dismissed with
`
`prejudice the ’970 Patent. Ex. C, Joint Motion to Dismiss ’970 Patent Claims. To dispose of the
`
`remaining patents—including the ’838, ’829, and ’123 Patents at issue in this case—Google moved
`
`for summary judgment of non-infringement by FMD and invalidity. Ex. D, Google and Waze
`
`MSJ. The motion is briefed and set for hearing on September 7, 2023. Id. at iv.
`
`2.
`
`This Case And AGIS’s Addition Of Separate FMD Allegations
`
`In July 2022, AGIS filed this case, its second against Samsung. Dkt. 1. In its original
`
`complaint, AGIS alleged infringement of the ’970, ’838, ’829, and ’123 Patents, based on TAK,
`
`ATAK, and CivTAK software developed by the U.S. government. Id. ¶ 16. In December 2022,
`
`AGIS filed an amended complaint adding allegations against Samsung Knox software. Dkt. 29
`
`¶ 16. AGIS’s infringement contentions likewise accused the ATAK and Knox software. Ex. E,
`
`AGIS December 2022 Infringement Contentions. AGIS did not include any allegations against
`
`FMD in its original complaint, amended complaint, or infringement contentions. Id.; Dkts. 1, 29.
`
`In November 2022, AGIS filed an ITC action against Google, Samsung, and eleven other
`
`respondents alleging infringement of five patents, including the four patents at issue in this case,
`
`and asserted the ’970 and ’829 Patents against FMD. Ex. F, ITC Complaint ¶¶ 1-3. Samsung
`
`moved to stay this case pending the ITC action; in opposition, AGIS unambiguously represented
`
`3
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`

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`to this Court and Samsung that this case does not concern “Google applications,” including FMD,
`
`as those “Google applications [were] accused before the NDCA and ITC.” Dkt. 41 at 2.
`
`But in June 2023, AGIS reversed course. First, it voluntarily moved to terminate its ITC
`
`Action. Ex. G. The next day, despite its prior representations and the Federal Circuit’s Google I
`
`decision,2 AGIS filed its Second Amended Complaint in this case adding claims asserting the ’970
`
`and ’838 Patents against FMD and on June 28, AGIS filed its motion for leave to amend its
`
`infringement contentions to accuse FMD, which Samsung opposed. Dkt. 69, 72, 85, 86, 91. On
`
`August 24, the Court granted the motion while also ordering a continuance of the Markman hearing
`
`by two months to November 3 and of the trial date by four months to July 8, 2024. Dkt. 115.
`
`3.
`
`Additional AGIS-Google Litigation Concerning FMD
`
`In March 2023, AGIS filed another action against Google, this time in the Western District
`
`of Texas, asserting the ’970 Patent against FMD. Ex. I, Google II Complaint. The parties agreed
`
`to stay the case pending the ITC Action and that AGIS would “not oppose a motion by Google to
`
`transfer this case to the Northern District of California following the stay.” Ex. J, Motion to Stay
`
`Google II at 3 n.1. On July 20, 2023, AGIS dismissed that case. Ex. K, AGIS Dismissal of WDTX
`
`Case. Google then filed a declaratory judgment action in the NDCA against AGIS (and its
`
`affiliates) that seeks a finding that FMD does not infringe the ’970 Patent. Ex. L, DJ Compl.
`
`B.
`
`Locations Of Parties, Google’s FMD Witnesses, And Third Parties
`
`The locations of witnesses and evidence relevant to AGIS’s allegations against FMD from
`
`AGIS I, which the Federal Circuit found strongly favored transfer, have not materially changed.
`
`
`2 In further disregard of the Federal Circuit’s decision in Google I, in November 2022, AGIS filed
`eleven actions in this District, asserting the same patents against FMD and Google Maps based on
`their alleged use on devices from eleven different defendants. Case Nos. 2:22-cv-440 to 2:22-cv-
`450 (E.D. Tex.). Those cases have been stayed pending the ITC action.
`
`4
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`

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`AGIS: AGIS’s witnesses are all current or former employees of its affiliate AGIS, Inc.,
`
`which is headquartered in Florida. Ex. M, AGIS Initial Disclosures; Ex. N, Beyer Decl., ¶ 3. Thus,
`
`as confirmed in its initial disclosures, AGIS’s witnesses are all outside this District, with six
`
`witnesses in Florida—including Malcolm Beyer Jr. (AGIS’s CEO and inventor on all asserted
`
`patents) and Sandel Blackwell (AGIS’s President)—and one each in Redmond, WA, Austin, TX,
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`Vienna, VA, Lenexa, KS, and Boston, MA. Ex. M, AGIS Initial Disclosures at 9-10.
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`AGIS’s alleged ties to this District are its office in Marshall and a former employee of
`
`AGIS Inc., Eric Armstrong, in Allen, Texas. Dkt. 69 ¶ 1; Ex. M, AGIS Initial Disclosures at 9.
`
`But the Federal Circuit has already held that both alleged ties mean little in the transfer analysis.
`
`Google I, 2022 WL 1613192, at *3-4. The Federal Circuit concluded that AGIS’s Marshall office
`
`was contrived for venue purposes, as it is used only to store patent-related documents and corporate
`
`records and is not a regular place of business. Id. at *4. And in his deposition in AGIS I, Mr.
`
`Armstrong disclaimed having any relevant knowledge or documents. Id. at *3-4, n. 2.
`
`Samsung: SEC is a Korean corporation with its principal place of business in Suwon,
`
`Korea. SEC Decl. ¶ 4. SEA is a subsidiary of SEC and a New York corporation with its principal
`
`place of business in Ridgefield Park, New Jersey. SEA Decl. ¶ 5. SEA maintains corporate offices
`
`in numerous locations in the United States, including in Mountain View, California (in the NDCA),
`
`where it has over
`
`. Id.
`
`The accused Samsung devices are designed by SEC engineers outside the U.S., mainly in
`
`Korea. SEC Decl. ¶¶ 5, 8; SEA Decl. ¶ 7. Neither SEC nor SEA has any employees who research,
`
`design, or develop FMD. SEC Decl. ¶¶ 7, 8; SEA Decl. ¶¶ 7, 8. SEC and SEA do not have access
`
`to any proprietary documentation or source code for FMD. Id.
`
`5
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`

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`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 10 of 22 PageID #:
`10088
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`Google: The Google employees with relevant knowledge about FMD are summarized in
`
`the table below. Google Decl. ¶ 2-3.
`
`Location
`Google Employee
`Shambavi Krishnamurthi San Francisco Bay Area, CA
`Ronald Ho
`San Francisco Bay Area, CA
`
`William Luh
`
`San Francisco Bay Area, CA
`
`Title / Role For FMD
`Product Manager
`Product Manager (on FMD team
`from Nov. 2021 to July 2023)
`Software Engineer (on FMD team
`through 2019)
`Software Engineer (on FMD team
`through 2020)
`Software Engineer
`Software Engineer
`
`Jonathan Brunsman
`
`Boulder, Colorado since April
`2022
`London, United Kingdom
`Tel Aviv, Israel
`
`Sorin Dinu
`David Lazarov
`
`As shown, the product managers for FMD, Ms. Krishnamurthi and Mr. Ho, who oversaw
`
`FMD both when this case was filed in July 2022 and when AGIS filed its June 2023 amended
`
`complaint adding FMD, are in the NDCA. So is Mr. Luh who helped develop and maintain FMD
`
`until 2019. As described in Google’s declaration filed in support of Samsung’s motion to transfer
`
`in AGIS I, in 2019, Google began shifting responsibilities for FMD to a team in London, which
`
`includes Mr. Dinu. Ex. O; Shaper Declaration ¶ 9; Google Decl. ¶ 3.d. The London team
`
`
`
`
`
`
`
`Decl. ¶ 3.d; Dkt. 72-6, 72-8 (AGIS’s contentions against FMD). Further, as Mr. Dinu confirmed
`
`in a deposition taken as part of AGIS’s ITC action, the
`
`
`
`. Google
`
`P at 77:9-21, 100:19-101:13. The London-based team also
`
`. Google Decl. ¶ 3.d; Ex.
`
`
`
`
`
`. Google Decl. ¶ 3.d.
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`6
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`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 11 of 22 PageID #:
`10089
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`Google also has a team of engineers who work on FMD in Israel, led by Mr. Lazarov, that
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`started in March 2020, and took on more responsibilities for FMD’s development in November
`
`2021. Google Decl. ¶ 3.e. To date, the Israel team’s work has
`
`
`
` and has not changed FMD’s functionality, and their work
`
`related to
`
` was started in 2021 by Google engineers based in the NDCA. Id.
`
`Documents regarding the design, development, implementation, and testing of FMD are
`
`primarily created and maintained in the San Francisco Bay Area, London, and Israel by the
`
`employees and teams who work on FMD. Google Decl. ¶ 4. Google is not aware of FMD team
`
`members based in Texas. Id., ¶ 2.
`
`Other Third Parties: Samsung has identified prior art references to the asserted patents,
`
`each of which has inventors located in the NDCA and California, as shown below. Exs. Q, R, S.
`
`Prior Art Reference
`Force XII Battle Command,
`Brigade and Below (“FBCB2”)
`US 7,353,034 (“Haney”)
`US 7,271,742 (“Sheha”)
`
`Inventor / Witness
`Neil Siegel
`
`Richard Haney
`Stephen Petilli
`
`Location
`Rancho Palos Verdes, CA (near
`Los Angeles)
`Union City, CA
`Sam Juan Capistrano, CA
`
`
`
`II.
`
`SEVERANCE AND TRANSFER
`
`A.
`
`AGIS’s Claims Based On FMD Should Be Severed For Judicial Economy
`And To Facilitate Transfer To The NDCA
`
`Consistent with this Court’s precedent and to promote judicial efficiency, the Court should
`
`sever AGIS’s claims based on FMD and transfer them to the NDCA, where AGIS is currently
`
`litigating three actions against Google and Samsung based on FMD, as part of the AGIS I cases
`
`filed in 2019 and where Google recently filed a declaratory judgment action. Rule 21 “provides a
`
`district court broad discretion” to sever any claim against any party. Content Guard Holdings, Inc.
`
`v. Amazon.com, Inc., No. 2:13-CV-1112-JRG, 2015 WL 1263346, at *2 (E.D. Tex. Mar. 19, 2015).
`
`7
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`10090
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`Applying Rule 21, this Court has twice severed claims based on a technology supplied by
`
`a third party and transferred them to the district where the third-party supplier was already accused
`
`on the same patents by the same plaintiff. In Vantage Point Tech., Inc. v. Amazon.com, Inc.
`
`(Vantage I), the plaintiff accused two sets of Samsung devices, some using Qualcomm chipsets
`
`and some using ARM chipsets. The Court sua sponte severed plaintiff’s claims against the devices
`
`with Qualcomm chipsets and transferred them to the NDCA, where there was a pending lawsuit
`
`between plaintiff and Qualcomm based on overlapping patents and accusations. No. 2:13-CV-
`
`909-JRG, 2015 WL 354026, at *6 (E.D. Tex. Jan. 26, 2015). And in Vantage Point Tech., Inc. v.
`
`Amazon.com, Inc. (Vantage II), the Court severed claims against devices using Texas Instruments
`
`chipsets from claims against devices using Marvell, Qualcomm, and NVIDIA chipsets, and
`
`transferred the latter claims to the NDCA where cases against the three supplier-companies were
`
`already pending. No. 2:13-CV-909-JRG, 2015 WL 123593, at *6 (E.D. Tex. Jan. 6, 2015).
`
`Likewise here, this case involves two different sets of software: (1) TAK, ATAK, CivTAK,
`
`and Knox software developed by the U.S. government and Samsung; and (2) FMD developed by
`
`Google. Not only does FMD work differently from ATAK and Knox, it comes from a different
`
`company, Google. Deciding infringement based on FMD thus requires different documents,
`
`source code, and witnesses. And much of the evidence relating to FMD has already been produced
`
`as part of the AGIS I cases, which have been pending in the NDCA for over a year, or will be
`
`produced or obtained as part of Google’s declaratory judgment action in the NDCA. Therefore, it
`
`would be more efficient to sever and transfer AGIS’s allegations against FMD to the NDCA, so a
`
`single forum can decide those claims and avoid inconsistent decisions.
`
`Further, in In re Nintendo Co., the Federal Circuit stated in similar circumstances that “Rule
`
`21 provides courts with considerable latitude to order severance solely for purposes of facilitating
`
`8
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`Case 2:22-cv-00263-JRG-RSP Document 123 Filed 09/07/23 Page 13 of 22 PageID #:
`10091
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`
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`transfer.” 544 F. App’x 934, 938 (Fed. Cir. 2013). In that case, the Federal Circuit found the
`
`district court erred in denying severance and transfer of claims against a manufacturer, Nintendo,
`
`and retailers of its products, to facilitate transfer of those claims to Washington, as that was where
`
`Nintendo was based and the more convenient forum for deciding those claims. Id. at 941-943.
`
`Similarly, severance is appropriate to facilitate transfer of AGIS’s claims to the NDCA, which is
`
`clearly the more convenient forum for deciding claims against FMD, as the Federal Circuit
`
`concluded in Google I. Indeed, AGIS’s addition of FMD to this case is an improper attempt to
`
`end-run around the Federal Circuit’s Google I order. And as detailed below, the relevant transfer
`
`factors have not materially changed from the AGIS I cases and still clearly favor transfer.
`
`Therefore, the Court should exercise its discretion to sever AGIS’s claims based on FMD to
`
`facilitate transfer and prevent AGIS from thwarting the Federal Circuit’s order in Google I.
`
`B.
`
`AGIS’s Claims Against FMD Should Be Transferred To The NDCA
`
`For the same reasons that the Federal Circuit in Google I found that the NDCA would be
`
`a clearly more convenient forum for deciding AGIS’s allegations against Samsung based on FMD,
`
`AGIS’s allegations against FMD in this case should also be transferred to the NDCA. In addition,
`
`because the AGIS I cases against Samsung and Google have been pending in the NDCA for over
`
`a year and Google has filed a declaratory judgment action in the NDCA, transfer of the FMD
`
`allegations to the NDCA would also promote judicial economy and avoid inconsistent rulings.
`
`1.
`
`Legal Standard
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`Under 28 U.S.C. § 1404(a), the moving party must first show that the claims “might have
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`been brought” in the proposed transferee district. In re Volkswagen of Am., Inc. (Volkswagen II),
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`545 F.3d 304, 312-13 (5th Cir. 2008). The moving party must then show that “the transferee venue
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`is clearly more convenient” under eight private and public interest factors, which are: (1) the
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`relative ease of access to sources of proof; (2) the availability of compulsory process to secure the
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`attendance of witnesses; (3) the cost of attendance for willing witnesses; (4) all other practical
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`problems that make trial of a case easy, expeditious, and inexpensive; (5) the administrative
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`difficulties flowing from court congestion; (6) the local interest in having localized interests
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`decided at home; (7) the familiarity of the forum with the law that will govern the case; and (8) the
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`avoidance of unnecessary problems of conflict of laws or in the application of foreign law. In re
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`Volkswagen AG (Volkswagen I), 371 F.3d 201, 203 (5th Cir. 2004).
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`2.
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`AGIS Could Have Brought This Case in the NDCA
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`SEA has offices with over
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` in the NDCA. SEA Decl. ¶ 9. SEC is a
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`foreign corporation, SEC Decl. ¶ 4, so venue is proper in any district. See 28 U.S.C. § 1391(c)(3).
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`Thus, this case could have been brought in the NDCA.
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`3.
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`Access To Sources Of Proof Strongly Favors Transfer
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`This factor favors transfer because at least some of the evidence related to FMD is in the
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`possession of third party Google in the NDCA. Generally, in patent cases, “the bulk of the relevant
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`evidence usually comes from the accused infringer.” In re Genentech, Inc., 566 F.3d 1338, 1345
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`(Fed. Cir. 2009). Where, as here, “third-party companies [] provide certain accused functionality
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`for the accused products,” sources of proof from those third parties also matter to this factor. In
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`re Google LLC, 58 F.4th 1379, 1385 (Fed. Cir. 2023).
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`In Google I, the Federal Circuit found that the location of sources of proof for Google’s
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`accused software, including FMD, strongly favored transfer to the NDCA. 2022 WL 1613192, at
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`*3. The facts have not changed materially since then. Documents for FMD continue to be created
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`and maintained in the NDCA. Google Decl. ¶ 4. Although some of FMD’s development has
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`shifted to a team of Google employees in London, their work on the FMD application has focused
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`on
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`. Id., ¶ 3.d; Dkt. 72-6, 72-8 (contentions against FMD).3
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`In any case, London is far from either this District or the NDCA and is thus neutral to the
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`analysis. See In re Juniper Networks, Inc., 14 F.4th 1313, 1321 (Fed. Cir. 2021) (“We have held
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`that the fact that some evidence is stored in places other than either the transferor or the transferee
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`forum does not weigh against transfer.”). The same is true of the Google engineers in Israel whose
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`changes to FMD to date have been limited to
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` that do not change
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`FMD’s functionality. Google Decl. ¶ 3.e.
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`While AGIS may point to its Marshall office and its storage of patent-related documents
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`and corporate records there, the Federal Circuit already dismissed that office and those documents
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`as serving “no meaningful purpose[] . . . except to attempt to establish a presence for forum
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`selection for patent cases.” Google I, 2022 WL 1613192, at *4. The facts remain the same today.
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`In fact, in its initial disclosures, AGIS does not identify any employees who work out of its
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`Marshall office. Ex. M, AGIS Initial Disclosures. The only individual located in this District
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`identified by AGIS is Mr. Armstrong, a former employee of AGIS Inc., who previously testified
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`in AGIS I that he does not have any relevant documents, as noted by the Federal Circuit in its
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`transfer decision. Google I, 2022 WL 1613192, at *4 n.2.
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`Finally, Samsung has identified three prior-art authors located in California, including one
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`in the NDCA, who may have documents relating to their prior art references, including Neil Siegel,
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`3 In an earlier filing in this case, citing Mr. Dinu’s deposition from the ITC action, AGIS accused
`Google of concealing the contributions of the London FMD team in AGIS I and Samsung of
`misrepresenting the extent of changes that the London FMD team made in “new versions” of FMD.
`Dkt. 100. Neither accusation is true. Google fully disclosed the London FMD team and its
`responsibilities in AGIS I. Ex. O; Shaper Declaration, at 3-4. And Mr. Dinu explained that the
`London team’s
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`did not change FMD’s functionality. Ex. P at 77:9-21, 100:19-101:13.
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`the lead developer of the FBCB2 prior art system. See Section I.B. Because documents and source
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`code relating to FMD and prior art are created or maintained by third parties in California, while
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`no meaningful documents are located in or near this District, this factor favors transfer.
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`4.
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`The Availability of Compulsory Process Strongly Favors Transfer
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`The compulsory process factor strongly weighs in favor of transfer because at least six fact
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`witnesses are employed by Google in the NDCA and have knowledge of FMD or are third parties
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`relevant to prior art invalidity located in California or the NDCA. Meanwhile, zero unwilling
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`third-party witnesses are located in Texas. The availability of compulsory process “factor will
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`weigh heavily in favor of transfer when more third-party witnesses reside within the transferee
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`venue than reside in the transferor venue.” In re Netflix, Inc., No. 2022-110, 2022 WL 167470, at
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`*4 (Fed. Cir. Jan. 19, 2022) (quoting In re Apple, Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014)).
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`Third-party witnesses are presumed to be unwilling. In re DISH Network L.L.C., No. 2021-182,
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`2021 WL 4911981, at *3 (Fed. Cir. Oct. 21, 2021).
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`Here, three Google witnesses with relevant knowledge of FMD are based in the NDCA.
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`Google Decl. ¶ 3. The additional Google employees knowledgeable about FMD are based in
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`Colorado, the United Kingdom or Israel, outside either district’s subpoena power, making them
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`neutral in this analysis. Id. Additionally, three prior-art witnesses are located in California. Exs.
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`Q, R, S. The NDCA has subpoena power over the third-party witnesses located in California. See
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`Fed. R. Civ. P. 45(c)(1) (the subpoena power of a federal court extends to the state where the court
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`is located). Indeed, the Federal Circuit cited similar facts in ordering transfer in Google I, noting
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`the “Google employees”