Case 2:22-cv-00279-JRG-RSP Document 100 Filed 12/11/23 Page 1 of 12 PageID #: 34011
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
`§
`§
`§
`§
`§
`§
`§
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`v.
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`HP INC.,
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`Defendant.
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`AX WIRELESS LLC,
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`Plaintiff,
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`CIVIL ACTION NO. 2:22-CV-00279-JRG-RSP
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`MEMORANDUM ORDER
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`Before the Court is Defendant HP Inc.’s Motion to Transfer to the Northern District of
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`California (Dkt. No. 75). After consideration, the Court concludes that HP has not met its burden
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`of showing that the Northern District of California would be a clearly more convenient venue than
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`this forum. Accordingly, the Court DENIES HP’s Motion to Transfer.
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`I.
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`BACKGROUND
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`AX Wireless LLC filed its Complaint on July 22, 2022 (Dkt. No. 1) and an amended
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`complaint on October 17, 2022 (Dkt. No. 16) following HP’s filing of its Motion to Dismiss for
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`Improper Venue (Dkt. No. 13). AX Wireless asserts that HP products including Wi-Fi 6 or
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`802.11AX transceivers infringe U.S. Patent Nos. 9,584,262; 9,614,566; 9,973,361; 10,079,707;
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`10,291,449; 10,554,459; 10,917,272; and 11,212,146 (the “Asserted Patents”). (Dkt. No. 16 at ¶27.)
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`In particular, AX Wireless specifically alleges the Wi-Fi 6 Standard of infringement. (Dkt. No. 75-4).
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`HP withdrew its motion to dismiss after discovery revealed that HP does maintain a regular and
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`established place of business in this district. (Dkt. No. 64). HP did not renew its Motion to Dismiss
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`for Improper Venue, instead filing an answer on August 16, 2023 (Dkt. No. 69) and the instant motion
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`September 15, 2023 (Dkt. No. 75).
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`1
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`Case 2:22-cv-00279-JRG-RSP Document 100 Filed 12/11/23 Page 2 of 12 PageID #: 34012
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`AX Wireless brought similar suits alleging infringement of the Asserted Patents against Dell,
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`Inc. and Lenovo Group Limited when it brought the instant lawsuit. AX Wireless LLC v. Dell Inc., et
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`al., 2:22-cv-00277 (E.D. Tex 2023); AX Wireless LLC v. Lenovo Group Limited, 2:22-cv-00280 (E.D.
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`Tex. 2023). AX Wireless also brought suit against Acer Inc. in February 2023, but has only asserted
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`U.S. Patent No. 11,212,146. AX Wireless LLC v. HP Inc., 2:23-cv-00041 (E.D. Tex. 2023).
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`II.
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`APPLICABLE LAW
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`A federal district court may transfer a case “for the convenience of parties and witnesses”
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`to “any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). Section
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`1404(a)’s threshold inquiry is whether the case could initially have been brought in the proposed
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`transferee forum. In re Volkswagen AG, 371 F.3d 201, 202-03 (5th Cir. 2004) (“Volkswagen I”).
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`The question of whether a suit “might have been brought” in the transferee forum encompasses
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`subject matter jurisdiction, personal jurisdiction, and propriety of venue. Id. at 203. Only if this
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`statutory requirement is met should the Court determine whether convenience warrants a transfer
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`of the case. See id.; In re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) (“Volkswagen
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`II”). Once the moving party has established that the instant case could have been brought in the
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`transferee forum, the Court moves on to consider the private and public factors provided in
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`Volkswagen I.
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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 attendance
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`for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious
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`and inexpensive.” Volkswagen II, 545 F.3d at 315 (quoting Volkswagen I, 371 F.3d at 203). The
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`public interest factors are “(1) the administrative difficulties flowing from court congestion; (2)
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`the local interest in having localized interests decided at home; (3) the familiarity of the forum
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`2
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`with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict
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`of laws [or in] the application of foreign law.” Id. (quoting Volkswagen I, 371 F.3d at 203)
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`(alterations in original). The factors are neither exclusive nor exhaustive, and no one factor is
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`dispositive. Id.
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`The burden to prove that a case should be transferred for convenience falls squarely on the
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`moving party. Id. Although the plaintiff's choice of forum is not a separate factor, respect for the
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`plaintiff's choice of forum is encompassed in the movant's elevated burden to “clearly
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`demonstrate” that the proposed transferee forum is “clearly more convenient” than the forum in
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`which the case was filed. Id. at 314-15; In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. 2020)
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`(applying Fifth Circuit law). While “clearly more convenient” is not necessarily equivalent to
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`“clear and convincing,” the moving party “must show materially more than a mere preponderance
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`of convenience, lest the standard have no real or practical meaning.” Quest NetTech Corp. v. Apple,
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`Inc., No. 2:19-cv-118, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27, 2019). In considering a
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`transfer under § 1404(a), the Court may consider undisputed facts outside of the pleadings but
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`must draw all reasonable inferences and resolve factual disputes in favor of the non-movant. See
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`Vocalife LLC v. Amazon.com, Inc., No. 2:19-cv-00123, 2019 U.S. Dist. LEXIS 205696, 2019 WL
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`6345191, at *2 (E.D. Tex. Nov. 27, 2019); cf. Trois v. Apple Tree Auction Cent. Inc., 882 F.3d
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`485, 492-93 (5th Cir. 2018) (reviewing a transfer under § 1406); Ambraco, Inc. v. Bossclip B.V.,
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`570 F.3d 233, 238 (5th Cir. 2009) (reviewing enforcement of a forum-selection clause).
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`III. ANALYSIS
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`a. Venue In the Northern District of California
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`HP alleges venue is proper in the Northern District of California as HP sells the accused products
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`there and is headquartered in the district. (Dkt. 75 at 9 (“Mot.”).) As AX Wireless does not contest HP’s
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`showing on this point, the Court finds this action could have been brought in the Northern District of
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`3
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`California.
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`b. The relative ease of access to sources of proof
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`HP argues that the allegedly infringing modules were “researched, designed, developed, tested, and
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`certified” by third-party suppliers that AX Wireless subpoenaed in California. (Mot. at 10.) HP argues
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`witnesses for the suppliers, rather than itself, would control relevant documents and source code. (Id.) HP
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`also argues “employees who worked on the accused HP products are primarily based in Palo Alto, Taiwan,
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`and Spring, Texas. (Id. at 11.) HP further argues HP documents are stored in Palo Alto or otherwise outside
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`of the district. (Id.)
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`AX Wireless counters “[i]n patent infringement cases, the bulk of the relevant evidence usually
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`comes from the accused infringer.” (Opp. at 9 (citing In re Genentech, 566 F.3d 1338, 1345 (Fed. Cir.
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`2009)).) AX Wireless further notes that HP has not provided any detail as to the volume of documents
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`in Palo Alto, Taiwan, or its Texas office and thus HP has not shown there are more documents in
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`California. (Id.) AX Wireless contends that as “HP researches and develops its PCs, and its Director
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`of Wireless Communication is [in Spring],” HP is likely to have a large volume of documents in Texas.
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`(Id.) Next, AX Wireless argues HP failed to identify any third-party documents with any specificity
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`aside from source code. (Id.) AX Wireless argues the source code is not in California, rather AX
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`Wireless points out MediaTek made its source code available in Alabama. (Id.) AX Wireless further
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`notes documents of the WiFi Alliance, relevant for compliance with the Wifi 6 standard that AX
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`Wireless contends infringes, are located in Texas. (Id. at 10.)
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`In its reply, HP argues AX Wireless “concedes that no sources of proof reside in EDTX. (Reply
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`at 4.) HP contends that as it has shown source code is available in NDCA, this factor weighs in favor
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`of transfer. (Id.)
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`Considering the facts of this case, the Court finds this factor disfavors transfer. The Court finds the
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`bulk of relevant evidence is with HP in this case as the accused infringer. See In re Genentech, 566 F.3d
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`4
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`1338, 1345 (Fed. Cir. 2009). HP has not shown that it stores the majority of its documents in its Palo
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`Alto headquarters while AX Wireless has made a convincing showing that relevant documents are
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`likely located in HP’s Spring, Texas offices, which are adjacent to this district. Because HP researches,
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`develops, and apparently houses its relevant director in this office, the Court finds it is likely HP keeps
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`associated documents in this office.
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`While HP’s suppliers may have designed and developed the chips central to the accused
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`functionality of the accused products, it is still HP’s products that are accused not those of HP’s
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`suppliers. See Chrimar Sys., Inc. v. Dell, Inc., No. 6:15-cv-639, slip op. at 7 (E.D. Tex. Feb. 27, 2016);
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`Nexus Display Techs. LLC v. Dell, Inc., No. 2:14-cv-762, slip op. at 5 (E.D. Tex. Aug. 25, 2015).
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`Further, HP has not identified with any specificity what necessary documents are located in the
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`Northern District of California. As such, while documents and other sources of proof held by HP’s
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`suppliers in California weigh in favor of transfer, the Court finds they are outweighed in this case by
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`HP’s own documents and those of the WiFi Alliance in Texas.
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`a. The Availability Of Compulsory Process To Secure The Attendance Of
`Witnesses
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`HP again identifies its suppliers located in the Northern District of California, arguing that they
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`have all relevant knowledge as to the functionality of the accused products, but identifies no particular
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`witnesses1. (Mot. at 12-13.) HP further identifies two non-party inventors2 of the asserted patents and prior
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`1 While HP does identify specific individuals employed by its third-party suppliers in the
`Background of its motion, it does not allege any witnesses of its third-party suppliers would require
`compulsory process. (See Mot. at 11-13 (naming no individual witnesses for HP’s suppliers).)
`Further, HP’s arguments for this factor focus exclusively on the suppliers themselves rather than
`the identified individuals. (Id. at 12-13.) While compulsory process may be needed to secure the
`particular individuals HP identifies, there is no argument that they are needed rather, based on
`HP’s argument, it seems all necessary evidence is available from the suppliers themselves. (See
`id. at 3-5; 12-13.) Without such an argument, much less a showing, the Court only considers the
`suppliers themselves for this factor.
`2 AX Wireless submitted declarations from both inventors stating their willingness to attend trial
`in Marshall. (Dkt. Nos. 86-1; 86-2.)
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`5
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`art witnesses located in California. (Id.) HP notes the prior art witnesses it identifies are of particular
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`relevance as they are the authors of the art cited in Intel’s IPR petitions. (Reply at 5.)
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`AX Wireless first responds that HP’s suppliers do not weigh in favor of transfer. (Opp. at 10.) AX
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`Wireless notes that all three of HP’s identified suppliers are also within the subpoena power of this Court
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`based on their facilities in Texas. (Id.) Further, AX Wireless argues that HP’s suppliers should be given
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`less weight under this factor as HP made no showing that they are likely unwilling to testify. (Id.) AX
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`Wireless further identifies the Wi-Fi Alliance in Austin as having relevant information to its infringement
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`case relating to the Wi-Fi 6 standard for which compulsory process may be needed. (Id. at 11.)
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`Considering the facts of this case, the Court finds this factor slightly disfavors transfer. HP has
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`failed to show any of Intel, Qualcomm, and MediaTek are only subject to compulsory process in California.
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`Rather, each is within this Court’s subpoena power as well. See Fed. R. Civ. Proc. 45(c)(1)(B)(ii).
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`Of the third parties subject to compulsory process in only one district, the Court finds on balance
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`they weigh slightly against transfer. First, HP’s identification of several prior artists is given little weight.
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`While HP has argued the prior art they authored is relevant based on Intel’s assertion of the prior art before
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`the PTAB, HP has not shown the authors themselves are relevant. Indeed, Intel did not feel any need to rely
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`on their testimony when it submitted its IPR Petition. See IPR2023-01144 (providing only the cited prior
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`art references with no author declaration). The identified inventors located in California weigh in favor of
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`transfer, though under the willing witness factor as both have stated their willingness to attend trial in
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`Marshall. Finally, as the Wi-Fi Alliance is located in Texas and HP has not shown that it would be subject
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`to compulsory process in California, it weighs against transfer.
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`b. The Cost of Attendance for Willing Witnesses
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`HP identifies several categories of witnesses for whom it alleges attendance at trial would
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`be less costly in the Northern District of California. (Mot. at 11.) HP identifies two inventors,
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`several prior art authors, and several HP witnesses. (Id.) Of the potential supplier witnesses, HP
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`argues that witnesses from Intel are in California, Oregon, Massachusetts, and Israel. (Id. at 4). HP
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`6
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`also identifies several MediaTek employees in the Northern District of California and several
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`Qualcomm witnesses in San Diego, California. (Id.) Of its own employees, HP identifies witnesses
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`in Palo Alto, San Diego, and Taiwan. (Id. at 7.) HP also identifies two inventors and several prior
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`artists in California. (Id. at 6-7).
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`AX Wireless responds that HP’s identification of Qualcomm and MediaTek witnesses is
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`speculative without a declaration or something more from those third parties. (Opp. at 12-13.)
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`Likewise, AX Wireless attacks the declaration submitted by Ms. Azizi identifying potential Intel
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`witnesses as unreliable based on her apparent lack of investigation or knowledge of Intel’s
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`development operations in Texas. (Id. at 12-14.)
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`AX Wireless also argues HP’s identification of its own witnesses is faulty. AX Wireless
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`notes that two critical HP witnesses, including HP’s Director of Wireless Communication and
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`Distinguished Technologist, are located in HP’s Spring, Texas office. (Id. at 3.)
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`Considering the facts of this case, the Court finds this factor weighs somewhat in favor of
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`transfer. HP’s identification of third parties both for this factor and for compulsory process misapplies
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`the law. These two factors are distinct, availability of compulsory process applies to unwilling
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`witnesses while this factor is focused on the cost of attendance for willing witnesses. Enovsys LLC v.
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`T-Mobile USA, Inc., No. 2:21-CV-00368-JRG, 2022 WL 2161028, at *5 (E.D. Tex. June 14, 2022);
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`United Servs. Auto. Ass'n v. PNC Bank N.A., No. 2:20-cv-319, 2021 WL 4453590, at *3 (E.D. Tex.
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`Sept. 29, 2021). As such, the third parties the Court considered for this factor are the inventors since
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`they have stated their willingness to attend trial in Marshall. The remaining witnesses should be argued
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`under compulsory process.
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`7
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`The Court finds the party witnesses3 weigh somewhat against transfer. AX Wireless has
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`identified two key witnesses in Texas and HP has identified several witnesses in California and
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`Taiwan4. HP’s identified witnesses relate to sales, marketing, and technical topics, (see Dkt. 76-1),
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`while the AX Wireless identified witnesses appear to relate to only technical topics. The Northern
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`District of California is more convenient for witnesses on two of the three topics. As to technical topics,
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`the Court is not convinced by HP’s identification of witnesses. AX Wireless has shown HP’s Texas
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`office is the site of relevant research and development and contains two key technical witnesses. This
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`along with HP’s declarant’s apparent lack of knowledge as to HP’s Texas operations, (see Opp. at X),
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`leads the Court to question HP’s identification of technical witnesses. The Court finds AX Wireless’s
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`identified witnesses more impactful. On balance, the Court finds that this element is neutral.
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`c. All Other Practical Problems That Make Trial of a Case Easy, Expeditious,
`and Inexpensive
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`Practical problems include those that are rationally based on judicial economy. Particularly,
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`the existence of duplicative suits involving the same or similar issues may create practical
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`difficulties that will weigh in favor or against transfer. Eolas Techs., Inc. v. Adobe Sys., Inc., No.
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`6:09-cv-446, 2010 WL 3835762, at *6 (E.D. Tex. Sept. 28, 2010), aff’d In re Google, Inc., 412 F.
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`App’x. 295 (Fed. Cir. 2011).
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`3 AX Wireless further identifies its corporate witness but does not identify any testimony he
`might provide. As such the Court does not heavily weigh AX Wireless’s corporate witness. See
`In re Apple Inc., 2023 WL 5274629 at *2.
`4 HP only identifies these witnesses in a footnote and fails to identify their relevance in its motion
`or even affirmatively allege any particular relevance. (See Mot. at 7 n.9) Rather this information is
`only available in the Hoopes Declaration. (Dkt. 76-1.) The Local Rules prescribe that the “briefing
`shall contain a concise statement of the reasons in support of the motion and citation of authorities
`upon which the movant relies” and “shall not exceed fifteen pages.” L.R. 7(a)(2) & (c). Here, HP
`apparently relies not on its briefing to provide the reasons its motion should be granted, but rather
`an attached declaration. While HP may rely on such a declaration to support its reasoning, it may
`not bury its reasoning within.
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`8
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`HP argues that because the various AX Wireless actions are currently split between Judge
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`Gilstrap and Judge Schroeder and all defendants seek transfer to the Northern District of
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`California, transfer could result in result in consolidation before a single judge. (Mot. at 14.)
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`AX Wireless argues HP delayed by filing this Motion 14 months after the complaint and
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`that it has instead actively litigated in this district for nearly a year prior to filing this Motion. (Opp.
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`at 13.) HP only counters that timing is relevant in only rare circumstances. (Reply at 5.)
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`First, HP’s alleged potential efficiency in consolidating all AX Wireless’s cases before a
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`single judge in the Northern District of California is entirely speculative. Such an argument relies
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`first on all defendants showing venue is clearly more convenient in the Northern District of
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`California. Second, HP also relies on the notion the Northern District of California would assign
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`each case to the same Judge, but HP has offered no evidence that this is the Northern District of
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`California’s practice. Finally, any efficiencies to be gained from having all three actions heard by
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`a single judge are all already largely present as each case has been referred to the undersigned for
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`all pretrial proceedings. This argument does not support transfer. Rather, each of these cases being
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`in the Eastern District of Texas weighs against transfer, particularly after Dell’s transfer was
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`denied.
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`Further, HP materially delayed filing this motion. HP’s delay resulted in this Motion
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`becoming ripe after the completion of claim construction briefing and just two weeks before the
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`Markman hearing and the deadline to substantially complete document production. (See Dkt. No.
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`68 at 3). HP’s argument that timing is only relevant in “rare and special” circumstances misstates
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`the law. In re Radmax does not provide that a party’s delay in seeking transfer is only relevant in
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`rare circumstances, rather it is the “delay associated with transfer.” 720 F.3d 285, 289 (5th Cir.
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`2013). This would include the anticipated delay in the transferee district in setting a scheduling
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`conference and becoming acquainted with the case, not HP’s choice to not seek transfer sooner.
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`Considering the facts before the Court, the Court finds this factor weighs significantly
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`against transfer. This Court has invested significant judicial resources toward the merits of this
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`case during HP’s delay in deciding to bring this motion.
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`d. The Administrative Difficulties Flowing from Court Congestion
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`HP argues the “[t]ime-to-trial in the EDTX and NDCA are within a few months of each
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`other” and thus this factor is neutral. (Mot. at 15.) AX Wireless argues the Northern District of
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`California is more congested and median time to trial in the Northern District of California is 36.6
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`months while only 16.7 in the Eastern District of Texas. (Opp. at 14-15.)
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`Based on the facts before the Court, the Court finds that the time to trial in the Eastern
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`District of Texas is faster and this factor weighs against transfer. While the parties’ allegations of
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`wildly different times to trial seems irreconcilable, an examination of the parties’ sources of proof
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`demonstrates HP’s evidence is deficient. HP provides charts showing the statistics for the
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`disposition of 242 cases in this district and 81 cases in the Northern District of California. (Dkt.
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`Nos. 83-63, 83-64.) In contrast AX Wireless shows statistics for the disposition of some 25,000
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`cases in this district and some 57,000 cases in the Northern District of California. (Dkt. No. 86-
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`39.) HP appears to have carved out something far less than the entire docket for both districts.
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`Without any explanation such a showing is facially deficient, and HP’s showing is given no weight.
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`e. The Local Interest in Having Localized Interests Decided at Home
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`Here, HP argues that the Northern District of California has a local interest based on the
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`work it alleges is done by its third-party suppliers in that district as well as the presence of its
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`headquarters. (Mot. 14-15.) AX Wireless responds noting many of HP’s employees involved in
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`the accused modules are located outside of the Northern District of California and the actual design
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`and development occurs outside of the district. (Opp. at 14-15.)
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`The Court finds this factor weighs somewhat in favor of transfer. HP has shown its
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`headquarters and much of its suppliers’ activities are in the Northern District of California. While
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`AX Wireless has shown significant portions of HP’s work and that of its suppliers occur outside
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`of the Northern District of California, this only tempers the weight of this factor but does not render
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`it neutral.
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`f. Remaining Public Interest Factors
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`The parties agree that the remaining public interest factors are neutral. As such, the Court
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`finds these factors are neutral.
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`g. Weighing of the Factors
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`In view of the foregoing factors, the Court must determine whether the Northern District of
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`California is “clearly more convenient” than the Eastern District of Texas. The Fifth Circuit has been careful
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`to emphasize that district courts should not merely engage in a “raw counting” exercise which tallies up the
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`factors favoring transfer and the factors militating against transfer. In re RadmAX, Ltd., 720 F.3d 285, 290
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`n.8 (5th Cir. 2013) (“We do not suggest—nor has this court held—that a raw counting of the factors in each
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`side, weighing each the same and deciding transfer only on the resulting ‘score,’ is the proper
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`methodology.”). Instead, the Court must make factual determinations to ascertain the degree of actual
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`convenience, if any, and whether such rises to the level of “clearly more convenient.” See id. Having
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`weighed the foregoing factors, the Court concludes that the Northern District of California is not “clearly
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`more convenient.”
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`IV. CONCLUSION
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`The Court therefore DENIES HP’s Motion (Dkt. No. 75) for the reasons provided above.
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`12
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 11th day of December, 2023.
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