Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 1 of 21 PageID #: 403
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`R2 SOLUTIONS LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`DATABRICKS, INC.,
`
`
`Defendant.
`
`Civil Action No. 4:23-cv-01147-ALM
`
`JURY TRIAL DEMANDED
`
`
`
`DATABRICKS, INC.’S MOTION TO TRANSFER VENUE TO THE
`NORTHERN DISTRICT OF CALIFORNIA PURSUANT TO 28 U.S.C. § 1404(a)
`
`
`
`
`
`
`
`
`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 2 of 21 PageID #: 404
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`FACTUAL BACKGROUND ..............................................................................................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Patented Technology Was Designed and Developed in the NDCA. ................1
`
`The NDCA Is the Location of Design and Development of the Accused
`Functionality and Accused Product. ........................................................................3
`
`Third-Party Witnesses With Knowledge of Invalidating Prior Art Are
`Located in Northern California. ...............................................................................4
`
`R2 Has Multiple Connections to California but Limited Ties to This
`District......................................................................................................................5
`
`III.
`
`LEGAL STANDARD ..........................................................................................................6
`
`IV.
`
`ARGUMENT .......................................................................................................................7
`
`A.
`
`B.
`
`C.
`
`D.
`
`R2 Could Have Brought This Suit in the NDCA. ....................................................7
`
`The Private Interest Factors Strongly Favor Transfer to the NDCA. ......................7
`
`1.
`
`2.
`
`The Sources of Proof Are Most Easily Accessed in the NDCA. .................7
`
`Important Non-Party Witnesses, Including the Named Inventors
`and Prior Art Witnesses, Could Be Compelled to Testify in
`NDCA, But Not in EDTX. ...........................................................................9
`
`3.
`
`Witnesses Could Attend Trial More Easily in the NDCA. ........................11
`
`Practical Issues of Litigation Favor Transfer. ........................................................13
`
`The Public Factors Favor Transfer or Are Neutral. ...............................................13
`
`1.
`
`2.
`
`3.
`
`4.
`
`Court Congestion Is Neutral. .....................................................................13
`
`The NDCA Has a Greater Interest in Resolving This Case. ......................14
`
`Familiarity of the Forum with the Law Is Neutral. ....................................15
`
`Conflicts of Law or Foreign Law Is Neutral. .............................................15
`
`V.
`
`CONCLUSION. .................................................................................................................15
`
`
`
`i
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`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 3 of 21 PageID #: 405
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`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cellspin Soft, Inc. v. Nike, Inc.,
`No. 2:22-CV-0455-JRG-RSP, 2023 WL 6280260 (E.D. Tex. Sept. 26, 2023) .......................13
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)......................................................................................8, 13, 14
`
`In re Apple Inc.,
`No. 2021-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) ...................................................9
`
`In re DoDots Licensing Sols. LLC,
`No. 2024-100, 2023 WL 8642716 (Fed. Cir. Dec. 14, 2023) ..................................................11
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)................................................................................................13
`
`In re Google LLC,
`No. 2021-170, 2021 WL 4427899 (Fed Cir. Sept. 27, 2021) ..................................................11
`
`In re Google LLC,
`No. 2021-178, 2021 WL 5292267 (Fed. Cir. Nov. 15, 2021) .............................................8, 14
`
`In re Honeywell Int’l Inc.,
`No. 2023-152, 2024 WL 302397 (Fed. Cir. Jan. 26, 2024) .......................................................8
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) .............................................10, 11
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................7
`
`In re Samsung Elecs. Co.,
`No. 2023-146, 2023 WL 8642711 (Fed. Cir. Dec. 14, 2023) ............................................12, 14
`
`In re TikTok, Inc.,
`85 F.4th 352 (5th Cir. 2023) ....................................................................................................13
`
`In re TracFone Wireless, Inc.,
`852 F. App’x 537 (Fed. Cir. 2021) ..........................................................................................11
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .....................................................................................................7
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .............................................................................................6, 7, 9
`
`ii
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`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 4 of 21 PageID #: 406
`
`
`TABLE OF AUTHORITIES
`(Continued)
`
`
`
`Page(s)
`
`Jawbone Innovations v. Amazon.com, Inc.,
`No. 2:21-CV-00435-JRG, Dkt. 60 (E.D. Tex. Sept. 21, 2022)................................................15
`
`Monterey Rsch., LLC v. Broadcom Corp.,
`No. W-21-cv-00541-ADA, 2022 WL 526240 (W.D. Tex. Feb. 21, 2022) .............................10
`
`Texas v. Google LLC,
`No. 20-cv-957-SDJ, 2021 WL 2043184 (E.D. Tex. May 20, 2021) .......................................15
`
`Unicorn Energy GMBH v. Tesla, Inc.,
`No. 2:20-CV-00338-JRG, 2021 WL 4034515 (E.D. Tex. Sept. 3, 2021) ...........................7, 15
`
`VoIP-Pal.com, Inc. v. Google LLC,
`No. 6:21-CV-00667-ADA, 2022 WL 2068254 (W.D. Tex. June 8, 2022) .............................14
`
`STATUTES
`
`28 U.S.C. § 1400(b) .........................................................................................................................7
`
`28 U.S.C. § 1404(a) .................................................................................................................1, 6, 9
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 45(c)(1)(B) ............................................................................................................10
`
`
`
`
`
`
`
`iii
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`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 5 of 21 PageID #: 407
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`Defendant Databricks, Inc. (“Databricks”) moves, pursuant to 28 U.S.C. § 1404(a), to
`
`transfer this action to the Northern District of California (“NDCA”).
`
`I.
`
`INTRODUCTION
`
`This case belongs in the NDCA. All three named inventors on the asserted patent (now
`
`third parties) resided in California at the time of invention, and two of them still live there. The
`
`third is also located on the West Coast. The company where the patented technology was
`
`developed, Yahoo! Inc., was headquartered in the NDCA at the time of the claimed invention, and
`
`multiple witnesses knowledgeable about key, invalidating prior art are likewise based in the
`
`Northern District. Databricks was founded and is headquartered there, and the accused
`
`instrumentalities were designed and developed there. Northern California is where the key
`
`Databricks witnesses with knowledge of these fundamental facts are based, as are nearly all other
`
`Databricks party witnesses with potentially relevant knowledge.
`
`In contrast, this case has no meaningful connection to any location in this District. No
`
`relevant witnesses or evidence are located here. Nor did any of the events leading to the action
`
`arise in Texas. Moreover, the asserted patent has no relevant connection to this District. Because
`
`virtually all the evidence and witnesses are in Northern California, the NDCA is more convenient
`
`than this District. Accordingly, Databricks respectfully requests transfer of this case to the NDCA
`
`pursuant to § 1404(a).
`
`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`The Patented Technology Was Designed and Developed in the NDCA.
`
`In its Complaint filed on December 28, 2023, R2 Solutions LLC (“R2”) asserts U.S. Patent
`
`No. 8,190,610 (the “asserted patent” or the “’610 patent”). (Dkt. 1.) The asserted patent is titled
`
`“MapReduce for Distributed Database Processing” and purports to describe an “enhanced
`
`1
`
`

`

`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 6 of 21 PageID #: 408
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`MapReduce programming methodology.” (Dkt. 1-2 (’610 patent) at 1:30–45; see Dkt. 1, ¶ 20.)1
`
`The three named inventors on the asserted patent developed the claimed invention during
`
`their employment with Yahoo! Inc., a company that was headquartered in Sunnyvale, California
`
`at the time of the invention. (Declaration of Jessica M. Kaempf (“Kaempf Decl.”), Ex. A.) Each
`
`of the named inventors lived and worked in California at the time of invention, and two were
`
`specifically identified on the face of the asserted patent as residing in Northern California (San
`
`Jose and Sunnyvale). (Dkt. 1-2, ¶ 1.) Based on their Linkedin profiles, two of the three named
`
`inventors currently reside in California: Ali Dasdan in Santa Clara County (in Northern
`
`California), and Ruey-Lung Hsiao (in Los Angeles County). (See Kaempf Decl., Exs. B, C.)2
`
`The assignment history of the asserted patent likewise shows connections between this case
`
`and California. The named inventors assigned the asserted patent to Yahoo! Inc. (headquartered
`
`in Sunnyvale, California at the time of the claimed invention), which then assigned the asserted
`
`patent to Excalibur IP (also based in Sunnyvale, California at the time of assignment). (Id., Ex. E
`
`(Asserted Patent Assignment Record).) These entities accordingly may have documents and
`
`information regarding the patent sale agreements, and thus the value of the asserted patent.
`
`Further, Excalibur IP later assigned the patent to R2, and the person who negotiated the patent sale
`
`agreement on behalf of R2 is Eric Lucas, who has identified himself as President of R2 and is
`
`based in Laguna Beach, California. (Id., Ex. F (Declaration in Roku case), G (LinkedIn Profile).)
`
`
`1 MapReduce is the “programming methodology to perform parallel computations over
`distributed (typically, very large) data sets,” and was conventional technology at the time of the
`purported invention in the ’610 patent. (Dkt. 1-2 (’610 patent) at 1:6–8, 3:9–10.) The asserted
`patent purports to improve on conventional MapReduce by allowing for efficient processing of
`data from two or more related—but possibly heterogeneous—datasets. (Id. at Abstract, 1:31–44.)
`2 Based on LinkedIn, the remaining inventor, Hung-chi Yang, lives in the Western District of
`Washington, which is closer to California than to Texas. (See Kaempf Decl., Ex. D.)
`
`
`
`2
`
`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 7 of 21 PageID #: 409
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`
`B.
`
`The NDCA Is the Location of Design and Development of the Accused
`Functionality and Accused Product.
`
`R2’s Complaint accuses Databricks’ products, systems and/or services “that utilize Apache
`
`Spark,” including specifically the “Databricks Data Intelligence Platform/Databricks Lakehouse
`
`Platform” (“Databricks Platform”). (Dkt. 1, ¶ 7 (defining “Accused Instrumentalities” that include
`
`any “platform(s) offered or provided by Databricks that utilize Apache Spark or any other similar
`
`functionality,” including the Databricks Platform (emphasis added)). Apache Spark is an open
`
`source, freely available, software project that started in 2009 as a research project at the University
`
`of California, Berkeley (“UC Berkeley”), which is based in the NDCA.3 (See Declaration of
`
`Abhinav Taneja (“Taneja Decl.”) ¶ 6.)
`
`(See id. ¶ 7.)
`
`.
`
`
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`Id. ¶¶ 7–8.)
`
`Databricks is, and always has been, headquartered in the NDCA. (Id. ¶ 4.) Databricks
`
`maintains three offices in that district, including in San Francisco, Mountain View, and Berkeley.
`
`(Id.)
`
`
`
`
`
`
`
`
`
`The Databricks Platform was designed and developed by Databricks engineers primarily
`
`based in Northern California. (Id. ¶¶ 7–9.)
`
`
`
`
`3 Apache Spark is an open-source analytics engine used for big data workloads and machine
`learning. (See Taneja Decl. ¶ 6.). As a webpage cited in the Complaint reflects, “Apache Spark
`is
`at
`the
`heart
`of
`the Databricks
`platform.”
`
`(Dkt.
`1
`at
`n.6
`(citing
`https://docs.databricks.com/en/spark/index.html.) The Apache Spark project was open-sourced in
`2010 and donated to the Apache Software Foundation in 2013. (Taneja Decl. ¶ 6.)
`
`
`
`3
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`

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`
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`Further, members of the Databricks financial team with knowledge of Databricks’ financial
`
`
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`data are also based in Northern California. (Id. ¶ 10.)
`
`
`
`
`
`
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`Documents concerning the design, development, and operation of the Databricks Platform
`
`(including source code), as well as any finance documentation, are created in Databricks’ Northern
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`California offices. (Id. ¶ 11.) In contrast, no Databricks employees that work on the accused
`
`instrumentalities live or work in Sherman or anywhere else in this District. (Id. ¶ 12.)
`
`C.
`
`Third-Party Witnesses With Knowledge of Invalidating Prior Art Are
`Located in Northern California.
`
`Several non-party witnesses knowledgeable about invalidating prior art, including prior art
`
`referenced in the asserted patent, are based in the NDCA. Specifically, the asserted patent purports
`
`to improve upon, or “enhance” the utility of, a prior art programming technology called
`
`“MapReduce.” (Dkt. 1-2 (’610 patent) at Abstract.) MapReduce was developed at Google, a
`
`company that is headquartered in Northern California. (Id. at 1:6–15.) The asserted patent cites
`
`the prior art publications of the creators of MapReduce, Jeffrey Dean and Sanjay Ghemawat.4
`
`(Dkt. 1, ¶ 16; ’610 patent at 1:5–27, 2:12–17, 2:19–36, 3:9–20.) Jeffrey Dean and Sanjay
`
`Ghemawat are based in Palo Alto and Mountain View, respectively, which are in Northern
`
`California. (See Kaempf Decl., Exs. H (Dean LinkedIn (Palo Alto), I (Ghemawat Accurint).)
`
`
`4 See also https://www.databricks.com/glossary/mapreduce (“MapReduce was developed in
`the walls of Google back in 2004 by Jeffery Dean and Sanjay Ghemawat of Google . . .”).
`
`
`
`4
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`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 9 of 21 PageID #: 411
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`Moreover, inventors of other key prior art references are based in California. Specifically,
`
`the prior art references include U.S. Patent No. 7,590,620 (“the Pike prior art patent”), U.S. Patent
`
`Publication No. 2006/0218123 (the “Chowdhuri prior art patent publication”) and U.S. Patent No.
`
`6,343,295 (the “MacLeod prior art patent”), all of which are references that have been used to
`
`challenge the validity of the asserted patent before the Patent Trial and Appeal Board.5 (Kaempf
`
`Decl., Exs. J, K, L.) Based on their LinkedIn profiles, four of the five inventors of the Pike prior
`
`art patent—namely Robert C. Pike, Sean Quinlan, Jeffrey Dean and Sanjay Ghemawat—are based
`
`in the NDCA. (Kaempf Decl., Exs. M, N, H, I.)6 At the time of invention, each of these named
`
`inventors was an employee of Google, and presumably has knowledge about the existence of any
`
`prior art systems at Google embodying the technology disclosed in the Pike prior art patent. (Id.)
`
`Further, the leading inventor of the Chowdhuri prior art publication, Sudipto Chowdhuri, is based
`
`in Dublin, California. (Id., Ex. O (LinkedIn Profile).) One of the named inventors of the MacLeod
`
`prior art patent, Casey L. Kiernan, is based in Los Angeles, California. (Id., Ex. P.) These
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`witnesses will likewise have knowledge of the existence of any prior art systems embodying the
`
`Chowdhuri prior art patent publication and/or the MacLeod prior art patent. None of the ten
`
`inventors across any of the prior art patents asserted in the pending IPRs lives in the Eastern
`
`District of Texas (“EDTX”). (See Kaempf Decl., Exs. H, I, K, M–P, Y, Z, and AA.)
`
`D.
`
`R2 Has Multiple Connections to California but Limited Ties to This District.
`
`While R2 purports to be located in Texas (Dkt. 1, ¶ 1), R2 has no identifiable employees
`
`based in Texas. Eric Lucas, who previously submitted a declaration on behalf of R2 in a litigation
`
`
`5 Each of Cloudera, Fed Ex, American Airlines and Databricks have filed IPRs asserting these
`prior art references. See, e.g., IPR2024-00659, IPR2024-00303, IPR2023-00689 and IPR2022-
`01405.
`6 The only “Pike” inventor who does not live in NDCA currently lives in New Jersey. (Id.,
`Ex. Y (Accurint Report).)
`
`
`
`5
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`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 10 of 21 PageID #: 412
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`involving the asserted patent and identified himself as President of R2, is based in Laguna Beach,
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`California. (Id., Exs. F (Eric Lucas Declaration), G (Eric Lucas LinkedIn).) Additionally, Marc
`
`Booth, who is a signatory of R2’s filings to the Texas Secretary of State, is based in Newport
`
`Beach, California. (Id., Ex. Q (R2 tax filing), R (Marc Booth LinkedIn Profile).)
`
`R2’s parent companies, Acacia Research Group LLC and Acacia Research Corporation,
`
`also have stronger ties to California than to Texas. (Dkt. 3; Kaempf Decl., Exs. S, T.) Neither
`
`Acacia Research Group LLC nor Acacia Research Corporation has any identifiable employees in
`
`Texas. Based on the LinkedIn profile for Acacia Research Group LLC, all employees of that entity
`
`are based in California or New York. (Id., Ex. S.) As examples, Eric Lucas (who is also the
`
`President of R2) is the Senior Vice President, Licensing and Litigation at Acacia Research Group
`
`and, as discussed above, he is based in Laguna Beach, California. (Id., Ex. G (Eric Lucas
`
`LinkedIn).) Likewise, Marc Booth is Chief Executive Officer of Acacia Research Group LLC
`
`and, as discussed above, is based in Newport Beach, California. (Id., Ex. R.) Additionally, Kirsten
`
`Hoover, the Chief Financial Officer of R2’s parent company Acacia Research Group LLC, is based
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`in Newport Beach, California. (See Ex. U (Acacia Research Group LLC officers).)7
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`In its Complaint, R2 pleads no facts suggesting any connections in this District other than
`
`being “located” in Frisco, Texas. (See Dkt. 1, ¶ 1.)
`
`III. LEGAL STANDARD
`
`“For the convenience of parties and witnesses, in the interest of justice, a district court may
`
`transfer” any civil action to any district “where it might have been brought.” 28 U.S.C. § 1404(a).
`
`Courts should transfer under § 1404(a) where “the movant demonstrates that the transferee venue
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`is clearly more convenient.” In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008).
`
`
`7 Acacia Research Corporation also has an office in Irvine, California. (Id. Ex. T.)
`
`
`
`6
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`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 11 of 21 PageID #: 413
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`The threshold “question under § 1404(a) is whether a civil action ‘might have been brought’ in the
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`destination venue.” In re Volkswagen of Am., 545 F.3d at 312. Assuming so, courts then consider
`
`whether the “private” and “public” factors favor transfer. Id. The private factors 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; and (4) all other practical
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`problems that make trial of a case easy, expeditious and inexpensive,” and the public factors are
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`“(1) the administrative difficulties flowing from court congestion; (2) the local interest in having
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`localized interests decided at home; (3) the familiarity of the forum with the law that will govern
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`the case; and (4) the avoidance of unnecessary problems of conflicts of laws [or in] the application
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`of foreign law.” Id. at 315 (citations omitted). Courts may not give separate weight to the
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`plaintiff’s choice of forum. In re Nintendo Co., 589 F.3d 1194, 1200 (Fed. Cir. 2009).
`
`IV. ARGUMENT
`
`A.
`
`R2 Could Have Brought This Suit in the NDCA.
`
`The plaintiff could have filed this action in the NDCA. Databricks’ headquarters is in
`
`Northern California, and the accused instrumentalities were designed and developed there.
`
`(Taneja Decl. ¶¶ 4, 8.) Thus, venue would be proper over Databricks, and Databricks would be
`
`subject to personal jurisdiction in the NDCA. See 28 U.S.C. § 1400(b); see also In re Volkswagen
`
`AG, 371 F.3d 201, 203, (5th Cir. 2004) (per curiam). Because the case could have been filed in
`
`the NDCA, the analysis proceeds to the private and public interest factors, all of which
`
`substantially favor transfer or are neutral.
`
`B.
`
`The Private Interest Factors Strongly Favor Transfer to the NDCA.
`
`1.
`
`The Sources of Proof Are Most Easily Accessed in the NDCA.
`
`The access to sources of proof factor weighs heavily in favor of transfer. This factor
`
`analyzes “the relative ease of access to sources of proof, including documentary and other physical
`
`
`
`7
`
`

`

`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 12 of 21 PageID #: 414
`
`
`evidence.” Unicorn Energy GMBH v. Tesla, Inc., No. 2:20-CV-00338-JRG, 2021 WL 4034515,
`
`at *1 (E.D. Tex. Sept. 3, 2021). As the Federal Circuit has instructed, courts must consider “the
`
`location of document custodians and location where documents are created and maintained, which
`
`may bear on the ease of retrieval.” In re Google LLC, No. 2021-178, 2021 WL 5292267, at *2
`
`(Fed. Cir. Nov. 15, 2021) (per curiam); In re Honeywell Int’l Inc., No. 2023-152, 2024 WL 302397,
`
`at *2 (Fed. Cir. Jan. 26, 2024) (per curiam) (this factor favors transfer where “[c]ustodians of
`
`relevant records” are located in the transferee district). “In patent infringement cases, the bulk of
`
`the relevant evidence usually comes from the accused infringer. Consequently, the place where
`
`the defendant’s documents are kept weighs in favor of transfer to that location.” In re Apple Inc.,
`
`979 F.3d 1332, 1340 (Fed. Cir. 2020).
`
`Here, the access to sources of proof factor favors transfer because the relevant documents
`
`were generated and are currently maintained in the NDCA, and the key document custodians are
`
`based in the NDCA. See, e.g., In re Google LLC, 2021 WL 5292267, at *2.
`
`
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`
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` Databricks’ WeWork location in Plano, Texas does not generate
`
`or maintain any documents that are relevant to this case. (See id. ¶ 12.)
`
`
`
`
`
`Further, R2 likely has no sources of proof in this District or even in the State of Texas. R2,
`
`
`
`8
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`

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`Case 4:23-cv-01147-ALM Document 22 Filed 05/23/24 Page 13 of 21 PageID #: 415
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`while registered in Texas, is a fully owned subsidiary of a California-based public company,
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`Acacia Research Corporation. (See Dkt. 3; Kaempf Decl. ¶ 21.) R2 currently has no managing
`
`executive or employee on record residing in this District or anywhere in Texas. Individuals known
`
`to be associated with R2, including Eric Lucas (who previously submitted a declaration on behalf
`
`of R2, identifying himself as President of R2), and Marc Booth (a signatory on R2’s Texas
`
`Secretary of State filings), reside in California. (Kaempf Decl., Exs. F, G, R.) A managing
`
`executive of R2’s parent company Acacia Research Group LLC, Kirsten Hoover, is also a resident
`
`of California. (Id., Ex. U.) Therefore, R2’s documents relevant to this case are likely maintained
`
`in California and R2’s document custodians are likewise in California. R2’s lack of presence in
`
`the EDTX, and its connections to California, further weigh in favor of transfer.
`
`In sum, given the location of design and development of the relevant technology and of
`
`relevant document custodians, and given the absence of relevant evidence in this District, this
`
`factor significantly favors transfer to the NDCA.
`
`2.
`
`Important Non-Party Witnesses, Including the Named Inventors and
`Prior Art Witnesses, Could Be Compelled to Testify in NDCA, But Not
`in EDTX.
`
`The second factor weighs in favor of transfer. This factor focuses on “the availability of
`
`compulsory process to secure the attendance of witnesses.” In re Volkswagen of Am., 545 F.3d at
`
`315. “The venue’s ability to compel testimony through subpoena power is ... an important factor
`
`in the § 1404(a) calculus,” and “will weigh heavily in favor of transfer when more third-party
`
`witnesses reside within the transferee venue than reside in the transferor venue.” In re Apple Inc.,
`
`No. 2021-181, 2021 WL 5291804, at *3 (Fed. Cir. Nov. 15, 2021) (per curiam) (citations omitted).
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`Here, as discussed above in Sections II.A and II.C, multiple non-party witnesses are subject
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`to subpoena powers of the NDCA, but not to those of the EDTX. First, two out of three named
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`inventors—Ali Dasdan and Ruey-Lung Hsiao—reside in the NDCA. (See supra, at II.A.) Because
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`the named inventors of the asserted patent “likely have relevant testimony,” their location in the
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`NDCA favors transfer. Monterey Rsch., LLC v. Broadcom Corp., No. W-21-cv-00541-ADA, 2022
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`WL 526240, at *5 (W.D. Tex. Feb. 21, 2022). Here, Ali Dasdan is the first named inventor of the
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`asserted patent (see Dkt. 1-2); he is based in Santa Clara County, California, and is thus subject to
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`the subpoena power of the NDCA. (Kaempf Decl., Ex. B; Fed. R. Civ. P. 45(c)(1)(B) (“A
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`subpoena may command a person to attend a trial. . . within the state where the person resides, is
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`employed, or regularly transacts business in person”).) Likewise, Ruey-Lung Hsiao, another
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`inventor of the asserted patent, is located in Los Angeles County, California and is also subject to
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`the subpoena power of the transferee forum. (Kaempf Decl., Ex. C.)
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`Second, two individuals, Jeffrey Dean and Sanjay Ghemawat, have knowledge about the
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`MapReduce technology that forms the foundation of the asserted patent, and both are located in
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`the NDCA. (See supra, at II.C; id., Exs. H, I.) Indeed, the MapReduce prior art was “specifically
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`mentioned in the asserted patents themselves” (see Dkt. 1-3), and accordingly, pursuant to Federal
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`Circuit case law, the relevance of these witnesses is “heighten[ed].” In re Hulu, LLC, No. 2021-
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`142, 2021 WL 3278194, at *3 (Fed. Cir. Aug. 2, 2021).
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`Third, other individuals with knowledge of additional key prior art are based in the NDCA.
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`Specifically, in addition to Jeffrey Dean and Sanjay Ghemawat, Robert C. Pike and Sean Quinlan
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`are named inventors of, and thus have knowledge about, the Pike prior art patent and any related
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`prior art systems. (See supra, at II.C; Kaempf Decl., Exs. M, N.) Similarly, Sudipto Chowdhuri
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`and Casey L. Kiernan likewise have knowledge of key prior art. (See supra, at II.C; Kaempf Decl.,
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`Exs. O, P.) In sum, at least six individuals with knowledge of important prior art are based in
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`Northern California, and thus subject to the subpoena power of the proposed transferee court. (Id.)
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`Because these non-party individuals and entities have highly relevant knowledge about the
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`Asserted Patent and prior art, and because they would be subject to the subpoena power of the
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`NDCA—but not this Court—this factor favors transfer.
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`3. Witnesses Could Attend Trial More Easily in the NDCA.
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`The third factor, the cost of attendance for willing witnesses, also strongly favors transfer.
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`The cost of attendance for willing witnesses is the most important factor in a transfer analysis. See
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`In re DoDots Licensing Sols. LLC, No. 2024-100, 2023 WL 8642716, at *1 (Fed. Cir. Dec. 14,
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`2023) (per curiam) (lower cost of attendance for willing witnesses weighs in favor of transfer).
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`“[W]here ‘a substantial number of material witnesses reside within the transferee venue . . . and
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`no witnesses reside within the’ transferor venue, a district court ‘clearly err[s] in not determining’
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`the convenience of willing witnesses ‘to weigh substantially in favor of transfer.’ In re Google
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`LLC, No. 2021-170, 2021 WL 4427899, at *4 (Sept. 27, 2021) (citation omitted).
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`This factor strongly favors transfer.
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` Moreover, the design and
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`development of the Databricks Platform to utilize Apache Spark occurred primarily in Northern
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`California. (Id. ¶ 9.) The Databricks engineering team that designed and developed the accused
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`instrumentalities is primarily located in Northern California, well over 1400 miles away from
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`Sherman, Texas. (Id.; Kaempf Decl., Ex. V.)
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`The convenience to these highly relevant party witnesses weighs heavily in favor of transfer. In
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`re TracFone Wireless, Inc., 852 F. App’x 537, 539 (Fed. Cir. 2021) (willing witnesses factor favors
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`transfer where “several of [defendant’s] likely employee witnesses [are] residing in the transferee
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`venue”); In re Hulu, LLC, 2021 WL 3278194, at *4 (willing witnesses factor favors transfer where
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`“nearly all of the party witnesses are in or near the” transferee venue).
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`Conversely, none of the Databricks employees that work on Apache Spark lives in this
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`District, and no Databricks custodians who create or maintain documents relevant to this action
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`are in this District. (Taneja Decl. ¶ 12.)
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` Indeed, as the Federal Circuit has explained, any inconvenience
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`to employees with non-technical knowledge cannot outweigh the inconvenience to witnesses with
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`critical knowledge of the accused functionality. See In re Samsung Elecs. Co., No. 2023-146,
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`2023 WL 8642711, at *2 (Fed. Cir. Dec. 14, 2023) (per curiam) (employees in transferor forum
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`“who have no technical knowledge of the accused functionality here, ‘cannot overcome the
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`immense inconvenience that the majority of relevant witnesses would face if the case [were not
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`transferred].’”).
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`The NDCA would also be more convenient for likely witnesses associated with R2. Such
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`individuals will likely have knowledge about the R2’s business and licensing of the asserted patent,
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`and are located in or around Laguna Beach, California. (See supra, at II.D.) As one example, Eric
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`Lucas previously submitted a declaration confirming he has knowledge about the sale (and value)
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`of the asserted patent, and he is based in Laguna Beach, California.8 (Kaempf Decl., Exs. F, G.)
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`Laguna Beach is approximately 1000 miles closer to the NDCA than it is to Sherman, Texas. (Id.,
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`Exs. W, X.) Under this factor, the proximity of these witnesses to Northern California favors
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`transfer. In re TikTok, Inc., 85 F.4th 352, 361 (5th Cir. 2023) (when the distance between the
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`transferor court and the transferee court is more than 100 miles, “the factor of inconvenience to
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`the witnesses increases in direct relationship to the additional distance to be traveled.”).
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`C.
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`Practical Issues of Litigation Favor Transfer.
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`This factor considers “practical problems that make a trial easy, expeditious and
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`inexpensive.” In re Apple, 979 F.3d at 1342. This factor favors transfer because the case is in its
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`early stages, and there is no related co-pending litigation in this District. Further, witnesses from
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`both parties are located in or near the transferee venue; thus, transferring this action will minimize
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`problems and costs associated with travel.
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`D.
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`The Public Factors Favor Transfer or Are Neutral.
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`1. Court Congestion Is Neutral.
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`This Court has found this factor neutral because “the record does not indicate any further
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`basis to comparatively evaluate court efficiencies.” Cellspin Soft, Inc. v. Nike, Inc., No. 2:22-CV-
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`0455-JRG-RSP, 2023 WL 6280260, at *5 (E.D. Tex. Sept. 26, 2023). The Federal Circuit has
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`ruled that this factor is afforded the least weight because it “appears to be the most speculative”
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`factor. See In re Genentech, Inc., 566 F.