Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 1 of 22 PageID #: 839
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`Plaintiff,
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`vs.
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`APPLE INC.,
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`Defendant.
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` Civil Action No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`APPLE INC.’S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 2 of 22 PageID #: 840
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ............................................................................................................. 1
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`BACKGROUND ............................................................................................................... 2
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`A.
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`B.
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`C.
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`Apple Is Based In The NDCA ............................................................................... 2
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`Maxell Has No Relevant Ties To The EDTX ........................................................ 4
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` ....................................................................................................... 4
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`III.
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`LEGAL STANDARD ........................................................................................................ 5
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`IV.
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`ARGUMENT ..................................................................................................................... 6
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`A.
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`B.
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`This Case Could Have Been Brought In The NDCA ............................................ 6
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`The NDCA Is The Clearly More Convenient Venue ............................................. 6
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`1.
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`All Four Private Interest Factors Favor Transfer ....................................... 6
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`a.
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`b.
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`c.
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`d.
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`Relative Ease of Access to Sources of Proof Strongly
`Favors Transfer .............................................................................. 6
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`Availability of Compulsory Process Favors Transfer .................... 9
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`Attendance of Willing Witnesses Favors Transfer ...................... 10
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`Other Practical Problems Associated With Trial Of This
`Case Are Neutral .......................................................................... 11
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`2.
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`The Public Interest Factors Also Favor Transfer ..................................... 13
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`a.
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`b.
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`c.
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`Local Interests Strongly Favor Transfer ...................................... 13
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`Familiarity with Governing Law Favors Transfer ....................... 14
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`Remaining Public Interest Factors Are Neutral ........................... 15
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`V.
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`CONCLUSION ................................................................................................................ 15
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`i
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 3 of 22 PageID #: 841
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`ACQIS LLC v. EMC Corp.,
`67 F. Supp. 3d 769 (E.D. Tex. 2014) ........................................................................................ 13
`
`Adaptix, Inc. v. HTC Corp.,
`937 F. Supp. 2d 867 (E.D. Tex. 2013) .................................................................................. 9, 10
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) ...................................................................................................... 9
`
`Alacritech Inc. v. CenturyLink, Inc.,
`No. 2:16-cv-00693-JRG-RSP, 2017 WL 4155236 (E.D. Tex. Sept. 19, 2017) ........................ 10
`
`Bush Seismic Techns. LLC v. Am. Gem Soc’y,
`No. 2:14-cv-1809-JRG, 2016 WL 1545855 (E.D. Tex. Apr. 15, 2016) ................................. 7, 8
`
`ConnecTel, LLC v. Cisco Sys., Inc.,
`No. 2:04-cv-396, 2005 WL 366966 (E.D. Tex. Feb. 16, 2005) ................................................ 12
`
`DSS Tech. Mgmt., Inc. v. Apple Inc.,
`No. 6:13-cv-919-JDL, 2014 WL 6847569 (E.D. Tex. Nov. 7, 2014) .................................. 7, 15
`
`In Re Genentech,
`566 F.3d 1338 (Fed. Cir. 2009) ......................................................................................... passim
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) .......................................................................................... 10, 13
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`In re Horseshoe Entm’t,
`337 F.3d 429 (5th Cir. 2003) ...................................................................................................... 9
`
`In re Morgan Stanley,
`417 F. App’x 947 (Fed. Cir. 2011) ..................................................................................... 13, 15
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009) .................................................................................................. 6
`
`In re Toa Techs., Inc.,
`543 F. App’x 1006 (Fed. Cir. 2013) ........................................................................................... 7
`
`In re Verizon Bus. Network Servs.,
`635 F.3d 559 (Fed. Cir. 2011) .................................................................................................. 13
`
`ii
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 4 of 22 PageID #: 842
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`TABLE OF AUTHORITIES
`(continued)
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`
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`Page(s)
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`In Re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ............................................................................................ 5, 6, 11
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`In Re Volkswagen of America, Inc.,
`545 F.3d 304 (5th Cir. 2008) ........................................................................................ 5, 6, 7, 11
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`In re Zimmer Holdings, Inc.,
`609 F.3d 1378 (Fed. Cir. 2010) ................................................................................................ 13
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`Innovative Display Techs. LLC v. BMW of N. Am., LLC,
`No. 2:14-cv-00106-JRG, 2015 WL 1459188 (E.D. Tex. Mar. 31, 2015) ................................ 10
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`Maxell, Ltd. v. ASUSTek Computer Inc.,
`No. 3:18-cv-01788-VC, Dkt. 37 (N.D. Cal. Jan. 12, 2018) ...................................................... 11
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`Mohamed v. Mazda Motor Corp.,
`90 F. Supp. 2d 757 (E.D. Tex. 2000) .......................................................................................... 6
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`Network Protection Sciences, LLC v. Juniper Networks, Inc.,
`No. 2:10-cv-224-JRG, 2012 WL 194382 (E.D. Tex. Jan. 23, 2012) ........................................ 14
`
`Papst Licensing GmbH & Co., KG v. Apple, Inc.,
`No. 6:15-cv-1095, 2016 U.S. Dist. LEXIS 177687 (E.D. Tex. Sep. 30, 2016) .................. 12, 15
`
`Porto Tech. Co., Ltd. v. Apple Inc.,
`No. 2:15-cv-00457-JRG-RSP, 2016 WL 937366 (E.D. Tex. Mar. 11, 2016) .......................... 15
`
`Realtime Data LLC v. Dropbox, Inc.,
`No. 6:15-cv-463-RWS-JDL, 2016 WL 153860 (E.D. Tex. Jan. 12, 2016) .............................. 12
`
`TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
`137 S. Ct. 1514 (2017) ................................................................................................................ 6
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`Tessera Advanced Techs., Inc. v. Samsung Elecs. Co., Ltd.
`No. 2:17-cv-00671-JRG, 2018 WL 8014281 (E.D. Tex. Sept. 5, 2018) .................................. 14
`
`Texas Data Co., LLC v. Target Brands, Inc.,
`771 F. Supp. 2d 630 (E.D. Tex. Jan. 12, 2011) ........................................................................ 10
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`TransUnion Intelligence LLC v. Search Am., Inc.,
`No. 2:10-cv-130-TJW, 2011 WL 1327038 (E.D. Tex. Apr. 5, 2011) ...................................... 12
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`Wireless Recognition Techs. LLC v. A9.com, Inc.,
`No. 2:10-cv-364-JRG, 2012 WL 506669 (E.D. Tex. Feb. 15, 2012) ......................................... 9
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`iii
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 5 of 22 PageID #: 843
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`TABLE OF AUTHORITIES
`(continued)
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`
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`Zenith Elecs. LLC v. Sony Corp.,
`No. 5:10-cv-184-DF, 2011 WL 13217851 (E.D. Tex. Apr. 25, 2011) ..................................... 12
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`Page(s)
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`Statutes
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`28 U.S.C. § 1391(c)(2) .................................................................................................................... 6
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`28 U.S.C. § 1400(b) ........................................................................................................................ 6
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`28 U.S.C. § 1404(a) ........................................................................................................................ 5
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`Rules
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`Fed. R. Civ. P. 45(c)(1)(A) ............................................................................................................. 9
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`Fed. R. Civ. P. 45(c)(1)(B) ............................................................................................................. 9
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`iv
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 6 of 22 PageID #: 844
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`I.
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`INTRODUCTION
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`Under a straightforward application of the Volkswagen I factors, the Court should transfer
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`this case to the Northern District of California (“NDCA”) because it is the clearly more convenient
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`venue. This case has no connection to the Eastern District of Texas (“EDTX”), but has very
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`significant connections to the NDCA. Indeed, the most important factor in the transfer analysis—
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`the location of the relevant witnesses—weighs strongly in favor of transfer as there are numerous
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`party and third-party witnesses in the NDCA. On that basis alone, this case belongs in the NDCA.
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`The other transfer factors similarly support transfer.
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`Apple Inc. (“Apple”) is a California corporation, headquartered for over 40 years in the
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`NDCA.
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` The case for transfer, however, goes beyond Apple’s strong ties to the NDCA.
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`Third-party vendors and witnesses with knowledge of certain accused components are also located
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`in the NDCA. The NDCA has subpoena power over, and is more convenient for, certain party and
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`third-party witnesses.
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`In contrast, Maxell, Ltd. (“Maxell”) —headquartered in Kyoto, Japan—has no relevant ties
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`to the EDTX and its witnesses would actually suffer less burden litigating in the NDCA. Maxell
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`does not have a single employee in the EDTX, and no known third-party witnesses or sources of
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`proof relevant to the transfer analysis are in or near the EDTX. No transfer factor supports keeping
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`this case in the EDTX. Accordingly, Apple respectfully moves to transfer this case to NDCA
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`pursuant to 28 U.S.C. § 1404(a).
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`1
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 7 of 22 PageID #: 845
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`—
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`II.
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`BACKGROUND
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`A.
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`Apple Is Based In The NDCA
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`Apple, headquartered in Cupertino, Califomia (in the NDCA), has been a Califomia
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`corporation since its formding in 1976. Declaration of Michael Jaynes (“Jaynes Decl.”), 1] 6.
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`Apple’s management and primary research and development facilities are all located in or near
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`Cupertino, Califomia. Id., 1] 7. While Apple sells its products throughout the world, the primary
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`research, design, and development of the features and functionality accused in this case took place
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`in or arormd Cupertino, Califomia. Id., 1H] 7—2 1.
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`Apple’s relevant witnesses are also located in the NDCA. The following is a list of Apple
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`employees likely to have discoverable information relevant to this case:
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`Asserted US. Patent Nos.
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`Accused Technology
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`Ia‘figfeg?
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`6,748,317 (“’317 patent”),
`6,580,999 (“’999 patent”),
`6,430,498 (“’498 patent”)
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`Walking navigation features in Apple
`Maps and Find My Friends
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`8,339,493 (“,493 patent”)
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`g2181:22133:11:11 1mage sensors or1mage=
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`10,212,586 (“’586 patent”)
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`7,116,438 (“’438 patent”),
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`Authenticating Apple devices and
`allowing data communication between
`authenticated Apple devices
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`m
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`6’408’193 ( 193 patent )
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`Controlling the gain and bias power
`settings for CDMA data transmission
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`10,084,991 (“’991 patent”),
`6,928,306 (“’306 patent”)
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`Notifications and alerts for telephone
`calls and FaceTime video calls
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`6,329,794 (“’794patent”)
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`Low PowerMode 5
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`Id., 1111 4-5, 8-14, 22-32. All of these individuals are located in the NDCA, and their respective
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`engineering teams are also based there. Id., 1111 22-32, 34-35.—
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 8 of 22 PageID #: 846
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`Decl.”), Ex. O, 19; Ex. P, 16.
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` Declaration of Luann Simmons (“Simmons
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` Apple has neither
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`a regular place of business nor any employees or documents relevant to this matter in the EDTX.
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`See Jaynes Decl., ¶¶ 19-20, 36. The two Apple retail stores previously located in the EDTX and
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`identified in Maxell’s Complaint closed in April 2019. See id., ¶ 19; Dkt. 1, Complaint, ¶ 12.
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`Not only are Apple’s witnesses and documents located in California, relevant third-party
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`vendors that supply certain accused components to Apple are also located there. Jaynes Decl., ¶¶
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`27-28. For example, Maxell’s infringement allegations for the ’193 patent are based primarily on
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`the functionality provided by CDMA radio chipsets supplied by third-party vendors. See
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`Complaint, ¶ 83 (citing teardown image showing Intel chipsets).
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`3
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 9 of 22 PageID #: 847
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`B. Maxell Has No Relevant Ties To The EDTX
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`Maxell is a Japanese corporation headquartered in Kyoto, Japan. Complaint, ¶ 7. All of
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`the 28 named inventors of the patents-in-suit are based in Japan. Id., Exs. 1-10; Simmons Decl.,
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`Ex. O, 10-18. And the previous owners of the patents-in-suit—Hitachi Ltd., Hitachi Consumer
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`Electronics Co., Ltd., and Hitachi Maxell, Ltd.—are all Japanese corporations with no ties to the
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`EDTX. Simmons Decl., Ex. C.
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`The only alleged tie Maxell has to this district is through an “affiliate” named Maxell
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`Research and Development America, LLC (“MRDA”), which was allegedly founded in Marshall,
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`Texas. See Complaint, ¶ 6. But MRDA is neither a party to this case, nor the assignee of any
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`patents-in-suit, nor the employer of any named inventor to the patents-in-suit. See id. The alleged
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`research work performed by MRDA—relating to batteries for flashing stop signs, wireless
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`charging for “Robo Fish” toys, and magnetic tape data cartridges—has nothing to do with the
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`patents or technology at issue in this case. See Simmons Decl., Ex. D, 12:22-13:3. Moreover,
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`MRDA’s alleged Texas office has no employees, and is at an address shared with seventeen other
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`companies, many of which are non-practicing patent-licensing entities. See id., Ex. D, 13:7-10;
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`Ex. E.2 MRDA is registered in New Jersey, and all of its registered officers are located outside
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`the state of Texas. Id., Ex. F; Ex. D, 12:9-17:19.
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`C.
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`The Complaint alleges that Maxell began communicating with Apple in 2013. See
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`Complaint, ¶¶ 5, 30, 31, 44, 45, 59, 60, 160, 161.
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`2 Maxell alleges that MRDA is located at 511 N. Washington Ave. in Marshall, Texas, but the
`sole resident listed at that address is Alan R. Loudermilk. See Simmons Decl., Ex. E; Ex. D,
`14:9-23. Other than Mr. Loudermilk, Maxell did not identify any potential witness affiliated
`with MRDA in its Initial Disclosures. See id., Ex. O, 18.
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`4
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`III. 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 America, Inc., 545 F.3d
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`304, 312-13 (5th Cir. 2008) (“Volkswagen II”). Second, the movant must show “good cause” by
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`demonstrating that the “transferee venue is clearly more convenient” than the transferor district.
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`Id. at 315. As shown below, this case meets both requirements.
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`In determining whether the “transferee venue is clearly more convenient,” the district court
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`weighs four private factors and four public interest factors, with which this Court is intimately
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`familiar. See In Re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). The
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`“most important” factor, typically, “is whether substantial inconvenience will be visited upon key
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`fact witnesses should the court deny transfer.” Mohamed v. Mazda Motor Corp., 90 F. Supp. 2d
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`3 Maxell’s Initial Disclosures describe Maxell Corporation of America as being involved in
`“prior negotiations between Maxell and Apple.” Simmons Decl., Ex. O, 19.
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`5
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`757, 774 (E.D. Tex. 2000); see also In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009)
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`(when “most witnesses and evidence [are] closer to the transferee venue with few or no
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`convenience factors favoring the venue chosen by the plaintiff, the trial court should grant a motion
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`to transfer”). A plaintiff’s choice of venue is not a separate factor in the analysis and is considered
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`as part of the overall “clearly more convenient” standard. Volkswagen II, 545 F.3d at 315.
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`IV. ARGUMENT
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`A.
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`This Case Could Have Been Brought In The NDCA
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`There can be no dispute that this case could have been brought in the NDCA. A patent
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`infringement case may be brought in “the judicial district where the defendant resides, or where
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`the defendant has committed acts of infringement and has a regular and established place of
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`business.” 28 U.S.C. § 1400(b); see also TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
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`137 S. Ct. 1514, 1519 (2017). For purposes of patent venue, a domestic corporation “resides” only
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`in its state of incorporation. See id. at 1514. Apple is a California corporation that is both
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`headquartered and has its principal place of business in the NDCA (see Jaynes Decl., ¶ 6), and
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`Apple is subject to personal jurisdiction there. 28 U.S.C. §§ 1391(c)(2), 1400(b). Accordingly,
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`the threshold requirement for transferring this case is met. See Volkswagen I, 371 F.3d at 203.
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`B.
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`The NDCA Is The Clearly More Convenient Venue
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`1.
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`All Four Private Interest Factors Favor Transfer
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`a.
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`Relative Ease of Access to Sources of Proof Strongly Favors Transfer
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`All of Apple’s relevant documents, witnesses, and evidence and relevant third-party
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`evidence are located in or electronically accessible from the NDCA. The access-to-proof factor
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`“turns upon which party—usually the accused infringer—will most probably have the greater
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`volume of documents relevant to the litigation and the presumed location of these documents in
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`relation to the proposed and transferor venues.” Bush Seismic Techns. LLC v. Am. Gem Soc’y, No.
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`6
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 12 of 22 PageID #: 850
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`2:14-cv-1809-JRG, 2016 WL 1545855, at *3 (E.D. Tex. Apr. 15, 2016). When a defendant has
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`most of the identified relevant documents, “the place where the defendant’s documents are kept
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`weighs in favor of transfer to that location.” DSS Tech. Mgmt., Inc. v. Apple Inc., No. 6:13-cv-
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`919-JDL, 2014 WL 6847569, at *2 (E.D. Tex. Nov. 7, 2014) (citing In Re Genentech, 566 F.3d
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`1338, 1345 (Fed. Cir. 2009)). The physical location of documents is relevant to the transfer
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`analysis, even if the documents are in electronic form. Volkswagen II, 545 F.3d at 316; In re Toa
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`Techs., Inc., 543 F. App’x 1006, 1008-09 (Fed. Cir. 2013).
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`Relevant third-party evidence is also located in the NDCA. Specifically, the ’193 patent
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`relates to controlling the transmission bias of CDMA data communication. See Complaint, ¶¶ 81,
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`88.
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`7
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 13 of 22 PageID #: 851
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`Conversely, Apple is not aware of any relevant evidence in the EDTX. No relevant
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`documents concerning the research, development, marketing, or financials of the accused
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`products—or any other relevant evidence—are in the EDTX, and no Apple witnesses are in the
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`EDTX. Id., ¶¶ 19-20, 36. Indeed, Apple does not currently operate any retail stores, corporate
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`offices, or any other type of facility in the EDTX, and no Apple employee in the EDTX was
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`involved in the research, design, development, or marketing of the accused technology or accused
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`products. Id., ¶ 19. And even when Apple operated retail stores in the EDTX, those stores did not
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`house documents relevant to this case or employ engineers who developed the accused technology.
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`Id., ¶ 20. The accused products are sold and used nationwide and are not used in any manner
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`differently in the EDTX than they are used elsewhere. Id., ¶ 19.
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`Maxell has no physical presence or relevant evidence in the EDTX. Maxell’s only alleged
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`tie to the EDTX is through its affiliate MRDA, which has no employees in the EDTX and no
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`relevant evidence.4 See Simmons Decl., Exs. D-F; see also Section II. In their Initial Disclosures,
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`the parties identified only one potential witness with any tie to the EDTX—Alan Loudermilk. See
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`Simmons Decl., Ex. O, 18; Ex. P, 14-15. Mr. Loudermilk previously served as Maxell’s outside
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`counsel in its patent licensing negotiations with other companies, including Apple. Id., Ex. P.5
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`4 Maxell has not alleged that MRDA has any relevant documents in the EDTX. Given that the
`alleged research performed by MRDA is unrelated to the technology at issue, there is little
`chance that MRDA has anything relevant to this case. See Simmons Decl., Ex. D, 12:22-13:3.
`Even if Maxell claims to have documents in the EDTX, that claim cannot counterbalance
`Apple’s sources of proof in the NDCA. This Court and the Federal Circuit have recognized that
`an accused infringer “will most probably have the greater volume of documents relevant to the
`litigation.” Bush Seismic, 2016 WL 1545855, at *3; see In Re Genentech, 566 F.3d at 1345.
`5 Mr. Loudermilk is also the apparent owner of the building that houses MRDA in Marshall. See
`Simmons Decl., Ex. D, 14:9-23; Ex. E.
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`8
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 14 of 22 PageID #: 852
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`Given his role as hired outside counsel, Mr. Loudermilk’s presence in the EDTX has no bearing
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`on the transfer analysis. See In re Horseshoe Entm’t, 337 F.3d 429, 434 (5th Cir. 2003) (finding
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`“location of [a party’s] counsel” to be “irrelevant and improper for consideration in determining
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`the question of transfer of venue”). Thus, “[t]he number of witnesses residing in Texas, and any
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`relevant information which they may provide, pales in comparison to the number of party and non-
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`party witnesses with relevant information residing in Northern California.” Wireless Recognition
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`Techs. LLC v. A9.com, Inc., No. 2:10-cv-364-JRG, 2012 WL 506669, at *5 (E.D. Tex. Feb. 15,
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`2012). Comparing the numerous sources of proof in the NDCA with the little or no sources in the
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`EDTX, the ease of access to evidence factor weighs strongly in favor of transfer.
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`b.
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`Availability of Compulsory Process Favors Transfer
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`“Transfer is favored when a transferee district has absolute subpoena power over a greater
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`number of non-party witnesses.” Adaptix, Inc. v. HTC Corp., 937 F. Supp. 2d 867, 874 (E.D. Tex.
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`2013). The ability to compel live trial testimony is crucial for evaluating a witness’s testimony.
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`See Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992). A court may subpoena a witness to
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`attend trial only (A) “within 100 miles of where the person resides, is employed, or regularly
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`transacts business in person”; or (B) “within the state where the person resides, is employed, or
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`regularly transacts business in person.” Fed. R. Civ. P. 45(c)(1)(A), (B).
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`These California-based engineers would be within the subpoena range of the NDCA, but not the
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`EDTX. Moreover, Maxell’s own Initial Disclosures identify multiple third-party witnesses and
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`companies within the subpoena range of the NDCA. See Simmons Decl., Ex. O, 15-21 (identifying
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`Case 5:19-cv-00036-RWS Document 53 Filed 08/02/19 Page 15 of 22 PageID #: 853
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`
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`eight third-party witnesses and companies in California). As “[t]he Fifth Circuit values absolute
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`subpoena power when deciding motions to transfer,” this factor clearly favors transfer. See
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`Alacritech Inc. v. CenturyLink, Inc., No. 2:16-cv-00693-JRG-RSP, 2017 WL 4155236, at *4 (E.D.
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`Tex. Sept. 19, 2017) (citing In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009)).
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`c.
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`Attendance of Willing Witnesses Favors Transfer
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`“The convenience of the witnesses is probably the single most important factor in transfer
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`analysis.” Genentech, 566 F.3d at 1343 (internal quotation marks omitted); Innovative Display
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`Techs. LLC v. BMW of N. Am., LLC, No. 2:14-cv-00106-JRG, 2015 WL 1459188, at *3 (E.D. Tex.
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`Mar. 31, 2015). To evaluate witness convenience, “[t]he Court must consider the convenience of
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`both the party and non-party witnesses.” Texas Data Co., LLC v. Target Brands, Inc., 771 F. Supp.
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`2d 630, 644 (E.D. Tex. Jan. 12, 2011). Of these, “the convenience to non-party witnesses is
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`afforded greater weight.” Adaptix, 937 F. Supp. 2d at 875.
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`
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` These witnesses are a short car ride from the
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`courthouses in the NDCA. Indeed, Apple’s headquarters in Cupertino,
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` in
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`Santa Clara, and
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` San Jose, Santa Clara, and San Francisco are all
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`less than 50 miles from the NDCA’s San Jose, San Francisco, and Oakland courthouses, but more
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`than 1,500 miles and a lengthy, indirect plane ride from the EDTX. Simmons Decl., Exs. H-J. All
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`of these party and third-party witnesses could attend trial in the NDCA without the substantial
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`travel time and expense that trial in the EDTX would require. It is an “‘obvious conclusion’ that
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`it is more convenient for witnesses to testify at home and that … additional travel time increases
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`the probability for meal and lodging expenses; and additional travel time with overnight stays
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`increases the time which these fact witnesses must be away from their regular employment.”
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`
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`Volkswagen II, 545 F.3d at 317. The Fifth Circuit’s “100-mile rule” also applies here, as “the
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`distance between [the] existing venue for trial of a matter and [the] proposed venue under § 1404(a)
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`is more than 100 miles”; thus, “the factor of inconvenience to witnesses increases in direct
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`relationship to the additional distance to be traveled.” Genentech, 566 F.3d at 1343.
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`Maxell and its employees are located in Japan. See Complaint, ¶ 7. The named inventors
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`of the patents-in-suit, many of whom may be important witnesses in this case, all appear to reside
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`in Japan. See id., Exs. 1-10. It is more convenient for these party and third-party witnesses to
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`travel from Japan to the NDCA than to the EDTX. For example, the majority of the named
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`inventors are located in or near Tokyo. See id., Exs. 1-10; see also Simmons Decl., Ex. K. There
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`are five daily direct flights from Tokyo to Northern California, with flight times of less than 10
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`hours. See Simmons Decl., Ex. L. By comparison, it would take the inventors nearly twice as
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`long to reach Texarkana through connecting flights. Id., Ex. M. Indeed, in a prior case filed in
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`California, Maxell argued to the court that it was more convenient for it to litigate in California
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`compared to other jurisdictions. See Maxell, Ltd. v. ASUSTek Computer Inc., No. 3:18-cv-01788-
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`VC, Dkt. 37, at *5 (N.D. Cal. Jan. 12, 2018) (Maxell stating that “in this case, venue is more
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`convenient in one of two districts in California” as compared to “the Eastern District of Texas and
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`… the District of Delaware”). Accordingly, witness convenience strongly favors transfer.
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`d.
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`Other Practical Problems Associated With Trial Of This Case Are
`Neutral
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`This case is not one that presents “other practical problems” that make trial more “easy,
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`expeditious and inexpensive” in any forum. In Re Volkswagen, 371 F.3d at 203. Because this
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`case is in its early stages—no substantive proceedings have yet occurred, the Markman hearing is
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`five months away, and trial is set for more than a year away—there are no practical problems
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`
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`implicated by a transfer. See TransUnion Intelligence LLC v. Search Am., Inc., No. No. 2:10-cv-
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`130-TJW, 2011 WL 1327038, at *5 (E.D. Tex. Apr. 5, 2011).
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`No other litigation involving any of the patents-in-suit is pending in the EDTX. To the
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`extent Maxell argues that previous litigation in this district weighs against transfer, both this Court
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`and the Federal Circuit have rejected that proposition. As this Court has recognized, because the
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`prior cases involving the patents-in-suit have all been terminated, there is little judicial economy
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`to be gained from litigating the same patents in the EDTX. See Zenith Elecs. LLC v. Sony Corp.,
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`No. 5:10-cv-184-DF, 2011 WL 13217851, at *10 (E.D. Tex. Apr. 25, 2011) (“Because Plaintiff
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`has no relevant co-pending case in this Court, judicial economy is of limited weight in analyzing
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`the venue factors.”); ConnecTel, LLC v. Cisco Sys., Inc., No. 2:04-cv-396, 2005 WL 366966, at
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`*4 (E.D. Tex. Feb. 16, 2005) (“[T]he gains in judicial economy [based on past claim constructions]
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`are at best minimal, and possibly non-existent since such gains could be realized by simply
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`referring to [the Court’s] claim construction, if necessary.”). For example, although this Court has
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`previously construed certain claim terms of the patents-in-suit, “that claim construction would
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`benefit the Northern District of California as much as this District.” Papst Licensing GmbH &
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`Co., KG v. Apple, Inc., No. 6:15-cv-1095, 2016 U.S. Dist. LEXIS 177687, at *18 (E.D. Tex. Sep.
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`30, 2016) (Schroeder, J.)6; see also Realtime Data LLC v. Dropbox, Inc., No. 6:15-cv-463-RWS-
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`JDL, 2016 WL 153860, at *6 (E.D. Tex. Jan. 12, 2016) (granting motion to transfer to NDCA
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`despite the Court’s familiarity with half of the patents-in-suit because the private interest factors
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`weighed in favor of transfer).
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`6 In Papst, this Court denied Apple’s transfer motion because there were “six co-pending cases in
`this District involving the same patents and the same accused technology.” 2016 U.S. Dist.
`LEXIS 177687, at *16. Here, there are no co-pending cases in this district involving any of the
`patents-in-suit.
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`
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`The Federal Circuit has also rejected the argument that prior litigation involving the
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`patents-in-suit is sufficient to overcome the convenience factors. In In re Verizon Bus. Network
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`Servs., the Federal Circuit explained that “[t]o interpret § 1404(a) to hold that any prior suit
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`involving the same patent can override a compelling showing of transfer would be inconsistent
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`with the policies underlying § 1404(a).” 635 F.3d 559, 562 (Fed. Cir. 2011) (granting writ of
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`mandamus). Like this case, the Verizon case involved patents that were litigated in prior cases that
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`concluded before the filing of the case at issue. See id. The Federal Circuit found the existence
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`of those prior cases without “co-pending litigation before the district court” to be “too tenuous a
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`reason to support denial of transfer.” Id. Likewise, in In re Morgan Stanley, the Federal Circuit
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`found that the district court abused its discretion by denying a motion to transfer based on its
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`familiarity with the patents-in-suit from a prior, concluded case. 417 F. App’x 947, 949 (Fed. Cir.
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`2011) (citing In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010)). Similarly here,
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`because there is no co-pending case in this district involving any of the patents-in-suit, there is
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`little judicial efficiency to be gained from keeping the case in the EDTX. Accordingly, no practical
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`problems exist that should deter this Court from transferring this case to the NDCA.
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`2.
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`The Public Interest Factors Also Favor Transfer
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`a.
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`Local Interests Strongly Favor Transfer
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`The NDCA has a strong local interest in this case “because the cause of action calls into
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`question the work and reputation of several individuals residing in or near that district.” In Re
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`Hoffman-La Roche Inc., 587 F.3d 1333, 1336 (Fed. Cir. 2009). This case directly affects
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`California-based engineers from Apple and Apple’s chipse