Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 1 of 32 PageID #: 2700
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S AMENDED
`MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 2 of 32 PageID #: 2701
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION
`I.
`II. BACKGROUND
`A. Maxell’s Extensive Contacts in the Eastern District
`B. Apple’s Extensive Contacts in Texas
`III. LEGAL STANDARD
`IV.
`V. ARGUMENT
`A. Ease of Access to Sources of Proof Weighs Against Transfer.
`1.
`Apple’s Alleged Evidence
`2.
`Third-Party Evidence
`3. Maxell’s Evidence
`B. Compulsory Process to Secure the Attendance of Witnesses is Neutral.
`C. The Cost of Attendance of Willing Witnesses Weighs Against Transfer
`1.
`Apple’s Identified Witnesses
`2.
`Third-Party Witnesses
`3. Maxell Witnesses
`D. Other Practical Problems Weigh Against Transfer
`E. Court Congestion Weighs Against Transfer
`F. Local Interest is Neutral
`G. The Familiarity with Governing Law is Neutral
`H. Unnecessary Problems of Conflict of Laws is Neutral
`VI. CONCLUSION
`
`
`
`1
`2
`2
`4
`6
`7
`9
`9
`9
`11
`12
`13
`16
`16
`17
`19
`20
`21
`23
`24
`25
`25
`
`ii
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 3 of 32 PageID #: 2702
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Acqis LLC v. EMC Corp.,
`67 F. Supp. 3d 769 (Fed. Cir. 2009) ........................................................................................23
`
`Affinity Labs of Tex. v. Samsung Elecs. Co., Ltd.,
`968 F. Supp. 2d 852 (E.D. Tex. Sept. 17, 2013) ........................................................................9
`
`Cellular Communications Equipment LLC v. Apple Inc.,
`6:14-cv-00251 (E.D. Tex.) .......................................................................................................17
`
`CIT Group/Commercial Services, Inc. v. Romansa Apparel, Inc.,
`No. 3:02–CV–1954, 2003 WL 169208 (N.D. Tex. Jan. 21, 2003) ....................................13, 17
`
`ContentGuard Holdings, Inc. v. Amazon.com, Inc.,
`No. 2:13–CV–1112, 2015 WL 1885256 (E.D. Tex. Apr. 24, 2015), mandamus
`denied, 650 Fed. Appx. 771 (Fed. Cir. 2015) ............................................................7, 8, 24, 25
`
`Conversant Wireless Licensing S.A.R.L., v. Apple Inc.,
`No. 5:15-cv-05008-NC (N.D. Cal.) .........................................................................................15
`
`e-Watch Inc. v. Apple, Inc.,
`No. 2:13-CV-01061, 2016 WL 7338342 (E.D. Tex. Dec. 19, 2016) .............................. passim
`
`EVS Codec Techns., LLC v. LG Elecs., Inc.,
`No. 2:18-cv-00343, 2019 WL 2904747 (E.D. Tex. July 5, 2019) .........................................7, 8
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)............................................................................................6, 10
`
`Godo Kaisha IP Bridge 1 v. Intel Corp.,
`No. 2:17-CV-00676, 2018 WL 5728524 (E.D. Tex. Aug. 29, 2018) ................................20, 21
`
`Golden Bridge Technology Inc. v. Apple Inc.,
`No. 5:12-cv-04882-PSG (N.D. Cal.) .......................................................................................15
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................23
`
`Implicit, LLC v. Palo Alto Networks, Inc.,
`No. 6:17-CV-00336, 2018 WL 1942411 (E.D. Tex. Feb. 20, 2018) .......................................21
`
`Maxell Ltd. v. ZTE (USA) Inc.,
`No. 5:16-cv-00179-RWS (E.D. Tex.) ................................................................................12, 21
`
`iii
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 4 of 32 PageID #: 2703
`
`
`
`
`
`Maxell, Ltd. v. Huawei Device USA Inc.,
`No. 5:16-cv-00178-RWS (E.D. Tex.) ......................................................................................21
`
`Maxell, Ltd. v. ZTE Corp.,
`5:18-cv-0034-RWS (E.D. Tex.) ...............................................................................................21
`
`In re Morgan Stanley,
`417 Fed. Appx. 947 (Fed. Cir. 2011) .......................................................................................20
`
`Omni MedSci, Inc., v. Apple Inc.,
`No. 2:18-cv-134, Dkt. 63, 1 (E.D. Tex. Oct. 29, 2018) .....................................................11, 18
`
`Oyster Optics, LLC v. Coriant (USA) Inc.,
`No. 2:16-CV-01302, 2017 U.S. Dist. LEXIS 221068 (E.D. Tex. Dec. 8, 2017).....................11
`
`Papst Licensing GmbH & Co., KG v. Apple, Inc.,
`No. 6:15-CV-1095, 2016 U.S. Dist. LEXIS 177687 (E.D. Tex. Sept. 30, 2016) ............ passim
`
`Payne v. Grayco Cable Services, Inc.,
`No. 1:11-CV-487, 2011 WL 13076902 (E.D. Tex. Dec. 8, 2011) ....................................13, 17
`
`Repp v. Webber,
`No. 90-c-4086, 1990 WL 205899 (N.D. Ill. Dec. 6, 1990)......................................................19
`
`Salazar v. HTC Corporation,
`No. 2:16-CV-01096, 2017 WL 8943155 (E.D. Tex. Oct. 19, 2017) .......................................19
`
`Seven Networks, LLC v. Google LLC,
`2018 U.S. Dist. LEXIS 146375 (E.D. Tex. Aug. 14, 2018) ....................................................19
`
`Smartflash LLC v. Apple Inc.,
`No. 6:13-cv-00447 (E.D. Tex.) ................................................................................................17
`
`St. Lawrence Communs. LLC v. Apple Inc.,
`No. 2:16-cv-82, 2017 WL 3712153 (E.D. Tex. Feb. 6, 2017) .................................................16
`
`Stragent, LLC v. Intel Corp.,
`No. 6:11-cv-00421 (E.D. Tex.) ................................................................................................14
`
`Tessera Advanced Technologies, Inc. v. Samsung Electronics Co., Ltd.,
`No. 2:17-CV-00671, 2018 WL 8014281 (E.D. Tex. Sept. 5, 2018) ..........................................8
`
`Tire Serv. Equip. Mfg. Co. v. Gaither Tool Co.,
`No. 13–2996, 2014 WL 1671498 (D. Minn. April 23, 2014) ..................................................19
`
`In re Toa Techs., Inc.,
`543 F. App’x 1006 (Fed. Cir. 2013) ........................................................................................10
`
`iv
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 5 of 32 PageID #: 2704
`
`
`
`
`
`TracBeam, LLC v. Apple, Inc.,
`No. 6:14-CV-680, 2015 WL 5786449 (E.D. Tex. Sept. 29, 2015) ..............................10, 12, 13
`
`Uniloc USA, Inc. v. Cisco Sys., Inc.,
`No. 6:15-CV-1175, 2017 WL 959856 (E.D. Tex. Mar. 13, 2017) ............................................8
`
`Uniloc USA, Inc. v. Huawei Device USA, Inc.,
`No. 2:17-CV-00736, 2018 WL 7138384 (E.D. Tex. Sept. 6, 2018) ..................................18, 21
`
`Valencell, Inc. v. Apple Inc.,
`No. 5:16-CV-1, 2017 WL 491646 (E.D.N.C. Feb. 6, 2017)..................................................8, 9
`
`In re Verizon Bus. Network Servs.,
`635 F.3d 559 (Fed. Cir. 2011)..................................................................................................20
`
`VirnetX Inc. v. Apple, Inc.,
`No. 6:10-cv-417 ...................................................................................................................1, 17
`
`In re Vistaprint Ltd.,
`628 F.3d 1342 (Fed. Cir. 2010)................................................................................................20
`
`In re Volkswagen,
`371 F.3d 201 (5th Cir. 2004) .................................................................................................6, 7
`
`In re Volkswagen,
`545 F.3d at 315 ................................................................................................................6, 9, 25
`
`VS Technologies, LLC v. Twitter, Inc.,
`No. 2:11cv43, 2011 WL 11074291 (E.D. Va. June 28, 2011).................................................24
`
`Statutes
`
`19 U.S.C. § 1337(a)(3)(C) .............................................................................................................22
`
`28 U.S.C. § 1404 ..........................................................................................................................6, 9
`
`Other Authorities
`
`Rule 45(c)(1)(B)...............................................................................................................................5
`
`Rule 45(c)(1)(B)(ii) ..................................................................................................................14, 16
`
`v
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 6 of 32 PageID #: 2705
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`This motion is not about “convenience.” Apple’s patent litigation history shows that Apple
`
`is not concerned about its ability to subpoena reluctant witnesses for trial or the costs of having its
`
`own employees attend trial in Texas. Indeed, Apple is on record stating that the Eastern District of
`
`Texas is no less “convenient” than any other district where it litigates patent infringement cases.
`
`In recent litigation in this District, Apple’s then Chief Technical Officer was asked: “Is it
`
`inconvenient for Apple to go to the Eastern District of Texas for a patent infringement trial?” His
`
`response: “I don’t think it’s any less convenient than any other place we go.” Ex. 01 (VirnetX Inc.
`
`v. Apple, Inc., No. 6:10-cv-417, Morning Hearing Tr. at 37:19-39:16 (E.D. Tex. Nov. 2, 2012)).
`
`This motion is about seeking a home court advantage, not convenience.
`
`The “inconvenience” that Apple complains of is contrived. Its motion wholly ignores the
`
`strong connection this case has to Texas and the Eastern District. For example, Apple fails to
`
`mention that its “A”-series processors, the core processors running its iOS devices and a central
`
`component at issue in this case, are designed in its Austin, Texas facility; that its Austin office “is
`
`responsible for the company’s Western Hemisphere business operations”; and that one of its third-
`
`party vendors, Flex Ltd., manufactures the accused Mac Pro, in Texas. Apple disregards the many
`
`sources of proof located in Texas and tactfully wordsmiths its papers; for example stating that
`
`
`
`
`
`
`
`
`
`This case is strongly connected to this District. Maxell has a long history of litigating in
`
`the District. Maxell has an established subsidiary in this District that conducts research and
`
`development related to technologies at issue in this case. Maxell employees – including its
`
`corporate representative as well as other engineers and executives – regularly visit this District to
`1
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 7 of 32 PageID #: 2706
`
`conduct business. These are not contacts manufactured to sustain venue.
`
`
`
`Y
`
`
`
`
`
`. Moreover, Mr. Loudermilk was involved in extensive licensing
`
`negotiations with Apple on Maxell’s behalf. He will be a key fact witness in this case. In a recent
`
`case in this District, Apple
`
`
`
`characterize Mr. Loudermilk as Maxell’s “outside counsel” in this case, which he absolutely is
`
`not. This District is the most logical and convenient venue for Maxell and relevant third parties to
`
` Apple knows this and therefore tries to
`
`litigate this case.
`
`Apple fails to point to any unique facts in this case that demonstrate that the Northern
`
`District of California is a clearly more convenient venue. Aside from a select few Apple employees
`
`whose relevance is only vaguely addressed, Apple provides no concrete facts that establish transfer
`
`is warranted. Apple failed to meet its high burden, and its motion should be denied.
`
`II.
`
`BACKGROUND
`
`A.
`
`Maxell’s Extensive Contacts in the Eastern District
`
`Maxell has a long history in and substantial contacts with the Eastern District of Texas.
`
`Maxell has had an ongoing business relationship in the District dating back to 2014. At that time,
`
`Maxell
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 8 of 32 PageID #: 2707
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` This is no sham to establish venue, but an ongoing effort to build a
`
`business strategically located in Marshall due to an established relationship and genuine
`
`commercial opportunity. Notably,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Importantly, Maxell’s research and development through MRDA is related to the
`3
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 9 of 32 PageID #: 2708
`
`underlying technologies at issue in this case. For example,
`
`
`
`
`
`Further, MRDA is engaged in
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`research and development documents—located in the Eastern District—may be relevant to the
`
` Based on at least these activities, MRDA’s
`
`litigation.
`
`Maxell, or its U.S. subsidiary, has been involved in litigation in the Eastern District dating
`
`back to 2012 both as a plaintiff and as a defendant, including asserting some of the same patents
`
`at issue in this case in litigation against Huawei and ZTE. In particular, the ZTE matter involving
`
`U.S. Patent Nos. 6,329,794; 6,408,193; 6,748,317; and 8,339,493 was tried to verdict in this Court.
`
`As a result of these cases, this Court has substantial knowledge of many of the patents at issue in
`
`this case, has issued a claim construction opinion relevant to eight of the ten patents in suit, and
`
`has substantial knowledge of the facts that will be presented at trial in this case.
`
`B.
`
`Apple’s Extensive Contacts in Texas
`
`Apple also has substantial operations in Texas, including many sources of proof relevant
`
`to this case that are much more convenient to this District than the Northern District of California.
`
`These include “a massive 1.1 million-square-foot campus in north Austin, and another 216,000
`4
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 10 of 32 PageID #: 2709
`
`
`
`
`
`square foot campus in southwest Austin.” See Ex. 02 at 1. As of 2016, Apple has more than 6,000
`
`employees at these Austin facilities. See id.; Ex. 03 at 1. Apple’s 6,000 Austin employees include
`
`at least 500 engineers who “work on the chips that will run the next round of Apple’s products.”
`
`See Ex. 04 at 1. And Apple aims to become “the second-largest technology employer in central
`
`Texas, behind only Dell, Inc.” See Ex. 05 at 3.
`
`These employees in Austin undeniably have knowledge relevant to the issues in this case.
`
`Apple’s Senior Vice President of Hardware Technologies has said that the Austin employees “play
`
`a very critical and integral role – they are designing chips that go into all the devices we sell.” See
`
`Ex. 02 at 1. According to Apple, its “hardware engineering center in Austin may be the most
`
`important in Apple’s expansion.” Id. The processors designed in Austin include “the company’s
`
`‘A’-series processors as well as other components for the iPhone and iPad” that are accused of
`
`infringement here. Id. In reality, Texas, not California, is Apple’s “base for microchip design.” Id.
`
`Further, Apple employees in Texas “field about 8,000 customer tech-support calls a day[.]”
`
`Ex. 04 at 1. This includes Apple’s customer support known as AppleCare, which services all tech-
`
`support and warranty questions for all Apple devices “whether that be an iOS device or a Mac
`
`device.” Ex. 06 (Nash Tr.) at 101:4-12; see also id. at 59:15-60:21, 101:13-102:5. These tech-
`
`support calls include instruction from Apple to customers regarding how to operate the accused
`
`devices, including specific functionality accused in this case (see, e.g., id. at 101:21-102:2
`
`(identifying FaceTime and AirDrop functionality as issues supported)), and will be central to
`
`Maxell’s indirect infringement claims. Mot. at Ex. N (Maxell Infringement Contentions) at 8-21.
`
`In addition, Apple’s Austin facilities are responsible for “continuously updat[ing] the Maps
`
`software that is integral to iPhones and iPads” and is the functionality accused of infringing three
`
`of the patents in suit. Ex. 04 at 2. Those employees have personal knowledge of relevant facts at
`
`issue in the case and are within this Court’s subpoena power. See F.R.C.P. 45(c)(1)(B).
`5
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 11 of 32 PageID #: 2710
`
`
`
`
`
`Apple also fails to note the numerous Texas vendors that supply key parts, and even
`
`manufacture accused products, in Texas. In fact, Apple’s Mac Pro computers, accused of
`
`infringement in this case, have been assembled for many years by Flex (formerly Flextronics),
`
`located in Austin, Texas. See Ex. 07 (Christie Tr.) at 30:4-13; see also Ex. 05. Samsung
`
`Semiconductor, Apple’s supplier of chips for its iOS devices, supplies Apple from its factories in
`
`Texas where relevant evidence to this case will be located. Ex. 08 at 1-2. In fact, reports show that
`
`Apple “has 350 suppliers in Texas alone.” Ex. 04 at 4. It is not surprising then that Apple
`
`employees in Austin “manage the company’s vast network of suppliers[.]” Id. at 1. Apple’s Austin
`
`campus “is responsible for running the company’s business operations for the entire Western
`
`Hemisphere.” See Ex. 05 at 2.
`
`Relevant damages evidence in this case will also come from Apple’s Texas facilities where
`
`its employees manage logistics “figure[ing] out how to move around millions of iPhones a week
`
`to ensure they get into the hands of customers[.]” Ex. 04 at 1; see also Ex. 07 at 133:11-15.
`
`Likewise, “revenue reporting, collections, accounts payable, treasury… payroll, compensation
`
`services, accounting, [and] royalties” for “[a]ll of Apple” are managed in Apple’s Austin facilities.
`
`Ex. 07 at 133:20-134:11. These are critical sources of proof in this case located within driving
`
`distance of the Eastern District of Texas.
`
`III.
`
`LEGAL STANDARD
`
`Plaintiff’s choice of venue must be given “appropriate deference.” In re Volkswagen, 545
`
`F.3d at 315. For the court to transfer this case under 28 U.S.C. § 1404, Apple must demonstrate
`
`that the Northern District of California is “clearly more convenient” than the Eastern District. In
`
`re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009) (citing In re Volkswagen of Am. Inc.,
`
`545 F.3d 304, 315 (5th Cir. 2008)). This Court is very familiar with the public and private interest
`
`factors relevant to deciding this motion, as set forth in In re Volkswagen, 371 F.3d 201, 203 (5th
`6
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 12 of 32 PageID #: 2711
`
`
`
`
`
`Cir. 2004). Maxell will not repeat those here for the sake of brevity but addresses each in turn
`
`below. Maxell notes, however, that “when the transferee venue is not clearly more convenient than
`
`the venue chosen by the plaintiff, the plaintiff’s choice should be respected.” Id.
`
`IV.
`
`APPLE DOES NOT OFFER AN APPLICABLE FORUM SELECTION CLAUSE
`
`Instead of acknowledging the deep ties this case has to Texas and the District, Apple
`
`ignores the many sources of proof here and focuses instead on an irrelevant agreement. Regarding
`
`that agreement, Apple is correct that the existence of an applicable forum selection clause that
`
`governs the dispute could remove the weight given to a plaintiff’s choice of forum and reduce
`
`venue transfer considerations to public-interest factors only. See Mot. at 7 (citing EVS Codec
`
`Techns., LLC v. LG Elecs., Inc., No. 2:18-cv-00343, 2019 WL 2904747, *2 (E.D. Tex. July 5,
`
`2019)). However, “[t]he court first determines if the forum selection clause governs the dispute.”
`
`EVS Codec, 2019 WL 2904747 at *2; ContentGuard Holdings, Inc. v. Amazon.com, Inc., No.
`
`2:13–CV–1112, 2015 WL 1885256, *4 (E.D. Tex. Apr. 24, 2015), mandamus denied, 650 Fed.
`
`Appx. 771 (Fed. Cir. 2015) (the “analysis also presupposes a valid contract and a dispute that
`
`unquestionably falls within the scope of that contract”).
`
`Here, Apple does not present a forum selection clause that governs the dispute.
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 13 of 32 PageID #: 2712
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The cases that Apple cites concern actual or potential patent license agreements between
`
`the parties that had a direct bearing on those disputes. See Tessera Advanced Technologies, Inc. v.
`
`Samsung Electronics Co., Ltd., No. 2:17-CV-00671, 2018 WL 8014281, *1 (E.D. Tex. Sept. 5,
`
`2018) (“the PCA was intended to allow the parties to have a ‘full and frank discussion’ regarding,
`
`among other things, patents and technology licensing”); Uniloc USA, Inc. v. Cisco Sys., Inc., No.
`
`6:15-CV-1175, 2017 WL 959856, at *1 (E.D. Tex. Mar. 13, 2017) (agreement was “a settlement
`
`and license agreement… to resolve litigation concerning” patent infringement); EVS Codec, 2019
`8
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 14 of 32 PageID #: 2713
`
`WL 2904747 at *1 (agreement was a “Patent License Agreement”). Here,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Accordingly, this venue transfer analysis must follow a standard § 1404 framework that
`
`both affords weight to Maxell’s choice of forum and considers all of the Volkswagen factors.
`
`V.
`
`ARGUMENT
`
`Apple has not met its burden to demonstrate that the Northern District of California is
`
`“clearly more convenient” to warrant transfer. In re Volkswagen, 545 F.3d at 315. Nor could it
`
`when Apple’s own witness has indicated that the Eastern District of Texas is just as convenient as
`
`any other forum for patent infringement.
`
`A.
`
`Ease of Access to Sources of Proof Weighs Against Transfer.
`
`Relevant sources of proof show that the first Volkswagen factor weighs against transfer.
`
`1.
`
`Apple’s Alleged Evidence
`
`Apple alleges, generally, that
`
`at 9. But while citing categories of evidence generally (“
`
`
`
` Mot.
`
`
`
`s”), Apple “fail[s] to provide
`
`evidence of categories and volumes of physical documents, or even better, examples of physical
`
`evidence that might have a real bearing on allegations of infringement.” Affinity Labs of Tex. v.
`
`Samsung Elecs. Co., Ltd., 968 F. Supp. 2d 852, 857 (E.D. Tex. Sept. 17, 2013); Mot. at 10. Thus,
`9
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 15 of 32 PageID #: 2714
`
`
`
`
`
`“there is no basis for the court to assign great weight” to Apple’s asserted evidence. Id.
`
`Moreover, Apple omits the fact that
`
`
`
`. Indeed, this Court has repeatedly determined that Apple’s arguments about evidence
`
`regarding its “iPad, iPod and iPhone products” are overstated in view of its facilities in Austin,
`
`Texas. See Papst Licensing GmbH & Co., KG v. Apple, Inc., No. 6:15-CV-1095, 2016 U.S. Dist.
`
`LEXIS 177687, *10-11 (E.D. Tex. Sept. 30, 2016) (“Apple does not genuinely dispute Papst’s
`
`mirror argument that those documents can be accessed from any of Apple’s facilities, including its
`
`Austin location… this factor weighs only slightly in favor of transfer”); TracBeam, LLC v. Apple,
`
`Inc., No. 6:14-CV-680, 2015 WL 5786449, *3 (E.D. Tex. Sept. 29, 2015) (same); e-Watch Inc. v.
`
`Apple, Inc., No. 2:13-CV-01061, 2016 WL 7338342, *2 (E.D. Tex. Dec. 19, 2016) (“Apple
`
`discounts evidence suggesting that documents related to the accused iPhones can be accessed from
`
`Apple’s Austin, Texas facility”). Thus, at most, the analysis should only take into account the
`
`approximately 350 miles between Austin, Texas and Texarkana, Texas that such documents would
`
`hypothetically need to move.
`
`Maxell acknowledges the Federal Circuit guidance that the modern realities of electronic
`
`discovery should not be considered for this factor, and that the analysis is limited to the physical
`
`location of the relevant documents. See In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir.
`
`2009); In re Toa Techs., Inc., 543 F. App’x 1006, 1008-09 (Fed. Cir. 2013). However, Apple does
`
`not even address the physical location of its documents, instead noting that
`
`
`
`” Mot. at 6. A substantial portion of
`
`Apple’s relevant business is conducted in Austin, Texas, including chip design, logistics,
`
`manufacturing, supply chain, and accounting (“for all of Apple”), see Section II.B supra, meaning
`
`many of Apple’s documents originate and are physically located in Austin, Texas. While
`
`10
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 16 of 32 PageID #: 2715
`
`
`
`
`
`
`
`2.
`
`Third-Party Evidence
`
`Apple alleges that “[r]elevant third-party evidence is also located in the NDCA” but fails
`
`to specifically identify any particular third-party documents. Mot. at 10. The allegation is of
`
`minimal importance because “the alleged technical documents of [] third party suppliers is not
`
`accorded nearly as much weight” as the documents of the parties. Oyster Optics, LLC v. Coriant
`
`(USA) Inc., No. 2:16-CV-01302, 2017 U.S. Dist. LEXIS 221068, *11-12 (E.D. Tex. Dec. 8, 2017).
`
`Moreover, Apple conveniently ignores the plethora of companies in Texas that supply
`
`Apple with relevant parts and services incorporated in the accused products. These include
`
`Samsung Semiconductor, which supplies chips for the accused products from its Austin factory,
`
`and Flex, which manufactures the accused Mac computers in Texas. See Section II.B supra. Apple
`
`has some 350 suppliers of iPhone and iPad components in Texas. A summary of relevant third-
`
`party suppliers (including relevant components and patents) that will have relevant documents and
`
`are located in or near the Eastern District of Texas is incorporated herein at Appendix 1.
`
`Further,
`
`
`
`
`
`
`
`
`
`Likewise, Mr. Loudermilk was involved in Maxell’s licensing negotiations with third-
`
`parties, including Apple, and his documents are in Marshall, Texas. Loudermilk Decl. at ¶¶ 4-6.
`
`His testimony and his documents are relevant to the damages and willfulness phase of this
`
`
`
`litigation—
`
`11
`
`
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 17 of 32 PageID #: 2716
`
`
`
`
`
`
`
`
`
`Given the Texas location of these non-parties, and the vagueness with which Apple refers
`
`to such potential evidence, Apple has failed to show that this factor favors transfer.
`
`3.
`
`Maxell’s Evidence
`
`Maxell’s own documents are currently already housed in Texarkana at the offices of Patton,
`
`Tidwell & Culbertson, LLP. See Culbertson Decl. at ¶ 4. These documents were moved there “as
`
`a result of [Maxell’s] prior case[]”1 in 2018, and not merely “in anticipation of this litigation in an
`
`attempt to manufacture venue.” TracBeam, LLC, 2015 WL 5786449 at *3. This evidence is related
`
`to ownership of the patents, damages, Maxell licensing practices, prosecution history,
`
`inventorship, and so on. The physical location of these documents should also be weighed,
`
`especially since Maxell has no documents in the Northern District of California. In addition,
`
`MRDA is located in this District and is conducting research and development
`
`
`
`
`
`
`
`
`
`For this factor, the physical location of Apple’s documents exists in both Austin, Texas
`
`and Cupertino, California, whereas Maxell’s physical documents exist in Texarkana, Texas but
`
`nowhere in California. A transfer to the Northern District of California would therefore impose a
`
`greater burden on Maxell than maintaining venue in this District would impose on Apple.
`
`In circumstances where plaintiffs had far weaker connections to the Eastern District of
`
`1 Maxell Ltd. v. ZTE (USA) Inc., No. 5:16-cv-00179-RWS (E.D. Tex.).
`12
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 18 of 32 PageID #: 2717
`
`
`
`
`
`Texas, this Court has determined that this factor weighed “only slightly” in favor of transfer.
`
`TracBeam, LLC, 2015 WL 5786449 at *3; Papst Licensing, 2016 U.S. Dist. LEXIS 177687 at
`
`*10-11. In instances where the plaintiff’s own documents exist within the District, this factor has
`
`been found to be neutral. e-Watch Inc., 2016 WL 7338342 at *2. But in the present circumstances,
`
`where (1) Maxell’s documents are located in the District, (2) Apple’s documents are located in
`
`Austin, Texas, (3) Apple has not pointed to any specific sources of evidence nor evidenced any
`
`great care for the location of its sources of proof, (4) Maxell has no documentary proof in
`
`California, and (5) important third-party evidence is located in this District, this factor weighs
`
`against transfer.
`
`B.
`
`Compulsory Process to Secure the Attendance of Witnesses is Neutral.
`
`Apple has failed to point out beyond the broadest generalities any non-party witnesses from
`
`whom Apple might seek to compel trial testimony. This lends little weight to Apple’s arguments.
`
`“[T]he party requesting transfer must present the court with more than a general allegation that
`
`certain key witnesses are necessary; the movant must specifically identify key witnesses and
`
`outline the substance of their testimony.” CIT Group/Commercial Services, Inc. v. Romansa
`
`Apparel, Inc., No. 3:02–CV–1954, 2003 WL 169208, *5 (N.D. Tex. Jan. 21, 2003); Payne v.
`
`Grayco Cable Services, Inc., No. 1:11-CV-487, 2011 WL 13076902, *8 (E.D. Tex. Dec. 8, 2011).
`
`Apple has not specifically asserted that either
`
` testimony would be
`
`necessary at trial, let alone identify specific relevant witnesses or outline the substance that any
`
`such testimony would provide. Instead, Apple states that
`
`
`
`
`
`
`
` Mot. at 3.
`
`Apple leaves the identity of those engineers, the substance of their testimony, and the necessity of
`13
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 19 of 32 PageID #: 2718
`
`that testimony at trial unaddressed.
`
`At any rate,
`
`
`
`
`
`
`
`
`
` “regularly transact[] business in person”
`
`in Texas and because attendance at trial would not be a “substantial expense” outside of the
`
`resources of either corporation, compulsory service is available within the current venue. Rule
`
`45(c)(1)(B)(ii); see also Papst Licensing, 2016 U.S. Dist. LEXIS 177687 at *13 (“the availability
`
`of compulsory process is not measured as against a specific employee of a third-party corporation,
`
`but rather the corporation itself”);
`
`Furthermore, the necessity of compelled trial testimony from non-parties
`
`
`
`
`
`
`
`
`
` versus videotaped deposition testimony, is unclear. “The Fifth Circuit views a videotape
`
`deposition as an acceptable substitute for live testimony because a videotape ‘allows jurors to
`
`gauge the witness’s attitude reflected by his motions, facial expressions, demeanor and voice
`
`inflections.’” e-Watch Inc., 2016 WL 7338342 at *3 (citing Battle ex rel. Battle v. Mem’l Hosp. at
`
`Gulfport, 228 F.3d 544, 554 (5th Cir. 2000)). Indeed, the suitability of deposition testimony by
`
`third-party component manufacturers is especially high because, rather than providing nuanced
`
`trial testimony requiring an analysis of “voice inflections,” “[t]o the extent third-party component
`
`manufacturers are asked to provide witnesses, the likeliest case is that those witnesses will testify
`
`about technical subject matter.” Papst Licensing, 2016 U.S. Dist. LEXIS 177687 at *13. And as
`
`this Court has pointed out, the presiding court has “the power to issue nationwide deposition
`
`subpoenas and compel testimony so long as the… deposition is to take place within 100 miles of
`
`the witness’s residence or regular place of business… without the involvement of a second district
`14
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 66 Filed 08/27/19 Page 20 of 32 PageID #: 2719
`
`
`
`
`
`court.” Id. (citing Fed. R. Civ. P. 45(c)(1)(A)).
`
`Apple is aware of the suitability of deposition testimony at trial, even when compulsory
`
`process is available. In both Conversant Wireless Licensing S.A.R.L., v. Apple Inc., No. 5:15-cv-
`
`05008-NC (N.D. Cal.) (trial began on Dec. 5, 2016) and Golden Bridge Technology Inc. v. Apple
`
`Inc., No. 5:12-cv-04882-PSG (N.D. Cal.) (trial began on June 2, 2014), litigated in the Northern
`
`District of California, Apple listed
`
` witnesses only by deposition testimony in
`
`their pre-trial submissions. See Ex. 19 (Conversant Wireless); Ex. 20 (Golden Bridge).2 Thus, even
`
`in California, Apple finds videotaped deposition testimony
`
` acceptable.
`
`Accordingly, the relevance of third-party component suppliers to this factor should be suitably
`
`discounted.
`
`Interestingly, in Conversant Wireless Apple successfully moved to transfer the case from
`
`the Eastern District of Texas t