Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 1 of 8
`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 1 Of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`APR 0
`3 20:9
`CLERK, U
`WES
`-S- 018m
`BY TERN D'STRIci-c
`135pr
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`s
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`K
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`CAUSE NO. A—l 8-CV-992-LY
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`§
`§
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`§ §
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`§
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`§
`§
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`§
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`UNILOC USA, INC. AND
`UNILOC LUXEMBOURG, S.A.,
`PLAINTIFFS,
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`v.
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`APPLE INC,
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`DEFENDANT.
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`ORDER TRANSFERRING VENUE
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`TO NORTHERN DISTRICT OF CALIFORNIA
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`Before the court in the above-styled and numbered patent-infringement action are Defendant
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`Apple Inc.’s Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a) filed December 21, 2018
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`(Clerk’ 3 Document No. 23), and Apple’ S Reply In Support ofIts Combined Motions to Transfer filed
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`March 1, 2019 (Clerk’s Document NO. 30). Apple requests that the court transfer this action to the
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`United States District Court for the Northern District Of California, arguing that in the interest of
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`justice California is a more convenient forum for the parties and witnesses involved in the case.
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`Having considered the motion, response, reply, and applicable law, the court will grant the motion
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`and transfer the case to the Northern District of California.
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`Background
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`Uniloc Luxembourg, S.A. is a Luxembourg entity with its principal place of business in
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`Luxembourg. Uniloc U.S.A., Inc., maintains its principal business Office in Newport Beach,
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`California, has headquarters in Irvine, California, and has maintained Offices in Plano, Texas, since
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`2007, and in Tyler, Texas, since 2009. Apple is a California corporation, with its principal place Of
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`business in Cupertino, California, which is within the Northern District Of California. Apple also
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`maintains places of business in Austin, Texas—a 1.1 million square-foot campus and a separate
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`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 2 of 8
`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 2 of 8
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`216,000 square-foot campus. Apple employs more that 6,000 employees at these Austin facilities.
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`Uniloc alleges that Apple infringes Uniloc’s rights to United States Patent No. 8,539,552,
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`titled “System and Method for Network Based Policy Enforcement of Intelligent Client Features”
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`issued September 17, 2013. Uniloc accuses certain ofApple’ 3 iPhones, iPads, iPods, and MacBooks.
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`Apple argues that the United States District Court for the Northern District of California is clearly
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`the more convenient venue to litigate and try this case primarily because the disputes here lack any
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`connection to Apple’s Austin facilities, and all but one relevant witness is located within the
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`Northern District of California.
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`The law
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`Transferring venue of an action is appropriate “[flor the convenience of the parties and
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`witnesses, in the interest ofjustice” to any district “where [the lawsuit] might have been brought.”
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`28 U.S.C. § 1404(a) (“Section 1404(a)”). A patent-infringement action “may be brought in the
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`judicial district where the defendant resides, or where the defendant has committed acts of
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`infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b) (“Section
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`1400(b)”). The threshold question for transfer under Section 1404(a) is whether this case “might
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`have been brought” in the venue sought by Apple—Northern District of California. See In re
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`Genetech, 566 F.3d 1338, 1345 (Fed. Cir. 2009) (applying In re Volkswagen of Am., Inc.
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`(“Volkswagen 11”), 545 F.3d 304, 312 (5th Cir. 2008) (en banc)).1
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`' Federal Circuit law determines whether venue is proper under Section 1400(b). See In re
`ZTE (USA) Inc., 890 F.3d 1008, 1012 (Fed. Cir. 2018). Fifth Circuit law determines whether a
`transfer is proper under Section 1404(a). See Winner Int ’1 Royalty Corp. v. Wang, 202 F .3d 1340,
`1352 (Fed. Cir. 2000) (Section 1404(a) is “governed by the law of the regional circuit in which it
`sits”) The Federal Circuit’s application ofFifth Circuit law to patent-specific transfers is persuasive
`when applied to the facts of this case.
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`

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`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 3 of 8
`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 3 of 8
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`Under the first clause of Section 1400(b), venue is proper in the district where the defendant
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`“resides,” which the Supreme Court interpreted to mean “only [in] the State of incorporation.” See
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`TC Heartland LLC v. Kraft Foods Grp. Brands LLC, _ U.S. _, 137 S.Ct. 1514, 1521 (2017);
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`In re BigCommerce, Inc., 890 F.3d 978, 982-83 (Fed. Cir. 2018). Venue may also be proper under
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`the second clause of Section 1400(b) where the defendant has committed acts of infringement and
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`has a regular and established place of business. See In re Cray Inc. , 871 F.3d 1355, 1360 (Fed. Cir.
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`2017).
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`Once that threshold is met, courts analyze both private and public interest factors relating to
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`the convenience of parties and witnesses, as well as the interests of the different venues in hearing
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`the case. See Humble Oil & Ref Co. v. Bell Marine Serv., Inc, 321 F.2d 53, 56 (5th Cir. 1963); In
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`re Nintendo Co., Ltd, 589 F.3d 1194, 1197 (Fed. Cir. 2009). The private—interest factors are:
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`(1) the relative ease of access to sources of proof; (2) the availability
`of compulsory process to secure the attendance of witnesses; (3) the
`cost of attendance for willing witnesses; and (4) all other practical
`problems that make a trial of a case easy, expeditious, and
`inexpenswe.
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`In re Volkswagen AG (“Volkswagen I”), 371 F.3d 201, 203 (5th Cir. 2004). The public-interest
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`factors are:
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`(l) the administrative difficulties flowing from court congestion; (2)
`the local interest in having localized interests decided at home; (3) the
`familiarity ofthe forum with the law that will govern the case; and (4)
`the avoidance of unnecessary problems of conflict of laws of the
`application of foreign law.
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`Id. These factors are reviewed based on “the situation which existed when suit was instituted.”
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`Hoflinan v. Blaski, 363 US. 335, 343 (1960). Though the private and public factors apply to most
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`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 4 of 8
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`transfer cases, “they are not necessarily exhaustive or exclusive,” and no single factor is dispositive.
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`Volkswagen 11, 545 F.3d at 314-15.
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`In the Fifth Circuit, plaintiff 3 choice ofvenue is not considered a separate factor in the venue
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`determination.
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`Id. However, “[t]he Court must [] give some weight to the plaintiffs’ choice of
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`forum.” Atlantic Marine Const. Co. v. United States Dist. Ct. for W. Dist. of Tex., 134 S.Ct. 568,
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`581 n.6 (2013) (citing Norwood v. Kirkpatrick, 349 U.S. 29, 32 (1955)).
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`Analysis
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`Where the suit could have been brought
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`The parties do not dispute that Uniloc could have commenced this action in the Northern
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`District of California. The court finds that the threshold requirement for transferring this action for
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`the convenience of the parties and witnesses is satisfied.
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`Private- and public-interest factors
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`The court reviews the parties’ arguments with regard to each applicable factor.
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`Private-interest [actor—ease at access to groot
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`“In patent infringement cases, the bulk of the relevant evidence usually comes from the
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`accused infringer.” In re Genentech, Inc, 566 F.3d at 1345. All of the documents relating to the
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`design and development ofthe accused technology were generated around Cupertino, California and
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`are stored there. Additionally, the primary research, design, development, facilities, and engineers
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`for the alleged infringing products are located near Cupertino. Also, all ofApple ’ 5 relevant financial
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`and marketing documents are located near Cupertino. Apple argues the overwhelming majority of
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`the sources of proof regarding the alleged infringing products and technology are in the Northern
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`District of California. Also, Apple has identified third parties who are located in the Northern
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`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 5 of 8
`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 5 of 8
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`District of California. Apple argues that these third parties likely maintain relevant documents in
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`California.
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`Uniloc responds that in patent litigation today most of the relevant information in this case
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`is likely maintained in electronic form, which would be easily accessible from Apple’s substantial
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`Austin facilities. Therefore, Uniloc argues, the location of the actual relevant paper documents is
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`of little consequence to the convenience of the parties.
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`Having considered the parties’ arguments, whether the relevant evidence is in electronic form
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`or not, access to the relevant proof tends to favor venue of this action in the Northern District of
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`California.
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`Private-interest actor—availabili
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`0 com ulso
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`racess
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`Transfer is favored if a transferee forum has absolute subpoena power over a greater number
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`of third-party witnesses. In re Hofinan-La Roche, Inc., 587 F.3d 1333, 1337-38 (Fed. Cir. 2009);
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`Genetech, 566 F.3d at 1345. A court may subpoena a witness to attend trial only: (1) “within 100
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`miles of Where the person resides, is employed, or regularly transacts business in person;” or (2)
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`“within the state where the person resides, is employed, or regularly transacts business in person.”
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`Fed. R. Civ. P. 45(c)(1).
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`Apple argues that the Northern District of California would have absolute subpoena power
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`over several relevant third-party witnesses as well as some Uniloc witnesses who reside in
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`California. Apple is unaware of any third-party witnesses within the Western District of Texas.
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`The court agrees. There is no showing that any relevant third-party witness is within the
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`applicable compulsory-process range of this court. The court finds that this factor weighs in favor
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`of transferring venue to the Northern District of California.
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`

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`Case 1:18—cv-00992-LY Document 31 Filed 04/08/19 Page 6 of 8
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`Private-interest tactor—attendance at willing witnesses
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`Apple provides proof that all of its relevant witnesses identified to date—including 18
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`witnesses identified by name—are in the Northern District of California, with none in this district.
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`“The convenience ofthe witnesses is probably the single most important factor in [a venue] transfer
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`analysis.” In re Genentech, 566 F.3d at 1342.
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`In considering this factor, the court also includes
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`Apple’s employee—witnesses, all ofwhom are in the Northern District ofCalifornia. See Volkswagen
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`1, 371 F.3d at 204. Uniloc makes no mention of its own witnesses.
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`The court finds that this factor weighs in favor oftransferring venue to the Northern District
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`of California.
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`Private-interest [actor—other practical considerations
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`Having reviewed the parties’ arguments about other practical considerations—whetherjudicial
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`economy favors one side and the fact that other Uniloc patent-infi-ingement cases against Apple have
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`been transferred from other Texas federal courts to the Northern District of Califomia—the court finds
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`that these matters are neutral and favor neither side in the venue analysis.
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`Public-interest actors
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`Apple argues that the applicable public-interest factors favor transfer to the Northern District
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`of California. Apple argues that the Northern District of California has a strong local interest in this
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`matter as it is the location where the alleged infringing products and software were designed and
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`developed. Additionally, all of Apple’s employees with relevant information about these products
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`and software are based in that district. Apple also argues that Uniloc has shown no connection to
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`the Western District of Texas. Apple argues that the court-congestion factor favors a transfer to
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`Case 1:18—cv-00992-LY Document 31 Filed 04/08/19 Page 7 of 8
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`California because there, the average time to trial for patent cases is 836 days, versus in the Western
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`District, the average time to trial is 946 days.
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`Uniloc challenges the statistics Apple relies upon for its court-congestion argument,
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`contending that Apple’s data is inaccurate. Additionally, Uniloc responds that given Apple’s
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`significant presence in Austin, the local-interest public factor weighs in favor of maintaining the
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`action in this court.
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`The proof shows that Apple has a substantial presence in this district and in Northern
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`California, so therefore, both districts have local interest in the case. As for court congestion,
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`whether Apple’s statistics are correct or not, this court is unpersuaded that this factor favors one side
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`or the other. The court finds that the relevant public-interest factors are neutral.
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`Uniloc’s venue choice
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`Although the court does not review Uniloc’s choice to file this action in the Western District
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`of Texas as a separate factor in the venue analysis, the choice is given some weight. See Atlantic
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`Marine, 134 S.Ct. at 581 n.6. “Plaintiffs are ordinarily allowed to select whatever forum they
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`consider most advantageous (consistent withjurisdictional and venue limitations), [and the Supreme
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`Court has] termed their selection ‘the plaintiff’s venue privilege.’” Atlantic Marine, 134 S.Ct. at
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`581.
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`In the Fifth Circuit, the venue privilege contributes to the defendant’s elevated burden of
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`proving that the transferee venue is “clearly more convenien ” than the transferor venue.
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`Volkswagen 11, 545 F.3d at 315; see also Nintendo, 589 F.3d at 1200.
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`The court has considered Uniloc’s forum choice to proceed in this court. The court
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`concludes, however, that Apple has met its burden to show that the Northern District of California
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`is clearly more convenient for the parties and witnesses.
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`Case 1:18-cv-00992-LY Document 31 Filed 04/08/19 Page 8 of 8
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`Conclusion
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`The court has considered all of the relevant private- and public-interest factors as well as
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`Uniloc’s preference to maintain the action in this court. A significant number ofparty and non-party
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`witnesses are in California and Apple has shown that the convenience of the witnesses weighs
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`strongly in favor oftransfer. Additionally, most of the relevant witnesses determined as of this stage
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`in the litigation are within the subpoena power of the Northen District of California and are beyond
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`the subpoena range of Western District of Texas. Having considered the relevant factors, the court
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`is of the opinion that Apple has satisfied its burden and shown good cause why the Northern District
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`of California is clearly a more convenient forum for the parties and witnesses and that this action
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`should be transferred to California.
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`IT IS ORDERED that Defendant Apple Inc’s Motion to Transfer Venue Pursuant to 28
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`U.S.C. § 1404(a) filed December 21, 2018 (Clerk’s Document No. 23) is GRANTED and this cause
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`is TRANSFERRED to the United States District Court for the Northern District of California.
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`IT IS FINALLY ORDERED that the Clerk of Court forward the file to the United States
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`District Court for the Northern District of California.
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`SIGNED this& day ofApril, 2019.
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`UN TED STAT
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`DISTRICT JUDGE
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