Case 6:19-cv-00428-ADA Document 22 Filed 11/01/19 Page 1 of 22
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CASE NO. 6:19-cv-428
`
`STC.UNM,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`APPLE INC.’S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
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`Case 6:19-cv-00428-ADA Document 22 Filed 11/01/19 Page 2 of 22
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
`
`III.
`IV.
`
`V.
`
`INTRODUCTION ............................................................................................................. 1
`FACTUAL BACKGROUND ............................................................................................ 2
`A.
`STC.UNM .............................................................................................................. 3
`B.
`Apple ...................................................................................................................... 4
`C.
`Third-Party Broadcom ........................................................................................... 5
`LEGAL STANDARD ........................................................................................................ 6
`THE NDCAL IS CLEARLY THE MORE CONVENIENT VENUE .............................. 8
`A.
`The Private Interest Factors Favor Transfer .......................................................... 8
`1.
`Relative Ease of Access to Sources of Proof ............................................. 8
`2.
`Availability of Compulsory Process ........................................................ 10
`3.
`Attendance of Willing Witnesses............................................................. 11
`4.
`All Other Practical Problems ................................................................... 13
`The Public Interest Factors Favor Transfer ......................................................... 13
`1.
`Court Congestion Is, At Worst, Neutral................................................... 14
`2.
`Local Interests Strongly Favor Transfer .................................................. 14
`3.
`Familiarity With The Governing Law And Conflicts Of Law Are
`Neutral...................................................................................................... 15
`CONCLUSION ................................................................................................................ 15
`
`B.
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`Case 6:19-cv-00428-ADA Document 22 Filed 11/01/19 Page 3 of 22
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)................................................................................................11
`
`ADS Sec. L.P. v. Advanced Detection Sec. Servs., Inc.,
`No. A-09-CA-LY, 2010 WL 1170976 (W.D. Tex. Mar. 23, 2010) ........................................11
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) ...................................................................................................10
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ......................................................................................7, 12
`
`Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P.,
`No. 6:15-cv-00091, 2016 WL 6909479 (W.D. Tex. Jan. 28, 2016) ....................................7, 11
`
`Bd. of Regents of the Univ. of Texas Sys., v. Bos. Sci. Corp.,
`936 F.3d 1365 (Fed. Cir. 2019)..................................................................................................9
`
`Collaborative Agreements, LLC. v. Adobe Sys. Inc.,
`No. 1-14-CV-356, 2015 WL10818739 (W.D. Tex. Aug. 21, 2015) .....................................8, 9
`
`DataQuill, Ltd. v. Apple Inc.,
`No. 13-ca-706, 2014 WL 2722201 (W.D. Tex. June 13, 2014) ..........................................8, 14
`
`Datascape, Ltd. v. Dell Techs., Inc.,
`No. 6:19-cv-00129-ADA, 2019 WL 4254069 (W.D. Tex. June 7, 2019) .........................13, 14
`
`Fintiv, Inc. v. Apple Inc.,
`No. 6:18-cv-00372, 2019 WL 4743678 (W.D. Tex. Sept. 13, 2019) ......................................11
`
`Gemalto S.A. v. CPI Card Grp. Inc.,
`No. 15-CA-0910, 2015 WL 10818740 (W.D. Tex. Dec. 16, 2015) ........................................10
`
`In re Genentech, Inc.
`566 F.3d 1338 (Fed. Cir. 2009)........................................................................................ passim
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..........................................................................................10, 14
`
`In re HP Inc.,
`No. 2018-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) .............................................7, 13
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`Case 6:19-cv-00428-ADA Document 22 Filed 11/01/19 Page 4 of 22
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`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)............................................................................................7, 11
`
`Peak Completion Techs., Inc. v. I-TEC Well Solutions, LLC,
`No. A-13-cv-086-LY, 2013 WL 12121002 (W.D. Tex. June 26, 2013) .................................13
`
`Polaris Innovations Ltd. v. Dell, Inc.,
`No. 16-CV-451, 2016 WL 7077069 (W.D. Tex. Dec. 5, 2016) ......................................8, 9, 13
`
`STC.UNM v. TP-Link Techs. Co.,
`No. 6:19cv262 (W.D. Tex. filed Apr. 12, 2019) ........................................................................2
`
`TiVo Inc. v. Verizon Commc’ns, Inc.,
`No. 2:09-cv-257, 2010 WL 11468564 (E.D. Tex. Sept. 17, 2010)..........................................11
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014)..................................................................................................7
`
`In re TS Tech USA Corp.,
`551 F.3d. 1315 (Fed. Cir. 2008).....................................................................................7, 12, 15
`
`Uniloc USA, Inc. v. Apple Inc.,
`No. A-18-cv-990-LY, 2019 WL 2066121 (W.D. Tex. April 8, 2019) ......................1, 9, 11, 13
`
`Uniloc USA, Inc. v. Apple,
`No. 2:17-cv-00258-JRG, Dkt. 104 (E.D. Tex. Dec. 22, 2017) ..................................................1
`
`Uniloc USA Inc. v. Box, Inc.,
`No. 1:17-CV-754-LY, 2018 WL 2729202 (W.D. Tex. June 6, 2018).................................8, 14
`
`Via Vadis, LLC v. Netgear, Inc.,
`No. 14-cv-809, 2015 WL 10818675 (W.D. Tex. July 30, 2015) .............................................13
`
`VLSI Tech., LLC v. Intel Corp.,
`Case No. 6:19-cv-00254-ADA, 2019 WL 4254065 (W.D. Tex. Aug. 6, 2019) ................10, 11
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ...............................................................................................7, 12
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ........................................................................................... passim
`
`Wet Sounds, Inc. v. Audio Formz, LLC,
`No. 17-cv-141, 2017 WL 4547916 (W.D. Tex. Oct. 11, 2017), report and
`recommendation adopted, No. 1:17-cv-141, 2018 WL 1219248 (W.D. Tex.
`Jan. 22, 2018) ...........................................................................................................8, 10, 13, 14
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`Case 6:19-cv-00428-ADA Document 22 Filed 11/01/19 Page 5 of 22
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`TABLE OF AUTHORITIES
`(continued)
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`Page(s)
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`XY, LLC v. Trans Ova Genetics, LC,
`No. 16-ca-00447, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) ..............................................8
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c)(1)(A), (B) .....................................................................................................10
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`Apple moves to transfer this case to the Northern District of California (“NDCAL”)
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`because it is the clearly more convenient venue for this dispute. In the alternative, if the Court
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`does not conclude that the NDCAL is clearly more convenient, Apple seeks transfer to Austin,
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`which is clearly more convenient than Waco.
`
`I.
`
`INTRODUCTION
`
`Under a straightforward application of the Volkswagen factors, this case, between a New
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`Mexico corporation and a California corporation, with no connection to Waco, Texas, should be
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`transferred to the NDCAL because it is the clearly more convenient venue. Indeed, this case has
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`numerous, direct connections to the NDCAL but none to Waco, or even to Texas as a whole.
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`Most notably, on the most critical factor in the transfer analysis—the location of relevant
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`witnesses, there are numerous such witnesses in the NDCAL and none in Waco. In particular,
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`the accused WiFi technology is provided by semiconductor chips designed and supplied by third-
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`party Broadcom, whose likely witnesses are all based in California. The availability of
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`compulsory process over these likely third-party witnesses in the NDCAL is a significant fact
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`weighing in favor of transfer.
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`Indeed, this case presents an even more compelling case for transfer to the NDCAL than
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`other recent Texas cases against Apple that this Court and others have transferred to the
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`NDCAL. See Ex. 1, Uniloc USA, Inc. v. Apple, No. 2:17-cv-00258-JRG, Dkt. 104 (E.D. Tex.
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`Dec. 22, 2017);1 Uniloc USA, Inc. v. Apple Inc., No. A-18-cv-990-LY, 2019 WL 2066121 (W.D.
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`Tex. April 8, 2019). Here, all of the key facts favor transfer and none favors keeping this case in
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`Waco. For example:
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`1 Unless stated otherwise, all exhibits cited in this brief are attached to the Declaration of John
`M. Guaragna In Supp. of Apple’s Motion to Transfer.
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` The Plaintiff, STC.UNM, a New Mexico corporation affiliated with the
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`University of New Mexico, has no known connection to Waco—or even to Texas,
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`for that matter.
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` Defendant Apple has its headquarters in the transferee forum.
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` All anticipated sources of proof are in the transferee forum, and none are in Waco.
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` There are numerous, key party witnesses in the transferee forum.
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` The key third-party supplier of the accused technology, Broadcom, is also based
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`in the transferee forum.
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` There is a keen local interest in the transferee forum because Apple was founded
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`there and is based there, as is the key, third-party supplier, Broadcom.
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` This case is in its very early stages and there are no related, pending cases in
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`Waco where this Court has gained some special knowledge.2
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`Under these facts, this case should be transferred to the NDCAL because it is the clearly
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`more convenient venue.
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`II.
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`FACTUAL BACKGROUND
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`STC.UNM asserts three patents it acquired in August 2018 from Sino Matrix
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`Technology, Inc., a corporation in Hsinchu City, Taiwan, which acquired the patents in March
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`2018 from the original assignee, Industrial Technology Research Institute (“ITRI”) of Hsinchu,
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`2 STC.UNM has filed one other lawsuit involving the patents-in-suit, but that case is not
`currently active as STC.UNM attempts to effect service on the foreign defendant. See STC.UNM
`v. TP-Link Techs. Co., No. 6:19cv262 (W.D. Tex. filed Apr. 12, 2019).
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`Taiwan. Dkt. 1 at ¶¶ 26-28, 33-35, 40-42.3 All of the named inventors appear to be Taiwanese
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`nationals. See Dkts. 1-2, 1-3, 1-4.4
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`Plaintiff alleges that certain Apple iPhones, iPads, Apple TVs, and various Mac
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`computers (the “Accused Products”) infringe by way of support for the IEEE 802.11ac WiFi
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`standard (the “Accused Technology”). Dkt. 1, Cmplt. at ¶ 45. Based on Apple’s understanding
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`of STC.UNM’s allegations, the Accused Technology in the Accused Products is located entirely
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`within wireless chips supplied by third-party Broadcom Corporation (“Broadcom”). See
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`Declaration of Rohit Gaikwad In Supp. of Mot. to Transfer (“Broadcom Decl.”), ¶¶ 6-7. The
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`accused wireless chips in the Accused Products were designed and developed by Broadcom. Id.
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`The standard itself, 802.11ac, was issued by the Institute of Electrical and Electronics
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`Engineers (IEEE) Standards Association (IEEE SA), a professional association headquartered in
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`Piscataway, New Jersey. Ex. 2.
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`A.
`
`STC.UNM
`
`Plaintiff STC.UNM is a New Mexico corporation allegedly owned and controlled by the
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`Board of Regents of the University of New Mexico, with no known relevant ties to Texas. See
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`Dkt. 1, Cmplt. at ¶ 1. Generally, STC.UNM identifies its location on the campus of the
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`University of New Mexico in Albuquerque, New Mexico. Id. at ¶ 6. It appears to employ at
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`least 15 staff, 5 Board Officers, and 18 Board Members—nearly all of whom appear to reside in
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`New Mexico, and none in Texas. Exs. 3, 4. One of its Board Members, Mr. David W. Gibson,
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`maintains a “current role as Director of California Site Operations,” after 2015 when “he moved
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`to Sandia’s California Laboratory.” Ex. 5. Another Board Member, Pedro Suarez, is a
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`3 The asserted patents are U.S. Patents Nos. 8,249,204, 8,265,096 and 8,565,326 (the “Asserted
`Patents”).
`4 The inventors are noted on the face of the asserted patents.
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`California-based partner at the law firm Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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`Ex. 6. STC.UNM does not otherwise identify any relevant facilities, operations or employees
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`located outside of the State of New Mexico, and Apple is not aware of any.
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`Relevant to this dispute, STC.UNM approached Apple in pre-suit discussions,
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`represented by its President & CEO Elizabeth J. Kuuttila, who appears to reside in Albuquerque,
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`New Mexico. Exs. 3, 7. Apple’s Senior Counsel Jeff Lasker, who lives and works in the
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`NDCAL, met in-person with President Kuuttila in Albuquerque in December 2018. See
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`Declaration of Michael Jaynes In Supp. of Mot. to Transfer (“Jaynes Decl.”), ¶ 18.
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`B.
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`Apple
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`Apple is a California corporation headquartered in Cupertino (in the NDCAL) since
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`1976. Jaynes Decl., ¶ 5. Apple’s management and primary research and development facilities
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`are located in Cupertino, California. Jaynes Decl., ¶ 6. Because the Accused Technology resides
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`in Broadcom chips, the relevant technical witnesses in this case will be from Broadcom (also
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`based in the NDCAL) not Apple. See Broadcom Decl., ¶¶ 6, 8. The relevant Apple employees
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`involved in the marketing, licensing and sales of the Accused Products are located in or near
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`Cupertino. Jaynes Decl., ¶ 12.
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`Based on Apple’s understanding of STC.UNM’s allegations, the following is a list of the
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`specific Apple employees likely to be witnesses in this case, and the likely subject matter of their
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`testimony:
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` Marketing of the Accused Products: Vivek Bhardwaj
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` Patent licensing and pre-suit discussions: Jeff Lasker
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` Finances for the Accused Products: Michael Jaynes.
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`Jaynes Decl., ¶¶ 16-19. Each of these individuals and their current, relevant teams are located in
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`the NDCAL, and none are located in the WDTX. Id.
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`C.
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`Third-Party Broadcom
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`Given STC.UNM’s allegations target Broadcom semiconductor chips, third-party
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`Broadcom will be a key participant in this matter. Broadcom’s headquarters are located in San
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`Jose, California within the NDCAL. Broadcom Decl., ¶ 4.
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`According to Broadcom, the “Accused Instrumentalities” listed in the Complaint
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`incorporate Broadcom semiconductor chips that support Wi-Fi functionality, including support
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`for at least certain portions of the IEEE 802.11ac specification. Id. at ¶ 6. The vast majority of
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`the research, design, and development of the Broadcom chips that provide Wi-Fi functionality
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`for the “Accused Instrumentalities” (the “Broadcom Chips”) takes place in California. Id. at ¶ 8.
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`Specifically, the Broadcom Chips are developed within Broadcom’s Wireless Communications
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`and Connectivity (“WCC”) business unit, which has members located in San Jose, Irvine, and
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`San Diego, California. None of the engineering or design of the Broadcom Chips takes place in
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`Texas. Id.
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`Broadcom has identified three engineers who are likely to be third-party witnesses in this
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`case. All three work at Broadcom’s facilities in California.
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` Rohit Gaikwad. Mr. Gaikwad is VP of R&D at Broadcom who is familiar with
`
`Wi-Fi technology, including the IEEE 802.11ac functionality that is at issue in
`
`this lawsuit. He has worked as a Design Engineer for products containing Wi-Fi
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`technology for more than 15 years. During that time, his work has involved many
`
`of the Broadcom chips that provide Wi-Fi functionality in the Accused
`
`Instrumentalities. As a VP of R&D at Broadcom, he is knowledgeable about the
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`Broadcom Chips that are implicated in this lawsuit. In that role, he has worked
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`closely with Broadcom’s engineers and designers on the development of those
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`chips. He also has worked with Apple’s engineers to ensure successful
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`Case 6:19-cv-00428-ADA Document 22 Filed 11/01/19 Page 11 of 22
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`implementation of the Broadcom Chips into Apple’s products to provide those
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`products with Wi-Fi functionality. Broadcom Decl., ¶¶ 10-11.
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` Manas Deb. Mr. Deb is a Design Engineer and is responsible for Physical Layer
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`Algorithms. Mr. Deb works in Broadcom’s San Jose office. Mr. Deb’s
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`responsibilities include work on the development of Broadcom chips that provide
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`Wi-Fi functionality, including those for use in Apple’s products. Id. at ¶ 13.
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` Harish Kutagulla. Mr. Kutagulla is a Design Engineer and is responsible for
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`Physical Layer VLSI design. Mr. Kutagulla works in Broadcom’s San Jose
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`office. Mr. Kutagulla’s responsibilities include work on the development of
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`Broadcom chips that provide Wi-Fi functionality, including those for use in
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`Apple’s products. Id. at ¶ 14.
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`Broadcom personnel involved with the Broadcom Chips also have regular in-person
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`meetings with Apple. Broadcom Decl., ¶ 9. Those meetings typically take place at Apple’s
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`facilities in Cupertino, but some also take place at Broadcom’s facilities in San Jose. Id. None
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`of those meetings takes place in Texas. Id.
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`III.
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`LEGAL STANDARD
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`Under section 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 Am., Inc., 545 F.3d 304,
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`312-13 (5th Cir. 2008) (“Volkswagen II”). This first requirement is certainly met given Apple is
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`a California corporation headquartered in Cupertino. See Dkt. 1, Cmplt. at ¶ 9; Jaynes Decl., ¶ 5.
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`Second, the movant must show “good cause” by demonstrating that the “transferee venue is
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`clearly more convenient” than the transferor district. Volkswagen II at 315. As shown below,
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`that is the case here.
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`Case 6:19-cv-00428-ADA Document 22 Filed 11/01/19 Page 12 of 22
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`In evaluating convenience, the district court weighs both private and public interest
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`factors. In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). The private
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`factors include: “(1) the relative ease of access to sources of proof; (2) the availability of
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`compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing
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`witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and
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`inexpensive.” Id. The public interest factors include: “(1) the administrative difficulties flowing
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`from court congestion; (2) the local interest in having localized interests decided at home; (3) the
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`familiarity of the forum with the law that will govern the case; and (4) the avoidance of
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`unnecessary problems of conflict of laws of the application of foreign law.” Id.
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`The convenience of the witnesses is the most important factor in the transfer analysis. In
`
`re Genentech, Inc. 566 F.3d 1338, 1343 (Fed. Cir. 2009); Auto-Dril, Inc. v. Nat’l Oilwell Varco,
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`L.P., No. 6:15-cv-00091, 2016 WL 6909479, at *7 (W.D. Tex. Jan. 28, 2016). Moreover, “in a
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`case featuring most witnesses and evidence 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
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`motion to transfer.” In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009); see also,
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`e.g., In re Toyota Motor Corp., 747 F.3d 1338, 1341 (Fed. Cir. 2014); In re Apple, Inc., 581 F.
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`App’x 886, 889 (Fed. Cir. 2014); Genentech, 566 F.3d at 1348; In re TS Tech USA Corp., 551
`
`F.3d. 1315, 1322 (Fed. Cir. 2008); In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 (Fed.
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`Cir. Sept. 25, 2018).5
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`5 The plaintiff’s choice of venue is not a distinct factor in the analysis. Volkswagen II, 545 F.3d
`at 314-15. Nor is the location of counsel. Volkswagen I, 371 F.3d at 206.
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`IV.
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`THE NDCAL IS CLEARLY THE MORE CONVENIENT VENUE
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`A.
`
`The Private Interest Factors Favor Transfer
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`All four private interest factors favor transfer.
`
`1.
`
`Relative Ease of Access to Sources of Proof
`
`“[T]he Fifth Circuit clarified that despite technological advances that make the physical
`
`location of documents less significant, the location of sources of proof remains a ‘meaningful
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`factor in the analysis.’” Wet Sounds, Inc. v. Audio Formz, LLC, No. 17-cv-141, 2017 WL
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`4547916, at *2 (W.D. Tex. Oct. 11, 2017), report and recommendation adopted, No. 1:17-cv-
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`141, 2018 WL 1219248 (W.D. Tex. Jan. 22, 2018) (quoting Volkswagen II, 545 F.3d at 316).
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`“The Federal Circuit has observed that ‘[i]n patent infringement cases, the bulk of the relevant
`
`evidence usually comes from the accused infringer,’ and therefore the location of the defendant’s
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`documents tends to be the more convenient venue.” DataQuill, Ltd. v. Apple Inc., No. 13-ca-
`
`706, 2014 WL 2722201, at *3 (W.D. Tex. June 13, 2014) (quoting In re Genentech, Inc., 566
`
`F.3d 1338, 1345 (Fed. Cir. 2009)).
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`“In determining the ease of access to sources of proof, the Court will look to the location
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`where the allegedly infringing products were researched, designed, developed and tested.” XY,
`
`LLC v. Trans Ova Genetics, LC, No. 16-ca-00447, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5,
`
`2017); Uniloc USA Inc. v. Box, Inc., No. 1:17-CV-754-LY, 2018 WL 2729202, at *3 (W.D. Tex.
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`June 6, 2018) (finding that “it would be more inconvenient for Box to litigate in [WDTX] than
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`for Uniloc to litigate in Northern California”); Collaborative Agreements, LLC. v. Adobe Sys.
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`Inc., No. 1-14-CV-356, 2015 WL10818739 *4 (W.D. Tex. Aug. 21, 2015).
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`When, as is the case here, the bulk of relevant evidence and witnesses are located in the
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`requested transferee district, the ease of access to evidence factor weighs in favor of transfer. In
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`Polaris Innovations Ltd. v. Dell, Inc., No. 16-CV-451, 2016 WL 7077069 (W.D. Tex. Dec. 5,
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`2016), the defendant had an Austin office with 300 employees, including at least one Austin-
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`based engineer with knowledge of the accused products. Id. at *3. However, the Court still
`
`found that the bulk of the evidence was in California, and that this factor thus weighed in favor
`
`of transfer. Polaris Innovations, 2016 WL 7077069 at *5; see also Uniloc USA, 2019 WL
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`2066121, at *2; Collaborative Agreements, 2015 WL 10818739, at *4 (finding that where key
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`witnesses were located in the NDCAL “[t]he proof surrounding Collaborative’s theories of
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`infringement and damages will almost certainly lie with Adobe in the Northern District of
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`California.”).
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`The Accused Technology in the Accused Products was designed and developed by
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`Broadcom employees in California, including in the NDCAL. Broadcom Decl., ¶ 8. The key
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`documents relating to the design and development of the Accused Technology were generated in
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`California. Id. at ¶ 16. In addition, Apple documents concerning the marketing, sales and
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`financial information for the Accused Products containing the Accused Technology are located
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`in or around Cupertino, California. Jaynes Decl., ¶¶ 12, 19. As such, the overwhelming majority
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`of the sources of proof regarding the Accused Technology and the Accused Products are in the
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`NDCAL.
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`Conversely, there are no unique, relevant sources of proof in the WDTX. First,
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`STC.UNM has no physical presence in the WDTX.6 Second, Apple is not aware of any third-
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`party witnesses who reside in the WDTX. Third, the likely Apple witnesses and their relevant
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`documents are located in the NDCAL, not in the WDTX. Jaynes Decl., ¶¶ 12, 15-16. Given
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`6 STC.UNM has alluded to potential sovereign immunity in its Complaint. However, even if
`such sovereign immunity could apply to a patent licensing corporation filing suit away from its
`home state (which is doubtful), any such immunity would not apply to STC.UNM as a plaintiff
`in a patent case. See Bd. of Regents of the Univ. of Texas Sys., v. Bos. Sci. Corp., 936 F.3d 1365,
`1374 (Fed. Cir. 2019).
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`there are numerous sources of proof in the NDCAL and none in the WDTX, this factor clearly
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`favors transfer.
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`2.
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`Availability of Compulsory Process
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`Transfer is favored when a transferee forum has absolute subpoena power over a greater
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`number of third-party witnesses. In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1337-38 (Fed.
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`Cir. 2009); Genentech, 566 F.3d at 1345; Wet Sounds, 2017 WL 4547916 at *3. A court may
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`subpoena a witness to attend trial only (a) “within 100 miles of where the person resides, is
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`employed, or regularly transacts business in person,”; or (b) “within the state where the person
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`resides, is employed, or regularly transacts business in person.” Fed. R. Civ. P. 45(c)(1)(A), (B);
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`Gemalto S.A. v. CPI Card Grp. Inc., No. 15-CA-0910, 2015 WL 10818740, at *4 (W.D. Tex.
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`Dec. 16, 2015). Moreover, the ability to compel live trial testimony is crucial for evaluating a
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`witnesses’ testimony. Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992).
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`First, as noted above, the Accused Technology in the Accused Products was designed and
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`developed by Broadcom engineers located in California, including in the NDCAL, where
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`Broadcom is headquartered. Broadcom Decl. ¶ 8. Indeed, the details regarding the design and
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`operation of the Accused Technology is information solely within the possession of Broadcom.
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`Id. Apple does not control these Broadcom witnesses, nor can it force them to attend trial absent
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`the ability to subpoena them. Therefore, key witnesses in this case regarding the design,
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`development and operation are likely to be third-party witnesses from Broadcom who are within
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`the NDCAL’s subpoena power, but are not within the WDTX’s subpoena power.
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`In VLSI v. Intel, this Court noted that, given the availability of compulsory process, venue
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`was more appropriate in the district where key third-party witnesses from NXP were located.
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`VLSI Tech., LLC v. Intel Corp., Case No. 6:19-cv-00254-ADA, 2019 WL 4254065, at *6 (W.D.
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`Tex. Aug. 6, 2019). In the present case, the key third-party witnesses from third-party Broadcom
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`are located in the NDCAL and will be subject to compulsory process there. This is a compelling
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`fact favoring transfer because the NDCAL is the “venue with the more usable subpoena powers.”
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`Id. citing TiVo Inc. v. Verizon Commc’ns, Inc., No. 2:09-cv-257, 2010 WL 11468564, at *3-4
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`(E.D. Tex. Sept. 17, 2010).
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`In contrast, Apple is not aware of a single third-party witness who would be within the
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`WDTX’s subpoena power. Therefore, this factor weighs strongly in favor of transfer.
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`3.
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`Attendance of Willing Witnesses
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`The inconvenience to willing witnesses is the single most important factor in the transfer
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`analysis. See Genentech, 566 F.3d at 1342; Auto-Dril, 2016 WL 6909479 at *7. As noted above
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`in Section II.B., all of the likely Apple witnesses are located in the NDCAL. These witnesses are
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`a short car ride from the courthouses in the NDCAL (e.g., 15 minutes from San Jose), but more
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`than 1,500 miles and a lengthy plane ride from Texas. 7 Ex. 8, Google Flights search results.
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`If this case remains in Texas, the Apple witnesses would need to spend days away from
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`home and work—as opposed to several hours if the trial takes place in the NDCAL. This travel
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`burden is not insignificant and has been cited as a key reason why transfer is often appropriate.
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`7 Apple is aware of the Court’s analysis regarding the weight afforded to party witnesses in
`Fintiv, Inc. v. Apple Inc., No. 6:18-cv-00372, 2019 WL 4743678, at *4 (W.D. Tex. Sept. 13,
`2019). Apple respectfully submits that affording little weight to the inconvenience of party
`witnesses is inconsistent with the great weight of authority and appears to be based on imprecise
`language in ADS Sec. L.P. v. Advanced Detection Sec. Servs., Inc., No. A-09-CA-LY, 2010 WL
`1170976, at *4 (W.D. Tex. Mar. 23, 2010) report and recommendation adopted in A-09-CA-LY
`(ECF No. 20) (Apr. 14, 2010). In ADS Sec., the underlying discussion and analysis focused on
`the relative inconvenience among party and non-party witnesses and not on the absolute weight
`to be given to party witnesses. Id. Although the inconvenience to non-party witnesses may be
`afforded greater weight, it is not appropriate to afford little weight to party witness
`inconvenience. See e.g., Volkswagen II, 545 F.3d at 317-18 (evaluating convenience for both
`party and non-party witnesses) and Uniloc USA, 2019 WL 2066121 at *3 (“In considering this
`factor, the Court also includes Apple’s employee-witnesses, all of whom are in the Northern
`District of California.”); see also In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010), as
`amended (Jan. 13, 2011); Nintendo, 589 F.3d at 1199.
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`See Volkswagen II, 545 F.3d at 317 (“Witnesses not only suffer monetary costs, but also the
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`personal costs associated with being away from work, family and community.”). This length of
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`travel also imposes additional burdens beyond travel time, such as meal and lodging expenses.
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`Volkswagen I, 371 F.3d at 204-05. For all of these reasons, it would be clearly more convenient
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`for the NDCAL-based witnesses to attend trial in the NDCAL. Volkswagen II, 545 F.3d at 317
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`(recognizing the “obvious conclusion” that “it is more convenient for witnesses to testify at
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`home”); see Apple, 581 F. App’x at 889 (faulting district court for failing to follow the 100-mile
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`rule); TS Tech, 551 F.3d at 1320 (“The district court’s disregard of the 100-mile rule constitutes
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`clear error.”).
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`On the other hand, there is not a single relevant witness in the WDTX. Even the Plaintiff
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`in this case, a New Mexico company affiliated with the University of New Mexico, has no
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`operations or relevant witnesses in Texas. Therefore, the NDCAL would also be more
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`convenient for any potential STC.UNM witnesses, given there are non-stop flights available
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`from Albuquerque to the NDCAL with flight times of approximately two and a half hours. Ex.
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`9. By contrast, travel from Albuquerque to Waco would likely involve a flight to Dallas in
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`excess of 1.5 hours plus a car ride from Dallas to Waco of approximately 1.5 hours (assuming a
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`smooth trip down I-35, which is a dubious assumption at best).8
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`In addition, to the extent any of the inventors intend to travel to trial, all of those potential
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`witnesses appear to be based in Taiwan, and could also fly directly to the NDCAL on several
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`available non-stop flights each day—which are not available to Dallas or Austin. Ex. 10.
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`8 The absence of an international airport in Waco and the need to also commute along traffic-
`plagued Interstate 35 if this case remains there, also supports the conclusion that, in the
`alternative, Austin would be clearly more convenient than Waco given all of the likely witnesses
`would be traveling by air from outside of Texas.
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`Finally, Apple has identified that at least one of the attorneys involved in prosecuting the
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`asserted patents is located in the NDCAL, and none in the WDTX. Ex. 12. The