Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
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`Civil No. 6:20-cv-00272-ADA
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`VOIP-PAL.COM, INC.
`Plaintiff,
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`
`v.
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`AMAZON.COM, INC.,
`AMAZON.COM SERVICES LLC, and
`AMAZON WEB SERVICES, INC.
`
`Defendants.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
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`ORDER DENYING DEFENDANTS’ MOTION TO TRANSFER VENUE
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`Defendants Amazon.com, Inc., Amazon.com Services LLC, and Amazon Web Services,
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`Inc., (collectively, “Amazon”) filed their Motion to Transfer (the “Motion”) from the Western
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`District of Texas (the “WDTX”) to the Northern District of California (the “NDCA”) on July 15,
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`2020. ECF No. 26. Plaintiff VoIP-Pal.com, Inc. (“VoIP”) filed its Opposition to Amazon’s Motion
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`on August 5, 2020. ECF No. 33. Amazon filed its Reply on August 19, 2020. ECF No. 41. After
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`careful consideration of the briefing and the applicable law, the Court DENIES Amazon’s Motion.
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`I.
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`FACTUAL BACKGROUND
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`Plaintiff VoIP is a Nevada corporation with its principal place of business in Waco, Texas.
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`ECF No. 31 ¶ 1. Defendant Amazon is a Delaware corporation with its principal place of business
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`in Seattle, Washington. Id. ¶¶ 2–4. VoIP filed a complaint against Amazon alleging infringement
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`of U.S. Patent No. 10,218,606 (the “’606 patent” or the “Asserted Patent”) on April 6, 2020. Id.
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`¶¶ 10, 47. The Asserted Patents describe systems, methods, and apparatuses for communication
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`across and between internet-protocol based communication systems and other networks, such as
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`internally controlled systems and external networks. Id. ¶¶ 26, 40. The “Accused System” is a
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`platform for calling and messaging, enabling Amazon Alexa Calling Devices (such as the Amazon
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`Echo line of devices, fourth generation and later Amazon Fire devices with Alexa support, and
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`mobile devices) and Alexa software running on such devices. Id. ¶ 44. The Accused System allows
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`Amazon Alexa Calling Devices to initiate a call or a voice message between a first and second
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`participant, with each participant device being associated with one or more network elements, with
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`these network elements being either local or separate from one another. Id.
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`Vinod Prasad leads Amazon’s Alexa Communications team, which includes nineteen
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`employees in Sunnyvale, California. ECF No. 41-1 ¶ 3. Ex-Amazon employee Tim Thompson led
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`a team of forty engineers responsible for the Alexa devices’ operating system at Amazon’s facility
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`in Austin, Texas. ECF No. 33-25 ¶¶ 3–7. Bala Kumar leads a separate team of thirteen engineers
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`responsible for Echo device hardware in Austin, Texas. Id.
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`While VoIP’s principal place of business is here in Waco, only Chief Financial Officer
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`Kevin Williams works in Waco. VoIP-Pal.com, Inc. v. Amazon.com, Inc., No. 6:21-CV-00668
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`(W.D. Tex.), ECF No. 29 at 4. VoIP’s other current and former c-suite executives live mainly in
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`Canada. Id. Moreover, until recently VoIP’s principal place of business was in Bellevue,
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`Washington—VoIP moved to Waco in March 2021. Id.
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`II.
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`LEGAL STANDARD
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`In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of
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`the regional circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). Section
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`1404(a) provides that “[f]or the convenience of parties and witnesses, in the interest of justice, a
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`district court may transfer any civil action to any other district or division where it might have been
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`brought or to any district or division to which all parties have consented.” “Section 1404(a) is
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`intended to place discretion in the district court to adjudicate motions for transfer according to an
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`‘individualized, case-by-case consideration of convenience and fairness.’” Stewart Org., Inc. v.
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`Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)).
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`The preliminary question under Section 1404(a) is whether a civil action might have been
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`brought in the transfer destination venue. In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir. 2008)
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`(en banc) (“Volkswagen II”). Answering that question requires a determination of whether the
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`proposed transferee venue is proper. A plaintiff may establish proper venue by showing that the
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`defendant committed acts of infringement in the district and has a regular and established place of
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`business there. 28 U.S.C. § 1400(b). A defendant has a regular and established place of business
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`in the district if the plaintiff proves that there is a “physical place in the district,” that it is a “regular
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`and established place of business,” and lastly that it is “the place of the defendant.” In re Cray Inc.,
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`871 F.3d 1355, 1360 (Fed. Cir. 2017).
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`Additionally, Fifth Circuit courts “should . . . grant” a § 1404(a) motion if the movant can
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`show his proposed forum is “clearly more convenient.” Volkswagen II, 545 F.3d at 315. The Fifth
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`Circuit further held that “[t]he determination of ‘convenience’ turns on a number of public and
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`private interest factors, none of which can be said to be of dispositive weight.” Action Indus., Inc.
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`v. US. Fid. & Guar. Co., 358 F.3d 337, 340 (5th Cir. 2004). The private factors include: “(1) the
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`relative ease of access to sources of proof; (2) the availability of compulsory process to secure the
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`attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical
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`problems that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen AG, 371
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`F.3d 201, 203 (hereinafter “Volkswagen I”) (5th Cir. 2004) (citing Piper Aircraft Co. v. Reyno, 454
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`U.S. 235, 241 n.6 (1982)). The public 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 burden to prove that a case should be transferred for convenience falls on the moving
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`party. Volkswagen II, 545 F.3d at 314. Thus, the movant must demonstrate that the alternative
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`venue is clearly more convenient than the plaintiff’s chosen forum . I d. at 315. Although the
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`plaintiff’s choice of forum is not a separate factor entitled to special weight, respect for the
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`plaintiff’s choice of forum is encompassed in the movant’s elevated burden to “clearly
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`demonstrate” that the proposed transferee forum is “clearly more convenient” than the forum in
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`which the case was filed. Id. at 314–15. While “clearly more convenient” is not necessarily
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`equivalent to the “clear and convincing” evidence standard, the moving party “must show
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`materially more than a mere preponderance of convenience, lest the standard have no real or
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`practical meaning.” Quest NetTech Corp. v. Apple, Inc., No. 2:19-cv-118, 2019 WL 6344267, at
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`*7 (E.D. Tex. Nov. 27, 2019).
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`Finally, for purposes of transfer, a court does not need to look solely at the situation as it
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`existed at time of filing of the Complaint when examining convenience factors. While a court must
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`do so for purposes of considering where the suit “might have been brought” under § 1404(a), the
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`“convenience” clause “includes no comparable language mandating that courts look only
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`backward.” Lynk Labs, Inc. v. Home Depot USA, Inc., No. 6:21-CV-00097, 2022 WL 1593366, at
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`*6 (W.D. Tex. May 19, 2022) (citing Seagen Inc. v. Daiichi Sankyo Co., No. 2:20-CV-00337-JRG,
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`2021 WL 3620428, at *2 (E.D. Tex. Apr. 19, 2021)). Therefore, this Court will consider facts
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`arising after the original transfer motion. See Unification Techs. LLC v. Micron Tech., Inc., No.
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`6:20-CV-500-ADA, 2022 WL 92809, at *3 (W.D. Tex. Jan. 10, 2022).
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`III. ANALYSIS
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`A. VoIP could have brought this suit in the Northern District of California.
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`The preliminary question in any transfer analysis under 28 U.S.C. § 1404(a) is whether the
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`plaintiff could have properly brought its lawsuit in the proposed transferee forum. Volkswagen II,
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`545 F.3d at 312. VoIP certainly could have. Under 28 U.S.C. § 1400(b), one location where venue
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`in a patent lawsuit is proper is where the defendant has committed acts of infringement and
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`maintains a regular and established place of business. Amazon maintains a significant office with
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`many employees in the NDCA. VoIP does not dispute that this threshold inquiry is satisfied.
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`B. The private interest factors weigh against transfer.
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`a. The relative ease of access to sources of proof slightly weighs against transfer.
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`“In considering the relative ease of access to proof, a court looks to where documentary
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`evidence, such as documents and physical evidence, is stored.” Fintiv Inc. v. Apple Inc., No. 6:18-
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`cv-00372, 2019 WL 4743678, at *2 (W.D. Tex. Sept. 10, 2019). The question properly focuses on
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`“relative ease of access, not absolute ease of access.” In re Radmax, 720 F.3d 285, 288 (5th Cir.
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`2013) (emphases in original). And “[i]n patent infringement cases, the bulk of the relevant
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`evidence usually comes from the accused infringer. Consequently, the place where the defendant’s
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`documents are kept weighs in favor of transfer to that location.” In re Apple Inc., 979 F.3d 1332,
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`1340 (Fed. Cir. 2020).
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`Amazon argues that this factor is neutral, stating that the bulk of the documentation relevant
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`to this case is located in the Seattle area and stored on servers in Oregon. ECF No. 26 at 12; ECF
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`No. 26-3 ¶ 11. The individuals who maintain technical documentation related to the accused
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`technology are located in Amazon’s Seattle headquarters. Id. Since the documents in Seattle are
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`“equally accessible” in the NDCA and the WDTX, Amazon concludes this factor is neutral. ECF
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`No. 26 at 12.
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`VoIP argues that additional relevant documentation is stored in the WDTX. ECF No. 33 at
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`11. VoIP relies on a declaration by Tim Thompson in Parus Holdings Inc. v. Amazon.com, Inc.,
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`No. 6:19-CV-454 (W.D. Tex.), ECF No. 20-1, in which Mr. Thompson states “[t]echnical
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`documentation relating to the work of the DeviceOS and Echo Platform Software teams is
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`maintained at the Austin offices.” ECF No. 33-25 ¶ 6. VoIP therefore concludes that because this
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`documentation, which VoIP holds to be relevant, is located in and accessible from Austin, that this
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`factor weighs against transfer. ECF No. 33 at 11.
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`In response, Amazon disputes the relevancy of the Thompson declaration and any
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`statements within, arguing that the teams in question did not have any hand in developing or
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`maintaining the Accused System, and as such do not have any relevant documentation. ECF No.
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`41 at 1. In support, Amazon introduces supplemental declarations from Mr. Thompson and Bala
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`Kumar, senior members of the teams whose relevancy is disputed. ECF No. 41-2; ECF No. 41-3.
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`These declarations state that these teams do not work on functionalities of the Accused System,
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`which Amazon describes as involving “communications between devices,” with these teams
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`instead being responsible for “communications between the hardware components.” ECF No. 41
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`at 1; ECF No. 41-2 ¶¶ 4–5, 6; ECF No. 41-3 ¶ 6.
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`While Amazon denies that documentation for the DeviceOS and Echo products stored in
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`Austin are relevant, the Court does not agree. “[E]ven if the device operating system is not the
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`most ‘critical’ part of infringement, VoIP still has a burden of showing that the operating system
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`implements the more critical middleware functionality to prove its infringement case.” VoIP-
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`Pal.com, Inc. v. Amazon.com, Inc., No. 6:21-CV-00668, 2022 WL 2110697, at *3 (W.D. Tex. June
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`10, 2022) (discussing a separate but analogous patent infringement suit between the same parties);
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`VoIP-Pal.com, Inc. v. Amazon.com, Inc., No. 6:21-CV-00668, ECF No. 88 (W.D. Tex. October
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`18, 2022) (denying motion for reconsideration of order denying transfer to the NDCA). These
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`teams and their work are therefore relevant to the present case because of their involvement in
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`developing systems and devices that implement the Alexa Calling and Messaging functionality.
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`This factor slightly weighs against transfer. Amazon concedes that the bulk of its
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`documentation relating to the Alexa Calling and Messaging System and financial documentation
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`is located in Seattle, not in the NDCA or the WDTX. Amazon employees in Austin will be able to
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`access this documentation just as easily as Amazon employees in Sunnyvale. But because relevant
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`teams, and therefore relevant documents, are located in Austin, this factor weighs against transfer.
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`b. The compulsory process factor slightly favors transfer.
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`The Federal Rules permit a court to subpoena a witness to attend trial only (a) “within 100
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`miles of where the person resides, is employed, or regularly transacts business in person” or (b)
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`“within the state where the person resides, is employed, or regularly transacts business in person,
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`if the person . . . is commanded to attend a trial and would not incur substantial expense.” Fed. R.
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`Civ. P. 45(c)(1)(A), (B)(ii); Gemalto S.A. v. CPI Card Grp. Inc., No. 15-CA-0910, 2015 WL
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`10818740, at *4 (W.D. Tex. Dec. 16, 2015). Under this factor, the Court focuses on non-party
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`witnesses whose attendance may need to be secured by a court order. Fintiv Inc., No. 6:18-cv-
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`00372, 2019 WL 4743678, at *14 (citing Volkswagen II, 545 F.3d at 316). And “when there is no
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`indication that the witness is willing,” the Court must presume that its subpoena power will be
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`necessary to secure the witness’ attendance. In re DISH Network LLC, No. 2021-182, 2021 WL
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`4911981, at *3 (Fed. Cir. Oct. 21, 2021) (quoting In re HP, Inc., No. 2018-149, 2018 WL 4692486,
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`at *3 n.1 (Fed. Cir. Sept. 25, 2018)). This factor “weigh[s] heavily in favor of transfer when more
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`third-party witnesses reside within the transferee venue than reside in the transferor venue.” In re
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`Apple, 581 F. App’x 886, 889 (Fed. Cir. 2014).
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`To support transfer, Amazon points to prior art witnesses located in the NDCA that it
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`intends to use to prove invalidity. ECF No. 26 at 13. Amazon identifies companies “that are or
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`were at the relevant time headquartered” in the NDCA that developed prior art systems: Avaya
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`Inc. in Santa Clara, California; Skype Inc. in San Jose, California; Cisco Systems, Inc. in San Jose,
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`California; Sylantro Systems in Campbell, California; and Altigen Communications in Milpitas,
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`California. Id.; ECF Nos. 26-25–26-29. Since these witnesses have provided no indication of their
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`willingness to attend trial, Amazon argues that the NDCA’s subpoena power will be necessary.
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`ECF No. 26 at 13. Amazon additionally identifies prior art developer AT&T , which is
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`headquartered in Dallas, within this Court’s 100-mile subpoena power, but claims that AT&T will
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`likely not need to be compelled to provide a witness if called upon. Id.; ECF No. 26-24 at 22–23.
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`Amazon preemptively attempts to block any claims of cherry-picking these prior art witnesses
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`because these prior art witnesses were “identified in [a] prior Amazon case after it had already
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`been voluntarily transferred” to the NDCA and before VoIP filed any cases in the WDTX. ECF
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`No. 26 at 13. VoIP further argues that Amazon’s prior art witnesses are speculative at best because
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`Amazon has not served invalidity claim charts and because Amazon “cherry-picked” these
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`three prior-art companies out of preliminary contentions that list 15 different systems. Id. at 12–
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`13; ECF No. 26-24 at 10–30. Amazon contends that it did not cherry-pick the systems because it
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`“discussed all fifteen systems previously identified” and merely pointed out those which are in the
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`NDCA and did not submit claim charts because it “did not want to burden the Court with
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`voluminous charts and because [VoIP] already has them.” ECF No. 41 at 5.
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`For its part, VoIP points to witnesses in Dallas and Austin that it asserts will require this
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`Court’s subpoena power to compel attendance. ECF No. 33 at 13. VoIP intends to call Mr. George
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`Brunt of Business Legal Management in Dallas, who is knowledgeable about licensing the
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`Asserted Patent, and Mr. Marcus Redding of Intellion Analytics Group in Austin, who has
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`information related to damages. ECF No. 33-1 ¶ 51–52; ECF No. 33-33. Like Amazon’s witnesses,
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`VoIP’s Dallas and Austin witnesses have not indicated a willingness to attend trial. ECF No. 33 at
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`13. Amazon argues that the Court should not count Messrs. Brunt or Redding under this factor
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`because they are “consultants” retained by VoIP. Id. at 2. As to at least Mr. Redding, this was true
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`in 2016 and 2018. ECF No. 31-1 ¶ 52. Yet Amazon has not presented evidence that either are still
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`willing to testify in this case in 2022 or that VoIP is continuing to pay them.
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`The Court finds this factor to slightly favor transfer. Amazon cites six witnesses in its
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`desired forum that require the NDCA’s compulsory process; VoIP points to two that require this
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`Court’s compulsory process. There are only three more witnesses who reside in the NDCA than
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`the WDTX, a difference that is insufficient to heavily tip the scale when considering that Amazon
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`is statistically unlikely to select those prior art witnesses for trial from among the dozens of
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`references that it contends invalidates the Asserted Patent. Thus, this factor weighs only slightly
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`in favor of transfer.
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`c. The cost of attendance for willing witnesses factor weighs against transfer.
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`The most important factor in the transfer analysis is witness convenience. In re Genentech,
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`Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). When analyzing this factor, the Court should consider
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`all potential materials and relevant witnesses. Alacritech Inc. v. CenturyLink, Inc., No. 2:16-CV-
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`00693, 2017 WL 4155236, at *5 (E.D. Tex. Sept. 19, 2017). This factor appropriately considers
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`the cost of attendance of all willing witnesses, including both party and non-party witnesses. In re
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`Pandora Media, LLC, No. 2021-172, 2021 WL 4772805, at *2–3 (Fed. Cir. Oct. 13, 2021). “Courts
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`properly give more weight to the convenience of non-party witnesses than to party witnesses.”
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`Netlist, Inc. v. SK Hynix Inc., No. 6:20-CV-00194-ADA, 2021 WL 2954095, at *6 (W.D. Tex.
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`Feb. 2, 2021).
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`“When the distance between an existing venue for trial of a matter and a proposed venue
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`under § 1404(a) is more than 100 miles, the factor or inconvenience to witnesses increases in direct
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`relationship to the additional distance to be travelled.” Volkswagen II, 545 F.3d at
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`317 (quoting Volkswagen I, 371 F.3d at 203). But the Federal Circuit has clarified that courts
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`should not “rigidly” apply the 100-mile rule in cases where witnesses would be required to travel
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`a significant distance no matter where they testify. In re Apple, 979 F.3d at 1342 (discussing
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`witnesses traveling from New York) (citing Volkswagen II, 545 F.3d at 317).
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`Rather, “the inquiry should focus on the cost and inconvenience imposed on the witnesses
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`by requiring them to travel to a distant forum and to be away from their homes and work for an
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`extended period of time.” In re Google, LLC, No. 2021-170, slip op. at 9 (Fed. Cir. Sept. 27, 2021).
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`The Federal Circuit has indicated that time away from an individual’s home is a more important
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`metric than distance. Id. Time and distance frequently and naturally overlap because witnesses
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`usually take more time to travel farther away, thereby increasing the time away from home. A
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`witness in Florida would not find it more convenient to travel to Texas than to California despite
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`Texas being halfway between Florida and California. In re Apple Inc., No. 2022-128, 2022 WL
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`1196768, at *3 (Fed. Cir. Apr. 22, 2022).
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`Amazon claims that it has 350 employees on the Alexa Communications team, with the
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`majority of relevant employees living and working in Seattle, additional relevant employees in
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`Toronto, and a handful of additional relevant employees in the Bay Area and in India. ECF No.
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`26-3 ¶ 9. These employees are supposedly responsible for designing, developing, and managing
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`the code for the “Alexa Calling and Messaging” system VoIP accuses in its complaint. ECF No.
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`26 at 6. According to Amazon, none of these identified employees are located within the WDTX.
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`ECF No. 26-3 ¶ 13.1 Thus, Amazon argues, its development employees “and other likely trial
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`witnesses” located in Seattle will be much more inconvenienced by traveling to the WDTX than
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`to the NDCA. ECF No. 26 at 14. In response, VoIP questions why Amazon did not “provid[e] any
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`specifics” on how many relevant employees exist. ECF No. 33 at 8; ECF No. 26-3 ¶ 7. In its Reply,
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`Amazon introduces a declaration from Mr. Vinod Prasad that states that there is a team of nineteen
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`people in Sunnyvale, California, who works on the backend portion of the client software that
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`enables the accused functionality. ECF No. 41-1 ¶ 3. While Amazon asserts that there are a large
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`number of people in the NDCA or closer to the NDCA on the Alexa Communications team with
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`relevant knowledge, the Court finds that these statements are not definite enough to weigh into the
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`transfer analysis. Mr. Hardie acknowledges that the Alexa Communications service includes,
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`“among other things,” the Accused Systems, and “believe[s]” that “a majority” of the relevant
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`Alexa Communications team members are located on the west coast, noting that he “do[es] not
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`know” any Amazon employees working on the Alexa Calling and Messaging system in the
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`WDTX. ECF No. 26-3 ¶¶ 8, 9, 13. But these statements do not provide meaningful detail as to the
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`number of relevant witnesses in the Alexa Communications team, and instead, they merely dance
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`around the question. Accordingly, these assertions are not given any weight in this factor. Amazon
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`has, however, sufficiently identified nineteen people in Sunnyvale that have relevant knowledge
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`and count towards transfer.
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`Amazon further argues that the location of VoIP’s witnesses either favors or weighs
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`neutrally on transfer. Amazon identifies VoIP’s executive officers and staff, who are, according to
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`1 Amazon’s declarant, Mr. Tony Hardie, identifies one employee who previously worked on the
`relevant technologies who resides in the Dallas-Fort Worth area but clarifies that this individual
`“has not worked on Alexa Calling and Messaging for several years.” ECF No. 26-3 ¶ 13.
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`VoIP’s website: Colin Tucker, Emil Malak, Dennis Chang, Edwin Candy, Ryan Thomas, Roland
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`Franke, Ray Leon, D. Barry Lee, Pentti Huttunen, and Alex Krapyvny. VoIP-Pal.com, Inc. v.
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`AT&T, Inc., No. 6:20-CV-00325 (W.D. Tex.), ECF No. 22-42. Amazon provides records
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`indicating Messrs. Malak, Lee, and Huttunen reside in Vancouver, British Columbia, Canada; Mr.
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`Tucker resides in the United Kingdom; Mr. Thomas resides in North Layton, Utah; Mr. Chang
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`resides in the San Francisco Bay Area in California; and Mr. Candy resides in Gibraltar. Id. at ECF
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`Nos. 22-30, 22-34–22-37. Only Mr. Chang will count towards transfer, as all others will need to
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`spend significant time away from home to testify in either the WDTX or the NDCA and
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`accordingly neither favor transfer nor retention. Amazon also identifies the inventors of the
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`Asserted Patent: Emil Malak, Jev Björsell, Clay Perreault, Fuad Arafa, Rod Thomson, and Steve
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`Nicholson, who are located in Vancouver, New York, and New Zealand. All inventors have since
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`consented to testify if required in Waco. ECF Nos. 33-42–33-46. However, since these individuals
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`that have agreed to testify are far enough away from either district that they will be inconvenienced
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`in such a manner that they will need to spend significant time away from home in either district,
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`these witnesses are considered to weigh neither in favor nor against transfer.
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`VoIP points to fifty-three Amazon employees in Austin that Amazon has previously
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`identified in other cases that VoIP believes may also work on the accused instrumentalities. ECF
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`No. 33 at 9–10; ECF No. 33-25 ¶¶ 3, 5. The Amazon employees VoIP highlights comprise
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`Amazon’s DeviceOS team, which designs and develops the operating system for Amazon Echo
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`and FireTV products. ECF No. 33-25 ¶¶ 2–4. Amazon denies the relevance of the teams led by
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`Mr. Thompson and Ms. Kumar, stating that these teams do not work on the instrumentalities VoIP
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`alleges infringes the Asserted Patent. ECF No. 41-2 ¶ 2; ECF No. 41-3 ¶ 2. However, as previously
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`mentioned, these teams and their work are indeed relevant because of their involvement in
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`Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 13 of 19
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`developing systems and devices that implement the Alexa Calling and Messaging functionality.
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`These employees therefore weigh against transfer.
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`The Court finds this factor to weigh against transfer. Amazon attempts to identify a large
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`number of witnesses on the Alexa Communications team but does not provide enough information
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`for the Court to treat the assertion as credible, with the exception of the nineteen witnesses
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`identified in the Sunnyvale office on the Alexa Communications team. VoIP’s executive, Mr.
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`Chang, also weighs in favor of transfer. The fifty-three Amazon employees VoIP identifies in
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`Austin are also relevant and weigh against transfer. In total, there are twenty witnesses in or around
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`the NDCA that favor transfer, and fifty-three witnesses in or around the WDTX that favor
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`retention. Therefore, this factor weighs against transfer.
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`d. Other practical problems are neutral.
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`When considering the private interest factors, courts must consider “all other practical
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`problems that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at
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`315. “Particularly, the existence of duplicative suits involving the same or similar issues may
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`create practical difficulties that will weigh heavily in favor or against transfer.” PersonalWeb
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`Techs., LLC v. NEC Corp. of Am., Inc., No. 6:11-cv-655, 2013 WL 9600333, at *5 (E.D. Tex. Mar.
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`21, 2013). “[W]here there is a co-pending litigation . . . involving the same patent-in-suit, . . .
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`pertaining to the same underlying technology and accusing similar services, . . . the Federal Circuit
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`cannot say the trial court clearly abuses its discretion in denying transfer.” In re Vistaprint Ltd.,
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`628 F.3d 1342, 1346 n.3 (Fed. Cir. 2010).
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`The Court finds this factor neutral. VoIP filed six cases in this District between April 2 and
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`April 24, 2020, each accusing similar technologies. VoIP-Pal.com, Inc. v. Facebook, Inc., No.
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`6:20-cv-00267, ECF No. 1 (W.D. Tex. Apr. 2, 2020); VoIP-Pal.com. Inc. v. Google, LLC, No.
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`Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 14 of 19
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`6:20-cv-00269, ECF No. 1 (W.D. Tex. Apr. 3, 2020); VoIP-Pal.com, Inc. v. Amazon.com, Inc.,
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`No. 6:20-cv-00272, ECF No. 1 (W.D. Tex. Apr. 6, 2020); VoIP-Pal.com, Inc. v. Apple, Inc., No.
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`6:20-cv-00275, ECF No. 1 (W.D. Tex. Apr. 7, 2020); VoIP-Pal.com, Inc. v. AT&T Corp., No.
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`6:20-cv-00325, ECF No. 1 (W.D. Tex. Apr. 24, 2020); VoIP-Pal.com, Inc. v. Verizon Comms.,
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`Inc., No. 6:20-cv-00327, ECF No. 1 (W.D. Tex. Apr. 24, 2020). Three of those cases have since
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`been dismissed. VoIP-Pal.com, Inc. v. Apple Inc., No. 6:20-cv-275, ECF No. 49 (W.D. Tex. Mar.
`
`24, 2021); VoIP-Pal.com, Inc. v. AT&T, Inc., No. 6:20-cv-325, ECF No. 53 (W.D. Tex. Mar. 25,
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`2021); VoIP-Pal.com, Inc. v. Verizon Comms., Inc., No. 6:20-cv-327, ECF No. 49 (W.D. Tex. Apr.
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`1, 2021). Two have been transferred to the NDCA: VoIP-Pal.com, Inc. v. Facebook, Inc., No.
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`6:20-cv-00267, ECF No. 97 (W.D. Tex. Jul. 22, 2022); VoIP-Pal.com. Inc. v. Google, LLC, No.
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`6:20-cv-00269, ECF No. 1 (W.D. Tex. Apr. 3, 2020).
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`Amazon argues that this case should be transferred to the NDCA because VoIP previously
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`litigated patents covering related technologies there. ECF No. 26 at 8–10. Amazon makes repeated
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`mention to Judge Lucy Koh, who has presided over at least six cases in the same family of patents
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`as the Asserted Patent. ECF No. 26 at 8. Judge Koh has since left the NDCA to take the bench on
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`the Ninth Circuit. VoIP-Pal.com, Inc. v. Meta Platforms, Inc., No. 6:21-cv-667, 2022 WL
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`2110696, at *7 (W.D. Tex. May 31, 2022). Judge Virginia DeMarchi, however, in the NDCA was
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`assigned to several previous cases involving VoIP’s patent portfolio. Id.
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`The accused products in this case have not been litigated pursuant to the Asserted Patents,
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`or to any of the patents in VoIP’s portfolio, in the NDCA. Amazon instead compares the ’606
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`patent’s language to portions of other patents in VoIP’s portfolio and relies on Judge Koh’s finding
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`in VoIP-Pal.Com, Inc. v. Twitter, Inc., to support their argument that the ’606 patent is similar
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`enough to the actions brought in the NDCA to support transfer. No. 18-CV-04523-LHK, 2021 WL
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`Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 15 of 19
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`3773611 (N.D. Cal. Apr. 21, 2020). Judge Koh also issued other decisions that suggest the cases
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`are unrelated. Order Denying Motion to Relate, Apple v. VoIP-Pal.com, Inc., No. 20-CV-02460-
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`LHK (N.D. Cal. Aug. 25, 2021) (“The Court DENIES Apple’s motion to relate the instant case”);
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`Order Denying Motion to Relate, AT&T Corp. v. VoIP-Pal.com, Inc., No. 20-CV-2995-LHK (N.D.
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`Cal. Aug. 25, 2021) (“The Court DENIES AT&T’s motion to relate the instant case”). This Court
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`previously found that the cases in the NDCA did not relate closely enough to warrant a stay of the
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`cases pending in the WDTX. VoIP-Pal.com, Inc. v. Apple, Inc., No. 6:21-cv-670-ADA (W.D.
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`Tex. Sept. 3, 2021).
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` But for this transfer factor, the Court only looks to whether the cases are closely related
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`enough such that the NDCA might gain some judicial efficiency that makes trial more practical
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`and expeditious. Due to the history in the NDCA, Judge DeMarchi’s continued involvement in the
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`NDCA cases, and the two related cases that have been transferred there from this Court, the Court
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`concludes that the NDCA will gain some small amount of efficiency if this case were transferred.
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`The Court, however, also finds it important that there is an analogous case between the same parties
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`and similar patents currently pending before this Court. See VoIP-Pal.com, Inc. v. Amazon.com,
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`Inc., No. 6:21-CV-00668, ECF No. 88 (W.D. Tex. June 10, 2022). On the whole, any efficiency
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`gained by transferring to the NDCA is balanced out by this pending case remaining with this Court.
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` Both the transferor and transferee forums are familiar with the parties and technologies at
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`issue. Accordingly, the Court finds this factor neutral.
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`C. The public interest factors weigh slightly against transfer.
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`a. The court congestion factor weighs slightly against transfer.
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`The analysis under this factor asks “whether there is an appreciable difference in docket
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`congestion between the two forums.” Parsons v. Chesapeake & Ohio Ry. Co., 375 U.S. 71, 73
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`Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 16 of 19
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`(1963); Parkervision, Inc. v. Intel Corp., No. 6:20-CV-00108, 2021 WL 401989, at *6 (W.D. Tex.
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`Jan. 26, 2021). The Court considers the “speed with which a case can come to trial and be
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`resolved . . . .” Genentech, Inc., 566 F.3d at 1347. However, court congestion is considered “the
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`most speculative” factor, and when “relevant factors weigh in favor of transfer and others are
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`neutral, then the speed of the transferee district court should not alone outweigh all those other
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`factors.” Id.
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`The Court finds this factor to weigh slightly against transfer. Amazo