Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 1 of 16
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`OCEAN SEMICONDUCTOR LLC,
`
`
`
`Plaintiff,
`
`vs.
`
`STMICROELECTRONICS, INC.,
`
`Defendant.
`
`NO. 6:20-cv-01215-ADA
`
`
`
`DEFENDANT STMICROELECTRONICS, INC.’S
`OPPOSED MOTION FOR INTRA-DISTRICT TRANSFER
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`

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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 2 of 16
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`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION ............................................................................................................. 1
`FACTUAL BACKGROUND ............................................................................................ 1
`STATEMENT OF THE LAW ........................................................................................... 3
`THESE ACTIONS COULD HAVE BEEN BROUGHT IN THE AUSTIN
`DIVISION .......................................................................................................................... 4
`THE TRANSFER ANALYSIS FAVORS THE AUSTIN DIVISION.............................. 5
`A.
`The Private Interest Factors Favor Transfer .......................................................... 6
`a.
`Relative Ease of Access to Sources of Proof Strongly
`Favors Transfer .............................................................................. 6
`Convenience and Cost for Willing Witnesses Strongly
`Favors Transfer .............................................................................. 7
`Other Practical Factors Favor Transfer .......................................... 8
`c.
`Availability of Compulsory Process Is Neutral ............................. 9
`d.
`The Public Interest Factors Favor Transfer ........................................................... 9
`a.
`Local Interest in Adjudicating Local Disputes Favors
`Transfer .......................................................................................... 9
`Court Congestion, Familiarity with the Law, and
`Avoidance of Conflicts Factors Are Neutral ............................... 10
`CONCLUSION ................................................................................................................ 10
`
`b.
`
`b.
`
`B.
`
`
`I.
`II.
`III.
`IV.
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`V.
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`VI.
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`-i-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 3 of 16
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`
`CASES
`
`Cadle Co. v. Keyser,
`No. 14-CV-00758, 2015 WL 764256 (W.D. Tex. Feb. 23, 2015) .............................................4
`
`Datascape, Ltd. v. Dell Techs., Inc.,
`No. 6:19-CV-00129-ADA, 2019 WL 4254069 (W.D. Tex. June 7, 2019) ...........................5, 8
`
`Datascape, Ltd v. Dell Techs.,
`No. 19-CV-00129-ADA, ECF No. 44 (W.D. Tex. June 7, 2019) .............................................4
`
`Eastep v. City of Odessa,
`No. 17-CV-00059, 2017 WL 2537358 (W.D. Tex. June 12, 2017) ..........................................4
`
`Frac Shack Inc. v. Alaska Fuel Distribs. Inc.,
`No. 18-CV-00660, ECF No. 28 (W.D. Tex. Jan. 29, 2019) ......................................................4
`
`Hammond Dev. Int’l, Inc. v. Amazon.com, Inc.,
`No. 6:19-CV-00355-ADA, 2020 WL 6136783 (W.D. Tex. Mar. 30, 2020) .............................4
`
`In re Genentech,
`566 F.3d at 1343 ........................................................................................................................7
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)..............................................................................................6, 7
`
`In re Radmax, Ltd.,
`720 F.3d 285 (5th Cir. 2013) .................................................................................................4, 7
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)............................................................................................3, 10
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ........................................................................................... passim
`
`In re Volkswagen of Am., Inc.,
`566 F.3d 1349 (Fed. Cir. 2009)..................................................................................................8
`
`McCloud v. McClinton Energy Grp., L.L.C.,
`No. 14-CV-00620, 2014 WL 6388417 (W.D. Tex. Nov. 14, 2014) ......................................4, 6
`
`Mimedx Grp., Inc. v. Tex. Human Biologics, Ltd.,
`No. 14-CV-00464, 2014 WL 12479284 (W.D. Tex. Aug. 12, 2014) ............................4, 5, 7, 8
`
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`-ii-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 4 of 16
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`Ocean Semiconductor LLC v Mediatek Inc.,
`No. 6:20-cv-1210-ADA, Dkt. 17 (W.D. Tex. May 4, 2021) .....................................................2
`
`Page(s)
`
`Ocean Semiconductor LLC v. Renesas Electronics Corp.,
`No. 6:20-cv-01213-ADA, Dkt. 39 (W.D. Tex. July 9, 2021) ................................................2, 3
`
`Ocean Semiconductor LLC v. Renesas Electronics Corp.,
`No. 6:20-cv-1213-ADA, Dkt. 36 (W.D. Tex.)...........................................................................2
`
`Ocean Semiconductor LLC v. Silicon Labs. Inc.,
`No. 6:20-cv-01214-ADA, Dkt. 20 (W.D. Tex. May 4, 2021) ...................................................2
`
`Ocean Semiconductor LLC v. W. Digital Techs., Inc.,
`No. 6:20-cv-01216-ADA, Dkt. 25 (W.D. Tex. May 5, 2021) ...................................................2
`
`STATUTES
`
`28 U.S.C. § 1404(a) .................................................................................................................1, 3, 4
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 45(c)(1)(A) ..............................................................................................................9
`
`Fed. R. Civ. P. 45(c)(1)(B)(i) ...........................................................................................................9
`
`Fed. R. Civ. P. 45(c)(1)(B)(ii)..........................................................................................................9
`
`Fifteenth Order Related to Entry into the United States Courthouse Austin, Texas
`(May 28, 2021) (available at https://www.txwd.uscourts.gov/wp-
`content/uploads/2021/06/Fifteenth%20Order%20Related%20to%20Entry%20
`into%20the%20U.S.%20Courthouse_Austin052821.pdf) ........................................................1
`
`Rule 45 .............................................................................................................................................9
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`-iii-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 5 of 16
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`I.
`
`INTRODUCTION
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`Pursuant to 28 U.S.C. § 1404(a), Defendant STMicroelectronics, Inc. (“ST Inc.”) moves
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`for an intra-district transfer of this case from the Waco Division to the Austin Division of the
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`Western District of Texas. Plaintiff Ocean Semiconductor LLC (“Ocean”) and Defendant ST Inc.
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`have no meaningful connection to the Waco Division: no places of business, no likely witnesses
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`or documentary evidence, and no local interest. ST Inc., however, does have a place of business
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`in Austin, which has a stronger local interest in the resolution of this lawsuit. Dkt. 17 at ¶ 3.
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`Moreover, many third parties, including relevant foundries and tool and software suppliers, are
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`located in Austin. Austin is also where the original assignee of the asserted patents, Advanced
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`Micro Devices (“AMD”), is located, as well as where a majority of the inventors reside.
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`Courts in this District have frequently transferred cases within the Western District of
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`Texas from an initial forum with little or no connection to a case to a forum elsewhere in the district
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`where most of the events and witnesses are located. The Austin courthouse has been “open for
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`business to the public” since May 28, 2021, with appropriate COVID-19 pandemic protocols in
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`place to conduct in-person hearings safely.1 Transfer to Austin would result in no inefficiency
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`given that this Court could retain oversight of the case. Accordingly, ST Inc. requests that the
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`Court transfer this case to the Austin Division pursuant to 28 U.S.C. § 1404(a).
`
`II.
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`FACTUAL BACKGROUND
`
`ST Inc. is headquartered in Coppell, Texas, but has a place of business in Austin. Dkt. 17
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`at ¶ 3; Ex. 10 (Andrew C. Mayo Decl.) at ¶ 2. In contrast, ST Inc. has no employees in the Waco
`
`
`1 See Fifteenth Order Related to Entry into the United States Courthouse Austin, Texas (May 28,
`2021)
`(available
`at
`https://www.txwd.uscourts.gov/wp-
`content/uploads/2021/06/Fifteenth%20Order%20Related%20to%20Entry%20into%20the%20U.
`S.%20Courthouse_Austin052821.pdf).
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 6 of 16
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`
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`Division and also does not maintain documents or records there. Mayo Decl. at ¶ 3; Ex. 1 (Janice
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`L. Ta Decl.) at Ex. 82.
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`Ocean asserts that ST Inc. infringes eight patents by importing, using, selling, and/or
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`offering for sale integrated circuits that are manufactured by other ST entities, Taiwan
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`Semiconductor Manufacturing Company Ltd. (“TSMC”), or United Microelectronics Corp.
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`(“UMC”), all outside the United States. Compl. at ¶¶ 8–26. As acknowledged by Ocean, TSMC
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`operates a design center in Austin. Ocean Semiconductor LLC v. Renesas Electronics Corp., No.
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`6:20-cv-01213-ADA, Dkt. 39 at 8 (W.D. Tex. July 9, 2021) (“Ocean’s Response to Renesas”).
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`The infringement contentions allege that the foundries where the accused ST-branded products are
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`made use the following tools and software: ASML’s TWINSCAN system, ASML’s YieldStar
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`metrology and inspection system, Applied Materials’ E3 system, PDF Solutions’ Exensio system,
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`and camLine’s LineWorks system. See, e.g., Compl. ¶¶ 15, 185, 206. The accused tool suppliers
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`include Applied Materials, which has had an Austin presence since 1992 (Ex. 6); ASML, which
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`has an office in Austin (Ex. 5); PDF Solutions, which is headquartered in California and has a
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`Dallas office (Ex. 8); and camLine, which has a U.S. location in Georgia (Ex. 7). Ocean’s Renesas
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`Response at 8. None of the tool suppliers have operations or employees located in the Waco
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`Division. See Ex. 5–8.
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`Ocean’s case against ST Inc. is part of a larger litigation campaign against multiple other
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`accused infringers. It is anticipated that some or all the defendants in the related actions filed in
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`the Waco Division have or will also seek intra-district transfer to the Austin Division.3
`
`
`2
`References to numbered Exs. 2–9 refer to exhibits attached to Ex. 1 (Janice L. Ta Decl.).
`3
`See, e.g., Ocean Semiconductor LLC v Mediatek Inc., No. 6:20-cv-1210-ADA, Dkt. 17 at
`3 (W.D. Tex. May 4, 2021); Ocean Semiconductor LLC v. Silicon Labs. Inc., No. 6:20-cv-01214-
`ADA, Dkt. 34 (W.D. Tex. Aug. 20, 2021); Ocean Semiconductor LLC v. W. Digital Techs., Inc.,
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`-2-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 7 of 16
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`The original assignee of the asserted patents is Advanced Micro Devices (“AMD”), which
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`opened its Austin campus in 1979 as the company’s first U.S. chip manufacturing facility outside
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`of Silicon Valley. Ex. 3; Ocean’s Response to Renesas at 8. As acknowledged by Ocean, at least
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`six of the asserted patents were originally assigned to AMD in Austin, and eight of the named
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`inventors are Austin-based. Ocean’s Response to Renesas at 13 (“First, based on the faces of the
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`patents, six of the patented inventions were invented in this District at a company (AMD) that
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`continues to have a very large local presence . . . Eight of the named inventors on the patents
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`resulting from those inventions continue to reside in this District.”). AMD assigned the asserted
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`patents to Fullbrite Capital Partners LLC (“Fullbrite”), a Michigan limited liability company that
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`is headquartered in Michigan. Ex. 4. Fullbrite then assigned the asserted patents to Ocean, a
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`Delaware limited liability company. Id.
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`III.
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`STATEMENT OF THE LAW
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`“For the convenience of parties and witnesses, in the interest of justice, a district court may
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`transfer any civil action to any other district or division where it might have been brought.” 28
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`U.S.C. § 1404(a). Fifth Circuit precedent, which governs the transfer analysis here, “clearly
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`forbids treating the plaintiff’s choice of venue as a distinct factor in the § 1404(a) analysis.” In re
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`TS Tech USA Corp., 551 F.3d 1315, 1319–20 (Fed. Cir. 2008).
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`In determining whether transfer is appropriate, the Court must first consider “whether a
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`civil action ‘might have been brought’ in the destination venue.” See In re Volkswagen of Am.,
`
`Inc., 545 F.3d 304, 312 (5th Cir. 2008) (quoting § 1404(a)). If the answer to this threshold question
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`is yes, the Court must then weigh four private factors (1–4 below) and four public factors (5–8
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`below) to determine the relative convenience of each venue:
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`No. 6:20-cv-01216-ADA, Dkt. 25 at 3 (W.D. Tex. May 5, 2021); Ocean Semiconductor LLC v.
`Renesas Electronics Corp., No. 6:20-cv-1213-ADA, Dkt. 36 (W.D. Tex.).
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 8 of 16
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`(1) the relative ease of access to sources of proof; (2) the availability of compulsory
`process to secure the attendance of witnesses; (3) the cost of attendance for willing
`witnesses; (4) all other practical problems that make trial of a case easy, expeditious
`and inexpensive; (5) the administrative difficulties flowing from court congestion;
`(6) the local interest in having localized interests decided at home; (7) the
`familiarity of the forum with the law that will govern the case; and (8) the avoidance
`of unnecessary problems of conflict of laws [or in] the application of foreign law.
`
`
`In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013) (applying Volkswagen factors to intra-district
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`transfers). Where the analysis of the relevant factors shows the transferee forum to be “clearly
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`more convenient” than the plaintiff’s original choice, the court must order transfer. Id. As the
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`Fifth Circuit held in Radmax, “[t]he § 1404(a) factors apply as much to transfers between divisions
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`of the same district as to transfers from one district to another.” 720 F.3d 285, 288 (5th Cir. 2013).
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`There, the Fifth Circuit issued a writ of mandamus and reversed a denial of intra-district transfer
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`because “the case ha[d] no connection to the transferor forum and virtually all of the events and
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`witnesses regarding the case . . . [were] in the transferee forum.” Id. at 290. This District has
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`repeatedly recognized and applied the same principle, including in patent cases.4
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`IV.
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`THESE ACTIONS COULD HAVE BEEN BROUGHT IN THE AUSTIN DIVISION
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`The first question under § 1404(a) is whether the destination venue would have been a
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`proper venue for the lawsuit. Given that Ocean’s Complaint recognizes that ST Inc. has a place
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`of business in Austin, there can be no dispute that this case “might have been brought” there, as
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`4 See, e.g., Hammond Dev. Int’l, Inc. v. Amazon.com, Inc., No. 6:19-CV-00355-ADA, 2020 WL
`6136783 (W.D. Tex. Mar. 30, 2020); Datascape, Ltd v. Dell Techs., No. 19-CV-00129-ADA, ECF
`No. 44 (W.D. Tex. June 7, 2019) (citing In re Radmax, Ltd., 720 F.3d 285, 288-90 (5th Cir. 2013));
`see also, Mimedx Grp., Inc. v. Tex. Human Biologics, Ltd., No. 14-CV-00464-LY, 2014 WL
`12479284 (W.D. Tex. Aug. 12, 2014); Frac Shack Inc. v. Alaska Fuel Distribs. Inc., No. 18-CV-
`00660, ECF No. 28 (W.D. Tex. Jan. 29, 2019); McCloud v. McClinton Energy Grp., L.L.C., No.
`14-CV-00620-XR, 2014 WL 6388417 (W.D. Tex. Nov. 14, 2014); Eastep v. City of Odessa, No.
`17-CV-00059-LY, 2017 WL 2537358 (W.D. Tex. June 12, 2017); Cadle Co. v. Keyser, No. 14-
`CV-00758-LY, 2015 WL 764256 (W.D. Tex. Feb. 23, 2015).
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 9 of 16
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`
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`opposed to the Waco Division. Compl. ¶ 3; Mimedx, 2014 WL 12479284, at *1 (citing
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`Volkswagen, 545 F.3d at 312).
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`V.
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`THE TRANSFER ANALYSIS FAVORS THE AUSTIN DIVISION
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`Analyzing the Fifth Circuit’s enumerated factors demonstrates that litigating this case in
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`the Austin Division would clearly be more convenient than litigating in the Waco Division: four
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`factors favor transfer; four factors are neutral; and not a single relevant factor supports litigating
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`in Ocean’s chosen venue.
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`Factor
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`More Convenient
`Division
`Austin Division
`Neutral
`
`Austin Division
`Austin Division
`
`Neutral
`Austin Division
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`Neutral
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`Neutral
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`1. Relative ease of access to sources of proof
`2. Availability of compulsory process to secure
`the attendance of witnesses
`3. Cost of attendance for willing witnesses
`4. All other practical problems that make trial of a
`case easy, expeditious and inexpensive
`5. Administrative difficulties flowing from court congestion
`6. Local interest in having localized interests decided at
`home
`7. Familiarity of the forum with the law
`that will govern the case
`8. Avoidance of unnecessary problems of conflict of laws or
`in the application of foreign law
`
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`Accordingly, transfer to the Austin Division is appropriate. See Mimedx, 2014 WL 12479284 at
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`*2–3 (ordering transfer where four factors favored transfer, four were neutral, and none favored
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`plaintiff’s chosen venue); Datascape, Ltd. v. Dell Techs., Inc., No. 6:19-CV-00129-ADA, 2019
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`WL 4254069, at *3 (W.D. Tex. June 7, 2019) (three factors favored transfer, two were neutral, and
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`none weighed against transfer).
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 10 of 16
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`A.
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`The Private Interest Factors Favor Transfer
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`Three of the four private interest factors—relative ease of access to proof, cost of
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`attendance for willing witnesses, and expediency—favor transfer, while the availability of
`
`compulsory process is neutral.
`
`a.
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`Relative Ease of Access to Sources of Proof Strongly Favors
`Transfer
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`Access to sources of proof is easier in the Austin Division as compared to the Waco
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`Division. Evidence in a patent infringement case typically comes from the accused infringer. See
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`In re Nintendo Co., 589 F.3d 1194, 1199 (Fed. Cir. 2009). Here, the relevant parties possessing
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`technical documents are predominantly the named inventors, AMD, TSMC, ST Inc., and the
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`accused tool suppliers.
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`Technical documentation and witnesses relating to the accused tools are predominantly in
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`the tool suppliers’ control, and documents and witnesses relating to the use of the tools are in the
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`control of TSMC and other foundries that make the accused ST Inc. products. Mayo Decl. at ¶¶ 4,
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`5. None of the tool suppliers have locations in the Waco Division, but at least two of the four
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`suppliers have Austin locations—Applied Materials and ASML. Exs. 5, 6. Moreover, AMD, the
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`original assignee of five of the eight asserted patents, is located in the Austin Division, and, as
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`such, the majority of the named inventors also reside in the Austin Division. Exs. 3, 4; Ocean’s
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`Renesas Response at 1, 4, 8–10, 13.
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`It would be inefficient and inconvenient to force ST Inc. to defend itself in the Waco
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`Division regarding technology that ST Inc. neither designed nor developed, particularly where
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`litigating Ocean’s claims will require access to sources of proof from other parties and third parties
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`outside ST Inc.’s custody or control and outside of the Waco division. See McCloud v. McClinton
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`Energy Grp., L.L.C., No. 14-cv-620-XR, 2014 WL 6388417, *3 (W.D. Tex. Nov. 14, 2014)
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 11 of 16
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`(granting intra-district transfer even though “not ‘all’ the evidence” was in the transferee district,
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`but “certainly the bulk of it is” and plaintiff “point[ed] to no evidence in . . . or within the [transferor
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`division]”); Radmax, 720 F.3d at 288 (pertinent question is “relative ease of access” not “absolute
`
`ease of access”). Accordingly, as between Waco and Austin, this private interest factor weighs
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`heavily in favor of transfer.
`
`b.
`
`Convenience and Cost for Willing Witnesses Strongly Favors
`Transfer
`
`The convenience and cost of witness attendance is “the single most important factor in the
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`transfer analysis.” In re Genentech, 566 F.3d at 1343. The question is not whether “all of the
`
`witnesses” reside in the transferee forum, but whether a “substantial number” are there. Id. at
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`1345. When a substantial number of party and non-party witnesses live in the transferee forum,
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`while few live in the plaintiff’s chosen forum, transfer should be ordered. See id. at 1342–45;
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`Nintendo, 589 F.3d at 1198 (“This court has held and holds again in this instance that in a case
`
`featuring most witnesses and evidence closer to the transferee venue with few or no convenience
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`factors favoring the venue chosen by the plaintiff, the trial court should grant a motion to
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`transfer.”). A court should properly consider party and non-party witnesses when analyzing this
`
`factor. See In re Volkswagen AG , 371 F.3d 201, 204 (5th Cir. 2004) (“Volkswagen I”) .
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`As an initial matter, no witness with relevant knowledge is located in the Waco Division.
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`None of the plaintiff, defendant, named inventors, original assignees, accused tool suppliers, nor
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`foundries are located there. See Exs. 2–10. For the witnesses located in Austin, travel to Waco—
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`approximately 100 miles—would be inconvenient, force them to be away from work and families,
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`and impose additional time and expense. See Mimedx, 2014 WL 12479284 at *2 (eighty-mile
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`driving distance to Austin weighed in favor of transfer to San Antonio). These burdens are
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`unnecessary when this District has a courthouse in Austin. For those witnesses who are not based
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`-7-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 12 of 16
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`
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`in Austin, traveling to Austin is significantly more convenient than traveling to Waco. From most
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`locations, witnesses can fly directly to Austin, but would have to connect to Waco or drive there
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`from Dallas or Austin. This factor also strongly favors transfer.
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`c.
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`Other Practical Factors Favor Transfer
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`Other practical factors relate to the ease, expense, and expediency of trial. Volkswagen II,
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`545 F.3d at 315. Particularly, the existence of duplicative suits involving the same or similar issues
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`“is a paramount consideration when determining whether transfer is in the interest of justice.” In
`
`re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (“Volkswagen III”). As
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`discussed above, ST Inc. anticipates that all the defendants currently being sued by Ocean in the
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`Waco Division have or intend to request transfers to the Austin Division. See supra at 2 n.3.
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`This Court has only recently entered a scheduling order (Dkt. 34). Thus, transferring this
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`case to the Austin Division does not pose a risk of any meaningful delay, especially when the
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`Court can continue to control this case once transferred. See Mimedx, 2014 WL 12479284 at *2
`
`(finding transfer favorable because court had not yet entered a scheduling order); cf. Datascape,
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`2019 WL 4254069 at *3 (granting intra-district transfer even after defendant filed an answer and
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`counterclaims). Indeed, transfer to the Austin Division increases convenience to the parties and
`
`expediency because it focuses the litigation where evidence and most relevant Texas witnesses
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`reside. See Exs. 2–10. The added convenience of a trial in Austin instead of Waco would result
`
`in a more efficient, more cost-effective, and easier resolution of this dispute. See, e.g., Mimedx,
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`2014 WL 12479284 at *2. And because this Court can retain the case on its docket with the pretrial
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`proceedings and trial taking place in the Austin Division, there is no risk of judicial inefficiency
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`associated with the intra-district transfer. Accordingly, this private interest factor also favors
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`transfer.
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`-8-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 13 of 16
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`d.
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`Availability of Compulsory Process Is Neutral
`
`This factor addresses the availability of compulsory process to secure the attendance of
`
`witnesses, particularly non-party witnesses whose attendance may need to be secured by a
`
`subpoena pursuant to Rule 45. Volkswagen II, 545 F.3d at 216. A district court can command a
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`person to attend a deposition or trial within 100 miles of where they live or work, or statewide if
`
`they are a party witness. Fed. R. Civ. P. 45(c)(1)(A), 45(c)(1)(B)(i). For purposes of trial
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`attendance, a district court has subpoena power over non-party residents of the state in which the
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`district court sits, as long as their attendance would not result in “substantial expense.” Fed. R.
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`Civ. P. 45(c)(1)(B)(ii). Here, the compulsory subpoena power for unwilling third-party witnesses
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`is the same for both the Austin and Waco Divisions. Thus, this factor is neutral.
`
`B.
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`The Public Interest Factors Favor Transfer
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`On balance, the public interest factors also weigh in favor of transfer. Unlike Waco, Austin
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`has a stronger connection and local interest to these cases. The remaining factors such as court
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`congestion and familiarity with the law are neutral.
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`a.
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`Local Interest in Adjudicating Local Disputes Favors Transfer
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`Austin has a stronger local interest in this litigation than Waco, which has no relevant local
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`interest. Volkswagen I, 371 F.3d at 206 (“[J]ury duty is a burden that ought not to be imposed
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`upon the people of a community which has no relation to the litigation”). Not only does ST Inc.
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`have an office in Austin, Ex. 9, Austin also has a significant local interest in the original assignee,
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`AMD, which has a significant Austin presence. Ex. 3. Given that there are no meaningful ties to
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`the Waco Division and much stronger ties to the Austin Division, the local interest factor weighs
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`in favor of transfer.
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`-9-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 14 of 16
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`b.
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`Court Congestion, Familiarity with the Law, and Avoidance of
`Conflicts Factors Are Neutral
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`The remaining factors are neutral and do not weigh for or against transfer. Both Divisions
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`are familiar with and equally capable of applying federal patent laws, especially when there is no
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`change in presiding jurist. Regardless of the Division, neither would present a conflict of law or
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`require the application of foreign law. See TS Tech, 551 F.3d at 1320-21 (finding that the transferee
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`and transferor courts were both “capable of applying patent law to infringement claims.”). And to
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`ST Inc.’s knowledge, there are no administrative difficulties flowing from court congestion.
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`VI. CONCLUSION
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`This case has no ties to Waco. All the private and public factors either favor transfer or
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`are neutral. Accordingly, ST Inc. respectfully requests that the Court transfer this case to Austin.
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`-10-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 15 of 16
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`Dated: August 20, 2021
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`Respectfully submitted,
`
`/s/ Janice L. Ta
`Janice L. Ta, Texas 24075138
`JTa@perkinscoie.com
`Perkins Coie LLP
`500 West Second St., Suite 1900
`Austin, TX 78701
`
`Chad S. Campbell (admitted pro hac vice)
`CSCampbell@perkinscoie.com
`Tyler R. Bowen (admitted pro hac vice)
`TBowen@perkinscoie.com
`Perkins Coie LLP
`2901 North Central Avenue, Suite 2000
`Phoenix, AZ 85012
`
`Philip A. Morin (admitted pro hac vice)
`PMorin@perkinscoie.com
`Yudong Kim (admitted pro hac vice)
`YKim@perkinscoie.com
`Perkins Coie LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130-2020
`
`ATTORNEYS FOR DEFENDANT
`STMICROELECTRONICS, INC.
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`-11-
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`Case 6:20-cv-01215-ADA Document 37 Filed 08/20/21 Page 16 of 16
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(i), counsel for the parties have conferred and the plaintiff is
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`opposed to this motion.
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`By: /s/ Janice L. Ta
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`Janice L. Ta
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that, on August 20, 2021, all counsel of record who have appeared in this case are being served
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`with a copy of the foregoing via the Court’s CM/ECF system.
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`/s/ Janice L. Ta
`Janice L. Ta
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`-12-
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`