Case 6:21-cv-00501-ADA Document 46 Filed 02/07/22 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`ASETEK DANMARK A/S,
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`Plaintiff,
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`v.
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`SHENZHEN APALTEK CO., LTD., A/K/A
`SHENZHEN ANG PAI TECHNOLOGY CO.,
`LTD., and GUANGDONG APALTEK LIQUID
`COOLING TECHNOLOGY CO., LTD., A/K/A
`GUANGDONG ANG PAI LIQUID COOLING
`TECHNOLOGY CO., LTD., OR DONGGUAN
`APALCOOL,
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`Defendants.
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`Civil Action No. 6:21-cv-00501-ADA
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`JURY TRIAL DEMAND
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`DEFENDANTS’ REPLY TO OPPOSITION TO MOTION TO TRANSFER VENUE
`PURSUANT TO 28 U.S.C. § 1404(a), OR IN THE ALTERNATIVE TO STAY
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`PUBLIC VERSION
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`Case 6:21-cv-00501-ADA Document 46 Filed 02/07/22 Page 2 of 8
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`The parties agree that this case could have been brought in the Northern District of
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`California. ECF 37 at 2. But despite having filed or defended 7 cases in Northern California—
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`and preparing for a jury trial in less than six months—Asetek insists that this case should proceed
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`in the Western District of Texas because for this case only Waco is more convenient than San Jose.
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`Asetek prefers to be in West Texas because “we believe it will be quicker” and the venue
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`“will suit [COO John Hamill] personally”: “I am exercising my prerogative.” Supplemental
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`Declaration of David S. Bloch (“2d Bloch Dec.”) ¶ 2, Ex. 1 (“Hamill”) at 47:6-14, 48:12, 51:8-10,
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`51:23-24. But appellate courts “forbid treating the plaintiff’s choice of venue as a factor in the
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`analysis of a request to transfer.” In re Nintendo Co., 589 F.3d 1194, 1200 (Fed. Cir. 2009). And
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`Asetek’s urgency to get to trial is belied by the fact that it wants to stay the Cooler Master case in
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`California. 2d Bloch Dec. ¶ 3, Ex. 2 at 5 (“Asetek intends to file a motion to stay this case”).
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`* * *
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`Patent law is uniform nationwide and there are no issues relating to conflict of laws or the
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`application of foreign law. All other factors favor Northern California.
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`The Northern District of California’s local interest. The “local interest” factor “focuses
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`on the ‘factual connection’ a case has with both the transferee and transferor venues.” In re
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`Volkswagen of Am., Inc., 545 F.3d 304, 318 (5th Cir. 2008). “[A] jurisdiction where a party’s
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`principal place of business is located does have a particularized interest in the suit’s outcome,” so
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`“if a court finds a jurisdiction is ‘clearly the center of gravity with respect to the witnesses and
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`parties to this case, this factor weighs in favor of transfer.’” Corel Corp. v. Dell Inc., 2013 WL
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`12091649, at *4 (W.D. Tex. July 25, 2013) (citation omitted; emphasis original). Asetek’s U.S.
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`headquarters and only U.S. office is in San Jose, California. 2d Bloch Dec. ¶ 4, Ex. 3; Hamill at
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`14:20-15:22. Even during COVID, it has remained open for business. Hamill at 16:23-17:3. At
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`Case 6:21-cv-00501-ADA Document 46 Filed 02/07/22 Page 3 of 8
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`least 8 Asetek employees work at or regularly visit Asetek’s San Jose office. Id. at 18:19-19:1,
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`40:16-41:5. Of them, three (Branton, Pangburn, and Westfall; id. at 20:7-9, 26:23-25, 39:7-20)
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`have been deposed in other Asetek cases in Northern California or are identified as prospective
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`witnesses in currently-pending litigation (2d Bloch Dec. ¶ 5, Ex. 4); two more (Castro and Sanders;
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`Hamill at 22:4-16, 35:21-36:7) work specifically on the technology in Asetek’s asserted patents;
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`and still two others (Hsieh and Park; id. at 24:10-14, 34:11-17) work across all of Asetek’s product
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`lines, including the allegedly patent-practicing ones. These people manifestly possess discoverable
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`information. Id. at 29:7-22, 30:18-31:1. Other Asetek executives, such as COO Hamill, CFO
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`Madsen, and CEO/inventor Eriksen, have made multiple trips to the San Jose office. Id. at 18:3-
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`7, 21:2-7, 54:12-17, 60:1-7. When Asetek products are shipped to the U.S., they go to a rented
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`hub in Southern California or a facility in New Mexico. Id. at 11:10-15, 62:22-64:2.
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`By contrast, Asetek does not have a Texas office and does not pay for the home offices of
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`its two Austin-based employees. Id. at 8:8-21, 39:3-4. And of course the question is where Asetek
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`has a regular and established place of business—“not where [Asetek’s] employee owns a home in
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`which he carries on some of the work that he does for [Asetek].” In re Cray Inc., 871 F.3d 1355,
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`1363, 1365 (Fed. Cir. 2017). Asetek only has one place of business in America: San Jose.
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`Docket congestion. Asetek says that this Court is less congested or more efficient than the
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`Northern District of California—or was in May 2021. ECF 37 at 7. But the Court’s orders denying
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`transfer in Juniper and Google issued in June and July 2021. WSOU Investments, LLC v. Juniper
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`Networks, Inc., W.D. Tex. Case No. 6:20-cv-00812-ADA, ECF 91; Jenam Tech, LLC v. Google
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`LLC, W.D. Tex. Case No. 6:20-cv-00453-ADA, ECF 95. Both were reversed because the Northern
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`California courts are not comparatively more congested than the Western District of Texas. In re
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`Juniper Networks, Inc., 2021 U.S. App. LEXIS 29036, at *19 (Fed. Cir. Sep. 24, 2021); In re
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`Case 6:21-cv-00501-ADA Document 46 Filed 02/07/22 Page 4 of 8
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`Google LLC, 2021 U.S. App. LEXIS 30052, at *17 (Fed. Cir. Oct. 6, 2021). May 2021 was not
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`the exception to a rule that the Federal Circuit has been emphasizing since mid-2020. In re Adobe
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`Inc., 823 F. App'x 929 (Fed. Cir. 2020); In re Apple, Inc., 979 F.3d 1332 (Fed. Cir. 2020).
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`Sources of proof. Asetek claims that relative access to sources of proof is a neutral factor.
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`While Apaltek’s customers may sell Apaltek products nationwide, their only U.S. locations (which
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`presumably host their shipping records) are clustered on the West Coast. ECFs 30-10 (MSI), 30-
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`36 (Thermaltake), 30-37 (Enermax); accord, ECF 37-8 at 3 (Enermax). This supports moving the
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`case to California. Affinity Labs of Tex., LLC v. Blackberry Ltd., 2014 U.S. Dist. LEXIS 185024,
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`at *18-20 (W.D. Tex. June 11, 2014) (location of non-party’s documents regarding accused
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`products favors transfer). While Asetek claims that its “most important” documents are all “in the
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`cloud,” its jurisdictional witness Mr. Hamill saw loose papers and file cabinets in at least four San
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`Jose offices (Hamill at 23:21-25, 25:21-26:2, 33:2-10, 34:23-25) and couldn’t say what those
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`documents contain (id. at 24:1-5, 26:3-5, 33:13-19, 68:19-69:16). The presence of these paper
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`records from Asetek and third parties favors transfer to the Northern District of California
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`Non-party witnesses. “Courts properly give more weight to the convenience of non-party
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`witnesses than to party witnesses.” Micropairing Techs. LLC v. Toyota Motor Mfg. Tex., 2021
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`U.S. Dist. LEXIS 190585, at *9 (W.D. Tex. Oct. 1, 2021). The San Francisco Bay Area is a more
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`convenient location for all of the identified non-party witnesses. Bay Area-based former Asetek
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`employee Rao’s responsibilities covered “all of Asetek’s business,” Hamill at 30:14-17, and he
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`was identified as a person with knowledge in Northern California in 2019. 2d Bloch Dec. ¶ 5, Ex.
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`4. He still lives and works in the San Jose area. Hamill at 32:13-14. Asetek says he has agreed
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`to testify in Waco. ECF 37 at 12 n. 5. But his agreement does not change the fact that his home
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`jurisdiction of San Jose is more convenient. Many other Asetek ex-employees, executives, and
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`Case 6:21-cv-00501-ADA Document 46 Filed 02/07/22 Page 5 of 8
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`Board members—people with discoverable information dating back to 2010-2012, when the
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`patents-in-suit were being applied for and issued—were or are still in the Bay Area. Hamill at
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`53:5-9, 55:7-11, 56:1-3, 57:7-14, 59:11-14 (Chambers, Garcia, Szteibaum, Alyaser, and Vesei).
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`Domestic witnesses from Apaltek’s primary customers, the importers of the accused products, also
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`would be located in California. ECFs 30-10, 30-36, 30-37, ECF 37-8 at 3. By contrast Asetek has
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`identified no third-party witnesses in Texas.
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`Cost of attendance of willing witnesses. Although two Asetek employees now work from
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`“home offices in Texas,” 2d Bloch Dec. Ex. 3, both have previously been deposed in the San
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`Francisco Bay Area (Hamill at 39:12-40:1) and the remaining six employees identified in
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`Apaltek’s motion to transfer reside in the Bay Area. 2d Bloch Dec. Ex. 3. Asetek’s CEO and
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`inventor, Eriksen, has testified at Bay-Area depositions and in-person to a Northern California
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`jury. Hamill at 60:8-24. It is no hardship for him to travel to Northern California, and Asetek’s
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`own documents confirm that San Francisco is more convenient than Austin for a witness traveling
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`from Copenhagen. Compare ECF 37-11 (twelve flights to San Francisco, starting at $891) with
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`ECF 37-12 (two flights to Austin, each $1951). Also, while Asetek makes no effort to quantify the
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`additional inconvenience of traveling from Austin to Waco, even Hamill’s home office in Cedar
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`Park is closer to Austin than to Waco. Hamill at 7:24-8:5 (an hour from Austin, ninety minutes
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`from Waco). Asetek says, self-servingly, that it only plans to call its Denmark- and Texas-based
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`employees to testify. ECF 37-1 ¶¶ 1-2. Yet multiple Northern California-based witnesses were
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`deposed in prior cases and have been identified by Asetek as having relevant knowledge.
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`Practical problems. Multiple courts have transferred Asetek cases to the Northern District
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`of California at Asetek’s request. ECFs 30-23, 30-27. And as recently as September 2020, Asetek
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`was asserting its patents in Northern California. ECF 30-31 at 27 (signed Sept. 17, 2020). This
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`Case 6:21-cv-00501-ADA Document 46 Filed 02/07/22 Page 6 of 8
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`case cannot be adjudicated without the context of Asetek’s many other cases in light of possible
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`estoppel and related issues. Asetek suggest that estoppel issues are “purely conjectural.” ECF 37
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`at 6. But in the days after Asetek filed its opposition to this motion, the Northern District of
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`California allowed the defendants in CoolIT to add defenses of collateral and judicial estoppel
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`because the district judge recognized Asetek had taken inconsistent infringement positions in
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`CoolIT and another case, CMI USA. 2d Bloch Dec. ¶ 6, Ex. 5. The decision demonstrates the depth
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`of the Northern District of California’s institutional knowledge of the Asetek portfolio:
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`“Defendants’ arguments have merit. Asetek arguably asserts a broader infringement theory at the
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`CMI USA Inc. hearing than that disclosed in the SAIC. This arguable change in infringement
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`theory provides good cause for the amendment sought by CoolIT, as it was this hearing which
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`alerted CoolIT that Asetek might take a new position.” Id. at 8. This is why Asetek should have
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`filed in San Jose—and why it did not.
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`* * *
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`Alternatively, stay this case. The estoppel order also underscores the wisdom of waiting
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`till CoolIT is over before revving up proceedings here. All factors favor a stay: (1) This case is in
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`its infancy, with no discovery and no trial date; (2) the CoolIT jury will decide whether the ’362
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`patent-in-suit is valid; and (3) notwithstanding its assertion that it is suffering ongoing harm,
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`Asetek’s failure to seek a preliminary injunction in this case, its request for a stay in CMI USA (2d
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`Bloch Dec. Ex. 2), and the availability of money damages confirms that it would suffer no
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`prejudice from a stay till after the CoolIT trial this summer. Kirsch Research & Dev., LLC v. Iko
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`Indus., Inc., 2021 U.S. Dist. LEXIS 191684 (W.D. Tex. Oct. 4, 2021). If not transferred, the Court
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`should stay this case.
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`Case 6:21-cv-00501-ADA Document 46 Filed 02/07/22 Page 7 of 8
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`Dated: January 31, 2022
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`Respectfully submitted,
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`GREENBERG TRAURIG LLP
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`/s/ C. Mark Stratton
`C. Mark Stratton
`Texas Bar No. 19359200
`Email: strattonm@gtlaw.com
`Janis E. Clements
`Texas Bar No. 04365500
`Email: clementsj@gtlaw.com
`Joseph W. Shaneyfelt
`Texas Bar No. 24105406
`Email: shaneyfeltj@gtlaw.com
`300 West 6th Street, Suite 2050
`Austin, Texas 78701
`Tel: (512) 320-7200
`Fax: (512) 320-7210
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`Kyle D. Chen (admitted pro hac vice)
`Email: kchen@gtlaw.com
`1900 University Ave, Fl 5
`Palo Alto, CA 94303-2283
`Tel: (650)-289-7887
`Fax: (650)-328-8508
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`David S. Bloch (admitted pro hac vice)
`Email: blochd@gtlaw.com
`Four Embarcadero Center, Suite 3000
`San Francisco, CA 94111
`Tel: (415) 590-5110
`Fax: (415) 707-2010
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`ATTORNEYS FOR DEFENDANTS
`Shenzhen Apaltek Co., Ltd., a/k/a Shenzhen Ang Pai
`Technology Co., Ltd., and Guangdong Apaltek
`Liquid Cooling Technology Co., Ltd., a/k/a
`Guangdong Ang Pai Liquid Cooling Technology
`Co., Ltd., or Dongguan Apalcool
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`Case 6:21-cv-00501-ADA Document 46 Filed 02/07/22 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing document was electronically
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`filed with the Court and that counsel of record, who are deemed to have consented to electronic
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`service in the above-referenced case, are being served this 31st day of January, 2022, with a copy
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`of the above-document via the Court’s CM/ECF System.
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`/s/ C. Mark Stratton
`C. Mark Stratton
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