Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 1 of 9
`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 1 of 9
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`FILED UNDER SEAL
`FILED UNDER SEAL
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`EXHIBIT 1
`EXHIBIT 1
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`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 2 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`TOUCHSTREAM TECHNOLOGIES,
`INC.
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`Plaintiff,
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`v.
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`GOOGLE LLC
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`Defendant.
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`Civil Action No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`TOUCHSTREAM’S SUR-REPLY IN OPPOSITION TO GOOGLE’S MOTION TO
`TRANSFER VENUE
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`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 3 of 9
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`I.
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`INTRODUCTION
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`Google has already fallen far short of its burden to prove that the Northern District of
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`California is a clearly more convenient forum for the parties. Now, in response to Touchstream’s
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`abundant proof of this case’s ties to WDTX, Google lodges a last-ditch request for intra-district
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`transfer to Austin—even though the parties did not conduct venue discovery or briefing on that
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`issue. The Court should decline to hear this tardy request, or alternatively should deny it and let
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`the case proceed here in WDTX where it has been moving forward for almost a year.
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`Google’s request not only reflects the strength of Touchstream’s argument that this case
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`belongs in WDTX, but also evinces Google’s true goal: to delay a trial on the merits that now
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`looms less than ten months away. Indeed, after waiting more than six months to file its inter-district
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`transfer motion, Google waited another four months—until after venue discovery closed—to
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`request intra-district transfer to Austin. The Court should deny Google’s request due to this
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`delay—as well as the unfair prejudice to Touchstream of dealing with a second belated transfer
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`request after Google has already raised, litigated, and fallen short on its initial transfer gambit.
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`But Google’s request also fails on the merits. Put simply, Waco is a more appropriate venue
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`for this case than Austin. While it is true that most of Google’s relevant witnesses reside in Austin,
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`most of the non-party witnesses reside in Dallas. Conveniently, Waco is about halfway between
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`Dallas and Austin and lies within 100 miles of each (and thus within the subpoena limits of Rule
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`45(c)(1)(A)). In contrast, Austin is far less convenient for the Dallas witnesses—over a three-hour
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`drive, and nearly 200 miles away. These facts alone compel keeping this case in Waco.
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`Further, transfer to Austin would prejudice Touchstream and waste judicial resources. This
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`case has been pending for nearly a year, and the parties have complied with the Court’s contention
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`requirements, venue discovery rules, and interim protective order. The parties have also followed
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`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 4 of 9
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`this Court’s guidelines for claim construction briefing, which was completed more than three
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`months ago, and have been negotiating ESI and protective orders based on this Court’s default
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`orders for many months. Google still has a partial 12(b)(6) motion pending before this Court. There
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`is no reason at this stage―just over nine months from trial―to transfer to Austin, which would
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`require spending both time and money bringing a new court up to speed, as well as adjusting to
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`new rules and procedures. Google’s request should be denied.
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`II.
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`ARGUMENT
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`A.
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`Google’s request for transfer to Austin should be denied due to Google’s delay.
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`As Touchstream pointed out in its opposition brief, significant delay in requesting transfer
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`supports denial. Dkt. 46 at 12-13. Google still provides no excuse for its prejudicial delay, nor any
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`contrary case law. Dkt. 61. While Google delayed its transfer motion to NDCA by around six
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`months, its new request for intra-district transfer to Austin comes almost a full year after this case
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`was filed. Notably, Google waited until after venue discovery had closed on Google’s request for
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`inter-district transfer—and after Touchstream proved there are significant connections to
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`WDTX—before making its belated intra-district transfer request, which is pieced together from
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`discovery conducted on a different issue not disclosed to Touchstream. Unsurprisingly, during
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`venue discovery, Touchstream was focused on Google’s connections to WDTX generally, rather
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`than to Waco specifically. Google’s decision to wait until after the close of venue discovery
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`deprives Touchstream of the ability to fully explore why Waco is a more appropriate venue than
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`Austin, and Google’s request should be denied on this basis alone.
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`B. Waco is far more convenient when considering all of the relevant Texas
`witnesses.
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`Setting aside whether an hour-and-a-half drive from Austin to Waco is truly such an
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`inconvenience for Google’s employees that it merits intra-district transfer, the evidence shows that
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`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 5 of 9
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`Austin is far from a “clearly more convenient” venue when considering all of the witnesses.
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`Predictably, Google’s transfer request to Austin focuses only on convenience for Google’s
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`witnesses and ignores the many non-party witnesses located in Dallas, including:
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`
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`
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`meetings (
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`, the Touchstream consultant who attended Touchstream-Google
` Texas, just north of Dallas);1
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`Texas);2
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` who helped Touchstream’s initial hospitality launch (Dallas,
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` Witnesses associated with
`partnerships and
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` who Touchstream pursued heavily for
` (Dallas, Texas);3
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` Witnesses associated with
`who is
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`, who Touchstream also pursued and
` (Dallas, Texas);4
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` Witnesses associated with
`hospitality product (Dallas, Texas);5 and
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` where Touchstream first debuted its
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` Witnesses associated with
`, one of Touchstream’s major business
`partners (with relevant personnel in Dallas, Texas).6
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`Compulsory process will likely be required to secure attendance of these witnesses at trial, and
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`only Waco―which is roughly 90 miles from Dallas―is within the 100-mile subpoena radius of
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`Rule 45(c)(1)(A). The Austin courthouse, by contrast, is nearly 200 miles from Dallas.7
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`Even if these third-party witnesses are willing, Waco is the most convenient place for trial:
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`Waco is almost exactly halfway between Austin and Dallas, and about an hour-and-a-half drive
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`1 Ex. A at 25:12-15; Dkt. 46, Ex. B at 16.
`2 Ex. A at 53:10-54:7.
`3 Ex. A at 78:11-79:15; Dkt. 50 at 3.
`4 Dkt. 46, Ex. J at 98:5-17.
`5 Ex. A 55:8-56:3.
`6 Ex. A at 60:2-6 (“Q. So they hired, you know, sales executives from around the country,
`Atlanta, Dallas,
` in LA, to handle their sales within the United States? A. Correct…”).
`7 Dec., ¶ 6.
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`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 6 of 9
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`from each.8 In contrast, the Austin courthouse is nearly a 3-hour drive each way.9There are also
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`several relevant witnesses in Houston, including one of Touchstream’s lead programmers and
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`various knowledgeable personnel from
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` (which was Touchstream’s largest
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`business partner, generating
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` in revenue).10 Waco is no more inconvenient for
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`Houston witnesses than Austin, with each city almost exactly a three-hour drive from Houston.11
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`Finally, the
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`—25 miles south of
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`Dallas. Although Google’s Rule 30(b)(6) witness was unable to testify as to whether
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`12 if any Chromecast-related documents or data are ultimately
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`found to reside in Texas, they will be closer to Waco than to Austin.
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`C.
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`Transfer to Austin would unfairly prejudice Touchstream and negate judicial
`economy.
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`Transfer to Austin after Google’s significant delay would prejudice Touchstream and
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`obviate much of the work this Court, and the parties, have already done in this case during
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`Google’s unexplained delay. This case is at an advanced stage. Fact discovery closes in just four
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`months, and trial is less than a year away. This Court has already gained familiarity with the case
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`through Google’s pending 12(b)(6) motion on willful infringement, through resolving venue
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`discovery disputes, and through the parties’ claim construction briefing. The parties have already
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`expended significant resources under this Court’s rules, including this Court’s early deadlines for
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`8 Bergsten Dec., ¶¶ 4-5.
`9 Dec., ¶ 6.
`10 Dkt. 46 at 8.
`11 Dec., ¶¶ 7-8.
`12 Dkt. 46, Ex. A at 185:2-18
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`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 7 of 9
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`infringement and invalidity contentions and for claim construction briefing. Google has benefitted
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`from receiving the early infringement contentions required by this Court, and Touchstream should
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`not now be denied the benefit of this Court’s efficient trial schedule. If this case is transferred to
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`Austin, delay is all but inevitable given the need for a new judge to review the status of the case,
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`read the claim construction briefs, and set a new schedule (including finding a time for trial). All
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`of this prejudice is the result of Google’s delay—first in requesting inter-district transfer, then in
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`its 11th-hour request for intra-district transfer. The Court should deny Google’s intra-district
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`transfer request accordingly.
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`III. CONCLUSION
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`Google has failed to timely request transfer to Austin, and has failed to meet its burden to
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`show that either the NDCA or Austin is a “clearly more convenient” forum for this dispute.
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`Accordingly, Touchstream respectfully requests that the Court deny Google’s Motion to Transfer
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`Venue.
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`Date: May 4, 2022
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`Respectfully submitted,
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`SHOOK, HARDY & BACON L.L.P.
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`/s/ Jordan T. Bergsten
`Jordan T. Bergsten, pro hac vice
`B. Trent Webb, pro hac vice
`Ryan D. Dykal, pro hac vice
`Samuel J. LaRoque, pro hac vice
`Shook, Hardy & Bacon, LLP
`2555 Grand Boulevard
`Kansas City, MO 64108
`(816) 474-6550/F: (816) 421-5547
`Email: slaroque@shb.com
`Email: bwebb@shb.com
`Email: rdykal@shb.com
`Email: jbergsten@shb.com
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`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 8 of 9
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`Fiona A. Bell (TX Bar No. 24052288)
`Shook, Hardy & Bacon LLP
`600 Travis Street, Suite 3400
`Houston, TX 77002
`(713) 227-2008/F: (713)-227-9508
`Email: fbell@shb.com
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`Counsel for Plaintiff
`Touchstream Technologies, Inc.
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`Case 6:21-cv-00569-ADA Document 59 Filed 05/11/22 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`I hereby certify that the foregoing was electronically filed with the Clerk of the Court using
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`the CM/ECF system, which will send a notification of such filing (“NEF”) to all counsel of record
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`who have appeared in this case per Local Rule CV-5(b) on May 4, 2022.
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` /s/ Jordan T. Bergsten
` Attorney for Plaintiff
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