Case 6:21-cv-00603-ADA Document 135 Filed 08/28/23 Page 1 of 24
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`SMART MOBILE TECHNOLOGIES
`LLC,
` Plaintiff
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`-vs-
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`APPLE INC.,
` Defendant
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`W-21-CV-00603-ADA
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`ORDER GRANTING DEFENDANT’S MOTION TO TRANSFER
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`Before the Court is Defendant Apple Inc.’s (“Apple”) Motion to Transfer Venue to the
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`Northern District of California. ECF No. 29. Plaintiff Smart Mobile Technologies LLC (“Smart
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`Mobile”) opposes the motion. ECF No. 95. Apple filed a reply to further support its motion. ECF
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`No. 104. After careful consideration of the parties’ briefs and the applicable law, the Court
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`GRANTS Apple’s motion to transfer venue to the Northern District of California.
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`I.
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`FACTUAL BACKGROUND
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`In its complaint, Smart Mobile claims Apple infringes of U.S. Patent Nos. 8,442,501 (the
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`“’501 patent”), 8,472,936 (the “’936 patent”), 9,472,937 (the “’937 patent”), 8,761,739 (the “’739
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`patent”), 8,824,434 (the “’434 patent”), 8,842,653 (the “’653 patent”), 8,982,863 (the “’863
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`patent”), 9,019,946 (the “’946 patent”), 9,049,119 (the “’119 patent”), 9,191,083 (the “’083
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`patent”), 9,319,075 (the “’075 patent”), 9,614,943 (the “’943 patent”), and 9,756,168 (the “’168
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`patent”) (collectively, the “asserted patents”). Id. ¶ 1−15. The ’501, ’936, ’937, ’739, ’119, and
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`’168 patents are directed to “improved wireless communication systems and devices having voice
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`and data communication capability, the capability to switch dynamically between wireless
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`networks, and the capability of communicating with a server than enhances the functionality of the
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`Case 6:21-cv-00603-ADA Document 135 Filed 08/28/23 Page 2 of 24
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`devices.” Id. ¶ 24. The ’434, ’653, ’863, ’946, ’083, ’075, and ’943 patents are directed to
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`“enhancements to mobile device communications functionality.” Id. ¶ 24.
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`Smart Mobile, the owner of the asserted patents, is a limited liability company organized
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`under the laws of Delaware. Id. ¶ 17. Smart Mobile’s principal place of business is in Austin,
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`Texas. Id. Apple is a corporation organized under the laws of California. Id. ¶ 18. Apple has at
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`least one regular and established place of business in this District. Id. According to Smart Mobile,
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`Apple sells products that infringe the asserted patents, including the iPhone smartphone, iPad
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`tablet, and Apple Watch. Id. ¶ 36. The Court will refer to these products as the “accused products.”
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`Along with this case, Smart Mobile filed an action against Samsung Electronics Co. Ltd.,
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`Inc. and Samsung Electronics America, Inc. Smart Mobile Technologies LLC v. Samsung
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`Electronics Co. Ltd., Inc. et al., No. 6:21-cv-701-ADA (W.D. Tex. July 2, 2021), ECF No. 1
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`[hereinafter “Samsung Litigation”]. The Samsung Litigation involves many of the same patents
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`that are asserted in this case.
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`After responding to Smart Mobile’s complaint, Apple filed this motion to transfer. ECF
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`No. 29. Apple does not argue that the Western District of Texas (“WDTX”) is an improper venue
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`for this case; instead, it argues that the Northern District of California (“NDCA”) is a more
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`convenient forum, pointing to the location of potential witnesses and the relevant records in
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`California. Id. at 1. Smart Mobile contends that this case should remain in the WDTX, pointing to,
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`among other factors, Smart Mobile’s witnesses and evidence in Texas. ECF No. 95 at 1, 3, 8.
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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—here, the Fifth Circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed.
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`Cir. 2008). 28 U.S.C. § 1404(a) provides in part that “[f]or the convenience of parties and
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`witnesses, . . . a district court may transfer any civil action to any other district or division where
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`it might have been brought . . . ” Id. “Section 1404(a) is intended to place discretion in the district
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`court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration
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`of convenience and fairness.’” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting
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`Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)).
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`The preliminary question under § 1404(a) is whether a civil action “‘might have been
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`brought’ in the destination venue.” In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir. 2008)
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`[hereinafter Volkswagen II]. If the destination venue would have been a proper venue, then “[t]he
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`determination of ‘convenience’ turns on a number of public and private interest factors, none of
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`which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358
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`F.3d 337, 340 (5th Cir. 2004) (footnote omitted). The private interest 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 (5th Cir. 2004) [hereinafter Volkswagen I] (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. Courts evaluate
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`these factors based on the situation which existed at the time of filing, rather than relying on
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`hindsight knowledge of the defendant’s forum preference. Hoffman v. Blaski, 363 U.S. 335, 343
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`(1960).
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`The moving party has the burden to prove that a case should be transferred for convenience.
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`Volkswagen II, 545 F.3d at 314. The burden is not simply that the alternative venue is more
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`convenient, but that it is clearly more convenient. Id. at 314–15. While “clearly more convenient”
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`is not the same as the “clear and convincing” standard, the moving party must still show more than
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`a mere preponderance. Quest NetTech Corp. v. Apple, Inc., No. 2:19-cv-118, 2019 WL 6344267,
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`at *7 (E.D. Tex. Nov. 27, 2019). Yet, the Federal Circuit has clarified that, for a court to hold that
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`a factor favors transfer, the movant need not show an individual factor clearly favors transfer. In
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`re Apple Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020).
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`III. DISCUSSION
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`The threshold determination in the § 1404(a) analysis is whether this case could initially
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`have been brought in the destination venue—the NDCA. Apple argues that the threshold
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`determination is met because Apple resides in the NDCA. No. 29 at 8. Smart Mobile does not
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`address the threshold determination. ECF No. 95. Because Apple has shown that venue is proper
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`in the NDCA, the Court determines that the threshold determination is met. Because the threshold
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`determination is met, the Court now analyzes the private and public interest factors to determine
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`whether the NDCA is a clearly more convenient forum than the WDTX.
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` The Private Interest Factors
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`The Cost of Attendance and Convenience for Willing Witnesses
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`The most important factor in the transfer analysis is the convenience of the witnesses. In
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`re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). According to Fifth Circuit law, if the
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`distance between a current venue and a proposed venue is more than 100 miles, the inconvenience
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`to witnesses increases in direct relationship to the additional distance they must travel if the matter
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`is transferred. Volkswagen II, 545 F.3d at 317. But it is unclear when the 100-mile rule applies, as
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`the Federal Circuit has stated that courts should not apply the rule “rigidly” in cases where
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`witnesses would be required to travel a significant distance no matter what venue they testify in.
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`In re Apple, 979 F.3d at 1342 (discussing witnesses traveling from New York) (citing Volkswagen
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`II, 545 F.3d at 317). “[T]he inquiry should focus on the cost and inconvenience imposed on the
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`witnesses by requiring them to travel to a distant forum and to be away from their homes and work
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`for an extended period of time.” In re Google, LLC, No. 2021-170, 2021 WL 4427899, at *4 (Fed.
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`Cir. Sept. 27, 2021). According to the Federal Circuit, time is a more important metric than
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`distance. Id. However, the Federal Circuit has also held that when willing witnesses will have to
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`travel a significant distance to either forum, the slight inconvenience of one forum in comparison
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`to the other should not weigh heavily on the outcome of this factor. In re Apple, 979 F.3d at 1342.
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`Apple argues that this factor favors transfer because nine of Apple’s likely witnesses reside
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`in the NDCA. ECF No. 29 at 11. Apple’s NDCA-based employees include: (1) Cristoph Paasch,
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`a Software Development Engineer knowledgeable about the research and design of multipath TCP
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`(“MPTCP”) functionality of the accused products; (2) Anumita Biswas, a Software Development
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`Engineer Manager knowledgeable about the research, design, and development of MPTCP
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`implementation in Siri; (3) Max Ball, a Software Development Engineer knowledgeable about the
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`research, design, and development of MPTCP implementation in Maps; (4) John Su, an
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`Engineering Manager knowledgeable about the research, design, and development of MPTCP
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`implementation in Music; (5) Welly Kasten, a Software Development Engineer Manager
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`knowledgeable about the integration of MIMO functionality over WiFi in Broadcom’s chipsets in
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`the accused products; (6) Pashant Vashi, a Software Engineering Manager knowledgeable about
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`the integration of MIMO functionality in Qualcomm’s chipsets in the accused products; (7) Wiley
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`Hodges, a Product Management Director knowledgeable about the marketing of the accused
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`products; (8) Jayna Whitt, a Principal Counsel knowledgeable about Apple’s licensing of
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`intellectual property for the accused products; and (9) Mark Rollins, a Finance Manager
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`knowledgeable about Apple’s sales and financial information for the accused products. Id. at 3−4.
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`Apple also identifies one witness in Seattle, Washington: John Eckles, a Site Reliability
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`Engineering Manager knowledgeable about the research, design, and development of the MPTCP
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`implementation in Siri. Id. at 3. Apple argues that none of its witnesses work in Texas or work
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`with anyone in Texas. Id. at 11. Apple argues that its witnesses would incur significantly greater
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`travel time, distance, and expense if required to attend trial in Waco. Id. Apple argues that the
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`convenience of its witnesses cannot be discounted just because these witnesses are employees of
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`a party. Id.
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`In response, Smart Mobile does not dispute the relevance of Apple’s witnesses. ECF No.
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`95 at 8. Instead, Smart Mobile argues that Apple exaggerates the inconvenience for its NDCA-
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`based and Washington-based employees. Id. Smart Mobile argues that the WDTX is not an
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`inconvenient forum for these employees because “additional expense associated with travel and
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`lodging would be borne by Apple, a multi-billion dollar company, rather than individual
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`employees.” Id. Smart Mobile also argues that Apple’s employees can remain productive while in
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`Texas because they can work in Apple’s Austin offices. Id.
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`The Court rejects Smart Mobile’s argument that this factor does not favor transfer because
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`Apple’s NDCA-based and Washington-based employees will not have to pay the cost of attending
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`trial in the WDTX. Even though Apple will likely bear the cost for these employees to attend trial,
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`these employees will still suffer “the personal costs associated with being away from work, family
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`and community.” Volkswagen II, 545 F.3d at 317. And the Federal Circuit has held that this factor
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`should not be afforded less weight when the witnesses are party witnesses. In re Juniper Networks,
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`Inc., 14 F.4th 1313, 1319 (Fed. Cir. 2021). Further, Apple will still incur the additional expense of
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`airfare, meals, and lodging for these employees. In re Acer Corp., 626 F.3d 1252, 1255 (Fed. Cir.
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`2010). The Court also rejects Smart Mobile’s argument that this factor does not favor transfer
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`because Apple’s NDCA-based and Washington-based employees can use Apple’s Austin offices
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`while attending trial in Waco. While Apple’s employees may be able to use Apple’s Austin offices
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`while in Texas to testify at trial, they would still face the personal costs of being away from their
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`homes and families for an extended period of time. The Court finds that the presence of ten
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`identified Apple employees in the NDCA and Washington weigh in favor of transfer. Smart
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`Mobile does not dispute the relevance of these Apple employees. Further, the identified Apple
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`employees would find the NDCA a more convenient forum.
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`Apple also argues that Smart Mobile’s place of business in this District does not weigh
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`against transfer because the asserted patents were previously owned by different entities all located
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`in the NDCA. ECF No. 29 at 12. Apple alleges that the inventors of the asserted patents reside in
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`Palo Alto, California. Id. In response, Smart Mobile argues that inventors Sunil Rao and Sanjay
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`Rao both reside in Austin, Texas. ECF No. 95 at 8. Smart Mobile explains that the third inventor,
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`Raman Rao, is deceased. Id. at 5. Smart Mobile argues that the WDTX is a more convenient forum
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`for Sunil Rao and Sanjay Rao. Id. at 8. Smart Mobile also argues that it has an employee, William
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`Heye, who resides in Plano, Texas. Id. Smart Mobile argues that the WDTX is a more convenient
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`forum for Mr. Heye. Id. In its reply, Apple argues that Smart Mobile’s presence in this District is
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`ephemeral. ECF No. 104 at 4. Apple also notes that Sunil Rao stated that he was willing to testify
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`in the NDCA and he has minor children in the NDCA. Id. Apple also claims that Sanjay Rao
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`regularly travels to the NDCA. Id. Apple further notes that Mr. Heye no longer works for Smart
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`Mobile. Id.; ECF No. 100.
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`The Court finds that the presence of Sunil Rao and Sanjay Rao in the WDTX weighs
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`against transfer. Sunil Rao and Sanjay Rao are inventors of the asserted patents and no doubt
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`possess knowledge relevant to the claimed invention and the prosecution of the asserted patents.
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`Further, Sunil Rao and Sanjay Rao are the sole members of Smart Mobile. ECF No. 96-2 ¶ 1; ECF
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`No. 96-3 ¶ 1. Thus, they likely possess relevant knowledge regarding Smart Mobile’s ownership
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`of the asserted patents and monetization efforts. While Sunil Rao and Sanjay Rao may have moved
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`to the WDTX in anticipation of litigation, they both reside in the WDTX. ECF No. 96-2 ¶ 4; ECF
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`No. 96-3 ¶ 6. Both Sunil Rao and Sanjay Rao have Texas drivers’ licenses, and they are both
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`registered to vote in Texas. ECF No. 96-2 ¶ 4; ECF No. 96-3 ¶ 6. Regardless of their reasoning for
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`the move, because Sunil Rao and Sanjay Rao reside in Austin, they will find this Court a more
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`convenient forum than the NDCA. Thus, the Court finds that their presence in the WDTX weighs
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`against transfer.
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`As for Mr. Heye, the Court also finds that his presence in Texas weighs against transfer.
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`Mr. Heye was Smart Mobile’s strategic advisor and helped Smart Mobile with business and
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`marketing plans. ECF No. 96-4 ¶ 2. Mr. Heye also interfaced with Smart Mobile’s legal counsel.
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`Id. The Court finds that Mr. Heye may possess knowledge regarding Smart Mobile’s monetization
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`efforts, including efforts to license the asserted patents. And while Mr. Heye no longer works for
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`Smart Mobile, ECF No. 100, Mr. Heye stated in his declaration that he was willing to testify on
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`behalf of Smart Mobile, ECF No. 96-4 ¶ 9. Because Mr. Heye is willing to testify at trial, the Court
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`considers him under the analysis of this factor. And because Mr. Heye may possess relevant
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`knowledge and he would find this Court a more convenient forum, the Court weighs his presence
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`in Texas against transfer.
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`The Court finds this factor is weighs at least slightly transfer. The two living inventors of
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`the asserted patents reside in the WDTX. And one former Smart Mobile employee is willing to
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`testify at trial and resides in Texas. But Apple has identified ten employees in the NDCA and
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`Washington that would find the NDCA a more convenient forum. Based on the evidence provided,
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`the Court concludes that there are more relevant willing witnesses that would find the NDCA a
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`more convenient forum. But the Court does not weigh this factor strongly in favor of transfer
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`because the inventors of the asserted patents reside in this District.
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`The Relative Ease of Access to Sources of Proof
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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). “[T]he question is relative ease
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`of access, not absolute ease of access.” In re Radmax, 720 F.3d 285, 288 (5th Cir. 2013) (emphases
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`in original). “In patent infringement cases, the bulk of the relevant evidence usually comes from
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`the accused infringer. Consequently, the place where the defendant’s documents are kept weighs
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`in favor of transfer to that location.” In re Apple Inc., 979 F.3d at 1340 (citing In re Genentech,
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`566 F.3d at 1345).
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`According to Apple, this factor favors transfer because “[a]ll of the research, design,
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`development, and implementation of the accused features at Apple has taken place at Apple’s
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`Cupertino headquarters.” ECF No. 29 at 9. Apple argues that all its relevant documents were
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`generated in the NDCA. Id. Apple also contends that the relevant source code associated with the
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`accused features was developed and tested in the NDCA. Id. Further, Apple asserts that the
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`documents relating to the marketing, sales, financial, and licensing information for the accused
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`products are in or near Cupertino. Id. Apple also argues that additional documents from Qualcomm
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`and Broadcom are also likely in California. Id. In response, Smart Mobile notes that Apple has not
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`identified any physical evidence located in the NDCA. ECF No. 95 at 3. Smart Mobile further
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`argues that Apple’s electronic evidence is accessible in Texas. Id. In its reply, Apple argues that
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`electronic evidence is still relevant to the analysis of this factor. ECF No. 104 at 1−2. Apple also
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`argues that its source code can be examined only in the NDCA. Id. at 2.
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` To begin, the Court acknowledges that the Fifth Circuit’s decision in In re Planned
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`Parenthood indicates a shift in the analysis of this factor. The Fifth Circuit has recently agreed
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`with a district court that concluded that this factor is neutral because electronic evidence is equally
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`accessible in either forum. In re Planned Parenthood Fed’n of Am., Inc., 52 F.4th 625, 630 (5th
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`Cir. 2022). The Fifth Circuit held that “[t]he location of evidence bears much more strongly on the
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`transfer analysis when . . . the evidence is physical in nature.” Id. But the Federal Circuit has held
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`that it is an error to conclude this factor is neutral because electronic documents are easily
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`accessible in both forums. In re Apple, Inc., No., 2022 WL 1196768, at *4 (Fed. Cir. Apr. 22,
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`2022). To the extent that these two holdings can be reconciled, the Court concludes that the
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`location of physical evidence is more important to this analysis than the location of where
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`electronic documents are typically accessed. However, the Court still considers the location of
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`document custodians of electronic documents in its analysis of this factor. In re Google LLC, No.
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`2021-178, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15, 2021).
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`While Apple does not identify any physical evidence in the NDCA, the Court finds the
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`presence of Apple employees that create and maintain relevant electronic documents in the NDCA
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`weighs in favor of transfer. Smart Mobile does not dispute that Apple’s employees create and
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`maintain relevant documents in the NDCA. Although Apple’s documents may be accessible in the
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`WDTX, the Federal Circuit has concluded that it is an error to assume that this factor is neutral
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`because electronic documents are easily accessible in both forums. In re Apple, No., 2022 WL
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`1196768, at *4. Because the custodians of Apple’s relevant documents are likely located in the
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`NDCA, the Court concludes that this factor favors transfer.
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`Apple also argues that this factor does not weigh against transfer because Smart Mobile
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`purportedly has a place of business in Austin. ECF No. 29 at 9. In response, Smart Mobile argues
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`that its documents are in the WDTX. ECF No. 95 at 3. Smart Mobile claims that its documents
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`related to conception and reduction to practice of the claimed invention are in Austin. Id. Smart
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`Mobile claims that its documents related to prosecution of the asserted patents are in Waco and
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`Austin. Id. Smart Mobile’s declarant, Sunil Rao, explained that the prosecution documents were
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`moved to Waco because it is “approximately equidistant between Austin and Plano, Texas, where
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`Smart Mobile’s employee, William Heye, resides and works.” ECF No. 96-3 ¶ 10. Smart Mobile
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`also claims that its documents related to potential sales and licensing of the asserted patents as well
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`as the assignments of the asserted patents are in Austin. ECF No. 96 at 3. In its reply, Apple argues
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`that Smart Mobile’s sources of proof cannot outweigh Apple’s sources of proof in the NDCA. ECF
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`No. 104 at 2.
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`The Court finds that Smart Mobile’s documents in this District weigh at least slightly
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`against transfer. While Smart Mobile may have moved many of its documents to this District in
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`anticipation of litigation, the Court does not find that this is a case in which Smart Mobile’s move
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`was simply “recent, ephemeral, and an artifact of litigation.” In re Samsung, 2 F.4th at 1378.
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`Rather, Smart Mobile’s sole members and the inventors of the asserted patents, Sunil Rao and
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`Sanjay Rao, have moved to the WDTX. ECF No. 96-2 ¶¶ 1−2, 4; ECF No. 96-3 ¶¶ 1−2, 6. Both
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`Sunil Rao and Sanjay Rao have Texas drivers’ licenses, and they are both registered to vote in
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`Texas. ECF No. 96-2 ¶ 4; ECF No. 96-3 ¶ 6. Sunil Rao and Sanjay Rao are also both originally
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`from Texas. ECF No. 96-2 ¶ 4; ECF No. 96-3 ¶ 6. And Sunil Rao has been working on developing
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`a mobile device in Belton, Texas with an independent contractor from Austin. ECF No. 96-3 ¶ 7.
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`All of Smart Mobile’s operations, including all of its efforts to monetize the asserted patents, are
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`in Texas. Id. ¶ 8. Smart Mobile has an electronics project laboratory with various components,
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`tools, equipment, and prototypes in Texas. Id. Smart Mobile has tested software applications in or
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`around Austin, Texas. Id. ¶ 15. And one of Smart Mobile’s (now former) employees has resided
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`in Texas for many years. ECF No. 85-4 ¶ 3. Thus, even though Sunil Rao and Sanjay Rao’s move
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`to Austin may have been in anticipation of litigation, the Court finds that Smart Mobile has
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`established itself in this District. This move does not appear to have the “ephemeral” nature that
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`has been seen in other cases. See, e.g., In re Microsoft Corp., 630 F.3d 1361, 1365 (Fed. Cir. 2011)
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`(explaining that a plaintiff’s presence in a district is “recent, ephemeral, and a construct for
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`litigation” when the plaintiff’s offices in the transferor forum staff no employees and merely store
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`the plaintiff’s documents); In re Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010)
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`(explaining that a plaintiff’s presence in a district is recent, ephemeral, and an artifact of litigation
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`when the plaintiff’s witnesses were not in the transferor forum). The Court finds that the presence
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`of Smart Mobile’s documents in the WDTX weighs at least slightly against transfer. But the Court
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`does not weigh the presence of Smart Mobile’s documents in the WDTX heavily against transfer
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`because they were recently moved to this District.
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`Accordingly, the Court finds that this factor favors transfer. Apple’s documents relating to
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`the research, design, and development of the accused products are likely located in the NDCA.
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`While Smart Mobile’s documents appear to be stored entirely within this District, these documents
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`were recently moved to the WDTX and “the bulk of the relevant evidence usually comes from the
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`accused infringer.” In re Apple Inc., 979 F.3d at 1340.
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`The Availability of Compulsory Process to Secure the Attendance of Witnesses
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`Under the Federal Rules, a court may subpoena a witness to attend trial only (a) “within
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`100 miles of where the person resides, is employed, or regularly transacts business in person”; or
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`(b) “within the state where the person resides, is employed, or regularly transacts business in
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`person, if the person . . . is commanded to attend a trial and would not incur substantial expense.”
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`Fed. R. Civ. P. 45(c)(1)(A), (B)(ii). Under this factor, the Court focuses on non-party witnesses
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`whose attendance may need to be secured by a court order.” Fintiv Inc., 2019 WL 4743678, at *14
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`(citing Volkswagen II, 545 F.3d at 316). This factor “weigh[s] heavily in favor of transfer when
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`more third-party witnesses reside within the transferee venue than reside in the transferor venue.”
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`In re Apple, 581 F. App’x 886, 889 (Fed. Cir. 2014) (citing In re Genentech, 566 F.3d at 1345).
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`The Federal Circuit has held that “when there is no indication that a non-party witness is willing,
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`the witness is presumed to be unwilling and considered under the compulsory process factor.” In
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`re HP Inc., 2018 WL 4692486, at *3 n.1. However, the Fifth Circuit has clarified that “the
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`availability of the compulsory process ‘receives less weight when it has not been alleged or shown
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`that any witness would be unwilling to testify.’” In re Planned Parenthood, 52 F.4th at 630−31
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`(quoting Hefferan v. Ethicon Endo-Surgery Inc., 828 F.3d 488 (6th Cir. 2016)).
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`Apple argues that this factor favors transfer because the inventors of the asserted patents
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`are in the NDCA. ECF No. 29 at 10. In response, Smart Mobile argues that inventors Sunil Rao
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`and Sanjay Rao both reside in the WDTX and are willing witnesses. ECF No. 95 at 5. Smart Mobile
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`explains that the third inventor, Raman Rao, is deceased. Id. Based on the evidence provided, the
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`Court finds that Sunil Rao and Sanjay Rao do not fall under the compulsory process factor. As
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`Smart Mobile explains, Sunil Rao and Sanjay Rao reside in Austin, Texas within the subpoena
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`power of this Court. ECF No. 96-2 ¶ 4; ECF No. 96-3 ¶ 6. But Sunil Rao and Sanjay Rao are
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`members of Smart Mobile, and they are both willing to testify at trial. ECF No. 96-2 ¶¶ 1, 7; ECF
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`No. 96-3 ¶ 1, 19. Because Sunil Rao and Sanjay Rao are willing to testify at trial, they are
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`considered only under the willing witness factor above.
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`Apple also argues that this factor favors transfer because Broadcom, which supplies the
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`chipsets that contain the source code for the accused MIMO functionality, has relevant employees
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`in California. ECF No. 29 at 6. Similarly, Apple notes that Qualcomm supplies baseband chipsets
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`Case 6:21-cv-00603-ADA Document 135 Filed 08/28/23 Page 14 of 24
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`that include relevant source code that is not accessible by Apple. Id. Apple argues that the relevant
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`Qualcomm engineers are in California. Id. Apple only offers the declaration of its employee, Mark
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`Rollins, to support these arguments. Id. Mr. Rollins explains that the relevant chipsets are provided
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`by “Broadcom, Qualcomm, and, in the past, Intel.” ECF No. 29-1 ¶ 8. Mr. Rollins notes that Welly
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`Kasten’s team is responsible for managing the Broadcom WiFi chipsets. Id. ¶ 15. Mr. Rollins
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`explains that “Mr. Kasten confirmed that the accused MIMO feature in the Broadcom chipsets was
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`designed and developed by Broadcom” and Apple never participated in the design and
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`development of these chipsets. Id. ¶ 16. Mr. Rollins added that “to Mr. Kasten’s knowledge, Mr.
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`Kasten and his team communicate with Broadcom employees located in California (and none in
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`Texas) as it relates to the accused Broadcom chipsets.” Id. As for Qualcomm, Mr. Rollins explains
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`that Prashant Vashi’s team is responsible for managing Qualcomm baseband chipsets that
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`implement the accused MIMO over cellular feature. Id. ¶ 17. Mr. Rollins adds that “Mr. Vashi
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`confirmed that the accused MIMO feature in the Qualcomm baseband chipsets was designed and
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`developed by Qualcomm” and Apple has never been involved in the design and development. Id.
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`¶ 18. Further, Mr. Rollins states that “to Mr. Vashi’s knowledge, Mr. Vashi and his team
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`communicate with Qualcomm employees located in California (and none in Texas) as it relates to
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`the accused Qualcomm baseband chipsets.” Id. As for Intel, Mr. Rollins explains that “it is [his]
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`understanding that Apple acquired relevant portions of Intel’s baseband chipset business in July
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`2019 and that the Intel personnel who became Apple employees as part of that acquisition were
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`located primarily in California.” Id. ¶ 19.
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`In response, Smart Mobile argues that this factor does not favor transfer because Apple
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`does not provide any evidence that relevant engineers from Qualcomm and Broadcomm are
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`located within the subpoena power of the NDCA. ECF No. 95 at 5. Smart Mobile contends that
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`Case 6:21-cv-00603-ADA Document 135 Filed 08/28/23 Page 15 of 24
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`Apple’s evidence, which consists exclusively of Mr. Rollins declaration, merely shows that Apple
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`personnel communicate with Qualcomm and Broadcom personnel located in California. Id. Smart
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`Mobile argues that this evidence does not show that Qualcomm and Broadcom engineers that
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`designed and developed the accused MIMO feature are located within the subpoena power of the
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`NDCA. Id. Smart Mobile notes that Qualcomm and Broadcom have offices outside the NDCA
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`and Broadcom has offices in Austin and Plano, Texas. Id. Smart Mobile also argues that Intel
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`engineers that develop the accused functionality are in the WDTX. Id. at 6. Smart Mobile notes
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`that former Intel engineer Dhinakarraj Gantala served as Intel’s Global R&D Product Head for
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`Intel’s XMM 7660 cellular modem. Id. Smart Mobile argues that the XMM 7660 cellular modem
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`was used in certain accused products. Id. Smart Mobile claims that “Dr. Gantala was the most
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`knowledgeable person at Intel about the XMM 7660’s design and development.” Id. Smart Mobile
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`also contends that Intel engineer Chris LaRosa is a relevant third-party witness. Id. Mr. LaRosa
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`was responsible for ensuring that the enhancements to LTE MIMO functionality were
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`implemented in the XMM 7660. Id. at 6−7. Smart Mobile alleges that Dr. Gantala and Mr. LaRosa
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`were also responsible for the enhanced carrier aggregation functionality of XMM 7660. Id. at 7.
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`Smart Mobile claims that the MIMO and carrier aggregation features are among the features
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`included in Smart Mobile’s infringement allegations. Id. Smart Mobile claims that Dr. Gantala and
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`Mr. LaRosa worked for Intel in Austin and at least Dr. Gantala still resides there. Id. Smart Mobile
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`alleges that there were roughly one hundred Intel employees in or near Austin that would be
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`relevant witnesses. Id.
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`In its reply, Apple argues that all but one third-party witness—Dr. Gantala—reside within
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`the subpoena power of