Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 1 of 20
`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 1 of 20
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`EXHIBIT A
`EXHIBIT A
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 2 of 20
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`Civil Action No. 6:21-cv-00622-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT.
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`
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`DEFENDANT ASUSTEK COMPUTER INC.’S MOTION TO TRANSFER VENUE
`PURSUANT TO 28 U.S.C. § 1404(a)
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`
`
`PLAINTIFF,
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`XR COMMUNICATIONS, LLC, dba,
`VIVATO TECHNOLOGIES,
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`
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`v.
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`ASUSTEK COMPUTER INC.
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 3 of 20
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION .............................................................................................................. 1
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`PROCEDURAL BACKGROUND ..................................................................................... 2
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`III.
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`FACTUAL BACKGROUND ............................................................................................. 3
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`A.
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`B.
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`C.
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`Plaintiff Has No Ties to WDTX. ............................................................................ 3
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`Defendant ASUSTeK Is Located in Taiwan and Has a United States
`Subsidiary in California .......................................................................................... 3
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`Third-Party Wi-Fi Chip Makers.............................................................................. 4
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`IV.
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`ARGUMENT ...................................................................................................................... 5
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`A.
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`B.
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`C.
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`Legal Standard ........................................................................................................ 5
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`This Action Could Have Been Brought in the Central District of California ......... 6
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`This Action Should Have Been Brought in the Northern District of California .... 6
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`1.
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`2.
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`The Public Interest Factors Favor Transfer ................................................ 6
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`The Private-Interest Factors Favor Transfer ............................................... 8
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`V.
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`IN THE ALTERNATIVE, THIS COURT SHOULD TRANSFER VENUE TO THE
`NORTHERN DISTRICT OF CALIFORNIA .................................................................. 12
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`VI.
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`CONCLUSION ................................................................................................................. 13
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`i
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 4 of 20
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)..................................................................................................7
`
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) ............................................................................................8
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)............................................................................................8, 12
`
`In re Apple Inc.,
`No. 21-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) .................................................9, 11
`
`ATEN Int’l Co. v. Emine Tech. Co.,
`261 F.R.D. 112 (E.D. Tex. 2009)...............................................................................................7
`
`Correct Transmission LLC v. Adtran, Inc.,
`No. 6:20-cv-00669-ADA, 2021 U.S. Dist. LEXIS 93102 (W.D. Tex. May 17,
`2021) ....................................................................................................................................7, 12
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)..........................................................................................11, 12
`
`In re Google LLC,
`No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sept. 27, 2021) .................................................11
`
`HD Silicon Sols. LLC v. Microchip Tech. Inc.,
`No. W-20-CV-01092-ADA, 2021 WL 4953884 (W.D. Tex. Oct. 25,2021) .......................9, 10
`
`Hill v. Core Lab'ys LP,
`No. 7:15-CV-0093-RAJ, 2016 WL 11744812 (W.D. Tex. Mar. 3, 2016) ................................7
`
`In re HP Inc.,
`No. 2018-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) ...................................................9
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) ...................................................11
`
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. Sept. 24, 2021) .............................................................................9, 13
`
`Neo Wireless, LLC v. Dell Techs.,
`6:21-CV-0024-ADA, ECF No. 60 (W.D. Tex. Jan. 20, 2022) ................................................12
`
`ii
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 5 of 20
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`In re Nintendo Co. Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)..............................................................................................2, 5
`
`In re Nitro Fluids L.L.C.,
`978 F.3d 1308 (Fed. Cir. 2020)..................................................................................................8
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`Open Text Corp. v. Alfresco Software, Ltd.,
`No. 6:20-CV- 00920-ADA, ECF No. 152 (W.D. Tex. Nov. 22, 2021) ...................................10
`
`In re Quest Diagnostics Inc.,
`No. 2021-193, 2021 WL 5230757 (Fed. Cir. Nov. 10, 2021) .................................................11
`
`In re Radmax, Ltd.,
`720 F.3d 285 (5th Cir. 2013) .................................................................................................5, 6
`
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ..................................................................................................11
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014)..................................................................................................5
`
`In re TS Tech U.S. Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)..................................................................................................7
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .............................................................................................5, 6, 7
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .......................................................................................6, 7, 8, 10
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`XR Commc’n v. Asus Comp. Inter.,
`2017-CV-02948 (C.D. Cal.)...............................................................................................2, 5, 7
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`XR Commc’n v. D-Link,
`8:17-cv-00596 (C.D. Cal) ..............................................................................................2, 3, 5, 7
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`Statutes
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`28 U.S.C. § 1391(c)(3) .....................................................................................................................6
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`28 U.S.C. § 1404(a) .............................................................................................................1, 5, 6, 8
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`Fed. R. Civ. P. 45(c)(1)(A) ............................................................................................................10
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`Fed. R. Civ. P. 45(c)(1)(B)(ii)..................................................................................................10, 13
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`iii
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 6 of 20
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`ASUSTeK Computer Inc. (“ASUSTeK” or Defendant”) requests transfer of this action to
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`the Central District of California (“CDCA”), or in the alternative to the Northern District of
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`California (“NDCA”) under 28 U.S.C. § 1404(a), because either District in California is a clearly
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`more convenient forum for this lawsuit. Moreover, recent rulings in the related CDCA litigation
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`involving one of the patents-in-suit (which Plaintiff XR Communications, LLC (“XR” or
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`“Plaintiff”) already asserted in the CDCA action on different claims) and XR’s recent appeal of
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`the final written decision in the CDCA supports transfer to the CDCA or the NDCA.
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`I.
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`INTRODUCTION
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`This case belongs in California, where nearly all of the relevant witnesses reside. XR is a
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`Delaware limited liability company with a principal place of business in Venice, California (within
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`the CDCA), with no relevant connections to the Western District of Texas (“WDTX”). ASUSTeK
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`also has no connection to this District beyond its alleged sale of infringing products. In contrast,
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`the CDCA has strong ties to the parties and this litigation. Beyond XR’s own presence, almost all
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`third-party witnesses are located in the CDCA and elsewhere in California, including:
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` which form the basis of XR’s
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`infringement claims, the prosecuting attorneys for the patents-in-suit, and several named inventors
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`of the patents-in-suit, including Siavash Alamouti, whom the Complaint identifies as one of
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`“several key innovators in the wireless communication field.” Dkt. 1 ¶ 11. Additionally,
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`ASUSTeK’s United States subsidiary, ASUS Computer International (“ACI”), the importer of
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`record for the accused products is located in the NDCA. Finally, XR already chose to litigate
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`United States Patent No. 7,729,728 (the ’728 Patent) in the CDCA before asserting different claims
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`against ASUSTeK in the present litigation. The CDCA action additionally asserted two other
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`related patents against ASUSTeK (in a case that was dismissed and has recently been appealed).
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`XR is currently litigating that same patent and the same asserted claims brought in the present
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 7 of 20
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`action against other defendants in the CDCA. Moreover, XR recently appealed the order
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`dismissing the case in the in the CDCA action. Thus, ASUSTeK and ACI continue to litigate the
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`CDCA issues in WDTX even when XR previously filed, including against other defendants, in the
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`CDCA. Thus, the CDCA is uniquely situated to hear claims on these patents and almost all
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`relevant evidence in this case is located in, or closer to, the CDCA. Because “the transferee venue
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`is ‘clearly more convenient’ than the venue chosen by the plaintiff,” this case should be transferred
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`to the NDCA. In re Nintendo Co. Ltd., 589 F.3d 1194, 1197 (Fed. Cir. 2009) (quoting In re
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`Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009)).
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`II.
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`PROCEDURAL BACKGROUND
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`This case involves patents on wireless communications systems that date back to
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`provisional patent applications filed almost two decades ago. XR has been serially asserting these
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`patents against defendants in various courts since 2017. XR initially brought suit on three patents
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`United States Patent Nos. 7,062,296 (the “’296 Patent”), 7,729,728 (the “’728 Patent”) and
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`6,611,231 (the “’231 Patent”), in a series of lawsuits in the CDCA. All asserted claims of those
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`patents were invalidated – the ’296 and ’728 Patents via IPR, and the ’231 Patent based on an
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`indefiniteness ruling by Judge Orrick in the Northern District of California. See XR Commc’n v.
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`Asus Comp. Inter., 2017-CV-02948 (C.D. Cal.), Dkt. 46. On May 9, 2022, XR filed a notice of
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`appeal, which presents the possibility of continued parallel litigation in the CDCA and WDTX.
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`Id., Dkt. 47.
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`XR filed a second action against ASUSTeK in WDTX on June 16, 2021 on three patents,
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`United States Patent Nos. 10,594,376 (the “’376 Patent”), 10,715,235 (the “’235 Patent”), and the
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`’728 Patent. XR has thus re-asserted the ’728 Patent, this time advancing a different set of claims.
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`XR has asserted the same patents and claims against other defendants in the CDCA. See XR
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`Commc’n v. D-Link, 8:17-cv-00596 (C.D. Cal), Dkt. 1. A supplemental claim construction hearing
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`-2-
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`regarding the ’728 Patent was recently held in that CDCA action, which was held in view of a
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`collateral estoppel motion that was granted in part, but where the court ordered supplemental claim
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`construction to determine if the claims were comparable for purposes of collateral estoppel to
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`claims that were invalidated in the IPR proceeding. Id., Dkt. 313. XR has filed an objection to
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`the special master’s claim construction order, which sided with Defendants. Thus, the CDCA
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`court has already dealt with complicated and nuanced issues that will be identical in this case –
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`including collateral estoppel and claim construction arguments regarding the same.
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`III.
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`FACTUAL BACKGROUND
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`A.
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`Plaintiff Has No Ties to the WDTX
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`Plaintiff XR Communications, LLC (“XR”) is a Delaware limited liability company with
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`a principal place of business in Venice, California (within the CDCA), with no relevant
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`connections to the WDTX.
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`B.
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`Defendant ASUSTeK Is Located in Taiwan and Has a United States
`Subsidiary in California
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`Defendant ASUSTeK is a Taiwanese corporation with its principal place of business in
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`Taipei, Taiwan. Dkt. 1 (Compl.) ¶ 5; Declaration of Barbara (“Chen Decl.”) ¶ 4. ASUSTeK has
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`no presence in Texas and does not operate in Texas. Chen Decl. ¶ 7. ASUSTeK has no employees
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`in Texas. Id.
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`Non-party ACI is a California corporation and a wholly-owned subsidiary of ASUSTeK
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`with its principal place of business in Fremont, California, in the Northern District of California.
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`Id. ¶ 6. ACI is responsible for importing, distributing, processing and fulfilling orders that are
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`placed by customers in the United States, and providing sales support in the United States market
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`for ASUS-branded products, including the accused products. Id. ¶ 6. ACI is the importer of record
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`for the accused products, which are distributed to ACI’s United States customers. Id. ACI has no
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`offices in Texas and does not maintain its corporate records in Texas. Id. ¶ 7.
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`C.
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`Third-Party Wi-Fi Chip Makers
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`Although the end products accused of infringement are manufactured outside the
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`United States, XR’s infringement claims are based on the use of Wi-Fi 6 chips in those products,
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`which support the accused functionalities. See Dkt. 1 (Compl.) ¶¶ 45-50; Dkt. 21; Chen Decl.
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`¶ 12.
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`Based on ASUSTeK’s investigation to date, the Wi-Fi 6 chips in the accused products that
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`are alleged to practice the asserted patent claims are supplied by four companies:
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`ASUSTeK purchases a majority of its Wi-Fi chips used in the products accused of
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` Id.
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`infringement in the FAC
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` Id.
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`Similarly, with respect to accused Wi-Fi chip products, it is ASUSTeK’s understanding
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`that relevant design and development activities pertaining to the chips it purchases from
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`ASUSTeK further understands that relevant design and development activities pertaining to the
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 10 of 20
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`chips it purchases from
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` In fact, ASUSTeK understands
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`IV. ARGUMENT
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`A.
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`Legal Standard
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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.”
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`28 U.S.C. § 1404(a). In a Section 1404 motion, the movant must first show that the case could
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`have been brought in the proposed transferee district. In re Volkswagen AG, 371 F.3d 201, 203
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`(5th Cir. 2004) (“Volkswagen I”). Then, the Court weighs multiple private- and public-interest
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`factors to determine whether transfer is appropriate. In re Radmax, Ltd., 720 F.3d 285, 288 (5th
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`Cir. 2013). “[T]he Fifth Circuit forbids 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 at 1200. The transferee venue need
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`only be “clearly more convenient,” not “far more convenient,” for transfer to be appropriate. In re
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`Toyota Motor Corp., 747 F.3d 1338, 1341 (Fed. Cir. 2014).
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`Here, XR could have sued ASUSTeK in the CDCA. Indeed, it already did. XR sued
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`ASUSTeK on the ’728 Patent and other similar patents in the CDCA, where all claims ended up
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`being invalidated. See XR Commc’n v. Asus Comp. Inter., 2017-CV-02948 (C.D. Cal.), Dkt. 46.
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`And XR is currently litigating the ’728 Patent in the CDCA against other defendants XR Commc’n
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`v. D-Link, 8:17-cv-00596 (C.D. Cal). In addition, each of the public and private interest factors
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`either weighs in favor of transfer or is neutral. Thus, the CDCA is “clearly [a] more convenient”
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`forum and transfer under Section 1404(a) is appropriate. Radmax, 720 F.3d at 288.
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`B.
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`This Action Could Have Been Brought in the Central District of
`California
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`As a foreign entity with no United States ties, ASUSTeK can be sued in any United States
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`jurisdiction under Rule 4. 28 U.S.C. § 1391(c)(3). For the purpose of personal jurisdiction,
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`ASUSTeK agrees that its products are sold in the United States and that it is properly subject to
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`United States jurisdiction based on those sales. The CDCA can assert jurisdiction over it to
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`precisely the same degree as can the WDTX. XR itself is a corporation with a principal place of
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`business in the CDCA with no specific ties to Texas. So XR could have brought this lawsuit in
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`California, a locale closer, more convenient to both itself and Defendant, and where it has already
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`been litigating the same or similar patents since 2017. See Section 1, supra.
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`C.
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`This Action Should Have Been Brought in the Northern District of
`California
`1.
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`The Public Interest Factors Favor Transfer
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`The public interest factors the Fifth Circuit considers when evaluating transfer under
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`§ 1404(a) are as follows: the administrative difficulties flowing from court congestion, the local
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`interest in having localized interests decided at home, the familiarity of the forum with the law that
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`will govern the case; and the avoidance of unnecessary problems of conflict of laws or in the
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`application of foreign law. In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008)
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`(“Volkswagen II”). Each public interest factor favors transfer here.
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`Local Interests. The local-interest factor weighs heavily in favor of transfer. This factor
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`focuses on the “factual connection” a case has with both the transferee and transferor venues.
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`Volkswagen I, 371 F.3d at 206. XR’s infringement allegations in its Complaint (see, e.g., Dkt. 1
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`¶¶ 20-54) have no connection to the WDTX that could not also be drawn to any other district. See
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`-6-
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`Volkswagen II, 545 F.3d at 318 (local interests that “could apply virtually to any judicial district
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`or division in the United States” are disregarded in favor of particularized local interests). As
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`in Volkswagen I and II, the mere fact that an accused product is available in this district is not a
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`particularized interest that weighs against transfer. Meanwhile, where a “company asserting
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`harm,” like XR here, is resident of transferee district, this factor favors transfer. In re Acer Am.
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`Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010); see also Hill v. Core Lab'ys LP, No. 7:15-CV-0093-
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`RAJ, 2016 WL 11744812, at *5 (W.D. Tex. Mar. 3, 2016) (“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.”).
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`Additionally, ASUSTeK’s subsidiary ACI also has a principal place of business in California. It
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`is undisputed that the closest business relations that ASUSTeK and ACI have in the United States
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`is with corporations based in California. Since California is clearly the “center of gravity” with
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`respect to the witnesses and parties to this case, this factor weighs in favor of transfer. ATEN Int’l
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`Co. v. Emine Tech. Co., 261 F.R.D. 112, 126 (E.D. Tex. 2009).
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`Familiarity with Legal Issues and Conflict of Laws. Both this Court and the CDCA are
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`well versed in patent laws, and will be applying the same patent laws in the same ways. Correct
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`Transmission LLC v. Adtran, Inc., No. 6:20-cv-00669-ADA, 2021 U.S. Dist. LEXIS 93102, at *16
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`(W.D. Tex. May 17, 2021); In re TS Tech U.S. Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008). But
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`the CDCA is even better situated to evaluate issues relating to the patents-in-suit, considering that
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`it has previously construed the exact same or related patents in multiple litigations that have been
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`brought by XR in the CDCA against ASUSTeK and/or other defendants. See XR Commc’n v. Asus
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`Comp. Inter., 2017-CV-02948 (C.D. Cal.); XR Commc’n v. D-Link, 8:17-cv-00596 (C.D. Cal). As
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`explained above, the CDCA has recently addressed collateral estoppel and has held supplemental
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`claim construction on the ’728 Patent terms. These issues are highly relevant to familiarity of the
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`legal issues. Moreover, according to Lex Machina, approximately seventeen (17) cases have been
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`filed in the CDCA and three (3) in the NDCA on the ’728 Patent alone. Moreover, approximately
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`seven (7) cases have been filed in the CDCA and one (1) in the NDCA for the ’376 Patent. Thus,
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`the CDCA’s familiarity with its own prior and concurrent proceedings again counsels in favor of
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`transfer.
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`Court congestion. This factor looks to the relative docket congestion of the two venues,
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`not merely the expected time to trial. In re Nitro Fluids L.L.C., 978 F.3d 1308, 1312 (Fed. Cir.
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`2020); see also In re Adobe Inc., 823 F. App’x 929, 932 (Fed. Cir. 2020). Here, the CDCA has a
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`faster time to trial (24.2 months vs. 25.5 months), faster disposition time (4.9 months vs. 8.2
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`months) and a less congested docket (566 actions per judgeship vs. 968).1 This factor favors
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`transfer.
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`Thus, all of the public-interest factors favor transfer.
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`2.
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`The Private-Interest Factors Favor Transfer
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`The four private-interest factors the Fifth Circuit considers when evaluating transfer under
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`§ 1404(a) are as follows: “(1) the relative ease of access to sources of proof; (2) the availability of
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`compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing
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`witnesses; (4) all other practical problems that make trial of a case easy, expeditious and
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`inexpensive[.]” Volkswagen II, 545 F.3d at 315. Each private interest factor favors transfer here.
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`Relative Ease of Access to Sources of Proof. The location of sources of proof for both
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`parties strongly favors transfer. “This factor relates to the ease of access to non-witness evidence,
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`such as documents and other physical evidence.” In re Apple Inc., 979 F.3d 1332, 1339 (Fed. Cir.
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`2020). “What matters” for this analysis is “the ease of access in the Western District of Texas
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`1 7 See U.S. District Courts-Combined Civil and Criminal Federal Court Management Statistics,
`https://www.uscourts.gov/sites/default/files/data_tables/fcms_na_distcomparison1231.2021.pdf.
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 14 of 20
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`relative to the ease of access in the [Central] District of California.” In re Apple Inc., No. 21-181,
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`2021 WL 5291804 at *2 (Fed. Cir. Nov. 15, 2021). “While electronic storage of documents makes
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`them more widely accessible than was true in the past, that does not make the sources-of-proof
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`factor irrelevant.” In re Juniper Networks, Inc., 14 F.4th 1313, 1321 (Fed. Cir. Sept. 24, 2021).
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`ASUSTeK is unaware of relevant sources of proof in the WDTX. As previously noted,
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`XR has its principal place of business in California, and does not appear to have any connection
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`to the WDTX and has not alleged that it has any such connection. Thus, there is nothing that
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`indicates any evidence on XR’s behalf will come from the WDTX. Chen Decl. ¶¶ 12-15.
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`Meanwhile, relevant sources of proof for ASUSTeK will come from either: outside the country,
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`because ASUSTeK is a Taiwanese corporation; ACI, which is located in the NDCA, or from the
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`CDCA and elsewhere in California, because most other relevant evidence and witnesses will come
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`from third parties located there, including named inventors, attorneys who prosecuted the patents,
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`and the manufacturers of the Wi-Fi 6 chips which incorporate the accused functionalities in the
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`accused products. See, supra, Section III.
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`Availability of Compulsory Process for the Attendance of Witnesses. This factor
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`weighs strongly in favor of transfer. According to Fifth Circuit law, “when there is no indication
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`that a non-party witness is willing, the witness is presumed to be unwilling and considered under
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`the compulsory process factor.” In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed.
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`Cir. Sept. 25, 2018); HD Silicon Sols. LLC v. Microchip Tech. Inc., No. W-20-CV-01092-ADA,
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`2021 WL 4953884, at *4 (W.D. Tex. Oct. 25,2021) (“[W]here … the movant has identified
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`multiple third-party witnesses and shown that they are overwhelmingly located within the
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`subpoena power of only the transferee venue, this factor favors transfer even without a showing of
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`unwillingness for each witness.”) (quoting In re Hulu, LLC, No. 2021-142, 2021 WL 3278194, at
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 15 of 20
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`*4 (Fed. Cir. Aug. 2, 2021)). “This factor ‘weigh[s] heavily in favor of transfer when more third-
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`party witnesses reside within the transferee venue than reside in the transferor venue.’” Open Text
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`Corp. v. Alfresco Software, Ltd., No. 6:20-CV- 00920-ADA, ECF No. 152 at 7 (W.D. Tex. Nov.
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`22, 2021) (quoting In re Apple, 581 F. App’x 886, 889 (Fed. Cir. 2014)), see id. at *11 (factor
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`favors transfer where four non-party inventors reside in transferee venue and only one in transferor
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`venue).
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`Here, an overwhelming number of the relevant witnesses reside either in the CDCA or
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`elsewhere in California within the CDCA’s subpoena power, including the prosecuting attorneys
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`for the patents-in-suit, and several named inventors of the patents-in-suit. See supra, Section I.
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`Additionally,
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` and its personnel may be compelled to testify at trial pursuant to Fed. R. Civ. P.
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`45(c)(1)(B)(ii). See Volkswagen II, 545 F.3d at 316-17 (when “a proper venue that does enjoy
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`absolute subpoena power … is available,” that fact favors transfer). Defendant’s suppliers are
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`highly relevant third parties to this action, given that Plaintiff’s infringement claims are alleged to
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`¶¶ 12-15.
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`. See supra Section III; Chen Decl.
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 16 of 20
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` Id. In any event, the Court should not ignore or discount third-party
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`witnesses where, at this early stage in litigation, ASUSTeK has not yet identified “the specific
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`employees of those entities” who may be called as witnesses. See In re Apple Inc., 2021 WL
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`5291804, at *3 (district court erred in “discount[ing]” “third parties” simply because defendant
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`had not “identif[ied] any specific employees of those entities”) (citing In re HP Inc., 826 F. App’x
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`899 (Fed. Cir. 2020)).
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`Convenience of Attendance for Willing Witnesses. The “single most important factor
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`in [the] transfer analysis” is the convenience and cost for witnesses to travel and attend trial. In
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`re Genentech, Inc., 566 F.3d at 1343 (citation omitted). The analysis “must consider” the
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`convenience of “possible party witnesses.” In re Samsung Elecs. Co., 2 F.4th 1371, 1379 (Fed.
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`Cir. 2021); see also In re Google LLC, No. 2021-170, 2021 WL 4427899, at *4 (Fed. Cir. Sept.
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`27, 2021). For the same reasons identified for potentially compelled witnesses above, the CDCA
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`is a far more convenient forum than the WDTX, given that substantially all witnesses, party or
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`third party, are located within the CDCA, the NDCA, or elsewhere in California. In re Hulu,
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`LLC, 2021 WL 3278194, at *5 (finding in favor of transfer where an “overwhelming number of
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`potential witnesses from Hulu [were] in or near California compared to the two from SITO in
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`Texas”). Meanwhile, California-based witnesses will be unable to fly directly to Waco. See In
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`re Quest Diagnostics Inc., No. 2021-193, 2021 WL 5230757, at *2 (Fed. Cir. Nov. 10, 2021)
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`(noting that “[t]here is no major airport in the Waco Division of the Western District of Texas”);
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 17 of 20
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`cf. Neo Wireless, LLC v. Dell Techs., 6:21-CV-0024-ADA, ECF No. 60 at *8 (W.D. Tex. Jan.
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`20, 2022) (same).
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`To the extent that any knowledgeable witnesses are employed by Defendant, those
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`witnesses are located outside the United States and would have to travel for a trial in either venue.
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`Chen Decl. ¶ 8. Such witnesses do not affect the convenience analysis; regardless of transfer,
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`“these individuals will likely have to leave home for an extended period of time and incur travel,
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`lodging, and related costs.” In re Apple Inc., 979 F.3d at 1342; see also In re Genentech, Inc., 566
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`F.3d at 1345 (rejecting “rigid assessment” that witness convenience “should only favor transfer if
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`it will be more convenient for all of the witnesses”).
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`All Other Practical Problems. “[T]his Court has previously held that the last private
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`interest factor favors transfer when most witnesses are present in the transferee forum and the
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`plaintiff has no presence in the Western District.” Correct Transmission LLC v. ADTRAN, Inc.,
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`No. 6:20-CV-00669-ADA, 2021 WL 1967985, at *5 (W.D. Tex. May 17, 2021). Due to the
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`majority of potential witnesses being in the CDCA or elsewhere in California, and the fact that XR
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`has no presence in the WDTX, this factor also favors transfer. Additionally, as previously
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`explained, the CDCA is already well versed in the issues involved in this litigation given it already
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`has or is presiding over litigation on the same or related patents.
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`V.
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`IN THE ALTERNATIVE, THIS COURT SHOULD TRANSFER VENUE TO THE
`NORTHERN DISTRICT OF CALIFORNIA
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`For all of the reasons discussed above, the WDTX has little connection to the facts of this
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`case and the location of party and third-party witnesses and documents. But should this Court not
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`grant transfer to the CDCA, the NDCA is also a more clearly convenient venue than the WDTX.
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`Location of Witnesses and Documents Generally. The NDCA is home to personnel of
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`ASUSTeK’s
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` The NDCA is also home to non-party ACI, which
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`Case 6:21-cv-00622-ADA Document 46 Filed 07/19/22 Page 18 of 20
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`imports, sells and provides sales support for the accused products in the United States. ACI also
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`stores its corporate records in the NDCA, so any relevant documents in ACI’s possession in the
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`United States are in that transferee venue. Compared with the relative absence of relevant third-
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`witnesses and sources of proof in Texas these facts weigh strongly in support of transfer, whether
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`analyzed primarily under the compulsory process factor, the witness convenience factor, and/or
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`the sources of proof factor.
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`Compulsory Process and Practical Problems. The compulsory process factor also
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`weighs in favor of transfer, given the fact that the NDCA may be able to compel trial testimony
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`all the relevant witnesses located in or adjacent to the CDCA. See Fed. R. Civ. P. 45(c)(1)(B)(ii).
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`The practical problems factor weighs in favor of transfer.
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`Court Congestion. According to the most recent publicly available statistics, the NDCA
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`had 785 total actions per judgeship, while the WDTX had 997.2 Time from filing to trial was
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`slightly faster in the WDTX, while disposition time for civil cases generally was near-identical.
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`Id. On balance, this factor slightly favors transfer. At worst, this factor is neutral. See Juniper,
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`14 F.4th at 1322 (concluding that “the Western District of Texas and the Northern District of
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`California show no significant differences in caseload or time-to-trial statistics”).
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`Accordingly, as with transfer to the Central District of California, every factor except
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`familiarity with governing law and conflicts of law favors or strongly favors transfer, with those
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`remaining factors neutral.
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`VI. CONCLUSION
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`Because the relevant public and private interest factors clearly favor transfer and the
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`WDTX’s relation to this action is tenuous, ASUSTeK respectfully requests the Court transfer this
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`2 See supra, footnote 1.
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`Case 6:21-c