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`v.
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`ASUSTEK COMPUTER INC.
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`PLAINTIFF,
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`DEFENDANT.
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`DEFENDANT ASUSTEK COMPUTER INC.’S REPLY
`MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION
`FOR LEAVE TO FILE A MOTION TO TRANSFER VENUE
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`VIVATO TECHNOLOGIES,
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`XR COMMUNICATIONS, LLC, dba,
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`Civil Action No. 6:21-cv-00622-ADA
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`JURY TRIAL DEMANDED
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 2 of 11
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`I.
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`TABLE OF CONTENTS
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`Page(s)
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`ARGUMENT ..................................................................................................................... 1
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`A.
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`The Appeal in XR Commc’n v. Asus Comp. Inter., 2017-CV-02948 is
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`Highly Relevant and Risks Inefficient Parallel Litigation. ..................................... 1
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`B.
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`C.
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`ASUSTeK’s has been Diligent and this Case is Still in its Infancy........................ 2
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`ASUSTeK’s Motion to Transfer is Important and Meritorious. ............................. 3
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`1.
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`2.
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`The Public Interest Factors Favor Transfer ................................................ 3
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`Private Interest Facts Favor Transfer .......................................................... 4
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`II.
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`CONCLUSION ................................................................................................................. 7
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`i
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 3 of 11
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`Defendant ASUSTeK Computer Inc. (“ASUSTeK” or Defendant”) submits this Reply
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`Memorandum of Law in Support of its Motion for Leave to File a Motion to Transfer Venue
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`(“Motion”) in this action to the Central District of California (“CDCA”), or in the alternative to
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`the Northern District of California (“NDCA”) under 28 U.S.C. § 1404(a) (the “Transfer Motion”)
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`outside the deadline set by the Order Governing Proceedings (the “OGP”).
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`I.
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`ARGUMENT
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`A.
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`The Appeal in XR Commc’n v. Asus Comp. Inter., 2017-CV-02948 is
`Highly Relevant and Risks Inefficient Parallel Litigation.
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`Contrary to Plaintiff’s contentions, the appeal in XR Commc’n v. Asus Comp. Inter., 2017-
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`CV-02948 (C.D. Cal.) is highly relevant to this litigation. First, the case, which was filed prior to
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`the instant litigation, involves patents for wireless communications systems that XR
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`Communications, LLC, dba, Vivato Technologies (“XR”) has been serially asserting against
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`Defendants in various courts since 2017. The case in particular involves patents related to Wifi
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`standards, just as the patents in this WDTX litigation. Thus, the issues on appeal in the CDCA
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`litigation involving patents from the same family could impact interpretation of patents-in-suit
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`here. Moreover, the U.S. Patent No. 7,729,728 (the “’728 Patent”) was asserted in both
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`jurisdictions, which XR does not address. XR does not explain why asserting the same patent in
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`two different jurisdictions is efficient because it is not. XR passes over the fact that it filed first
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`on the ’728 Patent and on U.S. Patent No. 10,594,376 (the “’376 Patent”) in the CDCA. Even if
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`the Court were to credit XR’s argument that different claims were asserted such that there is not
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`substantial case overlap, efficiency and convenience still dictates that Defendant not have to
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`litigate the same patent in two different jurisdictions along with patents in the same family covering
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`Wifi standards when XR chose first to file in the CDCA (where it itself is headquartered).
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 4 of 11
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`B.
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`ASUSTeK’s has been Diligent and this Case is Still in its Infancy.
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`While Plaintiff tries to argue that ASUSTeK has unduly delayed in filing this Motion,
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`ASUSTeK has acted diligently in a case in its initial stages. The case has not progressed to
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`Markman and no discovery has been served. At the same time, the collateral estoppel motions in
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`XR Commc’n v. D-Link, 8:17-cv-00596 (C.D. Cal.) show that there are continued claim
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`construction issues pending in another forum that have yet to be resolved and could impact this
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`litigation. Contrary to Plaintiffs contentions that those issues have been resolved, the collateral
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`estoppel motion in D-Link was only denied because of the form of the motion – a Rule 12(c)
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`motion for judgment on the pleadings – and not because the collateral estoppel issue is no longer
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`viable. XR Commc’n v. D-Link, 8:17-cv-00596 (C.D. Cal) Dkt. 376 (“Defendants thus do not meet
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`their burden to “clearly establish[] on the face of the pleadings that no material issue of fact remains
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`to be resolved and that it is entitled to judgment as a matter of law.”). Moreover, just recently XR
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`dismissed the ’728 claims in the CDCA case against the CDCA defendants (see id. at Dkt. 378),
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`while XR had refiled these same’ 728 claims against ASUSTeK in the WDTX. These events
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`prompted ASUSTeK to move for leave to transfer, as it is clear the CDCA is the venue best suited
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`to address the ’728 and related patents. And now that XR has appealed the CDCA case against
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`ASUSTeK, it is clearly more convenient. See Butowsky v. Folkenflik, No. 4:18CV442, 2020 WL
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`9936143, at *25 (E.D. Tex. Sept. 1, 2020), report and recommendation adopted, No. 4:18CV442,
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`2020 WL 9936140 (E.D. Tex. Sept. 21, 2020) (finding good cause where motion for leave was
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`prompted by later order issued past the scheduling order deadline); Robles v. Archer W.
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`Contractors, LLC, No. 3:14-CV-1306-M, 2015 WL 4979020, at *3 (N.D. Tex. Aug. 19, 2015)
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`(finding good cause when plaintiff based its motion for leave on new information gained after
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`relevant deadlines); Settlement Cap. Corp. v. Pagan, 649 F. Supp. 2d 545, 566 (N.D. Tex. 2009)
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`(same).
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`-2-
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 5 of 11
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`C.
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`ASUSTeK’s Motion to Transfer is Important and Meritorious.
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`Plaintiff’s final argument against allowing leave is that the Transfer Motion is unimportant
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`and would be futile. Plaintiff does not provide any argument on the Transfer Motion’s purported
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`lack of importance beyond a conclusory statement. As to the purported futility on ASUSTeK’s
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`Motion, XR has in essence provided its opposition to ASUSTeK’s Transfer Motion inside its
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`opposition to its motion for leave. Such arguments on the merits of the motion would be more
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`appropriate once the Court grants ASUSTeK’s Motion for Leave, and it would make little sense
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`to deny the motion to leave to file such motion on the contention that the Court might not grant
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`the underlying motion, when the actual underlying motion has yet to be fully briefed, is based on
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`balancing of factors and the discretion of this Court, and ASUSTeK’s Transfer Motion is has sound
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`legal argument supported by the facts. Nothing in Plaintiff’s motion supports the argument that
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`ASUSTeK’s Transfer Motion would be futile. Because Plaintiff is attempting to brief the
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`underlying Transfer Motion in its opposition here, ASUSTeK refers the Court to Exhibit A (Dkt.
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`42-1), its proposed Transfer Motion, in the first instance, while responding to Plaintiff’s
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`substantive transfer arguments within the confines of this briefing.
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`1.
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`The Public Interest Factors Favor Transfer
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`Local Interests. XR focuses only on the fact that ASUSTeK is a foreign corporation while
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`ignoring the other facts that make the CDCA the venue with the most significant local interest in
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`this litigation. For example, XR ignores that since XR, the “company asserting harm,” is resident
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`of transferee district, this factor favors transfer. In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed.
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`Cir. 2010); see also Hill v. Core Lab’ys LP, No. 7:15-CV-0093-RAJ, 2016 WL 11744812, at *5
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`(W.D. Tex. Mar. 3, 2016) (“A jurisdiction where a party’s principal place of business is located
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`does have a particularized interest in the suit’s outcome.”). XR itself is a resident of the CDCA
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`and filed the first action against ASUSTek in the CDCA. The Court need go no further.
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`-3-
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 6 of 11
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`Furthermore, XR does not dispute that ASUSTeK’s subsidiary ACI also has a principal place of
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`business in California, or that highly relevant third parties are based in California. Thus, there are
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`two parties on both sides of the “v” that have a principal place of business in the CDCA.
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`Familiarity with Legal Issues and Conflict of Laws. As explained above, the CDCA has
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`recently addressed collateral estoppel and has held supplemental claim construction on the ’728
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`Patent terms. Furthermore, XR does not deny that 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. Thus, the CDCA has
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`familiarity with important and nuanced legal issues relevant to this litigation.
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`As to the cases XR identifies in the WDTX on the U.S. Patent No. 10,715,235 (the “’235
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`Patent) – almost all of the defendants identified in those litigations (Amazon, Google, Dell, Apple)
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`have also moved to transfer venue to California. Thus, these cases do not provide support for
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`staying in the WDTX, when they themselves are in the process of being transferred. As for the
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`existing overlapping the CDCA cases – XR filed in the CDCA first and those cases are farther
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`along and thus the venue is better versed and better equipped to handle related cases. For example,
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`all of the named inventors and other important witnesses have been deposed in the cases in the
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`CDCA venue.
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`Court congestion. XR does not dispute that the CDCA has a faster time to trial.
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`Furthermore, XR only makes the blanket statement that this case will not go to trial in summer
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`2023 as scheduled if transferred without any citation to relevant support. This factor still supports
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`transfer.
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`2.
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`Private Interest Facts Favor Transfer
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`Ease of Access to Sources of Proof. XR entirely fails to address that two sources of proof
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`in this case will come from parties in California – ASUSTeK’s U.S. subsidiary, ACI, and the third-
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`-4-
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 7 of 11
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`party manufacturers of the Wi-Fi 6 chips which incorporate the accused functionalities in the
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`accused products (while simultaneously ignoring that zero will come from the WDTX).
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`XR instead makes much ado about electronically stored information, but the Fifth Circuit
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`has explained that while electronic storage of documents makes them more widely accessible than
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`was true in the past, the fact that documents can often be accessed remotely does not render the
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`sources-of-proof factor irrelevant. See In re Volkswagen of Am., Inc., 545 F.3d 304, 316 (5th Cir.
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`2008) (“That access to some sources of proof presents a lesser inconvenience now than it might
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`have absent recent developments does not render this factor superfluous.”). Thus, the fact that
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`both a party itself (XR) and important third parties (ACI, chip manufacturers) are located in
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`California, and no important sources of proof are identified as being located in the WDTX, means
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`this factor favors transfer.
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`Witnesses (Convenience and Compulsory Process). XR makes nonsensical arguments
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`that because it has other cases pending in the WDTX, it is more convenient for both its employees
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`and other witnesses to travel to the WDTX for this case than the CDCA. Firstly, XR does state
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`where any of these witnesses are located in the first instances (likely because XR itself is located
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`in the CDCA and thus its employees would be as well). Secondly, XR makes no representation
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`about the status or schedule of the other cases and when these witnesses would be traveling for
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`those cases vs. this litigation. XR provides no facts that would support, say, these employees in
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`question flying to the WDTX for this case and another case at the same time that would somehow
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`support a level of convenience. And like with the availability of evidence, XR ignores that most
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`identified witnesses are located in California, and thus the CDCA is a much closer, convenient
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`forum that the WDTX for those parties. XR is only able to identify a single witness that is located
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`in the WDTX (one of the inventors of one patents), whereas ASUSTeK has identified multiple
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`-5-
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 8 of 11
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`important witnesses that reside in or closer to the CDCA (including a named inventor, Siavash
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`Alamouti, whom the Complaint identifies as one of “several key innovators in the wireless
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`communication field (Dkt. 1 ¶ 11)).1 Moreover, XR does not explain that numerous defendants in
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`the WDTX have filed their own motions to transfer.
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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. XR focuses on a single patent to
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`argue that the CDCA will not have familiarity with the patents as compared to the WDTX, but as
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`previously explained, the CDCA is already well versed in the patent issues in this litigation given
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`it already has or is presiding over litigation on the same or related patents, including the ’728 patent
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`and ’376 patent, and the many of the cases related to the ’235 patent will likely end up being
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`transferred to California as well. Moreover, as explained above, the case in the WDTX is at the
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`early stages with no claim construction and no discovery at all served.
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`NDCA in the Alternative. XR does not dispute that the NDCA has fewer active patent
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`cases. When addressing court congestion for the CDCA vs. the WDTX, XR downplays the time
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`to. trials important, while it inflates it here. Contrary to XR’s assertion that ACI is irrelevant to
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`this litigation, ASUSTeK has asserted that ACI is responsible for importing, distributing,
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`processing and fulfilling orders that are placed by customers in the United States, and providing
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`1 Additionally, for both California and international witnesses, Waco is far less convenient
`traveling destination given it only has a regional airport, and there are no direct flights from most
`airports in California (like LAX or SFO) to Waco.
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`-6-
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 9 of 11
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`sales support in the United States market for ASUS-branded products, including the accused
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`products, and that ACI is the importer of record for the accused products, which are distributed to
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`ACI’s United States customers. Chen Decl. (Dkt. 44) ¶ 6. Thus, ACI’s presence in the NDCA is
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`relevant and important to the convenience of witnesses and availability of evidence in the NDCA.
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`XR also discounts that although some of entities are not based in the NDCA – they are based in
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`California and the NDCA would be a far more convenient venue as compared to the WDTX. Thus,
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`the WDTX cannot be said to have “just as much of an interest” in this case as the CDCA or the
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`NDCA when the center of the gravity of the case is in California, where XR itself is home, and
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`many relevant witnesses are located.
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`II.
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`CONCLUSION
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`ASUSTeK respectfully requests the Court grant its Motion for Leave to file a Motion to
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`Transfer this action to the CDCA, or in the alternative to the NDCA under 28 U.S.C. § 1404(a).
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`Dated: August 1, 2022
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`Respectfully submitted,
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` /s/ Jonathan K. Waldrop
`Jonathan K. Waldrop (CA Bar No. 297903)
`(Admitted in this District)
`jwaldrop@kasowitz.com
`Marcus A. Barber (CA Bar No. 307361)
`(Admitted in this District)
`mbarber@kasowitz.com
`John W. Downing (CA Bar No. 252850)
`(Admitted in this District)
`jdowning@kasowitz.com
`KASOWITZ BENSON TORRES LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, CA 94065
`Phone: (650) 453-5170
`Fax: (650) 453-5171
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`-7-
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 10 of 11
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`Allen F. Gardner (TX Bar No. 24043679)
`Allen@allengardnerlaw.com
`ALLEN GARDNER LAW, PLLC
`609 S. Fannin
`Tyler, TX 75701
`Phone: (903) 944-7537
`Fax: (903) 944-7856
`Attorneys for Defendant
`ASUSTEK COMPUTER INC.
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`-8-
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`Case 6:21-cv-00622-ADA Document 51 Filed 08/09/22 Page 11 of 11
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing instrument was served or
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`delivered electronically to all counsel of record, on this 1st day of August, 2022, via the Court’ s
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`CM/ECF system.
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`/s/ Jonathan K. Waldrop
`Jonathan K. Waldrop
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`-9-
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