Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 1 of 19
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`VOIP-PAL.COM, INC.,
`
`Plaintiff
`
`v.
`
`GOOGLE LLC,
`
`Defendants.
`
`
`
`CASE NO. 6:21-cv-667-ADA
`
`JURY TRIAL DEMANDED
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`DEFENDANT GOOGLE LLC’S OPPOSED MOTION TO TRANSFER
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`
`
`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 2 of 19
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`II.
`
`III.
`IV.
`
`V.
`
`C.
`
`INTRODUCTION ............................................................................................................. 1
`STATEMENT OF FACTS ................................................................................................ 1
`A.
`There Have Been Numerous Related Cases in the NDCA .................................... 1
`B.
`The Vast Majority of Google’s Witnesses and Documents Are in the
`NDCA .................................................................................................................... 4
`VoIP-Pal’s Alleged Ties to the WDTX Are Illusory ............................................. 5
`C.
`The Known Third Party Witnesses Are All in or Closer to the NDCA ................. 6
`D.
`LEGAL STANDARD ........................................................................................................ 6
`ARGUMENT ..................................................................................................................... 7
`A.
`This Case Could Have Been Filed in the NDCA ................................................... 7
`B.
`The Private Interest Factors Favor Transfer .......................................................... 7
`1.
`Cost of Attendance for Willing Witnesses Favors Transfer ...................... 7
`2.
`The Relative Ease of Access to Sources of Proof Favors Transfer ......... 10
`3.
`The Availability of Compulsory Process to Secure the Attendance
`of Witnesses Favors Transfer................................................................... 11
`The Practical Problems That Make Trial of a Case Easy,
`Expeditious, and Inexpensive Weigh in Favor of Transfer ..................... 12
`The Public Interest Factors Also Favor Transfer ................................................. 13
`1.
`Administrative Difficulties Flowing from Court Congestion Favor
`Transfer .................................................................................................... 13
`Local Interest Favors Transfer ................................................................. 13
`The Courts’ Familiarity with the Law and the Avoidance of
`Conflicts Concerning the Application of Foreign Law Factors
`Favor Transfer .......................................................................................... 14
`CONCLUSION ................................................................................................................ 14
`
`4.
`
`2.
`3.
`
`-i-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 3 of 19
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)............................................................................................9, 13
`
`Adaptix, Inc. v. HTC Corp.,
`937 F. Supp. 2d 867 (E.D. Tex. March 28, 2013) ...................................................................11
`
`Affinity Labs of Texas, LLC v. Samsung Elecs. Co., Ltd.,
`No. 6:13-cv-364, 2014 WL 12570501 (W.D. Tex. June 11, 2014) ........................................12
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)................................................................................................13
`
`Apple Inc. v. VoIP-Pal.com, Inc.,
`No. 20-cv-02460-LHK, 2021 WL 3810263 (N.D. Cal. Aug. 26, 2021) ....................................1
`
`Cellco Partnership et al v. VoIP-Pal.com, Inc.,
`No. 3:21-cv-05275-JD (Oct. 15, 2021) ......................................................................................3
`
`Correct Transmission LLC v. ADTRAN, Inc.,
`No. 6:20-CV-00669-ADA, 2021 WL 1967985 (W.D. Tex. May 17, 2021) ...........................12
`
`Cub Club Inv., LLC v. Apple, Inc.,
`No. 6:20-cv-00856-ADA (W.D. Tex. Sept. 7, 2021) ......................................................7, 8, 11
`
`DataQuill, Ltd. v. Apple Inc.,
`No. A-13-CA-706-SS, 2014 WL 2722201 (W.D. Tex. June 13, 2014) ....................................8
`
`In re Dish Network L.L.C.,
`No. 2021-182, 2021 WL 4911981 (Fed. Cir. Oct. 21, 2021)...................................................11
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)......................................................................................7, 10, 13
`
`In re Google LLC,
`No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sept. 27, 2021) ......................................... passim
`
`In re HP, Inc.,
`No. 2018-0149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) .................................................8
`
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ................................................................................7, 10, 13, 14
`
`-ii-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 4 of 19
`TABLE OF AUTHORITIES
`(continued)
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................7
`
`Parus Holdings Inc. v. LG Elecs. Inc.,
`No, 6:19-cv-00432-ADA, 2020 WL 4905809 (W.D. Tex. Aug. 20, 2020) ............................11
`
`Twitter, Inc. v. Voip-Pal.com, Inc.,
`No. 5:21-cv-02769-LHK............................................................................................................3
`
`VoIP-Pal.com, Inc. v. Apple Inc.,
`No. 6:21-cv-00670-ADA .......................................................................................................2, 3
`
`VoIP-Pal.com, Inc. v. AT&T, Corp., et al.,
`No. 6:21-cv-00671-ADA ...........................................................................................................2
`
`VoIP-Pal.com, Inc. v. Google LLC,
`No. 6:20-cv-00269-ADA (W.D. Tex. Apr. 3, 2020) .............................................................3, 4
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ...................................................................................................10
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ........................................................................................... passim
`
`Wet Sounds, Inc. v. Audio Formz, LLC,
`No. A-17-CV-141- LY, 2017 WL 4547916 (W.D. Tex. Oct. 11, 2017) .................................10
`
`Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................7
`
`28 U.S.C. § 1404(a) .................................................................................................................1, 6, 9
`
`35 U.S.C. § 101 ............................................................................................................................1, 2
`
`-iii-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 5 of 19
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`
`
`I.
`
`INTRODUCTION
`
`Every factor of the transfer analysis weighs in favor of transferring this case to the
`
`Northern District of California (“NDCA”). The center of gravity is seated firmly in the NDCA.
`
`This case involves two companies that have no relevant witnesses or evidence in the Western
`
`District of Texas (“WDTX”). In contrast, a substantial amount of evidence and witnesses are
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`located in the NDCA where Google LLC (“Google”) has been headquartered since its founding
`
`in 1998 and where the accused products and features were primarily developed. Moreover, the
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`NDCA has overseen multiple waves of related litigation, including one pending case regarding
`
`the same accused patents. Accordingly, a transfer of this case to the NDCA pursuant to 28
`
`U.S.C. § 1404(a) is appropriate.
`
`II.
`
`STATEMENT OF FACTS
`A.
`
`There Have Been Numerous Related Cases in the NDCA
`
`VoIP-Pal has filed a total of four waves of related patent cases. Many of these cases and
`
`their mirroring Declaratory Judgment (“DJ”) actions have taken place in the NDCA. As a result,
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`the NDCA has formed a deep familiarity with the parties and relevant technology. Specifically,
`
`the following related cases (summarized in Exhibit A1) are relevant to this transfer motion:
`
`The “Wave 1 cases” in the NDCA: The first wave was filed in 2016 against various
`
`defendants (not including Google) alleging infringement of U.S. Patent Nos. 8,542,815 (“the
`
`’815 Patent”) and 9,179,005 (the “Wave 1 cases”). See Apple Inc. v. VoIP-Pal.com, Inc., No. 20-
`
`cv-02460-LHK, 2021 WL 3810263, at *1–2 (N.D. Cal. Aug. 26, 2021). The Honorable Judge
`
`Lucy H. Koh of the NDCA granted a consolidated motion to dismiss VoIP-Pal’s claims as
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`invalid under 35 U.S.C. § 101. Id. The Federal Circuit affirmed Judge Koh’s decision. Id.
`
`
`1 All numbered Exhibits are to the Declaration of Robert W. Unikel, filed concurrently.
`
`-1-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 6 of 19
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`
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`The “Wave 2 cases” in the NDCA: Judge Koh also presided over a second wave of cases,
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`filed in May and June 2018, against various defendants (not including Google) alleging
`
`infringement of U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549 (the “Wave 2
`
`cases”). Id. Judge Koh again granted a consolidated motion to dismiss VoIP-Pal’s claims as
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`invalid under 35 U.S.C. § 101. Id. The Federal Circuit again affirmed Judge Koh’s decision. Id.
`
`The “Wave 3 cases” and the “Wave 3 DJ cases” in the NDCA: In 2020, VoIP-Pal
`
`asserted U.S. Patent No. 10,218,606 (“the ’606 Patent”) against numerous defendants (including
`
`Google) in the WDTX (the “Wave 3 cases”). Id. Some of those defendants filed DJ actions in the
`
`NDCA, which were assigned to Judge Koh (the “Wave 3 DJ cases”). Id. at *4. The NDCA court
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`related the Wave 3 DJ cases to the Wave 1 cases it had previously heard. See id. VoIP-Pal moved
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`to dismiss the Wave 3 DJ cases on the basis that, inter alia, the Wave 3 cases filed in this district
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`were filed first. Id. Judge Koh denied VoIP-Pal’s motion, due to her familiarity with the disputes
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`as compared to the WDTX’s. Id. The Wave 3 DJ cases have each since been dismissed.
`
`The “Wave 4 cases” and the “Wave 4 DJ cases” in the NDCA: In the instant action,
`
`VoIP-Pal has asserted U.S. Patent Nos. 8,630,234 (“the ’234 Patent”) and 10,880,721 (“the ’721
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`Patent”) (collectively, the “Asserted Patents”) against Google, and VoIP-Pal has asserted the
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`same patents against T-Mobile, Verizon, AT&T, Apple, Amazon, and Facebook in this court
`
`(collectively, the “Wave 4 cases”). See Declaration of Robert W. Unikel (“Unikel Decl.”) ¶ 2.
`
`The Apple and AT&T cases have been dismissed. See VoIP-Pal.com, Inc. v. Apple Inc., No.
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`6:21-cv-00670-ADA; VoIP-Pal.com, Inc. v. AT&T, Corp., et al., No. 6:21-cv-00671-ADA.
`
`Verizon, Apple, and AT&T filed DJ actions on the Asserted Patents in the NDCA (the “Wave 4
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`DJ cases”), each of which were assigned to the Honorable Judge James Donato. Unikel Decl. ¶ 3.
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`The Verizon Wave 4 DJ is still pending, and currently stayed pending the resolution of transfer
`
`-2-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 7 of 19
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`
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`motions before this court. See Cellco Partnership et al v. VoIP-Pal.com, Inc., No. 3:21-cv-
`
`05275-JD, Dkt. 40 (Oct. 15, 2021).
`
`The pending Twitter DJ: In addition to the four waves of cases, there is also a pending DJ
`
`action filed in the NDCA by Twitter against U.S. Patent No. 9,935,872 (“the ’872 patent”).
`
`Twitter, Inc. v. Voip-Pal.com, Inc., No. 5:21-cv-02769-LHK. Judge Koh recently denied a
`
`motion to dismiss this DJ, noting that the ’872 patent was “directly related” to other patents that
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`had been litigated before her in the prior waves. Id. at Dkt. 38 (Nov. 2, 2021).
`
`The Asserted Patents concern the same technology as in the prior waves: There is
`
`substantial overlap between this case and the earlier waves. The patents asserted in the various
`
`waves all focus on the same technology. See Apple Inc., 2021 WL 3810263, at *4 (“The ’234
`
`patent and the ’721 patent [from this case] concern the same technology as the patents involved
`
`in the 2016 cases, the 2018 cases, the 2020 Texas cases, and the instant case.”). VoIP-Pal itself
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`admits that its “intellectual property value is derived from . . . five parent patents, one of which is
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`foundational [the ’815 Patent from Wave 1] and the others [including the ’234 Patent from this
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`case] build upon the former.” Ex. B (Form 10-K filing). Indeed, VoIP-Pal’s background on the
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`technology in its complaint in this action is recited nearly verbatim from the background on the
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`technology from its Wave 3 complaint. Compare, e.g., VoIP-Pal.com, Inc. v. Google LLC, No.
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`6:20-cv-00269-ADA (a Wave 3 case), Dkt. 1 ¶¶ 11–21 (W.D. Tex. Apr. 3, 2020), with VoIP-
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`Pal.com, Inc. v. Google LLC, No. 6:21-cv-00667-ADA (a Wave 4 case), Dkt. 1 ¶¶ 13–23 (W.D.
`
`Tex. Jun. 25, 2021).
`
`A review of the Asserted Patents and the patents asserted in the earlier waves confirms
`
`the similarities. For example, the claims of the ’606 Patent (from Wave 3) recite the use of
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`certain “identifiers” for call recipients, just as in the asserted claims in this case. See Exs. C–E.
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`-3-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 8 of 19
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`
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`Moreover, the specifications of the Asserted Patents in this case overlap with those in prior cases
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`(which all share a common specification); many of the figures are the same or nearly identical
`
`across patents. See id. And Johan Emil Viktor Björsell is a named inventor on all of the patents.
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`Unikel Decl. ¶ 9. Moreover, the accused products in this case overlap with those in Google’s
`
`Wave 3 case. Compare VoIP-Pal.com, Inc. v. Google LLC, No. 6:20-cv-00269-ADA (a Wave 3
`
`case), Dkt. 24 ¶ 43 (W.D. Tex. Jul. 31, 2020) (accusing “messaging services”), with VoIP-
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`Pal.com, Inc. v. Google LLC, No. 6:21-cv-00667-ADA (a Wave 4 case), Dkt. 1 ¶ 26 (W.D. Tex.
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`Jun. 25, 2021) (accusing a “messaging and communication platform.”).
`
`B.
`
`The Vast Majority of Google’s Witnesses and Documents Are in the NDCA
`
`Google’s Mountain View headquarters, which includes offices in neighboring Sunnyvale
`
`(collectively referred to as “Mountain View”), is the strategic center of Google’s business.
`
`Declaration of
`
`(“
`
`Decl.”) ¶ 2. As of June 2021, the Mountain View
`
`headquarters employed approximately 39,887 employees, which is approximately 45.3% of
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`Google’s U.S. employees. Id. As of June 2021, Google also had approximately 10,932 other
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`employees in offices in San Francisco, California and other smaller offices also within the
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`NDCA. Id. As of June 2021, approximately 57.7% of Google’s 88,023 total U.S. employees,
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`including engineers, product managers, marketers, executives, and staff were employed out of
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`Google’s offices located in the NDCA. Id. Although Google has an office in Austin, Texas, it
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`houses only a very small fraction of Google’s U.S. employees (2%). Id. ¶ 3. And neither Google
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`nor VoIP-Pal have identified any employees in Texas who have worked on the design and
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`development of the accused functionalities.
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`VoIP-Pal alleges that particular functionalities of Google Fi and Google Hangouts
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`infringe the Asserted Patents. Unikel Decl. ¶ 10. Regarding Google Fi,
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` and
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`
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` are Software Engineers who are knowledgeable about the feature of making voice calls
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`-4-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 9 of 19
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`
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`over WiFi using Google Fi and both are based in Mountain View, as are their direct reports.
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` Decl. ¶ 7. Regarding Hangouts,
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` is a Software Engineer who is
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`knowledgeable about accessing carrier resources outside Google using Hangouts and is based in
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`Mountain View, along with all of his direct reports. Id. ¶ 9.
`
` is a Software Engineer
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`based in Mountain View who is knowledgeable regarding accessing a user’s contacts using
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`Hangouts. Id.
`
` is a Software Engineer based in Kirkland, Washington who is
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`knowledgeable regarding the manner by which voice and video calling are established and
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`facilitated using Hangouts. Id.
`
` and
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` are engineers who are
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`knowledgeable regarding interfacing and transmitting call signaling between Google and outside
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`carriers through Hangouts. Both individuals are based in Stockholm, Sweden, and their direct
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`reports are based in either Sweden or northern California. Id.
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`Last, as a matter of Google practice, documents in Google’s possession about its products
`
`and services are normally created and maintained by the employees working on those products
`
`and services. Id. ¶ 4.
`
`C.
`
`VoIP-Pal’s Alleged Ties to the WDTX Are Illusory
`
`VoIP-Pal is a Nevada Corporation. Dkt. 1 ¶ 1. VoIP-Pal claims to have a principal place
`
`of business located at 7215 Bosque Boulevard, Waco, Texas 76710. Id. That “office,” however,
`
`is a virtual office only. Ex. F. In fact, 46 other businesses list this same address as their business
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`address. Ex. G. Google is unaware of any VoIP-Pal party witnesses that reside in the WDTX. In
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`fact, each member of the current board appears to have an “Office Address” located in Bellevue,
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`Washington. Ex. H. In its opposition to Google’s motion to transfer the Wave 3 Google case,
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`VoIP-Pal only identified one party witness who allegedly works out of the WDTX office, Mr.
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`Kevin Williams. No. 6:20-cv-00269, Dkt. 25-1 ¶ 32. VoIP-Pal contended that Mr. Williams was
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`a “business advisor” who works from VoIP-Pal’s virtual Waco office and allegedly has
`
`-5-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 10 of 19
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`
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`knowledge of VoIP-Pal’s activities. Id. Yet, VoIP-Pal does not state what relevant information
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`Mr. Williams has and avoids stating what office he is based out of. Mr. Williams (now VoIP-
`
`Pal’s CFO and Director) appears to also work out of the Bellevue, Washington office. Ex. H.
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`D.
`
`The Known Third Party Witnesses Are All in or Closer to the NDCA
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`Relevant prior art witnesses are also based in NDCA. For example, DialPad and
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`GrandCentral, which are both web-based personal communications systems that preceded the
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`priority date of the Asserted Patents, are relevant prior art systems. Exs. I–J. GrandCentral,
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`which was acquired by Google in 2007, was founded in 2005 by Craig Walker and Vincent
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`Paquet, who both currently reside in the San Francisco Bay Area and previously worked together
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`while running Dialpad Communications. Ex. K–M. Further, each of the named inventors appears
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`to reside in British Columbia, Canada based on their locations listed on the face of the Asserted
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`Patents, which issued as late as December 29, 2020. Exs. D–E.
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`III. LEGAL STANDARD
`
`To evaluate transfer under § 1404(a), courts first consider “whether a civil action ‘might
`
`have been brought’ in the destination venue.” In re Volkswagen of Am., Inc., 545 F.3d 304, 312
`
`(5th Cir. 2008) (“Volkswagen II”) (citation omitted). If so, the court weighs eight private and
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`public interest factors:
`
`(1) the relative ease of access to sources of proof; (2) the
`availability of compulsory process to secure the attendance of
`witnesses; (3) the cost of attendance for willing witnesses; and (4)
`all other practical problems that make trial of a case easy,
`expeditious and inexpensive. . . . [5] the administrative difficulties
`flowing from court congestion; [6] the local interest in having
`localized interest decided at home; [7] the familiarity of the forum
`with the law that will govern the case; and [8] the avoidance of
`unnecessary problems of conflict of laws [or in] the application of
`foreign law.
`
`-6-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 11 of 19
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`
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`Id. at 315 (citation omitted). “[I]n a case featuring most witnesses and evidence closer to the
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`transferee venue with few or no convenience factors favoring the venue chosen by the plaintiff,
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`the trial court should grant a motion to transfer.” See In re Nintendo Co., 589 F.3d 1194, 1197
`
`(Fed. Cir. 2009) (citation omitted).
`
`IV. ARGUMENT
`
`The center of gravity for this case is in the NDCA and not the WDTX. This case should
`
`therefore be transferred. See In re Google LLC, No. 2021-170, 2021 WL 4427899, at *7 (Fed.
`
`Cir. Sept. 27, 2021). Even if the Court finds all other factors neutral, transfer is still appropriate.
`
`Indeed, in a recent case, this Court transferred a case to the NDCA where the location of
`
`witnesses and evidence favored transfer and the other factors were overall neutral. See Cub Club
`
`Inv., LLC v. Apple, Inc., No. 6:20-cv-00856-ADA, Dkt. 28 at 13 (W.D. Tex. Sept. 7, 2021) (Ex.
`
`N). The Federal Circuit, too, has confirmed that transfer is warranted where the majority of
`
`witnesses and evidence are located in the transferee forum, even where at least some evidence is
`
`in the transferor forum. See In re Google LLC, 2021 WL 4427899, at *7; see also In re Juniper
`
`Networks, Inc., 14 F.4th 1313, 1323 (Fed. Cir. 2021). The same result is warranted here.
`
`A.
`
`This Case Could Have Been Filed in the NDCA
`
`The threshold requirement for a transfer of venue is met here: VoIP-Pal could have
`
`brought this action in the NDCA, where Google is headquartered. See 28 U.S.C. § 1400(b).
`
`B.
`
`The Private Interest Factors Favor Transfer
`1.
`
`Cost of Attendance for Willing Witnesses Favors Transfer
`
`The Federal Circuit established that “[t]he convenience of the witnesses is probably the
`
`single most important factor in transfer analysis.” In re Genentech, Inc., 566 F.3d 1338, 1343
`
`(Fed. Cir. 2009) (internal citation omitted). Here, the expected witnesses and their expenses for
`
`participating in this case demonstrate that this dispute belongs in the NDCA.
`
`-7-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 12 of 19
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`
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`Google established its headquarters in the NDCA at its founding, and remains there to
`
`this day.
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` Decl. ¶ 2. Google’s likely witnesses, including those with technical knowledge
`
`about the accused features and products, are all based in or nearer to the NDCA, with only a
`
`handful in Sweden. Id. ¶¶ 7, 9. These individuals have direct experience with the accused
`
`functionalities and will likely have information relevant to noninfringement, prior art, and
`
`alleged damages in this case. See id. “While it is true that the witnesses in the Northern District
`
`of California are largely affiliated with the parties, that does not negate the inconvenience and
`
`cost to those individuals to travel a significant distance to testify.” In re Google LLC, 2021 WL
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`4427899, at *4.
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`Google has an Austin office, but none of the relevant Google witnesses are based there. A
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`party’s presence in the transferor district does not affect the assessment of this factor if that
`
`presence is not relevant to the case. See, e.g., In re HP, Inc., No. 2018-0149, 2018 WL 4692486,
`
`at *1–2 (Fed. Cir. Sept. 25, 2018) (finding transfer to the NDCA appropriate even though
`
`defendant “maintain[ed] an office” within the transferor district). Indeed, this Court has granted a
`
`motion to transfer, notwithstanding a defendant’s Austin office (housing 7,000 employees)
`
`where “there is no evidence . . . that demonstrates a single employee from the Austin campus has
`
`knowledge and/or documents relevant to this case.” Cub Club Inv., No. 6:20-cv-000856-ADA,
`
`Dkt. 28 at 8 (Ex. N); see also DataQuill, Ltd. v. Apple Inc., No. A-13-CA-706-SS, 2014 WL
`
`2722201, at *1, 3 (W.D. Tex. June 13, 2014) (granting transfer to the NDCA even though
`
`defendant “employs some 3,500 people” in this district where no witnesses were identified in the
`
`WDTX). Accordingly, Google’s presence in Austin does not affect transfer because that
`
`presence is irrelevant to the patent claims in this case.
`
`-8-
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`

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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 13 of 19
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`
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`VoIP-Pal does not have any relevant witnesses in the WDTX either. While VoIP-Pal
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`purports to have an office in the WDTX, that is a virtual office only. Ex. F. And while VoIP-Pal
`
`contended that one witness, Mr. Williams, works from VoIP-Pal’s virtual Waco office, VoIP-Pal
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`does not state what relevant information Mr. Williams has and avoids stating what office he is
`
`actually based out of. In fact, Mr. Williams appears to also work out of the Bellevue, Washington
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`office. Ex. H. Further, each of VoIP-Pal’s board members appears to be located closer to the
`
`NDCA. See supra Section II.C.
`
`Under the Fifth Circuit’s 100-mile rule, “[w]hen the distance between an existing venue
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`for trial of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of
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`inconvenience to witnesses increases in direct relationship to the additional distance to be
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`traveled.” Volkswagen II, 545 F.3d at 317 (citation omitted). “[I]t is an ‘obvious conclusion’ that
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`it is more convenient for witnesses to testify at home.” Id. (citation omitted). Distant witnesses
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`“not only suffer monetary costs, but also the personal costs associated with being away from
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`work, family, and community.” Id.
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`Here, both the time and the distance the witnesses would need to travel favor transfer. All
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`of the affected Google and VoIP-Pal witnesses must travel about 1,500 miles from California (or
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`farther) to Waco, Texas to testify, resulting in costly and unnecessary travel expenses, missed
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`work, and personal disruptions. See In re Acer Am. Corp., 626 F.3d 1252 (Fed. Cir. 2010). Only
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`Google’s witnesses in Sweden may be physically closer to Waco, Texas but it would take about
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`the same amount of time for them to travel to Waco versus San Francisco, if not longer given
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`that there is no major airport in Waco. Exs. O–P. “In this regard, time is a more important metric
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`than distance” as “[t]here is no major airport in the Waco Division of the Western District of
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`Texas[.]” In re Google LLC, 2021 WL 4427899, at *4. However, litigating this case in the
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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 14 of 19
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`NDCA would allow many of the witnesses to commute to trial or hearings from home or work
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`within the same day. “[T]he task of scheduling fact witnesses so as to minimize the time when
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`they are removed from their regular work or home responsibilities gets increasingly difficult and
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`complicated when the travel time from their home or work site to the court facility is five or six
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`hours one-way as opposed to 30 minutes or an hour.” Wet Sounds, Inc. v. Audio Formz, LLC, No.
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`A-17-CV-141- LY, 2017 WL 4547916 at *3 (W.D. Tex. Oct. 11, 2017) (quoting In re
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`Volkswagen AG, 371 F.3d 201, 205 (5th Cir. 2004)).
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`Because the majority of the material witnesses reside within the NDCA or closer to the
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`NDCA, and no known witnesses reside in the WDTX, this most important factor
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`overwhelmingly favors transfer. The Federal Circuit’s cases “have emphasized that when there
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`are numerous witnesses in the transferee venue and the only other witnesses are far outside the
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`plaintiff's chosen forum, the witness-convenience factor favors transfer.” In re Google LLC,
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`2021 WL 4427899, at *4; see also In re Juniper Networks, 14 F.4th at 1319 (ordering transfer to
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`the NDCA where defendant identified eleven potential party witnesses in the NDCA and
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`plaintiff identified only one party witness in the WDTX).
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`2.
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`The Relative Ease of Access to Sources of Proof Favors Transfer
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`The fact that documents may be stored electronically does not undermine the import of
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`their location as “the Fifth Circuit [has] clarified that despite technological advances that make
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`the physical location of documents less significant, the location of sources of proof remains a
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`‘meaningful factor in the analysis.’” Wet Sounds, 2017 WL 4547916, at *2 (quoting Volkswagen
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`II, 545 F.3d at 315). And “[i]n patent infringement cases, the bulk of the relevant evidence
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`usually comes from the accused infringer. Consequently, the place where the defendant’s
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`documents are kept weighs in favor of transfer to that location.” Genentech, 566 F.3d at 1345
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`(citation omitted). Documents in Google’s possession about its products and services are
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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 15 of 19
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`normally created and maintained by the employees working on those products and services.
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` Decl. ¶ 4. Because the employees with relevant knowledge of this litigation are based
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`primarily in the NDCA, the relevant documents in this case would likely be created and
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`maintained in the NDCA. See In re Google LLC, 2021 WL 4427899, at *6. Meanwhile, there is
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`no indication that any relevant evidence exists in the WDTX. Therefore, the geographic locus of
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`evidence also favors transfer to California. This Court has found that this factor favored transfer
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`to the NDCA where the movant asserted that “Google researches, designs, develops, and tests
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`Google assistant in NDCA.” Parus Holdings Inc. v. LG Elecs. Inc., No, 6:19-cv-00432-ADA,
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`2020 WL 4905809, at *3 (W.D. Tex. Aug. 20, 2020). The Court should similarly do so here. As
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`in Cub Club, this factor weighs in favor of transfer given “1) that [Google] resides in the NDCA
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`and (2) that the accused features were apparently developed at [Google’s] offices in California.”
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`Cub Club Inv., No. 6:20-cv-000856-ADA, Dkt. 28 at 6 (Ex. N).
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`3.
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`The Availability of Compulsory Process to Secure the Attendance of
`Witnesses Favors Transfer
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`“Transfer is favored” where, as here, a transferee district like the NDCA, “has absolute
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`subpoena power over a greater number of non-party witnesses.” Adaptix, Inc. v. HTC Corp., 937
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`F. Supp. 2d 867, 874 (E.D. Tex. March 28, 2013). Known third party witnesses, prior artists
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`Paquet and Walker, reside in the NDCA. See supra Section II.D. There is no indication that these
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`non-party witnesses are willing, and they are therefore presumed to be unwilling and considered
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`under this factor. In re Dish Network L.L.C., No. 2021-182, 2021 WL 4911981, at *3 (Fed. Cir.
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`Oct. 21, 2021). There are no known third party witnesses who reside within the subpoena power
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`of the WDTX. The named inventors of the asserted patents are located outside of the subpoena
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`power of both courts. This factor therefore favors transfer. See In re Google LLC, 2021 WL
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`4427899, at *1, 6–7 (finding that weight should be given to the location of Google’s prior art
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`Case 6:21-cv-00667-ADA Document 27 Filed 11/18/21 Page 16 of 19
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`witnesses, noting Google’s history in “several previous cases in which it had called such
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`witnesses to testify during trial”).
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`4.
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`The Practical Problems That Make Trial of a Case Easy, Expeditious,
`and Inexpensive Weigh in Favor of Transfer
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`“[T]his Court has previously held that the last private interest factor favors transfer when
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`most witnesses are present in the transferee forum and the plaintiff has no presence in the
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`Western District.” Correct Transmission LLC v. ADTRAN, Inc., No. 6:20-CV-00669-ADA, 2021
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`WL 1967985, at *5 (W.D. Tex. May 17, 2021) (citation omitted). Due to the majority of likely
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`Google witnesses being in the NDCA, the lack of any likely witnesses in the WDTX, and VoIP-
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`Pal’s artificial presence in the WDTX, this factor also favors transfer.
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`Further, the conservation of judicial resources weighs heavily in favor of transferring this
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`case to the NDCA. If transferred to the NDCA, this case likely would be assigned to Judge
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`Donato, who is currently presiding over a case concerning the same Asserted Patents. See N.D.
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`Cal. Local Rule 3-12 on Related Cases. Or, the cases could be assigned to Judge Koh, who has
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`substantial experience with related patents and technology and is currently overseeing one DJ on
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`a related patent. See supra Section II.A. Courts in this district have ordered transfer under similar
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`circumstances. In Affinity Labs of Texas, LLC v. Samsung Elecs. Co., Ltd., the Court transferred
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`a case to the NDCA, which had a pending lawsuit on related patents and was familiar with the
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`patents. No. 6:13-cv-364, 2014 WL 12570501, at *2 (W.D. Tex. June 11, 2014). The court noted
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`that the transfer “will reduce a waste of judicial resources, given the similarities between the
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`patents and accused products.” Id. *8. Here, transfer is also warranted. As in Affinity, the
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`transferee district is more familiar with the Asserted Patents. Thus, transfer is appropriate, as “[a]
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`single