Case 6:21-cv-00701-ADA Document 127 Filed 09/11/23 Page 1 of 29
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`SMART MOBILE TECHNOLOGIES
`LLC,
`Plaintiff
`
`-vs-
`SAMSUNG ELECTRONICS CO. and
`LTD., SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Defendants
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`W-21-CV-00701-ADA
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`ORDER DENYING DEFENDANTS’ MOTION TO TRANSFER
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`Before the Court is Defendants Samsung Electronics Co. Ltd (“SEC”) and Samsung
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`Electronics America, Inc.’s (“SEA”) (collectively, “Samsung”) Motion to Transfer Venue to the
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`Northern District of California. ECF No. 42. Plaintiff Smart Mobile Technologies LLC (“Smart
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`Mobile”) opposes the motion. ECF No. 84. Samsung filed a reply to further support its motion.
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`ECF No. 91. After careful consideration of the parties’ briefs and the applicable law, the Court
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`DENIES Samsung’s motion to transfer venue to the Northern District of California.
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`I.
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`FACTUAL BACKGROUND
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`In its complaint, Smart Mobile claims Samsung infringes of U.S. Patent Nos. 8,442,501
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`(the “’501 patent”), 8,472,936 (the “’936 patent”), 9,472,937 (the “’937 patent”), 8,761,739 (the
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`“’739 patent”), 8,824,434 (the “’434 patent”), 8,842,653 (the “’653 patent”), 9,019,946 (the “’946
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`patent”), 9,049,119 (the “’119 patent”), 9,191,083 (the “’083 patent”), 9,614,943 (the “’943
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`patent”), 9,756,168 (the “’168 patent”), and 9,084,291 (the “’291 patent”) (collectively, the
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`“asserted patents”). ECF No. 1 ¶¶ 1−14. The ’501, ’936, ’937, ’739, ’119, and ’168 patents are
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`directed to “improved wireless communication systems and devices having voice and data
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`Case 6:21-cv-00701-ADA Document 127 Filed 09/11/23 Page 2 of 29
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`communication capability, the capability to switch dynamically between wireless networks, and
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`the capability of communicating with a server than enhances the functionality of the devices.” Id.
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`¶ 23. The ’434, ’653, ’946, ’291, ’083, and ’943 patents are directed to “enhancements to mobile
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`device communications functionality.” Id. ¶ 24.
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`Smart Mobile, the owner of the asserted patents, is a limited liability company organized
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`under the laws of Delaware. Id. ¶ 16. Smart Mobile’s principal place of business is in Austin,
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`Texas. Id. SEC is a corporation organized under the laws of South Korea with a principal place of
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`business in South Korea. Id. ¶ 17. SEA is a wholly owned subsidiary of SEC. Id. ¶ 18. SEA is a
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`corporation organized under the laws of New York with a principal place of business in New
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`Jersey. Id. According to Smart Mobile, Samsung sells products that infringe the asserted patents,
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`including Galaxy S, Galaxy Note, Galaxy A, Galaxy J, Galaxy Z, Galaxy Tab, and other Galaxy
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`mobile devices. Id. ¶ 34. The Court will refer to these products as the “accused products.”
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`Along with this case, Smart Mobile also filed an action against Apple Inc. Smart Mobile
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`Technologies LLC v. Apple Inc., No. 6:21-cv-603-ADA (W.D. Tex. June 11, 2021), ECF No. 1
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`[hereinafter “Apple Litigation”]. The Apple Litigation involves many of the same patents that are
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`asserted in this case.
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`After responding to Smart Mobile’s complaint, Samsung filed this motion to transfer. ECF
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`No. 42. Samsung does not argue that the Western District of Texas (“WDTX”) is an improper
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`venue for this case; instead, it argues that the Northern District of California (“NDCA”) is a more
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`convenient forum, pointing to the location of potential witnesses and the relevant records in
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`California. Id. at 1. Smart Mobile contends that this case should remain in the WDTX, pointing to,
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`among other factors, Smart Mobile’s witnesses and evidence in Texas and the lack of relevant
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`witnesses in the NDCA. ECF No. 84 at 1.
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`II.
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`LEGAL STANDARD
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`In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of
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`the regional circuit—here, the Fifth Circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed.
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`Cir. 2008). 28 U.S.C. § 1404(a) provides in part that “[f]or the convenience of parties and
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`witnesses, . . . a district court may transfer any civil action to any other district or division where
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`it might have been brought . . . ” Id. “Section 1404(a) is intended to place discretion in the district
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`court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration
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`of convenience and fairness.’” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting
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`Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)).
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`The preliminary question under § 1404(a) is whether a civil action “‘might have been
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`brought’ in the destination venue.” In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir. 2008)
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`[hereinafter Volkswagen II]. If the destination venue would have been a proper venue, then “[t]he
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`determination of ‘convenience’ turns on a number of public and private interest factors, none of
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`which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358
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`F.3d 337, 340 (5th Cir. 2004) (footnote omitted). The private interest factors include: “(1) the
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`relative ease of access to sources of proof; (2) the availability of compulsory process to secure the
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`attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical
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`problems that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen AG, 371
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`F.3d 201, 203 (5th Cir. 2004) [hereinafter Volkswagen I] (citing Piper Aircraft Co. v. Reyno, 454
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`U.S. 235, 241 n.6 (1982)). The public factors include: “(1) the administrative difficulties flowing
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`from court congestion; (2) the local interest in having localized interests decided at home; (3) the
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`familiarity of the forum with the law that will govern the case; and (4) the avoidance of
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`unnecessary problems of conflict of laws of the application of foreign law.” Id. Courts evaluate
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`these factors based on the situation which existed at the time of filing, rather than relying on
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`hindsight knowledge of the defendant’s forum preference. Hoffman v. Blaski, 363 U.S. 335, 343
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`(1960).
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`The moving party has the burden to prove that a case should be transferred for convenience.
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`Volkswagen II, 545 F.3d at 314. The burden is not simply that the alternative venue is more
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`convenient, but that it is clearly more convenient. Id. at 314–15. While “clearly more convenient”
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`is not the same as the “clear and convincing” standard, the moving party must still show more than
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`a mere preponderance. Quest NetTech Corp. v. Apple, Inc., No. 2:19-cv-118, 2019 WL 6344267,
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`at *7 (E.D. Tex. Nov. 27, 2019). Yet, the Federal Circuit has clarified that, for a court to hold that
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`a factor favors transfer, the movant need not show an individual factor clearly favors transfer. In
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`re Apple Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020).
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`III. DISCUSSION
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`The threshold determination in the § 1404(a) analysis is whether this case could initially
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`have been brought in the destination venue—the NDCA. Samsung argues that the threshold
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`determination is met because SEA has facilities in California and over 520 full-time employees in
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`the NDCA, and SEC is a foreign corporation. No. 42 at 4. Smart Mobile does not address the
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`threshold determination. ECF No. 84. Because Samsung has shown that venue is proper for the
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`claims against SEC and SEA, the Court determines that the threshold determination is met.
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`Because the threshold determination is met, the Court now analyzes the private and public interest
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`factors to determine whether the NDCA is a clearly more convenient forum than the WDTX.
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`The Private Interest Factors
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`The Cost of Attendance and Convenience for Willing Witnesses
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`The most important factor in the transfer analysis is the convenience of the witnesses. In
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`re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). According to Fifth Circuit law, if the
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`distance between a current venue and a proposed venue is more than 100 miles, the inconvenience
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`to witnesses increases in direct relationship to the additional distance they must travel if the matter
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`is transferred. Volkswagen II, 545 F.3d at 317. But it is unclear when the 100-mile rule applies, as
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`the Federal Circuit has stated that courts should not apply the rule “rigidly” in cases where
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`witnesses would be required to travel a significant distance no matter what venue they testify in.
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`In re Apple, 979 F.3d at 1342 (discussing witnesses traveling from New York) (citing Volkswagen
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`II, 545 F.3d at 317). “[T]he inquiry should focus on the cost and inconvenience imposed on the
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`witnesses by requiring them to travel to a distant forum and to be away from their homes and work
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`for an extended period of time.” In re Google, LLC, No. 2021-170, 2021 WL 4427899, at *4 (Fed.
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`Cir. Sept. 27, 2021). According to the Federal Circuit, time is a more important metric than
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`distance. Id. However, the Federal Circuit has also held that when willing witnesses will have to
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`travel a significant distance to either forum, the slight inconvenience of one forum in comparison
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`to the other should not weigh heavily on the outcome of this factor. In re Apple, 979 F.3d at 1342.
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`According to Samsung, this factor favors transfer because Smart Mobile’s witnesses are
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`located in the NDCA. ECF No. 42 at 10. Samsung alleges that the inventors of the asserted patents,
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`Sunil K. Rao and Sanjay K. Rao, reside in Palo Alto, California. Id. In response, Smart Mobile
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`argues that Sunil K. Rao and Sanjay K. Rao both reside in Austin, Texas. ECF No. 84 at 10. Smart
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`Mobile argues that the WDTX is a more convenient forum for Sunil K. Rao and Sanjay K. Rao.
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`Id. at 10−11. Smart Mobile also argues that it has an employee, William Heye, who resides in
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`Plano, Texas. Id. at 11. Smart Mobile argues that the WDTX is a more convenient forum for Mr.
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`Heye. Id. In its reply, Samsung argues that Sunil K. Rao’s and Sanjay K. Rao’s presence in the
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`WDTX is a “construct for litigation.” ECF No. 91 at 2. Samsung notes that Sanjay K. Rao signed
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`a lease in Austin less than two months before this case was filed. Id. Samsung also notes that Mr.
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`Heye no longer works for Smart Mobile. Id. at 3; ECF No. 87. Samsung argues that Smart Mobile
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`has failed to show what information, if any, Mr. Heye possesses. ECF No. 91 at 3.
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`The Court finds that the presence of Sunil K. Rao and Sanjay K. Rao in the WDTX weighs
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`against transfer. Sunil K. Rao and Sanjay K. Rao are inventors of the asserted patents and no doubt
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`possess knowledge relevant to the claimed invention and the prosecution of the asserted patents.
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`Further, Sunil K. Rao and Sanjay K. Rao are members of Smart Mobile. ECF No. 85-2 ¶ 1; ECF
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`No. 85-3 ¶ 1. Thus, they likely possess relevant knowledge regarding Smart Mobile’s ownership
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`of the asserted patents and monetization efforts. While Sunil K. Rao and Sanjay K. Rao may have
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`moved to the WDTX in anticipation of litigation, they both reside in the WDTX. ECF No. 85-2
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`¶ 4; ECF No. 85-3 ¶ 6. Both Sunil K. Rao and Sanjay K. Rao have Texas drivers’ licenses, and
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`they are both registered to vote in Texas. ECF No. 85-2 ¶ 4; ECF No. 85-3 ¶ 6. Regardless of their
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`reasoning for the move, because Sunil K. Rao and Sanjay K. Rao reside in Austin, they will find
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`this Court a more convenient forum than the NDCA. Thus, the Court finds that their presence in
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`the WDTX weighs against transfer.
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`As for Mr. Heye, the Court also finds that his presence in Texas weighs against transfer.
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`Mr. Heye was Smart Mobile’s strategic advisor and helped Smart Mobile with business and
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`marketing plans. ECF No. 85-4 ¶ 1. Mr. Heye also interfaced with Smart Mobile’s legal counsel.
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`Id. The Court finds that Mr. Heye may possess knowledge regarding Smart Mobile’s monetization
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`efforts, including efforts to license the asserted patents. And while Mr. Heye no longer works for
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`Smart Mobile, ECF No. 87, Mr. Heye stated in his declaration that he was willing to testify on
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`behalf of Smart Mobile, ECF No. 85-4 ¶ 9. Because Mr. Heye is willing to testify at trial, the Court
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`considers him under the analysis of this factor. And because Mr. Heye may possess relevant
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`knowledge and he would find this Court a more convenient forum, the Court weighs his presence
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`in Texas against transfer.
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`Samsung argues that this factor favors transfer because almost all the prosecuting attorneys
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`are located in the NDCA. ECF No. 42 at 10. Further, Samsung claims that the third inventor of the
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`asserted patents, Raman K. Rao, is deceased and his legal representative, Rekha K. Rao, is in Palo
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`Alto, California. Id. And Samsung argues that any third-party witnesses from Google’s Mountain
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`View headquarters would find the NDCA a more convenient forum. Id. Samsung further claims
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`that witnesses from Global Technology Transfer Group, Inc. (“GTT”), which contacted Samsung
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`to solicit interest in acquiring the asserted patents, are in Portland, Oregon. Id. Samsung argues
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`that GTT’s witnesses would find the NDCA a more convenient forum. Id.
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`In response, Smart Mobile argues that the Court should disregard third-party witnesses
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`under the analysis of this factor. ECF No. 84 at 11. Smart Mobile contends that when there is no
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`evidence that a witness is willing, the Court should presume that the subpoena power is necessary
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`to secure the witnesses’ attendance. Id. Smart Mobile argues that the individuals identified by
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`Samsung—including Rekha K. Rao, Google employees, and GTT employees—are all third-party
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`witnesses who should be considered under the compulsory process factor. Id.
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`The Court agrees with Smart Mobile. The Federal Circuit has held that “when there is no
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`indication that a non-party witness is willing, the witness is presumed to be unwilling and
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`considered under the compulsory process factor.” In re HP Inc., No. 2018-149, 2018 WL 4692486,
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`at *3 n.1 (Fed. Cir. Sept. 25, 2018). Because Samsung has not shown that Rekha K. Rao, Google’s
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`employees, and GTT’s employees are willing to testify at trial, the Court only considers these
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`witnesses under the compulsory process factor below. Since this factor considers the convenience
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`of the willing witnesses, Volkswagen I, 371 F.3d at 203, the Court does not consider the
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`convenience of unwilling witnesses under the analysis of this factor.
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`As for its own employees, Samsung claims that its relevant employees are in Korea and
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`they would find the NDCA a more convenient forum. ECF No. 42 at 10−11. In response, Smart
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`Mobile argues that Samsung’s Texas-based employees would be inconvenienced if this case were
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`transferred. ECF No. 84 at 9−10. Smart Mobile identifies
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` Id. Smart Mobile also identifies
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`Phil Turbin, Samsung’s declarant and an Analytics Manager at SEA. Id.; ECF No. 42-3 ¶ 1. Mr.
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`Turbin resides in Princeton, Texas and works in Plano, Texas. ECF No. 84 at 3. Smart Mobile
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`argues that the WDTX is only marginally more inconvenient for Samsung’s witnesses in Korea.
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`Id. at 10.
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`For Samsung’s Korea-based employees, the Court finds that this factor does not favor
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`transfer. While Samsung’s Korea-based employees may possess relevant information for trial, the
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`slight inconvenience of traveling to the WDTX rather than the NDCA does not impact the outcome
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`of this factor. In In re Apple Inc., the Federal Circuit explained that while witnesses in New York
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`would travel significantly less distance for trial in the WDTX than in the NDCA, “in either instance
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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.” 979 F.3d at 1342. The court determined that these witnesses “will only
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`be ‘slightly more inconvenienced by having to travel to California’ than to Texas.’” Id. Similarly
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`here, while SEC’s employees in Korea are closer to the NDCA than the WDTX, the slight
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`inconvenience of having to travel to Texas rather than California does not weigh heavily on the
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`outcome of this factor.
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`As for
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` and Turpin, the Court finds that the presence of
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` in Texas
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`weighs against transfer. As Smart Mobile explains,
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`. ECF No. 84 at 3. Samsung does not
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`dispute
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` relevance in its reply. ECF No. 91. As for Mr. Turpin, Samsung relied on Mr.
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`Turpin as one of its declarants for its Motion. ECF No. 42-3. But the Court is unsure what
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`knowledge Mr. Turpin possesses that would be needed at trial in this case. Mr. Turpin’s declaration
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`primarily focuses on SEA’s places of business. Id. Because Smart Mobile has not shown what
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`knowledge Mr. Turpin may possess related to this litigation, the Court only considers
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`presence in Texas within the analysis of this factor.
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`The Court finds this factor is weighs aga inst transfer. The two living inventors of the
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`asserted patents reside in the WDTX. And one former Smart Mobile employee is willing to testify
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`at trial and resides in Texas. Further, one potential witness from Samsung resides in Texas. No
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`willing witnesses reside in the NDCA. Based on the evidence provided, the Court concludes that
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`there are more relevant willing witnesses in Texas than in California.
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`The Relative Ease of Access to Sources of Proof
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`“In considering the relative ease of access to proof, a court looks to where documentary
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`evidence, such as documents and physical evidence, is stored.” Fintiv Inc. v. Apple Inc., No. 6:18-
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`cv-00372, 2019 WL 4743678, at *2 (W.D. Tex. Sept. 10, 2019). “[T]he question is relative ease
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`of access, not absolute ease of access.” In re Radmax, 720 F.3d 285, 288 (5th Cir. 2013) (emphases
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`in original). “In patent infringement cases, the bulk of the relevant evidence usually comes from
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`the accused infringer. Consequently, the place where the defendant’s documents are kept weighs
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`in favor of transfer to that location.” In re Apple Inc., 979 F.3d at 1340 (citing In re Genentech,
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`566 F.3d at 1345).
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`According to Samsung, this factor favors transfer because Smart Mobile’s witnesses live
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`and work in the NDCA. ECF No. 42 at 4. Samsung alleges that Sunil K. Rao and Sanjay K. Rao,
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`inventors of the asserted patents, reside in Palo Alto, California. Id. Samsung also claims that
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`Smart Mobile’s predecessors-in-interest, IP Holdings, Inc. and Smart Mobile, Inc., are both
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`headquartered in the NDCA. Id. at 4−5. Samsung also claims that IP Holdings, Inc.’s Chief
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`Executive Officer, Rekha K. Rao, also resides in the NDCA. Id. at 5. Samsung notes that most of
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`the attorneys that participated in the prosecution of the asserted patents are in or near the NDCA.
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`Id. Even though Smart Mobile claims that its principal place of business is in Austin, Texas,
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`Samsung argues that Smart Mobile’s presence in the WDTX is “ephemeral, and a construct for
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`litigation and appear[s] to exist for no other purpose than to manipulate venue.” Id. (quoting In re
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`Samsung Elecs. Co., 2 F.4th 1371, 1378 (Fed. Cir. 2021)). Samsung notes that Smart Mobile’s
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`principal place of business is a generic co-working space. Id. Samsung argues that IP Holdings,
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`Inc. and Smart Mobile, Inc. likely possess more relevant evidence because they owned the asserted
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`patents for longer than Smart Mobile has. Id. at 5−6.
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`In response, Smart Mobile argues that its documents are in the WDTX. ECF No. 84 at 4.
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`Smart Mobile claims that its documents related to conception and reduction to practice of the
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`claimed invention are in Austin. Id. Smart Mobile claims that its documents related to prosecution
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`of the asserted patents are in Waco and Austin. Id. Smart Mobile’s declarant, Sunil K. Rao,
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`explained that the prosecution documents were moved to Waco because it is “approximately
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`equidistant between Austin and Plano, Texas, where Smart Mobile’s employee, William Heye,
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`resides and works.” ECF No. 85-3 ¶ 10. Smart Mobile also claims that its documents related to
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`potential sales and licensing of the asserted patents as well as the assignments of the asserted
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`patents are in Austin. ECF No. 84 at 4. Lastly, Smart Mobile claims that its documents related to
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`any analyses of the value, validity, enforceability, and infringement of the asserted patents are in
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`Austin. Id. Smart Mobile asserts that it does not have any documents in the NDCA. Id. Smart
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`Mobile also contends that Samsung has not shown that IP Holdings, Inc. and Smart Mobile, Inc.
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`possess any relevant information. Id. at 5. And Smart Mobile claims that Samsung has only shown
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`that four of the seven prosecuting attorneys resides in California. Id. Smart Mobile notes that one
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`of the prosecuting attorneys resides in Texas. Id. But Smart Mobile claims that it maintains all the
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`prosecution history files in Texas. Id.
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`In its reply, Samsung argues that Smart Mobile’s ephemeral presence in the WDTX is
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`afforded no weight in the transfer analysis. ECF No. 91 at 2. Samsung argues that Smart Mobile’s
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`tie to this District is “nothing more than a construct for litigation.” Id. Samsung argues that Smart
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`Mobile acknowledges that its documents originate from California, not Texas. Id. at 3. Samsung
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`argues that the prosecution documents can easily be moved and many of the prosecution
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`documents are publicly available from the USPTO. Id. Samsung argues that Smart Mobile’s claim
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`that documents related to Smart Mobile’s sales and licensing should be afforded no weight because
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`Smart Mobile does not sell a product. Id.
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`The Court finds that Smart Mobile’s documents in this District weigh at least slightly
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`against transfer. While Smart Mobile may have moved many of its documents to this District in
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`anticipation of litigation, the Court does not find that this is a case in which Smart Mobile’s move
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`was simply “recent, ephemeral, and an artifact of litigation.” In re Samsung, 2 F.4th at 1378.
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`Rather, Smart Mobile’s sole members and the inventors of the asserted patents, Sunil K. Rao and
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`Sanjay K. Rao, have moved to the WDTX. ECF No. 85-2 ¶¶ 1−2, 4; ECF No. 85-3 ¶¶ 1−2, 6. Both
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`Sunil K. Rao and Sanjay K. Rao have Texas drivers’ licenses, and they are both registered to vote
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`in Texas. ECF No. 85-2 ¶ 4; ECF No. 85-3 ¶ 6. Sunil K. Rao and Sanjay K. Rao are also both
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`originally from Texas. ECF No. 85-2 ¶ 4; ECF No. 85-3 ¶ 6. And Sunil K. Rao has been working
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`on developing a mobile device in Belton, Texas with an independent contractor from Austin. ECF
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`No. 85-3 ¶ 7. All of Smart Mobile’s operations, including all of its efforts to monetize the asserted
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`patents, are in Texas. Id. ¶ 8. Smart Mobile has an electronics project laboratory with various
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`components, tools, equipment, and prototypes in Texas. Id. Smart Mobile has tested software
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`applications in or around Austin, Texas. Id. ¶ 15. And one of Smart Mobile’s (now former )
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`employees has resided in Texas for many years. ECF No. 85-4 ¶ 3. Thus, even though Sunil K.
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`Rao and Sanjay K. Rao’s move to Austin may have been in anticipation of litigation, the Court
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`finds that Smart Mobile has established itself in this District. This move does not appear to have
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`the “ephemeral” nature that has been seen in other cases. See, e.g., In re Microsoft Corp., 630 F.3d
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`1361, 1365 (Fed. Cir. 2011) (explaining that a plaintiff’s presence in a district is “recent,
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`ephemeral, and a construct for litigation” when the plaintiff’s offices in the transferor forum staff
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`no employees and merely store the plaintiff’s documents); In re Zimmer Holdings, Inc., 609 F.3d
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`1378, 1381 (Fed. Cir. 2010) (explaining that a plaintiff’s presence in a district is recent, ephemeral,
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`and an artifact of litigation when the plaintiff’s witnesses were not in the transferor forum). The
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`Court finds that the presence of Smart Mobile’s documents in the WDTX weighs at least slightly
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`against transfer. But the Court does not weigh the presence of Smart Mobile’s documents in the
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`WDTX heavily against transfer because they were recently moved to this District.
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`As for Smart Mobile’s predecessors-in-interest, IP Holdings, Inc. and Smart Mobile, Inc.,
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`the Court does not weigh their presence in the NDCA in favor of transfer. IP Holdings, Inc.’s Chief
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`Executive Officer, Rekha K. Rao, resides in Virginia, not the NDCA. ECF No. 85-3 ¶ 18. Rekha
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`K. Rao also appears to be the CEO of Smart Mobile, Inc. as well. Id. ¶ 17. Samsung has not
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`identified any other employees of IP Holdings, Inc. or Smart Mobile, Inc. Sunil K. Rao explained
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`in his declaration that all the documents related to the transfer of ownership of the asserted patents
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`are in the possession of Smart Mobile. ECF No. 85-3 ¶ 15. Sunil K. Rao is “not aware that either
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`IP Holdings or Smart Mobile, Inc. (now known as BrandCRM, Inc.) retain any documents related
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`to the Asserted Patents.” Id. But to the extent that IP Holdings, Inc. and Smart Mobile, Inc. possess
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`any relevant documents, the Court concludes that those documents are likely created, maintained,
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`and accessed by IP Holdings, Inc.’s and Smart Mobile, Inc.’s CEO, Rekha K. Rao, in Virginia.
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`Neither the NDCA nor the WDTX would be a particularly convenient forum for accessing
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`documents created and maintained in Virginia.
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`As for the prosecuting attorneys, the Court concludes that the presence of four prosecuting
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`attorneys in California does not weigh in favor of transfer. Samsung failed to show that the
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`attorneys involved in the prosecution of the asserted patents possess source of proof needed in this
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`case that are not already in the possession of Smart Mobile. But the Court notes that if Samsung
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`had shown that the prosecuting attorneys possess relevant evidence, only four of the seven
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`prosecuting attorneys are in California. ECF No. 85-5 (noting that Stephen Eric Baldwin, Johney
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`U Han, Steven Michael Giovannetti, and Michael Kevin O’Neill reside in California). One of the
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`prosecuting attorneys resides in Texas. Id. (noting that Richard Leon Gregory Jr. resides in Texas).
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`Thus, if somehow the prosecuting attorneys possess relevant, non-duplicative sources of proof for
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`this case, attorneys involved in the prosecution of the asserted patents are in or near both forums.
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`Samsung also argues that this factor favors transfer because Google may possess relevant
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`evidence in the NDCA. ECF No. 42 at 6. Samsung notes that Smart Mobile has accused the Google
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`Hangouts and Duo applications. Id. And Samsung claims that Google’s evidence is likely in the
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`NDCA because Google’s headquarters are in Mountain View, California. Id. Samsung also argues
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`that GTT may have evidence in Portland, Oregon. Id. at 6−7.
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`Case 6:21-cv-00701-ADA Document 127 Filed 09/11/23 Page 14 of 29
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`In response, Smart Mobile complains that Samsung has not shown that Google Hangouts
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`and Google Duo were designed and developed in the NDCA. ECF No. 84 at 5−6. As discussed
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`below within the compulsory process factor, see infra section III(A)(iii), Smart Mobile argues that
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`Google Hangouts and Duo were designed and developed by Google employees in Washington. Id.
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`at 6. Smart Mobile also notes that GTT’s evidence is not within the NDCA, but is rather in
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`Portland, Oregon. Id.
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`In its reply, Samsung argues that it is undisputed that Google provides the accused Google
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`Hangouts and Duo applications. ECF No. 91 at 2. Samsung also argues that this factor still favors
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`transfer even if some of the development of the accused Google Hangouts and Duo applications
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`occurred in Washington. Id.
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`The Court finds that the presence of relevant Google employees in the NDCA and
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`Washington weighs in favor of transfer. Samsung has identified three Google employees in the
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`NDCA that may create and maintain documents related to this case. See infra section III(A)(iii).
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`Smart Mobile has also identified seven Google employees in Washington that likely create and
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`maintain documents related to this case. See id. Documents created and maintained by Google’s
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`employees in the NDCA and Washington would be more easily accessed from the NDCA than the
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`WDTX. VoIP-Pal.com, Inc. v. Meta Platforms, Inc., No. 6:21-cv-00665-ADA, 2022 WL 2110686,
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`at *3 (W.D. Tex. May 31, 2022). Additionally, the Court finds that the presence of GTT employees
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`in Oregon weighs in favor of transfer. The parties agree that GTT is based in Portland, Oregon,
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`and Smart Mobile alleges that GTT contacted Samsung to sell or license the asserted patents. ECF
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`No. 42 at 6−7; ECF No. 84 at 6. If GTT employees possess documents related to this case, those
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`documents are likely created and maintained in Portland, Oregon. These sources of proof would
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`likely be more easily accessed from the NDCA than the WDTX.
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`Case 6:21-cv-00701-ADA Document 127 Filed 09/11/23 Page 15 of 29
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`Additionally, Samsung asserts that this factor favors transfer because SEA has facilities in
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`Mountain View, California. ECF No. 42 at 6. In response, Smart Mobile claims that Samsung’s
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`evidence is in Korea and Texas. ECF No. 84 at 2. Based on statements from Samsung’s declarant,
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`Smart Mobile argues that the “research, design, and development of the products at issues in this
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`case were done in Korea.” Id. at 3 (citing ECF No. 42-3 ¶ 10 (Declaration of Phil Turpin)). Smart
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`Mobile notes that Samsung has identified no documents or source code in the NDCA. Id. And
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`Smart Mobile claims that Samsung has stated that Samsung’s documents detailing its analyses of
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`the asserted patents are in Korea. Id. (citing ECF No. 84-1 (Defendants’ Supplemental Objections
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`and Responses to Plaintiff’s First Interrogatories Regarding Venue)). Smart Mobile argues that
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` Id. Smart Mobile notes that
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`
`
`
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`
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` Id. Smart Mobile
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`also argues that Samsung’s declarant, Phil Turpin, may possess relevant documents in his office
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`in Plano, Texas. Id. In response, Samsung complains that Smart Mobile “does not point to any
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`relevant Samsung documents located in Texas.” ECF No. 91 at 1. Samsung also argues that
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`relevant documents are in Korea does not weigh against transfer. Id.
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`The Court agrees with Samsung—the relevant documents in Korea do not weigh against
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`transfer. But the Court acknowledges that Samsung has expressly stated that “the research, design,
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`and development of Samsung smartphone products, tablet products, watch products, television
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`products, and wireless charger products were done primarily by SEC in Korea.” ECF No. 42-3
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`¶ 10. Samsung identifies its employees in Korea as those responsible for designing, researching,
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`developing, and testing the accused products. ECF No. 84-1 at 14−15, 18−19. Samsung has
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`Case 6:21-cv-00701-ADA Document 127 Filed 09/11/23 Page 16 of 29
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`identified no employees from its offices in California who are responsible for the design, research,
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`development, and testing of the accused products. ECF No. 84-1. Thus, the Court concludes that
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`Samsung’s relevant technical documents are likely created and maintained in Korea, not
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`California. Thus, the Court does not weigh the presence of SEA employees in California in favor
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`of transfer.
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`The Court weighs the presence of two Samsung employees in Texas against transfer. First,
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`Samsung’s
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` ECF No. 84-1 at 14−15, 20.
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`
`
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`
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` is much closer to the WDTX than the NDCA.
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`Second, Mr. Turpin was selected by Samsung as one of its declarants. While it is unclear whether
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`Mr. Turpin possesses relevant knowledge for this case, see supra section III(A)(i), he may be a
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`document custodian for documents related to this litigation in his role as Samsung’s declarant. Any
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`documents Mr. Turpin has would be more easily accessed from the WDTX than the NDCA.
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`Accordingly, the Court finds that this factor is neutral. Smart Mobile’s documents appear
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`to be stored entirely within this District. Further, Samsun