Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 1 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`ALMONDNET, INC. and
`INTENT IQ, LLC,
`
`
`
`Plaintiffs,
`
`v.
`
`ROKU, INC.
`
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`C.A. No. 6:21-cv-00731-ADA
`
`PATENT CASE
`
`
`
`
`
`
`
`
`ROKU’S REPLY IN SUPPORT OF ITS MOTION TO DISMISS OR TRANSFER
`BASED ON FIRST-TO-FILE RULE, OR IN THE ALTERNATIVE,
`TO TRANSFER PURSUANT TO 28 U.S.C. § 1404(A)1
`
`
`
`
`
`
`1 Roku’s First-to-File Motion is filed at Dkt. 7.
`
`
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 2 of 15
`
`
`
`TABLE OF CONTENTS
`
`
`I. ALMONDNET’S RESPONSE RAISES NO COMPELLING CIRCUMSTANCE
`EXCEPTION TO THE FIRST-TO-FILE RULE ............................................................... 1
`
`II. THE ANTICIPATORY SUIT EXCEPTION DOES NOT APPLY ....................................... 2
`
`III. THE BALANCE OF TRANSFER FACTORS FAVORS DELAWARE .............................. 4
`
`IV. DELAWARE IS CLEARLY MORE CONVENIENT UNDER 28 U.S.C. § 1404(A) .......... 5
`
`A.
`
`B.
`
`AlmondNet Admits The District Of Delaware Is A Proper Venue ........................ 5
`
`The Private Interest Factors Favor Transfer ........................................................... 5
`
`
`
`
`
`
`
`
`
`Ease of Access to Proof .............................................................................. 5
`
`Compulsory Process.................................................................................... 5
`
`Cost of Attendance ...................................................................................... 6
`
`Practical Considerations .............................................................................. 7
`
`C.
`
`The Public Interest Factors Favor Transfer ............................................................ 8
`
`
`
`
`
`
`
`Administrative Difficulties ......................................................................... 8
`
`Local Interest .............................................................................................. 9
`
`Familiarity of Forum with Law / Avoidance of Conflicts ........................ 10
`
`V. CONCLUSION ..................................................................................................................... 10
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 3 of 15
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`In re Apple,
`979 F.3d 1332 (Fed. Cir. 2020)..................................................................................................7
`
`Elecs. for Imaging, Inc. v. Coyle,
`394 F.3d 1341 (Fed. Cir. 2005)..................................................................................................2
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)..................................................................................................9
`
`Genentech, Inc. v. Eli Lilly & Co.,
`998 F.2d 931 (Fed. Cir. 1993)................................................................................................3, 4
`
`In re Google, Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ......................................................8
`
`MasterObjects, Inc. v. Facebook Inc.,
`No. 6-20-cv-00087-ADA (W.D. Tex. July 13, 2021) ................................................................5
`
`Moskowitz Family LLC v. Globus Medical, Inc.,
`No. 6:19-cv-00672-ADA, 2020 WL 4577710 (W.D. Tex. July 2, 2020) ..................................5
`
`In re Nitro Fluids, LLC,
`978 F.3d 1308 (Fed. Cir. 2020)..........................................................................................1, 2, 4
`
`PersonalWeb Technologies, LLC v. NEC Corp. et al. .,
`No. 6:11-cv-655, 2013 WL 9600333 (E.D. Tex. Mar. 21, 2013) .............................................4
`
`Tex. Data Co. v. Target Brands, Inc.,
`771 F. Supp. 2d 630 (E.D. Tex. 2011) .............................................................................5, 9, 10
`
`In re TS Tech,
`551 F.3d 1315 (Fed. Cir. 2008)................................................................................................10
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ...............................................................................................5, 10
`
`Statutes
`
`28 U.S.C. § 1391(b) .........................................................................................................................3
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 4 of 15
`
`
`
`TABLE OF EXHIBITS2
`
`Exhibit A
`
`Declaration of Gergely Timar
`
`Exhibit B
`
`Declaratory Judgment Complaint filed by Roku in Case No. 21-1035
`(MN) in the District of Delaware
`
`Exhibit C
`
`First-Filed Delaware Action ECF Filing Receipt Evincing Time of Filing
`
`Exhibit D
`
`Second-Filed Waco Action PACER Report Evincing Time of Filing
`
`Exhibit E
`
`Second-Filed Waco Action Court Report Evincing Time of Filing
`
`Exhibit F
`
`LinkedIn Profile for Roy Shkedi
`
`Exhibit G
`
`Exhibit H
`
`Exhibit I
`
`AlmondNet First Amended Complaint Against Oath Holdings, Case No.
`1:19-cv-00247 (D. Del.)
`
`AlmondNet First Amended Complaint Against Oath Holdings, Case No.
`1:18-cv-00943 (D. Del.)
`
`AlmondNet First Amended Complaint against Yahoo!, Case No. 1:16-cv-
`01557 (E.D.N.Y.)
`
`Exhibit J
`
`Mileage from San Jose, CA to Waco courthouse
`
`Exhibit K
`
`Mileage from San Jose to Delaware courthouse
`
`Exhibit L
`
`Mileage from Boston, MA to Delaware
`
`Exhibit M Mileage from Boston, MA to Waco
`
`Exhibit N
`
`Mileage from Long Island City, NY to Delaware courthouse
`
`Exhibit O
`
`Mileage from Long Island City, NY to Waco courthouse
`
`Exhibit P
`
`Mike Baker Flybridge Profile
`
`Exhibit Q
`
`OneView Ad Platform Press Release
`
`Exhibit R
`
`Excerpts from U.S. District Court—Judicial Caseload Profile (March
`2021)
`
`Exhibit S
`
`In re Hulu, Case No. 21-142, slip. op. (Fed. Cir. Aug. 2, 2021)
`
`AlmondNet Answer in First-Filed Delaware Action
`Exhibit T
`
`2 Exhibits A-S were filed with Roku’s Motion at Dkt. 7.
`
`
`
`iv
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 5 of 15
`
`
`
`I.
`
`ALMONDNET’S RESPONSE RAISES NO COMPELLING CIRCUMSTANCE
`EXCEPTION TO THE FIRST-TO-FILE RULE
`
`AlmondNet3 in its Response (Dkt. 9) does not and cannot dispute either that Roku’s
`
`Delaware action was filed first or that there is substantial overlap between that First-Filed
`
`Delaware Action and this one (same nine patents in both). As discussed in Roku’s Motion (Dkt.
`
`7) and here in reply to AlmondNet’s arguments, there are no compelling circumstances that would
`
`otherwise confer an exception to depart from what Roku believes should be a routine application
`
`of the first-to-file rule to dismiss or transfer this action. In re Nitro Fluids, LLC, 978 F.3d 1308,
`
`1311 (Fed. Cir. 2020) (“Decisions from both within and outside the Fifth Circuit are to a similar
`
`effect in placing the burden on the party that is seeking to establish a compelling circumstances
`
`exception to the rule.”).
`
`By AlmondNet’s own admissions, the parties engaged in discussions to attempt to resolve
`
`their disputes for fourteen months prior to filing suits against each other. Response at 2. After
`
`fourteen months of discussions, AlmondNet cannot now simply chalk up the filings of the two
`
`suits as “as a race to the courthouse.” Indeed, AlmondNet’s Response does not claim that
`
`AlmondNet knew Roku was going to file suit. And regardless, Roku could not have filed its suit
`
`against AlmondNet in the Western District of Texas due to jurisdictional and venue impediments
`
`arising from AlmondNet’s lack of connections to Texas. Roku waited to file suit until negotiations
`
`broke down—as evidenced by both parties filing suit—and filed in Delaware where all the parties
`
`were incorporated, thus ensuring that the Delaware court would have jurisdiction over AlmondNet.
`
`Thus, any suggestion by AlmondNet that somehow Roku acted in bad faith or forum shopped rings
`
`hollow. If anything, it is plainly apparent that AlmondNet is the one forum shopping by suing in a
`
`
`3 “AlmondNet” refers to both AlmondNet, Inc. and Intent IQ, LLC unless otherwise noted.
`
`
`
`1
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 6 of 15
`
`
`
`venue with no connection to its infringement allegations.
`
`Moreover, nothing AlmondNet raises in its Response changes the fact that Delaware is a
`
`clearly more convenient venue to resolve the disputes in this action. All of the parties are
`
`incorporated in Delaware, AlmondNet’s office is a mere 131 miles from the Delaware courthouse,
`
`and materially relevant Roku and third-party witnesses are located in nearby Boston. See Motion
`
`at 6–7 (summarizing relevant facts). Further, the technology underlying the allegedly infringing
`
`OneView Ad Platform was developed in Boston. Dkt. 7-1 (“Timar Decl.”), ¶ 4. In contrast,
`
`AlmondNet’s Response raises no relevant and factual connection to Texas.4 AlmondNet’s pointing
`
`to Roku’s Austin office/employees and job listings is devoid of any showing that those are actually
`
`related to developing the OneView Ad Platform. Id. at ¶ 6.
`
`II.
`
`THE ANTICIPATORY SUIT EXCEPTION DOES NOT APPLY
`
`As noted above, there is no dispute that Roku’s Delaware action was filed first and that this
`
`action should be dismissed or transferred absent an exception to the first-to-file rule. In seeking a
`
`departure from the first-to-file rule, AlmondNet alleges that the anticipatory suit exception should
`
`apply. Response at 5. Application of that exception requires AlmondNet to carry the burden in
`
`presenting a “sound reason that would make it unjust or inefficient to continue the first-filed
`
`action.” Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005) (finding district
`
`court abused discretion in dismissing first-filed case based solely on a finding that the suit was
`
`anticipatory without considering other factors like convenience and availability of witnesses);
`
`Nitro Fluids, 978 F.3d at 1311. Here, there is no such sound reason.
`
`Only after fourteen months of attempting to resolve the parties’ disputes outside of court
`
`
`4 AlmondNet’s counsel’s and declarant’s self-serving statements that Texas would be convenient
`or efficient are not based on factual evidence and are belied by actual facts as to the locale of the
`parties’ incorporation and relevant witnesses.
`
`
`
`2
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 7 of 15
`
`
`
`and the acknowledged breakdown of those discussions did Roku seek judicial intervention by
`
`filing the First-Filed Delaware Action. Roku can thus hardly be accused of negotiating in bad faith
`
`or racing to the courthouse. Roku chose Delaware because all parties are incorporated there and
`
`that court is only a little over 100 miles from AlmondNet’s principal place of business in Long
`
`Island City, NY. See Dkt. 7-14 (Ex. N, Mileage from Long Island City, NY to Delaware). Venue
`
`for a declaratory judgment action must comport with 28 U.S.C. § 1391(b), which requires an action
`
`be brought in (1) a judicial district in which any defendant resides (here, Delaware), (2) a judicial
`
`district in which a substantial part of the events or omissions giving rise to the claim occurred
`
`(here, New York or Boston), or if (1) or (2) cannot confer venue, (3) any judicial district that has
`
`personal jurisdiction over the defendant (here, Delaware or New York). When it filed its suit in
`
`Delaware, Roku had no basis to believe venue over AlmondNet in the Western District of Texas
`
`could be established under any subsection of § 1391(b). But Roku did have basis to allege venue
`
`over AlmondNet in Delaware under at least § 1391(b)(1) and (3). Thus, it is evident that Roku did
`
`not engage in the type of forum-shopping, race-to-the-courthouse behavior that the anticipatory
`
`suit exception is designed to discourage and has to be found for that exception to apply.
`
`Roku’s filing of its suit in Delaware was a typical DJ filing an accused infringer initiates
`
`upon realizing that judicial intervention is necessary to protect its business and adjudicate the
`
`patent owner’s infringement allegations. For AlmondNet to now be arguing that the anticipatory
`
`exception should apply after playing up in its Response that the parties were engaged in fourteen
`
`months of negotiations basically amounts to AlmondNet asking the Court to have the (anticipatory
`
`suit) exception swallow the (first-to-file) rule. Turning the first-to-file rule upside down as
`
`AlmondNet effectively wants is contrary to the Federal Circuit’s import given to patent DJ cases.
`
`See Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993) (stating that a rule
`
`
`
`3
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 8 of 15
`
`
`
`whereby “a properly brought declaratory action to determine patent rights should yield to a later-
`
`filed suit for patent infringement” . . . “would automatically grant the patentee the choice of forum,
`
`whether the patentee had sought—or sought to avoid—judicial resolution of the controversy. This
`
`shift of relationship between litigants is contrary to the purpose of the Declaratory Judgment Act
`
`to enable a person caught in controversy to obtain resolution of the dispute, instead of being forced
`
`to await the initiative of the antagonist.”).
`
`III. THE BALANCE OF TRANSFER FACTORS FAVORS DELAWARE
`
`Even if the Court finds that the anticipatory suit exception may apply here, the Fifth Circuit
`
`finds an exception to the application of the first-to-file rule only if the balance of transfer factors
`
`favors keeping the case in the second-filed action. Nitro Fluids, 978 F.3d at 1311. Here, those
`
`factors on balance do not favor keeping this action in Waco. Specifically, the ease of access to
`
`proof, cost of attendance for willing witnesses, practical considerations, and local interest all favor
`
`transfer under the first-to-file rule, while the remaining factors are neutral. See Section IV infra.
`
`Roku also notes that AlmondNet’s choice of forum is irrelevant in the transfer analysis
`
`under Fifth Circuit law. PersonalWeb Technologies, LLC v. NEC Corp. et al., No. 6:11-cv-655,
`
`2013 WL 9600333, *3 n.7 (E.D. Tex. Mar. 21, 2013) (noting that the Fifth Circuit is the only
`
`circuit where the plaintiff’s choice of forum is not an independent factor). Thus, AlmondNet’s
`
`reliance at page 7 of its Response on cases from other circuits for its claim that “courts routinely
`
`decline to apply the first-to-file rule in situations such as this where both cases were filed in close
`
`proximity to each other” is misplaced, not to mention the Federal Circuit’s view against
`
`AlmondNet’s argument. See Genentech, 998 F.2d at 938 (declining to dismiss the first-filed suit
`
`based on alleged forum shopping where plaintiff presented sound reasons for its choice of forum).
`
`
`
`4
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 9 of 15
`
`
`
`IV. DELAWARE IS CLEARLY MORE CONVENIENT UNDER 28 U.S.C. § 1404(A)
`A.
`
`AlmondNet Admits The District Of Delaware Is A Proper Venue
`
`AlmondNet does not argue that this action could not have been brought in Delaware and
`
`admits that the District of Delaware has personal jurisdiction over AlmondNet. Cf. Dkt. 7-2
`
`(Roku’s Delaware Complaint), ¶ 14 (alleging the Delaware court has personal jurisdiction over
`
`AlmondNet) with Ex. T hereto (AlmondNet Answer in Delaware case), ¶ 14 (admitting to personal
`
`jurisdiction). The District of Delaware is therefore a proper venue to transfer this action. See In re
`
`Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) (noting that the “preliminary question
`
`under § 1404(a) is whether a civil action ‘might have been brought’ in the destination venue”).
`
`B.
`
`The Private Interest Factors Favor Transfer
`
`
`Ease of Access to Proof
`
`While Roku agrees that the majority of documents in this case are likely to be in electronic
`
`form, this factor however considers the physical location of relevant documents. Moskowitz Family
`
`LLC v. Globus Medical, Inc., No. 6:19-cv-00672-ADA, 2020 WL 4577710, *3 (W.D. Tex. July 2,
`
`2020). The underlying technology for the accused OneView Ad Platform was developed in Boston
`
`by Dataxu. Dkt. 7-1 (Timar Decl.), ¶ 4. Thus, Boston is the location where most relevant physical
`
`documents may be found, and Boston is closer to Delaware than Texas. See Tex. Data Co. v. Target
`
`Brands, Inc., 771 F. Supp. 2d 630, 640–641 (E.D. Tex. 2011) (ease of access to proof favored the
`
`transferee district where the proof was not in but closer to that district).
`
`
`
`Compulsory Process
`
`Neither party identified any specific unwilling witnesses subject to the compulsory process
`
`of either the Western District of Texas or the District of Delaware. This factor is therefore neutral.
`
`See MasterObjects, Inc. v. Facebook Inc., No. 6-20-cv-00087-ADA, Dkt. 86 (Order Granting
`
`Defendant’s Motion to Transfer) (W.D. Tex. July 13, 2021), at 7.
`
`
`
`5
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 10 of 15
`
`
`
`
`
`Cost of Attendance
`
`Roku identified three key employees (all former Dataxu employees) and one third-party
`
`witness who have materially relevant information regarding the OneView Ad Platform and who
`
`live in the Boston area. See Motion at 6 (identifying relevant employees in Boston); 10 (identifying
`
`Mike Barber, former CEO and co-founder of Dataxu). The costs of attendance for these witnesses
`
`would be much lower in Delaware.
`
`Delaware also appears to be a more convenient venue for AlmondNet’s witnesses (who are
`
`based in New York) despite Mr. Shkedi’s statement that he was willing to travel to Texas.
`
`Regardless of whether he is willing to travel to Texas, his travel costs to Texas will be higher than
`
`traveling the 131 miles from AlmondNet’s office (or the New York City area) to the Delaware
`
`courthouse. See Dkt. 7-14 (Ex. N, Mileage from Long Island City, NY to Delaware).
`
`AlmondNet tries to distract from clearly lower costs of attendance for likely witnesses in
`
`Delaware with LinkedIn profiles of random Roku Austin employees, none of which mention the
`
`OneView Ad Platform. See Response at 12; Exs. 2–12. AlmondNet also argues that the few Roku
`
`Austin technical employees in advertising have relevant technical knowledge. Response at 12–13.
`
`But that is directly contradicted by someone who actually works at Roku and has relevant
`
`knowledge—Mr. Timar—who explained that those Austin employees focus on overall advertising
`
`performance and are not directly involved in development of the OneView Ad Platform. See Dkt.
`
`7-1 (Timar Decl.), ¶ 6. Having failed to show otherwise, AlmondNet’s mere collection of LinkedIn
`
`profiles of Roku Austin employees is of no moment in the transfer analysis.
`
`With respect to specific Roku California employees who may be later identified as relevant,
`
`travel to either venue would involves significant distance and expense. Thus, AlmondNet’s attempt
`
`to use such potential California-based witnesses as disfavoring transfer should be rejected.
`
`It is also clear that the costs of attendance to/in the District of Delaware would be less for
`6
`
`
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 11 of 15
`
`
`
`the identified non-party witness, Mike Baker, as well as AlmondNet employees and key Roku
`
`employees with relevant information regarding the accused technology.
`
`
`
`Practical Considerations
`
`AlmondNet argues that practical considerations arising after Roku’s transfer motion was
`
`filed should prevent transfer, namely five new cases AlmondNet filed. Response at 9–10. But
`
`relying on such post-motion, non-movant engineered events to support a denial of transfer has
`
`been rebuked by the Federal Circuit and should be here as well. See, e.g., In re Apple, 979 F.3d
`
`1332, 1343 (Fed. Cir. 2020) (discounting steps “that had been taken by the court and parties in the
`
`case were taken after Apple moved for transfer”) (emphasis in original). Further, unlike in the
`
`cases cited by AlmondNet, this Court has undertaken no substantive work on the AlmondNet cases
`
`now filed in this District and thus any alleged “judicial efficiency” is mere speculation.
`
`Among those five new cases are four against other defendants filed on August 26 and 27,
`
`2021. Response at 10. Not only did AlmondNet wait to file those cases until two weeks after Roku
`
`filed its first-to-file motion, AlmondNet’s allegation that this “District is one of the few districts
`
`where venue is proper for all of these defendants” (Response at 3) is demonstrably wrong. None
`
`of the new defendants are organized under the laws of Texas or have their headquarters in Texas:
`
`State or Country
`of Incorporation
`or Organization
`South Korea
`
`Principal Place
`of Business or
`Headquarters
`South Korea
`
`New York
`
`New Jersey
`
`Canada
`
`Canada
`
`Case
`AlmondNet, Inc. et al. v. Samsung
`Elecs. Co. et al., No. 6:21-cv-
`00891-ADA (Dkt. 1, ¶ 3)
`AlmondNet, Inc. et al. v. Samsung
`Elecs. Co. et al., No. 6:21-cv-
`00891-ADA (Dkt. 1, ¶ 4)
`AlmondNet, Inc. et al. v. Samsung
`Elecs. Co. et al., No. 6:21-cv-
`00891-ADA (Dkt. 1, ¶ 5)
`
`Defendant
`Samsung
`Electronics Co.
`Ltd.
`Samsung Elecs.
`Am. Inc.
`
`AdGear
`Technologies Inc.
`
`
`
`7
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 12 of 15
`
`
`
`AlmondNet, Inc. et al. v.
`Facebook Inc., No. 6:21-cv-
`00896-ADA (Dkt. 1, ¶ 3)
`AlmondNet, Inc. et al. v.
`Microsoft Corp., No. 6:21-cv-
`00897 (Dkt. 1, ¶ 3)
`AlmondNet, Inc. et al. v.
`Amazon.com, Inc. et al., No.
`6:21-cv-00898 (Dkt. 1, ¶ 3)
`AlmondNet, Inc. et al. v.
`Amazon.com, Inc. et al., No.
`6:21-cv-00898 (Dkt. 1, ¶ 4)
`AlmondNet, Inc. et al. v.
`Amazon.com, Inc. et al., No.
`6:21-cv-00898 (Dkt. 1, ¶ 5)
`
`Facebook, Inc.
`
`Delaware
`
`California
`
`Microsoft
`Corporation
`
`Washington
`
`Washington
`
`Amazon.com Inc.
`
`Delaware
`
`Washington
`
`Amazon.com
`Services LLC
`
`Amazon Web
`Services, Inc.
`
`Delaware
`
`Washington
`
`Delaware
`
`Washington
`
`It is therefore highly likely that AlmondNet will face similar challenges to venue in those cases,
`
`and regardless of whether such transfer motions are filed, the Federal Circuit has held that it cannot
`
`be correct that “mere co-pendency of related suits in a particular district would automatically tip
`
`the balance in the non-movant’s favor.” In re Google, Inc., No. 2017-107, 2017 WL 977038, *2
`
`(Fed. Cir. Feb. 23, 2017).
`
`AlmondNet also alleged that a second case it filed against Roku in the Western District of
`
`Texas should be considered as a practical consideration favoring retention of jurisdiction.
`
`Response at 10. In the transfer analysis, this additional lawsuit should be disregarded because it
`
`like the others was filed after Roku’s First-to-File Motion. In addition, AlmondNet failed in its
`
`Response to note to the Court that its second suit against Roku involves three different patents that
`
`are not in the same patent family as any of the patents asserted in this action.
`
`C.
`
`The Public Interest Factors Favor Transfer
`
`
`Administrative Difficulties
`
`Both the District of Delaware and the Western District of Texas have a significant number
`
`
`
`8
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 13 of 15
`
`
`
`of cases per judge. Dkt. 7-18 (Ex. R). AlmondNet discounts that statistic by pointing to the average
`
`time to trial but provides no evidence for its assertion of those times. See Response at 13 (asserting
`
`average time to trial as 23.8 months in the Western District of Texas and 31.2 months in Delaware).
`
`The U.S. District Court Judicial Caseload Profile shows that the median time from filing to trial
`
`for the period ending March 31, 2021 is 26.1 months for all districts, 28.7 months in the District
`
`of Delaware, and 19.1 months in the Western District of Texas. Dkt. 7-18 (Ex. R). At least due to
`
`the current pandemic, it is unclear whether these 2021 statistics are indicative of a realistic time to
`
`trial in this action. A more accurate predictive statistic may be from the period ending March 31,
`
`2020 (before the pandemic) which shows average time to trial as 28.6 months for all districts, 29.3
`
`months for the District of Delaware, and 24.3 months for the Western District of Texas. Dkt. 7-18
`
`(Ex. R). Given the similarity in average number of cases per judge and average (pre-pandemic)
`
`time to trial, this factor is neutral. However, even if the Court were to find that this factor slightly
`
`favors against transfer, this factor in particular cannot outweigh all other factors. See, e.g., Tex.
`
`Data Co. v. Target Brands, Inc., 771 F. Supp. 2d 630, 645 (E.D. Tex. 2011) (noting this factor is
`
`the “most speculative” and cannot outweigh all of the other factors (citing In re Genentech, Inc.,
`
`566 F.3d 1338, 1347 (Fed. Cir. 2009)).
`
`
`
`Local Interest
`
`Delaware undoubtedly has a local interest in deciding a dispute between parties all
`
`organized under its laws. AlmondNet asserts that the Western District of Texas has a greater local
`
`interest because: (1) Roku has an office and employees in Austin; and (2) “there is no dispute that
`
`the accused products are marketed and sold in this District.” Response at 14. But neither of those
`
`reasons is sufficient to demonstrate a greater local interest than Delaware. AlmondNet’s claim
`
`charts accuse the Roku OneView Ad Platform of infringing AlmondNet’s patents. See, e.g., Dkt.
`
`1-3 (’586 Patent claim chart). But Mr. Timar stated that Roku’s San Jose and Boston offices have
`9
`
`
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 14 of 15
`
`
`
`the larger number of advertising employees and the few in Austin “focus on overall advertising
`
`performance and do not direct development of the OneView Ad Platform.” Dkt. 7-1 (Timar Decl.),
`
`¶ 6. He specifically stated that he was “not aware of any Roku Austin, TX employees who have
`
`specialized knowledge of the OneView Ad Platform.” Id. A generalized presence in the district
`
`does not generate a particularized local interest. See Tex. Data, 771 F. Supp. 2d at 646 (“Interest
`
`that ‘could apply virtually to any judicial district or division in the United States,’ such as the
`
`nationwide sale of infringing products, are disregarded in favor of particularized local interests.”)
`
`(citing In re Volkswagen, 545 F.3d at 318; In re TS Tech, 551 F.3d 1315, 1321 (Fed. Cir. 2008)).
`
`As to AlmondNet’s second local interest reason, Roku disputes that the accused products
`
`are marketed and sold in this District. As Mr. Timar stated in his declaration, Roku “does not offer
`
`to sell, sell, or import the OneView Ad Platform.” Dkt. 7-1 (Timar Decl.), ¶ 3. Even assuming
`
`arguendo that Roku sells what AlmondNet is accusing, any such sales would occur nationwide
`
`and the Western District of Texas would have no more of a localized interest than any other district.
`
`
`
`Familiarity of Forum with Law / Avoidance of Conflicts
`
`The parties agree that the last two public interest factors are neutral.
`
`V.
`
`CONCLUSION
`
`For the reasons set forth in its Motion and herein, there are no compelling circumstances
`
`in this action to deviate from the first-to-file rule. Roku therefore requests that this Court apply
`
`that rule to dismiss or transfer this action in view of the First-Filed Delaware Action. Alternatively,
`
`Roku requests that this Court transfer this action to the District of Delaware as the clearly more
`
`convenient forum under 28 U.S.C. § 1404(a).
`
`
`
`
`
`
`
`
`
`10
`
`

`

`Case 6:21-cv-00731-ADA Document 14 Filed 09/03/21 Page 15 of 15
`
`
`
`Dated: September 3, 2021
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`JACKSON WALKER LLP
`
`/s/ Wasif H. Qureshi
`Wasif H. Qureshi
`wqureshi@jw.com
`Leisa Talbert Peschel
`lpeschel@jw.com
`1401 McKinney, Suite 1900
`Houston, Texas 77010
`Telephone: (713) 752-4521
`
`Blake T. Dietrich
`bdietrich@jw.com
`2323 Ross Ave., Suite 600
`Dallas, TX 75201
`Telephone: (214) 953-6000
`
`COUNSEL FOR ROKU, INC.
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on September 3, 2021, the foregoing and
`accompanying documents have been filed with the Court’s ECF filing system and thereby served
`on all counsel of record.
`
`
`
`
`
`
`
`
`
`
`
`/s/ Wasif H. Qureshi
` Wasif H. Qureshi
`
`
`
`
`
`
`
`11
`
`