ALMONDNET, INC. and
` INTENT IQ, LLC,
`
`
`
`Plaintiffs,
`
`v.
`
`ROKU, INC.
`
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`C.A. No. 6:21-cv-00731-ADA
`
`PATENT CASE
`
`
`
`
`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`
`
`
`
`
`ROKU’S 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)
`
`
`
`
`
`
`
`

`

`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 2 of 20
`
` 
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`VI. 
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1 
`
`BRIEF BACKGROUND .................................................................................................... 1 
`
`APPLICABLE LAW .......................................................................................................... 2 
`A. 
`The First-To-File Rule ............................................................................................ 2 
`B. 
`Transfer Factors ...................................................................................................... 3 
`C. 
`Proper Venue .......................................................................................................... 4 
`
`STATEMENT OF RELEVANT FACTS ........................................................................... 4 
`A. 
`The First-Filed Delaware Action ............................................................................ 4 
`B. 
`The Second-Filed Waco Action .............................................................................. 4 
`C. 
`AlmondNet’s Prior Assertions Of Its Patents ......................................................... 5 
`D. 
`Roku ........................................................................................................................ 6 
`E. 
`AlmondNet and Intent IQ ....................................................................................... 7 
`
`ALMONDNET’S COMPLAINT SHOULD BE DISMISSED IN VIEW OF THE FIRST-
`FILED DELAWARE ACTION .......................................................................................... 7 
`Roku Filed Its Declaratory Judgment Complaint Before AlmondNet Filed The
`A. 
`Complaint ................................................................................................................ 7 
`There Is No Basis Here For An Exception To The First-to-File Rule .................... 8 
`
`B. 
`
`IN THE ALTERNATIVE, THIS ACTION SHOULD BE TRANSFERRED TO
`DELAWARE Pursuant to 28 U.S.C. § 1404(a) ................................................................ 11 
`A. 
`The Private Interest Factors Favor Transfer ......................................................... 11 
`1. 
`Relative Ease of Access to Sources of Proof ............................................ 11 
`2. 
`Availability of Compulsory Process to Secure the Attendance of
`Witnesses ...................................................................................................12 
`Cost of Attendance for Willing Witnesses ................................................ 12 
`3. 
`Practical Considerations ............................................................................ 13 
`4. 
`The Public Interest Factors Favor Transfer .......................................................... 13 
`1. 
`Administrative Difficulties Flowing From Court Congestion .................. 14 
`2. 
`Local Interest in Having Localized Interests Decided at Home ............... 14 
`3. 
`Familiarity of the Forum With the Law that Will Govern the Case ......... 14 
`4. 
`Avoidance of Conflicts of Law Issues ...................................................... 14 
`
`B. 
`
`VII.  CONCLUSION ................................................................................................................. 15 
`
`
`
`
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`
`
`
`
`ii
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`

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`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 3 of 20
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Elecs. for Imaging, Inc. v. Coyle,
`394 F.3d 1341 (Fed. Cir. 2005)..................................................................................................3
`
`Genentech, Inc. v. Eli Lilly & Co.,
`998 F.2d 931 (Fed. Cir. 1993), abrogated on other grounds, Wilton v. Seven
`Falls Co., 515 U.S. 277 (1995) ..................................................................................................3
`
`Gonzalez v. UnitedHealth Group,
`Civ. A. No. 6:19-cv-00700-ADA, 2020 WL 2992174 (W.D. Tex. June 3,
`2020) ......................................................................................................................................2, 3
`
`In re Hulu,
`Case No. 21-142, slip. op. (Fed. Cir. Aug. 2, 2021) ................................................................14
`
`In re Nitro Fluids, LLC,
`978 F.3d 1308 (Fed. Cir. 2020)......................................................................................2, 3, 8, 9
`
`TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
`137 S. Ct. 1514 (2017) .........................................................................................................4, 11
`
`In re Telebrands,
`824 F.3d 982 (Fed. Cir. 2016)............................................................................................1, 2, 7
`
`In re TS Tech United States Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)..............................................................................3, 4, 9, 11, 14
`
`Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................4
`
`28 U.S.C. § 1404(a) ...................................................................................................................3, 11
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c)(3)(A)–(B) .....................................................................................................12
`
`
`
`
`
`iii
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`
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`

`

`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 4 of 20
`
`TABLE OF EXHIBITS
`
`Exhibit A
`
`Declaration of Gergely Timar
`
`Exhibit B
`
`Exhibit C
`
`Exhibit D
`
`Declaratory Judgment Complaint filed by Roku in Case No. 21-
`1035 (MN) in the District of Delaware
`
`First-Filed Delaware Action ECF Filing Receipt Evincing Time
`of Filing
`
`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)
`
`
`
`iv
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`

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`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 5 of 20
`
`I.
`
`INTRODUCTION
`
`Pursuant to the first-to-file rule, Defendant Roku, Inc. (“Roku”) moves to dismiss or
`
`transfer this case filed by Plaintiffs AlmondNet, Inc. and Intent IQ, LLC (collectively,
`
`“AlmondNet”) in view of the first-filed action filed by Roku in the District of Delaware, Case No.
`
`21-1035 (MN) (hereinafter, “the First-Filed Delaware Action”). In the alternative, should the Court
`
`not dismiss or transfer AlmondNet’s case based on the first-to-file rule, Roku moves to transfer
`
`this action to the District of Delaware under 28 U.S.C. § 1404(a) as supported by, for example, the
`
`accompanying Declaration of Gergely Timar (Ex. A).
`
`II.
`
`BRIEF BACKGROUND
`
`Following what the parties deemed as an impasse in pre-suit discussions over AlmondNet’s
`
`assertion that Roku infringes nine patents, both sides filed suit. Roku filed first when it filed its
`
`Declaratory Judgment Complaint (Ex. B) in Delaware at 4:45pm ET on July 15, 2021. See Ex. C
`
`(ECF filing receipt evincing exact time of filing). Nearly six hours later, AlmondNet filed its
`
`Complaint in this “Second-Filed Waco Action.” See Ex. D (PACER report evincing that
`
`AlmondNet filed at 9:41pm CT / 10:41pm ET); Ex. E (Court report showing same filing time).
`
`Complete overlap exists between the two actions as each concerns AlmondNet’s allegations of
`
`infringement regarding the same nine patents. See generally Ex. B; Dkt. 1.
`
`The first-to-file rule—which provides that the court of first jurisdiction should resolve the
`
`issues—exists to prevent judicial inefficiency and potential conflicts arising from two forums
`
`considering the same legal issues. In re Telebrands, 824 F.3d 982, 984 (Fed. Cir. 2016). Thus,
`
`Roku requests that this Court apply the first-to-file rule to dismiss the Second-Filed Waco Action,
`
`which as demonstrated below is the result of clear forum shopping by AlmondNet.
`
`While there are some exceptions to the first-to-file rule, none apply here. As recently set
`
`forth by the Federal Circuit, only if the balance of transfer factors favor the second forum should
`
`
`
`1
`
`

`

`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 6 of 20
`
`that court retain the case despite the first-to-file rule. See In re Nitro Fluids, LLC, 978 F.3d 1308,
`
`1311 (Fed. Cir. 2020) (addressing the application of the first-to-file rule in a case pending in the
`
`Western District of Texas); see also Gonzalez v. UnitedHealth Group, Civ. A. No. 6:19-cv-00700-
`
`ADA, 2020 WL 2992174, *2 (W.D. Tex. June 3, 2020) (noting the Fifth Circuit has endorsed use
`
`of convenience factors to determine whether an exception applies to the first-to-file rule). Here,
`
`the balance of transfer factors do not favor the Western District of Texas. There are no witnesses,
`
`relevant sources of proof, or localized interest in the Western District of Texas. On the other hand,
`
`however, all of the parties are organized and existing under the laws of Delaware, AlmondNet has
`
`previously brought two suits in Delaware on some of the asserted patents, and the Delaware
`
`courthouse is much closer to AlmondNet’s documents and witnesses (including the inventors) and
`
`potentially relevant Roku witnesses, and at least one relevant third-party witness knowledgeable
`
`about the development of the accused product.1 Thus, this Court should not retain jurisdiction and
`
`should dismiss this Second-Filed Waco Action.
`
`In the alternative to dismissal, Roku requests transfer of this Second-Filed Waco Action to
`
`the District of Delaware under 28 U.S.C. §1404(a) because Delaware is a clearly more convenient
`
`venue.
`
`III. APPLICABLE LAW
`A.
`
`The First-To-File Rule
`
`Where overlap between cases is “complete or nearly complete, the usual rule is for the
`
`court of first jurisdiction to resolve the issues.” In re Telebrands, 824 F.3d at 984; Gonzalez, 2020
`
`
`1 Although AlmondNet’s Complaint does not specifically identify the accused product, it is
`presumed from the parties’ pre-suit correspondence that the accused product is the “OneView Ad
`Platform.” The technology underlying OneView was developed by Dataxu, which was founded in
`2009 in Boston, Massachusetts. Roku acquired Dataxu in 2019.
`
`
`
`2
`
`

`

`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 7 of 20
`
`WL 2992174, at *1. This first-to-file rule favors the forum of the first-filed action regardless of
`
`whether it is a declaratory judgment action. See, e.g., Genentech, Inc. v. Eli Lilly & Co., 998 F.2d
`
`931, 937 (Fed. Cir. 1993), abrogated on other grounds, Wilton v. Seven Falls Co., 515 U.S. 277
`
`(1995); see also Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1348 (Fed. Cir. 2005) (“The
`
`considerations affecting transfer to or dismissal in favor of another forum do not change simply
`
`because the first-filed action is a declaratory action.”) (quoting Genentech, 998 F.2d at 938). Only
`
`if there are compelling circumstances should the court of the second-filed action retain jurisdiction.
`
`In re Nitro Fluids, 978 F.3d at 1311; Gonzalez, 2020 WL 2992174, at *2. Recently, the Federal
`
`Circuit (addressing a case within the Fifth Circuit) clarified that “[u]nless the balance of transfer
`
`factors favors keeping the case in the second-filed court, there are no circumstances to justify such
`
`an exception.” Id.; see also Gonzalez, 2020 WL 2992174, at *2 (noting the Fifth Circuit applies
`
`the convenience factors to assess whether compelling circumstances exist to disregard the first-to-
`
`file rule). The burden is on the party asserting an exception to demonstrate such a compelling
`
`circumstance. In re Nitro Fluids, LLC, 978 F.3d at 1311 (noting that cases both within and without
`
`the Fifth Circuit put the burden on the party asserting an exception).
`
`B.
`
`Transfer Factors
`
`The Fifth Circuit analyzes both private and public interest factors in a transfer analysis. In
`
`re TS Tech United States Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008) (citing In re Volkswagen of
`
`Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc); see also 28 U.S.C. § 1404(a) (“For the
`
`convenience of parties and witnesses, in the interest of justice, a district court may transfer any
`
`civil action to any other district or division where it might have been brought or to any district or
`
`division to which all parties have consented”). The private interest factors include: “(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
`3
`
`
`
`

`

`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 8 of 20
`
`problems that make a trial easy, expeditious and inexpensive.” In re TS Tech, 551 F.3d at 1319
`
`(citing Volkswagen, 545 F.3d at 315). The public interest factors include: “(1) the administrative
`
`difficulties flowing from court congestion; (2) the local interest in having localized interests
`
`decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4)
`
`the avoidance of unnecessary problems of conflicts of law [or in] the application of foreign law.”
`
`Id. (quoting Volkswagen, 545 F.3d at 315).
`
`C.
`
`Proper Venue
`
`The patent venue statute at 28 U.S.C. § 1400(b) provides that a patent infringement action
`
`may be properly brought in the judicial district where the defendant resides, or where the defendant
`
`has committed acts of infringement and has a regular and established place of business. The
`
`Supreme Court has clarified that a “domestic corporation ‘resides’ only in its State of
`
`incorporation.” TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1517 (2017).
`
`IV.
`
`STATEMENT OF RELEVANT FACTS
`A.
`
`The First-Filed Delaware Action
`
`Roku filed a declaratory judgment action in the District of Delaware, Case No. 21-1035
`
`(MN) at 4:45pm ET on July 15, 2021. Ex. B (Roku Declaratory Judgment Complaint); Ex. C (ECF
`
`filing receipt evincing exact time of filing). In the First-Filed Delaware Action, Roku pled that
`
`Roku does not infringe any of the following nine patents owned by AlmondNet: U.S. Patent Nos.
`
`8,677,398 (“the ’398 Patent”), 10,715,878 (“the ’878 Patent”), 7,822,639 (“the ’639 Patent”),
`
`8,244,586 (“the ’586 Patent”), 10,026,100 (“the ’100 Patent”), 10,628,857 (“the ’857 Patent”),
`
`8,566,164 (“the ’164 Patent”), 8,595,069 (“the ’069 Patent”), and 10,321,198 (“the ’198 Patent”)
`
`(collectively, the “AlmondNet Patents”). Ex. B at 1 (¶ 1).
`
`B.
`
`The Second-Filed Waco Action
`
`At 10:41 ET (9:41 CT) on July 15, 2021, AlmondNet filed the instant action. Dkt. 1; Ex.
`
`
`
`4
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`

`

`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 9 of 20
`
`D (PACER report evincing that AlmondNet filed at 9:41pm CT); Ex. E (Court report showing that
`
`filing time). In its Complaint, AlmondNet accused Roku of infringing the same nine AlmondNet
`
`Patents Roku filed on in the First-File Delaware Action. Dkt. 1, ¶ 1. In other words, the issues
`
`raised in AlmondNet’s Complaint are unequivocally co-extensive with the issues raised in the
`
`earlier First-Filed Delaware Action.
`
`Collectively, AlmondNet and Intent IQ claim to own the AlmondNet Patents. And the
`
`named inventors on those patents, Roy Shkedi and Ronen Shlomo, have executive positions with
`
`AlmondNet—Roy Shkedi is AlmondNet’s Founder and Chief Executive Officer and Intent IQ’s
`
`Chairman, and Ronen Shlomo is AlmondNet’s Vice President of Product Management. Ex. B at 2
`
`(¶¶ 6, 9). Mr. Shkedi is believed to reside and work in the New York, NY area. Ex. F (LinkedIn
`
`profile).
`
`C.
`
`AlmondNet’s Prior Assertions Of Its Patents
`
`AlmondNet previously filed suit against other parties asserting certain of the AlmondNet
`
`Patents, but never in the Western District of Texas. Namely, AlmondNet twice sued Oath Holdings
`
`Inc. in the District of Delaware, asserting infringement of the ’586, ’639, and ’398 Patents and
`
`some other patents in one case, and the ’100 Patent and another patent in the second case. See Ex.
`
`G (AlmondNet First Amended Complaint Against Oath Holdings, Case No. 1:19-cv-00247 (D.
`
`Del.))2; Ex. H (AlmondNet First Amended Complaint Against Oath Holdings, Case No. 1:18-cv-
`
`00943 (D. Del.)).
`
`
`2 AlmondNet originally filed the suit asserting the ’586, ’639, and ’398 Patents against Yahoo!
`Inc. in the Eastern District of New York. That case was subsequently transferred to Delaware
`and Oath Holdings was substituted in as the defendant. Ex. I (AlmondNet First Amended
`Complaint against Yahoo!, Case No. 1:16-cv-01557 (E.D.N.Y.)).
`
`
`
`5
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`

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`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 10 of 20
`
`D.
`
`Roku
`
`Roku is a corporation organized and existing under the laws of the State of Delaware, with
`
`its principal place of business at 1155 Coleman Ave., San Jose, California 95110. Ex. B at 2. The
`
`technology underlying the accused OneView Ad Platform was developed by a company called
`
`Dataxu, which was founded in 2009 in Boston, Massachusetts. Ex. A (Declaration of Gergely
`
`Timar), ¶ 4. In 2019, Roku acquired Dataxu, including its technology and over 100 Dataxu
`
`employees (approximately 50 engineers). Id. at ¶ 5.
`
`Technical work related to Roku’s advertising business occurs at Roku’s San Jose, CA, New
`
`York, NY, Boston, MA, Austin, TX, and Cardiff, United Kingdom offices but there are only a few
`
`technical employees who do advertising work out of Roku’s Austin, TX and Cardiff, UK offices
`
`relative to the much larger number of advertising employees in Roku’s San Jose, CA and Boston,
`
`MA offices. Id. at ¶ 6. The few technical employees who do advertising work out of Roku’s Austin
`
`office (less than 10) do not do any direct development of the Roku OneView Ad Platform. Id. The
`
`majority of engineers in Roku’s Austin, TX office focus on the Roku operating system, hardware,
`
`and embedded software development that is not related to advertising. Id. There are numerous
`
`Roku (formerly Dataxu) employees in Boston, MA who have specialized knowledge regarding the
`
`OneView Ad platform such as its development, what it does, and how it works. Id. at ¶ 9.
`
`Specifically for example, in the Boston, MA office are Sudeep Setlur, who was the architect for
`
`the Dataxu ad serving system, Jonathan Faubert, who was a senior engineer involved in the device
`
`graph technology underlying the OneView Ad Platform, and Dataxu’s co-founder and Senior Vice
`
`President of Analytics and Innovation, Sandro Catanzaro. Id.
`
`Roku witnesses from its California office would experience significant travel whether the
`
`case is located in Texas (1,757 miles) or Delaware (2,894 miles). See Ex. J (mileage from San
`
`Jose, CA to Waco courthouse); Ex. K (mileage from San Jose to Delaware courthouse). However,
`6
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`

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`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 11 of 20
`
`Roku witnesses from Boston, including those identified above, would experience much less travel
`
`to Delaware as compared to Waco. Ex. L (mileage from Boston, MA to Delaware); Ex. M (mileage
`
`from Boston, MA to Waco).
`
`Most documents and technical information regarding the OneView Ad Platform, as well
`
`as Roku’s advertising business in general, are stored in the cloud and hosted at various locations
`
`independent of Roku’s office locations. Ex. A (Timar Decl.), ¶ 7. However, because the Dataxu
`
`technology underlying the OneView Ad Platform was developed in Boston, that is the location
`
`most likely to have physical documents relevant to that Dataxu technology. Id. at ¶ 8.
`
`E.
`
`AlmondNet and Intent IQ
`
`AlmondNet, Inc. is a corporation organized and existing under the laws of the State of
`
`Delaware. Dkt. 1, ¶ 2. Intent IQ, LLC is a limited liability company also organized and existing
`
`under the laws of the State of Delaware. Id. The principal place of business for both AlmondNet
`
`and Intent IQ is at 37-18 Northern Boulevard, Suite 404, Long Island City, NY 11101. Id. From
`
`this principal place of business, AlmondNet witnesses, including the inventors, would only have
`
`to travel 131 miles to Delaware. Ex. N (mileage from Long Island City, NY to Delaware
`
`courthouse). In contrast, those witnesses would have to travel 1,649 miles to the courthouse in
`
`Waco. Ex. O (mileage from Long Island City, NY to Waco courthouse).
`
`V.
`
`ALMONDNET’S COMPLAINT SHOULD BE DISMISSED IN VIEW OF THE
`FIRST-FILED DELAWARE ACTION
`A.
`
`Roku Filed Its Declaratory Judgment Complaint Before AlmondNet Filed The
`Complaint
`
`The first-to-file rule sets forth that the court of first jurisdiction should resolve the issues
`
`when there is complete overlap between cases. In re Telebrands, 824 F.3d at 984. Roku filed its
`
`Declaratory Judgment Complaint at 4:45pm ET (3:45pm CT) on July 15, 2021, in the District of
`
`Delaware. About six hours later, AlmondNet filed its Complaint in this Court. There is complete
`
`
`
`7
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`

`

`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 12 of 20
`
`overlap of the issues in the First-Filed Delaware Action and the Second-Filed Waco Action as the
`
`complaints in both cases concern AlmondNet’s infringement allegations regarding the same nine
`
`AlmondNet Patents. Thus, this is a clear situation in which, in accordance with the first-to-file rule
`
`and legal precedent applying it, this Court should dismiss the Second-Filed Waco Action. As
`
`discussed immediately below, because no other considerations warrant a departure from the first-
`
`to-file rule, AlmondNet’s Complaint should be dismissed.
`
`B.
`
`There Is No Basis Here For An Exception To The First-to-File Rule
`
`AlmondNet bears the burden to demonstrate a compelling circumstance that warrants
`
`departure from the first-to-file rule. In re Nitro Fluids, LLC, 978 F.3d at 1311. That is a burden
`
`AlmondNet cannot meet on the facts of this case. For example, there can be no reasonable claim
`
`that Roku “jumped the gun” during pre-suit discussions with AlmondNet or that Roku acted in bad
`
`faith by initiating the First-Filed Delaware Action—after all, AlmondNet also viewed the parties’
`
`discussions as having reached an impasse as indicated by AlmondNet’s filing of the Second-Filed
`
`Waco Action. Moreover, AlmondNet had not sent Roku a draft complaint or indicated to Roku
`
`that AlmondNet would file a lawsuit by a certain time if resolution between the parties could not
`
`be reached. Further still, Roku cannot be said to have filed its First-Filed Delaware Action as a
`
`precautionary measure because there indisputably was and is a live controversy prejudicing Roku.
`
`And Roku cannot be accused of forum shopping in view that there is no § 1404 basis for
`
`this case in Waco, as opposed to Delaware where all the parties are incorporated, where
`
`AlmondNet has previously filed suit twice on some of the asserted patents, and where relevant
`
`witnesses knowledgeable about the AlmondNet Patents and accused OneView Ad Platform in the
`
`New York City and Boston areas are much closer to than Texas. Thus, it is actually AlmondNet
`
`that is forum shopping by suing in a venue with no connection to its infringement allegations. In
`
`sum, any alleged exception to the first-to-file rule here would effectively be seeking to have the
`8
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`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 13 of 20
`
`exception swallow the rule.
`
`Analysis of the transfer factors also demonstrates that there is no circumstance to justify
`
`an exception to the first-to-file rule in this case.3 See In re Nitro Fluids, 978 F.3d at 1311 (no
`
`justification for an exception “unless the balance of transfer factors favors keeping the case in the
`
`second-filed court”). None of the public interest factors—(1) administrative difficulties flowing
`
`from court congestion; (2) local interest in having localized interests decided at home; (3)
`
`familiarity of the forum with the law that will govern the case; and (4) avoidance of conflicts of
`
`law—favor Waco, but several favor Delaware. See In re TS Tech, 551 F.3d at 1319 (listing public
`
`interest factors). For example, and significantly, all of the parties are organized and existing under
`
`the laws of Delaware. See Sections IV.D and E supra. That gives Delaware a local interest in
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`having the case decided there. Further, there does not appear to be any significant difference in
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`court congestion between the forums or any conflicts of law pertinent to the disputed issues.
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`Similarly, none of the private interest factors—(1) relative ease of access to sources of
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`proof; (2) availability of compulsory process; (3) cost of attendance for willing witnesses; or (4)
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`practical considerations—favor dispensing with the first-to-file rule to keep this case in Waco. See
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`In re TS Tech, 551 F.3d at 1319 (listing the private interest factors). Factor (1) favors Delaware
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`over Waco. AlmondNet’s principal place of business is in New York, a mere 131 miles from the
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`courthouse in Delaware. Dkt. 1, ¶ 2. In addition, the most relevant physical location for Roku
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`documents and technical information is Boston, where the Dataxu technology underlying the
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`OneView Ad Platform was developed. See Section IV.D supra (citing Ex. A (Timar Decl.), ¶ 8).
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`Both of those locations are much closer to Delaware than Waco.
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`3 See also Sections VI.A and B infra for a more detailed discussion of the public and private interest
`factors.
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`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 14 of 20
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`Private interest factor (2) is neutral—there is no indication that compulsory process is
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`available in either venue for relevant witnesses.
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`As to factor (3), Roku witnesses from California would have to get on a plane and fly for
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`a few hours regardless of whether the trial is in Waco or Delaware. See Ex. J (mileage from San
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`Jose, CA to Waco courthouse); Ex. K (mileage from San Jose, CA to the Delaware courthouse).
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`However, and notably, Roku’s relevant witnesses in Boston would have significantly less travel
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`time and cost associated with travel to Delaware as compared to Waco. See Section IV.D supra.
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`Further, third-party witness Mike Baker, former CEO and co-founder of Dataxu, has relevant
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`information regarding the development of aspects of the OneView Ad Platform accused of
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`infringing by AlmondNet, and Mr. Baker resides in Boston, which is approximately 366 miles
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`from Delaware versus 1,866 miles from Waco. Ex. P (Mike Baker Flybridge Profile); Ex. Q
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`(OneView Ad Platform press release); Ex. L (mileage from Boston, MA to Delaware); Ex. M
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`(mileage from Boston, MA to Waco). His cost of attendance would be significantly less to travel
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`to Delaware rather than Waco. In addition, the distance is significantly less to Delaware for the
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`inventors and AlmondNet witnesses presumed to be in the New York City area due to
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`AlmondNet’s principal place of business in Long Island City, NY. Ex. N (mileage from Long
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`Island City, NY to Delaware courthouse); Ex. O (mileage from Long Island City, NY to Waco
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`courthouse). For these reasons, factor (3) also favors Delaware.
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`Private interest factor (4) also slightly favors Delaware. Although both courts have
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`familiarity with patent law, the Delaware court has familiarity with a number of the AlmondNet
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`Patents due to AlmondNet’s prior lawsuits in Delaware, whereas no AlmondNet Patent has ever
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`previously been subject of a lawsuit in this District. See Section IV.C supra (AlmondNet’s prior
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`lawsuits on certain AlmondNet Patents).
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`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 15 of 20
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`VI.
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`IN THE ALTERNATIVE, THIS ACTION SHOULD BE TRANSFERRED TO
`DELAWARE PURSUANT TO 28 U.S.C. § 1404(A)
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`If the Court decides not to dismiss this case under the first-to-file rule, Roku alternatively
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`requests that the Court transfer the case to the District of Delaware, which is the proper and more
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`convenient venue. In particular, transfer to Delaware would allow consolidation of this Second-
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`Filed Waco Action with the First-Filed Delaware Action.
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`28 U.S.C. § 1404(a) provides that “[f]or the convenience of parties and witnesses, in the
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`interest of justice, a district court may transfer any civil action to any other district or division
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`where it might have been brought or to any district or division to which all parties have consented.”
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`A motion to transfer venue should be granted upon a showing that the transferee venue is “clearly
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`more convenient” than the plaintiff’s venue. In re TS Tech United States Corp., 551 F.3d 1315,
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`1319 (Fed. Cir. 2008) (citing In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en
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`banc). Given that all parties are organized under the laws of Delaware, it is clear that the District
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`of Delaware was a proper venue to file this action. See TC Heartland LLC v. Kraft Foods Grp.
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`Brands LLC, 137 S. Ct. 1514, 1516–17 (2017) (“any civil action for patent infringement may be
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`brought in the judicial district where the defendant resides” and “a domestic corporation ‘resides’
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`only in its state of incorporation”). Delaware is also the clearly more convenient venue.
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`A.
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`The Private Interest Factors Favor Transfer
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`Analysis of the private interest factors demonstrates that Delaware is the more convenient
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`venue. The relative ease of access to sources of proof, the cost of attendance for willing witnesses,
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`and the practical considerations factors all favor Delaware, and no factor favors Waco.
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`1.
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`Relative Ease of Access to Sources of Proof
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`This factor favors Delaware over Waco. Notably, the Complaint does not specify any
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`special sources of proof or make any allegation of infringement activity that only takes place within
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`Case 6:21-cv-00731-ADA Document 7 Filed 08/13/21 Page 16 of 20
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`the Western District of Texas. Rather, the allegations appear to be that Roku’s nationwide business
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`operations include those that occur within the Western District of Texas. See Dkt. 1, ¶ 5
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`(generically alleging Roku has committed acts of infringement in the District by selling products
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`that allegedly infringe). As noted in the Declaration of Gergely Timar, most documents and
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`technical information regarding the OneView Ad Platform, as well as Roku’s advertising business
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`in general, are stored in the cloud and hosted at various locations independent of Roku’s office
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`locations. Ex. A (Timar Decl.), ¶ 7. However, the most likely location to have physical documents
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`relevant to the OneView Ad Platform is Boston, MA where the underlying Dataxu technology was
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`developed and where the vast majority of Dataxu employees acquired by Roku continue to live
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`and work. Id. at ¶ 8. Not only is the District of Delaware much closer to Boston than is Waco,
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`Delaware is also much closer to the principal places of business of both AlmondNet and Intent
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`IQ—only 131 miles from AlmondNet and Intent IQ to the courthouse in Wilmington, Delaware.
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`Ex. N (mileage from Long Island City, NY to Delaware courthouse). For these reasons, the relative
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`ease of access to sources