throbber
Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 1 of 21
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Case No.: 6:21-cv-00755-ADA
`JURY TRIAL DEMANDED
`
`GENTEX CORPORATION and INDIGO
`TECHNOLOGIES, LLC,
`Plaintiffs,
`THALES VISIONIX, INC.,
`Involuntary Plaintiff,
`
`v.
`META PLATFORMS, INC. and META
`PLATFORMS TECHNOLOGIES, LLC,
`Defendants.
`
`PLAINTIFFS’ OPPOSITION TO META’S MOTION TO TRANSFER VENUE
`UNDER 28 U.S.C. § 1404(A)
`
`i
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 2 of 21
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`BACKGROUND .....................................................................................................2
`ARGUMENT ...........................................................................................................5
`The Private Interest Factors Favor Keeping the Case in WDTX. ................5
`1.
`Witness Cost and Convenience Favors WDTX. ..............................5
`
`2.
`3.
`4.
`
`Relative Ease of Access to Sources of Proof Is Neutral. ...............10
`Availability of Compulsory Process Favors WDTX. ....................11
`“Practical Problems” Make Transfer Unfair, Heavily
`Favoring WDTX. ...........................................................................12
`The Public Interest Factors Favor Keeping This Case in WDTX. ............14
`1.
`Administrative Difficulties Flowing from Court Congestion
`Favor WDTX. ................................................................................14
`Local Interest in Having Localized Interests Decided at
`Home Is Neutral. ............................................................................15
`Familiarity with the Law and Avoidance of Conflict of
`Laws Are Neutral. ..........................................................................15
`CONCLUSION ......................................................................................................15
`
`2.
`
`3.
`
`III.
`
`ii
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 3 of 21
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Action Indus., Inc. v. U.S. Fid. & Guar. Co.,
`358 F.3d 337 (5th Cir. 2004) .....................................................................................................5
`
`Alacritech Inc. v. CenturyLink, Inc.,
`2017 WL 4155236 (E.D. Tex. Sept. 19, 2017) ..........................................................................5
`
`BillJCo, LLC v. Apple Inc.,
`2022 WL 607890 (W.D. Tex. Mar. 1, 2022) .....................................................................11, 15
`
`Def. Distributed v. Bruck,
`30 F.4th 414 (5th Cir. 2022) ....................................................................................................11
`
`Fintiv, Inc. v. Apple Inc.,
`2019 WL 4743678 (W.D. Tex. Sept. 13, 2019) .......................................................................11
`
`FTC v. Multinet Mktg., LLC,
`959 F. Supp. 394 (N.D. Tex. 1997) .........................................................................................13
`
`Healthpoint, Ltd. v. Derma Scis., Inc.,
`939 F. Supp. 2d 680 (W.D. Tex. 2013)....................................................................................10
`
`Hoffman v. Blaski,
`363 U.S. 335 (1960) ...................................................................................................................5
`
`In re Apple,
`979 F.3d 1332 (Fed. Cir. 2020)..........................................................................................14, 15
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)............................................................................................5, 14
`
`In re Volkswagen of Am., Inc. (Volkswagen II),
`545 F.3d 304 (5th Cir. 2008) .........................................................................................5, 12, 15
`
`In re Wyeth,
`406 F. App’x 475 (Fed. Cir. 2010) ..........................................................................................12
`
`Intellectual Ventures I LLC v. Hewlett Packard Enter. Co.,
`2022 WL 1491096 (W.D. Tex. May 11, 2022) .......................................................................10
`
`Konami Digit. Ent. Co. v. Harmonix Music Sys., Inc.,
`2009 WL 781134 (E.D. Tex. Mar 23, 2009) .....................................................................13, 14
`
`iii
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 4 of 21
`
`Kuster v. W. Digital Techs., Inc.,
`2021 WL 466147 (W.D. Tex. Feb. 9, 2021) ............................................................................12
`
`Martin v. BNSF Ry. Co.,
`2007 WL 4333341 (E.D. Tex. Dec. 10, 2007) .........................................................................14
`
`Monterey Rsch., LLC v. Broadcom Corp.,
`2022 WL 526240 (W.D. Tex. Feb. 21, 2022) ....................................................................10, 14
`
`Peteet v. Dow Chem. Co.,
`868 F.2d 1428 (5th Cir. 1989) .................................................................................................12
`
`Stewart Org. v. Ricoh Corp.,
`487 U.S. 22 (1988) ...............................................................................................................5, 14
`
`TPQ Dev., LLC v. LinkedIn Corp.,
`2013 WL 12247813 (E.D. Tex. Mar. 28, 2013) ......................................................................13
`
`Voxer, Inc. v. Facebook, Inc.,
`2020 WL 3416012 (W.D. Tex. June 22, 2020) ...................................................................9, 12
`
`
`iv
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 5 of 21
`
`Plaintiffs Gentex Corporation and Indigo Technologies, LLC (“Gentex”) filed this patent
`
`infringement suit against Meta in July 2021. For seven months, Meta actively litigated the case in
`
`this District: it answered the complaint, negotiated case management issues, served contentions,
`
`requested extensions, and filed three discovery motions. Only in February 2022 did Meta file its
`
`motion to transfer venue to the Northern District of California (“NDCA”).
`
`There are two explanations for Meta’s litigate-and-wait approach. Either it took Meta
`
`seven months to gin up justifications for transfer—despite the fact that its arguments are based
`
`primarily on its own witnesses and documents. This, of course, belies any notion that NDCA is
`
`clearly more convenient than the Western District of Texas (“WDTX”). Or, if Meta did not delay
`
`for substantive reasons, its delay was strategic: wait as long as possible before filing, knowing
`
`that this Court would delay the Markman hearing if a venue transfer motion were still pending at
`
`the time of the originally scheduled hearing. Yet that gamesmanship would sink the motion on
`
`fairness grounds. In either case, Meta’s delay is reason enough to deny its Motion.
`
`Whatever the reason, Meta’s foot-dragging is understandable: this case has close ties to
`
`Texas and plainly does not warrant transfer. Although the Court would never know it from reading
`
`Meta’s motion, Dallas was a technological hub for Oculus, the company that created the
`
`foundational predecessors to the accused products. Dallas was the home base for Chief
`
`Technology Officer (and current Meta consultant) John Carmack, along with other engineers who
`
`worked on predecessors that formed the technological backbone to the accused products and who
`
`continue to work on these products to this day. Carmack, and others in Texas residing within 100
`
`miles of the Waco courthouse, participated directly in negotiations leading to then-Facebook’s
`
`acquisition of Oculus, a transaction that forms a substantial basis for Gentex’s allegations of willful
`
`infringement in this matter. And still today, Texas is home to two Meta offices, including one of
`
`1
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 6 of 21
`
`the company’s largest, in Austin, where teams work directly on the accused products. Rather than
`
`wrestle with these inconvenient facts, Meta simply ignores them.
`
`All told, the parties have identified seven Texas-based witnesses in their Rule 26
`
`disclosures, including a third-party witness who, upon information and belief, would not be within
`
`the subpoena power in NDCA but is here. This includes Meta’s own identification of Texas-based
`
`software engineer Jonathan Wright—disproving Meta’s own statement to the Court that “none of
`
`the evidence relevant to this suit is located in . . . Texas.” Defs.’ Mot. to Transfer, ECF No. 39
`
`(“Br.”) at 1. Meta’s attempt to portray NDCA as clearly more convenient rests on an overemphasis
`
`on sources of evidence that are marginally relevant at best (like prior art authors) while failing to
`
`acknowledge the strong base Oculus has in Texas. When it comes to actual evidence and witnesses
`
`likely to play a real role in the case, NDCA is not clearly more convenient than WDTX.
`
`I.
`
`BACKGROUND
`
`Asserted Patents. This case concerns five patents for virtual reality (“VR”) related
`
`inventions, U.S. Patent Nos. 6,757,068; 7,301,648; 8,224,024; 6,922,632; 7,725,253. To operate
`
`effectively, VR systems must be able to keep track of things like a user’s head, hands, and handheld
`
`controllers. To do so, such devices incorporate sensor measurement data to estimate the position
`
`and orientation of body parts or objects along six dimensions, or “degrees of freedom.” At the
`
`time of the inventions, most existing tracking systems relied on external equipment placed in the
`
`room, which formed a significant obstacle to both usability and commercial viability. The
`
`Asserted Patents cover innovations that made it possible to forgo the external equipment, minimize
`
`equipment worn by the user, and provide a more reliable and flexible user experience.
`
`The ’068 and ’648 patents describe combining body-mounted “sourceless” orientation
`
`trackers, such as inertial sensors, with position trackers to track users’ limbs relative to their heads
`
`and reflect those limb positions on a display—all without requiring signals propagated from an
`
`2
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 7 of 21
`
`external source the user installed in the environment. The ’024 patent teaches how to combine
`
`information from an inertial sensor, one camera, and two tracking points to calculate information
`
`about the object’s orientation, enabling smaller tracking surfaces and more reliable, smoother
`
`tracking. And the ’632 and ’253 patents describe an innovative “architecture” that structures a
`
`tracking system so that one segment collects data from sensors, while another segment updates the
`
`estimates used for tracking. These segments’ independence allows sensors to be designed and
`
`implemented or changed without knowledge or re-programming of the updating process, and vice
`
`versa, enabling more flexible synthesis of data from different sensors.
`
`Oculus Products. The accused products in this case trace their origins to a company
`
`named Oculus VR, Inc., which developed VR devices. Complaint, ECF No. 1 (“Complaint”) at
`
`¶ 43 & n.17. In 2014, Meta’s predecessor, Facebook, acquired Oculus VR, Inc., which is now
`
`Defendant Meta Technologies LLC. See ECF No. 50. Oculus VR rolled out its first Oculus-
`
`branded consumer VR device, the Oculus Rift, in 2016. Unlike the accused products, the Oculus
`
`Rift used external sensors placed around the room to track the users’ location. Complaint, ¶ 44 &
`
`n.19. Three years later, Oculus released its next generation devices: the Oculus Quest and Oculus
`
`Rift S. Ex. 27 to Borrasso Decl. (hereinafter “Ex.”). Their biggest differentiator—“perhaps the
`
`most important element”—was sourceless, “inside-out” tracking. Ex. 1.
`
`Oculus’s Texas Ties. The development of Oculus’s headsets, including the pivotal
`
`features, is directly tied to Texas, and the connections to Texas persist to this day. In 2013, the
`
`year before it was acquired by Meta, see Ex. 10 at 336, 350-51, Oculus scored a coup when it hired
`
`the “legendary” John Carmack as its new Chief Technology Officer, Ex. 2. Carmack was—and
`
`is—based in Texas, and worked from a new Dallas Oculus office that the company set up at his
`
`insistence when he joined. Exs. 3, 4. Carmack was “the technology leader for Oculus,” Ex. 4, and
`
`3
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 8 of 21
`
`reportedly worked personally on issues relevant here, like head tracking, “inside-out positional
`
`tracking,” and making Oculus more “mobile,” among other things, Exs. 5, 6, 7; Ex. 34 at 139:12-
`
`13. Carmack and his team’s work in Dallas served as “the foundation that [Meta] built all the
`
`mobile things off of,” like the Oculus Quest. Borrasso Decl. ¶ 10; Exs. 4, 27.
`
`Carmack built a Texas-based team of over a dozen employees. Ex. 4. This included
`
`Jonathan Wright, who joined the Dallas office in February 2014 and “implemented 6DoF [six-
`
`degree of freedom] tracking service for [a] prototype VR platform,” Ex. 8, and Matt Hooper,
`
`Director of Development for Oculus VR, who touts that he was “involved in some of the most
`
`advanced technology pushes,” including “into the new worlds of virtual and augmented realities,”
`
`Ex. 9. Although Oculus was founded in southern California, Texas was home to a key
`
`technological hub (including the Chief Technology Officer)—a fact Meta simply ignores.
`
`Facebook’s 2014 acquisition of Oculus also cannot be separated from Texas. Carmack
`
`was essential in pitching Oculus directly to Facebook CEO Mark Zuckerberg, setting the vision
`
`for the future of virtual reality and delivering key technological information. Ex. 10 at 344-46.
`
`He signed off on the deal only after his then-wife, Katherine Kang—also Texas-based—negotiated
`
`on his behalf. Id. at 348-49; accord Ex. 34 at 108:6-7, 173:16-18, 175:22-24, 176:7-10.
`
`After Facebook acquired Oculus, it retained a strong VR and AR (“augmented reality”)
`
`presence in Texas, which exists to this day. Meta maintains offices in both Austin and Dallas,
`
`where, at least, the “XR Runtime Surfaces” and “Verts” teams work on Oculus products. Decl. of
`
`Nicholas Wong, ECF No. 39-1 (“Wong Decl.”), ¶ 10; see Ex. 35 at Ex. J. Meta is hiring for 28
`
`Oculus-related jobs in its Austin office. Ex. 26. Employees discussed above continue to work on
`
`VR products for Meta out of Texas, including Wright, now the Technology Lead Manager for the
`
`Oculus XR Runtime Surfaces Team, Ex. 35 at 12, and Hooper, who has remained in his role as
`
`4
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 9 of 21
`
`Director of Development, Ex. 9. For his part, Carmack served as Oculus’s CTO under Facebook’s
`
`ownership until November 2019—through the launch of at least two accused products—and
`
`continues to consult for Meta while, upon information and belief, residing in Dallas. Ex. 11.
`
`II.
`
`ARGUMENT
`
`A party seeking transfer carries the burden of showing good cause, namely that the
`
`“transfer is ‘[f]or the convenience of parties and witnesses, in the interest of justice.’” In re
`
`Volkswagen of Am., Inc. (Volkswagen II), 545 F.3d 304, 315 (5th Cir. 2008) (quoting 28 U.S.C.
`
`§ 1404(a)). Meta must show that the alternative venue is “clearly more convenient.” Id. The
`
`Court has wide discretion to decide motions for transfer via “individualized, case-by-case
`
`consideration.” Stewart Org. v. Ricoh Corp., 487 U.S. 22, 29 (1988). In assessing each case,
`
`“convenience” is key—but so is “fairness.” Id.
`
`Since Gentex does not dispute that the destination venue would have been a proper venue,
`
`“[t]he determination of ‘convenience’ turns on a number of public and private interest factors,
`
`none of which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar.
`
`Co., 358 F.3d 337, 340 (5th Cir. 2004). Courts evaluate these factors based on the situation which
`
`existed at the time of filing. Hoffman v. Blaski, 363 U.S. 335, 342-43 (1960). Here, the factors
`
`plainly favor keeping the case in WDTX.
`
` The Private Interest Factors Favor Keeping the Case in WDTX.
`1. Witness Cost and Convenience Favors WDTX.
`
`The most important factor in the transfer analysis is witness convenience. See In re
`
`Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). When analyzing this factor, the Court
`
`considers “all potential material and relevant witnesses.” Alacritech Inc. v. CenturyLink, Inc.,
`
`2017 WL 4155236, at *5 (E.D. Tex. Sept. 19, 2017). Here, more identified witnesses in this case
`
`(excluding prior art witnesses of minimal relevance, infra Section II.A.3) are in or around WDTX
`
`5
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 10 of 21
`
`than are in or around NDCA, and thus this factor favors retention of the case in WDTX.
`
`A Number of Relevant Witnesses in This Case Are in Texas.
`
`a.
`Given Oculus and Meta’s deep and enduring roots in Texas, it is no surprise that many
`
`individuals who were involved in the development of the accused products, including inside out-
`
`tracking, were and are located in Texas. Key early Oculus employees John Carmack and Jonathan
`
`Wright reside in Texas, as does Matt Hooper, who joined Carmack shortly after the acquisition.
`
`See supra p. 4. Although Meta contends that the relevant tracking functionality in the current
`
`products was developed and is maintained outside of Texas, Br. 3, Carmack’s public work on
`
`tracking provided the foundation for later products, Ex. 17 at 18; Borrasso Decl. ¶ 10, and the
`
`various contributions are relevant to the baseline for comparing the accused technology and thus
`
`to damages. April 13, 2022 Order, ECF No. 59 at 11. On information and belief, Carmack and
`
`Hooper reside within 100 miles of the Waco courthouse, Ex. 3; Ex. 13, Wright is slightly farther
`
`away, within 120 miles, Ex. 12, and Wright and Hooper continue to work for Meta at a Dallas
`
`office within 100 miles of the courthouse, Ex. 8; Ex. 9; Ex. 32.
`
`Others in Texas also work on relevant aspects of the accused products, including, for
`
`example, Cass Everitt, a long-time software engineer who developed VR “system software and
`
`public facing APIs for Quest,” Ex. 14; Andrew Welch, who designed a “[h]and [t]racking [t]ech
`
`[d]emo for Oculus Quest,” Ex. 15; and Jonathan Atkins, Head of Design for Oculus VR and
`
`Metaverse, Ex. 16. Everitt and Atkins work out of Meta’s Austin office, Ex. 14; Ex. 16, and upon
`
`information and belief also live within 100 miles of the Waco courthouse, Ex. 29; Ex. 30. Welch
`
`works in the Dallas office and, upon information and belief, lives within 105 miles of the
`
`courthouse, Ex. 31, and works within 100 miles of the courthouse, Exs. 15, 32.
`
`Texas-based witnesses like Carmack and Kang also are expected to provide factual
`
`development and testimony regarding Facebook’s acquisition of Oculus VR, Inc., which is directly
`
`6
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 11 of 21
`
`relevant to both willfulness and damages. As the Complaint alleges, due diligence for this
`
`transaction involved an extensive intellectual property review, Complaint, ¶¶ 53-55; Ex. 36 at
`
`18:14-18, 67:23-68:23, 71:1-23, 89:21-90:7, which should have included the Asserted Patents
`
`given the prominence of the patents and their inventor. In addition, the negotiations, technological
`
`analyses, and valuation information generated during the acquisition will be central to damages.
`
`Meta’s Focus on NDCA Ignores the Full Scope of the Case.
`
`b.
`Rather than grapple with inconvenient facts, Meta dismisses them as irrelevant or ignores
`
`
`
`them altogether. Meta did not acknowledge that Oculus’s Chief Technology Officer (Carmack)
`
`lives and works in Dallas. Meta portrayed legacy Oculus solely as a California company, with no
`
`mention of its Texas presence. Meta ignored the acquisition and predecessor products. And Meta
`
`glossed over all of the work it currently does on Oculus in Texas as irrelevant. It justified this
`
`approach by focusing solely on current employees working on marketing, financials, and what it
`
`called the “Accused Features”: “headset and handheld controller tracking algorithms and
`
`functionality for determining location using cameras that are allegedly found in [the accused
`
`products].” Br. 3. Meta’s venue declarant, accordingly, limited his investigation to a similar
`
`definition of “the accused features.” Ex. 37 at 35:24-36:11, 150:15-18, 151:23-152:6.
`
`But the case—and thus the venue inquiry—is not so narrowly cabined. For one thing, the
`
`“Accused Features” as Meta describes them plainly do not cover the entire scope of the asserted
`
`claims. Br. 3; Wong Decl. ¶¶ 5-6, 11. For example, certain asserted claims of the ’068 patent
`
`require “mounting a display device on the user’s head,” “displaying a first object . . . on the display
`
`device,” or “displaying a graphical user interface for a computer on the display device.” Ex. 38 at
`
`15:43-45, 16:7-9. But Meta’s venue declarant did not attempt to identify any Meta employees
`
`responsible for head-mounted displays in the accused products, Ex. 37 at 82:9-21, and he did not
`
`know who was responsible for VR graphical user interfaces, id. at 95:16-96:5.
`
`7
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 12 of 21
`
`Nor does Meta’s approach encompass any predecessor products, which are particularly
`
`relevant here. As the Court has already acknowledged, “individuals [formerly] at Oculus have
`
`relevant knowledge of the state of the art used as the baseline for comparing the accused
`
`technology, be it in valuation or as prior art.” ECF No. 59 at 11. Meta’s declarant, who “was just
`
`concerned with the accused products,” did not investigate the algorithms used in Oculus systems
`
`“that preceded the accused products.” Ex. 37 at 142:22-143:6.
`
`Meta’s own self-serving identification of witnesses in connection with its motion further
`
`undercuts its arbitrary definition of “Accused Features.” Meta’s declaration lists California-based
`
`teams that are responsible for “the electrical and hardware engineering” for Oculus headsets and
`
`handheld controllers, Wong Decl. ¶ 9, and for “integrating cameras into” the accused products, id.
`
`at ¶ 12. Meta makes no effort to explain how these hardware engineers relate to its definition of
`
`the Accused Features, much less how their testimony could bear on any of the claims at issue. See
`
`Br. 3, 7. Meta appears to have included them in support of this motion (and in its Initial
`
`Disclosures) solely to boost the number of California-based witnesses.
`
`When push came to shove, even Meta could not stand behind its statement that “none” of
`
`the relevant witnesses are located in Texas. Br. 1, 10. In Meta’s recent Rule 26 disclosures, it
`
`named Texas-based Jonathan Wright as likely to have relevant information Meta may use “related
`
`to the structure, function and operation of Meta’s accused products, including Oculus software.”
`
`Ex. 39 at 3. In its transfer filings, by contrast, Meta had dismissed the relevance of Wright’s work
`
`on the basis that Wright’s team did not design or develop “the tracking algorithms” or “camera
`
`systems” used in Oculus products. Wong Decl. ¶ 10.
`
`All told, the parties’ Rule 26 disclosures indicate that this factor favors retaining the case
`
`here. First, Gentex identified third party Kang, Ex. 28 at 5, who, on information and belief, resides
`
`8
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 13 of 21
`
`in Texas within 100 miles of this Court, Ex. 19. Second, Gentex disclosed eight witnesses who
`
`are currently employed by or consult for Meta. See Ex. 28 at 2-5. On information and belief, six
`
`of those witnesses live in Texas—four within 100 miles of the Waco courthouse, and the others
`
`within 120 miles. See supra Section II.A.1. The other two Meta employees included on Gentex’s
`
`Rule 26 disclosures live in or around Zurich, Switzerland or Seattle, Washington. Ex. 28 at 4-5.
`
`Third, Gentex disclosed two of its own witnesses. Id. One lives in Pennsylvania; the other is Eric
`
`Foxlin, an inventor and former employee. Id. Foxlin now lives in California and works for another
`
`company, but he has signed a declaration that he is willing to travel to WDTX for trial and that
`
`such travel would not pose an undue burden for him, Ex. 24, so his involvement does not support
`
`transfer, see Voxer, Inc. v. Facebook, Inc., 2020 WL 3416012, at *4 (W.D. Tex. June 22, 2020).
`
`Meta identified one additional former Gentex employee as a potential witness, an inventor
`
`on one patent who lives in Massachusetts. Ex. 39 at 4. Meta also identified ten potential Meta
`
`witnesses. One is Mr. Wong, whose knowledge is “related to the location of witnesses and
`
`evidence,” id. at 3; because he is a relevant witness for venue, but not trial, his location should not
`
`be considered as part of this factor. As to the others, Meta identified Wright in Dallas, two
`
`witnesses located in Washington (Everist and Melim), one located in Zurich, Switzerland (Oth),
`
`and six located in California (Southard, Hazegh, Camposeco, Chen, Leung, and Linde). Id. at 3;
`
`Ex. 35; see also infra Section I.A.3 (addressing Meta’s prior art witnesses). Two of those
`
`California witnesses, Southard and Hazegh, lead hardware engineering teams unlikely to bear on
`
`these claims, and should not weigh heavily, if at all. See supra p. 8.
`
`Thus, considered as a group, a trial in NDCA is not clearly more convenient than WDTX.
`
`Even taking Meta’s disclosure at face value, Meta has identified six non-venue party witnesses
`
`located in California, while Gentex has identified six party witnesses and one third party located
`
`9
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 14 of 21
`
`in or around WDTX (one of whom Meta also identifies). Both parties have identified one inventor
`
`located in NDCA, but he is willing to travel for trial. Ex. 24. The other witnesses live outside
`
`either district—in Switzerland, Israel, Washington State, Pennsylvania, and Massachusetts—and
`
`their collective travel will not be more inconvenient to WDTX than to NDCA. See Intellectual
`
`Ventures I LLC v. Hewlett Packard Enter. Co., 2022 WL 1491096, at *7-8 (W.D. Tex. May 11,
`
`2022). For example, flights from Seattle to San Francisco are over two hours, Ex. 18, making a
`
`day trip infeasible for trial. Trips from overseas pose similar inconvenience in both districts.
`
`Therefore, this factor favors retaining the case in WDTX. See Monterey Rsch., LLC v. Broadcom
`
`Corp., 2022 WL 526240, at *12 (W.D. Tex. Feb. 21, 2022) (factor weighed against transfer when
`
`“witnesses for the majority of the products would find trial in the WDTX to be more convenient”).
`
`2.
`
`Relative Ease of Access to Sources of Proof Is Neutral.
`
`Although the sources of proof in this litigation are scattered across the globe, a plurality of
`
`relevant party witnesses are, and were at the time of the relevant work, located in Texas, so Gentex
`
`expects a sizeable portion of the proof will come from Texas. See Healthpoint, Ltd. v. Derma
`
`Scis., Inc., 939 F. Supp. 2d 680, 688 (W.D. Tex. 2013). Meta’s assertion that the “majority of the
`
`relevant evidence is maintained in or closer to N.D. Cal.,” Br. 8, does not address large swaths of
`
`evidence and is therefore unreliable. For one thing, Meta again relies on its self-selected list of
`
`“Accused Features,” which does not cover all aspects of the asserted claims, let alone all topics
`
`relevant to the case. See supra Section II.A.1.b. For another, Meta ignores that Gentex and
`
`involuntary Plaintiff Thales are East Coast companies located closer to this District than NDCA,
`
`and Meta has served dozens of discovery requests on Gentex and Thales. Exs. 41-45. Even as to
`
`the topics and sources Meta does address, it makes no effort to differentiate between
`
`documentation maintained in NDCA as compared to other locations it identifies—namely, the
`
`“West Coast,” Washington, Switzerland, and Israel, see Br. 7; Wong Decl. ¶ 16. The only specific
`
`10
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 15 of 21
`
`documents it mentions as being located within NDCA are inventor notebooks, from which Gentex
`
`already has been producing documents without undue burden. Br. 7-8; ECF No. 40 ¶¶ 26-27.
`
`Finally, Meta asserts that documents will be collected by a Menlo Park-based team, Wong Decl.
`
`¶ 17, but that says nothing about where those documents were created and maintained. Indeed, to
`
`give weight to a litigation support team’s location would invite gamesmanship, as the party could
`
`select a location to manufacture evidence for a transfer motion.
`
`The limited evidence Meta proffered does not establish that a “majority” of documentary
`
`evidence is in NDCA, leaving the Court to guess at what exists where and failing to carry Meta’s
`
`burden. See, e.g., Def. Distributed v. Bruck, 30 F.4th 414, 434 (5th Cir. 2022). Because sources
`
`of proof are located in both districts, this factor is neutral.
`
`3.
`
`Availability of Compulsory Process Favors WDTX.
`
`A federal court can subpoena a witness to attend trial only if the witness is either “within
`
`100 miles” or “within the state” where the witness “resides, is employed, or regularly transacts
`
`business in person.” BillJCo, LLC v. Apple Inc., 2022 WL 607890, at *4 (W.D. Tex. Mar. 1,
`
`2022). Under this factor, the Court focuses on “non-party witnesses whose attendance may need
`
`to be secured by a court order.” Fintiv, Inc. v. Apple Inc., 2019 WL 4743678, at *5 (W.D. Tex.
`
`Sept. 13, 2019). All but one of the central witnesses in the case either work for a party or have
`
`agreed to attend trial in WDTX, so compulsory process will not be necessary. A key witness
`
`regarding the Meta’s acquisition of Oculus, Katherine Kang, could be compelled to testify only in
`
`WDTX, not NDCA, Ex. 33, app. 1, at 4; Ex. 19, so this factor weighs in favor of WDTX.
`
`Meta did not consider Kang’s residence in its assessment of this factor, presumably because
`
`it assumed—contrary to this Court’s subsequent ruling—that Meta’s acquisition of Oculus was
`
`not relevant. ECF No. 59 at 10. In contending that this factor favors NDCA, Meta relies on the
`
`inventor, Eric Foxlin, and authors of alleged prior art. But Mr. Foxlin has now declared he will
`
`11
`
`

`

`Case 6:21-cv-00755-ADA Document 61 Filed 05/20/22 Page 16 of 21
`
`voluntarily attend trial, Ex. 24, ¶ 3, so there will be no need for compulsory service and his
`
`residence is not relevant under this factor, see Voxer, 2020 WL 3416012, at *4.
`
`That leaves alleged prior art witnesses who reside in NDCA as Meta’s only support. Br.
`
`4-5, 9. However, as the Court knows, these prior art witnesses rightly receive “minimal weight”
`
`because they “are very unlikely to testify.” Kuster v. W. Digital Techs., Inc., 2021 WL 466147, at
`
`*4 (W.D. Tex. Feb. 9, 2021), mandamus denied sub nom. In re W. Digital Techs., Inc., 847 F.
`
`App’x 925 (Fed. Cir. May 10, 2021). Moreover, while prior art witnesses theoretically could be
`
`relevant in some circumstances, Meta offers no reason why the prior art developed by individuals
`
`located in California is more relevant than any of the other 90-plus prior art references Meta
`
`referenced in its contentions, Ex. 40, including prior art tied to Texas. For instance, Frank Brick
`
`was the President of Telxon Corporation, which sold an alleged prior art system—making him
`
`both a prior art witness and a potential damages witness, Ex. 25—and he is available in WDTX
`
`and not NDCA, Ex. 20. Because there is no basis to conclude that the alleged prior art witnesses
`
`Meta selected here would actually be relied upon at trial, they do not favor transfer. Allowing
`
`such speculation about prior art witnesses to outweigh the existence of third-party witness Kang
`
`would only encourage mischief, as the moving party could lard up its contentions with any number
`
`of prior art references to influence the transfer decision. This factor favors WDTX.
`
`4.
`
`“Practical Problems” Make Transfer Unfair, Heavily Favoring WDTX.
`
`Even were the facts themselves not strongly against transfer, Meta’s delay in filing this
`
`motion merits denial. When considering this factor, courts look to “all other practical problems
`
`that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 315.
`
`Critically, parties “should not delay filing of a motion to transfer.” In re Wyeth, 406 F. App’x 475,
`
`477 (Fe

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket