`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`GENTEX CORPORATION and INDIGO
`TECHNOLOGIES, LLC,
`
`Case No.: 6:21-cv-00755-ADA
`
`Plaintiffs,
`
`JURY TRIAL DEMANDED
`
`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
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`BACKGROUND .....................................................................................................2
`
`ARGUMENT...........................................................................................................5
`
`The Private Interest Factors Favor Keeping the Case in 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.
`
`2.
`
`3.
`
`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
`
`III.
`
`CONCLUSION ......................................................................................................15
`
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 2 of 21
`
`ii
`
`
`
`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
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 3 of 21
`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
`
`
`
`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
`
`
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 4 of 21
`
`iv
`
`
`
`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
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 5 of 21
`
`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
`
`
`
`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
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 6 of 21
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`Asserted Patents cover innovations that made it possible to forgo the external equipment, minimize
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`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
`
`
`
`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
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 7 of 21
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`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
`
`
`
`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”)
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`presence in Texas, which exists to this day. Meta maintains offices in both Austin and Dallas,
`
`where, at least,
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 8 of 21
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`Decl. of
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`Nicholas Wong, ECF No. 39-1 (“Wong Decl.”), ¶ 10; see Ex. 35 at Ex. J. Meta is hiring for 28
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`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
`
`Ex. 35 at 12, and Hooper, who has remained in his role as
`
`4
`
`
`
`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
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`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.
`
`Witness Cost and Convenience Favors WDTX.
`1.
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 9 of 21
`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
`
`
`
`than are in or around NDCA, and thus this factor favors retention of the case in WDTX.
`
`a.
`
`A Number of Relevant Witnesses in This Case Are in Texas.
`
`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
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 10 of 21
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`information and belief also live within 100 miles of the Waco courthouse, Ex. 29; Ex. 30. Welch
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`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
`
`
`
`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.
`
`b.
`
`Meta’s Focus on NDCA Ignores the Full Scope of the Case.
`
`
`
`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
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 11 of 21
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`require “mounting a display device on the user’s head,” “displaying a first object . . . on the display
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`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
`
`
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`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
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 12 of 21
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`on the basis that Wright’s team did not design or develop “the tracking algorithms” or “camera
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`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
`
`
`
`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
`Case 6:21-cv-00755-ADA Document 64 Filed 05/31/22 Page 13 of 21
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`these claims, and should not weigh heavily, if at all. See supra p. 8.
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`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
`
`
`
`in or around WDTX (one of whom Meta also identifies). Both parties have identified one inventor
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`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
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`relevant to the case. See supra Section II.A.1.b. For another, Meta ignores that Gentex and
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`involuntary Plaintiff Thales are East Coast companies located closer to this District than NDCA,
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`and Meta has served dozens of discovery requests on Gentex and Thales. Exs. 41-45. Even as to
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`the topics and sources Meta does address, it makes no effort to differentiate between
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`documentation maintained in NDCA as compared to other locations it identifies—namely,
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` see Br. 7; Wong Decl. ¶ 16. The only specific
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`documents it mentions as being located within NDCA are inventor notebooks, from which Gentex
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`already has been producing documents without undue burden. Br. 7-8; ECF No. 40 ¶¶ 26-27.
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`Finally, Meta asserts that documents will be collected by a
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`Wong Decl.
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`¶ 17, but that says nothing about where those documents were created and maintained. Indeed, to
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`give weight to a litigation support team’s location would invite gamesmanship, as the party could
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`select a location to manufacture evidence for a transfer motion.
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`The limited evidence Meta proffered does not establish that a “majority” of documentary
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`evidence is in NDCA, leaving the Court to guess at what exists where and failing to carry Meta’s
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`burden. See, e.g., Def. Distributed v. Bruck, 30 F.4th 414, 434 (5th Cir. 2022). Because sources
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`of proof are located in both districts, this factor is neutral.
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`3.
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`Availability of Compulsory Process Favors WDTX.
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`A federal court can subpoena a witness to attend trial only if the witness is either “within
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`100 miles” or “within the state” where the witness “resides, is employed, or regularly transacts
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`business in person.” BillJCo, LLC v. Apple Inc., 2022 WL 607890, at *4 (W.D. Tex. Mar. 1,
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`2022). Under this factor, the Court focuses on “non-party witnesses whose attendance may need
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`to be secured by a court order.” Fintiv, Inc. v. Apple Inc., 2019 WL 4743678, at *5 (W.D. Tex.
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`Sept. 13, 2019). All but one of the central witnesses in the case either work for a party or have
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`agreed to attend trial in WDTX, so compulsory process will not be necessary. A key witness
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`regarding the Meta’s acquisition of Oculus, Katherine Kang, could be compelled to testify only in
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`WDTX, not NDCA, Ex. 33, app. 1, at 4; Ex. 19, so this factor weighs in favor of WDTX.
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`Meta did not consider Kang’s residence in its assessment of this factor, presumably because
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`it assumed—contrary to this Court’s subsequent ruling—that Meta’s acquisition of Oculus was
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`not relevant. ECF No. 59 at 10. In contending that this factor favors NDCA, Meta relies on the
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`inventor, Eric Foxlin, and authors of alleged prior art. But Mr. Foxlin has now declared he will
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`11
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`voluntarily attend trial, Ex. 24, ¶ 3, so there will be no need for compulsory service and his
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`residence is not relevant under this factor, see Voxer, 2020 WL 3416012, at *4.
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`That leaves alleged prior art witnesses who reside in NDCA as Meta’s only support. Br.
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`4-5, 9. However, as the Court knows, these prior art witnesses rightly receive “minimal weight”
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`because they “are very unlikely to testify.” Kuster v. W. Digital Techs., Inc., 2021 WL 466147, at
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`*4 (W.D. Tex. Feb. 9, 2021), mandamus denied sub nom. In re W. Digital Techs., Inc., 847 F.
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`App’x 925 (Fed. Cir. May 10, 2021). Moreover, while prior art witnesses theoretically could be
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`relevant in some circumstances, Meta offers no reason why the prior art developed by individuals
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`located in California is more relevant than any of the other 90-plus prior art references Meta
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`referenced in its contentions, Ex. 40, including prior art tied to Texas. For instance, Frank Brick
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`was the President of Telxon Corporation, which sold an alleged prior art system—making him
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`both a prior art witness and a potential damages witness, Ex. 25—and he is available in WDTX
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`and not NDCA, Ex. 20. Because there is no basis to conclude that the alleged prior art witnesses
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`Meta selected here would actually be relied upon at trial, they do not favor transfer. Allowing
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`such speculation about prior art witnesses to outweigh the existence of third-party witness Kang
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`would only encourage mischief, as the moving party could lard up its contentions with any number
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`of prior art references to influence the transfer decision. This factor favors WDTX.
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`4.
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`“Practical Problems” Make Transfer Unfair, Heavily Favoring WDTX.
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`Even were the facts themselves not strongly against transfer, Meta’s delay in filing this
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`motion merits denial. When considering this factor, courts look to “all other practical problems
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`that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 315.
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`Critically, parties “should not delay filing of a motion to transfer.” In re Wyeth, 406 F. App’x 475,
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`477 (Fed. Cir. 2010); Peteet v. Dow Chem. Co., 868 F.2d 1428, 1436 (5th Cir. 1989). Instead
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`“[p]arties seeking a change of venue should act with ‘reasonable promptness.’” In re Wyeth, 406 F.
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`12
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`App’x at 477 (denying writ of mandamus when the district court determined that familiarity with
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`case and del