Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`JAWBONE INNOVATIONS, LLC,
`
`Case No. 6:21-CV-00984-ADA
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`DEFENDANT APPLE INC.’S MOTION TO
`TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
`
`

`

`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 2 of 21
`
`
`I.
`
`INTRODUCTION .............................................................................................................1
`
`TABLE OF CONTENTS
`
`II.
`
`STATEMENT OF FACTS ................................................................................................1
`
`A.
`
`B.
`
`C.
`
`Nature of this Case .................................................................................................1
`
`Apple’s Relevant Witnesses and Documents are in California,
`Primarily NDCA ....................................................................................................2
`
`Relevant Third Parties Are Located Outside WDTX, Primarily
`in NDCA ................................................................................................................4
`
`D.
`
`Plaintiff Jawbone Innovations, LLC ......................................................................6
`
`III.
`
`LEGAL STANDARD ........................................................................................................6
`
`IV.
`
`NDCA IS THE MORE CONVENIENT VENUE .............................................................7
`
`A.
`
`B.
`
`Venue Is Proper in NDCA Under Section 1404 ....................................................7
`
`The Private Interest Factors Favor Transfer ..........................................................7
`
`1.
`
`2.
`
`3.
`
`4.
`
`Relative Ease of Access to Sources of Proof .............................................7
`
`Availability of Compulsory Process ..........................................................9
`
`Attendance of Willing Witnesses.............................................................11
`
`All Other Practical Problems ...................................................................12
`
`C.
`
`The Public Interest Factors Favor Transfer .........................................................13
`
`1.
`
`2.
`
`3.
`
`Local Interests Strongly Favor Transfer ..................................................13
`
`Court Congestion Is, at Worst, Neutral ....................................................14
`
`Familiarity with the Governing Law and Conflicts of
`Law ..........................................................................................................15
`
`V.
`
`CONCLUSION ................................................................................................................15
`
`
`
`
`
`i
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`

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`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`In re Adobe Inc.,
`823 Fed. App’x. 929 (Fed. Cir. 2020)......................................................................................12
`
`Affinity Labs of Tex., LLC v. Blackberry Ltd.,
`No. 6:13-CV-362, 2014 WL 10748106 (W.D. Tex. June 11, 2014) .......................................13
`
`Aguilar-Ayala v. Ruiz,
`973 F.2d 411 (5th Cir. 1992) ...................................................................................................10
`
`In re Apple Inc.,
`2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) .................................................................. passim
`
`In re Apple Inc.,
`2022 WL 1196768 (Fed. Cir. Apr. 22, 2022) .................................................................. passim
`
`In re: Apple Inc.,
`818 F. App’x 1001 (Fed. Cir. 2020) ....................................................................................7, 11
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)..................................................................................7, 9, 14, 15
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ....................................................................................10, 11
`
`In re Dish Network L.L.C.,
`2021 WL 4911981 (Fed. Cir. Oct. 21, 2021) .............................................................................7
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)............................................................................................8, 10
`
`In re Google LLC,
`2021 WL 5292267 (Fed. Cir. Nov. 15, 2021) ......................................................................8, 15
`
`Jawbone Innovations, LLC v. Amazon.com, Inc. et al.,
`2:21-cv-00435-JRG, Dkt. 25 (E.D. Tex. Mar. 10, 2022) .........................................................13
`
`Jawbone Innovations, LLC v. Google LLC,
`6:21-cv-00985, Dkt. 41 (W.D. Tex. Apr. 29, 2022) ................................................................13
`
`Jawbone Innovations, LLC v. Samsung Electronics Co. Ltd. et al.,
`Case No. 2:21-cv-00186-JRG, D.I. 1 .........................................................................................6
`
`
`
`i
`
`

`

`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 4 of 21
`
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ..................................................................................................8
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)................................................................................................14
`
`In re Morgan Stanley,
`417 F. App’x 947 (Fed. Cir. 2011) ..........................................................................................15
`
`In re Pandora Media, LLC,
`2021 WL 4772805 (Fed. Cir. Oct. 13, 2021) .............................................................................7
`
`In re Samsung Elecs. Co., Ltd.,
`2 F.4th 1371 (Fed. Cir. 2021) ............................................................................................13, 14
`
`TC Heartland LLC v. Kraft Foods Group Brands LLC,
`137 S. Ct. 1514 (2017) ...............................................................................................................7
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .................................................................................................6, 7
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .....................................................................................6, 7, 11, 12
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. 16-cv-00447, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) ..............................................8
`
`Statutes
`
`28 U.S.C. § 1404(a) ...............................................................................................................1, 6, 10
`
`35 U.S.C. § 1404(b) .........................................................................................................................7
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c)(1)(A), (B)(i) .................................................................................................10
`
`Local Rule CV-7(g) .........................................................................................................................1
`
`
`
`
`
`
`ii
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`

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`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 5 of 21
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`I.
`
`INTRODUCTION
`
`This case should be transferred to the Northern District of California (“NDCA”), where
`
`Apple is headquartered, where most of its likely witnesses are located, where the accused
`
`technology was developed, and where most of the named inventors on the Asserted Patents are
`
`located. This case has no meaningful connection to the Western District of Texas (“WDTX”). No
`
`material witnesses are located in Texas. Nor is Apple aware of any relevant documents located in
`
`Texas. While Apple maintains offices in WDTX, the groups at Apple that designed and developed
`
`the accused functionality are not located in Texas, and Apple is not aware of any employees located
`
`there who were involved in any issues implicated in this case. By any measure, NDCA is the
`
`clearly more convenient venue, and this case should be transferred for the convenience of the
`
`parties and witnesses, and in the interest of justice. For these reasons and those discussed below,
`
`Apple respectfully requests that the Court transfer this case to NDCA pursuant to 28 U.S.C.
`
`§ 1404(a). Apple and Jawbone have conferred on this Motion pursuant to Local Rule CV-7(g).
`
`Jawbone opposes this Motion.
`
`II.
`
`STATEMENT OF FACTS
`
`A.
`
`Nature of this Case
`
`Jawbone Innovations filed this suit against Apple on September 23, 2021, and filed an
`
`Amended Complaint on December 23, 2021. Jawbone Innovations accuses Apple of infringing
`
`U.S. Patent Nos. 7,246,058, 8,019,091, 8,280,072, 8,321,213, 8,326,611, 8,467,543, 10,779,080,
`
`11,122,357, and 8,503,691 (the “Asserted Patents.”). Am. Compl. ¶¶ 9-18. Jawbone Innovations
`
`accuses of infringement nearly all versions of the Apple iPhone, AirPods, HomePod, Beats,
`
`MacBook, and iMac (the “Accused Products”). Ex. A (Infringement Contentions). In particular,
`
`
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`1
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`Jawbone Innovations alleges that the noise suppression and voice activity detection technologies
`
`(the “Accused Features”) implemented in these products infringe the Asserted Patents.
`
`B.
`
`Apple’s Relevant Witnesses and Documents are in California, Primarily
`NDCA
`
`Apple is a California corporation headquartered in Cupertino, California, which is in
`
`NDCA. Ex. B (Decl. of Rollins) ¶ 3. Apple’s management, primary research and development,
`
`and marketing facilities are located in or near Santa Clara County, California, including cities such
`
`as Cupertino and Sunnyvale, all of which are in NDCA. Id.
`
`The U.S. groups within Apple that are responsible for the research, design, and
`
`development of the Accused Features of the Accused Products are all located in California,
`
`primarily in NDCA. Id. ¶¶ 9-12. The Accused Features identified by Jawbone Innovations
`
`implicate work from
`
`
`
`. Id. None of the Apple employees who
`
`worked on the Accused Features is in WDTX. Id.
`
`With respect to
`
`
`
`, who manages and oversees the research, design, and development of the
`
`. Id. ¶ 9.
`
` is located in NDCA, as are all other
`
`members of his team who have worked on the Accused Features. Id. With respect to
`
`
`
`, who manages
`
`
`
`. Id. ¶ 10.
`
` is located in NDCA, and all other members of
`
`his team who have worked on the Accused Features are located in California. Id.
`
`
`
`and oversees the research, design, and development of
`
`, who manages
`
`
`
`
`
`2
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`. Id. ¶ 11.
`
` is
`
`located in NDCA. Id. All other U.S. members of his team who have worked on the Accused
`
`Features are located in California, primarily NDCA. Id.
`
`
`
`, who manages and oversees
`
`the research, design, and development of
`
`
`
`. Id. ¶ 12.
`
` is located in Culver City, California, and all
`
`other members of his team who have worked on the Accused Features are located in California.
`
`Id.
`
` and their teams make use of acoustic test chambers and
`
`specialized lab equipment located in NDCA. Id. ¶¶ 9-11.
`
`Thus, Apple’s likely engineering witnesses include
`
`
`
`, or members of their teams. These engineers work on various aspects of the
`
`Accused Features in the Accused Products, including
`
`
`
`. Id. ¶¶ 9-12. Neither they nor any of their team members are located
`
`in WDTX. Id.
`
`Nearly all Apple employees with the relevant marketing, licensing, and finance knowledge
`
`are located in NDCA. Id. ¶¶ 13-17.
`
`
`
`Accused Features and is located in NDCA. Id. ¶ 16.
`
`
`
` who is knowledgeable about Apple’s marketing of the
`
`at Apple who is knowledgeable about Apple’s
`
`intellectual property licensing practices relevant to this case and is located in NDCA. Id. ¶ 15.
`
`Mark Rollins is a Senior Finance Manager at Apple who is knowledgeable about financial
`
`information relating to the Accused Products and is located in NDCA. Id. ¶ 17. Apple is not
`
`aware of any employees with relevant marketing, licensing, or financial information that are
`
`
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`3
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`located in WDTX. Id. ¶¶ 13-17. Apple is also not aware of any other employees with relevant
`
`knowledge concerning the claims asserted against Apple that are located in WDTX. Id. ¶¶ 18-19.
`
`All of the records for the Accused Features are located in and accessible from NDCA or
`
`around NDCA. Id. ¶¶ 7-8. The design and development of the relevant functionalities, including
`
`the development and testing of source code, occurred primarily in NDCA. Id. The source code is
`
`controlled on a need-to-know basis and can be accessed by the relevant Apple employees in
`
`NDCA. Id. ¶ 8. The relevant financial, licensing, and marketing records are also located in or
`
`accessible in NDCA. Id. ¶ 13. Apple has not identified any relevant document that was generated
`
`or is stored in WDTX. Id. ¶¶ 7, 13.
`
`In short, Apple’s anticipated witnesses and documentation are primarily located in NDCA.
`
`No anticipated witnesses or documentation are located in WDTX.
`
`C.
`
`Relevant Third Parties Are Located Outside WDTX, Primarily in NDCA
`
`There are a number of potentially relevant third parties in this case. None is located in
`
`WDTX. For instance, none of the named inventors on the Asserted Patents currently resides in
`
`WDTX. In fact, most of them reside in NDCA. Nicolas Petit, a named inventor of the ’213, ’611,
`
`and ’543 Patents, is located in NDCA (Mountain View, California). Ex. C (Petit LinkedIn).
`
`Zhinian Jing, a named inventor on the ’213 and ’611 Patents, is located in NDCA (Moss Beach,
`
`California). Ex. D (Jing LinkedIn). Andrew Einaudi, named inventor of the ’543 Patent, is located
`
`in NDCA (San Francisco, California). Ex. E (Einaudi LinkedIn). Eric Breitfeller, a named
`
`inventor on the ’091 Patent, is located in NDCA (Dublin, California). Ex. F (Breitfeller Public
`
`Record) at 2. The remaining two named inventors, Gregory Burnett (a named inventor on each of
`
`the Asserted Patents) and Alexander Asseily (a named inventor on the ’543 Patent), are located in
`
`Minnesota and the United Kingdom, respectively. Ex. G (Burnett LinkedIn); Ex. H (Asseily
`
`
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`4
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`LinkedIn). These individuals are likely to have material information and documents relating to
`
`the alleged inventions of the Asserted Patents, and most of them are in NDCA.
`
`Jawbone, Inc., the company that developed the technology of the Asserted Patents,
`
`originally founded as AliphCom, Inc. (“AliphCom”), is a former California corporation
`
`headquartered in NDCA. Am. Compl. ¶ 19; Ex. I (AliphCom Corporate Filings). Former
`
`executives of Jawbone, Inc. still reside in NDCA, including the CEO and founder, Hosain Rahman,
`
`and the CTO, Michael Luna. Ex. J (Rahman LinkedIn); Ex. K (Luna LinkedIn). Mr. Rahman and
`
`Mr. Luna have knowledge relevant to this matter, including at least the Asserted Patents’
`
`prosecution and chain of title. For instance, Mr. Rahman executed a security agreement covering
`
`one or more of the Asserted Patents. Ex. L (Patent Security Agreement). And, Mr. Luna submitted
`
`an affidavit to the patent office regarding the abandonment of the ’357 Patent application, stating
`
`that he “was responsible for management of ALIPHCOM’s intellectual property portfolio.” Ex. M
`
`(Luna Affidavit) ¶ 4.
`
`Moreover, many of the prosecution attorneys for the Asserted Patents reside in NDCA.
`
`For example, Richard Gregory and Barbara Courtney, the prosecution attorneys for the Asserted
`
`Patents until 2011, reside in NDCA. Ex. N (Gregory LinkedIn); Ex. O (Courtney LinkedIn).
`
`AliphCom then replaced them with attorneys from the law firm of Kokka & Baccus, including
`
`Scott Kokka, Trueman Denny, and Howard Yuan. Ex. P (Power of Attorney Filings). Messrs.
`
`Kokka, Denny and Yuan all currently reside in NDCA. Ex. Q (Kokka LinkedIn); Ex. R (Denny
`
`LinkedIn); Ex. S (Yuan LinkedIn).
`
`The Amended Complaint also alleges that a third party named Envision IP contacted Apple
`
`regarding the value of the Asserted Patents. Am. Compl. ¶ 22. Envision IP has offices in New
`
`
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`5
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`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 10 of 21
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`York and North Carolina. Ex. T (Envision IP Website). Thus, Apple is not aware of any relevant
`
`third-party witnesses in Texas, and many of them reside in NDCA.
`
`D.
`
`Plaintiff Jawbone Innovations, LLC
`
`Jawbone Innovations was established on February 1, 2021, just a few months before it
`
`started filing lawsuits. Ex. U (Jawbone Innovations Corporate Filings). Its address in those filings
`
`is in NDTX. When Jawbone Innovations sued Samsung in the Eastern District of Texas (“EDTX”)
`
`in May 2021, it claimed to have a place of business in Marshall in EDTX. Jawbone Innovations,
`
`LLC v. Samsung Electronics Co. Ltd. et al., Case No. 2:21-cv-00186-JRG, D.I. 1 (Complaint) ¶ 1
`
`(May 27, 2021). The Amended Complaint here alleges another place of business located in Waco.
`
`Am. Compl. ¶ 1. Additionally, Jawbone Innovations’ corporate filing shows that its manager,
`
`York Eggleston, is located at 301 South Fremont Ave., Baltimore, Maryland. Ex. U.
`
`III. LEGAL STANDARD
`
`“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.” 28
`
`U.S.C. § 1404(a). Under section 1404(a), the moving party must first show that the claims “might
`
`have been brought” in the proposed transferee district. In re Volkswagen of Am., Inc., 545 F.3d
`
`304, 312-13 (5th Cir. 2008) (“Volkswagen II”).
`
`In evaluating convenience, the district court weighs both private and public interest factors.
`
`In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004). The private 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
`
`problems that make trial of a case easy, expeditious and inexpensive.” Id. 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
`
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`6
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`that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws of the
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`application of foreign law.” Id.
`
`The convenience of the witnesses is the most important factor in the transfer analysis. E.g.,
`
`In re Dish Network L.L.C., 2021 WL 4911981, at *2 (Fed. Cir. Oct. 21, 2021); In re: Apple Inc.,
`
`818 F. App’x 1001, 1003 (Fed. Cir. 2020) (“Apple I”). This convenience includes party witnesses
`
`as well as third-party witnesses. E.g., In re Pandora Media, LLC, 2021 WL 4772805, at *3-4 (Fed.
`
`Cir. Oct. 13, 2021). Moreover, where most witnesses and evidence in a case are in or closer to the
`
`transferee venue, and few or no convenience factors favoring the venue chosen by the plaintiff, the
`
`trial court should grant a motion to transfer. See, e.g., In re Apple Inc., 2021 WL 5291804, at *3-
`
`4 (Fed. Cir. Nov. 15, 2021) (“Apple II”); In re Apple Inc., 979 F.3d 1332, 1349-50 (Fed. Cir. 2020)
`
`(“Apple III”).
`
`IV. NDCA IS THE MORE CONVENIENT VENUE
`
`A.
`
`Venue Is Proper in NDCA Under Section 1404
`
`A case for patent infringement “may be brought in the judicial district where the defendant
`
`resides.” 35 U.S.C. § 1404(b). A corporate defendant “resides” only in its state of incorporation.
`
`TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017). Venue is proper
`
`in NDCA because Apple is a California corporation headquartered in Cupertino, California. Am.
`
`Compl. ¶ 2.
`
`B.
`
`The Private Interest Factors Favor Transfer
`
`1.
`
`Relative Ease of Access to Sources of Proof
`
`The location of sources of proof remains a “meaningful factor in the analysis,” despite
`
`technological advances that make the physical location of documents less significant. Volkswagen
`
`II, 545 F.3d at 316. “In patent infringement cases, the bulk of the relevant evidence usually comes
`
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`7
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`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 12 of 21
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`from the accused infringer,” making wherever the defendant’s documents are the more convenient
`
`venue. In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009).
`
`“In determining the ease of access to sources of proof, the Court will look to the location
`
`where the allegedly infringing products were researched, designed, developed and tested.” XY,
`
`LLC v. Trans Ova Genetics, LC, No. 16-cv-00447, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5,
`
`2017); In re Google LLC, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15, 2021) (courts should
`
`consider the “location of document custodians and location where documents are created and
`
`maintained, which may bear on the ease of retrieval”).
`
`Here, Apple’s research, design, and development of the Accused Features took place and
`
`continues to take place in California, primarily in NDCA. Ex. B ¶¶ 7-12. The Apple documents
`
`relating to the research, design, and development of the Accused Features were generated and are
`
`stored in California, primarily in NDCA. Id. ¶¶ 7-8. Apple’s relevant marketing, licensing, sales
`
`and financial documents and the custodians of those documents are also located in NDCA. Id. ¶
`
`13. That these documents are electronic does not make their location irrelevant. In re Juniper
`
`Networks, Inc., 14 F.4th 1313, 1321 (Fed. Cir. 2021) (“And while electronic storage of documents
`
`makes them more widely accessible than was true in the past, that does not make the sources-of-
`
`proof factor irrelevant.”). In addition, most of the relevant third parties, such as the inventors of
`
`the Asserted Patents, prosecuting attorneys, and Jawbone, Inc.’s former executives, are located in
`
`NDCA. Thus, any relevant documents in their possession will likely be stored in NDCA as well.
`
`As such, most of the sources of proof are in NDCA.
`
`Conversely, there are no unique, relevant sources of proof in WDTX. Any documents
`
`stored by Apple’s employees in WDTX are not relevant to the research, design and development
`
`of the Accused Features. Ex. B ¶¶ 7, 18-19. Nor are they uniquely relevant to the marketing,
`
`
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`8
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`licensing, sales and finances of the Accused Products. Id. ¶¶ 13, 18-19. Jawbone Innovations has
`
`no unique sources of proof in WDTX, as its principal place of business is in EDTX. See Section
`
`II.D, supra. Apple is also not aware of any third-party documents in WDTX that are material to
`
`this case. Given that there are numerous sources of proof in NDCA, and none in WDTX, this
`
`factor weighs strongly in favor of transfer. See Apple III, 979 F.3d at 1340 (holding the ease of
`
`access to proof favored transfer because all design and development documents of the accused
`
`products were in the transferee forum, and the “amount of relative information exist[ing] in [the
`
`transferor forum was] likely to be significantly outweighed”).
`
`Where, as here, the primary relevant evidence is located in NDCA, the ease of access to
`
`evidence factor weighs in favor of transfer. In In re Apple, the Federal Circuit weighed this factor
`
`in favor of transfer because Apple’s relevant documents were located in or around NDCA, Florida
`
`and Czech Republic, and Apple “was unaware of any relevant source code or documents being
`
`created or stored from its offices in Western Texas.” In re Apple Inc., 2022 WL 1196768, at *4
`
`(Fed. Cir. Apr. 22, 2022) (“Apple IV”). The Federal Circuit further noted that the “[t]he district
`
`court should have compared the ease of access in [WDTX] relative to the ease of access in
`
`[NDCA].” Id. Thus, “with nothing on the other side of the ledger in [WDTX], [NDCA] would
`
`still have a comparative advantage with regard to the ease of access to the sources of proof located
`
`within that district.” Id.; see also, e.g., Apple II, 2021 WL 5291804, at *1 (weighing sources of
`
`proof factor in favor of transfer where “essentially all of [Apple’s] source code and documentary
`
`evidence relevant to this action are maintained in [NDCA]”). This factor thus weighs in favor of
`
`transfer.
`
`2.
`
`Availability of Compulsory Process
`
`Transfer is favored when a transferee forum has absolute subpoena power over a greater
`
`number of third-party witnesses. Genentech, 566 F.3d at 1345 (“The fact that the transferee venue
`
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`9
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`is a venue with usable subpoena power here weighs in favor of transfer, and not only slightly.”).
`
`The ability to compel live trial testimony is crucial for evaluating a witness’s testimony. Aguilar-
`
`Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992). A court, however, may subpoena a witness to
`
`attend trial only (a) “within 100 miles of where the person resides, is employed, or regularly
`
`transacts business in person”; or (b) “within the state where the person resides, is employed, or
`
`regularly transacts business in person.” Fed. R. Civ. P. 45(c)(1)(A), (B)(i). Indeed, the Fifth
`
`Circuit has established that “[w]hen the distance between an existing venue for trial of a matter
`
`and a proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to
`
`witnesses increases in direct relationship to the additional distance to be traveled.” In re Apple,
`
`Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014) (“Apple V”).
`
`Most of the third-party witnesses are in NDCA, including most of the named inventors,
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`prosecution attorneys, and the former executives of Jawbone, Inc. See Section II.C, supra. These
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`witnesses will have relevant information about the (1) conception, reduction-to-practice, and
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`prosecution of the Asserted Patents – which is especially relevant here given that Jawbone
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`Innovations claims invention dates that precede the earliest filing dates, see Ex. A at 5-7; (2)
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`attempts to license, assert, or otherwise monetize the Asserted Patents; and (3) commercial
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`embodiments of the claims of the Asserted Patents. Apple is not aware of any third-party witness
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`within WDTX’s subpoena power. Therefore, this factor weighs strongly in favor of transfer. See,
`
`e.g., Apple II, 2021 WL 5291804, at *3 (“Because there are potential third-party witnesses subject
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`to the subpoena powers of [NDCA] but not [WDTX], we conclude that the compulsory process
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`factor weighs strongly in favor of transfer”); Apple IV, 581 F. App’x at 889 (weighing this factor
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`“heavily in favor of transfer when more third-party witnesses reside within the transferee venue
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`than reside in the transferor venue”).
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`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 15 of 21
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`3.
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`Attendance of Willing Witnesses
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`Convenience of the willing witnesses is “the single most important factor in the transfer
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`analysis.” Apple I, 818 F. App’x at 1003. The Federal Circuit has repeatedly recognized that a
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`district court may not disregard the convenience of employee witnesses. See, e.g., Apple II, 2021
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`WL 5291804, at *3; Apple I, 818 F. App’x at 1002. Most of Apple’s likely employee witnesses
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`are located in NDCA. See Section II.B, supra. These witnesses are a car ride from the courthouses
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`in NDCA, but more than 1,500 miles and a lengthy plane ride from Texas. Those relevant Apple
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`employees located outside NDCA are still located in California. Id. Travelling from Southern
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`California to NDCA is far more convenient than to Waco, Texas.1 The travel burden is significant
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`and has been cited as a key reason for transfer. See Volkswagen II, 545 F.3d at 317.
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`In situations like this, where most of the likely witnesses are in the transferee district, this
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`factor weighs in favor of transfer. See e.g., Apple II, 2021 WL 5291804, at *3 (“Because Apple
`
`identified several potential party and non-party witnesses residing in [NDCA], and no potential
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`witnesses appear to reside in [WDTX], the witness convenience factor weighs strongly in favor of
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`transfer.”); Volkswagen II, 545 F.3d at 317 (recognizing the “obvious conclusion” that “it is more
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`convenient for witnesses to testify at home”). And it is no less convenient for Mr. Eggleston,
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`Jawbone Innovations’ Baltimore, Maryland based manager, to attend trial in NDCA than it is for
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`him to attend trial in WDTX. Ex. U.
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`Even where a company has a presence in the transferor district, if that presence is not tied
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`to the particular case, this factor still favors transfer. See, e.g., Apple IV, 2022 WL 1196768, at *4
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`(“. . . a party’s general presence in a particular district does not alone give that district a special
`
`
`1 Many direct flights are available each day from Los Angeles to cities in which NDCA has
`courthouses. Ex. V (LAX-SFO). No flights are available from Los Angeles to Waco. Ex. W
`(LAX-Waco).
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`11
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`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 16 of 21
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`interest in the case.”) (internal quotations omitted); In re Adobe Inc., 823 Fed. App’x. 929, 923
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`(Fed. Cir. 2020) (although defendant had employees in Austin “that may have relevant information
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`. . . Northern California would still be more convenient”). Jawbone Innovations’ preemptive
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`attempt to resist transfer to California by referencing irrelevant Apple facilities and employees in
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`Austin should fail. See Am. Compl. ¶¶ 3-4. Although Apple does have facilities in Austin,2 the
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`relevant witnesses are in California, primarily NDCA. Ex. B ¶¶ 7-17; Apple II, 2021 WL 5291804,
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`at *1, 4 (directing transfer from WDTX to NDCA despite Apple’s Austin-based employees, as
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`“district courts should assess the relevance and materiality of the information the witness[es] may
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`provide” and Apple’s “Austin-based employees have no unique knowledge about the accused
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`products”). The same holds true for many relevant third parties.
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`4.
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`All Other Practical Problems
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`This factor is at least neutral. Jawbone Innovations asserted the Asserted Patents against
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`Google in WDTX, and asserted some of the Asserted Patents against Samsung and Amazon in
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`EDTX. The presence of another case in this district alone cannot justify retaining a case where
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`separate suits are not likely to result in inconsistent judgments. Apple II, 2021 WL 5291804, at *4
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`(“[W]e have rejected as a general proposition that the mere co-pendency of infringement suits in
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`a particular district automatically tips the balance in the non-movant’s favor.”). Since Jawbone
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`Innovations’ action against Google involves different products, it is “likely that these cases will
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`result in significantly different discovery, evidence, proceedings, and trial.” In re Samsung Elecs.
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`Co., Ltd., 2 F.4th 1371, 1379-80 (Fed. Cir. 2021); see also Apple IV, 2022 WL 1196768, at *4
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`(CPC’s co-pending suit in WDTX “involves a different defendant with different hardware and
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`different software and thus is likely to involve significantly different discovery and evidence.”).
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`2
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`
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` Ex. B ¶ 20.
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`Case 6:21-cv-00984-ADA Document 47 Filed 05/06/22 Page 17 of 21
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`Any concern about claim construction coordination and overlapping invalidity issues if this case
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`is to be transferred from WDTX to NDCA, if any, is undermined by the actions against Amazon
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`and Samsung in EDTX. See Samsung, 2 F.4th at 1380. This case is still in its early stages. “Thus,
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`the incremental gains in keeping [this case] in [WDTX] simply are not sufficient to justify
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`overriding the inconvenience to the parties and witnesses.” Id.; see also Apple IV, 2022 WL
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`1196768, at *4.
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`Additionally, Amazon and Google have moved to transfer the actions brought against them
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`to NDCA, and Samsung has expressed its intent to do the same. Jawbone Innovations, LLC v.
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`Amazon.com, Inc. et al., 2:21-cv-00435-JRG, Dkt. 25 (E.D. Tex. Mar. 10, 2022); id., Dkt. 25-2
`
`¶ 2; Jawbone Innovations, LLC v. Google LLC, 6:21-cv-00985, Dkt. 41 (W.D. Tex. Apr. 29, 2022).
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`Transferring this cas