IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`§
`
`§
`Case No. 6:21-cv-00984-ADA
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`
`JURY TRIAL DEMANDED
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`
`§
`§
`§
`§
`§
`§
`§
`
`
`Defendant.
`
`
`
`v.
`
`
`APPLE INC.,
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`
`
`
`
`
`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 1 of 21
`
`
`JAWBONE INNOVATIONS, LLC,
`
`
`Plaintiff,
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`
`
`PLAINTIFF JAWBONE INNOVATIONS, LLC’S
`RESPONSE IN OPPOSITION TO DEFENDANT APPLE INC.’S MOTION
`TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA (DKT. 38)
`
`
`
`
`

`

`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 2 of 21
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`TABLE OF CONTENTS
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`Page(s)
`
`I.
`
`II.
`
`III.
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`IV.
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`INTRODUCTION .............................................................................................................. 1
`
`BACKGROUND ................................................................................................................ 1
`
`A.
`
`B.
`
`C.
`
`Procedural Background ........................................................................................... 1
`
`Plaintiff Jawbone Innovations, LLC ....................................................................... 2
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`Defendant Apple Inc. Has Significant Connections to this District ....................... 3
`
`LEGAL STANDARDS ...................................................................................................... 4
`
`ARGUMENT ...................................................................................................................... 5
`
`D.
`
`The Private Interest Factors Do Not Favor Transfer .............................................. 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Relative Ease of Access to Sources of Proof Weighs Against
`Transfer ....................................................................................................... 5
`
`The Cost of Attendance for Willing Witnesses Weighs Against
`Transfer ....................................................................................................... 8
`
`The Availability of Compulsory Process to Secure the
`Attendance of Witnesses Weighs Against Transfer .................................. 11
`
`Judicial Economy Favors the WDTX ....................................................... 13
`
`E.
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`The Public Interest Factors Do Not Favor Transfer .............................................. 13
`
`1.
`
`2.
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`The Local Interests Weigh Against Transfer ............................................ 14
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`Administrative Difficulties Flowing from Court Congestion
`Weigh Against Transfer ............................................................................ 14
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`F.
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`The Totality of the Circumstances Fails to Show NDCA is Clearly More
`Convenient ............................................................................................................ 15
`
`V.
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`CONCLUSION ................................................................................................................. 15
`
`
`
`
`i
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Core Wireless Licensing, S.A.R.L. v. Apple Inc.,
`2013 WL 682849 (E.D. Tex. Feb. 22, 2013) .............................................................................4
`
`Defense Distrib. v. Bruck,
`30 F.4th 414 (5th Cir. 2022) ............................................................................................ passim
`
`Hammers v. Mayea-Chang,
`2019 WL 6728446 (E.D. Tex. Dec. 11, 2019) ...........................................................................7
`
`Hammond Dev. Int’l v. Google LLC,
`2020 WL 3452987 (W.D. Tex. June 24, 2020) .......................................................................13
`
`Japan Display Inc. v. Tianma Microelectronics Co.,
`2021 WL 3772425 (E.D. Tex. Aug. 25, 2021) ..........................................................................5
`
`Jawbone Innovations, LLC v. Amazon.com, Inc. and
`Amazon.com Servs., Inc., No. 2:21-cv-00435-JRG, Dkt. 1 (E.D. Tex. Nov. 29,
`2021) ..........................................................................................................................................1
`
`Jawbone Innovations, LLC v. Google LLC,
`No. 6:21-cv-00985-ADA, Dkt. 1 (W.D. Tex. Sept. 23, 2021) ..............................................1, 3
`
`Jawbone Innovations, LLC v. Samsung Elecs. Co.,
`No. 2:21-cv-00186-JRG, Dkt. 1 (E.D. Tex. May 27, 2021) ......................................................1
`
`Longhorn HD LLC v. Juniper Networks, Inc.,
`2021 WL 4243382 (E.D. Tex. Sept. 16, 2021) ....................................................................2, 15
`
`Monterey Research, LLC v. Broadcom Corp.,
`2022 WL 526242 (W.D. Tex. Feb. 21, 2022) ..........................................................................15
`
`In re NetScout Sys., Inc.,
`2021 WL 4771756 (Fed. Cir. Oct. 13, 2021) ...........................................................................13
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................5
`
`Rembrandt Wireless Techs., LP v. Apple Inc.,
`2019 WL 6344470 (E.D. Tex. Nov. 27, 2019) ........................................................................11
`
`Scramoge Tech. Ltd. v. Apple Inc.,
`No. 6:21-cv-00579-ADA, Dkt. 82 (W.D. Tex. May 25, 2022) ...............................................10
`
`ii
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 4 of 21
`
`In re Volkswagen AG,
`371 F.3d 201 (Fed. Cir. 2004)....................................................................................................5
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .....................................................................................................4
`
`In re Volkswagen of Am., Inc.,
`566 F.3d 1349 (Fed. Cir. 2009)................................................................................................13
`
`Statutes
`
`28 U.S.C. § 1404(a) .........................................................................................................................4
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c)(1)(B) ............................................................................................................12
`
`
`
`iii
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 5 of 21
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`I.
`
`INTRODUCTION
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`Plaintiff Jawbone Innovations, LLC (“Jawbone” or “Plaintiff”) is a Texas company with
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`offices in Waco and Marshall. Jawbone receives audio products at those offices and distributes
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`them to customers in the United States. Defendant Apple Inc. (“Apple” or “Defendant”) maintains
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`a substantial presence in this District, including maintaining a 133-acre campus and over 6,200
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`employees; Apple’s investments and activities in this District are “expected to make Apple the
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`largest private employer in Austin.” Indeed, Austin employs Apple’s second largest population of
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`employees, with large numbers of employees working in engineering, R&D, operations, finance,
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`sales, and customer support. Jawbone’s witnesses, including the principal inventor on all of the
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`Asserted Patents, are located closer to this District and would find it more convenient to testify in
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`this Court, and several of the third-party witnesses identified by Apple have submitted that they
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`are willing to travel to this District for trial or are outside the Northern District of California.
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`Accordingly, Apple has failed to meet its burden to demonstrate that transferring this action
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`to the Northern District of California (“NDCA”) is “clearly more convenient” for all parties and
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`witnesses, and its Motion should be denied.
`
`II.
`
`BACKGROUND
`
`A.
`
`Procedural Background
`
`Jawbone filed its Complaint in this action on September 23, 2021. See Dkt. 1. Jawbone
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`also filed three other cases in this District and in the Eastern District of Texas involving the Patents-
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`in-Suit. See Jawbone Innovations, LLC v. Samsung Elecs. Co., No. 2:21-cv-00186-JRG, Dkt. 1
`
`(E.D. Tex. May 27, 2021) (“Samsung Case”); Jawbone Innovations, LLC v. Amazon.com, Inc. and
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`Amazon.com Servs., Inc., No. 2:21-cv-00435-JRG, Dkt. 1 (E.D. Tex. Nov. 29, 2021) (“Amazon
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`Case”); and Jawbone Innovations, LLC v. Google LLC, No. 6:21-cv-00985-ADA, Dkt. 1 (W.D.
`
`Tex. Sept. 23, 2021) (“Google Case”). Jawbone filed an Amended Complaint on December 23,
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`
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 6 of 21
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`2021. See Dkt. 19. Apple filed this Motion to transfer on May 2, 2022. See Dkt. 38.
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`B.
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`Plaintiff Jawbone Innovations, LLC1
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`Jawbone is the sole and exclusive owner of all right, title, and interest to the Patents-in-
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`Suit.2 Dkt. 19, ¶ 18; Ex. 1, Eggleston Decl., ¶ 5. Jawbone is a limited liability company, organized
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`and existing under the laws of the State of Texas, with a place of business at 2226 Washington
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`Avenue, Suite 1, Waco, Texas 76701. Dkt. 19, ¶ 1.
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`Ex. 1, ¶ 8.
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`
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`Jawbone’s witnesses are located much closer to this District than to the NDCA and would
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` Id., ¶ 9.
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`prefer to testify in this Court.
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`
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` Waco is more convenient for each of these individuals. Ex. 2,
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`¶ 3; Ex. 3, ¶ 8; Ex. 4, ¶ 7; Ex. 5, ¶ 5.
`
`Gregory Burnett, a named inventor on all of the Asserted Patents, has highly relevant
`
`
`1 Defendant alleges Jawbone’s connections to this District are “”a construct for litigation” but fails to set forth any
`evidence to support its claim. Mot. at 14; see Longhorn HD LLC v. Juniper Networks, Inc., 2021 WL 4243382, at *3
`(E.D. Tex. Sept. 16, 2021). Defendant cannot dispute that Jawbone is a Texas entity that conducts bona fide business
`activities from its Waco office. Ex. 1, ¶¶ 3, 7, 9; Ex. 3, ¶¶ 4-8.
`2 U.S. Patent Nos. 8,019,091 (the “’091 Patent”); 7,246,058 (the “’058 Patent”); 8,280,072 (the “’072 Patent”);
`8,321,213 (“the “’213 Patent”); 8,326,611 (the “611 Patent”); 10,779,080 (the “’080 Patent”); 11,122,357 (the “’357
`Patent”); 8,467,543 (the “’543 Patent”); and 8,503,691 (the “’691 Patent”) (collectively, the “Asserted Patents”).
`
`2
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 7 of 21
`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 7 of 21
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`knowledge regarding the Asserted Patents, including the conception and reduction to practice of
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`the technology.
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`Michael Luna,
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`former Chief Technology Officer of Aliphcom, d/b/a Jawbone
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`(“Aliphcom’’) from December 2007 until June 2017,
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`. Id., § 11. Scott Kokka, the prosecution attorney on the Asserted Patents
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`Ex. 8, Kokka Decl., 49.
`
`Cc.
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`Defendant Apple Inc. Has Significant Connectionsto this District
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`Defendant Apple has had a substantial presence in this District for more than 25 years. Ex.
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`9. Apple’s operations in Austin are its second largest operations in the country, recently investing
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`$1 billion in a 3-million-square-foot campus which will house over 15,000 employees. Ex. 10.
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`Apple’s ownpublic disclosures demonstrate that Apple is manufacturing and distributing its Mac
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`Ww
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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 8 of 21
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`Pro from its Austin facility. Ex. 11. Apple has also touted its plans to expand its operations across
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`the country with approximately $10 billion in U.S. data centers and over 2 million jobs across the
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`country. Ex. 12. Apple also filed disclosures with the Texas Department of Licensing and
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`Regulation for three additional structures on its Northwest Austin campus, totaling nearly $279
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`million in investment. Ex. 13. Apple concedes that it already maintains over 6,200 employees in
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`Austin, including engineering, R&D, operations, finance, sales, and customer support. Ex. 12.
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`III. LEGAL STANDARDS
`
`“When a defendant is haled into court, some inconvenience is expected and acceptable.”
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`Defense Distrib. v. Bruck, 30 F.4th 414, 433 (5th Cir. 2022). Thus, as the Fifth Circuit has recently
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`reiterated, a motion to transfer venue pursuant to 28 U.S.C. § 1404(a) should be denied unless the
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`movant “adduce[s] evidence and arguments that clearly establish good cause for transfer based on
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`convenience and justice.” Id. The party seeking transfer must demonstrate good cause for the
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`transfer, i.e., that the transferee venue is clearly more convenient for both the parties and the
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`witnesses. Id.; see also In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008)
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`(“Volkswagen II”). This “‘places a significant burden on [Defendants] to show good cause for
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`transfer:’ a burden that this Court does not take lightly.” Core Wireless Licensing, S.A.R.L. v. Apple
`
`Inc., 2013 WL 682849, at *2 (E.D. Tex. Feb. 22, 2013). Indeed, “the standard is not met by
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`showing one forum is more likely than not to be more convenient.” Defense Distrib., 30 F.4th at
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`433. Instead, for a factor to weigh in favor of transfer, the movant must “clearly demonstrate[]”
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`that transfer is appropriate. Id. at 434. To do so, the movant must show, with specificity, how the
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`trial in the case would be clearly more convenient if the case were transferred. See id. at 436 (citing
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`Hammers v. Mayea-Chang, 2019 WL 6728446, at *7 (E.D. Tex. Dec. 11, 2019)) (holding that for
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`the availability of sources of proof to weigh in favor of transfer, the movant must show how the
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`particular source of proof would be used at trial). “Where there is no demonstration by the movant,
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`4
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 9 of 21
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`let alone a clear one, the court cannot weigh a factor against the non-movant and in favor of
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`transfer.” Id. at 434.
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`If the suit could have been brought in the proposed district, the Court should then consider
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`the Fifth Circuit’s private and public interest factors. In re Volkswagen AG, 371 F.3d 201, 203 (5th
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`Cir. 2004) (“Volkswagen I”). The private interest factors are: (1) relative ease of access to sources
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`of proof; (2) availability of compulsory process to secure the attendance of witnesses; (3) cost of
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`attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy,
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`expeditious, and inexpensive. Id.; In re Nintendo Co., 589 F.3d 1194, 1198 (Fed. Cir. 2009). The
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`public interest factors are: (1) administrative difficulties flowing from court congestion; (2) local
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`interest in having localized interests decided at home; (3) familiarity of the forum with the law that
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`will govern the case; and (4) avoidance of unnecessary problems of conflict laws or in the
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`application of foreign law. Volkswagen I, 371 F.3d at 203. “[R]espect for the plaintiff’s choice of
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`forum is encompassed in the movant’s elevated burden to ‘clearly demonstrate’ that the proposed
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`transferee forum is ‘clearly more convenient’ than the forum in which the case was filed.” Japan
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`Display Inc. v. Tianma Microelectronics Co., 2021 WL 3772425, at *2 (E.D. Tex. Aug. 25, 2021)
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`(citing Volkswagen II, 545 F.3d at 314-15)).
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`IV. ARGUMENT
`
`D.
`
`The Private Interest Factors Do Not Favor Transfer
`The Relative Ease of Access to Sources of Proof Weighs Against
`1.
`Transfer
`This factor assesses the relative ease of access to sources of proof, including documentary
`
`and other physical evidence. See id. at 315. As the Fifth Circuit has recently reiterated, a movant
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`must specifically identify and locate sources of proof and explain their relevance. Defense Distrib.,
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`30 F.4th at 434. Apple has failed to meet its burden here.
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`Apple fails to address the location of Jawbone’s sources of proof; instead, it submitted a
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`5
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 10 of 21
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`single sentence stating, “Jawbone Innovations has no unique sources of proof in WDTX, as its
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`principal place of business is in EDTX.” To the contrary, Jawbone’s sources of proof are located
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`in its Waco office in this District. Ex. 1, ¶ 9. These sources of proof include
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`
`
` See id., ¶¶ 8-9. Apple
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`argues that Jawbone’s Marshall Texas office shows that there are no “unique sources of proof in
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`WDTX.” Mot. at 8-9. However, this factor does not require sources of proof be “unique” to the
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`transferee district to be appropriately assessed. Rather, to show that this factor weighs in favor of
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`transfer, Apple must show that there are sources of proof uniquely available in the transferee
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`district such that transfer would make trial clearly more convenient. Defense Distrib., 30 F.4th at
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`434. Further, the Waco office
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`. See Ex. 3, ¶ 5. Indeed,
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`Jawbone has no offices or facilities of any kind in NDCA. Ex. 1, ¶ 13. These activities and
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`documents tilt this factor against transfer. Defense Distrib., 30 F.4th at 434 & n.25 (holding
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`plaintiff’s activities and documents in Texas weighed against transfer).
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`Moreover, Apple has failed to show that it has any sources of proof for use at trial in
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`NDCA. During venue discovery, Jawbone requested that Apple identify where its relevant
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`documents were stored. Apple responded that
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` Ex. 14 at 16 (emphasis added). But the locations of Apple’s servers show
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` Id. at 17. Similarly, other key documents such as
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` of the Accused Products are located in
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`6
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 11 of 21
`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 11 of 21
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`SS6:
`EE
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`Moreover, Apple makesno effort to show that it will use any specific source of proof in NDCAat
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`trial. Motion at 7-9. Apple cannot meet its burden without such a showing. Defense Distrib., 30
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`F.4® at 434.Indeed, in Defense Distrib., the Fifth Circuit cited with approval Hammers, 2019 WL
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`6728446, at *7, which explained that “[s]ince the inquiry is only focused on evidence that will be
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`used at trial, a movant fails to meet its burden if it does not explain howaparticular source of
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`proofwill be usedattrial.”
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`Apple also relies on the alleged sources of proof of third parties, including the inventors,
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`prosecution attorneys, and “Jawbone, Inc.’s former executives,” but Apple fails to specifically
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`identify any documents or other sources of proof from these alleged witnesses within NDCA.
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`Motionat 8. Instead, it merely asserts sources of proof “will likely be stored in NDCA,”without
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`identifying the sources or how theyare specifically relevant to trial. Jd. Such speculation does not
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`meet Apple’s burden. Defense Distrib., 30 F.4th at 434. Further, Mr. Gregory, a prosecution
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`attorney of the Asserted Patents,
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`is located in Texas, not NDCA. See infra Section IV.A.3.
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`Ms. Courtney, another prosecution attorney, is located in Colorado. Ex. 30. Nicolas Petit, an
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`inventoron the Patents-in-Suit, is not located in NDCAasalleged by Apple. See Ex. 6, § 12.
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`This is consistent with. for example. the testimony of Apple’s witnesses. For example.
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`testified that
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`. 39:9-40:6, Aug. 19, 2022.
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`whichis necessary
`the Accused Products. /d. at 41:8-18.
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`. 31:22-24; 32:6-20, Aug. 25, 2022.
`. Id. at 37:5-7.
`for tracking the volumesor longevity of a
`also testified that
`
`also testified that
`also has access to an
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`giv
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 12 of 21
`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 12 of 21
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`Because Jawbone’s documents are located in this District, and Apple has failed to meet its
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`burdenof specifically identifying sourcesof prooffortrial, this factor weighs against transfer.°
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`Ze
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`The Cost of Attendance for Willing Witnesses Weighs Against
`Transfer
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`Jawbone has located several Apple employees who appearto have relevant information
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`whoresidein this District.’ Apple doesnotdispute that these individuals are located in this District.
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`Id. at 7-11. For example, Apple submits thatPoPo al
`>)
`
`| P
`
`| Id. at 10.° a. Accounting ManagerIII,a}
`I ©. 15 at 13:15-22. BB testified that
`Po all located near Austin. Jd. at 13:23-14:5.f also testified
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`a 3
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`4:5-8; 43:7-10.° The Beats Electronics products are Accused Products and testimony
`is relevant to many issues, includingee. See Dkt. 39-1.a
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`also works from this District in sustaining product operations for the Accused Products. Ex. 16,
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`® Defense Distrib., 30 F4th at 434 (“Weighing the first factoras ‘neutral’ in the face of the NJAG’slack of proof and
`Plaintiffs’ proffer abused both logic and the court’s discretion.’’).
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`7 These individuals include: Ex. 14 at 7.
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`le also concedes
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`District.
`s
`Further,
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`also testified that
`stated that
`Id. at 35:8-16.
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`are located and work fromthis
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`. Id. at 36:15-19.
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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 13 of 21
`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 13 of 21
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`Td. at 17:12-16.F| also testified thatee
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`ae. at 48:5-15: 42:23-43:4. TE0x is relevant to numerousissues,|
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`10 Additionally, it is highly likely that co-workers of the above-listed
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`employees working with relevant technology are also located in this District. Accordingly, this
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`District is more convenient for these witnesses.
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`Apple argues this factor favors transfer because it has identified Apple’s fact witnesses
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`located in California, who would needto travel to attend trial in this District. Mot. at 11. Apple
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`concedesnotall of its relevant witnesses are located in the NDCA.!! While Apple identifies
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`numerous Apple technical witnesses located in California, it makes no effort to show whether any
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`of these witnesses wouldtestify at trial and, if so, what each witness wouldtestify about. Jd. at 2-
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`3. Without such a showing, this factor cannot weigh in favorof transfer. Defense Distr., 30 F.4th
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`434 (confirming the Fifth Circuit test requires specific evidence showing how relevant proofs will
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`be used at trial). Moreover, it is beyond credibility that Apple would bring all seven witnesses
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`identified to a trial.
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`Similay, Apple idenitesI[a
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`Ex. 17 at 9:7-18; 11:4-5; 54:7-13.
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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 14 of 21
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` Mot. at 3. With respect to Mark Rollins, this Court has
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`held Mr. Rollins has “frequently and repeatedly submitted unreliable and misleading declarations
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`to this Court.”12 Mr. Rollins submits the same conclusory statements outside of the scope of
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`financial topics here. Dkt. 38-1.
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`This District is most convenient for Jawbone and its witnesses. As discussed above, each
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`of Jawbone’s witnesses finds Waco more convenient than NDCA.13 Gregory Burnett, an inventor
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`on all of the Asserted Patents, has highly relevant knowledge regarding conception and reduction
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`to practice of the patented technology
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` Ex. 6, ¶¶ 3, 10. Michael Luna
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`3, 5, 7-10. Apple has emphasized the importance of Mr. Luna’s testimony, where he
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`Ex. 7, ¶¶ 1,
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` Mot. at 5.
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`Lastly, Mr. Kokka, a prosecuting attorney on the Patents-in-Suit, has indicated
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`
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`. Ex. 8, ¶ 9. Apple has stated the importance of Mr. Kokka of the firm Kokka &
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`Baccus, PC. Mot. at 5.
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` Ex. 8, ¶ 4.
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`
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`12 Scramoge Tech. Ltd. v. Apple Inc., No. 6:21-cv-00579-ADA, Dkt. 82 at 5-6 (W.D. Tex. May 25, 2022) (“Based on
`the volume of his declarations, he also works as Apple’s professionally paid venue witness, preparing two or three
`venue declarations per month. Adequate preparation for all these declarations requires him to have spent weeks or
`months reviewing patent complaints, asserted patents, and infringement contentions so he could search for and review
`the relevant corporate documents covering technologies from Bluetooth to biometric security to OLED displays, and
`then identify and speak with engineers across products from the iPhone 4-12 to MacBooks to Apple Watches to
`AirPods.”); id. at 6 (“Based on this statement, the Court finds that he lacks personal knowledge of Apple’s operations
`and product development before 2019 and that he lacks personal knowledge of Apple’s operations outside of financial
`topics.”).
`13 Apple’s unfounded allegation that “it is no less convenient for Mr. Eggleston . . . to attend trial in NDCA than it is
`for him to attend trial in WDTX” is contradicted by Mr. Eggleston’s Declaration. See Ex. 1.
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`10
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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 15 of 21
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` Id., ¶ 7. Accordingly, this factor weighs against transfer.14
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`3.
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`The Availability of Compulsory Process to Secure the Attendance of
`Witnesses Weighs Against Transfer
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`Apple identifies the named inventors, prosecution attorneys, and the former Aliphcom
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`d/b/a Jawbone executes under this factor. However, as shown, this factor weighs against transfer.
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`As discussed above, Dr. Burnett, the principal inventor on every patent, would prefer to
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`travel to this District. Mr. Kokka, the principal prosecutor on every patent, is also willing to travel
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`to this District. Mr. Luna has also submitted he is willing to travel to this District. The remaining
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`identified witnesses are of dubious relevance and, in several cases, not even in the NDCA.
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`First, Apple relies on the named inventors of the Asserted Patents. Mot. at 4-5, 10. As
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`discussed above, Dr. Burnett, a named inventor on every patent,
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`, far
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`closer to Texas than California, and would prefer to testify in Waco. See supra Section IV.A.2. As
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`to the other inventors, both Mr. Asseily and Mr. Petit15 are located in Europe, beyond the subpoena
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`power of the NDCA. Mot. at 4 (stating Mr. Asseily is in England); Ex. 6, ¶ 12. The remaining
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`three inventors, Messrs. Breitfeller, Jing, and Einaudi, are only listed as inventors on four of the
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`Asserted Patents. Apple does not identify any information these inventors have that their co-
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`inventors, Dr. Burnett, Mr. Asseily, and Mr. Breitfeller, do not have and which would be presented
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`at trial. See Mot. at 4-5, 10. Further, Apple has not demonstrated these witnesses are unwilling.
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`
`14 See Rembrandt Wireless Techs., LP v. Apple Inc., 2019 WL 6344470, at *3 (E.D. Tex. Nov. 27, 2019) (“[T]he Court
`finds that transfer to the Central District of California for the convenience of Apple and its potential witnesses would
`work a commensurate inconvenience on Rembrandt and its potential witnesses. Accordingly, the Court finds that this
`factor weighs against transfer.”).
`15 Contrary to Apple’s allegations, Mr. Petit is not located in Mountain View, CA. See Ex. 6, ¶ 12.
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`11
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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 16 of 21
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`Second, Apple relies on patent prosecutors, Richard Gregory, Barbara Courtney, and
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`attorneys from Kokka & Baccus, PC. Mot. at 3, 15. But Mr. Gregory, who signed the initial
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`applications leading to the ’091 Patent, ’058 Patent, ’072 Patent, ’543 Patent, ’611 Patent, ’213
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`Patent, and’691 Patent,16 resides in Houston, Texas. Indeed, Samsung Electronics. Co., Ltd. and
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`Samsung Electronics. America., Inc., defendants in a co-pending case, have taken the deposition
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`of Mr. Gregory who confirmed his residence and office are located in Houston. Ex. 25 at 6:24-7:5.
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`As a Texas resident, Mr. Gregory is within the subpoena power of this Court. See Fed. R. Civ. P.
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`45(c)(1)(B).17 The remaining patents were prosecuted by the firm Nutter McClennen & Fish LLP,
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`which is located in Boston, Massachusetts. See Exs. 26-27. Another attorney, Scott Kokka,
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`
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`, which is not within the NDCA. Ex. 8, ¶ 9. Nonetheless, Mr. Kokka
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`has indicated his willingness to travel to this District for trial. Id. With respect to the remaining
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`attorneys, Apple does not identify any specific knowledge these individuals have that Mr. Gregory
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`or Mr. Kokka do not possess. Moreover, Apple does not identify any specific information any of
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`the prosecution attorneys have other than they were involved in prosecuting the Asserted Patents.
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`Mot. at 5. Without an identification of what the witnesses would be used for at trial, this factor
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`cannot weigh in favor of transfer. Defense Distrib., 30 F.4th at 434.
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`Apple also identifies Hosain Rahman as a potential witness. Mot. at 5, 10. Defendant
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`alleges Mr. Rahman
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`Id. at 5. However, Michael Luna, former Chief Technology Officer of Aliphcom, was
`
`
`
`
`
`
`
`. Ex. 7, ¶ 5. Defendant cannot identify any specific
`
`information Mr. Rahman possesses that is not also known by Mr. Luna. Mot. at 5. Indeed,
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`16 See Exs. 18-24.
`17 Mr. Gregory also confirmed his firm no longer maintains an office in Silicon Valley, CA. See Ex. 25 at 16:6-12.
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`
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`12
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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 17 of 21
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`Mr. Luna possesses relevant knowledge of
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`
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`including the affidavit regarding the ’357 Patent. Ex. 7, ¶ 7.
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`Third, Apple submits Envision IP as a relevant third party. However, Apple concedes
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`Envision IP has offices in New York and North Carolina, and therefore is in neither District. Apple
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`does not identify the specific information or knowledge these third parties possess or why these
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`parties are necessary for trial. As Apple has not demonstrated these witnesses are necessary for
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`trial or non-cumulative of other, willing witnesses, this factor weighs against transfer.
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`4.
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`Judicial Economy Favors the WDTX
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`Apple concedes this factor is neutral and notes there is a co-pending case in this District
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`against Google involving the same Patents-in-Suit on the same schedule. Mot. at 12. While Apple
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`alleges that co-pending cases alone cannot justify retaining a case, “[j]udicial economy is served
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`by having the same district court try the cases involving the same patents.” In re Volkswagen of
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`Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009). While co-pending cases may not “automatically
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`tip[] the balance in the non-movant’s favor,” In re NetScout Sys., Inc., 2021 WL 4771756, at *5
`
`(Fed. Cir. Oct. 13, 2021), “[j]udicial economy is served by having the same district court try the
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`cases involving the same patents.” Hammond Dev. Int’l v. Google LLC, 2020 WL 3452987, at *4
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`(W.D. Tex. June 24, 2020) (finding this factor weighed against transfer when multiple cases on
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`the same patents were pending in the same court). While Google, Amazon, and Samsung have also
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`moved to transfer, Google and Amazon’s motions are still pending and Samsung’s motion in the
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`EDTX has been denied. Mot. at 13. Further, since the filing of Apple’s Motion, claim construction
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`briefing has been completed and discovery has opened. See Dkt. 23. Accordingly, judicial
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`economy favors maintaining this case in this District, and this factor weighs against transfer.
`
`E.
`
`The Public Interest Factors Do Not Favor Transfer
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`13
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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 18 of 21
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`1.
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`The Local Interests Weigh Against Transfer
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`Apple alleges there is a local interest in this issue being resolved in the NDCA. However,
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`the local interest in having localized interests decided at home weighs against transfer because
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`Jawbone is a Texas entity that maintains an office in this District and receives and distributes
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`products from this District. Ex. 1, ¶¶ 3, 8; Ex. 3, ¶¶ 4, 7-8. While Apple alleges its “general
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`presence in WDTX does not create a local interest in WDTX,” it cannot dispute it employs
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`approximately 6,200 employees in Austin. Ex. 12. Further, Apple also filed new disclosures with
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`the Texas Department of Licensing and Regulation for three additional structures on its Northwest
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`Austin campus, totaling nearly $279 million in investment. Ex. 13. Apple concedes it already
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`maintains over 6,200 employees in Austin, including engineering, R&D, operations, finance, sales,
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`and customer support. Ex. 12. These employees perform work related to design and manufacture
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`of the Accused Products. See supra Section IV.A.2.
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`While Apple attempts to minimize Jawbone’s connections to this District, Jawbone
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`maintains its office in Waco
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`maintains a corporate residence
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`. Jawbone also
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`. Ex.
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`3, ¶ 3. Apple’s conclusory allegations that Jawbone’s connections to this District are “a construct
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`for litigation [that] exist for no other purpose than to manipulate venue” are unsupported, where
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`Jawbone’s witnesses
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`
`
` See supra Section IV.A.1.
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`2.
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`Administrative Difficulties Flowing from Court Congestion Weigh
`Against Transfer
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`Apple concedes this factor is neutral. However, the most recent Judicial Caseload Profiles
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`for United States District Courts show the median time from filing to trial is nearly six months
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`faster in this District (28.3 months) than the NDCA (34.7 months). See Ex. 28. Apple’s
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`14
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`

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`Case 6:21-cv-00984-ADA Document 92 Filed 09/14/22 Page 19 of 21
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`unsupported allegation that the time to trial does not “materially affect” the analysis because
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`Jawbone does not “make or sell any product that practices the claimed invention” is without merit.
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`This Court has stated “rapid disposition of this case is important given the Federal Circuit’s
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`longstanding sentiment that ‘[r]ecog