Case 6:21-cv-01296-ADA-DTG Document 27 Filed 04/12/22 Page 1 of 20
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`Civil Action No.: 6:21-cv-1296-ADA
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`JURY TRIAL DEMANDED
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`
`
`
`
`IOENGINE, LLC,
`
` Plaintiff,
`v.
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`ROKU, INC.,
`
` Defendant.
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`
`
`
`
`
`
`
`
`
`
`
`
`DEFENDANT’S OPPOSED MOTION TO TRANSFER VENUE
`TO THE NORTHERN DISTRICT OF CALIFORNIA UNDER 28 U.S.C. § 1404(a)
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`{ROKUIN/00009/00604617}
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`Case 6:21-cv-01296-ADA-DTG Document 27 Filed 04/12/22 Page 2 of 20
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`III.
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`IV.
`
`INTRODUCTION .............................................................................................................. 1
`
`FACTUAL BACKGROUND ............................................................................................. 2
`
`LEGAL STANDARD ......................................................................................................... 4
`
`THE NORTHERN DISTRICT OF CALIFORNIA IS A CLEARLY MORE
`CONVENIENT VENUE FOR THE CURRENT DISPUTE.............................................. 5
`
`A.
`
`B.
`
`This Action Could Have Been Brought in the Northern District
` of California. .......................................................................................................... 5
`
`The Private Interest Factors Weigh Heavily in Favor of Transfer to
`the Northern District of California. ......................................................................... 6
`
`1.
`
`2.
`
`3.
`
`4.
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`The Convenience of Willing Witnesses Strongly Favors Transfer ............ 6
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`The Relative Ease of Access to Sources of Proof Favors Transfer ............ 9
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`The Availability of Compulsory Process Favors Transfer or is Neutral. . 10
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`There Are No Practical Problems Weighing Against Transfer ................ 10
`
`C.
`
`The Public Interest Factors Favor Transfer to the Northern District
`of California. ......................................................................................................... 11
`
`1.
`
`2.
`
`3.
`
`The Local Interest Factor Weighs Heavily In Favor of Transfer. ............. 11
`
`Court Congestion is Neutral...................................................................... 13
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`The Remaining Public Interest Factors Are Neutral ................................. 14
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`CONCLUSION ................................................................................................................. 14
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`V.
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`i
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`Case 6:21-cv-01296-ADA-DTG Document 27 Filed 04/12/22 Page 3 of 20
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`TABLE OF AUTHORITIES
`
`
`
`
`
`Cases
`
`Page(s)
`
`10Tales, Inc. v. Tiktok Inc.,
`2021 U.S. Dist. LEXIS 96694 (W.D. Tex. May 21, 2021)............................................6, 10, 14
`
`In re Acer Am. Corp.,
`626 F.3d 1252, 1256 (Fed. Cir. 2010)......................................................................................12
`
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) ..........................................................................................13
`
`Airbus S.A.S. v. Aviation Partners, Inc.,
`No. 11-1030, 2012 U.S. Dist. LEXIS 91463 (W.D. Tex. June 29, 2012) .................................4
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)........................................................................................ passim
`
`In re Cray Inc.,
`871 F.3d 1355 (Fed. Cir. 2017)..................................................................................................5
`
`DataQuill Ltd. v. Apple Inc.,
`No. 13-706, 2014 U.S. Dist. LEXIS 82410 (W.D. Tex. June 13, 2014) .......................4, 13, 14
`
`Decapolis Sys., LLC v. eClinicalWorks, LLC,
`No. 6:21-cv-00502, Dkt. No. 30 (W.D. Tex. Mar. 1, 2022) ........................................1, 8, 9, 11
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)........................................................................................ passim
`
`In re Google LLC,
`2021 U.S. App. LEXIS 29137 (Fed. Cir. Sep. 27, 2021) ..........................................................8
`
`In re Google LLC,
`2021 U.S. App. LEXIS 33789 (Fed. Cir. Nov. 15, 2021) ..........................................................9
`
`In re Google,
`2021 WL 4427899 ...................................................................................................................12
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................12
`
`In re Hulu, LLC,
`2021 U.S. App. LEXIS 22723 (Fed. Cir. Aug. 2, 2021) ........................................................6, 8
`
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`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ..................................................................................................8
`
`Koss Corp. v. Plantronics, Inc.,
`No. 6:20-cv-00663, 2021 U.S. Dist. LEXIS 97597 (W.D. Tex. May 20, 2021) .....................14
`
`Media Chain, LLC v. Roku, Inc.,
`No. 1:21-cv-27, 2021 U.S. Dist. LEXIS 243562 (W.D. Tex. Dec. 7, 2021) ................... passim
`
`In re Nitro Fluids L.L.C.,
`978 F.3d 1308 (Fed. Cir. 2020)................................................................................................13
`
`Piper Aircraft Co. v. Reyno,
`454 U.S. 235, 241 n.6 (1981) .....................................................................................................5
`
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ............................................................................................12, 13
`
`Super Interconnect Techs. v. Google LLC,
`2021 U.S. Dist. LEXIS 242299 (W.D. Tex. Nov. 5, 2021) .....................................................13
`
`Triller, Inc. v. Bytedance, Ltd.,
`No. 6-20-cv-00693, 2021 U.S. Dist. LEXIS 168441 (W.D. Tex. July 9, 2021)......................14
`
`In re TS Tech USA,
`551 F.3d at 1321 ................................................................................................................13, 14
`
`Uniloc USA Inc. v. Box, Inc.,
`No. 17-754, 2018 U.S. Dist. LEXIS 94966 (W.D. Tex. June 6, 2018) .....................................5
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .................................................................................................4, 5
`
`In re Volkswagen of America, Inc.,
`545 F.3d 304 (5th Cir. 2008) (en banc) .....................................................................4, 5, 13, 14
`
`Rules
`
`Fed. R. Civ. P. 45(c)(1) ..................................................................................................................10
`
`Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................5
`
`28 U.S.C. § 1404(a) .................................................................................................................1, 2, 4
`
`
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`I.
`
`INTRODUCTION
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`Defendant Roku, Inc. (“Roku”) moves under 28 U.S.C. § 1404(a) to transfer this action
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`to the Northern District of California (“NDCA”), as NDCA is the most convenient and
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`appropriate venue for this dispute.
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`Roku’s personnel, facilities, and infrastructure involved in the engineering, design,
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`development, marketing, and financial aspects for the accused Roku streaming players are based
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`in NDCA: the home of Roku’s headquarters and its principal place of business. Roku’s token
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`connection to the Western District of Texas (“WDTX”) is its Austin office, which is of no
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`relevance to this case. In fact, Roku is not aware of a single piece of evidence or likely fact
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`witness coming out of the Austin office or elsewhere in WDTX.
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`Plaintiff IOENGINE, LLC (“IOENGINE”) is a non-practicing entity with no ties to this
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`District. IOENGINE’s basis for venue boils down to nothing more than the general allegation
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`that Roku has a presence in this District and has sold streaming players here. But the Federal
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`Circuit has made clear that presence in a district alone is insufficient to defeat transfer. See e.g.,
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`In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020). In Apple, despite the movant having more than
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`8,000 employees and multiple retail stores in WDTX, including an under-development hotel for
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`employees visiting Austin, the Court found that, even under the heightened standards for
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`mandamus relief, NDCA was clearly more convenient. Id. at 1339-46, 1351. Consistent with
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`this, another Court in this District recently transferred a patent infringement action against Roku
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`to NDCA when venue, like here, was based on similarly generic allegations of infringement
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`occurring in the District. See Media Chain, LLC v. Roku, Inc., No. 1:21-cv-27, 2021 U.S. Dist.
`
`LEXIS 243562 (W.D. Tex. Dec. 7, 2021) (Yeakel, J.); see also Decapolis Sys., LLC v.
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`eClinicalWorks, LLC, No. 6:21-cv-00502, Dkt. No. 30 (W.D. Tex. Mar. 1, 2022) (finding general
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`presence in this District insufficient to defeat transfer).
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`Roku’s argument and evidence for transfer in the present dispute is at least as strong as
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`that in Apple and Media Chain. Roku’s headquarters and principal place of business is within
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`NDCA in San Jose, California. Roku’s relevant employees, including engineers, financial
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`analysts, and marketing staff, are located in Roku’s San Jose office. The accused streaming
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`players (“Accused Products”) were also designed, developed, and tested in NDCA. Because the
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`private and public interest factors show that NDCA is clearly more convenient, Roku respectfully
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`requests that this case be transferred to NDCA under 28 U.S.C. § 1404(a).
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`II.
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`FACTUAL BACKGROUND
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`On December 14, 2021, IOENGINE filed a Complaint against Roku alleging
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`infringement of U.S. Patent Nos. 10,447,819 (“the ’819 Patent”) and 10,972,584 (“the ’584
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`Patent”) (collectively, “the Asserted Patents”). The Asserted Patents are generally directed to a
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`portable device configured to communicate with a communications network through an access
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`terminal, using specific components and software programming. IOENGINE appears to allege
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`that the way the Accused Products: (1) are used in conjunction with a display device, like a TV;
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`(2) communicate with online servers to provide access to media content and services, whether
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`free or paid for using Roku Pay; and (3) are controlled through the use of a graphical user
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`interface (“Accused Functionalities”), infringe the ’819 patent’s claims 184-192 and the ’584
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`patent’s claims 1-99.
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`Roku is headquartered in San Jose, California, and Roku’s business relevant to the
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`Accused Products and Functionalities takes place in NDCA. Roku’s streaming player hardware,
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`as well the Roku operating system (“OS”) that runs on that hardware, including source code, was
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`principally designed and developed at Roku’s headquarters in California.1 (Declaration of
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`Prateek Tandon (“Tandon Decl.”),2 ¶ 6.) Similarly, the information and Roku employees that
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`work most closely with, and have the most specialized knowledge of, the technical aspects
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`relating to the Accused Products and Functionalities are located in NDCA. (Id., ¶¶ 2-3, 8-12.)
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`The same is true for the financial aspects of the case, as the information and persons
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`knowledgeable about the current and historical market and sales relating to the Accused Products
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`are also in San Jose, California. (Id., ¶¶ 13-14.) And although Roku documents relating to the
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`Accused Products and Functionalities are stored on cloud servers, these documents are managed
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`by Roku’s IT group based in San Jose. (Id., ¶ 7.)
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`IOENGINE points to Roku Senior Vice President of Product Engineering and
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`Operations, Mr. Scott de Haas’s presence in Texas (Compl., ¶ 13) as an alleged basis to remain
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`in this District but, as was the case in Media Chain, there is no special connection between Mr.
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`de Haas and IOENGINE’s infringement allegations. See Media Chain, 2021 U.S. Dist. LEXIS
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`243562, at *5. In fact, Roku is not aware of any employee based out of Roku’s Austin office
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`with specialized knowledge of the Accused Products and Functionalities. (Tandon Decl., ¶ 8.)
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`Indeed, Roku’s Austin office has no connection with the current dispute. IOENGINE
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`points to a truncated statement made by Gergely Timar in a different case about the engineering
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`work that occurs in Austin as allegedly supporting venue in this District (Compl., ¶ 13), but that
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`case involves Roku’s OneView advertising platform and Mr. Timar’s comment merely confirms
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`the work carried out on Roku TVs in Austin is not related to the OneView advertising platform.
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`(See Dkt. No. 18, ¶13 (reproducing full quote from Mr. Timar).) Notably, neither Roku TVs nor
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`OneView are implicated in this case. As with Roku’s other offices, Austin is also home to a
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`1 This includes prior headquarters in Saratoga and Los Gatos, both in NDCA.
`2 The Tandon Declaration is attached hereto as Exhibit 1.
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`small number of sales and marketing professionals, but none of these individuals have any
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`specialized knowledge of Roku’s streaming business that may be relevant to the current dispute.
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`Apart from filing the present suit in WDTX, IOENGINE has no relevant ties to Texas.
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`IOENGINE is a limited liability company organized under the laws of Delaware, with a principal
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`place of business in Connecticut. (Compl., ¶ 2.) All prior lawsuits filed by IOENGINE were
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`filed in Delaware. (See Declaration of Alec Royka (“Royka Decl.”),3 Ex. 2A (IOENGINE
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`district court case list).) The alleged inventor of the Asserted Patents and sole member of
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`IOENGINE, Mr. Scott McNulty, appears to reside in Connecticut. (Id. at Ex. 2B (property
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`record for 22 Ensign Rd., Norwalk, CT 06853); Id. at Ex. 2C (Scott McNulty LinkedIn profile).)
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`Further, there is no evidence that IOENGINE owns any land in Texas, makes any products in
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`Texas, or employs anyone in Texas, let alone in this District.
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`III. LEGAL STANDARD
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`The decision of whether to transfer this case under 28 U.S.C. § 1404(a) centers on two
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`inquiries: (1) whether NDCA is a district where IOENGINE could have brought the action, and
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`(2) “whether private and public interest factors favor transfer” such that NDCA is “clearly more
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`convenient.” Airbus S.A.S. v. Aviation Partners, Inc., No. 11-1030, 2012 U.S. Dist. LEXIS
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`91463, at *10 (W.D. Tex. June 29, 2012). Here, Roku “need not show the [factors] substantially
`
`outweigh [IOENGINE’s] choice of venue—it is enough to show the new venue is clearly more
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`convenient than the original one.” DataQuill Ltd. v. Apple Inc., No. 13-706, 2014 U.S. Dist.
`
`LEXIS 82410, at *7 (W.D. Tex. June 13, 2014) (citing In re Volkswagen of America, Inc.
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`(“Volkswagen II”), 545 F.3d 304, 314 (5th Cir. 2008) (en banc)).
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`To determine if another district is clearly more convenient, the Fifth Circuit weighs a
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`number of private and public factors, none of which is dispositive. In re Volkswagen AG
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`3 The Royka Declaration is attached hereto as Exhibit 2.
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`(“Volkswagen I”), 371 F.3d 201, 203 (5th Cir. 2004). The private factors are: (1) the relative ease
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`of access to sources of proof; (2) the availability of compulsory process to secure the attendance
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`of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems
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`that make a trial easy, expeditious, and inexpensive. Id. (citing Piper Aircraft Co. v. Reyno, 454
`
`U.S. 235, 241 n.6 (1981)); see also Uniloc USA Inc. v. Box, Inc., No. 17-754, 2018 U.S. Dist.
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`LEXIS 94966, *4 (W.D. Tex. June 6, 2018). The public factors are: (1) the administrative
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`difficulties flowing from court congestion; (2) the local interest in having localized interests
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`decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4)
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`the avoidance of unnecessary problems of conflict of laws of the application of foreign law.
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`Volkswagen I, 371 F.3d at 203. And although IOENGINE’s choice of venue is not a distinct
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`factor in the Fifth Circuit’s venue transfer analysis, it is nonetheless taken into account by
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`placing the burden to show good cause for the transfer on Roku. Volkswagen II, 545 F.3d at 314
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`n. 10.
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`IV. THE NORTHERN DISTRICT OF CALIFORNIA IS A CLEARLY MORE
`CONVENIENT VENUE FOR THE CURRENT DISPUTE.
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`A. This Action Could Have Been Brought in the Northern District of California.
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`IOENGINE could have properly brought this suit against Roku in NDCA. Venue is
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`proper under § 1400(b) in the district where the defendant “resides” or “where the defendant has
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`committed acts of infringement and has a regular and established place of business.” 28 U.S.C. §
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`1400(b); In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017). It is undisputed that Roku
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`maintains its principal place of business in San Jose, California, and therefore has a regular and
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`established place of business in NDCA. See Compl., ¶ 3. Likewise, because sales of the
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`Accused Products take place throughout the country and within NDCA, the acts alleged by
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`IOENGINE to constitute infringement also occurred in NDCA. Accordingly, venue is proper in
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`NDCA and this case against Roku could have been brought there.
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`
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`B. The Private Interest Factors Weigh Heavily in Favor of Transfer to the
`Northern District of California.
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`1. The Convenience of Willing Witnesses Strongly Favors Transfer.
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`The convenience of willing witnesses overwhelmingly favors transfer to NDCA. This
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`factor is the single most important factor in the transfer analysis. In re Genentech, Inc., 566 F.3d
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`1338, 1342 (Fed. Cir. 2009); 10Tales, Inc. v. Tiktok Inc., 2021 U.S. Dist. LEXIS 96694, at *10
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`(W.D. Tex. May 21, 2021). And under this factor, courts should consider all potential material
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`and relevant witnesses, including party witnesses. See In re Hulu, LLC, 2021 U.S. App. LEXIS
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`22723, at *12-14 (Fed. Cir. Aug. 2, 2021).
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`The Roku witnesses with knowledge of the Accused Products and Functionalities,
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`whether from a technical or financial perspective, are in NDCA. Specifically, based on Roku’s
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`investigation of the case to date, the following people have the most relevant knowledge relating
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`to the Accused Products and Functionalities and are each located at Roku’s headquarters in San
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`Jose, California:
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`• Prateek Tandon, Vice President, Software Engineering: Mr. Tandon is a senior
`Roku employee with specific knowledge about the following Roku features
`implicated by IOENGINE’s allegations—on-device setup, home screen and home
`menu, movies and TV store, and settings—and, more generally, is knowledgeable
`about Roku’s streaming players, the Roku OS, and how Roku’s software is used
`in conjunction with a display device and the Internet to access media content and
`services. In addition to the foregoing, Mr. Tandon is also knowledgeable about
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`the graphical user interface (“GUI”) interactions and communication protocols
`used by the Roku Pay application4 (Tandon Decl., ¶¶ 2-3);
`• Wade Brown, Senior System Architect: Mr. Brown is knowledgeable about
`Roku’s streaming players, the Roku OS, how Roku’s software is used in
`conjunction with a display device and the Internet to access media content and
`services, and the High-Definition Multimedia Interface (“HDMI”) used by Roku
`streaming players to display content on a television (Id., ¶ 9);
`• Wim Michiels, Principal Engineer: Mr. Michiels is knowledgeable about Roku’s
`streaming players, the Roku OS, and how Roku’s software is used in conjunction
`with a display device and the Internet to access media content and services (Id., ¶
`10);
`• Cameron Baharloo, Director, Software Engineering: Mr. Baharloo
`is
`knowledgeable about Roku’s streaming players and associated GUI interactions
`involved with the Accused Functionalities (Id., ¶ 11);
`• Robert Burdick, Director, Developer Platform: As an open streaming platform,
`Roku maintains a “Developers” website and certain Developer tools to assist
`publishers and developers in creating custom streaming channels operable on the
`Roku OS.5 Mr. Burdick, as the Director in charge of this platform, is
`knowledgeable about this subject matter (Tandon Decl., ¶ 12);
`• Steve Sprich, Senior Director, Global Product Marketing and Insights: Mr.
`Sprich is knowledgeable about the marketing and advertising of the Accused
`Products (Id., ¶ 13); and
`• Kevin Bright, Senior Director, Financial Planning & Analysis: Mr. Bright is
`knowledgeable about the sales and revenue information related to the Accused
`Products (Id., ¶ 14).
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`
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`Each of the Roku witnesses identified above would have to travel approximately 1,450
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`miles to attend trial and testify in this District, requiring at least six hours of travel time each
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`4 IOENGINE’s Complaint, in certain instances, cites to the Accused Products’ ability to facilitate
`purchases through Roku Pay. (See, e.g., Compl., ¶¶ 25, 87, 94, 99, 159.)
`5 As alleged support for its direct and indirect infringement allegations, IOENGINE relies upon
`Roku’s Developers website and platform. (See, e.g., Compl., ¶¶ 25, 94-98, 100, 166-170.)
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`way, meals, and lodging expenses, in addition to time lost from work. (See Royka Decl., Ex. 2D
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`(Google Maps printout from San Jose, CA to Waco, TX).)
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`Conversely, there are no willing witnesses that reside within this District. IOENGINE
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`has no employees or identified witnesses within Texas. Mr. McNulty, IOENGINE’s sole
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`member and purported sole inventor of the Asserted Patents, lives in Connecticut, and thus will
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`have to travel a significant distance to testify whether trial is held in this District or NDCA. See
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`In re Apple Inc., 979 F.3d at 1342 (finding error in giving too much weight to the location of a
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`few witnesses that “will be required to travel a significant distance no matter where they
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`testify”).
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`Because “a substantial number of material witnesses reside within the transferee venue
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`and the state of California, and no witnesses reside within” WDTX, this factor “weigh[s]
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`substantially in favor of transfer” to NDCA. Genentech, 566 F.3d at 1345. See also In re
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`Google LLC, 2021 U.S. App. LEXIS 29137, at *12 (Fed. Cir. Sep. 27, 2021) (“[o]ur cases have
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`emphasized that when there are numerous witnesses in the transferee venue and the only other
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`witnesses are far outside the plaintiff’s chosen forum, the witness-convenience factor favors
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`transfer”); Decapolis Sys., LLC, 6:21-cv-00502, Dkt. No. 30 at 5-7 (finding this factor to favor
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`transfer where no potential witnesses live in this District and movant’s employees identified as
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`likely to testify reside in the transferee venue). Moreover, this factor strongly favors transfer
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`notwithstanding the fact that all Roku-identified witnesses are Roku employees. As the Federal
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`Circuit noted in Hulu, “[a]lthough an employer’s cooperation in allowing an employee to testify
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`may diminish certain aspects of inconvenience to the employee witness (for instance, the
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`employee is not acting contrary to their employer’s wishes), it hardly eliminates the
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`inconvenience.” In re Hulu, LLC, 2021 U.S. App. LEXIS 22723, at *13; see also In re Juniper
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`Networks, Inc., 14 F.4th 1313, 1319 (Fed. Cir. 2021) (finding error where the district court
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`discounted party witnesses in the transferee district).
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`2. The Relative Ease of Access to Sources of Proof Favors Transfer.
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`The relevant evidence in this case was created at Roku’s headquarters in NDCA, not in
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`Austin. As the accused infringer, Roku’s documents are likely to be the main sources of proof in
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`this case, used by both parties. And “[c]onsequently, … [this] weighs in favor of transfer [to
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`NDCA].” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009).
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`As explained by Mr. Tandon (Tandon Decl., ¶ 7), although Roku stores its documents on
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`cloud servers, those servers are managed and maintained by Roku’s IT group based in San Jose,
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`California. This includes documents relating to Roku’s NDCA-based research, design, and
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`development of the Accused Products, as well as marketing, sales, and financial information for
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`the Accused Products. Because “the location of document custodians and location where
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`documents are created and maintained, which may bear on the ease of retrieval,” should be
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`considered under this factor, the location of sources of proof favors transfer to NDCA. In re
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`Google LLC, 2021 U.S. App. LEXIS 33789, at *7 (Fed. Cir. Nov. 15, 2021).
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`In addition, there are no documents stored in Roku’s Austin office or elsewhere in this
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`District relevant to this case. See Media Chain, LLC, 2021 U.S. Dist. LEXIS 243562, at *5 (this
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`factor favors transfer where, as here, neither plaintiff nor the inventor of the asserted patents is
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`based in Texas and the relevant documents are maintained in California). Accordingly, this
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`private interest factor favors transfer of this case. See Decapolis Sys., LLC, 6:21-cv-00502, Dkt.
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`No. 30 at 4-5 (finding this factor to favor transfer where “[m]ore sources of proof likely reside
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`in, and are likely more easily accessed in” the transferee venue).
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`{ROKUIN/00009/00604617}
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`Case 6:21-cv-01296-ADA-DTG Document 27 Filed 04/12/22 Page 14 of 20
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`3. The Availability of Compulsory Process Favors Transfer or is
`Neutral.
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`This Court lacks subpoena power over witnesses in California. Under Rule 45 of the
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`
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`Federal Rules of Civil Procedure, a court may subpoena a witness to attend trial only: (1) within
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`100 miles of where the person resides, is employed, or regularly transacts business in person, or
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`(2) within the state where the person resides, is employed, or regularly transacts business in
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`person. Fed. R. Civ. P. 45(c)(1). The second private interest factor focuses on “the availability
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`of compulsory process to secure the attendance of witnesses, particularly non-party witnesses
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`whose attendance may need to be secured by court order.” 10Tales, Inc., U.S. Dist. LEXIS
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`96694, at *7-8.
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`Here, unlike the NDCA, this District lacks subpoena power over any relevant potential
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`witness in this case. For example, as the Accused Products were designed and developed in
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`NDCA, subpoena power may be necessary to compel the participation of any former Roku
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`employees located in that district. Roku is not aware of a single relevant witness located within
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`the subpoena power of this District. As explained above, although IOENGINE points to Mr.
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`Scott de Haas in its Complaint, there is no special connection between Mr. de Haas and the
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`infringement allegations or the Accused Products and Functionalities at issue in this case.
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`Accordingly, this factor favors transfer to NDCA or is neutral.
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`4. There Are No Practical Problems Weighing Against Transfer.
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`The final private interest factor favors transfer because there are no practical problems
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`weighing against transfer to NDCA. “This factor carries greater weight in cases for which ‘there
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`is co-pending litigation before the trial court involving the same patent and underlying
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`technology’ and cases where the trial court is familiar with the underlying patent from prior
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`litigation.” 10Tales, Inc., 2021 U.S. Dist. LEXIS 96694, at *12. Here, there is no co-pending, or
`
`{ROKUIN/00009/00604617}
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`Case 6:21-cv-01296-ADA-DTG Document 27 Filed 04/12/22 Page 15 of 20
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`prior, litigation before this Court involving IOENGINE’s patents that would potentially weigh
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`against transfer. IOENGINE currently has separate suits (nearing trial) in the District of
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`Delaware against PayPal and Ingenico involving patents related to the Asserted Patents, but the
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`accused technology in those cases does not involve streaming players; rather, it involves
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`PayPal’s mobile card readers and payment technology. IOENGINE’s separate actions in
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`Delaware should have no impact on this Court’s analysis of transfer.
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`Additionally, this case is in its early stages. Roku has responded to the Complaint,
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`IOENGINE responded to Roku’s Counterclaims, and there has been no substantive motion
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`practice or claim construction activity that would potentially weigh against transfer. Because
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`there are no other practical problems that might arise by transferring the case to NDCA, this
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`factor also favors transfer. See Media Chain, LLC, 2021 U.S. Dist. LEXIS 243562, at * 8
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`(finding this factor to favor transfer when the case is still in its early stages and notwithstanding
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`any COVID-19 considerations that may attach in the transferee forum).
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`C. The Public Interest Factors Favor Transfer to the Northern District of
`California.
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`1. The Local Interest Factor Weighs Heavily In Favor of Transfer.
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`The local interest factor weighs heavily in favor of transfer because the Accused Products
`
`and Functionalities were principally designed and developed in NDCA. IOENGINE’s claims,
`
`therefore, implicate the hard work of Roku’s NDCA-based engineers that designed and
`
`developed these products. See Decapolis Sys., LLC, 6:21-cv-00502, Dkt. No. 30 at 11-13
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`(finding this factor to favor transfer when “the alleged infringing products were likely developed
`
`in the [transferee venue], and th[e] case will call into question the work and reputation of
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`[movant] and its employees, both of which have a presence in the [transferee venue]”).
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`{ROKUIN/00009/00604617}
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`Case 6:21-cv-01296-ADA-DTG Document 27 Filed 04/12/22 Page 16 of 20
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`“This factor most notably regards not merely the parties’ significant connections to each
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`forum writ large, but rather the ‘significant connection between a particular venue and the events
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`that gave rise to a suit.’” In re Apple, 979 F.3d at 1344 (quoting In re Acer Am. Corp., 626 F.3d
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`1252, 1256 (Fed. Cir. 2010)) (emphasis in original). IOENGINE alleges that “Roku’s Streaming
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`Players…; the Roku OS, and the Roku [GUI] used with the Roku streaming players; products
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`and systems incorporating the foregoing; and reasonably similar Roku portable products with
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`streaming capabilities” infringe the Asserted Patents. (Compl., ¶ 23.) As set forth above, the
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`development of Roku’s streaming players, including their hardware, associated OS and source
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`code, primarily occurred at Roku’s NDCA headquarters, years prior to Roku’s Austin office
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`opening in 2014. (Tandon Decl., ¶ 6.) Accordingly, the events that give rise to this suit—
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`Roku’s research, design, and development of its streaming players—occurred at Roku’s Bay-
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`area headquarters, giving the NDCA a significant and legitimate interest in this case. See In re
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`Samsung Elecs. Co., 2 F.4th 1371, 1380 (Fed. Cir. 2021) (finding that the location of research,
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`design and development are significant factors giving rise to a legitimate localized interest).
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`Conversely, and apart from filing the present suit in Waco, WDTX has no true
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`connection to this dispute between IOENGINE and Roku. Not only does IOENGINE and its
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`sole member, Mr. McNulty, have no ties to Texas, but Roku’s Austin office—IOENGINE’s
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`alleged venue “hook”—was not even open when the accused Roku streaming players were
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`developed. This office, therefore, and any engineers employed therefrom, does not give rise to
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`any local interest in this particular dispute. In re Apple, 979 F.3d at 1345; In re Google, 2021
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`WL 4427899, at *5.
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`Further, the fact that Roku streaming playe