Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`IOENGINE, LLC,
`
`
`
`Plaintiff/Counterclaim Defendant,
`
`v.
`
`ROKU, INC.,
`
`Defendant/Counterclaim Plaintiff.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 6:21-cv-1296-ADA
`
`Jury Trial Demanded
`
`IOENGINE, LLC’S OPPOSITION TO ROKU, INC.’S
`MOTION TO TRANSFER
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 2 of 22
`
`CONTENTS
`
`INTRODUCTION ................................................................................................................. 1
`I.
`II. STATEMENT OF FACTS ................................................................................................... 1
`A.
`Roku Has a Significant WDTX Presence Related to the Accused Products ............ 1
`B.
`Roku’s WDTX Employees Contribute Significantly to the Accused Products ........ 2
`III. LEGAL STANDARD ............................................................................................................ 3
`IV. ARGUMENT ......................................................................................................................... 4
`A.
`The Volkswagen Private Factors Favor Denial of Transfer ....................................... 4
`1. The relative ease of access to sources of proof weighs against transfer .................... 4
`2. The availability of compulsory process weighs against transfer ............................... 6
`a) Roku failed to identify any non-party witnesses in NDCA ..................................... 7
`3. The cost of attendance for willing witnesses weighs against transfer........................ 8
`a)
`IOENGINE’s Witnesses’ Convenience Strongly Favors WDTX ........................... 8
`b) Relevant Roku Employees Are Not Inconvenienced By Waco............................... 9
`c) The Convenience of Witnesses Weighs Against Transfer ..................................... 11
`4. All other practical problems weigh against transfer................................................. 12
`B.
`The Volkswagen Public Factors Favor Denial of Transfer ....................................... 13
`1. Administrative difficulties due to court congestion disfavor transfer ..................... 13
`2. WDTX’s local interest disfavors transfer .................................................................. 14
`3. Public interest does not favor transfer on familiarity or conflict of law ................. 15
`V. CONCLUSION .................................................................................................................... 15
`
`ii
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 3 of 22
`
`Cases
`
`AUTHORITIES
`
`10Tales, Inc. v. Tiktok Inc.,
`20-cv-00810, 2021 WL 2043978 (W.D. Tex. May 21, 2021) .......................................... 5, 8, 12
`
`CloudofChange, LLC v. NCR Corporation,
`19-cv-513, 2020 WL 6439178 (W.D. Tex. Mar. 17, 2020) ........................................................ 4
`
`Decapolis Systems, LLC v. eClinicalWorks, LLC,
`21-cv-502, Dkt. 30 (W.D. Tex. Mar. 1, 2022) .......................................................................... 12
`
`Defense Distributed v. Bruck,
`30 F.4th 414 (5th Cir. 2022) .................................................................................................... 6, 8
`
`Fintiv, Inc. v. Apple Inc.,
`18-cv-00372, 2019 WL 4743678 (W.D. Tex. Sept. 13, 2019).................................................. 13
`
`Glass-Steel, Inc. v. RN Civil Construction,
`18-cv-3520, 2018 WL 6173786 (S.D. Tex. Nov. 26, 2018) ..................................................... 15
`
`Hynix Semiconductor Inc. v. Rambus Inc.,
`645 F.3d 1336 (Fed. Cir. 2011) ................................................................................................. 15
`
`In re Apple Inc.,
`818 Fed. Appx. 1001 (Fed. Cir. 2020) ................................................................................ 14, 15
`
`In re Apple Inc.,
`855 Fed. App’x 766 (Fed. Cir. 2021) ........................................................................................ 14
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ................................................................................................. 12
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ................................................................................................. 12
`
`In re Google LLC,
`2021-170, 2021 U.S. App. LEXIS 29137 (Fed. Cir. Sep. 27, 2021) ........................................ 12
`
`In re Google LLC,
`2021-178, 2021 U.S. App. LEXIS 33789 (Fed. Cir. Nov. 15, 2021).......................................... 5
`
`In re Google LLC,
`855 F. App’x 767 (Fed. Cir. 2021) .......................................................................................... 5, 8
`
`In re Hulu, LLC,
`2021-142, 2021 U.S. App. LEXIS 22723 (Fed. Cir. 2021) ...................................................... 12
`
`iii
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 4 of 22
`
`In re Juniper Networks,
`14 F.4th 1313 (Fed. Cir. 2021) .............................................................................................. 8, 12
`
`In re Volkswagen of America, Inc.,
`545 F.3d 304 (5th Cir. 2008) ......................................................................................... 1, 4, 8, 15
`
`Kahn v. General Motors Corp.,
`889 F.2d 1078 (Fed. Cir. 1989) ................................................................................................. 13
`
`Kajeet, Inc. v. Trend Micro, Inc.,
`21-cv-389, 2022 WL 126490 (W.D. Tex. Jan. 12, 2022) ......................................................... 13
`
`King v. Illinois Cent. R.R.,
`337 F.3d 550 (5th Cir. 2003) ..................................................................................................... 15
`
`Koss Corporation v. Apple Inc,
`20-cv-665, 2021 WL 5316453 (W.D. Tex. Apr. 22, 2021) ............................................ 9, 12, 14
`
`Leon v. IDX Systems Corp.,
`464 F.3d 951 (9th Cir. 2006) ..................................................................................................... 15
`
`MV3 Partners LLC v. Roku, Inc.,
`18-cv-308, 2019 WL 10981851 (W.D. Tex. Jun. 25, 2019) ................................................... 5, 8
`
`Netlist, Inc. v. SK hynix Inc.,
`20-cv-525, 2021 WL 2954095 (W.D. Tex. Feb. 2, 2021) ......................................................... 12
`
`Newton v. Thomason,
`22 F.3d 1455 (9th Cir. 1994) ..................................................................................................... 15
`
`ParkerVision, Inc. v. Intel Corporation,
`20-cv-108, 2021 WL 401989 (W.D. Tex. Jan. 26, 2021) ........................................................... 8
`
`Quest NetTech Corporation v. Apple, Inc.,
`19-cv-118, 2019 WL 6344267 (E.D. Tex. Nov. 27, 2019) ......................................................... 4
`
`Scramoge Tech. Ltd. v. Samsung Elecs. Co.,
`21-cv-454, 2022 U.S. Dist. LEXIS 92262 (W.D. Tex. May 16, 2022) .................................... 13
`
`STC.UNM v. Apple Inc.,
`19-cv-428, 2020 WL 4559706 (W.D. Tex. Apr. 1, 2020) ........................................................ 15
`
`Voxer, Inc. v. Facebook, Inc.,
`20-cv-11, 2020 WL 3416012 (W.D. Tex. June 22, 2020) .................................................. 12, 14
`
`Weatherford Technology Holdings, LLC v. Tesco Corporation,
`17-cv-456, 2018 WL 4620636 (E.D. Tex. May 22, 2018) .......................................................... 5
`
`Statutes
`
`iv
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 5 of 22
`
`28 U.S.C. §1404(a) ..................................................................................................................... 3, 4
`
`v
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 6 of 22
`
`I.
`
`INTRODUCTION
`
`IOENGINE, LLC (“IOENGINE”) filed this suit seven months ago alleging that Roku, Inc.
`
`(“Roku”) infringes U.S. Patent Nos. 10,447,819 (the “’819 Patent”) and 10,972,584 (the “’584
`
`Patent”) (together, the “Patents-in-Suit”). Unable to dispute proper venue or jurisdiction, Roku
`
`attempts to transfer this case to its preferred venue based on ‘convenience.’ D.I. 27, (“Mot.”). But
`
`under In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008), the burden is on Roku to
`
`show that the transferee venue is “clearly more convenient.”
`
`In its Motion, Roku represented it “is not aware of a single piece of evidence or likely fact
`
`witness coming out of the Austin office or elsewhere in WDTX.” Mot. at 1. See also id. at 8-10
`
`(denying documents or “willing” or “relevant” witnesses in WDTX). But once compelled to
`
`comply with venue discovery, see D.I. 46, Ex. A59, 2:14–4:7, Roku provided information belying
`
`this assertion and proving the connection between its WDTX operations and the accused products.
`
`Venue discovery revealed dozens of employees in Roku’s Austin office who participate in testing,
`
`research, development, and marketing of the accused products: Roku’s streaming media players
`
`and soundbars, and their operating system and user interface. Discovery has also brought to light
`
`several important third-party witnesses in this District. The admitted evidence and witnesses in
`
`WDTX makes transfer inappropriate. Accordingly, Roku’s Motion to Transfer should be denied.
`
`II.
`
`STATEMENT OF FACTS
`
`A.
`
`Roku Has a Significant WDTX Presence Related to the Accused Products
`
`Scott de Haas, Roku’s Senior VP of Product Engineering and Operations, who founded
`
`Roku’s Austin office, Ex. A1, at 9:12-24, has explained that the office “is going to be a very
`
`important part of our engineering effort,” including for the accused “Roku streaming players.” Ex.
`
`A2, 2. In October 2020 Mr. de Haas confirmed “[t]he Austin office is an integral part of [the]
`
`operations at Roku.” Ex. A41 at 71:2–3. Mr. de Haas still leads the Austin office, and more than
`
`1
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 7 of 22
`
` employees company-wide report to him. See Ex. A ¶3. Of the
`
` employees in Roku’s Austin
`
`office,
`
` have ‘technical’ roles. See Ex. A4. Moreover, Roku admitted that “the majority of
`
`engineers in Roku’s Austin, TX office focus on the Roku operating system, hardware, and
`
`embedded software development,” all of which are implicated in this case. Ex.A24 at ¶6. The
`
`Austin office is also growing—since 2021, Roku has twice announced expansion plans to add more
`
`than 80,000 square feet. Exs.A5; A6. And Roku’s CEO and Board have held several meetings and
`
`interviews from the Austin office since 2019, attesting to its importance Ex. A3; Ex. A7, 13–15.
`
`IOENGINE’s Complaint accuses Roku of engaging in infringement in this District. See,
`
`e.g., D.I. 1 ¶¶ 48, 53, 124, 142. And it is undisputed that Roku sells the accused products here.
`
`Mot. 5. IOENGINE also alleges indirect infringement in WDTX, including by Roku’s inducement
`
`of third parties to use the accused products “to stream video and audio from services” such as
`
`“Welcome to Waco” and “Austin News from KVUE.” D.I. 1 ¶¶ 25, 91, 163. Thus, in this case
`
`there are specific allegations related to both direct and indirect infringement in WDTX.
`
`B.
`
`Roku’s WDTX Employees Contribute Significantly to the Accused Products
`
`First, accepting Roku’s self-serving categorization of its employees in its interrogatory
`
`responses, no fewer than
`
` technical employees in its Austin office work on the accused products
`
`and functionalities. See Ex. A at ¶ 4. Of these, Roku admitted that
`
`have particularly relevant
`
`responsibilities and work with California employees on accused functionalities. Ex. A7, at 9-10.
`
`All
`
` WDTX employees are described as having roles related directly to the accused streaming
`
`players, their operating system (“OS”), user interface (“UI”), and other accused functionalities—
`
`e.g., Roku’s software development kit (“SDK”), Roku Channel, Search, audio, and voice—all
`
`implicated by the Complaint. D.I. 1, ¶¶25, 94, 96, 140 166–67; Ex. A, ¶3; Ex. A57 at 30:16–31:11.
`
`Second, numerous additional Austin employees work on the “Roku OS” or have roles
`
`applicable to both accused and unaccused products. Ex. A8, 100:21–101:2, 115:13–117:24; Ex.
`
`2
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 8 of 22
`
`A9, 74:25–75:6; Ex. A1, 13:2–3. Roku attempts to differentiate work on TVs from the accused
`
`products, and obfuscates by repeating a boilerplate, self-serving statement that certain employees’
`
`“primary work does not have any application to the accused functionalities in the accused
`
`products.” Ex. A4. But Roku’s witnesses refuted this distinction, testifying that Roku OS is
`
`
`
` Ex. A9, 16:4–8, 80:24–81:4; Ex.
`
`A1, 7:19–24, and that “all the teams work on RokuOS,” because it
`
`
`
` Ex. A8, 115:13–117:24, 128:15, 128:20, 135:16,
`
`140:6; Ex. A9, 35:7–18; 40:8–23, 82:1–18.1 In fact, “Roku TV and the [accused] Roku streaming
`
`players” have
`
` Ex. A8, 142:7–24, with
`
`
`
` Ex. A9, 26:19–27:14. And Roku’s UI has “features which are uniform across the board.”
`
`Ex. A8, 139:22–23; see also Ex. A9, 27:18–28:4, 66:7–20; 78:18–78:21. Work on the Roku OS
`
`and UI thus affects all products, including the accused devices. See Ex. A9, 31:4–31:23; 42:14–
`
`43:9; 76:5–76:19. Likewise, Austin employees develop and test
`
`
`
` Ex. A1, 57:15–19, and “around
`
` people” in the Austin office, work in “cloud-based”
`
`roles that are
`
` Ex. A8, 159:20–160:6.
`
`Finally, significant third-party activities occur here. For example, the accused devices use
`
`ARM Holdings’ CPUs. Ex. A11, p. A-47–51; Ex. A10 p. B-43–47. The ARM A Series was largely
`
`developed in Austin by ARM’s predecessor. Exs. A12; A13. The accused devices also use Texas
`
`Instruments’ chips. See Ex. B, ¶¶ 3.1–3.3. Both are sources of relevant third-party information.
`
`III.
`
`LEGAL STANDARD
`
`The burden of proving that a case should be transferred under 28 U.S.C. §1404(a) falls on
`
`1 E.g., Combee, Sottek, King, and Rupert are “Austin employee[s] work[ing] on Roku OS features
`that may apply to both TVs and players,” D.I. 46, 4, and Young and Hodgins are examples of
`“overlap in what an employee does and what’s been accused.” Ex. A58, 25:21–27:1.
`3
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 9 of 22
`
`the moving party, who “must show good cause” by “clearly demonstrat[ing] that a transfer is ‘[f]or
`
`the convenience of parties and witnesses, in the interest of justice.’” Volkswagen, 545 F.3d at 314-
`
`15. “The determination of ‘convenience’ turns on a number of factors, none of which are
`
`dispositive, including: private interest factors: “(1) the relative ease of access to sources of proof;
`
`(2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of
`
`attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy,
`
`expeditious and inexpensive”; and public interest factors: “(1) the administrative difficulties
`
`flowing from court congestion; (2) the local interest in having localized interests decided at home;
`
`(3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of
`
`unnecessary problems of conflict of laws [or in] the application of foreign law.” Id. at 315. This
`
`high burden requires the movant to show that the alternative venue is not merely more convenient,
`
`but “is clearly more convenient.” Volkswagen, 545 F.3d at 315 & n.10 (emphasis added);
`
`CloudofChange, LLC v. NCR Corp., 19-cv-513, 2020 WL 6439178, *2 (W.D. Tex. Mar. 17, 2020).
`
`Respect for the plaintiff’s choice of forum is encompassed in the movant’s burden, “lest the
`
`standard have no real or practical meaning.” QuestNetTech Corp. v. Apple, Inc., 19-cv-118, 2019
`
`WL 6344267, at *7 (E.D. Tex. Nov. 27, 2019) .
`
`IV.
`
`ARGUMENT
`
`A.
`
`The Volkswagen Private Factors Favor Denial of Transfer
`
`1.
`
`The relative ease of access to sources of proof weighs against transfer
`
`For this factor, what matters is the relative access to sources of evidence in the two
`
`competing forums. Roku admits that “Roku documents relating to the Accused Products and
`
`Functionalities are stored on cloud servers,”
`
`Mot. at 3, 9, ex. 1 ¶7.
`
`
`
` Ex. A27 at 7–8,
`
` See id. at 8-9. Certainly,
`
`4
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 10 of 22
`
`documents at Roku’s Austin office can be conveniently transported to this Court. Ex. A37 at 1.
`
`“Roku does not provide any...arguments regarding why it would be difficult or burdensome
`
`to make [its] documents available in Texas,” or “why its Austin office would have difficulty
`
`gaining access to such documents.” MV3 Partners LLC v. Roku, Inc., 18-cv-308, 2019 WL
`
`10981851, at *2 (W.D. Tex. Jun. 25, 2019). That cloud documents are managed in NDCA, Mot.
`
`9, ex. 1 ¶7, is irrelevant
`
`
`
` Because courts must resolve all
`
`“factual conflicts in favor of the non-moving party,” Weatherford Tech. Holdings, LLC v. Tesco
`
`Corp., 17-cv-456, 2018 WL 4620636, at *2 (E.D. Tex. May 22, 2018), this factor disfavors
`
`transfer.2
`
`Roku’s admission that its engineering documents are located in the cloud, Mot. 9, ex. 1 ¶7,
`
` Ex. A27 at 7-9, sets this case apart from 10Tales, where
`
`the Court found it would “burden[] the defendant with unnecessary transportation costs of physical
`
`evidence and documentation.” See 10Tales, Inc. v. Tiktok Inc., 20-cv-810, 2021 WL 2043978, *2
`
`(W.D. Tex. May 21, 2021) (emphasis added). This case is the opposite: Roku has not “‘point[ed]
`
`with particularity to any relevant physical documents,’ nor ‘confirm[ed] the existence of any
`
`physical documents located in the [NDCA]’” that would be burdensome to access here. See In re
`
`Google LLC, 855 F. App’x 767, 768 (Fed. Cir. 2021).
`
`Unlike Roku’s documents, which are stored in the cloud and
`
`
`
`IOENGINE’s documents and physical prototypes (which must be transported by hand) are stored
`
`2 Roku’s citation to In re Google for ‘ease of retrieval’ is inapposite. In Google, relevant documents
`were maintained in the transferee forum and thus were easier to access there. See In re Google
`LLC, 2021 U.S. App. LEXIS 33789, at *7 (Fed. Cir. Nov. 15, 2021); id., 21-178 App’x 546 (filed
`Sept. 1, 2021) (attestation). Here Roku’s documents are stored in the cloud and
`
` and Roku’s declarant says nothing to the contrary. Mot. 9.
`5
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 11 of 22
`
`locally in Connecticut and with its counsel in New York, and are more conveniently transported
`
`here than to NDCA. Ex. A ¶2.
`
`Finally, the accused Roku devices run on ARM CPUs developed in Austin with ongoing
`
`local support. See supra § II.B. Other Roku chips are manufactured by TI. See Ex. B ¶¶3.1–3.3.
`
`Evidence related to those chips is likely located in Austin or nearby. Additionally, as discussed
`
`supra II.A, evidence regarding indirect infringement, including Roku’s inducement related to the
`
`“Welcome to Waco” and Austin news channels, is likely to be located here. D.I. 1 ¶¶ 25, 91, 163.
`
`2.
`
`The availability of compulsory process weighs against transfer
`
`“Access to compulsory process for non-party witnesses is the gravamen of the second
`
`private interest factor.” Def. Distributed v. Bruck, 30 F.4th 414, 434 (5th Cir. 2022). Below
`
`IOENGINE identifies several relevant non-party witnesses it would be unable to call in NDCA:
`
`i.
`
`Robin Edgell was a “Senior SW Engineering Manager, Roku UI” at Roku’s Austin office
`
`from July 2018 to March 2022 and resides within 100 miles of this Court. Ex. A29 at 1; Ex. A4 at
`
`9; Ex. A38. Mr. Edgell worked on Roku’s UI and managed Roku’s UI/SDK group, which worked
`
`on the Roku OS codebase, including for streaming players. Ex. A9 at 126:9–128:13. Roku
`
`identified Mr. Edgell as a person who had relevant information before he left Roku, and at Roku
`
`his direct reports included Judah Menter, who Roku also identified as relevant. See Ex. A7, 9–10;
`
`Ex. A35. Mr. Edgell’s role as manager of the UI/SDK group likely gives him knowledge of indirect
`
`infringement by third-party developers using Roku’s SDK. See D.I. 1 at ¶¶ 94–96, 166–68. Ex.
`
`A10 at p. B-51, B-70, B-114–16; Ex. A11 at p. A-67, A-82, A-88. Although Roku proffered NDCA
`
`witness Cameron Baharloo, Mot. 7, unlike Baharloo, Edgell also worked on
`
`
`
` See Ex. A1, 60:5–61:9. Thus, Baharloo’s testimony would be less probative
`
`overall. Edgell’s presence in WDTX weighs against transfer.
`
`ii.
`
`Linmei Shu was a “Director, SW Engineering” at Roku’s Austin office from May 2014 to
`
`6
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 12 of 22
`
`March 2022, where she worked on Roku’s OS, oversaw work common to both Roku TVs and
`
`streaming players, Ex. A09, 122:5–123:6, and managed a large group of Austin employees, Ex.
`
`A36 at 1; Ex. A4 at 2; Ex. A8, 194:19–196:2, including a potential party witness, Matthew Sottek.
`
`Ex. A20 at 10, IV.A.3.b). She has left Roku but lives within 100 miles of the Court. Ex. A60.
`
`iii.
`
`Eric Vasquez is Principal Design Engineer at ARM’s Austin office, and before that was a
`
`“Sr. Software Developer, Test” at Roku’s Austin office from February 2014 through July 2015.
`
`Ex. A25 at 1. While at Roku, Mr. Vasquez tested Roku’s “set top boxes” and APIs. Id. at 2. At
`
`ARM, he is employed within 100 miles of this Court. See Ex. A26. IOENGINE’s Infringement
`
`Contentions address the Roku products’ ARM CPUs, see supra § II.B, and having worked at both
`
`Roku and ARM, Mr. Vasquez is uniquely knowledgeable about their use in the accused products.
`
`iv.
`
`Leah Cox is the “Broker/Owner” of Kelly Realtors in Waco, Texas. Ex. A46; Ex. A47.
`
`Kelly Realtors produces the “Welcome to Waco” channel. Ex. A48 at 1. The channel is accessed
`
`on Roku and touted by Creative Edge Inc., which assisted in creating it in 2020. Ex. A54 at 1–2.
`
`Ms. Cox is likely to have knowledge relevant to indirect infringement, including the support Roku
`
`provides to producers of local channels and what is entailed when a “streaming channel
`
`. . . purchase[s] slots . . . to promote programs that they have.” Ex. A9 at 91:14–93:13.
`
`v.
`
`Enrico C. Meyer is the “Marketing Director” for KVUE Media Group in Austin and is
`
`employed less than 100 miles from the Court. Ex. A49 at 1; Ex. A50 at 1–2; A53. KVUE’s
`
`owner, TEGNA Inc., developed the KVUE Austin Roku Channel addressed in IOENGINE’s
`
`complaint. Ex. A51 at 1; D.I. 1 ¶¶25, 48, 53, 83, 91, 124, 142, 158, 163. Mr. Meyer has commented
`
`on KVUE’s use of Roku Channel and Roku Search, and has knowledge of Roku’s support for the
`
`use of its channels, relevant to indirect infringement. See Ex. A61 at 1–2.
`
`a)
`
`Roku failed to identify any non-party witnesses in NDCA
`
`Roku did “not inform[] the court that any third party in California was unwilling to travel
`
`7
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 13 of 22
`
`to Texas to testify or could not testify by video.” In re Google LLC, 855 F. App’x at 768. Indeed,
`
`Roku “fail[ed] to specifically identify a single third-party witness” in NDCA, and “vague
`
`assertions” otherwise “do[] not weigh in favor of transfer.” See MV3 v. Roku, 2019 WL 10981851,
`
`at *3. “Where there is no demonstration by the movant, ... the court cannot weigh a factor ... in
`
`favor of transfer.” Bruck, 30 F.4th at 434. To the contrary, Roku took the position that “there are
`
`no willing witnesses that reside within this District.” Mot. 8. As such, the relevant witnesses
`
`identified by IOENGINE in WDTX, can only be compelled to testify at trial here. 10 Tales, Mot.
`
`10, is inapposite, since in that case there were no non-party witnesses in WDTX, whereas several
`
`relevant third parties were identified in California. See 10Tales, 2021 WL 2043978, at *3. Here,
`
`the opposite is true: there are several relevant non-party witnesses in WDTX and Roku fails to
`
`identify any “potential non-party witnesses” who reside in NDCA. ParkerVision, Inc. v. Intel
`
`Corp., 20-cv-108-ADA, 2021 WL 401989, at *3-4 (W.D. Tex. Jan. 26, 2021). Thus, this factor
`
`weighs strongly against transfer.
`
`3.
`
`The cost of attendance for willing witnesses weighs against transfer
`
`Under either the Fifth Circuit’s “cost of attendance” standard, Bruck, 30 F.4th at 433–34
`
`(citing Volkswagen, 545 F.3d at 315), or the Federal Circuit’s “relative convenience” analysis, see
`
`In re Juniper Networks, 14 F.4th 1313, 1316 (Fed. Cir. 2021), this factor strongly weighs against
`
`transfer. IOENGINE’s witnesses and Roku’s Austin employees will find trial in Waco more
`
`convenient; and the employees Roku identified in California are largely unnecessary.3
`
`a)
`
`IOENGINE’s Witnesses’ Convenience Strongly Favors WDTX
`
`IOENGINE’s fact witnesses would each find travel to WDTX more convenient:
`
`3 According to the U.S. General Services Administration, the per diem rate for Waco, Ex. A40, is
`less than half of San Jose’s, Ex. A39; as such, all witnesses in this case will find Waco less costly.
`8
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 14 of 22
`
`i.
`
`Scott McNulty, inventor of the Patents-in-Suit, resides in Rowayton, Connecticut, near
`
`New York City. It is more convenient for him to travel to WDTX than to NDCA. See Koss Corp.
`
`v. Apple Inc, 20-cv-665-ADA, 2021 WL 5316453, at *10 (W.D. Tex. Apr. 22, 2021); Exs. A14
`
`(Waco 5.25hr); A15 (San Jose 6.5hr).
`
`ii.
`
`Thomas Rzonca, may be called to testify regarding corroboration of Mr. McNulty’s
`
`conception of his invention. Mr. Rzonca is located in Eureka Springs, Arkansas, which is similarly
`
`more convenient to WDTX. Ex. A16 (Waco 3.3hr); Ex. A17 (San Jose/SFO 5.7hr).
`
`b)
`
`Relevant Roku Employees Are Not Inconvenienced By Waco
`
`Despite Roku’s assertion otherwise, Mot., 8, 10, venue discovery revealed that
`
` of
`
`Roku’s Austin employees work on “accused products,” and “feature[s]…implicated by
`
`IOENGINE’s contentions.” D.I. 46 at 3–4. Ex. A57, 30:16–31:12; Ex. A ¶ 4. IOENGINE
`
`highlights six likely Roku WDTX trial witnesses, each with particular relevant knowledge, below:
`
`i.
`
`Ben Combee, a Senior Software Engineer in Roku’s Austin office since April 2014, works
`
`on “Roku OS development, focusing on user interface systems that run on all Roku OS-powered
`
`devices.” Exs. A34, 1; Ex. A4 at 1. Mr. Combee testified that he and his Austin colleagues work
`
`on code “that [is] used for streaming systems” and players. Ex. A9, 22:19–23:3; 24:4–8; 72:3–
`
`73:11, 74:3–19; 122:5–123:6, 136:2–13, 143:11–144:4. He also testified that fixes in Roku’s
`
`common code are applied to all devices. See id., 26:19-31:23; 35:22–36:10. Mr. Combee’s
`
`knowledge of the “Roku Channel, Search [and] Featured Free,” is also relevant to indirect
`
`infringement. Ex. A4 at 1; supra §II.B; Exs. A48; A62. His duties also include “porting” the Roku
`
`OS onto hardware chips, including “translat[ing] the application programming interfaces (‘APIs’)
`
`to the APIs that come with the third-party chip software.” See Ex. A63 ¶ 9. Additionally, he has
`
`worked on Roku’s “grid,” which is used on the accused players. See Ex. A9 at 76:2–19, 93:25–
`
`94:16, 97:10–98:12. His testimony is highly relevant to the Roku OS and UI, and his knowledge
`
`9
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 15 of 22
`
`exceeds that of Roku’s Wade Brown, who joined Roku after Combee, and Roku’s other proffered
`
`witnesses, none of whom are identified as having knowledge of Roku’s APIs. Mot. 6–7.
`
`ii.
`
`Scott de Haas, Roku’s SVP of Product Engineering & Operations, founded Roku’s Austin
`
`office and leads it today. Ex. A1, 9:12-20. Mr. de Haas “oversee[s] groups that: build and ship
`
`players,…port OS to new platforms,…[and] interface with factories, retailers, [and] partners.” Ex.
`
`A4 at 1. He “oversees product engineering and operation,” D.I. 1, ¶13, and “all of the product
`
`development for…Roku players and Roku sound bars.” Ex. A41 at 65:1-6. He previously
`
`“oversaw all the hardware development activities for Roku.” Id. at 65:7–13, 95:13–15. Mr. de
`
`Haas has previously testified at trial for Roku, see id. and can be expected to testify here. Mr. de
`
`Haas’s knowledge of Roku’s accused hardware is essential. D.I. 1, ¶¶ 23, 31, 107. Roku has not
`
`identified any other witness with comparable knowledge. Mot. 6–7. Mr. de Haas’s knowledge
`
`exceeds that of Prateek Tandon, who is only “generally” knowledgeable. Mot. 6. And Roku has
`
`not proffered any other witness on budgeting, operational costs, consumer demand, industry
`
`surveys, market-share, competitors, or valuation, which Mr. de Haas knows about. See Ex A18.
`
`iii.
`
`Cameron Esfahani, a Principal Engineer in Roku’s Austin Office since August 2018, Ex.
`
`A4 at 10, works on the UI, SDK, implementing apps, “[c]loud,” and embedded device security, all
`
`of which are relevant. Exs. A19, 1; A35 at p. A-66–69. He also manages a predominantly Austin-
`
`based team that works on improving the Roku OS and UI on accused devices. See Exs. A9, 68:4–
`
`69:19; A20, 3. For example, Brian King, who reports to Mr. Esfahani, works on Roku OS features
`
`applicable to the accused players. Id.; D.I. 46, 4. Mr. Esfahani’s knowledge of “SDK architecture”
`
`implicates Roku’s direction and encouragement of third-party developers, relevant to indirect
`
`infringement. D.I. 1 at ¶¶ 94–96, 166–68; Ex. A10 at p. B-51, B-70, B-114–16; Ex. A11 at p. A-
`
`67, A-82, A-88. None of Roku’s identified NDCA witnesses are senior to Mr. Esfahani, see Ex.
`
`10
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 16 of 22
`
`A20 at 1–3, and so his testimony is necessary and not duplicative.
`
`iv. Matthew Hodgins, a “Sr. Lead SW Engineer, Test” in Roku’s Austin office since February
`
`2014, Ex. A4 at 1, works on Roku’s automated test framework, and designs and implements tools
`
`for testing of Roku players, and OS. Ex. A1, 57:7-58:10; Ex. A22 ¶8; Ex. A21 at 1-2; Ex. A58 at
`
`25:21–22 (“So you clearly see that he’s getting into and deals with the OS and the players.”).
`
`Roku’s contention that the accused streaming players were “tested in NDCA,” D.I. 27 at 2, is
`
`unsupported by anything in its Declaration, D.I. 27-1, and Roku does not proffer any other
`
`witnesses knowledgeable about testing. Id. at 6-9. His testimony is necessary and not duplicative.
`
`v.
`
`David Friedman, a Senior Audio Algorithm Software Engineer in Roku’s Austin office
`
`since January 2019, develops audio software for Roku devices. Exs. A4 at 11; A23. This software
`
`is implicated by IOENGINE’s allegations that Roku’s streaming players “enable the transmission
`
`of communications, such as…audio data,” Ex. A10 at B-38, and regarding the “speaker” and
`
`“audio data“ in the ’819 Patent’s claim 185. D.I. 1-2, 23:42–48. Roku has proffered no other
`
`witness on the audio aspects of the accused products. Mr. Friedman’s relevance is unrebutted.
`
`vi. Matthew Sottek, a Sr. Software Engineer in Roku’s Austin offices since May 2014, is
`
`knowledgeable about the “porting of RokuOS to new chipsets.” Ex. A4 at 2. Roku admitted that
`
`Mr. Sottek “works on Roku OS features that may apply to…players.” D.I. 46 at 4.
`
`The above witnesses are discussed by way of expected trial witnesses. Roku specifically
`
`identified at least twelve other Austin employees as having relevant knowledge in its Response to
`
`Interrogatory No. 1. Ex. A7 at 9–10. And aside from the witnesses discussed above, an additional
`
`51 Roku technical employees in Austin with roles that are relevant to this case were identified in
`
`venue discovery. Their names and a description of their roles appear in Ex. A ¶ 4, and Ex. A4.
`
`c)
`
`The Convenience of Witnesses Weighs Against Transfer
`
`Because “the majority of [IOENGINE’s] relevant witnesses are not located in NDCA,” and
`
`11
`
`PUBLIC VERSION
`
`

`

`Case 6:21-cv-01296-ADA-DTG Document 50 Filed 07/28/22 Page 17 of 22
`
`“several potential [Roku] witnesses [are] in both NDCA and WDTX, … the cost of attendance of
`
`willing witnesses factor weighs against transfer to the NDCA.” See Voxer, Inc. v. Facebook, Inc.,
`
`20-cv-11, 2020 WL 3416012, at *5 (W.D. Tex. June 22, 2020). Roku’s motion completely ignores
`
`IOENGINE’s witnesses. And Roku’s cited cases, Mot. 6–9, are inapposite.4 On the facts adduced
`
`in venue discovery, this factor weighs heavily