Case 6:21-cv-01296-ADA-DTG Document 87 Filed 10/21/22 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`IOENGINE, LLC,.,
` Plaintiff
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`-vs-
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`ROKU, INC.,
` Defendant
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`§
`§
`§
`§
`§
`§
`§
`§
`§
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`W-21-CV-1296-ADA-DTG
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`ORDER DENYING DEFENDANT’S MOTION TO TRANSFER
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`Before the Court is Defendant Roku, Inc.’s (“Roku”) Motion to Transfer Venue to the
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`Northern District of California (NDCA). ECF No. 24. Plaintiff IOENGINE, LLC.
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`(“IOENGINE”) opposes the motion. ECF No. 48. Roku filed a reply in further support of its
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`motion. ECF No. 52. IOENGINE moved to strike new facts and arguments raised in the reply, or
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`in the alternative, for leave to file a sur-reply. ECF No. 54. Roku opposed that motion (ECF No.
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`59), to which IOENGINE replied. ECF No. 64. The Court held oral arguments on the motions on
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`September 21, 2022 and issued its preliminary rulings. ECF No. 73. This Opinion memorializes
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`those oral rulings.
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`After carefully considering the parties’ briefs, the arguments made by counsel, and the
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`applicable law, the Court DENIES Roku’s motion to transfer venue to the District of Northern
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`District of California. Furthermore, the Court GRANTS IOENGINE’s motion for leave to file a
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`sur-reply, and considers the sur-reply (ECF No. 54-4) as part of the factual record.
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`I.
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`FACTUAL BACKGROUND
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`In its complaint, IOENGINE claims Roku infringed on U.S. Patent Nos. 10,447,819 (“the
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`’819 Patent”) and 10,972,584 (“the ’584 Patent”) (collectively, “the Asserted Patents”). The
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`patents are generally directed to a portable device that is configured to communicate with a
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`communications network, through an access terminal, and using specific components and software
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`programming. ECF No. 27 at 6. The Complaint points to Roku’s Streaming Players, the Roku
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`Operating System (OS), and the Roku graphical User Interface (UI) used with the Roku Streaming
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`Players as being the main Accused Products. ECF No. 1 at ¶7. Roku TVs are not asserted products
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`in this litigation, however, as discussed below, Roku TVs share a significant amount of
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`overlapping codebase with Roku’s Streaming Players. ECF No. 52 at 2. IOENGINE also alleges
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`that Roku “instructs and encourages its customers, partners, and other third parties including in
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`this District, to use the Roku Infringing Products” in a manner that infringes the Asserted Patents
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`by (1) “providing an open streaming platform, on which Roku welcomes publishers and developers
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`to grow their audience with Roku;” ](2) “present[ing] advertisement content through the Roku
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`Advertising Framework;” (3) “us[ing] the Roku Infringing Products to make payments using
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`Roku’s payment platform;” or (4) “us[ing] the Roku Infringing Products to stream video and
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`audio” (collectively, the “Accused Functionalities”). Id. at ¶25.
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`IOENGINE is a limited liability company organized under the laws of Delaware, with a
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`principal place of business in Connecticut. Id. at ¶ 2. The prior patent lawsuits filed by IOENGINE
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`were all filed in Delaware. ECF No. 27 at 8. The inventor of the Asserted Patents and sole member
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`of IOENGINE, Mr. Scott McNulty, resides in Connecticut. ECF No. 48 at 9. Defendant Roku
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`has its headquarters and principal place of business in the Northern District of California (in San
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`Jose, California), and maintains an office in Austin, Texas, which Roku claims “is of no relevance
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`to this case.” ECF No. 27 at 5. As Defendant puts it, “Roku is not aware of a single piece of
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`evidence or likely fact witness coming out of the Austin office or elsewhere in WDTX.” Id.
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`II.
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`LEGAL STANDARD
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`In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of
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`the regional circuit—here, the Fifth Circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed.
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`Cir. 2008). 28 U.S.C. § 1404(a) provides in part that “[f]or the convenience of parties and
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`witnesses, . . . a district court may transfer any civil action to any other district or division where
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`it might have been brought . . . ” Id. “Section 1404(a) is intended to place discretion in the district
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`court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration
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`of convenience and fairness.’” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting
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`Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)).
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`The preliminary question under § 1404(a) is whether a civil action “‘might have been
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`brought’ in the destination venue.” In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir. 2008)
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`(hereinafter “Volkswagen II”). If the destination venue would have been a proper venue, then
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`“[t]he determination of ‘convenience’ turns on a number of public and private interest factors,
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`none of which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar.
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`Co., 358 F.3d 337, 340 (5th Cir. 2004) (footnote omitted). The private interest factors include: “(1)
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`the relative ease of access to sources of proof; (2) the availability of compulsory process to secure
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`the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other
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`practical problems that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen
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`AG, 371 F.3d 201, 203 (5th Cir. 2004) (hereinafter “Volkswagen I”) (citing Piper Aircraft Co. v.
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`Reyno, 454 U.S. 235, 241 n.6 (1982)). The public factors include: “(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.” Id.
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`Courts evaluate these factors based on the situation which existed at the time of filing, rather than
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`relying on hindsight knowledge of the defendant’s forum preference. Hoffman v. Blaski, 363 U.S.
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`335, 343 (1960).
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`The moving party has the burden to prove that a case should be transferred for convenience.
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`Volkswagen II, 545 F.3d at 314. The burden is not simply that the alternative venue is more
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`convenient, but that it is clearly more convenient. Id. at 314–15. While “clearly more convenient”
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`is not the same as the “clear and convincing” standard, the moving party must still show more than
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`a mere preponderance. Quest NetTech Corp. v. Apple, Inc., No. 2:19-cv-118, 2019 WL 6344267,
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`at *7 (E.D. Tex. Nov. 27, 2019). Yet, the Federal Circuit has clarified that, for a court to hold that
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`a factor favors transfer, the movant need not show an individual factor clearly favors transfer. In
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`re Apple Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020).
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`III.
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`DISCUSSION
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`The threshold determination in the § 1404(a) analysis is whether this case could initially
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`have been brought in the destination venue—the NDCA. Neither party disputes that venue could
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`be proper in the NDCA. Roku maintains its principal place of business in San Jose, California, and
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`thus operates a regular and established place of business within the NDCA. ECF No. 27 at 5. The
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`Court therefore finds that venue would have been proper in the NDCA had the suit originally been
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`filed there. The Court now analyzes the private and public interest factors to determine if the
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`NDCA is a clearly more convenient forum than the WDTX.
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`The Private Interest Factors
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`The Cost of Attendance and Convenience for Willing Witnesses
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`The most important factor in the transfer analysis is the convenience of the witnesses. In
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`re Genentech, Inc., 566 F.3d 1388, 1342 (Fed. Cir. 2009). According to Fifth Circuit law, if the
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`distance between a current venue and a proposed venue is more than 100 miles, the inconvenience
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`to witnesses increases in direct relationship to the additional distance they must travel if the matter
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`is transferred. Volkswagen II, 545 F.3d at 317. But it is unclear when the 100-mile rule applies, as
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`the Federal Circuit has stated that courts should not apply the rule “rigidly” in some cases where
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`witnesses would be required to travel a significant distance no matter what venue they testify in.
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`In re Apple, 979 F.3d at 1342 (discussing witnesses traveling from New York) (citing Volkswagen
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`II, 545 F.3d at 317). “[T]he inquiry should focus on the cost and inconvenience imposed on the
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`witnesses by requiring them to travel to a distant forum and to be away from their homes and work
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`for an extended period of time.” In re Google, LLC, No. 2021-170, 2021 WL 4427899, at * 4 (Fed.
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`Cir. Sept. 27, 2021). According to the Federal Circuit, time is a more important metric than
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`distance. Id. However, the Federal Circuit has also held that when willing witnesses will have to
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`travel a significant distance to either forum, the slight inconvenience of one forum in comparison
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`to the other should not weigh heavily on the outcome of this factor. In re Apple, 979 F.3d at 1342.
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`When analyzing this factor, the Court should consider all potential witnesses. Alacritech Inc. v.
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`CenturyLink, Inc., No. 2:16-CV-00693, 2017 WL 4155236, at *5 (E.D. Tex. Sept. 19, 2017).
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`According to Roku, the witnesses with technical and financial knowledge of the Accused
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`Products and Functionalities are all in the NDCA, with no willing witnesses in the WDTX. ECF
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`No. 27 at 8, 10. IOENGINE disagrees and argues that “[v]enue discovery revealed dozens of
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`employees in Roku’s Austin office who participate in testing, research, development, and
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`marketing of the accused products.” ECF No.48 at 1. IOENGINE has two willing witnesses, and
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`the parties dispute the convenience of those individuals. Each group of witnesses will be discussed
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`in turn below.
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`1. Roku’s Employees in the NDCA
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`According to Roku, all of the engineers and financial employees most knowledgeable of
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`the accused products are located in Roku’s facility in San Jose, California. ECF No. 27 at 10.
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`Roku has identified the following potential willing witnesses in its San Jose headquarters: (1)
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`Prateek Tandon, Vice President, Software Engineering, (2) Wade Brown, Senior System Architect,
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`(3) Wim Michiels, Principal Engineer, (4) Cameron Baharloo, Director, Software Engineering, (5)
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`Robert Burdick, Director, Developer Platform1, (6) Steve Sprich, Senior Director, Global Product
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`Marketing and Insights, and (7) Kevin Bright, Senior Director, Financial Planning & Analysis.
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`ECF No. 27 at 10-11. Roku argues that these witnesses would need to travel from the NDCA to
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`the WDTX, “requiring at least six hours of travel time each way, meals, and lodging expenses,
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`in addition to time lost from work.” Id. at 11-12. Roku’s Opening Motion relies heavily on a
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`Declaration by Mr. Tandon, who states that these individuals “have knowledge and expertise
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`relevant to the infringement allegations.” ECF No. 27-1 at 2. For five of the witnesses, Mr. Tandon
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`declares them to be “very knowledge about” their given topic, and for one of the witnesses, Mr.
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`Tandon declares him to simply be “knowledgeable.” Id. at 2-3. While Roku’s Reply argues that
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`Mr. Tandon identifies these to be “the Roku employees with the most relevant knowledge,” even
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`a cursory review of the declaration shows that to be an incorrect statement. ECF No. 52 at 1
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`(emphasis added). Furthermore, Mr. Tandon appears to identify these witnesses from among a
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`1In its Reply, Roku notified the Court that Mr. Burdick left the company and should now be
`considered a compulsory witness. ECF No. 52 at 4. Roku claims “this fact alone makes this
`[compulsory witness] factor favor transfer.” Id. The Court declines to treat Mr. Burdick as an
`unwilling witness, as Roku withheld the fact that Mr. Burdick would no longer willingly testify
`(a fact it knew during venue discovery) from IOENGINE until after it filed its Opposition. Any
`progress made during the pendency of Roku’s transfer motion should not be used against
`IOENGINE, particularly on an issue first raised in a Reply. See e,g, In re Apple Inc., 979 F.3d
`1332, 1343 (Fed. Cir. 2020)).
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`limited subset of “numerous [NDCA] Roku employees” that Mr. Tandon has “familiarity with.”
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`ECF No. 27-1 at ¶ 8.
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`While the Court declines to agree that these are the employees with the most relevant
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`knowledge, the Court agrees with Roku that the NDCA would be a more convenient forum than
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`the WDTX for these six employees based out of its San Jose headquarters. The relevant
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`consideration here is “the cost and inconvenience imposed on the witnesses by requiring them to
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`travel to a distant forum and to be away from their homes and work for an extended period of
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`time.” In re Google, LLC, 2021 WL 4427899, at * 4. Thus, the Court finds the presence of these
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`witnesses in NDCA weighs in favor of transfer. This does not, however, end the inquiry for this
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`factor.
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`2. Roku’s Employees in Austin, TX
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`Roku’s Motion claims there are “no willing witnesses that reside within this District” from
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`either Plaintiff or Defendant. ECF No. 27 at 12. Furthermore, Roku represents to the Court that it
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`“is not aware of a single piece of evidence or likely fact witness coming out of the Austin office
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`or elsewhere in WDTX.” Id. at 1.
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` IOENGINE’s Opposition highlights “six likely Roku WDTX trial witnesses, each with
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`particular relevant knowledge” based out of Roku’s Austin office that seriously call those
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`allegations into question. ECF No. 48 at 9. They are: (1) Ben Combee, a Senior Software
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`Engineer, (2) Scott de Haas, Roku’s Senior VP of Product Engineering and Operations, and
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`founder and leader of Roku’s Austin office, (3) Cameron Esfahani, a Principal Engineer in Roku’s
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`Austin Office, (4) Matthew Hodgins, a Senior Lead SW Engineer, (5) David Friedman, a Senior
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`Audio Algorithm Software Engineer, (6) Matthew Sottek, Senior Software Engineer. ECF No. 48
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`at 11. IOENGINE lists these witnesses as being “expected trial witnesses” but also notes that, in
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`response to venue discovery, “Roku specifically identified at least
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` other Austin employees
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`as having relevant knowledge” as well as “
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` Roku technical employees in Austin with roles that
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`are relevant to this case.” Id. In reply, Roku argues that these WDTX employees “do not have
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`near the same level of relevant knowledge as the California employees Roku identified.” ECF No.
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`52 at 2 (emphasis added). In the next paragraph, Roku then appears to concede that the
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` WDTX
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`employees are at least “marginally relevant,” but argues that there would be more
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`“marginally relevant” employees in NDCA.2 Id. The Court agrees and finds these additional
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`witnesses to have (at least) marginal relevance to the case, as they are described as having worked
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`somehow on the accused products or functionalities.
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`As for the six willing Roku WDTX witnesses that IOENGINE specifically identifies in its
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`briefing, the Court finds that IOENGINE has convincingly shown these individuals to possess
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`particularly relevant knowledge to this case, and seriously calls into question the credibility of the
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`statements made in Roku’s Opening Motion and Declaration of Mr. Tandon. For example, Mr.
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`Combee testified that he (and his Austin colleagues) work on code for the streaming players, and
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`that his knowledge is also relevant to issues of indirect infringement. ECF No. 48 at 9. IOENGINE
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`also has shown that Mr. Combee’s knowledge is at least as (or more) relevant that Mr. Brown’s
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`knowledge (who joined Roku after Combee), and he is the only witness who was identified as
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`having knowledge of Roku’s API. Id. As for Mr. de Haas, he oversees “all of the product
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`development for…Roku players and Roku sound bars.” Id. at 10. Mr. de Haas previously testified
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`for Roku at trial in Waco, and IOENGINE claims his “knowledge of Roku’s accused hardware is
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`2 While the
` Roku WDTX employee headcount was compiled based on discovery responses with detailed
`descriptions provided during the venue discovery period (ECF No. 48-1 at 2), the
`-employee headcount (which
`was first raised in Roku’s Reply) was based on an unsubstantiated, back of the envelope calculation where Mr.
`Tandon speculated that there were “
`” of these employees in NDCA. ECF No. 54-1 at 5. These
`unnamed employees, along with their unknown roles and responsibilities, were never disclosed in discovery, and
`lacks any corroborating information. The Court therefore finds this information unhelpful and unpersuasive. In
`adding these new facts, Roku’s Reply violated the WDTX Local Rules and exceeded the page limits.
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`essential,” that Mr. de Haas’s knowledge exceeds that of Mr. Tandon, and that Roku hasn’t
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`proffered a witness on certain topics that Mr. de Haas is knowledgeable in. In Reply, Roku only
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`says that de Haas has “no unique personal knowledge relating to IOENGINE’s accusations…And
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`Roku already identified Messrs. Sprich and Bright.” ECF No. 50 at 2 (emphasis added). The
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`Court notes that Sprich and Bright (two witnesses Roku identifies as willing), and de Haas all
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`testified at the previous Roku trial in Waco. Roku’s counsel argued at the hearing that de Haas
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`was omitted from Roku’s witness list here because the previous case involved “different products.”
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`The Court finds it dubious that the individual who oversees all product development would
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`suddenly now be an irrelevant witness. Regardless, the Court also finds that Mr. de Haas would
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`likely be an individual with highly relevant knowledge and information in this case. The Court
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`also finds that Mr. Esfahani is also an individual with relevant knowledge of Roku’s “SDK
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`architecture” important to IOENGINE’s indirect infringement allegations. Roku does not dispute
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`IOENGINE’s contention that none of Roku’s NDCA witnesses were senior to him. Finally, the
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`Court finds Mr. Hodgins to be a relevant witness on the issue of testing of Roku’s players and OS.
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`Roku did not offer a witness on this topic. Interestingly, after Mr. Hodgins was identified and
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`deposed, Roku changed its stance on testing. In its Opening Motion, Roku argues that the accused
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`products were “tested in NDCA.” ECF No. 27 at 2. The Reply backtracks to say that “the vast
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`majority of testing of Roku players occurs in San Jose.” ECF No. 52 at 3 (emphasis added).
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`Notwithstanding this sleight of hand that severely undercuts Roku’s credibility, no other witness
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`has been proffered with Mr. Hodgins’s knowledge.
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`In sum, venue discovery has conclusively shown that Roku’s allegations that “there are no
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`willing witnesses that reside within this District” (ECF No. 27 at 8), that “Roku’s Austin office
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`has no connection with the current dispute,” (Id. at 3) that “Roku is not aware of a single … likely
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`fact witness coming out of the Austin office or elsewhere in WDTX” (Id. at 1), or that “Roku is
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`not aware of any employee based out of Roku’s Austin office with specialized knowledge of the
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`Accused Products and Functionalities” (Id.) were either misleading or based on an inadequate
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`investigation of the facts. The Court finds that the presence of multiple relevant Roku employees
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`in the WDTX weighs strongly against transfer.
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`3.
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`IOENGINE’s Willing Witnesses
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`IOENGINE identifies two willing witnesses. Scott McNulty, the inventor of the Patents-
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`in-Suit, resides in Rowayton, Connecticut. ECF No. 27 at 8. IOENGINE argues that it is more
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`convenient for Mr. McNulty to travel to WDTX instead of NDCA, whereas Roku argues that he
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`would have to travel a significant distance to testify, regardless of whether a trial was held in
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`NDCA or WDTX. Id. IOENGINE also identifies Thomas Rzonca, who may be called to testify
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`regarding the conception of the invention. Mr. Rzonca is located in Eureka Springs, Arkansas,
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`which is an approximate 3.3 hour commute to Waco, compared to the 5.7 hour trip to NDCA.
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`ECF No. 48 at 9.
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`The Federal Circuit has previously held that when a witness must travel for a significant
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`amount of time to either forum, the slight inconvenience of one forum in comparison to the other
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`should not weigh heavily in the determination of this factor. In re Apple Inc., 979 F.3d at 1342.
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`Because Mr. McNulty “will have to leave home for an extended period of time and incur travel,
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`lodging, and related costs” in either venue, the Court finds it only slightly more inconvenient to
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`travel to NDCA. Id.
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`Similarly, while Mr. Rzonca is located in a neighboring state with a significantly shorter
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`travel time to WDTX, the Court can only consider this to slightly disfavor transfer. As this Court
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`has previously held, “the Court will not weigh the convenience of a plaintiff’s witnesses against
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`transfer under this factor merely because the plaintiff attests that travel to this District would not
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`represent an inconvenience upon witnesses with no apparent connection to this District.” XR
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`Communications, LLC v. Google LLC, No. 6:21-cv-00625-ADA, 2022 WL 3702271, at * 4 (W.D.
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`Tex. Aug. 26, 2022). Even though IOENGINE’s witnesses are willing to testify in Waco, Waco is
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`not necessarily a more convenient forum for its witnesses. IOENGINE cannot push this factor to
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`weigh strongly against transfer simply because it chose this venue. IOENGINE’s “choice of venue
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`is already baked into the movant’s burden.” Id. Mr. McNulty and Mr. Rzonca’s willingness to
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`testify in Waco does not carry significant weight in the analysis of this factor, and the Court finds
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`that the NDCA and the WDTX are equally convenient venues for IOENGINE’s two willing
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`witnesses.
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`4. Conclusion
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`Overall, the Court finds this private interest factor weighs against transfer. While Roku has
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`identified six willing witnesses in the NDCA, it purports to have none in the WDTX. The Court
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`finds that IOENGINE has successfully identified several witnesses in WDTX that are indeed
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`relevant to this case. The Court finds that IOENGINE’s willing witnesses have no material impact
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`on the outcome of this factor.
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`The Relative Ease of Access to Sources of Proof
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`1. Roku’s Sources of Proof
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`“In considering the relative ease of access to proof, a court looks to where documentary
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`evidence, such as documents and physical evidence, is stored.” Fintiv Inc. v. Apple Inc., No. 6:18-
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`cv-00372, 2019 WL 4743678, at *2 (W.D. Tex. Sept. 10, 2019). “[T]he question is relative ease
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`of access, not absolute ease of access.” In re Radmax, 720 F.3d 285, 288 (5th Cir. 2013) (emphases
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`in original). “In patent infringement cases, the bulk of the relevant evidence usually comes from
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`the accused infringer. Consequently, the place where the defendant’s documents are kept weighs
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`in favor of transfer to that location.” In re Apple Inc., 979 F.3d at 1340 (citing In re Genentech,
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`566 F.3d at 1345).
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`According to Roku, the NDCA is a more convenient forum because “although Roku
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`documents relating to the Accused Products and Functionalities are stored on cloud servers, these
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`documents are managed by Roku’s IT group based in San Jose.” ECF No. 27 at 3. Roku admits
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`that it does not know where its servers are located and acknowledges that its documents can be
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`accessed equally in either forum. Roku cites to the Tandon declaration to show that “Roku’s
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`documents were…largely created in [] NDCA,” (ECF No. 52 at 4), but as discussed above, the
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`Tandon declaration did not appear to investigate, nor account for, the contributions of any WDTX
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`employees.
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`The Federal Circuit has held that it is an error not to consider under this factor “the location
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`of document custodians and location where documents are created and maintained, which may
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`bear on the ease of retrieval.” In re Google, No. 2021-178, 2021 WL 5292267, at *2 (Fed. Cir.
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`Nov. 15, 2021). Additionally, the Federal Circuit has rejected the reasoning that this factor is
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`neutral where the relevant evidence can be accessed electronically. In re Apple Inc., No. 2022-128,
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`2022 WL 1196768, at * 4 (Fed. Cir. Apr. 22, 2022). Even though electronically stored information
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`may be equally accessible in both districts and the location of Roku’s servers is unknown, the
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`Court must still consider the location of the document custodians and where the documents are
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`created and maintained when evaluating this factor. Because (as discussed above), the Court finds
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`several WDTX custodians to be relevant, the Court finds that some document custodians are likely
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`located in WDTX and some of the relevant documents were likely created and are likely
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`maintained in WDTX. The Court therefore finds access to Roku’s documents to be a neutral
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`factor.
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`2.
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`IOENGINE’s Sources of Proof
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`IOENGINE claims that its documents and physical prototypes must be transported by hand
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`and are located both in Connecticut and with its New York City counsel. ECF No. 48 at 5-6.
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`IOENGINE argues that these physical sources of proof are more conveniently transported to
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`WDTX. Roku argues this argument is “specious. This material will have to be transported a
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`significant distance either way.” ECF No. 52 at 4. The Court finds that the WDTX is a slightly
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`more convenient forum for IOENGINE’s sources of proof.
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`3. Conclusion
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`The Court finds that the relative ease of accessing sources of proof slightly weighs against
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`transfer.
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`The Availability of Compulsory Process to Secure the Attendance of Witnesses
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`Under the Federal Rules, a court may subpoena a witness to attend trial only (a) “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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`(b) “within the state where the person resides, is employed, or regularly transacts business in
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`person, if the person . . . is commanded to attend a trial and would not incur substantial expense.”
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`Fed. R. Civ. P. 45(c)(1)(A), (B)(ii). Under this factor, the Court focuses on non-party witnesses
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`whose attendance may need to be secured by a court order.” Fintiv Inc., 2019 WL 4743678, at *14
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`(citing Volkswagen II, 545 F.3d at 316). This factor “weigh[s] heavily in favor of transfer when
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`more third-party witnesses reside within the transferee venue than reside in the transferor venue.”
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`In re Apple, 581 F. App’x 886, 889 (Fed. Cir. 2014) (citing In re Genentech, 566 F.3d at 1345).
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`The Federal Circuit has held that “when there is no indication that a non-party witness is willing,
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`the witness is presumed to be unwilling and considered under the compulsory process factor.” In
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`re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir. Sept. 25, 2018).
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`Case 6:21-cv-01296-ADA-DTG Document 87 Filed 10/21/22 Page 14 of 21
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`Roku claims that this factor is neutral or favors transfer because this Court lacks subpoena
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`power over “any former Roku employees located in [NDCA].” ECF No. 27 at 10. Roku does not
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`explicitly identify any unwilling witnesses. For its part, IOENGINE identifies five non-party
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`witnesses that it claims would be unable to call in NDCA. Two are former Roku employees. Robin
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`Edgell was a Senior Software Engineering Manager for Roku AI, managed Roku’s UI/SDK group,
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`and was identified by Roku as a person having relevant information before he left the company.
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`ECF No. 48 at 6. IOENGINE claims Mr. Edgell has more information than Roku NDCA witness
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`Cameron Baharloo, because unlike Baharloo, Edgell also worked on “’next-generation parts’ for
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`Roku’s OS.” Id. IOENGINE also identified Linmei Shu, a former Director of Software
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`Engineering, who worked on the Roku OS and managed a large group of employees, including
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`one of the potential party witnesses proposed by IOENGINE (Mr. Sottek). Id. at 7. Eric Vasquez
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`worked at both Roku and relevant third-party ARM and is purported to have unique knowledge
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`from having worked at both companies. Id. IOENGINE also lists two WDTX creators of Roku
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`“channels” that it listed in its Complaint.3
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`IOENGINE also notes that significant third-party activities occur in Texas. It notes that
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`the accused devices use ARM Holdings’ CPU, and it cites to evidence showing that the ARM A
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`Series was “largely developed in Austin by ARM’s predecessor.” ECF No. 48 at 3. It also notes
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`that Roku’s devices utilize chips manufactured by Texas Instruments. Id. Roku argues that “the
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`fact that global companies ARM and TI manufacture hardware components that may be used in
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`the accused products is irrelevant.” The Court finds that the Complaint specifically lists chips in
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`3 Roku did not challenge IOENGINE’s assertions of these local channel creators until its Reply brief, which
`deprived IOENGINE of any right to conduct discovery on the issue. As such, the Court treats these two witnesses
`as uncontested.
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`Case 6:21-cv-01296-ADA-DTG Document 87 Filed 10/21/22 Page 15 of 21
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`the Complaint (at ¶ 31 discussing claim 184(c)) and that this information may be relevant to this
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`case.
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`The Court concludes that the compulsory process factor weighs slightly against transfer.
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`All potentially relevant third parties that have been identified are likely within the reach of this
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`Court’s subpoena power.
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`All Other Practical Problems That Make Trial of a Case Easy, Expeditious, and
`Inexpensive
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`When considering the private interest factors, courts must also consider “all other practical
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`problems that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at
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`314. “Particularly, the existence of duplicative suits involving the same or similar issues may
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`create practical difficulties that will weigh heavily in favor or against transfer.” PersonalWeb
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`Techs., LLC v. NEC Corp. of Am., Inc., No. 6:11-cv-655, 2013 WL 9600333, at *5 (E.D. Tex. Mar.
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`21, 2013). “[W]here there is a co-pending litigation before the trial court involving the same patent-
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`in-suit, and pertaining to the same underlying technology and accusing similar services, [the
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`Federal Circuit] cannot say the trial court clearly [abuses] its discretion in denying transfer.” In re
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`Vistaprint Ltd., 628 F.3d 1342, 1346 n.3 (Fed. Cir. 2010). However, the Federal Circuit has
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`suggested that it is an error to determine that this factor strongly disfavors transfer based primarily
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`on co-pending litigation with pending motions to transfer. In re Google Inc., No. 2017-107, 2017
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`WL 977038, at *2 (Fed. Cir. Feb. 23, 2017).
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`Roku argues that this factor is neutral because the case is in its early stages this case and
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`there is no co-pending litigation before this Court. ECF No 27 at 10-11. Roku acknowledges that
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`there are currently several lawsuits in the District of Delaware involving patents related to the
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`Asserted Patents, although it argues that accused technology does not involve streaming players
`
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`Case 6:21-cv-01296-ADA-DTG Document 87 Filed 10/21/22 Page 16 of 21
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`and the case should have no impact on this transfer motion. Id.4 IOENGINE disagrees and argues
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`that this factor disfavors transfer because this case has advanced and is in the midst of claim
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`construction activity. The Court agrees with Roku. This case is indeed in its early stages, and the
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`Federal Circuit has repeatedly admonished this Court for considering the progress of such merits-
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`based activity. See e.g. In re Apple Inc., 979 F.3d 1332, 1343 (Fed. Cir. 2020) (“A district court's
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`decision to give undue priority to the merits of a case [such as Markman briefing] over a party's
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`transfer motion should not be counted against that party in the venue transfer analysis.”) As such,
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`this factor is neutral.
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`B. The Public Interest Factors
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`i.
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`Ad