Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 1 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case. No. 6:22-CV-0466-ADA-DTG
`
`ADVANCED SILICON
`TECHNOLOGIES LLC,
`
`
`
`v.
`
`NXP SEMICONDUCTORS N.V.,
`NXP B.V., and
`NXP USA, INC.,
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`DEFENDANT NXP USA, INC.’S
`OPPOSED MOTION FOR INTRA-DISTRICT TRANSFER
`TO THE AUSTIN DIVISION OF THE WESTERN DISTRICT OF TEXAS
`
`
`
`
`
`
`
`
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 2 of 15
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1
`
`FACTUAL BACKGROUND ............................................................................................. 1
`
`STATEMENT OF THE LAW ............................................................................................ 2
`
`THE TRANSFER ANALYSIS FAVORS THE AUSTIN DIVISION............................... 4
`
`A. These Actions Could Have Been Brought in the Austin Division................................... 5
`
`B. The Private Interest Factors Favor Transfer .................................................................... 5
`
`1. Relative Ease of Access to Sources of Proof Strongly Favors Transfer ....................... 5
`
`2. Convenience and Cost for Willing Witnesses Strongly Favors Transfer ..................... 6
`
`3. Other Practical Factors Favor Transfer ......................................................................... 7
`
`4. Availability of Compulsory Process Is Neutral ............................................................ 8
`
`C. The Public Interest Factors Favor Transfer ..................................................................... 8
`
`1. Local Interest in Adjudicating Local Disputes Favors Transfer ................................... 8
`
`2. Administrative Difficulties Flowing from Court Congestion is Neutral ...................... 9
`
`3. Familiarity With the Law, and Avoidance of Conflicts Factors Are Neutral ............. 10
`
`V.
`
`CONCLUSION ................................................................................................................. 10
`
`
`
`
`
`
`
`
`- ii -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 3 of 15
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`DataScape, Ltd. v. Dell Techs., Inc.,
`No. 6:19-cv-00129-ADA, 2019 WL 4254069 (W.D. Tex. June 7, 2019) .........................4, 5, 7
`
`Fintiv, Inc. v. Apple Inc.,
`No. 6:18-CV-00372-ADA, 2019 WL 4743678 (W.D. Tex. Sept. 13, 2019) ............................6
`
`Freshub, Inc. v. Amazon.com Inc.,
`No. 6:19-cv-388-ADA, Dkt. 29 (W.D. Tex. Sept. 9, 2019) ......................................................4
`
`Future Link Sys., LLC v. Advanced Micro Devices, Inc.,
`No. 6:20-cv-01176-ADA, 2021 WL 6015535 (W.D. Tex. Oct. 18, 2021) ........................6, 7, 9
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)......................................................................................3, 5, 6, 9
`
`Hammond Dev. Int’l, Inc. v. Amazon.com, Inc.,
`No. 6:19-cv-355-ADA, 2020 WL 6136783 (W.D. Tex. Mar. 30, 2020) ..........................6, 7, 9
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) ...............................................9, 10
`
`Identity Security LLC v. Apple, Inc.,
`No. 6:21-cv-00460-ADA, Dkt. 59 (Jan. 20, 2022) ............................................................6, 7, 9
`
`McCloud v. McClinton Energy Grp., L.L.C.,
`No. 5:14-cv-620-XR, 2014 WL 6388417 (W.D. Tex. Nov. 14, 2014)......................................6
`
`Mimedx Grp., Inc. v. Texas Human Biologics, Ltd.,
`No. 1:14-cv-464-LY, 2014 WL 12479284 (W.D. Tex. Aug. 12, 2014) ............................4, 7, 8
`
`Neo Wireless, LLC v. Dell Techs. Inc.,
`No 6:21-cv-00024-ADA, Dkt. 60 (Jan. 20, 2022) .............................................................6, 7, 9
`
`In re Nintendo, Co. Ltd,
`589 F.3d 1194 (Fed. Cir. 2009)..........................................................................................3, 5, 7
`
`In re Radmax, Ltd.,
`720 F.3d 285 (5th Cir. 2013) .................................................................................................4, 6
`
`In re Toa Techs., Inc.,
`543 F. App’x 1006 (Fed. Cir. 2013) ..........................................................................................5
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)............................................................................................3, 10
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .............................................................................................3, 7, 8
`
`
`
`- iii -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 4 of 15
`
`
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .............................................................................................3, 7, 8
`
`Rules and Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................5
`
`28 U.S.C. § 1404(a) .................................................................................................................1, 3, 4
`
`Fed. R. Civ. P. 45 .............................................................................................................................8
`
`
`
`
`- iv -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 5 of 15
`
`
`
`Pursuant to 28 U.S.C. § 1404(a), NXP USA, Inc. (“NXP”) moves the Court to transfer this
`
`case from the Waco Division to the Austin Division of the Western District of Texas.
`
`I.
`
`INTRODUCTION
`
`Advanced Silicon Technologies LLC (“AST”) filed this case in the Waco Division of the
`
`Western District of Texas accusing NXP of patent infringement. Dkt. 1 (“Compl.”) ¶ 4. Neither
`
`AST nor NXP has offices in this division. NXP is headquartered in Austin, and AST does not
`
`appear to have a physical presence in Texas. See id. ¶¶ 7, 4. The Austin Division is clearly a more
`
`convenient forum for this lawsuit. The Austin Division is more convenient in terms of likely
`
`witnesses, and Austin itself has a strong local interest in the resolution of this dispute. The Waco
`
`Division, in contrast, appears to have no connection to this lawsuit, including no related places of
`
`business, no likely witnesses, and no local interest.
`
`This case belongs in Austin, and NXP respectfully requests that the Court transfer it there
`
`pursuant to 28 U.S.C. § 1404(a).
`
`II.
`
`FACTUAL BACKGROUND
`
`AST asserts that NXP infringes two patents by importing, using, selling, and/or offering
`
`for sale integrated circuits that are manufactured by NXP. Compl. ¶¶ 13, 17. AST accuses the
`
`i.MX family of microprocessors (“Accused Products”) of infringing the Asserted Patents.1 Ex. 1
`
`(Ex. A to AST’s Infringement Contentions) at 1; Ex. 2 (Ex. B to AST’s Infringement Contentions)
`
`at 1.
`
`NXP is headquartered in Austin, TX (Compl. ¶ 7) and has approximately 4,000 Austin-
`
`based employees (Ex. 3). The worldwide engineering team responsible for the design and
`
`
`1 AST alleges infringement of U.S. Patent Nos. 7,804,435 and 8,933,945 (collectively, “Asserted
`Patents”).
`
`
`
`- 1 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 6 of 15
`
`
`
`development of the integrated circuits for the i.MX processors, Business Line-Edge Processing
`
`(“BL-EP”) has its U.S.-based engineers in Austin. Declaration of Allen Wagner (“Wagner Decl.”)
`
`at ¶ 3. Specifically, a total of 9 engineering leads manage the design and development, and 3 leads
`
`are in Austin with the other leads located abroad. Id. Additionally, test program development,
`
`software engineering, application support, and quality engineering teams have leadership and U.S.-
`
`based operations located at NXP’s facilities in Austin. Id. at ¶ 5. NXP’s Austin offices also house
`
`the teams responsible for sales, marketing, competitive analysis, financial analysis, and logistics
`
`for the Accused Products. Id. at ¶ 6. The NXP personnel responsible for patent licensing are also
`
`located in Austin. Id. at ¶ 7. Further, while NXP’s servers storing information related to the
`
`Accused Products are located in Phoenix and Amsterdam, files including source code repositories
`
`are accessed and maintained by employees in Austin. Id. at ¶¶ 7 and 8. Any physical technical
`
`documents are maintained and located in Austin. Id. at ¶ 9. NXP has no facilities or presence in
`
`the Waco Division. Id. at ¶ 10.
`
`Other third-parties involved in the testing and development of portions of the Accused
`
`Products are Verisilicon that develops the Vivante graphics processing unit (“GPU”) and
`
`Amphion/Allegro DVT that develops the video processing unit (“VPU”). Id. at ¶ 4. Verisilicon
`
`has a facility in Austin that has provided support to NXP. Id.; Ex. 4 (Verisilicon webpage).
`
`Amphion/Allegro DVT is headquartered in France. Ex. 5 (Allegro DVT webpage). The inventors
`
`of Asserted Patents currently reside in Massachusetts, California, and Canada, and the original
`
`assignee, ATI Technologies ULC, was located in Canada. Exs. 6–10 (LinkedIn profiles of
`
`inventors); Exs. 11 and 12 (the Asserted Patents). None of the relevant third parties are located in
`
`the Waco Division.
`
`III.
`
`STATEMENT OF THE LAW
`
`
`
`- 2 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 7 of 15
`
`
`
`Section 1404(a) provides that a district court may transfer a civil action to any district in
`
`which it might have been filed “[f]or the convenience of parties and witnesses” and “in the interests
`
`of justice.” 28 U.S.C. § 1404(a). Fifth Circuit law, as applied by the Federal Circuit, governs the
`
`transfer analysis. See In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009) (applying Fifth
`
`Circuit law to transfer analysis); In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008)
`
`(same). Plaintiff’s venue choice is not a factor to be considered in this analysis: “Fifth Circuit
`
`precedent clearly forbids treating the plaintiff’s choice of venue as a distinct factor in the § 1404(a)
`
`analysis.” TS Tech, 551 F.3d at 1320.
`
`The initial inquiry when analyzing a case’s eligibility for transfer is “whether the judicial
`
`district to which transfer is sought would have been a district in which the claim could have been
`
`filed.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). Once that
`
`threshold is met, the convenience determination turns on assessing four private interest and four
`
`public interest factors. In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008)
`
`(“Volkswagen II”). The private interest factors include: (1) the relative ease of access to sources
`
`of proof; (2) the cost of attendance for willing witnesses; (3) the availability of compulsory process
`
`to secure the attendance of witnesses; and (4) all other practical problems that make trial of a case
`
`easy, expeditious, and inexpensive. Volkswagen II, 545 F.3d at 315; In re Nintendo, Co. Ltd, 589
`
`F.3d 1194, 1198 (Fed. Cir. 2009); TS Tech, 551 F.3d at 1319. The public interest factors include:
`
`(1) administrative difficulties flowing from court congestion; (2) 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. Volkswagen II, 545 F.3d at 315.
`
`
`
`- 3 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 8 of 15
`
`
`
`Section 1404(a) “appl[ies] as much to transfers between divisions of the same district as to
`
`transfers from one district to another.” In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013). The
`
`Western District of Texas has repeatedly recognized and affirmed this principle. Here, all “of the
`
`relevant connections in this case” are to Austin rather than to Waco, requiring transfer to Austin
`
`under Section 1404. See Freshub, Inc. v. Amazon.com Inc., No. 6:19-cv-388-ADA, Dkt. 29, at 1
`
`(W.D. Tex. Sept. 9, 2019); DataScape, Ltd. v. Dell Techs., Inc., No. 6:19-cv-00129-ADA, 2019
`
`WL 4254069, at *2 (W.D. Tex. June 7, 2019); Mimedx Grp., Inc. v. Texas Human Biologics, Ltd.,
`
`No. 1:14-cv-464-LY, 2014 WL 12479284, at *1 (W.D. Tex. Aug. 12, 2014) (granting intra-district
`
`transfer).
`
`IV.
`
`THE TRANSFER ANALYSIS FAVORS THE AUSTIN DIVISION
`
`In this case, this action could have been brought in the Austin Division; four of the
`
`§ 1404(a) factors favor transfer to Austin; the remainder are neutral; and not a single relevant factor
`
`favors the Waco Division.
`
`Factor
`1. Relative ease of access to sources of proof
`2. Cost of attendance for willing witnesses
`3. Availability of compulsory process to secure the
`attendance of witnesses
`4. All other practical problems that make trial of a
`case easy, expeditious and inexpensive
`5. Administrative difficulties flowing from court
`congestion
`6. Local interest in having localized interests decided
`at home
`7. Familiarity of the forum with the law that will
`govern the case
`8. Avoidance of unnecessary problems of conflict of
`laws or in the application of foreign law
`
`More Convenient Division
`Austin Division
`Austin Division
`Neutral
`
`Austin Division
`
`Neutral
`
`Austin Division
`
`Neutral
`
`Neutral
`
`
`
`Accordingly, transfer to the Austin Division is appropriate. See Mimedx, 2014 WL
`
`12479284 at *2–3 (ordering transfer where four factors favored transfer, four were neutral, and
`
`
`
`- 4 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 9 of 15
`
`
`
`none favored plaintiff’s chosen venue); DataScape, 2019 WL 4254069, at *2–3 (three factors
`
`favored transfer, two were neutral, and none weighed against transfer).
`
`A.
`
`These Actions Could Have Been Brought in the Austin Division
`
`The venue statute for patent litigation provides: “Any civil action for patent infringement
`
`may be brought in the judicial district where the defendant resides, or where the defendant has
`
`committed acts of infringement and has a regular and established place of business.” 28 U.S.C. §
`
`1400(b). Because NXP has a principal place of business in Austin as accused in the Complaint
`
`(Compl. ¶ 7), AST could have brought suit in the Austin Division. Accordingly, the initial inquiry
`
`is satisfied.
`
`B.
`
`The Private Interest Factors Favor Transfer
`
`Neither side has any connection to the Waco Division. Any relevant documents and
`
`witnesses within the Western District of Texas are in Austin. Accordingly, access to sources of
`
`proof, cost of attendance for willing witnesses, and other practical issues all favor transfer.
`
`1.
`
`Relative Ease of Access to Sources of Proof Strongly Favors Transfer
`
`Access to sources of proof is easier in the Austin Division than in the Waco Division.
`
`Evidence in a patent infringement case typically comes from the accused infringer.2 See Nintendo,
`
`589 F.3d at 1199. Here, the relevant party possessing technical documents is predominately NXP.
`
`Because the technology at issue is made and supplied by NXP, technical, sales, marketing,
`
`competitive analysis, financial, logistics, and other documentation and witnesses relating to the
`
`
`2
`The physical location of documents and evidence remains a factor despite advances in
`copying and electronic data transfer technologies. Genentech, 566 F.3d at 1345–46; In re Toa
`Techs., Inc., 543 F. App’x 1006, 1008–09 (Fed. Cir. 2013) (finding arguments that “digital
`information is ‘effectively stored everywhere, including the Eastern District of Texas’ . . . does not
`negate the significance of having trial closer to where [the relevant witnesses] physical documents
`and employee notebooks are located” because “[t]he critical inquiry ‘is relative ease of access, not
`absolute ease of access’”).
`
`
`
`- 5 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 10 of 15
`
`
`
`Accused Products are predominantly in the Austin Division. Wagner Decl. at ¶¶ 3, and 5–9. NXP
`
`has no technical, sales, marketing, competitive analysis, financial, logistics, or other documents or
`
`witnesses in the Waco Division. Id. at ¶ 10.
`
`It would be inefficient and inconvenient for NXP to defend itself in the Waco Division
`
`regarding technology that NXP maintains outside of the Waco Division. See McCloud v.
`
`McClinton Energy Grp., L.L.C., No. 5:14-cv-620-XR, 2014 WL 6388417, at *3 (W.D. Tex. Nov.
`
`14, 2014) (granting intra-district transfer even though “not ‘all’ the evidence” was in the transferee
`
`district, but “certainly the bulk of it is” and plaintiff “point[ed] to no evidence in [the transferor
`
`division]”) (emphasis in original); Radmax, 720 F.3d at 288 (pertinent question is “relative ease
`
`of access” not “absolute ease of access”) (emphasis in original); see also, e.g., Hammond Dev.
`
`Int’l, Inc. v. Amazon.com, Inc., No. 6:19-cv-355-ADA, 2020 WL 6136783, at *3 (W.D. Tex. Mar.
`
`30, 2020) (finding this factor favors transfer where engineering personnel and relevant documents
`
`were located in the Austin Division and no personnel or documents were located in the Waco
`
`Division); Future Link Sys., LLC v. Advanced Micro Devices, Inc., No. 6:20-cv-01176-ADA, 2021
`
`WL 6015535, at *6–7 (W.D. Tex. Oct. 18, 2021) (similar); Identity Security LLC v. Apple, Inc.,
`
`No. 6:21-cv-00460-ADA, Dkt. 59 at 4–5 (Jan. 20, 2022) (similar); Neo Wireless, LLC v. Dell
`
`Techs. Inc., No 6:21-cv-00024-ADA, Dkt. 60 at 4–5 (Jan. 20, 2022) (similar). Accordingly, as
`
`between Waco and Austin, this private interest factor weighs heavily in favor of transfer.
`
`2.
`
`Convenience and Cost for Willing Witnesses Strongly Favors Transfer
`
`The convenience and cost of witness attendance is “the single most important factor in the
`
`transfer analysis.” Fintiv, Inc. v. Apple Inc., No. 6:18-CV-00372-ADA, 2019 WL 4743678, at *6
`
`(W.D. Tex. Sept. 13, 2019). The question is not whether “all of the witnesses” reside in the
`
`transferee forum, but whether a “substantial number” are there. Genentech, 566 F.3d at 1345.
`
`When a substantial number of party and non-party witnesses live in the transferee forum, while
`
`
`
`- 6 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 11 of 15
`
`
`
`few live in the plaintiff’s chosen forum, transfer should be ordered. See id. at 1342–45; Nintendo,
`
`589 F.3d at 1198 (“This court has held and holds again in this instance that in a case featuring most
`
`witnesses and evidence closer to the transferee venue with few or no convenience factors favoring
`
`the venue chosen by the plaintiff, the trial court should grant a motion to transfer.”). A court
`
`should properly consider party and non-party witnesses when analyzing this factor. See
`
`Volkswagen I, 371 F.3d at 204.
`
`As an initial matter, no witness with relevant knowledge is located in the Waco Division.
`
`None of the plaintiff, defendant, named inventors, original assignees, nor development partners
`
`are located there. See supra at Sec. II. For the witnesses located in Austin, travel to Waco—
`
`approximately 100 miles—would be inconvenient, force them to be away from work and families,
`
`and impose additional time and expense. See Mimedx, 2014 WL 12479284, at *2 (eighty-mile
`
`driving distance to Austin weighed in favor of transfer to San Antonio). These burdens are
`
`unnecessary when this District has a courthouse in Austin less than eight miles from NXP’s US
`
`Headquarters. Ex. 13. This factor also strongly favors transfer. See, e.g., Hammond Dev., 2020
`
`WL 6136783, at *3–4 (finding this factor favors transfer where engineering and other personnel
`
`were located in the Austin Division and no personnel were located in the Waco Division); Future
`
`Link, Inc., 2021 WL 6015535, at *2–4 (similar); Identity Security, No. 6:21-cv-00460-ADA, Dkt.
`
`59 at 6–9 (similar); Neo Wireless, No 6:21-cv-00024-ADA, Dkt. 60 at 7–8 (similar).
`
`3.
`
`Other Practical Factors Favor Transfer
`
`Other practical factors relate to the ease, expense, and expediency of trial. See Volkswagen
`
`II, 545 F.3d at 315–17. This case is in its infancy. The Court has not decided any substantive
`
`motions, the claim construction process has not yet begun, NXP has not yet provided invalidity
`
`contentions, and a scheduling order was entered just last week. Transferring this case to the Austin
`
`Division does not pose a risk of any meaningful delay. See DataScape, 2019 WL 4254069, at *3
`
`
`
`- 7 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 12 of 15
`
`
`
`(granting intra-district transfer even after defendant filed an answer and counterclaims). Indeed,
`
`transfer to the Austin Division increases convenience to the parties and expediency because it
`
`focuses the litigation where evidence and most relevant Texas witnesses reside. See Wagner Decl.
`
`at ¶ 3, 5–10. The added convenience of a trial in Austin instead of Waco would result in a more
`
`efficient, more cost-effective, and easier resolution of this dispute. See, e.g., Mimedx, 2014 WL
`
`12479284, at *2. Accordingly, this private interest factor also favors transfer.
`
`4.
`
`Availability of Compulsory Process Is Neutral
`
`This factor addresses the availability of compulsory process to secure the attendance of
`
`witnesses, particularly non-party witnesses whose attendance may need to be secured by a court
`
`order. Volkswagen II, 545 F.3d at 316. A district court’s subpoena power is governed by Federal
`
`Rule of Civil Procedure 45. Specifically, a district court can command a person to attend a
`
`deposition or trial within 100 miles of where they live or work, or statewide if they are a party
`
`witness. Fed. R. Civ. P. 45(c)(1)(A), 45(c)(1)(B)(i). And, for purposes of trial attendance, a
`
`district court has subpoena power over non-party residents of the state in which the district court
`
`sits as long as their attendance would not result in “substantial expense.” Fed. R. Civ. P.
`
`45(c)(1)(B)(ii). Here, the compulsory subpoena power for unwilling third-party witnesses is the
`
`same for both the Austin and Waco Divisions. Thus, this factor is neutral.
`
`C.
`
`The Public Interest Factors Favor Transfer
`
`The public interest factors favor transfer to the Austin Division. Unlike Waco, Austin has
`
`a strong connection to, and local interest in, this case. The remaining factors such as court
`
`congestion and familiarity with the law are neutral.
`
`1.
`
`Local Interest in Adjudicating Local Disputes Favors Transfer
`
`Austin has a stronger local interest in this litigation than Waco, which has no relevant local
`
`interest. Volkswagen I, 371 F.3d at 206 (“[j]ury duty is a burden that ought not to be imposed upon
`
`
`
`- 8 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 13 of 15
`
`
`
`the people of a community which has no relation to the litigation”). NXP is headquartered in
`
`Austin, and as such, Austin has a significant local interest. Given that there are no meaningful ties
`
`to the Waco Division and stronger ties to the Austin Division, the local interest factor weighs in
`
`favor of transfer. See, e.g., Hammond Dev., 2020 WL 6136783, at *5 (finding this factor favors
`
`transfer where the movant had significant employees and locations in the Austin Division and no
`
`personnel or locations in the Waco Division); Future Link, Inc., 2021 WL 6015535, at *8 (similar);
`
`Identity Security, No. 6:21-cv-00460-ADA, Dkt. 59 at 12–14 (similar); Neo Wireless, No 6:21-cv-
`
`00024-ADA, Dkt. 60 at 11–13 (similar).
`
`2.
`
`Administrative Difficulties Flowing from Court Congestion is Neutral
`
`This factor—the consideration of administrative difficulties flowing from court
`
`congestion—is neutral. Court congestion is considered “the most speculative” factor, and “the
`
`speed of the transferee district court should not alone outweigh all [] other factors.” Genentech,
`
`566 F.3d at 1347; see also In re Hulu, LLC, No. 2021-142, 2021 WL 3278194, at *5 (Fed. Cir.
`
`Aug. 2, 2021). Rather, courts should consider “the close similarity of cases per judgeship and
`
`average time to trial of the two forums, [while] disregarding the particular district court’s ability
`
`to push an aggressive trial date.” Hulu, 2021 WL 3278194, at *5.
`
`Judges Albright, Yeakel, and Pitman have the following pending caseloads:3
`
`Judge
`
`Division
`
`Albright
`Yeakel
`Pitman
`
`
`Waco
`Austin
`Austin
`
`Open Civil Cases per
`Judgeship
`1,107
`507
`609
`
`All Civil Cases Median
`Time to Trial
`661
`573
`619
`
`
`3 See Exs. 14–16 (Lex Machina reports showing case statistics for Judges Albright, Yeakel, and
`Pitman) (accessed Sept. 7, 2022).
`
`
`
`- 9 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 14 of 15
`
`
`
`Both judges in the Austin Division have approximately half or less than half this Court’s
`
`current civil case load, which weighs in favor of transfer. The median time-to-trial for Judges
`
`Yeakel and Pitman are 573 and 619 days respectively, compared to 661 days for this Court. See
`
`Exs. 14–16. Although patent cases typically reach trial sooner in Waco, “a court’s general ability
`
`to set a fast-paced schedule is not particularly relevant to the court congestion factor.” Hulu, 2021
`
`WL 3278194, at *5; see also April 14, 2022, Waco Division Standing Order Governing
`
`Proceedings (OGP) 4.1—Patent Cases, Appendix A (“Exemplary Schedule” setting trial “52
`
`weeks after Markman hearing”). Given the fact that this factor is “speculative,” the lighter case
`
`load in Austin, and the time-to-trial statistics, this factor is neutral.
`
`3.
`
`Familiarity With the Law, and Avoidance of Conflicts Factors Are Neutral
`
`The remaining public interest factors are neutral given that federal patent law will apply to
`
`this case. See TS Tech, 551 F.3d at 1320–21 (finding that the transferee and transferor courts were
`
`both “capable of applying patent law to infringement claims”).
`
`V.
`
`CONCLUSION
`
`This case has no ties to Waco. All the private and public factors either favor transfer or
`
`are neutral. Accordingly, NXP respectfully requests that the Court transfer this case to the Austin
`
`Division of the Western District of Texas.
`
`
`
`
`
`
`
`- 10 -
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 46 Filed 09/12/22 Page 15 of 15
`
`
`
`September 12, 2022
`
`Respectfully submitted,
`
`/s/ Richard S. Zembek
`
`Richard S. Zembek (SBN 00797726)
`richard.zembek@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`Fulbright Tower
`1301 McKinney, Suite 5100
`Houston, Texas 77010-3095
`Tel: (713) 651-5151
`Fax: (713) 651-5246
`
`Eric C. Green (SBN 24069824)
`eric.green@nortonrosefulbright.com
`Catherine Garza (SBN 24073318)
`cat.garza@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701
`Tel: (512) 474-5201
`Fax: (512) 536-4598
`
`Counsel for Defendant NXP USA, Inc.
`
`
`
`CERTIFICATE OF CONFERENCE
`
`Pursuant to Local Rule CV-7(g), counsel for the parties have conferred and the plaintiff is
`
`opposed to this motion.
`
`/s/ Catherine Garza
`By:
` Catherine Garza
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that on September 12, 2022, the foregoing was electronically filed with the Clerk
`
`of Court using the CM/ECF system, which will send notification of such filing to all counsel of
`
`record.
`
`
`
`
`
`/s/ Catherine Garza
`By:
` Catherine Garza
`
`
`
`- 11 -
`
`