Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 1 of 20
`
`PUBLIC VERSION
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Advanced Silicon Technologies, LLC,
`
`Case No. 6:22-cv-00466-ADA-DTG
`
`v.
`
`Plaintiff,
`
`NXP Semiconductors N.V.,
`NXP B.V., and
`NXP USA, Inc.
`
`Defendants.
`
`Jury Trial Demanded
`
`Advanced Silicon Technologies' Opposition to
`NXP's Motion for Intra-District Transfer (ECF No. 46)
`
`

`

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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 2 of 20
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`
`
`Table of Contents
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`Table of Authorities .................................................................................................................... ii
`1.
`Introduction .......................................................................................................................... 1
`2. NXP Is a Global Conglomerate That Does Not
`
`
` in the Austin Division ............................................................... 2
`2.1. Only Some of NXP's Total Workforce Lives and Works in Austin .......................... 2
`2.2. NXP Employees Do Not
` ............... 3
`2.3. NXP's Motion Identifies No Austin-Based Witnesses or Documents
`
`Relevant to AST's Infringement Claims .................................................................... 5
`3. Recent Fifth Circuit Law Stresses the High Bar for § 1404(a) Motions ............................. 6
`4. The Gilbert Factors Favor this Court Based on the Insufficient Evidence in
`
`NXP's Motion and the Contrary Evidence AST Extracted in Venue Discovery ................. 7
`4.1. The Relevant Sources of Proof Are Electronic or Outside this District .................... 8
`4.2. No Likely Austin Witnesses Would Suffer from Traveling to Waco,
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`Which Is More Convenient for Out-of-State Witnesses, and AST
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`Will Cover Travel Costs for Any Austin-Based NXP Witnesses ............................ 11
`4.3. At Least One Major Non-Party Resides within 100 Miles of Waco,
`
`but Not within 100 Miles of Austin ......................................................................... 12
`4.4. Several Practical Problems Threaten this Case, If Transferred ............................... 13
`4.5. Relative Court Congestion Slightly Weighs against Transfer ................................. 14
`4.6. All NXP's Arguments Boil Down to a "Localized Interest" Plea ............................ 15
`5. Conclusion ......................................................................................................................... 15
`
`
`
`
`
`—i—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 3 of 20
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`
`
`Table of Authorities
`
`Cases
`Ancora Tech., Inc. v. LG Elecs. Inc.,
`No. 1:20-cv-00034-ADA (W.D. Tex. June 2, 2021)................................................................. 12
`BillJCo, LLC v. Apple Inc.,
`No. 6:21-cv-00528-ADA,
`2022 WL 607890 (W.D. Tex. Mar. 1, 2022) ........................................................................ 9, 10
`Def. Distributed v. Bruck,
`30 F.4th 414 (5th Cir. 2022) ........................................................................................................ 6
`Fintiv Inc. v. Apple Inc.,
`No. 6:18-cv-00372,
`2019 WL 4743678 (W.D. Tex. Sept. 10, 2019) .......................................................................... 8
`Future Link Sys., LLC v. Advanced Micro Devices, Inc.,
`No. 6:20-cv-01176-ADA (W.D. Tex. Oct. 12, 2021) ............................................................... 11
`Gulf Oil Corp. v. Gilbert,
`330 U.S. 501 (1947) .................................................................................................................... 7
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ................................................................................................... 9
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ............................................................................................. 6, 11
`In re Juniper Networks,
`14 F.4th 1313 (Fed. Cir. 2021) .................................................................................................... 9
`In re Planned Parenthood Fed'n of Am., Inc.,
`52 F.4th 625 (5th Cir. 2022) ............................................................................................... passim
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ..................................................................................................... 11
`In re Volkswagen AG,
`545 F.3d 304 (5th Cir. 2008) (en banc) ......................................................................... 6, 7, 9, 11
`MV3 Partners LLC v. Roku, Inc.,
`No. 6:18-cv-00308-ADA,
`2019 WL 10981851 (W.D. Tex. June 25, 2019) ....................................................................... 12
`ParkerVision, Inc. v. Intel Corp.,
`No. 6:20-CV-00108-ADA,
`2021 WL 401989 (W.D. Tex. Jan. 26, 2021) ............................................................................ 13
`VLSI Tech. LLC v. Intel Corp.,
`No. 1:19-cv-00977-ADA,
`2020 WL 8254867 (W.D. Tex. Dec. 31, 2020) ................................................................... 12, 14
`
`
`
`—ii—
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`

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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 4 of 20
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`1.
`
`Introduction
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`The public and private interest factors favor the continued orderly conduct of proceedings
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`here instead of the Austin Division. True, NXP has its U.S. headquarters in Austin. But that
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`starts, rather than ends, the § 1404(a) inquiry. NXP has not named a single witness physically
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`present in the Austin Division and likely to testify at trial and has not identified any specific
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`evidence available only in Austin, either. And despite NXP framing the issue as a simple
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`balancing test with any slight edge to the Austin Division compelling transfer, the bar to
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`establish a transferee venue as clearly more convenient does and should get harder to clear as the
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`proximity between transferee and transferor venues decreases. NXP must show a particularly
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`acute burden of proceeding here or advantage to the Austin. NXP takes neither tact here.
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`Its motion to transfer instead makes generalized references to its Austin facilities and
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`headcount, naming some supervisory engineers and other executives without even attempting to
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`tie their work to the accused functionality—making them likely document custodians or
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`percipient witnesses—and without even identifying evidence located uniquely in the Austin
`
`division. NXP's motion aims to direct the Court's focus to its overall footprint and aggregate
`
`number of employees whose jobs have some theoretical connection to the family of infringing
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`products at issue. But NXP paints this picture with far too broad a brush. Venue discovery
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`confirms that relevant evidence is either electronically accessible from anywhere or kept outside
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`this District.
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`
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`NXP's motion gives the Court no evidence—much less evidence establishing Austin as
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`"clearly more convenient" than Waco—for this Court to unwind its investment in the
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`proceedings so far and force the parties to regroup in the literal next courthouse over.
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`—1—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 5 of 20
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`2.
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`NXP Is a Global Conglomerate That Does Not
` in the Austin Division
`In its motion, NXP1 fancies itself as a business mainly based in Austin that shepherds the
`
`
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`design and development of microprocessors mainly within the boundaries of the Austin Division.
`
`In truth, NXP is a global conglomerate with the bulk of its workforce overseas and its U.S.
`
`workforce scattered throughout the country. And it turns out from venue discovery that
`
`
`
`
`
`
`
` See infra., § 2.2.
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`2.1. Only Some of NXP's Total Workforce Lives and Works in Austin
`Netherlands-based NXP employs about 31,000 people across more than 30 countries,
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`with about 9,300 of those dedicated to research and development activities. See Ex. A at 12. Of
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`its three global regions, NXP employs the fewest personnel in the Americas (shown in yellow):
`
`
`
`Id. NXP's U.S. entity claims to employ about 4,000 people total in its Austin headquarters.
`
`
`1 AST dismissed without prejudice NXP Semiconductors N.V. and NXP B.V.—both Dutch
`entities—on conditions including that “all information, witnesses, and documents in the custody
`or control of NXP Semiconductors, N.V. and NXP B.V. or their other subsidiaries, if any, shall
`be deemed in the possession, custody, or control of NXP USA, Inc. . . .” ECF No. 34, ¶ 3.
`
`—2—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 6 of 20
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`2.2. NXP Employees Do Not Design or Develop the Infringing Functionality
`NXP's motion implies that a small team of senior engineers—led by its venue declarant
`
`and deponent Allen Wagner—work with the Business Line-Edge Processing team to oversee the
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`wholesale design and development of the accused products. But NXP's motion presents facts at a
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`level of abstraction that renders them meaningless in a § 1404(a) analysis. Mr. Wagner
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`confirmed in deposition that
`
`
`
`
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`NXP's most percipient witness and 30(b)(6) designee on venue topics, Mr. Wagner,
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`explained that each i.MX microprocessor
`
` Mr. Wagner
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`testified that the i.MX8 processor, for example, has
`
` See Ex. B at 26:5 to 27:2. And
`
`
`
`
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` See id. at 28:2–5.
`
`The asserted patents—U.S. Patent Nos. 7,804,435 and 8,933,945—generally cover
`
`functionality
`
` The '435 patent discloses improvements in
`
`video decoder technology, with "video decoder" or "video decoding" appearing in the preamble
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`or body of each independent claim. See Ex. C at 17:52 to 20:34. And the preamble of each
`
`independent claim of the '945 patent indicates that the claim covers a "graphics processing unit."
`
`See Ex. D at 9:65 to 12:37. Mr. Wagner confirmed that the graphics processor (GPU) and video
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`decoder (VPU)
`
` See Ex. B at 28:19 to 30:23.
`
`NXP's motion identifies VeriSilicon and Amphion/Allegro DVT in passing as "[o]ther
`
`third-parties involved in the testing and development of portions of the Accused Products."
`
`ECF No. 46 at 2 (emphasis added). NXP's framing gets it wrong in at least three major ways.
`
`First, the "portions" of the accused products at issue are not one part of many that AST accuses;
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` Second, these third parties are
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`—3—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 7 of 20
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`
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`"involved" in that the
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` See, e.g., Ex. B at 88:13 to 89:5. Third, NXP's motion omits
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`
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`A more accurate reading of NXP's brief, then, might say that
`
`
`
` Mr. Wagner described the GPU and VPU as
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` adding
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` Ex. B at 87:8 to 89:5.
`
` See Ex. E at 3.
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` See id.
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`
`
`
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`
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` Ex. F at 4.
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` See Ex. G at 1–2; Ex. B at 116:11–23. While
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`
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`
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`3; Ex. B at 115:11 to 116:2. Mr. Wagner testified that
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` See, e.g., Ex. B at 99:18–24. Mr. Wagner did not know
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`
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` See Ex. H at
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`
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`
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`
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` nor could he identify specific witnesses involved with
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`—4—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 8 of 20
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`
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`likely work location of NXP personnel who
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` Id. at 100:9–19. Mr. Wagner testified that the
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`
`
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` See id. at 108:9 to 109:8, 110:22 to 111:7, 115:16 to 116:2.
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`2.3. NXP's Motion Identifies No Austin-Based Witnesses or Documents
`Relevant to AST's Infringement Claims
`
`The complexity and numerosity of
`
` and the number of
`
` reinforces that identifying relevant documents and witnesses cannot occur
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`from 30,000 feet. The required analysis—which NXP motion did not perform in its motion
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`despite having all the information available to do it—would have involved identifying
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`individuals who work on
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`
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`NXP's motion identifies Mr. Wagner and his nine engineering leads—only three of whom
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`work out of Austin—as the connective tissue for i.MX product development. Again, what may
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`hold water in general terms does not move the needle when applying the public and private
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`factors to AST's patent claims here. Neither Mr. Wagner nor any of the nine engineering leads
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`mentioned in his declaration have
`
`
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` See, e.g., Ex. I at 1–2; Ex. B at 36:12–20, 40:13–22, 42:7 to
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`43:4, 44:4-6, 45:10–12, 47:21–23, 53:17–19, 54:8–10, 57:18 to 58:5. NXP identified no
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`witnesses or documents regarding
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`2
`
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`2 NXP forced AST to scratch and claw for every document and answer it obtained during venue
`discovery. NXP produced no documents at all until AST threatened motions practice. If NXP's
`Reply offers evidence not in its original motion to help its cause now after forcing AST to
`squeeze water from a stone in venue discovery, the Court should disregard it or at least assign
`weight and credibility to this self-help exercise with extreme skepticism.
`
`—5—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 9 of 20
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`
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`Mr. Wagner pointed to job functions that may intersect with these responsibilities, but named no
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`witnesses or document repositories anywhere, let alone in Austin.
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`3.
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`Recent Fifth Circuit Law Stresses the High Bar for § 1404(a) Motions
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`The parties agree that Fifth Circuit law governs motions to transfer for convenience in
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`this District because the propriety and convenience of a given venue can arise in any civil case
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`and does not derive from U.S. patent law. ECF No. 46 at 3. To the extent the Federal Circuit has
`
`interpreted Fifth Circuit law, that also governs. See, e.g., In re Genentech, Inc., 566 F.3d 1338,
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`1342 (Fed. Cir. 2009). Fifth Circuit holdings may directly or indirectly endorse or rebuke Federal
`
`Circuit decisions. Fifth Circuit decisions that intercede older, conflicting Federal Circuit holdings
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`should take primacy since Fifth Circuit law ultimately controls the analysis.
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`The Fifth Circuit spoke mere weeks ago on the subject matter raised here. Broadly, the
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`Court "stress[ed] that the decision of whether to transfer a case is committed to the district court's
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`discretion." In re Planned Parenthood Fed'n of Am., Inc., 52 F.4th 625, 629 (5th Cir. 2022)
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`(citing In re Volkswagen AG, 545 F.3d 304, 311 (5th Cir. 2008) (en banc) ("Volkswagen II")).
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`"There can be no question but that the district courts have 'broad discretion in deciding whether
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`to order a transfer.'" Planned Parenthood, 52 F.4th at 629 (quoting Volkswagen II, 545 F.3d at
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`311). "The ultimate inquiry is whether the destination venue is 'clearly more convenient than
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`the venue chosen by the plaintiff.'" Planned Parenthood, 52 F.4th at 629 (citing Volkswagen II,
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`545 F.3d at 315) (emphasis added).
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`The Fifth Circuit also stressed that ordinary inconvenience to a defendant cannot support
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`transfer for convenience. "[W]henever a defendant is haled into court, some inconvenience is
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`expected and acceptable." Planned Parenthood, 52 F.4th at 629 (quoting Def. Distributed v.
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`Bruck, 30 F.4th 414, 433 (5th Cir. 2022). And "the fact that litigating would be more convenient
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`—6—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 10 of 20
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`elsewhere is not enough to justify transfer." Planned Parenthood, 52 F.4th at 629 (quoting Def.
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`Distributed, 30 F.4th at 433) (emphasis added).
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`The § 1404(a) analysis has two parts. Only the second matters here, as venue is proper in
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`either division. The Fifth Circuit applies eight private and public interest factors set by Gulf Oil
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`Corp. v. Gilbert, 330 U.S. 501 (1947) in deciding the issue. See Planned Parenthood, 52 F.4th at
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`630. The private factors are "(1) the relative ease of access to sources of proof; (2) the
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`availability of compulsory process to secure the attendance of witnesses; (3) the cost of
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`attendance for willing witnesses; and (4) all other practical problems that make trial of a case
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`easy, expeditious and inexpensive." Volkswagen II, 545 F.3d at 315. The public factors are "(1)
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`the administrative difficulties flowing from court congestion; (2) the local interest in having
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`localized interests decided at home; (3) the familiarity of the forum with the law that will govern
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`the case; and (4) the avoidance of unnecessary problems of conflict of laws or the application of
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`foreign law." Id.
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`In weighing these factors, "no one consideration 'can be said to be of dispositive weight.'"
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`Planned Parenthood, 52 F.4th at 630 (quoting Volkswagen II, 545 F.3d at 315). And "[t]he
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`burden to prove that a case should be transferred for convenience falls squarely on the moving
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`party." Asetek Danmark A/S v. Shenzhen Apaltek Co., Ltd., No. W-21-CV-00501-ADA, 2022
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`WL 1445391, at *2 (W.D. Tex. May 6, 2022). "The burden that a movant must carry is not that
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`the alternative venue is more convenient, but that it is clearly more convenient." Id.
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`4.
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`The Gilbert Factors Favor this Court Based on the Insufficient Evidence in
`NXP's Motion and the Contrary Evidence AST Extracted in Venue Discovery
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`The movant must present evidence that the transferee forum is clearly more convenient, meaning
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`the Court should hold NXP to a higher standard than the cursory examination of its business the motion
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`offers. NXP's motion reads like it must only slightly tip the scales 51/49 based on its overall footprint in
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`—7—
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`

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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 11 of 20
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`
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`each division. But the Fifth Circuit requires more. And when AST interrogated the details underlying
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`NXP's generalizations in venue discovery, the resulting record resoundingly rejects the relief requested.
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`The chart below presents the parties' views on each Gilbert factor. NXP's refusal to give this
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`Court the nod under any factor protests too much to have credibility—the truth always has more nuance:
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`Gilbert Factor
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`Relative ease of access to sources of proof
`
`NXP
`
`AST
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`Austin Neutral
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`Cost of attendance for willing witnesses
`Austin Waco
`Availability of compulsory process to secure the attendance of witnesses Neutral Waco
`(Slightly)
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`All other practical problems that make trial of a case easy, expeditious,
`and inexpensive
`
`Austin Waco
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`Administrative difficulties flowing from court congestion
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`Neutral Waco
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`Local interest in having localized interests decided at home
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`Familiarity of the forum with the law that will govern the case
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`Avoidance of unnecessary problems of conflict of laws or in the
`application of foreign law
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`Austin
`
`Neutral
`
`Neutral
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`
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`4.1. The Relevant Sources of Proof Are Electronic or Outside this District
`The "relative ease of access to sources of proof" factor resolves neutrally. It deserves less
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`weight than previously given under new Fifth Circuit precedent. NXP's motion names no
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`percipient witnesses or documents in Austin. And venue discovery confirmed that the documents
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`and witnesses most likely to have probative information are outside either division.
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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.
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`6:18-cv-00372, 2019 WL 4743678, at *2 (W.D. Tex. Sept. 10, 2019). The Fifth Circuit clarified
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`weeks ago that "[t]he location of evidence bears much more strongly on the transfer analysis
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`when, as in Volkswagen, the evidence is physical in nature." Planned Parenthood, 52 F.4th at
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`—8—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 12 of 20
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`630 (citing Volkswagen II, 545 F.3d at 316-17). Planned Parenthood rejected the argument—
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`made by the appellant citing Federal Circuit authority like NXP cites here—that the presumption
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`of evidence existing at Defendants' facilities overrides the reality that electronic records can be
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`accessed from nearly anywhere. See Planned Parenthood, F.4th at 630 (rejecting petitioner's
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`arguments based on In re Juniper Networks, 14 F.4th 1313 (Fed. Cir. 2021) and In re Apple Inc.,
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`979 F.3d 1332 (Fed. Cir. 2020), among others). Mere access to electronic documents from the
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`transferee venue matters little, if at all. See, e.g., BillJCo, LLC v. Apple Inc., No. 6:21-cv-00528-
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`ADA, 2022 WL 607890, at *9 (W.D. Tex. Mar. 1, 2022) ("The imprecision of [Apple's]
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`representation encompasses a scenario in which Apple's documents are not located in the NDCA
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`at all, but are merely accessible there.").
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`NXP rests on the presumption that "[e]vidence in a patent infringement case typically
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`comes from the accused infringer" and infers that "documentation and witnesses relating to the
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`Accused Products are predominantly in the Austin Division." ECF No. 46 at 5–6. Even if true,
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`this does not go far enough. NXP does not identify any specific hard copy or electronic
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`documents that bear on its alleged infringement in the Austin Division, much less enough
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`specific evidence to show Austin as clearly more convenient. But the presumption is also
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`unfounded here. Venue discovery confirmed that no named Austin engineers
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` that NXP does not even have
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`
`
`
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` and that in any case NXP maintains its electronic documents outside this District.
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`Mr. Wagner's declaration says that "[e]lectronic versions of technical documentation
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`relating to the work of the engineering teams is stored on servers in Phoenix and Amsterdam."
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`ECF No. 46-1, ¶ 9 (emphasis added). In its venue interrogatory responses, NXP also identified
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`—9—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 13 of 20
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`
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` Ex. J at 1–18. None of these
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` And Mr. Wagner identified no
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`reason employees could not access electronic documents from Waco, from their homes, or from
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`an overwater bungalow in the Maldives. See, e.g., Ex. B at 123:4 to 125:21; accord BillJCo,
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`2022 WL 607890, at *9 ("[N]one of the Apple personnel BillJCo deposed testified that these
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`documents are also not accessible from Texas . . . ."). The availability and location of electronic
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`documents thus cannot support transfer to the Austin Division.
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`Tellingly, NXP did not even investigate before filing its motion whether it has relevant
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`hard copy documents in the Austin Division. NXP's motion argues only that "[a]ny physical
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`technical documents are maintained and located in Austin." ECF No. 46 at 2 (emphasis added).
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`Mr. Wagner's declaration said only that “[t]o the extent hard copies of technical documents for
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`the i.MX products exist, they are maintained by the engineers in Austin." ECF No. 46-1, ¶ 9.
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`These conditional statements have no evidentiary value.
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`NXP identifies no documents, but merely infers their existence from the faulty premise
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`that relevant engineering witnesses work in Austin. Even if that assumption proved valid—which
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`we know from Mr. Wagner's deposition it does not—it would not suffice as evidence. NXP
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`could have investigated and identified specific documents or custodians possessing evidence
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`probative of infringement, but either did not or could not and resorted to arguing in broad strokes
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`again. NXP cites several cases in its argument, but those cases all involve a threshold
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`establishment of specific, named witnesses or evidence in the transferee venue. See generally
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`ECF No. 46 at 6. The Court has nothing of the sort to rely on here.
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`The Court should not give NXP credit under this factor or consider any effort by NXP to
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`provide more detail or evidence in its Reply, after venue discovery has closed. In any case, this
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`—10—
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 14 of 20
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`factor deserves little weight both because of the Fifth Circuit's clarity about electronic documents
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`in Planned Parenthood and because the burden of transporting physical documents to Waco
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`from Austin proves insubstantial. See, e.g., Future Link Sys., LLC v. Advanced Micro Devices,
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`Inc., No. 6:20-cv-01176-ADA, ECF Nos. 54, 62 at 12–13 (W.D. Tex. Oct. 12, 2021) ("Thus, this
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`factor favors transfer, but only slightly—AMD would suffer little inconvenience from having to
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`shuttle documentary evidence to Waco from Austin due to their proximity.").
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`4.2. No Likely Austin Witnesses Would Suffer from Traveling to Waco,
`Which Is More Convenient for Out-of-State Witnesses, and AST Will
`Cover Travel Costs for Any Austin-Based NXP Witnesses
`
`The "willing witnesses" factor favors Waco or resolves neutrally because no named
`
`witnesses will suffer hardship from appearing at trial in Waco. Yet travel to Waco for out-of-
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`state witnesses will prove easier, and AST will in any case moot any incremental other expenses.
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`According to NXP's cited caselaw, this factor can favor transfer if a "substantial number" of
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`witnesses reside in the transferee forum. Genentech, 566 F.3d at 1345, cited in ECF No. 46 at 6.
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`But NXP names no engineers in Austin involved in GPU or VPU design, let alone a "substantial
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`number." Venue discovery revealed that these witnesses are
`
`
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`
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` See Ex. B at 108:9 to 109:8, 110:22 to 111:7, 115:16 to 116:2.
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`NXP admits that any witnesses located in Austin are "approximately 100 miles" from the
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`Waco courthouse. ECF No. 46 at 7. Only "[w]hen the distance between an existing venue for
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`trial of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of
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`inconvenience to witnesses increases in direct relationship to the additional distance to be
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`traveled." In re Volkswagen AG, 371 F.3d 201, 204–05 (5th Cir. 2004) ("Volkswagen I"); accord
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`Volkswagen II, 545 F.3d at 317 (reiterating 100-mile "threshold"). In any case, "the convenience
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 15 of 20
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`of party witnesses is given little weight." MV3 Partners LLC v. Roku, Inc., No. 6:18-cv-00308-
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`ADA, 2019 WL 10981851, at *3 (W.D. Tex. June 25, 2019). NXP has not named any technical
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`witnesses in Austin who would face inconvenience to testify in Waco, nor has it named any who
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`would face inconvenience reside within about the 100-mile radius of the Waco courthouse.
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`The parties can anticipate several witnesses who may travel by plane to Waco. Mr.
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`Wagner, for instance, lives in Pennsylvania. See, e.g., ECF No. 46-1 at 4. The likely relevant
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`employees who work overseas near the
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` offices in
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` respectively, will have more and better options to fly into one of the
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`Dallas Metroplex's airports and take the shorter ride to Waco than to fly into Austin and stay at
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`less expensive hotels than in Austin. See, e.g., Ancora Tech., Inc. v. LG Elecs. Inc., No. 1:20-cv-
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`00034-ADA, ECF No. 272, slip op. at 6 (W.D. Tex. June 2, 2021).
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`In any case, AST will, if requested, help ease any inconvenience caused by NXP
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`witnesses traveling to Waco from Austin for trial. AST will reimburse reasonable travel expenses
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`and per diem lodging rates for NXP witnesses based in the Austin Division who testify at trial in
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`Waco. See, e.g., VLSI Tech. LLC v. Intel Corp., No. 1:19-cv-00977-ADA, 2020 WL 8254867, at
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`*5 n.2 (W.D. Tex. Dec. 31, 2020) ("To alleviate any concern of the rare possibility of added
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`costs, VLSI has offered to cover these witnesses' costs of attendance in Waco."). And AST will,
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`as is customary, depose any NXP witnesses who live and work outside the Waco Division by
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`remote means or wherever they work and live.
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`This factor thus weighs against transfer or, at worst, resolves neutrally.
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`4.3. At Least One Major Non-Party Resides within 100 Miles of Waco, but
`Not within 100 Miles of Austin
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`The "availability of compulsory process" factor likely does not weigh heavily, but NXP's
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`motion incorrectly dismisses it as irrelevant. NXP correctly notes that this factor considers
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 16 of 20
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`whether non-party witnesses reside within the 100-mile subpoena power of the Court. We know
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`from NXP's motion that non-parties in the Austin area largely fall within the 100-mile radius of
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`both the Waco and Austin courthouses. See, e.g., ECF No. 46 at 7. NXP then concludes the
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`matter without further analysis by saying both courts have the same reach. Not so.
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`At least one potentially important non-party resides within the 100-mile subpoena power
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`of the Waco Division but is twice as far, and thus outside the subpoena radius, of the Austin
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`Division: Texas Instruments. NXP cited five prior art references for the '945 patent published or
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`patented by Dallas-based Texas Instruments in its invalidity contentions, more than any other
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`prior artist. See Ex. K at 16–17. Only the Waco Division can enforce a subpoena issued to TI.
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`This factor thus favors the Waco Division, though slightly so.
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`4.4. Several Practical Problems Threaten this Case, If Transferred
`"All other practical problems" favors this case remaining in Waco. NXP hand waves this
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`factor away by saying "[t]his case is in its infancy" and citing several things that have happened
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`throughout its motion: most notably the claim construction process running its course and
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`invalidity contentions. See ECF No. 46 at 7–8. This Court has invested in these proceedings, and
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`the parties have invested in this Court's guiding hand. Unlike courts in the Austin Division, "the
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`Waco Division has its own patent-specific Order Governing Proceedings ('OGP') that ensures
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`efficient administration of patent cases." ParkerVision, Inc. v. Intel Corp., No. 6:20-CV-00108-
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`ADA, 2021 WL 401989, at *7 (W.D. Tex. Jan. 26, 2021).
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`The parties here have both fully benefited from the bargain in capitalizing on this Court's
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`unique procedures. For instance, the parties negotiated a dismissal without prejudice of AST's
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`indirect infringement allegations under the unique procedures in Section VII of the Court's OGP.
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`See generally ECF No. 36. In exchange for dismissing its indirect infringement claims without
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`prejudice, AST gained the right under the OGP to re-file within three months after fact discovery
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 17 of 20
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`opens. See, e.g., id. NXP gained the benefit of not having to face indirect infringement
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`allegations until after it takes discovery into facts supporting indirect infringement. These early
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`investments in the cadence of the discovery and pretrial phases of this case reflect both parties'
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`and the Court's investment in proceeding orderly towards trial.
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`On another topic, the cost to attend trial in Waco is less than in Austin. According to the
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`General Services Administration's per diem guidelines for Federal employees, daily costs of
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`travel in Waco during trial comfortably beat those in Austin:
`
`GSA FY2023
`Per Diem
`
`Lodging
`(Nightly Avg.)
`
`Lodging
`(One-Week Avg.)
`
`Lodging
`(Two Weeks Avg.)
`
`Waco
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`Austin
`
`$109.67
`
`$150.25
`
`$767.69
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`$1,051.75
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`$1,535.38
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`$2,103.50
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`Daily Difference Austin +37% Austin +$284.06 Austin +$568.12
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`See Exs. L, M; see also VLSI, 2020 WL 8254867, at *4.
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`Transfer to Austin thus presents practical problems not present in this Division and this
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`factor weighs against transfer but carries less weight than others.
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`4.5. Relative Court Congestion Slightly Weighs against Transfer
`Relative court congestion slightly favors the Waco Division. Planned Parenthood
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`clarified that a case that "appears to be timely proceeding to trial" in the current forum weighs
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`against transfer. Planned Parenthood, 52 F.4th at 631. The parties here have exchanged
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`infringement and invalidity contentions, have nearly completed the claim construction briefing
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`process, and have already invoked this Court's unique OGP procedures to streamline the case by
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`deferring indirect infringement claims until fact discovery. All these factors counsel against
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`transfer under Planned Parenthood.
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`Case 6:22-cv-00466-ADA-DTG Document 53 Filed 12/28/22 Page 18 of 20
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`4.6. All NXP's Arguments Boil Down to a "Localized Interest" Plea
`This factor should matter less than the more specific private factors because the
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`"localized interest" factor acts as an abstraction of the more detailed inquiries under the private
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`interest factors. True, NXP has a sizeable office in Austin and a few thousand employees. But
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`venue discovery revealed that none of them seemingly worked on or have particular knowledge
`
`about
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` NXP's repeated pleas to its overall large size,
`
`footprint in Austin despite that footprint not having any involvement in
`
`
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` means that its entire motion is one large "localized interest" argument.
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`This factor cannot and should not swallow the others whole just because NXP keeps beating the
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`drums. This is particularly so under the Fifth Circuit's recent instruction that cases involving
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`diverse enterprises not confined to a local