Case 6:22-cv-00533-ADA Document 129 Filed 08/03/23 Page 1 of 26
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`DODOTS LICENSING SOLUTIONS
`LLC,
` Plaintiff
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`-vs-
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`APPLE INC.,
` Defendant
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`W-22-CV-00533-ADA
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`ORDER GRANTING DEFENDANT’S MOTION TO TRANSFER
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`Before the Court is Defendant Apple Inc.’s (“Apple”) Motion to Transfer Venue to the
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`Northern District of California.1 ECF No. 60. Plaintiff DoDots Licensing Solutions LLC
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`(“DoDots”) opposes the motion. ECF No. 95. Apple filed a reply to further support its motion.
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`ECF No. 99. With the Court’s permission, DoDots filed a sur-reply. ECF No. 110-1. After careful
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`consideration of the parties’ briefs and the applicable law, the Court GRANTS Apple’s motion to
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`transfer venue to the Northern District of California.
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`I.
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`FACTUAL BACKGROUND
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`In its complaint, DoDots claims Apple infringes of U.S. Patent Nos. 9,369,545 (“’545
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`patent”), 8,020,083 (“’083 patent”), and 8,510,407 (“’407 patent”) (collectively, the “asserted
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`patents”), which are directed to a method and system for accessing and displaying content to a
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`user. ECF No. 32 ¶¶ 11, 42, 45, 48. DoDots, the owner of the asserted patents, is a limited liability
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`company organized under the laws of Texas. Id. ¶ 1. DoDots’ principal place of business is in
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`1 The Court notes that Apple filed this motion with its former co-defendants, Best Buy Stores, L.P., BestBuy.com,
`LLC, and Best Buy Texas.com, LLC. ECF No. 60 at 1. Because the Court has severed and stayed the claims against
`Best Buy Stores, L.P., BestBuy.com, LLC, and Best Buy Texas.com, LLC (ECF No. 124), the Court only considers
`whether the claims against Apple Inc. should be transferred in this Order.
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`1
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`Case 6:22-cv-00533-ADA Document 129 Filed 08/03/23 Page 2 of 26
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`Dana Point, California. Id. ¶ 1. Apple is a corporation organized under the laws of the state of
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`California. Id. ¶ 2. Apple is registered to do business in the state of Texas. Id. According to DoDots,
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`Apple sells products that infringe the asserted patents, including mobile phones (e.g., Apple
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`iPhone, iPhone 6, iPhone 6S, iPhone 6 Plus, iPhone 6S Plus, iPhone SE, iPhone 7, iPhone 7 Plus,
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`iPhone 8, iPhone 8 Plus, iPhone X, iPhone XR, iPhone XS, iPhone XS Max, iPhone 11, iPhone
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`11 Pro, iPhone 11 Pro Max, iPhone 12, iPhone 12 Mini, iPhone), tablet computers (e.g., iPad Air,
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`iPad mini, and iPad Pro Tablets), smartwatches (e.g., Apple Watch (First through Seventh
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`Generations)), and iOS enabled mobile devices (e.g., iPod Touches). Id. ¶ 55. The Court will refer
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`to these products as the “accused products.”
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`Along with its claims against Apple, DoDots also filed claims against Best Buy Stores,
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`L.P., BestBuy.com, LLC, and Best Buy Texas.com (collectively, the “Best Buy Defendants”) in
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`this case. The Court severed and stayed DoDots’ claims against the Best Buy Defendants under
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`the customer-suit exception. ECF No. 124. Along with this case, DoDots also filed an action
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`against Samsung, Best Buy Stores, L.P., BestBuy.com, LLC, and Best Buy Texas.com. DoDots
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`Licensing Solutions LLC v. Samsung Elecs.Co., Ltd. et al., No. 6:22-cv-535-ADA (W.D. Tex. May
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`24, 2022), ECF No. 1 [hereinafter “Samsung Litigation”]. The Court also severed and stayed the
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`claims against the Best Buy Defendants in the Samsung Litigation. DoDots Licensing Solutions
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`LLC v. Samsung Elecs.Co., Ltd. et al., No. 6:22-cv-535-ADA (W.D. Tex. July 20, 2023), ECF No.
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`93.
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`
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`After responding to DoDots’ complaint, Apple filed this motion to transfer. ECF No. 60.
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`Apple does not argue that the Western District of Texas (“WDTX”) is an improper venue for this
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`case; instead, it argues that the Northern District of California (“NDCA”) is a more convenient
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`forum, pointing to the location of potential witnesses and the relevant records in California. Id. at
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`1. DoDots contends that this case should remain in the WDTX, pointing to, among other factors,
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`Apple’s witnesses and evidence in Texas, the presence of relevant third parties in this state, and
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`the local interest in this District. ECF No. 95 at 1−2.
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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 “[t]he
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`determination of ‘convenience’ turns on a number of public and private interest factors, none of
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`which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358
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`F.3d 337, 340 (5th Cir. 2004) (footnote omitted). The private interest factors include: “(1) the
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`relative ease of access to sources of proof; (2) the availability of compulsory process to secure the
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`attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical
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`problems that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen AG, 371
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`F.3d 201, 203 (5th Cir. 2004) [hereinafter Volkswagen I] (citing Piper Aircraft Co. v. Reyno, 454
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`U.S. 235, 241 n.6 (1982)). The public factors include: “(1) the administrative difficulties flowing
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`from court congestion; (2) the local interest in having localized interests decided at home; (3) the
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`familiarity of the forum with the law that will govern the case; and (4) the avoidance of
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`unnecessary problems of conflict of laws of the application of foreign law.” Id. Courts evaluate
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`these factors based on the situation which existed at the time of filing, rather than relying on
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`hindsight knowledge of the defendant’s forum preference. Hoffman v. Blaski, 363 U.S. 335, 343
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`(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. 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. Apple argues that the threshold
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`determination is met because Apple is headquartered in Cupertino, California within the NDCA.
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`ECF No. 60 at 6. DoDots argues that the threshold is not met because DoDots brought this action
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`against Apple and the Best Buy Defendants and Apple has failed to show that venue is proper in
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`the NDCA for the Best Buy Defendants. ECF No. 95 at 2−3. In its reply, Apple argues that the
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`Best Buy Defendants should not be a party to this suit. ECF No. 99 at 1.
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`Because the Court has severed and stayed the claims against the Best Buy Defendants, the
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`Court only considers here whether transfer is appropriate for DoDots’ claims against Apple.
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`Because Apple has shown that venue is proper for the claims against Apple, the Court determines
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`that the threshold determination is met. Because the threshold determination is met, the Court now
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`analyzes the private and public interest factors to determine whether the NDCA is a clearly more
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`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 1338, 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 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 Apple, the relevant witnesses from Apple are located in California, Oregon,
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`and Colorado. ECF No. 60 at 1. According to DoDots, Apple also has relevant employees in
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`Austin. ECF No. 95 at 5. DoDots has also identified one person affiliated with its company. Id. at
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`10. Each group of witnesses will be discussed below.
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`1. Apple’s Employees in the NDCA
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`According to Apple, two of its witnesses, Dallas De Atley and Ann Thai, are based in the
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`NDCA. ECF No. 60 at 7. Mr. De Atley, who “is based in Sunnyvale, California,” is a Senior
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`Software Engineer at Apple. ECF No. 60-2 ¶¶ 2−3. Mr. De Atley “was involved in the
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`of the development of .ipa files.” Id. ¶ 3. Mr. De Atley “manages the engineering team responsible
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`for the .ipa file technology until around 2014.” Id. Mr. De Atley claims that all of the work relating
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`to .ipa technology from 2007 until 2014 took place in Cupertino, California. Id. ¶ 5. A few
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`members of the current team responsible for the .ipa technology are located in Cupertino,
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`California, but these members are not identified by name. ECF No. 60-3 ¶ 5. Ms. Thai, whose
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`“workplace is located in Cupertino, California,” is a Director of Worldwide Product Marketing at
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`Apple. ECF No. 60-1 ¶ 2. In her position, Ms. Thai is responsible for “managing and coming up
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`with marketing strategies
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`perspective. Id. ¶ 3.
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`, from a product and business
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`In response, DoDots argues Mr. De Atley is not a credible witness because he obscures his
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`team’s limited relevant knowledge. ECF No. 95 at 6. DoDots complains that Mr. De Atley has
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`only knowledge of the .ipa file type, and not the other file types that Apple identified as relevant.
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`Id. at 7; ECF No. 95-2. DoDots complains that Ms. Thai did not explain the relevance of her
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`testimony to this case. ECF No. 95 at 8.
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`In its reply, Apple argues that the .ipa file type is central to DoDots’ infringement
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`contentions. ECF No. 99 at 2. Apple argues that Mr. De Atley is knowledgeable of “.ipa file
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`technology,” not only .ipa files. Id. Apple claims that “‘.ipa file technology’ is an umbrella term
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`that includes all of the filetypes at issue.” Id. Apple also argues that Ms. Thai has explained the
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`relevant knowledge she possesses. Id. at 3.
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`The Court concludes that Mr. De Atley likely possesses relevant knowledge to this case
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`and may testify at trial. Mr. De Atley is knowledgeable of .ipa file technology, which both parties
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`agree are relevant. Mr. De Atley’s presence in the NDCA2 weighs in favor of transfer. As for Ms.
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`Thai, the Court concludes that she also likely possesses relevant knowledge to this case. Ms. Thai
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`is the Director of Worldwide Product Marketing for the Apple App Store. ECF No. 60-1 ¶ 2.
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`DoDots’ infringement claims relate to downloading applications from the Apple App Store. ECF
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`No. 1 ¶ 53. Thus, Ms. Thai likely possesses knowledge relevant to damages in this case. The Court
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`concludes that her presence in the NDCA3 weighs in favor of transfer.
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`2. Apple’s Employees in Texas
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`DoDots complains that in Apple’s transfer motion, Apple ignores the other file types that
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`it has identified as relevant—
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`. ECF No. 95 at 4; ECF No. 95-
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`2. DoDots argues that Apple focuses only on .ipa files, which have the least relevance to this
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`litigation because the other file types “actually function to control the design and appearance of
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`apps as claimed in the patents-in-suit.” ECF No. 95 at 4. DoDots claims that it has identified
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`thirteen Apple employees in Austin that possess relevant information. Id. at 5. DoDots identifies
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`the following Apple employees: (1) Chakshu Arora, an Apple software engineer in Austin who
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`“testified that she works on coding and developing
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` iOS apps that are downloaded to
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`Apple devices”; (2) Michael Kuntscher, an Apple engineering manager in Austin, who testified
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`2 The Court notes that Mr. De Atley’s declaration only states that he is “based in Sunnyvale, California.” ECF No. 60-
`2. But the Court here assumes that Mr. De Atley resides in or near the NDCA because there is no evidence to the
`contrary.
`3 Like Mr. De Atley, the Court notes that Ms. Thai’s declaration only states that her “workplace is located in Cupertino,
`California.” ECF No. 60-1 ¶ 2. But the Court here assumes that Ms. Thai resides in or near the NDCA because there
`is no evidence to the contrary.
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`that “he and his team are responsible for developing Apple’s
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`” and he works on coding
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`the interface using
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` and other interface files, like
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`; and (3) William Chapman, a
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`curriculum developer for Apple, who writes tutorials to teach app developers how to build iOS
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`apps. Id. at 5−6. Five members of Mr. Kuntscher’s team and five members of Mr. Chapman’s team
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`are based in the WDTX. Id.
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`In its reply, Apple argues that DoDots “fails to distinguish between individuals who used
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`the accused technology and individuals knowledgeable about how that technology works.” ECF
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`No. 99 at 1. Apple argues that the Apple employees are those with knowledge of the development
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`of .ipa technology. Id. at 2. Apple argues that Mr. Kuntscher, Mr. Chapman, Ms. Arora, and their
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`teams have knowledge of .ipa files only because they have worked on creating training materials
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`and developing iOS apps. Id. Apple argues that these individuals do not know the structure,
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`function, and operation of .ipa file technology. Id. Apple cites portions of Mr. Kuntscher, Mr.
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`Chapman, and Ms. Arora’s depositions suggesting that they are not knowledgeable of the structure,
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`function, and operation of .ipa file technology. Id.; ECF No. 99-5 at 21:2-14 (deposition testimony
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`from Mr. Kuntscher acknowledging that his team does not have any involvement in the installation
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`of the
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` App); ECF No. 99-6 at 22:2-7 (deposition testimony from Mr. Chapman explaining
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`that he knows how to create an iOS app); ECF No. 99-4 at 8:6-19 (deposition testimony from Ms.
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`Arora explaining that she does not understand how apps are
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` on Apple
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`devices).
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`The Court concludes that Mr. Kuntscher, Ms. Arora, and members Mr. Kuntscher’s team
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`have relevance to this case, but their knowledge is limited. DoDots’ infringement allegations
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`suggest that the focus in this case is on the function of Apple’s applications more generally, not
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`the appearance of specific applications. For example, DoDots alleges that Apple infringes claim 1
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`of the ’545 patent “because it implements, operates and uses its Accused Apple Software, which
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`executes specific code to obtain, display and use its Accused Apple Apps, on its Accused Apple
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`Devices, which are in operative communication with a server over a network and include electronic
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`storage, a display, and one or more processors configured to execute one or more computer
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`program modules.” ECF No. 32 ¶ 62. The ’083 and ’407 patents also focus on how an application
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`operates on a device. Id. ¶ 81 (providing claim 1 of the ’083 patent, which describes a device
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`receiving information from a network location and displaying it within a graphical user interface);
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`id. ¶ 93 (providing claim 1 of the ’407 patent, which describes how information from a network is
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`received to be displayed within a frame on a device). Mr. Kuntscher and his team work only on
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`the
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` app. ECF No. 95 at 5. Mr. Arora works on apps that are used in
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`. Id. While the Court acknowledges that portions of the asserted claims reference the
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`appearance of the graphical user interface for a user, the Court finds that it is less likely that these
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`specific Apple employees identified by DoDots will testify at trial about the appearance of the
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`specific applications that they work on. The Court weighs their presence in Austin only slightly
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`against transfer.
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`Similarly, the Court concludes that it is unlikely that Mr. Chapman or members of his team
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`will testify at trial. Mr. Chapman and his team prepare tutorials on how to build iOS apps, and he
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`does not appear to be knowledgeable about the operation of applications on Apple devices. ECF
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`No. 99-6 at 22:2-7 (deposition testimony from Mr. Chapman explaining that he knows how to
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`create an iOS app). Thus, the Court does not weigh the presence of Mr. Chapman and his team in
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`the WDTX heavily against transfer.
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`3. Apple’s Employees Elsewhere
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`Apple identifies two potential witnesses elsewhere: (1) Eric Carlson, Senior Software
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`Engineer of App Installation Technologies, who is in Beaverton, Oregon, and (2) Jackie Harlow,
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`Principal Counsel and Senior Manager of IP Transactions, who is based in Boulder, Colorado.
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`ECF No. 60 at 4. Apple argues that Mr. Carlson possesses relevant knowledge of .ipa file
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`technology. Id. Four members of Mr. Carlson’s team also reside in Oregon. ECF No. 60-3 ¶ 5.
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`Apple claims that Ms. Harlow possess relevant knowledge of Apple’s patent licenses and patent
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`transaction activities. Id. Apple claims that the NDCA would be a more convenient forum for both
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`Mr. Carlson and Ms. Harlow. Id. at 7.
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`In response, DoDots argues that Mr. Carlson is only knowledgeable of the .ipa file type.
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`ECF No. 95 at 6. Further, DoDots argues that Mr. Carlson admitted in a deposition that he does
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`not regularly work with
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` files. Id. at 7. As for Ms. Harlow,
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`DoDots argues that she does not explain how her knowledge might be relevant to this case. Id. at
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`8. DoDots complains that Ms. Harlow does not discuss whether she knows about comparable
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`licenses or any of the accused features. Id. But DoDots argues that Ms. Harlow’s presence in
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`Colorado weighs against transfer because Colorado is closer to Waco than it is to the NDCA. Id.
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`The Court concludes that Mr. Carlson’s presence in Oregon weighs in favor of transfer.
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`Mr. Carlson likely possesses knowledge relevant to this case. Mr. Carlson is knowledgeable
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`regarding .ipa file technology. ECF No. 60-3 ¶ 3. While DoDots argues that Mr. Carlson’s
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`knowledge is limited, the Court disagrees. While Mr. Carlson does not develop apps, he is
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`knowledgeable regarding
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`3 at 36:1-4. Mr. Carlson’s team develops the
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`, which “
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`. ECF No. 95-
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`”
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`Id. at 27:2-11. Mr. Carlson’s knowledge appears to be relevant to DoDots’ infringement
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`allegations. Mr. Carlson is in Oregon, which is significantly closer to the NDCA than the WDTX.
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`Mr. Carlson would likely face less cost and inconvenience if he were to testify in the NDCA than
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`in the WDTX.
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`The Court does not weigh Ms. Harlow’s presence in Colorado in favor or against transfer.
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`If Ms. Harlow is called to testify at trial, she will find neither the NDCA nor the WDTX a
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`convenient forum. In re Apple, 979 F.3d at 1342; see also ECF Nos. 61-6, 61-7 (showing that to
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`travel from Boulder, Colorado to San Francisco, California or Waco, Texas would require at least
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`13 hours driving or around three hours flying). For that reason, Ms. Harlow’s presence in Colorado
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`does not weigh on the outcome of this factor.
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`4. DoDots’ Party Witnesses
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`DoDots claims that
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`DoDots claims that
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`. ECF No. 95 at 10.
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`. Id. DoDots
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`claims that
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` splits his time between residences in Nevada and Mexico. Id. DoDots
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`contends that
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` expects to travel from his home in San Jose Del Cabo, Mexico for trial.
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`Id. DoDots notes that
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` does not view Waco as more or less convenient than the NDCA.
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`Id. DoDots claims that inventors John and George Kembel are also willing to testify at trial. Id.
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`The Court concludes that none of DoDots’ witnesses bear on the outcome of this factor.
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`As
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` states in his declaration, neither forum is more convenient for him. ECF No. 95-13
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`¶ 7. Further, inventors John and George Kembel have not clarified that they are willing to testify
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`at trial in either forum. ECF No. 95-18 ¶ 8 (George Kembel’s declaration stating that he is willing
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`to travel to Texas to testify); ECF No. 95-22 ¶ 8 (John Kembel’s declarations stating that he is
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`Case 6:22-cv-00533-ADA Document 129 Filed 08/03/23 Page 12 of 26
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`willing to travel to Texas to testify). In any event, John and George Kembel are in Colorado, and
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`they likely would not find either forum more convenient.
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`5. Conclusion
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`The Court finds this factor is weighs in favor of transfer. While Apple has only identified
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`a few relevant witnesses in or near the NDCA, DoDots has not identified any witnesses in this
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`District that the Court finds are likely to testify at trial.
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`
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`The Relative Ease of Access to 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 Apple, this factor weighs in favor of transfer because Apple’s relevant
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`sources of proof are primarily in the NDCA. ECF No. 60 at 10. One of Apple’s declarants, Mr. De
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`Atley, states that “[a]ll physical records and documents that [he] ha[s], if any, related to .ipa file
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`technology are located in California” and “[a]ny electronic records [he] may have on [his]
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`computer are located in California.” ECF No. 60-2 ¶ 7. Another of Apple’s declarant’s Ms. Thai,
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`states that “[t]he Product Marketing team for the
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` (including [her]) have physical records
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`and things located in [their] primary workplaces located in the Bay Area of California, including
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`electronic records.” ECF No. 60-1 ¶ 6. Apple argues that all other evidence is located in Oregon
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`and Colorado. ECF No. 60 at 10. Apple’s declarant, Mr. Carlson, states that “[a]ll physical records
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`and documents that [he] ha[s], if any, related to .ipa file technology, are located in California or
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`Oregon and “[a]ny electronic records [he] may have on [his] computer are located in Oregon.”
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`ECF No. 60-3 ¶ 7. Another of Apple’s declarants, Ms. Harlow, states that “[t]he IP Transactions
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`team (including [her]) have physical records and things located in [their] primary workplaces
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`located in the Bay Area of California and in Boulder, Colorado, including electronic records.” ECF
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`No. 60-4 ¶ 6. Apple claims that any Apple documents located in this District are not relevant to
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`the claims and defenses in this case. ECF No. 60 at 10. Apple also argues that Mainstream
`
`Scientific LLC, the original applicant of the ’545 patent and the original assignee of the ’083 and
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`’047 patents, likely has relevant information in the NDCA. Id. at 11. Apple also argues that because
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`DoDots was founded in Silicon Valley and has a place of business in Dana Point, California, some
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`sources of proof from DoDots are likely located in California. Id.
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`In response, DoDots complains that Apple does not identify any specific physical
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`documents in the WDTX. ECF No. 95 at 10. DoDots argues that Apple’s evidence is electronic
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`and could be accessible from either forum. Id. at 11. As for DoDots’ evidence, DoDots argues that
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`all prosecution documents are physically located in
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` Texas. Id. DoDots
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`claims that
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` has testified that DoDots does not have any physical
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`documents. Id. All of DoDots’ documents are stored electronically
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`. Id.
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`DoDots claims that evidence from previous owners of the asserted patents, including Innovation
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`Management Sciences, Mainstream Scientific, and Strategic Intellectual Solutions, was
`
`
`
`. Id.
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`The Court acknowledges that the Fifth Circuit’s decision in In re Planned Parenthood
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`indicates a shift in the analysis of this factor. The Fifth Circuit has recently agreed with a district
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`court that concluded that this factor is neutral because electronic evidence is equally accessible in
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`Case 6:22-cv-00533-ADA Document 129 Filed 08/03/23 Page 14 of 26
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`either forum. In re Planned Parenthood Fed’n of Am., Inc., 52 F.4th 625, 630 (5th Cir. 2022). The
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`Fifth Circuit held that “[t]he location of evidence bears much more strongly on the transfer analysis
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`when . . . the evidence is physical in nature.” Id. But the Federal Circuit has held that it is an error
`
`to conclude this factor is neutral because electronic documents are easily accessible in both forums.
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`In re Apple, Inc., No., 2022 WL 1196768, at *4 (Fed. Cir. Apr. 22, 2022). To the extent that these
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`two holdings can be reconciled, the Court concludes that the location of physical evidence is more
`
`important to this analysis than the location of where electronic documents are typically accessed.
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`However, the Court still considers the location of document custodians of electronic documents in
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`its analysis of this factor. In re Google LLC, No. 2021-178, 2021 WL 5292267, at *2 (Fed. Cir.
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`Nov. 15, 2021).
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`Here, neither party has shown that physical evidence is present in the WDTX or the NDCA.
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`While two of Apple’s declarants state that Apple has physical evidence in California and Colorado,
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`Apple has failed to describe this physical evidence with any specificity. The Court cannot
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`determine whether any of this physical evidence is likely to be needed at trial. Thus, the Court
`
`finds that any physical evidence does not weigh in the analysis of this factor.
`
`Turning to the electronic evidence, the Court concludes that more of Apple’s relevant
`
`document custodians are likely based in or close to the NDCA than in or near the WDTX. As
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`discussed above, Mr. De Atley, Ms. Thai, and Mr. Carlson likely possess relevant knowledge. The
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`Court concludes it is likely that these employees are custodians of the relevant electronic
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`documents. See In re Google LLC, 2021 WL 5292267, *2 (holding that it is an error to not “also
`
`consider[] the location of document custodians and the location where documents are created and
`
`maintained, which may bear on the ease of retrieval”). As discussed in their declarations, Mr. De
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`Atley, Ms. Thai, and Mr. Carlson maintain electronic records in their workplaces in California and
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`Oregon. ECF No. 60-1 ¶ 6; ECF No. 60-2 ¶ 7; ECF No. 60-3 ¶ 7. Members of Ms. Harlow’s team
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`also maintain relevant documents in California. ECF No. 60-4 ¶ 6. Further, Mr. De Atley, Ms.
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`Thai, Mr. Carlson, and Ms. Harlow state in their declarations that the relevant documents to this
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`case can be accessed only by Apple employees with the appropriate credentials. ECF No. 60-1 ¶ 6;
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`ECF No. 60-2 ¶ 7; ECF No. 60-3 ¶ 7; ECF No. 60-4 ¶ 6.
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`While DoDots argues that the relevant prosecution evidence is located in this District,
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`DoDots’ interrogatory response merely states that
`
`
`
` ECF No. 95-6 at 13. As for DoDots’ other
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`evidence, the Court finds that it does not impact the outcome of this factor.
`
`
`
` possesses all of DoDots’ electronic evidence
`
`. ECF No. 95 at 11. DoDots
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`also claims that evidence from Innovation Management Sciences, Mainstream Scientific, and
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`Strategic Intellectual Solutions has
`
`. Id.
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`Accordingly, the Court finds that this factor favors transfer.
`
`
`
`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
`
`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.”
`
`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., 2018 WL 4692486, at *3 n.1. However, the Fifth Circuit has clarified that “the
`
`availability of the compulsory process ‘receives less weight when it has not been alleged or shown
`
`that any witness would be unwilling to testify.’” In re Planned Parenthood Fed’n of Am., Inc., 52
`
`F.4th at 630−31 (quoting Hefferan v. Ethicon Endo-Surgery Inc., 828 F.3d 488 (6th Cir. 2016)).
`
`Apple argues that this factor favors transfer because at least some of the inventors of the
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`asserted patents resides in the NDCA. ECF No. 60 at 12. Apple notes that, at the time of
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`application, all of the inventors resided in the NDCA. Id. Apple argues that three inventors, John
`
`Russell, Joseph Bella, and Sridhar Devulkar, reside in the NDCA today. Id.; ECF Nos. 61-14, 61-
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`15, 61-16, 61-19. Apple claims that another inventor, Mark Wallin, resides in Orange County,
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`California. ECF No. 60 at 12; ECF No. 61-