Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DODOTS LICENSING SOLUTIONS LLC,
`
`Plaintiff,
`
`v.
`
`APPLE INC., BEST BUY STORES, L.P.,
`BESTBUY.COM, LLC, AND BEST BUY
`TEXAS.COM, LLC,
`
`Defendants.
`
`CASE NO. 6:22-cv-00533-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANTS’ OPPOSED MOTION TO TRANSFER VENUE
`PURSUANT TO 28 U.S.C. § 1404(a)
`
`WEST/300005235
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`PUBLIC VERSION
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`

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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 2 of 22
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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ............................................................................................................. 1
`
`BACKGROUND ............................................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`DoDots Traces Its Roots To Silicon Valley. .......................................................... 2
`
`Apple Is Based In California And Its Witnesses Are There. ................................. 3
`
`Best Buy Has No Witnesses Relevant To This Case. ............................................ 4
`
`LEGAL STANDARDS ..................................................................................................... 4
`
`THE NORTHERN DISTRICT OF CALIFORNIA IS CLEARLY THE MORE
`CONVENIENT VENUE FOR THIS CASE. .................................................................... 6
`
`A.
`
`B.
`
`Venue Is Proper In The NDCA. ............................................................................. 6
`
`The Private Interest Factors Strongly Favor Transfer to the NDCA. .................... 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Cost of Attendance And Convenience Of Willing Witnesses
`Strongly Favors Transfer. .......................................................................... 6
`
`The Relative Ease Of Access To Sources Of Proof Strongly Favors
`Transfer. ..................................................................................................... 9
`
`The Availability Of Compulsory Process Strongly Favors Transfer. ...... 11
`
`The Other Practical Problems Factor Is Neutral. ..................................... 13
`
`C.
`
`The Public Interest Factors Favor Transfer To NDCA. ....................................... 13
`
`1.
`
`2.
`
`3.
`
`The Court Congestion Factor Favors Transfer. ....................................... 14
`
`The Local Interest Factor Favors Transfer............................................... 15
`
`Familiarity With The Governing Law And Conflicts Of Law Are
`Neutral Factors. ........................................................................................ 15
`
`V.
`
`CONCLUSION ................................................................................................................ 15
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 3 of 22
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`10Tales, Inc. v. TikTok, Inc.,
`No. 6:20-CV-00810-ADA, 2021 WL 2043978 (W.D. Tex. May 21, 2021) .......................1, 10
`
`In re Acer America Corp.,
`626 F.3d 1252 (2010) .................................................................................................................8
`
`In re Apple Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ..................................................................................5, 8, 12
`
`In re Apple Inc.,
`818 F. App’x 1001 (Fed. Cir. June 16, 2020) ............................................................................5
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)............................................................................................9, 14
`
`In re Apple Inc.,
`No. 2022-128, 2022 WL 1196768 (Fed. Cir. April 22, 2022) ...................................................5
`
`Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P.,
`No. 6:15-cv-00091, 2016 WL 6909479 (W.D. Tex. Jan. 28, 2016) ..........................................5
`
`Ret. Sys. ex rel. BP P.L.C. v. Hayward,
`508 F. App’x 293 (5th Cir. 2013) ............................................................................................10
`
`CloudofChange, LLC v. NCR Corp.,
`No. 6:19-cv-00513, 2020 WL 6439178 (W.D. Tex. Mar. 17, 2020) .........................................9
`
`Daimler AG v. Bauman,
`571 U.S. 117 (2014) ...................................................................................................................6
`
`Datascape, Ltd. v. Dell Techs., Inc.,
`No. 6:19-cv-00129, 2019 WL 4254069 (W.D. Tex. June 7, 2019) .........................................15
`
`Flexiworld Techs., Inc. v. Amazon.com, Inc.,
`No. 6:20-cv-00553-ADA, Dkt. No. 101 (W.D. Tex. Aug. 2, 2021) ....................................1, 10
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)........................................................................................5, 6, 11
`
`In re Google Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ....................................................13
`
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 4 of 22
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`In re Google LLC,
`No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sept. 27, 2021) ...................................................7
`
`HD Silicon Sols. LLC, v. Microchip Tech Inc.,
`No. W-20-CV-01092-ADA, 2021 WL 4953884 (W.D. Tex. Oct. 25, 2021) ..................1, 6, 12
`
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..........................................................................................11, 15
`
`In re HP Inc.,
`No. 2018-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) ...................................................5
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) ...............................................8, 12
`
`InfoGation Corp. v. Google LLC,
`No. 6:20-CV-00366-ADA, Dkt. No. 65 (W.D. Tex. April 29, 2021) ...................................1, 8
`
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ......................................................................................6, 13, 14
`
`MasterObjects, Inc. v. Facebook, Inc.,
`No. 6:20-cv-00087-ADA, Dkt. No. 86 (W.D. Tex. July 13, 2021) ...........................................9
`
`In re NetScout Sys., Inc.,
`No. 2021-173, 2021 WL 4771756 (Fed. Cir. Oct. 13, 2021)...................................................13
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................5
`
`Parus Holdings, Inc. v. Apple Inc.,
`No. 6:21-cv-00968-ADA, Dkt. No. 92 (W.D. Tex. Nov. 29, 2022) ................................ passim
`
`Peak Completion Techs., Inc. v. I-TEC Well Solutions, LLC,
`No. A-13-cv-086-LY, 2013 WL 12121002 (W.D. Tex. June 26, 2013) ...................................9
`
`Polaris Innovations Ltd. v. Dell, Inc.,
`No. SA-16-CV-451, 2016 WL 7077069 (W.D. Tex. Dec. 5, 2016) ....................................9, 10
`
`In re Samsung Elecs. Co., Ltd.,
`2 F.4th 1371 (Fed. Cir. 2021) ..................................................................................................14
`
`Super Interconnect Techs. v. Google LLC,
`No. 6:21-cv-00259-ADA, 2021 WL 6015465 (W.D. Tex. Nov. 8, 2021) ..............................13
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014)..................................................................................................5
`
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`In re TracFone Wireless, Inc.,
`852 F. App’x 537 (Fed. Cir. 2021) ............................................................................................7
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)............................................................................................5, 15
`
`Uniloc USA, Inc. v. Apple Inc.,
`No. A-18-cv-990-LY, 2019 WL 2066121 (W.D. Tex. April 08, 2019) ....................................9
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .............................................................................................5, 6, 8
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ........................................................................................... passim
`
`Wet Sounds, Inc. v. Audio Formz, LLC,
`No. A-17-cv-141, 2017 WL 4547916 (W.D. Tex. Oct. 11, 2017) ..........................................15
`
`Statutes
`
`28 U.S.C. § 1404(a) ...............................................................................................................1, 4, 13
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c)(1)(A) ............................................................................................................12
`
`Fed. R. Civ. P. 45(c)(1)(B) ............................................................................................................12
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`Defendants Apple Inc. (“Apple”), Best Buy Stores, L.P., BestBuy.com, LLC, and Best
`
`Buy Texas.com, LLC (“Best Buy”) (collectively “Defendants”) move under 28 U.S.C. § 1404(a)
`
`to transfer this case filed by Plaintiff DoDots Licensing Solutions, LLC (“DoDots”) to the
`
`Northern District of California (“NDCA”).
`
`I.
`
`INTRODUCTION
`
`Under a straightforward application of the Volkswagen transfer factors, this case should
`
`be transferred to the Northern District of California. This case has numerous connections to the
`
`NDCA but no relevant connections to this District. In fact, all of the key factors favor transfer,
`
`and none favor litigating this case in this District. Notably: (1) Apple has identified three of its
`
`employee witnesses in the NDCA, a fourth witness in Oregon, and a fifth in Colorado, but none
`
`in this District; (2) at least three of the eleven named inventors (all of whom appear to be third
`
`parties) live and work in the NDCA, while none are in Texas; (3) DoDots and its predecessor
`
`companies were founded in the NDCA, and DoDots maintains an office in Dana Point,
`
`California; (4) the key sources of proof are in the NDCA and none are in this District; and (5) no
`
`fact discovery has been taken, and the dates for claim construction and trial are far away.
`
`Indeed, this case falls squarely into the line of recent cases where the Court has granted
`
`transfer under § 1404(a) based in large part on the location of relevant witnesses, which the
`
`Court properly recognizes as the most critical factor in the transfer analysis. See Parus Holdings,
`
`Inc. v. Apple Inc., No. 6:21-cv-00968-ADA, Dkt. No. 92 (W.D. Tex. Nov. 29, 2022); HD Silicon
`
`Sols. LLC, v. Microchip Tech Inc., No. W-20-CV-01092-ADA, 2021 WL 4953884 (W.D. Tex.
`
`Oct. 25, 2021); Flexiworld Techs., Inc. v. Amazon.com, Inc., No. 6:20-cv-00553-ADA, Dkt. No.
`
`101 (W.D. Tex. Aug. 2, 2021); 10Tales, Inc. v. TikTok, Inc., No. 6:20‑CV‑00810‑ADA, 2021
`
`WL 2043978 (W.D. Tex. May 21, 2021); InfoGation Corp. v. Google LLC, No.
`
`6:20‑CV‑00366‑ADA, Dkt. No. 65 (W.D. Tex. April 29, 2021). Here too, because the location of
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 7 of 22
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`relevant witnesses favors transfer and the remaining factors also favor transfer—and none weigh
`
`against transfer—the Court should transfer this case to the NDCA.
`
`II.
`
`BACKGROUND
`
`DoDots filed this action on May 24, 2022 (ECF No. 1), alleging that Apple’s operating
`
`systems, installers, and the App Store app implemented in iPhone, iPad, Apple Watch, and iPod
`
`Touch infringes U.S. Patent Nos. 9,369,545 (“’545 patent”), 8,020,083 (“’083 patent), and
`
`8,510,407 (“’407 patent”). On the same day, DoDots filed suit against Samsung Electronics Co.,
`
`Ltd. and Samsung Electronics America, Inc. (“Samsung”) and the same Best Buy defendants as
`
`in this case on the same three patents. See Case No. 6-22-cv-00535 (W.D. Tex. May 24, 2022).
`
`On September 12, 2022, DoDots filed a First Amended Complaint (“FAC”), making
`
`additional indirect infringement claims and additional allegations of Apple’s pre-suit knowledge
`
`of the asserted patents. ECF No. 32 at ¶¶ 116, 123, 130. On October 11, 2022, Defendants
`
`moved to dismiss the FAC on several grounds (ECF No. 46), and on October 25, 2022, DoDots
`
`opposed that motion and sought leave to file a proposed Second Amended Complaint. ECF No.
`
`47. On November 8, 2022, Defendants filed their reply brief in support of their motion to dismiss
`
`and also opposed DoDots’ motion for leave to file a Second Amended Complaint. ECF No. 52.
`
`Briefing on both motions closed on November 17, 2022, and the parties filed their joint Case
`
`Readiness Status Report on November 30, 2022. ECF No. 54. On December 15, Defendants filed
`
`an opposed motion to sever and stay claims against Best Buy under the Customer-Suit
`
`Exception. ECF No. 55.
`
`A.
`
`DoDots Traces Its Roots To Silicon Valley.
`
`DoDots alleges it is a Texas limited liability company with a place of business in Dana
`
`Point, California (FAC at ¶ 1)—a location much closer to the NDCA than to this District.
`
`However, DoDots traces its roots to Silicon Valley, where its predecessor company, DoDots,
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 8 of 22
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`Inc., was founded in 1999 by John Kembel and George Kembel, “Stanford engineering, business,
`
`and design school alumnae” (FAC ¶ 27), and a third Stanford graduate student. Id. at ¶ 29.
`
`According to the FAC, “DoDots, Inc. raised over $20M in funding from leading Silicon Valley
`
`venture capital companies … .” Id. at ¶ 31. Not surprisingly given this history, all eleven named
`
`inventors listed their addresses on the face of the patents as Palo Alto, Menlo Park, Sunnyvale,
`
`San Francisco, and Mountain View, California—all in the NDCA. And the company that applied
`
`for the ’545 patent and was the original assignee of the ’083 and ’407 patents—Mainstream
`
`Scientific, LLC—was based in Mountain View, California at the time the applications were filed,
`
`and appears to be based in Los Altos, California today (both in the NDCA).
`
`B.
`
`Apple Is Based In California And Its Witnesses Are There.
`
`Apple is a California corporation that employs more than 35,000 people in or around its
`
`headquarters in Cupertino, California. Apple’s management and primary research and
`
`development facilities are located in or near Cupertino. The primary operation, marketing, sales,
`
`and finance decisions for Apple also occur in or near Cupertino, and Apple business records
`
`related to product revenue are located there.
`
`Specific to this case, Apple has teams of engineers who design, develop, and implement
`
`the accused features in the accused products, the vast majority of which takes place at or near
`
`Apple’s Cupertino headquarters. See De Atley Decl.¶¶ 2, 5; Carlson Decl. ¶¶ 2, 5. Also, the
`
`relevant Apple employees involved in the marketing, licensing, and sale of the accused products
`
`work in or near Cupertino. See Harlow Decl. ¶¶ 2, 4; Thai Decl. ¶¶ 2, 4. None are in this District.
`
`Based on DoDots’ allegations, the following Apple employees are likely to be witnesses
`
`in this case. Three of them live and work in the NDCA (or near Apple’s Cupertino headquarters)
`
`while the other two are located in Oregon and Colorado:
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 9 of 22
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`Name
`
`Title
`
`Dallas
`De Atley
`
`Senior Software
`Engineer
`
`Office
`Location
`Cupertino,
`California
`
`Eric
`Carlson
`
`Jackie
`Harlow
`
`Senior Software
`Engineer, App
`Installation
`Technologies
`Principal Counsel and
`Senior Manager, IP
`Transactions
`
`Beaverton,
`Oregon
`
`Boulder,
`Colorado
`
`Ann Thai Worldwide Director of
`Product Marketing,
`App Store
`
`Cupertino,
`California
`
`Relevance to this Case
`
`Involved in development of the accused
`.ipa file technology since 2007. Created
`an engineering team responsible for
`development of .ipa file technology
`within the CoreOS team in 2008 and
`managed this team until around 2014.
`Currently oversees the team responsible
`for development and maintenance of
`accused .ipa technology.
`
`Knowledgeable about Apple’s patent
`licenses and patent transaction activities,
`including activities relevant to the accused
`technology.
`Responsible for managing and developing
`App Store marketing strategies relating to
`users, developers, and Apple, from a
`product and business perspective.
`
`C.
`
`Best Buy Has No Witnesses Relevant To This Case.
`
`The Best Buy defendants (Best Buy Stores, L.P., BestBuy.com, LLC, and Best Buy
`
`Texas.com, LLC) all have their principal places of business in Richfield, Minnesota. Exs. 1-3.
`
`However, the only reason Best Buy is named in this case is because they resell the accused
`
`Apple products. In other words, Best Buy has no role in the development of the accused
`
`technology, but rather offers for sale and sells the accused products nationwide, as DoDots’
`
`infringement contentions confirm. See, e.g., Ex. 42, Cl. 1 (Best Buy infringement contentions).
`
`III.
`
`LEGAL STANDARDS
`
`Under § 1404(a), the moving party must first show that the claims “might have been
`
`brought” in the proposed transferee district. In re Volkswagen of Am., Inc., 545 F.3d 304, 312-13
`
`(5th Cir. 2008) (“Volkswagen II”). Second, the movant must show “good cause” by
`
`demonstrating that the “transferee venue is clearly more convenient” than the transferor district.
`
`Volkswagen II at 315.
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 10 of 22
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`In evaluating convenience, the district court weighs both private and public interest
`
`factors. In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). The private
`
`factors include: “(1) the relative ease of access to sources of proof; (2) the availability of
`
`compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing
`
`witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and
`
`inexpensive.” Id. The public interest factors include: “(1) the administrative difficulties flowing
`
`from court congestion; (2) the local interest in having localized interests decided at home; (3) the
`
`familiarity of the forum with the law that will govern the case; and (4) the avoidance of
`
`unnecessary problems of conflict of laws of the application of foreign law.” Id. The transferee
`
`venue need only be “clearly more convenient,” not “far more convenient,” for transfer to be
`
`appropriate. In re Toyota Motor Corp., 747 F.3d 1338, 1341 (Fed. Cir. 2014).
`
`The convenience of the witnesses is the most important factor in the transfer analysis. In
`
`re Apple Inc., No. 2022-128, 2022 WL 1196768, at *2 (Fed. Cir. April 22, 2022); In re Apple
`
`Inc., 818 F. App’x 1001, 1003 (Fed. Cir. June 16, 2020); In re Genentech, Inc., 566 F.3d 1338,
`
`1343 (Fed. Cir. 2009); Auto-Dril, Inc. v. Nat’l Oilwell Varco, L.P., No. 6:15-cv-00091, 2016 WL
`
`6909479, at *7 (W.D. Tex. Jan. 28, 2016). Moreover, “in a case featuring most witnesses and
`
`evidence closer to the transferee venue with few or no convenience factors favoring the venue
`
`chosen by the plaintiff, the trial court should grant a motion to transfer.” In re Nintendo Co., Ltd.,
`
`589 F.3d 1194, 1198 (Fed. Cir. 2009); see also In re Toyota Motor Corp., 747 F.3d at 1341; In re
`
`Apple Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014); In re Genentech, 566 F.3d at 1348; In re TS
`
`Tech USA Corp., 551 F.3d 1315, 1322 (Fed. Cir. 2008); In re HP Inc., No. 2018-149, 2018 WL
`
`4692486, at *3 (Fed. Cir. Sept. 25, 2018). The plaintiff’s choice of venue is not a distinct factor
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 11 of 22
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`in the analysis, Volkswagen II, 545 F.3d at 314-15, nor is the location of plaintiff’s counsel,
`
`Volkswagen I, 371 F.3d at 206.
`
`IV.
`
`THE NORTHERN DISTRICT OF CALIFORNIA IS CLEARLY THE MORE
`CONVENIENT VENUE FOR THIS CASE.
`
`A.
`
`Venue Is Proper In The NDCA.
`
`As the Court recently found in Parus, venue for this case “would be proper in the
`
`NDCA.” Parus Holdings, No. 6:21-cv-00968-ADA, Dkt. No. 92 at 6. Apple is a California
`
`corporation headquartered in Cupertino, California, which is in the NDCA. Thus, venue is proper
`
`in the NDCA because the NDCA may exercise personal jurisdiction over Apple. Daimler AG v.
`
`Bauman, 571 U.S. 117, 137 (2014). Accordingly, the Court must consider the private and public
`
`interest factors. Volkswagen II, 545 F.3d at 315.
`
`B.
`
`The Private Interest Factors Strongly Favor Transfer to the NDCA.
`
`The private interest factors strongly favor transfer to the NDCA because the
`
`overwhelming majority of witnesses and evidence in this case are located there.
`
`1.
`
`The Cost of Attendance And Convenience Of Willing Witnesses
`Strongly Favors Transfer.
`
`The most important factor in the transfer analysis is the convenience of willing witnesses,
`
`and that factor strongly favors transfer here. Parus Holdings, No. 6:21-cv-00968-ADA, Dkt. No.
`
`92 at 6; Genentech, 566 F.3d at 1343; HD Silicon Sols. LLC, 2021 WL 4953884, at *4 (“[T]he
`
`Federal Circuit now takes the position that this Court should not accord the convenience of party
`
`witnesses less weight.”) (citing In re Juniper Networks, Inc., 14 F.4th 1313 (Fed. Cir. 2021)). To
`
`assess this factor, the Fifth Circuit has established the “100-mile rule,” which provides that the
`
`venue with the shorter average distance for witnesses to travel is favored when two potential
`
`venues are more than 100 miles apart. Volkswagen I, 371 F.3d at 205. But the Federal Circuit has
`
`refused to apply the rule “rigidly,” such as where it may “result in all identified witnesses having
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 12 of 22
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`to travel away from their home and work in order to testify in Texas, which would ‘produce
`
`results divorced from’ the rule’s underlying rationale.” In re Google LLC, No. 2021-170, 2021
`
`WL 4427899, at *5 (Fed. Cir. Sept. 27, 2021) (quoting In re TracFone Wireless, Inc., 852 F.
`
`App’x 537, 539 (Fed. Cir. 2021)). This has led the Federal Circuit to disregard distance
`
`altogether in favor of considering travel-time statistics. See, e.g., In re Google LLC, No. 2021
`
`WL 4427899 at *4 (“[T]ime is a more important metric than distance.”).
`
`Just as in Parus, a number of the witnesses knowledgeable about the accused technology,
`
`including all but two of the Apple witnesses Apple expects to call at trial, are based in the
`
`NDCA, and none are based in this District. See De Atley Decl.; Thai Decl.; see also Parus
`
`Holdings, No. 6:21-cv-00968-ADA, Dkt. No. 92 at 7. Two of Apple’s witnesses are a short car
`
`ride from the courthouses in the NDCA, and three of them live and work more than 1,700 miles
`
`from Waco, Texas. See Exs. 4-5. There are no nonstop flights available to Waco Regional
`
`Airport from the San Francisco and San Jose international airports. See Exs. 8-9. From the San
`
`Jose and San Francisco international airports, combined, there are only eight non-stop flight
`
`options to the Austin airport, in the first week of January. See Ex. 10. One of the witnesses, Eric
`
`Carlson, lives in Portland area of Oregon where he works from home for part of the week and for
`
`the other part, works out of the Beaverton, Oregon Apple office. Both Oregon locations are even
`
`further from Waco than the Apple employees located in California. See Ex. 5. Jackie Harlow,
`
`who lives in Colorado and works out of the Boulder Apple office, is the only witness closer to
`
`Waco than to the NDCA, but only by a slight margin—Waco is approximately 866 miles away
`
`whereas San Jose, California is 1,262 miles away. See Exs. 6-7. That being said, while there are
`
`multiple direct flights from Boulder, Colorado to the San Jose Airport, there are none to Waco.
`
`Compare Ex. 11 (no direct flights from Boulder to Waco) with Ex. 12 (seven direct flights from
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`7
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 13 of 22
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`Boulder to San Jose). All five of the witnesses have “relevant and material information,” which
`
`is the Court’s inquiry here. Parus Holdings, No. 6:21-cv-00968-ADA, Dkt. No. 92 at 9 (quoting
`
`In re Hulu, LLC, No. 2021-142, 2021 WL 3278194, at *3 (Fed. Cir. Aug. 2, 2021)).
`
`In short, the Apple witnesses would face significantly greater travel time, distance, and
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`expense if required to attend trial in Waco. Where the distance between two districts exceeds 100
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`miles, “the factor of inconvenience to witnesses increases in direct relationship to the additional
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`distance to be traveled.” Volkswagen I, 371 F.3d at 204-05. If this case remains in this District,
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`the Apple witnesses would need to spend days away from home and work, as opposed to several
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`hours, for two of the witnesses, if the trial takes place in NDCA. For the remaining Apple
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`witnesses, travel to the NDCA is much less burdensome than to Waco as well. The travel burden
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`is significant and has been cited as a key reason why transfer is often appropriate. See
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`Volkswagen II, 545 F.3d at 317 (“Witnesses not only suffer monetary costs, but also the personal
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`costs associated with being away from work, family and community.”); see also In re Acer
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`America Corp., 626 F.3d 1252, 1255 (2010). For all of these reasons, it is clearly more
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`convenient for NDCA-based witnesses to attend trial in NDCA. Volkswagen II, 545 F.3d at 317;
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`In re Apple Inc., 581 F. App’x at 889; InfoGation, No. 6:20‑CV‑00366‑ADA, Dkt. No. 65 at 8
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`(“the cost of attendance for these witnesses will be less if the case is tried in the SDCA than if it
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`were tried in WDTX”).
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`DoDots no doubt will point to the fact that Apple has 7,000 employees in this District.
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`See FAC at ¶ 2. However, neither the accused technology nor the accused products themselves
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`were developed in Waco, Austin, or anywhere else in Texas. See De Atley Decl. at ¶¶ 3, 5;
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`Carlson Decl. at ¶¶ 3,5. Just as important, Apple has not located a single Apple employee in this
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`District who would be a witness at trial. In that situation, the presence of employees in the
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`District does not impact the transfer analysis. See Uniloc USA, Inc. v. Apple Inc., No. A-18-cv-
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`990-LY, 2019 WL 2066121 at *3 (W.D. Tex. April 08, 2019); Peak Completion Techs., Inc. v. I-
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`TEC Well Solutions, LLC, No. A-13-cv-086-LY, 2013 WL 12121002 at *3 (W.D. Tex. June 26,
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`2013) (presence of an office and personnel in the district did not weigh against transfer because
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`those individuals were not likely witnesses). Equally important, “the Federal Circuit has already
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`found that more witnesses in the NDCA should mark this factor in favor of transfer.” Parus
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`Holdings, No. 6:21-cv-00968-ADA, Dkt. No. 92 at 11. Similarly, the presence of Best Buy
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`stores in this District does not impact the transfer analysis. Employees at Best Buy stores will not
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`be witnesses in this case because BestBuy does not participate in the design or development of
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`the Accused Products. Where a number of likely witnesses are in the transferee district and none
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`are in the transferor district, the most important factor in the transfer analysis strongly favors
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`transfer. See MasterObjects, Inc. v. Facebook, Inc., No. 6:20-cv-00087-ADA, Dkt. No. 86 (W.D.
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`Tex. July 13, 2021).
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`2.
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`The Relative Ease Of Access To Sources Of Proof Strongly Favors
`Transfer.
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`When the bulk of relevant evidence is located in the requested transferee district, the ease
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`of access to evidence factor strongly favors transfer. “This factor relates to the ease of access to
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`non-witness evidence, such as documents and other physical evidence … .” In re Apple Inc., 979
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`F.3d 1332, 1339 (Fed. Cir. 2020). Despite advances in technology that simplify transfer of some
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`electronic files, “precedent dictates the Court consider where sources of proof are physically
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`located.” CloudofChange, LLC v. NCR Corp., No. 6:19-cv-00513, 2020 WL 6439178, at *3 n.2
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`(W.D. Tex. Mar. 17, 2020).
`
`In Polaris Innovations Ltd. v. Dell, Inc., No. SA-16-CV-451, 2016 WL 7077069 (W.D.
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`Tex. Dec. 5, 2016), the defendant had an Austin office with 300 employees, including at least
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 15 of 22
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`one Austin-based engineer with knowledge of the accused products. Id. at *3. Still, the Court
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`found that the bulk of the evidence was in California, and that this factor thus weighed in favor
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`of transfer. Id. at *5; see also 10Tales, Inc., 2021 WL 2043978, at *2 (“If TikTok were to
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`possess any physical documentation valuable to the adjudication of this dispute, 10Tales’
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`amended complaint implies that such information will likely come from the NDCA or
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`somewhere else in California.”). This Court recently reached a similar conclusion in Flexiworld.
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`No. 6:20-cv-00553-ADA, Dkt. No. 101 at 8-9.
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`Here, although Apple has a campus in Austin in this District, the inquiry is where
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`documents relevant to this case are located—and none are in this District. City of New Orleans
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`Emps.’ Ret. Sys. ex rel. BP P.L.C. v. Hayward, 508 F. App’x 293, 297 (5th Cir. 2013) (affirming
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`transfer to where “the relevant documents … could be found,” despite presence of documents “of
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`questionable relevance” in the transferor forum (quotations omitted)); Volkswagen II, 545 F.3d at
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`316 (analyzing only location of documents “relating to the accident” at issue). Apple’s witnesses
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`with relevant and material information—software engineers and marketing and licensing
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`personnel—have confirmed that Apple’s relevant sources of proof are primarily in the NDCA.
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`See De Atley Decl. ¶ 7; Thai Decl. ¶ 6. The rest are in the Portland area in Oregon, or in Boulder,
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`Colorado, where Eric Carlson and Jackie Harlow, live and work, respectively. See Carlson Decl.
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`¶ 7; Harlow Decl. ¶ 6. Any Apple documents in this District are not relevant to the claims or
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`defenses in this case. De Atley Decl. ¶ 8; Carlson Decl. ¶ 7; Thai Decl. ¶ 7; Harlow Decl. ¶ 7.
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`Specifically, the majority of the development of the accused software technology and the
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`accused products themselves took place and continues to take place at Apple’s Cupertino
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`headquarters, with some of the accused .ipa file technology development occurring in Oregon.
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`Carlson, Decl. ¶¶ 3, 5; De Atley, Decl. ¶¶ 3, 5. The source code related to the accused software
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`Case 6:22-cv-00533-ADA Document 64 Filed 01/11/23 Page 16 of 22
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`technology was developed and tested in the NDCA, and access to that source code happens on a
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`need-to-know basis by Apple employees in the NDCA and in Portland, Oregon. Carlson Decl.
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`¶ 7; De Atley, Decl. ¶ 7. And the Apple documents related to the marketing, sales, and financial
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`information for the accused products are in Cupertino, California. See Thai Decl. ¶ 6. The same
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`is true of Apple’s licensing documents. Harlow Decl. ¶ 6. Thus, the bulk of the sources of proof
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`for this case are in NDCA. As for Best Buy, it is clear from DoDots’ infringement contentions
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`that DoDots only alleges that Best Buy sells the accused products at store locations and nothing
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`else. See Ex. 42. As such, Best Buy has no documents about the accused software because it has
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`no role in developing that software.
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`Turning to the DoDots side, Apple expects that Mainstream Scientific LLC, the original
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`applicant of the ’545 patent and the original assignee of the ’083 and ’407 patents, will have
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`documents about the filing, prosecution, and reduction to practice of the asserted patents.
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`Mainstream Scientific is located in Los Altos, California, in the NDCA. See Ex. 13. Just as
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`important, at least three of the eleven named inventors appear to reside in the NDCA today. See
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`Exs. 14-16 and 19. And because DoDots itself was founded in Silicon Valley and has a place of
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`business in Dana Point, California, Apple expects that its sources of proof are in California.
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`Conversely, Apple is not aware of any unique, relevant sources of proof in this District. This
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`factor therefore strongly favors transfer to the NDCA.
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`3.
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`The Availability Of Compulsory Process Strongly Favors Transfer.
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`The availability of compulsory process factor strongly favors transfer because key third-
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`party witnesses are within the subpoena power of the NDCA and not this District. See
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`Genentech, 566 F.3d at 1345 (compulsory-process factor “weighs in favor of tran