Case 6:23-cv-00158-ADA Document 93 Filed 08/19/24 Page 1 of 21
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`JAWBONE INNOVATIONS, LLC,
`Plaintiff,
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`v.
`META PLATFORMS, INC.,
`Defendant.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`CIVIL NO. W-23-CV-00158-ADA
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`PUBLIC VERSION
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`ORDER DENYING DEFENDANT’S MOTION TO TRANSFER
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`I.
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`INTRODUCTION
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`Before the Court is Defendant Meta Platforms, Inc.’s (“Meta”) Opposed Motion to Trans-
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`fer Venue to the Northern District of California. ECF No. 28. The motion was filed on November
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`21, 2023. Id. After completing venue discovery, Plaintiff Jawbone Innovations, LLC’s (“Jaw-
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`bone”) responded in opposition to the motion on April 5, 2024. ECF No. 64. Meta replied in sup-
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`port of the motion on April 19, 2024. ECF No. 70. And Jawbone filed a sur-reply in further oppo-
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`sition to the motion on April 26, 2024. ECF No. 74. After considering the relevant facts, the par-
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`ties’ arguments, and the applicable law, the motion is DENIED.
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`II. BACKGROUND
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`In its Complaint, Jawbone claims Meta infringed on U.S. Patent Nos. 8,019,091 (“the ’091
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`patent”); 7,246,058 (“the ’058 patent”); 10,779,080 (“the ’080 patent”); 11,122,357 (“the ’357
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`patent”); 8,467,543 (“the ’543 patent”); 8,503,691 (“the ’691 patent”); 8,321,213 (“the ’213 pa-
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`tent”); and 8,326,611 (“the ’611 patent”) (collectively, “the Meta patents”), which relate to noise
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`suppression technology. ECF No. 1 at ¶ 7‒14; 20, 23, 25, 27, 29. The accused products include
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`Meta’s Quest products, Portal products, and Smart Glasses. See ECF No. 28 at 2 (listing specific
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`accused products); ECF No. 64 at 2.
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`III. 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 wit-
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`nesses, . . . a district court may transfer any civil action to any other district or division where it
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`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 unneces-
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`sary problems of conflict of laws of the application of foreign law.” Id. Courts evaluate these
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`factors based on the situation which existed at the time of filing, rather than relying on hindsight
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`knowledge of the defendant’s forum preference. Hoffman v. Blaski, 363 U.S. 335, 343 (1960).
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`The moving party has the burden to prove that a case should be transferred for convenience.
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`Volkswagen II, 545 F.3d at 314. The burden is not simply that the alternative venue is more con-
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`venient, but that it is clearly more convenient. Id. at 314–15. While “clearly more convenient” is
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`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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`IV. ANALYSIS
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`A. Threshold Determination
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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 Northern District of California (“NDCA”). Nei-
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`ther party disputes that venue could be proper in the NDCA. Meta operates a regular and estab-
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`lished place of business in the Bay Area within the NDCA. ECF No. 28 at 2, 9. This Court therefore
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`finds that venue would have been proper in the NDCA had the suit originally been filed there.
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`Thus, the Court now analyzes the private and public interest factors to determine whether the
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`NDCA is a clearly more convenient forum than the Western District of Texas (“WDTX”).
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`B. Private Interest Factors
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`The private interest 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 attendance
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`for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious
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`and inexpensive. See In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (Volkswagen
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`II) (citing Volkswagen I, 371 F.3d at 203).
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`i. The Cost of Attendance and Convenience for Willing Witnesses
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`The most significant 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 wit-
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`nesses would be required to travel a significant distance no matter what venue they testify in. In
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`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 dis-
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`tance. Id. Yet the Federal Circuit has also held that when willing witnesses will have to travel a
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`significant distance to either forum, the slight inconvenience of one forum in comparison to the
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`other should not weigh heavily on the outcome of this factor. In re Apple, 979 F.3d at 1342. More
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`recently, the Fifth Circuit has noted that it is improper to ignore the rule, the implication being that
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`it should always apply. In re TikTok, 85 F.4th at 361–62.
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`Meta argues that this factor strongly favors transfer. According to Meta, most of the em-
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`ployees with relevant knowledge about the accused products and features are located in the NDCA
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`and Washington. See ECF No. 28 at 1, 13 (“Meta’s witnesses with technical, financial, and mar-
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`keting information relevant to this action work in California (most in NDCA) or Washington State,
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`and would find it much more convenient to testify in NDCA.”). Meta explains that there are three
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`Meta teams responsible for the Accused Features (
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`ECF No. 28 at 3, 10.
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`).
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`. Id. at
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`3. According to Meta, these three teams are based in the NDCA and Redmond, Washington. Id.
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`Meta specifically identifies ten willing witnesses in NDCA:
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`laration, ECF No. 28-1 at 5‒11. Meta lists an additional six willing witnesses for which it alleges
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`the NDCA is a more convenient forum than the WDTX:
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`. ECF No. 70 at 7; Evans Dec-
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`. ECF No. 70 at 7. While the
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`Court finds that the presence of many of these witnesses in California and Washington would
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`weigh in favor of transfer, there are a few exceptions. For instance, as Jawbone points out,
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` is a relevant witness for technology that is no longer accused (e.g., physical VADs). ECF
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`No. 64 at 9. Additionally, , as
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`an Illinois resident, resides closer to WDTX than to the
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`NDCA. In accordance with the 100-mile rule, the presence of witnesses in Illinois would weigh
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`against transfer because these witnesses are closer to Waco than the NDCA. See Volkswagen II,
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`545 F.3d at 317.
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`In its response, Jawbone identifies at least twenty Texas-domiciled Meta employees:
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`. ECF No. 64 at 6‒8. Jawbone identifies an additional four Meta employees
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`with relevant information located closer to the WDTX than the NDCA:
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`. Id. at 8.
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`Jawbone points to this Court’s Order Denying Defendant’s Motion to Transfer in Immer-
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`sion Corp. v. Meta Platforms Inc., No. 6:22-cv-541-ADA, ECF No. 84 (W.D. Tex. May 5, 2023)
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`(hereinafter “Immersion”), where this Court found at least 22 willing Meta witnesses for which
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`the WDTX was more convenient than the NDCA. Immersion at 20. Notably, those Texas-domi-
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`ciled Meta employees were found to have relevant information regarding the same Quest products
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`accused in this case. See id. at 2, 8‒17. Jawbone lists at least twelve of those same witnesses that
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`it insists are “equally relevant here for the same reasons” pertaining to audio functionality
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`witnesses as having any relevance, claiming that they were “familiar with the haptics at issue in
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`Immersion—not the audio functionality (nor specifically, audio capture functionality) at issue
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`). ECF No. 64 at 6. Meta disputes these
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`here.” ECF No. 70 at 2 (emphasis in original). Because the Court has already previously found
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`these twelve individuals have relevant technical information about development on some of the
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`Accused Products (Meta’s virtual reality systems, such as the Meta Quest 2 and Quest Pro prod-
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`ucts), the Court agrees with Jawbone that these witnesses are relevant. ECF No. 64 at 6‒8; see
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`Immersion at 11‒17. This Court does not ignore that different (haptic) functionality was at issue
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`in Immersion, whereas audio functionality is at issue here. However, the Court agrees with Jaw-
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`bone that these twelve individuals have relevant experience in both cases. For instance, Mr. Nel-
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`son, Product Design Manager for Reality Labs, was previously found to be a relevant technical
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`witness based on his “experience focused on the operating system for the Accused Products.” Id.
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`at 12. Mr. Veldhuisen, who does “revenue accounting for the Quest 2” likely has relevant financial
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`information. Id. at 13. And Mr. Hooper, as Director of Development, Oculus VR, was found rele-
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`vant regarding his knowledge of “engineering and design of the functionality of the VR products.”
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`Id. at 14. The remaining witnesses are similar in this regard. See also id. at 13‒15 (finding wit-
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`nesses relevant based on marketing and sales knowledge, based on experience as Lead Counsel,
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`and financial knowledge). Nothing in this Court’s prior Order confines these witnesses to haptics
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`functionality.
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`Meta further argues that none of the Immersion personnel are relevant to the Accused Fea-
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`tures at issue in this case and provides supplementary interrogatory responses to this extent. Id.;
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`ECF No. 64-13 at 16‒21. However, the information Meta provides as to these individuals is gen-
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`erally too specific and/or not applicable. For instance, Meta claims that these individuals do not
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`“work on any Accused Features of the Accused Products.” Id. But for the marketing, sales, and
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`finance witnesses, this statement is not particularly telling. Further, Meta’s responses do not nec-
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`essarily refute the witnesses’ relevance. For instance, for
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`, Meta states
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`that their roles are not “product-specific,” but does not specifically refute their knowledge as to
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`the Accused Products. Id. at 17, 19. The same is true with
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`, who Meta claims has a
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`role that is “not specific to any audio components in Meta’s products.” Id. at 19. This description
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`again does not necessarily refute his knowledge in relation to the Accused Products. As to other
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`witnesses, Meta asserts that they have experience with irrelevant areas of the Accused Products
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`(outside of “audio functionality”). But for certain individuals, Meta asserts they do not “develop
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`code or algorithms in Meta’s products, including any audio capture algorithms for noise suppres-
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`sion.” See id. at 17‒19. The varying degrees of specificity are curious. Indeed, depending on the
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`degree of generality, witnesses may or may not be relevant. Considering the contrary evidence
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`tying these individuals to relevant knowledge of the Accused Products, the Court cannot take these
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`statements as dispositive as to the witnesses’ ultimate relevance.
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`Jawbone further identifies Texas-domiciled individuals that are members of the same
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`groups this Court found relevant in Immersion with specific audio functionality experience. See
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`ECF No. 64 at 6‒8 (
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` Based on these employees’ experience and relation
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`to audio functionality of the Accused Products, the Court finds that these witnesses are also poten-
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`tially relevant. See id. (noting specific audio-related experience and participation in audio-related
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`working groups). Meta critiques the usage of membership in Workplace groups, source code
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`check-ins, and LinkedIn profiles, that this reliance is too “vague and speculative.” ECF No. 70 at
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`3‒4. Yet the workplace groups are helpful in identifying employees’ experience/knowledge as well
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`as their interests. It is of probative value when determining what knowledge employees might
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`possess, even if these descriptions are high-level.
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`Jawbone further identifies two of its own witnesses, Daniel Setton (Jawbone’s Manager),
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`and Dr. Greg Burnett (Jawbone’s Chief Scientist and named inventor on all asserted patents), for
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`whom the WDTX is more convenient than the NDCA. ECF No. 64 at 5‒6. Indeed, Dr. Setton
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`resides in New Jersey, and Dr. Burnett resides in Omaha, Nebraska. ECF No. 64-2 at 3; ECF No.
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`64-3 at 2. As Jawbone notes in its brief, the increased mileage for these witnesses alone (over 700
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`miles for Dr. Burnett, and 1,000 miles for Mr. Setton) weighs against transfer. See ECF No. 64 at
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`6. Meta does not dispute the relevance of these two witnesses.
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`Taking all the briefing and exhibits into consideration, the Court finds the record rather
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`unclear as to the relevance of most individuals cited by both parties. On one hand, Jawbone has
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`identified with particularity 26 witnesses who would find Waco to be more convenient. While the
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`Court finds the twelve Immersion witnesses and Texas-domiciled Meta employees to be poten-
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`tially relevant, the Court does not overlook that Meta has provided declarations and interrogatory
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`responses disputing the relevance of many of Jawbone’s purported witnesses. Thus, despite the
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`numerous individuals cited by Jawbone, the Court does not find that the scales are tipped signifi-
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`cantly in favor of Jawbone on this factor alone. On the other hand, Meta has identified at least 18
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`individuals, based on relevant teams, for whom the NDCA would be more convenient. But it is
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`not clear whether Meta conducted an in-depth investigation as to where members of relevant teams
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`are located across the United States (including within this district), and whether Meta’s list of
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`relevant personnel is complete given Jawbone’s contentions. See ECF No. 64, Ex. F at 36:5‒7,
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`68:8‒25, 82:17‒21, 95:22‒25. Indeed, many of the witnesses listed by Jawbone appear to have
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`relevant experience for the accused functionality on the Accused Products. And the Court is skep-
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`tical that 44 witnesses (totaling individuals listed by both Parties) will be necessary to travel to
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`trial in either forum. Thus, the high relevance and number of witnesses who would find the WDTX
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`more convenient weighed against the existence of various teams and relevant witnesses in the
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`NDCA—or closer to the NDCA—leads the Court to find this factor neutral.
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`ii. 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). “In patent
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`infringement cases, the bulk of the relevant evidence usually comes from the accused infringer.
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`Consequently, the place where the defendant’s documents are kept weighs in favor of transfer to
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`that location.” In re Apple Inc., 979 F.3d at 1340 (citing In re Genentech, 566 F.3d at 1345). The
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`Court acknowledges that the Fifth Circuit’s decision in In re Planned Parenthood suggests a shift
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`in the analysis of this factor. The Fifth Circuit recently agreed with a district court that concluded
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`that held this factor neutral when electronic evidence was equally accessible in either forum. In re
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`Planned Parenthood Fed’n of Am., Inc., 52 F.4th 625, 630 (5th Cir. 2022). The Fifth Circuit held
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`that “[t]he location of evidence bears much more strongly on the transfer analysis when . . . the
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`evidence is physical in nature.” Id. But the Federal Circuit has held that it is an error to conclude
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`this factor is neutral because electronic documents are easily accessible in both forums. In re Apple,
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`Inc., No., 2022 WL 1196768, at *4 (Fed. Cir. Apr. 22, 2022). As much as these two holdings can
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`be reconciled, the Court concludes that the location of physical evidence is more important to this
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`analysis than the location of where electronic documents are typically accessed.
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`Meta argues that this factor strongly favors transfer because the employees “responsible
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`for development, engineering, and management of the hardware and software components of the
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`Accused Features,” as well as the marketing and finance employees, are predominantly in NDCA,
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`Southern California, and Redmond, Washington. ECF No. 28 at 9‒10. Meta further points to
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`source code for the Accused Features, which it describes as “restricted,” and can only be down-
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`loaded from its team in Menlo Park and London. Id. Jawbone responds by arguing that its (and
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`third parties’) sources of proof are closer to the WDTX than the NDCA, and Meta’s sources of
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`proof are accessible from the WDTX. ECF No. 64 at 3. As previously found in Immersion, this
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`Court “does not give weight to Meta’s assertion that the source code can only be collected and
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`made available in NDCA” or London. Immersion at 22. This is true for at least three reasons: (1)
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`this Court previously found that Meta has produced code in litigations outside the NDCA on mul-
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`tiple occasions, (2) many, if not all, of these documents are accessible from any location, and (3)
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`Meta’s policy as to producing this information is a self-imposed policy. See id; ECF No. 64-4
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`(noting there are no “specific geographic restrictions on access to [Meta’s] documents within the
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`United States”); ECF No. 28 at 5 (discussing Meta teams’ usage of shared Google Drives and
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`internal Wikis).
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`Most importantly, as discussed above, both Jawbone and Meta have identified relevant
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`employees in the NDCA and the WDTX. See supra Section IV(B)(i). The Court believes it is
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`likely that these employees are custodians for the relevant electronic documents. See In re Google
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`LLC, No. 2021-178, 2021 WL 5292267, *2 (Fed. Cir. Nov. 15, 2021) (holding that it is an error to
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`not “also consider[] the location of document custodians and the location where documents are
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`created and maintained, which may bear on the ease of retrieval”). Additionally, as noted in further
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`detail below, third-party sources of proof—specifically from Qualcomm and NXP (which both
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`have Austin and California offices)—are located both in or near this district and in the NDCA. The
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`Court therefore concludes that, at least in considering technical documentation and third-party ev-
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`idence, this factor is neutral because relevant employees likely create and maintain relevant elec-
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`tronic documents in both forums.
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`Jawbone further contends that its products for distribution and documents related to the
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`asserted patents, marketing, contracts, distribution, and sales activities are in its Waco office. Id.
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`Jawbone points to physical evidence, such as
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`, that are in Omaha, Nebraska. ECF No. 64 at 3. Additionally, Jawbone contends it
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`“houses . . . products for distribution” in its Waco office. Id. Thus, while Meta does not point to
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`any physical evidence located in the NDTX (other than documentation), Jawbone provides physi-
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`cal evidence that is closer to, or located in, the WDTX. However, because Jawbone does not pro-
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`vide specifics as to what “products” are in the WDTX, the Court hesitates to give much weight to
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`this assertion. Indeed, from the briefing, the Court cannot accurately determine what physical ev-
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`idence exists in either forum. Based on relevant sources of proof in both forums, and taking into
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`consideration the uncertainty as to where potential physical evidence is located, the Court ulti-
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`mately finds this factor neutral. See Hammers v. Mayea-Chang, No. 2:19-CV-00181-JRG, 2019
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`WL 6728446 (E.D. Tex. Dec. 11, 2019), 2019 WL 6728446, at *5 (“When the movant fails to
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`provide the factual foundation that is necessary to evaluate the relative convenience of the present
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`and proposed venues, the Court lacks a basis to conclude that the proposed venue is “clearly more
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`convenient” than the present venue. Put another way, if the facts governing convenience are not
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`clearly set forth, the Court cannot conclude that the proposed venue is ‘clearly more convenient.”)
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`(citations omitted).
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`iii. 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 per-
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`son, if the person . . . is commanded to attend a trial and would not incur substantial expense.” Fed.
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`R. Civ. P. 45(c)(1)(A), (B)(ii). Under this factor, the Court focuses on non-party witnesses whose
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`attendance may need to be secured by a court order.” Fintiv Inc., 2019 WL 4743678, at *14 (citing
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`Volkswagen II, 545 F.3d at 316). This factor “weigh[s] heavily in favor of transfer when more
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`third-party witnesses reside within the transferee venue than reside in the transferor venue.” In re
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`Apple, 581 F. App’x 886, 889 (Fed. Cir. 2014) (citing In re Genentech, 566 F.3d at 1345). Fifth
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`Circuit law dictates that “the availability of the compulsory process ‘receives less weight when it
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`has not been alleged or shown that any witness would be unwilling to testify.’” In re Planned
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`Parenthood Fed’n of Am., Inc., 52 F.4th at 630−31 (quoting Hefferan v. Ethicon Endo-Surgery
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`Inc., 828 F.3d 488 (6th Cir. 2016)); see also In re TikTok, Inc., 85 F.4th at 360 (confirming that
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`“Planned Parenthood allows district courts to afford this factor less weight when it has not been
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`alleged or shown that any witness would be unwilling to testify”); contra In re Pandora Media,
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`LLC, 2021-172, 2021 WL 4772805, at *3 (Fed. Cir. 2021) (“witness is presumed to be unwilling”
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`when there is no indication that he or she is willing).
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`Meta again argues that this factor favors transfer. ECF No. 28 at 11. In doing so, Meta
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`enumerates out three categories of potentially relevant third-party witnesses: (1) inventors of the
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`Asserted Patents, (2) prosecution counsel for the Asserted Patents, and (3) third parties related to
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`the development of the Accused Features. Id. We now address each in turn.
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`As to the inventors of the Asserted Patents, Meta argues that four of the six named inventors
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`currently reside in the NDCA. Id. at 12. However, at least two of the inventors Meta suggests live
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`in the NDCA (Eric Breitfeller, and Andrew Einaudi) are listed on patents that are no longer as-
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`serted in the present case, a fact which Meta does not dispute. Two of the remaining inventors,
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`Alexander Asseily and Gregory Burnett, reside in London, England, and Omaha, Nebraska, re-
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`spectively. ECF No. 28 at 6; ECF No. 64-2, 64-3. As to the remaining two inventors, Zhinian Jing
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`Case 6:23-cv-00158-ADA Document 93 Filed 08/19/24 Page 14 of 21
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`and Nicolas Petit, it is not altogether clear where they reside. Meta’s briefing does not even men-
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`tion Petit’s location or where his potential residence may be located. Even assuming Mr. Jing and
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`Mr. Petit reside in the NDCA, Meta fails to allege unwillingness to testify as to either inventor.
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`As to the second category, prosecution counsel, Meta argues that at least five prosecuting
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`attorneys reside in the NDCA. ECF No. 28 at 12. As Jawbone points out in response—and as
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`supported by Meta’s own attached Nguyen Declaration—at least one of these attorneys, Richard
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`Gregory, lives in Houston, Texas. ECF No. 28-2 at ¶ 28. Further still, two other attorneys, Scott
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`Kokka and Barbara Courtney, appear to reside in Austin, Texas and Colorado (or more recently,
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`New York), respectively. ECF No. 64 at 13; ECF No. 65-5 at 9. This is undisputed. See ECF No.
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`70 at 8. In fact, in Meta’s opening brief, Meta asserts that no prosecuting attorneys live in the
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`WDTX. ECF No. 28 at 12. But then in Meta’s reply brief, it states that the only “legitimate” wit-
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`ness subject to compulsory process in this district is prosecution counsel, Mr. Kokka, located in
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`Austin. ECF No. 70 at 8. These contradictions make it difficult for the Court to take Meta’s state-
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`ments regarding the residences of potential third-party witnesses at face value. Thus, at most, this
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`Court finds two attorneys (Howard Yuan and Trueman Denny) from the prosecuting counsel may
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`reside in the NDCA. Again, Meta fails to allege unwillingness to testify as to either attorney.
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`Turning to the third and final category, Meta contends that two “potential non-party wit-
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`nesses are in NDCA,” and that the only non-party involved in developing the Accused Features of
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`the Accused Smart Glasses
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`—is in the NDCA. ECF No. 28 at 12. In response, Jaw-
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`bone identifies 24 relevant witnesses subject to compulsory process in Texas. These witnesses
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`include six former Meta employees (
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`WDTX, including Qualcomm and NXP (Titash R., Hitesh Puri, Suresh Venkumahanti, Eric
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`), a list of current and former employees from vendors in the
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`Jackowski, Nils Peters, Jonathan Phillippe, Adrian Alonso, Haku Sato, Karthik Ramanan, and
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`Aneeket Patkar), and four EssilorLuxottica employees (Elodie Camaret, Joe Ibarra, Scott Smith,
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`and Vishal Keswani). ECF 64 at 10‒13.
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`This Court previously found John Carmack, CTO for Oculus before the acquisition, as
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`possessing “relevant knowledge of the conception, design, and development of accused products
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`that overlap with Oculus technology” in Immersion. Immersion at 9‒10. The Court again finds Mr.
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`Carmack relevant for the same Accused Products in this case. Meta does not provide the Court
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`with any specific reason to discount his relevance. While this Court also found Phillip Dang and
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`Jason Gall to have relevant marketing and financial information about the Accused Products in
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`Immersion, the Court again acknowledges Meta’s declarations asserting that they are irrelevant in
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`the present case. See Immersion at 15‒16; ECF No. 70-2. However, since the employees’ own
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`work group profiles and public descriptions of their professional roles and experiences appear to
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`be potentially relevant, the Court is unable to determine from the parties’ briefing their ultimate
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`importance to the Accused Technology in this case. Regarding the last three Meta employees this
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`Court has not previously analyzed, each employee appears to work on the Accused Products in
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`some relevant way (e.g., on audio across Oculus products, marketing for Smart Glasses, and/or
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`data collection related to Ray-Ban Glasses and Quest headsets). ECF No. 64 at 11. Thus, the Court
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`finds these individuals likely have relevant information regarding the Accused Products.
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`In addressing the Qualcomm and NXP employees, this Court finds at least some of the
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`named individuals to possess relevant information based on public information and LinkedIn pro-
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`files. For instance, Titash R., a Qualcomm employee, has “[d]eployed in low power, high perfor-
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`mance algorithm-HW co-designed XR devices e.g. RayBan smart glasses and Quest MR head-
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`sets.” ECF No. 64 at 11. Other Qualcomm and NXP employees, with experience in audio and
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`Case 6:23-cv-00158-ADA Document 93 Filed 08/19/24 Page 16 of 21
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`video with AR/VR technologies, this Court also finds potentially relevant. See id. at 11‒12 (noting
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`Hitesh Puri and Nils Peters with audio processing experience at Qualcomm, and Jonathan Philippe,
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`Adrian Alonso, Haju Sato, Karthik Ramanan, and Aneeket Patkar with related experience at NXP).
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`While Meta insists these employees are “random,” Meta does not provide the Court any specific
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`reason to discount their relevance. ECF No. 70 at 8. The Court therefore finds that at least some
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`of these named employees from Qualcomm and NXP—vendors located in the WDTX from which
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`Meta sources audio frameworks and audio DSPs for the accused technology—likely have relevant
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`information about the Accused Products.
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`Lastly, as Jawbone points out, Meta provides the accused Ray-Ban smart glasses in part-
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`nership with EssilorLuxottica, the owner of Ray-Ban. ECF No. 64 at 12. Essilor of America (of
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`which EssilorLuxottica is the parent company) is based in Texas, and certain of its employees who
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`possess relevant knowledge of the Accused Smart Glasses are located in Texas as well. See id.
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`(noting Texas-based Essilor employees involved with Meta’s partnership).
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`Other than vague and conclusory assertions by Meta, it is not clear from the record whether
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` is directly involved in development of accused functionality. See ECF No. 28 at 12;
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`ECF No. 64 at 13. Thus, the Court finds that the presence of
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` in the NDCA neither
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`weighs for nor against transfer.
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`From the evidence at hand, although the Court finds several witnesses with relevant infor-
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`mation reside in California, Plaintiff has also shown several third-party witnesses in this district
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`who could also be relevant. Since the number of third-party witnesses located in Texas outweighs
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`the number located in California, the Court finds that this factor weighs slightly against transfer.
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`But since neither party alleged nor provided evidence of unwillingness to testify, this factor re-
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`ceives less weight in the Court’s ultim