Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 1 of 19 PageID #: 1833
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`JAPAN DISPLAY INC. and PANASONIC
`LIQUID CRYSTAL DISPLAY CO., LTD.,
`
`
`Plaintiffs,
`
`
`
`
`CIVIL ACTION NO. 2:20-cv-00283-JRG
`(LEAD CASE)
`CIVIL ACTION NO. 2:20-cv-00284-JRG
`CIVIL ACTION NO. 2:20-cv-00285-JRG
`(CONSOLIDATED)
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`TIANMA MICROELECTRONICS CO.
`LTD.,
`
`
`v.
`
`Defendant.
`
`
`DEFENDANT’S MOTION TO TRANSFER
`TO THE CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`
`Page 1 of 19
`
`Tianma Exhibit 1016
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 2 of 19 PageID #: 1834
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`LEGAL STANDARDS ...................................................................................................... 2
`
`III.
`
`FACTUAL BACKGROUND ............................................................................................. 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`Plaintiffs JDI and Panasonic, and Third Party JDI America .................................. 3
`
`Tianma Microelectronics ........................................................................................ 4
`
`Third Party Tianma America and Its U.S.-Based Activities ................................... 4
`
`Third Party Hitachi America ................................................................................... 6
`
`IV. ARGUMENT ...................................................................................................................... 7
`
`A.
`
`B.
`
`Plaintiffs Could Have Originally Brought Suit Against TMC in the Central
`District of California ............................................................................................... 7
`
`The Private Factors Weight Heavily in Favor of Transferring This Case .............. 7
`
`
`
`
`
`
`
`
`
`The first private interest factor favors transfer because significantly
`more sources of proof reside in the Central District of California
`than anywhere else in the United States. .................................................... 7
`
`The second private interest factor favors transfer because the
`Central District of California Court can compel the attendance of
`relevant third-party witnesses, while the Eastern District of Texas
`cannot. ......................................................................................................... 8
`
`The third private interest factor favors transfer because the cost of
`attending trial in the Central District of California will be lower for
`most of the willing witnesses. ..................................................................... 9
`
`The fourth private interest factor is neutral because transferring
`this case to the Central District of California would present no
`other practical problems. ........................................................................... 10
`
`C.
`
`The Public Factors Further Weigh in Favor of Transferring This Case. .............. 11
`
`
`
`
`
`The Central District of California has a strong local interest in
`determining a patent dispute between two companies with
`California subsidiaries. ............................................................................. 12
`
`The other public factors are neutral. ......................................................... 13
`
`V.
`
`CONCLUSION ................................................................................................................. 13
`
`DEFENDANT’S MOTION TO TRANSFER - Page ii
`
`Page 2 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 3 of 19 PageID #: 1835
`
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`Page(s)
`
`Cases
`
`Alexander v. Daybrook Fisheries, Inc.,
`No. G-06-505, 2007 U.S. Dist. LEXIS 35048 (S.D. Tex. May 14, 2007) .................................8
`
`Blue Spike, LLC v. Juniper Networks Inc., No. 6:17-CV-16-KNM, 2018 U.S. Dist.
`LEXIS 239344 (E.D. Tex. Mar. 8, 2018); .................................................................................9
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)......................................................................................9, 10, 13
`
`In re Hoffman La-Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................12
`
`In re HTC Corp.,
`889 F.3d 1349 (Fed. Cir. 2018)..................................................................................................7
`
`Humble Oil & Ref. Co. v. Bell Marine Serv., Inc.,
`321 F.2d 53 (5th Cir. 1963) .......................................................................................................2
`
`Japan Display Inc. v. Tianma America, Inc.,
`No. 2:21-mc-00374-CAS-MAAx (C.D. Cal. Apr. 5, 2021) ......................................................1
`
`Mohamed v. Mazda Motor Corp.,
`90 F. Supp. 2d 757 (E.D. Tex. 2000) .......................................................................................11
`
`Monarch Networking Solutions LLC v. Cisco Sys., Inc.,
`Case No. 2:20-cv-00015-JRG (E.D. Tex. Jan. 5, 2021) ............................................................8
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009)............................................................................................2, 13
`
`Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc.,
`No. 2:09-cv-200-TJW, 2011 U.S. Dist. LEXIS 78312 (E.D. Tex. July 19,
`2011) ........................................................................................................................................11
`
`Tech. Props. Ltd. v. Canon, Inc.,
`No. 6:12-cv-202, 2014 WL 12603506 (E.D. Tex. July 15, 2014) .............................................9
`
`Trover Grp., Inc. v. Tyco Int’l, Ltd.,
`No. 2:13-CV-0052-WCB, 2014 U.S. Dist. LEXIS 193369 (E.D. Tex. Apr. 11,
`2014) ........................................................................................................................................12
`
`DEFENDANT’S MOTION TO TRANSFER - Page iii
`
`Page 3 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 4 of 19 PageID #: 1836
`
`
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ...............................................................................................2, 10
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ...........................................................................................2, 3, 10
`
`W. Coast Trends, Inc. v. Ogio Int’l, Inc.,
`No. 6:10-CV-688, 2011 U.S. Dist. LEXIS 124343 (E.D. Tex. Oct. 27, 2011) .......................12
`
`Federal Statutes
`
`28 U.S.C. § 1404 ..............................................................................................................................8
`
`28 U.S.C. § 1404(a) ...............................................................................................................1, 2, 11
`
`28 U.S.C. § 1782 ..............................................................................................................................1
`
`Rules
`
`Fed. R. Civ. P. 45(c) ........................................................................................................................9
`
`DEFENDANT’S MOTION TO TRANSFER - Page iv
`
`Page 4 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 5 of 19 PageID #: 1837
`
`
`
`I.
`
`INTRODUCTION
`
`It is an open secret that Plaintiffs purposely avoided naming Tianma America, Inc.
`
`(“TMA”) as a defendant so they could keep this dispute away from California, where both Japan
`
`Display Inc.’s (“JDI”) U.S. subsidiary and TMA reside. And, up until just a few weeks ago,
`
`Plaintiffs had been careful to direct discovery requests only to Defendant Tianma
`
`Microelectronics Co. Ltd. (“TMC”).
`
`But things finally changed in late April, when Plaintiffs issued a subpoena to TMA. That
`
`subpoena seeks all documents and information for all TMA products, as well as depositions of
`
`TMA witnesses. Although TMA is still not a party to this case, Plaintiffs’ latest attempt to drag
`
`in witnesses, documents, and other information from TMA makes it much more appropriate for a
`
`California court to adjudicate this case. Indeed, less than three months ago, when JDI wanted to
`
`get documents from TMA for use in another case, it asked the Central District of Californianot
`
`this courtfor assistance.1
`
`Aside from this being Plaintiffs’ preferred forum, none of the parties has any apparent
`
`connection to Texas. With two Japanese companies suing a Chinese company, Plaintiffs could
`
`have brought this case anywhere in the U.S. But third-party witnesses, particularly TMA
`
`witnesses, are all located in California; and relevant documents, if any, are in California.
`
`Defendant TMC therefore respectfully moves the Court to transfer the above-captioned cases to
`
`the Central District of California pursuant to 28 U.S.C. § 1404(a). This motion is timely in light
`
`of recent developments in this case.
`
`
`1 On April 5, 2021, JDI obtained a subpoena from the Central District of California under 28
`U.S.C. § 1782, in which seeks information from TMA for use in JDI’s dispute with TMC in
`China. See Japan Display Inc. v. Tianma America, Inc., No. 2:21-mc-00374-CAS-MAAx (C.D.
`Cal. Apr. 5, 2021).
`
`DEFENDANT’S MOTION TO TRANSFER - Page 1
`
`Page 5 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 6 of 19 PageID #: 1838
`
`
`
`II.
`
`LEGAL STANDARDS
`
`“For the convenience of parties and witnesses, in the interest of justice, a district court
`
`may transfer any civil action to any other district or division where it might have been
`
`brought . . . .” 28 U.S.C. § 1404(a). “[T]he burden that a moving party must meet to justify a
`
`venue transfer is less demanding than that a moving party must meet to warrant a forum non
`
`conveniens dismissal.” In re Volkswagen of Am., Inc., 545 F.3d 304, 314 (5th Cir. 2008)
`
`(“Volkswagen II”). To justify transfer pursuant to 28 U.S.C. § 1404(a), a moving party must first
`
`show that “the judicial district to which transfer is sought would have been a district in which the
`
`claim could have been filed.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004)
`
`(“Volkswagen I”). Then, the moving party must show the “transferee venue is clearly more
`
`convenient” than the district where the case was originally filed. Volkswagen II, 545 F.3d at 315.
`
`When deciding whether to transfer, courts analyze “private” factors relating to the
`
`convenience of parties and witnesses, as well as “public” factors relating to the interests of the
`
`competing venues in hearing the case. See Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321
`
`F.2d 53, 56 (5th Cir. 1963); In re Nintendo Co., Ltd., 589 F.3d 1194, 1197–98 (Fed. Cir. 2009).
`
`The private factors are:
`
`(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.”
`
`Volkswagen I, 371 F.3d at 203.
`
`The public factors include:
`
`(1) the administrative difficulties flowing from court congestion;
`
`DEFENDANT’S MOTION TO TRANSFER - Page 2
`
`Page 6 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 7 of 19 PageID #: 1839
`
`
`
`(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.
`
`A plaintiff’s choice of venue is not a factor in the transfer analysis. Volkswagen II, 545
`
`F.3d at 315. Rather, this choice is taken into account through the “clearly more convenient”
`
`standard applied by the Court in weighing the movant’s transfer request. Id.
`
`III.
`
`FACTUAL BACKGROUND
`
`A.
`
`Plaintiffs JDI and Panasonic, and Third Party JDI America
`
`Japan Display, Inc. (“JDI”) is a Japanese corporation with its principal place of business
`
`in Japan. (Dkt. 1 ¶ 1.) According to its website, its only presence in North America is a single
`
`sales office in Silicon Valley, California, which operates as a separate subsidiary, JDI Display
`
`America, Inc. (“JDI America”). (Decl. of A. Skoyles, Ex. 1.) JDI has not alleged and is not
`
`believed to have any presence (employees, offices, etc.) in the Eastern District of Texas or
`
`anywhere else in Texas. (See, e.g., Ex. 2 (no employees shown in Texas on LinkedIn).) Its only
`
`connection to Texas appears to be this lawsuit and those previously filed against it here.
`
`On June 1, 2021, TMC sought a subpoena of third party JDI America seeking evidence
`
`regarding JDI’s prior use products and sales thereof, among other topics. (Ex. 3.) JDI and/or JDI
`
`America appear to have employees residing in California including at least Naoto Oki, senior
`
`manager of sales, who may have information relating to JDI’s prior art sales. (Ex. 4.) Mr. Oki
`
`appears to have been employed by JDI America from its inception in 2012 through 2015 and has
`
`since then been an employee of the parent company JDI, while still listing his location as “Santa
`
`Clara, California.” (Id.)
`
`DEFENDANT’S MOTION TO TRANSFER - Page 3
`
`Page 7 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 8 of 19 PageID #: 1840
`
`
`
`Panasonic Liquid Crystal Display Co. Ltd. (“Panasonic”) is also a Japanese corporation
`
`with its principal place of business in Japan. (Dkt. 1 ¶ 3.) Panasonic does not appear to have
`
`relevant witnesses in Texas.
`
`B.
`
`Tianma Microelectronics
`
`TMC is a Chinese corporation organized under the laws of the People’s Republic of
`
`China and has its principal place of business in Shenzhen, China. (Dkt. 1 ¶ 5.)
`
`
`
`
`
`
`
`
`
` (Ex. 5; Skoyles Dec. ¶¶ 6-7.)
`
`C.
`
`Third Party Tianma America and Its U.S.-Based Activities
`
`When it filed its Complaints, JDI knew that TMA was TMC’s U.S.-based subsidiary
`
`headquartered in Chino, California. (See Dkt. 1. ¶¶ 8, 11.) JDI relied on TMA’s activities to form
`
`the allegations in the Complaint but only named TMC, the foreign entity, defendant. As such,
`
`TMA is a third party to the present dispute.
`
`Third party TMA is a wholly-owned subsidiary of TMC with two offices in California
`
`and one in Michigan. (Declaration of TMA CEO Eric Cheng ¶¶ 3-4.) TMA is incorporated in
`
`California and has its principal place of business in Chino, California. (Id. ¶ 4.)
`
`
`
`
`
`
`
`TMA has no office or place of business in Texas. (Cheng Dec. ¶ 5). TMA does business
`
`from its California headquarters through distributors and sales representatives across the United
`
`States. (Id. ¶ 6.) Customers have the option of purchasing either standard, off-the-shelf products
`
`
`
`DEFENDANT’S MOTION TO TRANSFER - Page 4
`
`Page 8 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 9 of 19 PageID #: 1841
`
`
`
`from TMA or requesting a customized product with the customer’s desired features. (Id.)
`
` (Id. ¶ 7.)
`
`
`
` TMA
`
`has
`
` based in California. (Id. ¶ 9.) If anybody has knowledge relevant to this case
`
`and sought by Plaintiffs’ subpoena, they would be among these
`
`. In addition, some of
`
`these employees are familiar with and will be able to testify that the sales from TMC to TMA
`
`took place in China, not in the United States.
`
`For example, TMA employees with relevant knowledge include:
`
`(1) Shide (Eric) Cheng is the CEO of TMA is the primary individual
`responsible for TMA’s activities in the United States and is
`knowledgeable about TMA’s relationship with TMC, its corporate history,
`structure, and overall business plan. (Cheng Dec. ¶ 1.)
`
`(2) Yuanzheng (Rob) Li, Director of Engineering of TMA, is
`knowledgeable about and responsible for the engineering activities of
`TMA related to the accused products. (Id. ¶ 10.)
`
`(3) Jian Jun Li, Director of Sales, is knowledgeable about and
`responsible for TMA industrial sales activities in the United States,
`including sales that TMA makes to US customers, and TMA purchases
`from TMC. (Id. ¶ 11.)
`
`(4) Dean Collins, Director of Marketing, is knowledgeable about and
`responsible for TMA’s marketing activities, including any marketing that
`may involve the accused products. (Id. ¶ 12.)
`
`(5) Kristin Ling, Inside Sales Manager, is knowledgeable about and
`responsible for orders placed with TMC, including any orders that may
`involve the accused products. (Id. ¶ 13.)
`
`(6) Melody Wowczuk, Accounting, is knowledgeable about and
`responsible for invoices that TMA may receive from TMC, including any
`invoices that may involve the accused products. (Id. ¶ 14.)
`
`(7) Arthur Ceballos, Logistics Manager, is knowledgeable about and
`responsible for the mechanics and logistics of how TMA receives products
`
`DEFENDANT’S MOTION TO TRANSFER - Page 5
`
`Page 9 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 10 of 19 PageID #: 1842
`
`
`
`from TMC, including inventory, storage, and delivery to downstream
`customers, including deliveries involving accused products. (Id. ¶ 15.)
`
`Of these 7 individuals, Dean Collins works in Santa Clara, California, while all others are
`
`located in Chino, California. (Id. ¶ 10-15.) TMA has no employees with equivalent knowledge
`
`located outside of California.2 (Id.)
`
`On the technical side,
`
`
`
`
`
` But to the extent any technical documents for the
`
`accused products even arguably relevant to this case are located in the United States, those
`
`records would be managed by TMA from California. (Id.)
`
`In sum, potential witnesses and documents sought by Plaintiffs’ subpoena, as well as
`
`evidence from TMA that may be relevant to Defendant’s claims, are all located in the Central
`
`District of California.
`
`D.
`
`Third Party Hitachi America
`
`TMC also recently issued a subpoena to third party Hitachi America Ltd., the U.S.
`
`subsidiary of Hitachi Corp., which is also located in California, in Santa Clara. (Ex. 7.) Hitachi is
`
`one of the predecessors of JDI, and Hitachi America may have information regarding both the
`
`prior use prior art and license agreements relevant to the patents in suit. Hitachi America has not
`
`yet responded to the subpoena.
`
`
`2 TMA has two employees in Texas: Shawn Hendricks in Austin, a regional sales director for the
`central U.S., and Dan Gutierrez in Arlington, a field application engineer for central U.S.
`customers. (Id. ¶ 16.) These employees report to and are directed by TMA’s headquarters in
`California and were not sent to Texas by TMA. They have much less knowledge than those in
`California on any relevant topic. (Id. ¶ 17.)
`
`DEFENDANT’S MOTION TO TRANSFER - Page 6
`
`Page 10 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 11 of 19 PageID #: 1843
`
`
`
`IV. ARGUMENT
`
`Plaintiffs Could Have Originally Brought Suit Against TMC in the Central
`A.
`District of California
`
`The sole defendant in this case, TMC, is a foreign defendant. For foreign defendants,
`
`venue is proper anywhere if they are subject to personal jurisdiction in the U.S. In re HTC Corp.,
`
`889 F.3d 1349, 1354-55 (Fed. Cir. 2018). Thus, if Plaintiffs could bring this suit anywhere in the
`
`U.S., they could have done so in the Central District of California.
`
`B.
`
`The Private Factors Weight Heavily in Favor of Transferring This Case
`
`The first three private factors—the location of the sources of proof, the number of
`
`witnesses under each jurisdiction’s subpoena power, and the convenience of willing witnesses—
`
`all weigh heavily towards a transfer to the Central District of California because the sources of
`
`proof and witnesses predominately reside within that district or nearby. The final private factor—
`
`other practical considerations—is neutral because neither venue has made any substantive
`
`rulings on the patents in these cases. Therefore, the totality of the private factors weighs heavily
`
`in favor of transfer.
`
`
`
`The first private interest factor favors transfer because significantly
`more sources of proof reside in the Central District of California than
`anywhere else in the United States.
`
`The first private interest factor—which considers which judicial district houses more
`
`sources of proof—favors transfer. Both JDI and TMC have subsidiaries, and their related sources
`
`of proof, residing within California. And none of the entities involved in this case appear to have
`
`any sources of proof in the Eastern District of Texas.
`
`Through their subpoena (Ex. 6), Plaintiffs have put heavy emphasis on the sources of
`
`proof in possession of TMA, which is located in the Central District of California.
`
`
`
`. (Cheng Dec.
`
`DEFENDANT’S MOTION TO TRANSFER - Page 7
`
`Page 11 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 12 of 19 PageID #: 1844
`
`
`
`¶ 8, 13-14, 19). Thus, evidence regarding TMA’s sales and U.S. shipments will be located in
`
`California, not Texas. (Id. ¶ 8.) To the extent TMA has any relevant technical documents, those
`
`records would be managed by TMA from California as well. (Id. ¶ 18.)
`
`TMA maintains electronic documents in California and does not anticipate identifying
`
`non-electronic physical documents. TMA does not have any documents or electronic repositories
`
`located in Texas. (Id. ¶ 18.) The fact that TMA’s electronic documents could be accessed from
`
`other locations neither supports nor weighs against transfer under § 1404. Cf. Monarch
`
`Networking Solutions LLC v. Cisco Sys., Inc., No. 2:20-cv-00015-JRG (E.D. Tex. Jan. 5, 2021).
`
`Indeed, this case has almost no connection to Texas. Neither JDI, Panasonic, nor TMC
`
`have offices, presence, employees, or any other sources of evidence in Texas.3 See, e.g., Ex. 1-2.
`
`See Alexander v. Daybrook Fisheries, Inc., No. G-06-505, 2007 U.S. Dist. LEXIS 35048, at *10
`
`(S.D. Tex. May 14, 2007) (“While the fact that Plaintiff chose this forum and that some delay
`
`will result from transfer weigh in favor of retention, these factors are outweighed by the fact that
`
`this case has almost no connection to Texas.”). JDI’s initial disclosures identified TriStar as a
`
`sales representative for TMA in Texas, but JDI does not seem to have any interest in pursuing
`
`discovery from TriStar. (Dkt. 1 ¶ 10.)
`
`In sum, the first private interest factor strongly favors transfer.
`
`
`
`The second private interest factor favors transfer because the Central
`District of California Court can compel the attendance of relevant
`third-party witnesses, while the Eastern District of Texas cannot.
`
`TMC is not aware of, and Plaintiffs have not identified, any third parties with knowledge
`
`or information potentially relevant to this case and residing within 100 miles of this District,
`
`DEFENDANT’S MOTION TO TRANSFER - Page 8
`
`Page 12 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 13 of 19 PageID #: 1845
`
`
`
`other than TriStar. To the contrary, JDI’s subpoena recognizes the relevancy of the activities of
`
`TMA’s employees and business records in California. (See Dkt. 1 ¶¶ 8, 10.) Employees of TMA
`
`with relevant knowledge are located in Chino, California. (Cheng Dec. ¶¶ 1, 9-11, 13-15.) A
`
`court in the Central District of California would have subpoena power over those employees
`
`(who are third-party witnesses), but the Eastern District of Texas would not. See Fed. R. Civ. P.
`
`45(c). The relevancy of TriStar is minimal at best, since any sales it makes must be handled via
`
`TMA in California (Cheng Dec. ¶¶ 6, 8), and Plaintiffs are not even seeking discovery from
`
`TriStar. Accordingly, the second private interest factor strongly favors transfer. In re Genentech,
`
`Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009) (citation omitted) (“The fact that the transferee venue
`
`is a venue with usable subpoena power here weighs in favor of transfer, and not only slightly.”).
`
`
`
`The third private interest factor favors transfer because the cost of
`attending trial in the Central District of California will be lower for
`most of the willing witnesses.
`
`The Central District of California is significantly more convenient for willing witnesses
`
`because TMA, JDI America, Hitachi America and their witnesses are located in California, and
`
`California is significantly easier and less expensive to reach from China or Japan than Marshall,
`
`Texas for witnesses from TMC, JDI, or Panasonic. (Exs. 8-15.) “The convenience of witnesses is
`
`probably the single most important factor in transfer analysis.” Genentech, Inc., 566 F.3d at 1343
`
`(citation omitted). “[A]dditional distance [from home] means additional travel time; additional
`
`travel time increases the probability for meal and lodging expenses; and additional travel time
`
`with overnight stays increases the time which these fact witnesses must be away from their
`
`regular employment.” Volkswagen II, 545 F.3d at 317 (citation omitted).
`
`Courts are particularly sympathetic of any inconvenience for non-party witnesses. Blue
`
`Spike, LLC v. Juniper Networks Inc., No. 6:17-CV-16-KNM, 2018 U.S. Dist. LEXIS 239344, at
`
`*7 (E.D. Tex. Mar. 8, 2018); see also Tech. Props. Ltd. v. Canon, Inc., No. 6:12-cv-202, 2014
`
`DEFENDANT’S MOTION TO TRANSFER - Page 9
`
`Page 13 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 14 of 19 PageID #: 1846
`
`
`
`WL 12603506, *5 (E.D. Tex. July 15, 2014) (“The Court weighs most heavily the convenience
`
`of non-party witnesses.”). As Plaintiffs’ claims are based on alleged U.S. sales, most of the
`
`relevant sales information would come from TMA, based in California. Most of TMA’s
`
`witnesses live within the Central District of California. See supra at IV.C. Third party JDI
`
`America and Hitachi America are also California-based companies and witnesses likely reside in
`
`California. See supra at IV.A. It is significantly more convenient for those witnesses to travel to
`
`Los Angeles, California than it is for them to travel to Marshall, Texas. (Exs. 8-9.) Moreover,
`
`Plaintiffs have indicated that they intend to rely on technical experts in Sammamish, Washington
`
`and Powell Butte, Oregon, both of which are significantly closer to the Central District of
`
`California than to the Eastern District of Texas. It would be much more convenient for JDI
`
`America’s witnesses and expert witnesses to attend trial in their home state (or near-home state)
`
`of California than in Texas.
`
`Additionally, many of the parties’ fact witnesses are located abroad, either in China for
`
`TMC or Japan for JDI or Panasonic. Travelling to Los Angeles from either of those locations
`
`will be significantly less expensive and time consuming than travelling to Marshall, Texas. (Exs.
`
`10-14.)
`
`In sum, the third private interest strongly favors transfer.
`
`
`
`The fourth private interest factor is neutral because transferring this
`case to the Central District of California would present no other
`practical problems.
`
`The fourth factor is neutral because, to date, none of the Patents-in-Suit have been
`
`previously litigated as part of a patent infringement dispute, and no substantive proceedings
`
`regarding the Patents-in-Suit have occurred in this litigation. This case presents no other
`
`“practical problems” that make trial more “easy, expeditious and inexpensive” in either forum.
`
`See Volkswagen I, 371 F.3d at 203. This factor is therefore neutral.
`
`DEFENDANT’S MOTION TO TRANSFER - Page 10
`
`Page 14 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 15 of 19 PageID #: 1847
`
`
`
`JDI has wrongly suggested that this motion is untimely due to the time passed since the
`
`Complaint. (See Dkt. 1 (August 2020).) But in venue analysis, delay, or “judicial economy,” is
`
`“generally considered in connection with the ‘other practical problems’ private interest factor.”
`
`Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc., No. 2:09-cv-200-TJW,
`
`2011 U.S. Dist. LEXIS 78312, *8 (E.D. Tex. July 19, 2011) (granting a motion to transfer
`
`despite a 17-month delay after filing of complaint). More importantly, timeliness of a motion to
`
`transfer turns on the maturity and circumstances of the litigation, not just its pendency. As
`
`mentioned above, Plaintiffs had been purposely avoiding TMA until just a few weeks ago. See,
`
`Ex. 6. And TMC is filing this motion only a few weeks after the subpoena to TMA.
`
`Moreover, the Court has not adjudicated any substantive issues of the case so far. Claim
`
`construction has just begun, no Markman briefs have been submitted, and a Markman hearing is
`
`not scheduled until mid-August. (See Dkt. 34.) Fact discovery continues until September. Three
`
`depositions have occurred, two of TMA CEO Eric Cheng in California related to jurisdictional
`
`discovery and the TMA subpoena, and one in Macao, China in January 2021 of a TMC
`
`employee related to jurisdictional discovery. JDI has also delayed depositions of its own
`
`inventors due to Covid-travel related complications involved in having witnesses travel out of
`
`Japan for deposition.
`
`C.
`
`The Public Factors Further Weigh in Favor of Transferring This Case.
`
`The public factors further weigh in favor of transfer. With regard to the second public
`
`factor, the Central District of California has a strong local interest in resolving disputes involving
`
`California entities. The other public factors weigh neither for nor against transfer.
`
`DEFENDANT’S MOTION TO TRANSFER - Page 11
`
`Page 15 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 16 of 19 PageID #: 1848
`
`
`
`
`
`The Central District of California has a strong local interest in
`determining a patent dispute between two companies with California
`subsidiaries.
`
`The Central District of California has a strong local interest in this case “because the
`
`cause of action calls into question the work and reputation of several individuals residing in or
`
`near that district.” See In re Hoffman La-Roche Inc., 587 F.3d 1333, 1336 (Fed. Cir. 2009). Here,
`
`JDI, a Japanese corporation with a U.S. subsidiary in San Jose, California, and Panasonic
`
`accuses TMC, a Chinese corporation with a U.S. subsidiary in Chino, California, of infringing its
`
`patents, including via sales to and of TMA in the U.S.
`
`
`
`. Thus,
`
`Plaintiffs’ allegations call into question the work and reputation of California entities and
`
`implicate local California interests.
`
`On the other hand, none of the parties, witnesses, or documents reside in Texas.
`
`
`
`
`
`and fail to establish “a meaningful connection to the case” for the purpose of the
`
`transfer analysis. See Nintendo, 589 F.3d at 1198. The presence TMA’s two employees in Texas
`
`and a third-party representative TriStar cannot outweigh the Central District of California’s
`
`relatively strong local interest in this case. This factor weighs in favor of transfer. W. Coast
`
`Trends, Inc. v. Ogio Int’l, Inc., No. 6:10-CV-688, 2011 U.S. Dist. LEXIS 124343, at *14 (E.D.
`
`Tex. Oct. 27, 2011) (“Because [plaintiff] has identified no connection to Texas except for one
`
`patent prosecution attorney who lives ‘in the vicinity of Austin, Texas,’ this [local interest] factor
`
`weighs in favor of transfer.”).
`
`DEFENDANT’S MOTION TO TRANSFER - Page 12
`
`Page 16 of 19
`
`

`

`Case 2:20-cv-00283-JRG Document 71 Filed 06/17/21 Page 17 of 19 PageID #: 1849
`
`
`
`
`
`The other public factors are neutral.
`
`First, both the Central District of California and the Eastern District of Texas are familiar
`
`with patent law. Thus, the venues’ relative familiarity with the appliable law does not weigh for
`
`or against transfer.
`
`Second, the relative time to trial is also neutral. The relative time to trial is the “most
`
`speculative” transfer analysis factor. Genentech, 566 F.3d at 1347. In situations where “several
`
`relevant factors weigh in favor of transfer and others are neutral, the speed of the transferee
`
`district court should not alone outweigh all of the other factors.” Id. The Central District of
`
`California averages 36.9 months to jury trial, while the Eastern District of Texas averages 28.4.
`
`(Ex. 16.)
`
`Third, this case presents no conflicts of laws issues.
`
`In short, only California’s strong interest in resolving this dispute weighs in favor of
`
`transfer.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, TMC respectfully requests that this Court transfer this case to
`
`the Central District of California.
`
`
`
`Dated: June 15, 2021
`
`Respectfully submitted,
`
`
`
`
`
`By: /s/ Aidan C. Skoyles
`
`James R. B