Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 1 of 23
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`CARBYNE BIOMETRICS, LLC,
`
`
`Plaintiff,
`
`
`
`
`APPLE INC.,
`
`
`v.
`
`Defendant.
`
`
`CIVIL ACTION NO. 1:23-CV-00324-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`DEFENDANT APPLE INC.’S SEALED OPPOSED MOTION TO TRANSFER VENUE
`UNDER 28 U.S.C. § 1404(a)
`
`
`
`
`
`

`

`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 2 of 23
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION............................................................................................................. 1
`
`FACTUAL BACKGROUND ........................................................................................... 2
`
`Page
`
`This Lawsuit and The Asserted Patents .................................................................. 2
`A.
`The Vast Majority of Apple’s Witnesses and Documents Are in N.D. Cal. .......... 2
`B.
`Carbyne Has No Connection to W.D. Tex. ............................................................ 5
`C.
`Relevant Nonparty Witnesses Are Primarily in California. .................................... 5
`D.
`III. APPLICABLE LAW ........................................................................................................ 7
`
`IV.
`
`V.
`
`THIS ACTION COULD HAVE BEEN BROUGHT IN N.D. CAL. ............................ 8
`
`N.D. CAL. IS CLEARLY THE MORE CONVENIENT VENUE ............................... 8
`
`A.
`
`The Private Interest Factors Weigh Decisively in Favor of Transfer ..................... 8
`1.
`Relative ease of access to sources of proof strongly favor transfer ............ 8
`
`2.
`
`3.
`
`4.
`
`Cost of attendance for willing witnesses favors transfer .......................... 10
`
`Compulsory process over third-party witnesses favors transfer ............... 13
`
`Any remaining “practical problems” are neutral ...................................... 14
`
`B.
`
`Public Interest Factors Weigh in Favor of Transfer .............................................. 14
`1.
`The court congestion factor is neutral ....................................................... 14
`
`2.
`
`3.
`
`The local interest factor favors transfer .................................................... 14
`
`Familiarity with governing law and conflicts factors are neutral ............. 15
`
`VI. CONCLUSION ............................................................................................................... 15
`
`
`
`
`
`i
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`

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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 3 of 23
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`AlmondNet, Inc. v. Samsung Elecs. Co.,
`No. W-21-CV-00891-ADA, 2022 WL 17574082 (W.D. Tex. Nov. 28, 2022) .....................8, 9
`
`In re Apple Inc.,
`2021 WL 5291804 (W.D. Tex. Nov. 15, 2021) .......................................................9, 10, 11, 15
`
`In re Apple Inc.,
`818 F. App’x 1001 (Fed. Cir. 2020) ....................................................................................7, 17
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020)......................................................................................1, 10, 14
`
`In re Apple, Inc.,
`581 F. App’x 886, 889 (Fed. Cir. 2014) ..................................................................................13
`
`In re Cray Inc.,
`871 F.3d 1355 (Fed. Cir. 2017)..................................................................................................8
`
`Cub Club Inv., LLC v. Apple, Inc.,
`No. 6:20-cv-00856-ADA, ECF No. 28 (W.D. Tex. Sept. 7, 2021) .........................................10
`
`DataQuill, Ltd. v. Apple Inc.,
`No. A-13-CA-706, 2014 WL 2722201 (W.D. Tex. June 13, 2014) ......................................8, 9
`
`In re DISH Network, LLC,
`No. 2021-182, 2021 WL 4911981 (Fed. Cir. Oct. 21, 2021).............................................14, 15
`
`Freshub, Inc. v. Amazon.com Inc.,
`No. 19-cv-388-ADA, 2019 WL 10856832 (W.D. Tex. Sept. 9, 2019) ...................................12
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)................................................................................................13
`
`In re Google LLC,
`No. 2021-178, 2021 WL 5292267 (Fed. Cir. Nov. 15, 2021) ................................................8, 9
`
`In re HP Inc.,
`826 F. App’x 899 (Fed. Cir. 2020) ............................................................................................7
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) ...................................................13
`
`
`
`ii
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`

`

`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 4 of 23
`
`
`
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ..............................................................................10, 11, 12, 15
`
`In re Juniper Networks, Inc.,
`No. 2021-156, 2021 WL 4519889 (Fed. Cir. Oct. 4, 2021)...................................................2, 7
`
`LoganTree LP v. Apple Inc.,
`No. 6:21-cv-00397-ADA, 2022 WL 1491097 (W.D. Tex. May 11, 2022) ...................7, 11, 14
`
`In re Microsoft Corp.,
`No. 2023-128, 2023 WL 3861078 (Fed. Cir. June 7, 2023) ................................................8, 12
`
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ........................................................................................9, 12, 15
`
`In re TracFone Wireless, Inc.,
`848 F. App’x 899 (Fed. Cir. 2021) ..........................................................................................14
`
`In re TS Tech. USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)................................................................................................15
`
`VLSI Tech. LLC v. Intel Corp.,
`No. 6:19-cv-00254-ADA, 2019 WL 8013949 (W.D. Tex. Oct. 7, 2019) ................................10
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ...............................................................................................7, 11
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .................................................................................................7, 8
`
`XY, LLC v. Trans Ova Genetics, LC,
`No. W-16-CA-447, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) ...........................................8
`
`Zentian Ltd. v. Apple, Inc.,
`No. W-22-CV-00122-ADA, 2023 WL 4167746 (W.D. Tex. June 13, 2023) .........................14
`
`Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................8
`
`28 U.S.C. § 1404(a) ...........................................................................................................1, 2, 7, 11
`
`Other Authorities
`
`Fed. R. Civ. P. 45(c) ......................................................................................................................13
`
`
`
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`
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`iii
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`

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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 5 of 23
`
`Abbreviation
`Apple
`Carbyne
`Compl.
`W.D. Tex.
`N.D. Cal.
`’512
`’105
`’138
`’010
`’656
`’886
`Asserted Patents
`Authentication
`Patents
`Fraud Reduction
`Patents
`Accused
`Technologies
`Keychain
`PICs
`Roth Decl.
`Benson Decl.
`Currie Decl.
`Goldberg Decl.
`Harlow Decl.
`Heard Decl.
`Paaske Decl.
`Spevak Decl.
`Šubert Decl.
`Veron Decl.
`Wells Decl.
`
`TABLE OF ABBREVIATIONS
`
`Definition
`
`Defendant Apple Inc.
`Plaintiff Carbyne Biometrics, LLC
`Plaintiff’s Complaint for Patent Infringement (ECF No. 1)
`United States District Court for the Western District of Texas
`United States District Court for the Northern District of California
`U.S. Patent No. 10,929,512
`U.S. Patent No. 11,475,105
`U.S. Patent No. 11,514,138
`U.S. Patent No. 9,972,010
`U.S. Patent No. 10,713,656
`U.S. Patent No. 11,526,886
`The ’512, ’105, ’138, ’010, ’656, and ’886 patents
`The ’512, ’105, and ’138 patents
`
`The ’010, ’656, and ’886 patents
`
`Face ID; Touch ID; iCloud Keychain; device-side Apple Cash; and
`the Secure Enclave, including communication therefrom
`iCloud Keychain
`Carbyne’s Preliminary Infringement Contentions
`Declaration of Cassandra Roth and exhibits thereto
`Declaration of Wade Benson
`Declaration of Matthew Currie
`Declaration of Robin Goldberg
`Declaration of Jaqueline Harlow
`Declaration of Richard Heard
`Declaration of Tim Paaske
`Declaration of Catherine Spevak
`Declaration of Martin Šubert
`Declaration of Maxime Veron
`Declaration of Nicole Wells
`
`iv
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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 6 of 23
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`
`
`I.
`
`INTRODUCTION
`
`The connections between this suit and the Northern District of California (“N.D. Cal.”) are
`
`overwhelming, particularly as compared to its meager connections to the Western District of Texas
`
`(“W.D. Tex.”). Defendant Apple Inc. (“Apple”) thus seeks transfer to N.D. Cal. under 28 U.S.C.
`
`§ 1404(a) for the “convenience of parties and witnesses, in the interest of justice.”
`
`Other than this litigation, Plaintiff Carbyne Biometrics LLC (“Carbyne”) appears to have
`
`no connection to Texas. Carbyne is a Delaware non-practicing entity with a principal place of
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`business in New York and is not registered to do business in Texas. Carbyne has not identified any
`
`witnesses, custodians, or records of its own (or the original patentee) in Texas. All of the
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`connections Carbyne has identified between this suit and W.D. Tex. are legally irrelevant,
`
`including irrelevant employees (e.g., Apple employees who do not work with any accused
`
`technology), speculation about hiring plans (e.g., including one position filled in Cupertino, CA),
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`and irrelevant facilities (e.g., Apple retail stores selling the accused products). These general
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`contacts that are untethered to the lawsuit and common across districts are of no moment—the
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`§ 1404 inquiry concerns only “significant connections between a particular venue and the events
`
`that gave rise to a suit.” In re Apple Inc., 979 F.3d 1332, 1345 (Fed. Cir. 2020) (“Apple III”).
`
`Here, the relevant witnesses, custodians, and records are primarily in Apple’s N.D. Cal.
`
`headquarters, where the vast majority of the accused features were researched, designed, and
`
`developed. Specifically, Carbyne’s allegations implicate five distinct technologies in Apple’s
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`products: (1) Face ID; (2) Touch ID; (3) iCloud Keychain; (4) device-side Apple Cash; and (5) the
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`Secure Enclave, including communication therefrom (the “Accused Technologies”). 1 Apple
`
`
`1 Although Carbyne also accuses Password autofill, Find My remote wiping and the Mac migration
`tool, it accuses portions that relate to iCloud keychain security, which are within the wheelhouse
`
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`1
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`

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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 7 of 23
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`
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`employees in N.D. Cal. developed these Accused Technologies. Dozens of relevant third parties,
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`including PayPal, TabletKiosk, and Think Computer Corp., are also in California, while few are
`
`in Texas.
`
`Apple respectfully requests transfer under 28 U.S.C. § 1404(a) because “the center of
`
`gravity of this action is clearly in” N.D. Cal.—not W.D. Tex. In re Juniper Networks, Inc., No.
`
`2021-156, 2021 WL 4519889, at *3 (Fed. Cir. Oct. 4, 2021) (“Juniper I”).
`
`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`This Lawsuit and The Asserted Patents
`
`Carbyne accuses a combination of Face ID, Touch ID, iCloud Keychain (“Keychain”), and
`
`Secure Enclave features of infringing the Authentication Patents and accuses a combination of
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`Face ID, Apple Cash, and the Secure Enclave features of infringing the Fraud Reduction Patents.
`
`Compl. ¶¶ 74-75, Exs. G-O (claim charts). Its allegations are limited to Apple products that
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`purportedly use the accused software features: for the Authentication Patents, A-Series
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`iOS/iPadOS devices with Touch ID or Face ID and M-Series Macs using Touch ID; and for the
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`Fraud Reduction Patents, iOS or iPadOS devices with Face ID. Id. There is no dispute that the
`
`claims do not involve any novel hardware and are instead addressed to software alone or software
`
`running on a particular arrangement of conventional hardware components.
`
`B.
`
`The Vast Majority of Apple’s Witnesses and Documents Are in N.D. Cal.
`
`Apple is a California corporation headquartered in Cupertino, CA since 1976. Ex. 1 at 1-
`
`2; Ex. 2 at 1. Apple employs more than 35,000 people who work in or near its headquarters. Ex. 3
`
`at 2. The marketing, licensing, and finance operations for the accused products occur in N.D. Cal.,
`
`and nearly all of Apple’s likely trial witnesses on these subjects are in N.D. Cal:
`
`
`of Mr. Benson and his team. See infra § II.B. Carbyne’s Preliminary Infringement Contentions
`(“PICs”) do not accuse Apple Pay or Apple Wallet. Compl. ¶ 68 (accusing both).
`
`2
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`

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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 8 of 23
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`
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`Catherine Spevak (Finance Manager) is knowledgeable about Apple’s financial records.
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`Spevak Decl. ¶¶ 1, 4. Ms. Spevak and her team work and reside in N.D. Cal. Id.
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`Maxime Veron (Senior Director, Product Marketing) is knowledgeable about Apple’s
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`marketing practices. Veron Decl. ¶ 4. He and his team work and reside in N.D. Cal. Id. ¶¶ 1, 5-6.
`
`Jaqueline Harlow (Principal Counsel and Senior Manager) and her team are responsible
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`for patent licensing. Harlow Decl. ¶¶ 5-6. She works and resides in Colorado, and her team (except
`
`for one other individual in Colorado) works and resides in N.D. Cal. Id. ¶ 6.
`
`Moreover, all but one of Apple’s likely technical witnesses are located in N.D. Cal.:
`
`Wade Benson (Software Development Engineer, Security) and his Data Protection Team
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`are responsible for the software components of the accused products’ security architecture,
`
`including that of the Secure Enclave and the Keychain. Benson Decl. ¶¶ 1, 3. Four of the five
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`members of Mr. Benson’s team (including Mr. Benson) are in Cupertino, and the fifth is in
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`Maryland. Id. ¶¶ 1, 4. None of his team has ever been based in Texas. Id. ¶ 4. Carbyne contends
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`that Secure Enclave is involved in infringement of every Asserted Patent and that Keychain is
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`involved in infringement of every Authentication Patent. Ex. 4 (’512) at 1-4 (Secure Enclave), 36-
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`43 (Keychain); Ex. 5 (’105) at 1-4 (Secure Enclave), 21-33 (Keychain); Ex. 6 (’138) at 1-4 (Secure
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`Enclave), 16-25 (Keychain); Ex. 7 (’010) at 1-3; Ex. 8 (’656) at 1-3; Ex. 9 (’886) at 1-5.
`
`Nicole Wells (Machine Learning Manager, Video Computer Vision) and her team develop
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`on-device computer vision and machine perception technologies, including Face ID software.
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`Wells Decl. ¶¶ 1, 3. Her team is located in Cupertino (12 members, including Ms. Wells) and
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`Seattle, WA (four members); none of her team is located in Texas. Id. Her team does not interact
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`with any Apple teams or third parties in Texas. Id. Carbyne contends Face ID is involved in
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`infringement of every Asserted Patent. Ex. 4 at 10-14; Ex. 5 at 15-19; Ex. 6 at 16-25; Ex. 7 at 3-4;
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`3
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`

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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 9 of 23
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`Ex. 8 at 3-5; Ex. 9 at 13-15.
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`Richard Heard (Software Development Engineer, Applications Manager, Wallet Apps &
`
`Frameworks) manages the device-side engineering team responsible for designing and developing
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`Apple Cash and Apple Pay software on iPhones, iPads, and Macs. Heard Decl. ¶¶ 1, 3. All
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`members of Mr. Heard’s team who work on Apple Cash or its intersection with the Messages
`
`application are in Cupertino (six members, including Mr. Heard), New York (three members), or
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`Oregon (one member). Id. ¶ 4. None of his team members has ever been based in Texas, nor does
`
`he or his team interact with other Apple teams or third parties in Texas. Id. ¶¶ 4, 6. Carbyne accuses
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`Apple Cash (including its integration with Messages and Apple Pay) in connection with the Fraud
`
`Reduction Patents. Ex. 7 at 13; Ex. 8 at 14-18; Ex. 9 at 15-16.
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`Martin Šubert (Software Development Engineer) and his team develop and validate
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`algorithms for Apple’s Touch ID. Šubert Decl. ¶¶ 1, 3. Mr. Šubert and his entire nine-person team
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`are located in Prague, Czech Republic, and have never been based in Texas. Id. His team does not
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`interact with anyone in Texas. Id. ¶ 3. Carbyne accuses Touch ID in connection with the
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`Authentication Patents. Ex. 4 at 10-14; Ex. 5 at 8-15; Ex. 6 at 16-25.
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`None of Apple’s likely trial witnesses is in Texas. And as shown by the foregoing teams’
`
`locations, the Accused Technologies have no Texas connection. Wells Decl. ¶ 1, 3; Šubert Decl. ¶
`
`1, 3; Benson Decl. ¶¶ 1, 4; Heard Decl. ¶ 4.
`
`Although some Secure Enclave and Apple Cash engineers work in Austin, their work is
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`not relevant to the accused functionality. The Secure Enclave engineers work on the Secure
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`Enclave hardware, not on the software implementation that is the target of Carbyne’s allegations.
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`Compl. ¶¶ 74-75; Paaske Decl. ¶¶ 6-9, 11 (identified engineers do not work on software). The
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`claims do not involve novel hardware and are instead directed to software alone or software
`
`4
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`

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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 10 of 23
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`
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`running on a particular arrangement of generic hardware. E.g., Pltf Opp. to Mot. to Dismiss at 10;
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`e.g., ’512, cl. 21 (“a computer program product embodied in a non-transitory computer readable
`
`storage medium and comprising computer instructions”); ’010, cl. 17 (same); ’656, cl. 19 (same);
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`’886, cl. 11 (same); ’105, cl. 35 (similar). Even if hardware was relevant, the person most
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`knowledgeable (Mr. Paaske) is in Cupertino. Paaske Decl. ¶¶ 1, 3-9, 11. The Austin Apple Cash
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`employees (whose roles focus on server-side or post-transaction events) are likewise irrelevant
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`because the accused features (which are client-side) were designed and developed by a team in
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`Cupertino. Heard Decl. ¶¶ 3-4, 7.
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`None of Apple’s likely trial witnesses nor their teams store documents in Texas. Benson
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`Decl. ¶ 5; Wells Decl. ¶ 4; Heard Decl. ¶ 5; Šubert Decl. ¶ 4; Spevak Decl. ¶ 4; Veron Decl. ¶ 7;
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`Harlow Decl. ¶ 8. Apple has no relevant data centers or servers in Texas. Goldberg Decl. ¶¶ 7-19.
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`Certain electronic records, such as the financial and marketing records, are accessible only by
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`authorized employees based out of N.D. Cal. Spevak Decl. ¶ 4; Veron Decl. ¶ 7.
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`C.
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`Carbyne Has No Connection to W.D. Tex.
`
`Carbyne is incorporated in Delaware, operates in New York, does not allege any
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`connection to or interest in Texas, and is not registered to do business in Texas. Compl. ¶ 5; Ex.
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`10. Carbyne was not involved in the Asserted Patents’ development. And Carbyne has not
`
`identified any relevant witnesses, documents, or evidence in Texas, let alone in W.D. Tex.
`
`D.
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`Relevant Nonparty Witnesses Are Primarily in California.
`
`Based on Apple’s investigation to date, multiple relevant nonparty witnesses are in
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`California and subject to compulsory process in N.D. Cal., but not W.D. Tex.
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`PayPal, headquartered in San Jose, CA. Ex. 11 at 1, 3. Because Dr. Jakobsson filed the
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`Asserted Patents (or their parents) while employed by PayPal, Apple intends to seek discovery
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`5
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`

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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 11 of 23
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`
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`from PayPal to determine whether PayPal owns the Asserted Patents.2 PayPal’s former witness on
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`this subject was in San Jose, so PayPal’s likely witness is in N.D. Cal. Ex. 23 at 2.
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`Other key third parties. Other early developers of authentication translation and fraud
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`reduction technologies are in California, and Apple expects that they will have invalidating system
`
`prior art. For example, Think Computer Corp., owner of FaceCash, is headquartered in Palo Alto,
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`CA (which is in N.D. Cal.), and TabletKiosk, owner of Sahara Slate PC devices, is headquartered
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`in Torrance, CA. See, e.g., Ex. 14 (FaceCash); Ex. 15 (Think Computer Corp.); Ex. 16 (Sahara);
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`Ex. 17 at 1 (TabletKiosk).
`
`Apple has identified 178 patents and patent applications as potentially invalidating prior
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`art, of which approximately 83 inventors and 26 assignees are in California (not including Apple
`
`or its acquisitions), including US Pat. Nos. 9,558,485, and Pat. Pub. No. 2010/0042535A1, while
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`only 10 inventors and two assignees are in Texas. E.g., Exs. 18-19. Apple’s art search is ongoing.
`
`Carbyne’s PICs do not accuse any nonparties of involvement in infringement. Tellingly,
`
`they do not mention 1Password or Finisar (entities named in the Complaint).
`
`Prior Patent Owners. At issuance, the Asserted Patents were assigned to RightQuestion,
`
`LLC (“RightQuestion”), and to the extent PayPal does not have records of the development of the
`
`Asserted Patents, RightQuestion may have records. RightQuestion and other previous owners of
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`the Asserted Patents (Carbyne LLC and Extricatus LLC) may have records of positions prior
`
`
`2 The sole inventor of all six Asserted Patents, Dr. Jakobsson, was employed by PayPal from May
`2011 to September 2013. Ex. 12 at 3. For the Authentication Patents, Carbyne does not claim a
`conception/reduction to practice date earlier than the provisional application filed on January 17,
`2012, when Dr. Jakobsson was employed by PayPal. Ex. 12 at 3; Ex. 13 at 8-9. For the Fraud
`Reduction Patents, the provisional application may not enable the patents, and therefore the alleged
`inventions’ conception/reduction to practice may have occurred during Dr. Jakobsson’s
`employment with PayPal. For example, U.S. Patent No. 8,458,041, the first non-provisional patent
`in the Fraud Reduction family, was filed on May 3, 2011. ’101 at Cover.
`
`6
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`

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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 12 of 23
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`
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`owners took about the Asserted Patents in litigation or licensing. All but one of these prior
`
`assignees has a principal office in N.D. Cal. Exs. 20, 21. None has any known tie to Texas.
`
`III. APPLICABLE LAW
`
`A defendant is entitled to transfer under 28 U.S.C. § 1404(a) if it shows (1) that the suit
`
`“might have been brought” in the transferee district and (2) the “transferee venue is clearly more
`
`convenient” than the district in which suit was filed. In re Volkswagen of Am., Inc., 545 F.3d 304,
`
`312-15 (5th Cir. 2008) (en banc) (“Volkswagen II”). In determining relative “convenience,” courts
`
`weigh the “private” and “public” interest factors. Id. at 315. The weighing of the factors “reflects
`
`the appropriate deference to which the plaintiff’s choice of venue is entitled.” Id. 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.” In re
`
`Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (citation omitted) (“Volkswagen I”). The public
`
`factors are: “(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 or in the
`
`application of foreign law.” Id. Of these factors, the “convenience of the witnesses is probably the
`
`single most important.” In re Apple Inc., 818 F. App’x 1001, 1003 (Fed. Cir. 2020) (citation
`
`omitted) (“Apple I”). On balance, courts should look to where the action’s “center of gravity” is.
`
`Juniper I, 2022 WL 1491097, at *3. The transferee venue is clearly more convenient when, as
`
`here, it is the defendant’s home and the plaintiff has no ties to the transferor forum. See In re HP
`
`Inc., 826 F. App’x 899, 904 (Fed. Cir. 2020).
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`
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`7
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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 13 of 23
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`
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`IV.
`
`THIS ACTION COULD HAVE BEEN BROUGHT IN N.D. CAL.
`
`Because Apple is a California corporation headquartered in N.D. Cal., this suit could have
`
`been brought in that district. See Volkswagen II, 545 F.3d at 312-13; see also 28 U.S.C. § 1400(b);
`
`In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017); Ex. 2 at 1-2.
`
`V.
`
`N.D. CAL. IS CLEARLY THE MORE CONVENIENT VENUE
`
`This action’s “center of gravity” is N.D. Cal., where the vast majority of potential witnesses
`
`with relevant information reside and where accused product features were developed. In re
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`Microsoft Corp., No. 2023-128, 2023 WL 3861078, at *2 (Fed. Cir. June 7, 2023).
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`A.
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`The Private Interest Factors Weigh Decisively in Favor of Transfer
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`1.
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`Relative ease of access to sources of proof strongly favor transfer
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`Relevant sources of proof are overwhelmingly in N.D. Cal., while minimal, if any,
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`evidence is in W.D. Tex. “In patent infringement cases, the bulk of the relevant evidence usually
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`comes from the accused infringer. Consequently, the place where the defendant’s documents are
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`kept weighs in favor of transfer to that location.” Apple III, 979 F.3d at 1339-40 (citation omitted);
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`see DataQuill, Ltd. v. Apple Inc., No. A-13-CA-706, 2014 WL 2722201, at *3 (W.D. Tex. June
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`13, 2014) (the “location of the [accused infringer’s] documents tends to be the more convenient
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`venue”) (citation omitted). Courts “look to the location where the allegedly infringing products
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`were researched, designed, developed and tested.” XY, LLC v. Trans Ova Genetics, LC, No. W-
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`16-CA-447, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5, 2017) (citation omitted).
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`Here, Apple’s sources of proof are overwhelmingly in and around Apple’s N.D. Cal.
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`headquarters, where Apple creates and maintains most of its relevant documents and where most
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`of its document custodians reside. In re Google LLC, No. 2021-178, 2021 WL 5292267, at *2
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`(Fed. Cir. Nov. 15, 2021) (“[L]ocation of document custodians and . . . [document] creat[ion] and
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`maint[enence] . . . may bear on the ease of retrieval.”); AlmondNet, Inc. v. Samsung Elecs. Co.,
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`8
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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 14 of 23
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`
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`No. W-21-CV-00891-ADA, 2022 WL 17574082, at *5–7 (W.D. Tex. Nov. 28, 2022).
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`Specifically, Face ID, Touch ID, Keychain, and the accused Apple Cash features were designed
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`and developed in Cupertino, CA and Prague, Czech Republic, and nearly all the custodians with
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`access to those documents are still in N.D. Cal. and Prague. Wells Decl. ¶¶ 3-4; Šubert Decl. ¶¶ 1,
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`3-4; Benson Decl. ¶¶ 1, 3-5; Heard Decl. ¶¶ 3-5. Likewise, the design and development of the
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`software aspects of the Secure Enclave have always occurred in California. Benson Decl. ¶¶ 1, 3-
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`4. See Paaske Decl. ¶¶ 3-11. Apple’s marketing, licensing, and finance decisions related to the
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`Accused Technologies all occur in N.D. Cal., and Apple’s business records relating thereto are
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`primarily in N.D. Cal. Veron Decl. ¶ 4-7; Harlow Decl. ¶ 5-8; Spevak Decl. ¶ 1, 4. That this wealth
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`of evidence exists in N.D. Cal. is “unsurprising”—that is where the Accused Technologies were
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`“researched, designed, and developed.” In re Samsung Elecs. Co., 2 F.4th 1371, 1379-80 (Fed.
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`Cir. 2021) (“Samsung”); see DataQuill, 2014 WL 2722201, at *3 (because Apple designed the
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`accused products at its headquarters, relevant documents “are likely to be found” there).
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`Apple has greater ease of access to documents in N.D. Cal. because its N.D. Cal. employees
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`have the “need-to-know basis” credentials required to access relevant documents. Benson Decl. ¶
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`5; Wells Decl. ¶ 4; Heard Decl. ¶ 5; Spevak Decl. at ¶ 4; Harlow Decl. ¶ 8; Veron Decl. ¶ 7; see
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`In re Apple Inc., No 2021-181, 2021 WL 5291804, at *2 (Fed. Cir. Nov. 25, 2021) (“Apple II”)
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`(finding factor favors transfer where “essentially all of [a party’s] source code and document[s]”
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`were in the transferee district, regardless of whether the party could theoretically give remote
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`access to otherwise-irrelevant employees in the transferor district). Apple’s Austin-based
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`employees do not have such credentials. Benson Decl. ¶ 5; Wells Decl. ¶ 4; Harlow Decl. ¶ 8;
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`Veron Decl. ¶ 7; Šubert Decl. ¶ 4.
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`By contrast, Carbyne is a Delaware non-practicing entity that likely has few sources of
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`9
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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 15 of 23
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`proof anywhere—let alone any in W.D. Tex. Carbyne does not appear to conduct any significant
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`business activities and therefore is not likely to have many documents, much less any in Texas.
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`None of the Complaint’s allegations are tethered to W.D. Tex.
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`As for third parties, the potential sources of proof in the possession of PayPal, Think
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`Computer Corp., Extricatus, RightQuestion, and numerous inventors and authors of potentially
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`invalidating prior art, are likely in N.D. Cal., weighing in favor of transfer. See supra § II.D; VLSI
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`Tech. LLC v. Intel Corp., No. 6:19-cv-00254-ADA, 2019 WL 8013949, at *3-4 (W.D. Tex. Oct.
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`7, 2019) (noting that third-party sources of proof are relevant).
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`Accordingly, the “wealth of important information” in N.D. Cal. “turns this factor in favor
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`of transfer.” Apple III, 979 F.3d at 1340 (holding it was error not to “meaningfully consider”
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`Apple’s “significant amount of relevant information in NDCA, including” source code and records
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`relating to research and design, marketing, sales, and financial information”); see also Cub Club
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`Inv., LLC v. Apple, Inc., No. 6:20-cv-00856-ADA, slip op., at 6 (W.D. Tex. Sept. 7, 2021), ECF
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`No. 28 (“Given (1) that Apple resides in [N.D. Cal.] and (2) that the accused features were
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`apparently developed [there] … this factor weighs in favor of transfer to NDCA.”).
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`2.
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`Cost of attendance for willing witnesses favors transfer
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`The convenience and cost of witness attendance is the most important factor, and this
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`consideration is no less important for party witnesses. See In re Juniper Networks, Inc., 14 F.4th
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`1313, 1319-20 (Fed. Cir. 2021) (“Juniper II”) (“[T]he convenience-to-the-witness factor is [not]
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`attenuated when the witnesses are employees of the party calling them.”) (citing In re Hulu, LLC,
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`No. 2021-142, 2021 WL 3278194, at *5 (Fed. Cir. Aug. 2, 2021)). This factor weighs strongly in
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`favor of transfer when, as here, “there are several witnesses located in the transferee forum and
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`none in the transferor forum.” See Apple II, 2021 WL 5291804, at *3.
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`10
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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 16 of 23
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`All but two of Apple’s likely trial witnesses are in N.D. Cal. and would be required to
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`travel 1,500 miles to testify in W.D. Tex. See supra § II.B. None is in W.D. Tex. Id. In contrast,
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`Carbyne has not identified a single trial witness of its own in Texas. See supra § II.C. Apple’s
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`N.D. Cal.-based engineering teams will be key to Apple’s presentation and defenses, including for
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`non-infringement and damages issues, such as apportionment. See supra § II.B. Testimony from
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`Apple’s N.D. Cal.-based marketing and financial teams will be imperative to, for example, refute
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`allegations of indirect infringement and damages. Id.
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`The inconvenience of a trial in W.D. Tex. is not diminished because these individuals are
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`Apple employees. If transfer were denied, they would experience substantial expense and
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`disruption in their professional and personal lives, resulting in the very inconveniences § 1404(a)
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`was designed to remedy. See Apple II, 2021 WL 5291804, at *3; Volkswagen I, 371 F.3d at 204-
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`05; Juniper II, 14 F.4th at 1319-20 (district court erred in attaching “little weight to the evidence
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`regarding the party witnesses”). Despite Carbyne’s allegations to the contrary, Compl. ¶ 12, Apple
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`is not currently building a hotel in W.D. Tex. and has no internal approved plans to do so. Currie
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`Decl. ¶ 4. Moreover, an Apple hotel in W.D. Tex. would not reduce the inconvenience to Apple’s
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`witnesses; travel from work and home would still be required. In contrast, if this case were tried
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`in N.D. Cal., those employees would be required to drive only a short distance.
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`None of Apple’s likely trial witnesses is in W.D. Tex. See supra § II.B. Carbyne’s reliance
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`on LinkedIn profiles alone is legally insufficient. See LoganTree LP v. Apple Inc., No. 21-cv-
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`00397-ADA, 2022 WL 1491097, at *7 (W.D. Tex. May 11, 2022) (convenience of witnesses
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`“based only on vague LinkedIn profiles” was “owed no weight”). Even if this Court credits the
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`LinkedIn profiles (it should not), they fail to establish any nexus between this suit and Texas, and
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`Apple does not intend to call any of the referenced employees as a trial witness. None created or
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`11
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`Case 1:23-cv-00324-ADA Document 37 Filed 07/26/23 Page 17 of 23
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`maintain the Accused Technologies. See supra § II.B. Most