Opinion
W-21-CV-01372-ADA
01-03-2023
TOPIA TECHNOLOGY, INC., Plaintiff v. BOX, INC., SAILPOINT TECHNOLOGIES HOLDING, INC., and VISTRA CORP., Defendants
ORDER GRANTING DEFENDANT'S MOTION TO TRANSFER
ALAN D ALBRIGHT UNITED STATES DISTRICT JUDGE
Before the Court is Defendant Box, Inc.'s (“Box”) Motion to Sever, Stay, and Transfer Venue to the Northern District of California, or in the Alternative, to the Austin Division of the Western District of Texas. ECF No. 44. Plaintiff Topia Technology, Inc. (“Topia”) opposes the motion. ECF No. 63. Box filed a reply to support its motion. ECF No. 67. After careful consideration of the parties' briefs and the applicable law, the Court GRANTS Box's motion to transfer venue to the Northern District of California. Because the Court previously granted Defendants Sailpoint Technologies Holding, Inc. (“Sailpoint”) and Vistra Corp.'s (“Vistra”) Motion to Sever and Stay Under the “Customer-Suit” Exception (ECF No. 72), the Court finds Defendant Box's Motion to Sever and Stay MOOT.
I. FACTUAL BACKGROUND
In its complaint, Topia claims Box infringed on U.S. Patent Nos. 9,143,561 (“'561 patent”), 10,006,942 (“'942 patent”), 10,289,607 (“'607 patent”), 10,642,787 (“'787 patent”), 10,754,823 (“'823 patent”), and 11,003,622 (“'622 patent”) (collectively, the “asserted patents”), which relate to a system and method for sharing electronic files between multiple devices. ECF No. 48 ¶¶ 21-22, 73-74, 113-14, 152-53, 193-95, 233-34. Topia, the owner of the asserted patents, is a company organized under the laws of the state of Washington with its principal place of business in Tacoma, Washington. Id. ¶ 2. Box is a corporation organized under the laws of the state of Delaware. Id. ¶ 3. Box's headquarters are located in Redwood City, California. ECF No. 43 at 2. Box has a regular and established place of business in Austin, Texas. ECF No. 48 ¶ 4.
According to Topia, Box sells products and services that infringe the asserted patents, including Box Sync and Box Drive. Id. ¶ 27. The Court will refer to these products collectively as the “accused products.” Along with this case, Topia filed one other action in this District alleging infringement of the asserted patents. Topia v. Dropbox, Inc., No. 6:21-cv-01373-ADA (W.D. Tex. Dec. 29, 2021) (“Dropbox Litigation”). In the Dropbox Litigation, Defendant Dropbox filed a motion to stay, sever, and transfer the proceedings to the Northern District of California. Topia v. Dropbox, Inc., No. 6:21-cv-01373-ADA (W.D. Tex. July 26, 2022), ECF No. 43.
After responding to Topia's complaint, Box filed this motion to transfer. ECF No. 44. Box does not argue that the Western District of Texas (“WDTX”) is an improper venue for this case; instead, it argues that the Northern District of California (“NDCA”) is a more convenient forum, pointing to the location of potential witnesses and relevant records. Id. at 1-2. Topia contends that the case should remain in the WDTX, pointing to key witnesses, sources of proof, and local interest in this District. ECF No. 63 at 3.
II. LEGAL STANDARD
In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of the regional circuit-here, the Fifth Circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). 28 U.S.C. § 1404(a) provides in part that “[f]or the convenience of parties and witnesses, . . . a district court may transfer any civil action to any other district or division where it might have been brought . . . ” Id. “Section 1404(a) is intended to place discretion in the district court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration of convenience and fairness.'” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)).
The preliminary question under § 1404(a) is whether a civil action “‘might have been brought' in the destination venue.” In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir. 2008) [hereinafter Volkswagen II]. If the destination venue would have been a proper venue, then “[t]he determination of ‘convenience' turns on a number of public and private interest factors, none of which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358 F.3d 337, 340 (5th Cir. 2004) (footnote omitted). The private interest factors include: “(1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) [hereinafter Volkswagen I] (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)). The public factors include: “(1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws of the application of foreign law.” Id. Courts evaluate these factors based on the situation which existed at the time of filing, rather than relying on hindsight knowledge of the defendant's forum preference. Hoffman v. Blaski, 363 U.S. 335, 343 (1960).
The moving party has the burden to prove that a case should be transferred for convenience. Volkswagen II, 545 F.3d at 314. The burden is not simply that the alternative venue is more convenient, but that it is clearly more convenient. Id. at 314-15. While “clearly more convenient” is not the same as the “clear and convincing” standard, the moving party must still show more than a mere preponderance. Quest NetTech Corp. v. Apple, Inc., No. 2:19-cv-118, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27, 2019). Yet, the Federal Circuit has clarified that, for a court to hold that a factor favors transfer, the movant need not show an individual factor clearly favors transfer. In re Apple Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020).
III. DISCUSSION
The threshold determination in the § 1404(a) analysis is whether this case could initially have been brought in the destination venue-the NDCA. Box argues that this case could have been brought in the NDCA. ECF No. 44 at 9. Box operates a regular and established place of business in the NDCA. Id. Topia argues that this case could not have been brought in the NDCA because Box failed to show whether venue would be proper for its co-defendants, Sailpoint and Vistra. ECF No. 63 at 9−10. Because the Court has severed the claims against Sailpoint and Vistra, the Court finds that venue would have been proper in the NDCA had the claims against Box originally been filed there. Thus, the Court now analyzes the private and public interest factors to determine whether the NDCA is a clearly more convenient forum than the WDTX.
A. The Private Interest Factors
i. The Cost of Attendance and Convenience for Willing Witnesses
The most important factor in the transfer analysis is the convenience of the witnesses. In re Genentech, Inc., 566 F.3d 1388, 1342 (Fed. Cir. 2009). According to Fifth Circuit law, if the distance between a current venue and a proposed venue is more than 100 miles, the inconvenience to witnesses increases in direct relationship to the additional distance they must travel if the matter is transferred. Volkswagen II, 545 F.3d at 317. But it is unclear when the 100-mile rule applies, as the Federal Circuit has stated that courts should not apply the rule “rigidly” in cases where witnesses would be required to travel a significant distance no matter what venue they testify in. In re Apple, 979 F.3d at 1342 (discussing witnesses traveling from New York) (citing Volkswagen II, 545 F.3d at 317). “[T]he inquiry should focus on the cost and inconvenience imposed on the witnesses by requiring them to travel to a distant forum and to be away from their homes and work for an extended period of time.” In re Google, LLC, No. 2021-170, 2021 WL 4427899, at *4 (Fed. Cir. Sept. 27, 2021). According to the Federal Circuit, time is a more important metric than distance. Id. However, the Federal Circuit has also held that when willing witnesses will have to travel a significant distance to either forum, the slight inconvenience of one forum in comparison to the other should not weigh heavily on the outcome of this factor. In re Apple, 979 F.3d at 1342. When analyzing this factor, the Court should consider all potential witnesses. Alacritech Inc. v. CenturyLink, Inc., No. 2:16-CV-00693, 2017 WL 4155236, at *5 (E.D. Tex. Sept. 19, 2017).
According to Box, most of the relevant witnesses are based in the NDCA. ECF No. 44 at 2-3. Box also claims that the only other relevant Box employees are located in Boston, Colorado, New York, Seattle, and outside the United States. Id. at 12. Box further claims that Topia's party witnesses are located in Tacoma, Washington and Las Vegas, Nevada, and both Tacoma and Las Vegas are closer to the NDCA than the WDTX. Id. Topia claims that relevant witnesses from Box, Sailpoint, and Vistra are located in the WDTX. ECF No. 63 at 12-13. Because the Court has severed the claims against Sailpoint and Vistra, the Court considers potential witnesses from those entities under the compulsory witness factor below. See In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir. Sept. 25, 2018) (holding that “when there is no indication that a nonparty witness is willing, the witness is presumed to be unwilling and considered under the compulsory process factor”). The remaining willing witnesses will be considered below.
1. Box's Employees in the NDCA
According to Box, most of its employees knowledgeable of the accused products are located in the NDCA. ECF No. 44 at 2. Box has identified the following potential willing witnesses in the NDCA that can testify to the technical aspects of the accused products: (1) Tamar Bercovici, Vice President of Engineering, (2) Jeremy Chiu, Software Engineering Manager, and (3) Nathan Trueblood, Vice President of Product Management. ECF No. 44 at 3. Box claims that Ms. Bercovici “leads the engineering efforts related to the accused products.” Id. at 12. Box further identifies the following willing witnesses with knowledge of the marketing, sales, and financial aspects of the accused products are also located in the NDCA: (1) Denis Roy, Vice President of Brand and Communications and (2) Eli Berkovitch, Chief Accounting Officer. Id. at 3. [Redacted] Id. at 2. Topia does not seem to dispute that the NDCA would be a more convenient forum for these employees. ECF No. 63.
The Court finds that the identified Box witnesses would be relevant at trial. As Box's declarant, Denis Roy, has stated, the five identified employees have relevant knowledge relating to the design, development, and marketing of the accused products. ECF No. 44-2 ¶¶ 8-10, 14-16. Box generally argues that Mr. Roy's declaration is not credible because the declaration lacks specificity. ECF No. 63 at 17. But Topia has not disputed the relevance of these NDCA-based Box employees. Thus, the Court sees no reason to disagree with Mr. Roy's declaration that the five identified Box employees are relevant party witnesses.
The Court agrees with Box that the NDCA would be a more convenient forum than the WDTX for Box's employees based in the NDCA. The relevant consideration here is “the cost and inconvenience imposed on the witnesses by requiring them to travel to a distant forum and to be away from their homes and work for an extended period of time.” In re Google, LLC, 2021 WL 4427899, at *4. Box's NDCA-based employees would be more inconvenienced if they were called to testify in the WDTX than in the NDCA. Thus, the Court finds the presence of these Box employees in the NDCA weighs in favor of transfer.
2. Box's Employees in Boston, Colorado, New York, Seattle, and Outside the United States
Box claims that other than its employees in the NDCA, all other relevant employees are in Boston, Colorado, New York, Seattle, or outside the United States. ECF No. 44-1 ¶ 7. Box argues that these Box employees would find the NDCA a more convenient forum because the NDCA has three international airports that would make travel easier than travel to the WDTX. ECF No. 44 at 12. Topia does not dispute the relevance of these witnesses. ECF No. 63.
The Court finds that the presence of knowledgeable Box employees in Seattle weighs slightly in favor of transfer. The relevant consideration here is “the cost and inconvenience imposed on the witnesses by requiring them to travel to a distant forum and to be away from their homes and work for an extended period of time.” In re Google, LLC, 2021 WL 4427899, at *4. The cost and inconvenience to travel from Seattle to the NDCA would be less than the cost and inconvenience to travel from Seattle to Waco. ECF No. 44-42. However, the Court does not find that the presence of these Box employees in Seattle weighs strongly in favor of transfer because Box has failed to identify these employees with any specificity and has failed to identify the relevant knowledge they possess. See ECF No. 44-1 (stating simply “[a]dditional knowledgeable employees are located in Boston, Colorado, New York, Seattle, or outside the United States”).
The Court finds that the presence of knowledgeable Box employees in Colorado, Boston, New York, and outside the United States does not weigh in favor of transfer. In In re Apple Inc., the Federal Circuit concluded that this factor is neutral where “regardless of the ultimately chosen venue, such witnesses will be required to travel a significant distance, will likely incur meal and lodging expenses, and will likely incur time away from home.” In re Apple, 979 F.3d at 1341-42. Here, regardless of whether this case remains in this District or is transferred to the NDCA, Box's employees in Colorado, Boston, New York, and abroad will have to travel a significant distance, incur meal and lodging expenses, and incur time away from home to testify at trial. Thus, the Box employees in Colorado, Boston, New York, and outside the United States do not impact the outcome of this factor.
3. Box's Employees in the WDTX
Box admits that it has offices in Austin, Texas. ECF No. 44 at 3. However, Box claims that “the design and development of the accused Box products has not taken place there.” Id. Box claims that “[m]ost of the employees in Box's Austin office primarily focus on sales, customer support, and security.” Id. Box claims that none of its employees with the most knowledge of the accused products are located in Texas. Id. at 3-4. In response, Topia argues that Box's largest office outside the NDCA is located in Austin. ECF No. 63 at 3. Topia points to twelve Box employees in Texas that may have relevant knowledge: (1) Kyle Croft, Technology Consulting Practice Lead, (2) Glen Shillinglaw, former Senior Director of Marketing Operations, (3) Linda Garcia, Global Shared Services Manager, (4) Sam Carey, Customer Education Specialist, (5) Philip Moore, former Senior Staff Reliability Engineer, (6) Brandon McGee, Enterprise Account Executive, (7) Ravi Malick, CIO, (8) Eric Loyd, Senior Director of Enterprise Systems, (9) Amber Ahmed, Technical Enablement, (10) Andrew Caven, Account Executive, (11) Justin Young, Director of Sales, and (12) Bailey Botsford, Cybersecurity Specialist. ECF No. 63-3. Topia argues that the WDTX would be a more convenient forum for these Box employees. ECF No. 63 at 13. In response, Box argues that Topia “cherry picks” these Box employees from Texas. ECF No. 67 at 5. Further, Box argues that the relevance of these witnesses is questionable and Topia has failed to show that these witnesses possess relevant knowledge of the accused products. Id. Box complains that Topia “did not seek or take discovery of these individuals.” Id.
Because Glen Shillinglaw and Philip Moore are former employees who no longer work at Box, they would be more appropriately considered under the compulsory process factor below. See In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir. Sept. 25, 2018) (holding that “when there is no indication that a non-party witness is willing, the witness is presumed to be unwilling and considered under the compulsory process factor”). However, because the Court finds that Topia failed to show why any of these employees would be relevant to testify at trial, the Court concludes that they do not weigh against transfer under the willing witness or compulsory witness factors.
The Court agrees with Box. Topia has failed to show what relevant knowledge these employees may possess. Topia has failed to connect the identified employees to the accused products. Thus, the Court finds that the presence of these Box employees in or near the WDTX does not weigh against transfer.
4. Topia's Witnesses in Tacoma, Washington and Las Vegas, Nevada
Box identifies at least one Topia employee, John C. Haager, located in Tacoma, Washington. ECF No. 44 at 12. Topia petitioned the USPTO to add Mr. Haager as an inventor on the asserted patents. Id. at 4 n.4. Box further identifies that Michael R. Manzano, the named inventor on the asserted patents, but Box notes that it is unclear whether Mr. Manzano is a willing witness. Id. at 12. Mr. Manzano is located in Las Vegas, Nevada. Id. Box argues that the NDCA would be a more convenient forum for these two witnesses than the WDTX. Id. Topia does not dispute this argument. ECF No. 63.
The Court agrees with Box that Mr. Haager's presence in Tacoma, Washington weighs in favor of transfer. The cost and inconvenience to travel from Tacoma to the NDCA would be less than the cost and inconvenience to travel from Tacoma to Waco. ECF No. 44-42. Thus, the presence of Mr. Haager in Tacoma weighs in favor of transfer. Because there is no evidence that Mr. Manzano is a willing witness, the Court will consider Mr. Manzano under the compulsory process factor below. See In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir. Sept. 25, 2018) (holding that “when there is no indication that a non-party witness is willing, the witness is presumed to be unwilling and considered under the compulsory process factor”).
5. Conclusion
The Court finds this factor weighs in favor of transfer. Box has relevant employees that would find the NDCA a more convenient forum. Further, Topia's party witness, Mr. Haager, would also find the NDCA a more convenient forum.
ii. The Relative Ease of Access to Sources of Proof
“In considering the relative ease of access to proof, a court looks to where documentary evidence, such as documents and physical evidence, is stored.” Fintiv Inc. v. Apple Inc., No. 6:18-cv-00372, 2019 WL 4743678, at *2 (W.D. Tex. Sept. 10, 2019). “[T]he question is relative ease of access, not absolute ease of access.” In re Radmax, 720 F.3d 285, 288 (5th Cir. 2013) (emphases in original). “In patent infringement cases, the bulk of the relevant evidence usually comes from the accused infringer. Consequently, the place where the defendant's documents are kept weighs in favor of transfer to that location.” In re Apple Inc., 979 F.3d at 1340 (citing In re Genentech, 566 F.3d at 1345).
According to Box, this factor weighs in favor of transfer because the relevant documents, source code, and sales, marketing, and other business information are managed from Box's headquarters in the NDCA. ECF No. 44 at 10. Further, Box argues that all the relevant documents related to the accused products are primarily created and maintained by employees in the NDCA. Id. Lastly, Box claims that Topia's evidence is located in Tacoma, Washington, where Topia is headquartered. Id.
In response, Topia argues that this factor weighs against transfer because Box's documents are easily accessible in this District. ECF No. 63 at 10. [Redacted]. Id. Topia argues that this factor does not favor transfer because Box did not identify the physical location of Box's electronic documents, although Box did identify data centers in California and Nevada. Id. at 11. Because documents from Sailpoint, Vistra, and other Box customers are located in the state of Texas, Topia argues this factor weighs against transfer. Id. Topia argues these documents are relevant to proving Topia's claims of induced infringement against Box. Id. In its reply, Box complains that Topia overemphasizes a few Box customers in Texas, while overlooking Box's customers in California and nationwide. ECF No. 67 at 4.
To start, the Court notes that the Fifth Circuit has recently agreed with a district court that concluded that this factor is neutral because electronic evidence is equally accessible in either forum. In re Planned Parenthood Fed'n of Am., Inc., No. 22-11009, 2022 WL 16549164, at *3 (5th Cir. Oct. 31, 2022). The Fifth Circuit held that “[t]he location of evidence bears much more strongly on the transfer analysis when . . . the evidence is physical in nature.” Id. But the Federal Circuit has held that it is an error to conclude this factor is neutral because electronic documents are easily accessible in both forums. In re Apple, Inc., No., 2022 WL 1196768, at *4 (Fed. Cir. Apr. 22, 2022). To the extent that these two holdings can be reconciled, the Court concludes that the location of physical evidence is more important to this analysis than the location where electronic documents are typically accessed. But the Court still considers the location of document custodians of electronic documents in its analysis of this factor. In re Google LLC, No. 2021-178, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15, 2021).
The Court agrees with Box that at least some of its electronic evidence is likely maintained and created by Box employees in the NDCA. The Court rejects Topia's argument that this factor is neutral because Box's electronic documents are equally accessible in this District. The Federal Circuit has held that it is an error for the Court not to consider “the location of document custodians and [the] location where documents are created and maintained” within the analysis of this factor. Id. As the Court discussed above in analyzing the willing witness factor, there are likely Box employees with relevant knowledge in the NDCA. However, because Box has failed to provide the Court with any specifics of the documents these employees create and maintain, the Court is only able to conclude that it is likely that at least some relevant electronic documents are created and maintained in the NDCA.
Based on the same rationale, the Court agrees with Box that Topia likely has documents in Tacoma, Washington that are created and maintained by Topia employees. As discussed above, Topia has at least one party witness in Tacoma. Topia's party witness presumably creates or maintains documents relevant to this case. Documents in Tacoma would be relatively easier to access from the NDCA than the WDTX. Smarter Agent, LLC v. Redfin Corp., No. 6:21-cv-01172, 2022 WL 2835861, at *2-3 (W.D. Tex. July 20, 2022) (finding this factor favored transfer to the NDCA in part because some relevant evidence was located in Seattle).
Turning to Box's physical evidence, Topia complains that Box has not identified the physical location of its electronic documents. However, Box has identified that it has data centers in California and Nevada. Regardless of whether the relevant documents are stored in California or Nevada, the electronic documents are not stored in or near the WDTX. Thus, the physical location of Box's electronic evidence does not impact the outcome of this factor.
Lastly, the Court finds that documents from Box's customers weigh slightly against transfer. Topia argues that these customers may have information relevant to Topia's claims of induced infringement. ECF No. 63 at 11. However, Box appropriately notes that it has customers nationwide, including many in California. ECF No. 67 at 4. While the Court agrees with Box that its customers in California may also be relevant, the Court concludes that the presence of third-party documents from identified Box customers in Texas weighs slightly against transfer.
Because both Topia's and Box's relevant documents are likely located in or near both the NDCA, the Court finds that this factor weighs in favor of transfer. However, the Court recognizes that some relevant documentation may be stored with Box's customers in the WDTX.
iii. The Availability of Compulsory Process to Secure the Attendance of Witnesses
Under the Federal Rules, a court may subpoena a witness to attend trial only (a) “within 100 miles of where the person resides, is employed, or regularly transacts business in person”; or (b) “within the state where the person resides, is employed, or regularly transacts business in person, if the person . . . is commanded to attend a trial and would not incur substantial expense.” Fed.R.Civ.P. 45(c)(1)(A), (B)(ii). Under this factor, the Court focuses on non-party witnesses whose attendance may need to be secured by a court order.” Fintiv Inc., 2019 WL 4743678, at *14 (citing Volkswagen II, 545 F.3d at 316). This factor “weigh[s] heavily in favor of transfer when more third-party witnesses reside within the transferee venue than reside in the transferor venue.” In re Apple, 581 Fed.Appx. 886, 889 (Fed. Cir. 2014) (citing In re Genentech, 566 F.3d at 1345). The Federal Circuit has held that “when there is no indication that a non-party witness is willing, the witness is presumed to be unwilling and considered under the compulsory process factor.” In re HP Inc., 2018 WL 4692486, at *3 n.1.
Box argues that this factor weighs in favor of transfer because several former Box employees who worked on the accused products live in the NDCA. ECF No. 44 at 11. Box identifies three former employees in the NDCA with knowledge of the accused products: (1) Satish Asok, (2) Griffin Dorman, and (3) Matthew Self. Id. at 4. Further, Box identifies the following NDCA-based prior artists that may have relevant knowledge: (1) Gibu Thomas, (2) Tom Rolander, (3) Adi Ruppin, (4) Stephen Lawrence, (5) George Moromisato, (6) David Braginsky, (7) Eric Uhrhane, (8) David Jeske, (9) Akash Sagar, (9) Lambertus Hesselink, (10) Dharmarus Rizal, (11) Eric Bjornson, and (12) Walter vonKoch. Id. at 11. Lastly, Box states that the inventor of the asserted patents, Michael R. Manzano, is located in Las Vegas, Nevada. Id. at 4.
In response, Topia argues that the presence of Sailpoint and Vistra employees in the WDTX weighs against transfer. ECF No. 63 at 11-12. Topia specifically identifies six Sailpoint employees and five Vistra employees in Texas. ECF No. 63-3. Topia argues that Sailpoint and Vistra employees have information relevant to determining infringement and damages in this case. ECF No. 63 at 11-12. Topia claims it may also call employees of other Box customers, including University of Texas at Austin, Baylor University, and Axiom Space, to testify at trial. Id. at 12. In its reply, Box complains that Topia overemphasizes the importance of these Box customers. ECF No. 67 at 4. Box claims that it has thousands of customers nationwide [Redacted] Id.
First, the Court agrees, and Topia does not appear to dispute, that Messrs. Asok, Dorman, and Self are relevant third-party witnesses. These former Box employees worked on the development of the accused products and may possess knowledge relevant to this case. Further, the Court agrees, and Topia does not appear to dispute, that the prior artists identified by Box are also relevant. The Court concludes that the presence of former Box employees and prior artists in the NDCA weighs in favor of transfer.
Second, the Court finds that the presence of Mr. Manzano in Nevada does not impact the outcome of this factor. Mr. Manzano is outside the subpoena power of both the NDCA and the WDTX. Thus, regardless of whether this case remains in this District or is transferred to the NDCA, Mr. Manzano cannot be compelled to testify at trial.
Lastly, the Court finds that the presence of Box customers in or near the WDTX weighs slightly in favor of transfer. These customers may possess some information that is relevant at trial. However, as Box appropriately notes, Box also [Redacted] customers in the state of California. Topia has not argued that Box's “Texas customers and partners maintain any evidence a [California] customer or partner would not have.” AudioEye, Inc. v. accessible Ltd., No. 6:20-cv-997-ADA, 2022 WL 827805, at *4 (W.D. Tex. Mar. 9, 2022). Thus, the presence of Box customers within the subpoena power of the WDTX does not weigh heavily against transfer.
The Court concludes that this factor weighs in favor of transfer. Box has identified a significant number of witnesses located in the NDCA. While Topia has also identified Box customers in Texas, Box customers are available in both districts. Thus, the Court finds this factor weighs in favor of transfer.
iv. All Other Practical Problems That Make Trial of a Case Easy, Expeditious, and Inexpensive
When considering the private interest factors, courts must also consider “all other practical problems that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 314. “Particularly, the existence of duplicative suits involving the same or similar issues may create practical difficulties that will weigh heavily in favor or against transfer.” PersonalWeb Techs., LLC v. NEC Corp. of Am., Inc., No. 6:11-cv-655, 2013 WL 9600333, at *5 (E.D. Tex. Mar. 21, 2013). “[W]here there is a co-pending litigation before the trial court involving the same patent-in-suit, and pertaining to the same underlying technology and accusing similar services, [the Federal Circuit] cannot say the trial court clearly [abuses] its discretion in denying transfer.” In re Vistaprint Ltd., 628 F.3d 1342, 1346 n.3 (Fed. Cir. 2010).
Box argues that this factor is neutral despite the co-pending Dropbox Litigation because both cases are in the very early stages of litigation. ECF No. 44 at 13. Box argues that this Court has not expended significant time becoming familiar with the asserted patents or the accused products. Id. Box argues that the mere co-pendency of the two suits in not enough to weigh against transfer. Id. at 13-14. Box also argues that the Dropbox Litigation does not weigh against transfer because it involves independently developed products, which would result in different discovery, evidence, proceedings, and trial. Id. at 14. In response, Topia argues that the co-pending action against Dropbox weighs against transfer because it involves the same patents and a similar schedule as this case. ECF No. 63 at 13.
First, the Court disagrees with Box's argument that because the case is in its early stages, this factor does not weigh against transfer. Judicial economy favors keeping related cases together in the same court. NCS Multistage v. Nine Energy Serv., Inc., No. 6:20-cv-00277-ADA, 2021 WL 1199623, at * 3 (W.D. Tex. Mar. 30, 2021). When related cases are within the same court, one court can resolve similar issues in the co-pending cases together. And even when different issues arise, such as issues specific to different defendants or different accused products, a court's familiarity with the technology and the asserted patents can help resolve these issues more expeditiously. Second, the Court also disagrees with Box's argument that this factor does not weigh against transfer because the co-pending cases in this District involve different defendants and different accused products. The Federal Circuit has held that it is not an abuse of discretion to keep related cases together even when the cases do not involve the same defendants or the same accused products. In re Vistaprint Ltd., 628 F.3d at 1346 n.3.
Based on the co-pendency of the Dropbox Litigation, the Court finds this factor weighs against transfer.
B. The Public Interest Factors
i. Administrative Difficulties Flowing from Court Congestion
This factor concerns “whether there is an appreciable difference in docket congestion between the two forums.” In re Adobe Inc., 823 Fed. App'x 929, 932 (Fed. Cir. 2020). It considers the “[t]he speed with which a case can come to trial and be resolved.” In re Genentech, Inc., 566 F.3d at 1347. In this analysis, court congestion is considered “the most speculative” factor, and when “relevant factors weigh in favor of transfer and others are neutral, then the speed of the transferee district court should not alone outweigh all those other factors.” Id.
Box argues that this factor weighs in favor of transfer because this District has more active patent cases than the NDCA. ECF No. 44 at 14. In response, Topia argues that this factor weighs against transfer because this Court is able to reach trial quicker than the NDCA. ECF No. 63 at 13. Specifically, Topia points to data that shows the median time to trial in this District is 28.3 months and the median time to trial in the NDCA is 34.7 months. Id. Topia also argues that the NDCA is more congested than the WDTX because the NDCA has more civil actions per judge. Id. at 14.
The Court is not persuaded that this factor favors transfer because this Court has more patent cases than the NDCA. The Federal Circuit has previously held that there are “no significant differences in caseload or time-to-trial statistics” between the WDTX and the NDCA. In re Juniper Networks, Inc., 14 F.4th 1313, 1322 (Fed. Cir. 2021). But recent statistics show that this Court has been able to bring cases to trial within two years. Data from Topia suggests that the NDCA takes a median of 34.7 months to reach trial. ECF No. 63 at 13. The Federal Circuit has emphasized the importance of rapid disposition of patent cases. Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1080 (Fed. Cir. 1989). It has even acknowledged Congress's interest in the “quick” resolution of patent disputes. See, e.g., Ethicon Endo-Surgery, Inc. v. Covidien LP, 826 F.3d 1366, 1367 (Fed. Cir. 2016). In view of Federal Circuit law and the available time-to-trial statistics, the Court finds this factor weighs at least slightly against transfer.
See, e.g., MV3 Partners v. Roku, Inc., 6:18-cv-00308-ADA (W.D. Tex., filed Oct. 16, 2018) (23.7 months from case filing to trial); Cloudof Change, LLC, v. NCR Corp., No. 6:19-cv-00513-ADA (W.D. Tex., filed August 30, 2019) (20.3 months from case filing to trial); VLSI Tech. LLC v. Intel Corp., No. 6:21-cv-00057-ADA (W.D. Tex., filed Apr. 11, 2019) (22.4 months from case filing to trial); Freshub, Inc. v. Amazon.Com Inc., No. 6:21-cv-00511-ADA (W.D. Tex., filed Jun. 24, 2019) (23.7 months from case filing to trial); ESW Holdings, Inc. v. Roku, Inc., No. 6:19-cv-00044-ADA (W.D. Tex., filed Feb. 8, 2019) (25.9 months from case filing to trial); Profectus Tech. LLC v. Google LLC, 6:20-cv-00101-ADA (W.D. Tex., filed Feb. 10, 2020) (19.6 months from case filing to trial); Jiaxing Super Lighting v. CH Lighting Tech., 6:20-cv-00018-ADA (W.D. Tex., filed Jan. 10, 2020) (21.7 months from case filing to trial); VideoShare LLC v. Google LLC, 6:19-cv-663-ADA (W.D. Tex., filed Nov. 15, 2019) (23.8 months from case filing to trial); NCS Multistage Inc. v. Nine Energy Serv.'s, Inc., No. 6:20-cv-00277-ADA (W.D. Tex., filed Mar. 24, 2020) (21.8 months from case filing to trial); EcoFactor, Inc. v. Google LLC, No. 6:20-cv-00075-ADA (W.D. Tex., filed Jan. 31, 2020) (24 months from case filing to trial); Densys Ltd. v. 3Shape Trio A/S, 6:19-cv-00680-ADA (W.D. Tex., filed Nov. 26, 2019) (28.3 months from case filing to trial); Appliance Computing III, Inc. v. Redfin Corp., No. 6:20-cv-00376-ADA (W.D. Tex., filed May 11, 2020) (24 months from case filing to trial); Caddo Sys. Inc., v. Microchip Tech. Inc., No. 6:20-cv-00245-ADA (W.D. Tex., filed March 27, 2020) (26.5 months from case filing to trial); SunStone Information Def., Inc. v. International Bus. Machines Corp., No. 6:20-cv-1033-ADA (W.D. Tex., filed Nov. 9, 2020) (21.0 months from case filing to trial); NCS Multistage Inc. v. TCO Products Inc., No. 6:20-cv-00622-ADA (W.D. Tex., filed Sept. 9, 2020) (23.4 months from case filing to trial); Ravgen, Inc. v. Lab. Corp. of Am. Holdings, No. 6:20-cv-00969-ADA (W.D. Tex. filed Nov. 16, 2020) (23.1 months from case filing to trial).
ii. Local Interest in Having Localized Interests Decided at Home
Under this factor, the Court must evaluate whether there is a local interest in deciding local issues at home. Volkswagen II, 545 F.3d at 317. Local interests in patent cases “are not a fiction.” In re Samsung Elecs. Co., 2 F.4th 1371, 1380 (Fed. Cir. 2021). “A local interest is demonstrated by a relevant factual connection between the events and the venue.” Word to Info, Inc. v. Facebook, Inc., No. 3:14-CV-04387-K, 2015 WL 13870507, at *4 (N.D. Tex. Jul. 23, 2015). “[T]he sale of an accused product offered nationwide does not give rise to a substantial interest in any single venue.” In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009). “This factor most notably regards not merely the parties' significant connections to each forum writ large, but rather the ‘significant connections between a particular venue and the events that gave rise to a suit.'” In re Apple, 979 F.3d at 1344 (emphasis in original) (quoting In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010)). Courts should not heavily weigh a party's general contacts with a forum that are untethered from the lawsuit, such as a general presence. Id. Moreover, “little or no weight should be accorded to a party's ‘recent and ephemeral' presence in the transferor forum, such as by establishing an office in order to claim a presence in the district for purposes of litigation.” In re Juniper Networks, Inc., 14 F.4th at 1320 (quoting In re Microsoft Corp., 630 F.3d 1361, 1365 (Fed. Cir. 2011)). To determine which district has the stronger local interest, the Court looks to where the events forming the basis for infringement occurred. Id. at 1319.
Box argues that the local interest factor favors transfer because the events giving rise to the litigation took place in the NDCA. ECF No. 44 at 14. Box argues that many of the relevant engineers, finance and marketing personnel, and executives are located in the NDCA. Id. at 13-14. Box also points out that its headquarters are located in the NDCA. Id. at 13. With respect to its offices in Austin, Box argues that “these employees are largely focused on sales, customer support, and security-not the accused Box Sync, Box Drive, and Box Zones products.” Id. at 14.
In response, Topia argues this factor weighs against transfer because the WDTX has a strong local interest in the resolution of this suit. ECF No. 63 at 14. [Redacted] Topia further argues that Box's Texas-based customers have a local interest in the outcome of this litigation. Id. In its reply, Box complains that Topia “erroneously focus[es] on immaterial customers.” ECF No. 67 at 5. Further, Box argues that its general presence in this District does not give rise to a local interest. Id.
The Court agrees with Box that its presence in the NDCA weighs in favor of transfer. Box is headquartered in that district and many of the relevant Box employees are located in the NDCA. ECF No. 44 at 14. Because the accused products were largely developed in that district, many of the events that gave rise to the suit likely occurred in the NDCA. However, the Court agrees with Topia that Box's presence in the WDTX weighs slightly against transfer. Even though the majority of Box's relevant employees are in the NDCA, Box still has a presence in this District connected to this case. [Redacted]
Because most of the events that gave rise to this litigation took place in the NDCA, the Court finds that this factor weighs slightly in favor of transfer. This factor does not weigh strongly in favor of transfer because [Redacted]
iii. Familiarity of the Forum with the Law That will Govern the Case
Box argues that this factor is neutral, and Topia makes no argument to the contrary. ECF No. 44 at 15; ECF No. 63. The Court finds that this factor is neutral-both forums are familiar with the law that will govern the case.
iv. Avoidance of Unnecessary Problems of Conflict of Laws or in the Application of Foreign Law
Box argues that this factor is neutral, and Topia makes no argument to the contrary. ECF No. 44 at 15; ECF No. 63. The Court finds that this factor is neutral.
IV. CONCLUSION
Having considered the private and public interest factors, the Court finds that four of the factors are in favor of transfer, two disfavor transfer, and two are neutral. A decision to uproot litigation and transfer is not the consequence of a simple math problem. Instead, a moving party must show that the transferee forum is a clearly more convenient forum. Here, practical considerations and court congestion weigh against transfer. The willing witness, sources of proof, compulsory process, and local interest factors weigh in favor of transfer to the NDCA. Based on the outcome of these four factors, the Court finds that Box has met its burden of showing that the NDCA is a clearly more convenient forum. The Court's conclusions for each factor are summarized in the following table:
Factor
The Court's Finding
Relative ease of access to sources of proof
In favor of transfer
Cost of attendance for willing witnesses
In favor of transfer
Availability of compulsory process to secure the attendance of witnesses
In favor of transfer
All other practical problems that make trial of a case easy, expeditious and inexpensive
Against transfer
Administrative difficulties flowing from court congestion
Slightly against transfer
Local interest
Slightly in favor of transfer
Familiarity of the forum with law that will govern case
Neutral
Problems associated with conflict of law
Neutral
IT IS THEREFORE ORDERED that Box's Motion to Transfer Venue to the Northern District of California is GRANTED (ECF No. 44). Defendant Box's Motion to Sever and Stay is MOOT.