Opinion
W-22-CV-00501-ADA
04-20-2023
MIMO RESEARCH, LLC, Plaintiff v. NXP USA, INC., Defendant
ORDER DENYING DEFENDANT'S MOTION TO TRANSFER
ALAN D ALBRIGHT, UNITED STATES DISTRICT JUDGE.
Before the Court is Defendant NXP USA Inc.'s (“NXP”) Motion to Transfer Venue to the Northern District of California. ECF No. 33. Plaintiff MIMO Research, LLC (“MIMO”) opposes the motion. ECF No. 54. NXP filed a reply to further support its motion. ECF No. 60. After careful consideration of the parties' briefs and the applicable law, the Court DENIES NXP's motion to transfer venue to the Northern District of California.
I. FACTUAL BACKGROUND
In its complaint, MIMO claims NXP infringes U.S. Patent Nos. 7,091,854 (“'854 patent”), 7,200,166 (“'166 patent”), 7,350,057 (“'057 patent”), and 7,433,382 (“'382 patent”) (collectively, the “asserted patents”), which are directed to Multiple Input Multiple Output wireless communication, powerline networking, and ultra-wideband technology. ECF No. 1 ¶ 1. MIMO, the owner of the Asserted Patents, is a limited liability company organized under the laws of New York. Id. MIMO claims that its principal place of business is in Minnesota. ECF No. 54 at 9. NXP is a corporation organized under the laws of the state of Delaware. Id. ¶ 3. NXP's principal place of business is in Austin, Texas. Id. According to MIMO, NXP sells products and methods that infringe the asserted patents, including NXP's 88W8897, 88W8997, IW620, 88W9098, 88W9064, 88W9064S, 88W8964, 88W9098, 88Q9098, 88Q9098S, 88W8897P, LPC MCU Series Microcontrollers, Trimension SR150, Trimension SR040, Trimension SR100T, and Trimension OL23D0. ECF No. 33-31 at 2. The Court will refer to these products collectively as the “accused products.”
After responding to MIMO's complaint, NXP filed this motion to transfer. ECF No. 33. NXP 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 the relevant records in California. Id. at 1. MIMO contends that this case should remain in the WDTX, pointing to, among other factors, NXP's witnesses and evidence in Texas, the presence of relevant third parties in this state, and the local interest in this District. ECF No. 54 at 1.
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. MIMO argues that the threshold is not met because NXP USA, Inc.'s co-Defendants, NXP B.V. (“BV”) and NXP Semiconductor N.V. (“NV”), are foreign entities and NXP has failed to establish personal jurisdiction over BV and NV in California. ECF No. 54 at 1. MIMO argues that this case is analogous to Viasat, Inc. v. Kioxis Corp., No. 6:21-cv-1231-ADA (Dec. 13, 2022). In Viasat, this Court denied a foreign defendant's motion to transfer venue on the threshold determination because the foreign defendant had not shown that a court in the NDCA had personal jurisdiction over the foreign defendant. Id., ECF No. 86 at 5. Importantly, in Viasat, the foreign defendant waived its challenge to personal jurisdiction in the WDTX by answering the complaint without raising the defense. Id., ECF No. 40; Fed.R.Civ.P. 12(H)(1(B)(ii) (explaining that a Rule 12(B)(2) defense is waived if it is not included in a responsive pleading). Here, however, Defendants BV and NV challenged this Court's jurisdiction under Rule 12(B)(2). ECF No. 21. And the Court recently granted Defendants BV and NV's motion to dismiss. ECF No. 64.
Because Defendants NV and BV have been dismissed from this action, the Court therefore finds that venue would have been proper in the NDCA had the suit originally been filed there. The parties agree that the claims against the sole remaining defendant, NXP USA, Inc., could have been brought in the NDCA. ECF No. 33 at 9; ECF No. 54 at 2. The Court notes that it granted MIMO leave to amend its complaint to adequately allege personal jurisdiction over NV and BV. ECF No. 64. In the event that MIMO amends its complaint to properly allege personal jurisdiction over NV and BV, the Court still believes that this threshold inquiry will likely be met. MIMO's allegations of personal jurisdiction over NV and BV would likely rest on Rule 4(k)(2). ECF No. 45 at 4-5 (explaining that because NV and BV are foreign corporations, personal jurisdiction exists under Rule 4(k)(2)). Rule 4(k)(2) permits personal jurisdiction over a foreign defendant with minimum contacts with the United States, rather than a specific state. Fed.R.Civ.P. 4(k)(2); Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1294 (Fed. Cir. 2012). Thus, if MIMO properly alleged personal jurisdiction over NV and BV under Rule 4(k)(2), this Court, as well as a court in the NDCA, would have personal jurisdiction over these foreign entities.
Because the threshold determination is met, 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 NXP, the relevant witnesses from NXP USA, Inc. are located in California. ECF No. 33 at 11. MIMO argues that NXP also has relevant witnesses in Texas. ECF No. 54 at 9-12. MIMO's potential witnesses are located in New York, Georgia, and Minnesota. ECF No. 33 at 11; ECF No. 54 at 9. Both parties acknowledge that there are also relevant witnesses abroad. ECF No. 33 at 11; ECF No. 54 at 10. Each group of witnesses will be discussed further below.
1. NXP's Employees in the NDCA
According to NXP, seventeen relevant employees reside in California. ECF No. 33 at 5. With respect to the Wi-Fi + Bluetooth modules, NXP's declarant, Larry Olivas, claims that “the bulk of the team supporting the accused products works from San Jose.” ECF No. 34-2 ¶ 4. NXP identifies the following people with leadership roles responsible for the development and design of the accused Wi-Fi + Bluetooth products: (1) Larry Olivas, the General Manager and Vice President of Wireless Connectivity Solution, which involves overseeing the entire Wireless Connectivity Solution business; (2) (Redacted) Director of Engineering for Wireless Connectivity; and (3) (Redacted) Design Manager of Security and Connectivity. Id. ¶¶ 5, 8.
As for the accused microcontrollers, NXP's declarant, Joe Yu, identifies the following people with leadership roles responsible for the development and design of the accused microcontrollers: (1) Joe Yu, General Manager and Vice President of IoT Edge Processing Product Line, which includes marketing for the LPC5500 MCU series; (2) (Redacted) Marketing Director and IoT Global Segment Lead; (3) (Redacted) Manager MCU Product Development of Edge Processing; and (4) (Redacted) NXP Fellow and Technical Officer of Edge Processing. ECF No. 34-1 ¶¶ 3-5. Mr. Yu notes that employees that report to Mr. Yu, (Redacted) reside in San Jose. Id. ¶¶ 4-5.
NXP also claims that the accused Ultra Wideband (“UWB”) transmitters are managed from San Jose. ECF No. 33 at 7. NXP claims that (Redacted) Id. at 7. NXP's declarant, Charles Dachs, identifies the following employees in California with leadership roles responsible for the development and design of the accused UWB Transmitters: (1) Charles Dachs, General Manager and Senior Vice President of Secure Embedded Transactions; (2), (Redacted) Senior Director, UWB Modem Systems, Security and Connectivity; (3), (Redacted) Senior Director, UWB System-on-chip (SoC) Lead, Security and Connectivity; (4) (Redacted), Senior Director, Middleware and System Test, Security and Connectivity; (5) (Redacted) Senior Director RFIC Product Management; (6) (Redacted) Director of UWB Product Management; (7) (Redacted) Production Test Engineering Lead; (8) (Redacted) Senior Director Go To Market UWB Americas; and (9) (Redacted) Senior Director, SoC Physical Design. ECF No. 34-3 ¶¶ 3, 6. Dr. Dachs also states that “[t]he head of NXP's Americas sales team is located in San Jose.” Id. ¶ 9.
In response, MIMO complains that NXP cherry-picks employees in the NDCA. ECF No. 54 at 13. MIMO also notes that NXP's head of sales, (Redacted), is located in Austin. Id. At 10. But in its reply, NXP explains that (Redacted) is the global head of sales with an office in Austin; NXP's America head of sales is based in San Jose. ECF No. 60 at 4.
The Court notes that neither NXP nor its declarants explain the relevant knowledge possessed by NXP's identified employees. For instance, with respect to the accused Wi-Fi + Bluetooth modules, NXP's declarant, Mr. Olivas, merely states that “the people in leadership roles responsible for the development and design (Redacted) of the accused products” are based in San Jose. ECF No. 34-2 ¶ 8. While Mr. Olivas states that he “considers [NXP's] San Jose office to be the primary office for the [Wi-Fi + Bluetooth modules] because (Redacted) [Wi-Fi + Bluetooth modules] works from San Jose,” Mr. Olivas does not explain that the individuals who possess knowledge needed at trial are located in San Jose. Id. ¶ 4. Similarly, for the accused microcontroller products, NXP's declarant, Mr. Yu, merely states that some of “the people in leadership roles responsible for the development and design (Redacted) of the accused products” are based in San Jose. ECF No. 34-1 ¶ 5. Lastly, for the accused UWB Transmitters, NXP's declarant, Dr. Dachs, states that “the people in leadership roles responsible for the development, design (Redacted), marketing, and sales of the accused products” are based in California. ECF No. 34-3 ¶ 6. In its briefing, NXP itself merely states that the identified individuals listed above are “leadership with knowledge and/or responsibility for development, design, marketing, and/or sales of accused products.” ECF No. 33 at 5 (emphasis added). NXP asks the Court to infer, based entirely on the identified employees' job titles, that these individuals are likely to testify at trial. Except for the three declarants, who explain their own roles in relation to the accused products, NXP does not provide any other information about the identified individuals' roles or responsibilities.
The Court limits the weight of NXP's identified witnesses above because NXP does not explain why all of its identified employees would be relevant at trial. But the Court believes that at least some of the relevant NXP witnesses are located in California. For the accused Wi-Fi + Bluetooth modules, NXP explains that the “[d]esign and development work continues to be centered in San Jose” and marketing and sales leadership is located in San Jose. Id. Further, NXP notes that the accused microcontrollers “have been developed and designed primarily in France and San Jose” and the “leadership for marketing and sales of the accused Microcontrollers are based in San Jose.” Id. at 6. NXP also explains that management for the accused UWB transmitters is based in San Jose and the team that supports the accused UWB transmitters is “principally located in San Jose and Irvine.” Id. at 7. Based on NXP's representations, the Court believes that at least some of NXP's willing witnesses are based in California. For those witnesses, the NDCA would be a more convenient forum than the WDTX.
2. NXP's Employees in Texas
MIMO identifies the following NXP employees in Austin: (1) (Redacted), Executive VP and CFO, who possesses knowledge related to the revenue of the accused products; (2) (Redacted) Senior VP and Chief IP Officer, who possesses knowledge relevant to damages and the hypothetical negotiation, (3) (Redacted), Senior Director and Head of IP Monetization, who has submitted patents relevant to the Accused Wi-Fi modules and possesses knowledge relevant to damages; (4) (Redacted) Executive VP, general Counsel, Corporate Secretary, and Chief Sustainability Officer, who would possess information relevant to damages and reasonable royalty analysis because of her involvement in (Redacted); (5) (Redacted), Executive VP, Global Operations, who is responsible for overseeing NXP's manufacturing operations and would have relevant knowledge on the manufacturing of the accused products; (6) (Redacted), NXP's head of sales, who possesses relevant knowledge of the sales and marketing of the accused products; (7) (Redacted) a VP at NXP, who possesses knowledge of the accused microcontrollers; (8) (Redacted) Technical Director, who works on the accused Wi-Fi Modules; (9)-(10) two Austin-based NXP employees who are responsible for design-engineering of the Accused Wi-Fi modules; (11) (Redacted) who is responsible for managing the relationship with (Redacted) third party that fabricates the Accused Wi-Fi modules; (12) (Redacted) the VP of Edge Processing Operations Engineering, who works with the logistics and operations team for the accused microcontrollers; (13) (Redacted) General manager IoT Product Line, who focuses on IoT marketing, including marketing of the accused microcontrollers; (14) an Austin-based individual who reports to Dr. Dachs and works on mass marketing of the accused microcontrollers; (15) an Austin-based member of (Redacted) team who works on the marketing of the accused microcontrollers; (16) (Redacted) who manages NXP's public relations and worked on the marketing of one of the accused Wi-Fi modules; (17) (Redacted) Senior Manager of Product Marketing; (18) individuals in NXP's i.MX 8M evaluation kit group, who are responsible for ensuring software drivers in the accused Wi-Fi modules are compatible with an i.MX 8M Quad multimedia processor unit; (19) an individual in NXP's sales organization who works wit the Wireless Connectivity Solution Group responsible for the Accused Wi-Fi Modules; and (20) (Redacted) who works on UWB modem systems relevant to the accused Trimension transmitters. ECF No. 54 at 9-11.
MIMO also argues that there are likely other relevant NXP employees in Austin, but NXP's 30(b)(6) witnesses lacked sufficient knowledge to provide that information during their depositions. Id. at 12. MIMO complains that NXP's declarant, Dr. Dachs, stated in his declaration that all the Austin-based employees who worked for (Redacted), an R&D Manager for the accused microcontrollers, (Redacted) did not work on the accused microcontrollers. Id. But MIMO claims that did not investigate which products these Austin-based employees worked on. Id. MIMO notes that one of (Redacted) employees, (Redacted), leads a team in Austin of (Redacted) employees. Id. Because (Redacted) did not know the details of (Redacted) role, MIMO argues that it is entitled to an inference that (Redacted) and his team work on the accused products. Id. at 12 n.20.
In its reply, NXP argues that MIMO has failed to show that the individuals MIMO has identified have knowledge relevant to this case. ECF No. 60 at 4. With respect to Austin-based employees in the logistics and operations teams, NXP argues that these individuals are irrelevant because MIMO's patent claims relate to products rather than methods of manufacture. Id. NXP further argues that its America head of sales in San Jose would be more relevant than its global head of sales in Austin. Id. MIMO argues that individuals within the i.MX 8M evaluation kit group are irrelevant because i.MX is not an accused product. Id.
The Court agrees with NXP that some of the individuals identified by MIMO are unlikely to testify at trial. For example, MIMO failed to explain why NXP's logistics and operations team would possess knowledge relevant to the outcome of this case. Further, MIMO failed to explain why employees within NXP's i.MX 8M evaluation kit group would possess knowledge relevant to this case. As NXP notes, i.MX is not an accused product. Without more information, the Court concludes that the presence of these individuals in the WDTX does not weigh heavily against transfer. Further, despite MIMO's request, the Court also declines to infer that the entirety of (Redacted) team is likely to testify at trial simply because (Redacted) was unable to provide additional information regarding (Redacted) role.
But the Court finds that at least some of the Austin-based NXP employees identified by MIMO are potentially relevant. The Court is persuaded that individuals with knowledge of NXP's IP practices could be relevant to determining damages in this case. Further, individuals with knowledge of NXP's sales of the accused products, including NXP's global head of sales, may be relevant to determining damages as well. While NXP argues that the America head of sales in San Jose is more relevant than the global head of sales in Austin, the Court believes both individuals may possess relevant knowledge. Additionally, the Court finds that at least some employees with knowledge of the design and development of the accused products are located in Austin. For example, MIMO identifies, and NXP does not dispute the relevance of (Redacted), and the at least two Austin-based NXP employees who are responsible for design-engineering of the Accused Wi-Fi modules. The Court is also persuaded that relevant marketing employees are based in Austin. Thus, the Court concludes that many of the identified NXP employees based in Austin weigh against transfer.
3. MIMO's Party Witnesses
NXP claims that MIMO's party witnesses are located in New York and Georgia. ECF No. 33 at 11. NXP identifies George J. Miao, the inventor of the asserted patents, who resides in either New York or Georgia. Id. at 2. NXP also identifies Rong Hu, Mr. Miao's business partner, who resides in New York. Id. NXP argues that neither forum would be convenient for Messrs. Miao and Hu. Id. In response, MIMO argues that it is based in Minnesota. ECF No. 54 at 9. MIMO claims that litigating in Waco would be more convenient because Minnesota is closer to the WDTX than the NDCA. Id. MIMO also argues that the Waco Division is more affordable than the NDCA. Id. In its reply, NXP argues that MIMO identifies no witnesses based in Minnesota that are likely to testify at trial. ECF No. 60 at 4. NXP also claims that there is no public evidence showing that MIMO is based in Minnesota. Id.
The Court concludes that MIMO's party witnesses do not weigh in the analysis of this factor. While MIMO may be based in Minnesota, MIMO identifies no witnesses in Minnesota that may testify at trial. Further, even if MIMO identified relevant witnesses in Minnesota, those witnesses would not weigh against transfer. Under 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. Under this 100-mile rule, the presence of willing witnesses in Minnesota would weigh against transfer because these witnesses are closer to Waco than the NDCA. However, 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. 2021170, 2021 WL 4427899, at *4 (Fed. Cir. Sept. 27, 2021). Even if MIMO has willing witnesses in Minnesota, the cost and inconvenience posed by travelling to a distance forum is similar for both forums. For the same reasons, MIMO's party witnesses in Georgia and New York do not weigh against transfer.
4. NXP's Employees Abroad
Both parties note that NXP has relevant employees abroad. ECF No. 33 at 11; ECF No. 54 at 13. Both parties acknowledge that this factor is neutral for NXP's employees abroad. ECF No. 33 at 11; ECF No. 54 at 13. The Court agrees.
5. Conclusion
The Court finds this factor is neutral. While MIMO has identified a greater number of its employees in the WDTX, NXP has also identified relevant NXP employees in California. MIMO's party witnesses in Georgia, New York, and Minnesota would not find either forum convenient. The Court concludes that neither forum is more convenient for the willing witnesses as a whole.
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 NXP, this factor weighs in favor of transfer because no documents are stored in the Waco Division. ECF No. 33 at 10. NXP claims that “documents concerning at least development, design, marketing, and sales of the accused products are largely generated in and access from California.” Id. For the Wi-Fi + Bluetooth modules, NXP claims that some relevant sales and marketing documents are “stored locally” in California and the servers storing the documents may be accessed from San Jose. Id. at 6; ECF No. 34-2 ¶ 7. For the accused microcontrollers, NXP claims that the relevant sales, marketing, and technical documents are generated in San Jose and may be accessed from California. ECF No. 33 at 6; ECF No. 34-1 ¶ 4. As for the UWB transmitters, NXP argues that the sales and marketing documents can be accessed from San Jose. ECF No. 34-3 ¶ 9. For all of the accused products, relevant documents are stored in servers in Phoenix, Arizona and The Netherlands. ECF No. 34-1 ¶¶ 4, 7; ECF No. 34-2 ¶¶ 7, 9; ECF No. 34-3 ¶¶ 8-9.
In response, MIMO argues that this factor weighs against transfer because NXP admits that its documents are electronically stored outside of both forums in Phoenix, Arizona and The Netherlands. ECF No. 54 at 4. MIMO also notes that NXP's declarants state that “NXP uses (Redacted) (Redacted) which repositories are accessible from NXP's locations.” Id.; ECF No. 34-1 ¶ 7; ECF No. 34-3 ¶ 8. MIMO argues that because the electronic documents are accessible from any location, there is no difference in the relative ease of access between the two forums. ECF No. 54 at 4. MIMO also claims that NXP's argument that the documents concerning development, design, marketing, and sales of the accused products are largely generated in and access from California is not supported by the evidence. Id. MIMO notes that NXP's declarant, Mr. Olivas, does not state that documents relating to the WiFi + Bluetooth modules are created or generated in the NDCA. Id.; ECF No. 34-2 ¶¶ 4-9. Further, MIMO notes that NXP's declarant for the accused UWB transmitters, Dr. Dachs, also does not explain that the relevant documents are created or maintained in the NDCA. ECF No. 54 at 5; ECF No. 34-3 ¶¶ 3-9. And MIMO argues that to the extent that there are document custodians in the NDCA, there are also relevant document custodians in the WDTX. ECF No. 54 at 5. MIMO also argues that there are relevant third parties in the WDTX that likely have relevant documents related to the operation and financials of the accused products. Id.
In its reply, NXP argues that MIMO has failed to show that any third party possesses relevant evidence. ECF No. 60 at 2. NXP also argues that the third parties identified by MIMO, such as Arm, the Wi-Fi Alliance, (Redacted) and (Redacted), also have locations in the NDCA and they may store relevant evidence there. Id. at 2-3. NXP further argues that because its activities related to the accused products are centered in San Jose, this factor favors transfer. Id. at 3.
The Court acknowledges that the Fifth Circuit's decision in In re Planned Parenthood indicates a shift in the analysis of this factor. 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., 52 F.4th 625, 630 (5th Cir. 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 of where electronic documents are typically accessed. However, 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).
Here, physical evidence does not appear to be present in the WDTX or the NDCA. NXP's declarants merely state that “NXP does not maintain any physical documents relating to the accused [products]” in the Waco Division of the WDTX. ECF No. 34-1 ¶ 9; ECF No. 34-2 ¶ 11; ECF No. 34-3 ¶ 11. But this statement fails to inform the Court (1) whether there are relevant physical documents elsewhere in the WDTX or (2) whether there are relevant physical documents anywhere in the NDCA. Further, NXP's declarant, Dr. Dachs, did not know of any physical documents maintained in the NDCA. ECF No. 54-3 at 86:6-9. While MIMO argues that third parties in Texas may possess documents relevant to this case, MIMO has failed to identify this evidence with any particularity. Further, as NXP notes, many of these third parties also maintain offices in California, where documents may be stored.
Turning to the electronic evidence, NXP has admitted that at least the (Redacted) are accessible from any of NXP's locations, including its offices in the WDTX. ECF No. 34-1 ¶ 7; ECF No. 34-3 ¶ 8. But more importantly, as discussed above, both NXP and MIMO have identified relevant employees in the NDCA and the WDTX. See supra Section III(A)(i). The Court believes it is likely that these employees are custodians of the relevant electronic documents. See In re Google LLC, No. 2021-178, 2021 WL 5292267, *2 (Fed. Cir. Nov. 15, 2021) (holding that it is an error to not “also consider[] the location of document custodians and the location where documents are created and maintained, which may bear on the ease of retrieval”). The Court concludes that this factor is neutral because relevant NXP employees likely create and maintain relevant electronic documents in both forums, and there is no physical evidence in either forum.
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. However, the Fifth Circuit has clarified that “the availability of the compulsory process ‘receives less weight when it has not been alleged or shown that any witness would be unwilling to testify.'” In re Planned Parenthood Fed'n of Am., Inc., 52 F.4th at 630-31 (quoting Hefferan v. Ethicon Endo-Surgery Inc., 828 F.3d 488 (6th Cir. 2016)).
NXP argues that this factor favors transfer because MIMO's corporate counsel, DME Law, LLP, and accountant, Shonty Spatola, are located in Los Angeles, California. ECF No. 33 at 3. Further, MIMO's patent assignment counsel and lead counsel in this litigation (Berger & Hipskind LLP) are located in Beverly Hills, California. Id. NXP also notes that the accused Wi-Fi + Bluetooth modules were acquired from Marvell, which is located in Santa Clara, California. Id. at 5, 12. NXP argues that all other relevant third parties are located outside of both Texas and California, including the inventor of the asserted patents. Id. at 12.
In response, MIMO argues that the location of MIMO's accountant and counsel is irrelevant. ECF No. 54 at 6. As for Marvell, MIMO complains that NXP identifies no employees at Marvell in California that possess relevant information of the Wi-Fi + Bluetooth Modules. Id. MIMO notes that the Wi-Fi Alliance is headquartered in Austin. Id. at 7. MIMO claims that NXP is required to send two samples of every accused product to the Wi-Fi Alliance for testing. Id. MIMO argues that the Wi-Fi Alliance is a relevant third party within the subpoena power of this Court. Id. MIMO also identifies (Redacted), which is headquartered in Dallas, Texas. Id. (Redacted). Id. MIMO argues that (Redacted) has relevant information about the operation of the accused Wi-Fi modules. Id. MIMO also claims that Arm, which has an 800-employee Austin office, provides the (Redacted) for the 88W8964 accused product. Id. MIMO notes that (Redacted), a Texas corporation with a facility in Carrollton, Texas, (Redacted) for NXP's accused Wi-Fi modules. Id. MIMO notes that NXP's 30(b)(6) witness met with to discuss the (Redacted) Id. Lastly, MIMO identifies (Redacted) distributors that distribute the accused microcontrollers in Texas. Id. MIMO argues that (Redacted) distributors, including (Redacted) have relevant knowledge of the sales and marketing of NXP's microcontrollers. Id. MIMO also agrees that any other relevant third-party witnesses, including the inventor of the asserted patents, is outside the subpoena power of either forum. Id. at 6.
In its reply, NXP argues that four of the entities identified by MIMO-Wi-Fi Alliance, Arm, (Redacted), and (Redacted) -are also subject to the subpoena power of the NDCA. ECF No. 60 at 3. NXP notes that Arm's headquarters are in San Jose, California. Id. at 2. NXP notes that Wi-Fi Alliance is also in Santa Clara, California and the Wi-Fi Alliance's testing facilities are in California. Id. at 3. NXP claims that (Redacted) has a location in San Jose and (Redacted) has an office in Santa Clara. Id. NXP argues that (Redacted) of (Redacted) is not a likely witness because he is merely a customer representative. Id. NXP also argues that the presence of Texas distributors does not make the WDTX a more convenient forum. Id.
The Court agrees with MIMO that the location of MIMO's accountant and counsel is irrelevant. For MIMO's accountant, Shinty Spatola, NXP has not explained why Mr. Spatola would be relevant at trial. NXP does not assert that Mr. Spatola possesses knowledge relevant to this matter. For MIMO's corporate counsel, DME Law, LLP, NXP has also failed to explain what knowledge DME Law, LLP possesses that would be relevant to the outcome of this case. Lastly, with respect to MIMO's patent assignment counsel and lead counsel in this matter, Berger & Hipskind LLP, NXP does not assert that it expects to call MIMO's counsel to testify in this matter. And the Court does not consider the presence of one party's counsel in a district to weigh in favor or against transfer. Volkswagen I, 371 F.3d at 206 (finding that it was an abuse of discretion to rely on the location of counsel as a factor in the transfer analysis).
The Court also notes that, to the extent that the location of counsel is relevant, Defendant NXP's counsel is based in Austin, Houston, and Dallas, Texas, which all fall within the subpoena power of this Court.
With respect to Marvell, the Court agrees that NXP fails to identify any relevant employees from Marvell that may testify at trial. Marvell's 10-K statement provided by NXP explains that Marvell is a “global fabless semiconductor solutions provider.” ECF No. 33-33. Only Marvell's U.S. operating subsidiary is based in California. Id. Because NXP fails to identify any specific Marvell employees with knowledge relevant to this case, the Court is unable to identify if the relevant Marvell employees or entities relevant to this trial are located in California, across the United States, or elsewhere in the world. See id. (noting that in addition to Marvell's operations in the United States, it also operates in “China, India, Israel, Japan, Singapore, South Korea, Taiwan and Vietnam”). Marvell's locations abroad may be particularly relevant because NXP has admitted that “[t]he accused Wi-Fi Bluetooth Modules are fabricated, assembled (packaged), and tested in Taiwan, China, Thailand, and/or China.” ECF No. 33 at 5-6. Without additional information, Marvell's U.S. operating subsidiary's presence in the NDCA does not weigh strongly in favor of transfer.
As for the Wi-Fi Alliance, (Redacted), Arm, the Court agrees with NXP that MIMO has failed to show that the relevant employees reside within the subpoena power of this Court. As NXP notes, the Wi-Fi Alliance is also located in Santa Clara, California. Relevant witnesses for this case could be located in the WDTX or the NDCA. Likewise, (Redacted) and Arm have offices in both Texas and California. Because MIMO fails to identify any specific witnesses from these organizations that are likely to testify at trial, the Court does not weigh their presence in either forum in the analysis of this factor.
(Redacted) the Court notes that MIMO identified one specific witness, (Redacted), within the subpoena power of this Court. (Redacted) spoke with NXP's 30(b)(6) witness regarding (Redacted) the accused products. ECF No. 54-7 at 110:17-111:3. Based on his experience working with NXP, (Redacted) may possess knowledge relevant to the outcome of this case. Thus, the Court weighs (Redacted) presence within the subpoena power of this Court at least slightly against transfer.
Lastly, the Court considers the (Redacted) distributors, including (Redacted) in Texas. While NXP argues that (Redacted) also has a relevant location in San Jose, California, the record shows that the accused microcontrollers are distributed from an (Redacted) location in Texas. ECF No. 54-3 at 78:1316. NXP has failed to show that (Redacted) location in San Jose is involved in the distribution of the accused products. Further, the record shows that NXP's accused microcontrollers are also received by other distributors in Texas. Id. at 78:17-22. NXP does not show that the accused microcontrollers, or any of the accused products, are distributed from California. While the Court acknowledges that MIMO fails to identify any specific witnesses from these (Redacted) distributors, it is likely that employees of these (Redacted) distributors in Texas may possess knowledge relevant to the sales and marketing of the accused products. Thus, the Court weighs the presence of these (Redacted) distributors at least slightly against transfer.
The Court finds that this factor weighs slightly against transfer. While one of the suppliers of accused Wi-Fi + Bluetooth Modules, Marvell, maintains its U.S. headquarters in California, NXP failed to specify any witnesses from Marvell will testify at trial. MIMO identifies one witness from (Redacted) and (Redacted) distribution entities in Texas that fall within the subpoena power of this Court and may possess relevant knowledge of the accused products. Thus, the Court finds that this factor weighs slightly in favor of transfer. However, the Court notes that neither party has alleged or shown that any of these witnesses are unwilling. ECF No. 31 at 10-11; ECF No. 63 at 10-12. Thus, under the Fifth Circuit's recent guidance, even if this factor were to favor or disfavor transfer, the weight of this factor is diminished. In re Planned Parenthood Fed'n of Am., Inc., 52 F.4th at 630-31.
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 patentin-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).
NXP argues that this factor favors transfer because this case is in its infancy. ECF No. 33 at 11. NXP claims that because this Court has not decided any substantive motions or handled the Markman hearing, transfer does not pose a risk of any meaningful delay in this case. Id. at 11-12. NXP argues that transfer would expedite the case because the relevant witnesses and evidence are located in that district. Id. at 12. In response, MIMO argues that this factor weighs against transfer because MIMO filed three other cases in this Court involving the same technology and asserting overlapping patents: MIMO Rsch., LLC v. Apple Inc., No. 6:22-cv-00620 (W.D. Tex.); MIMO Rsch., LLC v. Intel Corp., No. 6:22-cv-00542 (W.D. Tex.); and MIMO Rsch., LLC v. STMicroelectronics, Inc., No. 6:22-cv-00668 (W.D. Tex.). ECF No. 54 at 13. In its reply, NXP argues that the co-pending cases are not relevant to the analysis of this factor because all three cases have been dismissed before the Court handled any substantive motions or the Markman hearing. ECF No. 60 at 5 (citing MIMO Rsch., LLC v. Apple Inc., No. 6:22-cv-00620 (W.D. Tex. Feb. 6, 2023), ECF No. 35; MIMO Rsch., LLC v. Intel Corp., No. 6:22-cv-00542 (W.D. Tex. Feb. 1, 2023), ECF No. 37; and MIMO Rsch., LLC v. STMicroelectronics, Inc., No. 6:22-cv-00668 (W.D. Tex. Feb. 1, 2023), ECF No. 44).
The Court rejects NXP's argument that this factor favors transfer because this case is in its early stages. The relevant inquiry under this factor is whether the circumstances in either the forum would make trial of the matter easier, more expeditious, or less expensive. Volkswagen II, 545 F.3d at 314. Even if this case is in its early stages, transferring this matter to the NDCA does not reduce the practical problems before a court in that district. NXP has cited no authority for the proposition that this factor weighs in favor of transfer solely because the case is in its early stages. The Court also rejects NXP's argument that this factor favors transfer because the relevant witnesses and evidence are located in the NDCA. Importantly, this factor considers “all other practical problems that make trial of a case easy, expeditious and inexpensive.” Id. (emphasis added). NXP cites no authority for the proposition that this factor should reconsider the convenience of willing witnesses or the location of sources of proof.
The Court also rejects MIMO's argument that this factor weighs against transfer because MIMO also filed three other suits in this Court involving the same technology and overlapping asserted patents. While co-pending cases in the transferee or transferor forum can weigh in the analysis of this factor, In re Vistaprint Ltd., 628 F.3d at 1346 n.3, MIMO's other related cases in this Court have been dismissed. MIMO Rsch., LLC v. Apple Inc., No. 6:22-cv-00620 (W.D. Tex. Feb. 6, 2023), ECF No. 35; MIMO Rsch., LLC v. Intel Corp., No. 6:22-cv-00542 (W.D. Tex. Feb. 1, 2023), ECF No. 37; and MIMO Rsch., LLC v. STMicroelectronics, Inc., No. 6:22-cv-00668 (W.D. Tex. Feb. 1, 2023), ECF No. 44. Thus, the Court will be unable to consolidate hearings with these other cases to “make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 314.
Accordingly, the Court finds this factor is neutral.
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.
NXP argues that this factor is neutral because while this Court reaches trial more quickly than courts in the NDCA, judges in the San Jose Division of the NDCA have fewer cases than in this Division. ECF No. 33 at 15. In response, MIMO argues that this factor disfavors transfer because this Court reaches trial more quickly on average than courts in the NDCA. ECF No. 54 at 13-14. MIMO also argues that if this case is transferred, it will not necessarily be transferred to the San Jose Division of the NDCA. Id. at 14.
To start, the Court notes that the Federal Circuit recently concluded that this factor should not weigh against transfer when the plaintiff “is not engaged in product competition in the marketplace and is not threatened in the market in a way that, in other patent cases, might add urgency to case resolution.” In re Google LLC, 58 F.4th 1379, 1383 (Fed. Cir. 2023). Here, neither party has briefed whether MIMO is engaged in product competition in the marketplace. The briefing does not discuss any witnesses or sources of proof related to a product from MIMO.
If MIMO is engaged in product competition in the marketplace, the parties appear to agree that this Court generally reaches trial more quickly than the NDCA. ECF No. 33 at 15 (noting that this Court is at least 175 days faster than the NDCA); ECF No. 63 at 14 (noting that this Court is ten months faster than the NDCA). Recent statistics show that this Court has been able to bring cases to trial within two years. While judges in the NDCA may have fewer cases than in this Division, 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). And the Fifth Circuit has indicated that district courts are best positioned to determine their own congestion under this factor. In re Planned Parenthood Fed'n of Am., Inc., 52 F.4th at 631.
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 Info. 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).
Based on the evidence presented, the Court believes that this factor is likely neutral because the briefing suggests that MIMO is not engaged in product competition in the marketplace. But if MIMO is engaged in product competition, this factor would weigh slightly against transfer.
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.
NXP argues that the NDCA has a strong connection to this case because the asserted patents were prosecuted there and they were originally assigned to a California company, Flezi LLC. ECF No. 33 at 13. Further, NXP argues that the accused products are managed, developed, and designed there. Id. NXP argues that the NDCA has a legitimate interest in adjudicating a case involving products that were researched, designed, and developed there. Id. NXP argues that Waco has no connection to the litigation. Id. While NXP is headquartered in the WDTX, it argues that the Court should not weigh heavily its general contacts with the forum. Id. at 14.
In response, MIMO argues that it is irrelevant that the asserted patents were prosecuted in the NDCA because the inventor is now located in Georgia and MIMO is a New York LLC. ECF No. 54 at 15. MIMO argues that while the NDCA has a connection to the litigation because some of the infringement activities took place there, the WDTX also has a strong local interest. Id. MIMO also argues that because many witnesses in NXP's headquarters in Austin work on the accused products, the WDTX has a local interest in this suit. Id.
The Court rejects NXP's argument that the NDCA has a strong local interest because the prosecution of the patent took place there. The inventor, who applied for the asserted patents pro se, now lives in Georgia or New York. Thus, while the prosecution took place in the NDCA, this cause of action does not “call[] into question the work and reputation” of individuals in the NDCA that took part in prosecution the asserted patents. In re Hoffman-La Roche Inc., 587 F.3d at 1336. The relationship between the prosecution of the asserted patents and the NDCA depends exclusively on the inventor's previous residence in that district. Because the inventor no longer resides in the NDCA, the Court finds this slight local interest does not weigh heavily in favor of transfer. The Court also finds that the fact that the asserted patents were at one time assigned to Flezi LLC does not weigh heavily in favor of transfer. NXP does not argue that this litigation challenges the authenticity of the previous assignment agreements or that any individuals associated with Flezi LLC still live in California. Thus, this litigation likely will not call into question the work and reputation of anyone affiliated with Flezi LLC.
The Court finds that the NDCA likely does have a local interest because the acts of infringement that gave rise to this suit likely took place, at least in part, there. NXP has identified employees involved in the marketing, sales, design, and development of the accused products based in California. ECF No. 34-1 ¶¶ 3-5; ECF No. 34-2 ¶¶ 4-6, 8; ECF No. 34-3 ¶¶ 3, 5-6. But much of the development of the accused products also took place abroad. ECF No. 34-1 ¶¶ 4-5; ECF No. 34-2 ¶¶ 6, 8; ECF No. 34-3 ¶¶ 4-6. And individuals likely involved in the design and development of the accused products are also based in the WDTX. Supra Section III(A)(i). Further, key members of NXP's leadership are based in the WDTX. Id. Thus, the Court also finds that the WDTX likely has a local interest as well. For these reasons, the Court concludes that this factor is neutral.
iii. Familiarity of the Forum with the Law That will Govern the Case
NXP and MIMO agree that this factor is neutral; both forums are familiar with the law that will govern this case. ECF No. 33 at 15; ECF No. 54 at 15. The Court agrees.
iv. Avoidance of Unnecessary Problems of Conflict of Laws or in the Application of Foreign Law
NXP and MIMO agree that this factor is neutral-there are no potential conflicts here. ECF No. 33 at 15; ECF No. 54 at 15. The Court agrees.
IV. CONCLUSION
Having considered the private and public interest factors, the Court finds that seven of the factors are neutral and one disfavors transfer to the NDCA. 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, only the availability of the compulsory process factor weighs against transfer. The remaining factors are neutral. The Court finds that NXP has failed to meet 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
Neutral
Cost of attendance for willing witnesses
Neutral
Availability of compulsory process to secure the attendance of witnesses
Slightly against transfer
All other practical problems that make trial of a case easy, expeditious and inexpensive
Neutral
Administrative difficulties flowing from court congestion
Neutral
Local interest
Neutral
Familiarity of the forum with law that will govern case
Neutral
Problems associated with conflict of law
Neutral
IT IS THEREFORE ORDERED that NXP's Motion to Transfer Venue to the Northern District of California is DENIED (ECF No. 33).