Hammond Development International, Inc. v. Google, LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

HAMMOND DEVELOPMENT §

INTERNATIONAL, INC., §

Plaintiff, §

§ CIVIL ACTION 1:20-cv-00342-ADA

v. §

§

GOOGLE LLC., §

Defendant §

ORDER DENYING DEFENDANT GOOGLE’S

MOTION TO TRANSFER VENUE UNDER 28 U.S.C. § 1404(a)

Came on for consideration this date the Motion of Defendant Google to transfer under 28

U.S.C. § 1404(a), filed on October 23, 2019. ECF No. 42. Plaintiff Hammond Development

International, Inc. (hereinafter “HDI”) filed its response on October 30, 2019 (ECF No. 46) and

Google replied on November 6, 2019 (ECF No. 49).

After careful consideration of the arguments made, the Court DENIES Google’s motion

to transfer the case to the Northern District of California, but GRANTS Google’s alternative

motion to transfer the case to the Austin Division of the Western District of Texas, for the

reasons described below.

I. Factual Background and Procedural History

HDI filed this lawsuit on June 6, 2018, alleging infringement of the following patents:

U.S. Patent No. 9,264,483; U.S. Patent No. 9,420,011; U.S. Patent No. 9,456,040; U.S. Patent

No. 9,705,937; U.S. Patent No. 9,716,732; U.S. Patent No. 10,193,935; U.S. Patent No.

10,264,032; and U.S. Patent No. 10,270,816. ECF No. 1 at ¶ 17. The title of all the Patents are

“Method and System for Enabling a Communication.” Id. at ¶ 18–58. According to HDI, Google

makes, uses, sells, offers to sell, or imports into the US systems for enabling a communication

device to remotely execute an application as claimed in each of the Patents-in-Suit. Id. at ¶ 67.

HDI alleges that Google Home, Google Home Mini, Google Home Max, Google Nest Hub,

Google Nest Hub Max, and other Google Assistant-enabled devices associated with the Google

Cloud Platform infringe the Patents-in-Suit. Id. at ¶ 68.

On October 11, 2019, this Court ordered that this case be consolidated with the Amazon

case. After consolidation, Google filed a motion to transfer venue under 28 U.S.C. § 1404(a)

requesting that the case be transferred to the Northern District of California (“NDCA”) or, in the

alternative, to the Austin Division of the Western District of Texas (“WDTX”). ECF No. 42 at 1.

II. Standard of Review

Title 28 U.S.C. § 1404(a) provides that, for 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 or to any district or division to which all parties have consented. “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 party moving for transfer carries the burden of showing good cause. In re

Volkswagen of Am., Inc., 545 F.3d 304, 314 (5th Cir. 2008) (hereinafter “Volkswagen II”)

(“When viewed in the context of § 1404(a), to show good cause means that a moving party, in

order to support its claim for a transfer, must . . . clearly demonstrate that a transfer is ‘[f]or the

convenience of parties and witnesses, in the interest of justice.’”) (quoting 28 U.S.C. § 1404(a)).

“The preliminary question under § 1404(a) is whether a civil action ‘might have been

brought’ in the destination venue.” Volkswagen II, 545 F.3d at 312. If so, in the Fifth Circuit, the

“[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). The private 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 to 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 when suit was instituted.” Hoffman v. Blaski,

363 U.S. 335, 343 (1960).

Courts may “consider undisputed facts outside the pleadings, but it must draw all

reasonable inferences and resolve all factual conflicts in favor of the non-moving party.”

Weatherford Tech. Holdings, LLC v. Tesco Corp., No. 2:17-CV-00456-JRG, 2018 WL 4620636,

at *2 (E.D. Tex. May 16, 2019).

A plaintiff’s choice of venue is not an independent factor in the venue transfer analysis,

and courts must not give inordinate weight to a plaintiff’s choice of venue. Volkswagen II, 545

F.3d at 314 n.10, 315 (“[W]hile a plaintiff has the privilege of filing his claims in any judicial

division appropriate under the general venue statute, § 1404(a) tempers the effects of the exercise

of this privilege.”). However, “when the transferee venue is not clearly more convenient than the

venue chosen by the plaintiff, the plaintiff’s choice should be respected.” Id. at 315; see also QR

Spex, Inc. v. Motorola, Inc., 507 F.Supp.2d 650, 664 (E.D. Tex. 2007) (characterizing movant’s

burden under § 1404(a) as “heavy”).

III. Discussion regarding transfer to the Northern District of California

As a preliminary matter, neither party contests the fact that venue is proper in NDCA and

could have been filed there.

a. Relative ease of access to sources of proof

In considering the relative ease of access to proof, a court looks to where the parties store

documentary evidence, such as documents and physical evidence. Volkswagen II, 545 F.3d at

316.

Google argues that this factor weighs in favor of transfer for three reasons. First, Google

argues that the access to sources of proof factor favors the NDCA because Google researches,

designs, develops, and tests the accused functionality in the NDCA. ECF No. 42 at 5. More

specifically, Google asserts that “at least 12 key witnesses, founders, technical leads, and

engineers . . . still reside in California—nearly all in the San Francisco Bay Area.” Id. at 2.

Second, Google asserts that the companies and witnesses that developed prior art products are

located in NDCA. Id. at 5. Finally, Google asserts that HDI does not have any ties to the WDTX

because HDI’s one party witness is based out of the DFW area. Id. at 5.

In response, HDI makes two main counterarguments regarding Google’s access to

sources of proof. First, HDI argues that despite having evidence from both parties in DFW and in

the NDCA, most of the evidence is likely stored electronically. Id. As a result, a transfer will not

make access to sources of proof more convenient for either party. Id. Second, HDI asserts that

HDI has located potential third-party witnesses for Google in the WDTX. Specifically, HDI

asserts that Google offers many jobs in the WDTX related to the design and management of its

Google Cloud infrastructure. Id. at 3.

In its reply, Google makes three counterarguments. First, Google argues that HDI’s

allegations and infringement contentions only point to functionalities of one product—Actions

on Google. ECF No. 49 at 1. The sources of proof for Actions on Google are located in the

NDCA. Google asserts that HDI refers to Google Home/Nest Devices in their complaint simply

because they run the accused Actions on Google. Id. at 2. Second, Google asserts that HDI failed

to identify a single Google employee in the WDTX who possesses key knowledge. Id. Instead,

HDI only cited a job listing for Google’s Austin office. Id. Finally, Google argues that they have

identified numerous third-party witnesses who are likely to testify at trial. HDI, on the other

hand, only identified three groups of third-party witnesses, none of which are likely to be called

at trial.

The Court finds that the “relative ease of access to sources of proof” slightly weighs

towards transfer for the reasons that follow. First, although HDI asserts that most of the evidence

is stored electronically, the physical location of electronic documents does not affect the outcome

of this factor under current Fifth Circuit precedent. See, e.g., Volkswagen II, 545 F.3d at 316.

Thus, because Google is the accused infringer, it is likely that it will have the bulk of the

documents that are relevant in this case. See, e.g., In re Genentech, Inc., 566 F.3d 1338, 1345

(Fed. Cir. 2009) (“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.”). Therefore, the Court finds that the location of the

documents relevant in this case weighs towards transfer.

Second, the Court finds that, for party witnesses, NDCA and WDTX are equally

convenient. This Court looks at the totality of the circumstances, including but not limited to, the

witness’s title and relevant experience, the likelihood that a witness may have relevant

information, the number of witnesses, the location of those witnesses, whether the testimony of

the witnesses goes to an element of a claim, the amount of public information available to the

parties, etc. While Google has identified several employees in NDCA with relevant information,

HDI identifies individuals, including the HDI founder, for which WDTX is more convenient.

HDI also asserts that the Austin-based Google employees relating to the design and management

of its Google Cloud infrastructure are persons with knowledge of relevant facts in the WDTX.

Because the parties have identified a few potential witnesses in both NDCA and WDTX, the

Court finds that party witnesses are neutral in terms of transfer.

Because the location of the documents favors transfer and the party witnesses factor is

neutral, the Court finds that the relative ease of access to sources of proof slightly favors transfer

to the NDCA.

b. Availability of compulsory process to secure the attendance of witnesses

In this factor, the Court considers the availability of compulsory process to secure the

attendance of witnesses, particularly non-party witnesses whose attendance may need to be

secured by a court order. Volkswagen II, 545 F.3d at 316.

Google argues that it has identified 12 witnesses with relevant prior art products from

companies with headquarters in the NDCA. ECF No. 42 at 6. All of these third-party witnesses

are within the subpoena power of the NDCA, but outside of this Court’s trial subpoena power.

Id.

In its response, HDI argues that Google’s argument fails for at least five reasons. First,

HDI asserts that this Court has previously found that prior art witnesses are unlikely to testify.

ECF No. 46 at 7. Specifically, the prior art witnesses should be afforded minimal weight, and

that they do not weigh in favor of or against transfer. Id. Second, HDI argues that Google has the

burden to identify reasons for transfer. Id. Third, if the Court chooses to identify prior art

witnesses, HDI argues that they have identified several in Texas, including in the WDTX. Id.

Fourth, HDI argues that Google failed to show how prior art witness depositions inconveniences

Google. Lastly, HDI points out that the witnesses located in the DFW area are subject to this

Court’s subpoena power.

In its reply, Google makes one counterargument. ECF No. 49 at 4. Google argues that

deposition testimony is not equivalent to live trial testimony. Id. Specifically, Google says that

they should not be prejudiced by having to show pieced-together clips of deposition video,

instead of being able to call key witnesses to testify live. Id.

After considering the parties’ arguments, the Court finds that this factor is neutral for the

reason that follows. Because prior art witnesses are very unlikely to testify (and that Google may

have cherry-picked them to begin with), the Court gives their location “minimal” weight. East

Tex. Boot Co., LLC v. Nike, Inc., No. 2:16-cv-0290-JRG-RSP, 2017 WL 28559065 at *4 (E.D.

Tex. Feb. 15, 2017). Accordingly, prior art witnesses do not weigh for or against transfer.

Because both Google and HDI based their entire argument on prior art witnesses, all of the other

arguments set forth by each party is irrelevant. Therefore, the Court finds that availability of

compulsory process to secure the attendance of witnesses is neutral.

c. Cost of attendance for willing witnesses

The convenience of witnesses is the single most important factor in the transfer analysis.

In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). The Court should consider all

potential material and relevant witnesses. See Alacritech Inc. v. CenturyLink, Inc., No. 2:16-cv-

693, 2017 WL 4155236, at *5 (E.D. Tex. Sept. 19, 2017). “When the distance between an

existing venue for trial of a matter and a proposed venue under § 1404(a) is more than 100 miles,

the factor of inconvenience to witnesses increases in direct relationship to the additional distance

to be traveled.” Id. at 1343. The convenience of party witnesses is given little weight. See ADS

Sec. L.P. v. Advanced Detection Sec. Servs., Inc., No. A-09-CA-773-LY, 2010 WL 1170976, at

*4 (W.D. Tex. Mar. 23, 2010), report and recommendation adopted in A-09-CA-773-LY (ECF

No. 20) (Apr. 14, 2010).

As a preliminary matter, given typical time limits at trial, the Court does not assume that

all of the party and third-party witnesses listed in the 1404(a) briefing will testify at trial. Instead,

in addition to the party’s experts, the Court assumes that no more than a few party witnesses—

and even fewer third-party witnesses, if any—will testify live at trial. Therefore, long lists of

potential party and third-party witnesses do not affect the Court’s analysis for this factor.

The Court finds that this factor is neutral because of the following: First, the cost of

attendance of party witnesses does not weigh for or against transfer because there appear to be

several potential witnesses in both districts. In any case, courts give the convenience of party

witnesses little weight. Second, because prior art witnesses are very unlikely to testify, the Court

finds that the cost of attendance of prior art witnesses does not weigh for or against transfer.

Because neither party nor prior art witnesses weigh for or against transfer, the Court finds that

the factor on cost of attendance of willing witnesses is neutral.

d. All other practical problems that make trial of a case easy, expeditious

and inexpensive

In this factor, the court considers the practical problems that make a trial easy,

expeditious, and inexpensive for the private parties. In re Genentech, Inc., 566 F.3d at 1342.

“Judicial economy is served by having the same district court try the cases involving the same

patents.” In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009). “To permit a

situation in which two cases involving precisely the same issues are simultaneously pending in

different District Courts leads to the wastefulness of time, energy, and money that § 1404(a) was

designed to prevent.” Continental Grain Co. v. The FBL-585, 364 U.S. 19, 26 (1960).

Google argues that this point is neutral. ECF No. 42 at 8. Conversely, HDI argues that

this point weighs in their favor because the Court consolidated this case with Amazon.

Specifically, HDI points out that HDI has asserted the same claims against Amazon and Google,

making it highly likely that issues will overlap.

The Court finds that this factor weighs towards denying the motion to transfer to the

NDCA. The Court has consolidated the claims against both Amazon and Google. The

consolidation of two cases makes the best use of HDI resources. HDI is now able to file joint

motions and all other things that come with having a consolidated patent case. In addition,

WDTX is simply a less congested venue than the NDCA. See Uniloc 2017 LLC v. Apple, 6-19-

cv-00532 (W.D. Tex. June 22, 2020), ECF No. 72 at 29. Thus, the Court finds that the other

practical problems weigh in favor of denying transfer to the NDCA.

e. Administrative difficulties flowing from court congestion

The relevant inquiry under this factor is actually “[t]he speed with which a case can come

to trial and be resolved[.]” In re Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009). In its

motion, Google admits that this Court’s time-to-trial is currently 25% faster than the NDCA.

ECF No. 42 at 8. Despite their admission, Google argues that this factor should be given the least

weight because the Federal Circuit has held that time to trial is the most speculative factor. Id. In

its response, HDI agrees that the time-to-trial favors HDI and that the factor should disfavor

transfer to the NDCA. ECF No. 46 at 10.

Because the time-to-trial statistics in this Court is currently 25% faster than the NDCA,

the Court finds that this factor weighs against transfer.

f. Local interest in having localized interests decided at home

In its motion, Google argues that they have a stronger local interest in this litigation than

the WDTX because Google developed the accused products in the NDCA. ECF No. 42 at 8. In

its response, HDI argues that Google’s presence in NDCA favors this factor only slightly.

Specifically, HDI argues that Google sells and ships the accused products throughout the

country. Thus, the effect of their operation is felt everywhere.

In its reply, Google contends that the local interest factor weighs in favor of transfer to a

venue where there are significant connections between the particular venue and the events that

gave rise to the suit. ECF No. 49 at 4. Thus, because the NDCA is where Google researched,

designed, and developed the accused functionality, the local interest factor favors transfer to the

NDCA. Id. at 5.

The Court finds that this factor slightly weighs in favor of transfer. Google is a large

employer in both the NDCA and the WDTX, so both districts have a significant interest in this

case. Google’s contribution to this factor is neutral. While Google does have a large number of

employees in both districts, Google researched, designed, and developed the accused

functionality in the NDCA. Accordingly, given that Google’s presence in both districts is neutral

in terms of transfer, but Google’s development of the accused functionality weighs in favor of

transfer, the Court finds that the local interest factor slightly favors transfer to the NDCA.

g. Familiarity of the forum with the law that will govern the case

Both parties agree that this factor is neutral. ECF No. 42 at 8 (Google), ECF No. 46 at 10

(HDI). The Court also agrees.

h. Avoidance of unnecessary problems of conflict of laws or in the

application of foreign law

Both parties agree that this factor is neutral. ECF No. 42 at 8 (Google), ECF No. 45 at 10

(HDI). The Court also agrees.

i. Conclusion

Having found that (1) access to proof and local interests slightly weigh in favor of

transfer; (2) court congestion and other practical problems weigh against transfer; and (3) all

other factors being neutral, the Court finds that Google has not met its “heavy burden” to

demonstrate that NDCA is “clearly more convenient.” Volkswagen II, 545 F.3d at 314 n.10, 315;

QR Spex, 507 F. Supp. 2d at 664.

IV. Discussion regarding alternative motion to transfer to Austin

Google’s alternative motion is to transfer this case to the Austin Division. Google argues

that the Austin Division is clearly more convenient than the Waco Division because Google has

an office and employees in Austin. ECF No. 42 at 9. Also, Google argues that the intra-district to

Austin will save judicial resources because of the consolidation with the Amazon case. Id. at 9.

In its response, HDI argues that Waco is more convenient for HDI because their

headquarters are located in the DFW area. ECF No. 46 at 6. Also, HDI argues, for those traveling

from the NDCA, that Waco is equally as accessible as Austin. Id. at 9. Specifically, HDI argues

that flying into Dallas and driving to Waco takes the same amount of time as flying into Austin

because Austin flights usually make a connection in Dallas. Id.

In its reply, Google makes two counterarguments. First, Google argues that it is an error

to consider proximity for a measure of convenience when none of the HDI witnesses are in the

WDTX. ECF No. 49 at 5. Second, Google argues that HDI failed to present any facts to support

their contention that travel to Waco from the NDCA is not significantly less convenient

compared to travel to Austin. Id.

The Court agrees that the Austin Division is more convenient than the Waco Division for

the reasons Google has described. In short, whatever facts weigh against transfer to the NDCA

from the WDTX also weigh in favor of transferring to Austin from Waco. Therefore, the Court

finds that Google has met its “heavy burden” of demonstrating that Austin is “clearly more

convenient.”

V. Conclusion

It is therefore ORDERED that Google’s motion for transfer venue to the Northern

District of California is DENIED. It is further ORDERED that Google’s alternative motion is

GRANTED and that the above-styled case be TRANSFERRED to the Austin Division but

remain on the docket of United States District Judge Alan D Albright and according to the

scheduling order that was entered in this case on November 1, 2019.

SIGNED this 24th day of June, 2020.

(Vue Mec Lk

~—

AN D ALBR

UNITED STATES DISTRICT JUDGE

12