Jenam Tech, LLC v. Google LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

JENAM TECH, LLC, §

Plaintiff, §

§

v. § 6-20-CV-00453-ADA

§

GOOGLE LLC, §

Defendant. §

§

ORDER DENYING MOTION TO TRANSFER VENUE TO THE NORTHERN

DISTRICT OF CALIFORNIA

Came on for consideration this date is Defendant Google LLC’s Motion to Transfer to the

Northern District of California (“NDCA”) pursuant to 28 U.S.C. § 1404(a). Def.’s Motion, ECF

No. 27. The Court has considered the Motion, the Parties’ briefs, oral argument, and the

applicable law. For the reasons set forth below, the Court DENIES Defendant Google’s Motion

to Transfer.

I. INTRODUCTION

A party seeking a transfer to an allegedly more convenient forum carries a significant

burden. Babbage Holdings, LLC v. 505 Games (U.S.), Inc., No. 2:13-CV-749, 2014 U.S. Dist.

LEXIS 139195, at *12–14 (E.D. Tex. Oct. 1, 2014) (stating the movant has the “evidentiary

burden” to establish “that the desired forum is clearly more convenient than the forum where the

case was filed”). Google does not contest that venue is proper in the Western District of Texas

(“WDTX”). Pl.’s Resp., ECF No. 58, at 3. The burden that a movant must carry is not that the

alternative venue is more convenient, but that it is clearly more convenient. In re Volkswagen,

Inc., 545 F.3d 304, 314 n. 10 (5th Cir. 2008) (hereinafter “Volkswagen II). Google moved to

have this case transferred to the NDCA. This Court finds that Google fails to show that transfer

is warranted.

II. LEGAL STANDARD

A. Section 1404 Transfer

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. Volkswagen II,

545 F.3d at 314. “In this context, showing good cause requires the moving party to ‘clearly

demonstrate that a transfer is for the convenience of parties and witnesses [and] in the interest of

justice.’” State of Texas et al. v. Google LLC, No. 4:20-CV-957-SDJ, 2021 WL 2043184, at *2

(E.D. Tex. May 20, 2021) (citing Humble Oil & Refin. Co. v. Bell Marine Serv., Inc., 321 F.2d

53, 56).

“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).

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 313 (“[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. BACKGROUND

Google is incorporated in the state of Delaware with its corporate headquarters located in

Mountain View, California. Def.’s Mot. at 1. Google also has several offices in this District, one

of which is located at 500 West 2nd Street, Austin, Texas 78701. Pl.’s Compl., ECF No. 1 at ¶ 6.

Jenam is a limited liability company incorporated in Texas with its principal place of business at

211 West Tyler Street, Suite C, Longview, Texas, 75601. Pl.’s Compl. at ¶ 1.

Jenam filed this lawsuit on June 1, 2020, alleging infringement of U.S. Patent Nos.

10,069,945; 10,075,564; 10,075,565; 10,375,215; 10,306,026; 9,923,995; 9,923,996; and

10,742,774. Pl.’s Compl. at 6–11. Each of the Asserted Patents relates to methods, systems, and

computer program products for sharing information for detecting an idle TCP connection. Id. at

3–6. Specifically, Jenam alleges that Google infringes the asserted patents through its use of the

QUIC protocol present in various devices that Google develops and sells. See generally Pl.’s

Compl.; Pl’s Resp. at 5–6.

On August 14, 2020, Google filed this Motion to Transfer Venue under 28 U.S.C. §

1404(a) requesting that the case be transferred to the Northern District of California (“NDCA”).

Def.’s Mot. at 1. Google argues that the NDCA is a clearly more convenient venue than the

Western District of Texas (“WDTX”). Id. In support of this argument, Google asserts that “there

no Google employee responsible for Google’s QUIC protocol anywhere in the state of Texas.”

Id.

On March 20, 2021, Jenam filed a response arguing that Google did not meet its burden

of proving that the NDCA is a clearly more convenient venue than the WDTX. Pl.’s Resp. at 1.

Google filed a reply on March 26, 2021. Def.’s Reply, ECF No. 63. The Court heard oral

argument on Defendant’s Motion to Transfer on April 27, 2021. Mot. Hrng. Tr., ECF No. 90.

IV. ANALYSIS

The threshold determination in the § 1404 analysis is whether this case could have been

brought in the NDCA. Neither party contests the fact that venue is proper in the NDCA and that

this case could have been brought there. Def.’s Mot. at 7; Pl.’s Resp. at 8.

A. The Private Interest Factors Weigh Against Transfer.

i. 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., 2019

WL 4743678, at *2. “[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 1332, 1340 (Fed. Cir. 2020) (citing In re Genentech, 566 F.3d at 1345).

Here, the Court finds that the location of electronic documents is neutral, and that the location of

physical documents weighs slightly in favor of transfer.

1. Witnesses Are Not Sources of Proof

Google discusses various witnesses as sources of proof. See Def.’s Mot. at 9–10. Pl.’s

Resp. at 11–16; Def.’s Reply at 2–6. This Court, in following Federal Circuit precedent, has

made clear that witnesses are not sources of proof to be analyzed under this factor. Under this

factor, the Court considers only documents and physical evidence. Netlist, Inc. v. SK Hynix Am.

Inc., No. 6:20-CV-00194-ADA, 2021 U.S. Dist. LEXIS 47242, at *17 (W.D. Tex. 2021) (“The

first private factor, ease of access to sources of proof, considers ‘documents and physical

evidence’ as opposed to witnesses.”) (emphasis added); In Re Apple Inc., 979 F.3d at 1339

(“[t]his factor relates to the ease of access to non-witness evidence, such as documents and other

physical evidence”); Volkswagen II, 545 F.3d at 315 (“All of the documents and physical

evidence relating to the accident are located in the Dallas Division”). Accordingly, Google’s

identified witnesses are more appropriately assessed under the second or third private factors and

not under this factor.

2. Location of Electronic Documents

In several previous orders, this Court has lamented this factor as out of touch with

modern patent litigation. Fintiv, 2019 WL 4743678, at *8; Uniloc 2017 LLC v. Apple Inc., 6-19-

CV-00532-ADA, 2020 WL 3415880, at *9 (W.D. Tex. June 22, 2020). In those cases, the Court

acknowledged that “all (or nearly all) produced documents exist as electronic documents on a

party’s server. Then, with a click of a mouse or a few keystrokes, the party produces these

documents.” Id. There is no realistic difference in the relative ease of access to these electronic

documents from the transferor district as compared to the transferee district since the documents

are easily accessible electronically. Other courts in the Fifth Circuit similarly found that access to

documents that are available electronically provides little benefit in determining whether a

particular venue is more convenient than another. See Uniloc USA Inc. v. Samsung Elecs. Am.,

No. 2:16-cv-642-JRG, 2017 U.S. Dist. LEXIS 229560, at *17 (E.D. Tex. Apr. 19, 2017)

("Despite the absence of newer cases acknowledging that in today's digital world computer

stored documents are readily moveable to almost anywhere at the click of a mouse, the Court

finds it odd to ignore this reality in favor of a fictional analysis that has more to do with early

Xerox machines than modern server forms.").

Nevertheless, until the Fifth Circuit addresses the reality previously discussed, trial courts

must continue to apply this factor consistent with current precedent. Fifth Circuit precedent

establishes that Google, as the accused infringer, will likely 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.”). However, Genentech does not provide an accused infringer with a

“built-in factor weighing in its favor.” See Uniloc USA, Inc. et al v. Apple Inc, No. 2:17-cv-258,

ECF No. 104, at 12 (E.D. Tex. Dec. 22, 2017).

Under current Fifth Circuit precedent, the physical location of electronic documents does

affect the outcome of this factor. See Volkswagen II, 545 F.3d at 316. Google argues that

electronic documents are “created and maintained” in the NDCA. Def.’s Mot. at 8–9. Jenam

counters that, during discovery, Google admitted that “maintaining” merely involves updating

the electronic documents from time to time. Pl.’s Resp. at 8. Jenam argues that Google has not

provided evidence that the documents are stored in a physical place, such as a data server, in the

NDCA. See generally Def.’s Mot.; Pl.’s Resp. at 8. Jenam goes on to assert that, as the Eastern

District determined in Seven Networks, Google only “manages” its servers in the NDCA and

does not store any data servers there. Pl.’s Resp. at 8 (citing Seven Networks, LLC v. Google

LLC, No. 2:17-CV-00442-JRG, 2018 U.S. Dist. LEXIS 146375 at *10 (E.D. Tex. 2018)).

Under this factor, the movant carries the burden of identifying “sources of proof with

enough specificity that a court can determine whether transfer will increase the convenience of

the parties.” MacroPoint, LLC v. Ruiz Food Prods., No. 6:16-cv-01133-RWS-KNM, 2017 U.S.

Dist. LEXIS 138985 at *5 (E.D. Tex. 2017) (quoting J2 Glob. Commc'ns, Inc. v. Protus IP

Solutions, Inc., 2009 U.S. Dist. LEXIS 13210, 2009 WL 440525, at *2 (E.D. Tex. Feb. 20,

2009)). Google has failed to identify which data centers store the relevant electronic documents

in question, and where these data centers are located. See generally Def.’s Mot. Therefore,

Google has failed to meet its evidentiary burden to show that the location of any electronic

sources of proof would weigh in favor of transfer.

In its Reply, Google mentions that local copies of relevant electronic documents are

located in the NDCA. Def.’s Reply at 2–3. However, as Jenam points out, Google has not

provided evidence that it would be more difficult to access these documents from its offices in

the WDTX than its offices in the NDCA. Pl.’s Resp. at 9.

Because no evidence exists showing that the relevant electronic documents in this case

are stored in the NDCA, and because there does not appear to be a difference in the ease of

accessibility of the electronic documents between the transferee and transferor districts, this

factor is neutral.

3. Location of Physical Documents

Aside from hard copies of documents already available electronically, Google does not

point with particularity to any relevant physical documents, nor does it confirm the existence of

any physical documents located in the NDCA. Def.’s Mot. at 8–9. Therefore, the Court is not

persuaded that the location of any physical documents would weigh in favor of transfer to the

NDCA.

Jenam argues that it has evidence in the form of physical documents which are located in

Texas. Pl.’s Resp. at 10. Specifically, Jenam points to physical documents stored in Mr.

Gordon’s office in Longview and Mr. Caldwell’s office in Dallas. Id. Jenam contends that it

would be more convenient for these documents to be transported to the WDTX than to the

NDCA. Id. Google contends that these physical documents should not be given any weight in the

Court’s analysis because Mr. Caldwell mentioned during his deposition that he was unsure if he

had any physical documents relating to this case. Def.’s Reply at 10. However, Google did not

argue that the existence of any physical documents belonging to Mr. Gordon was in question.

See generally Def.’s Reply.

The Court agrees with Jenam that it would be more convenient for the physical

documents relevant to this case to be transported the WDTX than to the NDCA. Therefore, the

relative ease of access to sources of proof in this case weighs solidly against transfer.

ii. The 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.” Fintiv, 2019 WL 4743678, at *5 (citing Volkswagen II, 545 F.3d at

316); Uniloc, 2020 WL 3415880, at *10. 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, Inc., 581 F.App’x. 886, 889 (Fed. Cir. 2014). 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); Gemalto S.A. v. CPI Card

Grp. Inc., No. 15-CA-0910, 2015 WL 10818740, at *4 (W.D. Tex. Dec. 16, 2015). As party

witnesses almost invariably attend trial willingly, “[w]hen no party has alleged or shown any

witness’s unwillingness, a court should not attach much weight to the compulsory process

factor.” CloudofChange, LLC v. NCR Corp., No. 6-19-cv-00513 (W.D. Tex. Mar. 17, 2020)

(citation omitted). Moreover, the ability to compel live trial testimony is crucial for evaluating a

witnesses’ testimony. Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992).

Google argues that the NDCA could compel certain third-party witnesses to testify at

trial, while this court cannot. Def.’s Mot. at 10. Google’s identifies five potentially relevant

third-party witnesses located in the NDCA— Mr. Iyengar, Mr. Hamilton, Mr. Krasic, Mr.

Roskind, and Mr. Zilka. Id. at 11.

In its motion, Google attempts to “double-dip” the five individual witnesses by

discussing them under both the willing and unwilling witness factors. Def.’s Mot. at 10–12;

Def.’s Reply at 3–5. However, with respect to Mr. Hamilton, Mr. Krasic, Mr. Roskind, and Mr.

Zilka, Google has failed to establish that these witnesses would be unwilling to testify at trial in

the WDTX. See generally Def.’s Mot.; Pl.’s Resp. at 11. Google argues that Jenam has not

shown that any of these witnesses would be willing to testify in the WDTX. Def.’s Reply at 3.

However, it is well-settled that it is the burden of the party seeking transfer to show that the

witnesses would be unwilling to travel. See, e.g., Uniloc United States v. Huawei Device United

States, No. 2:17-CV-00736-JRG-RSP, 2018 U.S. Dist. LEXIS 234545, at *8 (E.D. Tex. 2018)

(citing In re Apple, Inc., 581 F. App'x 886, 891 (Fed. Cir. 2014) (Bryson, J., Dissenting)).

Moreover, hypothetical scenarios of unwillingness are not evidence of unwillingness. Turner v.

Cincinnati Insurance Co., No. 6:19-cv-642, 2020 WL 210809, at *3 (W.D. Tex. Jan. 14, 2020).

(This private interest factor carries far less weight when the movant has not alleged or shown that

any witnesses are unwilling to testify.). The Court will therefore consider these four witnesses

under the factor examining the convenience of willing witnesses.

Jenam points out that Mr. Caldwell, the prosecuting attorney for the Asserted Patents, is

within the subpoena power of this Court. Pl.’s Resp. at 12. However, because Jenam has not

provided evidence that Mr. Caldwell would be unwilling to testify in the WDTX, Mr. Caldwell

will not be considered in the Court’s analysis of this factor and will instead be analyzed as a

willing witness.

Google also asserts that Cisco Systems could be a relevant prior art source and has its

principal place of business in the NDCA. Def.’s Mot. at 11. In response, Jenam argues that many

Cisco employees with relevant knowledge of the prior art are located within the WDTX. Pl.’s

Resp. at 12.

1. Prior Art Witnesses

This Court has placed minimal weight on the location of prior art witnesses stating, “prior

art witnesses are very unlikely to testify” so “the Court gives their location ‘minimal’ weight.”

Fintiv, 2019 WL 4743678, at *5 (citing E. Tex. Boot Co., LLC v. Nike, Inc., No. 2:16-CV-0290-

JRG-RSP, 2017 WL 2859065, at *4 (E.D. Tex. Feb. 15, 2017)).

When considering the location of the potential prior art witnesses in this case, the Court is

not persuaded that one forum would be more convenient than the other. The only named prior art

witness in this case, Cisco, has employees with relevant knowledge in both districts. Pl.’s Resp.

at 12. As such, the Court finds that prior art witnesses are equally subject to the compulsory

process in both Districts and do not have an effect on this factor.

2. Individual Witnesses

Mr. Iyengar is the only potential third-party witness who is “likely unwilling to testify in

Texas.” Def.’s Reply at 3; Iyengar Decl. at ¶ 6, ECF No. 26-2. In response, Jenam notes that Mr.

Iyengar has traveled to the WDTX before, while employed at Google. Pl.’s Resp. at 11. Courts in

the Fifth Circuit have held that “[i]dentifying a potential pool of likely unwilling witnesses has

some probative value in determining convenience.” Texas v. Google LLC, No. 4:20-CV-957-

SDJ, 2021 U.S. Dist. LEXIS 96586, at *15 (E.D. Tex. 2021). Therefore, this Court finds that Mr.

Iyengar’s likely unwillingness to testify provides only “some probative value in determining

convenience” and weighs only slightly in favor of transfer.

Because Google has only identified a single witness who is “likely unwilling” to testify in

Texas, this factor overall slightly favors transfer.

iii. The Cost of Attendance for Willing Witnesses

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

analysis.” Fintiv, 2019 WL 4743678, at *6. 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).

As the Eastern District of Texas has recognized, “it is obviously more convenient for

witnesses to testify closer to home, and additional distance means additional travel, meal, and

lodging costs, as well as additional time away from the witnesses’ regular employment.” Texas et

al. v. Google LLC, No. 4:20-CV-957-SDJ, 2021 WL 2043184, at *4 (E.D. Tex. May 20, 2021)

(citing Volkswagen, 545 F.3d at 317). The Fifth Circuit’s 100-mile rule states that “[w]hen the

distance between an existing venue for trial of a matter and a proposed venue § 1404(a) is more

than 100 miles, the factor of inconvenience of witnesses increases in direct relationship to the

additional distance to be traveled.” In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir.

2008) (quoting Volkswagen I, 371 F.3d at 204–05). “Significantly, this factor relates primarily to

the inconvenience placed on willing nonparty witnesses, not party witnesses.” Texas et al. v.

Google LLC, 2021 WL 2043184 at *4; Seven Networks, 2018 WL 4026760, at *9 (collecting

cases); Frederick v. Advanced Fin. Sols., Inc., 558 F.Supp.2d 699, 704 (E.D. Tex. 2007) (“The

availability and convenience of party-witnesses is generally insignificant because a transfer

based on this factor would only shift the inconvenience from movant to nonmovant.”). 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 1404(a) briefing will testify at trial. Fintiv, 2019 WL

4743678, at *6. Rather, 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. Id.

Therefore, long lists of potential party and third-party witnesses do not affect the Court’s

analysis for this factor. Id.

Google names Mr. Astithas and Mr. Schinazi as party witnesses residing in the NDCA.

Def.’s Mot. at 9. Jenam names Mr. Gordon, who resides in Frisco, TX, as its party witness. Pl.’s

Resp. at 3. When assessing the convenience of a transfer, a mere shift of inconvenience from one

party’s witnesses to the other party’s witnesses is not enough to favor transfer. Tapia v. Dugger,

Civil Action No. SA-06-CA-0147-XR, 2006 U.S. Dist. LEXIS 69356, at *14 (W.D. Tex. 2006)

(citing Dupre v. Spanier Marine Corp., 810 F.Supp. 823, 826 (S.D. Tex. 1993)). This Court finds

that “the inconvenience to Google's party witnesses if the case was not transferred would

generally be the same as the inconvenience to [Jenam]'s party witnesses if the case was

transferred[.]” Texas et al. v. Google LLC, 2021 WL 2043184 at *4; Seven Networks, 2018 WL

4026760, at *12. Therefore, this factor is neutral with respect to party witnesses.

Google names Mr. Hamilton, Mr. Krasic, and Mr. Roskind, former Google employees

who worked on QUIC related projects, as non-party witnesses present in the NDCA. Def.’s Mot.

at 12. Google also mentions that Mr. Zilka, who was involved in the prosecution, drafting of

infringement notices, and licensing of the Asserted Patents, is located in the NDCA. Def.’s Reply

at 4.

Jenam argues that, as the inventor, Mr. Morris is the most important non-party witness.

Pl.’s Resp. at 17. Because Mr. Morris lives in Georgia, he would be less inconvenienced by the

900 mile trip to Waco, Texas than by a 2,600 mile trip to the NDCA. Id. A transfer would also

inconvenience Mr. Caldwell, who prosecuted the Asserted Patents and is located in Dallas,

Texas. Id.

Google argues that Mr. Morris has not agreed to appear at trial willingly, and thus should

be discounted under this factor. Def.’s Reply at 5. However, Jenam makes clear that Mr.

Morris’s objections to appearance at trial are due to the COVID-19 pandemic, and that he has

agreed to appear at trial when conditions change. Pl.’s Resp. at 3. Moreover, in oral argument,

Jenam represented to the Court that Mr. Morris would be willing to testify at trial in Waco. Mot.

Hrng. Tr., ECF No. 90 at 20.

In the past, this Court has held that “[b]ecause inventors’ testimony is extremely

important, inventors are key witnesses and the Court gives greater weight to their convenience.”

VLSI Tech. LLC v. Intel Corp., No. 6:19-CV-00254-ADA, 2019 U.S. Dist. LEXIS 227809 at *13

(W.D. Tex. 2019) (citing Mid-Continent Cas. Co. v. Petroleum Sols., Inc., 629 F. Supp. 2d 759,

762 (S.D. Tex. 2009)). In addition, a convenience analysis under §1404(a) is not a “battle of

numbers.” Tapia v. Dugger, 2006 U.S. Dist. LEXIS 69356, at *15 (W.D. Tex. 2006) (citing

Mohamed v. Mazda Motor Corp., 90 F. Supp. 2d 757, 777 (E.D. Tex. 2000)). In this case, the

Court finds that, because Mr. Morris is the sole inventor of the Asserted Patents, the importance

of Mr. Morris’s testimony outweighs the testimony of Google’s former employees.

Google also argues that because Mr. Morris and Mr. Caldwell are located outside the

WDTX and the NDCA, that they should not be included in the Court’s analysis of this factor.

Def.’s Reply at 5 (citing In re Genentech, 566 F.3d 1338, at 1344). However, the Fifth Circuit’s

100-mile rule, that “the factor of inconvenience of witnesses increases in direct relationship to

the additional distance to be traveled,” is indeed applicable to witnesses who reside outside both

forums. Volkswagen I, 371 F.3d at 204–05; Precis Grp., LLC v. TracFone Wireless, Inc., No. 6-

20-CV-00303-ADA, 2021 U.S. Dist. LEXIS 45644 at *18–19 (W.D. Tex. 2021) (including

witnesses from Arizona and Minnesota in an analysis of convenience between the WDTX and

the Southern District of Florida); Phil-Insul Corp. v. Reward Wall Sys., No. 6:11cv53 LED-JDL,

2012 U.S. Dist. LEXIS 114493 at *9 (E.D. Tex. 2012) (considering the convenience of witnesses

flying from Ontario, Canada in a transfer from Tyler, Texas to Omaha, Nebraska); Rembrandt

Wireless Techs., LP v. Apple Inc., No. 2:19-CV-00025-JRG, 2019 U.S. Dist. LEXIS 205694 at

*5 (E.D. Tex. 2019) (including sources of proof from California, Pennsylvania, and Florida in its

analysis of convenience between the Eastern District of Texas and the Central District of

California).

Moreover, this case is distinguishable from In Re Apple Inc., where the Federal Circuit

held that a venue transfer to the NDCA would not significantly change the inconvenience of

witnesses flying to the WDTX from New York. In re Apple Inc., 979 F.3d 1332, 1342 (Fed. Cir.

2020). In that case, the Federal Circuit determined that “although a flight from New York to

WDTX might take a bit less time than from New York to NDCA, in either instance these

individuals will likely have to leave home for an extended period of time and incur travel,

lodging, and related costs”. Id. Unlike the witnesses from New York in that case, neither Mr.

Caldwell nor Mr. Morris are travelling further than 1,000 miles. Pl.’s Resp. at 3–4. Mr. Caldwell

is located in the same state as the WDTX. Pl.’s at 4. Mr. Morris resides in Georgia and intends to

drive to trial. Pl.’s Resp. at 3. The additional travel, lodging, and related costs that Mr. Morris

will incur with a 2,600-mile drive to the NDCA over a shorter, 900-mile trip to the WDTX

amount to a significant difference of convenience. Therefore, this Court finds it proper to include

Mr. Caldwell and Mr. Morris in its analysis of this convenience factor.

In summary, for Mr. Hamilton, Mr. Krasic, Mr. Roskind, and Mr. Zilka, the NDCA is a

more convenient venue. For other witnesses, including Mr. Morris, the inventor, and Mr.

Caldwell, the prosecuting attorney, the WDTX is a more convenient venue. This Court has

determined that the importance of Mr. Morris’s testimony outweighs the testimony of Google’s

former employees. Accordingly, this factor weighs against transfer.

iv. All Other Practical Problems That Make Trial of a Case Easy, Expeditious and Inexpensive

The Court finds that this factor is at most neutral. Google argues that in cases where the

suit is in its earliest stages, and where there is no co-pending litigation in either forum, this factor

is neutral. Def.’s Mot. at 13; Voxer, Inc. v. Facebook, Inc., No. 6:20-CV-00011-ADA, 2020 WL

3416012, at *6 (W.D. Tex. June 22, 2020). Jenam argues that this factor weighs against transfer.

Pl.’s Resp. at 14. Jenam asserts that a transfer would be prejudicial, because, due to court

congestion in the NDCA, Google would have extra time to develop invalidity and non-

infringement theories. Id. However, the Court finds that because this case has not yet heard

argument on Markman claim terms, that this case is in such an early stage that transfer would not

unduly prejudice Jenam. See Uniloc 2017 LLC v. Apple Inc., No. 6-19-CV-00532-ADA, 2020

U.S. Dist. LEXIS 109037 at *46 (W.D. Tex. 2020). Accordingly, the Court finds this factor

neutral.

B. The Public Interest Factors Weigh Against Transfer.

i. 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). A faster

average time to trial means a more efficient and economical resolution of the claims at issue.

Google argues that because there is not an “appreciable difference” in docket congestion

between the NDCA and the WDTX, that this factor is neutral. Def.’s Mot. at 14. Jenam counters

that because the NDCA is becoming more congested as time goes on that this factor weighs

against transfer. Pl.’s Resp at 14. Jenam also asserts that this Court’s approach to patent cases,

specifically the accelerated scheduling of the Markman hearing, reduces court congestion and

administrative difficulties. Id. at 15.

If this case is transferred to the NDCA, establishing a new schedule with a new presiding

judge would cause greater delay. Pl.’s Resp. at 14. Because transfer would only prolong this

case, this factor weighs 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, 545 F.3d at 317. “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).

Google states that the NDCA has a stronger local interest because “Google’s QUIC

protocol was designed and developed in Northern California, and it is these Google employees’

work and reputation that has been called into question.” Def.’s Mot. at 15. However, Google has

had a substantial presence in Austin for nearly 14 years. As Jenam notes, Google’s presence in

Texas is “ever-increasing,” and Google “positions itself as a member of the community.” Pl.’s

Resp. at 15. Jenam also argues that Jenam itself is a Texas entity with whom the WDTX has a

local interest in. Id.

Seeing as both Districts are home to Google facilities, employees, and are significant

markets for the allegedly infringing products, the Court finds this factor neutral with respect to

Google. Moreover, the local interest that this Court has in adjudicating a matter involving a

Texas entity, Jenam, shifts this factor against transfer.

iii. Familiarity of the Forum With the Law That will Govern the Case

Both parties agree that this factor is neutral. Def.’s Mot. at 15; Pl.’s Resp. at 16. The

Court also agrees.

iv. Avoidance of Unnecessary Problems of Conflict of Laws or in the Application of Foreign

Law

Both parties agree that this factor is neutral. Id. The Court also agrees.

V. CONCLUSION

Having found that the ease of access to relevant sources of proof weighs against transfer,

the availability of compulsory process weighs only slightly in favor of transfer, the convenience

of the witnesses and parties weighs against transfer, the practical problems factor is neutral, the

court congestion and local interest factors weigh against transfer, and all other factors being

neutral, the Court finds that Google has not met its significant burden to demonstrate that the

NDCA is “clearly more convenient.” See Volkswagen IT, 545 F.3d at 314 n.10; QR Spex, 507

F.Supp.2d at 664. Therefore, because the Court finds that Google has not demonstrated that the

NDCA is a clearly more convenient venue than the WDTX, the Court DENIES Google’s

Motion to Transfer.

SIGNED this 8th day of July, 2021.

C10. O\Wor

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE