The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
VALTRUS INNOVATIONS LTD. §
and KEY PATENT §
INNOVATIONS LIMITED, §
Plaintiffs, §
§ No. 3:22-CV-066-L-BW
v. §
§ (consolidated w/ No. 3:24-CV-1795-L)
GOOGLE LLC, §
Defendants. §
MEMORANDUM OPINION AND ORDER
On February 7, 2025, Defendant Google LLC, filed its “Motion to Transfer
Case out of District/Division,” (see Dkt. No. 237 (“Google’s Trsfr. Mot.”)), and its
“Unopposed Motion to Partially Seal Google’s Brief ISO Its Motion to Transfer and
Its Appendix ISO Its Motion to Transfer,” (see Dkt. Nos. 238 (“Google’s Mot. to
Seal”), 238-1 (“Google’s Trsfr. Br.”), 238-2 (“Google’s App.”)). Plaintiffs Valtrus
Innovations Ltd. (“Valtrus”), and Key Patent Innovations Limited (“KPI”),
(collectively “Plaintiffs”), filed their response in opposition to the motion to transfer
venue along with a redacted appendix on April 7, 2025, (see Dkt. No. 266). That
same day, Plaintiffs also filed an “Unopposed Motion to Seal Portions of their
Opposition to Defendant Google LLC’s Motion to Transfer Venue and Appendix
Filed in Support Thereof,” (see Dkt. Nos. 267 (“Pls.’ Mot. to Seal”), 267-2 (“Pls.’
Unredacted Resp.”), 267-3 (“Pls.’ App.”)). Google filed its reply in support of its
motion to transfer venue on April 28, 2025, (see Dkt. No. 275 (“Google’s Reply”)),
and the corresponding appendix, (see Dkt. No. 276 (“Google’s Reply App.”)). On
May 28, 2025, Plaintiffs filed a “Contingent Motion to Transfer Venue,” (see Dkt.
No. 286 (“Pls.’ Cont. Mot. Trsfr.”)), and a supporting appendix, (see Dkt. No. 287
(Pls.’ Cont. Mot. App.”)). United States District Judge Sam A. Lindsay referred this
case to a magistrate judge for pretrial management, and the referral has been
reassigned to the undersigned magistrate judge. (Dkt. Nos. 226, 262, 263.)
For the reasons stated below, the Court GRANTS the parties’ motions to seal,
GRANTS Google’s motion, DENIES Plaintiffs’ contingent motion to transfer, and
TRANSFERS this action to the Northern District of California.
I. BACKGROUND
This case arises out of alleged patent infringement. At issue in this lawsuit are
three patents: U.S. Patent Nos. 6,728,704 (“the ’704 Patent”), 6,816,809 (“the ’809
Patent”), 7,346,604 (“the ’604 Patent”) (collectively the “Asserted Patents”). (Pls.’
Unredacted Resp. at 2.) Valtrus is the successor in interest to a patent portfolio
created by Hewlett-Packard Enterprises (“HPE”). (Id.) Generally, the patent
infringement allegations of the Asserted Patents are directed at the functionality in
Google Search and Google Cloud. (Google’s Trsfr. Br. at 2.) Valtrus is an Irish
company, with no offices or employees in the United States. (Google’s Trsfr. Br. at
1.) KPI is also an Irish company and similarly has no offices or employees in the
United States. (Id.) Google is an American company headquartered in Mountain
View, California. (See id.)
Valtrus filed its initial complaint on January 10, 2022, (Dkt. No. 1
(“Compl.”).) Discovery began and continued until November 2, 2022, when the
Court granted Google’s motion to stay pending resolution of Google’s petition for
inter parties review (“IPR”). (Dkt. No. 179.) On December 2, 2024, the Court
granted Plaintiffs’ motion to lift the stay. (Dkt. No. 203.)
Google moved to transfer the case under 28 U.S.C. § 1404(a), arguing that the
Northern District of California (“NDCA”) was a more convenient forum. Google
asserts that at least ten potential witnesses—including employees who worked on
developing the accused products and patent inventors—the patent prosecution law
firms, and other relevant third-party witnesses reside in NDCA.
Plaintiffs oppose the motion and maintain that the proper venue is here in the
Northern District of Texas (“NDTX”). Alternatively, they assert that if the Court
concludes that this is not the most convenient venue, the proper transferee Court is
the Austin Division of the Western District of Texas (“WDTX”). Plaintiffs argue
that the case should remain here because one of Google’s physical data centers is in
Midlothian, Texas, which is in this district. (Pls.’ Unredacted Resp. at 1.) Google
has 19 data centers in North America—14 that are currently functioning and 5 in
development.1 (Pls.’ App. at 166.) Plaintiffs also contend that Google waited too
long to seek transfer. (Id.)
1 The 19 locations are: Central Ohio; Council Bluffs, Iowa; The Dalles, Oregon;
Douglas County, Georgia; Ellis County, Texas; Fort Wayne, Indiana; Henderson, Nevada;
Jackson County, Alabama; Kansas City, Missouri; Lenoir, North Carolina; Lincoln,
Nebraska; Lowcountry, South Carolina; Mayes County, Oklahoma; Mesa, Arizona;
Montgomery County, Tennessee; Nebraska; Northern Virginia; Red Oak, Texas; Storey
County, Nevada. (Pls.’ App. at 166.)
II. MOTIONS FOR LEAVE TO FILE UNDER SEAL
The Court GRANTS the parties’ motions to file under seal. (See Google’s
Mot. to Seal; see also Pls.’ Mot. to Seal.) Northern District Local Rule 79.3(b) states
that, “[i]f no statute or rule requires or permits a document to be filed under seal, a
party may file a document under seal only on motion and by permission of the
presiding judge.” No statute or rule requires or permits sealing here; therefore, the
Court must determine whether sealing is warranted.
Courts “heavily disfavor sealing information placed in the judicial record.”
June Med. Servs., L.L.C. v. Phillips, 22 F.4th 512, 519-20 (5th Cir. 2022). In
determining whether a document should be sealed, a court undertakes a “document-
by-document, line-by-line balancing of the public’s common law right of access
against the interests favoring nondisclosure.” Binh Hoa Le v. Exeter Fin. Corp, 990
F.3d 410, 419 (5th Cir. 2021) (internal quotation marks and citations omitted). This
standard is “arduous,” and the balancing test is stricter than it is at the discovery
stage. June Med. Servs., 22 F.4th at 521. “[T]he working presumption is that judicial
records should not be sealed.” Binh Hoa Le, 990 F.3d at 419 (citation omitted).
Regarding Google’s unopposed motion to seal, after balancing the competing
interests, the Court finds that the interests support nondisclosure. Google has limited
its request to seal to only three exhibits, and portions of the brief that refer to
information contained within those exhibits. A redacted brief, and the remaining
exhibits, were filed and are available to the public. (See Dkt. No. 237.) Google also
contends that the information within those exhibits is information not generally
available to the public, (Google’s Mot. to Seal at 3), and it points out that the
information is being offered in relation to a non-dispositive motion, (id.).
Accordingly, Google’s unopposed motion to seal is GRANTED.
Valtrus also filed an unopposed motion to seal. (See generally Pls.’ Mot. to
Seal). Plaintiffs assert that they “file[] this motion solely for the benefit” of Google
and non-party Advanced Micro Devices (“AMD”) since their opposition references
material deemed confidential. (Id. at ECF p. 1.) Plaintiffs have, similarly to Google,
filed public redacted versions of the documents and have limited their request to seal.
Balancing the relevant interests, the Court finds that the interests support
nondisclosure and GRANTS Plaintiffs’ unopposed motion to seal.
III. MOTIONS TO TRANSFER
Google argues that the case should be transferred to the Northern District of
California. (See generally Google’s Trsfr. Mot.) Plaintiffs argue that the correct venue
is in the Northern District of Texas but that, if the Court is inclined to transfer the
case, the better transferee court is the Austin Division of the Western District of
Texas. (See generally Pls.’ Cont. Mot.) The Court first considers whether NDTX or
NDCA is the more convenient forum. If the Court concludes from that analysis that
the case should be transferred pursuant to 28 U.S.C. § 1404(a), it will then consider
whether it should be transferred to NDCA or WDTX.
A. Legal Standards
Section 1404(a) provides that “[f]or the convenience of parties and witnesses,
in the interest of justice, a district court may transfer any civil action to any other
district or division where it might have been brought.” “The decision to transfer is
made to prevent waste of time, energy, and money and to protect litigants, witnesses,
and the public against unnecessary inconvenience and expense.” Bank One, N.A. v.
Euro-Alamo Invs., Inc., 211 F. Supp. 2d 808, 811 (N.D. Tex. 2002) (citing Stabler v.
N.Y. Times Co., 569 F. Supp. 1131, 1137 (S.D. Tex. 1983)). “The court cannot
transfer a case where the result is merely to shift the inconvenience of the venue from
one party to the other.” Sivertson v. Clinton, No. 3:11-CV-0836-D, 2011 WL 4100958,
at *3 (N.D. Tex. Sept. 14, 2011) (citing Fowler v. Broussard, No. 3:00-CV-1878-D,
2001 WL 184237, at *6 (N.D. Tex. Jan. 22, 2001)).
As a preliminary question, the court must decide “whether the judicial district
to which transfer is sought would have been a district in which the claim could have
been filed.” In re Volkswagen AG (“Volkswagen I”), 371 F.3d 201, 203 (5th Cir. 2004).
Once the court resolves this issue, “the determination of ‘convenience’ turns on a
number of private and public interest factors, none of which are given dispositive
weight.” Id. (citing Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358 F.3d 337, 340 (5th
Cir. 2004)).
The private concerns 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.
The public concerns 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. (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)). The Fifth Circuit
has emphasized that, “[a]lthough [these] factors are appropriate for most transfer
cases, they are not necessarily exhaustive or exclusive.” In re Volkswagen of Am., Inc.
(“Volkswagen II”), 545 F.3d 304, 315 (5th Cir. 2008). “Pertinent here, courts have
considered a party’s delay in denying a motion to transfer.” In re Planned Parenthood
Fed’n of Am., Inc., 52 F.4th 625, 630 (5th Cir. 2022) (internal quotations omitted).
The moving party bears “the burden of proving by a preponderance of the
evidence that transfer is appropriate.” Bank One, N.A., 211 F. Supp. 2d at
812 (citing Time, Inc. v. Manning, 366 F.2d 690, 698 (5th Cir. 1966)). Further,
“[w]here there is no demonstration by the movant, let alone a clear one, the [district]
court cannot weigh a factor against the non-movant and in favor of transfer.” Def.
Distributed v. Bruck, 30 F.4th 414, 434 (5th Cir. 2022).
Moreover, “‘the plaintiff’s choice of forum has reduced significance where
most of the operative facts occurred outside the district.’” Baxa Corp. v. ForHealth
Techs., Inc., No. 3:05-CV-2274-D, 2006 WL 680503, at *2 (N.D. Tex. Mar. 15, 2006)
(quoting Minka Lighting, Inc. v. Trans Globe Imps., Inc., No. 3:02-CV-2538-G, 2003
WL 21251684, at *1 (N.D. Tex. May 23, 2003)).
B. Analysis
1. The Northern District of California is a more convenient forum
compared to this district.
a. Threshold Question
As an initial matter, the Court addresses whether the case could have
originally been brought in the NDCA. Google asserts that NDCA is a proper venue
pursuant to 28 U.S. Code § 1400(b). (Google’s Trsfr. Br. at 14.) Under § 1400(b),
“[a]ny civil action for patent infringement may be brought in the judicial district
where the defendant resides[.]” 28 U.S. Code § 1400(b). The Federal Circuit has
explained that “the case law and statute reveal three general requirements relevant to
the inquiry: (1) there must be a physical place in the district; (2) it must be a regular
and established place of business; and (3) it must be the place of the defendant.” In re
Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017).
Google resides in NDCA. Google is headquartered in Mountain View,
California, a city within NDCA. (See Google’s App. at 280.) Therefore, Google
resides in NDCA and may be sued there.
b. Private interest factors favor transfer to NDCA.
i. Relative ease of access to sources of proof.
The first factor focuses on the location of “documents and physical evidence
relating to the [case].” Volkswagen II, 545 F.3d at 315-16. “The question is relative
ease of access, not absolute ease of access.” In re Radmax, Ltd., 720 F.3d 285, 288
(5th Cir. 2013. That means this factor weighs in favor of transfer where the current
district lacks any evidence relating to the case. See Volkswagen II, 545 F.3d at 316.
But when “the vast majority of the evidence [is] electronic, and therefore
equally accessible in either forum[,]” this factor bears less strongly on the transfer
analysis. See In re Planned Parenthood, 52 F.4th at 630. Notably, however, in In re
Google LLC, the Federal Circuit held that a “district court erred by analyzing only the
location of servers where documents are stored, rather than also considering the
location of document custodians and location where documents are created and
maintained, which may bear on the ease of retrieval.” No. 2021-178, 2021 WL
5292267, at *2 (Fed. Cir. Nov. 15, 2021) (unpublished). “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) (analyzing transfer under Fifth Circuit law).
Here, Google argues that “[w]hile documents stored in the cloud may be
hosted on Google data centers in multiple locations, including in Midlothian, those
documents are not accessed at the data centers themselves but instead by employees
who create and maintain those documents from the locations where they work.”
(Google’s Trsfr. Br. at 22.) Google further asserts that “[the] likely Google trial
witnesses [that] create and maintain documents and source code related to their work
on these accused products, and thus [are] potential document custodians for this
case[]” are located in NDCA. (Id.)
Plaintiffs counter by asserting that “[t]he only relevant physical evidence that
is not digitally accessible” is the data center (Pls.’ Unredacted Resp. at 13-14), and
that AMD EPYC design files related to the ‘809 patent are in Texas (id. at 15).
Addressing the physical data center first, Plaintiffs say that a jury view may be
appropriate to better understand the alleged infringement of the ‘809 patent. (Id.)
However, Plaintiffs provide no explanation or authority to support their assertion
that seeing the physical data center would help a jury understand the alleged
infringement, which occurs in the steps taken by components within the processor.
(See id.; see also Google’s Reply at 7.) Turning to design files and source code for the
AMD EPYC processors, Plaintiffs say, “Google has provided no showing this
evidence is equally accessible in California.” (Pls.’ Unredacted Resp. at 15.)
Plaintiffs point the Court to Kevin Lepak’s deposition to support this statement. (Id.)
However, the relevant portion of Mr. Lepak’s testimony addresses whether such
internal documents are available for employees to access in Austin and makes no
mention of Dallas or the Northern District of Texas. (See Pls.’ App. at 195-196.)
Therefore, the likely custodians’ residence in NDCA favors transfer.
However, taking into consideration that the evidence is largely digital, this factor
receives less weight. Accordingly, the Court weighs this factor slightly in favor of
transfer.
ii. Availability of compulsory process to secure the
presence of witnesses.
The second private interest factor addresses the availability of compulsory
process to secure witness attendance. A subpoena may command a person’s
attendance at a trial, hearing, or deposition
(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 (i) is a party or a party’s officer; or (ii) is commanded to attend
a trial and would not incur substantial expense.
Fed. R. Civ. P. 45(c)(1). As the party seeking transfer, Google “has the
burden to establish that [the District Court for the Northern District of California]
has subpoena power over more unwilling witnesses than this Court.” See R2 Sols.
LLC v. Target Corp., No. 4:21-CV-92, 2021 WL 2550908, at *3 (E.D. Tex. June 22,
2021). “[T]he availability of compulsory process receives less weight when it has not
been alleged or shown that any witness would be unwilling to testify.” In re TikTok,
Inc., 85 F.4th 352, 360 (5th Cir. 2023) (quoting Planned Parenthood, 52 F.4th at 630–
31).
Both parties have identified several potential third-party witnesses. For
example, within NDCA Google points to Hewlett Packard Inc., the predecessor in
interest to the ‘704 and ‘809 patents, third-party law firms Fenwick & West and
Cooley LLP, which were responsible for securing the patents, and George A.
Mihaila (inventor of the ‘604 Patent). Google also mentions Jianchang Mao
(inventor of the ‘704 Parent) as a possible third-party witness. (Google’s Trsfr. Br. at
20.) Mr. Mao, however, does not live in California and instead resides in Bellevue,
WA. (Id. at 20 n.13.)
On the other hand, Plaintiffs identify people in Texas who may be necessary
to this lawsuit. Plaintiffs name AMD engineers Dr. Lepak, Dr. Paul, and Dr.
Bhargava as “critical to Valtrus’ case with respect to the ‘809 Patent.” (Pls.’
Unredacted Br. at 15.) According to Plaintiffs, these employees—along with most
senior AMD employees—reside in Austin, Texas. (Id.) Plaintiffs’ further allege that
due to AMD’s close relationship with Google, these witnesses will unlikely be
willing to testify voluntarily, and instead will require the Court to use its subpoena
power. (Id. at 16.)
The Court weights this factor as neutral. As Plaintiffs point out, Google has
not alleged that the third-party witnesses in California would be unwilling witnesses.
Similarly, Google has not alleged Mr. Mao would be an unwilling witness, although
both locations would require traveling for Mr. Mao, Bellevue is significantly closer to
NDCA than to Dallas and thus would be more convenient. In contrast, Plaintiffs
have alleged that AMD is unlikely to willingly testify due to its relationship with
Google, but those witnesses are outside this district but inside this state. The Court
finds this factor to be neutral because, while Google has about twice the number of
potential compulsory witnesses, Plaintiffs’ witnesses are more likely to be unwilling.
Accordingly, balancing the evidence alleged, this factor is neutral.
iii. Cost of attendance for willing witnesses.
The third private interest factor addresses the cost of attendance for willing
witnesses. The convenience of witnesses is often regarded as the most important
factor to be considered in deciding whether to transfer venue. AT & T Intellectual
Prop. I L.P. v. Airbiquity Inc., No. 3:08-CV-1637-M, 2009 WL 774350, at *5
(N.D. Tex. Mar. 24, 2009)
The Fifth Circuit uses a “100-mile threshold” in assessing this factor. In re
Tiktok, 85 F.4th at 361. “When the distance between an existing venue for trial . . .
and a proposed venue under § 1404(a) is more than 100 miles, the factor of
inconvenience to the witnesses increases in direct relationship to the additional
distance to be traveled.” Id. (internal quotation omitted). This is an “obvious
conclusion” because “it is more convenient for witnesses to testify at home[,]” and
“additional distance means additional travel time . . . meal and lodging expenses”
and time “witnesses must be away from their regular employment.” Id. (internal
quotation omitted). Witnesses also suffer “personal costs associated with being away
from work, family, and community” when they testify far from home. Id.
The party seeking transfer of venue must “identify the ‘key witnesses and the
general content of their testimony.’” Sargent v. Sun Tr. Bank, N.A., No. 3:03-CV-
2701-D, 2004 WL 1630081, at *3 (N.D. Tex. July 20, 2004) (quoting Bank One, 211
F. Supp. 2d at 812). “‘The party seeking the transfer must specify clearly . . . the key
witnesses to be called and their location and must make a general statement of what
their testimony will cover.’” AllChem Performance Prods., Inc. v. Oreq Corp., No. 3:11–
CV–3577–D, 2013 WL 180460, at *4 (N.D. Tex. Jan. 17, 2013) (quoting 15 Charles
Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 3851, at 221-22
(3d ed. 2007)); see Magana v. Toyota Motor Corp., No. 3:10–CV–1451–B, 2010 WL
5108850, at *2 (N.D. Tex. Dec. 6, 2010) (finding that defendant failed to show good
cause for transfer based on this factor because it did not provide name, address, or
proposed testimony of any witness who could more conveniently testify in the
proposed transferee district).
Google identifies ten likely trial witnesses. (Google’s Trsfr. Mot. at 16.) Of
those ten, it identifies eight employees—as well as a brief description of the
connection between their work and the accused products—and two prior inventors—
Prabhakar Raghavan (‘704 Patent) and Krishna Bharat (‘604 Patent)—who all reside
in NDCA. (Id.) Google further argues that Plaintiffs’ corporate witness resides in
Ireland and will need to travel a considerable distance regardless which forum the
case is in. (Id. at 17.) Finally, Google brings up potential non-party witnesses—Ms.
Kumar, Mr. Riley, and Mr. Seaman—from Patent Platform Services. (Id.) Google
alleges that because these witnesses are interested parties, “they ‘presumably will
testify willingly[.]’” (Id. at 17 n.12.) Notably, Ms. Kumar,2 Mr. Ripley, and Mr.
2 In their response, Plaintiffs state that “Ms. Kumar, resides in Aubrey, Texas, which
is about 50 miles away from the Dallas courthouse.” (Pls.’ Unredacted Resp. at 18.)
Plaintiffs cite a Google Map showing the driving distance from the federal courthouse in
Dallas to Aubrey, Texas, (Pls.’ App at 545). However, Plaintiffs’ initial disclosures,
(Google’s App at 228), only have Patent Platform Services’ Frisco address for Ms. Kumar.
Thus, the Court engages in its analysis using the Frisco address. Regardless, given that
Frisco and Aubrey are a similar distance away from Dallas, and both are in the Eastern
District of Texas, precisely which should be considered is immaterial.
Seaman all reside in Frisco, Texas (see Google’s App. at 228), which, although
physically near NDTX, is located in the Eastern District of Texas.
Plaintiffs argue that “Google ignores its Texas-based employees that Valtrus
wants to bring to trial.” (Pls.’ Unredacted Resp. at 18.) Plaintiffs identify 18 Google
employees they allege have relevant information. (Id. at 8.) Ten of those are based
in Austin, nearly 200 miles away from Dallas. (See id.) Five are in Dallas, and one is
in Allen, Texas. (See id.) One is based in Katy, Texas, (see id.), which is around 257
miles from Dallas. And one, Kayleigh N., is a remote worker without a specified
base. (See id. at 8; see also Pls.’ App at 332.)
For multiple reasons, the Court weighs this factor significantly in favor of
transferring the case to NDCA. Google points out that Plaintiffs’ contentions that
Google’s Texas employees have knowledge of the allegedly infringing products is
based purely on LinkedIn profiles and job titles. (See Pls.’ Unredacted Resp. at 8.)
Courts in this circuit have rejected this method of creating connections to a venue.
See DDC Tech., LLC v. Google LLC, No. 3:22-CV-1263-B, 2023 WL 2518846, at *5
(N.D. Tex. Mar. 14, 2023) (rejecting defendant’s assertions “based solely on the
LinkedIn profiles of the entities’ purported employees”). The only Texas employee
Plaintiffs expand on is Mr. Gannis, the CTO of Google Cloud. (See Pls.’ Unredacted
Br. at 18.) Google disputes that Mr. Gannis has relevant information.
The Court considers and weighs all the witness evidence presented. Beginning
with Mr. Gannis, even assuming he possesses relevant information, he is based in
Austin, Texas, 200 miles away, and his presence does not favor keeping this case in
NDTX. The Court does take into consideration the Patent Platform Services
employees who are potential witnesses, despite residing in a different district, they
are non-party witnesses who are physically much closer to NDTX than to NDCA.
Nonetheless, Google has provided at least ten potential witnesses, all with relevant
information regarding the accused products, who reside in NDCA. Weighing the
evidence presented, the Court finds that the bulk of the relevant witnesses reside in
NDCA and thus, this factor favors transfer. See In re Tiktok, 85 F.4th at 361 (“The
presence of one Texas witness cannot overcome the immense inconvenience that the
majority of relevant witnesses would face if this case were to be tried in Texas.”)
iv. Practical problems that make trial of a case easy,
expeditious, and inexpensive.
The fourth factor considers “all other practical problems that make trial of a
case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 315. This factor
weighs against transfer when petitioners “inexcusably delayed” bringing their motion
until “late in the litigation.” Planned Parenthood, 52 F.4th at 631. But “garden-
variety delay associated with transfer is not to be taken into consideration when”
weighing this factor. Radmax, 720 F.3d at 289.
Here, Google argues that this factor favors transferring because “[a]ll dates in
the Scheduling Order had been completed by the stay, and no dates have been set for
close of fact or expert discovery, summary judgment, or trial. The Court has not
held a Markman hearing[,]” and alleging the discovery already produced will still be
useful if transferred. (Google’s Trsfr. Br. at 23.)
Plaintiffs’ main argument is that the transfer would delay the case and that
“Google did not act with reasonable promptness.” (Pls.’ Unredacted Resp. at 10.)
Plaintiffs accuse Google of judge and forum shopping and assert that Google
provides no good reason to have waited this long to seek transfer. (Id. at 11.)
Plaintiffs rely on Wilson v. Texas Christian University, in which the court denied a
motion to transfer filed over a year after the original complaint. See No. 3:20-CV-
00106-M, 2021 WL 12289114, at *3 (N.D. Tex. Aug. 2, 2021). By the time the court
considered the motion to transfer in Wilson, it had “entered and modified the
scheduling order, reviewed multiple substantive filings filed by Defendants, issued
opinions, and become familiar with the case.” Id.
The Court agrees that Google’s delay in filing the motion to transfer weighs
against transfer. However, it also takes into consideration other case-specific
circumstances. On November 2, 2022, the Court granted Google’s motion to stay
pending resolution of the IPR. In the order to stay, the Court noted that “[t]his case
has not yet been set for trial, and there are no dates for the close of fact and expert
discovery. Moreover, the Court has not ruled on any dispositive motions, and the
Court has not rendered a decision on claim construction.” (Dkt. No. 179 at 4.) The
case then remained stayed for over two years, until December 2, 2024. (See Dkt. No.
203.) Despite the passage of time, much of what was said in the previous order
remains true: the case has not been set for trial, there are no dates for close of fact
and expert discovery, the Court has not ruled on substantive motions, and—despite
the parties submitting claim construction briefing—there has been no Markman
hearing nor a decision on claim construction. Therefore, this factor weighs only
slightly against transfer.
While Google could have acted with more promptness, the private factors
weigh overall in favor of transfer to NDCA.
c. Public interest factors weigh in favor of transfer.
i. The administrative difficulties flowing from court
congestion
The first public factor considers “the administrative difficulties flowing from
court congestion[.]” Volkswagen II, 545 F.3d at 315. The focus is on “docket
efficiency[,]” an issue that “the district court is better placed” to evaluate. Planned
Parenthood, 52 F.4th at 631. This factor normally weighs against transfer when the
“case appears to be timely proceeding to trial before the” transferor district.
The parties disagree on the proper measure to use to compare time to trial is in
each district. Google asserts that the median time to jury trial in patent cases in
NDCA is two years and four months (28 months), and two years and nine months in
NDTX (33 months). (See Google’s Trsfr. Br. at 25.) Google’s time to trial is based
on statistics for the January 1, 2010 to December 31, 2024 period. (Id.) Plaintiffs
assert that the proper period is from January 10, 2022 to February 21, 2025. (See
Pls.’ Unredacted Resp.) Based on this period, Plaintiffs assert the time to trial in
NDCA shows a median of 33 months and an average of 36 months. (See id.) Using
that same date range, NDTX has an average and median time of 33 months.
“The Court finds that the [three-year] period is a better indicator of court
congestion” than Google’s 15-year period. See DDC Tech., LLC, 2023 WL 2518846,
at *8 (finding that a one-year period was a better indicator of court congestion).
Regardless, while the data demonstrates that time to trial in NDTX is somewhat
faster, this difference is immaterial. Anthony v. Henderson Cnty., Tex., No. 3:24-CV-
2394-D, 2025 WL 746140, at *4 (N.D. Tex. Mar. 7, 2025) (finding that 3.8-month
difference in time to trial immaterial). Therefore, this factor is neutral or, at most,
only slightly favors denying transfer.
ii. The local interests in having localized interests decided
at home
The sixth factor considers “the local interest in having localized interests
decided at home.” Volkswagen, 545 F.3d at 315. We look not to “the parties’
significant connections to each forum . . . but rather the significant connections
between a particular venue and the events that gave rise to a suit.” Def. Distrib., 30
F.4th at 435 (internal quotation marks omitted). “Indeed, the place of the alleged
wrong is one of the most important factors in venue determinations.” Id. (cleaned
up). Accordingly, “this factor weighs heavily in favor of transfer [when] . . . there is
no relevant factual connection to the [transferor district].” Volkswagen II, 545 F.3d at
317–18. Also, this factor can weigh against transfer when the “citizens of [the
transferor district] have a greater ‘stake’ in the litigation than the citizens of [the
transferee district].” Planned Parenthood, 52 F.4th at 632.
Google argues that NDCA has a strong local interest in the resolution of this
case. (Google’s Trsfr. Br. at 24.) To support its position, Google asserts that the ‘704
Patent was developed at Verity, Inc., a company based in NDCA, (id.), and “much
of the relevant prior art was also developed in NDCA[,]” (id.). The technical Google
witnesses who worked on the accused products are primarily in NDCA, and
therefore, Google attests NDCA has a local interest in the work and reputation of the
individuals in its district. (Id.) Finally, Google once again asserts that Plaintiffs have
no connection to this district, (see id. at 24-25 (“[Plaintiffs] [have] no apparent offices
or personnel here.”)) and therefore, their choice should be given less weight. (See id.)
Plaintiffs argue that Texas, and specifically NDTX, has an interest in the litigation
because one of the Google’s data centers is physically located within the district.
(Pls.’ Unredacted Resp. at 22.)
NDCA has a stronger local interest in the case. Although, as an accused
product is located within this district—supporting a finding that there is some local
interest here—the NDCA’s stronger connect is based on more than the items mere
presence in the district, which is common to multiple other districts as well. First,
the ‘704 Patent was developed in NDCA, as was much of the relevant prior art.
(Google’s Trsfr. Br. at 24.) Second, the Google employees who were involved in
developing the accused products reside in NDCA. See In re Apple Inc., 979 F.3d at
1345 (holding that NDCA had a local interest in part “because the lawsuit calls into
question the work and reputation of several individuals residing in NDCA” (internal
quotations omitted)). Similarly, much of the accused technology was developed by
NDCA residents in the NDCA. (See Google’s Trsfr. Br. at 24.) Therefore, this factor
favors transfer. In re Apple Inc., 979 F.3d at 1345 (“[B]ecause the accused products
were designed, developed, and tested in NDCA . . . , this factor weighs in favor of
transfer.”).
iii. The familiarity of the forum with the law that will
govern the case.
The seventh factor considers the current district’s “familiarity of the forum
with the law that will govern the case.” Volkswagen II, 545 F.3d at 315. This factor
most “commonly applies where the destination venue is in a different State—in
which case that State’s familiarity with the applicable law would be especially
probative to the transfer analysis.” Planned Parenthood, 52 F.4th at 632 n.5. This
means that we must look to the law the district court will be called on to apply,
including whether the current district court “would be bound to [the transferee
court’s] law concerning such claims.” Def. Distrib., 30 F.4th at 436. This factor is
neutral because, as the parties agree, both forums are familiar with patent law.
iv. The avoidance of unnecessary problems of conflicts of
law.
The fourth public factor focuses on “the avoidance of unnecessary problems of
conflict of laws [or in] the application of foreign law.” Volkswagen II, 545 F.3d at
315. The Court finds this factor neutral as federal patent law governs the dispute,
and therefore raises no conflict-of-law issues. Weighing the different factors, the
Court finds that the public interest factors slightly favor transfer to NDCA.
In conclusion, balancing both the private interest factors and the public
interest factors, Cour concludes that the analysis weighs in favor of transferring this
case to NDCA.
2. The Northern District of California is a more convenient forum compared
to the Western District of Texas.
Having determined that NDCA is a more convenient forum compared to this
district, the Court turns to Plaintiffs’ contingent motion to transfer to WDTX. (Dkt.
No. 286.) The Court again considers the previous factors, but this time, to determine
whether the Western District of Texas (“WDTX”) is the more convenient forum
compared to NDCA.
Plaintiffs allege that “in the event the Court determines that transfer out of the
Northern District of Texas is proper, the appropriate transferee forum is in the
Austin Division of the Western District of Texas.” (Pls.’ Cont. Mot. at 3.) The
Court disagrees.
a. Threshold Question.
The threshold question of venue is met. “Google provides, sells, and offers for
sale infringing products to users in that district and maintains two offices in Austin,”
(Pls.’ Cont. Mot. at 3-4), therefore residing in WDTX. This case could have
originally been brought in the Austin Division of WDTX.
b. Private Factors
The first private factor, the relative ease of access to sources of proof, weighs
slightly in favor of NDCA. Plaintiffs’ contingent motion mainly reiterates the same
arguments as the original response, once again focusing on the access of digital data
and the physical data centers. As already explained above, despite most of the
evidence being digital, the majority of custodians reside in NDCA. Additionally,
although Plaintiffs argue that transferring the case would eliminate the possibility of
a jury viewing the data centers, it is still unclear how physically viewing a data center
would help a jury understand the internal processes of the components. The one
difference between Plaintiffs’ response to Google’s motion to transfer and its
contingent motion to transfer is that now the AMD custodians are in the requested
district. (See Pls.’ Cont. Mot. at 5.) Considering the relative amount of potential
document custodians in NDCA and WDTX, the Court finds this factor still slightly
favors NDCA.
The second private factor, availability of compulsory process to secure the
presence of witnesses, is neutral. Plaintiffs have not identified any additional
witnesses than those who already have been analyzed above. This factor remains
neutral under the comparison between NDCA and WDTX.
The third private factor, cost of attendance for willing witnesses, still heavily
weighs in favor of NDCA. As with the second factor, the alleged potential witnesses
remain the same.3 Because the bulk of the relevant witnesses reside in NDCA, this
factor heavily weighs in favor of NDCA.
3 The only difference for Plaintiffs’ witnesses is that in this comparison Mr. Gannis is
within the district and the Patent Platform Services employees are 200 miles away from the
proposed venue, where the previous analysis had them flipped.
The fourth private factor, practical problems that make trial of a case easy,
expeditious, and inexpensive, is neutral between NDCA and WDTX.
Balancing the private interest factors, the Court finds that the analysis favors
NDCA.
c. Public Factors
The first public interest factor, the administrative difficulties flowing from
court congestion, weighs slightly in favor of WDTX. Plaintiffs allege that NDCA
has a 36-month average and 33-month median time to trial. (Pls.’ Cont. Mot. at 7.)
WDTX shows a 27-month median and 29-month average time to trial for the same
data range. Therefore, this factor slightly favors WDTX. See DDC Tech., LLC , 2023
WL 2518846, at *7 (“Nevertheless, ‘this factor alone should not outweigh other
factors,’ as it is the ‘most speculative.’” (citing Frito-Lay N. Am., Inc. v. Medallion
Foods, Inc., 867 F. Supp. 2d 859, 871 (E.D. Tex. 2012))).
The second public factor, the local interest in having localized interests
decided at home, slightly favors NDCA. While many arguments remain the same as
those already addressed above, WDTX has more of an interest in the resolution than
NDTX, because as alleged by Plaintiffs, “processors relevant to infringement of at
least the ‘809 Patent were designed and developed in the Western District of Texas.”
(See Pls.’ Cont. Mot. at 8.) Nonetheless, NDCA still maintains a strong local
interest, as detailed above. Due to WDTX’s interest, though, the factor still favors
NDCA, but only slightly.
The third and fourth public factors, familiarity of the forum with the law that
will govern the case and the avoidance of unnecessary problems of conflicts of law,
are neutral between NDCA and WDTX.
Balancing all the factors, the Court finds that the public interest factors slightly
favor NDCA. Accordingly, considering both the public and private interest factors,
the analysis weighs in favor of NDCA.
IV. CONCLUSION
Considering all the relevant factors and evidence provided by the parties, the
Court:
(1) GRANTS Google’s Motion to Seal, (Dkt. No. 238);
(2) GRANTS Plaintiffs’ Motion to Seal (Dkt. No. 267);
(3) GRANTS Google’s motion (Dkt. No. 237) and TRANSFERS
this case to the Northern District of California; and
(4) DENIES Plaintiffs’ Contingent Motion to Transfer to the
Western District of Texas, Austin Division, (Dkt. No. 286).
Pursuant to N.D. Tex. L.R. 62.2, the order to transfer this action to the
Northern District of California is STAYED for 21 days from the date this
Memorandum Opinion and Order is entered to allow any party to file an objection to
Judge Lindsay within 14 days after being served with a copy of this order. See Fed.
R. Civ. P. 72(a). If an objection is filed, this order of transfer is stayed pending
further order of the Court.
SO ORDERED on July 23, 2025.
nw
BRIAN McKAY
TED STATES MAGISTRATE JUDGE
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