Opinion
CIVIL 6:21-cv-00665-ADA
05-31-2022
VOIP-PAL.COM, INC. Plaintiff, v. META PLATFORMS, INC., and WHATSAPP LLC, Defendants.
[PUBLIC VERSION] MEMORANDUM OPINION AND ORDER
ALAN D ALBRIGHT, UNITED STATES DISTRICT JUDGE
This opinion memorializes the Court's decision on Meta Platforms, Inc.'s (“Meta”) and WhatsApp, LLC's (“WhatsApp”) (collectively, “Defendants”) Motion to Transfer Venue from the Western District of Texas (“WDTX”) to the Northern District of California (“NDCA”) under 28 U.S.C. § 1404(a). Dkt. No. 32. After careful consideration of the relevant facts, applicable law, the parties' briefs (Dkt. Nos. 32, 40, 46), and the supplemental evidence (Dkt. No. 60), the Court GRANTS Defendants' Motion to Transfer.
I. FACTUAL BACKGROUND
Plaintiff VoIP-Pal.com, Inc. (“VoIP-Pal”) is a Nevada corporation with its principal place of business in Waco, Texas. Dkt. 1 ¶ 1. VoIP-Pal filed a complaint against Defendants alleging infringement of U.S. Patent No. 8,630,234 (the “'234 patent”) and 10,880,721 (the “'721 patent”) (collectively the “Asserted Patents”). Id. ¶ 11-12.
Defendant Meta is a Delaware corporation with its principal place of business in Menlo Park, California and an office in Austin, Texas. Id. ¶ 2. Meta is registered to do business in the State of Texas and has been since at least April 8, 2009. Id. Defendant WhatsApp, Inc. (“WhatsApp”) is a Delaware corporation with its principal place of business in Menlo Park, California. Id. ¶ 3. WhatsApp also has an office in Austin, Texas. Id. WhatsApp is a wholly-owned subsidiary of Meta. Id.
II. LEGAL STANDARD
In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of the regional circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). 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 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 preliminary question under Section 1404(a) is whether a civil action might have been brought in the transfer destination venue. In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir. 2008) (en banc) (“Volkswagen II”). If the destination venue would have been a proper venue, then “[t]he determination of ‘convenience' turns on a number of public and private interest factors, none of which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358 F.3d 337, 340 (5th Cir. 2004). 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) (“Volkswagen I”) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)). 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.” Volkswagen I, 371 F.3d at 203 .
The burden to prove that a case should be transferred for convenience falls on the moving party. Volkswagen II, 545 F.3d at 314. The burden that a movant must carry is not that the alternative venue is more convenient, but that it is clearly more convenient. Id. at 315. Although the plaintiff's choice of forum is not a separate factor entitled to special weight, respect for the plaintiff's choice of forum is encompassed in the movant's elevated burden to “clearly demonstrate” that the proposed transferee forum is “clearly more convenient” than the forum in which the case was filed. Id. at 314-315. While “clearly more convenient” is not necessarily equivalent to “clear and convincing,” the moving party “must show materially more than a mere preponderance of convenience, lest the standard have no real or practical meaning.” Quest NetTech Corp. v. Apple, Inc., No. 2:19-cv-118, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27, 2019).
III. ANALYSIS
A. VoIP-Pal could have brought this suit in the NDCA.
Under 28 U.S.C. § 1400(b), this court must make a threshold determination as to whether this case could have been brought in the destination venue. The Court determines that VoIP-Pal could have brought this suit in the NDCA. One location where venue in a patent lawsuit is proper is where the defendant has committed acts of infringement and maintains a regular and established place of business. 28 U.S.C. § 1400(b); TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514 (2017). Both Meta and WhatsApp are headquartered in the NDCA and sold the accused products within that district as well. VoIP-Pal does not dispute that this threshold inquiry is satisfied. This Court finds that venue would have been proper in the NDCA. Thus, the Court proceeds with its analysis of the private and public interest factors to determine if the NDCA is clearly more convenient than the WDTX.
B. The private interest factors favor transfer.
The Court finds that three private interest factors favor transfer, and the remaining factor is neutral. Overall, the private interest factors favor transfer to the NDCA.
a. The relative ease of access to sources of proof favors transfer.
“In considering the relative ease of access to proof, a court looks to where documentary evidence, such as documents and physical evidence, is stored.” Fintiv Inc. v. Apple Inc., No. 6:18-cv-00372, 2019 WL 4743678, at *2 (W.D. Tex. Sept. 10, 2019). The question properly focuses on “relative ease of access, not absolute ease of access.” In re Radmax, 720 F.3d 285, 288 (5th Cir. 2013) (emphases in original). And “[i]n 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).
Here, Defendants argue that both the relevant sources of proof from Meta and WhatsApp are located in the NDCA. Dkt. No. 32 at 5. The WhatsApp application was designed and developed in the NDCA and the bulk of the relevant documents are located there as well. Dkt. No. 32-1 ¶ 3. Meta's relevant technical documentation is maintained primarily in the NDCA and Washington state, and financial and marketing documents were generated and maintained in the NDCA. Dkt. No. 32-1 ¶¶ 3, 8-10, 11-13. Defendants argue VoIP-Pal's connections to the WDTX are artificial and that “no evidence” supports the relevance of the financial documents VoIP-Pal alleges are stored in Waco. Dkt. No. 46 at 4. Defendants argue, based on three of VoIP's initial disclosures, that VoIP-Pal has a similar amount of evidence in Mountain View, California. Dkt. No. 47-4 at 4; Dkt. No. 47-5 at 5; Dkt. No. 47-6 at 4.
VoIP-Pal contends that the Defendants' relevant documents are equally “accessible from multiple locations,” including the WDTX where Defendants have including engineers, managers, and analysts. Dkt. No. 40 at 8; Dkt. No. 40-11 at 10-13, 31. VoIP-Pal argues it would be equally easy to access this evidence from Austin as well because custodians in technical roles at Meta's Austin office will have equally convenient access to Meta's electronic documents. VoIP-Pal also points to the fact that Meta has employees across the country including “a significant number of relevant documents” in New York and Washington state, but this fact favors neither venue. Dkt. No. 40-11 at 14-29.
In evaluating this factor, the Court finds the Declaration of Nicholas Wong to be credible and convincing. Mr. Wong carefully investigated the underlying facts that form the basis of his knowledge, identified the basis of his knowledge, made mostly clear and unqualified statements of fact, made statements consistent with Defendants' thoroughly prepared interrogatory responses, avoided making uninformed statements, avoided testifying about topics that he lacks knowledge of, and mostly avoids using vague and crafty language. Compare Dkt. No. 32-1 (“Wong Dec.”), with Scramoge Tech. Ltd. v. Apple, Inc. No. 6:21-CV-00579-ADA, 2022 WL 1667561, at *2-4 (W.D. Tex. May 25, 2022) (criticizing a repeat declarant for providing uninformed statements, failing to identify the sources of his knowledge, qualifying vague statements of adverse facts with crafty language, testifying about topics appropriate only for technical experts and lawyers, and failing to clearly respond to discovery requests). The Court finds the Wong Declaration to be reliable. The Court similarly finds that Defendants provided thorough and well-informed venue interrogatory responses. Compare Dkt. No. 40-11 (providing clear and thorough responses in a venue interrogatory), with Scramoge, 2022 WL 1667561, at *4 n.3 (refusing to fully respond to venue interrogatory). The Court finds that collectively, the Wong Declaration and the Defendants' interrogatory responses carefully identified the Defendants' relevant employees who work in Texas.
The bulk of the Defendants' relevant technical documentation resides in the NDCA and weighs in favor of transfer. Wong Dec. ¶¶ 3, 8-10, 13. The Defendants' financial and marketing documents are also generated and maintained in the NDCA. Id. ¶¶ 11-13. Relevant technical documentation was generated and is maintained in the NDCA. Id. ¶¶ 14-21. At the same time, Defendants employ employees in the WDTX who likely have similarly convenient access to relevant technical documentation. Dkt. No. 40-11 at 10, 31; Dkt. No. 40 at 8. This Court must not only consider the location of Meta's documents, many of which are in the NDCA, but also the location of “document custodians” and “where documents are created and maintained, which may bear on the ease of retrieval.” In re Google LLC, No. 2021-178, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15, 2021). Here, the majority of Meta employees who developed the technology in dispute and maintained documents relevant to this technology are primarily based in the NDCA, which favors transfer. But because Defendants employ employees in with the WDTX, Defendants can access their technical documents from the WDTX just as easily. “In modern patent litigation, documents are located on a server, which may or may not be in the transferee district (or given the use of cloud-based storage, may be located on multiple servers in multiple districts, or even multiple countries) and are equally accessible from both the transferee and transferor districts.” Fintiv, Inc. v. Apple Inc., No. 6:18-CV-00372-ADA, 2019 WL 4743678, at *4 (W.D. Tex. Sept. 13, 2019). With both the transferee and transferor districts having custodians who can access the electronic technical documents, “[t]hen, with a click of a mouse or a few keystrokes, the party produces these documents” equally conveniently from either forum. Id. Thus, the relative ease of accessing technical evidence neither favors nor disfavors transfer.
But the same cannot be said for the Defendants' financial evidence in this case. Mr. Wong convincingly declared that the Defendants' XXXXX that XXXXX and that Wong Dec. ¶¶ 11, 12, 19. Thus, the documentation and information covering the financing and marketing of the Accused Products are in the NDCA and in Washington state, and Plaintiff has not shown that there are any custodians in Texas who can access the relevant financial and marketing documents just as easily as the Defendants' custodians in the NDCA. Wong Dec. ¶¶ 13, 21; In re Google LLC, 2021 WL 5292267, at *2. Thus, the ease of accessing financial information in the NDCA weighs in favor of transfer.
VoIP-Pal argues that its relevant documents are in Waco, Texas. Defendants argue, based on three of VoIP's initial disclosures, that VoIP-Pal has a similar amount of evidence in Mountain View, California. Dkt. No. 47-4 at 4; Dkt. No. 47-5 at 5; Dkt. No. 47-6 at 4. The Court finds that VoIP-Pal likely has an equal amount of evidence in both the NDCA and in the WDTX, so VoIP's evidence neither favors nor disfavors transfer.
As a result, relevant financial and marketing documents are more easily retrieved from the NDCA than the WDTX. Thus, this factor weighs in favor of transfer.
b. The compulsory process factor favors transfer.
The Federal Rules permit a court to 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). Under this factor, the Court focuses on non-party witnesses whose attendance may need to be secured by a court order. Fintiv Inc., No. 6:18-cv-00372, 2019 WL 4743678 at *14 (citing Volkswagen II, 545 F.3d at 316). And “when there is no indication that the witness is willing,” the Court must presume that its subpoena power will be necessary to secure the witness' attendance. In re DISH Network LLC, No. 2021-182, 2021 WL 4911981, at *3 (Fed. Cir. Oct. 21, 2021) (quoting In re HP, Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir. Sept. 25, 2018)). This factor “weigh[s] heavily in favor of transfer when more third-party witnesses reside within the transferee venue than reside in the transferor venue.” In re Apple, 581 Fed.Appx. 886, 889 (Fed. Cir. 2014).
i. Inventors
Here, all four inventors of the Asserted Patents, Maksym Sobolyev, Jev Bjorsell, Pentti Huttunen, and Malak Magdi Emil, reside near Vancouver, Canada. Dkt. Nos. 33-30 to 33-33. Neither this Court nor the NDCA can compel these inventors to attend trial, so these inventors do not factor into the Court's analysis.
ii. Defendants' non-party witnesses
To support transfer, Defendants point to “at least four prior art patents and patent applications” that are material to the patentability of the Asserted Patents and identifies “at least 11 inventors living and/or working” in the NDCA. Dkt. Nos. 33-1 to 33-15. The eleven inventors based in the NDCA are Trevor Fiatal, Jay Sutaria, Shailesh Bavadekar, Sridhar Nanjundeswaran, Gordon K. Chang, Robert W. Harbison, Ming C. Lo, Stephen R. Raab, Shmuel Silverman, Udaya Shankar, and David Hughes. Id. In addition, Craig Walker and Vincent Paquet, founders of the companies that created relevant prior art systems DialPad and GrandCentral, both reside in the NDCA. Dkt. Nos. 33-23 to 33-27. Since these thirteen total prior art witnesses have provided no indication of their willingness to attend trial, Defendants argue that the NDCA's subpoena power will be necessary to secure their testimony.
Defendants point to five additional relevant non-party witnesses' that reside in the NDCA's subpoena power. Both Dr. Marian Croak, credited with the creation of the VoIP technology, and Mark Townsley and Bill Palter, authors of papers cited in the Asserted Patents, reside in the NDCA. Dkt. No. 33-17; Dkt. Nos. 33-28 to 33-29. Fred Baker, another author of a paper in an asserted patent, resides in Santa Barbara County. Dkt. No. 33-19. However, Santa Barbara is a part of the CDCA beyond the NDCA's 100-mile subpoena power, so Mr. Baker does not factor into this analysis. Finally, Defendants argue that John M. Carson, who prosecuted the Asserted Patents, resides in California and offers relevant information. Dkt. No. 33-34. However, VoIP-Pal points out that Mr. Carson resides in San Diego, which is outside of the subpoena power of the NDCA, and thus he does not weigh into this factor. Dkt. No. 33-25.
iii. VoIP-Pal's non-party witnesses
VoIP-Pal points to non-party witnesses it claims are “actually” relevant to the dispute. First, VoIP-Pal argues that two of the inventors of the Asserted Patents weigh in favor of the WDTX. The first is Emil Malak, CEO of VoIP, but he will not require compulsory process to appear at trial in Waco because he is VoIP's CEO. Dkt. No. 40 at 10. The second inventor, Jev Bjorsell, has previously shown a willingness to attend trial in Waco to testify about his other patents. Dkt. No. 40-14 ¶ 5. Thus, compulsory process is likely not needed to secure Mr. Bjorsell's attendance. There are two additional non-party witnesses VoIP-Pal asserts will require this Court's subpoena power to compel attendance. Three employees of Business Legal Management, LLC (“BLM”) (George Brunt, Bobby Love, and Joseph Wadsworth) are presently within the subpoena power of the WDTX. Dkt. No. 40-16 at 10. Finally, VoIP-Pal argues that it needs compulsory process secure the presence of Marcus Redding. Dkt. No. 40 at 10.
In conclusion, this factor weighs in favor of transfer. Defendants cite sixteen witnesses in the NDCA that require compulsory process. Most of these are cherry-picked prior art witnesses who are not needed to authenticate the patents that they are named on, but they may still provide testimony about the state of the art. The Court does not categorically disregard prior art witnesses but discounts them because prior art witnesses rarely appear at trial. In re Hulu, LLC, 2021 WL 3278194, at *3 (Fed. Cir. Aug. 2, 2021). VoIP-Pal has identified four witnesses who would require this Court's compulsory process. Because the Court presumes witnesses are unwilling unless they indicate otherwise, the Court considers all witnesses identified by Defendants and VoIP-Pal as unwilling witnesses. DISH Network, 2021 WL 4911981, at *3. Even after discounting the likelihood that all sixteen of Facebook's witnesses will testify, there are still far more witnesses in the NDCA subject to subpoena power than in the WDTX. Thus, this factor weighs in favor of transfer.
c. The cost of attendance and convenience for willing witnesses favors transfer.
The most important factor in the transfer analysis is witness convenience. In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). When analyzing this factor, the Court should consider all potential materials and relevant witnesses. Alacritech Inc. v. CenturyLink, Inc., No. 2:16-CV-00693, 2017 WL 4155236, at *5 (E.D. Tex. Sept. 19, 2017). This factor appropriately considers the cost of attendance of all willing witnesses, including both party and non-party witnesses. In re Pandora Media, LLC, No. 2021-172, 2021 WL 4772805, at *2-3 (Fed. Cir. Oct. 13, 2021). “Courts properly give more weight to the convenience of non-party witnesses than to party witnesses.” Netlist, Inc. v. SK Hynix Inc., No. 6:20-CV-00194-ADA, 2021 WL 2954095, at *6 (W.D. Tex. Feb. 2, 2021).
“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 or inconvenience to witnesses increases in direct relationship to the additional distance to be travelled.” Volkswagen II, 545 F.3d at 317 (quoting Volkswagen I, 371 F.3d at 203). But the Federal Circuit has clarified that courts should not “rigidly” apply the 100-mile rule in cases where witnesses would be required to travel a significant distance no matter where they testify. In re Apple, 979 F.3d at 1342 (discussing witnesses traveling from New York) (citing Volkswagen II, 545 F.3d at 317).
Rather, “the inquiry should focus on the cost and inconvenience imposed on the witnesses by requiring them to travel to a distant forum and to be away from their homes and work for an extended period of time.” In re Google, LLC, No. 2021-170, slip op. at 9 (Fed. Cir. Sept. 27, 2021). The Federal Circuit has indicated that time away from an individual's home is a more important metric than distance. Id. Time and distance frequently and naturally overlap because witnesses usually take more time to travel farther away, thereby increasing the time away from home. A witness in Florida would not find it more convenient to travel to Texas than to California despite Texas being halfway between Florida and California. In re Apple Inc., No. 2022-128, 2022 WL 1196768, at *3 (Fed. Cir. Apr. 22, 2022).
i. Defendants' party witnesses
Defendants identify five WhatsApp employees who likely have relevant knowledge and will find travel to courthouses in the NDCA to be more convenient. These identified individuals reside in the NDCA and can drive to the courthouses in the NDCA, testify for several hours, and return home in the same day. XXXXX is the Engineering Director on XXXXX team, which is based in XXXXX and likely has relevant knowledge on the design and development of relevant instrumentalities of the accused WhatsApp product. Wong Dec. ¶ 9.XXXXX is a software engineer on team and corroborates XXXXX 's information. Id. ¶ 8. Messrs. XXXXX reside in northern California. Id. ¶¶ 8-9. is the Software Engineering Manager on team, which is based in XXXXX and likely has relevant knowledge on the design and development of relevant instrumentalities of the accused WhatsApp product. Id. ¶ 10. Mr. resides in northern California. Id. is the Finance Director for XXXXX and likely has relevant knowledge regarding financial information for the accused products. Id. ¶¶ 11, 19. Mr. XXXXX and XXXXX reside XXXXX in California. Id. is the Consumer Product Marketing Lead for
WhatsApp, and likely has relevant knowledge regarding marketing information for the accused WhatsApp product. Id. ¶ 12. Ms. I resides I in California. Id.
Defendants also identify employees who likely have relevant knowledge and reside in the NDCA or in Washington state. These identified individuals can drive or take a short flight to the courthouses in the NDCA, testify for several hours, and return home within the same day. is a software engineering manager on team, which is based in XXXXX, and likely has relevant knowledge regarding the design and development of relevant instrumentalities of the accused Messenger application. Id. ¶ 14. Mr. XXXXX resides in Washington state. Id. XXXXXis a software engineering manager on XXXXX team, which is based in XXXXX, and likely has relevant knowledge regarding the design and development of relevant instrumentalities of the accused Messenger application. Id. ¶ 15. Mr. resides in Washington state and XXXXX Id. is a software engineer on team, and likely has relevant knowledge regarding the design and development of relevant instrumentalities of the accused Messenger application. Id. ¶ 16. Mr. resides . Id. is an engineering manager on team, which is based in XXXXX and likely has relevant knowledge regarding the design and development of relevant instrumentalities of the accused Messenger application. Id. ¶ 17. Mr. I resides in northern California, and I . Id. is an engineering manager on XXXXXteam, which is XXXXX based in and supports relevant functionality for the accused products. Id. ¶ 18. Mr. likely has relevant knowledge regarding the design and development of relevant instrumentalities in the accused products. Id. Mr. XXXXX resides in northern California, and XXXXX. Id. is the XXXXX Director of Consumer Brand and Product Marketing for
Messenger, and likely has relevant knowledge regarding marketing information for the accused Messenger product. Id. ¶ 20. Ms. XXXXX and reside XXXXX in California, and Id.
ii. VoIP-Pal's party witnesses
VoIP-Pal identifies one witness that will find the WDTX a more convenient forum. VoIP- Pal's CFO Kevin Williams works from VoIP-Pal's office in Waco. Dkt. No. 40-10 at 7, 10. Mr.
Williams will be able to drive to the courthouse in Waco, testify for several hours, then return home the same day.
iii. Conclusion
Mr. Wong has convinced the Court that he carefully identified the Defendants' relevant witnesses. Defendants' witnesses who find the NDCA far outnumber the witnesses who will find the WDTX more convenient. Thus, this factor weighs in favor of transfer.
d. All other practical problems that would make trial easy, expeditious, and inexpensive neither favors nor weighs against transfer.
When considering the private interest factors, courts must consider “all other practical problems that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 315. “Particularly, the existence of duplicative suits involving the same or similar issues may create practical difficulties that will weigh heavily in favor or against transfer.” PersonalWeb Techs., LLC v. NEC Corp. of Am., Inc., No. 6:11-cv-655, 2013 WL 9600333, at *5 (E.D. Tex. Mar. 21, 2013).
Five co-pending cases in the WDTX involve the same plaintiff and overlapping patents. VoIP-Pal.com, Inc. v. Google LLC, No. 6:21-CV-667-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. Amazon.com, Inc., No. 6:21-cv-668-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. Verizon Comms., Inc., No. 6:21-cv-672-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. T-Mobile US, Inc., No. 6:21-cv-674-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. Samsung Elecs. Co., Ltd, No. 6:21-cv-1246-ADA (W.D. Tex.).
Defendants argue that the case should be transferred to the NDCA because VoIP-Pal previously litigated patents covering related technologies there. Dkt. No. 32 at 13-14. These cases were presided over by Judge Lucy Koh, who has since left the NDCA to take the bench on the Ninth Circuit Court of Appeals. Dkt. No. 40 at 19. However, Judge Virginia DeMarchi in the NDCA was assigned to several previous cases involving VoIP-Pal's patent portfolio. Dkt. No. 47 ¶ 5. The accused products in this case are the same as the accused products in related cases in the NDCA. Dkt. No. 32 at 4 n.3. Defendants rely on Judge Koh's finding in AT&T Corp. v. VoIP-Pal.Com, Inc. to support their argument that “[t]he '234 patent and the '721 patent are related to the same technology as the patents involved in the 2016 cases, the 2018 cases, the 2020 Texas cases, and the instant case” in the NDCA. No. 20-CV-02995-LHK, 2021 WL 3773611, at *4 (N.D. Cal. Aug. 25, 2021). Judge Koh also issued other decisions that suggest the cases are not related. Order Denying Motion to Relate, Apple v. VoIP-Pal.com, Inc., No. 20-CV-02460-LHK (N.D. Cal. Aug. 25, 2021) (“The Court DENIES Apple's motion to relate the instant case”); Order Denying Motion to Relate, AT&T Corp. v. VoIP-Pal.com, Inc., No. 20-CV-2995-LHK (N.D. Cal. Aug. 25, 2021) (“The Court DENIES AT&T's motion to relate the instant case”). This Court previously found that the cases in the NDCA did not relate closely enough to warrant a stay of the cases pending in the WDTX. VoIP-Pal.com, Inc. v. Apple, Inc., No. 6:21-cv-670-ADA (W.D. Tex. Sept. 3, 2021), Dkt No. 20 at 3. But for this transfer factor, the Court only looks to whether the cases are closely related enough such that the NDCA might gain some judicial efficiency that makes trial more practical and expeditious. Due to the accused products in this case being the same as the accused products in related cases in the NDCA, the history in the NDCA, and Judge DeMarchi's continued involvement in the NDCA cases, the Court concludes that the NDCA will gain some efficiency if this case were transferred.
Any practical considerations gained from the NDCA's familiarity with the previous cases are balanced out by the same practical considerations gained from the presence of the co-pending cases in the WDTX. Therefore, this factor ultimately neither favors nor weighs against transfer.
C. The public interest factors are neutral.
The Court finds that one public interest factor favors transfer, and one factor weighs against transfer. The remaining public interest factors are neutral. Overall, the public interest factors are neutral.
a. The court congestion factor weighs against transfer.
Defendants argue that the “court congestion metrics” for the NDCA and the WDTX are fairly similar: 22.0 months for the NDCA versus 19.1 months for the WDTX. Dkt. 32 at 14; Dkt. No 33-46. Defendants use statistics weighed by outdated information from 2020, before the NDCA felt the full impact of halting trials due to COVID-19, so Defendants' statistics do not accurately represent current times to trial. Defendants speculate that this Court's larger patent caseload will delay this Court's ability to hold trials. Despite this Court's larger patent caseload, this Court consistently reached trials faster than the NDCA. See, e.g., MV3 Partners v. Roku, 6-18-CV-00308 (W.D. Tex., filed Oct. 16, 2018) (23.7 months from case filing to trial); Cloudof Change, LLC, No. 6-19-CV-00513 (W.D. Tex., filed August 30, 2019) (20.3 months from case filing to trial); VLSI Tech. LLC v. Intel Corp., No. 6-21-CV-00057 (W.D. Tex., filed Apr. 11, 2019) (22.4 months from case filing to trial); Freshub, Inc. et al v. Amazon.Com Inc., No. 6-21-CV-00511 (W.D. Tex., filed Jun. 24, 2019) (23.7 months from case filing to trial); ESW Holdings, Inc. v. Roku, Inc., No. 6-19-CV-00044 (W.D. Tex., filed Feb. 8, 2019) (25.9 months from case filing to trial); Profectus v. Google, 6-20-CV-00101 (W.D. Tex., filed Feb. 10, 2020) (19.6 months from case filing to trial); Jiaxing Super Lighting v. CH Lighting Tech., 6-20-cv-00018 (W.D. Tex., filed Jan. 10, 2020) (21.7 months from case filing to trial); VideoShare v. Google LLC, 6-19-CV-663 (W.D. Tex., filed Nov. 15, 2019) (23.8 months from case filing to trial); NCS Multistage v. Nine Energy, No. 6-20-cv-277 (W.D. Tex., filed Mar. 24, 2020) (21.8 months from case filing to trial); EcoFactor, Inc. v. Google
LLC, No. 6-20-cv-00075 (W.D. Tex., filed Jan. 31, 2020) (24 months from case filing to trial); Densys Ltd. v. 3Shape Trio A/S, 6-19-CV-00680 (W.D. Tex., filed Nov. 26, 2019) (28.3 months from case filing to trial); Appliance Computing III, Inc. v. Redfin Corp., No. 6-20-cv-00376-ADA (W.D. Tex., filed May 11, 2020) (24 months from case filing to trial).
Defendants additionally claim that a non-practicing entity like VoIP-Pal has no need for a speedy resolution of this case. This is contrary to public policy. The Federal Circuit has long held that “[r]ecognition must be given to the strong public policy favoring expeditious resolution of litigation.” Kahn v. GMC, 889 F.2d 1078, 1080 (Fed. Cir. 1989). Congress itself has acknowledged the importance of the “quick” and inexpensive resolution of patent disputes, going so far as to erect a sprawling administrative regime-that does not differentiate between worked and unworked patents-for that purpose. See, e.g., Ethicon Endo-Surgery, Inc. v. Covidien LP, 826 F.3d 1366, 1367 (Fed. Cir. 2016). “Consistent with such expressions of public policy, the public has an interest in the rapid resolution of patent disputes (without reference to whether the patent is being worked).” Billjco, LLC v. Apple Inc., No. 6:21-CV-00528-ADA, 2022 WL 607890, at *8 n.2 (W.D. Tex. Mar. 1, 2022).
Finally, Defendants contend that the NDCA has a “history of expeditiously resolving VoIP-Pal's patent cases,” suggesting greater judicial efficiency. Dkt. No. 32 at 14. However, none of the prior cases went to trial. Dkt. No. 40 at 14. Thus, the Court finds this factor weighs against transfer.
b. The local interest in having disputes decided in the home forum favors transfer.
Under this factor, the Court must evaluate whether there is a local interest in deciding local issues at home. Volkswagen II, 545 F.3d at 317. “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). Accordingly, “the sale of an accused product offered nationwide does not give rise to a substantial interest in any single venue.” In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009). “This factor most notably regards not merely the parties' significant connections to each forum writ large, but rather the ‘significant connections between a particular venue and the events that gave rise to a suit.'” In re Apple, 979 F.3d at 1344 (quoting In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010)) (emphasis in original).
Courts should not heavily weigh a party's general contacts with a forum that are untethered from the lawsuit, such as a general presence in the district. In re Apple, 979 F.3d at 1344 . Moreover, “little or no weight should be accorded to a party's ‘recent and ephemeral' presence in the transferor forum, such as by establishing an office in order to claim a presence in the district for purposes of litigation.” In re Juniper Networks, Inc., 14 F.4th 1313, 1320 (Fed. Cir. 2021) (quoting In re Microsoft Corp., 630 F.3d 1361, 1365 (Fed. Cir. 2011)). Rather, the Court looks to the events that give rise to this lawsuit. Juniper Networks, 14 F.4th at 1320. The “research[], design[], and develop[ment]” of accused technology within the Northern District of California are “significant factors that give the Northern District of California a legitimate interest in adjudicating the cases ‘at home.'” In re Samsung Elecs. Co., Ltd., 2 F.4th 1371 (Fed. Cir. 2021), cert. denied sub nom. Ikorongo Tex. LLC v. Samsung Elecs. Co., Ltd., 142 S.Ct. 1445 (2022).
Defendants' presence is substantially located in the NDCA, with being located there. Wong Dec. ¶ 2. This is much stronger than the parties' combined presence in the WDTX. VoIP-Pal claims that Meta has a significant presence in Austin because of their upcoming deals and numerous posts for job openings in Austin. Dkt. No. 40 at 14. However, Mr. Wong has persuaded the Court that the research, design, and development of the accused technology mostly occurred in the Northern District of California, and partially in Washington state. Wong Dec. ¶¶ 8-13, 17, 19-20. This establishes a strong interest for resolving this dispute in the NDCA. Therefore, the Court finds that this factor weighs in favor of transfer.
c. The familiarity with governing law factor is neutral.
Both parties dispute the effect of XXXXX in this factor. However, XXXXX does not affect this factor because XXXXX Other than this dispute, the parties agree this factor is neutral. Accordingly, the Court finds it neutral.
d. The conflict of laws factor is neutral.
The parties agree this factor is neutral. Accordingly, the Court finds it neutral.
IV. XXXXX
Because the Court decided to transfer this case under the traditional transfer analysis, the Court does not reach the issue of whether the parties' XXXXX controls the forum for this case.
V. CONCLUSION
This is a case where the majority of the party witnesses, third-party witnesses, and evidence are in or near the NDCA. Three private interest factors weigh in favor of transfer. The faster time to trial here in the WDTX cancels out the local interest by the NDCA. The remaining transfer factors are neutral. Thus, Defendants have shown that the NDCA is clearly the more convenient forum. Defendants' Motion to Transfer is GRANTED. It is hereby ORDERED that this case shall be transferred to the Northern District of California.