Case 5:21-cv-03868-VKD Document 88 Filed 05/21/21 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`6:20-CV-00810-ADA
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`10TALES, INC.,
`Plaintiff,
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`v.
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`TIKTOK INC.,
`Defendant.
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`ORDER GRANTING DEFENDANT TIKTOK’S MOTION TO
`TRANSFER VENUE UNDER 28 U.S.C. § 1404
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`Before the Court is the defendant’s Motion to Transfer to the Northern District of
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`California (“NDCA”) pursuant to 28 U.S.C. § 1404(a). After considering all related pleadings and
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`the relevant law, the Court is of the opinion that this motion should be GRANTED.
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`I. Factual Background
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`Plaintiff 10Tales, Inc. (“10Tales”) filed this lawsuit against TikTok Inc. on September 2,
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`2020 alleging infringement of U.S. Patent No. 8,856,030. ECF No. 1. TikTok Inc. filed a Motion
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`to Transfer venue to the NDCA under 28 U.S.C. § 1404(a) on November 30, 2020. ECF No. 24.
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`On December 10, 2020, 10Tales amended its complaint against TikTok Inc. to include TikTok
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`Pte. Ltd., ByteDance Ltd., and ByteDance Inc. (collectively, “TikTok”) in this lawsuit. ECF No.
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`28. The newly added defendants joined the Motion to Transfer on January 28, 2021. ECF No. 46.
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`10Tales responded in opposition to the Motion to Transfer on April 20, 2021, and TikTok replied
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`in support of transfer on April 28, 2021. ECF No. 71; ECF No. 83. On May 6, 2021, the Court
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`heard arguments from both parties regarding TikTok’s Motion to Transfer. ECF No. 77.
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`10Tales, a video-technology developer, is incorporated in the state of Delaware with its
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`principal place of business in Middleport, Pennsylvania. ECF No. 28. ByteDance Ltd. is a Cayman
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`Islands corporation and is the parent company to the other three defendants in this case. ECF No.
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`Case 5:21-cv-03868-VKD Document 88 Filed 05/21/21 Page 2 of 11
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`28; ECF No. 50. Tik Tok Pte. Ltd. is a Singapore corporation, while TikTok Inc. and ByteDance
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`Inc. are California corporations with principal places of business there as well. Id.
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`II. Standard of Review
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`Title 28 U.S.C. § 1404(a) provides that, for the convenience of parties, witnesses and in
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`the interests of justice, a district court may transfer any civil action to any other district or division
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`where it might have been brought or to any district or division to which all parties have consented.
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`“Section 1404(a) is intended to place discretion in the district court to adjudicate motions for
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`transfer according to an ‘individualized, case-by-case consideration of convenience and fairness.’”
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`Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting VanDusen v. Barrack, 376 U.S.
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`612, 622 (1964)).
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`In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of
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`the regional circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). “The
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`preliminary question under § 1404(a) is whether a civil action ‘might have been brought’ in the
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`destination venue.” In re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008 (hereinafter
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`“Volkswagen II”). If the destination venue would have been proper, then “[t]he determination of
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`‘convenience’ turns on a number of public and private interest factors, none of which can be said
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`to be of dispositive weight.” Action Indus., Inc. v. US. Fid & Guar. Co., 358 F.3d 337, 340 (5th
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`Cir. 2004). The private factors include: “(1) the relative ease of access to sources of proof; (2) the
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`availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance
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`for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious
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`and inexpensive.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (hereinafter
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`“Volkswagen I”) (citing to Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)). The public
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`factors include: “(1) the administrative difficulties flowing from court congestion; (2) the local
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`interest in having localized interests decided at home; (3) the familiarity of the forum with the law
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`that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws of the
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`application of foreign law.” Id.
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`The burden to prove that a case should be transferred for convenience falls squarely on the
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`moving party. In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010). This burden requires
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`the movant to show not that the alternative venue is more convenient, but that it is clearly more
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`convenient. Volkswagen II, 545 F.3d at 314, n.10. Although the plaintiff’s choice of forum is not
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`a separate factor entitled to special weight, respect for the plaintiff’s choice of forum is
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`encompassed in the movant’s elevated burden to “clearly demonstrate” that the proposed
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`transferee forum is “clearly more convenient” than the forum in which the case was filed. In re
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`Vistaprint Ltd., 628 F.3d at 1314-315; Volkswagen II, 545 F.3d at 315 (“when the transferee venue
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`is not clearly more convenient than the venue chosen by the plaintiff, the plaintiff’s choice should
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`be respected.”). Courts may “consider undisputed facts outside the pleadings, but must draw all
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`reasonable inferences and resolve all factual conflicts in favor of the non-moving party.”
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`Weatherford Tech. Holdings, LLC v. Tesco Corp., No. 2:17-CV-000456-JRG, 2018 WL 4620636,
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`at *2 (E.D. Tex. May 16, 2019).
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`III. Discussion
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`The threshold determination in this transfer analysis is whether this case could have been
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`brought in the destination venue—the Northern District of California. Neither party contests that
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`venue is proper in the NDCA and this case could have originally could have been brought there.
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`Thus, the Court proceeds with its analysis of the private and public interest factors.
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`A. The Private Interest Factors
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`1. The Relative Ease of Access to Sources of Proof
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`In considering the relative ease of access to sources of proof, a court looks to where
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`documentary evidence, such as documents and physical evidence, is stored. Volkswagen II, 545
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`F.3d at 316. “In patent infringement cases, the bulk of the relevant evidence usually comes from
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`the accused infringer. Consequently, the place where the defendant’s documents are kept weighs
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`in favor of transfer to that location.” In re Apple Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020) (citing
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`In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)). In this case, such location is the
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`Northern District of California. If TikTok were to possess any physical documentation valuable to
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`the adjudication of this dispute, 10Tales’ amended complaint implies that such information will
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`likely come from the NDCA or somewhere else in California. The complaint focuses on the
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`TikTok application, its databases, and its “recommendation system.” While TikTok may generate
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`or store physical documentation at locations in other districts, the physical documentation relating
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`to the substantive focus of the complaint is likely to come from TikTok’s operations in California.
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`The mere presence of TikTok operations or any note-taking employees in this District alone does
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`not warrant any consideration here as this fact is exclusive to a different private interest factor.
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`EcoFactor, Inc. v. Google LLC, No. 6:20-CV-00075-ADA, 2021 WL 1535413, at *1 (E.D. Tex.
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`April 16, 2021) (“witnesses are not sources of proof to be analyzed under this factor”).
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`Thus, to avoid burdening the defendant with unnecessary transportation costs of physical
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`evidence and documentation, the prudent conclusion is that this factor weighs in favor of transfer.
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`10Tales also asserts that this factor carries little weight as much of the relevant documentation can
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`be accessed through an online server. While the relevant evidence may be equally accessible in
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`both Districts electronically, considering such realities would be thwarting this Court’s duty to
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`adhere to 5th Circuit precedent.1 Thwarting this duty would be particularly egregious given that
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`10Tales failed to identify a single source of physical proof located in this District. Consequently,
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`this Court finds that the relative ease of access to sources of proof favors transfer.
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`2. Availability of a Compulsory Process Necessary to Secure the Attendance of Witnesses
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`In this factor, the Court considers the availability of compulsory process to secure the
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`attendance of witnesses, particularly non-party witnesses whose attendance my need to be secured
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`by a court order. Fintiv, Inc. v. Apple, Inc., No. 6:18-CV-00372-ADA, 2019 WL 4743678, at *5
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`(W.D. Tex. Sept. 10, 2019) (citing Volkswagen II, 545 F.3d at 316). Determining convenience
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`requires considering “the availability of compulsory process to secure the attendance of witnesses,
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`particularly non-party witnesses whose attendance may need to be secured by a court order.” Id.
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`This factor “weigh[s] heavily in favor of transfer when more third-party witnesses reside within
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`the transferee venue than reside in the transferor venue.” In re Apple, Inc., 581 F.App’x. 886, 889
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`(Fed. Cir. 2014). Under the Federal Rules of Civil Procedure, a court may subpoena a witness to
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`attend trial only (a) within 100 miles of where the person resides, is employed, or regularly
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`transacts business in person,”; or (b) “within the state where the person resides, is employed, or
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`regularly transacts business in person, if the person … is commanded to attend a trial and would
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`not incur substantial expense.” (Fed. R. Civ. P. 45(c)(1)(A), (B)(ii); Gemalto S.A. v. CPI Card
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`Grp. Inc., No. 15-CA-0910, 2015 WL 10818740, at *4 (W.D. Tex. Dec. 16, 2015). Moreover, the
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`ability to compel live trial testimony is crucial for evaluating a witnesses’ testimony. Aguilar-
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`Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992). For the reasons discussed below, the Court finds
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`that this factor favors transfer.
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`1 “In modern patent litigation, 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.” Fintiv, Inc. v. Apple,
`Inc., No. 6:18-CV-00372-ADA, 2019 WL 4743678, at *4 (W.D. Tex. Sept. 10, 2019).
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`“This factor will weigh heavily in favor of transfer when more third-party witnesses reside
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`within the transferee venue than reside in the transferor venue.” In re Apple, Inc., 581 F.App’x
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`886, 889 (Fed. Cir. 2014). The allegations set forth in 10Tales’ complaint implicates third-party
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`entities such as Google, Apple, and various social media companies all of which are well-known
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`to have strongest presence in California. ECF No. 28. 10Tales specifically alleges that TikTok
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`collects user information from Google, and this Court has previously recognized Google’s strong
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`presence in the NDCA. See Parus Holdings Inc. v. LG Elecs. Inc., No. 6:19-CV-00432-ADA, 2020
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`WL 4905809 (W.D. Tex. Aug. 20, 2020). 10Tales also argues that its infringement allegations
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`relates to distribution technology of the TikTok application and that because of this, this court can
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`exercise subpoena power over relevant witnesses from TikTok’s Austin offices. Even if 10Tales’
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`infringement allegations were related to the application’s distribution technology, the conclusion
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`under this factor would not change. The TikTok application runs on Apple iOS and Google
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`Android operating systems and users download through each company’s respective app stores. As
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`a result, any allegations regarding distribution technology in this case could potentially require
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`cooperation from Google, Apple and other companies listed that are similarly based in California.
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`As the “master of his complaint,” 10Tales should not be able to back away from his from
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`his factual allegations for mere purposes of venue. Even if 10Tales were to engage in such
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`jurisdictional gamesmanship, this effort would be of little use as neither party has successfully
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`identified a single non-party witness in this District for which this Court’s subpoena power would
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`be necessary. Consequently, this factor initially weighs heavily in favor of transfer. The degree to
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`which this factor impacts the overall transfer analysis, however, is tempered by the fact that TikTok
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`has not meaningfully shown that any prospective witnesses residing in California are unwilling to
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`testify. Turner v. Cincinnati Ins. Co., No. 6:19-CV-642-ADA-JCM, 2020 WL 210809, at *3 (W.D.
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`Tex. Jan. 14, 2020) (“This private interest factor carries far less weight when the movant has not
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`alleged or shown that any witnesses are unwilling to testify.”). But for the disproportionate
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`difference in access to prospectively relevant witnesses between this District and the NDCA, this
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`consideration may alter the conclusion more significantly. 10Tales’ failure to identify even a single
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`relevant witness that this Court could exercise its subpoena power over, however, ultimately
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`compels the conclusion that this factor favors transfer.
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`3. Inconvenience to Willing Witnesses
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`The convenience of witnesses is the single most important factor in the transfer analysis.
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`SynKloud Techs., LLC v. Dropbox, Inc., No. 6:19-CV-00525-ADA, 2020 WL 2494574, at *4
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`(W.D. Tex. May 14, 2020); In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). “When
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`the distance between an existing venue for trial of a matter and a proposed venue under § 1404(a)
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`is more than 100 miles, the factor or inconvenience to witnesses increases in direct relationship to
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`the additional distance to be travelled.” Volkswagen II, 545 F.3d at 317 (quoting Volkswagen I,
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`371 F.3d at 203). Under this factor, courts should consider all potential material and relevant
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`witnesses.” Alacritech Inc. v. CenturyLink, Inc., No. 2:16-CV-00693, 2017 WL 4155236, at *5
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`(E.D. Tex. Sept. 19, 2017). However, “the convenience of party witnesses is given little weight.”
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`Moskowitz Family LLC v. Globus Med., Inc., No. 6:19-CV-00672-ADA, 2020 WL 4577710, at *4
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`(W.D. Tex. Jul. 2, 2020). When witnesses will be required to travel significant distances regardless
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`of whether the case is transferred, “the ‘100-mile rule’ should not be rigidly applied.” In re
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`Genentech, Inc., 566 F.3d 1338, 1344 (Fed. Cir. 2009); See In re TracFone Wireless, Inc., No.
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`2021-136, 2021 WL 1546036 (Fed. Cir. Apr. 20, 2021). For the reasons discussed below, this
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`Court finds that this factor favors transfer.
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`Most witnesses relevant to this case have been identified by TikTok, and these witnesses
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`reside in either the NDCA or somewhere else in California. Rather than time-consuming and costly
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`travel being inevitable regardless of venue, most witnesses here are faced with either extreme—
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`the NDCA as arguably the most convenient federal forum for such witnesses, or this District
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`located over 1,300 miles further. Additionally, little consideration should be given to the few
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`witnesses 10Tales identified from TikTok’s Austin office and the east coast. First, the witnesses
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`from TikTok’s Austin location have not been established as necessary to this case, as the parties
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`still dispute which witnesses can best speak on TikTok’s operational costs, revenues and profits.
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`Second, the east coast witnesses will be inconvenienced by extensive travel regardless of the forum
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`and thus “the ‘100-mile’ rule should not be rigidly applied.” In re Genentech, Inc., 566 F.3d at
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`1344. Of the east coast witnesses, the most relevant is the ‘030 patent inventor, who is located in
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`Pennsylvania. Not only will this witness be forced to travel long distances regardless of venue, but
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`this witness is also a party to this suit and thus his convenience should be given “little weight.”
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`Moskowitz Family LLC v. Globus Med., Inc., No. 6:19-CV-00672-ADA, 2020 WL 4577710, at *4
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`(W.D. Tex. Jul. 2, 2020). Even if the witnesses identified by 10Tales were relevant, the conclusion
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`under this factor would nevertheless remain unchanged as the NDCA is still more convenient for
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`a greater number of witnesses identified in this case. Thus, this Court finds that this factor weighs
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`in favor of transfer.
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`4. All Other Practical Problems
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`To conclude analysis of the private interest factors, the Court should consider “all other
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`practical problems that make trial of a case easy, expeditious, and inexpensive.” Volkswagen II,
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`545 F.3d at 314. This factor carries greater weight in cases for which “there is co-pending litigation
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`before the trial court involving the same patent and underlying technology” and cases where the
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`trial court is familiar with the underlying patent from prior litigation. In re Vistaprint Ltd., 628
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`F.3d 1342, 1346 (Fed. Cir. 2010). No such scenario exists in this case; and even if it did, this
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`factor’s impact would marginal because considerations of judicial economy and the existence of
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`co-pending litigation should not be dispositive in cases like this one. In re Google Inc., No. 2017-
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`107, 2017 WL 977038, at *2 (Fed. Cir. Feb. 23, 2017) (holding that this factor cannot “dominate
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`the court’s transfer analysis” when the defendant has a strong presence in the transferee district);
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`SynKloud Techs., LLC v. Dropbox, Inc., No. 6:19-CV-00525-ADA, 2020 WL 2494574, at *5
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`(W.D. Tex. May 14, 2020). Thus, the Court finds that this factor is neutral.
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`B. The Public Interest Factors
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`1. Court Congestion
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`This factor concerns “whether there is an appreciable difference in docket congestion
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`between the two forums.” Parsons v. Chesapeake & Ohio Ry. Co., 375 U.S. 71, 73 (1963);
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`Parkervision, Inc. v. Intel Corp., No. 6:20-CV-00108, 2021 WL 401989, at *6 (W.D. Tex. Jan. 26,
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`2021). The relevant inquiry under this factor is actually the “[t]he speed with which a case can
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`come to trial and be resolved[.]” In re Genentech, Inc., 566 F.3d at 1347 (Fed. Cir. 2009).
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`Additionally, court congestion is considered “the most speculative” factor, and when “relevant
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`factors weigh in favor of transfer and others are neutral, then the speed of the transferee district
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`court should not alone outweigh all those other factors.” Id. The Court finds this factor to be
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`neutral.
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`Both parties identified various courts weighing in on the comparative average time to trial
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`between this District and NDCA, and these courts have reached different conclusions. Thus far,
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`neither discovery nor a Markman hearing have occurred in this case. ECF No. 28; ECF No. 41.
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`Consequently, transfer at this stage of litigation would not likely create any meaningful delays.
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`The Court finds that this factor favors is neutral.
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`2. Local Interest
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`Under this factor, the Court must consider whether there is a local interest in deciding local
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`issues at home. Volkswagen II, 545 F.3d at 317. Additionally, “this factor most notably regards
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`not merely the parties’ significant connections to each forum writ large, but rather the ‘significant
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`connections between a particular venue and the events that gave rose to a suit.’” In re Apple Inc.,
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`979 F.3d at 1345.
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`This Court finds that this factor favors transfer. First, neither party have any “significant
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`connections” to this forum. 10Tales has no presence in this District nor any connections to it.
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`TikTok, conversely, has a greater presence in this District as compared to 10Tales; but this sort of
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`“general presence” should not be given much consideration. Id. This is especially true given that
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`the TikTok’s strongest presence is in California.
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`More importantly, “the events that gave rise to a suit” in this case have “significant
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`connections” with NDCA but not this District. First, the presence of TikTok users within this
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`District does not constitute a “significant connection” under this analysis. While the presence of
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`infringing users may be an “event” giving rise to this lawsuit, it nevertheless creates no local
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`interest because such a connection equally exists in virtually all other districts, including the
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`NDCA. In re Hoffman-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009) (“an accused product
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`offered nationwide does not give rise to a substantial interest in any single venue”). Unlike this
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`District, however, such “significant connections” exists between the NDCA and the events giving
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`rise to this suit. One event particularly relevant to this analysis is the location of where “the accused
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`products were designed, developed, and tested.” In re Apple Inc., 979 F.3d at 1345. Here, these
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`events occurred in the NDCA. As a result, the Court finds that this factor weighs in favor of
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`transfer.
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`3. Forum Familiarity with the Law
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`Both parties agree that this factor is neutral. The Court also agrees.
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`4. Avoidance of Unnecessary Conflicts of Laws
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`Both parties agree that this factor is neutral. The Court also agrees.
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`IV. Conclusion
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`Having applied the Volkswagen factors to the facts of this case, the Court finds that the
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`Northern District of California is a “clearly more convenient” forum than this District. Half of
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`the factors under this analysis favor transfer, while the remaining factors are neutral. No factor
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`favors keeping this case in this District. Therefore, the Court GRANTS the TikTok’s Motion to
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`Transfer under 28 U.S.C. § 1404.
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`SIGNED this 21st day of May, 2021.
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`_____________________________________
`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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