Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 1 of 22 PageID #: 902
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`JAWBONE INNOVATIONS, LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`AMAZON.COM, INC. and
`AMAZON.COM SERVICES, INC.,
`
`
`Defendants.
`
`
`
`
` Civil Action No. 2:21-cv-00435-JRG
`
` JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`DEFENDANTS’ MOTION TO TRANSFER VENUE TO THE
`NORTHERN DISTRICT OF CALIFORNIA PURSUANT TO 28 U.S.C. § 1404(a)
`
`1
`
`APPLE ET AL. 1020
`
`

`

`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 2 of 22 PageID #: 903
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`
`
`TABLE OF CONTENTS
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`INTRODUCTION ------------------------------------------------------------------------------------------- 1
`
`FACTUAL BACKGROUND ------------------------------------------------------------------------------ 1
`
`A.
`
`B.
`
`Amazon -------------------------------------------------------------------------------------- 2
`
`AliphCom ----------------------------------------------------------------------------------- 3
`
`1.
`
`2.
`
`3.
`
`Named Inventors ------------------------------------------------------------------ 3
`
`Patent Prosecutors ----------------------------------------------------------------- 4
`
`Management ----------------------------------------------------------------------- 4
`
`C.
`
`Jawbone Innovations LLC ---------------------------------------------------------------- 5
`
`ARGUMENT ------------------------------------------------------------------------------------------------- 5
`
`I.
`
`II.
`
`Legal Standards -------------------------------------------------------------------------------------- 5
`
`This Action Could Have Been Brought in the Northern District of California ------------ 6
`
`III.
`
`The Private Interest Factors Favor Transfer ----------------------------------------------------- 7
`
`A.
`
`B.
`
`C.
`
`Sources of Proof are Heavily Concentrated in the Northern District of
`California ------------------------------------------------------------------------------------ 7
`
`Many Identified Third-Party Witnesses With Relevant Knowledge Live
`in the Northern District -------------------------------------------------------------------- 8
`
`The Northern District of California Is More Convenient for Willing
`Witnesses ----------------------------------------------------------------------------------- 11
`
`D.
`
`Judicial Economy Favors Transfer ----------------------------------------------------- 12
`
`IV.
`
`The Public Interest Favors Transfer ------------------------------------------------------------- 13
`
`A.
`
`B.
`
`The Northern District of California Has a Local Interest in Deciding
`this Case ------------------------------------------------------------------------------------ 13
`
`This Court’s Shorter Time to Trial Cannot Outweigh the Many Factors
`That Favor Transfer ----------------------------------------------------------------------- 15
`
`C.
`
`The Remaining Public Factors Are Neutral ------------------------------------------- 15
`
`CONCLUSION ---------------------------------------------------------------------------------------------- 15
`
`2
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`

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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 3 of 22 PageID #: 904
`
`
`
`Cases:
`
`TABLE OF AUTHORITIES
`
`Page(s):
`
`Affinity Labs of Tex., LLC v. Blackberry Ltd.,
`No. 6:13-CV-362, 2014 WL 10748106 (W.D. Tex. June 11, 2014) ----------------------------- 12
`
`In re Apple Inc.,
`No. 2021-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) ---------------------------------- 8, 13
`
`In re Apple, Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) -------------------------------------------------------------------- 12
`
`ATEN Int’l v. Emine Tech. Co., Ltd.,
`261 F.R.D. 112 (E.D. Tex. 2009) ---------------------------------------------------------------------- 14
`
`In re Atlassian Corp. PLC,
`No. 2021-177, 2021 WL 5292268 (Fed. Cir. Nov. 15, 2021) -------------------------------------- 6
`
`Brackett v. Hilton Hotels Corp.,
`619 F. Supp. 2d 810 (N.D. Cal. 2008) ----------------------------------------------------------------- 8
`
`Cont’l Grain Co. v. The FBL-585,
`364 U.S. 19 (1960) --------------------------------------------------------------------------------- 12, 13
`
`EON Corp. IP Holdings, LLC v. Sensus, USA, Inc.,
`No. 2:10-CV-448, 2012 WL 122562 (E.D. Tex. Jan. 9, 2012)------------------------------- 14, 15
`
`Fujitsu Ltd. v. Tellabs, Inc.,
`639 F. Supp. 2d 761 (E.D. Tex. 2009) ---------------------------------------------------------------- 14
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) --------------------------------------------------------------------- 7, 11
`
`In re Google Inc.,
`No. 2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ---------------------------------- 13, 15
`
`In re Google LLC,
`949 F.3d 1338 (Fed. Cir. 2020) ------------------------------------------------------------------------ 12
`
`In re Google LLC,
`No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sept. 27, 2021) ---------------------------- 11, 12, 13
`
`In re Hoffman-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) ------------------------------------------------------------------------ 14
`
`In re Hulu, LLC,
`No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021)---------------------------------------- 8
`
`
`
`3
`
`

`

`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 4 of 22 PageID #: 905
`
`
`
`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) ------------------------------------------------------------------------- 11
`
`Lifestyle Sols., Inc. v. Abbyson Living LLC,
`No. 2:16-CV-01290-JRG-RSP, 2017 WL 5257006
`(E.D. Tex. Nov. 10, 2017) ------------------------------------------------------------------------------ 12
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009) --------------------------------------------------------------------- 9, 10
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011) ------------------------------------------------------------------------ 15
`
`In re Netflix, Inc.,
`No. 2022-110, 2022 WL 167470 (Fed. Cir. Jan. 19, 2022) ---------------------------------- passim
`
`In re NetScout Sys., Inc.,
`No. 2021-173, 2021 WL 4771756 (Fed. Cir. Oct. 13, 2021) ----------------------------------- 8, 13
`
`Network Prot. Sci., LLC v. Juniper Networks, Inc.,
`No. 2:10-CV-224-JRG, 2012 WL 194382 (E.D. Tex. Jan 23, 2012) ---------------------------- 14
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009) ------------------------------------------------------------------------- 6
`
`On Semiconductor Corp. v. Hynix Semiconductor, Inc.,
`No. 6:09-CV-390, 2010 WL 3855520 (E.D. Tex. Sept. 30, 2010) -------------------------------- 8
`
`Optimum Power Sols. LLC v. Apple, Inc.,
`794 F. Supp. 2d 696 (E.D. Tex. 2011) ------------------------------------------------------------- 8, 14
`
`Purdue Pharma L.P. v. Boehringer Ingelheim GMBH,
`237 F.3d 1359 (Fed. Cir. 2001) ------------------------------------------------------------------------- 9
`
`In re Samsung Elecs. Co., Ltd.,
`2 F.4th 1371 (Fed. Cir. 2021) ----------------------------------------------------------------- 12, 13, 15
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008) ------------------------------------------------------------------- 12, 14
`
`Uniloc USA, Inc. v. Apple Inc.,
`No. 2:17-CV-00258-JRG, 2017 WL 11553227
`(E.D. Tex. Dec. 22, 2017) ------------------------------------------------------------------------------ 15
`
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ------------------------------------------------------------------- 6, 13, 14
`
`-
`
`-
`
`4
`
`

`

`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 5 of 22 PageID #: 906
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`
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ---------------------------------------------------------------------- 11, 14
`
`Statutes and Rules:
`
`28 U.S.C. § 1400 ---------------------------------------------------------------------------------------------- 6
`
`28 U.S.C. § 1404 ---------------------------------------------------------------------------------------------- 5
`
`Federal Rule of Civil Procedure 45 ------------------------------------------------------------------------- 8
`
`
`
`
`
`-
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`-
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`5
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`

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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 6 of 22 PageID #: 907
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`
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`
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`This patent infringement case belongs in the Northern District of California. That is where
`
`INTRODUCTION
`
`the accused Amazon products were developed, where the relevant Amazon engineering lab is lo-
`
`cated, and where the most likely Amazon witnesses—including those most knowledgeable about
`
`the accused audio processing technology—live and work. Several third-party scientists, who de-
`
`veloped the accused products but no longer work for Amazon, reside there too.
`
`The Northern District of California is also where the patents originated. The nine asserted
`
`patents came from a company called AliphCom, which was headquartered in the Northern District
`
`of California until it went bankrupt in 2017. For nearly two decades, AliphCom developed all of
`
`its relevant technology in the Northern District of California, including the asserted patents. It had
`
`scores of employees—including the named inventors of all asserted patents—in its Northern Cal-
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`ifornia offices. And, the attorneys who prosecuted its patents are located in that district. Amazon
`
`has already identified at least fourteen third-party witnesses who reside there.
`
`In contrast, this case has no meaningful connection to the Eastern District of Texas. Plain-
`
`tiff Jawbone Innovations (“JI”) identified no relevant witnesses or documents here. JI was formed
`
`just a few months before it started filing lawsuits, and its sole manager is in Baltimore. Although
`
`JI claims to have an office in this District, it identifies no business operations conducted there. The
`
`address provided in the complaint is for an insignificant space in a building occupied by JI’s liti-
`
`gation counsel. Aside from this tenuous and contrived contact, JI has no ties to this District.
`
`Because AliphCom and the relevant Amazon organization are both deeply rooted in North-
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`ern District of California, while no party has meaningful ties to the Eastern District of Texas, the
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`Court should transfer this case.
`
`FACTUAL BACKGROUND
`
`JI accuses Amazon.com, Inc. and Amazon.com Services, Inc. (collectively, “Amazon”) of
`
`infringing nine patents related to audio signal processing. (Dkt. No. 24 at ¶¶ 48-180.) The accused
`
`6
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`

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`
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`products listed in the complaint are “Echo smart speakers, Echo Show smart displays, Fire TV
`
`Cube, and Echo buds.” (Id. at ¶ 46.) All of the asserted patents and all of the accused products
`
`originated in the Northern District of California.
`
`A.
`
`Amazon
`
`The accused Amazon devices were developed at Lab126, which is part of an Amazon sub-
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`sidiary. (Hilmes Decl. at ¶¶ 1-2.)1 Lab126 is located in Sunnyvale, California, in the Northern
`
`District of California. (Id. at ¶ 2.) Extensive evidence relating to the design, development, and
`
`functionality of the accused devices is located at the Lab126 offices in Sunnyvale. (Id. at ¶ 3.)
`
`The employees most knowledgeable about the accused devices, particularly the technical
`
`operation of the devices, all work in Northern California. (Id.) For example, at least the following
`
`Lab126 employees worked on the audio signal processing for the accused devices in this case:
`
`1. Phil Hilmes – Director, Audio Technology
`
`2. Carlo Murgia – Senior Manager, Algorithms and Software Development
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`3. Amit Chhetri – Principal Research Scientist
`
`4. Ludger Solbach – Principal Research Scientist
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`5. Sam Anderson – Senior Audio Hardware Engineer
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`6. Taro Kimura – Principal Technical Program Manager
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`7. Robert Ayrapetian – Principal Engineer
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`8. Jan Chomyszyn – DSP Engineer
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`9. Andy Milota – Senior Manager, DSP Firmware Development
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`10. Harsha Rao – Senior Applied Scientist
`
`(Id. at ¶ 5.) Also, the following former Amazon employees worked on the audio signal processing
`
`for the accused devices before they left Lab126 for other jobs:
`
`
`1 The declarations of Philip Hilmes, Andrew Bignell, Michael Gore, and Jeremy Anapol are
`submitted herewith. Exhibits 1-33 are attached to the Anapol Declaration.
`
`
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`7
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`

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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 8 of 22 PageID #: 909
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`
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`1. Xiaoxue (Cheryl) Li – Former Senior Research Scientist
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`2. Dan Harris – Former Senior Software Development Engineer
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`3. Kuan-Chieh Yen – Former Senior Applied Scientist
`
`(Id. at ¶ 6.) These former employees remain in the San Francisco Bay Area, in the Northern Dis-
`
`trict of California. (Ex. 26; Ex. 27; Ex. 28.)
`
` Additional Amazon employees with knowledge of the financial and marketing aspects of
`
`the accused devices work at Amazon’s headquarters in Seattle, Washington. (Hilmes Decl. ¶ 4.)
`
`For example, the following Seattle-based employees have such knowledge:
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`1. Kevin Keith – Vice President of Device Marketing
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`2. Rino Caruccio – Vice President of Financial Analysis for Devices
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`(Id.) Similarly, supporting financial and marketing documentation that is not located at Lab126 is
`
`located at Amazon’s Seattle headquarters. (Id.)
`
`No relevant Amazon employee works in this District, nor are any Amazon documents re-
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`lated to the accused technology maintained by Amazon in this District. (Id. at ¶¶ 3-4.)
`
`B.
`
`AliphCom
`
`AliphCom developed the technology described in all nine asserted patents. (Dkt. No. 24
`
`at ¶¶ 27-28.) AliphCom later changed its name to Jawbone. (Id. at ¶ 29.) AliphCom/Jawbone
`
`was based in San Francisco, at the center of the Northern District of California. (Dkt. No. 24-2 at
`
`1 ( “AliphCom, Inc., San Francisco, CA”).)
`
`1.
`
`Named Inventors
`
`All six of the patents’ named inventors worked for AliphCom/Jawbone in the Northern
`
`District of California, and most of them are still located there. None of them is in Texas. Specif-
`
`ically, inventor Nicholas Petit is in Mountain View, California. (Ex. 4.) Zhinian Jing is in Moss
`
`Beach, California. (Ex. 5.) Andrew E. Einaudi is in San Francisco. (Ex. 6.) And Eric F. Breitfeller
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`8
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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 9 of 22 PageID #: 910
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`
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`is in Dublin, California. (Ex. 7.) All of these cities are in the Northern District of California.2
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`The remaining inventors, Gregory C. Burnett and Alexander M. Asseily, are in Minnesota
`
`and England, respectively. (Ex. 8; Ex. 9.) Although neither is currently based in the Northern
`
`District of California, both have deep roots there. Burnett worked at Lawrence Livermore National
`
`Laboratory in Livermore, California and earned his Ph.D. nearby at the University of California,
`
`Davis. (Ex. 8.) Asseily received his bachelor’s and master’s degrees at Stanford University. (Ex.
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`9.) Then, both of them worked at AliphCom/Jawbone in the Northern District of California for
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`more than a decade. (Ex. 8; Ex. 9.) Neither has any apparent ties to the Eastern District of Texas.
`
`2.
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`Patent Prosecutors
`
` All asserted patents were prosecuted by attorneys based in the Northern District of Cali-
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`fornia. Richard L. Gregory and Barbara B. Courtney prosecuted the patents until 2011. (See, e.g.,
`
`Ex. 10 (filings signed by Gregory and Courtney).) AliphCom then replaced them with attorneys
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`from the law firm of Kokka & Baccus, including Scott S. Kokka, Trueman H. Denny III, and
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`Howard J. Yuan. (See, e.g., Ex. 11 (power of attorney); Ex. 12 (filings signed by Kokka, Denny,
`
`and Yuan).) These Kokka & Backus attorneys handled the prosecution of the asserted patents
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`until 2017, when AliphCom went bankrupt. (Ex. 13 at ¶¶ 6-8; Dkt. No. 1 at ¶ 28.) All these patent
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`prosecution witnesses are still located in the Northern District of California. (Exs. 14-18.)
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`3.
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`Management
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`Key leaders of AliphCom, who have significant knowledge of the asserted patents, include
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`the Chief Executive Officer (CEO) Hosain Rahman and the Chief Technology Officer (CTO) Mi-
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`chael Luna. As CEO, Rahman represented AliphCom in several financial transactions involving
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`the asserted patents. (See, e.g., Ex. 19 at 21; Ex. 20 at 12 (agreements signed by Rahman).) As
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`CTO, Luna was “responsible for management of ALIPHCOM’s intellectual property portfolio,”
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`2 See “Jurisdiction Map | United States District Court, Northern District of California,” avail-
`able at https://www.cand.uscourts.gov/about/jurisdiction-map/.
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`9
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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 10 of 22 PageID #: 911
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`
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`according to an affidavit he submitted to the Patent Office. (Ex. 13 at ¶ 4.) Luna is in Daly City,
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`and Rahman is in the San Francisco Bay Area—both in the Northern District. (Ex. 21; Ex. 22.)
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`C.
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`Jawbone Innovations LLC
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`JI was formed in Texas on February 1, 2021—less than four months before it started its
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`litigation campaign in this District. (Ex. 1; Ex. 2 at 9.) The sole manager identified on JI’s Cer-
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`tificate of Formation, York Eggleston, is in Baltimore, Maryland. (Ex. 1.)
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`Before suing Amazon, JI sued Samsung here and then sued Apple and Google in the West-
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`ern District of Texas. (Ex. 2.) The Samsung case involves seven of the nine patents asserted here.
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`(Id. at 3-4.) The Apple and Google cases each involve all patents asserted here. (Id. at 5-6, 7-8.)
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`JI alleges that it maintains a place of business in this District at 104 East Houston Street,
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`Suite 165, Marshall, Texas. (Dkt. No. 1 at ¶ 1; Dkt. No. 24 at ¶ 1.) This address appears to identify
`
`a space in the “Baxter Building.” (Ex. 3.) That building houses the offices of McKool Smith, JI’s
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`local counsel. (Dkt. No. 1 at 56 (signature block).)
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`Publicly available floorplans for the Baxter Building show no Suite 165. (Ex. 3 at 3.) Thus,
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`it is unclear what office space JI occupies, if any. Regardless, JI does not describe any alleged
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`business operations that are conducted from this purported space in its counsel’s office building.
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`Nor does it identify any relevant documents or witnesses allegedly located there.
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`JI does not claim to manufacture or sell any products—let alone any products that practice
`
`the asserted patents. Instead, JI’s complaint refers to products that AliphCom developed in the
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`Northern District of California. (Dkt. No. 24 at ¶¶ 27-28.)
`
`I.
`
`LEGAL STANDARDS
`
`ARGUMENT
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` “For the convenience of parties and witnesses, in the interest of justice, a district court
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`may transfer any civil action to any other district or division where it might have been brought.” 28
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`10
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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 11 of 22 PageID #: 912
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`
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`U.S.C. § 1404(a). Therefore, the threshold inquiry is “whether the judicial district to which trans-
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`fer is sought would have been a district in which the claim could have been filed.” In re
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`Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”).
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`Once this threshold is met, courts analyze both public and private factors relating to the
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`convenience of parties and witnesses, as well as the interests of the judicial districts in hearing the
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`case. In re Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009). The private factors include:
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`(1) relative ease of access to sources of proof;
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`(2) availability of compulsory process to secure the attendance of witnesses;
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`(3) cost of attendance for willing witnesses; and
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`(4) other practical problems that make trial of a case easy, expeditious, and inexpensive.
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`Volkswagen I, 371 F.3d at 203. The public factors include the:
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`(1) administrative difficulties flowing from court congestion;
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`(2) local interest in having localized interests decided at home;
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`(3) familiarity of the forum with the law that will govern the case; and
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`(4) avoidance of unnecessary problems of conflict of laws.
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`Id. Motions to transfer are then “decided by weighing [the] private and public interest factors to
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`compare the relative convenience of the venues.” In re Atlassian Corp. PLC, No. 2021-177, 2021
`
`WL 5292268, at *2 (Fed. Cir. Nov. 15, 2021).
`
`II.
`
`THIS ACTION COULD HAVE BEEN BROUGHT IN THE
`NORTHERN DISTRICT OF CALIFORNIA.
`
`Lab126, which is part of Amazon and designed the accused devices, is in the Northern
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`District of California. (Hilmes Decl. at ¶¶ 1-2.) Additionally, Amazon has many offices there.
`
`(Bignell Decl. at ¶¶ 4-8.) Thus, jurisdiction and venue exist in the transferee forum and the case
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`could have been brought there. See 28 U.S.C. § 1400(b); see also Volkswagen I, 371 F.3d at 203.
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`11
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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 12 of 22 PageID #: 913
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`
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`III. THE PRIVATE INTEREST FACTORS FAVOR TRANSFER.
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`A.
`
`Sources of Proof are Heavily Concentrated in the
`Northern District of California.
`
`“In patent infringement cases, the bulk of the relevant evidence usually comes from the
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`accused infringer.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009) (citation omitted).
`
`Here, Amazon’s evidence is concentrated at Lab126 in Sunnyvale. (Hilmes Decl. at ¶¶ 1-5.) This
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`includes the source code and technical documents for all accused products. (Id. at ¶ 3.)
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`Any relevant Amazon documents that are not located within the Northern District of Cali-
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`fornia are in Seattle. (Id. at ¶ 4.) Of course, these Seattle documents are physically closer to the
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`Northern District of California than they are to Texas. But even for electronic access, the Northern
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`District of California is far more convenient based on the presence of Lab126 in that district. Re-
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`mote access to the relevant Amazon documents located in Seattle is easily accomplished from
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`Lab126 because that facility shares much of the same computer infrastructure as Amazon’s Seattle
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`offices. (Id. at ¶ 4.) Further, personnel at Lab126 are knowledgeable about what relevant materials
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`are stored in Seattle and how to access such materials remotely. (Id.)
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`In contrast to the wealth of evidence in Sunnyvale and Seattle, none of the relevant evi-
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`dence from Amazon is in this District. The Amazon facilities identified in the complaint are
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`merely warehouses and a facility that houses some personal property. (Bignell Decl. at ¶ 8; Gore
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`Decl. at ¶ 2.) Employees at these facilities have no responsibility for the accused devices’ tech-
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`nology, marketing, or finances. (Id.) Nor do any employees at these facilities know how to access
`
`the relevant materials in Sunnyvale or Seattle. (Hilmes Decl. at ¶ 4.) Thus, the Northern District
`
`of California is by far the most convenient place to access the sources of proof in this case.
`
`JI has identified no relevant evidence in this District. The patents that JI asserts were ad-
`
`mittedly developed by AliphCom, based in San Francisco. (Dkt. No. 24 at ¶ 27; Dkt. No. 24-2 at
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`1 (“AliphCom, Inc., San Francisco”).) The people most likely to have relevant evidence about
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`12
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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 13 of 22 PageID #: 914
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`
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`those patents—including the named inventors, key AliphCom executives, and prosecuting attor-
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`neys—are overwhelmingly based in the Northern District of California. (Supra, pp. 3-4.)
`
`Comparing the wealth of evidence from Amazon and third parties in the Northern District
`
`of California with the striking lack of evidence in this District, the “ease of access to sources of
`
`proof” factor favors transfer. In re Netflix, Inc., No. 2022-110, 2022 WL 167470, at *3 (Fed. Cir.
`
`Jan. 19, 2022) (“sources of proof” factor favors transfer where declaration shows that the defend-
`
`ant’s “product and engineering teams are based” in transferee forum and source code and “docu-
`
`mentation about the research, design, and development” of the accused products exists there); In
`
`re NetScout Sys., Inc., No. 2021-173, 2021 WL 4771756, at *4 (Fed. Cir. Oct. 13, 2021); In re
`
`Apple Inc., No. 2021-181, 2021 WL 5291804, at *2 (Fed. Cir. Nov. 15, 2021).
`
`B. Many Identified Third-Party Witnesses With Relevant
`Knowledge Live in the Northern District.
`
`The availability of compulsory process to secure the attendance of third-party witnesses
`
`favors transfer when “more third-party witnesses reside within the transferee venue.” Optimum
`
`Power Sols. LLC v. Apple, Inc., 794 F. Supp. 2d 696, 701 (E.D. Tex. 2011); On Semiconductor
`
`Corp. v. Hynix Semiconductor, Inc., No. 6:09-CV-390, 2010 WL 3855520, at *5 (E.D. Tex. Sept.
`
`30, 2010) (favoring transfer where several third-party witnesses would “not be subject to this
`
`Court’s subpoena power, but would be subject to the Northern District’s”). Third-party witnesses
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`residing, employed, or regularly transacting business in California are subject to the Northern Dis-
`
`trict of California’s subpoena power for trial pursuant to Federal Rule of Civil Procedure
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`45(c)(1)(B)(ii). Brackett v. Hilton Hotels Corp., 619 F. Supp. 2d 810, 821 (N.D. Cal. 2008).
`
`Third party witnesses are properly considered in the transfer analysis if a defendant shows
`
`that they have “relevant and material information” concerning the litigation. In re Hulu, LLC, No.
`
`2021-142, 2021 WL 3278194, at *3 (Fed. Cir. Aug. 2, 2021). A defendant need not show that
`
`they will necessarily testify at trial. Id. Here, there are many groups of third-party witnesses for
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`Case 2:21-cv-00435-JRG Document 25 Filed 03/10/22 Page 14 of 22 PageID #: 915
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`
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`whom the Northern District of California will be more convenient.
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`First, the named inventors of the asserted patents will have relevant and material infor-
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`mation concerning the conception and reduction to practice of the claimed inventions in eight of
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`the asserted patents. For these patents, JI claims an invention date that precedes the earliest filing
`
`date in the patent’s priority chain. (Ex. 23 at 5-7.) Because JI is attempting to establish these
`
`earlier invention dates, the inventors’ activities preceding the filing of the patent applications will
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`be at issue and the inventors’ testimony will be needed. See, e.g., Purdue Pharma L.P. v.
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`Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (describing standards for
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`establishing invention date). Four of the six named inventors are based in the Northern District of
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`California, and none of them is anywhere near the Eastern District of Texas. (Supra, p. 3-4.)
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`Second, the attorneys who prosecuted the asserted patents will have relevant and material
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`information concerning the patents’ prosecution history. The Federal Circuit has recognized the
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`importance of such witnesses in the transfer analysis. Netflix, 2022 WL 167470, at *3. Five of
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`these attorneys are based in the Northern District of California; none of them is anywhere near the
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`Eastern District of Texas. (Supra, p. 4.) And one of the prosecuting attorneys, Scott Kokka, is
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`especially relevant here because he was handling the prosecution of two asserted patents when
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`they were abandoned. (Dkt. No. 16 at ¶¶ 192-193, 203-204.) Mr. Kokka’s decision to abandon
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`the patents supports Amazon’s inequitable-conduct defense. (Id. at 19-22.) Thus, Mr. Kokka will
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`be an important third-party witness. Mr. Kokka is in the Northern District of California. (Ex. 16.)
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`Third, AliphCom’s former CEO, Hosain Rahman, will have relevant and material infor-
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`mation about the valuation of the asserted patents. His testimony will inform the determination of
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`a reasonable royalty, which JI seeks as a remedy in this case (Dkt. No. 24 at Prayer for Relief). A
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`reasonable royalty is determined from a hypothetical negotiation at the time the alleged infringe-
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`ment began. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009). Here,
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`the accused products started selling in 2014—while AliphCom still owned the patents and Rahman
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`was leading AliphCom. (Ex. 24; Ex. 21.) Rahman was personally involved in several transactions
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`involving the asserted patents, so he would have been an important participant in the hypothetical
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`negotiation. (Supra, p. 4.) Thus, Rahman’s testimony will inform the determination of any rea-
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`sonable royalty. Mr. Rahman is in the Northern District of California. (Id.)
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`Fourth, AliphCom’s former CTO, Michael Luna, will have relevant and material infor-
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`mation about the prosecution of the asserted patents and various issues pertaining to damages.
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`Specifically, during prosecution of two asserted patents, Mr. Luna submitted declarations to the
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`Patent Office, and the facts set forth in these declarations are part of Amazon’s inequitable-conduct
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`defense. (Supra, p. 4.) Also, as the person responsible for both AliphCom’s patent portfolio and
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`the technical implementation of AliphCom’s products, Mr. Luna would have knowledge of poten-
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`tial benefits provided by the patented technology, alternatives to this technology, and the state of
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`the art at the time of the patents. This knowledge pertains to the valuation of the patents and the
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`proper amount of any damages award. See, e.g., Lucent, 580 F.3d at 1332-35 (identifying relevant
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`Georgia-Pacific factors). Mr. Luna is in the Northern District of California. (Supra, p. 4.)
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`Fifth, former employees of Lab126 will have relevant and material information about the
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`functionality of the accused products. Specifically, Amazon has already identified three former
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`employees with knowledge concerning the development of the audio signal processing in the ac-
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`cused products. Two of these employees wrote source code for the accused voice activity detection
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`algorithm on the Echo Buds, and are named inventors on an Amazon patent that describes this
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`algorithm. (Hilmes Decl. at ¶ 7; Ex. 25.) The other former employee developed a similar algo-
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`rithm for Echo smart speakers. (Hilmes Decl. at ¶ 7.) All three of these former employees are
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`based in the Northern District of California. (Supra, p. 3.)
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`Because at least fourteen third-party witnesses with relevant and material information are
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`in the Northern District, and not a single third-party witness has been identified in the Eastern
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`District of Texas, the convenience of third-party witnesses overwhelmingly favors transfer. Net-
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`flix, 2022 WL 167470, *4 (factor “strongly” favors transfer where defendant identified “far more
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`third-party witnesses in the California forum than were identified in the Texas forum”).
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`C.
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`The Northern District of California Is More Convenient
`for Willing Witnesses.
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` “[T]he relative convenience for and cost of attendance of witnesses between the two fo-
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`rums is ‘probably the single most important factor in transfer analysis.’” In re Juniper Networks,
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`Inc., 14 F.4th 1313, 1318 (Fed. Cir. 2021) (quoting Genentech, 566 F.3d at 1343). The Fifth
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`Circuit has adopted a “100-mile rule,” explaining that “[w]hen the distance between [venues] . . .
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`is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to
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`the additional distance to be traveled.” Genentech, 566 F.3d at 1343; In re Volkswagen of Am.,
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`Inc., 545 F.3d 304, 317 (5th Cir. 2008) (“Volkswagen II”). The 100-mile rule is applied pragmat-
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`ically, considering other factors such as the availability of nearby airports. In re Google LLC, No.
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`2021-170, 2021 WL 4427899, at *4 (Fed. Cir. Sept. 27, 2021).
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`All ten of Amazon’s identified technical witnesses work in the Northern District of Cali-
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`fornia at Lab126. (Supra, p. 2.) Thus, it is far more convenient for these Amazon employees to
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`testify in the Northern District of California rather than this District.
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`Additionally, Amazon employees with relevant financial and marketing knowledge are
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`based in Seattle, Washington. (Supra, p. 3.) Traveling from Seattle to the Northern District of
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`California is far more convenient than travel to Marshall. Many direct flights are available each
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`day from Seattle to cities in which the Northern District of California has courthouses. (Ex. 29.)
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`No direct flights are available from Seattle to Marshall, or even to nearby Shreveport. (Ex. 30.)
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`JI has not identified any party witnesses in this District, or anywhere else, who have rele-
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`vant or material testimony to offer. Because every relevant witness is closer to Northern California
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