Case 7:24-cv-00030-ADA-DTG Document 87 Filed 01/22/25 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`MIDLAND/ODESSA DIVISION
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`VIRTAMOVE, CORP.
` Plaintiff,
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`v.
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`AMAZON.COM, INC.,
`AMAZON.COM SERVICES LLC, AND
`AMAZON WEB SERVICES, INC.,
` Defendants.
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`CASE NO. 7:24-CV-00030-ADA-DTG
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`ORDER GRANTING-IN-PART AND DENYING-IN-PART
`DEFENDANTS’ MOTION TO DISMISS OR TRANSFER (ECF NO. 31)
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`Before the Court is a motion filed by Defendants Amazon.com, Inc., Amazon.com Services
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`LLC, and Amazon Web Services, Inc. to transfer this suit to the United States District Court for
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`the Northern District of California (“NDCA”) under 28 U.S.C. §§ 1404 and 1406. ECF No. 31.
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`Defendants also seek dismissal of claims for willful infringement and pre-suit indirect
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`infringement. Id. On June 21, 2024, the parties filed a stipulation that addressed the willful
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`infringement and pre-suit indirect infringement claims. ECF No. 42 at 1. Plaintiff VirtaMove,
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`Corp. filed its opposition on September 27, 2024. ECF No. 63. Defendants filed a reply on October
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`25, 2024. ECF No. 72. Considering the arguments presented, the Court finds that the motion should
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`be GRANTED-IN-PART AND DENIED-IN-PART. Defendants’ request to transfer this case to
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`NDCA is GRANTED. Defendants’ request to dismiss Plaintiff’s claims for willful infringement
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`and pre-suit indirect infringement is DENIED AS MOOT.
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`I.
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`FACTUAL BACKGROUND
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`The present case involves allegations of patent infringement. Plaintiff filed this suit in the
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`Midland-Odessa Division of the U.S. District Court for the Western District of Texas on January
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`Amazon Ex. 1026
`IPR Petition - USP 7,519,814
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`Case 7:24-cv-00030-ADA-DTG Document 87 Filed 01/22/25 Page 2 of 7
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`26, 2024. Plaintiff asserted claims against Defendants for infringement of U.S. Patent Nos.
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`7,519,814 and 7,784,058. Plaintiff accused Amazon Web Services End-of-Support Migration
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`Program of infringing the asserted patents. ECF No. 1 at 4.
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`The present Motion is Defendants’ second motion to dismiss. On April 5, 2024, Defendants
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`filed a motion to dismiss. ECF No. 16. In response, Plaintiff filed an amended complaint. ECF No.
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`23. Defendants then filed the present Motion. ECF No. 31.
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`The present Motion requests two types of relief. First, it requests that the Court dismiss
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`Plaintiff’s claims for willful infringement and pre-suit indirect infringement. Second, it requests
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`that the Court either dismiss all claims against Defendants Amazon.com, Inc. and Amazon.com
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`Services LLC under 28 U.S.C. § 1406 or transfer the case to NDCA under either § 1406 or § 1404.
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`See generally ECF No. 31. Plaintiff conducted three months of venue discovery and filed its
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`opposition on September 27, 2024. ECF No. 63. Defendants timely filed a reply on October 25,
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`2024. ECF No. 72. The parties also stipulated to the dismissal without prejudice of Plaintiff’s
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`claims for willful infringement and pre-suit indirect infringement. ECF No. 42.
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`II.
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`LEGAL STANDARD
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`Defendants’ Motion seeks transfer under two statutes—28 U.S.C. sections 1406 and 1404.
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`28 U.S.C. section 1406 allows a court to transfer when it was filed in the wrong venue. The statue
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`allows the Court to transfer the case to a district where it “could have been brought.” 28 U.S.C. §
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`1406(a). Section 1404 allows a court to transfer a case to a district where it could have been brought
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`for “the convenience of parties and witnesses” and “in the interest of justice.” 28 U.S.C. § 1404(a).
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`A party seeking transfer under section 1404 “must show good cause” and that the transferee
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`district is “clearly more convenient.” In re Volkswagen of Am., 545 F.3d 304, 315 (5th Cir. 2008)
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`(en banc). The analysis is performed using the four well-known private factors and four well-
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`known public factors.1
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`III. ANALYSIS
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`As a threshold point, the Court confirms that this case could have been filed in NDCA.
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`Neither party disputes that this suit could have been brought in NDCA. Defendants have regular
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`and established places of business in NDCA and admit that allegedly infringing acts occur in
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`NDCA. ECF No. 31 at 7. The Court first turns to an analysis under 28 U.S.C. section 1406(a), and
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`then section 1404(a).
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`Based on the specific facts before it, the Court finds that transferring this case to NDCA
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`under 28 U.S.C. section 1406(a) is appropriate. Defendants argue that WDTX is the wrong venue
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`for this case because Plaintiff cannot show for at least two defendants—Amazon.com, Inc. And
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`Amazon Services LLC—that they committed any infringement in this judicial district, as required
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`under the patent venue statute. ECF No. 31 at 6-7; see also 28 U.S.C. § 1400(b). Rather than
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`oppose that contention, Plaintiff requests the opportunity to conduct three months of venue
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`discovery and file an amended complaint should Plaintiff find facts supporting WDTX as a proper
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`venue. ECF No. 63 at 16. Defendants raised this when they filed their Motion on June 7, 2024, and
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`Plaintiff conducted venue discovery until September 13, 2024. ECF No. 59. Plaintiff had the
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`opportunity to gather any necessary evidence during that time. In re ZTE (USA) Inc., 890 F.3d
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`1008, 1013 (Fed. Cir. 2018) (holding that, with respect to the patent venue statute, a plaintiff bears
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`1 Private: “(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). Public: “(1) the administrative difficulties
`flowing from court congestion; (2) the local interest in having localized interests decided at home;
`(3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of
`unnecessary problems of conflict of laws of the application of foreign law.” Id.
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`the burden of establishing proper venue). Considering the specific facts presented by the parties in
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`this case, the Court finds that Plaintiff has not made the requisite showing that venue is proper in
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`this judicial district under 28 U.S.C. § 1400(b) as to Defendants Amazon.com, Inc. and
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`Amazon.com Services LLC. Rather than severing Plaintiff’s claims against these Defendants and
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`creating piecemeal litigation, it is in the interest of justice to transfer this case in its entirety under
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`section 1406(a) to NDCA, where the parties agree venue is proper. Indeed, transfer is also
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`supported under section 1404(a), based on the following analysis of the private and public factors.
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`A.
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`The Private Interest Factors
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`Turning to the private interest factors considered in light of the specific facts of this case,
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`the Court finds that they favor transfer. As for access to sources of proof, neither party identified
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`evidence that is solely available in either district especially since the evidence is electronic. In re
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`TikTok, Inc., 85 F.4th 352, 359 (5th Cir. 2023); ECF No. 31 at 14-15 (identifying source code and
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`documentation for the accused functionality); ECF No. 63 at 12 (identifying documents in Canada
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`and Dallas). As for the availability of compulsory process, Defendants identified ten non-party
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`witnesses in NDCA, none of whom have agreed to testify willingly, and Plaintiff has pointed to
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`four Canadian witnesses and one Massachusetts-based witness who are willing to testify in WDTX
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`but not NDCA, and two Dallas-based witnesses that could be subpoenaed to testify in WDTX if
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`they would not incur substantial expense. ECF No. 31 at 11-14; ECF No. 63 at 9-12; Fed. R. Civ.
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`P. 45(c)(1)(B)(ii). As for willing witnesses, Defendant has identified multiple relevant employees
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`in NDCA and Seattle. ECF No. 31 at 9-10. Plaintiff has only identified potential witnesses in
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`Ontario, Canada, a few Amazon employees who reside outside NDCA, and two potential witnesses
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`in WDTX. ECF No. 63 at 5-9. While it may be true that Plaintiff’s identified witnesses are
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`geographically closer to WDTX than NDCA, the majority of Plaintiff’s potential witnesses will
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`have to travel well over 100 miles to either district. As for the fourth private factor—all other
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`practical problems—Defendant argues that this factor is neutral. ECF No. 31 at 16. Plaintiff
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`disagrees and points to potential judicial efficiency created by this Court also handling Plaintiff’s
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`pending case against Google. ECF No. 63 at 14. The Court notes that Plaintiff’s case against
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`Google is also subject to a pending Motion to Transfer to NDCA. See Case No. 7:24-cv-00033-
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`DC-DTG, ECF No. 49. When all of these private interest factors are considered in light of the
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`specific facts of this case, the Court finds that they favor transfer.
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`B.
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`The Public Interest Factors
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`Turning to the public interest factors considered in light of the specific facts of this case,
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`the Court finds that they also favor transfer. The first public interest factor—administrative
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`problems created by court congestion—carries little weight in this case. Volkswagen, 545 F.3d at
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`315. Defendants point to NDCA’s faster trial statistics; while Plaintiff points to this Court’s current
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`trial setting. ECF No. 31 at 16-17; ECF No. 63 at 15. Neither are particularly persuasive. In re
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`Clarke, 94 F.4th 502, 510 (5th Cir. 2024) (noting that statistics are not particularly helpful). As for
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`the second public interest factor—the local interest—Defendants make a strong showing that
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`NDCA has a local interest in this case while WDTX does not. See ECF No. 31 at 2-4, 17-18. While
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`Plaintiff contests this factor, it fails to identify a relevant factual connection specific to WDTX.
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`See ECF No. 63 at 14-15. Neither party contests the remaining public interest factors—familiarity
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`with the law and conflict of law issues—and the Court finds that they have little effect on the
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`present dispute. When considering all the public interest factors, the Court finds that under the
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`specific facts of this case, they favor transfer.
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`The Court finds that when considered as a whole under the facts of this case, section 1404
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`favors transfer of this case to NDCA. This is further supported by the finding that venue is
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`improper as to two defendants making transfer appropriate as to all Defendants under section 1406.
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`C. Motion to Dismiss Claims for Willful Infringement and Pre-Suit Indirect
`Infringement
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`Defendant’s Motion also seeks dismissal of Plaintiff’s claims for willful infringement and
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`pre-suit indirect infringement. ECF No. 31 at 18-19. On June 21, 2024, the parties stipulated to the
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`dismissal of those claims without prejudice, with leave to re-plead those allegations with
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`specificity if supported by a good faith basis under Rule 11. ECF No. 42 at 1; ECF No. 63 at 17.
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`Accordingly, the Court DENIES AS MOOT Defendants’ request for dismissal of those claims.
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`IV. CONCLUSION
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`The Court concludes that Plaintiff has not carried its burden of establishing that WDTX is
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`a proper venue for its claims against Defendants Amazon.com, Inc. and Amazon.com Services
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`LLC. Further, considering the private and public interest factors in total, the Court finds that
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`Defendants have carried their burden of proving that the Northern District of California is a clearly
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`more convenient venue. For the foregoing reasons, it is ORDERED that, insofar as it requests
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`transfer to NDCA, Defendants’ Motion (ECF No. 31) is GRANTED and as noted below, that
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`the transfer be stayed until February 22, 2025, to allow Plaintiff time to appeal this decision
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`if it chooses.
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`IT IS FURTHER ORDERED that Defendants’ request to dismiss Plaintiff’s claims for
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`willful and pre-suit indirect infringement is DENIED AS MOOT.
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`IT IS FINALLY ORDERED that all unreached deadlines in this case are STAYED until
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`February 22, 2025. On that date, and not before, the Clerk of Court is DIRECTED to take all
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`actions necessary to TRANSFER the above-captioned case to the United States District Court for
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`the Northern District of California.
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`Case 7:24-cv-00030-ADA-DTG Document 87 Filed 01/22/25 Page 7 of 7
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`SIGNED this 22nd day of January, 2025.
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`____________________________________
`DEREK T. GILLILAND
`UNITED STATES MAGISTRATE JUDGE
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