Case 6:19-cv-00716-ADA Document 134 Filed 09/03/21 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`BROADBAND iTV, INC.,
` Plaintiff,
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`v.
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`DISH NETWORK L.L.C.,
` Defendant.
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`ORDER
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`On April 20, 2021, this Court denied Defendant DISH Network L.L.C.’s (“DISH”)
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`6:19-CV-00716-ADA
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`Motion to Transfer venue to the District of Colorado under 28 U.S.C. § 1404(a). Dkt. 83
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`(“Transfer Order”). In the Transfer Order, this Court weighed the Volkswagen private and public
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`factors (In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004)) and found the following:
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`Private factors
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`(1) the relative ease of access to sources of proof: neutral;
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`(2) the availability of compulsory process to secure the attendance of witnesses: neutral;
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`(3) the cost of attendance for willing witnesses: neutral or slightly favors transfer;
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`(4) all other practical problems that make trial of a case easy, expeditious and
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`inexpensive: strongly weighs against transfer;
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`Public factors
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`(1) the administrative difficulties flowing from court congestion: strongly weighs against
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`transfer;
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`(2) the local interest in having localized interests decided at home: neutral;
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`(3) the familiarity of the forum with the law that will govern the case: neutral; and
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`(4) the avoidance of unnecessary problems of conflict of laws of the application of
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`foreign law: neutral.
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`On August 13, 2021, the Federal Circuit denied DISH’s petition for a writ of mandamus,
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`but suggested that this Court should “reconsider its determination in light of the appropriate legal
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`standard” for transfer factors as clarified in In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020) and
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`In re Samsung Electronics Co., Ltd., 2 F.4th 1371 (2021). In re: Dish Network L.L.C., No. 2021-
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`148 (Fed. Cir. August 13, 2021) (“Mandamus Order”). Subsequently, DISH filed its Motion for
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`Reconsideration and supplemental brief (Dkt. 121) and Plaintiff Broadband iTV, Inc. (“BBiTV”)
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`also filed a supplemental brief (Dkt. 122).
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`ANALYSIS
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`The Federal Circuit suggests in the Mandamus Order that this Court reconsider its
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`analyses for three factors: (A) the local interest factor; (B) the convenience of witnesses factor,
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`and (C) the practical problems factor.
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`A. The Local Interest Factor
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`In the Transfer Order, this Court found that the local interest factor was neutral in part
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`because DISH “employs over 1,000 employees and owns call centers, warehouses, a
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`remanufacturing center, and a service center in this District.” Transfer Order at 12. The Federal
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`Circuit found that this Court “erred in relying on DISH’s general presence in Western Texas
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`without tying that presence to the events underlying the suit” because the local interest factor
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`“most notably regards not merely the parties’ significant connections to each forum writ large,
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`but rather the significant connections between a particular venue and the events that gave rise to
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`a suit.” Mandamus Order at 2 (citing Apple, 979 F.3d at 1345).
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`In its Motion to Transfer and supplemental briefing, DISH contends that its current and
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`former employees who designed the accused products all acted and reside in Colorado (where
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`DISH is headquartered), while DISH’s presence in this District “does not related to the events
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`underlying this suit.” Dkt. 121 at 4. However, BBiTV points out that DISH (1) operates one of
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`its two U.S. remanufacturing facilities in this District (with the other in South Carolina, not
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`Colorado), where it makes the accused products, and warehouses, sells, offers to sell, and
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`services the accused products, and (2) operates sales and distribution centers in this District for
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`the accused products. Dkt. 122 at 8. Thus, both District of Colorado and this District have
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`significant connections to the events that gave rise to this lawsuit. Therefore, the Court finds that
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`the Apple standard does not change its previous finding that this factor is neutral.
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`B. The Convenience of Witnesses Factor
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`In the Transfer Order, this Court found that the convenience of willing witnesses factor
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`was neutral or slightly favors transfer in part because (1) the Court assumes that no more than a
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`few party witnesses will testify at trial given the typical time limits at trial, and (2) convenience
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`of party witnesses is generally given little weight. Transfer Order at 8-9. The Federal Circuit
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`found that this Court “improperly diminished the convenience of witnesses in the transferee
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`venue because of their party status and by presuming they were unlikely to testify despite the
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`lack of relevant witnesses in the transferor venue.” Mandamus Order at 3. In light of the Federal
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`Circuit’s guidance in Samsung to allocate at least some weight to the convenience of party
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`witness especially when there is a lack of relevant DISH witnesses in this District, the Court
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`modifies its previous finding and now finds that this factor strongly favors transfer. See
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`Samsung, 2 F.4th at 1379 (“Even if not all witnesses testify, with nothing on the other side of the
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`ledger, the factor strongly favors transfer.”).
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`C. The Practical Problems Factor
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`In the Transfer Order, this Court found that the practical problems factor strongly weighs
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`against transfer in part because BBiTV has filed co-pending actions against AT&T and DirecTV
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`in this Court involving three of the four patents asserted in this action, and these actions involve
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`overlapping issues such as claim construction, invalidity, prior art, conception, and reduction to
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`practice. Transfer Order at 10. The Federal Circuit found that this Court “erred in weighing the
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`practical problems factor heavily against transfer without taking due account of differences in the
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`underlying technology of the co-pending cases and the availability of multidistrict litigation
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`procedures.” Mandamus Order at 3.
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`In its supplemental briefing, DISH asserts that the allegedly infringing devices are not the
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`same in the co-pending cases because the accused AT&T and DirecTV devices involve different
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`hardware and software from the accused DISH devices. Dkt. 121 at 5. However, there is no
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`dispute that the same patents are asserted in both this case against DISH and the now
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`consolidated case against AT&T and DirecTV. Dkt. 122 at 5. As BBiTV points out, the asserted
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`patents in the co-pending cases are directed to the same underlying technology, which includes
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`all three defendants’ accused set-top boxes that receive on-demand content and system to deliver
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`on-demand content to a subscriber’s device. Id. Therefore, this case is vastly different from
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`Samsung, where only two of the four patents asserted against Samsung overlap with those in a
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`co-pending action against Bumble, and where “the Bumble case involves an entirely different
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`underlying application.” Samsung, 2 F.4th at 1379-80 (emphasis added). Contrary to DISH’s
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`assertion that “it is likely that [BBiTV’s other] cases will result in significantly different
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`discovery, evidence, proceedings, and trial” (Dkt. 121 at 5), the Court finds that the opposite is
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`true here. Because the co-pending cases against DISH, AT&T, and DirecTV involve the same
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`asserted patents and the accused products in these cases involve the same underlying technology,
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`the Court maintain its previous finding that this factor strongly weighs against transfer.
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`The Federal Circuit’s Mandamus Order does not disturb this Court’s findings related to
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`the remaining private and public factors. Therefore, this Court does not need to reconsider its
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`previous findings regarding those factors.
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`CONCLUSION
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`Having reconsidered this Court’s previous Section 1404 transfer factor analyses in light
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`of the Federal Circuit’s guidance in the Mandamus Order and appropriate legal standard as
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`clarified in the Apple and Samsung cases, the Court modifies its findings regarding the Section
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`1404(a) transfer factors as follows:
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`Private factors
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`(1) the relative ease of access to sources of proof: neutral;
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`(2) the availability of compulsory process to secure the attendance of witnesses: neutral;
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`(3) the cost of attendance for willing witnesses: strongly favors transfer;
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`(4) all other practical problems that make trial of a case easy, expeditious and
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`inexpensive: strongly weighs against transfer;
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`Public factors
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`(1) the administrative difficulties flowing from court congestion: strongly weighs against
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`transfer;
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`(2) the local interest in having localized interests decided at home: neutral;
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`(3) the familiarity of the forum with the law that will govern the case: neutral; and
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`(4) the avoidance of unnecessary problems of conflict of laws of the application of
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`foreign law: neutral.
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`With two factors strongly weighing against transfer, one factor strongly favoring transfer,
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`and the remaining factors neutral, the Court finds that DISH has not met its significant burden to
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`demonstrate that the District of Colorado is “clearly more convenient” than this District.
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`Therefore, the Court DENIES DISH’s Motion for Reconsideration (Dkt. 121).
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`SIGNED this 3rd day of September, 2021.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`6
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