Case 6:20-cv-00453-ADA Document 95 Filed 07/08/21 Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`JENAM TECH, LLC,
` Plaintiff,
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`v.
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`GOOGLE LLC,
` Defendant.
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`§
`§
`§
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`§
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`ORDER DENYING MOTION TO TRANSFER VENUE TO THE NORTHERN
`DISTRICT OF CALIFORNIA
`Came on for consideration this date is Defendant Google LLC’s Motion to Transfer to the
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`6-20-CV-00453-ADA
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`Northern District of California (“NDCA”) pursuant to 28 U.S.C. § 1404(a). Def.’s Motion, ECF
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`No. 27. The Court has considered the Motion, the Parties’ briefs, oral argument, and the
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`applicable law. For the reasons set forth below, the Court DENIES Defendant Google’s Motion
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`to Transfer.
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`I. INTRODUCTION
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`A party seeking a transfer to an allegedly more convenient forum carries a significant
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`burden. Babbage Holdings, LLC v. 505 Games (U.S.), Inc., No. 2:13-CV-749, 2014 U.S. Dist.
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`LEXIS 139195, at *12–14 (E.D. Tex. Oct. 1, 2014) (stating the movant has the “evidentiary
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`burden” to establish “that the desired forum is clearly more convenient than the forum where the
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`case was filed”). Google does not contest that venue is proper in the Western District of Texas
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`(“WDTX”). Pl.’s Resp., ECF No. 58, at 3. The burden that a movant must carry is not that the
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`alternative venue is more convenient, but that it is clearly more convenient. In re Volkswagen,
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`Inc., 545 F.3d 304, 314 n. 10 (5th Cir. 2008) (hereinafter “Volkswagen II). Google moved to
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`have this case transferred to the NDCA. This Court finds that Google fails to show that transfer
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`is warranted.
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`A. Section 1404 Transfer
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`II. LEGAL STANDARD
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`Title 28 U.S.C. § 1404(a) provides that, for the convenience of parties and witnesses, a
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`district court may transfer any civil action to any other district or division where it might have
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`been brought or to any district or division to which all parties have consented. “Section 1404(a)
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`is intended to place discretion in the district court to adjudicate motions for transfer according to
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`an ‘individualized, case-by-case consideration of convenience and fairness.’” Stewart Org., Inc.
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`v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622
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`(1964)). The party moving for transfer carries the burden of showing good cause. Volkswagen II,
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`545 F.3d at 314. “In this context, showing good cause requires the moving party to ‘clearly
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`demonstrate that a transfer is for the convenience of parties and witnesses [and] in the interest of
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`justice.’” State of Texas et al. v. Google LLC, No. 4:20-CV-957-SDJ, 2021 WL 2043184, at *2
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`(E.D. Tex. May 20, 2021) (citing Humble Oil & Refin. Co. v. Bell Marine Serv., Inc., 321 F.2d
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`53, 56).
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`“The preliminary question under § 1404(a) is whether a civil action ‘might have been
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`brought’ in the destination venue.” Volkswagen II, 545 F.3d at 312. If so, in the Fifth Circuit, the
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`“[t]he determination of ‘convenience’ turns on a number of public and private interest factors,
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`none of which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar.
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`Co., 358 F.3d 337, 340 (5th Cir. 2004). The private factors include: “(1) the relative ease of
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`access to sources of proof; (2) the availability of compulsory process to secure the attendance of
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`witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems
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`that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen AG, 371 F.3d 201,
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`203 (5th Cir. 2004) (hereinafter “Volkswagen I”) (citing to Piper Aircraft Co. v. Reyno, 454 U.S.
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`235, 241 n.6 (1982)). The public factors include: “(1) the administrative difficulties flowing from
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`court congestion; (2) the local interest in having localized interests decided at home; (3) the
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`familiarity of the forum with the law that will govern the case; and (4) the avoidance of
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`unnecessary problems of conflict of laws of the application of foreign law.” Id. Courts evaluate
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`these factors based on “the situation which existed when suit was instituted.” Hoffman v. Blaski,
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`363 U.S. 335, 343 (1960).
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`A plaintiff’s choice of venue is not an independent factor in the venue transfer analysis,
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`and courts must not give inordinate weight to a plaintiff’s choice of venue. Volkswagen II, 545
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`F.3d at 313 (“[W]hile a plaintiff has the privilege of filing his claims in any judicial division
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`appropriate under the general venue statute, § 1404(a) tempers the effects of the exercise of this
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`privilege.”). However, “when the transferee venue is not clearly more convenient than the venue
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`chosen by the plaintiff, the plaintiff’s choice should be respected.” Id. at 315; see also QR Spex,
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`Inc. v. Motorola, Inc., 507 F.Supp.2d 650, 664 (E.D. Tex. 2007) (characterizing movant’s burden
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`under § 1404(a) as “heavy”).
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`III. BACKGROUND
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`Google is incorporated in the state of Delaware with its corporate headquarters located in
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`Mountain View, California. Def.’s Mot. at 1. Google also has several offices in this District, one
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`of which is located at 500 West 2nd Street, Austin, Texas 78701. Pl.’s Compl., ECF No. 1 at ¶ 6.
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`Jenam is a limited liability company incorporated in Texas with its principal place of business at
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`211 West Tyler Street, Suite C, Longview, Texas, 75601. Pl.’s Compl. at ¶ 1.
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`Jenam filed this lawsuit on June 1, 2020, alleging infringement of U.S. Patent Nos.
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`10,069,945; 10,075,564; 10,075,565; 10,375,215; 10,306,026; 9,923,995; 9,923,996; and
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`10,742,774. Pl.’s Compl. at 6–11. Each of the Asserted Patents relates to methods, systems, and
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`computer program products for sharing information for detecting an idle TCP connection. Id. at
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`3–6. Specifically, Jenam alleges that Google infringes the asserted patents through its use of the
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`QUIC protocol present in various devices that Google develops and sells. See generally Pl.’s
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`Compl.; Pl’s Resp. at 5–6.
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`On August 14, 2020, Google filed this Motion to Transfer Venue under 28 U.S.C. §
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`1404(a) requesting that the case be transferred to the Northern District of California (“NDCA”).
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`Def.’s Mot. at 1. Google argues that the NDCA is a clearly more convenient venue than the
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`Western District of Texas (“WDTX”). Id. In support of this argument, Google asserts that “there
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`no Google employee responsible for Google’s QUIC protocol anywhere in the state of Texas.”
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`Id.
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`On March 20, 2021, Jenam filed a response arguing that Google did not meet its burden
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`of proving that the NDCA is a clearly more convenient venue than the WDTX. Pl.’s Resp. at 1.
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`Google filed a reply on March 26, 2021. Def.’s Reply, ECF No. 63. The Court heard oral
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`argument on Defendant’s Motion to Transfer on April 27, 2021. Mot. Hrng. Tr., ECF No. 90.
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`IV. ANALYSIS
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`The threshold determination in the § 1404 analysis is whether this case could have been
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`brought in the NDCA. Neither party contests the fact that venue is proper in the NDCA and that
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`this case could have been brought there. Def.’s Mot. at 7; Pl.’s Resp. at 8.
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`A. The Private Interest Factors Weigh Against Transfer.
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`i. The Relative Ease of Access to Sources of Proof
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`“In considering the relative ease of access to proof, a court looks to where documentary
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`evidence, such as documents and physical evidence, is stored.” Fintiv Inc. v. Apple Inc., 2019
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`WL 4743678, at *2. “[T]he question is relative ease of access, not absolute ease of access.” In re
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`Radmax, 720 F.3d 285, 288 (5th Cir. 2013) (emphases in original). “In patent infringement cases,
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`the bulk of the relevant evidence usually comes from the accused infringer. Consequently, the
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`place where the defendant’s documents are kept weighs in favor of transfer to that location.” In
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`re Apple Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020) (citing In re Genentech, 566 F.3d at 1345).
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`Here, the Court finds that the location of electronic documents is neutral, and that the location of
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`physical documents weighs slightly in favor of transfer.
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`1. Witnesses Are Not Sources of Proof
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`Google discusses various witnesses as sources of proof. See Def.’s Mot. at 9–10. Pl.’s
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`Resp. at 11–16; Def.’s Reply at 2–6. This Court, in following Federal Circuit precedent, has
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`made clear that witnesses are not sources of proof to be analyzed under this factor. Under this
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`factor, the Court considers only documents and physical evidence. Netlist, Inc. v. SK Hynix Am.
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`Inc., No. 6:20-CV-00194-ADA, 2021 U.S. Dist. LEXIS 47242, at *17 (W.D. Tex. 2021) (“The
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`first private factor, ease of access to sources of proof, considers ‘documents and physical
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`evidence’ as opposed to witnesses.”) (emphasis added); In Re Apple Inc., 979 F.3d at 1339
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`(“[t]his factor relates to the ease of access to non-witness evidence, such as documents and other
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`physical evidence”); Volkswagen II, 545 F.3d at 315 (“All of the documents and physical
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`evidence relating to the accident are located in the Dallas Division”). Accordingly, Google’s
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`identified witnesses are more appropriately assessed under the second or third private factors and
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`not under this factor.
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`2. Location of Electronic Documents
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`In several previous orders, this Court has lamented this factor as out of touch with
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`modern patent litigation. Fintiv, 2019 WL 4743678, at *8; Uniloc 2017 LLC v. Apple Inc., 6-19-
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`CV-00532-ADA, 2020 WL 3415880, at *9 (W.D. Tex. June 22, 2020). In those cases, the Court
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`acknowledged that “all (or nearly all) produced documents exist as electronic documents on a
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`party’s server. Then, with a click of a mouse or a few keystrokes, the party produces these
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`documents.” Id. There is no realistic difference in the relative ease of access to these electronic
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`documents from the transferor district as compared to the transferee district since the documents
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`are easily accessible electronically. Other courts in the Fifth Circuit similarly found that access to
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`documents that are available electronically provides little benefit in determining whether a
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`particular venue is more convenient than another. See Uniloc USA Inc. v. Samsung Elecs. Am.,
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`No. 2:16-cv-642-JRG, 2017 U.S. Dist. LEXIS 229560, at *17 (E.D. Tex. Apr. 19, 2017)
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`("Despite the absence of newer cases acknowledging that in today's digital world computer
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`stored documents are readily moveable to almost anywhere at the click of a mouse, the Court
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`finds it odd to ignore this reality in favor of a fictional analysis that has more to do with early
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`Xerox machines than modern server forms.").
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`Nevertheless, until the Fifth Circuit addresses the reality previously discussed, trial courts
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`must continue to apply this factor consistent with current precedent. Fifth Circuit precedent
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`establishes that Google, as the accused infringer, will likely have the bulk of the documents that
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`are relevant in this case. See, e.g., In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)
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`(“In patent infringement cases, the bulk of the relevant evidence usually comes from the accused
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`infringer. Consequently, the place where the defendant’s documents are kept weighs in favor of
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`transfer to that location.”). However, Genentech does not provide an accused infringer with a
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`“built-in factor weighing in its favor.” See Uniloc USA, Inc. et al v. Apple Inc, No. 2:17-cv-258,
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`ECF No. 104, at 12 (E.D. Tex. Dec. 22, 2017).
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`Under current Fifth Circuit precedent, the physical location of electronic documents does
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`affect the outcome of this factor. See Volkswagen II, 545 F.3d at 316. Google argues that
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`electronic documents are “created and maintained” in the NDCA. Def.’s Mot. at 8–9. Jenam
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`counters that, during discovery, Google admitted that “maintaining” merely involves updating
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`the electronic documents from time to time. Pl.’s Resp. at 8. Jenam argues that Google has not
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`provided evidence that the documents are stored in a physical place, such as a data server, in the
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`NDCA. See generally Def.’s Mot.; Pl.’s Resp. at 8. Jenam goes on to assert that, as the Eastern
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`District determined in Seven Networks, Google only “manages” its servers in the NDCA and
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`does not store any data servers there. Pl.’s Resp. at 8 (citing Seven Networks, LLC v. Google
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`LLC, No. 2:17-CV-00442-JRG, 2018 U.S. Dist. LEXIS 146375 at *10 (E.D. Tex. 2018)).
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`Under this factor, the movant carries the burden of identifying “sources of proof with
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`enough specificity that a court can determine whether transfer will increase the convenience of
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`the parties.” MacroPoint, LLC v. Ruiz Food Prods., No. 6:16-cv-01133-RWS-KNM, 2017 U.S.
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`Dist. LEXIS 138985 at *5 (E.D. Tex. 2017) (quoting J2 Glob. Commc'ns, Inc. v. Protus IP
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`Solutions, Inc., 2009 U.S. Dist. LEXIS 13210, 2009 WL 440525, at *2 (E.D. Tex. Feb. 20,
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`2009)). Google has failed to identify which data centers store the relevant electronic documents
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`in question, and where these data centers are located. See generally Def.’s Mot. Therefore,
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`Google has failed to meet its evidentiary burden to show that the location of any electronic
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`sources of proof would weigh in favor of transfer.
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`In its Reply, Google mentions that local copies of relevant electronic documents are
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`located in the NDCA. Def.’s Reply at 2–3. However, as Jenam points out, Google has not
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`provided evidence that it would be more difficult to access these documents from its offices in
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`the WDTX than its offices in the NDCA. Pl.’s Resp. at 9.
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`Because no evidence exists showing that the relevant electronic documents in this case
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`are stored in the NDCA, and because there does not appear to be a difference in the ease of
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`accessibility of the electronic documents between the transferee and transferor districts, this
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`factor is neutral.
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`3. Location of Physical Documents
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`Aside from hard copies of documents already available electronically, Google does not
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`point with particularity to any relevant physical documents, nor does it confirm the existence of
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`any physical documents located in the NDCA. Def.’s Mot. at 8–9. Therefore, the Court is not
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`persuaded that the location of any physical documents would weigh in favor of transfer to the
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`NDCA.
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`Jenam argues that it has evidence in the form of physical documents which are located in
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`Texas. Pl.’s Resp. at 10. Specifically, Jenam points to physical documents stored in Mr.
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`Gordon’s office in Longview and Mr. Caldwell’s office in Dallas. Id. Jenam contends that it
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`would be more convenient for these documents to be transported to the WDTX than to the
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`NDCA. Id. Google contends that these physical documents should not be given any weight in the
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`Court’s analysis because Mr. Caldwell mentioned during his deposition that he was unsure if he
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`had any physical documents relating to this case. Def.’s Reply at 10. However, Google did not
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`argue that the existence of any physical documents belonging to Mr. Gordon was in question.
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`See generally Def.’s Reply.
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`The Court agrees with Jenam that it would be more convenient for the physical
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`documents relevant to this case to be transported the WDTX than to the NDCA. Therefore, the
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`relative ease of access to sources of proof in this case weighs solidly against transfer.
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`ii. The Availability of Compulsory Process 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 may need to be
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`secured by a court order.” Fintiv, 2019 WL 4743678, at *5 (citing Volkswagen II, 545 F.3d at
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`316); Uniloc, 2020 WL 3415880, at *10. This factor “weigh[s] heavily in favor of transfer when
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`more third-party witnesses reside within the transferee venue than reside in the transferor venue.”
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`In re Apple, Inc., 581 F.App’x. 886, 889 (Fed. Cir. 2014). 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). As party
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`witnesses almost invariably attend trial willingly, “[w]hen no party has alleged or shown any
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`witness’s unwillingness, a court should not attach much weight to the compulsory process
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`factor.” CloudofChange, LLC v. NCR Corp., No. 6-19-cv-00513 (W.D. Tex. Mar. 17, 2020)
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`(citation omitted). Moreover, the ability to compel live trial testimony is crucial for evaluating a
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`witnesses’ testimony. Aguilar-Ayala v. Ruiz, 973 F.2d 411, 419 (5th Cir. 1992).
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`Google argues that the NDCA could compel certain third-party witnesses to testify at
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`trial, while this court cannot. Def.’s Mot. at 10. Google’s identifies five potentially relevant
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`third-party witnesses located in the NDCA— Mr. Iyengar, Mr. Hamilton, Mr. Krasic, Mr.
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`Roskind, and Mr. Zilka. Id. at 11.
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`In its motion, Google attempts to “double-dip” the five individual witnesses by
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`discussing them under both the willing and unwilling witness factors. Def.’s Mot. at 10–12;
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`Def.’s Reply at 3–5. However, with respect to Mr. Hamilton, Mr. Krasic, Mr. Roskind, and Mr.
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`Zilka, Google has failed to establish that these witnesses would be unwilling to testify at trial in
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`the WDTX. See generally Def.’s Mot.; Pl.’s Resp. at 11. Google argues that Jenam has not
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`shown that any of these witnesses would be willing to testify in the WDTX. Def.’s Reply at 3.
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`However, it is well-settled that it is the burden of the party seeking transfer to show that the
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`witnesses would be unwilling to travel. See, e.g., Uniloc United States v. Huawei Device United
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`States, No. 2:17-CV-00736-JRG-RSP, 2018 U.S. Dist. LEXIS 234545, at *8 (E.D. Tex. 2018)
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`(citing In re Apple, Inc., 581 F. App'x 886, 891 (Fed. Cir. 2014) (Bryson, J., Dissenting)).
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`Moreover, hypothetical scenarios of unwillingness are not evidence of unwillingness. Turner v.
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`Cincinnati Insurance Co., No. 6:19-cv-642, 2020 WL 210809, at *3 (W.D. Tex. Jan. 14, 2020).
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`(This private interest factor carries far less weight when the movant has not alleged or shown that
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`any witnesses are unwilling to testify.). The Court will therefore consider these four witnesses
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`under the factor examining the convenience of willing witnesses.
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`Jenam points out that Mr. Caldwell, the prosecuting attorney for the Asserted Patents, is
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`within the subpoena power of this Court. Pl.’s Resp. at 12. However, because Jenam has not
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`provided evidence that Mr. Caldwell would be unwilling to testify in the WDTX, Mr. Caldwell
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`will not be considered in the Court’s analysis of this factor and will instead be analyzed as a
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`willing witness.
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`Google also asserts that Cisco Systems could be a relevant prior art source and has its
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`principal place of business in the NDCA. Def.’s Mot. at 11. In response, Jenam argues that many
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`Cisco employees with relevant knowledge of the prior art are located within the WDTX. Pl.’s
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`Resp. at 12.
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`1. Prior Art Witnesses
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`This Court has placed minimal weight on the location of prior art witnesses stating, “prior
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`art witnesses are very unlikely to testify” so “the Court gives their location ‘minimal’ weight.”
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`Fintiv, 2019 WL 4743678, at *5 (citing E. Tex. Boot Co., LLC v. Nike, Inc., No. 2:16-CV-0290-
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`JRG-RSP, 2017 WL 2859065, at *4 (E.D. Tex. Feb. 15, 2017)).
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`When considering the location of the potential prior art witnesses in this case, the Court is
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`not persuaded that one forum would be more convenient than the other. The only named prior art
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`witness in this case, Cisco, has employees with relevant knowledge in both districts. Pl.’s Resp.
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`at 12. As such, the Court finds that prior art witnesses are equally subject to the compulsory
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`process in both Districts and do not have an effect on this factor.
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`2. Individual Witnesses
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`Mr. Iyengar is the only potential third-party witness who is “likely unwilling to testify in
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`Texas.” Def.’s Reply at 3; Iyengar Decl. at ¶ 6, ECF No. 26-2. In response, Jenam notes that Mr.
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`Iyengar has traveled to the WDTX before, while employed at Google. Pl.’s Resp. at 11. Courts in
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`the Fifth Circuit have held that “[i]dentifying a potential pool of likely unwilling witnesses has
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`some probative value in determining convenience.” Texas v. Google LLC, No. 4:20-CV-957-
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`SDJ, 2021 U.S. Dist. LEXIS 96586, at *15 (E.D. Tex. 2021). Therefore, this Court finds that Mr.
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`Iyengar’s likely unwillingness to testify provides only “some probative value in determining
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`convenience” and weighs only slightly in favor of transfer.
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`Because Google has only identified a single witness who is “likely unwilling” to testify in
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`Texas, this factor overall slightly favors transfer.
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`iii. The Cost of Attendance for Willing Witnesses
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`“The convenience of witnesses is the single most important factor in the transfer
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`analysis.” Fintiv, 2019 WL 4743678, at *6. The Court should consider all potential material and
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`relevant witnesses. See Alacritech Inc. v. CenturyLink, Inc., No. 2:16-cv-693, 2017 WL
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`4155236, at *5 (E.D. Tex. Sept. 19, 2017).
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`As the Eastern District of Texas has recognized, “it is obviously more convenient for
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`witnesses to testify closer to home, and additional distance means additional travel, meal, and
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`lodging costs, as well as additional time away from the witnesses’ regular employment.” Texas et
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`al. v. Google LLC, No. 4:20-CV-957-SDJ, 2021 WL 2043184, at *4 (E.D. Tex. May 20, 2021)
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`(citing Volkswagen, 545 F.3d at 317). The Fifth Circuit’s 100-mile rule states that “[w]hen the
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`distance between an existing venue for trial of a matter and a proposed venue § 1404(a) is more
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`than 100 miles, the factor of inconvenience of witnesses increases in direct relationship to the
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`additional distance to be traveled.” In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir.
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`2008) (quoting Volkswagen I, 371 F.3d at 204–05). “Significantly, this factor relates primarily to
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`the inconvenience placed on willing nonparty witnesses, not party witnesses.” Texas et al. v.
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`Google LLC, 2021 WL 2043184 at *4; Seven Networks, 2018 WL 4026760, at *9 (collecting
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`cases); Frederick v. Advanced Fin. Sols., Inc., 558 F.Supp.2d 699, 704 (E.D. Tex. 2007) (“The
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`availability and convenience of party-witnesses is generally insignificant because a transfer
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`based on this factor would only shift the inconvenience from movant to nonmovant.”). As a
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`preliminary matter, given typical time limits at trial, the Court does not assume that all of the
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`party and third-party witnesses listed in 1404(a) briefing will testify at trial. Fintiv, 2019 WL
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`4743678, at *6. Rather, in addition to the party’s experts, the Court assumes that no more than a
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`few party witnesses—and even fewer third-party witnesses, if any—will testify live at trial. Id.
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`Therefore, long lists of potential party and third-party witnesses do not affect the Court’s
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`analysis for this factor. Id.
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`Google names Mr. Astithas and Mr. Schinazi as party witnesses residing in the NDCA.
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`Def.’s Mot. at 9. Jenam names Mr. Gordon, who resides in Frisco, TX, as its party witness. Pl.’s
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`Resp. at 3. When assessing the convenience of a transfer, a mere shift of inconvenience from one
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`party’s witnesses to the other party’s witnesses is not enough to favor transfer. Tapia v. Dugger,
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`Civil Action No. SA-06-CA-0147-XR, 2006 U.S. Dist. LEXIS 69356, at *14 (W.D. Tex. 2006)
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`(citing Dupre v. Spanier Marine Corp., 810 F.Supp. 823, 826 (S.D. Tex. 1993)). This Court finds
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`that “the inconvenience to Google's party witnesses if the case was not transferred would
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`generally be the same as the inconvenience to [Jenam]'s party witnesses if the case was
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`transferred[.]” Texas et al. v. Google LLC, 2021 WL 2043184 at *4; Seven Networks, 2018 WL
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`4026760, at *12. Therefore, this factor is neutral with respect to party witnesses.
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`
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`Google names Mr. Hamilton, Mr. Krasic, and Mr. Roskind, former Google employees
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`who worked on QUIC related projects, as non-party witnesses present in the NDCA. Def.’s Mot.
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`at 12. Google also mentions that Mr. Zilka, who was involved in the prosecution, drafting of
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`infringement notices, and licensing of the Asserted Patents, is located in the NDCA. Def.’s Reply
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`at 4.
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`
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`Jenam argues that, as the inventor, Mr. Morris is the most important non-party witness.
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`Pl.’s Resp. at 17. Because Mr. Morris lives in Georgia, he would be less inconvenienced by the
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`900 mile trip to Waco, Texas than by a 2,600 mile trip to the NDCA. Id. A transfer would also
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`inconvenience Mr. Caldwell, who prosecuted the Asserted Patents and is located in Dallas,
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`Texas. Id.
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`
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`Google argues that Mr. Morris has not agreed to appear at trial willingly, and thus should
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`be discounted under this factor. Def.’s Reply at 5. However, Jenam makes clear that Mr.
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`Morris’s objections to appearance at trial are due to the COVID-19 pandemic, and that he has
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`agreed to appear at trial when conditions change. Pl.’s Resp. at 3. Moreover, in oral argument,
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`Jenam represented to the Court that Mr. Morris would be willing to testify at trial in Waco. Mot.
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`Hrng. Tr., ECF No. 90 at 20.
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`

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`Case 6:20-cv-00453-ADA Document 95 Filed 07/08/21 Page 15 of 19
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`
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` In the past, this Court has held that “[b]ecause inventors’ testimony is extremely
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`important, inventors are key witnesses and the Court gives greater weight to their convenience.”
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`VLSI Tech. LLC v. Intel Corp., No. 6:19-CV-00254-ADA, 2019 U.S. Dist. LEXIS 227809 at *13
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`(W.D. Tex. 2019) (citing Mid-Continent Cas. Co. v. Petroleum Sols., Inc., 629 F. Supp. 2d 759,
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`762 (S.D. Tex. 2009)). In addition, a convenience analysis under §1404(a) is not a “battle of
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`numbers.” Tapia v. Dugger, 2006 U.S. Dist. LEXIS 69356, at *15 (W.D. Tex. 2006) (citing
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`Mohamed v. Mazda Motor Corp., 90 F. Supp. 2d 757, 777 (E.D. Tex. 2000)). In this case, the
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`Court finds that, because Mr. Morris is the sole inventor of the Asserted Patents, the importance
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`of Mr. Morris’s testimony outweighs the testimony of Google’s former employees.
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`
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`Google also argues that because Mr. Morris and Mr. Caldwell are located outside the
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`WDTX and the NDCA, that they should not be included in the Court’s analysis of this factor.
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`Def.’s Reply at 5 (citing In re Genentech, 566 F.3d 1338, at 1344). However, the Fifth Circuit’s
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`100-mile rule, that “the factor of inconvenience of witnesses increases in direct relationship to
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`the additional distance to be traveled,” is indeed applicable to witnesses who reside outside both
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`forums. Volkswagen I, 371 F.3d at 204–05; Precis Grp., LLC v. TracFone Wireless, Inc., No. 6-
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`20-CV-00303-ADA, 2021 U.S. Dist. LEXIS 45644 at *18–19 (W.D. Tex. 2021) (including
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`witnesses from Arizona and Minnesota in an analysis of convenience between the WDTX and
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`the Southern District of Florida); Phil-Insul Corp. v. Reward Wall Sys., No. 6:11cv53 LED-JDL,
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`2012 U.S. Dist. LEXIS 114493 at *9 (E.D. Tex. 2012) (considering the convenience of witnesses
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`flying from Ontario, Canada in a transfer from Tyler, Texas to Omaha, Nebraska); Rembrandt
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`Wireless Techs., LP v. Apple Inc., No. 2:19-CV-00025-JRG, 2019 U.S. Dist. LEXIS 205694 at
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`*5 (E.D. Tex. 2019) (including sources of proof from California, Pennsylvania, and Florida in its
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`Case 6:20-cv-00453-ADA Document 95 Filed 07/08/21 Page 16 of 19
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`analysis of convenience between the Eastern District of Texas and the Central District of
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`California).
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`Moreover, this case is distinguishable from In Re Apple Inc., where the Federal Circuit
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`held that a venue transfer to the NDCA would not significantly change the inconvenience of
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`witnesses flying to the WDTX from New York. In re Apple Inc., 979 F.3d 1332, 1342 (Fed. Cir.
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`2020). In that case, the Federal Circuit determined that “although a flight from New York to
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`WDTX might take a bit less time than from New York to NDCA, in either instance these
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`individuals will likely have to leave home for an extended period of time and incur travel,
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`lodging, and related costs”. Id. Unlike the witnesses from New York in that case, neither Mr.
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`Caldwell nor Mr. Morris are travelling further than 1,000 miles. Pl.’s Resp. at 3–4. Mr. Caldwell
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`is located in the same state as the WDTX. Pl.’s at 4. Mr. Morris resides in Georgia and intends to
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`drive to trial. Pl.’s Resp. at 3. The additional travel, lodging, and related costs that Mr. Morris
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`will incur with a 2,600-mile drive to the NDCA over a shorter, 900-mile trip to the WDTX
`
`amount to a significant difference of convenience. Therefore, this Court finds it proper to include
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`Mr. Caldwell and Mr. Morris in its analysis of this convenience factor.
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`
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`In summary, for Mr. Hamilton, Mr. Krasic, Mr. Roskind, and Mr. Zilka, the NDCA is a
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`more convenient venue. For other witnesses, including Mr. Morris, the inventor, and Mr.
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`Caldwell, the prosecuting attorney, the WDTX is a more convenient venue. This Court has
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`determined that the importance of Mr. Morris’s testimony outweighs the testimony of Google’s
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`former employees. Accordingly, this factor weighs against transfer.
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`iv. All Other Practical Problems That Make Trial of a Case Easy, Expeditious and Inexpensive
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`The Court finds that this factor is at most neutral. Google argues that in cases where the
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`suit is in its earliest stages, and where there is no co-pending litigation in either forum, this factor
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`Case 6:20-cv-00453-ADA Document 95 Filed 07/08/21 Page 17 of 19
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`is neutral. Def.’s Mot. at 13; Voxer, Inc. v. Facebook, Inc., No. 6:20-CV-00011-ADA, 2020 WL
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`3416012, at *6 (W.D. Tex. June 22, 2020). Jenam argues that this factor weighs against transfer.
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`Pl.’s Resp. at 14. Jenam asserts that a transfer would be prejudicial, because, due to court
`
`congestion in the NDCA, Google would have extra time to develop invalidity and non-
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`infringement theories. Id. However, the Court finds that because this case has not yet heard
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`argument on Markman claim terms, that this case is in such an early stage that transfer would not
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`unduly prejudice Jenam. See Uniloc 2017 LLC v. Apple Inc., No. 6-19-CV-00532-ADA, 2020
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`U.S. Dist. LEXIS 109037 at *46 (W.D. Tex. 2020). Accordingly, the Court finds this factor
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`neutral.
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`B. The Public Interest Factors Weigh Against Transfer.
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`i. Administrative Difficulties Flowing From Court Congestion
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`The relevant inquiry under this factor is actually “[t]he speed with which a case can come
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`to trial and be resolved[.]” In re Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009). A faster
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`average time to trial means a more efficient and economical resolution of the claims at issue.
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`Google argues that because there is not an “appreciable difference” in docket congestion
`
`between the NDCA and the WDTX, that this factor is neutral. Def.’s Mot. at 14. Jenam counters
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`that because the NDCA is becoming more congested as time goes on that this factor weighs
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`against transfer. Pl.’s Resp at 14. Jenam also asserts that this Court’s approach to patent cases,
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`specifically the accelerated scheduling of the Markman hearing, reduces court congestion and
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`administrative difficulties. Id. at 15.
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`If this case is transferred to the NDCA, establishing a new schedule with a new presiding
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`judge would cause greater delay. Pl.’s Resp. at 14. Beca