Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 1 of 32
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
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`CIVIL ACTION NO. 6:20-CV-810-ADA
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`Plaintiff,
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` v.
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`10TALES, INC.,
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.
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`
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`Defendant.
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`DEFENDANTS’ NOTICE OF SUPPLEMENTAL
`INFORMATION REGARDING THEIR REPLY IN SUPPORT
`OF THEIR MOTION TO TRANSFER UNDER 28 U.S.C. § 1404
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`On April 28, 2021, Defendants TikTok, Inc., TikTok Pte. Ltd., ByteDance Ltd., and
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`ByteDance Inc. (“Defendants”) filed their Reply in Support of their Motion to Transfer Under 28
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`U.S.C. § 1404 ( “Reply”). Due to time constraints resulting, in part, from taking the deposition
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`of Plaintiff 10Tales, Inc.’s corporate representative on April 26, 2021, some exhibits included
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`with Defendants’ Reply were incomplete. Defendants file this Notice of Supplemental
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`Information to complete the exhibits, as explained in the following paragraphs:
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`1.
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`Attached as Exhibit A is a copy of the final transcript from the deposition of Mr.
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`David J. Russek taken on April 26, 2021, the rough, unedited, and uncertified transcript of which
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`was attached as Exhibit 4 to the Declaration of Ericka J. Schulz in Support of Defendants’ Reply
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`in Support of Their Motion to Transfer Under 28 U.S.C. § 1404 (the “Schulz Declaration”). ECF
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`No. 75-4, ¶ 5; ECF No. 75-8. Highlighting has been added to the final transcript to match the
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`highlighting that was in the rough transcript initially submitted with the Schulz Declaration. Mr.
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`Russek’s deadline by which to submit an errata for the final transcript has not yet passed.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`
`CIVIL ACTION NO. 6:20-CV-810-ADA
`
`
`
`
`
`
`
`
`Plaintiff,
`
` v.
`
`10TALES, INC.,
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`
`
`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.
`
`
`
`
`Defendant.
`
`
`DEFENDANTS’ NOTICE OF SUPPLEMENTAL
`INFORMATION REGARDING THEIR REPLY IN SUPPORT
`OF THEIR MOTION TO TRANSFER UNDER 28 U.S.C. § 1404
`
`On April 28, 2021, Defendants TikTok, Inc., TikTok Pte. Ltd., ByteDance Ltd., and
`
`ByteDance Inc. (“Defendants”) filed their Reply in Support of their Motion to Transfer Under 28
`
`U.S.C. § 1404 ( “Reply”). Due to time constraints resulting, in part, from taking the deposition
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`of Plaintiff 10Tales, Inc.’s corporate representative on April 26, 2021, some exhibits included
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`with Defendants’ Reply were incomplete. Defendants file this Notice of Supplemental
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`Information to complete the exhibits, as explained in the following paragraphs:
`
`1.
`
`Attached as Exhibit A is a copy of the final transcript from the deposition of Mr.
`
`David J. Russek taken on April 26, 2021, the rough, unedited, and uncertified transcript of which
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`was attached as Exhibit 4 to the Declaration of Ericka J. Schulz in Support of Defendants’ Reply
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`in Support of Their Motion to Transfer Under 28 U.S.C. § 1404 (the “Schulz Declaration”). ECF
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`No. 75-4, ¶ 5; ECF No. 75-8. Highlighting has been added to the final transcript to match the
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`highlighting that was in the rough transcript initially submitted with the Schulz Declaration. Mr.
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`Russek’s deadline by which to submit an errata for the final transcript has not yet passed.
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 2 of 32
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`2.
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`Attached as Exhibit B is a redline version of Defendants’ Reply that replaces the
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`citations to the rough Russek transcript in Defendants’ Reply with citations to the final Russek
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`transcript. Exhibit C is a clean version of the same.
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`3.
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`Attached as Exhibit D is a copy of Defendants’ verification of
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`.
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`Dated: May 5, 2021
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`By: /s/ Ericka J. Schulz
`Stephen S. Korniczky (admitted pro hac vice)
`Martin R. Bader (admitted pro hac vice)
`Ericka J. Schulz (admitted pro hac vice)
`James Young Hurt, admitted (CA Bar No. 312390)
`Eric K. Gill (admitted pro hac vice)
`Michael J. Hopkins (admitted pro hac vice)
`Krysti Papadopoulos (admitted pro hac vice)
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`12275 El Camino Real, Suite 100
`San Diego, CA. 92130
`T: 858.720.8900
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`jhurt@sheppardmullin.com
`egill@sheppardmullin.com
`mhopkins@sheppardmullin.com
`kpapadopoulos@sheppardmullin.com
`
`Jason Mueller (State Bar No. 24047571)
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`2200 Ross Avenue, 24th Floor
`Dallas, TX 75201
`T: 469.391.7402
`jmueller@sheppardmullin.com
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`Attorneys for TikTok Inc., TikTok Pte Ltd., ByteDance Ltd.
`and ByteDance Inc.
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 3 of 32
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a) on May 5, 2021, and was served via CM/ECF on all
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`counsel who are deemed to have consented to electronic service. Local Rule CV-5(b)(1).
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`/s/ Erica J. Schulz
`Ericka J. Schulz
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 4 of 32
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`EXHIBIT A
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`Filed Under Seal
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 5 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 5 of 32
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`EXHIBIT B
`EXHIBIT B
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 6 of 32
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
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`CIVIL ACTION NO. 6:20-CV-810-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANTS’ REPLY IN SUPPORT OF ITS
`MOTION TO TRANSFER UNDER 28 U.S.C. § 1404
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`
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`10TALES, INC.,
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`
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`
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`Plaintiff,
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` v.
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`Defendants.
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 7 of 32
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`
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`This case is analogous to In re TracFone Wireless and In re Apple. In re TracFone
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`Wireless, Inc., No. 2021-136, 2021 WL 1546036, *2-3 (Fed. Cir. Apr. 20, 2021); In re Apple
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`Inc., 979 F.3d 1332, 1339-47 (Fed. Cir. 2020). In this case, the Parties’ extensive venue-based
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`discovery proves that “several of [Defendants’] likely employee witnesses resid[e] in the
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`transferee venue,” and not “a single potential witness [is] within or even close to Waco, Texas.”
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`TracFone, 2021 WL 1546036, at *2-3. Moreover, just as in TracFone and Apple, all other
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`convenience factors favor transfer or are neutral. Defendants’
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` office and
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` is in N.D. Cal. while 10Tales’ lack of any connection to Texas whatsoever.
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`Thus, venue-transfer is warranted.
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`I.
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`CORRECTING THE RELEVANT VENUE RECORD
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`Unable to win on the facts, 10Tales has resorted to mischaracterizing the evidence. First,
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`10Tales’ unsupported statement that Defendants’ businesses are interwoven ignores that they
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`comply with corporate formalities and, in any event, would not affect the convenience analysis in
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`this case. See Opp. at 1 n.3; see also Supplemental Declaration of Nicola Raghavan (“Supp.
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`Raghavan Decl.”), ¶¶9-10
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` The record shows that the epicenter of this case is the N.D. Cal. Defendants
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`confirmed this in its responses to 10Tales’ 15 interrogatories, 71 document requests, and 39
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`deposition topics (requiring
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` Rule 30(b)(6) designated deponents). These responses included
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` Defendants have
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 8 of 32
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`<1. 96. Exs. 1-2.
`Second,Po Defendants’ designated witness with respect to technical topics,
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`Declaration of Ericka Schulz (“Schulz Decl.”’), Ex. 1,Po
`Responding to 10Tales’ topics,
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`a. Thus, given fil testimony and thea. there was no reason for ij
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`1
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`Nonetheless, even with Defendants’ thorough document production and testimony,
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`10Tales distorts and mischaracterizesPe testimony to argue Defendants’ Mountain
`Viewoffice is| and the Austin officeTTT Opp. at 1-4. Taking
`a testimony out of context, 10Tales cites ie
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`specifically asked about the Texasoffice,PO
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`10Tales ignores that when
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` did corroborate
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`' Contrary to 10Tales’ false assertions,
`in
`deposition,
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`declaration statements
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 9 of 32
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`. In an attempt to avoid creating a full and truthful
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`record, 10Tales canceled
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` deposition, i.e., the witness designated on
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` on the eve of
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` deposition. Schulz Decl., Ex. 1,
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`.
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`Third, unlike Defendants, 10Tales’ Founder, CEO, and only employee David Russek, has
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`not been forthcoming with information.
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` Moreover, 10Tales cannot explain why documents it filed with the USPTO,
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`California and Pennsylvania Secretaries of State, and SEC identifying an N.D. Cal. office as its
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`principal place of business in Menlo Park have never been corrected, nor produced in this case.
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`Schulz Dec., Exs. 5-11;
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`however, is evade simple questions, such as
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`revisit this topic in fact discovery.
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`II.
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`ANALYSIS
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` What Mr. Russek does do,
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` Defendants will
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`A.
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`Relative Ease of Access to Sources of Proof
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`The “Relevant” documents in this case relate to the TikTok application, its databases, and
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 10 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 10 of 32
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`the “recommendationsystem” ocdin
`Po Hard copy notes or documents generated and stored
`locally by Messrs. Hu, Wu, and Wan’s teamswill be located in N.D.Cal. Ps
`ma. Therefore, “[k]eeping this case in the [Western] District of Texas will impose a
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`significant and unnecessary burden on [Defendants] to transport documents that would not be
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`incurred if the case were to proceed in the Northern District of California.” Jn re Genentech,
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`Inc., 566 F.3d 1338, 1346 (Fed. Cir. 2009).
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`Further, 10Tales has failed to identify a single source of proof in W.D. Tex.? Todetract
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`from its failure, 10Tales arguesSn
`|| This ignores the fact that the teams accessing these documents in the U.S.are in
`ee
`eee
`a. Therefore, this factor favors transfer.
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`B.
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`Availability of Compulsory Process to Secure Witness Attendance
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`Based on 10Tales’ complaint and infringement contentions, non-party witnesses are
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`located in N.D. Cal.—and 10Tales cannot walk away from its allegations to avoid transfer. The
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`Amended Complaint, although vague and incomplete, claims that Defendants’ purported
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`“collect[ion of] user attribute information from” “Facebook, Twitter, Instagram, or Google,” is
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`“significant” to this case. Dkt. 28, §/60 63; see also Schulz Decl., Ex. 12a. As aresult,
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` 10Tales’ arguments regarding “party witnesses” (Opp. at 10-11) bare no weight because
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`“witnesses are not sources of proof to be analyzed underthis factor.” See Precis Grp., LLC v.
`TracFone Wireless, Inc., No. 6-20-CV-00303-ADA, 2021 WL 932046, at *5 (W.D. Tex. Mar.
`11, 2021) (vacated on other grounds).
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 11 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 11 of 32
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`10Tales has put witnesses at these four companiesdirectly at issue. Moreover, 10Tales’
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`software, purportedly covered by the 030 patent, likewise deals with the similar, if not the same,
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`Po Giventhat all ofthese companies are based in N.D. Cal., and
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`Po this factor favors transfer. Jn re Apple, Inc., 581 F.App'x.
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`886, 889 (Fed. Cir. 2014) (This factor “weigh[s] heavily in favor of transfer when more third-
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`party witnesses reside within the transferee venue than reside in the transferor venue.’’).
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`Moreover, 10Tales’ infringementallegations do notrelate to distribution technology, and
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`nonetheless,Sn Opp.at 1, 3-4, 14-15. To the
`extent distribution is at issue in this case, Google and Apple employees located in N.D.Cal. ||
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`PO P| confirms this when Bitestified the
`ee
`ee
`In aditon,10Tol
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`4 10Tales’ argumentthat
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`Opp. at 12 n.16. 10Tales’ accusations question what information
`social media companies provide to Defendants, not what they receive, and is relevant to user
`infringement. Once 10Tales provides sufficient infringementallegations identifying the
`information these social media companies provide relevant to the asserted claim, Defendants will
`investigate which personnel have relevant information at these social media companies.
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 12 of 32
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` Id.
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` Defendants are entitled to
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`explore this relationship. Thus, it is likely
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`In sum, neither party has identified a single relevant non-party witness in Texas,5 but
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`both have identified a plethora of potential non-party witnesses in N.D. Cal. Although
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`Defendants cannot identify specific third party witnesses at this time, such witnesses can be
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`identified once discovery is open. Therefore, this factor favors transfer.
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`C.
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`Cost of Attendance for Willing Witnesses
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`The majority of party witnesses identified who may potentially testify at trial are located
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`in N.D. Cal. It is undoubtedly far more reasonable and economical for these witnesses to refrain
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`from flying to Texas, renting a car and hotel, and being away from their families, teams, and
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`work to attend trial. Further, to the extent any non-party witnesses identified at the N.D. Cal.
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`companies discussed above are willing to attend trial, it would also be more convenient for them
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`if this case is transferred. Therefore, this “single most important factor in the transfer analysis”
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`weighs in favor of transfer. See Precis Grp., LLC v. TracFone Wireless, Inc., No. 6-20-CV-
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`00303-ADA, 2021 WL 932046, at *7 (W.D. Tex. Mar. 11, 2021).
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` 10Tales interrogated Defendants’ witnesses on
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`of the allegedly most important
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`technical topics related to the ‘030 patent.
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` identified
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` with respect to these topics. Section II supra. Thus,
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`5 The owner of a prior art reference cited in Defendants’ invalidity contentions is not a potential
`witness, nor relevant to this case. Opp. at 8 n.10.
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 13 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 13 of 32
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`P| are the relevant witnesses likely to testify to the technical aspects of this case at
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`trial—and 10Tales cannot dictate otherwise.© Nor can 10Tales demand to knowtheidentity of
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`all persons knowledgeable about every technical documentto call them at trial. See Opp. at 5.
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`Likewise, 10Tales cannot unilaterally dictatetha
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`is the most knowledgeable about Defendants’ costs, revenue and profits related to damages.
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`Indeed,Pe in Mountain Viewis far more qualified to
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`testify regarding the Defendants’ revenue, costs, and profits related to the damages analysis.
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`ES
`such,f would be the most relevant witnessto testify aboutiy
`| a memberofthe salestean
`Id. Moreover, 10Tales’ scattershot identification ofP| witnesses does not pass muster.’
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`This Court has said “longlists of potential party witnesses do not impactits analysis.” Precis
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`Grp., No. 6-20-CV-00303-ADA, 2021 WL 932046,at *7.
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`Asto “distribution” of the TikTok application—a topic 10Tales arguesis relevantto this
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`case (Opp.at 1, 3, 4, 14)—the only Defendant employees identified by either party
`BE<2
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`a A
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`sto thePo 10Tales misrepresentsPo
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`opting for expert testimony in
`© 10Tales speculates that
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`andis in
`a stead. Opp. at 11 n.14. Notso.
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`the best position to testify about that technology regardless of whenMMstarted at the company.
`Experts do not provide fact testumony, but can provide opinion based on testimony.
`7 10Tales’ reference iii should be ignored, as Defendants did notidentify
`as
`knowledgeable about revenue, profits or costs. Moreover, 10Tales unilaterally canceled
`deposition the night before, and cannot show anyone from Austin is relevant to this case.
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 14 of 32
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` testimony.
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` This team is not responsible for
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` Id. Even so, 10Tales does not
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`“identify the relevancy and materiality of the information” that may be provided by this team,
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`and which is not located in California or Texas to be useful in this analysis. See Diem LLC v.
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`BigCommerce, Inc., No. 6:17-CV-00186-JRG, 2017 WL 6729907, at *3–4 (E.D. Tex. Dec. 28,
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`2017) (citation omitted).
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`10Tales identifies a single party witness it may call at trial, Mr. Russek, the ‘030 patent
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`inventor, who is located in Pennsylvania. Opp. at 5, 10. Applying the Fifth Circuit’s “100-mile
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`rule,” 10Tales claims W.D. Tex. is more convenient for Mr. Russek given the additional miles
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`necessary to get to N.D. Cal. However, the Federal Circuit has repeatedly warned against this
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`type formulaic application of the 100-mile rule. See, e.g., In re: TracFone Wireless, 2021 WL
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`1546036, at *2–3 (collecting cases). Under a proper analysis of this factor, when traveling from
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`Pennsylvania, Mr. Russek “would only be slightly more inconvenienced by having to travel to
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`California than to Texas.” Id. at *3 (citation omitted). In addition,
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` who could testify as
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`to the value of the patented technology.
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`As explained above (§ II.B), the only relevant non-party witnesses identified are located
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`in N.D. Cal. Therefore, to the extent any of those non-party witnesses are willing to attend trial,
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`transfer to N.D. Cal. will be significantly more convenient.
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`In sum, there are (1) at least
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`witnesses that may potentially testify at trial in N.D.
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`Cal. for whom transfer would make testifying significantly more convenient, (2) no witnesses in
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 15 of 32
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`W.D. Texas, and (3) one potential witness on the east coast, for whom transfer would be only
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`slightly more inconvenient—if at all. Therefore, this factor weighs in favor of transfer.
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`D.
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`Court Congestion
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`The time it takes the court to progress to trial weighs in favor of, or is at worst, neutral to
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`transfer. As stated in Defendants’ opening brief, the Federal Circuit recently determined that
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`time to trial is shorter in N.D. Cal. See In re Apple, 979 F.3d 1343-44 (noting comparable times
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`to trial for civil cases and that NDCA has historically had a shorter time to trial for patent cases).
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`Further, a “district court’s decision to give undue priority to the merits of a case over a party’s
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`transfer motion should not be counted against that party in the venue transfer analysis.” Id. at
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`1333. With California opening back up in June, N.D. Cal. will be able to accommodate a jury
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`trial, and any speculation otherwise is what makes “this factor [] the most speculative, and [it]
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`cannot outweigh other factors.” Precis Group, 2021 WL 932046, at *8. Thus, this factor weighs
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`in favor of transfer.
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`E.
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`Local Interest
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`The evidence proves that N.D. Cal. is
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` in the United States, giving it a greater local interest to this case.
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` 10Tales’ only attempt to connect Defendants to Texas is based on a mischaracterization of
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` testimony.
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` testified regarding the Texas office that
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` 10Tales cannot use its own
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`twist on the record to argue otherwise. Unsurprisingly, 10Tales has no local interest or
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`connection whatsoever to W.D. Tex. Thus, the citizens of Waco will need to endure a several-
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`weeks long jury trial for a case that has no effect on its community. Because Defendants’
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 16 of 32
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`L
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` is in N.D. Cal. and any presence in W.D. Tex. is “general” and
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`“untethered to the lawsuit,” this factor favors transfer. In re Apple, 979 F.3d at 1345 (favoring
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`transfer to where the “accused products were designed [and] developed”).
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`III. CONCLUSION
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`Because each of the transfer factors weighs in favor of, or is neutral to, transfer,
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`Defendants respectfully requests that this case be transferred to N.D. Cal.
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`Dated: April 28, 2021
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`By: /s/ Stephen S. Korniczky
`Stephen S. Korniczky (admitted pro hac vice)
`Martin R. Bader (admitted pro hac vice)
`Ericka J. Schulz (admitted pro hac vice)
`James Young Hurt admitted (CA Bar No. 312390)
`Eric K. Gill (admitted pro hac vice)
`Michael J. Hopkins (admitted pro hac vice)
`Krysti Papadopoulos (admitted pro hac vice)
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA. 92130
`T: 858.720.8900
`F: 858.509.3691
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`jhurt@sheppardmullin.com
`egill@sheppardmullin.com
`mhopkins@sheppardmullin.com
`kpapadopoulos@sheppardmullin.com
`
`
`
`Jason Mueller (State Bar No. 24047571)
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`2200 Ross Avenue, 24th Floor
`Dallas, TX 75201
`T: 469.391.7402
`F: 469.391.7550
`jmueller@sheppardmullin.com
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 17 of 32
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`Attorneys for Defendants ByteDance Ltd., ByteDance Inc.,
`TikTok Inc., and TikTok Pte. Ltd.
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 18 of 32
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 28, 2021, a true and correct copy of the foregoing
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`DEFENDANTS’ REPLY IN SUPPORT OF ITS MOTION TO TRANSFER UNDER 28 U.S.C.
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`§ 1404 was served on counsel of record in this case by electronic mail.
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`/s/ Stephen S. Korniczky
`Stephen S. Korniczky
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 19 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 19 of 32
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`EXHIBIT C
`EXHIBIT C
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 20 of 32
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CIVIL ACTION NO. 6:20-CV-810-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANTS’ REPLY IN SUPPORT OF ITS
`MOTION TO TRANSFER UNDER 28 U.S.C. § 1404
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`10TALES, INC.,
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`Plaintiff,
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` v.
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`Defendants.
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 21 of 32
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`This case is analogous to In re TracFone Wireless and In re Apple. In re TracFone
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`Wireless, Inc., No. 2021-136, 2021 WL 1546036, *2-3 (Fed. Cir. Apr. 20, 2021); In re Apple
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`Inc., 979 F.3d 1332, 1339-47 (Fed. Cir. 2020). In this case, the Parties’ extensive venue-based
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`discovery proves that “several of [Defendants’] likely employee witnesses resid[e] in the
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`transferee venue,” and not “a single potential witness [is] within or even close to Waco, Texas.”
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`TracFone, 2021 WL 1546036, at *2-3. Moreover, just as in TracFone and Apple, all other
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`convenience factors favor transfer or are neutral. Defendants’
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` U.S. office and
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` is in N.D. Cal. while 10Tales’ lack of any connection to Texas whatsoever.
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`Thus, venue-transfer is warranted.
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`I.
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`CORRECTING THE RELEVANT VENUE RECORD
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`Unable to win on the facts, 10Tales has resorted to mischaracterizing the evidence. First,
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`10Tales’ unsupported statement that Defendants’ businesses are interwoven ignores that they
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`comply with corporate formalities and, in any event, would not affect the convenience analysis in
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`this case. See Opp. at 1 n.3; see also Supplemental Declaration of Nicola Raghavan (“Supp.
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`Raghavan Decl.”), ¶¶9-10
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` The record shows that the epicenter of this case is the N.D. Cal. Defendants
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`confirmed this in its responses to 10Tales’ 15 interrogatories, 71 document requests, and 39
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`deposition topics (requiring
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` Rule 30(b)(6) designated deponents). These responses included
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` Defendants have
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 22 of 32
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`Second,Po Defendants’ designated witness with respect to technical topics,
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`Declaration of Ericka Schulz (“Schulz Decl.”’), Ex. 1,Po
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`a. Thus, given fil testimony and thea. there was no reason for ij
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`1
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`Nonetheless, even with Defendants’ thorough document production and testimony,
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`10Tales distorts and mischaracterizesPe testimony to argue Defendants’ Mountain
`Viewoffice is| and the Austin officeTTT Opp. at 1-4. Taking
`a testimony out of context, 10Tales cites ie
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`specifically asked about the Texasoffice,PO
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`10Tales ignores that when
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` did corroborate
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`' Contrary to 10Tales’ false assertions,
`in
`deposition,
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`declaration statements
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 23 of 32
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`. In an attempt to avoid creating a full and truthful
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`record, 10Tales canceled
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` deposition, i.e., the witness designated on
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` on the eve of
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` deposition. Schulz Decl., Ex. 1,
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`.
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`Third, unlike Defendants, 10Tales’ Founder, CEO, and only employee David Russek, has
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`not been forthcoming with information.
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` Moreover, 10Tales cannot explain why documents it filed with the USPTO, California and
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`Pennsylvania Secretaries of State, and SEC identifying an N.D. Cal. office as its principal place
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`of business in Menlo Park have never been corrected, nor produced in this case. Schulz Dec.,
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`Exs. 5-11;
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`Russek does do, however, is evade simple questions, such as
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` What Mr.
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`Defendants will revisit this topic in fact discovery.
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`II.
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`ANALYSIS
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`A.
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`Relative Ease of Access to Sources of Proof
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`The “Relevant” documents in this case relate to the TikTok application, its databases, and
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`the “recommendation system” located in
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` Hard copy notes or documents generated and stored
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 24 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 24 of 32
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`locally |)iitteamswill be located in N.D.Cal. PF
`| Therefore, “[k]eeping this case in the [Western] District of Texas will impose a
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`significant and unnecessary burden on [Defendants] to transport documents that would not be
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`incurred if the case were to proceed in the Northern District of California.” Jn re Genentech,
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`Inc., 566 F.3d 1338, 1346 (Fed. Cir. 2009).
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`Further, 10Taleshas failed to identify a single source of proof in W.D. Tex.’ Todetract
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`from its failure, 10Tales argues[gl
`|| This ignores the fact that the teams accessing these documents in the U.S.are in
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`ee
`P| Therefore, this factor favors transfer.
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`B.
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`Availability of Compulsory Process to Secure Witness Attendance
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`Based on 10Tales’ complaint and infringement contentions, non-party witnesses are
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`located in N.D. Cal—and 10Tales cannot walk away from its allegations to avoid transfer. The
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`Amended Complaint, although vague and incomplete, claims that Defendants’ purported
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`“collect[ion of] user attribute information from” “Facebook, Twitter, Instagram, or Google,” is
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`“significant” to this case. Dkt. 28, §§]60 63; see also Schulz Decl., Ex. 12a. As a result,
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`10Tales has put witnesses at these four companiesdirectly at issue. Moreover, 10Tales’
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`software, purportedly covered by the 030 patent, likewise deals with the similar, if not the same,
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` 10Tales’ arguments regarding “party witnesses” (Opp. at 10-11) bare no weight because
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`“witnesses are not sources of proof to be analyzed underthis factor.” See Precis Grp., LLC v.
`TracFone Wireless, Inc., No. 6-20-CV-00303-ADA, 2021 WL 932046, at *5 (W.D. Tex. Mar.
`11, 2021) (vacated on other grounds).
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`-4-
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 25 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 25 of 32
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`social networkcompanies,
`Po Giventhat all ofthese companies are based in N.D. Cal., and
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`Po this factor favors transfer. Jn re Apple, Inc., 581
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`F.App'x. 886, 889 (Fed. Cir. 2014) (This factor “weigh[s] heavily in favorof transfer when more
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`third-party witnesses reside within the transferee venue than reside in the transferor venue.”).
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`Moreover, 10Tales’ infringementallegations do notrelate to distribution technology, and
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`extent distribution is at issue in this case, Google and Apple employees located in N.D.Cal. a
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`A RN2 isen ff tesiiea te
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`in advon, 10Tales
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`SS:
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`Po Defendantsare entitled to explore this relationship.
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`4 10Tales’ argument
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`Opp. at 12 n.16. 10Tales’ accusations question what information
`social media companies provide to Defendants, not what they receive, and is relevant to user
`infringement. Once 10Tales providessufficient infringementallegations identifying the
`information these social media companies provide relevant to the asserted claim, Defendants will
`investigate which personnel have relevant information at these social media companies.
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`-5-
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 26 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 26 of 32
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`Ths,iii
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`In sum,neither party hasidentified a single relevant non-party witness in Texas,but
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`both have identified a plethora of potential non-party witnesses in N.D. Cal. Although
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`Defendants cannot identify specific third party witnessesat this time, such witnesses can be
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`identified once discovery is open. Therefore, this factor favors transfer.
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`Cc.
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`Cost of Attendance for Willing Witnesses
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`The majority of party witnesses identified who may potentially testify at trial are located
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`in N.D. Cal. It is undoubtedly far more reasonable and economical for these witnesses to refrain
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`from flying to Texas, renting a car and hotel, and being away from their families, teams, and
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`workto attend trial. Further, to the extent any non-party witnesses identified at the N.D. Cal.
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`companies discussed above are willing to attend trial, it would also be more convenient for them
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`if this case is transferred. Therefore, this “single most important factor in the transfer analysis”
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`weighs in favorof transfer. See Precis Grp., LLC v. TracFone Wireless, Inc., No. 6-20-CV-
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`00303-ADA, 2021 WL 932046,at *7 (W.D. Tex. Mar. 11, 2021).
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`10Tales interrogated Defendants’ witnesses on or the allegedly most important
`technical topics related to the ‘030 patent. Pp Po identifiedP|
`PF with respect to these topics. Section II supra. Thus,Po
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`po are the relevant witnesseslikely to testify to the technical aspects of this case at
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`trial—and 10Tales cannot dictate otherwise.© Nor can 10Tales demandto knowtheidentity of
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`° The ownerofa priorart reference cited in Defendants’ invalidity contentionsis nota potential
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`witness, nor relevant to this case.
`at 8n.10.
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`© 10Tales speculates that
`opting for expert testimony in
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`a stead. Opp. at 11 n.14. Notso.
`andis in
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 27 of 32
`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 27 of 32
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`all persons knowledgeable about every technical documentto call them at trial. See Opp. at 5.
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`Likewise, 10Tales cannot unilaterally dictate thi
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`is the most knowledgeable about Defendants’ costs, revenue and profits related to damages.
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`Indeed,Pe in Mountain Viewis far more qualified to
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`testify regarding the Defendants’ revenue, costs, and profits related to the damages analysis.
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`re
`such,|| would be the most relevant witnessto testify about[i
`PS a memberofthe sales eonie.
`Id. Moreover, 10Tales’ scattershot identification ofp witnesses does not pass muster.’
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`This Court has said “long lists of potential party witnesses do not impactits analysis.” Precis
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`Grp., No. 6-20-CV-00303-ADA, 2021 WL 932046,at *7.
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`Asto “distribution” of the TikTok application—a topic 10Tales arguesis relevantto this
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`case (Opp.at 1, 3, 4, 14)—the only Defendant employees identified by either party
`SS15:
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`a A
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`sto thePo 10Tales misrepresentsPo
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`ee This team is not responsible fori
`Pe Id. Even so, 10Tales does not
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`“identify the relevancy and materiality of the information” that may be provided bythis team,
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`7
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`>
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`.
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`the best position to testify about that technology regardless of whenfj started at the company.
`Experts do not provide fact testumony, but can provide opinion based on testimony.
`10Tales’ reference topo should be ignored, as Defendants did notidentify
`as
`knowledgeable about revenue, profits or costs. Moreover, 10Tales unilaterally canceled
`deposition the night before, and cannot show anyone from Austin is relevant to this case.
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`}
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`=
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`ee
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`-7-
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`Case 6:20-cv-00810-ADA Document 85 Filed 05/20/21 Page 28 of 32
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`and which is not located in California or Texas to be useful in this analysis. See Diem LLC v.
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`BigCommerce, Inc., No. 6:17-CV-00186-JRG, 2017 WL 6729907, at *3–4 (E.D. Tex. Dec. 28,
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`2017) (citation omitted).
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`10Tales identifies a single party witness it may call at trial, Mr. Russek, the ‘030 patent
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`inventor, who is located in Pennsylvania. Opp. at 5, 10. Applying the Fifth Circuit’s “100-mile
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`rule,” 10Tales claims W.D. Tex. is more convenient for Mr. Russek given the additional miles
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`necessary to get to N.D. Cal. However, the Federal Circuit has repeatedly warned against this
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`type formulaic application of the 100-mile rule. See, e.g., In re: TracFone Wireless, 2021 WL
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`1546036, at *2–3 (collecting cases). Under a proper analysis of this factor, when traveling from
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`Pennsylvania, Mr. Russek “would only be slightly more inconvenienced by having to travel to
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`California than to Texas.” Id. at *3 (citation omitted). In addition,
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`, who could testify as
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`to the value of the patented technology.
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`.
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`As explained above (§ II.B), the only relevant non-party witnesses identified are located
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`in N.D. Cal. Therefore, to the extent any of those non-party witnesses are willing to attend trial,
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`transfer to N.D. Cal. will be significantly more convenient.
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`In sum, there are (1) at least
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` witnesses that may potentially testify at trial in N.D.
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`Cal. for whom transfer would make testifying significantly more convenient, (2) no witnesses in
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`W.D. Texas, and (3) one potential witness on the east coast, for whom transfer would be only
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`slightly more inconvenient—if at all. Therefore, this factor weighs in favor of transfer.
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`D.
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`Court Congestion
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`The time it takes the court to progress to trial weighs in favor of, or is at worst, neutral to
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`transfer. As stated in Defendants’ opening brief,
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