Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 1 of 20
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`SURFCAST, INC.,
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` Plaintiff,
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`v.
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`MICROSOFT CORPORATION,
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` Defendant.
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`6:21-cv-01018-ADA
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`MEMORANDUM OPINION & ORDER
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`Came on for consideration this date is Defendant Microsoft Corporation’s (“Microsoft” or
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`“Defendant”) Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a) to the Western District
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`of Washington filed on April 22, 2022. ECF No. 33 (the “Motion”). Plaintiff SurfCast, Inc.
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`(“SurfCast” or “Plaintiff”) filed an opposition on August 5, 2022, ECF No. 50, to which Microsoft
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`filed a reply on August 19, 2022. ECF No. 51. After careful consideration of the Motion, the
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`parties’ briefs, and the applicable law, the Court GRANTS Microsoft’s Motion to Transfer Venue
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`Pursuant to 28 U.S.C. § 1404(a).
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`I. BACKGROUND
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`On July 22, 2021, SurfCast filed its complaint against Microsoft, alleging infringement of
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`U.S. Patent Nos. 9,032,317 (the “’317 patent”), 9,043,712 (the “’712 patent”), 9,363,338 (the
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`“’338 patent”), and 9,946,434 (the “’434 patent”) (collectively, the “Asserted Patents”). ECF No.
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`1 (the “Complaint”). SurfCast is a Delaware corporation with its principal place of business in
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`Lincolnville, Maine. Id. ¶ 2. Microsoft is a Washington Corporation with its principal place of
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`business in Redmond, Washington. Id. ¶ 3. According to SurfCast’s Complaint, Microsoft’s
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`products infringe the Asserted Patents by employing a display with a user interface that provides
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`“Live Tiles.” Id. ¶¶ 18, 42. For all of the Asserted Patents, SurfCast identifies the following various
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`products: the Microsoft Surface; the Xbox One; products with the Windows Phone 7 Operating
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`System; products with the Windows RT Operating System; products with the Microsoft Windows
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`8, Microsoft Windows 8 Pro, and Microsoft Windows 8 Enterprise Operating Systems; products
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`with the Microsoft Windows 8.1, Microsoft Windows 8.1 Pro, and Microsoft Windows 8.1
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`Enterprise Operating Systems; and products with the Microsoft Windows 10, Microsoft Windows
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`10 Pro, and Microsoft Windows 10 Enterprise Operating Systems. Id. ¶ 17. The Court will refer
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`to all these products as the “Accused Products.”
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`On April 22, 2022, Microsoft filed its Motion under 28 U.S.C. § 1404(a), seeking transfer
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`to the Western District of Washington (the “WDWA”). ECF No. 33. That Motion is now ripe for
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`judgement.
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`II. LEGAL STANDARD
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`In patent cases, regional circuit law governs motions to transfer under § 1404(a). In re TS
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`Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). Section 1404(a) provides that, “[f]or the
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`convenience of parties and witnesses, in the interest of justice, a district court may transfer any
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`civil action to any other district or division where it might have been brought or to any district or
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`division to which all parties have consented.” “Section 1404(a) is intended to place discretion in
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`the district court to adjudicate motions for transfer according to an ‘individualized, case-by-case
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`consideration of convenience and fairness.’” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29
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`(1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)).
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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 [transfer] destination venue.” In re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th
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`Cir. 2008) (“Volkswagen II”). If the destination venue would have been a proper venue, then “[t]he
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`determination of ‘convenience’ turns on a number of public and private interest factors, none of
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`which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358
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`F.3d 337, 340 (5th Cir. 2004). The private factors include: “(1) the relative ease of access to sources
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`of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the
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`cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a
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`case easy, expeditious[,] and inexpensive.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir.
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`2004) (“Volkswagen I”) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6, 102 S. Ct. 252,
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`70 L. Ed. 2d 419 (1981)). The public factors include: “(1) the administrative difficulties flowing
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`from 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. The weight the
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`Court gives to each of these assorted convenience factors will necessarily vary from case to case.
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`See Burbank Int'l Ltd. v. Gulf Consol. Int'l Inc., 441 F. Supp. 819, 821 (N.D. Tex. 1977). A court
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`should not deny transfer where “only the plaintiff’s choice weighs in favor of denying transfer and
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`where the case has no connection to the transferor forum and virtually all of the events and
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`witnesses regarding the case . . . are in the transferee forum.” In re Radmax, Ltd., 720 F.3d 285,
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`290 (5th Cir. 2013).
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`The moving party has the burden to prove that a case should be transferred for convenience.
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`In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010). The burden that a movant must carry
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`is not that the alternative venue is more convenient, but that it is clearly more convenient.
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`Volkswagen II, 545 F.3d at 314 n.10. While “clearly more convenient” is not explicitly equivalent
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`to “clear and convincing,” the moving party “must show materially more than a mere
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`preponderance of convenience, lest the standard have no real or practical meaning.” Quest NetTech
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`Corp. v. Apple, Inc., No. 2:19-CV-00118-JRG, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27,
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`2019). Yet, the Federal Circuit has clarified that, for a court to hold that a factor favors transfer,
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`the movant need not show an individual factor clearly favors transfer. In re Apple Inc., 979 F.3d
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`1332, 1340 (Fed. Cir. 2020).
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`A.
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`Venue and Jurisdiction in the Transferee Forum
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`III. ANALYSIS
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`The threshold determination in the § 1404(a) analysis is whether this case could initially
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`have been brought in the destination venue—the Western District of Washington. See Monolithic
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`Power Sys., Inc. v. Meraki Integrated Cir. (Shenzhen) Tech., Ltd., No. 6:20-CV-00876-ADA, 2022
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`WL 958384, at *5 (W.D. Tex. Mar. 25, 2022). Microsoft asserts that this case could have been
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`brought in the WDWA because “Microsoft is headquartered in the Western District of
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`Washington.” ECF No. 33 at 4. SurfCast does not dispute this contention. See generally, ECF No.
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`50. This Court finds that venue would have been proper in WDWA had SurfCast filed this case
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`there. Thus, the Court proceeds with its analysis of the private and public interest factors to
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`determine if the WDWA is clearly more convenient than the Western District of Texas (“WDTX”).
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`B.
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`Private Interest Factors
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`1.
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`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., No. 6:18-
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`cv-00372-ADA, 2019 U.S. Dist. LEXIS 171102, at *5 (W.D. Tex. Sep. 10, 2019). This factor
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`relates to the relative—not absolute—ease of access to non-witness evidence. See In re Radmax,
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`720 F.3d at 288; In re Apple, 979 F.3d at 1339. “[T]he movant need not show that all relevant
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`documents are located in the transferee venue to support a conclusion that the location of relevant
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`documents favors transfer.” In re Apple, 979 F.3d at 1340; In re Juniper Networks, 14 F.4th 1313,
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`1321 (Fed. Cir. 2021) (“We have held that the fact that some evidence is stored in places other
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`than either the transferor or the transferee forum does not weigh against transfer.”).
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`The Fifth Circuit has held that, even in the context of electronic documents that can be
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`accessed anywhere on earth, this factor is not superfluous. See Volkswagen II, 545 F.3d at 316; In
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`re Dish Network L.L.C., No. 2021-182, 2021 U.S. App. LEXIS 31759, at *6 (Fed. Cir. Oct. 21,
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`2021). Though having consistently characterized that holding as antiquated in the setting of a
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`modern patent dispute, this Court will continue to analyze this factor with a focus on the location
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`of: physical documents and other evidence; and the hardware storing the relevant electronic
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`evidence. See Def. Distributed v. Bruck, 30 F.4th 414, 434 & n.25 (5th Cir. 2022) (giving weight
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`to the location of servers hosting the electronic documents in dispute); Bluebonnet Internet Media
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`Servs., LLC v. Pandora Media, LLC, No. 6-20-CV-00731-ADA, 2021 U.S. Dist. LEXIS 137400,
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`at *7 & n.1 (W.D. Tex. July 22, 2021). The Federal Circuit has held, however, that it is error not
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`to also consider: “the location of document custodians and location where documents are created
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`and maintained, which may bear on the ease of retrieval.” In re Google LLC, No. 2021-178, 2021
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`U.S. App. LEXIS 33789, at *7 (Fed. Cir. Nov. 15, 2021); see also Def. Distributed, 30 F.4th at
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`434 & n.25 (considering, under this factor, where the “research, design, development,
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`manufacturing, and publishing” of the allegedly offending files occurred). Finally, evidence
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`located at a party’s office that is not a “place of regular business” may be discounted. Activities.
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`In re Google LLC, No. 2022-140, 2022 WL 1613192, at *4 (Fed. Cir. May 23, 2022).
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`Microsoft represents that the “accused products were designed, developed, supported,
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`marketed, and sold from Microsoft’s headquarters in Redmond, Washington and its nearby
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`Bellevue, Washington offices, in the Western District of Washington.” ECF No. 33 at 4 (citing
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`ECF Nos. 33-3 ¶13, 33-2 ¶ 13). It further contends that “evidence — including records relating to
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`research and design of the accused products, source code, and marketing, sales, and financial
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`information for the accused products — is stored in [WDWA].” Id. (citing ECF Nos. 33-3 ¶¶13–
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`14, 33-2 ¶¶ 13–15). Therefore, Microsoft asserts that this factor strongly favors transfer. Id.
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`By contrast, SurfCast concedes that it has no physical sources of proof of its own located
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`inside of the WDTX because they are all located in Washington, D.C. and Maine. ECF 50 at 3. In
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`order to show that this factor weighs against transfer, SurfCast instead relies on the testimony of
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`one Microsoft 30(b)(6) witness who, according to SurfCast, “testified that all technical documents
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`relating to the research and design of the accused Live Tile functionality, including source code,
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`are available electronically.” Id. at 2. Given Microsoft’s offices in WDTX, SurfCast contends that
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`“[b]ecause the relevant Microsoft documentation is accessible via Microsoft’s offices in both the
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`Western District of Washington and the Western District of Texas, the availability of those
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`documents do not support transfer.” Id. at 3.
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`In addition to the electronic availability of Microsoft sources of proof in WDTX, SurfCast
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`also points to various “third-party sources of proof” that “are available only in the Western District
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`of Texas.” Id. First, SurfCast contends that one such source of proof is “Zumobi, Inc. . . . a now-
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`defunct company
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`.” Id. According to SurfCast, “[o]ne of
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`Zumobi’s primary financial backers was Hunt Ventures (a/k/a Hunt Technology Ventures), which
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`was based in Austin.” Id. SurfCast then argues that because “Zumobi was later acquired by ESW
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`Capital LLC in 2019” and “ESW Capital LLC is headquartered in Austin,” the “relevant Zumobi
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`documents will be located in Austin as well.” Id. at 4. In reply, Microsoft first argues that the
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`“Court should ignore this theory because SurfCast concealed it during venue discovery.” ECF No.
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`51 at 2 (citing ECF No. 51-3 at 2; ECF No. 51-5 at 1–8; ECF No. 51-4 at 74:3–75:4). In the
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`alternative, Microsoft argues that this theory weighs in favor of transfer to Washington because
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`“any ZenZui/Zumobi documents are also likely in Seattle, where the companies were
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`headquartered and their former employees and the ‘investor’ identified by Santoro (Opp. Ex. 19 ¶
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`3) reside.” Id. at 3.
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`Second, SurfCast identifies a number of alleged third-party fact witnesses located in or
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`near the WDTX. Id. at 4–5. These third-party fact witnesses identified by SurfCast, however, are
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`merely online journalists who happen to be located in Texas and authored articles “on Microsoft
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`products that include the accused Live Tiles functionality.” Id. In reply, Microsoft argues that
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`“[u]sers and journalists all over the world (including in Washington) have written about Live Tiles,
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`with content substantially identical to what SurfCast cites.” ECF No. 51 at 3 (citing various users
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`and journalists in the WDWA who have written on Live Tiles).
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`Upon review, the relevant sources of proof are located in WDWA, shifting this factor in
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`favor of transfer. Microsoft submitted declarations showing that its relevant documents were
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`created and stored in Washington. See ECF No. 33-2 ¶ 14; ECF No. 33-3 ¶ 14; ECF No. 51-1 at
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`18:2–6, 19:11–20:5. SurfCast’s arguments to the contrary that Microsoft’s documents are equally
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`available in Microsoft’s offices in the WDTX are unavailing because the Federal Circuit has
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`reaffirmed time and again that this factor considers the relative ease of access to sources of proof
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`and, as such, district courts are essentially barred from considering the ease of transmission of
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`electronic documents barring exceptional circumstances. See In re Apple Inc., No. 2022-128, 2022
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`WL 1196768, at *4 (Fed. Cir. Apr. 22, 2022) (first citing In re Apple Inc., No. 2021-181, 2021
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`WL 5291804, at *2 (Fed. Cir. Nov. 15, 2021), and then citing In re Juniper, 14 F.4th at 1321).
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`Without weighing in on the merits of SurfCast’s claims that the Zumobi
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`or whether
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`SurfCast hid this theory during discovery, this Court finds that any such evidence relating to
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`Zumobi and Microsoft is neutral with regards to this factor. Both parties have shown ease of access
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`to sources of proof relating to Zumobi in the WDTX and the WDWA. This Court, however,
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`accords little weight to this theory because SurfCast has not presented any specific documents or
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`physical evidence regarding Zumobi in the WDTX.
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`As to SurfCast’s arguments regarding a number of alleged third-party fact witnesses
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`located in or near the WDTX, the Court finds that this evidence is also neutral with regard to this
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`factor. In particular, SurfCast attempts to manufacture venue convenience by presenting
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`individuals of tenuous relevance in Texas. But SurfCast does not contend that these individuals
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`have relevant documents beyond certain online articles, and the articles’ content has no special
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`connection to the WDTX. Importantly and as noted by Microsoft, users all over the world
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`(including in the WDWA) have written about the accused “Live Tiles” technology and the Accused
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`Products. Accordingly, the alleged third-party witnesses located in or near the WDTX identified
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`by SurfCast do not weigh against transfer.
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`Given that Microsoft has shown that there is easier access to sources of proof in the
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`WDWA, and because SurfCast does not identify any specific evidence in or around this District,
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`this factor favors transfer.
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`2.
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`Availability of Compulsory Process
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`Under the Federal Rules, a court may subpoena a witness to attend trial only (a) “within
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`100 miles of where the person resides, is employed, or regularly transacts business in person”; or
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`(b) “within the state where the person resides, is employed, or regularly transacts business in
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`person, if the person . . . is commanded to attend a trial and would not incur substantial expense.”
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`Fed. R. Civ. P. 45(c)(1)(A), (B)(ii); Gemalto S.A. v. CPI Card Grp. Inc., No. 15-CA-0910, 2015
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`WL 10818740, at *4 (W.D. Tex. Dec. 16, 2015). Under this factor, the Court focuses on non-party
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`witnesses whose attendance may need to be secured by a court order. Fintiv, 2019 U.S. Dist.
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`LEXIS 171102, at *14 (citing Volkswagen II, 545 F.3d at 316). This factor “weigh[s] heavily in
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`favor of transfer when more third-party witnesses reside within the transferee venue than reside in
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`the transferor venue.” In re Apple, Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014). When “there are
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`several witnesses located in the transferee forum and none in the transferor forum,” this factor
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`favors transfer. In re Google, No. 2021-171, 2021 WL 4592280, at *5 (Fed. Cir. Oct. 6, 2021).
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`The Federal Circuit has held that, under Fifth Circuit law, “when there is no indication that
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`a non-party witness is willing, the witness is presumed to be unwilling and considered under the
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`compulsory process factor.” In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir.
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`Sept. 25, 2018); see also In re Hulu, LLC, No. 2021-142, 2021 U.S. App. LEXIS 22723, at *10
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`(Fed. Cir. Aug. 2, 2021) (“[W]here . . . the movant has identified multiple third-party witnesses
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`and shown that they are overwhelmingly located within the subpoena power of only the transferee
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`venue, this factor favors transfer even without a showing of unwillingness for each witness.”).
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`Further, this Court cannot “discount” third-party entities having pertinent information in the
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`transferee venue “just because individual employees were not identified.” In re Apple Inc., No.
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`2021-181, 2021 U.S. App. LEXIS 33788, at *8 (Fed. Cir. Nov. 15, 2021) (quoting In re HP Inc.,
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`826 F. App’x 899, 903 (Fed. Cir. 2020)).
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`Microsoft’s Motion claims that the nonparty witnesses with relevant knowledge are former
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`Microsoft employees and that a majority of them would be subject to the subpoena power of the
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`WDWA. ECF No. 33 at 5–6. Microsoft identifies eighteen total former employees with that have
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`relevant information, with fifteen former employees being subject to the subpoena power of the
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`WDWA. See id. First, Microsoft identifies that “five of the Redmond-based employees SurfCast
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`deposed in the previous litigation have since left Microsoft.” Id. at 5. According to Microsoft,
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`“[t]hree appear to still be in the Seattle area . . . and would be subject to the subpoena power of the
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`Washington Court but not this Court.” Id. Second, Microsoft identifies seven inventors who are
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`named on the ’632 Patent, which is identified in the complaint. Id. at 6. According to Microsoft,
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`all seven of these inventors are former Redmond-based Microsoft employees and that six of them
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`remained near Seattle. Id. Third, Microsoft identifies twelve former employees as being prior art
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`witnesses for Microsoft’s own prior art systems. Id. According to Microsoft, six of these twelve
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`former employees are subject to subpoena power of WDWA. Id. Finally, Microsoft asserts that it
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`is not aware of any other witness for whom the Court’s subpoena power might be relevant. Id.
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`SurfCast identifies two categories of non-parties that reside in or near this district and
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`would require compulsory process. In the first category, SurfCast reiterates a number of the alleged
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`third-party fact witnesses that it identified above in regards to the sources of proof factor above.
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`ECF No. 50 at 6. As discussed above, these third-party fact witnesses identified by SurfCast are
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`merely online journalists who happen to be located in Texas and authored articles “on Microsoft
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`products that include the accused Live Tiles functionality.” Id. at 4–5. SurfCast contends that these
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`third-party fact witnesses have
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`information “relevant
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`to secondary considerations of
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`nonobviousness.” Id. at 7–8.
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`In the second category, SurfCast identifies a number of companies with offices in the
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`WDTX that, according to SurfCast, “are highly likely to possess information relating to the
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`Microsoft’s interactions with third parties to develop products with Live Tiles functionality.” Id.
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`at 6. In particular, SurfCast identifies the following companies: Nvidia Corporation, Qualcomm
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`Inc., Texas Instruments, Inc., Meta Platforms, Inc., Amazon.com, Inc., and eBay, Inc. Id. at 6–7.
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`While Nvidia, Texas Instruments, Meta, Amazon, and eBay have locations in both the WDWA
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`and the WDTX, SurfCast contends that “Qualcomm has a location in Austin, but does not have
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`one in Washington.” Id. at 7 (citing ECF No. 50-1).
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`SurfCast objects to all of Microsoft’s identified third-party witnesses on the ground that
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`they are only Microsoft’s “own former employees” and that Microsoft “provides no detailed
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`information about their knowledge, its relevance to the issues in this case, or why that information
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`cannot be provided by current Microsoft employees.” ECF No. 50 at 9. As for Microsoft’s prior
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`art witnesses, SurfCast contends that “they are generally unlikely to testify at trial” and therefore
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`should not be accorded any weight. See id. (citing In re: Hulu, LLC, 2021 WL 3278194, at *3).
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`Upon consideration of the evidence and arguments, the Court finds that this factor weighs
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`in favor of transfer. Microsoft identified fifteen former employees being subject to the subpoena
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`power of the WDWA. ECF No. 33 at 5–6. The Court finds significant that SurfCast did not dispute
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`that these fifteen former employees were subject to the subpoena power of the WDWA and instead
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`disputed only their relevance to this case. See generally, ECF No. 50. By contrast, SurfCast
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`identified nine third-party witnesses located in or near this district and claimed that “most . . . are
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`subject to this Court’s subpoena power.” Id. at 9. The Court finds SurfCast’s argument that
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`Microsoft did not provide information about their knowledge or relevance to the issues in this case
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`without merit. While the Court is sympathetic to SurfCast’s argument and always appreciates more
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`detail when deciding venue disputes, Microsoft provided sufficient detail about most of its third-
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`party witnesses. The Court finds especially significant the fact that three of Microsoft’s identified
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`third-party witnesses were deposed by SurfCast in a prior litigation involving the same “Live
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`Tiles” technology at issue here. See ECF No. 51 at 3–4 (citing ECF No. 51-2 at 7). The Court also
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`rejects SurfCast’s argument that Microsoft’s prior art witnesses should be given no weight. The
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`case cited by SurfCast rejected such a “categorical rejection” to prior art witnesses. See In re Hulu,
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`LLC, 2021 WL 3278194, at *3.
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`As to the six third-party companies with allegedly relevant information identified by
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`SurfCast, the Court acknowledges the fact that all six of these companies have regional offices in
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`the WDTX. See ECF No. 50 at 6–7 (citing ECF No. 50-14–18). The Court also appreciates the
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`fact that one of the companies, Qualcomm, has an office in the WDTX but does not also have an
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`office in the WDWA. See id. SurfCast, however, fails to identify any evidence that the regional
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`Texas offices of these companies had any involvement with the accused “Live Tiles” technology
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`and fails to identify any potential witness from these companies, let alone any potential witness
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`based in Texas. See id.
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`Upon consideration, the Court will, based on the relevant declarations from Microsoft,
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`accord weight to the Washington-based former Microsoft personnel. The Court is satisfied that
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`each has relevant knowledge and resides in Washington. Because they are based in Washington,
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`the transferee court can compel their testimony at trial—this Court cannot. As to those witnesses
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`whose testimony this Court can compel, the Court finds the individuals put forward by SurfCast
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`are of tenuous relevance to this case. On balance, the individual and companies identified by
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`SurfCast are out weighed by the numerous individuals with relevant knowledge in the WDWA.
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`Given that, this factor weighs heavily in favor of transfer. In re Apple, Inc., 581 F. App’x at 889
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`(“[The compulsory process] factor will weigh heavily in favor of transfer when more third-party
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`witnesses reside within the transferee venue than reside in the transferor venue.”). Accordingly,
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`this factor weighs in favor of transfer.
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`3.
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`Cost of Attendance of Willing Witnesses
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`The Fifth Circuit established the “100-mile rule,” which provides that “[w]hen the distance
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`between an existing venue for trial of a matter and a proposed venue under § 1404(a) is more than
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`100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional
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`distance to be traveled.” Volkswagen I, 371 F.3d at 204–05. Yet the Federal Circuit has refused to
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`apply the rule “rigidly,” such as where it may “result in all identified witnesses having to travel
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`away from their home and work in order to testify in Texas, which would ‘produce results divorced
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`from’ the rule’s underlying rationale.” In re Google LLC, No. 2021-170, 2021 U.S. App. LEXIS
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`29137, at *14 (Fed. Cir. Sept. 27, 2021) (quoting In re TracFone Wireless, Inc., 852 F. App’x 537,
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`539 (Fed. Cir. 2021)). This has led the Federal Circuit to disregard distance altogether in favor of
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`considering travel-time statistics. See, e.g., id. at *12 (“[T]ime is a more important metric than
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`distance.”). Or to simply disregard any difference in convenience between the relevant fora where
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`it is comfortable concluding that a witness would have to travel a significant distance regardless
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`of whether the court transfers the action or not. See In re Apple Inc., 979 F.3d at 1342 (discussing
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`witnesses traveling from New York to either Texas or California venues); In re Genentech, Inc.,
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`566 F.3d 1338, 1344 (Fed. Cir. 2009) (stating that the 100-mile rule should not be, “rigidly,”
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`applied in the context of foreign witnesses); In re Pandora Media, LLC, No. 2021-172, 2021 WL
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`4772805, at *6 (Fed. Cir. Oct. 13, 2021). It has even gone as far as opining that “[t]he comparison
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`between the transferor and transferee forum is not altered by the presence of other witnesses and
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`documents in places outside both forums.” In re Toyota Motor Corp., 747 F.3d 1338, 1340 (Fed.
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`Cir. 2014); In re Google, 2021 U.S. App. LEXIS 29137, at *12.
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`The Court holds that this factor favors transfer because of the number of relevant current
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`and former Microsoft personnel with relevant knowledge in the WDWA. The Court also finds that
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`this factor favors transfer because of the failure of SurfCast to point to any specific individuals in
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`or near the WDTX with more than a tenuous relevance to this case.
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`13
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`Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 14 of 20
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`Microsoft argues regarding three categories of potential witnesses for this case: (1) Current
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`and former Microsoft personnel near the WDWA, (2) witnesses located in or near WDTX, and (3)
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`witnesses located residing outside of both Washington and Texas. ECF No. 33 at 7–9.
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`First, Microsoft argues that “testifying in Seattle is indisputably more convenient than
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`travelling to Waco” for its own “party witnesses located in or near Redmond.” ECF No. 33 at 7.
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`According to Microsoft’s declarations, this would include “25 current employees with relevant
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`knowledge in or near Redmond.” ECF No. 51 at 1. Microsoft also identifies a third-party witness
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`who was deposed in Seattle in a prior case between the two parties and who still lives in the Seattle
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`area. ECF No. 33 at 7.
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`Second, Microsoft contends that “there are no known witnesses located near this Court.”
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`Id. at 7. According to Microsoft, “the relevant work at Microsoft was not done in Texas.” Id. (citing
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`ECF No. 33-3 ¶¶ 13–14; ECF No. 33-2 ¶¶ 13–14).
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`Third, Microsoft contends that the remaining “witnesses residing outside of both
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`Washington and Texas, Seattle generally would be more convenient than Waco.” Id. at 8.
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`According to Microsoft, “[o]ne current Microsoft employee who was deposed in the prior case has
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`relocated to London.” Id. at 7. Further, Microsoft asserts that the “[t]hree named inventors, who
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`were all deposed in the prior case, appear to be in New York City, Denmark, and Belgium.” Id. at
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`7–8 (citing ECF Nos. 1-1, 1-2, 1-3). And Microsoft contends that the “prosecuting attorneys are in
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`South San Francisco, California and Los Altos, California.” Id. at 8. Finally, Microsoft alleges a
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`number of third-party witnesses “who were deposed in the prior case” who “appear to be in
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`Longmont, Colorado; Tampere, Finland; and Logan, Utah.” Id. For all of these witnesses,
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`Microsoft cites the Federal Circuit’s opinion in Google, 2021 WL 4427899 at *4, that “time is a
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`more important metric than distance” in evaluating the relative convenience of two forums. Id. at
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`14
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`Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 15 of 20
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`8. Because “[t]he Seattle-Tacoma International Airport offers direct flights to numerous domestic
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`and international destinations, including London, Helsinki, Amsterdam, New York, San Francisco,
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`San Jose, Denver, and Salt Lake City” and “[t]here is no major airport in the Waco Division of the
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`Western District of Texas,” Microsoft contends that “it often takes less time and hassle for a
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`witness to travel to a different forum, such as Seattle, even when the alternate forum is
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`geographically farther away than Waco.” Id. Thus, Microsoft places a heavy emphasis on whether
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`direct flights are available for the named inventors to the transferee and transferor forums. See id.
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`In response, SurfCast first argues that none of its own witnesses are located in the WDWA.
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`ECF No. 50 at 10. According to SurfCast, “SurfCast’s CEO and one of the inventors of the
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`Asserted Patents resides in Lincolnville, Maine, while the other two inventors live in Brussels,
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`Belgium; and Copenhagen, Denmark.” Id. For the two inventors overseas, SurfCast contends that
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`“travel from Brussels and Copenhagen to either the WDTX or the WDWA would be equivalent.”
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`Id. And for SurfCast’s CEO, SurfCast contends that “the distance from Lincolnville, ME to Waco
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`is approximately 2,055 miles, while the distance from Lincolnville to Seattle is 3,231 miles.” Id.
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`As to its nonparty witnesses, SurfCast contends that the “overwhelming majority of
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`relevant nonparty witnesses are in or near this forum.” Id. Yet again, SurfCast puts forward a
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`number of online journalists of questionable relevance to this case based in or near the WDTX as
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`its “relevant nonparty witnesses.” Id. at 10–11. SurfCast contends, without citing any authority,
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`that these nonparty witnesses “are accorded more weight in the convenience analysis, the witness
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`inconvenience factor weighs heavily against transfer.” Id. at 11. Finally, SurfCast addresses
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`Microsoft’s former employees. Id. SurfCast contends that Microsoft’s former employees should
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`be “‘discounted or ignored entirely’ absent specific information about their involvement in the
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`accused products.” Id. (emphasis in original).
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`15
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`Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 16 of 20
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`Here, the Court holds that this factor favors transfer. As this Court did in Interactive
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`Graphic Sols. LLC v. Microsoft Corp., No. 6:21-CV-00462-ADA, 2022 WL 1314462, at *4 (W.D.
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`Tex. Apr. 20, 2022), the Court quickly disposes of two prevalent arguments in Plaintiff and
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`Defendant's briefing. First, contrary to SurfCast’s argument, the Federal Circuit has made clear
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`that party witnesses are not to be afforded less weight. In re Juniper Networks, 14 F.4th 1313,
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`1319 (Fed. Cir. 2021); see also id. Seco