Core Wireless Licensing S.a.r.l. v. LG Electronics, Inc. et al
MEMORANDUM ORDER - denying 55 Motion to Transfer. Signed by Magistrate Judge Roy S. Payne on 8/31/2015. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
CORE WIRELESS LICENSING S.A.R.L.
LG ELECTRONICS INC. ET AL.
Case No. 2:14-CV-911-JRG-RSP
Before the Court is LG Electronics, Inc. and LG Electronics Mobilecomm U.S.A., Inc.’s
(collectively, “Defendants”) Motion to Transfer Case 2:14-CV-911 to the Northern District of
California (Dkt. No. 55, “Motion to Transfer”). In their Motion to Transfer, Defendants argue the
Northern District of California is a clearly more convenient forum for this case. (Mot. at 1.)
Plaintiff Core Wireless Licensing S.a.r.l. (“Core”) opposes transfer. (Opp. at 1.) After
considering all of the record evidence and weighing the various factors, the Court finds that
Defendants have failed to carry their burden of showing that the Northern District of California
is a clearly more convenient venue for this case. Accordingly, Defendants’ Motion to Transfer
(Dkt. No. 55) is DENIED.
BACKGROUND AND PROCEDURAL HISTORY
Core Wireless is a corporation duly organized and existing under the laws of the Grand
Duchy of Luxembourg, having a principal place of business at 16, Avenue Pasteur L-2310
Luxembourg. (Dkt. No. 1, “Complaint” at ¶ 1.) Core Wireless has a regular and established place
of business and does business relating to the patents-in-suit in connection with its wholly-owned
subsidiary, Core Wireless Licensing Ltd., a corporation duly organized and existing under the
laws of the State of Texas, having a principal place of business at 5601 Granite Parkway, Suite
1300, Plano, Texas 75024. (Id.)
Defendant LG Electronics, Inc. (“LGE”) is a foreign corporation organized and existing
under the laws of the Republic of Korea with its principal place of business in Seoul, South
Korea. (Id. at ¶ 2.) Defendant LG Electronics MobileComm U.S.A., Inc. (d/b/a LG Mobile) is a
wholly-owned subsidiary of LGE and is a California corporation with its principal place of
business in the Southern District of California (not the Northern District) at 10101 Old Grove
Road, San Diego, California 92131. (Id. at ¶ 3.)
On September 26, 2014, Core filed a complaint against Defendants accusing them of
infringing United States Patent Nos. 8,713,476; 8,498,671; 8,434,020; 7,072,667; and 5,907,823.
(Id. at ¶¶ 8–12.) On February 3, 2015, Defendants moved to consolidate the instant matter with
co-pending Marshall Division matter 2:14-cv-00912-JRG-RSP1 and two co-pending Tyler
Division matters involving Defendant Apple, Inc. (“Apple”)2 due to the significant overlap in
asserted patents among these four matters. (See Dkt. No. 35) (seeking consolidation on a
common patent basis). In addition to these three co-pending cases, on March 9, 2015, Marshall
Division District Judge Rodney Gilstrap presided over a related patent litigation matter between
Core and Apple. (6:12-cv-00100-JRG-JDL) (“Apple I”). Tyler Division Magistrate Judge Love
handled the pretrial matters in Apple I and is presently presiding over pretrial matters in Apple II
and Apple III except as to all matters relating to claim construction. (See Dkt. No. 115) (ordering
On December 17, 2014, the Court consolidated matter 2:14-cv-00912-JRG-RSP (“LG
II”) with the instant matter and referred all pretrial activities to Magistrate Judge Roy Payne.
(Dkt. No. 13.)
The other co-pending matters in this District are matters 6:12-cv-00751-JRG-JDL
(“Apple II”) and 6:12-cv-00752-JRG-JDL (“Apple III”). Marshall Division District Judge
Rodney Gilstrap presides over the instant matter, LG2, and the Apple II and Apple III matters
Defendants sought to have consolidated with it.
all claim construction matters to be consolidated under Marshall Division Magistrate Judge Roy
Payne in a consolidated process involving the instant matter, LG II, Apple II, and Apple III).
Because the overlap of the previous and these currently co-pending matters is significant,
reproduced below is Defendants’ summary of the asserted patents for each of these related, copending cases within the Eastern District of Texas. (Mot. at 3.)
Apple I (6:12-cv-100)
Alleged to be “standards-essential”
Apple II (6:14-cv-751)
Not alleged to be “standards-essential”
All patents that reached trial overlap
with LG II
5 of 6 patents overlap with LG I
Apple III (6:14-cv-752)
Alleged to be “standards-essential”
All patents overlap with LG II
LG I (2:14-cv-911)3
Not alleged to be “standards-essential”
All patents overlap with Apple II
LG II (2:14-cv-912)
Alleged to be “standards-essential”
Of the 13 patents asserted in this
case, 5 were recently tried in Apple
I, and 6 are at issue in Apple III
Despite previously seeking intra-divisional consolidations of various co-pending matters
involving identical or similar patents-in-suit, on April 20, 2015—nearly seven months after the
filing of Core’s Complaint—Defendants moved the Court pursuant to 28 U.S.C. § 1404(a) to
transfer this action to the United States District Court for the Northern District of California.
(Dkt. No. 55.)4 For the following reasons, Defendants’ Motion to Transfer is DENIED.
Section 1404(a) provides that “[f]or the convenience of parties and witnesses, in the
interest of justice, a district court may transfer any civil action to any other district or division
At the same time, Defendants have moved to disturb this Court’s consolidation—and
frustrate their own previous efforts for an intra-divisional consolidation of two other co-pending
matters, by seeking a transfer to the Southern District of California in consolidated LG2 matter
2:14-cv-00912-JRG-RSP. (Dkt. No. 56.)
where it might have been brought.” 28 U.S.C. § 1404(a) (2006). The first inquiry when analyzing
a case’s eligibility for 1404(a) transfer is “whether the judicial district to which transfer is sought
would have been a district in which the claim could have been filed.” In re Volkswagen AG, 371
F.3d 201, 203 (5th Cir. 2004) (“In re Volkswagen I”).
Once that threshold is met, courts analyze both public and private factors relating to the
convenience of parties and witnesses as well as the interests of particular venues in hearing the
case. See Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963); In re
Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d
1315, 1319 (Fed. Cir. 2009). The private factors are: 1) the relative ease of access to sources of
proof; 2) the availability of compulsory process to secure the attendance of witnesses; 3) the cost
of attendance for willing witnesses; and 4) all other practical problems that make trial of a case
easy, expeditious, and inexpensive. In re Volkswagen I, 371 F.3d at 203; In re Nintendo, 589
F.3d at 1198; In re TS Tech, 551 F.3d at 1319. The public factors are: 1) the administrative
difficulties flowing from court congestion; 2) the local interest in having localized interests
decided at home; 3) the familiarity of the forum with the law that will govern the case; and 4) the
avoidance of unnecessary problems of conflict of laws or in the application of foreign law. In re
Volkswagen I, 371 F.3d at 203; In re Nintendo, 589 F.3d at 1198; In re TS Tech, 551 F.3d at
The plaintiff’s choice of venue is not a factor in this analysis. In re Volkswagen of Am.,
Inc., 545 F.3d 304, 314–15 (5th Cir. 2008) (“In re Volkswagen II”). Rather, the plaintiff’s choice
of venue contributes to the defendant’s burden in proving that the transferee venue is “clearly
more convenient” than the transferor venue. In re Volkswagen II, 545 F.3d at 315; In re
Nintendo, 589 F.3d at 1200; In re TS Tech, 551 F.3d at 1319. Furthermore, though the private
and public factors apply to most transfer cases, “they are not necessarily exhaustive or
exclusive,” and no single factor is dispositive. In re Volkswagen II, 545 F.3d at 314–15.
Timely motions to transfer venue “should [be given] a top priority in the handling of [a
case],” and “are to be decided based on ‘the situation which existed when suit was instituted.’” In
re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003); In re EMC Corp., Dkt. 2013-M142,
2013 WL 324154 (Fed. Cir. Jan. 29, 2013) (quoting Hoffman v. Blaski, 363 U.S. 335, 443
Neither party appears to dispute that venue is proper either in the Eastern District of
Texas or the Northern District of California as to Core or Defendants.
Private Interest Factors
Cost of Attendance for Willing Witnesses
“The convenience of the witnesses is probably the single most important factor in a
transfer analysis.” In re Genentech, Inc., 566 F.3d 1388, 1342 (Fed. Cir. 2009). While the Court
must consider the convenience of both the party and non-party witnesses, it is the convenience of
non-party witnesses that is the more important factor and is accorded greater weight in a transfer
of venue analysis. Aquatic Amusement Assoc., Ltd. v. Walt Disney World Co., 734 F.Supp. 54, 57
(N.D.N.Y. 1990); see also Wright & Miller, Federal Practice and Procedure § 3851. “A district
court should assess the relevance and materiality of the information the witness may provide.” In
re Genentech, Inc., 566 at 1343. However, there is no requirement that the movant identify “key
witnesses,” or show “that the potential witness has more than relevant and material
information . . . .” Id. at 1343–44.
Defendants’ motion sets forth a series of statements—with very little, if any, supporting
evidence—arguing that this prong weighs in favor of transfer. (Mot. at 6–9.) For example,
Defendants argue the employees of third parties Google, Audience, and Qualcomm are “likely to
be essential third party witnesses.” (Id. at 6.) (emphasis added). Defendants continue making
similar speculative statements about where these witnesses may reside. (See, e.g., id. at 7)
(“Audience witnesses almost certainly reside in or near their employers’ headquarters . . . ”);
(id.) (“To the extent a Qualcomm employee is a necessary witness in LG 1, it is highly likely that
such a witness also resides in California.”). Such statements are both speculative and
unsubstantiated with evidence and, thus, are accorded little weight.
Although Defendants provide some evidence in support of transfer, none of it is
particularly compelling. For example, Defendants provide some evidence as to where the
development of the Android operating system began. (See Dkt. No. 55-1, Exh. A, “Finn Decl.” at
¶ 6) (“Similarly, it is well known in the mobile industry that the development of the Android
operating system began in Palo Alto in 2003, and was acquired by Google in 20005.”).
Moreover, Defendants identify eleven inventors and four prior art assignees by name that reside
in the Northern District of California. (Reply at 2) (citing Dkt. No. 67-1, Exh. E, “Finn Decl. II”
at ¶ 13). Defendants, however, fail to explain why these fifteen individuals—among the
presumably hundreds of other inventors and assignees of prior art related to this case—are of
particular importance to Defendants aside from the fact that they are located within their desired
Defendants additionally cite the relative distances third parties would have to travel for
trial in the Northern District of California as compared to this District. (Mot. at 7.) Again,
Defendants cite generically to employees of Google, Audience, and Qualcomm (if even
necessary, as Defendants note) without any explanation as to the identity of these individuals,
and their importance to the case.
For its part, Core identifies two of its own witnesses located in this District. (Opp. at 10)
(identifying Messrs. Johnson and Kim). Core additionally identifies several prosecuting attorneys
that “appear to reside on the east coast” (Id. at 10–11.) Core’s arguments suffer similar
deficiencies as Defendants’ arguments and neither is particularly compelling. For example, the
above witnesses Core identified are not third-party witnesses, but rather party witness. Typically,
these witnesses are accorded less weight than non-party witness. The third-party witnesses Core
identifies are not located in either the transferee or transferor district.
On the whole, neither side sets forth particularly compelling evidence for the Court to
meaningfully evaluate and balance this factor.5 Nevertheless, because Defendants have identified
entities residing in the Northern District of California that could plausibly be witnesses in this
case, this factor weighs in favor of transfer. However, recognizing this factor evaluates the cost
of attendance for willing witnesses, the Court finds little evidence supporting which particular
witnesses are both willing and relevant to Defendants’ case. Accordingly, the Court find this
factor only weigh slightly in Defendants’ favor.
Accordingly, the Court finds that this factor weighs slightly in favor of transfer.
Relative Ease of Access to Sources of Proof
“In patent infringement cases, the bulk of the relevant evidence usually comes from the
accused infringer. Consequently, the place where the defendant’s documents are kept weighs in
In fact, some of the arguments under this factor bear no relevance whatsoever on the
Court’s evaluation. For example, under the “Cost of Attendance for Willing Witnesses” heading
in their reply, Defendants argue—quite perplexingly—that certain third-party witnesses are
subject to the process from the Northern District Court of California. (Reply at 2.) The Court
strains to comprehend how this can be relevant to a willing witness.
favor of transfer to that location.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)
Under this factor, Defendants argue “[t]he greatest volume of relevant documents and
information will likely come from Google, Audience and Qualcomm. (Mot. at 9) (emphasis
added). Moreover, Defendants state “[t]he bulk of LG’s document production is likely to come
from Korea and California.” (Id.) (emphasis added). Again, these statements are highly
speculative and unsubstantiated by evidence. Regarding the Korean documentation, however,
Defendants appear to concede without reservation, that most of their relevant documentation is
not even located within the United States. (See id. at 1) (“Most of the relevant discovery in LG’s
possession is located in Korea.”).
In their reply, Defendants offer more definitive statements regarding the location of
witnesses, but those witnesses are only identified in a generic sense and are unsupported by
evidence in the briefing. (Reply at 3.) Further in their reply, Defendants offer evidence by way of
the Finn declaration regarding the inspection of source code. (Finn Decl. II at ¶ 15). That
evidence, however, suggests that the inspection of source will occur neither in this District, nor
the Northern District of California. (See id.) (suggesting the inspection will be conducted in
Chicago Illinois). None of this is particularly compelling evidence in support of transfer.
Core argues that it has a substantial number of relevant documents in the Eastern District
of Texas in the possession of its U.S. subsidiary, Core Wireless Texas. (Opp. at 8.) Defendants
do not appear to dispute that the vast majority of Core’s relevant documentation is located in this
District. (Mot. at 9). Rather, Defendants challenge Core’s underlying motives for the relevant
documentation existing in this District. (See id.) (“Though Core Wireless will claim to have
relevant patent prosecution files in this District, they are only here because Core Wireless
transplanted them here form Europe and/or Canada solely for purposes of litigation.”).
The Court has evaluated Core’s evidence and concludes that it has no reason to doubt
Core’s claims of a substantial and legitimate business presence in the Eastern District of Texas.6
(See, e.g., Dkt. No. 64-2, Exh. B, “Burt Decl.” at ¶¶ 2–5) (“Conversant Texas [a wholly owned
subsidiary of the parent company to Core] first opened an office in Plano, in February 2011. In
July 2014, Conversant Texas moved to new office space in Plano and moved all of its employees
to the new office space.”); (id.) (“Conversant Texas’ office is located at 5601 Granite Parkway,
Suite 1300, Plano, Texas 75024, and this is Conversant’s principal place of business in the
United States.”); (id. at ¶¶ 2–4, 6) (“Core Wireless Texas [a wholly owned subsidiary of Core]
shares office space with Conversant Texas, so the Plano office also is Core Wireless’ principal
place of business in the United States.”); (id. at ¶ 8) (“Since November 2009, Conversant has
regularly employed Doo Seon Shin, a patent licensing engineer who works in Plano and lives in
Allen, Texas. Mr. Shin has maintained a house and a family in Texas throughout his employment
with Conversant . . . .”); (id. at ¶ 9) (“Today Conversant Texas has 10 employees who all work in
Plano and live in the surrounding area.”); (id. at ¶ 11) (“Conversant IP [the parent company to
Core] decided to open an office in Plano, Texas, in 2011 because it provided strategic advantages
for its business.”); (id. at ¶ 14) (“Core Wireless Texas maintains records and information relevant
to the patents-in-suit in Plano. It also maintains records and information relevant to the larger
global Core Wireless patent portfolio in Plano.”)
Conversely, the Court further concludes that Defendants have failed to provide evidence
to support their allegations that Core purposefully transplanted documents to manufacture venue.
Indeed, with the benefit of Core’s evidence marshaled in its response, Defendants themselves
appear to now concede that it would be reasonable for the Court to conclude that this factor is at
least neutral. (See Reply at 5) (“At worst, this factor is neutral.”).
In summary, although Defendants have established—through attorney argument—that
some relevant third-party documentation is likely located in the Northern District of California,
their remaining relevant documentation to be offered is located in Korea. In contrast, Core has
convincingly shown through evidence that the vast majority of its documents are located within
this District. Accordingly, evaluated as a whole, the Court finds this factor weighs against
Availability of Compulsory Process to Secure the Attendance of Witnesses
Under Federal Rule of Civil Procedure 45 (as recently amended), this Court may enforce
a subpoena issued to any nonparty witness in the State of Texas to appear at trial, provided the
party does not incur substantial expense. Fed. R. Civ. P. 45(c)(1)(B). Similarly, the Court may
enforce any subpoena for a deposition to be taken within its boundaries, provided that the
deposition is taken no more than 100 miles from a location where the witness resides, is
employed, or regularly transacts business in person. See id. at (a)(2), (c)(1)(A), (d)(3)(a).
Moreover, party witnesses do not require compulsory process for trial and are not given much
weight in this factor. Rather, the focus of this factor is on witnesses for whom compulsory
process to attend trial might be necessary.
Under this heading, Defendants essentially recite the same generic, unsubstantiated
references to Google, Audience and Qualcomm witnesses that the Northern District of California
might compel. (Mot. at 9–10.) In their reply, although Defendants cite evidence of particular
individuals located in the Northern District of California, those individuals identified are the
fifteen inventors of prior art Defendants previously cited without explanation as to why these
fifteen individuals would be particularly more important to them at trial as compared to the
presumably hundreds of other similar witnesses located outside the Northern District of
California. (Reply at 4) (citing Finn Decl. II at ¶¶ 13–14). Without further explanation as to their
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particular relevance to Defendants at trial, the Court has very little evidence to meaningfully
evaluate importance of these witnesses. Accordingly, these witnesses are accorded very little
Core’s arguments suffer the same deficiencies as Defendants’ under this heading. For
example, in its sur-reply, Core makes passing reference to three potential witnesses currently
residing in Texas—and within the subpoena power of this Court—who were identified by
Defendants on their Rule 26 disclosures. (Sur-reply at 3.) Core neither identifies these
individuals, nor provides any evidence or explanation as to their relevance. However, given that
Defendants disclosed these individuals as being relevant in their Initial Disclosures, the Court
must recognize their potential importance in this case.
Accordingly, on the whole, the Court finds this factor to weigh slightly against transfer.
All Other Practical Problems that Make Trial of a Case Easy, Expeditious,
Defendants argue this factor is neutral. (See Mot. at 10) (“There are no practical problems
with transferring this case because this case is just beginning.”) Core disagrees and argues that a
strong judicial economy argument supports its desire to allow the case to proceed in the Eastern
District of Texas. (Opp. at 11–12.) For example, Core notes that District Judge Rodney Gilstrap
is familiar with the technology at issue due to his involvement as presiding judge in the Apple I
trial. (Id. at 11.) Moreover, Core points out that five of the asserted patents in the matter (LG II)
consolidated with the instant matter are identical to the patents-in-suit in the Apple I matter. (Id.)
Core further points to the judicial inefficiencies resulting from transfer by removing this and the
consolidated matter (LG II) from the District that recently tried a case with no fewer than five of
the exact same patents asserted in this consolidated group of cases. (Id at 12.) Finally, Core cites
evidence illustrating that the median time to trial is approximately ten months shorter in the
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Eastern District of Texas than in the Northern District of California which it concludes weighs
against transfer as well. (Dkt. No. 64-5, Exh. E at 2–3.)
In their reply, Defendants assail Core for purportedly taking positions in this case it now
contradicts. (See Reply at 4) (referencing Core’s opposition to Defendants’ motion to consolidate
with the Apple I, Apple II, and Apple III cases). Upon reviewing of the parties’ briefing, the
Court observes similar inconsistencies in Defendants’ position. For example, Defendants pepper
references to the Apple I case throughout their own briefing ostensibly with the intent to
marginalize the importance of the witnesses Core identified to be relevant in the transfer
analysis. (See, e.g., Mot. at 5) (“Core Wireless did not call any of its own employees as witnesses
in the recent Apple 1 trial.”); (id. at 7) (“Though Core Wireless claims a ‘regular and established
place of business’ in Plano, Texas (Compl., ¶ 1), it did not call any of its employees as witnesses
in the recent Apple 1 trial.”) (emphasis in original); (id. at 10) (“Not a single Core Wireless
employee is on Core Wireless’ ‘will call’ witness list in Apple 1.”); (Reply at 2) (“Indeed, at least
some Qualcomm employees were specifically identified and testified (by deposition) in the
Apple I trial, including NDCA-based Nate Chizgi.”); (id.) (“Three additional Qualcomm
employees that testified in the Apple I trial, are likely to have relevant information in this
case . . . .”).
Yet now, under the judicial economy prong, Defendants take the position that Apple I is
not relevant to the transfer analysis whatsoever. Indeed, they take this position even after they
sought to be consolidated with other co-pending cases in this District. (Dkt. No. 35.) Defendants
cannot have it both ways. If Defendants believe—as their briefing suggests—that the Apple I
case bears strong relevance to the instant matter, judicial economy supports a finding for keeping
the case in the Eastern District so that the same presiding judge, technical advisor, etcetera, can
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leverage the intuitional knowledge gained from Apple I in quickly and efficiently resolving the
parties’ dispute in the instant matter.
These inconsistences notwithstanding, upon consideration of the parties’ positions, the
Court finds this factor weighs against transfer for the following reasons.
More than two months before Defendants filed the instant motion, the parties filed a
motion for entry of a Docket Control Order (“Proposed DCO”). (Dkt. No. 37.) Although several
dates on the Proposed DCO were disputed at that time, the Court ultimately entered a Docket
Control Order with dates that comport with the Court’s dates proposed months before
Defendants filed their Motion to Transfer. (Compare Dkt. No. 37 with Dkt. No. 105) (ordering
the entry of the dates originally proposed by the Court).7 Defendants have offered no explanation
for waiting nearly seven months to file their Motion to Transfer even though several critical
dates had already passed, with others rapidly approaching. (See, e.g., Dkt. No. 105) (ordering
invalidity contentions due, production of source code, and an exchange of proposed claim terms
under P.R. 4-1 prior to the filing of Defendants’ Motion to Transfer); (id.) (requiring the parties
to complete claim construction discovery two months after the filing of their Motion to
Transfer). Clearly, both this and the related consolidated matter were well on their way to the
March 14, 2016 trial setting when Defendants filed their motion.
Even the Defendants concede that there are important efficiencies to be gained from this
Court’s past work involving these patents. For example, although the Court typically will not
take into consideration those activities that occurred in a matter subsequent to the filing of a
A few dates were adjusted slightly to accommodate the parties’ concerns with the
originally proposed dates. Nevertheless, the DCO entered maintained the originally proposed
dates of nearly every major milestone in a patent matter—e.g., trial date, claim construction
hearing, claim construction discovery deadline, exchange of claim construction terms, expert
reports, discovery deadlines, and the like.
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motion to transfer, the Court finds Defendants’ June 8, 2015 motion to adopt claim construction
(Dkt. No. 75, “Motion to Adopt”) highly instructive here.8 In their Motion to Adopt, Defendants
agree that transferring the instant matter would be highly inefficient. (See, e.g., id. at 1) (“Core
should not be permitted to re-litigate claim construction positions that were previously decided
and used by this Court or previously agreed to by Core. Doing so is inefficient, as it wastes the
Court’s and the parties’ time and effort.”). This, too, weighs strongly against transfer.
In summary, the Court cannot overstate the judicial efficiencies lost at this stage were it
to act as Defendants request and splinter this and the consolidated matter (LG II) into two cases
to be tried by two different California District Courts. (See Dkt. No. 56) (moving the Court to
transfer the related, consolidated matter to the Southern District of California).
Accordingly, for the foregoing reasons, the Court concludes that this factor weighs
heavily against transfer.
Public Interest Factors
Local Interest in Having Localized Interests Decided at Home
Defendants argue the Northern District of California has a local interest in this case
because, among other things, “. . . [certain third parties’ products] are at the heart of Core
Wireless’ infringement claims.” (Mot. at 10.) Defendants further argue that California has a
strong local interest in this case because third parties Google, Audience, and Qualcomm are “all
based in California, and the individuals who developed those products reside there.” (Id.)
The Federal Circuit has permitted district courts to consider such post-filing activities
for the sake of judicial economy. See, e.g., In re EMC Corp., 501 Fed. Appx. 973, 976 (Fed. Cir.
2013) (“[A] district court’s experience with a patent in prior litigation and the copendency of
cases involving the same patent are permissible considerations in ruling on a motion to transfer
venue.”). Here, Defendants’ Motion to Adopt evidences their recognition of the efficiencies to be
gained from this Court’s maintenance of this and the consolidated matter.
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Regarding this first point, to the extent Defendants’ position is staked upon a connection
not to “the events that gave rise to this suit,” as suggested by In re Volkswagen II, but rather a
connection of some residents and third-party entities “based in California,” financial or
otherwise, to Defendants themselves, the Court notes that this raises troubling fairness
implications and affords it little weight. 545 F.3d at 318. Indeed, Defendants expressly concede
that their alleged infringing products are sold on a worldwide basis. (Opp. at 13); (see also Mot.
at 13) (“The allegedly infringing devices are ‘sold throughout the United States . . . .’”) (citations
In contrast, Core has demonstrated, through evidence, that it has a strong local interest in
the Eastern District of Texas. For example, Core performs patent prosecution, portfolio
maintenance, engineering analysis, due diligence activities, patent acquisition support, and
licensing support in Plano, Texas. (Burt Decl. at ¶ 9.) Moreover, Mr. Doo Seon Shin—a patent
engineer of Core residing in Plano, Texas—was involved in the pre-suit licensing negotiations
with Defendants before Core filed suit. (Id. at ¶ 8.) These activities occurred in the Eastern
District of Texas and squarely involve “events that gave rise to this suit.” These facts weigh
Although Defendants concede that Core has employees residing in this District (Mot. at
10), they attempt to marginalize the importance of these employees through unsubstantiated
attorney argument by suggesting that Core’s presence in the District is merely intended to
manipulate venue. (See id.) (“[Core’s employees] exist solely because of Core Wireless’ plan to
haul companies into court in the Eastern District of Texas.”) Moreover, Defendants attempt to
minimize the effect of their own employees and distribution center located in Fort Worth, Texas,
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approximately fifty miles9 from Core Wireless’ principal place of business (Plano, Texas)
located within Eastern District.
After reviewing the parties’ arguments and evidence, the Court concludes Core has
demonstrated that it has a substantial and legitimate business presence in the Eastern District of
Texas for the reasons set forth under Heading B.2, above. (See pp. 5–7, supra) (evaluating the
evidence Core presented to demonstrate its presence in this District). Balancing Defendants’
nationwide sales activities against Core’s District presence and its business activities within it,
the Court concludes this factor does not support transfer.
Accordingly, evaluated as a whole, the Court finds this factor to be neutral.
Administrative Difficulties Flowing From Court Congestion
Defendants argue this factor is neutral. (See Mot. at 11) (“The Northern District of
California tends to resolve cases in nearly identical time . . . .”). Core, however, cites evidence to
counter Defendants’ attorney argument that the median time to trial in the Eastern District of
Texas is nearly ten months shorter than that of the Northern District of California. (Dkt. No. 645, Exh. E at 2–3.) Indeed, the Court observes that after Defendants waited nearly seven months
to file their Motion to Transfer, both the instant and co-pending (2:14-cv-00912) cases were
scheduled for trial in less than eleven months. (Dkt. No. 126.) Accordingly, this factor weighs
As measured between the center point of these two cities.
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Familiarity of the Forum With the Law that Will Govern the Case and
Avoidance of Unnecessary Problems of Conflict of Laws or in the
Application of Foreign Law
Defendants concede that the remaining two public interest factors are neutral. (Mot. at
11.) Core contends these two factors are neutral as well. (Opp. at 13.) The Court agrees and finds
these factors to be neutral to the transfer analysis.
A motion to transfer venue should only be granted upon a showing that the transferee
venue is “clearly more convenient” than the venue chosen by the plaintiff. In re Nintendo Co.,
589 F.3d at 1197; In re Genentech, Inc., 566 F.3d at 1342 (Fed. Cir. 2009). After weighing the
evidence as a whole, the Court finds that this is not such a situation. On balance, Defendants
have fallen far short of meeting their burden to show that the Northern District of California
would be a clearly more convenient forum than the Eastern District of Texas. Accordingly,
Defendants’ Motion to Transfer Venue (Dkt. No. 55) is DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 31st day of August, 2015.
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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