Core Wireless Licensing S.a.r.l. v. LG Electronics, Inc. et al

Filing 537

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 8/12/2016. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CORE WIRELESS LICENSING S.A.R.L.
v.
LG ELECTRONICS INC. ET AL.

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Case No. 2:14-cv-912-JRG-RSP

MEMORANDUM ORDER
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-912 to the Southern District of
California (Dkt. No. 56 in Case No. 2:14-cv-911, “Motion to Transfer”). Defendants argue the
Southern District of California is a clearly more convenient forum for Case No. 2:14-cv-912.
(Dkt. No. 56 at 5.) 1 Plaintiff Core Wireless Licensing S.a.r.l. (“Core”) opposes transfer. (Dkt.
No. 65 at 5.) After considering all of the record evidence and weighing the applicable factors, the
Court finds that Defendants have failed to carry their burden to show that the Southern District of
California is a clearly more convenient venue for this case. Accordingly, Defendants’ Motion to
Transfer (Dkt. No. 56) 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 in Case No. 2:14-cv-912, “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
1

Citations to the docket indicate the page number assigned by the Court’s CM/ECF system
unless otherwise indicated. Citations to the Docket are to Case No. 2:14-cv-911 unless otherwise
indicated.

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 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. 5,946,634; 6,266,321; 6,477,151; 6,633,536; 6,978,143;
7,383,022; 7,529,271; 7,599,664; 7,782,818; 7,804,850; 8,165,049; RE44,828; and 8,792,398.
(Id. at ¶¶ 10–22.) On February 3, 2015, Defendants moved to consolidate the instant matter with
co-pending Marshall Division matter 2:14-cv-00911-JRG-RSP 2 and two co-pending Tyler
Division matters involving Defendant Apple, Inc. (“Apple”) 3 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, Apple II, and Apple III except as to all matters relating to
2

On December 17, 2014, the Court consolidated matter 2:14-cv-00911-JRG-RSP (“LG I”) with
the instant matter and referred all pretrial activities to Magistrate Judge Roy Payne. (Dkt. No.
13).

3

The other co-pending matters are 6:12-cv-00751-JRG-JDL (“Apple II”) and 6:12-cv-00752JRG-JDL (“Apple III”). Marshall Division District Judge Rodney Gilstrap presides over the
instant matter and LG I. At the time of filing of the Motion to Transfer he also presided over the
Apple II and Apple III matters Defendants sought to have consolidated with it.

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claim construction. See (Dkt. No. 115) (ordering all claim construction matters to be
consolidated under Marshall Division Magistrate Judge Roy Payne in a consolidated process
involving the instant matter, LG I, Apple II, and Apple III).
Because the overlap of the co-pending matters is significant, reproduced below is
Defendants’ summary of the asserted patents for each of the cases:
CASE

ASSERTED PATENTS

OVERLAP

Apple I (6:12-cv-100)

Alleged to be “standards-essential”

All patents overlap with LG II

Apple II (6:14-cv-751)

Not alleged to be “standards-essential”

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)

Not alleged to be “standards-essential”

All patents overlap with Apple II

LG II (2:14-cv-912) 4

Alleged to be “standards-essential”

11 of 13 patents overlap with Apple
I and Apple III

(Dkt. No. 35 at 4); see also (Dkt. No. 56 at 7.)
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 Southern District of California.
(Dkt. No. 56.) 5 For the following reasons, Defendants’ Motion to Transfer is DENIED.
APPLICABLE LAW
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
4

Instant matter.

5

At the same time, Defendants moved to disturb this Court’s consolidation and to frustrate their
own previous efforts for an intra-divisional consolidation of two other co-pending matters by
seeking a transfer to the Northern District of California in the consolidated LG I matter 2:14-cv00911-JRG-RSP. (Dkt. No. 55).

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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
1319.
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

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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
(1960)).
DISCUSSION
A.

Proper Venue
Neither party appears to dispute that venue is proper in either the Eastern District of

Texas or the Southern District of California.
B.

Private Interest Factors
1.

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.

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Defendants’ motion sets forth a series of statements—with very little, if any, supporting
evidence—arguing that this prong weighs in favor of transfer. (Dkt. No. 56 at 10–12.) For
example, Defendants argue the employees of third party Qualcomm are “likely to be essential
third party witnesses.” (Id. at 10.) (emphasis added). Defendants continue making similar
speculative statements about where these witnesses may reside. For example, Defendants state
that the “relevant Qualcomm witnesses reside in or near their employers’ San Diego
headquarters” but do not identify any specific witnesses. (Id.) 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. The declaration supplied by Qualcomm Engineering Director Vivek
Khanna does little to remedy the deficiencies in Defendant’s Motion. (See Dkt. No. 56-2, Exh.
B.) Mr. Khanna states that certain operations performed in Qualcomm chipsets are relevant to the
issue of infringement in this case. Id. at ¶ 3. He then declares that most Qualcomm witnesses
with relevant knowledge are located in California, and most Qualcomm witnesses in California
work in San Diego. Id. at ¶ 6.
Mr. Khanna does not identify any specific witness he contends has knowledge relevant to
this case. Moreover, Mr. Khanna’s declaration does not address how important Qualcomm’s
witnesses are to the case or whether Qualcomm witnesses are likely to be called to testify at trial.
However, Defendants’ Motion admits that in the “recent Apple 1 case, which includes some of
the same patents now asserted against LG,” Core did not call any Qualcomm witness live and
relied on deposition testimony instead. (Dkt. No. 56 at 8.) It is difficult to afford significant
weight to the convenience of as-yet-unidentified Qualcomm witnesses given the evidentiary
record before the Court.

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Defendants additionally cite the relative distances third parties would have to travel for
trial in the Southern District of California as compared to this District. (Dkt. No. 56 at 10–11.)
Again, Defendants cite generically to Qualcomm without any explanation as to the identity of the
individual witnesses and their importance to the case. 6
Defendants also identify—for the first time in their Reply brief—eighteen prior art
inventors that allegedly reside in the Southern District of California. (Dkt. No. 68 at 3) (citing
Dkt. No. 68-1 at ¶ 18). Defendants, however, fail to explain why these eighteen 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 venue. Plaintiff also notes that Defendants’ allegations about the location of these
inventors is entirely based on information printed on the face of the invalidity reference and that
these decades-old references may not reflect the current locations of these individuals. (Dkt. No.
71 at 4). “A quick search reveals that the very first witness on [Defendants’] list for the SEP
action, Mr. Gilhousen, appears to currently live in Bozeman, Montana.” (Id.) (citing Dkt. No.
71-2). The Court therefore affords little weight to these witnesses, whose importance and
location is highly speculative.
For its part, Core identifies two of its own witnesses located in this District. (Dkt. No. 65
at 10) (identifying Messrs. Johnson and Kim). Core additionally identifies several prosecuting
attorneys that “appear to reside on the east coast” (Id. at 15.) Core’s arguments suffer
deficiencies similar to Defendants’ arguments and neither is particularly compelling. For
example, the above witnesses Core identified are not third-party witnesses, but rather party
6

Perplexingly, Defendants argue “[i]f this case goes forward in the Eastern District of Texas, on
the other hand, the Court will not be able to compel these [Qualcomm] witnesses to attend trial.”
(Dkt. No. 56 at 11.) If the Court must compel the Qualcomm witnesses to attend trial, then they
are not willing witnesses and their convenience is irrelevant to this factor.

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witnesses. Typically, these witnesses are accorded less weight than non-party witnesses. 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 on this factor. Nevertheless, because Defendants have
identified entities residing in the Southern 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 finds this factor weighs only slightly in Defendants’ favor.
The Court finds that this factor weighs slightly in favor of transfer.
2.

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
favor of transfer to that location.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)
(citation omitted).
Under this factor, Defendants argue “[t]he greatest volume of relevant documents and
information will likely come from Qualcomm.” (Dkt. No. 56 at 9) (emphasis added). Moreover,
Defendants state “[t]he bulk of LG’s document production is likely to come from Korea and San
Diego.” (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 5) (“Most of the relevant discovery in LG’s possession is
located in Korea.”).

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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. (Dkt. No. 65 at 8.)
Defendants do not appear to dispute that the vast majority of Core’s relevant documentation is
located in this District. (Dkt. No. 56 at 12.) 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. 7
(See, e.g., Dkt. No. 65-2, Exh. B, 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
7

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 Dkt. No. 68 at 6) (“At worst, this factor is neutral.”).

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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.”)
In summary, although Defendants have established—through attorney argument—that
some relevant third-party documentation is likely located in the Southern District of California,
their remaining relevant documentation is located in Korea. 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 transfer.
3.

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’ argument amounts to two sentences restating the same
generic references to Qualcomm witnesses that the Southern District of California might compel.
(Dkt. No. 56 at 12–13.) In their Reply, although Defendants cite evidence of particular
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individuals located in the Southern District of California, those individuals are the eighteen
inventors of prior art Defendants previously cited without explanation as to why they would be
particularly more important to them at trial as compared to the presumably hundreds of other
similar witnesses located outside the Southern District of California. (Dkt. No. 68 at 5.) Without
further explanation as to their particular relevance to Defendants at trial, the Court has very little
evidence to meaningfully evaluate the importance of these witnesses. Accordingly, these
witnesses are accorded little weight.
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. (Dkt. No. 71 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.
4.

All Other Practical Problems that Make Trial of a Case Easy, Expeditious,
and Inexpensive

Defendants argue this factor is neutral. (See Dkt. No. 56 at 13) (“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. (Dkt. No. 65 at 16–17.) 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 16.) Moreover, Core argues that five of the asserted patents in
the instant matter are identical to the patents-in-suit in the Apple I matter. (Id.) Core further

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points to the judicial inefficiencies resulting from transfer by removing this case from the District
that recently tried a case with five of the same patents asserted. (Id.)
In their Reply, Defendants assail Core for purportedly taking positions in this case it now
contradicts. (See Dkt. No. 68 at 5–6) (referencing Core’s opposition to Defendants’ motion to
consolidate with the Apple I, Apple II, and Apple III cases). Upon review 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 as relevant in the transfer analysis.
(See, e.g., Dkt. No. 56 at 8) (“Core Wireless did not call any of its own employees as witnesses
in the recent Apple 1 trial.”); (id. at 11) (“Though Core Wireless claims a ‘regular and
established place of business’ in Plano, Texas (Compl., ¶ 1), it did not call anyone from Plano, or
even from Core Wireless, as a witness in the recent Apple 1 trial.”); (id. at 8) (“Core Wireless
listed four of these [Qualcomm] witnesses on its ‘will call’ list for the Apple 1 trial. Core
Wireless submitted the Qualcomm witness deposition transcripts in lieu of live testimony.”);
(Dkt. No. 68 at 6) (“this Court’s prior claim constructions and final judgment bind Core from the
Apple 1 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 keeping the case in
the Eastern District so that the same presiding judge, technical advisor, et cetera, can leverage the

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intuitional knowledge gained from Apple I to quickly and efficiently resolve 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). 8 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
8

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”) instructive here. 9 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 that would be lost were it
to transfer this action to the Southern District of California. See In re Vistaprint Ltd., 628 F.3d
1342, 1347 (Fed. Cir. 2010) (“it is entirely within the district court’s discretion to conclude that
in a given case the § 1404(a) factors of public interest or judicial economy can be of ‘paramount
consideration,’ and as long as there is plausible support of record for that conclusion we will not
second guess such a determination”) (citations omitted). Accordingly, the Court concludes that
this factor weighs heavily against transfer.
C.

Public Interest Factors
1.

Local Interest in Having Localized Interests Decided at Home

Defendants argue the Southern District of California has a local interest in this case
because “Qualcomm baseband processors are at the heart of Core Wireless’ infringement
claims.” (Dkt. No. 56 at 13.) Defendants further argue that California has a strong local interest
in this case because “Qualcomm is based in California, and the individuals who developed those
products reside there.” (Id.)
9

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 nationwide. (Dkt. No. 56 at 14) (“The allegedly
infringing devices are ‘sold throughout the United States . . . .’”).
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. (Dkt. No. 65-2, Exh. B, 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 against transfer.
Although Defendants concede that Core has employees residing in this District (Dkt. No.
56 at 13) 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 miles 10 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 supra at 9–10) (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.
2.

Administrative Difficulties Flowing From Court Congestion

Defendants argue this factor is neutral. (See Dkt. No. 56 at 14) (“The Southern District of
California tends to resolve cases in nearly identical time”). Core, however, cites evidence that the
median time to trial in the Eastern District of Texas is more than eleven months shorter than that
of the Southern District of California. (Dkt. No. 65-7, Exh. G at 3–4.) 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-911) cases were scheduled for trial in less than eleven months. (Dkt.
No. 126.) Accordingly, this factor weighs against transfer.
3.

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. (Dkt. No.
56 at 14.) Core contends these two factors are neutral as well. (Dkt. No. 65 at 17.) The Court
agrees and finds these factors to be neutral to the transfer analysis.

10

As measured between the center point of these two cities.

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.

CONCLUSION
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 short of meeting their burden to show that the Southern District of California is a
clearly more convenient forum than the Eastern District of Texas. Accordingly, Defendants’
Motion to Transfer Venue (Dkt. No. 56) is DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 12th day of August, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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