Cerence Operating Company v. SAMSUNG ELECTRONICS CO., LTD. et al

Filing 112

MEMORANDUM ORDER re 54 SEALED MOTION TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA UNDER 28 U.S.C. § 1404(a) filed by SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC.. (Motion(s) 54 terminated). Signed by Magistrate Judge Roy S. Payne on 3/8/2025. (NKL)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

CERENCE OPERATING COMPANY,
Plaintiff,
v.

Case No. 2:23-cv-0482-JRG-RSP

SAMSUNG ELECTRONICS CO., LTD., and
SAMSUNG ELECTRONICS AMERICA,
INC.,
Defendants.
MEMORANDUM ORDER
Before the Court is the Motion to Transfer Venue to the Northern District of California
Pursuant to 28 U.S.C. § 1404(a) filed by Defendants Samsung Electronics Co. Ltd. (“SEC”) and
Samsung Electronics America, Inc. (“SEA”). Dkt. No. 54. For the reasons discussed below, the
Motion is DENIED. 1

I.

BACKGROUND

On October 13, 2023, Plaintiff Cerence Operating Company filed the instant suit. Dkt. No.
1. Plaintiff alleges that SEC and SEA infringe U.S. Pat. Nos. 7,395,078; 8,081,993; 9,026,428;
11,087,750; and 11,393,461. Id. at 1.
Defendants SEC and SEA filed the instant Motion to Transfer on October 22, 2024, more
than a year after this lawsuit was served upon them. Dkt. No. 9. In the Motion, Defendants requests
that the Court transfer this case to the Northern District of California (“NDCA”). Id. at 1.

Also before the Court is Defendants’ Motion to Stay Pending Resolution of the above Motion to Transfer (Dkt. No.
80), which, in light of this Order, is DENIED AS MOOT.

1

On November 6, 2024, the Court granted a Joint Motion for Venue Discovery. Dkt. No.
60.
Briefing on the Motion to Transfer is now complete. 2

II.

LEGAL STANDARD

A federal district court may transfer a case “for the convenience of parties and witnesses”
to “any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). Section
1404(a)’s threshold inquiry is whether the case could initially have been brought in the proposed
transferee forum. In re Volkswagen AG, 371 F.3d 201, 202-03 (5th Cir. 2004) (“Volkswagen I”).
The question of whether a suit “might have been brought” in the transferee forum encompasses
subject matter jurisdiction, personal jurisdiction, and propriety of venue. Id. at 203. Only if this
statutory requirement is met should the Court determine whether convenience warrants a transfer
of the case. See id.; In re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) (“Volkswagen
II”). The burden to prove that a case could have been brought in the transferee forum falls on the
party seeking transfer. See Volkswagen II, 545 F.3d at 315; Humble Oil & Ref. Co. v. Bell Marine
Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963).
In regards to the propriety of venue specifically, the Judicial Code provides that 28 U.S.C.
§ 1400(b) is the “sole and exclusive provision controlling venue in patent infringement actions”
and is not supplemented by the general venue statutes. TC Heartland LLC v. Kraft Foods Grp.
Brands LLC, 581 U.S. 258, 266 (2017) (citing Fourco Glass Co. v. Transmirra Prod. Corp., 353
U.S. 222, 229 (1957)). Pursuant to 28 U.S.C. § 1400(b), venue lies “in the judicial district where
the defendant resides” or “where the defendant has committed acts of infringement and has a
After Defendants filed the instant Motion, Plaintiff responded on January 10, 2025. Dkt. No. 84. Defendants then
replied on January 23, 2025 (Dkt. No. 89), with Plaintiff sur-replying on February 4, 2025 (Dkt. No. 96).
2

2

regular and established place of business.” 28 U.S.C. § 1400(b).
Three elements must be met in order to establish that a defendant has a regular and
established place of business in the district: (1) there must be a physical place in the district; (2) it
must be a regular and established place of business; and (3) it must be the place of the defendant.
In re: Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017).
Once the moving party has established that the instant case could have been brought in the
transferee forum, the Court moves on to consider the private and public factors provided in
Volkswagen I. The private interest 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.” Volkswagen II, 545 F.3d at 315 (quoting Volkswagen I, 371 F.3d at
203). The public interest 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.” Id. (quoting Volkswagen I, 371 F.3d at
203) (alterations in original). The factors are neither exclusive nor exhaustive, and no one factor
is dispositive. Id.
“It is the movant's burden—and the movant's alone—to adduce evidence and arguments
that clearly establish good cause for transfer based on convenience and justice.” In re Clarke, 94
F.4th 502, 508 (5th Cir. 2024) (citing Def. Distributed v. Bruck, 30 F.4th 414, 433 (5th Cir. 2022)).
“[S]howing “good cause” requires the movant to “clearly demonstrate” that its chosen venue is
“clearly more convenient.” Id. (internal citations and quotations omitted). That standard is not met
if the movant merely shows that the transferee venue is more likely than not to be more

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convenient. Id. (internal citations and quotations omitted). Likewise, the fact that litigating would
be more convenient for the defendant elsewhere is not enough to justify transfer. Id. (internal
citations and quotations omitted). “[T]o establish good cause, a movant must show (1) that the
marginal gain in convenience will be significant, and (2) that its evidence makes it plainly
obvious—i.e., clearly demonstrated—that those marginal gains will actually materialize in the
transferee venue.” Id. (emphasis in original).
In considering a transfer under § 1404(a), the Court may consider undisputed facts outside
of the pleadings but must draw all reasonable inferences and resolve factual disputes in favor of
the non-movant. See Vocalife LLC v. Amazon.com, Inc., No. 2:19-cv-00123, 2019 U.S. Dist.
LEXIS 205696, 2019 WL 6345191, at *2 (E.D. Tex. Nov. 27, 2019); cf. Trois v. Apple Tree Auction
Cent. Inc., 882 F.3d 485, 492-93 (5th Cir. 2018) (reviewing a transfer under § 1406); Ambraco,
Inc. v. Bossclip B.V., 570 F.3d 233, 238 (5th Cir. 2009) (reviewing enforcement of a forumselection clause).

III.

ANALYSIS

A motion to transfer under 1404(a) carries a high burden. See generally In re Clarke, supra.
Here, Samsung has failed to meet that burden.
A.

Propriety of the Transferee Forum

Before the Court engages in the balancing of the private and public interest factors, we will
first assess the threshold issue of whether this case could have been brought in the transferee forum
of NDCA. The parties do not dispute that NDCA would have both subject-matter jurisdiction and
personal jurisdiction; their only disagreement is over the propriety of that venue. See Dkt. No. 54
at 8; compare Dkt. No. 84 at 4-5.

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Samsung argues that SEA has a regular place of business there and that SEC, as a foreign
corporation, can be sued in any district. Dkt. No. 54 at 8.
Cerence does not dispute this but instead argues that (1) Samsung filed patent infringement
counterclaims against Cerence in a separate case (“Cerence II”); (2) that Samsung moved to
consolidate the instant case with Cerence II; and (3) that Samsung intends to attempt to transfer
Cerence II to the Northern District of California. Dkt. No. 84 at 4-5. Plaintiff contends that this
would violate 1400(b) because Plaintiff has no regular place of business in NDCA and, therefore,
“Samsung must withdraw its motion to consolidate, prove that its motion to consolidate will not
be granted, or withdraw its Cerence II patent counterclaims before the Court can proceed beyond
the threshold inquiry.” Id. at 5.
While this argument may present a serious obstacle to transfer of this case, it is unnecessary
for the Court to reach it in view of the outcome reached below.
B.

Balancing the Private and Public Factors

The Fifth Circuit directs the Court to avoid a mere tallying of the factors in resolving this
dispute. See In re Radmax, Ltd., 720 F.3d 285, 290 n.8 (5th Cir. 2013) (“We do not suggest—nor
has this court held—that a raw counting of the factors in each side, weighing each the same and
deciding transfer only on the resulting ‘score,’ is the proper methodology.”); see also SQIP, LLC
v. Cambria Co., LLC, No. 4:23-CV-202-SDJ, 2024 WL 1346498, at *2 (E.D. Tex. Mar. 29,
2024) (“[C]ourts are not to merely tally the factors on each side.”). To that end, the Court considers
not only each factor's outcome but also its weight to determine whether the actual convenience of
the proposed transferee forum is “clearly more convenient” than that of this district. In re Chamber
of Commerce of United States of Am., 105 F.4th 297, 310 (5th Cir. 2024) (quoting In re Clarke, 94
F.4th at 508).

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i.

Private Interest Factors
a.

Ease of Access to Sources of Proof

Beginning with the first factor, relative ease of access to sources of proof, Samsung argues
that NDCA is more convenient because “a substantial portion of relevant documentary evidence
is with third-party Google,” which provides accused functionality and that Google engineers
knowledgeable about this functionality reside in and about NDCA. See Dkt. No. 54 at 10-11. They
further argue that technical documentation and source code related to the accused functionalities
“were created and maintained by Google engineers” in NDCA. Id. at 11. Also, they assert that
prior art witnesses (see Section III.B.i.b below) are “likely to have evidence in the NDCA relating
to their prior work” and that the “likely presence of such physical evidence in California favors
transfer.” Id. Finally, they contend that evidence coming from outside the United States (including,
as they concede, their evidence in Korea) is neutral to the analysis. Id.
In response, Cerence argues that the majority of its electronic evidence is located outside
of NDCA in places such as the East Coast, Europe, Eastern Canada, or China. Dkt. No. 84 at 12.
They contend that if technical witnesses need to bring any access-controlled source code to trial,
they would find this District more convenient. Id. at 12-13. Next, Cerence asserts that Samsung’s
technical evidence as well as relevant Google documents are electronically stored and, therefore,
are equally as accessible in Texas as they are in California. Id. at 13. Finally, they point out that
Samsung admits that it maintains evidence related to marketing and finances at their Plano office
in this district. Id.
The Court finds that this factor is neutral. While courts should consider “the location of
document custodians and [the] location[s] where documents are created and maintained,” (In re
Google LLC, No. 2021-178, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15, 2021)) “[w]hen the vast

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majority of the evidence is electronic, and therefore equally accessible in either forum, this factor
bears less strongly on the transfer analysis” (In re TikTok, Inc., 85 F.4th 352, 358 (5th Cir. 2023)
(cleaned up) (quoting In re Planned Parenthood Fed’n Am., Inc., 52 F.4th 625, 630 (5th Cir.
2022))).
Here, Samsung’s argument about evidence coming from the prior artists is too vague and
speculative: “[the prior artists] are likely . . . to have evidence,” and, “[t]he likely presence of such
physical evidence in California . . . .” A movant’s failure to identify documents and other evidence
with sufficient specificity and with sufficient certainty is a failure to meet their burden on transfer.
See Diem LLC v. BigCommerce, Inc., No. 6:17-CV-00186-JRG, 2017 WL 6729907, at *2 (E.D.
Tex. Dec. 28, 2017). As the Fifth Circuit recently held, the movant must show “that its evidence
makes it plainly obvious—i.e., clearly demonstrated—that those marginal gains will actually
materialize in the transferee venue.” In re Clarke, supra at 508 (emphasis original).
Regarding Samsung’s evidence in Korea and Cerence’s evidence in Europe, Eastern
Canada, and China, as this Court has previously stated, “with documents well outside the United
States, the relative ease of access to [the] documents will not substantially change across different
districts and is thus neutral.” See AGIS Software Dev. LLC v. HTC Corp., No. 2:17-cv-00514-JRG,
2018 WL 4680557, at *7 (E.D. Tex. Sept. 28, 2018).
Consequently, both parties have identified evidence, some of which is in this District and
some of which is in NDCA. The fact that the Google evidence in NDCA was created and
maintained there, as well as its custodians being there, is undercut by the evidence maintained at
Samsung’s Plano location. Additionally, all the evidence is both electronic and accessible
anywhere. Thus, on balance, the Court finds that this factor is neutral.

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b.

Availability of Compulsory Process

The next private factor is the availability of compulsory process to secure the attendance
of unwilling witnesses. Samsung has identified some 30+ potential third-party witnesses who
could be compelled to testify at trial in NDCA because they reside in California, while none reside
in this District. Dkt. No. 54 at 8-9; Dkt. No. 89 at 4. They assert that these witnesses have
knowledge “about the design and functionality of the accused features,” as well as “licenses with
Cerence.” Dkt. No. 54 at 9; Dkt. No. 89 at 4. Samsung further argues that numerous witnesses and
companies with knowledge of relevant prior art identified in Samsung’s invalidity contentions
reside in California, and that this merits transfer because cases with “similar facts” have been
transferred to NDCA in the past. Dkt. No. 54 at 9. 3
In response, Cerence identifies four former Cerence employees and two Cerence customers
who have relevant knowledge about the patented technology and who reside in Texas. Dkt. No. 84
at 10. As to the former, Cerence asserts that they “may have relevant knowledge about the value
or operations, sales, marketing, research, and development of the accused Cerence product.” Id.
As to the latter, Cerence asserts that they “may want to call witnesses from its largest customers
to testify about the value of the patented technology” and that this includes Toyota and Tesla who
recently moved their headquarters to Texas. Id. Cerence also argues that some of Samsung’s priorart witnesses reside in Texas and can only be subpoenaed here. Id. at 12.
The Court is unpersuaded by movant’s arguments. As to Samsung’s prior-art witnesses,
based on the relevant facts and issues in this case, we find that they are highly unlikely to actually
testify at trial, and Samsung has offered no argument demonstrating anything to the contrary. In

The Court notes that the cases Samsung cites to in support of its argument regarding situations with “similar facts”
(Dkt. No. 54 at 9) in which transfer was granted all predate In re Clarke and Samsung never addresses the issue of
evidence actually materializing.
3

8

re Clarke, 94 F.4th 508 (Requiring the Court to consider, as is relevant here, whether evidence in
the form of prior art inventor testimony is actually likely to appear at trial). As to Samsung’s other
third-party witnesses, while a significant number, the Court is once again not convinced that they
will actually materialize. This is an unrealistically high number due to the typical time allotted to
each party to present their case at trial. The Court rarely sees third-party fact witnesses being called
at trial, either live or by a deposition (which could be taken in any district). Samsung has failed to
allege any facts indicating that the situation would be any different in NDCA. Further, Cerence
alleged that compulsory process is irrelevant to Google employees since Google is cooperating
with Samsung in this matter (Dkt. No. 84 at 12), something that Samsung does not deny (see Dkt.
No. 89 at 4; see also Dkt. No. 54 at 12-13 (identifying several Google engineers as willing
witnesses)). 4 The availability of compulsory process or subpoena power to secure the attendance
of unwilling witnesses “receives less weight when it has not been alleged or shown that any witness
would be unwilling to testify.” In re Planned Parenthood, 52 F.4th at 630-31 (citations omitted).
Overall then, the parties have pointed to a series of witnesses located in both forums that
may have relevant knowledge, but none of whom have been specifically identified as unwilling.
Thus, at best, both forums have (possibly unnecessary) subpoena power over multiple potential
witnesses. Accordingly, the Court finds this factor to be neutral.
c.

Cost of Attendance for Willing Witnesses

The next private factor is the cost of attendance for willing witnesses.
For this factor, Samsung identifies two sets of witnesses: three SEC engineers who were
involved in the development of the three accused Samsung applications (Samsung Messages,
Bixby, and Samsung Keyboard) and eleven Google engineers who were involved in the

4

The Court also notes that Cerence never showed that any of their witnesses were unwilling.

9

development of three other accused Google applications (Google Messages, Google Assistant, and
Gboard). Dkt. No. 54 at 4-6. Samsung claims that the SEC engineers are based out of South Korea
(Id. at 4) and that the Google engineers are all in California except for one who is in Beijing (Id.
at 6), and so, it will be more convenient for these witnesses to appear for trial in NDCA. See id. at
12-13 (citing In re TikTok, 85 F.4th at 361 (finding that it is more convenient for witnesses from
Asia to travel to NDCA, rather than to Texas)). Samsung admits it maintains an office in TX but
that personnel there are focused on activities such as “sales, marketing, and commercialization for
Samsung devices.” Id. at 12.
Cerence, in turn, identifies six sets of witnesses: it asserts that it may call approximately
six technical team members who will mostly come from Europe, Montreal, Michigan, and
Massachusetts (Dkt. No. 84 at 5-6 (citing Dkt. Nos. 84-1, 84-2, 84-3, 84-4, 84-5, 84-6, 84-7, 848, 84-9)); an unknown number of unnamed marketing witnesses coming from Cerence’s
Massachusetts or Michigan offices (Id. at 6); one member of its legal team coming from
Massachusetts (Id. (citing Dkt. No. 84-9 at ¶ 12)); two Samsung witnesses based in Texas (Id. at
9 (citing Dkt. No. 84-17)); nine inventors based out of Massachusetts and Sweden (Id. (citing Dkt.
No. 54 at 3)); and an unknown number of unnamed Cerence customers (Id. (citing Dkt. Nos. 8419, 84-20, 84-21)).
The cost of attendance for willing witnesses factor has been described as the most
important factor to weigh. In re Genentech, 566 F.3d 1338, 1343 (Fed. Cir. 2009). Courts properly
give more weight to the convenience of non-party witnesses than to party witnesses. See Frito-Lay
N. Am., Inc. v. Medallion Foods, Inc., 867 F. Supp. 2d 859, 870-71 (E.D. Tex. 2012). The Fifth
Circuit uses what is known as the “100-mile rule”: when the distance between the transferor and
proposed transferee venues exceeds 100 miles, “the factor of inconvenience to witnesses increases

10

in direct relationship to the additional distance to be traveled.” Volkswagen I, 371 F.3d at 201; In
re Genentech, 566 F.3d at 1343; In re Apple Inc., 979 F.3d 1332, 1341 (Fed. Cir. 2020). However,
courts do not just consider how long and far a witness must travel—courts also may consider costs
such as “meal and lodging expenses; and absence from work, family, and community.” In re
Clarke, 94 F.4th at 514 n.20 (citing In re TikTok, 85 F.4th at 361). This factor “attempts to
internalize and minimize those costs by favoring the venue that is more convenient from the
perspective of willing witnesses.” Id. at 514.
As a preliminary matter, the Court discounts Cerence’s unnamed marketing and customer
witnesses out of hand. Considering these persons would amount to impermissible tallying of
witnesses available in each forum. A court should “not merely tally the number of witnesses who
reside in the current forum in comparison to the number located in the proposed transferee forum.”
ESPN, Inc. v. Quiksilver, Inc., 581 F. Supp. 2d 542, 547 (S.D.N.Y. 2008). Instead, a court should
“qualitatively evaluate the materiality of the testimony that the witnesses may provide.” Id.; Seven
Networks, LLC v. Google LLC, 17-cv-441, 2018 WL 4026760, at *8 (E.D. Tex. Aug. 15,
2018) (the convenience factor analysis is more than “a judicial numbers game” of simply counting
the prospective witnesses on each side). And it is here where the Court encounters a serious
problem: this factor concerns willing witnesses “for trial.” TikTok, 85 F.4th at 361 (emphasis
added).
While Samsung has identified witnesses with potentially relevant knowledge, they do not
state that they will be witnesses for trial. We reiterate that it is the movant’s burden, and “movant’s
alone,” to show the transfer is warranted. In re Clarke, 94 F.4th at 508 (citing Def. Distributed, 30
F.4th at 433). Conversely, Cerence specifically states that its six technical witnesses would be for
trial. Dkt. No. 84 at 6 (Cerence estimates that two technical witnesses may be needed from each

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of the three relevant teams, so six Cerence technical witnesses will travel for trial, each located
closer to the EDTX.) (emphasis added).
Accordingly, this factor weighs against transfer.
d.

Other Practical Problems

The final private factor is concerned with other practical problems. One such problem is
timeliness. Samsung argues that the timing of the instant Motion presents no issue in this regard
because the case is supposedly still in its early stages (Dkt. No. 54 at 13 (citing Auto. Body Parts
Ass'n v. Ford Glob. Techs., LLC, No. 4:13-CV-705, 2015 WL 123852, at *6 (E.D. Tex. Jan. 7,
2015))), and because (at the time they filed the Motion) it was well in advance of claim
construction (Dkt. No. 89 at 5 (quoting Software Rts. Archive, LLC v. Google, Inc., No. 2:07-CV511-CE, 2010 WL 2950351, at *4 (E.D. Tex. July 22, 2010))).
The Court finds that the motion is untimely. “The Fifth Circuit as well as other circuits
have emphasized that a party should not delay filing of a motion to transfer.” In re Wyeth, 406
F.App’x. 475, 477 (Fed. Cir. 2010) (citing Peteet v. Dow Chem. Co., 868 F.2d 1428, 1436 (5th
Cir. 1989)). In Peteet, the Fifth Circuit stated that a party seeking transfer should act with
“reasonable promptness.” Peteet, 868 F.2d at 1436. Further, “it is proper for the district court to
consider its investment and familiarity with a case . . . .” Software Rts. Archive, No. 2:07-CV-511CE, 2010 WL 2950351, at *4 (citing In re VTech Communications, Inc., 2010 WL 46332 (Fed.Cir.
Jan.6, 2010)).
Here, Samsung fails to show it acted with reasonable promptness. It filed the instant motion
on October 22, 2024, which is more than a year after it received service of the complaint. See Dkt.
No. 54; compare Dkt. No. 9. Samsung fails to offer any persuasive argument cutting against this.
Undermining their argument is their citation to Software Rts. Archive, where the court said that in

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spite of the motion being filed well in advance of claim construction, the fact that the case had
“progressed significantly since filing” and because “the court ha[d] become familiar with the
parties' claims,” the final factor “weigh[ed] heavily against transfer.” Software Rts. Archive, No.
2:07-CV-511-CE, 2010 WL 2950351, at *4 (emphasis added). So, too, is it the case here that the
Court has invested resources and become familiar with the instant litigation. 5 Accordingly, we
assess this factor as weighing heavily against transfer.
ii.

Public Factors
a.

Court Congestion

Samsung argues that the court congestion factor is neutral, and that it is “the most
speculative.” Dkt. No. 54 at 14. (quoting In re Genentech, 556 F.3d at 1347).
Cerence argues that this factor weighs greatly against transfer. Dkt. No. 84 at 15. They
point to our Court’s 21.9 month median time to trial compared to NDCA’S 47.9 months. Dkt. No.
84 at 15. They concede, however, that such statistics are no longer particularly relevant.
The Court finds that this factor weighs against transfer. “To the extent that court congestion
is relevant, the speed with which a case can come to trial and be resolved may be a factor.”
Genentech, 566 F.3d at 1347. “[A]s a general matter, ‘the district court is better placed’ to evaluate
its ‘docket efficiency.’” TikTok, 85 F.4th at 363 n.12 (quoting In re Planned Parenthood, 52 F.4th
at 631).
Here, Plaintiff’s attempts to substantiate its court congestion argument with statistics are
too general to be helpful. Regardless, we assess that this case is proceeding to trial at the pace set
out in the Docket Control Order and will likely conclude faster in this Court than in NDCA.
Accordingly, this factor weighs somewhat against transfer
Further, due to Samsung’s lack of diligence in filing the instant Motion, the Markman hearing occurred within two
weeks after the briefing on this motion was completed. Dkt. No. 104.
5

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b. Local Interest
Samsung argues that NDCA has a strong local interest in this case “because the cause of
action calls into question the work and reputation of several individuals residing in or near that
district.” Dkt. No. 54 at 13-14 (quoting In re Hoffman-La Roche Inc., 587 F.3d 1333, 1336 (Fed.
Cir. 2008)). In support of this, Samsung asserts that the accused functionality was researched,
designed, and developed there, and that these are the primary considerations in the analysis under
this factor. Id. at 14 (citing In re Juniper, 14 F.4th at 1320). It further contends that EDTX has
“little, if any, local interest” because neither party has any connection to this District. Id. Finally,
while acknowledging that SEA has a large presence in Plano, Samsung argues that it did not
develop the accused technologies, nor does it have access to relevant documents or source code.
Id.
Cerence responds, arguing that this factor is neutral because “both Samsung’s and
Cerence’s products are sold Nationwide,” and that this consequently does not give any single
venue a substantial interest. Dkt. No. 84 at 14 (citing In re Hoffman-La Roche, 587 F.3d at 1338).
It contends that the Fifth Circuit did away with Samsung’s proffered design and development
argument analysis in In re Clarke, which instead directs courts to look to the “event that give rise
to a suit.” Id. at 14-15 (quoting In re Clarke, 94 F.4th at 511) (internal citations omitted).
Samsung replies, arguing that In re Clarke did not do away with the “design and
development” analysis, and that several post-Clarke cases have considered this facet. Dkt. No. 89
at 5 (citing R2 Sols. LLC v. Databricks Inc., 2024 WL 4932719, at *6 (E.D. Tex. Dec. 2, 2024)
(citing In re Clarke)).
The Court finds that this factor weighs in favor of transfer. As Cerence correctly points
out, the Fifth Circuit directs courts to consider “the significant connections between a particular

14

venue and the events that gave rise to a suit,” not “the parties' connections to the venue.” In re
Clarke, 94 F.4th at 511 (emphasis added). In other words, the analysis is concerned with “the
interest of non-party citizens in adjudicating the case.” Id. (emphasis in original) (internal citations
omitted). However, Samsung is also correct in saying the Fifth Circuit did not do away with the
“design and development” facet; this is still a relevant part of the local interests analysis, but only
insofar as these events—design, development, and the like—give rise to the suit. See id. at 512
(“[Defendant’s] research, design, development, manufacturing, and publishing, occurred in and
around Austin. [Defendant] used Texas-based servers to host files visitors could download from
its website.” (citing Def. Distributed, 30 F.4th at 435 (internal quotations omitted)).
c. Familiarity of the Forum with the Law that Will Govern the
Case, and Conflict of Laws
Both parties agree that these last two public factors are neutral and the Court agrees with

.
this as well.
IV.

CONCLUSION
After reviewing each factor–having found that one weighs in favor of transfer, three weigh

against, with the remaining neutral—and accounting for each one’s weight, the Court finds that
Samsung has failed to carry its burden to show that NDCA is clearly more convenient than this
District. Further, Samsung has failed to explain how any marginal gains in convenience would be
“significant,” as required by the Fifth Circuit.
Accordingly, the Motion to Transfer is DENIED.
SIGNED this 3rd day of January, 2012.

SIGNED this 8th day of March, 2025.

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____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE