VOIP-PAL.COM, INC. v. Facebook, Inc. et al

Filing 99

Public ORDER re 97 Sealed Order. Signed by Judge Alan D Albright. (sm3)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
VOIP-PAL.COM, INC.
Plaintiff,
v.
META PLATFORMS, INC., and
WHATSAPP LLC,
Defendants.

§
§
§
§
§
§
§
§
§

Civil No. 6:20-cv-00267-ADA

[PUBLIC VERSION OF] SEALED MEMORANDUM OPINION AND ORDER
This opinion memorializes the Court’s decision on Meta Platforms, Inc.’s (“Meta”) and
WhatsApp, LLC’s (“WhatsApp”) (collectively “Defendants”) Updated Motion to Transfer Venue
from the Western District of Texas (“WDTX”) to the Northern District of California (“NDCA”)
under 28 U.S.C. § 1404(a). Dkt. No. 56 (the “Motion”). After careful consideration of the relevant
facts, applicable law, the parties’ briefs (Dkt. Nos. 72, 78), the supplemental evidence (Dkt. No.
92), and objections to the supplemental evidence (Dkt. No. 95) the Court GRANTS Defendants’
Updated Motion to Transfer.
I.

FACTUAL BACKGROUND

Plaintiff VoIP-Pal.com, Inc. (“VoIP-Pal”) is a Nevada corporation with its principal place
of business in Waco, Texas. Dkt. No. 28 ¶ 1. VoIP-Pal filed a complaint against Defendants on
April 2, 2020, alleging infringement of U.S. Patent No. 10,218,606 (the “’606 patent” or the
“Asserted Patent”). Dkt. No. 1 (the “Complaint”).
Defendant Meta is a Delaware corporation with its principal place of business in Menlo
Park, California and an office in Austin, Texas. Dkt. No. 28 ¶ 2. Meta is registered to do business
in the State of Texas and has been since at least April 8, 2009. Id. Defendant WhatsApp is a

1

Delaware corporation with its principal place of business in Menlo Park, California. Id. ¶ 3.
WhatsApp also has an office in Austin, Texas. Id. WhatsApp is a wholly-owned subsidiary of
Meta. Id.
II.

LEGAL STANDARD

In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of
the regional circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). 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 where it might have been
brought or to any district or division to which all parties have consented.” “Section 1404(a) is
intended to place discretion in the district court to adjudicate motions for transfer according to an
‘individualized, case-by-case consideration of convenience and fairness.’” Stewart Org., Inc. v.
Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)).
“The preliminary question under § 1404(a) is whether a civil action ‘might have been
brought’ in the [transfer] destination venue.” In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir.
2008) (“Volkswagen II”). If the destination venue would have been a proper venue, then “[t]he
determination of ‘convenience’ turns on a number of public and private interest factors, none of
which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358
F.3d 337, 340 (5th Cir. 2004). The private factors include: “(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 AG, 371 F.3d 201, 203 (5th Cir. 2004)
(“Volkswagen I”) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)). The public
factors include: “(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
2

that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws of the
application of foreign law.” Id. When analyzing these factors, courts may consider facts arising
after plaintiff filed suit unless there is some suggestion that they arose primarily to affect the
transfer analysis. See Lynk Labs, Inc. v. Home Depot USA, Inc., No. 6:21-CV-00097-ADA, 2022
WL 1593366, at *6 (W.D. Tex. May 19, 2022) (explaining how post-complaint facts must be
disregarded when considering § 1404(a)’s preliminary question, but not when evaluating
convenience); In re Netscout Sys., No. 2021-173, 2021 U.S. App. LEXIS 30500, at *12 (Fed. Cir.
Oct. 13, 2021) (disregarding, under the practical-problems factor, later-filed cases in the transferor
district).
The weight the Court gives to each of these assorted convenience factors will necessarily
vary from case to case. See Burbank Int’l, Ltd. v. Gulf Consol. Int’l, Inc., 441 F. Supp. 819, 821
(N.D. Tex. 1977). A court should not deny transfer where “only the plaintiff’s choice weighs in
favor of denying transfer and where the case has no connection to the transferor forum and virtually
all of the events and witnesses regarding the case . . . are in the transferee forum.” In re Radmax,
Ltd., 720 F.3d 285, 290 (5th Cir. 2013).
The burden to prove that a case should be transferred for convenience falls squarely on the
moving party. In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010). The burden that a
movant must carry is not that the alternative venue is more convenient, but that it is clearly more
convenient. Volkswagen II, 545 F.3d at 314 n.10. While “clearly more convenient” is not explicitly
equivalent to “clear and convincing,” the moving party “must show materially more than a mere
preponderance of convenience, lest the standard have no real or practical meaning.” Quest NetTech
Corp. v. Apple, Inc., No. 2:19-cv-118, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27, 2019). Yet,
the Federal Circuit has clarified that, for a court to hold that a factor favors transfer, the movant

3

need not show that that factor clearly favors transfer. In re Apple Inc., 979 F.3d 1332, 1340 (Fed.
Cir. 2020).
III.

ANALYSIS

A. VoIP-Pal could have brought this suit in the NDCA.
Under 28 U.S.C. § 1400(b), this court must make a threshold determination as to whether
this case could have been brought in the destination venue. To satisfy this preliminary question,
the movant must show that venue and jurisdiction would have been proper in the transferee forum
when the plaintiff filed suit. See Monolithic Power Sys., Inc. v. Meraki Integrated Cir. (Shenzhen)
Tech., Ltd., No. 6:20-CV-00876-ADA, 2022 WL 958384, at *5 (W.D. Tex. Mar. 25, 2022). A
defendant does not satisfy this burden by merely consenting to jurisdiction in the transferee forum.
See Hoffman v. Blaski, 363 U.S. 335, 343, 80 S. Ct. 1084, 4 L.Ed.2d 1254 (1960). And the
defendant cannot, only for purposes of satisfying § 1404(a), concede that jurisdiction in the
transferee forum is proper while simultaneously “maintaining that jurisdiction is legally improper
in [the transferee forum] and reserving its right to seek dismissal” on that ground once transfer is
complete. Monolithic Power Sys., 2022 WL 958384, at *5; New Hampshire v. Maine, 532 U.S.
742, 749, 121 S. Ct. 1808, 1814, 149 L. Ed. 2d 968 (2001) (“[A]bsent any good explanation, a
party should not be allowed to gain an advantage by litigation on one theory, and then seek an
inconsistent advantage by pursuing an incompatible theory.”).
This Court finds, and VoIP-Pal does not contest, that this Action could have been brought
in the NDCA. See Dkt. No. 56 at 8. Thus, the Court proceeds with its analysis of the private and
public interest factors to determine if the NDCA is clearly more convenient than the WDTX.
B. The private interest factors favor transfer.
The Court finds that three private interest factors favor transfer, and the remaining factor is
neutral. Overall, the private interest factors favor transfer to the NDCA.

4

1. The relative ease of access to sources of proof favors transfer.
“In considering the relative ease of access to proof, a court looks to where documentary
evidence, such as documents and physical evidence, is stored.” Fintiv, Inc. v. Apple Inc., No. 6:18cv-00372-ADA, 2019 U.S. Dist. LEXIS 171102, at *5 (W.D. Tex. Sept. 10, 2019). The question
properly focuses on “relative ease of access, not absolute ease of access.” In re Radmax, 720 F.3d
285, 288 (5th Cir. 2013) (emphases in original). “[T]he movant need not show that all relevant
documents are located in the transferee venue to support a conclusion that the location of relevant
documents favors transfer.” In re Apple, 979 F.3d at 1340; In re Juniper Networks, Inc., 14 F.4th
1313, 1321 (Fed. Cir. 2021) (“We have held that the fact that some evidence is stored in places
other than either the transferor or the transferee forum does not weigh against transfer.”).
The Fifth Circuit has held that, even in the context of electronic documents that can be
accessed anywhere on earth, this factor is not superfluous. See Volkswagen II, 545 F.3d at 316; see
also In re Dish Network L.L.C., No. 2021-182, 2021 U.S. App. LEXIS 31759, at *6 (Fed. Cir. Oct.
21, 2021). Though having consistently characterized that holding as antiquated in the setting of a
modern patent dispute, this Court will continue to analyze this factor with a focus on the location
of (1) physical documents and other evidence and (2) the hardware storing the relevant electronic
evidence. See Def. Distributed v. Bruck, 30 F.4th 414, 434 & n.25 (5th Cir. 2022) (giving weight
to the location of servers hosting the electronic documents in dispute); Bluebonnet Internet Media
Servs., LLC v. Pandora Media, LLC, No. 6-20-CV-00731-ADA, 2021 U.S. Dist. LEXIS 137400,
at *7 & n.1 (W.D. Tex. July 22, 2021). However, the Federal Circuit has held it is an error not to
also consider: “the location of document custodians and location where documents are created and
maintained, which may bear on the ease of retrieval.” In re Google LLC, No. 2021-178, 2021 U.S.
App. LEXIS 33789, at *7 (Fed. Cir. Nov. 15, 2021); see also Def. Distributed, 30 F.4th at 434 &

5

Case 6:20-cv-00267-ADA Document 97 *SEALED*

Filed 07/22/22 Page 6 of 22

n.25 (considering, under this factor, where the “research, design, development, manufacturing, and
publishing” of the allegedly offending files occurred). Finally, evidence located at a party’s office
that is not a “place of regular business” may be discounted. See In re Google LLC, No. 2022-140,
2022 WL 1613192, at *4 (Fed. Cir. May 23, 2022).
Here, Defendants assert that the engineering teams managing features of the WhatsApp
application are in the NDCA, where
Defendants also represent that WhatsApp’s technical, financial, and marketing
documents

Defendants assert that Facebook’s

there. Id.
VoIP-Pal contends that the Defendants’ relevant documents are equally “accessible from
multiple locations,” including the WDTX where Defendants have
including engineers, managers, and analysts. Dkt. No. 72 at 8; Dkt. No. 72-11 at 10-13, 31. VoIPPal posits it would be equally easy to access this evidence from Austin as well because custodians
in technical roles at Meta’s Austin office will have equally convenient access to Meta’s electronic
documents. VoIP-Pal also points to the fact that Meta has employees across the country including
“a significant number of relevant documents” in New York and Washington state, but this fact
favors neither venue. Dkt. No. 72 at 9; Dkt. No 72-11 at 14-29.
In evaluating this factor, the Court finds the Declaration of Nicholas Wong to be credible
and convincing. Mr. Wong carefully investigated the underlying facts that form the basis of his
knowledge, identified the basis of his knowledge, made mostly clear and unqualified statements
of fact, made statements consistent with Defendants’ thoroughly prepared interrogatory responses,

6

avoided making uninformed statements, avoided testifying about topics that he lacks knowledge
of, and mostly avoids using vague and crafty language. Compare Dkt. No. 56-1 (“Wong Dec.”),
with Scramoge Tech. Ltd. v. Apple, Inc. No. 6:21-CV-00579-ADA, 2022 WL 1667561, at *2–4
(W.D. Tex. May 25, 2022) (criticizing a repeat declarant for providing uninformed statements,
failing to identify the sources of his knowledge, qualifying vague statements of adverse facts with
crafty language, testifying about topics appropriate only for technical experts and lawyers, and
failing to clearly respond to discovery requests). The Court finds the Wong Declaration to be
reliable. The Court similarly finds that Defendants provided thorough and well-informed venue
interrogatory responses. Compare Dkt. No. 72-11 (providing clear and thorough responses in a
venue interrogatory), with Scramoge, 2022 WL 1667561, at *4 n.3 (refusing to fully respond to
venue interrogatory). The Court finds that collectively, the Wong Declaration and the Defendants’
interrogatory responses carefully identified the Defendants’ relevant employees who work in
Texas.
The bulk of the Defendants’ relevant technical documentation resides in the NDCA and
weighs in favor of transfer. Wong Dec. ¶¶ 3, 8–10, 13. The Defendants’ financial and marketing
documents were generated and maintained in the NDCA. Id. ¶¶ 11–13. Relevant technical
documents were generated and maintained in the NDCA. Id. ¶¶ 14–21. At the same time,
Defendants employ

employees in the WDTX who likely have similarly

convenient access to relevant technical documentation. Dkt. No. 72-11 at 10–13, 31; Dkt. No. 72
at 8. This Court must not only consider the location of the Defendants documents, many of which
are in the NDCA, but also the location of “document custodians” and “where documents are
created and maintained, which may bear on the ease of retrieval.” In re Google LLC, No. 2021178, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15, 2021). Here, the majority of Meta employees

7

who developed the technology in dispute and maintained documents relevant to this technology
are primarily based in the NDCA, which favors transfer. But because Defendants employ
employees in with the WDTX, Defendants can access their technical documents
from the WDTX just as easily. “In modern patent litigation, documents are located on a server,
which may or may not be in the transferee district (or given the use of cloud-based storage, may
be located on multiple servers in multiple districts, or even multiple countries) and are equally
accessible from both the transferee and transferor districts.” Fintiv, Inc. v. Apple Inc., No. 6:18CV-00372-ADA, 2019 WL 4743678, at *4 (W.D. Tex. Sept. 13, 2019). With both the transferee
and transferor districts having custodians who can access the electronic technical documents,
“[t]hen, with a click of a mouse or a few keystrokes, the party produces these documents” equally
conveniently from either forum. Id. Thus, the relative ease of accessing technical evidence neither
favors nor disfavors transfer.
But the same cannot be said for the Defendants’ financial evidence in this case. Mr. Wong
convincingly declared that the Defendants’
that
and that
Wong Dec. ¶¶ 11, 12, 19. Thus, the documentation and
information covering the financing and marketing of the Accused Products are in the NDCA and
in Washington state, and Plaintiff has not shown that there are any custodians in Texas who can
access the relevant financial and marketing documents just as easily as the Defendants’ custodians
in the NDCA. Wong Dec. ¶¶ 13, 21; In re Google LLC, 2021 WL 5292267, at *2. Thus, the ease
of accessing financial information in the NDCA weighs in favor of transfer.

8

VoIP-Pal argues that its relevant documents are in Waco, Texas. Dkt. No. 72 at 9.
Defendants argue that all documents that VoIP-Pal said it would rely on in four other ’606 Patent
suits are in NDCA. Dkt. No. 72-5 at 1; Dkt. No. 72-6 at 2–3; Dkt. No. 72-6 at 1. Recent guidance
suggests that any financial documents maintained at VoIP-Pal’s Waco headquarters, see Dkt. No.
72 at 8, can be discounted because Defendants have made a persuasive case that VoIP-Pal’s Waco
headquarters are not a regular place of business. In re Google LLC, 2022 WL 1613192, at *4; see
Dkt. No. 78 (describing the limitations of VoIP-Pal’s leased Waco office). The Court finds that
VoIP-Pal likely has an equal amount of evidence in both the NDCA and in the WDTX, so VoIP’s
evidence neither favors nor disfavors transfer.
As a result, relevant financial and marketing documents are more easily retrieved from the
NDCA than the WDTX. Defendants have shown to the Court’s satisfaction that relevant
evidence—including technical and financial documents—is maintained in the NDCA.
2. The compulsory process factor favors transfer.
Under the Federal Rules, a court may subpoena a witness to attend trial only (a) “within
100 miles of where the person resides, is employed, or regularly transacts business in person”; or
(b) “within the state where the person resides, is employed, or regularly transacts business in
person, if the person . . . is commanded to attend a trial and would not incur substantial expense.”
FED. R. CIV. P. 45(C)(1)(A), (B)(ii); Gemalto S.A. v. CPI Card Grp. Inc., No. 15-CA-0910, 2015
WL 10818740, at *4 (W.D. Tex. Dec. 16, 2015). Under this factor, the Court focuses on non-party
witnesses whose attendance may need to be secured by a court order. Fintiv, 2019 U.S. Dist.
LEXIS 171102, at *14 (citing Volkswagen II, 545 F.3d at 316). This factor “weigh[s] heavily in
favor of transfer when more third-party witnesses reside within the transferee venue than reside in
the transferor venue.” In re Apple, Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014). When “there are

9

several witnesses located in the transferee forum and none in the transferor forum,” this factor
favors transfer. In re Google, No. 2021-171, 2021 WL 4592280, at *5 (Fed. Cir. Oct. 6, 2021).
Further, this Court cannot “discount” third-party “entities” having pertinent information in the
transferee venue “just because individual employees were not identified.” In re Apple Inc., No.
2021-181, 2021 U.S. App. LEXIS 33788, at *8 (Fed. Cir. Nov. 15, 2021) (quoting In re HP Inc.,
826 F. App’x 899, 903 (Fed. Cir. 2020)).
The Federal Circuit has held that, under Fifth Circuit law, “when there is no indication that
a non-party witness is willing” the Court must presume that its subpoena power will be necessary
to secure the witness’ attendance. In re DISH Network LLC, No. 2021-182, 2021 WL 4911981, at
*3 (Fed. Cir. Oct. 21, 2021) (quoting In re HP, Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1
(Fed. Cir. Sept. 25, 2018)). This factor “weigh[s] heavily in favor of transfer when more thirdparty witnesses reside within the transferee venue than reside in the transferor venue.” In re Apple,
581 F. App’x 886, 889 (Fed. Cir. 2014).
i. Inventors
Here, four of the inventors of the Asserted Patent, Rod Thomson, Johan Emil Viktor
Björsel, Clay Perreault, and Fuad Arafa reside near Vancouver, Canada. Dkt. No. 72 at 10; Dkt.
No. 72-14; Dkt. No. 72-28. The fifth inventor, Steve Nicholson, resides in New Zealand. Dkt. No.
72-28 at 10. Neither this Court nor the NDCA can compel these inventors to attend trial, so these
inventors do not factor into the Court’s analysis.
ii. Defendants’ witnesses
To support transfer, Defendants point to numerous authors of prior art who are “material
to the patentability of the Asserted Patent” and identifies five inventors residing in the NDCA.
Dkt. No. 56 at 5. Defendants allege that four of the five inventors of U.S. Patent App. No.

10

2003/0091028 “appear” to reside in Northern California. Id. Further, Defendants argue that the
sole inventor of U.S. Patent No. 8,036,366 resides in Northern California. Id.
Defendants also point to four additional relevant non-party witnesses’ that reside in the
NDCA’s subpoena power. Dkt. No. 56 at 5. Craig Walker and Vincent Paquet, founders of the
companies that created relevant prior art systems DialPad and GrandCentral, both reside in the
NDCA. Dkt. No. 56 at 5; Dkt. Nos. 56-24 and 56-25. Defendants also argue that Dr. Marian Croak,
credited with the creation of the VoIP technology, resides in the NDCA. Dkt. No. 56-51 and 5652. Finally, Defendants argue that Sean Parmenter, who prosecuted the Asserted Patents may offer
relevant information. Dkt. No. 56 at 11–12. However, VoIP-Pal points out, and Defendants
concede, that Mr. Parmenter resides in Utah, which is outside of the subpoena power of the NDCA.
Dkt. No. 56 at 6.
iii. Plaintiff’s witnesses
VoIP-Pal points to non-party witnesses it claims are “actually” relevant to the dispute. First,
VoIP-Pal argues that all five inventors of the Asserted Patents have previously shown a willingness
to attend trial in Waco to testify about other patents, even though they reside outside of the Court’s
subpoena power. Dkt. Nos. 72-28; 72-14. Thus, compulsory process is likely not needed to secure
the attendance of these witnesses. There are two additional non-party witnesses VoIP-Pal asserts
will require this Court’s subpoena power to compel attendance. VoIP-Pal asserts that Business
Legal Management, LLC (“BLM”),
has relevant witnesses based in Dallas. Dkt. No. 72 at 10. Three employees of BLM (George Brunt,
Bobby Love, and Joseph Wadsworth) are presently within the subpoena power of the WDTX. Dkt.
No. 72 at 10; Dkt. No. 72-11 at 33. Finally, VoIP-Pal also names Marcus Redding of Austin-based

11

Intellion Analytics Group as having relevant knowledge regarding damages because VoIP-Pal
retained him in its 2016 and 2018 cases. Dkt. No. 72 at 10.
iv. Conclusion
In conclusion, this factor weighs in favor of transfer. Defendants cite eight witnesses in the
NDCA that require compulsory process. Most of these are cherry-picked prior art witnesses who
are not needed to authenticate the patents that they are named on, but they may still provide
testimony about the state of the art. The Court does not categorically disregard prior art witnesses
but discounts them because prior art witnesses rarely appear at trial. In re Hulu, LLC, 2021 WL
3278194, at *3 (Fed. Cir. Aug. 2, 2021). VoIP-Pal has identified four witnesses who would require
this Court’s compulsory process. Because the Court presumes witnesses are unwilling unless they
indicate otherwise, the Court considers all witnesses identified by Defendants and VoIP-Pal as
unwilling witnesses. DISH Network, 2021 WL 4911981, at *3. Even after discounting the
likelihood that all of Facebook’s witnesses will testify, there are still more witnesses in the NDCA
subject to subpoena power than in the WDTX. Thus, this factor weighs in favor of transfer.
3. The cost of attendance of willing witnesses heavily favors transfer.
The Fifth Circuit has established the “100-mile rule,” providing that “[w]hen the distance
between an existing venue for trial of a matter and a proposed venue under § 1404(a) is more than
100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional
distance to be traveled.” Volkswagen I, 371 F.3d at 204–05. Yet the Federal Circuit has refused to
apply the rule “rigidly,” such as where it may “result in all identified witnesses having to travel
away from their home and work in order to testify in Texas, which would ‘produce results divorced
from’ the rule’s underlying rationale.” In re Google LLC, No. 2021-170, 2021 WL 4427899, at *5
(Fed. Cir. Sept. 27, 2021) (quoting In re TracFone Wireless, Inc., 852 F. App’x 537, 539 (Fed.

12

Cir. 2021)). This has led the Federal Circuit to disregard distance altogether in favor of considering
travel-time statistics. See, e.g., In re Google LLC, No. 2021-170, 2021 U.S. App. LEXIS 29137,
at *12 (Fed. Cir. Sept. 27, 2021) (“[T]ime is a more important metric than distance.”). In addition,
the Federal Circuit simply disregards any difference in convenience between the relevant fora
where it is comfortable concluding that a witness would have to travel a significant distance
regardless of whether the action is transferred or not. See In re Apple, 979 F.3d at 1342 (discussing
witnesses traveling from New York to either Texas or California venues); In re Genentech, Inc.,
566 F.3d 1338, 1344 (Fed. Cir. 2009) (stating that the 100-mile rule should not be “rigidly” applied
in the context of foreign witnesses); In re Pandora Media, LLC, No. 2021-172, 2021 WL 4772805,
at *6 (Fed. Cir. Oct. 13, 2021). It has even gone as far as opining that “[t]he comparison between
the transferor and transferee forum is not altered by the presence of other witnesses and documents
in places outside both forums.” In re Toyota Motor Corp., 747 F.3d 1338, 1340 (Fed. Cir. 2014);
In re Google, 2021 U.S. App. LEXIS 29137, at *12.
This factor commonly focuses on party witnesses. The Federal Circuit has previously
represented that “an employer’s cooperation in allowing an employee to testify may diminish
certain aspects of inconvenience to the employee witness (for instance, the employee is not acting
contrary to their employer’s wishes).” In re Hulu, No. 2021 U.S. App. LEXIS 22723, at *13. Yet
it has also stated that inconvenience is not attenuated at all when the witnesses are employees of
the party calling them. See, e.g., In re Juniper, 14 F.4th at 1319.
And as to burdens, the Federal Circuit has held that a district court may refuse to weigh
this factor in favor transfer “if unable to determine from the movant’s presentation . . . that there
are more potential witnesses in the transferee venue than the plaintiff’s chosen forum.” In re
Overhead Door Corp., No. 2022-100, 2021 WL 5816634, at *2 (Fed. Cir. Dec. 7, 2021).

13

i. Defendants’ witnesses
Aided by a declaration from Nicholas Wong, an
employed by Facebook, Defendants identified numerous witnesses purported to have
knowledge relevant and material to this case. These identified individuals reside in the NDCA and
can drive to the courthouses in the NDCA, testify for several hours, and return home in the same
day.
Mr. Wong identified
Engineer,

witnesses for WhatsApp, including Software

, and Engineering Director,

, on teams supporting WhatsApp’s

functionality for sending messages. Dkt. No. 56-1 ¶¶ 8–9. Both
northern California. Id. Mr. Wong also identified

and

reside in

, a Software Engineering Manager

leading a team supporting WhatsApp’s functionality for starting calls. Dkt. No. 56-1 ¶ 10. With
the exception of

, everyone on the WhatsApp’s
and likely has relevant knowledge on the design

and development of relevant instrumentalities of the accused WhatsApp product. Id. ¶ 10. Mr.
Wong named another Software Engineer,

, purportedly knowledgeable about

contact selection functionality in WhatsApp. Dkt. No. 56-1 ¶ 26. Mr. Wong also identified
personnel based in NDCA relevant to the finance and marketing operations.
the Finance Director for

is
, and

likely has relevant knowledge regarding financial information for the accused products. Id. ¶¶ 11,
19. Mr.

and

California. Id.

reside

in

is the Consumer Product Marketing Lead for WhatsApp, and likely has

relevant knowledge regarding marketing information for the accused WhatsApp product. Id. ¶ 12.
Ms.

resides

in California. Id.

14

Additionally, Mr. Wong identified

employees who likely have relevant

knowledge and reside in the NDCA or in Washington state. These identified individuals can drive
or take a short flight to the courthouses in the NDCA, testify for several hours, and return home
within the same day.

is a software engineering manager on
team, which is

based in

, and likely

has relevant knowledge regarding the design and development of relevant instrumentalities of the
accused Messenger application. Id. ¶ 14. Mr.

resides in Washington state. Id.

is a software engineering manager on
team, which is

based in

, and likely has relevant knowledge

regarding the design and development of relevant instrumentalities of the accused Messenger
application. Id. ¶ 15. Mr.
. Id.

resides in Washington state and
is a software engineer on

team, and likely has relevant knowledge regarding the design and development
of relevant instrumentalities of the accused Messenger application. Id. ¶ 16. Mr.
resides

. Id.

is an engineering manager on
team, which is

based in

, and likely has relevant knowledge regarding the design and development
of relevant instrumentalities of the accused Messenger application. Id. ¶ 17. Mr.
northern California, and
manager on the

. Id.

team, which is

resides in
is an engineering

based in

and supports relevant functionality for the accused products. Id. ¶ 18. Mr.

likely has

relevant knowledge regarding the design and development of relevant instrumentalities in the
accused products. Id. Mr.

resides in northern California, and none of his team members are

15

. Id.

is the

Director of Consumer Brand and Product Marketing for

Messenger, and likely has relevant knowledge regarding marketing information for the accused
Messenger product. Id. ¶ 20. Ms.

and

reside

ii. Plaintiff’s witnesses
VoIP-Pal identified one witness that will find the WDTX a more convenient forum. VoIPPal alleges that its CFO, Kevin Williams, works out of VoIP-Pal’s Waco office. Dkt. No. 72 at 11.
The Court finds that Mr. Williams, given his position, likely has knowledge relevant and material
to damages. Mr. Williams will be able to drive to the courthouse in Waco, testify for several hours,
then return home the same day. His proximity to this Court weighs against transfer.
iii. Non-party witnesses
Defendants identified the inventors of the Asserted Patent as having relevant knowledge,
Dkt. No. 56 at 5, 12, and VoIP-Pal noted that each is willing to travel to Waco to testify at trial,
Dkt. No. 72 at 10 (citing Dkt. Nos. 72-14, 72-28). The Court therefore counts the five inventors as
willing witnesses. Moreover, the Court is satisfied that transfer would be more convenient for at
least four out of the five of the inventors because of Vancouver’s relative proximity to the NDCA.
iv. Conclusion
Mr. Wong has convinced the Court that he carefully identified the Defendants’ relevant
witnesses with material technical, marketing, and financial knowledge for whom a NDCA-based
trial would be more convenient. The Court could discern the relevance of each witness to the
accused technology because Mr. Wong’s declaration included each potential witness’s title, the
title of the team they belonged to, and the technology that team supports. Defendants have also
identified four inventors of the Asserted Patent located in Vancouver for whom an NDCA trial

16

would be more convenient. The convenience that a California-based trial to witnesses in or near
the NDCA provides dwarfs the inconvenience Mr. Williams may suffer due to transfer.
Accordingly, this factor heavily favors transfer.
4. All other practical problems that would make trial easy, expeditious and
inexpensive is neutral.
When considering the private interest factors, courts must consider “all other practical
problems that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at
314. “[G]arden-variety delay associated with transfer is not to be taken into consideration when
ruling on a § 1404(a) motion to transfer” but delay in already protracted litigation may account for
some weight. In re Radmax, 720 F.3d at 289. “[T]he ability to transfer a case to a district with
numerous cases involving some overlapping issues weighs at least slightly in favor of such a
transfer.” In re Apple, 979 F.3d at 1344. But district courts should not rely “on considerations of
judicial economy arising after the filing of the lawsuit or the transfer motion,” such as, for example,
suits filed in the transferor district after a request to transfer. In re Netscout, 2021 U.S. App. LEXIS
30500, at *12. Further, “the mere co-pendency of infringement suits in a particular district” does
not automatically tip transfer in one direction or the other. Id. at *13.
Five co-pending cases in the WDTX involve the same plaintiff and overlapping patents.
VoIP-Pal.com, Inc. v. Google LLC, No. 6:20-cv-269-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v.
Amazon.com, Inc., No. 6:20-cv-272-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. Apple, Inc., No.
6:20-cv-275-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. AT&T, Inc., No. 6:20-cv-325-ADA (W.D.
Tex.); VoIP-Pal.com, Inc. v. Verizon Comms., Inc., No. 6:20-cv-327-ADA (W.D. Tex.). Three of
these cases have since been dismissed. VoIP-Pal.com, Inc. v. Apple, Inc., No. 6:20-cv-275-ADA
at Dkt. No. 49 (W.D. Tex. Mar. 24, 2021); VoIP-Pal.com, Inc. v. AT&T, Inc., No. 6:20-cv-325-

17

ADA at Dkt. No. 51 (W.D. Tex. Mar. 24, 2021); VoIP-Pal.com. Inc., v. Verizon Comms., Inc., No.
6:20-cv-327-ADA at Dkt. No. 49 (W.D. Tex. Apr. 1, 2021).
This case has not proceeded to a Markman hearing and so has not yet matured to a stage
where this factor biases toward transfer. Defendants argue that the NDCA’s history—including
several waves of cases involving related patents and parties—weighs in favor of transfer.
Defendants propose that judicial economy would be best served by handing this Action to an
NDCA court well-versed in this family of patents and familiar with VoIP-Pal and the Defendants.
Dkt. No. 56 at 13. It would also allegedly help avoid an inconsistent ruling. Id. Yet VoIP-Pal has
noted that Judge Koh, after taking the bench on the U.S. Court of Appeals for the Ninth Circuit,
can no longer lend her knowledge and experience to this Action were it transferred. Dkt. No. 72 at
12. Judge James Donato has taken over any VoIP-Pal cases remaining the NDCA and, according
to VoIP-Pal, he has not made any substantive ruling. Dkt. No. 72 at 12. Defendants retort, however,
that there is a “common NDCA Magistrate Judge” who is and was assigned to “multiple waves”
of VoIP-Pal’s cases. Dkt. No. 78 at 5.
The Court finds that any economy to be gleaned from transfer dissipated with Judge Koh’s
elevation to appellate court. Though a magistrate judge may be assigned to the relevant cases Judge
Koh presided over, Defendants have not cited any substantive orders from that magistrate judge
evidencing a familiarity with the legal and technical issues bearing on this Action or even actions
involving related patents. Accordingly, this factor is neutral.
C. The public interest factors are neutral.
The Court finds that one public interest factor favors transfer, and one factor weighs
slightly against transfer. The remaining public interest factors are neutral. Overall, the public
interest factors are neutral.

18

1. The court congestion factor weighs slightly against transfer.
The relevant inquiry under this factor is “[t]he speed with which a case can come to trial
and be resolved.” In re Genentech, 566 F.3d at 1347; In re Apple, 979 F.3d at 1343. A faster
average time to trial means more efficient and economical resolutions of the claims at issue. That
said, “[a] court’s general ability to set a fast-paced schedule is not particularly relevant to this
factor.” In re Apple, 979 F.3d at 1344. Moreover, when other relevant factors weigh in favor of
transfer or are neutral, “then the speed of the transferee district court should not alone outweigh
all of those other factors.” In re Genentech, 566 F.3d at 1347.
The Federal Circuit has held that a difference in the number of pending cases between the
transferor and transferee forums is “too tenuously related to any differences in speed by which
these districts can bring cases to trial.” Id. In another case, it has opined that a “proper” analysis
“looks to the number of cases per judgeship and the actual average time to trial.” In re Juniper
Networks, Inc., No. 2021-156, 2021 U.S. App. LEXIS 29812, at *8 (Fed. Cir. Oct. 4, 2021).
Defendants argue that the court congestion metrics for the NDCA and the WDTX are
“fairly similar”: 22.0 months for the NDCA versus 19.1 months for the WDTX. Dkt. No 56 at 14;
Dkt. No. 56-52. However, Defendants use statistics weighed by outdated information from 2020,
before the NDCA felt the full impact of halting trials due to COVID-19, so Defendants’ statistics
do not accurately represent current times to trial.
In addition, Defendants argue that VoIP-Pal is a “non-operating company whose sole
business is licensing, so [VoIP-Pal] has no ‘need of a quick resolution.’” In re Juniper Networks,
14 F.4th at 1322–23; Dkt. No. 56 at 14. This is contrary to public policy. The Federal Circuit has
long held that “[r]ecognition must be given to the strong public policy favoring expeditious
resolution of litigation.” Kahn v. GMC, 889 F.2d 1078, 1080 (Fed. Cir. 1989). Congress itself has

19

acknowledged the importance of the “quick” and inexpensive resolution of patent disputes, going
so far as to erect a sprawling administrative regime—that does not differentiate between worked
and unworked patents—for that purpose. See, e.g., Ethicon Endo-Surgery, Inc. v. Covidien LP,
826 F.3d 1366, 1367 (Fed. Cir. 2016). “Consistent with such expressions of public policy, the
public has an interest in the rapid resolution of patent disputes (without reference to whether the
patent is being worked).” Billjco, LLC v. Apple Inc., No. 6:21-CV-00528-ADA, 2022 WL 607890,
at *8 n.2 (W.D. Tex. Mar. 1, 2022).
Finally, Defendants contend that the NDCA has a “history of expeditiously resolving VoIPPal’s patent cases,” suggesting greater judicial efficiency. Dkt. No. 56 at 14. However, none of the
prior cases went to trial. Dkt. No. 72 at 13. Thus, the Court finds this factor weighs against transfer.
2. The local interest in having disputes decided in the home forum favors
transfer.
Under this factor, the Court must evaluate whether there is a local interest in deciding local
issues at home. Volkswagen II, 545 F.3d at 317. Local interests in a patent case “are not a fiction.”
In re Samsung, 2 F.4th at 1380. “A local interest is demonstrated by a relevant factual connection
between the events and the venue.” Word to Info, Inc. v. Facebook, Inc., No. 3:14-cv-04387-K,
2015 WL 13870507, at *4 (N.D. Tex. Jul. 23, 2015). “This factor most notably regards not merely
the parties’ significant connections to each forum writ large, but rather the ‘significant connections
between a particular venue and the events that gave rise to a suit.’” In re Apple, 979 F.3d at 1344
(quoting In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010)) (emphasis in original).
Courts should not heavily weigh a party’s general contacts with a forum that are untethered
from the lawsuit, such as a general presence in the district. In re Apple, 979 F.3d at 1344. (“The
court’s reliance on [the defendant’s Austin] offices, which lack such a connection to the locus of

20

the events giving rise to the dispute, amounts to a clear abuse of discretion.”). Rather, the Federal
Circuit has accorded significant weight under this factor to the location where the accused product
or functionality was “designed, developed, and tested.” In re Apple, 979 F.3d at 1345. It has
accorded no weight to the location of the sale of an accused product where that product is offered
nationwide. In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009).
As indicated above, Defendants submit that the Accused Instrumentalities were designed
and developed in the NDCA. Dkt. No. 56 at 14–15. Defendants’ presence is substantially located
in the NDCA, with

being located there. Wong Dec. ¶ 2. This

is much stronger than the parties’ combined presence in WDTX. VoIP-Pal claims that Meta has a
significant presence in Austin because of their upcoming deals and numerous posts for job
openings in Austin. Dkt. No. 72 at 13; Dkt. No. 72-24. However, Mr. Wong has persuaded the
Court that the research, design, and development of the accused technology mostly occurred in the
Northern District of California, and partially in Washington state. Wong Dec. ¶¶ 8–13, 17, 19–20.
This establishes a strong interest for resolving this dispute in the NDCA.
VoIP-Pal argues that its headquarters in Waco generates a local interest in this Action. Dkt.
No. 72 at 14. VoIP-Pal only moved its headquarters here in March 2021. See Dkt. No. 56 at 6.
Defendants have credibly suggested that very little work is being handled out of VoIP-Pal’s Waco
headquarters— VoIP-Pal’s CEO resides in Vancouver and VOIP’s CFO lives in Fort Worth. See
Dkt. No. 56 at 6; Dkt. No. 72 at 1 (conceding its CFO’s residence). The Court will not accord this
“recent and ephemeral” presence much weight, if any at all. Accordingly, the Court finds that this
factor favors transfer.

21

3. The familiarity with governing law factor is neutral.
Both parties dispute the effect of

in this factor. However,

does not affect this factor because

Other than this dispute, the
parties agree this factor is neutral. Accordingly, the Court finds it neutral.
4. The conflict of laws factor is neutral.
The parties do not dispute that this factor is neutral and the Court agrees.
IV.
Because the Court decided to transfer this case under the traditional transfer analysis, the
Court does not reach the issue of whether the parties’
for this case.
V.

CONCLUSION

This a case where the majority of the party witnesses, third-party witnesses, and evidence
are in or near the NDCA. Three private interest factors weigh in favor of transfer and one factor is
neutral. The faster time to trial here in the WDTX cancels out the local interest by the NDCA. All
remaining public interest factors are neutral. Given the foregoing, the Court finds that Defendants
have shown that the NDCA is clearly more convenient than this District. Defendants’ Motion to
Transfer is GRANTED. It is hereby ORDERED that this case shall be transferred to the Northern
District of California.
SIGNED this 22nd day of July, 2022.

ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE

22