TrackThings LLC v. Amazon.com, Inc. et al

Filing 61

ORDER DENYING DEFENDANTS MOTION TO TRANSFER VENUE UNDER 28U.S.C. § 1404(a) 41 Motion to Transfer Case. Signed by Judge Alan D Albright. (sv)

Case 6:21-cv-00720-ADA Document 61 Filed 05/09/22 Page 1 of 9

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
TRACKTHINGS LLC,
Plaintiff

6:21-CV-720-ADA

vs.
AMAZON.COM, INC., AMAZON.COM
SERVICES LLC, and EERO LLC,

Defendants
ORDER DENYING DEFENDANTS’ MOTION TO TRANSFER VENUE UNDER 28
U.S.C. § 1404(a)
Before the Court is Amazon.com Services LLC, Amazon.com, Inc., eero LLC’s
(collectively, “Defendants”) Motion to Transfer Venue under 28 U.S.C. § 1404(a) to the Northern
District of California (“NDCA”). ECF No. 41. Plaintiff TrackThings LLC (“TrackThings”) filed
its Response (ECF No. 47), and Defendants filed their Reply (ECF No. 54). After careful
consideration of the parties’ briefs and the applicable law, the Court DENIES Defendants’ Motion
to Transfer to the Northern District of California.
I. FACTUAL BACKGROUND
Plaintiff TrackThings filed this lawsuit accusing Defendants of infringing on U.S. Patent
Nos. 9,642,017 (“the ’017 patent”), 9,332,442 (“the ’442 patent”), and 10,107,893 (“the ’893
patent”; collectively “the Asserted Patents”). ECF No. 1. The Asserted Patents cover “wireless
networking technology that allows devices (such as computers, smartphones, televisions, printers,
etc.) in environments such as homes or small offices to wirelessly communicate with each other
and to wirelessly access the internet.” Id. ¶ 31. The patented inventions relate to “mesh WiFi”

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systems. Id. Thaddeus Gabara is the sole inventor of all three Asserted Patents. Id. ¶ 29. The
accused products include the eero (1st-gen) (Model Number A010001), eero Pro (2nd-gen) (Model
Number B010001), eero Beacon (Model Number D010001), eero (2nd-gen) (J010011), eero pro
6 (Model Number K010011), eero 6 (Model Number N010011), and eero 6 extender (Model
Number Q010011) (collectively referred to as the “Accused Products”). Id. ¶ 40.
Plaintiff TrackThings is a New Jersey limited liability company with its principal place of
business at 62 Burlington Road, Murray Hill, New Jersey 07974. Id. ¶ 1. It is the owner of the
Asserted Patents. Id.
Amazon.com, Inc. (“Amazon”) is a corporation organized under the laws of Delaware. Id.
¶ 2. Its principal place of business is in at 410 Terry Ave. North, Seattle, Washington 98109-5210.
Id. Amazon.com Services LLC (“Amazon Services”) is a Delaware corporation, with its principal
place of business at 410 Terry Ave. North, Seattle, Washington 98109-5210. Id. ¶ 3. eero LLC
(“eero”) is a wholly owned subsidiary of Amazon. Id. ¶ 4. eero is a Delaware corporation with its
principal place of business at 660 3rd Street, 4th Floor, San Francisco, California 94107.
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). 28 U.S.C.
§ 1404(a) provides that, “[f]or the convenience of parties and witnesses, . . . 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.” Id. “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)).

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The preliminary question under Section 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) (hereinafter “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) (hereinafter “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 that will govern the case; and (4) the avoidance of unnecessary problems
of conflict of laws of the application of foreign law.” Id. Courts evaluate these factors based on
the situation which existed at the time of filing, rather than relying on hindsight knowledge of the
defendant’s forum preference. Hoffman v. Blaski, 363 U.S. 335, 343 (1960).
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. Although the plaintiff’s choice of forum is not a
separate factor entitled to special weight, respect for the plaintiff’s choice of forum is encompassed
in the movant’s elevated burden to “clearly demonstrate” that the proposed transferee forum is
“clearly more convenient” than the forum in which the case was filed. In re Vistaprint Ltd., 628

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F.3d at 314–15. While “clearly more convenient” is not necessarily 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).
III. DISCUSSION
The threshold determination in the § 1404(a) analysis is whether this case could initially
have been brought in the destination venue—the NDCA. Volkswagen II, 545 F.3d at 312 (“The
preliminary question under § 1404(a) is whether a civil action “might have been brought” in the
destination venue.”). Although motions to transfer typically focus on the convenience factors, a
court must make an a priori determination of whether jurisdiction and venue are proper in the
transferee forum. As courts in the Fifth Circuit have articulated: “[t]here is no sliding scale, where
more convenience diminishes the showing required for jurisdiction and venue. Rather, the movant
must satisfy both the statutory requirements and clearly demonstrate that the transfer is clearly
more convenient.” Capella Photonics, Inc. v. Infinera Corp., No. 2:20-cv-00077, 2021 WL
518478, at *4 (E.D. Tex. Feb. 10, 2021). The burden to prove that this case might have been
brought in the transferee venue falls squarely upon the movant. Volkswagen II, 545 F.3d at 312
(“a moving party . . . must satisfy the statutory requirements and clearly demonstrate that a transfer
is [for convenience]”); see also Chirife v. St. Jude Med., Inc., No. 6:08-CV-480, 2009 U.S. Dist.
LEXIS 50482, 2009 WL 1684563, at *1 (E.D. Tex. June 16, 2009). If the movant has not satisfied
that burden, the Court cannot transfer the case. Japan Display Inc. v. Tianma Microelectronics
Co., No. 2:20-CV-00283-JRG, 2021 U.S. Dist. LEXIS 160256, at *8 (E.D. Tex. Aug. 25, 2021)
(citing Hoffman v. Blaski, 363 U.S. 335, 340 (1960)) (“If it has not been shown that the transferee
court could hear the case, the Court has no ability to transfer, regardless of how convenient or

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inconvenient the transfer might be.”). The parties do not dispute that jurisdiction would be proper
in the NDCA. Rather, the sole dispute is whether Defendants have met their burden to prove that
venue would be proper in the NDCA.
Under 28 U.S.C. § 1400(b), a claim for patent infringement may be brought (1) “in the
judicial district where the defendant resides,” or (2) “where the defendant has committed acts
of infringement and has a regular and established place of business.” TrackThings argues that
Defendants have not met their burden to show that venue is proper as to two of the three
defendants—Amazon or Amazon Services in the NDCA. Concerned that Defendants’ briefing was
deficient, the Court asked for and received supplemental briefing on this specific issue. ECF Nos.
59 and 60.
The Court finds that venue is proper in the NDCA as to eero and Amazon Servies. First,
venue would be proper as to eero. It has a regular and established place of business—its
headquarters—in San Francisco, and it designs, develops, markets, and sells the Accused Products
in the NDCA. ECF No. 59 at 1. Second, venue would be proper as to Amazon Services. It owns
and operates offices in the Bay Area, meaning it has at least one regular and established place of
business in the NDCA, and it sells the Accused Products through its website to customers in the
NDCA. ECF No. 59-1. The difficult question, and the focus of this opinion, is whether venue
would be proper as to the third defendant, Amazon.com, Inc.
Amazon.com, Inc. is a holding company that operates exclusively through its subsidiaries
(which include the two co-defendants). ECF No. 59 at 1. Amazon states that it has 16 offices in
the Bay Area, giving it a regular and established place of business in the NDCA. ECF No. 41 at 3.
What is unclear is whether Amazon.com, Inc. has committed acts of infringement in the NDCA.

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Although Defendants assert that Amazon.com, Inc. has committed acts of infringement in the
NDCA, there are two major problems with its argument.
First, the sole basis for Amazon.com, Inc.’s argument is its statement that “by virtue of its
subsidiaries, Amazon.com, Inc. has a regular and established place of business in the NDCA and
the same acts on which TrackThings bases venue and jurisdiction for this defendant in this district
occur in the NDCA.” ECF No. 59 at 1 (emphasis in original). In other words, it argues that because
eero and Amazon Services have committed acts of infringement in the NDCA, Amazon.com, Inc.,
as the parent company, has therefore committed acts of infringement in the NDCA. This position
asks the Court to impute the acts of the subsidiaries eero and Amazon Service to Amazon.com,
Inc. to establish venue. To do that, however, requires a substantial showing.
Venue may be imputed from a subsidiary to a parent under an alter-ego or veil-piercing
theory. Celgene Corp. v. Mylan Pharmaceuticals Inc., 17 F.4th 1111, 1125 (Fed. Cir. 2021).
“Where a parent and subsidiary observe corporate formalities, the plaintiff has a heavy burden to
establish a degree of control sufficient to impute the subsidiary’s jurisdictional contacts to the
parent.” Adm’rs of Tulane Educ. Fund v. Ipsen, S.A., 450 Fed. App’x 326, 331 (5th Cir. 2011). The
standard for imputing the acts of a subsidiary to a parent for purposes of establishing venue is
relaxed compared to the standard for imposing liability. WSOU v. Canon, et al, No. 6:20-CV-980ADA, slip op. at 14 (W.D. Tex. Feb. 25, 2022) (citing Minn. Min. & Mfg. Co. v. Eco Chem, Inc.,
757 F.2d 1256, 1265 (Fed. Cir. 1985)). A non-exhaustive list of factors courts may consider in
analyzing alter ego include whether:
(1) the parent and subsidiary have common stock ownership; (2) the parent and subsidiary
have common directors or officers; (3) the parent and subsidiary have common business
departments; (4) the parent and subsidiary file consolidated financial statements; (5) the parent
finances the subsidiary; (6) the parent caused the incorporation of the subsidiary; (7) the
subsidiary operated with grossly inadequate capital; (8) the parent pays salaries and other
expenses of subsidiary; (9) the subsidiary receives no business except that given by the parent;
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(10) the parent uses the subsidiary’s property as its own; (11) the daily operations of the two
corporations are not kept separate; (12) the subsidiary does not observe corporate formalities.
Bridas S.A.P.I.C. v. Gov’t of Turkmenistan, 447 F.3d 411, 418 (5th Cir. 2006).
Although they do not use the terms “alter-ego” or “pierce the veil,” Defendants asks this
Court to impute the acts of its subsidiaries to the parent, and courts in the Fifth Circuit decide
whether to do so using the framework articulated above. Here, however, Amazon.com, Inc. has
not provided any facts or argument as to why corporate formalities should be ignored and venue
should be imputed. A bare assertion that the acts of eero and Amazon Services should be imputed,
merely because they are subsidiaries, is insufficient. Defendants cite several cases where courts
have transferred Amazon.com, Inc. to the NDCA in an attempt to show that venue would similarly
be proper in this case. But in each of those cases, the plaintiffs either did not contest venue in the
NDCA, or Amazon.com, Inc. was able to show that acts of infringement have occurred in that
district. 1 There is nothing in the record to support that the co-defendant-subsidiaries’ acts of
infringement should be imputed to the parent. Even after the Court requested supplemental briefing
on this issue, Defendants were unable to provide any support as to why the acts of eero and
Amazon Services should be imputed to Amazon.com, Inc.
The second major problem with Amazon.com, Inc. arguing venue is proper in the NDCA
is that throughout Defendants’ Motion, Reply, and supplemental briefing, Amazon.com, Inc.

See Nazomi Commc’ns, Inc. v. Nokia Corp., No. SACV10151DOC (RNBx), 2010 WL 11509140, at *1-2 (C.D. Cal.
Oct. 12, 2010) (finding venue proper because Amazon.com, Inc. sold the accused products in the NDCA);
MasterObjects, Inc. v. Amazon.com, Inc., No. 20cv3478, 2020 WL 6075528, at *1 (S.D.N.Y. Oct. 15, 2020) (the
parties agreed venue would be proper in the NDCA); Droplets, Inc. v. Amazon.com, Inc., et al., No. 11-cv-392, 2012
WL 3578605, at *3 (E.D. Tex. June 27, 2012) (plaintiff did not dispute venue in the NDCA); Positive Techs., Inc. v.
Sony Elecs., Inc., No. 2:10-cv-263, Dkt. 137 (E.D. Tex. Apr. 12, 2011) (two-sentence opinion that did not explain
why venue would have been proper in the NDCA); GPNE Corp. v. Amazon.com, Inc., No. 11-426, 2012 WL
12914678, at *1 (D. Haw. May 24, 2012) (plaintiff did not oppose the motion to transfer); Eolas Techs. v. Amazon.
com, Inc., No. 6:15-cv-1038, Dkt. 327 (E.D. Tex. Apr. 28, 2017) (granting motion for reconsideration of a denial of
transfer, where the parties in the original transfer motion did not dispute venue in the NDCA); Wireless Recognition
Techs. LLC v. A9.com, Inc., et al., No. 10-cv-364, Dkt. 128 (E.D. Tex. Feb. 15, 2012) (plaintiff did not contest venue
in the NDCA).
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represents that it has not committed any acts of infringement in this case. Defendants belabor this
point in their briefing. See ECF No. 41 at 7 (“Amazon’s facilities and employees in this District
are irrelevant because the allegations in this case concern eero technology, not any technology
specific to Amazon”); id. at 11 (“TrackThings does not accuse any Amazon devices, technology,
systems, or products”); ECF No. 54 at 2 (“But Amazon’s facilities and operations in Austin are
not relevant to this case against eero products: TrackThings neither identifies Amazon products as
accused instrumentalities in its infringement contentions nor maps any claim limitation to any
Amazon technology. Amazon did not design or develop the accused eero technology, and the
location of its employees and documents are therefore irrelevant to this case.”) (internal citations
omitted). According to Defendants, the entities responsible for design, development, marketing,
and sales of the Accused Products are the co-defendants—not Amazon.com, Inc. 2 As Plaintiff
notes, Amazon.com, Inc. is caught in a Catch-22: it cannot simultaneously shift blame onto its codefendants to argue that it has not committed any acts of infringement and is totally uninvolved in
the facts of this case, while also arguing that it has committed acts of infringement through its
subsidiaries in the NDCA for the purposes of establishing venue.
The Court finds that Defendants have not met their burden to prove that this case could
have been brought in the transferee forum. Specifically, Defendants have failed to show that venue
would be proper for Amazon.com, Inc. in the NDCA. Although Amazon.com, Inc. has a regular
and established place of business, it has not shown that it has committed acts of infringement in
the NDCA. Proving that venue is proper in the transferee forum is an explicit statutory requirement

2
To be clear, this Court is aware that every defendant will contest that it has committed acts of infringement even if
it must argue in a motion to transfer that alleged acts of infringement have occurred in the transferee forum. The
unique circumstance here is that this defendant is denying any involvement whatsoever in the design, development,
marketing, or sale of the Accused Products. Ordinarily, this may be disposed of in a motion to dismiss, but Defendants
have no sought dismissal on the ground that venue is improper in this District.

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of the movant, and it is a threshold question in the § 1404 transfer analysis. Defendants had three
bites at the apple in trying to prove this issue: their Motion (ECF No. 51), Reply (ECF No. 54),
and supplemental briefing on this specific issue (ECF No. 59). Each time, they failed to show how
Amazon.com, Inc., who purportedly is not involved in the Accused Products in any way,
committed acts of infringement either by itself or through its subsidiaries in the transferee forum.
No matter how convenient the NDCA might be, this Court cannot reach that analysis because
Defendants failed to meet the threshold requirement.
IV. CONCLUSION
Defendants have failed to meet their burden to show that this case could have been brought
in the NDCA.
IT IS ORDERED that Defendants’ Motion to Transfer Venue to the Northern District of
California is DENIED.

SIGNED this 9th day of May, 2022.

__________________________________
ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE

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