SurfCast, Inc. v. Microsoft Corporation
Redacted ORDER re 55 Sealed Order. Signed by Judge Alan D Albright. (sm3)
Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 1 of 20
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
MEMORANDUM OPINION & ORDER
Came on for consideration this date is Defendant Microsoft Corporation’s (“Microsoft” or
“Defendant”) Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a) to the Western District
of Washington filed on April 22, 2022. ECF No. 33 (the “Motion”). Plaintiff SurfCast, Inc.
(“SurfCast” or “Plaintiff”) filed an opposition on August 5, 2022, ECF No. 50, to which Microsoft
filed a reply on August 19, 2022. ECF No. 51. After careful consideration of the Motion, the
parties’ briefs, and the applicable law, the Court GRANTS Microsoft’s Motion to Transfer Venue
Pursuant to 28 U.S.C. § 1404(a).
On July 22, 2021, SurfCast filed its complaint against Microsoft, alleging infringement of
U.S. Patent Nos. 9,032,317 (the “’317 patent”), 9,043,712 (the “’712 patent”), 9,363,338 (the
“’338 patent”), and 9,946,434 (the “’434 patent”) (collectively, the “Asserted Patents”). ECF No.
1 (the “Complaint”). SurfCast is a Delaware corporation with its principal place of business in
Lincolnville, Maine. Id. ¶ 2. Microsoft is a Washington Corporation with its principal place of
business in Redmond, Washington. Id. ¶ 3. According to SurfCast’s Complaint, Microsoft’s
products infringe the Asserted Patents by employing a display with a user interface that provides
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“Live Tiles.” Id. ¶¶ 18, 42. For all of the Asserted Patents, SurfCast identifies the following various
products: the Microsoft Surface; the Xbox One; products with the Windows Phone 7 Operating
System; products with the Windows RT Operating System; products with the Microsoft Windows
8, Microsoft Windows 8 Pro, and Microsoft Windows 8 Enterprise Operating Systems; products
with the Microsoft Windows 8.1, Microsoft Windows 8.1 Pro, and Microsoft Windows 8.1
Enterprise Operating Systems; and products with the Microsoft Windows 10, Microsoft Windows
10 Pro, and Microsoft Windows 10 Enterprise Operating Systems. Id. ¶ 17. The Court will refer
to all these products as the “Accused Products.”
On April 22, 2022, Microsoft filed its Motion under 28 U.S.C. § 1404(a), seeking transfer
to the Western District of Washington (the “WDWA”). ECF No. 33. That Motion is now ripe for
II. LEGAL STANDARD
In patent cases, regional circuit law governs motions to transfer under § 1404(a). 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 of Am., 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
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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, 102 S. Ct. 252,
70 L. Ed. 2d 419 (1981)). 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. 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 moving party has the burden to prove that a case should be transferred for convenience.
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-00118-JRG, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27,
Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 4 of 20
2019). Yet, the Federal Circuit has clarified that, for a court to hold that a factor favors transfer,
the movant need not show an individual factor clearly favors transfer. In re Apple Inc., 979 F.3d
1332, 1340 (Fed. Cir. 2020).
Venue and Jurisdiction in the Transferee Forum
The threshold determination in the § 1404(a) analysis is whether this case could initially
have been brought in the destination venue—the Western District of Washington. 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). Microsoft asserts that this case could have been
brought in the WDWA because “Microsoft is headquartered in the Western District of
Washington.” ECF No. 33 at 4. SurfCast does not dispute this contention. See generally, ECF No.
50. This Court finds that venue would have been proper in WDWA had SurfCast filed this case
there. Thus, the Court proceeds with its analysis of the private and public interest factors to
determine if the WDWA is clearly more convenient than the Western District of Texas (“WDTX”).
Private Interest Factors
Relative Ease of Access to Sources of Proof
“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. Sep. 10, 2019). This factor
relates to the relative—not absolute—ease of access to non-witness evidence. See In re Radmax,
720 F.3d at 288; In re Apple, 979 F.3d at 1339. “[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, 14 F.4th 1313,
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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; 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: physical documents and other evidence; and 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). The Federal Circuit has held, however, that it is 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 & 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. Activities.
In re Google LLC, No. 2022-140, 2022 WL 1613192, at *4 (Fed. Cir. May 23, 2022).
Microsoft represents that the “accused products were designed, developed, supported,
marketed, and sold from Microsoft’s headquarters in Redmond, Washington and its nearby
Bellevue, Washington offices, in the Western District of Washington.” ECF No. 33 at 4 (citing
ECF Nos. 33-3 ¶13, 33-2 ¶ 13). It further contends that “evidence — including records relating to
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research and design of the accused products, source code, and marketing, sales, and financial
information for the accused products — is stored in [WDWA].” Id. (citing ECF Nos. 33-3 ¶¶13–
14, 33-2 ¶¶ 13–15). Therefore, Microsoft asserts that this factor strongly favors transfer. Id.
By contrast, SurfCast concedes that it has no physical sources of proof of its own located
inside of the WDTX because they are all located in Washington, D.C. and Maine. ECF 50 at 3. In
order to show that this factor weighs against transfer, SurfCast instead relies on the testimony of
one Microsoft 30(b)(6) witness who, according to SurfCast, “testified that all technical documents
relating to the research and design of the accused Live Tile functionality, including source code,
are available electronically.” Id. at 2. Given Microsoft’s offices in WDTX, SurfCast contends that
“[b]ecause the relevant Microsoft documentation is accessible via Microsoft’s offices in both the
Western District of Washington and the Western District of Texas, the availability of those
documents do not support transfer.” Id. at 3.
In addition to the electronic availability of Microsoft sources of proof in WDTX, SurfCast
also points to various “third-party sources of proof” that “are available only in the Western District
of Texas.” Id. First, SurfCast contends that one such source of proof is “Zumobi, Inc. . . . a nowdefunct company
.” Id. According to SurfCast, “[o]ne of
Zumobi’s primary financial backers was Hunt Ventures (a/k/a Hunt Technology Ventures), which
was based in Austin.” Id. SurfCast then argues that because “Zumobi was later acquired by ESW
Capital LLC in 2019” and “ESW Capital LLC is headquartered in Austin,” the “relevant Zumobi
documents will be located in Austin as well.” Id. at 4. In reply, Microsoft first argues that the
“Court should ignore this theory because SurfCast concealed it during venue discovery.” ECF No.
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51 at 2 (citing ECF No. 51-3 at 2; ECF No. 51-5 at 1–8; ECF No. 51-4 at 74:3–75:4). In the
alternative, Microsoft argues that this theory weighs in favor of transfer to Washington because
“any ZenZui/Zumobi documents are also likely in Seattle, where the companies were
headquartered and their former employees and the ‘investor’ identified by Santoro (Opp. Ex. 19 ¶
3) reside.” Id. at 3.
Second, SurfCast identifies a number of alleged third-party fact witnesses located in or
near the WDTX. Id. at 4–5. These third-party fact witnesses identified by SurfCast, however, are
merely online journalists who happen to be located in Texas and authored articles “on Microsoft
products that include the accused Live Tiles functionality.” Id. In reply, Microsoft argues that
“[u]sers and journalists all over the world (including in Washington) have written about Live Tiles,
with content substantially identical to what SurfCast cites.” ECF No. 51 at 3 (citing various users
and journalists in the WDWA who have written on Live Tiles).
Upon review, the relevant sources of proof are located in WDWA, shifting this factor in
favor of transfer. Microsoft submitted declarations showing that its relevant documents were
created and stored in Washington. See ECF No. 33-2 ¶ 14; ECF No. 33-3 ¶ 14; ECF No. 51-1 at
18:2–6, 19:11–20:5. SurfCast’s arguments to the contrary that Microsoft’s documents are equally
available in Microsoft’s offices in the WDTX are unavailing because the Federal Circuit has
reaffirmed time and again that this factor considers the relative ease of access to sources of proof
and, as such, district courts are essentially barred from considering the ease of transmission of
electronic documents barring exceptional circumstances. See In re Apple Inc., No. 2022-128, 2022
WL 1196768, at *4 (Fed. Cir. Apr. 22, 2022) (first citing In re Apple Inc., No. 2021-181, 2021
WL 5291804, at *2 (Fed. Cir. Nov. 15, 2021), and then citing In re Juniper, 14 F.4th at 1321).
Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 8 of 20
Without weighing in on the merits of SurfCast’s claims that the Zumobi
SurfCast hid this theory during discovery, this Court finds that any such evidence relating to
Zumobi and Microsoft is neutral with regards to this factor. Both parties have shown ease of access
to sources of proof relating to Zumobi in the WDTX and the WDWA. This Court, however,
accords little weight to this theory because SurfCast has not presented any specific documents or
physical evidence regarding Zumobi in the WDTX.
As to SurfCast’s arguments regarding a number of alleged third-party fact witnesses
located in or near the WDTX, the Court finds that this evidence is also neutral with regard to this
factor. In particular, SurfCast attempts to manufacture venue convenience by presenting
individuals of tenuous relevance in Texas. But SurfCast does not contend that these individuals
have relevant documents beyond certain online articles, and the articles’ content has no special
connection to the WDTX. Importantly and as noted by Microsoft, users all over the world
(including in the WDWA) have written about the accused “Live Tiles” technology and the Accused
Products. Accordingly, the alleged third-party witnesses located in or near the WDTX identified
by SurfCast do not weigh against transfer.
Given that Microsoft has shown that there is easier access to sources of proof in the
WDWA, and because SurfCast does not identify any specific evidence in or around this District,
this factor favors transfer.
Availability of Compulsory Process
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.”
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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
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).
The Federal Circuit has held that, under Fifth Circuit law, “when there is no indication that
a non-party witness is willing, the witness is presumed to be unwilling and considered under the
compulsory process factor.” In re HP Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir.
Sept. 25, 2018); see also In re Hulu, LLC, No. 2021-142, 2021 U.S. App. LEXIS 22723, at *10
(Fed. Cir. Aug. 2, 2021) (“[W]here . . . the movant has identified multiple third-party witnesses
and shown that they are overwhelmingly located within the subpoena power of only the transferee
venue, this factor favors transfer even without a showing of unwillingness for each witness.”).
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)).
Microsoft’s Motion claims that the nonparty witnesses with relevant knowledge are former
Microsoft employees and that a majority of them would be subject to the subpoena power of the
WDWA. ECF No. 33 at 5–6. Microsoft identifies eighteen total former employees with that have
relevant information, with fifteen former employees being subject to the subpoena power of the
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WDWA. See id. First, Microsoft identifies that “five of the Redmond-based employees SurfCast
deposed in the previous litigation have since left Microsoft.” Id. at 5. According to Microsoft,
“[t]hree appear to still be in the Seattle area . . . and would be subject to the subpoena power of the
Washington Court but not this Court.” Id. Second, Microsoft identifies seven inventors who are
named on the ’632 Patent, which is identified in the complaint. Id. at 6. According to Microsoft,
all seven of these inventors are former Redmond-based Microsoft employees and that six of them
remained near Seattle. Id. Third, Microsoft identifies twelve former employees as being prior art
witnesses for Microsoft’s own prior art systems. Id. According to Microsoft, six of these twelve
former employees are subject to subpoena power of WDWA. Id. Finally, Microsoft asserts that it
is not aware of any other witness for whom the Court’s subpoena power might be relevant. Id.
SurfCast identifies two categories of non-parties that reside in or near this district and
would require compulsory process. In the first category, SurfCast reiterates a number of the alleged
third-party fact witnesses that it identified above in regards to the sources of proof factor above.
ECF No. 50 at 6. As discussed above, these third-party fact witnesses identified by SurfCast are
merely online journalists who happen to be located in Texas and authored articles “on Microsoft
products that include the accused Live Tiles functionality.” Id. at 4–5. SurfCast contends that these
third-party fact witnesses have information “relevant to secondary considerations of
nonobviousness.” Id. at 7–8.
In the second category, SurfCast identifies a number of companies with offices in the
WDTX that, according to SurfCast, “are highly likely to possess information relating to the
Microsoft’s interactions with third parties to develop products with Live Tiles functionality.” Id.
at 6. In particular, SurfCast identifies the following companies: Nvidia Corporation, Qualcomm
Inc., Texas Instruments, Inc., Meta Platforms, Inc., Amazon.com, Inc., and eBay, Inc. Id. at 6–7.
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While Nvidia, Texas Instruments, Meta, Amazon, and eBay have locations in both the WDWA
and the WDTX, SurfCast contends that “Qualcomm has a location in Austin, but does not have
one in Washington.” Id. at 7 (citing ECF No. 50-1).
SurfCast objects to all of Microsoft’s identified third-party witnesses on the ground that
they are only Microsoft’s “own former employees” and that Microsoft “provides no detailed
information about their knowledge, its relevance to the issues in this case, or why that information
cannot be provided by current Microsoft employees.” ECF No. 50 at 9. As for Microsoft’s prior
art witnesses, SurfCast contends that “they are generally unlikely to testify at trial” and therefore
should not be accorded any weight. See id. (citing In re: Hulu, LLC, 2021 WL 3278194, at *3).
Upon consideration of the evidence and arguments, the Court finds that this factor weighs
in favor of transfer. Microsoft identified fifteen former employees being subject to the subpoena
power of the WDWA. ECF No. 33 at 5–6. The Court finds significant that SurfCast did not dispute
that these fifteen former employees were subject to the subpoena power of the WDWA and instead
disputed only their relevance to this case. See generally, ECF No. 50. By contrast, SurfCast
identified nine third-party witnesses located in or near this district and claimed that “most . . . are
subject to this Court’s subpoena power.” Id. at 9. The Court finds SurfCast’s argument that
Microsoft did not provide information about their knowledge or relevance to the issues in this case
without merit. While the Court is sympathetic to SurfCast’s argument and always appreciates more
detail when deciding venue disputes, Microsoft provided sufficient detail about most of its thirdparty witnesses. The Court finds especially significant the fact that three of Microsoft’s identified
third-party witnesses were deposed by SurfCast in a prior litigation involving the same “Live
Tiles” technology at issue here. See ECF No. 51 at 3–4 (citing ECF No. 51-2 at 7). The Court also
rejects SurfCast’s argument that Microsoft’s prior art witnesses should be given no weight. The
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case cited by SurfCast rejected such a “categorical rejection” to prior art witnesses. See In re Hulu,
LLC, 2021 WL 3278194, at *3.
As to the six third-party companies with allegedly relevant information identified by
SurfCast, the Court acknowledges the fact that all six of these companies have regional offices in
the WDTX. See ECF No. 50 at 6–7 (citing ECF No. 50-14–18). The Court also appreciates the
fact that one of the companies, Qualcomm, has an office in the WDTX but does not also have an
office in the WDWA. See id. SurfCast, however, fails to identify any evidence that the regional
Texas offices of these companies had any involvement with the accused “Live Tiles” technology
and fails to identify any potential witness from these companies, let alone any potential witness
based in Texas. See id.
Upon consideration, the Court will, based on the relevant declarations from Microsoft,
accord weight to the Washington-based former Microsoft personnel. The Court is satisfied that
each has relevant knowledge and resides in Washington. Because they are based in Washington,
the transferee court can compel their testimony at trial—this Court cannot. As to those witnesses
whose testimony this Court can compel, the Court finds the individuals put forward by SurfCast
are of tenuous relevance to this case. On balance, the individual and companies identified by
SurfCast are out weighed by the numerous individuals with relevant knowledge in the WDWA.
Given that, this factor weighs heavily in favor of transfer. In re Apple, Inc., 581 F. App’x at 889
(“[The compulsory process] factor will weigh heavily in favor of transfer when more third-party
witnesses reside within the transferee venue than reside in the transferor venue.”). Accordingly,
this factor weighs in favor of transfer.
Cost of Attendance of Willing Witnesses
The Fifth Circuit established the “100-mile rule,” which provides that “[w]hen the distance
between an existing venue for trial of a matter and a proposed venue under § 1404(a) is more than
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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 U.S. App. LEXIS
29137, at *14 (Fed. Cir. Sept. 27, 2021) (quoting In re TracFone Wireless, Inc., 852 F. App’x 537,
539 (Fed. Cir. 2021)). This has led the Federal Circuit to disregard distance altogether in favor of
considering travel-time statistics. See, e.g., id. at *12 (“[T]ime is a more important metric than
distance.”). Or to simply disregard 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 court transfers the action or not. See In re Apple Inc., 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.
The Court holds that this factor favors transfer because of the number of relevant current
and former Microsoft personnel with relevant knowledge in the WDWA. The Court also finds that
this factor favors transfer because of the failure of SurfCast to point to any specific individuals in
or near the WDTX with more than a tenuous relevance to this case.
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Microsoft argues regarding three categories of potential witnesses for this case: (1) Current
and former Microsoft personnel near the WDWA, (2) witnesses located in or near WDTX, and (3)
witnesses located residing outside of both Washington and Texas. ECF No. 33 at 7–9.
First, Microsoft argues that “testifying in Seattle is indisputably more convenient than
travelling to Waco” for its own “party witnesses located in or near Redmond.” ECF No. 33 at 7.
According to Microsoft’s declarations, this would include “25 current employees with relevant
knowledge in or near Redmond.” ECF No. 51 at 1. Microsoft also identifies a third-party witness
who was deposed in Seattle in a prior case between the two parties and who still lives in the Seattle
area. ECF No. 33 at 7.
Second, Microsoft contends that “there are no known witnesses located near this Court.”
Id. at 7. According to Microsoft, “the relevant work at Microsoft was not done in Texas.” Id. (citing
ECF No. 33-3 ¶¶ 13–14; ECF No. 33-2 ¶¶ 13–14).
Third, Microsoft contends that the remaining “witnesses residing outside of both
Washington and Texas, Seattle generally would be more convenient than Waco.” Id. at 8.
According to Microsoft, “[o]ne current Microsoft employee who was deposed in the prior case has
relocated to London.” Id. at 7. Further, Microsoft asserts that the “[t]hree named inventors, who
were all deposed in the prior case, appear to be in New York City, Denmark, and Belgium.” Id. at
7–8 (citing ECF Nos. 1-1, 1-2, 1-3). And Microsoft contends that the “prosecuting attorneys are in
South San Francisco, California and Los Altos, California.” Id. at 8. Finally, Microsoft alleges a
number of third-party witnesses “who were deposed in the prior case” who “appear to be in
Longmont, Colorado; Tampere, Finland; and Logan, Utah.” Id. For all of these witnesses,
Microsoft cites the Federal Circuit’s opinion in Google, 2021 WL 4427899 at *4, that “time is a
more important metric than distance” in evaluating the relative convenience of two forums. Id. at
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8. Because “[t]he Seattle-Tacoma International Airport offers direct flights to numerous domestic
and international destinations, including London, Helsinki, Amsterdam, New York, San Francisco,
San Jose, Denver, and Salt Lake City” and “[t]here is no major airport in the Waco Division of the
Western District of Texas,” Microsoft contends that “it often takes less time and hassle for a
witness to travel to a different forum, such as Seattle, even when the alternate forum is
geographically farther away than Waco.” Id. Thus, Microsoft places a heavy emphasis on whether
direct flights are available for the named inventors to the transferee and transferor forums. See id.
In response, SurfCast first argues that none of its own witnesses are located in the WDWA.
ECF No. 50 at 10. According to SurfCast, “SurfCast’s CEO and one of the inventors of the
Asserted Patents resides in Lincolnville, Maine, while the other two inventors live in Brussels,
Belgium; and Copenhagen, Denmark.” Id. For the two inventors overseas, SurfCast contends that
“travel from Brussels and Copenhagen to either the WDTX or the WDWA would be equivalent.”
Id. And for SurfCast’s CEO, SurfCast contends that “the distance from Lincolnville, ME to Waco
is approximately 2,055 miles, while the distance from Lincolnville to Seattle is 3,231 miles.” Id.
As to its nonparty witnesses, SurfCast contends that the “overwhelming majority of
relevant nonparty witnesses are in or near this forum.” Id. Yet again, SurfCast puts forward a
number of online journalists of questionable relevance to this case based in or near the WDTX as
its “relevant nonparty witnesses.” Id. at 10–11. SurfCast contends, without citing any authority,
that these nonparty witnesses “are accorded more weight in the convenience analysis, the witness
inconvenience factor weighs heavily against transfer.” Id. at 11. Finally, SurfCast addresses
Microsoft’s former employees. Id. SurfCast contends that Microsoft’s former employees should
be “‘discounted or ignored entirely’ absent specific information about their involvement in the
accused products.” Id. (emphasis in original).
Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 16 of 20
Here, the Court holds that this factor favors transfer. As this Court did in Interactive
Graphic Sols. LLC v. Microsoft Corp., No. 6:21-CV-00462-ADA, 2022 WL 1314462, at *4 (W.D.
Tex. Apr. 20, 2022), the Court quickly disposes of two prevalent arguments in Plaintiff and
Defendant's briefing. First, contrary to SurfCast’s argument, the Federal Circuit has made clear
that party witnesses are not to be afforded less weight. In re Juniper Networks, 14 F.4th 1313,
1319 (Fed. Cir. 2021); see also id. Second, contrary to Microsoft’s Motion, whether direct flights
are available to one forum over another is irrelevant. The Fifth Circuit applies the 100-mile rule
and the Federal Circuit has emphasized the focus on time away from home when traveling a
significant distance. Interactive Graphic Sols., 2022 WL 1314462, at *4. But, absent some
remarkable circumstance, whether a direct flight is available has no bearing on this Court's
Of the witnesses identified by the parties, Microsoft named twenty-five that are in the
transferee forum and SurfCast named nine of questionable relevance that are located in or near the
WDTX. Of the remaining witnesses, one is in Maine, two are in California, one is in Colorado,
one is in Finland, one is in Utah, one is in Belgium, and one is in the United Kingdom. In the
Court’s judgment, the Declarations submitted by Microsoft establish that most of the named
witnesses in the WDWA possess relevant and material knowledge for whom the WDWA would
be a more convenient venue. On balance, the majority of relevant witnesses reside in or near the
WDWA, while none of the credibly relevant witnesses reside in the WDTX. Accordingly, this
Court holds that this factor favors transfer.
Microsoft and SurfCast both concede that there are no practical problems. Accordingly,
this factor is neutral.
Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 17 of 20
Public Interest Factors
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.
Microsoft cites that as of December 31, 2021, the median time from filing to trial in civil
cases in WDWA was 26.9 months, compared to 25.5 months in WDTX. ECF No. 33 at 10. Yet,
Microsoft also cites WDWA’s lower number of pending cases per judge and lower number of
pending patent cases as evidence that the Washington is less congested and therefore favors
transfer. Microsoft also contends that SurfCast does not allege that it sells a product that uses the
Asserted Patents or competes with the Accused Products and is therefore not “in need of a quick
resolution because its position in the market is being threatened.” ECF No 33 at 11.
By contrast, SurfCast cites a recent opinion of this Court that evaluated the difference in
trial times between the WDTX and WDWA. ECF No. 50 at 11–12 (citing Interactive Graphic
Sols., 2022 WL 1314452, at *5). In Interactive Graphic Solutions, this Court found that
“[c]omparison of all WDWA and WDTX cases indicates this factor may be neutral, but a
comparison of apples to apples shifts this factor against transfer (under 2-year average in WDTX
compared to 3-year average in WDWA).” Interactive Graphic Sols., 2022 WL 1314452, at *5.
Thus, SurfCast contends that this factor weighs against transfer for the same reason as in
Interactive Graphic Solutions. ECF No. 50 at 11–12.
Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 18 of 20
As it did in Interactive Graphic Solutions, the Court finds this factor to weigh against
transfer. Interactive Graphic Sols., 2022 WL 1314452, at *5. The Court, however, understands
this is the most speculative factor, In re Genentech, 566 F.3d at 1347, and the Federal Circuit has
accorded it strikingly little weight in recent history.
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 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-4387-K,
2015 WL 13870507, at *4 (N.D. Tex. July 23, 2015). “[T]he sale of an accused product offered
nationwide does not give rise to a substantial interest in any single venue.” In re Hoffmann-La
Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009). “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 Inc., 979 F.3d at
1344 (quoting In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010)).
The WDWA has a local interest in this Action and this District has none. Microsoft alleges
that “[t]he events underlying SurfCast’s infringement claims — i.e., Microsoft’s creation,
development, and marketing of products with the Live Tiles functionality — occurred at
Microsoft’s facilities in the greater Seattle area and did not occur in Texas.” ECF No. 33 at 11.
This factor weighs “strongly in favor of transfer” when “the accused products were designed and
developed in the transferee venue and are not related to [the defendant’s] presence in Texas.” In
re Google LLC, 2021 WL 4427899, at *6. Microsoft has a general presence in this District, but
this Court would abuse its discretion in according any weight to it. See In re Apple Inc., No. 2022137, 2022 WL 1676400, at *2 (Fed. Cir. May 26, 2022) (“The court’s reliance on [in-district]
Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 19 of 20
offices, which lack such a connection to the locus of the events giving rise to the dispute, amounts
to a clear abuse of discretion.”). But see In re Apple, 979 F.3d at 1352 (Fed. Cir. 2020) (Moore,
C.J., dissenting) (“Neither this court nor the Fifth Circuit has held that an accused infringer’s
general presence in a district is irrelevant to the district’s local interest in resolving the case.”
(citing In re Acer, 626 F.3d at 1255–56)). Accordingly, this factor favors transfer.
Familiarity of the Forum with Law-At-Issue
Microsoft and SurfCast concede that this factor is neutral. ECF No. 33 at 13–14; ECF No.
50 at 12. Accordingly, this factor is neutral.
Conflict of Laws
Microsoft and SurfCast concede that this factor is neutral. ECF No. 33 at 13–14; ECF No.
50 at 12. Accordingly, this factor is neutral.
Having considered the private and public interest factors, the Court’s conclusion for each
factor is summarized in the following table:
The relative ease of access to sources of proof
Availability of compulsory process to secure the
attendance of witnesses
Cost of attendance for willing witnesses
All other practical problems that make the trial of a
case easy, expeditious and inexpensive
Administrative difficulties flowing from court
Familiarity of the forum with the law that will
govern the case
Problems associated with conflicts of law
The Court’s Finding
Weighs in favor of transfer
Weighs in favor of transfer
Weighs in favor of transfer
Weighs against transfer
Weighs in favor of transfer
In establishing that the first three factors weigh in favor of transfer and the local interest
factor favors transfer while only the administrative difficulties flowing from court congestion
Case 6:21-cv-01018-ADA Document 58 Filed 09/20/22 Page 20 of 20
weighs against transfer, Microsoft has established that the WDWA is a clearly more convenient
venue. Microsoft’s Motion is therefore GRANTED. The Court ORDERS that the abovecaptioned case is transferred to WDWA.
SIGNED this twelfth day of September, 2022.
ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE
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