United States District Court, E.D. Texas, Marshall Division
PAYNE UNITED STATES MAGISTRATE JUDGE.
patent case, the Court will now consider Xilinx, Inc.'s
Motion to Dismiss Under Rule 12(b)(6) Or, In The Alternative,
to Transfer Venue Under 28 U.S.C. § 1404(a) [Dkt. # 18].
Since filing the motion, Xilinx has withdrawn the motion to
dismiss, and now only seeks transfer under § 1404(a).
Reply [Dkt. # 26] at 1.
reviewing the parties' briefing, the Court concludes the
motion to transfer should be GRANTED.
Xilinx is a Delaware corporation with its principal place of
business in San Jose, California. Wu Decl. (Jan. 22, 2017)
[Dkt. # 18-27] ¶ 3. Xilinx designs and develops FPGAs,
SoCs, MPSoCs, and 3D integrated circuits, which enable
applications that are both software defined and hardware
optimized. Id. ¶ 5. These circuits are
important to Cloud Computing, 5G Wireless, Embedded Vision,
and Industrial IoT. Id.
primary design and development takes place in its San Jose
facilities, which houses about 1500 employees. Id.
¶ 4, 7. But Xilinx does not manufacture or fabricate its
integrated circuit products. Id. ¶ 11. Instead,
Xilinx contracts third-party semiconductor manufacturing
companies, called foundries, to manufacture or fabricate
those products. Id.
Godo Kaisha is a Japanese corporation based in Tokyo. Compl.
[Dkt. # 1] ¶ 2. Godo Kaisha acquired the asserted
patents (U.S. Patents 7, 265, 450 and 7, 893, 501) from
Panasonic Corporation in 2014. USPTO Records [Dkt. # 18-9].
According to the USPTO database, the named inventors on the
patents-in-suit reside in Japan. USPTO Records [Dkt. #
18-12]; Compl. [Dkt. # 1] Exs. A, C.
Kaisha accuses the Xilinx Kintex-7 FPGA and Virtex-6 FPGA
device families as covered by the patents- in-suit. Compl.
[Dkt. # 1] ¶¶ 15, 24. Xilinx designed and developed
these device families in San Jose. Wu Decl. (Jan. 22, 2017)
[Dkt. # 18-27] ¶ 7. The Xilinx engineers with primary
knowledge of the design and development of the accused
products include Jennifer Wong and Jonathan Chang, both of
whom work at Xilinx's headquarters in San Jose.
contracts with two Taiwanese foundries to manufacture these
devices: Taiwan Semiconductor Manufacturing Company Limited
(TSMC Ltd) and United Microelectronics Corporation (UMC
Taiwan). Id. ¶ 12. Both foundries have
California-based subsidiaries that facilitate services for
U.S.-based customers. Xilinx's California engineers
interacted with the parent corporations and their
California-based subsidiaries in the process of designing the
accused products. Id. ¶¶ 12-14. Xilinx
identifies Jonathan Chang, Xin Wu, Charles Chen, Jimmy Lo,
Kevin Yan, and Kevin Wu as the individuals with knowledge of
these interactions, all of whom are located in San Jose.
Id. ¶ 12-14.
sells its products nationwide. Id. ¶ 15. The
main sales operation is in the Northern District of
California, but Xilinx has auxiliary sales offices in North
Carolina, Florida, Illinois, New Hampshire, and Texas.
Plano office has 14 employees. Id. ¶ 16. None
of those employees has responsibility for the design or
development of the accused products. Id. Moreover,
Xilinx is not aware of any technical records relevant to this
litigation that are kept in Texas. Rather, all records are
maintained and their access controlled by Xilinx's San
Jose headquarters. Id. ¶¶ 10, 17.
contends the foundries, TSMC Ltd and UMC Taiwan, may have
relevant information because they manufacture the accused
products for Xilinx in coordination with their U.S.
subsidiaries. TSMC NA, a subsidiary of TSMC Ltd, facilitates
services between customers such as Xilinx and TSMC Ltd., and
its employees provide technical support for and have
knowledge about the sales and marketing of the TSMC foundry
services. Company Overview of TSMC NA [Dkt. # 18-13]; Wu
Decl. (Jan. 22, 2017) [Dkt. # 18-27] ¶¶ 13-14. TSMC
NA is headquartered in San Jose, California. TSMC NA Company
Overview [Dkt. # 18-13]; TSMC Webpage [Dkt. # 18-14]. Neither
TSMC Ltd. nor TSMC NA have offices in this District. Chen
Decl. (Oct. 29, 2016) [Dkt. # 18-15]; Chu Decl. (Oct. 29,
2014) [Dkt. # 18-16].
USA, a subsidiary of UMC Taiwan, facilitates services between
customers such as Xilinx and UMC Taiwan. Its employees
provide technical support for and have knowledge about the
sales and marketing of the UMC foundry services used to
manufacture the accused products. UMC Group (USA) [Dkt. #
18-17]; Lin Decl. (Jan. 26, 2017) [Dkt. # 18-19]. UMC USA has
its principal place of business in Sunnyvale, California. UMC
Group (USA) [Dkt. # 18-17]; UMC Group (USA) Webpage [Dkt. #
18-18]. Neither UMC Taiwan nor UMC USA has offices in this
District. Lin Decl. (Jan. 26, 2017) [Dkt. # 18-19].
of whether the plaintiff's chosen venue is proper,
“[f]or the convenience of parties and witnesses, in the
interest of justice, a district court may transfer any civil
action to another district court or division where it might
have been brought.” 28 U.S.C. § 1404(a). A court
should grant a motion to transfer under § 1404(a) if the
transferee venue is clearly more convenient than the
plaintiff's chosen venue. In re Volkswagen, 545
F.3d 304, 315 (5th Cir. 2008) (en banc).
Fifth Circuit applies the “public” and
“private” factors for determining forum non
conveniens when deciding a § 1404(a) question.
In re Volkswagen, 545 F.3d at 314 n.9. The
“private” interest 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 a
trial easy, expeditious, and inexpensive. Piper Aircraft
Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981). The
“public” interest factors are: “(1) the
administrative difficulties flowing from court congestion;
(2) the local interest in having localized interests decided
at home; (3) the ...