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Godo Kaisha IP Bridge 1 v. Xilinx, Inc.

United States District Court, E.D. Texas, Marshall Division

September 14, 2017

GODO KAISHA IP BRIDGE 1, Plaintiff,
v.
XILINX, INC., Defendants.

          MEMORANDUM ORDER

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE.

         In this 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 Since filing the motion, Xilinx has withdrawn the motion to dismiss, and now only seeks transfer under § 1404(a).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.

         After reviewing the parties' briefing, the Court concludes the motion to transfer should be GRANTED.

         I. BACKGROUND

         Defendant 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.

         Xilinx's 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.

         Plaintiff 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.

         Godo 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. Id.

         Xilinx 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.

         Xilinx 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. Id.

         Xilinx's 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.

         Xilinx 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].

         UMC 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].

         II. APPLICABLE LAW

         Regardless 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).

         The 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 ...


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