United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSTRAP UNITED STATES DISTRICT JUDGE
the Court is Defendants Huawei Device USA Inc. (“Huawei
USA”), Huawei Device Co., Ltd. (“Huawei
Device”), and Huawei Device (Dongguan) Co., Ltd.'s,
(“Huawei Dongguan, ” collectively,
“Huawei”) Motion to Transfer Venue to the
Northern District of California (Dkt. No. 36, “the
Motion”), wherein Huawei moves this Court to transfer
venue for this action pursuant to 28 U.S.C. § 1404(a).
Having considered the Motion and the relevant authorities,
the Court is of the opinion that the Motion should be DENIED
for the reasons set forth herein.
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.” 28 U.S.C.
§ 1404(a). The first inquiry when analyzing a case's
eligibility for § 1404(a) transfer is “whether the
judicial district to which transfer is sought would have been
a district in which the claim could have been filed.”
In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004)
(“Volkswagen I”). “Any civil action for
patent infringement may be brought in the judicial district
where the defendant resides, or where the defendant has
committed acts of infringement and has a regular and
established place of business.” 28 U.S.C. §
1400(b) (2012); TC Heartland LLC v. Kraft Foods Grp.
Brands LLC, 137 S.Ct. 1514, 1519 (2017) (“§
1400(b) ‘is the sole and exclusive provision
controlling venue in patent infringement actions.'”
(quoting Fourco Glass Co. v. Transmirra Prods.
Corp., 353 U.S. 222, 229 (1957))). For purposes of
§ 1400(b), a domestic corporation resides only in its
state of incorporation. TC Heartland, 137 S.Ct. at 1521.
the initial threshold of proving the proposed transferee
district is one where the suit might have been brought is
met, courts analyze both public and private factors relating
to the convenience of parties and witnesses as well as the
interests of particular venues in hearing the case. See
Humble Oil & Ref. Co. v. Bell Marine Serv., Inc.,
321 F.2d 53, 56 (5th Cir. 1963); In re Nintendo Co., Ltd.,
589 F.3d 1194, 1198 (Fed. Cir. 2009). The private factors
are: (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.
Volkswagen I, 371 F.3d at 203 (citing Piper Aircraft Co.
v. Reyno, 454 U.S. 235, 241 n.6 (1981)). The public
factors are (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 or in the
application of foreign law. Id. These factors are to
be decided based on “the situation which existed when
suit was instituted.” Hoffman v. Blaski, 363
U.S. 335, 343 (1960). Though the private and public factors
apply to most transfer cases, “they are not necessarily
exhaustive or exclusive, ” and no single factor is
dispositive. In re Volkswagen of Am., Inc., 545 F.3d 304,
314-15 (5th Cir. 2008) (“Volkswagen II”).
plaintiff's choice of venue is not an express factor in
this analysis, the appropriate deference afforded to the
plaintiff's choice is reflected by the defendant's
elevated burden of proof. Id. at 315. In order to
support its claim for a transfer under § 1404(a), the
moving defendant must demonstrate that the transferee venue
is “clearly more convenient” than the venue
chosen by the plaintiff. Id. Absent such a showing,
however, the plaintiff's choice is to be respected.
Id. Additionally, when deciding a motion to transfer
venue under § 1404(a), the court may consider undisputed
facts outside of the pleadings such as affidavits or
declarations, but it must draw all reasonable inferences and
resolve factual conflicts in favor of the non-moving party.
See Sleepy Lagoon, Ltd. v. Tower Group, Inc., 809
F.Supp.2d 1300, 1306 (N.D. Okla. 2011); see also Cooper
v. Farmers New Century Ins. Co., 593 F.Supp.2d 14, 18-19
The Action May Have Been Brought in the Transferee
noted above, the threshold inquiry in a § 1404(a)
analysis requires a court to find that the action could have
been filed in the proposed transferee district. Volkswagen I,
371 F.3d at 203. A party cannot unilaterally waive proper
venue under § 1404 such that transfer would be
permitted-upon a finding of convenience-to a district desired
by the movant but not one in which the action might have been
brought. See Hoffman v. Blaski, 363 U.S. 335, 344
Huawei admits that proper jurisdiction over each Huawei
Defendant exists in the Northern District of California.
“Huawei USA is registered to do business in the State
of California, has business operations in Santa Clara within
N.D. Cal., and therefore is subject to jurisdiction in that
district.” (Dkt. No. 36 at 9 (citing J. McIntyre
Mach., Ltd. v. Nicastro, 131 S.Ct. 2780, 2787 (2011))).
“With respect to foreign defendants Huawei Device and
Huawei Dongguan, venue is appropriate in N.D. Cal.”
(Id. (citing 28 U.S.C. § 1391(c)(3))).
Plaintiff AGIS Software Development LLC (“AGIS”)
does not dispute these admissions. (Dkt. No. 56 at 8
(“[T]his suit could have been brought against Huawei in
the proposed transferee district.”)).
Court finds that this action may have been brought in the
proposed transferee district of the Northern District of
California and proceeds to the second portion of the
analysis, the private and public convenience factors.
Relative Ease of Access to Sources of Proof
argues that this factor “favors transfer because . . .
relevant documents, including highly proprietary source code,
and witnesses with knowledge relating to the development,
manufacturing, and management of the Accused Devices and the
third-party Accused Applications are located in N.D. Cal. or
at locations far more convenient to N.D. Cal. than to E.D.
Tex.” (Dkt. No. 36 at 10).
submits that, as to Huawei Device and Huawei Dongguan, both
are Chinese corporations which design and manufacture the
Accused Devices outside of the United States, including any
pre-loaded installation of Google software on those devices.
(Dkt. No. 36 at 4). “Huawei Device and Huawei
Dongguan's employees who design and manufacture
Huawei's smartphones and tablets reside in China.”
(Id.) Neither of these companies have facilities or
employees in Texas, nor do they maintain any documents in
Texas. (Id.) Huawei USA is a Texas corporation with
its principal place of business in Plano, Texas.
(Id.) Huawei submits, however, that none of its
Plano-based employees are involved in research and
development, or sales and marketing of the Accused Devices,
and argues that its Plano facility “primarily handles
corporate-level functions that are not product or technology
specific.” (Id. at 4-5).
Huawei argues, Huawei USA's research and development,
testing, and sales and marketing efforts for the Accused
Devices occur primarily within California, specifically in
Huawei USA's Santa Clara, Mountain View, and San Diego
facilities in California. (Id. at 5). Related to
these efforts, Huawei has identified in its Motion two
witnesses: Wen Wen and Yao Wang. Huawei identified Wen Wen as
having “knowledge of sales and marketing efforts for
the Accused Devices;” Wen Wen is employed at the
Bellvue facility in California. (Id.) Huawei has
also identified Yao Wang as its only other party witness; Yao
Wang is a Principal Engineer who works out of Huawei's
Santa Clara office.
there is much speculation from both sides under this factor
about third party witnesses. Specifically, Huawei argues that
“Accused Applications are all developed by third
parties located in and around N.D. Cal., ” such as
Google, and, thus, “Google's knowledge and
documents will be essential to showing how these applications
function.” (Dkt. No. 36 at 5-6). Huawei supports this
argument with a No. of declarations by Google employees.
(Dkt. Nos. 36-4, 36-5, 36-6). The declarations address
various Google software products or services, such as Google
Maps for Mobile, Google Hangouts or Messenger, and Find My
Device. (Id.) Each of the declarations states that
“at least” the engineers at Google's Mountain
View campus have knowledge regarding the current design,
development, and operation of those various products and that
the declarant is unaware of any employee with relevant
knowledge who resides or works in the Eastern District of
Texas. (Id.) Further, the declarations state that:
Nearly all the documents relating to [the declaration's
product/service], including highly proprietary information
and source code, are either physically present in or
electronically accessible from Mountain View, California, as
that is where many of the personnel most qualified to
identify and locate such documents reside. I am aware of no
documents described in this paragraph being located in the
Eastern District of Texas.
(Id.) Notably, Huawei does not identify with
particularity any specific Google employees that they
anticipate calling at trial or any documentation they plan to
present as evidence. (See, generally, Dkt. No. 36).
Huawei has specifically identified three additional
non-Google third party witnesses: Christopher Rice (a named
co-inventor on the two of the patents-in-suit, resident of
Redmond, Washington); Daniel J. Burns (the prosecuting
attorney for at least three of the four patents-in-suit
(i.e., the '055, '838, and '251 Patents),
resident of Santa Clara, CA, within N.D. Cal.); and,
generally, “[m]ost of the inventors of prior art
references that appear related to the ...