Data Scape Limited v. Dropbox, Inc.

Western District of Texas, txwd-6:2019-cv-00023

MOTION to Change Venue by Dropbox, Inc.

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5 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION DATA SCAPE LTD., Civil Action No. 6:19-cv-00023-ADA Plaintiff, v. DROPBOX, INC., Defendant. DROPBOX'S MOTION TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA 5 TABLE OF CONTENTS I. INTRODUCTION .............................................................................................................. 1 II. STATEMENT OF FACTS ................................................................................................. 2 A. Dropbox .................................................................................................................. 2 B. Data Scape .............................................................................................................. 3 C. Data Scape's Complaint and Other Lawsuits ......................................................... 3 D. The Location of Key Witnesses and Evidence ....................................................... 3 1. Dropbox's Relevant Evidence .................................................................... 3 2. Location of Data Scape Witnesses and Evidence ....................................... 5 3. Location of Third-Party Witnesses ............................................................. 5 III. LEGAL STANDARD ......................................................................................................... 5 IV. ARGUMENT ...................................................................................................................... 8 A. This Action Could Have Been Brought in The Northern District of California ................................................................................................................ 8 B. The Private Factors Strongly Favor Transfer.......................................................... 9 1. The Sources of Proof Are Most Easily Accessed in The Northern District of California ................................................................................... 9 2. Key Witnesses Are Within the Subpoena Power of The Northern District of California But Not The Western District of Texas .................. 13 3. Willing Witnesses Can Attend Trial More Easily in The Northern District of California ................................................................................. 14 4. Practical Issues Are Neutral ...................................................................... 15 C. The Public Interest Factors Also Strongly Favor Transfer ................................... 16 V. CONCLUSION AND PRAYER FOR RELIEF ............................................................... 20 i 5 TABLE OF AUTHORITIES Page(s) CASES Auto-Dril, Inc. v. National Oilwell Varco, L.P., No. 6:15–CV–00091, 2016 WL 6909479 (W.D. Tex. Jan. 28, 2016) .............................. 10 DataQuill, Ltd. v. Apple Inc., No. 13-706, 2014 WL 2722201 (W.D. Tex. June 13, 2014) ...........................................7, 10, 11, 18, 19 GeoTag, Inc. v. Starbucks Corp., No. 10-572, 2013 WL 890484 (E.D. Tex. Jan. 14, 2013) ..................................................................... 19 iLife Techs., Inc. v. BodyMedia, Inc., No. 3:13-CV-4776-M, 2014 WL 3606011 (N.D. Tex. July 22, 2014) ........................16, 19 In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009)......................................................................6, 9, 10, 13, 14 In re HP Inc., No. 2018-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) .................................8, 10, 13 In re Morgan Stanley, 417 Fed. Appx. 947 (Fed. Cir. 2011) ................................................................................ 16 In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009)......................................................................6, 7, 11, 14, 17 In re Toyota, 747 F.3d 1338 (Fed. Cir. 2014)......................................................................................8, 12 In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2009)..................................................................................6, 8, 11 In re Volkswagen AG, 371 F.3d 201 (5th Cir. 2004) .........................................................................................6, 10 In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc) ...............................................................5, 6, 13, 14 In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010)....................................................................................15, 18 Kleiner v. Southwest Airlines Co., No. 8-218, 2008 WL 4890590 (W.D. Tex. Nov. 4, 2008) ................................................ 14 ii 5 LT Tech LLC v. FrontRange Solutions USA Inc., No. 13-1901, 2013 WL 6181983 (N.D. Tex. Nov. 26, 2013)............................................19 Neil Bros Ltd. v. World Wide Line, 425 F. Supp. 2d 325 (E.D.N.Y. 2006) ...............................................................................10 On Semiconductor Corp. v. Hynix Semiconductor, Inc., No. 9-390, 2010 WL 3855520 (E.D. Tex. Sept. 30, 2010) ................................................12 Uniloc USA v Box, Inc., No. 17-754, 2018 WL 2729202 (W.D. Tex. June 6, 2018) .............7, 10, 11, 15, 16, 17, 19 Van Dusen v. Barrack, 376 U.S. 612 (1964) .............................................................................................................5 Wireless Recognition Techs. LLC v. A9.com, Inc., Nos. 2:10–CV–364, –365, –577, –578, 2012 WL 506669 (E.D. Tex. Feb. 15, 2012) ..................................................................................................................................17 STATUTES, RULES, AND REGULATIONS 28 U.S.C. § 1400(b) .........................................................................................................................8 28 U.S.C. § 1404(a) ...........................................................................................1, 2, 3, 5, 6, 7, 9, 10 28 U.S.C. §1659 .............................................................................................................................15 America Invents Act ..........................................................................................................16, 18, 19 Fed. R. Civ. P. 45(d)(3)(A)(ii) .................................................................................................13, 14 OTHER AUTHORITIES James Ware & Brian Davy, The History, Content, Application and Influence of the Northern District of California's Patent Local Rules, 25 SANTA CLARA COMPUT. & HIGH TECH. L.J. 965 (2009).................................................................................18 Federal Judicial Center, "Table C-5 – U.S. District Courts—Median Time Intervals From Filing to Disposition of Civil Cases Terminated, by District and Method of Disposition, During the 12-Month Period Ending December 31, 2018" available at https://www.uscourts.gov/statistics/table/c-5/statistical-tables-federal- judiciary/2018/12/31 (last visited April 16, 2019) .........................................................................17 iii 5 Defendant Dropbox, Inc. ("Dropbox") respectfully moves to transfer this action to the Northern District of California pursuant to 28 U.S.C. § 1404(a). I. INTRODUCTION This patent infringement action clearly merits transfer to the Northern District of California. On similar facts, other district judges within the Western District of Texas have granted transfer, and the Federal Circuit has issued writs of mandamus to other district courts of the Fifth Circuit ordering transfer pursuant to § 1404(a). The plaintiff, Data Scape Ltd. ("Data Scape"), is an Irish company with no apparent sales, offices, employees, or other presence in the Western District of Texas. The defendant, Dropbox, is and always has been headquartered in San Francisco, which is the center of its business operations and the home office of every Dropbox employee expected to testify at trial in this case. The named inventors of the patents do not appear to be located in or near this district. The accused features are not operated, designed, marketed, or licensed from this district. Literally nothing ties this case or relevant sources of evidence to the Western District of Texas. Rather, the Northern District of California is clearly the far more convenient forum for this litigation. Dropbox designed and developed the technology accused by Data Scape at its San Francisco headquarters. The alleged acts of infringement are performed from servers located near San Francisco. The marketing and finance functions with respect to the accused technology are based in San Francisco. Dropbox's expected witnesses with responsibility for the accused features all reside in the Northern District of California, as does the source code for the accused features. Dropbox's documents that are relevant to the infringement allegations were created in San Francisco and Seattle. Identifiable third parties with potentially relevant information are located in the Northern District of California. 1 5 Moreover, unlike in most cases, Data Scape cannot reasonably contend that the Northern District of California would be an inconvenient forum for it. Data Scape filed seven patent infringement actions in California on the asserted patents within the last three months. This matter undoubtedly could have been filed in the Northern District of California, and Data Scape has chosen to litigate many of its infringement actions in that state already. In light of the totality of circumstances surrounding this action, and because the Northern District of California is clearly a more convenient place for this case to be litigated, the Court should transfer this case to that judicial district. II. STATEMENT OF FACTS A. Dropbox Since its launch in San Francisco in 2008, Dropbox has revolutionized the way files are stored and shared on the internet. Declaration of Andrew Haven ("Haven Decl.") at ¶ 4. Dropbox's software and services enable the easy storage, synchronization and sharing of electronic files. Id. Today, Dropbox is a global collaboration platform with over 500 million users worldwide. Id. Dropbox is a Delaware corporation with nearly all its corporate and technical activities taking place in San Francisco, its principal place of business. As its corporate headquarters, San Francisco is the locus of Dropbox's infrastructure and operations. Id. at ¶ 3. As the company's technical hub, San Francisco is also the primary site of Dropbox's engineering, development and product design functions. Id. Over 1,500 Dropbox employees are based in San Francisco. Id. Dropbox has a facility in Seattle, Washington with over 200 employees, most of whom are engineers, and some of these engineers work on the accused features. Id. at ¶ 8. Dropbox also has nine additional offices, including one in Austin. Id. at ¶ 10. Dropbox's Austin location primarily houses human resources, customer assistance, and sales employees. Id. Currently, 2 5 fewer than ten of the employees in Dropbox's Austin office are engineers, and none designed or work on the accused features. Id. B. Data Scape Data Scape is an Irish company headquartered in Dublin. See D.I. 1 at ¶ 1. It appears to maintain no office in Texas or anywhere in the United States. There is no indication that Data Scape has any principals or employees who reside in this District. Declaration of Gregory H. Lantier ("Lantier Decl.") at ¶ 3, Ex. 1 (Vision-net profile of Data Scape). C. Data Scape's Complaint and Other Lawsuits Data Scape first sued Dropbox in the Austin Division. C.A. No. 1:19-cv-00048-LY. Data Scape then dismissed its case against Dropbox and re-filed the identical complaint in the Waco Division. The Complaint alleges that Dropbox infringes four patents Data Scape acquired from Tokyo-based Sony Corporation—U.S. Patent Nos. 7,720,929, 7,617,537, 8,386,581, and 9,715,893. Data Scape's Complaint accuses a Dropbox feature called Smart Sync, which allows users to view and access files stored on Dropbox's servers from their desktops using a decreased amount of hard drive space. Data Scape has brought 17 similar lawsuits, many including the same four patents, against 16 other technology companies since December 26, 2018. Lantier Decl. ¶ 4, Ex. 2 (Docket Navigator profile of Data Scape). Nearly half (7 of 17) of these other lawsuits were filed in California (Central and Eastern districts). Id. Data Scape has also filed lawsuits asserting these patents in the Eastern District of Texas, the District of Colorado, and the U.S. International Trade Commission ("ITC"). Id. D. The Location of Key Witnesses and Evidence 1. Dropbox's Relevant Evidence As stated above, Dropbox is headquartered in San Francisco, where it conducts most of its design and development operations. Haven Decl. at ¶ 3. Accordingly, Dropbox's potential 3 5 sources of evidence for this action, including all witnesses Dropbox expects to call at trial, are located in the Northern District of California. Smart Sync was designed and developed at Dropbox's headquarters by Dropbox employees based in the Northern District of California. Id. at ¶ 5. Similarly, the people responsible for overseeing the marketing of Smart Sync all reside and work in or near San Francisco. Id. at ¶ 6. In particular, the following potential Dropbox witnesses in this action are based at Dropbox's San Francisco headquarters: • Drew Haven, engineer, who was a member of the team that manages Smart Sync from the time the feature began development (July 2015) until April 15, 2019; • Isaac Goldberg, engineer, who was a member of the initial development team for Smart Sync; • Damien DeVille, engineer, who was a member of the initial development team for Smart Sync; • Emily Silberstein, group product manager with responsibility for Smart Sync. Id. In addition, Dropbox's finance department is based in San Francisco, including Patrick Doyle, Dropbox's Director of Revenue and Growth, Financial Planning and Analysis. Id. San Francisco is also where Naman Khan, Vice President of Product Marketing, as well as Dropbox's marketing department, is based. Id. Likewise, the documents related to Smart Sync, including technical documents, marketing materials, and financial records, were created in San Francisco and Seattle. Id. at ¶ 7. Moreover, Dropbox houses and controls its source code for the accused technology in the Northern District of California, id., and Dropbox will seek a protective order in this case that permits inspection only at its counsel offices in the Northern District of California near San Francisco. None of the design or development of the accused Smart Sync feature occurred in Dropbox's Austin office. Id. at ¶ 10. 4 5 2. Location of Data Scape Witnesses and Evidence There is no indication that any of Data Scape's witnesses or evidence is located in the Western District of Texas, Northern District of California, or anywhere else in the United States. D.I. 1 at ¶ 1; Lantier Decl. ¶ 3, Ex. 1. The claimed inventions appear to have been developed in Japan. D.I. 1, Exs. A-D. Data Scape's only office is in Dublin, Ireland. D.I. 1 at ¶ 1. 3. Location of Third-Party Witnesses Potential third-party witnesses are located in the Northern District of California. Former Dropbox employee and the original team lead for Smart Sync, Ben Newhouse, is still located in San Francisco, according to public sources of information. Lantier Decl. ¶ 5, Ex. 3 (LinkedIn profile). Kelly Marren, the product manager with responsibility for Smart Sync at the time that the feature was launched, is also still located in San Francisco. Id. at ¶ 6, Ex. 4 (LinkedIn profile). To the extent other former Dropbox employees are relevant, they are most likely to reside in the San Francisco area. The named inventors of the asserted patents (which originated at third-party Sony Corporation) are all identified on the asserted patents as residing in Japan. D.I. 1, Exs. A-D. It does not appear that any likely third-party witnesses are located in the Western District of Texas. III. LEGAL STANDARD Transfer is appropriate "for the convenience of parties and witnesses, in the interest of justice" to any district "where [the action] might have been brought." 28 U.S.C. § 1404(a). The goals of §1404(a) are to prevent waste of time, energy, and money, and also to protect litigants, witnesses, and the public against unnecessary inconvenience and expense. Van Dusen v. Barrack, 376 U.S. 612, 616 (1964). Fifth Circuit law controls motions to transfer for convenience under 28 U.S.C. § 1404(a). In re Volkswagen of Am., Inc. ("Volkswagen II"), 545 F.3d 304, 311 (5th Cir. 2008) (en banc). 5 5 "A motion to transfer venue should be granted upon a showing that the transferee venue is 'clearly more convenient' than the venue chosen by the plaintiff." In re Nintendo Co., 589 F.3d 1194, 1197 (Fed. Cir. 2009) (quoting In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009) (citing Volkswagen II, 545 F.3d at 315)). In the Fifth Circuit, "[t]he 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 ("Volkswagen I"), 371 F.3d 201, 203 (5th Cir. 2004). Once that threshold inquiry is met, Fifth Circuit courts consider "private" and "public" factors in determining whether transfer under Section 1404(a) is warranted. Volkswagen II, 545 F.3d at 312. 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 a trial easy, expeditious, and inexpensive." Id. 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 conflicts of law or in the application of foreign law." Id. "Fifth Circuit precedent clearly forbids treating the plaintiff's choice of venue as a distinct factor in the § 1404(a) analysis." In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2009) (citing Volkswagen II, 545 F.3d at 314 n.10). In fact, courts should grant a motion to transfer without regard to the plaintiff's choice of venue when the defendant shows "good cause." See Volkswagen II, 545 F.3d at 315. Good cause exists whenever the defendant shows "that the transferee venue is 'clearly more convenient' than the venue chosen by the plaintiff." TS Tech, 551 F.3d at 1319 (quoting Volkswagen II, 545 F.3d at 315). 6 5 Applying these principles, Judges Sparks and Yeakel have transferred patent infringement cases where the relevant sources of evidence were not located in this district even though the defendant had some, unrelated, presence in or around Austin. In DataQuill, Ltd. v. Apple Inc., No. 13-706, 2014 WL 2722201, at *3 (W.D. Tex. June 13, 2014), Judge Sparks transferred a patent case to the Northern District of California where the Plaintiff was a foreign non-practicing entity with no ties to the Western District of Texas. 2014 WL 2722201, at *3. While the defendant (Apple) had two facilities and thousands of employees in Austin, its sources of proof and witnesses were located in the Northern District of California. Id. at *5. Likewise, Judge Yeakel transferred a patent infringement case brought by two non-practicing entities (one foreign and one U.S.-based) against Box, where neither the plaintiffs nor the alleged infringement had ties to the Western District of Texas. Uniloc USA v Box, Inc., No. 17-754, 2018 WL 2729202, at *2-3 (W.D. Tex. June 6, 2018). Judge Yeakel determined that relevant people, documents and source code were all located in the Northern District of California and that transfer was therefore appropriate despite the fact that Box had a facility in Austin. The Federal Circuit periodically issues opinions informing the district courts of its current thinking on §1404(a) transfers. Judges Sparks' and Yeakel's precedents are in line with the decisions on petition for mandamus from the Federal Circuit, applying Fifth Circuit law. Namely, when the defendant's relevant business activities, witnesses, and documents are in the proposed transferee forum, and the plaintiff's evidence is not located in the transferor forum, the case should be transferred. For example, in In re Nintendo, the Federal Circuit held the district court erred in denying transfer from the Eastern District of Texas to the Western District of Washington, because the defendant's U.S. headquarters were in Washington and all identified key witnesses were located in Washington, Japan, Ohio, and New York. 589 F.3d at 1199-1200. 7 5 See also In re HP Inc., No. 2018-149, 2018 WL 4692486, *1-4 (Fed. Cir. Sept. 25, 2018) (holding district court erred in denying transfer to Northern District of California, where defendant was headquartered and relevant documents, party witnesses, and third-party witnesses were located); In re Toyota, 747 F.3d 1338, 1340-41 (Fed. Cir. 2014) (holding district court erred in denying transfer to district where sources of proof were located); TS Tech, 551 F.3d at 1320- 21 (holding district court erred in denying transfer from Eastern District of Texas to Ohio when all key identified witnesses and documents were in Ohio, Michigan, and Canada). IV. ARGUMENT Given the facts of this case, the Northern District of California is clearly more convenient than the Western District of Texas, and transfer is therefore warranted under governing precedent. The Western District of Texas appears to have no relevant connection to Data Scape, the asserted patents, Dropbox's accused products, relevant party witnesses, or third parties. Instead, the center of this patent infringement action is plainly the Northern District of California, where Dropbox's evidence and witnesses are concentrated. Meanwhile, Data Scape's choice of forum is irrelevant to the transfer analysis and is particularly undeserving of consideration here, as Data Scape has engaged in clear forum shopping by initially filing its Complaint in the Austin Division, then withdrawing the action and refiling in Waco. Considering the relevant factors, this case should be transferred to the Northern District of California. A. This Action Could Have Been Brought in The Northern District of California Under the patent venue statute, an action for "patent infringement may be brought in the judicial district. . . where the defendant has committed acts of infringement and has a regular and established place of business." 28 U.S.C. § 1400(b). Because Dropbox's headquarters are 8 5 there, this patent infringement suit indisputably could have been brought in the Northern District of California. B. The Private Factors Strongly Favor Transfer The private factors under 28 U.S.C. §1404(a) overwhelmingly favor transfer, rendering the Northern District of California a clearly more convenient forum. 1. The Sources of Proof Are Most Easily Accessed in The Northern District of California The first private factor examines whether relevant witnesses and documents are located nearer the transferee or transferor district. See Genentech, 566 F.3d at 1343, 1345 (applying Fifth Circuit law) (explaining that "[t]he convenience of the witnesses is probably the single most important factor in transfer analysis" and "the place where the defendant's documents are kept weighs in favor of transfer to that location"). Dropbox and third-party sources of proof are more easily accessed in the Northern District of California than in this District. Data Scape's sources of proof are at least as easily accessed in the Northern District of California as they are in this District. Thus, this factor strongly favors transfer. Dropbox's Sources of Proof. Dropbox's employees responsible for the design, development, and marketing of the accused technology are located in the Northern District of California and Seattle and thus far nearer to the transferee district. Haven Decl. at ¶ 6; supra section II.C.1. The distance between the Waco Division of the Western District of Texas and Dropbox's San Francisco headquarters is approximately 1,800 miles. Lantier Decl. at ¶ 7, Ex. 5. In stark contrast, the distance between Dropbox's headquarters and the San Francisco Division of the Northern District of California is about 2 miles. Id. at ¶ 8, Ex. 6. Similarly, the distance from Dropbox's office in Seattle to the Waco courthouse is about 2,100 miles, while the distance from Dropbox's Seattle office to the San Francisco courthouse is about 800 miles. Id. ¶¶ 9-10, 9 5 Exs. 7-8. The Fifth Circuit follows 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 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 205. See also Auto-Dril, Inc. v. National Oilwell Varco, L.P., No. 6:15–CV–00091, 2016 WL 6909479, at *8 (W.D. Tex. Jan. 28, 2016) ("If the transferee venue would result in an average distance away from the witness that is shorter than the original venue, then the convenience factor weighs in favor of transfer.") (citations omitted). If this case remains in this District, multiple Dropbox employees would be required to travel a substantial distance for trial to a location where they do not live or work. This travel would disrupt business operations for Dropbox and would burden Dropbox with disproportionate travel and lodging costs. Haven Decl. at ¶ 11. In comparison, Dropbox's party witnesses would incur only slight costs to attend trial in the Northern District of California because of the proximity of that court to the work or residence of these witnesses. Id. Because "the convenience for and cost of attendance of witnesses" at trial is "an important factor" in the transfer analysis, Dropbox's witnesses' location in the Northern District of California is a significant fact in favor of transfer. Genentech, 566 F.3d 1343 (citing Neil Bros Ltd. v. World Wide Line, 425 F. Supp. 2d 325, 329 (E.D.N.Y. 2006) ("The convenience of the witnesses is probably the single most important factor in transfer analysis.")). See also In re HP, 2018 WL 4692486, *3 (transferring case where defendant identified eight employees in the transferee venue that had relevant knowledge regarding the accused products); Uniloc, 2018 WL 2729202, at *2 (finding this factor weighed in favor of transfer where "three members of the technical team responsible for overseeing the initial development, functionality, and user experience also reside in Northern California"); DataQuill, 2014 WL 2722201, at * 4 (transferring case where 10 5 defendant "identified a number of Cupertino-based witnesses who are likely to possess specific knowledge relevant to the accused products"). Significantly, Dropbox's source code for the accused feature is maintained on servers located in the Northern District of California, and the security of this code is of utmost importance to Dropbox. Haven Decl. at ¶ 7. See, e.g., Uniloc, 2018 WL 2729202, at *2 (noting the significance of defendant's "highly sensitive" source code being stored on servers in the transferee forum). To safeguard these materials' confidentiality, Dropbox intends to make its source code and proprietary algorithms available for inspection near San Francisco. In addition, Dropbox's electronic documents describing the design and operation of the feature Data Scape accuses were created in the Northern District of California or in Seattle, and any hardcopy documents are located there as well. Haven Decl. at ¶ 7. Likewise, Dropbox's relevant marketing and financial documents were created in San Francisco. Id. Meanwhile, none of Dropbox's technical, marketing, or financial documents regarding the accused feature are stored or maintained in the Western District of Texas. Id. at ¶ 10. See TS Tech, 551 F.3d at 1321 (ordering transfer to Ohio in part because "the vast majority of physical and documentary evidence relevant to this case will be found in Ohio, Michigan, and Canada, and none of the evidence is located in Texas"); In re Nintendo, 589 F.3d at 199 ("Neither Motiva nor Nintendo have any relevant documentation or any other evidence in the Eastern District of Texas, the plaintiff's choice of venue."); DataQuill, 2014 WL 2722201, at *3 (transferring case to Northern District of California where "documents relevant to the development and creation of Apple's products are likely to be found in Cupertino, even if some of the documents may be equally accessible electronically from Austin."). 11 5 In short, not only are Dropbox's documents and materials concentrated in or near the Northern District of California, but the best evidence of how the accused technology works—its source code—cannot practicably be produced elsewhere. Data Scape's Sources of Proof. The convenience of the Northern District of California to Data Scape's own witnesses further sets this case apart from nearly all others with respect to the transfer factors. Having already chosen to file seven infringement actions in the neighboring Eastern and Central districts of California, Data Scape cannot reasonably contend that requiring its trial witnesses to appear in the Northern District of California would be inconvenient. Indeed, it is clear that the Northern District of California would be at least as convenient a forum for Data Scape's apparent witnesses as the Western District of Texas. Data Scape admits that it is an Irish company with no offices in Texas or the United States. D.I. 1 at ¶ 1. Dropbox is not aware of any sources of Data Scape evidence that are located in this District. And Data Scape's witnesses will already be traveling to California for Data Scape's other pending patent infringement actions on the same patents. Third-Party Sources of Proof. Finally, the Northern District of California is a more convenient forum for potential third-party witnesses as well. See, e.g., On Semiconductor Corp. v. Hynix Semiconductor, Inc., No. 9-390, 2010 WL 3855520, at *6 (E.D. Tex. Sept. 30, 2010) ("Typically, the convenience of third-party witnesses is given greater weight than the convenience of party witnesses."). At least two potential third-party witnesses reside in the Northern District of California: Ben Newhouse and Kelly Marren. See supra II.D.3. And unlike in many cases, there are no critical third-party witnesses that reside in the forum chosen by Data Scape. See In re Toyota, 747 F.3d at 1340 ("No non-party witnesses have been identified as being within the Eastern District of Texas. On the other hand, it appears 12 5 undisputed that a number of witnesses in the Eastern District of Michigan have knowledge potentially relevant to infringement and validity issues, even if it is not possible at present to specify further just how material their testimony might be to the yet-undeveloped issues in the case."); In re HP, 2018 WL 4692486, *3 (ordering transfer where "three named Google employees and one of the HP employees who had left the company after the transfer motion was filed reside in the Northern District of California and were identified as having potentially relevant information, while no party identified a third party witness in the Eastern District of Texas"). The inventors of the asserted patents appear to reside in Japan, making San Francisco (5,150 miles from Tokyo) more convenient for those likely witnesses than Waco (6,522 miles from Tokyo).1 Lantier Decl. at ¶¶ 11-12, Exs. 9-10. See supra at IV.B.1 (discussing 100-mile rule). 2. Key Witnesses Are Within the Subpoena Power of The Northern District of California But Not The Western District of Texas The availability of compulsory process factor favors transfer when more witnesses reside within the subpoena power of the transferee venue than the current venue. See Genentech, 566 F.3d at 1345 ("The fact that [a] transferee venue is a venue with usable subpoena power. . . weighs in favor of transfer, and not only slightly."). In fact, preferred venues enjoy "absolute subpoena power for both depositions and trial." Volkswagen II, 545 F.3d at 316. The Northern District of California, but not the Western District of Texas, has absolute subpoena power over the only identified third-party witnesses in this case that a U.S. court can subpoena—former Dropbox employees Ben Newhouse and Kelly Marren.2 See supra II.D.3. 1 Moreover, the distance from DFW to the Waco courthouse is greater than the distance from SFO to the San Francisco courthouse (approximately 100 miles versus approximately 14 miles, respectively). Lantier Decl. ¶¶ 13-14, Exs. 11-12. 2 Courts "must quash or modify" a subpoena that compels a person to travel more than 100 miles (or to another state) to testify. Fed. R. Civ. P. 45(d)(3)(A)(ii). Similarly, courts cannot compel a 13 5 Further, because Dropbox designed, developed, and launched the accused product from its headquarters in the Northern District of California, "[i]t is foreseeable that a number of [Dropbox's] former officers and employees, many of whom likely reside in or near [the Northern District], may be called upon to testify." See Kleiner v. Southwest Airlines Co., No. 8-218, 2008 WL 4890590, at *4 (W.D. Tex. Nov. 4, 2008). Because key third-party witnesses are within the subpoena power of the Northern District of California but not this Court, this factor weighs in favor of transfer. 3. Willing Witnesses Can Attend Trial More Easily in The Northern District of California The location of willing witnesses (e.g., party employees) in the transferee district also strongly favors transfer and is in fact "probably the single most important factor in the transfer analysis." Genentech, 566 F.3d at 1343. And it is an "'obvious conclusion' that it is more convenient for witnesses to testify at home and that. . . additional travel time increases the probability for meal and lodging expenses; and additional travel time with overnight stays increases the time which these fact witnesses must be away from their regular employment, family, and community." Volkswagen II, 545 F.3d at 317. Where "most witnesses and evidence [are] closer to the transferee venue with few or no convenience factors favoring the venue chosen by the plaintiff," the Federal Circuit has held that "the trial court should grant a motion to transfer." In re Nintendo, 589 F.3d at 1198. Here, all of Dropbox's expected trial witnesses, including those listed above, are located in the Northern District of California. See supra II.D.1. And Data Scape has already signaled third-party witness to attend a deposition more than 100 miles from the person's residence. Id. Thus, neither the Western District of Texas nor the Northern District of California can compel the foreign inventors of the asserted patents in Japan to attend. 14 5 that attending trial in California is easy enough for its witnesses through the filing of seven infringement actions in the Central and Eastern Districts of California. Thus, applying the facts of this case, this factor very strongly favors transfer to the Northern District of California. 4. Practical Issues Are Neutral "[M]ultiple suits involving the same or similar issues may create practical problems that will weigh in favor of or against transfer." Uniloc, 2018 WL 2729202, at *4 (citations omitted). "This factor is important in some cases, where, for example, the trial court became very familiar with the only asserted patent and the related technology during a prior litigation or where there is co-pending litigation before the trial court involving the same patent and underlying technology." Id. However, "the existence of co-pending litigation [is] not dispositive in the transfer analysis." Id. Here, this factor is neutral because while four cases involving the same patents are currently being litigated in this District,3 there are fourteen cases pending in other jurisdictions, including seven in the Eastern and Central Districts of California, on some or all of the asserted patents, and all of Data Scape's cases are in the early stages. Moreover, the existence of co-pending litigation within the same forum is not a proper basis to deny transfer where the transferee forum is more convenient, because the convenience of the parties and witnesses is of paramount importance. For example, in In re Zimmer Holdings, Inc., 609 F.3d 1378, 1380-82 (Fed. Cir. 2010), the district court denied transfer, based on the existence of another suit brought by the plaintiff in the transferor forum. The Federal Circuit held this was clear error because the transferee forum was clearly more convenient. Id. Transfer should not be denied based on any purported efficiencies that may be gained from keeping multiple defendants 3 One of those cases, Data Scape Ltd. v. Verizon, 6:19-cv-00174, has been stayed pursuant to 28 U.S.C. §1659 pending resolution of Data Scape's ITC action against Verizon and will not resume (if it ever does) for at least another 18 months. Id., D.I. 15. 15 5 in the same jurisdiction. See iLife Techs., Inc. v. BodyMedia, Inc., No. 3:13-CV-4776-M, 2014 WL 3606011, at *3 (N.D. Tex. July 22, 2014). And as discussed further below, it would be contrary to the purposes of the America Invents Act, which requires each patent case to be treated separately, to allow plaintiffs to manipulate the transfer analysis by filing multiple lawsuits in the same forum. Moreover, neither this Court nor any of the other courts presiding over the litigations has had to expend significant time learning the patents or the defendants' products or has a particular expertise in the facts of the case. Minimal expertise in the technology and facts at issue is not a proper basis for denying transfer in cases like this one where all other factors weigh in favor of transfer. See In re Morgan Stanley, 417 Fed. Appx. 947, 948-50 (Fed. Cir. 2011) (holding district court erred in denying transfer to New York, where plaintiff and majority of defendants were incorporated, on grounds that district court was "familiar[] with two of the patents-in-suit and the underlying data compression technology from a prior litigation brought by [Plaintiff] in the venue"). Taken together, the private interest factors overwhelmingly favor transfer. C. The Public Interest Factors Also Strongly Favor Transfer Each of the public interest factors also favors transfer or is neutral. The first public interest factor examines whether transfer would alleviate or worsen administrative difficulties flowing from court congestion. That factor is neutral, because neither this Court nor the Northern District of California suffers from a judge shortage or backlog of civil matters, and times to trial in patent infringement cases are comparable. Indeed, last year Judge Yeakel concluded that the median time to trial in patent cases in the Northern District of 16 5 California is marginally faster than in the Western District of Texas. Uniloc, 2018 WL 2729202, at *4.4 The second public interest factor examines the local interest in having localized interests decided at home. This factor favors transfer when "defendants are headquartered, develop the accused products, and employ a large number of people in the transferee venue." Uniloc, 2018 WL 2729202 at *4 (quoting Wireless Recognition Techs. LLC v. A9.com, Inc., Nos. 2:10–CV– 364, –365, –577, –578, 2012 WL 506669, at *6 (E.D. Tex. Feb. 15, 2012). The Northern District of California has a powerful interest in this case because Dropbox is headquartered in the Northern District, employs over 1,500 people in that district, developed the accused features there, its intended witnesses reside there, and its reputation and conduct are expressly implicated by this case. Further – and unlike in Uniloc, where the plaintiff was a Texas corporation, see 2018 WL 2729202 at *4 –– the Western District of Texas has no meaningful connection to this case. While Dropbox has an office in Austin, it has far fewer employees than the San Francisco office and its operations are not central to any of the complaint's allegations. See In re Nintendo, 589 F.3d at 1198 ("The record shows that NOA is incorporated in Washington and has its principal place of business in the Western District of Washington. No parties, witnesses, or evidence have any material connection to the venue chosen by the plaintiff. Therefore, the 4 While Judge Yeakel noted that civil cases in general moved faster in the Western District of Texas than the Northern District of California (20.8 months versus 26.1 months, respectively), that fact weighed only slightly against transfer, and the time difference has further narrowed since that decision was issued. See Federal Judicial Center, "Table C-5 – U.S. District Courts— Median Time Intervals From Filing to Disposition of Civil Cases Terminated, by District and Method of Disposition, During the 12-Month Period Ending December 31, 2018" available at https://www.uscourts.gov/statistics/table/c-5/statistical-tables-federal-judiciary/2018/12/31 (last visited April 16, 2019) (showing that the median time to trial in civil cases was 27.7 months in the Northern District of California and 23.2 months in the Western District of Texas for the period ending December 31, 2018). 17 5 record leaves only the conclusion that the local interest in Washington clearly favors transfer."). Accordingly, the local interests in the Northern District of California are far greater than in this District, and this factor strongly favors transfer. The third public interest factor examines the familiarity of each forum with the law that will govern the case. This factor is neutral. See, e.g., DataQuill, 2014 WL 2722201 at *5. Both this Court and the Northern District of California are well-equipped to handle issues of patent law. The Northern District of California is the fourth most popular venue for patent infringement actions in the United States. Lantier Decl. at ¶ 15, Ex. 13 (Lex Machina report). In addition to this deep experience, it has a well-developed set of local patent rules. See James Ware & Brian Davy, The History, Content, Application and Influence of the Northern District of California's Patent Local Rules, 25 SANTA CLARA COMPUT. & HIGH TECH. L.J. 965 (2009). Finally, the fourth public interest factor examines whether transfer will either avoid or cause unnecessary problems of conflicts of law or in the application of foreign law. This factor is also neutral. DataQuill, 2014 WL 2722201 at *5. While Data Scape may seek to argue that the existence of three other patent infringement lawsuits in this District involving the patents asserted against Dropbox favors denial of Dropbox's transfer motion, to avoid potential conflicts of law, that argument fails for two reasons. First, it fails because Data Scape has already – by its own design – filed patent infringement actions asserting these patents in four different federal judicial districts and the ITC. Having done so, it cannot credibly claim that there is a public interest in keeping the infringement action against Dropbox in this judicial district because it has filed 3 of its 17 other lawsuits here (and one of the 3 is stayed because Data Scape also sued the same party in the ITC). Second, Data Scape's election to sue multiple defendants in this forum cannot "create" judicial or other practical economies. See In re Zimmer, 609 F.3d at 1382 (the 18 5 existence of another suit in the forum does not "negate[] the significance of having trial close to where most of the identified witnesses reside and where the other convenience factors clearly favor" transfer). And, in any event, the "America Invents Act contemplates that each patent case will be treated separately." LT Tech LLC v. FrontRange Solutions USA Inc., No. 13-1901, 2013 WL 6181983, at *5 (N.D. Tex. Nov. 26, 2013); see also GeoTag, Inc. v. Starbucks Corp., No. 10-572, 2013 WL 890484, at *6 (E.D. Tex. Jan. 14, 2013) (permitting the existence of separately filed patent infringement cases to sway a venue transfer analysis would allow plaintiffs to "manipulate venue by serially filing cases within a single district" and "would undermine the principals underpinning transfer law and the. . . America Invents Act"); iLife Techs., 2014 WL 3606011, at *3 (efficiencies gained from keeping defendants together are unavailing to prevent transfer). *** When all the relevant factors are considered, the Northern District of California is clearly more convenient than the Western District of Texas as the site of Data Scape's infringement action against Dropbox. Maintaining the action in this District would be incompatible with Judge Sparks' decision in DataQuill, Judge Yeakel's decision in Uniloc, and a substantial body of decisions from the Federal Circuit applying Fifth Circuit law on petitions for writ of mandamus. Data Scape's choice of forum, under Fifth Circuit precedent and especially in light of its clear forum shopping, is entitled to no weight. Under the governing law, this action should be transferred to the Northern District of California. 19 5 V. CONCLUSION AND PRAYER FOR RELIEF For the reasons stated above, Dropbox respectfully requests that the Court transfer this Action to the San Francisco Division of the Northern District of California. Dated: April 24, 2019 Respectfully submitted, By: /s/ J. Stephen Ravel J. Stephen Ravel Texas State Bar No. 16584975 KELLY HART & HALLMAN LLP 303 Colorado, Suite 2000 Austin, Texas 78701 Tel: (512) 495-6400 Fax: (512) 495-6401 Email: steve.ravel@kellyhart.com Gregory H. Lantier (Admitted Pro Hac Vice) DC Bar No. 492043 Virginia State Bar No. 65657 New York State Bar No. 4823217 WILMER HALE LLP 1875 Pennsylvania Avenue Washington DC 20006 Tel: (202) 663-6327 Email: gregory.lantier@wilmerhale.com Monica Grewal (Pro Hac Vice to come) Massachusetts State Bar No. 659449 Connecticut State Bar No. 414009 WILMER HALE LLP 60 State Street Boston, Massachusetts 02109 Email: monica.grewal@wilmerhale.com Yvonne Lee (Admitted Pro Hac Vice) Massachusetts State Bar No. 687623 WILMER HALE LLP 60 State Street Boston, Massachusetts 02109 Tel: (617) 526-6692 Email: yvonne.lee@wilmerhale.com 20 5 Alexis Pfeiffer (Admitted Pro Hac Vice) California State Bar No. 312007 WILMER HALE LLP 950 Page Mill Road Palo Alto, California 94304 Tel: (650) 858-6052 Email: alexis.pfeiffer@wilmerhale.com ATTORNEYS FOR DEFENDANT DROPBOX, INC. CERTIFICATE OF CONFERENCE Counsel for the parties conferred by telephone in a good faith effort to resolve this motion on April 22, 2019. the specific reason no agreement could be made is that plaintiff asserts the relevant factors do not favor transfer CERTIFICATE OF SERVICE The undersigned certifies that on April 24, 2019 all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system pursuant to Local Rule CV-5(a)(3)(A). /s/ J. Stephen Ravel J. Stephen Ravel 21