1 

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

VOIP-PAL.COM, INC.

Plaintiff,

v. 

META PLATFORMS, INC., and

WHATSAPP LLC,

Defendants.

§

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

Civil No. 6:20-cv-00267-ADA

[PUBLIC VERSION OF] SEALED MEMORANDUM OPINION AND ORDER

This opinion memorializes the Court’s decision on Meta Platforms, Inc.’s (“Meta”) and 

WhatsApp, LLC’s (“WhatsApp”) (collectively “Defendants”) Updated Motion to Transfer Venue 

from the Western District of Texas (“WDTX”) to the Northern District of California (“NDCA”) 

under 28 U.S.C. § 1404(a). Dkt. No. 56 (the “Motion”). After careful consideration of the relevant 

facts, applicable law, the parties’ briefs (Dkt. Nos. 72, 78), the supplemental evidence (Dkt. No. 

92), and objections to the supplemental evidence (Dkt. No. 95) the Court GRANTS Defendants’ 

Updated Motion to Transfer. 

I. FACTUAL BACKGROUND

Plaintiff VoIP-Pal.com, Inc. (“VoIP-Pal”) is a Nevada corporation with its principal place 

of business in Waco, Texas. Dkt. No. 28 ¶ 1. VoIP-Pal filed a complaint against Defendants on 

April 2, 2020, alleging infringement of U.S. Patent No. 10,218,606 (the “’606 patent” or the 

“Asserted Patent”). Dkt. No. 1 (the “Complaint”). 

Defendant Meta is a Delaware corporation with its principal place of business in Menlo 

Park, California and an office in Austin, Texas. Dkt. No. 28 ¶ 2. Meta is registered to do business 

in the State of Texas and has been since at least April 8, 2009. Id. Defendant WhatsApp is a 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 1 of 22
2 

Delaware corporation with its principal place of business in Menlo Park, California. Id. ¶ 3. 

WhatsApp also has an office in Austin, Texas. Id. WhatsApp is a wholly-owned subsidiary of 

Meta. Id.

II. LEGAL STANDARD

In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of 

the regional circuit. 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, 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 

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 (1982)). 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 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 2 of 22
3 

that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws of the 

application of foreign law.” Id. When analyzing these factors, courts may consider facts arising 

after plaintiff filed suit unless there is some suggestion that they arose primarily to affect the 

transfer analysis. See Lynk Labs, Inc. v. Home Depot USA, Inc., No. 6:21-CV-00097-ADA, 2022 

WL 1593366, at *6 (W.D. Tex. May 19, 2022) (explaining how post-complaint facts must be 

disregarded when considering § 1404(a)’s preliminary question, but not when evaluating 

convenience); In re Netscout Sys., No. 2021-173, 2021 U.S. App. LEXIS 30500, at *12 (Fed. Cir. 

Oct. 13, 2021) (disregarding, under the practical-problems factor, later-filed cases in the transferor 

district). 

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 burden to prove that a case should be transferred for convenience falls squarely on the 

moving party. 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-118, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27, 2019). Yet,

the Federal Circuit has clarified that, for a court to hold that a factor favors transfer, the movant 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 3 of 22
4 

A. VoIP-Pal could have brought this suit in the NDCA.

Under 28 U.S.C. § 1400(b), this court must make a threshold determination as to whether

this case could have been brought in the destination venue. To satisfy this preliminary question, 

the movant must show that venue and jurisdiction would have been proper in the transferee forum 

when the plaintiff filed suit. 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). A 

defendant does not satisfy this burden by merely consenting to jurisdiction in the transferee forum. 

See Hoffman v. Blaski, 363 U.S. 335, 343, 80 S. Ct. 1084, 4 L.Ed.2d 1254 (1960). And the 

defendant cannot, only for purposes of satisfying § 1404(a), concede that jurisdiction in the 

transferee forum is proper while simultaneously “maintaining that jurisdiction is legally improper 

in [the transferee forum] and reserving its right to seek dismissal” on that ground once transfer is 

complete. Monolithic Power Sys., 2022 WL 958384, at *5; New Hampshire v. Maine, 532 U.S. 

742, 749, 121 S. Ct. 1808, 1814, 149 L. Ed. 2d 968 (2001) (“[A]bsent any good explanation, a 

party should not be allowed to gain an advantage by litigation on one theory, and then seek an 

inconsistent advantage by pursuing an incompatible theory.”). 

This Court finds, and VoIP-Pal does not contest, that this Action could have been brought 

in the NDCA. See Dkt. No. 56 at 8. Thus, the Court proceeds with its analysis of the private and 

public interest factors to determine if the NDCA is clearly more convenient than the WDTX.

B. The private interest factors favor transfer.

The Court finds that three private interest factors favor transfer, and the remaining factor is

neutral. Overall, the private interest factors favor transfer to the NDCA.

need not show that that factor clearly favors transfer. In re Apple Inc., 979 F.3d 1332, 1340 (Fed. 

Cir. 2020). 

III. ANALYSIS

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 4 of 22
5 

1. The relative ease of access to sources of proof favors transfer.

“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. 6:18-

cv-00372-ADA, 2019 U.S. Dist. LEXIS 171102, at *5 (W.D. Tex. Sept. 10, 2019). The question

properly focuses on “relative ease of access, not absolute ease of access.” In re Radmax, 720 F.3d 

285, 288 (5th Cir. 2013) (emphases in original). “[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, Inc., 14 F.4th 

1313, 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; see 

also 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 (1) physical documents and other evidence and (2) 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). However, the Federal Circuit has held it is an 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 & 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 5 of 22
6 

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. See In re Google LLC, No. 2022-140, 

2022 WL 1613192, at *4 (Fed. Cir. May 23, 2022). 

Here, Defendants assert that the engineering teams managing features of the WhatsApp 

application are in the NDCA, where 

Defendants also represent that WhatsApp’s technical, financial, and marketing 

documents Defendants assert that Facebook’s 

there. Id. 

VoIP-Pal contends that the Defendants’ relevant documents are equally “accessible from 

multiple locations,” including the WDTX where Defendants have 

including engineers, managers, and analysts. Dkt. No. 72 at 8; Dkt. No. 72-11 at 10-13, 31. VoIPPal posits it would be equally easy to access this evidence from Austin as well because custodians 

in technical roles at Meta’s Austin office will have equally convenient access to Meta’s electronic 

documents. VoIP-Pal also points to the fact that Meta has employees across the country including 

“a significant number of relevant documents” in New York and Washington state, but this fact 

favors neither venue. Dkt. No. 72 at 9; Dkt. No 72-11 at 14-29. 

In evaluating this factor, the Court finds the Declaration of Nicholas Wong to be credible 

and convincing. Mr. Wong carefully investigated the underlying facts that form the basis of his 

knowledge, identified the basis of his knowledge, made mostly clear and unqualified statements 

of fact, made statements consistent with Defendants’ thoroughly prepared interrogatory responses, 

Case 6:20-cv-00267-ADA Document 97 *SEALED* Filed 07/22/22 Page 6 of 22 Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 6 of 22
7 

avoided making uninformed statements, avoided testifying about topics that he lacks knowledge 

of, and mostly avoids using vague and crafty language. Compare Dkt. No. 56-1 (“Wong Dec.”), 

with Scramoge Tech. Ltd. v. Apple, Inc. No. 6:21-CV-00579-ADA, 2022 WL 1667561, at *2–4

(W.D. Tex. May 25, 2022) (criticizing a repeat declarant for providing uninformed statements, 

failing to identify the sources of his knowledge, qualifying vague statements of adverse facts with 

crafty language, testifying about topics appropriate only for technical experts and lawyers, and 

failing to clearly respond to discovery requests). The Court finds the Wong Declaration to be 

reliable. The Court similarly finds that Defendants provided thorough and well-informed venue 

interrogatory responses. Compare Dkt. No. 72-11 (providing clear and thorough responses in a 

venue interrogatory), with Scramoge, 2022 WL 1667561, at *4 n.3 (refusing to fully respond to 

venue interrogatory). The Court finds that collectively, the Wong Declaration and the Defendants’ 

interrogatory responses carefully identified the Defendants’ relevant employees who work in 

Texas.

The bulk of the Defendants’ relevant technical documentation resides in the NDCA and 

weighs in favor of transfer. Wong Dec. ¶¶ 3, 8–10, 13. The Defendants’ financial and marketing 

documents were generated and maintained in the NDCA. Id. ¶¶ 11–13. Relevant technical 

documents were generated and maintained in the NDCA. Id. ¶¶ 14–21. At the same time, 

Defendants employ employees in the WDTX who likely have similarly 

convenient access to relevant technical documentation. Dkt. No. 72-11 at 10–13, 31; Dkt. No. 72

at 8. This Court must not only consider the location of the Defendants documents, many of which 

are in the NDCA, but also the location of “document custodians” and “where documents are 

created and maintained, which may bear on the ease of retrieval.” In re Google LLC, No. 2021-

178, 2021 WL 5292267, at *2 (Fed. Cir. Nov. 15, 2021). Here, the majority of Meta employees 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 7 of 22
8 

that 

 and that 

 Wong Dec. ¶¶ 11, 12, 19. Thus, the documentation and 

information covering the financing and marketing of the Accused Products are in the NDCA and 

in Washington state, and Plaintiff has not shown that there are any custodians in Texas who can 

access the relevant financial and marketing documents just as easily as the Defendants’ custodians 

in the NDCA. Wong Dec. ¶¶ 13, 21; In re Google LLC, 2021 WL 5292267, at *2. Thus, the ease 

of accessing financial information in the NDCA weighs in favor of transfer. 

who developed the technology in dispute and maintained documents relevant to this technology 

are primarily based in the NDCA, which favors transfer. But because Defendants employ

 employees in with the WDTX, Defendants can access their technical documents 

from the WDTX just as easily. “In modern patent litigation, documents are located on a server, 

which may or may not be in the transferee district (or given the use of cloud-based storage, may 

be located on multiple servers in multiple districts, or even multiple countries) and are equally 

accessible from both the transferee and transferor districts.” Fintiv, Inc. v. Apple Inc., No. 6:18-

CV-00372-ADA, 2019 WL 4743678, at *4 (W.D. Tex. Sept. 13, 2019). With both the transferee

and transferor districts having custodians who can access the electronic technical documents, 

“[t]hen, with a click of a mouse or a few keystrokes, the party produces these documents” equally 

conveniently from either forum. Id. Thus, the relative ease of accessing technical evidence neither 

favors nor disfavors transfer. 

But the same cannot be said for the Defendants’ financial evidence in this case. Mr. Wong 

convincingly declared that the Defendants’

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 8 of 22
9 

VoIP-Pal argues that its relevant documents are in Waco, Texas. Dkt. No. 72 at 9. 

Defendants argue that all documents that VoIP-Pal said it would rely on in four other ’606 Patent 

suits are in NDCA. Dkt. No. 72-5 at 1; Dkt. No. 72-6 at 2–3; Dkt. No. 72-6 at 1. Recent guidance 

suggests that any financial documents maintained at VoIP-Pal’s Waco headquarters, see Dkt. No. 

72 at 8, can be discounted because Defendants have made a persuasive case that VoIP-Pal’s Waco 

headquarters are not a regular place of business. In re Google LLC, 2022 WL 1613192, at *4; see 

Dkt. No. 78 (describing the limitations of VoIP-Pal’s leased Waco office). The Court finds that 

VoIP-Pal likely has an equal amount of evidence in both the NDCA and in the WDTX, so VoIP’s 

evidence neither favors nor disfavors transfer. 

As a result, relevant financial and marketing documents are more easily retrieved from the 

NDCA than the WDTX. Defendants have shown to the Court’s satisfaction that relevant 

evidence—including technical and financial documents—is maintained in the NDCA. 

2. The compulsory process factor favors transfer.

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.”

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 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 9 of 22
10 

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). 

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)). 

The Federal Circuit has held that, under Fifth Circuit law, “when there is no indication that 

a non-party witness is willing” the Court must presume that its subpoena power will be necessary 

to secure the witness’ attendance. In re DISH Network LLC, No. 2021-182, 2021 WL 4911981, at 

*3 (Fed. Cir. Oct. 21, 2021) (quoting In re HP, Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1

(Fed. Cir. Sept. 25, 2018)). This factor “weigh[s] heavily in favor of transfer when more thirdparty witnesses reside within the transferee venue than reside in the transferor venue.” In re Apple,

581 F. App’x 886, 889 (Fed. Cir. 2014). 

i. Inventors

Here, four of the inventors of the Asserted Patent, Rod Thomson, Johan Emil Viktor 

Björsel, Clay Perreault, and Fuad Arafa reside near Vancouver, Canada. Dkt. No. 72 at 10; Dkt. 

No. 72-14; Dkt. No. 72-28. The fifth inventor, Steve Nicholson, resides in New Zealand. Dkt. No. 

72-28 at 10. Neither this Court nor the NDCA can compel these inventors to attend trial, so these

inventors do not factor into the Court’s analysis. 

ii. Defendants’ witnesses

To support transfer, Defendants point to numerous authors of prior art who are “material

to the patentability of the Asserted Patent” and identifies five inventors residing in the NDCA.

Dkt. No. 56 at 5. Defendants allege that four of the five inventors of U.S. Patent App. No. 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 10 of 22
11 

2003/0091028 “appear” to reside in Northern California. Id. Further, Defendants argue that the 

sole inventor of U.S. Patent No. 8,036,366 resides in Northern California. Id. 

Defendants also point to four additional relevant non-party witnesses’ that reside in the 

NDCA’s subpoena power. Dkt. No. 56 at 5. Craig Walker and Vincent Paquet, founders of the 

companies that created relevant prior art systems DialPad and GrandCentral, both reside in the 

NDCA. Dkt. No. 56 at 5; Dkt. Nos. 56-24 and 56-25. Defendants also argue that Dr. Marian Croak, 

credited with the creation of the VoIP technology, resides in the NDCA. Dkt. No. 56-51 and 56-

52. Finally, Defendants argue that Sean Parmenter, who prosecuted the Asserted Patents may offer

relevant information. Dkt. No. 56 at 11–12. However, VoIP-Pal points out, and Defendants 

concede, that Mr. Parmenter resides in Utah, which is outside of the subpoena power of the NDCA. 

Dkt. No. 56 at 6. 

iii. Plaintiff’s witnesses

VoIP-Pal points to non-party witnesses it claims are “actually” relevant to the dispute. First, 

VoIP-Pal argues that all five inventors of the Asserted Patents have previously shown a willingness 

to attend trial in Waco to testify about other patents, even though they reside outside of the Court’s 

subpoena power. Dkt. Nos. 72-28; 72-14. Thus, compulsory process is likely not needed to secure 

the attendance of these witnesses. There are two additional non-party witnesses VoIP-Pal asserts 

will require this Court’s subpoena power to compel attendance. VoIP-Pal asserts that Business 

Legal Management, LLC (“BLM”), 

has relevant witnesses based in Dallas. Dkt. No. 72 at 10. Three employees of BLM (George Brunt, 

Bobby Love, and Joseph Wadsworth) are presently within the subpoena power of the WDTX. Dkt. 

No. 72 at 10; Dkt. No. 72-11 at 33. Finally, VoIP-Pal also names Marcus Redding of Austin-based

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 11 of 22
12 

Intellion Analytics Group as having relevant knowledge regarding damages because VoIP-Pal 

retained him in its 2016 and 2018 cases. Dkt. No. 72 at 10. 

iv. Conclusion

In conclusion, this factor weighs in favor of transfer. Defendants cite eight witnesses in the 

NDCA that require compulsory process. Most of these are cherry-picked prior art witnesses who 

are not needed to authenticate the patents that they are named on, but they may still provide 

testimony about the state of the art. The Court does not categorically disregard prior art witnesses 

but discounts them because prior art witnesses rarely appear at trial. In re Hulu, LLC, 2021 WL 

3278194, at *3 (Fed. Cir. Aug. 2, 2021). VoIP-Pal has identified four witnesses who would require 

this Court’s compulsory process. Because the Court presumes witnesses are unwilling unless they 

indicate otherwise, the Court considers all witnesses identified by Defendants and VoIP-Pal as 

unwilling witnesses. DISH Network, 2021 WL 4911981, at *3. Even after discounting the 

likelihood that all of Facebook’s witnesses will testify, there are still more witnesses in the NDCA 

subject to subpoena power than in the WDTX. Thus, this factor weighs in favor of transfer. 

3. The cost of attendance of willing witnesses heavily favors transfer.

The Fifth Circuit has established the “100-mile rule,” providing 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 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 WL 4427899, at *5 

(Fed. Cir. Sept. 27, 2021) (quoting In re TracFone Wireless, Inc., 852 F. App’x 537, 539 (Fed. 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 12 of 22
13 

Cir. 2021)). This has led the Federal Circuit to disregard distance altogether in favor of considering 

travel-time statistics. See, e.g., In re Google LLC, No. 2021-170, 2021 U.S. App. LEXIS 29137, 

at *12 (Fed. Cir. Sept. 27, 2021) (“[T]ime is a more important metric than distance.”). In addition, 

the Federal Circuit simply disregards 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 action is transferred or not. See In re Apple, 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. 

This factor commonly focuses on party witnesses. The Federal Circuit has previously 

represented that “an employer’s cooperation in allowing an employee to testify may diminish 

certain aspects of inconvenience to the employee witness (for instance, the employee is not acting 

contrary to their employer’s wishes).” In re Hulu, No. 2021 U.S. App. LEXIS 22723, at *13. Yet 

it has also stated that inconvenience is not attenuated at all when the witnesses are employees of 

the party calling them. See, e.g., In re Juniper, 14 F.4th at 1319. 

And as to burdens, the Federal Circuit has held that a district court may refuse to weigh 

this factor in favor transfer “if unable to determine from the movant’s presentation . . . that there 

are more potential witnesses in the transferee venue than the plaintiff’s chosen forum.” In re 

Overhead Door Corp., No. 2022-100, 2021 WL 5816634, at *2 (Fed. Cir. Dec. 7, 2021). 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 13 of 22
14 

i. Defendants’ witnesses

Aided by a declaration from Nicholas Wong, an 

 employed by Facebook, Defendants identified numerous witnesses purported to have 

knowledge relevant and material to this case. These identified individuals reside in the NDCA and 

can drive to the courthouses in the NDCA, testify for several hours, and return home in the same 

day. 

Mr. Wong identified witnesses for WhatsApp, including Software 

Engineer, , and Engineering Director, , on teams supporting WhatsApp’s 

functionality for sending messages. Dkt. No. 56-1 ¶¶ 8–9. Both and reside in 

northern California. Id. Mr. Wong also identified , a Software Engineering Manager 

leading a team supporting WhatsApp’s functionality for starting calls. Dkt. No. 56-1 ¶ 10. With 

the exception of , everyone on the WhatsApp’s 

 and likely has relevant knowledge on the design 

and development of relevant instrumentalities of the accused WhatsApp product. Id. ¶ 10. Mr. 

Wong named another Software Engineer, , purportedly knowledgeable about 

contact selection functionality in WhatsApp. Dkt. No. 56-1 ¶ 26. Mr. Wong also identified 

personnel based in NDCA relevant to the finance and marketing operations. is 

the Finance Director for , and 

likely has relevant knowledge regarding financial information for the accused products. Id. ¶¶ 11, 

19. Mr. and reside in 

California. Id. is the Consumer Product Marketing Lead for WhatsApp, and likely has 

relevant knowledge regarding marketing information for the accused WhatsApp product. Id. ¶ 12. 

Ms. resides in California. Id. 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 14 of 22
15 

application. Id. ¶ 15. Mr. resides in Washington state and 

. Id. is a software engineer on 

 team, and likely has relevant knowledge regarding the design and development 

of relevant instrumentalities of the accused Messenger application. Id. ¶ 16. Mr. 

resides . Id. is an engineering manager on 

 team, which is based in 

, and likely has relevant knowledge regarding the design and development 

of relevant instrumentalities of the accused Messenger application. Id. ¶ 17. Mr. resides in 

northern California, and . Id. is an engineering 

manager on the team, which is based in 

and supports relevant functionality for the accused products. Id. ¶ 18. Mr. likely has 

relevant knowledge regarding the design and development of relevant instrumentalities in the 

accused products. Id. Mr. resides in northern California, and none of his team members are 

Additionally, Mr. Wong identified employees who likely have relevant 

knowledge and reside in the NDCA or in Washington state. These identified individuals can drive 

or take a short flight to the courthouses in the NDCA, testify for several hours, and return home 

within the same day. is a software engineering manager on 

team, which is based in , and likely 

has relevant knowledge regarding the design and development of relevant instrumentalities of the 

accused Messenger application. Id. ¶ 14. Mr. resides in Washington state. Id.

is a software engineering manager on

team, which is based in , and likely has relevant knowledge 

regarding the design and development of relevant instrumentalities of the accused Messenger 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 15 of 22
16 

ii. Plaintiff’s witnesses

VoIP-Pal identified one witness that will find the WDTX a more convenient forum. VoIPPal alleges that its CFO, Kevin Williams, works out of VoIP-Pal’s Waco office. Dkt. No. 72 at 11. 

The Court finds that Mr. Williams, given his position, likely has knowledge relevant and material 

to damages. Mr. Williams will be able to drive to the courthouse in Waco, testify for several hours, 

then return home the same day. His proximity to this Court weighs against transfer. 

iii. Non-party witnesses

Defendants identified the inventors of the Asserted Patent as having relevant knowledge, 

Dkt. No. 56 at 5, 12, and VoIP-Pal noted that each is willing to travel to Waco to testify at trial, 

Dkt. No. 72 at 10 (citing Dkt. Nos. 72-14, 72-28). The Court therefore counts the five inventors as

willing witnesses. Moreover, the Court is satisfied that transfer would be more convenient for at 

least four out of the five of the inventors because of Vancouver’s relative proximity to the NDCA. 

iv. Conclusion

Mr. Wong has convinced the Court that he carefully identified the Defendants’ relevant 

witnesses with material technical, marketing, and financial knowledge for whom a NDCA-based 

trial would be more convenient. The Court could discern the relevance of each witness to the 

accused technology because Mr. Wong’s declaration included each potential witness’s title, the 

title of the team they belonged to, and the technology that team supports. Defendants have also 

identified four inventors of the Asserted Patent located in Vancouver for whom an NDCA trial 

. Id. is the Director of Consumer Brand and Product Marketing for 

Messenger, and likely has relevant knowledge regarding marketing information for the accused 

Messenger product. Id. ¶ 20. Ms. and reside 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 16 of 22
17 

4. All other practical problems that would make trial easy, expeditious and

inexpensive is neutral.

When considering the private interest factors, courts must consider “all other practical 

problems that make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 

314. “[G]arden-variety delay associated with transfer is not to be taken into consideration when

ruling on a § 1404(a) motion to transfer” but delay in already protracted litigation may account for 

some weight. In re Radmax, 720 F.3d at 289. “[T]he ability to transfer a case to a district with 

numerous cases involving some overlapping issues weighs at least slightly in favor of such a 

transfer.” In re Apple, 979 F.3d at 1344. But district courts should not rely “on considerations of 

judicial economy arising after the filing of the lawsuit or the transfer motion,” such as, for example, 

suits filed in the transferor district after a request to transfer. In re Netscout, 2021 U.S. App. LEXIS 

30500, at *12. Further, “the mere co-pendency of infringement suits in a particular district” does 

not automatically tip transfer in one direction or the other. Id. at *13. 

Five co-pending cases in the WDTX involve the same plaintiff and overlapping patents. 

VoIP-Pal.com, Inc. v. Google LLC, No. 6:20-cv-269-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. 

Amazon.com, Inc., No. 6:20-cv-272-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. Apple, Inc., No. 

6:20-cv-275-ADA (W.D. Tex.); VoIP-Pal.com, Inc. v. AT&T, Inc., No. 6:20-cv-325-ADA (W.D. 

Tex.); VoIP-Pal.com, Inc. v. Verizon Comms., Inc., No. 6:20-cv-327-ADA (W.D. Tex.). Three of 

these cases have since been dismissed. VoIP-Pal.com, Inc. v. Apple, Inc., No. 6:20-cv-275-ADA 

at Dkt. No. 49 (W.D. Tex. Mar. 24, 2021); VoIP-Pal.com, Inc. v. AT&T, Inc., No. 6:20-cv-325-

would be more convenient. The convenience that a California-based trial to witnesses in or near 

the NDCA provides dwarfs the inconvenience Mr. Williams may suffer due to transfer. 

Accordingly, this factor heavily favors transfer. 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 17 of 22
18 

C. The public interest factors are neutral.

The Court finds that one public interest factor favors transfer, and one factor weighs

slightly against transfer. The remaining public interest factors are neutral. Overall, the public 

interest factors are neutral.

ADA at Dkt. No. 51 (W.D. Tex. Mar. 24, 2021); VoIP-Pal.com. Inc., v. Verizon Comms., Inc., No. 

6:20-cv-327-ADA at Dkt. No. 49 (W.D. Tex. Apr. 1, 2021). 

This case has not proceeded to a Markman hearing and so has not yet matured to a stage 

where this factor biases toward transfer. Defendants argue that the NDCA’s history—including 

several waves of cases involving related patents and parties—weighs in favor of transfer.

Defendants propose that judicial economy would be best served by handing this Action to an 

NDCA court well-versed in this family of patents and familiar with VoIP-Pal and the Defendants. 

Dkt. No. 56 at 13. It would also allegedly help avoid an inconsistent ruling. Id. Yet VoIP-Pal has 

noted that Judge Koh, after taking the bench on the U.S. Court of Appeals for the Ninth Circuit, 

can no longer lend her knowledge and experience to this Action were it transferred. Dkt. No. 72 at 

12. Judge James Donato has taken over any VoIP-Pal cases remaining the NDCA and, according

to VoIP-Pal, he has not made any substantive ruling. Dkt. No. 72 at 12. Defendants retort, however, 

that there is a “common NDCA Magistrate Judge” who is and was assigned to “multiple waves” 

of VoIP-Pal’s cases. Dkt. No. 78 at 5. 

The Court finds that any economy to be gleaned from transfer dissipated with Judge Koh’s 

elevation to appellate court. Though a magistrate judge may be assigned to the relevant cases Judge 

Koh presided over, Defendants have not cited any substantive orders from that magistrate judge 

evidencing a familiarity with the legal and technical issues bearing on this Action or even actions 

involving related patents. Accordingly, this factor is neutral. 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 18 of 22
19 

1. The court congestion factor weighs slightly against transfer.

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. 

The Federal Circuit has held that a difference in the number of pending cases between the 

transferor and transferee forums is “too tenuously related to any differences in speed by which 

these districts can bring cases to trial.” Id. In another case, it has opined that a “proper” analysis 

“looks to the number of cases per judgeship and the actual average time to trial.” In re Juniper 

Networks, Inc., No. 2021-156, 2021 U.S. App. LEXIS 29812, at *8 (Fed. Cir. Oct. 4, 2021). 

Defendants argue that the court congestion metrics for the NDCA and the WDTX are 

“fairly similar”: 22.0 months for the NDCA versus 19.1 months for the WDTX. Dkt. No 56 at 14;

Dkt. No. 56-52. However, Defendants use statistics weighed by outdated information from 2020, 

before the NDCA felt the full impact of halting trials due to COVID-19, so Defendants’ statistics 

do not accurately represent current times to trial. 

In addition, Defendants argue that VoIP-Pal is a “non-operating company whose sole 

business is licensing, so [VoIP-Pal] has no ‘need of a quick resolution.’” In re Juniper Networks,

14 F.4th at 1322–23; Dkt. No. 56 at 14. This is contrary to public policy. The Federal Circuit has 

long held that “[r]ecognition must be given to the strong public policy favoring expeditious 

resolution of litigation.” Kahn v. GMC, 889 F.2d 1078, 1080 (Fed. Cir. 1989). Congress itself has 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 19 of 22
20 

2. The local interest in having disputes decided in the home forum favors

transfer.

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 a 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-04387-K, 

2015 WL 13870507, at *4 (N.D. Tex. Jul. 23, 2015). “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, 979 F.3d at 1344 

(quoting In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010)) (emphasis in original). 

Courts should not heavily weigh a party’s general contacts with a forum that are untethered 

from the lawsuit, such as a general presence in the district. In re Apple, 979 F.3d at 1344. (“The 

court’s reliance on [the defendant’s Austin] offices, which lack such a connection to the locus of 

acknowledged the importance of the “quick” and inexpensive resolution of patent disputes, going 

so far as to erect a sprawling administrative regime—that does not differentiate between worked 

and unworked patents—for that purpose. See, e.g., Ethicon Endo-Surgery, Inc. v. Covidien LP, 

826 F.3d 1366, 1367 (Fed. Cir. 2016). “Consistent with such expressions of public policy, the 

public has an interest in the rapid resolution of patent disputes (without reference to whether the 

patent is being worked).” Billjco, LLC v. Apple Inc., No. 6:21-CV-00528-ADA, 2022 WL 607890, 

at *8 n.2 (W.D. Tex. Mar. 1, 2022). 

Finally, Defendants contend that the NDCA has a “history of expeditiously resolving VoIPPal’s patent cases,” suggesting greater judicial efficiency. Dkt. No. 56 at 14. However, none of the 

prior cases went to trial. Dkt. No. 72 at 13. Thus, the Court finds this factor weighs against transfer. 

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 20 of 22
21 

the events giving rise to the dispute, amounts to a clear abuse of discretion.”). Rather, the Federal 

Circuit has accorded significant weight under this factor to the location where the accused product 

or functionality was “designed, developed, and tested.” In re Apple, 979 F.3d at 1345. It has 

accorded no weight to the location of the sale of an accused product where that product is offered 

nationwide. In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009). 

As indicated above, Defendants submit that the Accused Instrumentalities were designed 

and developed in the NDCA. Dkt. No. 56 at 14–15. Defendants’ presence is substantially located 

in the NDCA, with being located there. Wong Dec. ¶ 2. This 

is much stronger than the parties’ combined presence in WDTX. VoIP-Pal claims that Meta has a 

significant presence in Austin because of their upcoming deals and numerous posts for job 

openings in Austin. Dkt. No. 72 at 13; Dkt. No. 72-24. However, Mr. Wong has persuaded the 

Court that the research, design, and development of the accused technology mostly occurred in the 

Northern District of California, and partially in Washington state. Wong Dec. ¶¶ 8–13, 17, 19–20.

This establishes a strong interest for resolving this dispute in the NDCA. 

VoIP-Pal argues that its headquarters in Waco generates a local interest in this Action. Dkt.

No. 72 at 14. VoIP-Pal only moved its headquarters here in March 2021. See Dkt. No. 56 at 6. 

Defendants have credibly suggested that very little work is being handled out of VoIP-Pal’s Waco 

headquarters— VoIP-Pal’s CEO resides in Vancouver and VOIP’s CFO lives in Fort Worth. See 

Dkt. No. 56 at 6; Dkt. No. 72 at 1 (conceding its CFO’s residence). The Court will not accord this 

“recent and ephemeral” presence much weight, if any at all. Accordingly, the Court finds that this 

factor favors transfer.

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 21 of 22
22 

3. The familiarity with governing law factor is neutral.

Both parties dispute the effect of in this factor. However, 

 does not affect this factor because 

 Other than this dispute, the 

parties agree this factor is neutral. Accordingly, the Court finds it neutral. 

4. The conflict of laws factor is neutral.

The parties do not dispute that this factor is neutral and the Court agrees. 

IV.

Because the Court decided to transfer this case under the traditional transfer analysis, the 

Court does not reach the issue of whether the parties’ 

for this case.

V. CONCLUSION

This a case where the majority of the party witnesses, third-party witnesses, and evidence 

are in or near the NDCA. Three private interest factors weigh in favor of transfer and one factor is 

neutral. The faster time to trial here in the WDTX cancels out the local interest by the NDCA. All 

remaining public interest factors are neutral. Given the foregoing, the Court finds that Defendants 

have shown that the NDCA is clearly more convenient than this District. Defendants’ Motion to 

Transfer is GRANTED. It is hereby ORDERED that this case shall be transferred to the Northern 

District of California.

SIGNED this 22nd day of July, 2022. 

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

Case 6:20-cv-00267-ADA Document 99 Filed 07/28/22 Page 22 of 22