1 

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION

VOIP-PAL.COM, INC.

Plaintiff,

v. 

AMAZON.COM, INC.,

AMAZON.COM SERVICES LLC, and

AMAZON WEB SERVICES, INC.

 Defendants.

§

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

Civil No. 6:20-cv-00272-ADA

ORDER DENYING DEFENDANTS’ MOTION TO TRANSFER VENUE 

Defendants Amazon.com, Inc., Amazon.com Services LLC, and Amazon Web Services, 

Inc., (collectively, “Amazon”) filed their Motion to Transfer (the “Motion”) from the Western 

District of Texas (the “WDTX”) to the Northern District of California (the “NDCA”) on July 15, 

2020. ECF No. 26. Plaintiff VoIP-Pal.com, Inc. (“VoIP”) filed its Opposition to Amazon’s Motion 

on August 5, 2020. ECF No. 33. Amazon filed its Reply on August 19, 2020. ECF No. 41. After 

careful consideration of the briefing and the applicable law, the Court DENIES Amazon’s Motion. 

I. FACTUAL BACKGROUND

Plaintiff VoIP is a Nevada corporation with its principal place of business in Waco, Texas. 

ECF No. 31 ¶ 1. Defendant Amazon is a Delaware corporation with its principal place of business 

in Seattle, Washington. Id. ¶¶ 2–4. VoIP filed a complaint against Amazon alleging infringement 

of U.S. Patent No. 10,218,606 (the “’606 patent” or the “Asserted Patent”) on April 6, 2020. Id.

¶¶ 10, 47. The Asserted Patents describe systems, methods, and apparatuses for communication 

across and between internet-protocol based communication systems and other networks, such as 

internally controlled systems and external networks. Id. ¶¶ 26, 40. The “Accused System” is a 

platform for calling and messaging, enabling Amazon Alexa Calling Devices (such as the Amazon 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 1 of 19
2 

Echo line of devices, fourth generation and later Amazon Fire devices with Alexa support, and

mobile devices) and Alexa software running on such devices. Id. ¶ 44. The Accused System allows 

Amazon Alexa Calling Devices to initiate a call or a voice message between a first and second 

participant, with each participant device being associated with one or more network elements, with 

these network elements being either local or separate from one another. Id.

Vinod Prasad leads Amazon’s Alexa Communications team, which includes nineteen 

employees in Sunnyvale, California. ECF No. 41-1 ¶ 3. Ex-Amazon employee Tim Thompson led 

a team of forty engineers responsible for the Alexa devices’ operating system at Amazon’s facility 

in Austin, Texas. ECF No. 33-25 ¶¶ 3–7. Bala Kumar leads a separate team of thirteen engineers 

responsible for Echo device hardware in Austin, Texas. Id.

While VoIP’s principal place of business is here in Waco, only Chief Financial Officer 

Kevin Williams works in Waco. VoIP-Pal.com, Inc. v. Amazon.com, Inc., No. 6:21-CV-00668 

(W.D. Tex.), ECF No. 29 at 4. VoIP’s other current and former c-suite executives live mainly in 

Canada. Id. Moreover, until recently VoIP’s principal place of business was in Bellevue, 

Washington—VoIP moved to Waco in March 2021. 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 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 2 of 19
3

‘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 Section 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) 

(en banc) (“Volkswagen II”). Answering that question requires a determination of whether the 

proposed transferee venue is proper. A plaintiff may establish proper venue by showing that the 

defendant committed acts of infringement in the district and has a regular and established place of 

business there. 28 U.S.C. § 1400(b). A defendant has a regular and established place of business 

in the district if the plaintiff proves that there is a “physical place in the district,” that it is a “regular 

and established place of business,” and lastly that it is “the place of the defendant.” In re Cray Inc., 

871 F.3d 1355, 1360 (Fed. Cir. 2017).

Additionally, Fifth Circuit courts “should . . . grant” a § 1404(a) motion if the movant can 

show his proposed forum is “clearly more convenient.” Volkswagen II, 545 F.3d at 315. The Fifth 

Circuit further held that “[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. US. 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 (hereinafter “Volkswagen I”)(5th Cir. 2004) (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 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 3 of 19
familiarity of the forum with the law that will govern the case; and (4) the avoidance of

unnecessary problems of conflict of laws of the application of foreign law.” Id.

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

party. Volkswagen II, 545 F.3d at 314. Thus, the movant must demonstrate that the alternative 

venue is clearly more convenient than the plaintiff’s chosen forum. Id. at 315. Although the 

plaintiff’s choice of forum is not a separate factor entitled to special weight, respect for the 

plaintiff’s choice of forum is encompassed in the movant’s elevated burden to “clearly 

demonstrate” that the proposed transferee forum is “clearly more convenient” than the forum in 

which the case was filed. Id. at 314–15. While “clearly more convenient” is not necessarily

equivalent to the “clear and convincing” evidence standard, 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).

Finally, for purposes of transfer, a court does not need to look solely at the situation as it 

existed at time of filing of the Complaint when examining convenience factors. While a court must 

do so for purposes of considering where the suit “might have been brought” under § 1404(a), the 

“convenience” clause “includes no comparable language mandating that courts look only 

backward.” Lynk Labs, Inc. v. Home Depot USA, Inc., No. 6:21-CV-00097, 2022 WL 1593366, at 

*6 (W.D. Tex. May 19, 2022) (citing Seagen Inc. v. Daiichi Sankyo Co., No. 2:20-CV-00337-JRG,

2021 WL 3620428, at *2 (E.D. Tex. Apr. 19, 2021)). Therefore, this Court will consider facts 

arising after the original transfer motion. See Unification Techs. LLC v. Micron Tech., Inc., No. 

6:20-CV-500-ADA, 2022 WL 92809, at *3 (W.D. Tex. Jan. 10, 2022). 

III. ANALYSIS

4

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 4 of 19
5

A. VoIP could have brought this suit in the Northern District of California.

The preliminary question in any transfer analysis under 28 U.S.C. § 1404(a) is whether the 

plaintiff could have properly brought its lawsuit in the proposed transferee forum. Volkswagen II, 

545 F.3d at 312. VoIP certainly could have. Under 28 U.S.C. § 1400(b), one location where venue 

in a patent lawsuit is proper is where the defendant has committed acts of infringement and 

maintains a regular and established place of business. Amazon maintains a significant office with 

many employees in the NDCA. VoIP does not dispute that this threshold inquiry is satisfied.

B. The private interest factors weigh against transfer.

a. The relative ease of access to sources of proof slightly weighs against 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, 2019 WL 4743678, at *2 (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). And “[i]n patent infringement cases, the bulk of the relevant 

evidence usually comes from the accused infringer. Consequently, the place where the defendant’s 

documents are kept weighs in favor of transfer to that location.” In re Apple Inc., 979 F.3d 1332, 

1340 (Fed. Cir. 2020).

Amazon argues that this factor is neutral, stating that the bulk of the documentation relevant 

to this case is located in the Seattle area and stored on servers in Oregon. ECF No. 26 at 12; ECF 

No. 26-3 ¶ 11. The individuals who maintain technical documentation related to the accused 

technology are located in Amazon’s Seattle headquarters. Id. Since the documents in Seattle are 

“equally accessible” in the NDCA and the WDTX, Amazon concludes this factor is neutral. ECF 

No. 26 at 12.

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 5 of 19
6

VoIP argues that additional relevant documentation is stored in the WDTX. ECF No. 33 at 

11. VoIP relies on a declaration by Tim Thompson in Parus Holdings Inc. v. Amazon.com, Inc., 

No. 6:19-CV-454 (W.D. Tex.), ECF No. 20-1, in which Mr. Thompson states “[t]echnical 

documentation relating to the work of the DeviceOS and Echo Platform Software teams is 

maintained at the Austin offices.” ECF No. 33-25 ¶ 6. VoIP therefore concludes that because this 

documentation, which VoIP holds to be relevant, is located in and accessible from Austin, that this 

factor weighs against transfer. ECF No. 33 at 11. 

In response, Amazon disputes the relevancy of the Thompson declaration and any 

statements within, arguing that the teams in question did not have any hand in developing or 

maintaining the Accused System, and as such do not have any relevant documentation. ECF No. 

41 at 1. In support, Amazon introduces supplemental declarations from Mr. Thompson and Bala 

Kumar, senior members of the teams whose relevancy is disputed. ECF No. 41-2; ECF No. 41-3. 

These declarations state that these teams do not work on functionalities of the Accused System, 

which Amazon describes as involving “communications between devices,” with these teams 

instead being responsible for “communications between the hardware components.” ECF No. 41 

at 1; ECF No. 41-2 ¶¶ 4–5, 6; ECF No. 41-3 ¶ 6. 

While Amazon denies that documentation for the DeviceOS and Echo products stored in 

Austin are relevant, the Court does not agree. “[E]ven if the device operating system is not the 

most ‘critical’ part of infringement, VoIP still has a burden of showing that the operating system 

implements the more critical middleware functionality to prove its infringement case.” VoIPPal.com, Inc. v. Amazon.com, Inc., No. 6:21-CV-00668, 2022 WL 2110697, at *3 (W.D. Tex. June 

10, 2022) (discussing a separate but analogous patent infringement suit between the same parties); 

VoIP-Pal.com, Inc. v. Amazon.com, Inc., No. 6:21-CV-00668, ECF No. 88 (W.D. Tex. October 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 6 of 19
7

18, 2022) (denying motion for reconsideration of order denying transfer to the NDCA). These 

teams and their work are therefore relevant to the present case because of their involvement in 

developing systems and devices that implement the Alexa Calling and Messaging functionality.

This factor slightly weighs against transfer. Amazon concedes that the bulk of its 

documentation relating to the Alexa Calling and Messaging System and financial documentation 

is located in Seattle, not in the NDCA or the WDTX. Amazon employees in Austin will be able to 

access this documentation just as easily as Amazon employees in Sunnyvale. But because relevant

teams, and therefore relevant documents, are located in Austin, this factor weighs against transfer.

b. The compulsory process factor slightly favors transfer.

The Federal Rules permit a court to 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 Inc., No. 6:18-cv00372, 2019 WL 4743678, at *14 (citing Volkswagen II, 545 F.3d at 316). And “when there is no 

indication that the 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 

third-party witnesses reside within the transferee venue than reside in the transferor venue.” In re 

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

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 7 of 19
8 

To support transfer, Amazon points to prior art witnesses located in the NDCA that it 

intends to use to prove invalidity. ECF No. 26 at 13. Amazon identifies companies “that are or 

were at the relevant time headquartered” in the NDCA that developed prior art systems: Avaya 

Inc. in Santa Clara, California; Skype Inc. in San Jose, California; Cisco Systems, Inc. in San Jose, 

California; Sylantro Systems in Campbell, California; and Altigen Communications in Milpitas, 

California. Id.; ECF Nos. 26-25–26-29. Since these witnesses have provided no indication of their 

willingness to attend trial, Amazon argues that the NDCA’s subpoena power will be necessary. 

ECF No. 26 at 13. Amazon additionally identifies prior art developer AT&T, which is 

headquartered in Dallas, within this Court’s 100-mile subpoena power, but claims that AT&T will 

likely not need to be compelled to provide a witness if called upon. Id.; ECF No. 26-24 at 22–23.

Amazon preemptively attempts to block any claims of cherry-picking these prior art witnesses 

because these prior art witnesses were “identified in [a] prior Amazon case after it had already 

been voluntarily transferred” to the NDCA and before VoIP filed any cases in the WDTX. ECF 

No. 26 at 13. VoIP further argues that Amazon’s prior art witnesses are speculative at best because 

Amazon has not served invalidity claim charts and because Amazon “cherry-picked” these 

three prior-art companies out of preliminary contentions that list 15 different systems. Id. at 12–

13; ECF No. 26-24 at 10–30. Amazon contends that it did not cherry-pick the systems because it 

“discussed all fifteen systems previously identified” and merely pointed out those which are in the 

NDCA and did not submit claim charts because it “did not want to burden the Court with 

voluminous charts and because [VoIP] already has them.” ECF No. 41 at 5. 

For its part, VoIP points to witnesses in Dallas and Austin that it asserts will require this 

Court’s subpoena power to compel attendance. ECF No. 33 at 13. VoIP intends to call Mr. George 

Brunt of Business Legal Management in Dallas, who is knowledgeable about licensing the 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 8 of 19
9

Asserted Patent, and Mr. Marcus Redding of Intellion Analytics Group in Austin, who has 

information related to damages. ECF No. 33-1 ¶ 51–52; ECF No. 33-33. Like Amazon’s witnesses, 

VoIP’s Dallas and Austin witnesses have not indicated a willingness to attend trial. ECF No. 33 at 

13. Amazon argues that the Court should not count Messrs. Brunt or Redding under this factor

because they are “consultants” retained by VoIP. Id. at 2. As to at least Mr. Redding, this was true 

in 2016 and 2018. ECF No. 31-1 ¶ 52. Yet Amazon has not presented evidence that either are still 

willing to testify in this case in 2022 or that VoIP is continuing to pay them.

The Court finds this factor to slightly favor transfer. Amazon cites six witnesses in its 

desired forum that require the NDCA’s compulsory process; VoIP points to two that require this 

Court’s compulsory process. There are only three more witnesses who reside in the NDCA than 

the WDTX, a difference that is insufficient to heavily tip the scale when considering that Amazon 

is statistically unlikely to select those prior art witnesses for trial from among the dozens of

references that it contends invalidates the Asserted Patent. Thus, this factor weighs only slightly 

in favor of transfer.

c. The cost of attendance for willing witnesses factor weighs against transfer. 

The most important factor in the transfer analysis is witness convenience. In re Genentech, 

Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). When analyzing this factor, the Court should consider 

all potential materials and relevant witnesses. Alacritech Inc. v. CenturyLink, Inc., No. 2:16-CV00693, 2017 WL 4155236, at *5 (E.D. Tex. Sept. 19, 2017). This factor appropriately considers 

the cost of attendance of all willing witnesses, including both party and non-party witnesses. In re 

Pandora Media, LLC, No. 2021-172, 2021 WL 4772805, at *2–3 (Fed. Cir. Oct. 13, 2021). “Courts 

properly give more weight to the convenience of non-party witnesses than to party witnesses.” 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 9 of 19
10

Netlist, Inc. v. SK Hynix Inc., No. 6:20-CV-00194-ADA, 2021 WL 2954095, at *6 (W.D. Tex. 

Feb. 2, 2021).

“When 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 or inconvenience to witnesses increases in direct 

relationship to the additional distance to be travelled.” Volkswagen II, 545 F.3d at 

317 (quoting Volkswagen I, 371 F.3d at 203). But the Federal Circuit has clarified that courts 

should not “rigidly” apply the 100-mile rule in cases where witnesses would be required to travel

a significant distance no matter where they testify. In re Apple, 979 F.3d at 1342 (discussing 

witnesses traveling from New York) (citing Volkswagen II, 545 F.3d at 317).

Rather, “the inquiry should focus on the cost and inconvenience imposed on the witnesses 

by requiring them to travel to a distant forum and to be away from their homes and work for an 

extended period of time.” In re Google, LLC, No. 2021-170, slip op. at 9 (Fed. Cir. Sept. 27, 2021). 

The Federal Circuit has indicated that time away from an individual’s home is a more important 

metric than distance. Id. Time and distance frequently and naturally overlap because witnesses 

usually take more time to travel farther away, thereby increasing the time away from home. A 

witness in Florida would not find it more convenient to travel to Texas than to California despite 

Texas being halfway between Florida and California. In re Apple Inc., No. 2022-128, 2022 WL 

1196768, at *3 (Fed. Cir. Apr. 22, 2022).

Amazon claims that it has 350 employees on the Alexa Communications team, with the 

majority of relevant employees living and working in Seattle, additional relevant employees in 

Toronto, and a handful of additional relevant employees in the Bay Area and in India. ECF No. 

26-3 ¶ 9. These employees are supposedly responsible for designing, developing, and managing

the code for the “Alexa Calling and Messaging” system VoIP accuses in its complaint. ECF No. 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 10 of 19
11

26 at 6. According to Amazon, none of these identified employees are located within the WDTX.

ECF No. 26-3 ¶ 13.1 Thus, Amazon argues, its development employees “and other likely trial 

witnesses” located in Seattle will be much more inconvenienced by traveling to the WDTX than 

to the NDCA. ECF No. 26 at 14. In response, VoIP questions why Amazon did not “provid[e] any 

specifics” on how many relevant employees exist. ECF No. 33 at 8; ECF No. 26-3 ¶ 7. In its Reply, 

Amazon introduces a declaration from Mr. Vinod Prasad that states that there is a team of nineteen

people in Sunnyvale, California, who works on the backend portion of the client software that 

enables the accused functionality. ECF No. 41-1 ¶ 3. While Amazon asserts that there are a large 

number of people in the NDCA or closer to the NDCA on the Alexa Communications team with 

relevant knowledge, the Court finds that these statements are not definite enough to weigh into the 

transfer analysis. Mr. Hardie acknowledges that the Alexa Communications service includes, 

“among other things,” the Accused Systems, and “believe[s]” that “a majority” of the relevant

Alexa Communications team members are located on the west coast, noting that he “do[es] not 

know” any Amazon employees working on the Alexa Calling and Messaging system in the 

WDTX. ECF No. 26-3 ¶¶ 8, 9, 13. But these statements do not provide meaningful detail as to the 

number of relevant witnesses in the Alexa Communications team, and instead, they merely dance

around the question. Accordingly, these assertions are not given any weight in this factor. Amazon 

has, however, sufficiently identified nineteen people in Sunnyvale that have relevant knowledge

and count towards transfer.

Amazon further argues that the location of VoIP’s witnesses either favors or weighs 

neutrally on transfer. Amazon identifies VoIP’s executive officers and staff, who are, according to 

1 Amazon’s declarant, Mr. Tony Hardie, identifies one employee who previously worked on the

relevant technologies who resides in the Dallas-Fort Worth area but clarifies that this individual 

“has not worked on Alexa Calling and Messaging for several years.” ECF No. 26-3 ¶ 13.

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 11 of 19
12

VoIP’s website: Colin Tucker, Emil Malak, Dennis Chang, Edwin Candy, Ryan Thomas, Roland 

Franke, Ray Leon, D. Barry Lee, Pentti Huttunen, and Alex Krapyvny. VoIP-Pal.com, Inc. v. 

AT&T, Inc., No. 6:20-CV-00325 (W.D. Tex.), ECF No. 22-42. Amazon provides records 

indicating Messrs. Malak, Lee, and Huttunen reside in Vancouver, British Columbia, Canada; Mr. 

Tucker resides in the United Kingdom; Mr. Thomas resides in North Layton, Utah; Mr. Chang 

resides in the San Francisco Bay Area in California; and Mr. Candy resides in Gibraltar. Id. at ECF 

Nos. 22-30, 22-34–22-37. Only Mr. Chang will count towards transfer, as all others will need to 

spend significant time away from home to testify in either the WDTX or the NDCA and 

accordingly neither favor transfer nor retention. Amazon also identifies the inventors of the 

Asserted Patent: Emil Malak, Jev Björsell, Clay Perreault, Fuad Arafa, Rod Thomson, and Steve 

Nicholson, who are located in Vancouver, New York, and New Zealand. All inventors have since 

consented to testify if required in Waco. ECF Nos. 33-42–33-46. However, since these individuals

that have agreed to testify are far enough away from either district that they will be inconvenienced 

in such a manner that they will need to spend significant time away from home in either district, 

these witnesses are considered to weigh neither in favor nor against transfer.

VoIP points to fifty-three Amazon employees in Austin that Amazon has previously 

identified in other cases that VoIP believes may also work on the accused instrumentalities. ECF 

No. 33 at 9–10; ECF No. 33-25 ¶¶ 3, 5. The Amazon employees VoIP highlights comprise 

Amazon’s DeviceOS team, which designs and develops the operating system for Amazon Echo 

and FireTV products. ECF No. 33-25 ¶¶ 2–4. Amazon denies the relevance of the teams led by 

Mr. Thompson and Ms. Kumar, stating that these teams do not work on the instrumentalities VoIP 

alleges infringes the Asserted Patent. ECF No. 41-2 ¶ 2; ECF No. 41-3 ¶ 2. However, as previously 

mentioned, these teams and their work are indeed relevant because of their involvement in 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 12 of 19
13

developing systems and devices that implement the Alexa Calling and Messaging functionality. 

These employees therefore weigh against transfer.

The Court finds this factor to weigh against transfer. Amazon attempts to identify a large 

number of witnesses on the Alexa Communications team but does not provide enough information 

for the Court to treat the assertion as credible, with the exception of the nineteen witnesses 

identified in the Sunnyvale office on the Alexa Communications team. VoIP’s executive, Mr. 

Chang, also weighs in favor of transfer. The fifty-three Amazon employees VoIP identifies in 

Austin are also relevant and weigh against transfer. In total, there are twenty witnesses in or around 

the NDCA that favor transfer, and fifty-three witnesses in or around the WDTX that favor 

retention. Therefore, this factor weighs against transfer.

d. Other practical problems are 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 

315. “Particularly, the existence of duplicative suits involving the same or similar issues may 

create practical difficulties that will weigh heavily in favor or against transfer.” PersonalWeb 

Techs., LLC v. NEC Corp. of Am., Inc., No. 6:11-cv-655, 2013 WL 9600333, at *5 (E.D. Tex. Mar. 

21, 2013). “[W]here there is a co-pending litigation . . . involving the same patent-in-suit, . . .

pertaining to the same underlying technology and accusing similar services, . . . the Federal Circuit 

cannot say the trial court clearly abuses its discretion in denying transfer.” In re Vistaprint Ltd., 

628 F.3d 1342, 1346 n.3 (Fed. Cir. 2010).

The Court finds this factor neutral. VoIP filed six cases in this District between April 2 and 

April 24, 2020, each accusing similar technologies. VoIP-Pal.com, Inc. v. Facebook, Inc., No. 

6:20-cv-00267, ECF No. 1 (W.D. Tex. Apr. 2, 2020); VoIP-Pal.com. Inc. v. Google, LLC, No. 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 13 of 19
14

6:20-cv-00269, ECF No. 1 (W.D. Tex. Apr. 3, 2020); VoIP-Pal.com, Inc. v. Amazon.com, Inc., 

No. 6:20-cv-00272, ECF No. 1 (W.D. Tex. Apr. 6, 2020); VoIP-Pal.com, Inc. v. Apple, Inc., No. 

6:20-cv-00275, ECF No. 1 (W.D. Tex. Apr. 7, 2020); VoIP-Pal.com, Inc. v. AT&T Corp., No. 

6:20-cv-00325, ECF No. 1 (W.D. Tex. Apr. 24, 2020); VoIP-Pal.com, Inc. v. Verizon Comms., 

Inc., No. 6:20-cv-00327, ECF No. 1 (W.D. Tex. Apr. 24, 2020). Three of those cases have since

been dismissed. VoIP-Pal.com, Inc. v. Apple Inc., No. 6:20-cv-275, ECF No. 49 (W.D. Tex. Mar. 

24, 2021); VoIP-Pal.com, Inc. v. AT&T, Inc., No. 6:20-cv-325, ECF No. 53 (W.D. Tex. Mar. 25, 

2021); VoIP-Pal.com, Inc. v. Verizon Comms., Inc., No. 6:20-cv-327, ECF No. 49 (W.D. Tex. Apr. 

1, 2021). Two have been transferred to the NDCA: VoIP-Pal.com, Inc. v. Facebook, Inc., No. 

6:20-cv-00267, ECF No. 97 (W.D. Tex. Jul. 22, 2022); VoIP-Pal.com. Inc. v. Google, LLC, No. 

6:20-cv-00269, ECF No. 1 (W.D. Tex. Apr. 3, 2020).

Amazon argues that this case should be transferred to the NDCA because VoIP previously 

litigated patents covering related technologies there. ECF No. 26 at 8–10. Amazon makes repeated 

mention to Judge Lucy Koh, who has presided over at least six cases in the same family of patents 

as the Asserted Patent. ECF No. 26 at 8. Judge Koh has since left the NDCA to take the bench on 

the Ninth Circuit. VoIP-Pal.com, Inc. v. Meta Platforms, Inc., No. 6:21-cv-667, 2022 WL 

2110696, at *7 (W.D. Tex. May 31, 2022). Judge Virginia DeMarchi, however, in the NDCA was 

assigned to several previous cases involving VoIP’s patent portfolio. Id. 

The accused products in this case have not been litigated pursuant to the Asserted Patents, 

or to any of the patents in VoIP’s portfolio, in the NDCA. Amazon instead compares the ’606 

patent’s language to portions of other patents in VoIP’s portfolio and relies on Judge Koh’s finding 

in VoIP-Pal.Com, Inc. v. Twitter, Inc., to support their argument that the ’606 patent is similar 

enough to the actions brought in the NDCA to support transfer. No. 18-CV-04523-LHK, 2021 WL 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 14 of 19
15

3773611 (N.D. Cal. Apr. 21, 2020). Judge Koh also issued other decisions that suggest the cases 

are unrelated. Order Denying Motion to Relate, Apple v. VoIP-Pal.com, Inc., No. 20-CV-02460-

LHK (N.D. Cal. Aug. 25, 2021) (“The Court DENIES Apple’s motion to relate the instant case”); 

Order Denying Motion to Relate, AT&T Corp. v. VoIP-Pal.com, Inc., No. 20-CV-2995-LHK (N.D. 

Cal. Aug. 25, 2021) (“The Court DENIES AT&T’s motion to relate the instant case”). This Court 

previously found that the cases in the NDCA did not relate closely enough to warrant a stay of the 

cases pending in the WDTX. VoIP-Pal.com, Inc. v. Apple, Inc., No. 6:21-cv-670-ADA (W.D. 

Tex. Sept. 3, 2021).

But for this transfer factor, the Court only looks to whether the cases are closely related 

enough such that the NDCA might gain some judicial efficiency that makes trial more practical 

and expeditious. Due to the history in the NDCA, Judge DeMarchi’s continued involvement in the 

NDCA cases, and the two related cases that have been transferred there from this Court, the Court 

concludes that the NDCA will gain some small amount of efficiency if this case were transferred.

The Court, however, also finds it important that there is an analogous case between the same parties 

and similar patents currently pending before this Court. See VoIP-Pal.com, Inc. v. Amazon.com, 

Inc., No. 6:21-CV-00668, ECF No. 88 (W.D. Tex. June 10, 2022). On the whole, any efficiency 

gained by transferring to the NDCA is balanced out by this pending case remaining with this Court.

Both the transferor and transferee forums are familiar with the parties and technologies at 

issue. Accordingly, the Court finds this factor neutral.

C. The public interest factors weigh slightly against transfer.

a. The court congestion factor weighs slightly against transfer.

The analysis under this factor asks “whether there is an appreciable difference in docket 

congestion between the two forums.” Parsons v. Chesapeake & Ohio Ry. Co., 375 U.S. 71, 73 

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 15 of 19
16

(1963); Parkervision, Inc. v. Intel Corp., No. 6:20-CV-00108, 2021 WL 401989, at *6 (W.D. Tex. 

Jan. 26, 2021). The Court considers the “speed with which a case can come to trial and be 

resolved . . . .” Genentech, Inc., 566 F.3d at 1347. However, court congestion is considered “the 

most speculative” factor, and when “relevant factors weigh in favor of transfer and others are 

neutral, then the speed of the transferee district court should not alone outweigh all those other 

factors.” Id.

The Court finds this factor to weigh slightly against transfer. Amazon argues that the 

NDCA’s lower caseload weighs in favor of transfer to that District. ECF No. 26 at 14–15. “While 

the Federal Circuit has previously held that there are “no significant differences in caseload or 

time-to-trial statistics” between the WDTX and the NDCA, In re Juniper Networks, Inc., 14 F.4th 

1313, 1322 (Fed. Cir. 2021), recent data show that this Court has been able to hold trials faster 

than the Northern District of California, with an approximate time to trial of two years.

2 The 

2 See, e.g., MV3 Partners v. Roku, Inc., 6:18-cv-00308-ADA (W.D. Tex., filed Oct. 16, 2018) 

(23.7 months from case filing to trial); CloudofChange, LLC, v. NCR Corp., No. 6:19-cv-00513-

ADA (W.D. Tex., filed August 30, 2019) (20.3 months from case filing to trial); VLSI Tech. LLC 

v. Intel Corp., No. 6:21-cv-00057-ADA (W.D. Tex., filed Apr. 11, 2019) (22.4 months from case 

filing to trial); Freshub, Inc. v. Amazon.Com Inc., No. 6:21-cv-00511-ADA (W.D. Tex., filed 

Jun. 24, 2019) (23.7 months from case filing to trial); ESW Holdings, Inc. v. Roku, Inc., No. 

6:19-cv-00044-ADA (W.D. Tex., filed Feb. 8, 2019) (25.9 months from case filing to trial); 

Profectus Tech. LLC v. Google LLC, 6:20-cv-00101-ADA (W.D. Tex., filed Feb. 10, 2020) (19.6 

months from case filing to trial); Jiaxing Super Lighting v. CH Lighting Tech., 6:20-cv-00018-

ADA (W.D. Tex., filed Jan. 10, 2020) (21.7 months from case filing to trial); VideoShare LLC v. 

Google LLC, 6:19-cv-663-ADA (W.D. Tex., filed Nov. 15, 2019) (23.8 months from case filing 

to trial); NCS Multistage Inc. v. Nine Energy Serv.’s, Inc., No. 6:20-cv-00277-ADA (W.D. Tex., 

filed Mar. 24, 2020) (21.8 months from case filing to trial); EcoFactor, Inc. v. Google LLC, No. 

6:20-cv-00075-ADA (W.D. Tex., filed Jan. 31, 2020) (24 months from case filing to trial); 

Densys Ltd. v. 3Shape Trio A/S, 6:19-cv-00680-ADA (W.D. Tex., filed Nov. 26, 2019) (28.3 

months from case filing to trial); Appliance Computing III, Inc. v. Redfin Corp., No. 6:20-cv00376-ADA (W.D. Tex., filed May 11, 2020) (24 months from case filing to trial); Caddo Sys. 

Inc., v. Microchip Tech. Inc., No. 6:20-cv-00245-ADA (W.D. Tex., filed March 27, 2020) (26.5 

months from case filing to trial); SunStone Info. Def., Inc. v. International Bus. Machines Corp., 

No. 6:20-cv-1033-ADA (W.D. Tex., filed Nov. 9, 2020) (21.0 months from case filing to trial);

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 16 of 19
17

Federal Circuit has previously emphasized the importance of rapid disposition of patent cases. 

Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1080 (Fed. Cir. 1989). It has even acknowledged 

Congress’s interest in the “quick” resolution of patent disputes. See, e.g., Ethicon Endo-Surgery, 

Inc. v. Covidien LP, 826 F.3d 1366, 1367 (Fed. Cir. 2016). In view of Federal Circuit law and 

recent time-to-trial statistics, the Court finds this factor weighs slightly against transfer.

b. The local interests are neutral.

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. “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). Accordingly, “the sale of 

an accused product offered nationwide does not give rise to a substantial interest in any single 

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

But 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. Id. Moreover, “little or no 

weight should be accorded to a party’s ‘recent and ephemeral’ presence in the transferor forum, 

such as by establishing an office in order to claim a presence in the district for purposes of 

NCS Multistage Inc. v. TCO Products Inc., No. 6:20-cv-00622-ADA (W.D. Tex., filed Sept. 9, 

2020) (23.4 months from case filing to trial); Ravgen, Inc. v. Lab. Corp. of Am. Holdings, No. 

6:20-cv-00969-ADA (W.D. Tex. filed Nov. 16, 2020) (23.1 months from case filing to trial).

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 17 of 19
18

litigation.” In re Juniper Networks, Inc., 14 F.4th 1313, 1320 (Fed. Cir. 2021) (quoting In re 

Microsoft Corp., 630 F.3d 1361, 1365 (Fed. Cir. 2011)).

Thus, while the location of VoIP’s headquarters in Waco would normally be entitled to at 

least some weight, the Court gives no weight to its location in this case. VoIP had not established 

itself in Waco until long after this case was filed, and even still its “headquarters” in the WDTX is 

staffed by only one employee. VoIP-Pal.com, Inc. v. Amazon.com, Inc., No. 6:21-CV-00668 (W.D. 

Tex.), ECF No. 48 at 4. VoIP’s other C-suite executives, meanwhile, continue to live in Canada. 

Id. Such a connection to Waco is insufficient to weigh against transfer.

The Court finds this factor neutral. Under this factor, the Court looks to the events that give 

rise to this lawsuit. Juniper Networks, 14 F.4th at 1320. Here, the Court properly looks to where 

Amazon’s accused technology was developed. In re Samsung Elecs. Co., Ltd., 2 F.4th 1371 (Fed. 

Cir. 2021), cert. denied sub nom. Ikorongo Tex. LLC v. Samsung Elecs. Co., Ltd., 142 S. Ct. 1445 

(2022) (courts must look to where the “research[], design[], and develop[ment]” of accused 

technology took place). Amazon argues that this factor favors neither the NDCA nor the WDTX 

because neither Amazon nor VoIP are headquartered in either district, and because Amazon has 

sizeable facilities in both districts. ECF No. 26 at 15. VoIP claims that this factor favors retention 

because “Amazon has a significant presence in WDTX” which is “exploding” as the company 

expands in Texas. ECF No. 33 at 14. This discounts the existence of Amazon’s facilities and 

offices in the NDCA, which are of at least comparable size to those in the WDTX. ECF No. 41 at 

3. Additionally, development of the Accused Systems is spread out across numerous locations in 

the country, including both the WDTX and the NDCA. See, e.g., ECF No. 26-3 ¶ 9; ECF No. 33-

25 ¶¶ 3–7; ECF No. 41-1 ¶ 3. In sum, both the NDCA and the WDTX have valid local interests

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 18 of 19
19

because research, design, and development of accused technology occurred in both districts. 

Accordingly, the Court finds this factor neutral.

c. The familiarity with governing law factor is neutral.

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

d. The conflict of laws factor is neutral.

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

IV. CONCLUSION

In sum, the balance of the Volkswagen factors weighs against transfer. Only the compulsory 

process factor slightly favors transfer, while the court congestion, convenience of witnesses, and 

sources of proof factors weigh against transfer. The practical problems, local interests, governing 

law, and conflict of laws factors are neutral. For these reasons, Amazon’s Motion to Transfer is 

DENIED. 

SIGNED this 19th day of October, 2022.

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

Case 6:20-cv-00272-ADA Document 78 Filed 10/19/22 Page 19 of 19