UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS

WACO DIVISION

PARKERVISION, INC. 

Plaintiff,

vs.

INTEL CORPORATION

Defendant.

C.A. No. 6:20-cv-00108-ADA

JURY TRIAL DEMANDED

DEFENDANT INTEL CORPORATION’S OPPOSED MOTION TO 

TRANSFER VENUE UNDER 28 U.S.C. §1404(a) 

Case 6:20-cv-00108-ADA Document 30 Filed 07/10/20 Page 1 of 20
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TABLE OF CONTENTS

Page

I. INTRODUCTION .........................................................................................................1

II. BACKGROUND ...........................................................................................................2

A. Neither ParkerVision nor Intel has relevant connections to the Western 

District of Texas.................................................................................................2

1. ParkerVision has no relevant connections to this district ......................2

2. Intel has no connections to the Western District of Texas that 

are material to this case..........................................................................4

B. Relevant witnesses and documents are more easily accessible from 

Oregon................................................................................................................5

1. The Asserted Patents have no material connection to Texas.................5

2. The relevant documents and witnesses for the Intel Products At 

Issue are more easily accessible from Oregon.......................................6

III. THIS ACTION SHOULD BE TRANSFERRED TO THE DISTRICT OF 

OREGON.......................................................................................................................7

A. Legal Standard ...................................................................................................7

B. Step 1: This action could have been brought in the District of Oregon............8

C. Step 2: The District of Oregon is clearly more convenient than the 

Western District of Texas ..................................................................................8

1. Factors Favoring Transfer......................................................................8

2. Neutral Factors.....................................................................................14

IV. IN THE ALTERNATIVE, THIS ACTION SHOULD BE TRANSFERRED 

TO THE AUSTIN DIVISION.....................................................................................15

V. CONCLUSION............................................................................................................15

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TABLE OF AUTHORITIES

Page(s)

Federal Cases

In re Acer Am. Corp.,

626 F.3d 1252 (Fed. Cir. 2010)......................................................................................7, 11

Data Scape Ltd. v. Dell Techs. Inc. et al.,

No. 6:19-cv-129-ADA, D.I. 44 (W.D. Tex. June 7, 2019)........................................8, 9, 13

DataQuill, Ltd., v. Apple, Inc.,

No. A-13-CA-706-SS, 2014 WL 2722201 (W.D. Tex. June 13, 2014) ............................14

In re Genentech, Inc.,

566 F.3d 1338 (Fed. Cir. 2009)..................................................................................8, 9, 12

Mimedx Grp., Inc. v. Texas Human Biologics, Ltd.,

No. 1:14-CV-464-LY, 2014 WL 12479284 (W.D. Tex. Aug. 12, 2014)....................10, 12

In re Morgan Stanley,

417 Fed. App’x 947 (Fed. Cir. 2011).................................................................................13

In the Matter of Certain RF Capable Integrated Circuits and Products 

Containing The Same, Inv. No. 337-TA-982 (Dec. 15, 2015).............................................3

Moskowitz Family LLC v. Globus Medical, Inc.,

No. 6:19-cv-672-ADA, D.I. 50 (W.D. Tex. July 2, 2020).......................................9, 10, 12

ParkerVision, Inc. v. Apple Inc. et al., Corp.,

Case No. 3:15-cv-1477 (M.D. Fla.).....................................................................................3

ParkerVision, Inc. v. Blu Products, Inc.,

No. 3:15-cv-888 (M.D. Fla.)................................................................................................3

ParkerVision, Inc. v. Bullit Group Ltd.,

No. 3:15-cv-896 (M.D. Fla.)................................................................................................3

ParkerVision, Inc. v. Infosonics, Corp.,

No. 3:15-cv-895 (M.D. Fla.)................................................................................................3

ParkerVision, Inc. v. Qualcomm Inc.,

621 F. App’x 1009 (Fed. Cir. 2015) ....................................................................................3

ParkerVision, Inc. v. Qualcomm Inc.,

No. 3:11-cv-719 (M.D. Fla.)................................................................................................3

ParkerVision, Inc. v. Qualcomm Inc.,

No. 6:14-cv-687 (M.D. Fla.)................................................................................................3

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In re Radmax, Ltd.,

720 F.3d 285 (5th Cir. 2013) .........................................................................................8, 15

In re Tech USA Corp.,

551 F.3d 1315 (Fed. Cir. 2008)..........................................................................................14

Two-Way Media, LLC v. AT&T,

636 F. Supp. 2d 527 (S.D. Tex. 2009).................................................................................9

In re Volkswagen of Am., Inc.,

545 F.3d 304 (5th Cir. 2008) ...............................................................................7, 8, 12, 14

In re WMS Gaming, Inc.,

564 Fed. App’x 579 (Fed. Cir. 2014).................................................................................13

Federal Statutes

28 U.S.C. §1400(b)....................................................................................................................8

28 U.S.C. §1404(a) ......................................................................................................1, 7, 8, 12

Other Authorities

F.R.C.P. 45(c) ..........................................................................................................................14

Fed. R. Civ. P. 45(c)(B)(ii) ......................................................................................................14

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I. INTRODUCTION 

Defendant Intel Corporation (“Intel”) respectfully moves to transfer this action to the 

District of Oregon, or in the alternative, to the Austin Division under 28 U.S.C. §1404(a). 

After almost a decade of unsuccessful patent litigation in its home state of Florida, in 

Germany, and before the U.S. International Trade Commission (“ITC”), Plaintiff 

ParkerVision, Inc. (“ParkerVision”) decided to try a new forum and filed this case in the 

Western District of Texas, Waco Division. But neither ParkerVision nor this case has any 

connection to the Western District of Texas:

• ParkerVision is based in Florida and does not have any offices, employees, 

operations, or even a listed phone number in the Western District of Texas; 

• None of the work that led to the asserted patents was performed in the 

Western District of Texas; 

• None of the living inventors resides in the Western District of Texas;

• Intel has no physical presence in the Waco Division and no physical presence 

in the Western District of Texas that is material to this case; 

• None of the design or development work that led to the products at issue was 

performed in the Western District of Texas;

• None of the Intel and third-party witnesses who developed the products at 

issue are based in the Western District of Texas;

• None of the schematics for the products at issue are accessible from the 

Western District of Texas; and 

• None of the likely trial witnesses from Intel or third parties resides in the 

Western District of Texas.

By contrast, resolving ParkerVision’s allegations against Intel will require testimony 

from witnesses living in Oregon, schematics accessible in Oregon, and former employees and 

third parties who are just a short flight away from Oregon:

• Intel engineers with knowledge of the structure, function, and operation of the 

products at issue work in Oregon; 

Case 6:20-cv-00108-ADA Document 30 Filed 07/10/20 Page 5 of 20
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• Highly confidential schematics that show the structure, function, and operation 

of the products at issue are accessible by Intel engineers in Oregon; and 

• Key third-party witnesses—including the former Intel employee responsible 

for marketing the Intel products at issue—are located in Northern California, 

which offers convenient commuter flights to and from Oregon.

Any argument that Intel’s presence in Austin weighs against transfer to Oregon 

misses the point because there is no material connection between this case and Austin, either. 

None of the engineers who designed or developed the products at issue works in Austin. To 

the contrary, the engineer with primary responsibility for designing the circuits at the core of 

ParkerVision’s allegations resides in Oregon. 

Should the Court nonetheless decide to keep this case in the Western District of 

Texas, Intel respectfully requests that it transfer the case to the Austin Division. 

ParkerVision agrees that this case should be transferred to Austin if it is not transferred to 

Oregon. For all the reasons that follow, however, Intel respectfully submits that this case 

should be resolved in the District of Oregon. 

II. BACKGROUND

A. Neither ParkerVision nor Intel has relevant connections to the Western 

District of Texas.

1. ParkerVision has no relevant connections to this district.

ParkerVision is a Florida corporation that ceased product sales in 2019 to focus on 

patent litigation. D.I. 14, ¶ 2; Declaration of Jason Choy (“Choy Decl.”), Ex. 1 (ParkerVision 

Apr. 14, 2020 10-K) at 4 (“We ceased sales of our Milo products during the fourth quarter of 

2019 in order to focus solely on patent enforcement actions.”). ParkerVision’s headquarters 

are in Jacksonville, Florida, and it leases a second facility in Lake Mary, Florida. Choy 

Decl., Ex. 1 (ParkerVision Apr. 14, 2020 10-K) at 13.

ParkerVision can hardly claim that the Western District of Texas is the most 

convenient forum. Since 2011, ParkerVision has filed six district court actions asserting 

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patent infringement in the Middle District of Florida.1

 One of those cases has reached a 

decision on the merits: the district court granted judgment as a matter of law (“JMOL”) of 

non-infringement on all asserted claims. ParkerVision, Inc. v. Qualcomm Inc., Case No. 

3:11-cv-719, D.I. 545 (M.D. Fla.) (“Qualcomm I”). The Federal Circuit affirmed the district 

court’s grant of JMOL and separately found ten of the asserted claims invalid. ParkerVision, 

Inc. v. Qualcomm Inc., 621 F. App’x 1009, 1017 (Fed. Cir. 2015). 

In December 2015, ParkerVision filed a complaint for patent infringement against 

Qualcomm and several of its customers, including Apple Inc. (“Apple”) in the ITC. In the 

Matter of Certain RF Capable Integrated Circuits and Products Containing The Same, Inv. 

No. 337-TA-982 (Dec. 15, 2015) (“Qualcomm ITC”), D.I. 570655. ParkerVision withdrew 

its complaint and the investigation was terminated in April 2017. Id., D.I. 605309. 

In February 2017, ParkerVision amended a complaint it had filed in the Munich 

Regional Court in Germany to accuse Apple devices that incorporate the Intel “PMB 5750” 

transceiver chip—which is also at issue here—of infringing European Patent 1 135 853 (“EP 

’853”). Choy Decl., Ex. 1 (ParkerVision Apr. 14, 2020 10-K) at 49; compare Choy Decl., 

Ex. 2 (Munich Regional Court, Apr. 25, 2019, 7 O 2141/17, Final Judgment (trans.) (Ger.)) at 

4 (“The defendants sold smartphones . . . equipped with the attacked chip ‘PMB 5750.’”) 

with D.I. 14 ¶ 32 (accusing the PMB 5750). The EP ’853 patent claims priority to five U.S. 

patents, two of which (U.S. Patent Nos. 6,049,706 and 6,580,902) were asserted here until 

ParkerVision voluntarily dismissed the ’706 patent. Choy Decl., Ex. 3 (EP ’853 patent) at 

cover; D.I. 14 ¶¶ 1, 36-38, 42-44, 66-71, 80-87 (asserting ’706 and ’902 patents); D.I. 20 

 

1 ParkerVision, Inc. v. Qualcomm Inc., No. 3:11-cv-719 (M.D. Fla.) (“Qualcomm I”); 

ParkerVision, Inc. v. Qualcomm Inc., No. 6:14-cv-687 (M.D. Fla.) (“Qualcomm II”);

ParkerVision, Inc. v. Blu Products, Inc., No. 3:15-cv-888 (M.D. Fla.); ParkerVision, Inc. v. 

Infosonics, Corp., No. 3:15-cv-895 (M.D. Fla.); ParkerVision, Inc. v. Bullit Group Ltd., No. 

3:15-cv-896 (M.D. Fla.); ParkerVision, Inc. v. Apple Inc. et al., Corp., Case No. 3:15-cv1477 (M.D. Fla.).

Case 6:20-cv-00108-ADA Document 30 Filed 07/10/20 Page 7 of 20
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(voluntarily dismissing the ’706 patent). In April 2019, the Munich Regional Court ruled that 

Apple’s Intel-based phones do not infringe the EP ’853 patent and ordered ParkerVision to 

bear the costs of that proceeding.2

 Choy Decl., Ex. 1 (ParkerVision Apr. 14, 2020 10-K) at 

50.

In February 2020, ParkerVision filed the present suit—its first in the Western District 

of Texas. D.I. 1. On May 15, 2020, ParkerVision filed its First Amended Complaint, adding 

two additional asserted patents. D.I. 14 ¶¶ 39-41, 57-59, 72-79, 117-126 (asserting the ’518 

and ’528 patents). Then, on June 24, 2020, ParkerVision voluntarily dismissed the ’706 

patent. D.I. 20. Neither complaint alleges any connection between ParkerVision or any of 

the asserted patents to the Western District of Texas.

2. Intel has no connections to the Western District of Texas that are 

material to this case. 

Intel is a leader in the design and development of semiconductor technology and 

microprocessor products, including the transceiver chips at issue here. Intel’s largest design 

and development facility is in Hillsboro, Oregon. See Declaration of Chris Hull (“Hull 

Decl.”), ¶ 6. Intel has over 21,000 employees and four campuses in Oregon. Id. 

The transceiver chips at issue here were primarily designed overseas. Id. ¶ 9. 

However, Intel sold most of its cellular transceiver business (i.e., its “smartphone modem 

 2 Intel also challenged the validity of the EP ’853 patent in a separate nullity (i.e., invalidity) 

action in the German Federal Patent Court. Choy Decl., Ex. 1 (ParkerVision Apr. 14, 2020 

10-K) at 49-50. In December 2019, the German Federal Patent Court found that all elements 

of the EP ’853 patent are disclosed in the prior art article A 900-MHz RF Front-End with 

Integrated Discrete-Time Filtering, IEEE J. OF SOLID-STATE CIRCUITS, Band 31, Nr. 12 (Dec. 

1996) by Shen, D. H., et al., (“Shen”), and rejected ParkerVision’s argument that it invented a 

“fundamentally different approach to energy transmission down-conversion.” Choy Decl., 

Ex. 4 (Bundespatentgericht [BPatG] [Federal Patent Court], Dec. 16, 2019, 5 Ni 19/17 (EP), 

Decision on Costs and Determination of the Value in Dispute (Ger.) (trans.)) at 10; see also 

id. at 15 (“Thus all features of claim 1 of the patent in suit are apparent from [Shen].”). 

Based on that and other findings, ParkerVision was ordered to pay Intel’s costs. Id. at 2 

(“The defendant [ParkerVision GmbH] has to pay the costs.”).

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business”) to Apple in December 2019.3

 D.I. 14, ¶ 35. As part of the sale, approximately 

2,200 Intel employees (along with intellectual property, equipment, and leases) went to 

Apple. See Hull Decl., ¶ 13; see also Choy Decl., Ex. 5 (Apple Press Release), 

https://www.apple.com/newsroom/2019/07/apple-to-acquire-the-majority-of-intelssmartphone-modem-business/. Of the remaining Intel employees who worked on the design 

and development of the circuits at issue, the most knowledgeable engineers are in Oregon. 

See Hull Decl., ¶ 16. 

Although Intel has facilities in Austin, none of those facilities or any of the employees 

based at those facilities has any material connection to the transceiver chips at issue here. 

Intel did not design or develop the Intel products at issue in Austin, does not maintain 

schematics or documents related to the chips at issue in Austin, and does not have any 

employees material to this case in Austin. See Hull Decl., ¶¶ 20, 22-23. Moreover, Intel has 

no facilities in the Waco Division, does not develop or manufacture any products (including 

any of the products at issue) in the Waco Division, does not maintain technical documents or 

schematics or marketing information relating to the products at issue in the Waco Division, 

and does not have any employees in the Waco Division. See Hull Decl., ¶¶ 7, 18-23. 

B. Relevant witnesses and documents are more easily accessible from 

Oregon. 

1. The Asserted Patents have no material connection to Texas. 

ParkerVision now asserts nine patents against Intel in this case: U.S. Patent Nos. 

6,266,518; 6,580,902; 7,110,444; 7,539,474; 8,588,725; 8,660,513; 9,118,528; 9,246,736; 

and 9,444,673 (collectively, the “Asserted Patents”). D.I. 14 ¶¶ 36-65; D.I. 20 (dismissing 

the ’706 patent). None of the eleven listed inventors lived in the Western District of Texas 

when the patents issued, and based on Intel’s investigation, none lives in the Western District 

 3 Intel retained the right to sell the Products At Issue to certain non-smartphone market 

segments. 

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of Texas now. When the patents issued, seven of the inventors lived in Florida, and four 

lived in Utah. According to public records, six inventors today live in Florida, one lives in 

California, one in Idaho, one in Keller, Texas (in the Northern District of Texas), one in Utah, 

and one is deceased. Choy Decl., Exs. 6-16 (Accurint Reports and Westlaw Report for listed 

inventors). The prosecution histories for the asserted patents show that the prosecuting 

attorneys work in Washington, D.C. and/or Utah. Id., Exs. 17-26 (excerpts from file 

histories).

The ownership history of the asserted patents likewise shows no connection to the 

Western District of Texas. All nine asserted patents were originally assigned to 

ParkerVision, which has been located in Jacksonville, Florida at all relevant times.

All nine asserted patents have expired.4

 

2. The relevant documents and witnesses for the Intel Products At 

Issue are more easily accessible from Oregon. 

ParkerVision accuses three Intel cellular transceivers of infringement: the PMB 5750, 

the PMB 5757, and the PMB 5762 (collectively, the “Products At Issue”). D.I. 14, ¶¶ 32-35. 

ParkerVision specifically accuses circuits of these products that convert a high frequency, 

wirelessly transmitted signal (“RF signal”) into a lower frequency signal—a process referred 

to as “down-conversion.” Id., ¶¶ 66-146. ParkerVision does not allege any connection 

between the design or development of the circuits at issue and the Western District of Texas. 

Nor could it:

• Each of the nine counts alleging infringement of the asserted patents accuses 

the local oscillator circuits in the Products At Issue, and seven of those counts 

explicitly accuse the “25% duty cycle” in the Products At Issue. Chris Hull, 

the engineer who designed the local oscillator distribution of the PMB 5750 

and has personal knowledge of the duty cycle, resides in Oregon; Hull Decl., 

¶¶ 1,12;

• Kevin Constantine, formerly Intel’s Senior Director for the Apple Global 

Account, worked in Santa Clara, California when he led the effort to market 

 4 U.S. Patent No. 6,049,706, the patent ParkerVision voluntarily dismissed, has also expired.

Case 6:20-cv-00108-ADA Document 30 Filed 07/10/20 Page 10 of 20
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the Products At Issue to Apple, and now works for a third-party, Qorvo, Inc., 

in San Jose, California; Hull Decl., at ¶ 17;

• The highly confidential schematics for the circuits in the Products At Issue are 

stored on servers in Santa Clara, California; a limited number of engineers in 

Oregon, Arizona, and Santa Clara have access to those schematics; no one in 

Texas has permission to access the servers. Hull Decl., ¶ 18.

To Intel’s knowledge, none of its former employees who worked on the design, 

development, sale, or marketing of the Products At Issue now works in Texas. Hull Decl., ¶ 

14. Based on Intel’s investigation, all former employees who worked on the design, 

development, sale, and marketing of the Products At Issue are located over 900 miles outside 

the Western District of Texas. Id., ¶ 15.

III. THIS ACTION SHOULD BE TRANSFERRED TO THE DISTRICT OF 

OREGON 

A. Legal Standard 

Under 28 U.S.C. §1404(a), a district court may transfer a case to “any other district or 

division where it might have been brought” if the transfer is “[f]or the convenience of parties 

and witnesses, in the interest of justice . . . .” 28 U.S.C. §1404(a). A motion to transfer 

venue involves a two-step analysis. First, courts decide “whether a civil action ‘might have 

been brought’ in the destination venue.” See In re Volkswagen of Am., Inc., 545 F.3d 304, 

312 (5th Cir. 2008) (“Volkswagen”). Second, courts consider eight factors to decide whether 

transfer would promote the convenience of the parties and witnesses and/or the interest of 

justice. Id. at 314-15. If analysis of those factors shows that the proposed transferee forum is 

“clearly more convenient” than the current forum, the case should be transferred. Id. at 315; 

see also, e.g., In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010) (transfer from E.D. 

Tex. to N.D. Cal. where case had “significant connections” to transferee forum and no likely 

sources of proof were in the transferor venue).5

 

 5 Unless otherwise noted, all internal citations and quotation marks have been omitted from 

case citations, and all emphasis is added. 

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B. Step 1: This action could have been brought in the District of Oregon. 

The first step in the transfer analysis is easily met because ParkerVision could have 

brought this action in the District of Oregon. It is beyond dispute that Intel has “a regular and 

established place of business” in Oregon: Intel maintains its largest facilities in Oregon, 

where it employs over 21,000 employees, including Chris Hull, who designed key portions of 

the circuits ParkerVision accuses. See Hull Decl., ¶¶ 6, 12; see also 28 U.S.C. §1400(b). The 

District of Oregon would thus have personal jurisdiction over Intel and would also have 

subject matter jurisdiction over ParkerVision’s claims for patent infringement. Accordingly, 

the Court may transfer this case to the District of Oregon. Volkswagen, 545 F.3d at 312.

C. Step 2: The District of Oregon is clearly more convenient than the 

Western District of Texas. 

The second step of the analysis leaves no doubt that the District of Oregon is the 

“clearly more convenient” forum and that the case should be transferred. At least five of the 

eight factors considered under §1404(a) favor transfer to the District of Oregon and the other 

three factors are neutral. No factor favors the Western District of Texas. See In re Radmax, 

Ltd., 720 F.3d 285, 290 (5th Cir. 2013) (finding district court should have transferred where 

three of eight factors favored transfer, other factors were neutral, and no factor favored 

plaintiff’s chosen division). 

1. Factors Favoring Transfer

a. Relative ease of access to sources of proof

Under the first factor, “the question is relative ease of access, not absolute ease of 

access.” Data Scape Ltd. v. Dell Techs. Inc. et al., No. 6:19-cv-129-ADA, D.I. 44, at 3 

(W.D. Tex. June 7, 2019) (citing Radmax, 720 F.3d at 288); In re Genentech, Inc., 566 F.3d 

1338, 1345 (Fed. Cir. 2009). Thus, if access to sources of proof is relatively easier in Oregon 

than in Waco, this factor supports transfer. See Data Scape, No. 6:19-cv-00129-ADA, D.I. 

44 at 3. That is clearly the case here.

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ParkerVision’s allegations of infringement focus on the circuitry of the Products At 

Issue. D.I. 14, ¶¶ 66-146. The highly confidential schematics that show the layout of the 

circuits at issue are stored on secure servers in Santa Clara, California. See Hull Decl. ¶ 18. 

A small group of Intel engineers in Oregon have access to the schematics for the Products At 

Issue in the ordinary course of their business. Id. None of Intel’s employees in Texas has 

access to the schematics for the Products At Issue. Id. 

The Federal Circuit has recognized that “the bulk of the relevant evidence usually 

comes from the accused infringer” in patent infringement cases. Genentech, 566 F.3d at 

1345; see also id. at 1346 (“Keeping this case in the Eastern District of Texas will impose a 

significant and unnecessary burden on the petitioners to transport documents that would not 

be incurred if the case were to proceed in the Northern District of California.”); see also 

Moskowitz Family LLC v. Globus Medical, Inc., No. 6:19-cv-672-ADA, D.I. 50 at 5 (W.D. 

Tex. July 2, 2020) (citing Genentech, 566 F.3d at 1345). There can be no debate that 

schematics showing the layout of the circuits at issue will be key evidence in this case. Intel 

has facilities and employees who access that critical source of proof in the ordinary course of 

business in Oregon, but not in Texas. In fact, none of the relevant evidence is in the Western 

District of Texas. See, e.g., Two-Way Media, LLC v. AT&T, 636 F. Supp. 2d 527, 533 (S.D. 

Tex. 2009) (in granting transfer from Corpus Christi to San Antonio, “[t]he Court 

acknowledge[d] that the documentary evidence in this case originated from several sources 

that are located throughout the country. However, it is undisputed that none of the 

documentary evidence originated or now exists in the Corpus Christi Division.”) (emphasis in 

original). 

Access to sources of proof is therefore far easier in Oregon than in Waco or Austin, 

and the first factor supports transfer. Data Scape, No. 6:19-cv-00129-ADA, D.I. 44, at 3 

(“As Dell demonstrates, access to sources of proof is relatively easier in Austin than it is in 

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Waco. This factor thus supports transfer.”).

b. Cost of attendance of willing witnesses 

“The convenience of the witnesses is probably the single most important factor in a 

transfer analysis.” Genentech, 566 F.3d at 1343; see also Moskowitz, No. 6:19-cv-672, D.I. 

50 at 8 (citing Genentech, 556 F.3d at 1342). This factor “appropriately considers the cost of 

attendance of all willing witnesses,” including both non-party and party witnesses. Mimedx 

Grp., Inc. v. Texas Human Biologics, Ltd., No. 1:14-CV-464-LY, 2014 WL 12479284, at *2 

(W.D. Tex. Aug. 12, 2014) (emphasis in original). 

Of the employees who remained at Intel after the sale of Intel’s cellular modem 

business to Apple, the employee in the best position to address the circuits ParkerVision 

accuses of infringement works in Oregon. ParkerVision’s complaint contends that the local 

oscillator in the Products At Issue plays a role in the alleged infringement of each asserted 

patent, and contends that a 25% duty cycle in the Products At Issue plays a role in the alleged 

infringement of seven of the nine asserted patents. D.I. 14, ¶¶ 70, 76-77, 83, 91, 97, 104-05, 

110-11, 113, 120, 122, 130, 132, 143. Chris Hull was one of the key designers involved with 

the local oscillator and has personal knowledge of the duty cycle in the Products At Issue. 

See Hull Decl., ¶¶ 12, 16. Mr. Hull lives in Portland and works at Intel’s facility in 

Hillsboro, Oregon. Id., ¶ 1. Testifying at the Federal courthouse in Portland would clearly be 

more convenient for Mr. Hull than travelling 4,000 miles round-trip to testify in the Western 

District of Texas. 

Oregon would likewise be more convenient for the multiple third-party witnesses in 

the Bay Area who will likely be called to testify at trial. Kevin Constantine led Intel’s effort 

to market the cellular transceivers at issue to Apple, but left Intel in February 2020 and now 

works for a third-party. Id., ¶ 17. Both Mr. Constantine and his counterparts at Apple who 

selected the Products At Issue (and ultimately acquired much of Intel’s cellular transceiver 

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business) all live in the Bay Area, which is a short commuter flight away from Portland. 

Travelling to and from Oregon to testify (requiring approximately a total of 4 hours of flights 

round trip) would be much more convenient for those witnesses than 11-hour round-trip 

flights to and from Waco or 7-hour round-trip flights to and from Austin. See Moskowitz, 

Inc., No. 6:19-cv-672-ADA D.I. 50 at 9 (noting that “the cost of attendance of non-party 

witnesses [has] considerably more weight” in the transfer analysis). 

On the other side of the ledger, Intel is not aware of any likely trial witnesses who 

reside in the Western District of Texas. Neither Intel nor ParkerVision has a facility in the 

Waco Division, and none of the Intel employees in Austin was involved in the development 

of the Products At Issue. See Hull Decl., ¶¶ 7, 14, 15, 19-20, 22-23. Similarly, based on 

public records, none of the living inventors reside in the Western District of Texas—they are 

scattered across the country in California, Florida, Idaho, the Northern District of Texas,6 and 

Utah—and the prosecuting attorneys are based in Washington, D.C. and/or Utah. Choy 

Decl., Exs. 6-26. That variety of locations does not favor one district over the other. 

Thus, if the litigation were to proceed in Texas, Intel’s witnesses, willing non-party 

witnesses, and many of the listed inventors would “likely incur significant expenses for 

airfare, meals, and lodging, as well as losses in productivity from time spent away from 

work”—expenses and losses that would be lessened if the case were to proceed in Oregon. In 

re Acer, 626 F.3d at 1255. For example, to testify at trial in Waco or Austin, Intel’s 

witnesses in Portland and the non-party witnesses in the Bay Area would have to travel 

between approximately 1,700 to 2,000 miles each way, with no direct flights to Waco. See

Choy Decl., Exs. 27-30 (Google maps directions from Hillsboro, Oregon and the Bay Area to 

the U.S. District Courthouse in Waco). To testify in Oregon, on the other hand, Mr. Hull 

 6 Based on public records, Mr. Jamison L. Young, is believed to reside in Keller Texas, 

which is in the Northern District of Texas. Mr. Young is listed as an inventor on a single 

asserted patent (the ’474 patent). 

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would have to travel fewer than 21 miles without ever setting foot in an airport, and the nonparty witnesses in the Bay Area would only have to travel fewer than 700 miles each way on 

direct flights. See id., Exs. 31-34 (Google maps directions from Hillsboro, Oregon and the 

Bay Area to the U.S. District Courthouse in Portland). Similarly, the listed inventors in 

California, Idaho, and Utah live closer to Portland than Waco. There can be no doubt that the 

costs and burden of attendance for willing witnesses— particularly in the midst of the 

COVID-19 pandemic—would be significantly reduced if this case was transferred to Oregon. 

See Genentech, 566 F.3d at 1343 (“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 of 

inconvenience to witnesses increases in direct relationship to the additional distance to be 

travelled.”) (quoting Volkswagen, 545 F.3d at 317); see also Moskowitz, No. 6:19-cv-672, 

D.I. 50 at 9. Accordingly, this factor weighs in favor of transfer. 

c. All other practical problems that make trial of a case easy, 

expeditious, and inexpensive

This case is still in its earliest stages, and this Court has not yet invested judicial 

resources in construing the claims or analyzing the lengthy specifications of the nine asserted 

patents. Nor has this Court analyzed any other ParkerVision patents, as this is ParkerVision’s 

first suit in the Western District of Texas. As such, transfer would not undermine judicial 

economy or cause any meaningful delay in the case schedule. Mimedx, 2014 WL 12479284, 

at *2 (“Having been filed in May 2014, this case is at the earliest stages and the court has not 

yet entered a scheduling order.”). As a result, this factor also favors transfer. 

d. The administrative difficulties flowing from court 

congestion

The court congestion factor also favors transfer. Courts analyzing this factor may 

consider the speed with which a case can be tried and resolved. Genentech, 566 F.3d at 1347. 

But as the Federal Circuit has noted, this factor is speculative, and “case disposition statistics 

Case 6:20-cv-00108-ADA Document 30 Filed 07/10/20 Page 16 of 20
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may not always tell the whole story.” Id. Although this Court’s default schedule for patent 

infringement actions anticipates proceeding from initial case management conference to trial 

in about 18 months, no patent cases have yet gone to trial in the Waco Division. As a result, 

there is no available data establishing that the time-to-trial is likely to be longer in the District 

of Oregon. In fact, existing historical data shows that since 2000, the median time to trial in 

the District of Oregon is as little as 22 months. See Choy Decl., Ex. 35 (Lex Machina 

statistics). By contrast, the median time to trial in the Western District of Texas is 

approximately 28 months. Id. Ex. 36 (Lex Machina statistics). 

And even if evidence established that the time to trial for patent cases was shorter in 

this Court, that should be afforded little, if any, weight because the relative times to trial are 

not “of particular significance” where the plaintiff “does not make or sell any product that 

practices the claimed invention.” In re Morgan Stanley, 417 Fed. App’x 947, 950 (Fed. Cir. 

2011); see also In re WMS Gaming, Inc., 564 Fed. App’x 579, 581 (Fed. Cir. 2014) (noting 

that the plaintiff’s market position was not threatened because it did not practice the asserted 

patent). Here, ParkerVision abandoned product sales in 2019 and now focuses entirely on 

patent litigation. D.I. 14, ¶ 2; Choy Decl., Ex. 1 (ParkerVision Apr. 14, 2020 10-K) at 4 

(“We ceased sales of our Milo products during the fourth quarter of 2019 in order to focus 

solely on patent enforcement actions.”). As a non-practicing entity, ParkerVision has no 

particular need for a marginally quicker resolution of the case.

Finally, the total number of patent cases filed in each court supports transfer. The 

Waco Division has been inundated with patent infringement suits over the past 18 months. 

This year alone, this Division has seen 401 new patent infringement cases. Id. Ex. 37 

(Docket Navigator statistics). If patent infringement filings continue at the same rate, 

approximately 768 new patent cases will be filed in this Division by year’s end. By contrast, 

the District of Oregon has only 14 open patent cases currently. Id. Ex. 38 (Docket Navigator 

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14

statistics). Thus, even considering the Court’s default schedule for patent cases, the evidence 

shows that court congestion supports transfer of this case to the District of Oregon. 

e. The local interest in having localized interests decided at 

home

This factor looks at the relative interest between the forums. Data Scape, No. 6:19-

cv-129-ADA, D.I. 44, at 6 (“[T]he local interest factor, like all § 1404 factors, is concerned 

with the relative interests between the transferee and transferor forums.”). The District of 

Oregon has a substantially greater interest in the outcome of this case than the Western 

District of Texas. Intel maintains its largest facility in Oregon, where it employs over 21,000 

people, including Mr. Hull, who designed key portions of the circuits at issue. See Hull 

Decl., ¶¶ 1, 6, 12. In contrast, neither Intel nor ParkerVision maintains a facility in the Waco 

Division, and no one at Intel’s Austin facility even has access to the circuit designs at issue. 

Id. ¶¶ 7, 18; see DataQuill, Ltd., v. Apple, Inc., No. A-13-CA-706-SS, 2014 WL 2722201, at 

*3 (W.D. Tex. June 13, 2014) (ordering transfer to N.D. Cal. in part because “DataQuill has 

failed to demonstrate the existence of any meaningful documents at Apple’s Austin 

campuses”). There is no question that Intel’s many employees in Oregon and the Intel 

engineers in Oregon who contributed to the design of the circuits at issue have a greater stake 

in the outcome of this case than anyone in the Western District of Texas. This factor thus 

also favors transfer. See Volkswagen, 545 F.3d at 318 (local interest favored transfer where 

there were no connections between the case and the plaintiff’s chosen forum). 

2. Neutral Factors 

The remaining factors are neutral. First, Intel is not currently aware of any unwilling 

third-party witnesses who would be subject to the compulsory subpoena power of either 

forum.7

 See F.R.C.P. 45(c). Second, both forums are eminently capable of applying patent 

 7 If named inventor Mr. Young in fact lives in Keller, Texas (as public sources suggest), he 

could be commanded to attend trial in Waco or Austin if he would not incur substantial 

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15

law. See In re Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008) (“The district court 

was further correct in concluding that it was in no better position than the Southern District of 

Ohio in deciding this patent case. As the district court noted, ‘[p]atent claims are governed 

by federal law,’ and as such ‘both [courts are] capable of applying patent law to infringement 

claims.’” (citing Lear Corp. v. TS Tech, No. 2:07-cv-406, slip op. at 6 (E.D. Tex. Sep. 10, 

2008)). Finally, Intel is not aware of any conflicts of law that would weigh in favor of or 

against transfer. 

IV. IN THE ALTERNATIVE, THIS ACTION SHOULD BE TRANSFERRED TO 

THE AUSTIN DIVISION 

If the Court nonetheless decides to keep this case in the Western District of Texas, 

Intel respectfully requests that the case be transferred to the Austin Division. ParkerVision 

has agreed that the case should be transferred to Austin if this Court denies transfer to 

Oregon. As set forth above, this case has no relevant connections to the Waco division. 

Moreover, as between Waco and Austin, Austin would be relatively easier for Intel and thirdparty witnesses, all of whom reside outside of Texas. Finally, because Austin has an Intel 

facility, it has a relatively greater interest in the resolution of this dispute than Waco. 

Radmax, 720 F.3d at 290 (transfer appropriate where three factors favored transferee forum, 

and none favored transferor forum). 

V. CONCLUSION 

For the convenience of the parties and witnesses, and in the interest of justice, Intel 

respectfully requests that the Court transfer this case to the District of Oregon. If the Court 

nonetheless decides to keep the case in the Western District of Texas, Intel respectfully 

submits that the case should be transferred to the Austin Division. 

 

expense. Fed. R. Civ. P. 45(c)(B)(ii). Intel is not aware whether Mr. Young is willing or 

unwilling to testify live at trial at this stage of the case. 

Case 6:20-cv-00108-ADA Document 30 Filed 07/10/20 Page 19 of 20
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Dated: July 10, 2020 Respectfully submitted,

/s/ J. Stephen Ravel____________________

Michael J. Summersgill (admitted Pro Hac 

Vice)

Sarah B. Petty (admitted Pro Hac Vice)

WILMER CUTLER PICKERING HALE AND 

DORR LLP

60 State Street

Boston, Massachusetts 02109

T (617) 526-6000

michael.summersgill@wilmerhale.com

sarah.petty@wilmerhale.com

Jason F. Choy (admitted Pro Hac Vice)

WILMER CUTLER PICKERING HALE AND 

DORR LLP

350 South Grand Avenue, Suite 2100

Los Angeles, California 90071

T (213) 443-5300

jason.choy@wilmerhale.com

J. Stephen Ravel

KELLY HART & HALLMAN LLP

303 Colorado, Suite 2000

Austin, Texas 78701

T (512) 495-6429

steve.ravel@kellyhart.com

James E. Wren

Texas State Bar No. 22018200

1 Bear Place, Unit 97288

Waco, Texas 76798

T (254) 710-7670

james.wren@baylor.edu

Attorneys for Defendant Intel Corporation 

CERTIFICATE OF CONFERENCE

Plaintiff opposes the relief sought by Defendant. 

/s/ J. Stephen Ravel

J. Stephen Ravel

CERTIFICATE OF SERVICE

I hereby certify that all counsel of record who are deemed to have consented to 

electronic service are being served with a copy of the foregoing document via the Court’s 

CM/ECF system per Local Civil Rule CV-5(b) on July 10, 2020.

/s/ J. Stephen Ravel

J. Stephen Ravel

Case 6:20-cv-00108-ADA Document 30 Filed 07/10/20 Page 20 of 20