IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC D/B/A 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v. 

MICROSOFT CORPORATION,

Defendant. 

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§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

CIVIL ACTION NO. 6:20-cv-00454-ADA

CIVIL ACTION NO. 6:20-cv-00457-ADA

CIVIL ACTION NO. 6:20-cv-00460-ADA

CIVIL ACTION NO. 6:20-cv-00461-ADA

CIVIL ACTION NO. 6:20-cv-00463-ADA

CIVIL ACTION NO. 6:20-cv-00464-ADA

CIVIL ACTION NO. 6:20-cv-00465-ADA

DEFENDANT MICROSOFT CORPORATION’S MOTION 

FOR RECONSIDERATION OF ITS MOTION TO 

TRANSFER VENUE TO AUSTIN DIVISION

PUBLIC VERSION

Case 6:20-cv-00464-ADA Document 115 Filed 03/24/22 Page 1 of 21
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TABLE OF CONTENTS

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

II. BACKGROUND .................................................................................................................... 3

Discovery Revealed That Plaintiff’s Alleged Connections to Waco Are Substantially 

Overstated ............................................................................................................................... 3

Discovery Revealed No Relevant Microsoft or Third Party Witnesses in Waco or Texas.... 5

Microsoft Has a Physical Presence in Austin, and the Only In-Person Discovery Took Place 

in Austin.................................................................................................................................. 6

III. ARGUMENT AND AUTHORITIES................................................................................. 8

Plaintiff Could Have Filed This Case in the Austin Division................................................. 9

The Austin Division Is Clearly More Convenient Than the Waco Division, Which Has No 

Relevant Connection............................................................................................................... 9

Relative Ease of Access to Sources of Proof Favors Transfer, as No Relevant Evidence 

Is Identified to be in Waco.................................................................................................... 10

Convenience of Attendance for Willing Witnesses to Travel to and Stay in Austin Is 

Higher than Waco ................................................................................................................. 11

All Other Practical Problems that Make Trial of a Case Easy, Expeditious, and 

Inexpensive Favor Transfer to Austin................................................................................... 13

If There Is Any Localized Interest, Austin Has a Much Greater Interest in Having This 

Case Decided at Home than Waco........................................................................................ 14

All Other Factors Are Neutral and Transfer Would Honor Plaintiff’s Forum Choice ......... 15

IV. CONCLUSION................................................................................................................. 15

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TABLE OF AUTHORITIES

Page(s)

Cases

In re Apple,

No. 2021-187, 2021 WL 4485016 (Fed. Cir. Oct. 1, 2021).......................................................9

In re Benjamin Moore & Co.,

318 F.3d 626 (5th Cir. 2002) .................................................................................................1, 8

Datascape, Ltd. v. Dell Techs. Inc.,

No. 6:19-CV-00129-ADA, 2019 WL 4254069 (W.D. Tex. Jun 7, 2019)...............9, 10, 11, 13

In re Google Inc.,

2017-107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ...........................................................14

In re Google LLC,

2021-178, 2021 WL 5292267 (Fed. Cir. Nov. 15, 2021) ..........................................................9

In re Google LLC,

No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sept. 27, 2021) .................................................11

In re Google LLC,

No. 2021-171, 2021 WL 4592280 (Fed. Cir. Oct. 6, 2021).....................................................12

In re Hoffmann-La Roche Inc.,

587 F.3d 1333 (Fed. Cir. 2009)..........................................................................................11, 15

Identity Security LLC v. Apple, Inc.,

No. 1:22-cv-00058 (W.D. Tex. Jan. 25, 2022), ECF No. 59.....................................................8

In re Juniper Networks, Inc.,

14 F.4th 1313 (Fed. Cir. 2021) ..........................................................................................11, 14

McCloud v. McLinton Energy Grp., L.L.C.,

Civil Action No. 5:14-cv-620-XR, 

2014 WL 6388417 (W.D. Tex. Nov. 14, 2014).......................................................................10

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

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

Neo Wireless LLC v. Dell Techs. Inc.,

No. 6:21-cv-00024, Slip Op. (W.D. Tex. Jan. 20, 2022), ECF No. 60................................8, 13

In re Netflix,

No. 2022-110, 2022 WL 167470 (Fed. Cir. Jan. 19, 2022)...........................................9, 11, 13

Case 6:20-cv-00464-ADA Document 115 Filed 03/24/22 Page 3 of 21
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In re NetScout Sys., Inc.,

2021-173, 2021 WL 4771756 (Fed. Cir. Oct. 13, 2021) .........................................................11

In re Nintendo Co.,

589 F.3d 1194 (Fed. Cir. 2009)................................................................................................10

In re Pandora Media,

LLC, No. 2021-172, 2021 WL 4772805 (Fed. Cir. Oct. 13, 2021).........................................12

In re Quest Diagnostics Inc.,

No. 2021-193, 2021 WL 5230757 (Fed. Cir. Nov. 10, 2021) .................................................12

In re Radmax, Ltd.,

720 F.3d 285 (5th Cir. 2013) ...........................................................................................8, 9, 13

Sonrai Memory Ltd. v. Oracle Corp.,

6:21-cv-00116-ADA, 2022 WL 315023 (W.D. Tex. Feb 2, 2022) ...........................................8

In re TS Tech USA Corp.,

551 F.3d 1315 (Fed. Cir. 2008)................................................................................................15

In re Volkswagen AG, 

371 F.3d 201, 205 (5th Cir. 2004) ...........................................................................................12

In re Volkswagen of Am., Inc.,

545 F.3d 304 (5th Cir. 2008) ...............................................................................................8, 10

In re Zimmer Holdings, Inc.,

609 F.3d 1378 (Fed. Cir. 2010)................................................................................................14

Rules & Statutes

28 U.S.C. § 1404.................................................................................................................... passim

Fed. R. Civ. P. 30(b)(6)............................................................................................................4, 5, 6

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Contrary to the promises of Plaintiff WSOU Investments, LLC (“WSOU”) at the outset of 

the case, discovery has shown that there are no relevant ties between this case and this forum. 

Accordingly, Defendant Microsoft Corporation (“Microsoft”) respectfully requests 

reconsideration of the Court’s prior denial of its motion for an intra-district transfer to the Austin 

Division under 28 U.S.C. § 1404. See In re Benjamin Moore & Co., 318 F.3d 626, 629 (5th Cir. 

2002). Now-completed discovery has shown that, contrary to sworn declarations from WSOU, all 

potential trial witnesses are remote from Texas. These cases could have been brought in Austin, 

where trial would be more convenient under current Federal Circuit law for any reasonablyexpected trial witnesses, and the cases accordingly should be transferred there.

I. INTRODUCTION

WSOU resisted Microsoft’s original motion to transfer to the Austin Division based largely

on the declaration of its Managing Director of Business Development, Mr. Hogan. Decl. of Matt 

Hogan (“Hogan Decl.”) (Oct. 16, 2020), Dkt.-454 ECF No. 32-1. The Court denied Microsoft’s 

motion, crediting Mr. Hogan’s descriptions of WSOU’s Waco activities, citing considerations of 

judicial economy and court congestion, and discounting speculative burdens on party and other 

willing witnesses to attend trial. Order (Apr. 7, 2021), Dkt.-454 ECF No. 74. Discovery revealed 

WSOU’s claims of genuine Waco ties to be, at best, exaggerated and all potential trial witnesses 

to reside far outside this District. At WSOU’s request, Microsoft source code was transported 

securely to Austin, and continues to be inspected by WSOU consultants in person. All other 

document discovery, depositions and hearings have been conducted virtually. 

The facts uncovered during discovery and the Federal Circuit’s recent clarifications as to 

proper consideration of judicial economy, court congestion, litigation-driven corporate residency, 

and party witness convenience under 28 U.S.C. § 1404 support reconsidering, and granting, 

Microsoft’s transfer motion. WSOU’s declaration did not portray an accurate picture of WSOU 

Case 6:20-cv-00464-ADA Document 115 Filed 03/24/22 Page 5 of 21
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executives’ or the WSOU Waco office’s roles. The only two WSOU witnesses with knowledge of 

WSOU’s infringement claims, asserted patents, ownership, potential value, or licensing history 

reside and work in Los Angeles and Hawaii. Indeed, discovery shows that all of the potential trial 

witnesses for Microsoft and WSOU reside remote from this District.

1 Microsoft witnesses face 

materially less time away from their homes, families and offices for a trial in Austin, and 

Microsoft’s operations in Austin allow its witnesses to work securely while still being available 

for trial. Microsoft has no facilities in the Waco Division broadly. WSOU’s witnesses also have to 

travel, and Austin is at least equally convenient for them. Further, transferring this case for trial in 

Austin still honors Plaintiff’s forum choice, yet provides a clearly more convenient forum for the 

actually expected trial witnesses. 

The timing of this motion is a direct consequence of WSOU’s unusual and languid

prosecution of these cases. As the case began, WSOU opposed Microsoft’s proposal to group cases 

and stagger deadlines. Dkt-454, ECF No. 30. With all twelve then-pending cases scheduled for 

trial in March 2022 as WSOU had insisted, WSOU sought a first discovery extension for every 

case just as the original discovery period was closing in September 2021, looking to overcome its 

failure to conduct deposition discovery diligently over the summer of 2021. WSOU also sought to 

add Microsoft Teams to one of the pending cases (-464) and to expand the Xbox Live case with a 

late and burdensome request for a wide array of detailed data. WSOU also substituted new

counsel, and dropped two cases in late 2021. Additional extensions staged by case groupings 

allowed WSOU finally to complete its deposition discovery by early March 2022, with expert 

discovery now underway. Responsive to the parties’ serial submissions on discovery extensions, 

the Court provided trial dates for three case groupings on February 28, 2022. A three-case group 

is now on the trial calendar beginning June 21, 2022, a second group beginning July 19, 2022, and 

1 To the extent relevant, no witness is subject to the 100-mile rule. 

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a third group beginning August 2, 2022. WSOU, however, has dropped the July-slated cases, and 

the parties agree that the disparate patents and accused technology for the cases on the August 

calendar will require further sub-division, though the pre-trial schedule will not allow moving up 

any of those cases. WSOU’s late addition of accused products and services led to new rounds of 

Microsoft code production, documents and witnesses. After depositions, WSOU dropped five 

cases, but despite dropping five patents, WSOU maintains the extraordinary breadth of its 

accusations against Microsoft’s business, including Xbox Live, Skype Consumer, Teams, 

HoloLens, Windows Server, and Azure.2 By design, this breadth makes bringing a large number 

of Microsoft witnesses to trial unavoidable. Now that WSOU’s actual litigation cards are on the 

table, it is finally possible to know the application of the convenience factors in light of the 

reasonably likely trial scope, before the Court devotes resources to the final pretrial process and 

any appropriate dispositive motions. 

The following discussion focuses on the factors that were disputed after the prior briefing,

as all other factors were agreed to be neutral. Under currently controlling precedent and based on 

the full discovery record, each factor favors transfer. 

Counsel for the parties have conferred in a good faith attempt to resolve the matter but 

were unable to reach agreement.

II. BACKGROUND

Discovery Revealed That Plaintiff’s Alleged Connections to Waco Are 

Substantially Overstated

Plaintiff’s connections to Waco were constructed for this litigation and are superficial, at 

best. WSOU Investments LLC is a Delaware corporation, formed in July 2017 to purchase 

intellectual property and registered with the Texas Secretary of State on January 7, 2020 as a 

2 The parties do not presently agree whether Skype for Business is accused.

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Foreign LLC with a business registration at 605 Austin Ave Ste 6, Waco, TX 76701. Decl. of Irene 

Yang in Support of Mot. to Transfer (“Yang Decl.”) Exs. 1–4 (Oct. 2, 2020), Dkt.-454 ECF No. 

31-3 – 31-7. WSOU’s registered agent for service is in Austin. Id. The Assumed Name Certificate 

for WSOU’s d.b.a., Brazos Development and Licensing, was filed with the Texas Secretary of 

State on January 21, 2020 and lists 211 E. 7th Street, Suite 620 in Austin as its address. Yang Decl. 

Ex. 3 at 7, Ex. 4 at 2. WSOU registered a business address in Waco in January of 2020, opened 

that office in February 2020, then shortly thereafter began filing patent infringement lawsuits in 

this District. Yang Decl. Ex. 5. WSOU first delivered documents to its Waco office in or around 

October 2020, only after this litigation was filed. Decl. of Irene Yang in Support of Mot. for 

Reconsideration (“2nd Yang Decl.”) Ex. A, Hogan Dep. 126:6-10 (Sept. 2021).

The Waco activities of individuals associated with WSOU do not relate to these lawsuits, 

and no material business activities preceded the filing of these cases. Indeed, WSOU’s Initial 

Disclosures originally listed only three individuals: Craig Etchegoyen, Stuart A. Shanus, and Matt 

Hogan. 2nd Yang Decl. Ex. B (WSOU Initial Disclosures, Mar. 24, 2021).

3 WSOU proffered only 

Mr. Etchegoyen and Mr. Shanus—who both reside outside of Texas—as Rule 30(b)(6) witnesses. 

Mr. Etchegoyen confirmed that he lives and files taxes in Hawaii, while spending some of his time 

in Southern California and Dallas, Texas. 2nd Yang Decl. Ex. D, Etchegoyen Dep. 10:7-11:2 (Oct. 

13, 2021). Mr. Shanus, WSOU’s president and the only individual identified on Plaintiff’s 

corporate registrations in Texas, confirmed that he lives in and works from Los Angeles. 2nd Yang 

Decl. Ex. E, Shanus Dep. 8:13-18, 17:12-15 (Oct. 15, 2021). 

WSOU’s declarant in opposing transfer, Mr. Hogan, revealed that his activities on behalf 

of WSOU have no relation to these lawsuits. Mr. Hogan testified that he moved to Waco from 

3 In late 2021, WSOU amended its initial disclosures to add Sheyanna Osceola, who appears to 

be a recent law school graduate newly hired in WSOU’s Waco office. 2nd Yang Decl. Ex. C at 2 

(WSOU Suppl. Initial Disclosures, Nov. 15, 2021).

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New York in February 2020, immediately before the filing of these cases. 2nd Yang Decl. Ex. A, 

Hogan Dep. 10:2-14. He further testified that he is not involved with and does not expect to become 

involved with licensing, analyzing, litigating, or purchasing patents beyond trying to source 

opportunities for further WSOU patent acquisitions outside of these cases. Id. 20:3-22:5, 26:17-

21, 27:17-29:3, 52:5-21, 74:7-10, 84:13-25. He has no information about the formation or 

corporate structure of WSOU. Id. 49:3-17, 51:2-12. He has no understanding of the technology in 

the asserted patents, no understanding of the accused Microsoft products and services, and no 

responsibilities related to managing or settling these cases. Id. 62:8-15, 74:23-75:8, 75:23-77:6. 

Mr. Hogan further testified that he had never met with WSOU’s principals in Waco. Id. 58:9-17. 

He did not know if he was going to testify at trial or even attend the trial. Id. 125:11-15. 

Further, some of the statements in Mr. Hogan’s declaration apparently were aspirational. 

For example, despite stating that WSOU was working to offer a quarterly webinar series for Baylor 

law students (Hogan Decl. ¶ 5), he testified that by September 2021 he had not made any 

presentations at Baylor. 2nd Yang Decl. Ex. A, Hogan Dep. 127:11-128:7. WSOU similarly had 

no business relationship with Waco Ventures. Id. 128:25-129:12; contra Hogan Decl. ¶ 6. And 

WSOU had not started any meet-ups, tech or otherwise, in Waco. 2nd Yang Decl. Ex. A, Hogan 

Dep. 129:13-15; contra Hogan Decl. ¶ 5. In other words, WSOU’s declared “deep roots” in Waco 

have been shown to be nothing more than a litigation-inspired façade.

Discovery Revealed No Relevant Microsoft or Third Party Witnesses in 

Waco or Texas

Microsoft’s Initial Disclosures and Rule 30(b)(6) designations across these cases identify 

dozens of individuals and companies, though none in Texas. 2nd Yang Decl. Ex. K.1 – K.7. For 

the cases accusing Azure or Windows Server (-454, -461, -465), Microsoft identified nine 

Case 6:20-cv-00464-ADA Document 115 Filed 03/24/22 Page 9 of 21
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employees from the greater Seattle area and one who resides in Israel.4 WSOU deposed all but one 

of these individuals. For the cases accusing Skype or Teams (-460 and -464), Microsoft identified 

six employees from the greater Seattle area, two who reside in Estonia, and four who reside in 

Czech Republic. WSOU deposed all of these individuals. Third party Department of Computer 

Science at Columbia University, located in New York, was also deposed in the -464 case in 

connection with the prior art CINEMA system. For the case accusing HoloLens2 (-463), Microsoft 

identified five employees from the greater Seattle area. WSOU deposed two of these individuals. 

And, for the case accusing Xbox Live (-457), Microsoft identified four employees from the greater 

Seattle area. WSOU deposed all four. There was also a witness for Electronic Arts who was located 

in North Vancouver, British Columbia at the time of his deposition. WSOU took no other 

depositions of individuals or companies identified by Microsoft. 

None of the inventors in any of these cases has been subpoenaed or deposed, none are 

expected to testify at trial, and, as explained in Microsoft’s original Motions, all appear to reside 

far outside this District, or even outside the United States. Mot. to Transfer 4-5 (Oct. 2, 2020), 

Dkt.-454 ECF No. 31.

5

Discovery has revealed no relevant third-party witnesses in Texas. 

Microsoft Has a Physical Presence in Austin, and the Only In-Person 

Discovery Took Place in Austin

Microsoft is a Washington corporation with its principal place of business in Redmond, 

Washington. Compl. ¶ 3 (June 2, 2020), Dkt.-454 ECF No. 1.

6 Tara Eaves, a Human Resources 

4 At the time of his deposition, one of Microsoft’s Rule 30(b)(6) designees in the 

Seattle/Redmond area had temporarily relocated to Toronto, Canada.

5 The case involving an inventor in Frisco, Texas has been dismissed. See Order (Mar. 3, 2022),

Dkt.-458, ECF No. 113.

6 Unless otherwise indicated, citations to “Compl.” herein refer to the Complaint in each of the 

seven remaining WSOU actions filed against Microsoft. Paragraphs 1-19 of these WSOU 

Complaints are identical. 

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Data Analyst Group Manager at Microsoft, confirmed that Microsoft does not maintain a place of 

business in the Waco Division of the Western District of Texas. See Decl. of Tara Eaves. (“Eaves 

Decl.”) ¶ 6 (Oct. 2, 2020), Dkt.-454 ECF No. 31-1; see also Decl. of Sandy Park (“Park Decl.”) ¶ 

8 (Oct. 2, 2020), Dkt.-454 ECF No. 31-2. 

Discovery addressed Microsoft’s activities as a whole, as well as the design, development 

and marketing of the accused products/services – and confirmed they were focused in and around 

Seattle, Washington, or in foreign countries. Plaintiff’s allegations in the Complaint likewise relate 

to Microsoft facilities or activities in Austin, or to Texas overall; none relate to or allege a presence 

within the Waco Division. See Compl. ¶¶ 3–19. Plaintiff’s only other allegations with respect to 

Microsoft physical locations relate to San Antonio. See Compl. ¶¶ 16–17. 

Microsoft has had an office location at 10900 Stonelake Boulevard in Austin since 2009, 

and employs nearly 200 people in the Austin area. Park Decl. ¶¶ 4–5; Eaves Decl. ¶ 7.

7 The Austin 

office is a secured Microsoft site available to employees with the benefits and conveniences of 

being in a secure Microsoft environment. Park Decl. ¶¶ 5-7. These include the ability to reserve 

private work space, use conference rooms, access Microsoft’s corporate high speed internet and 

internal Corporate Network, and take advantage of full IT, facilities, reception, and other support 

staff. Park Decl. ¶¶ 6-7. Microsoft employees from Washington State and elsewhere may be 

granted access to the Austin office using normal Microsoft security procedures. Park Decl. ¶ 5. 

Microsoft also provided for source code inspection in Austin at Plaintiff’s request. See 2nd 

Yang Decl. Ex. F, Hr’g Tr. 11:7-19, 18:8-16 (Nov. 30, 2020). Plaintiff’s consultants have been 

reviewing that source code in Austin from December 2020 to the present. Discovery in these cases 

otherwise has been conducted virtually and electronically.

7 The Austin office covers approximately 20,000 square feet and one floor of a multi-tenant 

building and operates primarily as a regional sales office. Park Decl. ¶ 4.

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III. ARGUMENT AND AUTHORITIES

A court may reconsider a prior ruling based upon “(a) an intervening change in controlling 

law; (2) the availability of new evidence not previously available; or (3) the need to correct a clear 

error of law or prevent manifest injustice.” In re Benjamin Moore & Co., 318 F.3d 626, 629 (5th 

Cir. 2002). Here, both clarification of controlling law and new evidence are present.

“For the convenience of parties and witnesses, in the interest of justice, a district court may

transfer any civil action to any other district or division where it might have been brought . . . .”

28 U.S.C. § 1404(a). “The § 1404(a) factors apply as much to transfers between divisions of the 

same district as to transfers from one district to another.” In re Radmax, Ltd., 720 F.3d 285, 288 

(5th Cir. 2013) (emphasis added). This District has repeatedly recognized and applied the same

principle, transferring many patent matters from Waco to Austin. See, e.g., Sonrai Memory Ltd. v. 

Oracle Corp., 6:21-cv-00116-ADA, 2022 WL 315023 (W.D. Tex. Feb 2, 2022); Identity Security 

LLC v. Apple, Inc., No. 1:22-cv-00058 (W.D. Tex. Jan. 25, 2022), ECF No. 59; Neo Wireless LLC 

v. Dell Techs. Inc., No. 6:21-cv-00024, Slip Op. (W.D. Tex. Jan. 20, 2022), ECF No. 60.

Where, as here, it is not disputed that the cases could have been brought in the destination 

venue, In re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) (quoting § 1404(a)), the 

Court must weigh a number of factors to determine the relative convenience of each venue:

(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; (4) all other practical problems that make 

trial of a case easy, expeditious and inexpensive; (5) the administrative 

difficulties flowing from court congestion; (6) the local interest in having 

localized interests decided at home; (7) the familiarity of the forum with the 

law that will govern the case; and (8) the avoidance of unnecessary 

problems of conflict of laws [or in] the application of foreign law.

Radmax, 720 F.3d at 288 (quotation marks omitted) (citing Volkswagen, 545 F.3d at 315). Where

the analysis of the relevant factors shows the transferee forum to be “clearly more convenient”

than the plaintiff’s original choice, the court must order transfer. Id.

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The Federal Circuit recently heightened its effort to achieve uniform application of 28 

U.S.C. § 1404 across all District Courts. As recently explained in a case originating from another 

district:

“Motions to transfer are decided by weighing private and public interest factors to compare 

the relative convenience of the venues.” . . . In re Hulu, LLC, No. 2021-142, 2021 WL 

3278194, at *2 (Fed. Cir. Aug. 2, 2021) (“That determination is focused on a comparison 

of the relative convenience of the two venues based on assessment of the traditional transfer 

factors.” . . .). We have explained that “the relative convenience for and cost of attendance 

of witnesses between the two forums is ‘probably the single most important factor in 

transfer analysis.’” . . .

In re Netflix, No. 2022-110, 2022 WL 167470, at *2 (Fed. Cir. Jan. 19, 2022) (some citations 

omitted). Faster time to trial cannot override the convenience of the accused infringer’s party 

witnesses. Id. at *5; In re Google LLC, No. 2021-178, 2021 WL 5292267, at *3 (Fed. Cir. Nov. 

15, 2021). Relative inconvenience where party witnesses still must travel for trial still outweighs 

speed to trial. See In re Apple, No. 2021-187, 2021 WL 4485016, at *2 (Fed. Cir. Oct. 1, 2021).

Plaintiff Could Have Filed This Case in the Austin Division

As the Court previously noted, this case could have been filed in Austin. 

The Austin Division Is Clearly More Convenient Than the Waco Division, 

Which Has No Relevant Connection 

The Fifth Circuit’s enumerated factors (adopted for intra-district transfers in Radmax) all 

support that trial of these cases in Austin would be clearly more convenient than in Waco, with 

multiple factors heavily favoring transfer and no factors supporting trial in the Waco Division. 

Thus, transfer is warranted. See Datascape, Ltd. v. Dell Techs. Inc., No. 6:19-CV-00129-ADA, 

2019 WL 4254069, at *1-2 (W.D. Tex. Jun 7, 2019) (“Most—if not all—of the relevant 

connections in this case are to Austin rather than to Waco. The Court agrees with Defendants that, 

overall, the relevant convenience weighs heavily in favor of transfer.”); see also Radmax, 720 F.3d 

at 290 (it was an “extraordinary error” to decline transfer where three factors supported transfer, 

five were neutral, and “not a single relevant factor favors the plaintiffs’ chosen venue” (brackets

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omitted) (quoting Volkswagen, 545 F.3d at 318)); Mimedx Grp., Inc. v. Texas Hum. Biologics, 

Ltd., Case No. 1:14-CV-464-LY, 2014 WL 12479284, at *3 (W.D. Tex. Aug. 12, 2014) (ordering

transfer where four factors favored transfer, four were neutral, and none favored plaintiff’s choice

of venue).

Discovery showed that these cases have no connection to the Waco Division. No witnesses 

or Microsoft documents are in Texas, with the exception of source code moved to and hosted for 

inspection in Austin. Any WSOU documents produced from in Waco were moved there for these 

cases. Accordingly, at least the relative ease of access to sources of proof, the cost of attendance

for willing witnesses, and Austin’s local interest all strongly favor transfer.

Relative Ease of Access to Sources of Proof Favors Transfer, as No 

Relevant Evidence Is Identified to be in Waco

The first factor considers the location of relevant evidence. As the Federal Circuit has

noted, “[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 Nintendo Co., 589 F.3d 1194, 1199 (Fed. Cir. 2009)

(applying Fifth Circuit law). Moreover, as this Court explained in Datascape, “the question is

relative ease of access, not absolute ease of access.” Datascape, 2019 WL 4254069, at *2 (quoting 

Radmax, 720 F.3d at 288) (emphasis in original); see also Mimedx, 2014 WL 12479284, at *2.

Discovery revealed no relevant Microsoft documents in Texas. However, at WSOU’s 

request, Microsoft transported its source code to Austin for inspection at a facility with suitable 

control and security. None of the relevant evidence is in the Waco Division. See McCloud v. 

McLinton Energy Grp., L.L.C., Civil Action No. 5:14-cv-620-XR, 2014 WL 6388417, at *3 (W.D. 

Tex. Nov. 14, 2014) (“Plaintiffs point to no evidence in San Antonio or within the San Antonio 

Division.”).

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WSOU’s documents that it moved with itself to Waco for litigation purposes are of no 

relevance in deciding the transfer issue and should not be given weight in the convenience analysis. 

See, e.g., In re Juniper Networks, Inc., 14 F.4th 1313, 1320-21 (Fed. Cir. 2021) (citing In re 

Hoffmann-La Roche Inc., 587 F.3d 1333, 1336-37 (Fed. Cir. 2009)). 

Accordingly, discovery has shown that “access to sources of proof is relatively easier in 

Austin than it is in Waco. This factor thus supports transfer.” Datascape, 2019 WL 4254069, at 

*2 (emphasis in original).

Convenience of Attendance for Willing Witnesses to Travel to and 

Stay in Austin Is Higher than Waco

The third factor “appropriately considers the cost of attendance of all willing witnesses,”

including both non-party and party witnesses. See Mimedx, 2014 WL 12479284, at *2. 

Discovery showed that all Microsoft witnesses and all of WSOU’s knowledgeable witnesses are 

located outside this District. As such, unlike the situation addressed by the Court on Microsoft’s 

original motion, the potential witness list is limited, concrete and comprised entirely by 

witnesses outside this Division, and indeed outside this District. The convenience of those 

witnesses becomes paramount in the transfer analysis. In re Netflix, 2022 WL 167470, at *5. As 

the Federal Circuit has repeatedly observed, “time is a more important metric than distance” in 

evaluating the relative convenience of two forums. In re Google LLC, No. 2021-170, 2021 WL 

4427899, at *4 (Fed. Cir. Sept. 27, 2021). And because “[t]here is no major airport in the Waco 

Division of the Western District of Texas, and the Waco courthouse is more than 100 miles from 

the nearest airport with direct flights to the northeast U.S.,” it often takes less time and hassle for 

a witness to travel to a different forum, even when the alternate forum is geographically farther 

away than Waco. Id.; see In re NetScout Sys., Inc., 2021-173, 2021 WL 4771756, at *3 (Fed. Cir. 

Oct. 13, 2021) (“The Fifth Circuit has stated that the convenience of the witnesses is best served 

if the court can ‘minimize the time when [witnesses] are removed from their regular work or 

Case 6:20-cv-00464-ADA Document 115 Filed 03/24/22 Page 15 of 21
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home responsibilities.’”) (quoting In re Volkswagen AG, 371 F.3d 201, 205 (5th Cir. 2004)); see, 

e.g., In re Quest Diagnostics Inc., No. 2021-193, 2021 WL 5230757, at *2 (Fed. Cir. Nov. 10, 

2021) (“[E]ven though the physical distance from Maryland and New Jersey to the Central 

District of California is greater than the distance to Waco, the record does not show that the total 

travel time for out-of-district witnesses would be significantly different.”); In re Pandora Media, 

LLC, No. 2021-172, 2021 WL 4772805, at *5 (Fed. Cir. Oct. 13, 2021) (“We have rejected the 

rigid application of the 100-mile rule in cases in which the witnesses will be required to travel a 

significant distance no matter where they testify.”); In re Google LLC, No. 2021-171, 2021 WL 

4592280, at *5 (Fed. Cir. Oct. 6, 2021) (“Although the district court emphasized that Mr. Morris 

would have not have to travel as far from his home in Georgia to reach Waco than to reach the 

Northern District of California, the difference in distance is not as important as the difference in 

travel time and the fact that the witness would be required to be away from home for several 

days in any event.”).

Travel time and time away from their normal work locations and families for the willing 

witnesses from outside this District overwhelmingly favors Austin. As set forth above, the 

Microsoft witnesses deposed in these cases are primarily from the Seattle, Washington area, but 

are also located in Israel and various locations in Eastern Europe. For Microsoft witnesses, 

traveling to Austin is much more convenient because the witnesses can work out of Microsoft’s 

Austin facility and take advantage of private workspace, conference rooms, and IT services such 

as the corporate internet connection and private intranet. See Park Decl. ¶¶ 6-7. Visiting Microsoft 

employees to the Austin office are also fully supported by staff in the Austin office, a convenience 

unavailable to them in Waco. Park Decl., ¶ 7. In addition, travel to Waco instead of Austin from 

the Seattle area is more costly and time consuming because there are no direct flights from Seattle 

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to Waco, while there are many direct flights from Seattle to Austin, daily. See 2nd Yang Decl. Exs. 

G-H. This situation is exacerbated for any overseas witnesses.

For Plaintiff’s own president coming from Los Angeles, travel to Austin is similarly more 

convenient because there are numerous direct flights per day, while there are no direct flights to 

Waco. Id. For Plaintiff’s witness coming from Kailua-Kona, Hawaii, there are flights with one 

stop to Austin, while all flights to Waco require at least two stops. See 2nd Yang Decl. Exs. I-J.

The inventors are scattered throughout the country and the world, none appear to be located 

within 100 miles of the Waco Division or the Austin Division, and none are expected to testify at 

trial – indeed none appear on WSOU’s Initial Disclosures and none were subpoenaed or deposed. 

This factor strongly favors transfer, as there appear to be no expected witnesses located in 

or near Waco, while travel to Austin rather than Waco will be more convenient for all potential 

witnesses. Neo Wireless LLC v. Dell Techs. Inc., No. 6:21-cv-0024, Slip Op. (W.D. Tex. Jan. 20, 

2022), ECF No. 60; Netflix, 2022 WL 167470, at * 4-5; Datascape, 2019 WL 4254069, at *2.

All Other Practical Problems that Make Trial of a Case Easy,

Expeditious, and Inexpensive Favor Transfer to Austin

The fourth factor considers practical problems, speed, and expense. These cases are set for 

multiple trials, the first of which begins in about three months. Order Resetting Trial (Feb. 4, 

2022), Dkt.-454 ECF No. 121. Deposition discovery has just concluded in some cases, and expert 

discovery is ongoing in others. Although the court has construed various disputed terms, it has yet 

to address dispositive motions or disputes directed to contested expert opinions or other trialrelated matters. Transferring the case to the Austin Division is unlikely to result in any delay that 

could override the demonstrated convenience to the witnesses who must travel to this District for 

trial. See Radmax, 720 F.3d at 289 (“[G]arden-variety delay associated with transfer is not to be 

taken into consideration when ruling on a § 1404(a) motion to transfer.”); Mimedx, 2014 WL

12479284, at *2. There are no other pending cases related to the asserted patents and WSOU is not 

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engaged in the manufacture or sale of products that practice the patents. Moreover, WSOU’s 

failure to timely prosecute these cases, resulting in repeated extensions, further demonstrates that 

rapid disposition of the case is not “worthy of important weight.” See Juniper, 14 F.4th at 1322.

Furthermore, the Federal Circuit (applying Fifth Circuit law) has expressly held that it is

legal error to allow judicial economy considerations to “negate[] the significance of having trial

close to where most of the identified witnesses reside and where the other convenience factors

clearly favor.” In re Zimmer Holdings, Inc., 609 F.3d 1378, 1382 (Fed. Cir. 2010); see also In re

Google Inc., 2017-107, 2017 WL 977038, at *3 (Fed. Cir. Feb. 23, 2017) (nonprecedential) (“[I]t 

is improper for a district court to weigh the judicial economy factor in a plaintiff’s favor solely 

based on the existence of multiple co-pending suits . . . . To hold otherwise, we would be

effectively inoculating a plaintiff against convenience transfer under § 1404(a) simply because it

filed related suits against multiple defendants in the transferor district.”).

Accordingly, this factor also strongly weighs in favor of transfer.

If There Is Any Localized Interest, Austin Has a Much Greater 

Interest in Having This Case Decided at Home than Waco

Finally, to the extent there is any localized Texas interest in the outcome of these cases, it 

lies in Austin, not Waco. Plaintiff’s allegations regarding Microsoft’s presence in Texas relate to 

Austin, where Microsoft employs about 200 people. Eaves Decl. ¶ 7. By contrast, WSOU’s Waco 

presence was created in anticipation of filing suit. Yet, none of WSOU’s Waco activities has any 

relevance to these cases and its Waco witness did not even know the general subject matter of the 

asserted patents or what Microsoft products and services have been accused. The patents-in-suit 

were not developed by WSOU employees; the named inventors have no connection to Waco; and,

not even the principals of WSOU are located in Texas. Thus, to the extent that the outcome of this 

case will affect any Texas local interests, it will be Austin’s local interests. See Mimedx, 2014 WL 

12479284, at *3 (“Defendants and their employees are local to the San Antonio area. The ultimate 

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outcome of this [patent] suit likely affects local San Antonio interests more acutely than local 

Austin interests.”); see also Hoffmann-La Roche, 587 F.3d at 1338 (“[I]f there are significant 

connections between a particular venue and the events that gave rise to a suit, [the local interest] 

this factor should be weighed in that venue’s favor.”). Thus, this factor weighs in favor of transfer. 

See, e.g., In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008) (“[T]he district court 

gave too much weight to [plaintiff’s] choice of venue . . . . Fifth Circuit precedent clearly forbids 

treating the plaintiff’s choice of venue as a distinct factor in the § 1404(a) analysis.”).

All Other Factors Are Neutral and Transfer Would Honor Plaintiff’s Forum 

Choice

The remaining factors are neutral and do not weigh for or against transfer. There are no 

apparent compulsory subpoena power issues involved. Both Divisions are familiar with and 

equally capable of applying federal patent laws, neither would present a conflict of law or require 

the application of foreign law, and the record reflects no administrative difficulties flowing from 

court congestion. Moreover, both Divisions are within the Plaintiff’s chosen District.

IV. CONCLUSION

Discovery has shown that the Waco Division has no ties to this lawsuit, and the Austin 

Division is clearly more convenient. Thus, this case should be transferred to the Austin Division. 

Microsoft respectfully asks that the Court grant reconsideration and transfer these cases.

Date: March 18, 2022 /s/ Melissa R. Smith

Of Counsel

Michael J. Bettinger

mbettinger@sidley.com

Irene Yang

irene.yang@sidley.com

SIDLEY AUSTIN LLP

555 California Street, Suite 2000

San Francisco, CA 94104

Tel: (415) 772-1200

Fax: (415) 772-7400

Melissa R. Smith

Bar No. 24001351

melissa@gillamsmithlaw.com 

James “Travis” Underwood, 

Bar No. 24102587

travis@gillamsmithlaw.com

GILLAM & SMITH, LLP

303 South Washington Avenue

Marshall, Texas 75670

Tel: (903) 934-8450

Fax: (903) 934-9257

Case 6:20-cv-00464-ADA Document 115 Filed 03/24/22 Page 19 of 21
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Richard A. Cederoth

rcederoth@sidley.com 

John W. McBride

jwmcbride@sidley.com

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Tel: (312) 853-7000

Fax: (312) 853-7036

Brooke S. Böll

brooke.boll@sidley.com

SIDLEY AUSTIN LLP

555 West Fifth Street

Los Angeles, CA 90013

Tel: (213) 896-6633

Fax: (213) 896-6600

Attorneys for Defendant Microsoft 

Corporation

Case 6:20-cv-00464-ADA Document 115 Filed 03/24/22 Page 20 of 21
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CERTIFICATE OF SERVICE

I certify that on March 18, 2022, I electronically filed the foregoing with the Clerk of 

Court using the CM/ECF system, which will send notification of such filing to all counsel of 

record as identified below. 

/s/ Melissa R. Smith

CERTIFICATE OF CONFERENCE

Pursuant to Local Rule CV-7(g), counsel for Defendant met and conferred with counsel 

for Plaintiff, and counsel for Plaintiff indicated that Plaintiff is opposed to the relief sought by this 

Motion.

/s/ Melissa R. Smith

Melissa R. Smith

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