IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

SITO MOBILE R&D IP, LLC and SITO 

MOBILE, LTD. 

 Plaintiff, 

 v. 

HULU, LLC, 

 Defendant. 

 Case No. 6:20-cv-00472-ADA 

PLAINTIFFS SITO MOBILE R&D IP, LLC AND SITO MOBILE, LTD.’S BRIEF IN 

OPPOSITION TO DEFENDANT HULU, LLC’S MOTION TO TRANSFER 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 1 of 25
i 

TABLE OF CONTENTS 

I. Introduction ......................................................................................................................... 1

II. Statement of facts. ............................................................................................................... 1

A. Hulu has significant contacts with Texas and this District. .................................... 1

B. SITO has had significant business connections with Texas, and its key 

third-party witnesses reside in Texas and are an easy drive away from 

testifying in Waco. .................................................................................................. 6

III. Applicable Legal Standards ................................................................................................ 9

IV. Argument. ......................................................................................................................... 11

A. The private interest factors weigh against transferring this case to California. .... 11

1. The sources of proof are spread across the country and in Texas, 

and are not clearly more conveniently located in California. ....................11

2. The availability of compulsory process to secure the attendance of 

witnesses at trial. ........................................................................................13

3. Hulu fails to show that the cost of attendance for willing witnesses 

favors transfers. ..........................................................................................14

4. SITO has multiple suits pending in this District, which will cause 

significant practical problems if this case is transferred. ...........................17

B. Public Factors do not weigh in favor of a transfer. ............................................... 19

1. There are no administrative difficulties flowing from court congestion. ..19

2. Local interest in having localized interests decided at home. ....................20

3. Factors 3 and 4. ..........................................................................................20

V. Conclusion ........................................................................................................................ 20

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 2 of 25
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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Action Indus., Inc. v. U.S. Fid. & Guar. Co., 

358 F.3d 337 (5th Cir. 2004) ...................................................................................................11 

In re Adobe Inc., 

No. 2020-126, 2020 U.S. App. LEXIS 23803 (Fed. Cir. July 28, 2020).................................19 

Certified Measurement, LLC v. Centerpint Energy Houston Elec. LLC, 

No. 2:14-CV-627-RSP, 2015 WL 1046267 (E.D. Tex. Mar. 10, 2015) ..................................13 

CloudofChange, LLC v. NCR Corporation, 

No. 6:19-cv-00513, D.I. 28 (W.D. Tex. Mar. 17, 2020) ..........................................................13 

Continental Airlines, Inc. v. American Airlines, Inc., 

805 F.Supp. 1392 (S.D. Tex. Nov. 4, 1992) ............................................................................16 

Continental Grain Co. v. The FBL-585, 

364 U.S. 19, 80 S. Ct. 1470, 4 L. Ed. 2d 1540 (1960) .............................................................19 

Durrett v. Walmart, Inc., 

2018 U.S. Dist. LEXIS 186618 (E.D. Tex. Oct. 31, 2018) .....................................................11 

East Tex. Boot Co., LLC v. Nike, Inc., 

2017 U.S. Dist. LEXIS 166701 (E.D. Tex. Feb. 15, 2017) .....................................................17 

Fintiv, Inc. v. Apple Inc., 

No. 6:18-cv-00372-ADA, 2019 U.S. Dist. LEXIS 171102 

(W.D. Tex. Sep. 10, 2019) ...........................................................................................11, 13, 19 

Found. Med., Inc. v. Guardant Health, Inc., 

2017 U.S. Dist. LEXIS 20431 (E.D. Tex. Feb. 14, 2017) .......................................................20 

In re Genentech, Inc., 

566 F.3d 1338 (Fed. Cir. 2009)................................................................................................14 

Global Commc’ns, Inc. v. Proctus IP Solutions, Inc., 

2009 U.S. Dist. LEXIS 13210 (E.D.Tex. Feb. 20, 2009) ..................................................10, 18 

Godo Kaisha Ip Bridge v. Intel Corp., 

No. 17-CV-00676-RWS, 2018 U.S. Dist. LEXIS 221582 

(E.D. Tex. Aug. 28, 2018) .......................................................................................................12 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 3 of 25
iii 

Hammond Dev. Int’l, Inc. v. Google LLC, 

No. 1:20-cv-00342-ADA, 2020 U.S. Dist. LEXIS 110984 

(W.D. Tex. June 24, 2020) .................................................................................................14, 19 

Magana v. Toyota Motor Corp., 

No. 3:10-CV-1451-B, 2010 U.S. Dist. LEXIS 129976 

(N.D. Tex. Dec. 6, 2010) .........................................................................................................14 

Net Nav. Sys., LLC v. Cisco Sys., Inc., 

No. 4:11-CV-660, 2012 U.S. Dist. LEXIS 187289 (E.D. Tex. Aug. 24, 2012) ......................15 

Peloton Interactive, Inc. v. Flywheel Sports, Inc., 

No. 2:18-cv-00390-RWS-RSP, 2019 U.S. Dist. LEXIS 90416 

(E.D. Tex. May 30, 2019) ........................................................................................................14 

Rittinger v. Healthy Alliance Life Ins. Co., 

2016 U.S. Dist. LEXIS 132726 (S.D. Tex. July 27, 2016) ......................................................16 

Rosemond v. United Airlines, Inc., 

No. H-13-2190, 2014 U.S. Dist. LEXIS 45162 (S.D. Tex. Apr. 2, 2014) ...............................15 

Sivertson v. Clinton, 

2011 U.S. Dist. LEXIS 104097 (N.D. Tex. Sept. 14, 2011) ....................................................14 

Stewart Org., Inc. v. Ricoh Corp., 

487 U.S. 22 (1988) ...................................................................................................................10 

In re Triton Ltd. Sec. Litig., 

70 F. Supp. 2d 678 (E.D. Tex. 1999) .......................................................................................10 

U.S. Ethernet Innovations, LLC v. Samsung Elecs. Co., 

No. 6:12-CV-398 .....................................................................................................................15 

Uniloc United States v. Huawei Device United States, 

2018 U.S. Dist. LEXIS 234545 (E.D. Tex. Sep. 6, 2018) .......................................................18 

VLSI Tech. LLC v. Intel Corp., 

2019 U.S. Dist. LEXIS 227809 (W.D. Tex. Oct. 7, 2019) ......................................................16 

In re Volkswagen AG, 

371 F.3d 201 (5th Cir. 2004) .............................................................................................11, 20 

In re Volkswagen of Am., Inc., 

566 F.3d 1349 (Fed. Cir. 2009)................................................................................................19 

In re Volkswagen of America, Inc., 

545 F.3d 304 (5th Cir. 2008) .......................................................................................10, 11, 18 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 4 of 25
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I. Introduction 

Hulu’s motion to transfer this case to the Central District of California should be denied 

because Hulu has not met its burden of showing that the Central District of California is clearly 

more convenient than Waco. This is clear from the thin papers it filed. Hulu relies on bare 

statements and generalizations about its operations in Santa Monica and third party entities, 

many of whom have offices in Austin and within this Court’s subpoena power, to claim that this 

case has significant ties to the Central District. With the exception of a single witness whose 

importance to this case is marginal at best, Hulu does not identify any specific witness it intends 

to call at trial. Additionally, many of the relevant Hulu documents are stored in the cloud and can 

be accessed from any location. Conversely, the connections in Texas for both Hulu and SITO are 

robust. In fact, two of the at least four SITO trial witnesses are key non-party witnesses residing 

in Austin and Plano; they can simply drive to Waco for trial. 

Hulu’s strategy in filing this motion is transparent: move the litigation to a slower venue 

and use the four IPRs and one CBM that it has filed to stay the case. This strategy should fail and 

the instant motion denied because none of the private or public interest factors favor transfer. 

II. Statement of facts. 

A. Hulu has significant contacts with Texas and this District. 

Hulu has total subscribers in Texas, and its second largest office, with 

employees, is located in San Antonio, Texas. See Hulu’s Responses to Interrogatory Nos. 5 and 

8, attached as Ex. 1 to Declaration of Ronald M. Daignault (“Daignault Decl.”).1 Indeed, in just 

one year, from September 2019 to October 2020, Hulu generated total revenue of 

from subscribers in Texas. Id. at 26. Moreover, Hulu received significant tax 

1 All cites to exhibits in this brief are to the exhibits of the Daignault Decl. 

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breaks and grant payments from the State of Texas. See, e.g., Ex. 20 at 11. 

In addition to revenue Hulu generates from Texas subscribers, Hulu receives revenue 

from located in Texas, including in the 

Western District of Texas. Hulu conveniently hides this fact in its brief by falsely asserting that 

“no ad[vertising] or [c]ontent partners [exist] in W.D. Tex.” D.I. 29 at 7 (citing to Mr. Brookins’s 

Dec. at ¶21). But in reality, Hulu has 

See Ex. 1 

at 16-24. And would not have been 

uncovered without discovery, which Hulu opposed, and stands in stark contrast to both Hulu’s 

and Brookins’s blatantly incorrect statements. 

See Daignault Decl. at ¶2. 

Hulu also tries to downplay the relevance of its employees at its large San Antonio 

facility and paint an overall picture that it has no connections to Texas. Discovery has revealed 

many of the self-serving statements in Mr. Brookins’s declaration and in Hulu’s brief are 

inaccurate, inconsistent, and once again, often just plain wrong. Mr. Brookins is the only person 

Hulu identifies as a witness having knowledge about the accused products; he is Hulu’s apparent 

30(b)(6) party witness. But Hulu does not identify Brookins as a key trial witness. 

See Ex. 3 at 21:3-6 (“Brookins Dep.”). Accordingly, 

Id. at 22:17-22. 

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Hulu’s San Antonio offices houses at least its Viewer Experience Operations, which is 

tasked with, among other things, resolving customer issues relating to the accused streaming 

products. Id. at 70:12-71:8 and see Ex. 2 (TechCrunch article). 

 Brookins Dep. at 82-83. 

Further, Hulu is provided to subscribers throughout Texas, including in Waco through 

major cable providers such as Charter Communications and Comcast. See generally Exs. 7 and 

8. Broadband distributors in Texas, including Grande Communications, also provide Hulu as part 

of their services to over viewers. See Ex. 4. Likewise, both Funimation Network, 

located in Flower Mound, TX, and Fox Sports Southwest, headquartered in Irving and Houston, 

TX, provide content through Hulu. See Ex. 5. Hulu states that its “content partners, including 

CW Network and FX Network in C.D. Cal. have unique information about how Hulu tracks and 

distributes ad revenues.” D.I. 29 at 7. But this same “unique information” can also be obtained 

through Austin, within this Court’s 

subpoena power. See Daignault Decl. ¶2. Accordingly, contrary to the picture Hulu tries to 

present to the Court, Hulu has a significant business presence in Texas, and the Waco Division 

District, that allow for generation of substantial revenue from its activities in Texas. 

Another misperception Hulu creates is that both Hulu witnesses and third-party witnesses 

are more conveniently located in California (or only located in California), and that Texas would 

be inconvenient for them. But there are problems with Hulu’s assertions. Starting with Mr. 

Brookins; 

 Brookins Dep. at 25:21-26:8. 

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Id. at 46:12-16. appearing as a party witness for 

trial in Waco is no more burdensome than business trips. More importantly, though 

Brookins’s declaration (and Hulu’s brief) generically discuss Hulu’s engineers and other 

personnel purporting to have knowledge of issues relevant to the case, not one specific individual 

is identified. See D.I. 29-1 at ¶¶ 5-7, and 9. Indeed, 

 Brookins Dep. at 19:19-20:14; 30:23-31:5. Hulu, therefore, 

cannot state with any accuracy whether these purported witnesses would not be able to testify in 

Waco or even if Hulu would ask any of them to appear for trial. 

As to third parties, Hulu identifies a multitude of large technology companies that 

provide the Content Distribution Network (CDN) through which Hulu streams its content, a few 

individuals and companies purportedly relevant to prior art, content partners, and advertising 

companies with the goal of creating an impression of convenience because of their headquarters / 

residence being in California. See D.I. 29 at 3-4; D.I. 29-1 at ¶¶13-20. But again, Hulu and 

Brookins fail to identify any specific witnesses at these CDNs, content partners, and advertising 

companies. And Hulu keeps quiet on the fact that the majority of these companies have 

significant presences here in this District and are within this Court’s subpoena power, including 

See Exs.16-19. Further, 

 including 

 or any others. See Brookins Dep. at 99:2-4; 99:22-100:4. Thus, Hulu’s 

statements concerning the location and availability of these other potential, but unnamed 

witnesses to testify at trial and the location of documents related to these third-parties are 

conjecture. Similarly, 

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Id. at 116:21-119:13. Certain of those 

companies are within this Court’s subpoena power, but have no locations within the subpoena 

power of the Central District of California. Hulu has no basis to speak for these witnesses. 

Hulu also relies on a declaration from Christopher Newton, a third party. See D.I. 28-1. 

But Mr. Newton’s declaration is flawed. Newton purports to be a third-party witness who 

worked at Sandpiper Networks in the mid-1990s. Id. at ¶¶3-4. He states that he will discuss U.S. 

patent no. 6,185,598 and other prior art systems that Sandpiper created. Id. at ¶¶4-5. Though 

SITO disagrees that either the ’598 patent or the other Sandpiper prior art systems are 

invalidating prior art, Newton is certainly not the proper witness to discuss the Sandpiper prior 

art because he is neither named on any of the prior art documents nor is he even listed as a 

named inventor on the ’598 patent. Any testimony he provides about the ’598 patent would have 

no value. Indeed, the four corners of the ’598 patent and other documents is what would be at 

issue, not the testimony from a lay witness who is not even an inventor on the patent (a motion in 

limine would exclude his testimony). And Hulu does not claim that Mr. Newton is an expert. 

Moreover, in a self-serving manner, Newton says he would testify in Los Angeles, but not at all 

in Waco. Id. at ¶7. But if Newton refuses to appear in Waco altogether, he clearly is not 

important enough to Hulu’s case. This is because it is the ’598 patent and other documents 

discussing the Sandpiper systems that are purportedly prior art, not inventor lay testimony. 

Hulu’s convenience factors also face problems with respect to the location of its own 

documents and source code. See D.I. 29 at 2-3. Brookins admitted that numerous technical 

documents are stored in See Brookins Dep. at 

46-51. Similarly, source code is Id. And as this Court is well aware, 

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source code review is unique in patent litigation, and often brings with it inconvenience, given 

the highly confidential nature of the code and the limited number of persons who can review it, 

namely, a few code reviewers and an expert witness. Traveling to review code or 

agreeing to some other arrangement is to be expected. When Brookins was asked about financial 

documents, 

Id. Thus, like most modern 

companies, Hulu’s documents are accessible from any of its offices, including San Antonio. And 

finally, as to third-party documents from the various companies Hulu enlists, Hulu has no idea 

where those third-party documents are located, setting aside the fact that is has no idea who the 

actual third-party witnesses will be. 

At bottom, as the facts above show, despite its efforts, Hulu cannot disavow and 

downplay its significant business activities and revenue in Texas, and the potential witnesses 

connected to Hulu’s Texas activities. Conversely, Hulu utterly fails to meet its heavy burden in 

showing that the Central District of California is a clearly more convenient forum by identifying 

specific key witnesses and documents, particularly third parties.2

B. SITO has had significant business connections with Texas, and its key thirdparty witnesses reside in Texas and are an easy drive away from testifying in 

Waco. 

Thomas Candelaria is SITO’s CEO, and in his declaration, he details SITO’s extensive 

business activities and contacts with Texas. See Declaration of Thomas Candelaria in Support of 

2

 Hulu asserts that the 2012 suit SITO filed against Hulu is akin to an admission that the Central 

District of California is the appropriate venue. See D.I. 29 at 4-5. That is incorrect. The 2012 

lawsuit was filed without authorization and approval of SITO’s board. See Candelaria Decl. at 

¶17. SITO did not have an opportunity to assess the allegations made in the Complaint. Id. This 

unauthorized complaint was never served on Hulu and the case was voluntarily dismissed under 

Fed. R. Civ. P. 41(a). Id.

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SITO’s Opposition to Hulu’s Motion (“Candelaria Decl.”). Over the last several months, SITO 

has run into financial difficulty and filed for Chapter 11 reorganization. But as late as August, 

2020 (after the complaint was filed), SITO employed several persons who reside in or near 

Dallas, and a short drive from Waco. In fact, since 2016, SITO maintained a large sales force in 

Texas, run by Mr. Sean Clayton. Id. at ¶8. SITO has also generated significant revenue from 

customers based in Texas since 2017, including one of its largest partners Growth Hackers, LLC, 

which was located in Dallas. Id. ¶9. Despite a downturn in business and current reorganization 

efforts, SITO continues to seek out customers based in Dallas, as well as within the Western 

District of Texas. Id. at ¶11. Indeed, Mr. Candelaria anticipates that by the time this case goes to 

trial, SITO will be, once again, receiving a significant portion of its total revenue from 

companies located in Texas. Id. Hulu’s contention that SITO has not relevant ties to this 

District is just wrong. D.I. 29 at 4. 

Additionally, SITO created a joint venture in Texas with Personalized Media 

Communications (“PMC”) called “VideoStar LLC.” VideoStar is a Texas limited liability 

company located in Sugar Land, Texas Id. at ¶15. Aaric Eisenstein is the manager of VideoStar 

and lives in Austin. See Declaration of Aaric Eisenstein (“Eisenstein Decl.”) at ¶¶2-4. As a joint 

venture between SITO and PMC, VideoStar licensed patents, including the asserted patents, to 

Television Technology, LLC and its affiliates located in Texas, such as Fox Sports Southwest. 

Candelaria Decl. at ¶16; Eisenstein Decl. ¶5. Mr. Eisenstein has firsthand knowledge of the 

VideoStar license agreement and license negotiations with Television Technology and will be an 

important third-party witness in this case, relevant to such issues as damages and secondary 

considerations. And VideoStar’s documents are also located in Texas. For Mr. Eisenstein, Waco 

is only an hour and a half drive from Austin. 

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The only living inventor on the asserted patents is Donald Bate who lives in Plano, 

Texas. He is a critical and relevant third-party witness in this case. Indeed, as this Court is well 

aware, in addition to experts, inventors are key witnesses at trial. Mr. Bate has lived in Plano for 

thirty-three years. See Declaration of Donald Bate (“Bate Decl.”) at ¶2. Mr. Bate received his 

computer science degree from UT, Austin and his Master’s from Stanford University. He has 

worked in the computer industry and high tech for most of his career, including at Texas 

Instruments and as an independent consultant for Sprint and AT&T. In fact, he began coding 

when he was nine years old. Mr. Bate has an interesting story to tell, and he will testify about his 

work at World Streaming Networks (which later became Stream Works Technologies) and the 

work he did with his co-inventor Chuck Jennings (now deceased) relating to claimed inventions. 

Bate Decl. ¶¶4-8. And Mr. Bate has business records from his work at World Streaming 

Networks at his home in Plano. Mr. Bate, however, has significant ongoing health concerns that, 

under the advice of his physician, prevent him from traveling to Los Angeles for a trial. In 2001, 

Mr. Bate was diagnosed with which he survived. But 

because of his weakened conditions, he later developed as a secondary 

side-effect. And just recently, in June 2019, Mr. Bate’s 

 Bate 

Decl. ¶¶10.-11. With the current Covid-19 crisis, Mr. Bate does not feel safe traveling to Los 

Angeles for a trial; and that is the case even if the crisis diminishes at some point in 2021. 

Indeed, even before the pandemic began, with Mr. Bate’s serious health condition and 

 his physician instructed him not to travel on flights longer than an hour, but preferred 

no plane travel at all. Bate Decl. ¶¶12-13. Mr. Bate, however, is willing to drive from his home 

in Plano to Waco for trial. He can drive and get to Waco in two hours or less. Bate Decl. ¶14. 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 12 of 25
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As a third-party witness, the importance of Mr. Bate’s trial testimony as the only 

surviving inventor on the patents-in-suit and his serious health condition clearly outweigh any 

inconvenience Mr. Brookins may experience traveling to Waco for trial, particularly given his 

regular monthly travels, and any inconvenience other unidentified Hulu party witnesses and 

unidentified prior art witnesses may experience as well. 

In addition to Aaric Eisenstein and Don Bate, Mr. Gene Bowen is another key third party 

witness in this case. Mr. Bowen worked closely with Chuck Jennings and Don Bate at World 

Streaming Networks on a variety of projects associated with streaming management systems and 

media routing algorithms, and in solving practical problems related to video distribution systems, 

distributor rights, OTA transports and other related technologies. Bowen Decl. ¶¶ 1-6. He also 

co-founded StreamWorks Technologies, the successor to World Streaming Networks and 

worked to develop the patent portfolio, and was with the company when the portfolio was sold to 

Single Touch, a predecessor of SITO. Id. at ¶7. Interestingly, Mr. Bowen is a pilot and lives near 

an airstrip in Placerville, California, near Lake Tahoe. Mr. Bowen owns a plane and is willing to 

fly to Waco for trial and can stop in Dallas to visit with his primary flight instructor. Id. at ¶¶2, 8. 

But even if Mr. Bowen flies commercially, traveling to Los Angeles is not much more 

convenient than to travel to Waco. Id. at ¶9. 

In contrast to Hulu’s failure of proof, the facts above show that SITO has significant ties 

to Texas and this District, specific key documents in Texas and within this District, and in 

addition to Tom Candelaria, key third party witnesses who are willing to travel to Waco for a 

trial, two of whom are only a drive away from the Court. 

III. Applicable Legal Standards 

“Section 1404(a) is intended to place discretion in the district court to adjudicate motions 

for transfer according to an ‘individualized, case-by-case consideration of convenience and 

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fairness.’” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. 

Barrack, 376 U.S. 612, 622 (1964)). A plaintiff has a well-established right to choose its forum. 

In re Triton Ltd. Sec. Litig., 70 F. Supp. 2d 678, 688 (E.D. Tex. 1999), citing McCuin v. Texas 

Power & Light Co., 714 F.2d 1255, 1261-62 (5th Cir. 1983). Accordingly, Hulu must show 

“good cause” to transfer, and unless Hulu can prove that the Central District of California is 

“clearly more convenient” than this Court, its motion must be denied. In re Volkswagen of 

America, Inc., 545 F.3d 304, 314 (5th Cir. 2008) (hereinafter “Volkswagen II”); J2 Global 

Commc’ns, Inc. v. Protus IP Solutions, Inc., 2009 U.S. Dist. LEXIS 13210, at *4 (E.D. Tex. Feb. 

20, 2009). Hulu’s burden to show “good cause” for the proposed transfer “directly manifests the 

importance that we must give to [SITO’s] choice [of forum].” Volkswagen II, 545 F.3d at 315. In 

fact, in Volkswagen II, the Fifth Circuit explained that Congress tempered the effects of the 

§1391 general venue statute by enacting the venue transfer statute. It explained that the 

underlying premise of §1404(a) is that “courts should prevent plaintiffs from abusing their 

privilege under § 1391 by subjecting defendants to venues that are inconvenient under the terms 

of §1404(a).” 545 F.3d at 312-313. Volkswagen II was decided before TC Heartland. But 

after TC Heartland, a plaintiff/patentee’s choice of forum is limited under §1400(b); that is, 

§1400(b) is not a general venue statute of the type addressed in Volkswagen II. Patentees can sue 

only where a defendant has an established place of business or is incorporated. As such, SITO 

submits that the deference due a plaintiff’s choice of forum should fall somewhere between the 

Supreme Court’s decisions in Gilbert and Norwood, and be entitled to significant weight. In any 

event, at a minimum, SITO’s choice of forum must be taken into account and should be 

respected. In re Volkswagen II, 545 F.3d at 314, n. 10. 

The determination of a “clearly more” convenient forum turns on a number of public and 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 14 of 25
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private interest factors of which this Court is well aware. None of these factors are dispositive — 

it is left to the Court’s discretion to evaluate these factors in determining whether a defendant has 

satisfied its heavy burden for a transfer of venue. Volkswagen II, 545 F.3d at 309; see also In re 

Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (hereinafter “Volkswagen I”) (citing Piper 

Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)); Action Indus., Inc. v. U.S. Fid. & Guar. 

Co., 358 F.3d 337, 340 (5th Cir. 2004). 

IV. Argument. 

A. The private interest factors weigh against transferring this case to California. 

1. The sources of proof are spread across the country and in Texas, and 

are not clearly more conveniently located in California. 

Hulu must demonstrate that transfer will result in more convenient access to sources of 

proof. Fintiv, Inc. v. Apple Inc., No. 6:18-cv-00372-ADA, 2019 U.S. Dist. LEXIS 171102, at *5 

(W.D. Tex. Sep. 10, 2019). In particular, this factor examines the location of the potential 

documents, records, and physical evidence relevant to the case. Durrett v. Walmart, Inc., 2018 

U.S. Dist. LEXIS 186618, at *5 (E.D. Tex. Oct. 31, 2018) This factor weighs against transfer. 

Hulu offers the Brookins declaration to support the majority of the arguments it makes. 

But after deposing Brookins, it became clear that Brookins’s declaration was high level and 

broad brush, with little research into the actual details. 

 which as explained above 

by its highly confidential nature always poses some level of inconvenience to access and review. 

 Brookins Dep. at 51:7-

53:15. 

 Brookins Dep. at 55:7-

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56:17. 

Id. at 82-83. Thus, the documents are not more conveniently located in California. 

See Godo Kaisha Ip Bridge v. Intel Corp., No. 17-CV-00676-RWS, 2018 U.S. Dist. LEXIS 

221582, at *13 (E.D. Tex. Aug. 28, 2018) (“that many of the same documents might be available 

in Arizona and New Mexico lessens the weight of the factor”). 

Next, Brookins admitted that 

 including CDNs and alleged prior art 

companies such as and others. Brookins Dep. at 99-

100; 116-119. As such, Hulu’s statements about the location and availability of documents and 

witnesses related to these third-parties is speculation and unsupported, and does nothing to meet 

its heavy burden. And what Hulu also ignores is that many of the companies that Hulu identifies 

are within this Court’s subpoena power, including Daignault Decl. 

at ¶¶ 17-20. Accordingly, these third-party witnesses are not confined to the Central District of 

California, as Hulu would have the Court believe. Documents from several of these third-party 

witnesses can be obtained through subpoenas from this Court. 

Hulu also identifies CW and FX networks as having information on how Hulu distributes 

and tracks revenue. See D.I. 29 at 3. First, But 

second, and more importantly, Brookins admitted 

 in Austin, within this Court’s subpoena power These 

Hulu content partners are closer to Waco, than Los Angeles. Id. at 107-108; Daignault Decl., ¶2. 

Hulu gets is wrong when it also argues that there are no documents relevant to SITO’s 

case from witnesses that are located near this Court. As mentioned above, VideoStar maintains 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 16 of 25
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documents at its facilities in Sugar Land, and Mr. Eisenstein has access to VideoStar documents, 

including the license agreement of the asserted patents to Television Technology, from his home 

office in Austin. And Don Bate has records of his work at World Streaming Networks at his 

home office in Plano. Accordingly, documents from these third-party witnesses are located and 

stored far closer to this Court than the Central District of California. This factor weighs against 

transfer or at worst, is neutral. 

2. The availability of compulsory process to secure the attendance of 

witnesses at trial. 

“Compulsory process” factors weigh against transfer. Courts consider “the availability of 

compulsory process to secure the attendance of witnesses, particularly non-party witnesses 

whose attendance may need to be secured by a court order.” Fintiv, 2019 WL 4743678, at *5. 

“When no party has alleged or shown any witness’s unwillingness, a court should not attach 

much weight to the compulsory process factor.” CloudofChange, LLC v. NCR Corporation, No. 

6:19-cv-00513, D.I. 28, at 7-8 (W.D. Tex. Mar. 17, 2020) (Albright, J.) (citing Duha v. Agrium, 

Inc., 448 F.3d 867, 877 (6th Cir. 2006)). 

Hulu cannot arbitrarily state that because third-party witnesses are in California, they can 

be compelled to testify in the Central District of California. See D.I. 28 at 7-8. In fact, despite 

being “in California,” certain third-parties that Hulu identifies are actually in the San Francisco 

or San Diego area, well outside Central District’s subpoena power, such as Apple 

Similarly, Microsoft is headquartered in Redmond. Apple and Microsoft, however, are within 

this Court’s subpoena power. Daignault Decl. at ¶¶17-18. More importantly, neither Hulu nor 

Mr. Brookins identified specific witnesses for whom compulsory process would be required to 

compel that person to testify. Certified Measurement, LLC v. Centerpint Energy Houston Elec. 

LLC, No. 2:14-CV-627-RSP, 2015 WL 1046267, at *4 (E.D. Tex. Mar. 10, 2015) (weighing 

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compulsory process factor against transfer where “Defendants fail[ed] to identify any . . . witness 

or third-party witness for whom compulsory process would be required”). 

3. Hulu fails to show that the cost of attendance for willing witnesses 

favors transfers. 

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

analysis.” In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009). To prove that this factor 

favors transfer, Hulu “must specify clearly . . . the key witnesses to be called and their location 

and must make a general statement of what their testimony will cover.” Sivertson v. Clinton, 

2011 U.S. Dist. LEXIS 104097, at *15 (N.D. Tex. Sept. 14, 2011) (citing 15 Charles A. Wright, 

et al., Federal Practice and Procedure §3851, at 221-22 (3d ed. 2007)); Magana v. Toyota Motor 

Corp., No. 3:10-cv-1451-B, 2010 U.S. Dist. LEXIS 129976, at *5 (N.D. Tex. Dec. 6, 2010). 

And “[w]hile the Court must consider the convenience of both the party and non-party 

witnesses, it is the convenience of non-party witnesses that is the more important factor and is 

accorded greater weight in a transfer of venue analysis.” Hammond Dev. Int’l, Inc. v. Google 

LLC, No. 20-cv-00342-ADA, 2020 U.S. Dist. LEXIS 110984, at *11-12 (W.D. Tex. June 24, 

2020) (“The convenience of party witnesses is given little weight.”); Peloton Interactive, Inc. v. 

Flywheel Sports, Inc., No. 18-cv-00390, 2019 U.S. Dist. LEXIS 90416 (E.D. Tex. May 30, 2019) 

(quoting USPG Portfolio Two, LLC v. John Hancock Real Estate Fin., Inc., No. 10-CV-2466, 

2011 U.S. Dist. LEXIS 31625 (N.D. Tex. Mar. 25, 2011)).This factor weighs against transfer. 

Though Hulu submitted Brookins’s declaration to support its motion, Hulu never 

represents that it will or even may call Mr. Brookins as a trial witness. But even if we assume 

that Brookins will testify, 

 Brookins does not mention that it would be inconvenient for 

him to testify in Waco. Perhaps this is because Hulu knows that under the law, the convenience 

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of party witnesses is given little weight. Courts consider current employees of a party to be 

willing witnesses, so their locations are not persuasive in the analysis of this factor. Rosemond v. 

United Airlines, Inc., No. H-13-2190, 2014 U.S. Dist. LEXIS 45162 at *3 (S.D. Tex. Apr. 2, 

2014); Net Nav. Sys., LLC v. Cisco Sys., Inc., No. 11-CV-660, 2012 U.S. Dist. LEXIS 187289 at 

*4 (E.D. Tex. Aug. 24, 2012), report and recommendation adopted, No. 11-CV-660, 2013 U.S. 

Dist. LEXIS 44793, 2013 WL 1309840 (E.D. Tex. Mar. 27, 2013). 

Hulu says it has employees spread through Santa Monica, Seattle, and Beijing that may 

have relevant information to this case, but Hulu does not identify any of them. Without this 

information, the Court cannot assess the convenience and costs of Hulu’s party witnesses to 

testify at trial. “The [c]ourt gives more weight to those specifically identified witnesses and 

affords less weight to vague assertions that witnesses are likely located in a particular forum.” 

U.S. Ethernet Innovations, LLC v. Samsung Elecs. Co., No. 6:12-CV-398 MHS-JDL, 2013 U.S. 

Dist. LEXIS 47384 at *3 (E.D. Tex. Apr. 2, 2013). 

As discussed below, SITO plans to call Tom Candelaria, Don Bate, Gene Bowen and 

Aaric Eisenstein as witnesses for trial. Mr. Candelaria is a party witness who will testify about 

the company and its history, its business in Texas, its relationship with PMC and the VideoStar 

joint venture, and its patent ownership. As a party witness, Mr. Candelaria can appear for trial in 

Waco. The three other SITO witnesses are third parties. As discussed above, Mr. Bate is a key 

witness – he is the only living inventor and will testify about his work with Chuck Jennings and 

the story behind the claimed inventions. Mr. Bate, however, has serious health concerns that 

prevent him from traveling to California. Bate Decl. ¶¶11-14. But apart from experts, inventors 

are also critical witnesses in patent litigation. Mr. Bate’s expected testimony as an inventor on 

the asserted patents and his compromised health condition should weigh significantly in 

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assessing the convenience of the key witnesses in this case, and do not favor transfer. 

Continental Airlines, Inc. v. American Airlines, Inc., 805 F.Supp. 1392, 1396 (S.D. Tex. Nov. 4, 

1992) (“In considering the convenience of the witnesses, the Court must primarily consider the 

convenience of the key witnesses. Indeed, the convenience of one key witness may outweigh the 

convenience of numerous less important witnesses.”); see also VLSI Tech. LLC v. Intel Corp., 

2019 U.S. Dist. LEXIS 227809, *12 (W.D. Tex. Oct. 7, 2019) (convenience of one key witness 

may outweigh numerous less important witnesses and greater weight should be given to a nonparty key witness); Rittinger v. Healthy Alliance Life Ins. Co., 2016 U.S. Dist. LEXIS 132726, 

*19-20 (S.D. Tex. July 27, 2016) (same).. 

Mr. Eisenstein is another third party and key witness who, as discussed above, will testify 

about VideoStar and its license of the patents-in-suit to Television Technology. Both Mr. Bate 

and Mr. Eisenstein live in Plano and Austin respectively, and are within driving distance to 

Waco. Bate Decl. ¶14; Eisenstein Decl. ¶8. SITO’s third non-party witness is Mr. Bowen, who 

can offer corroborative testimony about his work on the patented technology with Chuck 

Jennings and Don Bate, and who can fly his plane to Waco or fly commercially, either of which 

is convenient. Bowen Decl. ¶¶7-9. But how many witnesses will Hulu call for trial? Who are 

those witnesses and what will they testify about? Hulu is silent about this. Without this 

information (evidence), there is nothing on Hulu’s part for the Court to weigh. And Hulu bears 

the burden of proving that California is clearly more convenient forum than Waco. 

Indeed, the only specific person Hulu apparently contacted and identified as a potential 

trial witness in this case is Christopher Newton, who states that he is willing to testify in Los 

Angeles about purported prior art, as discussed above. In his declaration, Newton says that the 

work at Sandpiper culminated in the ’598 patent, but he is not a named inventor on that patent. In 

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any event, what is disclosed in the four corners of documents is prior art, not oral testimony. But 

even if Newton were credited as a potential witness in this case for the purpose of considering 

Hulu’s transfer motion, his purported testimony should be given little weight as compared to 

third party witnesses Messrs. Bate, Bowen and Eisenstein. And when Newton states that he is 

unwilling to testify in Waco, this reveals that he is not really a key witness to Hulu’s case. Hulu 

knows that experts are the witnesses who take up the task of addressing validity. East Tex. Boot 

Co., LLC v. Nike, Inc., 2017 U.S. Dist. LEXIS 166701 at *13 (E.D. Tex. Feb. 15, 2017) (prior art 

witnesses are unlikely to testify at trial and are given limited weight). 

Next, not a single person was identified as a potential trial witness from any of the 

alleged prior art entities and CDNs in Brookins’s declaration nor in Hulu’s brief. As such, Hulu 

is in no position to make sweeping statements about the convenience of unknown witnesses to 

appear for trial or the cost of their attendance. And simply listing Brian Kenner and Harry 

Gruber, the two named inventors on the face of the InterVu ’716 patent in a chart (D.I. 29 at 4) 

and both of whom are outside the subpoena power of the Central District of California, does 

nothing to advance Hulu’s argument that the Central District of California is a clearly more 

convenient forum. All of these unidentified CDN and unidentified/identified prior art witnesses 

are speculative witnesses at best. Id. 

As explained in the facts section and reiterated above, Hulu has not satisfied its burden of 

identifying specific key witnesses showing that the Central District of California is a clearly 

more convenient forum. Hulu’s non-identifications and broad statements about alleged CDNs 

and prior art witnesses is not enough to sustain its burden. This is in contrast to the specific 

witnesses SITO identifies above in more detail. This factor weighs against transfer. 

4. SITO has multiple suits pending in this District, which will cause 

significant practical problems if this case is transferred. 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 21 of 25
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In considering a transfer motion, the court considers “all other practical problems that 

make trial of a case easy, expeditious and inexpensive.” Volkswagen II, 545 F.3d at 315. Hulu 

asserts that this factor “strongly weighs in favor of transfer” because this case is in its early stage 

and would not result in any meaningful delay. See D.I. 29 at 9. But Hulu fails to provide any 

evidence indicating that having this case in California makes it easier, more expeditious, or less 

expensive than Waco, apart from stating that the Central District is familiar with streaming 

technology. But this Court is equally familiar with streaming technology, so that argument is a 

red-herring. Ultimately, Hulu’s argument rests on the fallacy that it is more convenient for this 

litigation to proceed in California – the very same dispute that Hulu’s transfer motion raises. 

Reiterating the dispute is not what this factor is about. Indeed, if this case were transferred to 

California, the assignment of this case and the case schedule will likely change, and therefore, 

this factor weighs against transfer.3 Moreover, with the Covid-19 crisis, jury trials are not even 

being conducted at this time in the Central District, with no guidance when they might resume.4

Of further significance is the fact that SITO has two pending cases in this District on the 

3

 Hulu has filed five IPRs against the asserted patents. In Uniloc United States v. Huawei, the 

Eastern District of Texas noted that a related California case involving the same patent against 

Apple had been stayed pending an IPR decision, and that Apple had moved for a continuance of 

the stay. The California court said that it would likely grant the continuance motion, and thus, 

likely not reach issues relating to the patent-in-suit at least for another year. The Texas court 

found that this was “another practical consideration,” and that this delay resulting from the IPR 

and stay would “negate[] any judicial-economy benefits that would be gained from transferring 

the action.” Uniloc United States v. Huawei Device United States, 2018 U.S. Dist. LEXIS 

234545, at *14-15 (E.D. Tex. Sep. 6, 2018). See also Global Commc’ns, Inc., 2009 U.S. Dist. 

LEXIS 13210*5-6 (denying transfer in four related infringement cases regarding the same patent 

to a district with related actions because the transferee forum had stayed the related actions and 

had not issued a claim construction ruling). Further, the likelihood of a stay being granted in 

Central District compared to this Court is 54.3% compared to 30% in this District, and zero in 

this Court. See Daignault Decl., Exs. 14, 15. 

4

See August 6, 2020 COVID-19 Notice for the Central District of California, available at 

https://www.cacd.uscourts.gov/news/covid-19-notice-2020-08. 

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same asserted patents, i.e., SITO v. FloSports, Inc., 6-20-cv00471 (W.D. Tex. June 2, 2020) and 

SITO v. Blue Scout Media, LLC, 6-20-cv-00910 (W.D. Tex. Oct. 1, 2020). “Judicial economy is 

served by having the same district court try the cases involving the same patents.” In re 

Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009). “To permit a situation in which 

two cases involving precisely the same issues are simultaneously pending in different District 

Courts leads to the wastefulness of time, energy, and money that Section 1404 was designed to 

prevent.” Continental Grain Co. v. The FBL-585, 364 U.S. 19, 26, 80 S. Ct. 1470, 4 L. Ed. 2d 

1540 (1960). The avoidance of unnecessary conflicts weighs heavily in favor of denying transfer 

as there are multiple lawsuits with the same asserted patents in this jurisdiction. Hammond Dev. 

Int'l, Inc. v. Google LLC, 2020 U.S. Dist. LEXIS 110984 (W.D. Tex. June 24, 2020) (denying 

motion to transfer venue where consolidation of two parties against whom same patents was 

asserted would promote judicial economy). 

B. Public Factors do not weigh in favor of a transfer. 

1. There are no administrative difficulties flowing from court 

congestion. 

As this Court noted in its Fintiv decision, the “relevant inquiry under this factor is 

actually ‘[t]he speed with which a case can come to trial and be resolved.” Fintiv, 2019 U.S. 

Dist. LEXIS 171102, at *19. And while this is not a dispositive factor in view of recent Federal 

Circuit decisions (see, e.g., In re Adobe Inc., No. 2020-126, 2020 U.S. App. LEXIS 23803, at *9 

(Fed. Cir. July 28, 2020)), it still slightly weighs against transfer. Here, the Court has set a trial 

date of March 2022. That is 15 months away. Based on U.S. District Court statistics over a 12-

month period ending in March 31, 2020, the median time to trial in this District is 24.6 months, 

while the median time to trial in C.D. Cal. is 29.3 months. See Daignault Decl., Ex. 21. As such, 

it is highly unlikely that the Central District will conduct a trial by March 2022, particularly as 

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mentioned above, when the Covid-19 pandemic has delayed all trials and there is . no guidance 

as to when trials may resume. Thus, Hulu’s claims that court congestion is an issue is without 

merit. In fact, one reason why SITO chose this forum was the speed and efficiency by which this 

Court handles patent litigation. Transferring this case to Central District of California would 

prejudice SITO by depriving it of its chosen forum. This factor weighs against transfer. 

2. Local interest in having localized interests decided at home. 

This factor involves “the factual connection” that a case has with the transferor and 

transferee forum. Volkswagen I, 371 F.3d at 206. Hulu asserts that Central District has a stronger 

local interest in this litigation because it is Hulu’s headquarters and cites Mr. Brookins 

declaration in support. See D.I. 29 at 10. But Defendant’s generalized commercial presence is 

typically not sufficient to demonstrate any meaningful local interest in the outcome of a case. 

Found. Med., Inc. v. Guardant Health, Inc., 2017 U.S. Dist. LEXIS 20431 at *10 (E.D. Tex. Feb. 

14, 2017). In fact, “[I]t is generally a fiction that patent cases give rise to local controversy or 

interest, particularly without record evidence suggesting otherwise.” Id. As detailed above, Hulu 

has significant contacts with Texas, and this District, including numerous content partners, 

employees that diagnose and fix problems related to the accused products, and a large subscriber 

base. SITO’s significant connections to this District, as described earlier, include its joint venture 

Video Star, and the inventor of the asserted patents, Mr. Bate. As such, this Court has an interest 

in resolving it. Therefore, this factor also weighs against a transfer. 

3. Factors 3 and 4. 

Hulu concedes that these factors are neutral. D.I. 28 at 10. SITO agrees. 

V. Conclusion 

For these reasons, this Court should deny Hulu’s motion to transfer. 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 24 of 25
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Dated: December 4, 2020 Respectfully submitted, 

OF COUNSEL: 

THE MORT LAW FIRM, PLLC 

/s/Raymond W. Mort, III 

Ronald M. Daignault 

Chandran Iyer 

Jason Charkow 

Stephanie Mandir 

GOLDBERG SEGALLA 

rdaignault@goldbergsegalla.com* 

ciyer@goldbergsegalla.com* 

jcharkow@goldbergsegalla.com* 

smandir@goldbergsegalla.com* 

711 Third Avenue, Suite 1900 

New York, New York 10017 

Telephone: (646) 292-8700 

Raymond W. Mort, III 

Texas State Bar No. 00791308 

raymort@austinlaw.com 

100 Congress Avenue, Suite 2000 

Austin, Texas 78701 

Tel/Fax: 512-865-7950 

*admitted pro hac vice Attorneys for Plaintiffs SITO 

Case 6:20-cv-00472-ADA Document 43 Filed 12/14/20 Page 25 of 25