IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NEONODE SMARTPHONE LLC, 

Plaintiff, 

v. 

APPLE INC., 

Defendant. 

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Civil Action No. 6:20-cv-00505-ADA 

JURY TRIAL DEMANDED 

APPLE INC. REPLY IN SUPPORT OF MOTION TO TRANSFER VENUE 

REDACTED VERSION

Case 6:20-cv-00505-ADA Document 61 Filed 04/30/21 Page 1 of 8
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Neonode’s opposition makes clear that there is no connection between this district and 

the facts giving rise to this suit. Neonode does not (and cannot) allege any connection between 

Apple’s design, engineering, marketing, or licensing of the accused features and this district, 

because the relevant witnesses and sources of proof involved are overwhelmingly located in 

NDCA. Nor is there any connection between Neonode and this district. Further, all relevant, 

identified third-parties are located in California or abroad. Rather than attempting to show 

WDTX is a convenient forum (as it cannot), Neonode relies on its co-pending case against 

Samsung, an argument which runs contrary to this Court’s own precedence and ignores the 

convenience of Apple and third-party witnesses and the location of sources of proof. See, e.g., 

Parus Holdings Inc. v. LG Elecs Inc. and LG Elecs. U.S.A. Inc., No. 6:19-cv-432-ADA, Dkt. 161 

at 12-13 (W.D. Tex. Aug. 20, 2020) (transferring LG, despite co-pending cases involving the 

same patents). Apple has more than met its burden to show that NDCA is a more convenient 

venue, and respectfully submits that the Court should transfer this matter there. 

I. THE PRIVATE INTEREST FACTORS STRONGLY FAVOR TRANSFER 

A. Apple’s Relevant Evidence and Witnesses Are Located in California 

Neonode suggests the location of Apple’s “documents and source code” is entitled to less 

weight because they 

 Resp. at 4. This argument has already been rejected by the Federal and Fifth 

Circuits. In re Volkswagen II, 545 F.3d 304, 316 (5th Cir. 2008); see also Apple Inc., 979 F.3d at 

1340. Further, Neonode fails to acknowledge that 

 Ex. A (M. 

Rollins Dep. Tr.) at 91:4-93:6; Dkt. 27-3 at ¶ 7. If “access” means an employee can relocate in 

order to provide documents, this factor would be rendered meaningless. As the 

witnesses are in NDCA, this factor strongly weighs in favor of transfer. 

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Neonode also attempts to minimize the inconvenience to Apple’s witnesses and draw 

speculation as to whether there are relevant Apple witnesses in WDTX. Apple identified 

roughly two dozen engineers with knowledge relevant to this litigation, all of whom 

work in NDCA. Neonode’s assertion that Apple “has not shown any ‘inconvenience’ or ‘cost’” 

these witnesses would incur that is greater than any other business travel for Apple is inaccurate. 

First, this assumes 

Dkt. 27-3 at ¶¶ 7-17. Second, participating as a witness in a lawsuit is not a typical aspect of 

employment at Apple. Taking time away from family and work activities to travel to and stay in 

Texas is an inconvenience. Indeed, the Federal Circuit has twice recently recognized the 

importance of employee witnesses residing in the transferee venue. In re TracFone Wireless, 

Inc., Case No. 2021-136, Dkt. 11 at 5 (Fed. Cir. Apr. 20, 2021); Apple, 979 F.3d at 1341-42. 

Neonode also points to a handful of individuals who it speculates “may also be pertinent” 

to the case. But none of the individuals listed in Neonode’s response have relevant knowledge 

or are likely to be witnesses in this case. Ex. B (Rollins Decl. ¶¶ 4-9). The individuals are not 

knowledgeable regarding the design or implementation of the accused features described in the 

asserted patents, nor the type of information that would be necessary to calculate damages in a 

patent case. Id. 

 Dkt. 52-2 at 20; 

see generally Dkt. 1. This factor strongly weighs in favor of transfer. Apple, 979 F.3d at 1342. 

B. Neonode Has No Connection to WDTX 

By Neonode’s own admission, it has no connection to this district. Neonode is not a 

Texas entity, has no Texas employees or offices, and has not identified any Neonode potential 

witnesses or sources of evidence located in Texas. Dkt. 27-4; Ex. C (J. Shain Dep. Tr.) at 

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114:18-115:6. The named inventor of the asserted patents is located in Sweden. Dkt. 27-8. 

Neonode states that the party and third-party witnesses whom Neonode currently expects to 

testify in this matter are located in South Korea, Sweden, Israel, and Southern California, but are 

“willing to travel to WDTX for the case,” (Resp. at 5, 10), but has not shown that these witnesses 

would be unwilling to travel to NDCA for the case, nor that it would be a less convenient forum.1

 

Neonode’s witnesses’ willingness to travel to WDTX should be given no weight. 

C. Relevant Third Parties Are Located in NDCA 

Neonode argues Apple has not shown the importance of the testimony of witnesses from 

Google and Nuance. Not only is this inaccurate (see Dkt. 27 at 11), the importance is clear from 

Neonode’s own pleadings. Dkt. 1 at ¶¶ 53, 33, 35, 80. Neonode alleges Apple indirectly 

infringes the asserted patents by offering Google and Nuance’s swipe-typing apps, Gboard and 

Swype. Id. In order to prove these apps meet the claims of the asserted patents, Neonode will be 

required to subpoena Google and Nuance. As compulsory process over Google and Nuance is 

available in NDCA, but not in WDTX, this factor strongly favors transfer. In re Hoffman-La 

Roche, Inc., 587 F.3d 1333, 1337-38 (Fed. Cir. 2009).2

D. Judicial Economy Is Neutral 

Neonode overinflates the amount of judicial economy that would be preserved by 

denying transfer and is therefore incorrect that it favors transfer. While the asserted patents are 

the same, Neonode’s blanket statements that “the accused products and functionality are very 

 

1 Resp. at 5. And 

Neonode’s witnesses have already traveled to NDCA for work. Ex. C at 51:20-52:7; 70:18-25. 

2

 Neonode also argues Google and Nuance should be ignored because Apple has not identified 

specific witnesses from these companies. Resp. at 6-7. This argument has, again, already been 

rejected by the Federal Circuit. In re HP Inc., 826 Fed. App’x. 899, 903 (Fed. Cir. Sept. 15, 

2020) (non-precedential) (holding there was “no basis to discount [the identified third parties] 

just because individual employees were not identified.”). 

Case 6:20-cv-00505-ADA Document 61 Filed 04/30/21 Page 4 of 8
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similar” and “[b]oth complaints allege that Apple and Samsung gained pre-suit knowledge of the 

patents in suit” glosses over the complexities of the issues presented in this case. Apple and 

Samsung will produce completely separate evidence regarding the accused products, how and 

whether the accused features are marketed or licensed, financials, and evidence related to presuit notice, or lack thereof. The Court will have to separately decide all issues and motions 

relating to discovery, as well as conduct separate pre-trial and trial proceedings. In fact, the only 

issue that can truly be jointly decided is claim construction. And as the case has been stayed 

since its early stages (the parties have not yet served invalidity contentions), very little work, if 

any, would have to be duplicated in NDCA. The judicial economy created by keeping this 

matter in WDTX is minimal and this factor is neutral. See, e.g., Parus, No. 6:19-cv-432-ADA, 

Dkt. 161 at 12-13 (transferring LG, despite co-pending cases involving the same patents). 

Further, Neonode suggests an unworkable standard. Namely, that all other factors should 

be outweighed in view of judicial economy. Were this the case, any plaintiff could artificially 

maintain a less convenient forum by filing suit against multiple defendants and ensuring that the 

non-moving defendants would not or could not request a transfer. Such a result would allow a 

party to manipulate case filings to avoid transfer and eviscerate defendants’ ability to effectively 

utilize § 1404(a). Neonode’s co-pending case against Samsung does not justify ignoring the 

convenience to Apple and third-party witnesses of litigating in NDCA. 

II. THE PUBLIC INTEREST FACTORS FAVOR TRANSFER 

Court congestion is, at worst, neutral. As Neonode notes, a particular court’s “general 

ability to set a fast-paced schedule is not particularly relevant to this factor.” Apple, 979 F.3d at 

1344. Rather, “[a]dministrative difficulties manifest when litigation accumulate in congested 

centers instead of being handled at its origin.” Ikorongo Texas LLC v. Lyft, Inc., Civ. No. 6:20-

cv-00258-ADA, slip op. at 16 (W.D. Tex. Mar. 1, 2021) (citing Gulf Oil Corp. v. Gilbert, 330 

Case 6:20-cv-00505-ADA Document 61 Filed 04/30/21 Page 5 of 8
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U.S. 501, 511 (1947)). This factor concerns whether there is an appreciable difference in docket 

congestion between the two forums.” Id. (internal citations omitted). 

This District – and in particular, this Court – are significantly more congested than 

NDCA. Currently there are only 236 patent cases pending in NDCA. Ex. D (NDCA Open 

Cases). There are 706 patent cases pending in this Court alone – nearly three times the number 

pending before all nine judges in NDCA. Ex. E (Judge Albright Open Cases). While this Court 

has proceeded more quickly to trial for the cases that have thus far reached a jury, the Court’s 

docket is substantial, with multiple patent trial settings every month. And while civil trials were 

temporarily suspended in NDCA due to COVID-19, NDCA is resuming jury trials as early as six 

weeks from yesterday. E.g., Finjan LLC v. Cisco Sys. Inc., Civ. No. 17-cv-72-BLF, Dkt. 738 

(N.D.C.A. Dec. 16, 2020) (setting trial for June 3, 2021). Court congestion is, at worst, neutral. 

Local interest strongly favors transfer. Neonode asks this Court to err by finding this 

factor is neutral because Apple has general contacts with WDTX that create a local interest. 

Resp. at 13-15; Apple, 979 F.3d at 1345-46. Neonode points to the overall number of Apple 

employees and the size of Apple’s non-retail facility in Austin, and the number of retail stores in 

WDTX. Resp. at 14. These are similar facts to those the Federal Circuit previously found were 

given too much weight by the district court, “improperly conflat[ing] the requirements for 

establishing venue under 28 U.S.C. § 1400(b) and the requirements for establishing transfer 

under § 1404(a).” Apple, 979 F.3d at 1345-46. It is clear that NDCA is the district with the 

greatest local interest in this dispute because it is the situs of “the events that gave rise to [the] 

suit.” Id. at 1345 (emphasis original). This factor strongly weighs in favor of transfer.3

 

3

 Neonode also argues three previous cases filed in EDTX by Apple fifteen years ago show 

Texas may be a convenient forum for Apple. This argument has been soundly rejected by the 

Federal Circuit as “clear error.” Genentech, 566 F.3d at 1346. 

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Date: April 23, 2021 

By: 

Respectfully submitted, 

FISH & RICHARDSON P.C. 

/s/ Betty H. Chen 

Benjamin C. Elacqua 

Texas Bar Number 24055443 

elacqua@fr.com 

Kathryn A. Quisenberry 

Texas Bar Number 24105639 

quisenberry@fr.com 

FISH & RICHARDSON P.C. 

1221 McKinney Street, Suite 2800 

Houston, TX 77010 

Telephone: 713-654-5300 

Facsimile: 713-652-0109 

Betty Chen 

Texas Bar Number 24056720 

bchen@fr.com 

FISH & RICHARDSON P.C. 

500 Arguello Street, Suite 500 

Redwood City, CA 94063 

Telephone: 650-839-5070 

Facsimile: 650-839-5071 

Jared A. Smith (admitted Pro Hac Vice) 

California Bar No. 306576 

jasmith@fr.com 

FISH & RICHARDSON P.C. 

12860 El Camino Real, Suite 400 

San Diego, CA 92130 

Telephone: 858-678-5070 

Facsimile: 858-678-5099 

COUNSEL FOR DEFENDANT APPLE INC.

 

Case 6:20-cv-00505-ADA Document 61 Filed 04/30/21 Page 7 of 8
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CERTIFICATE OF SERVICE 

The undersigned certifies that a true and correct copy of the above document was 

served on April 23, 2021 via email to all counsel of record. 

/s/ Betty H. Chen

Betty H. Chen 

Case 6:20-cv-00505-ADA Document 61 Filed 04/30/21 Page 8 of 8