EXHIBIT 28

Case 6:20-cv-00473-ADA Document 71-2 Filed 02/05/21 Page 1 of 31
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

WSOU INVESTMENTS, LLC D/B/A 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v.

XILINX, INC.,

Defendant.

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C.A. No. 20-1228-CFC

C.A. No. 20-1229-CFC

C.A. No. 20-1231-CFC

C.A. No. 20-1232-CFC

C.A. No. 20-1233-CFC

WSOU INVESTMENTS, LLC’S OPPOSITION TO XILINX, INC.’S 

MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404

Dated: January 20, 2021

OF COUNSEL:

Jonathan K. Waldrop

Darcy L. Jones

Marcus A. Barber

ThucMinh Nguyen

John W. Downing

Heather S. Kim

Jack Shaw

KASOWITZ BENSON TORRES LLP

333 Twin Dolphin Drive, Suite 200

Redwood Shores, CA 94065

(650) 453-5170

Shelley Ivan

KASOWITZ BENSON TORRES LLP

1633 Broadway 

New York, NY 10019

(212) 506-1700

DEVLIN LAW FIRM LLC

James M. Lennon (No. 4570)

1526 Gilpin Avenue

Wilmington, DE 19806

(302) 449-9010

jlennon@devlinlawfirm.com

Paul G. Williams

KASOWITZ BENSON TORRES LLP

1230 Peachtree Street, NE, Suite 2445

Atlanta, GA 30309

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TABLE OF CONTENTS

Page

I. SUMMARY OF ARGUMENT.......................................................................1

II. NATURE AND STAGE OF PROCEEDINGS...............................................2

III. STATEMENT OF RELEVANT FACTS........................................................3

A. WSOU ...................................................................................................3

B. Third Parties..........................................................................................3

C. Xilinx.....................................................................................................4

IV. LEGAL STANDARD .....................................................................................6

V. ARGUMENT...................................................................................................9

A. The Jumara Private Interest Factors Weigh Against Transfer .............9

1. WSOU’s Forum Choice Is Entitled To A Paramount 

Consideration And Weighs Against Transfer.............................9

2. Xilinx’s Preferred Venue Weighs Against Transfer As 

Xilinx Filed Two Delaware Cases Seeking The 

Protection And Conveniences Of This Forum..........................12

3. The Location Of The Activities Giving Rise To WSOU’s 

Infringement Claims Is Neutral Because The Claims 

Arose In Multiple States ...........................................................13

4. The Physical And Financial Convenience Of The Parties 

Is Neutral Because Xilinx Is A Global Company 

Incorporated In Delaware With Ample Resources...................15

5. The Availability Of Witnesses For Trial Weighs Against 

Transfer Because There Are Third-Party Witnesses 

Within This Court’s Subpoena Power But None Within 

The Subpoena Power Of N.D. Cal............................................16

6. Electronic Discovery Makes Books And Records Readily 

Available In Any District, Thus This Factor Is Neutral ...........17

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B. The Jumara Public Interest Factors Weigh Against Transfer ............18

1. The Factor Concerning Enforceability Of Judgment Is 

Neutral.......................................................................................18

2. The Practical Considerations Weigh Against Transfer ............19

3. Relative Administrative Difficulties Weigh Against 

Transfer.....................................................................................19

4. The Local Interest Factor Is Neutral Because Patent 

Litigation Is Not A Local Controversy .....................................20

5. Delaware Public Policy Encourages Delaware 

Companies To Resolve Business Disputes In Delaware 

And Weighs Against Transfer ..................................................21

6. The Factor Concerning The Judges’ Familiarity With 

State Law Is Inapplicable And Thus Neutral............................21

C. Xilinx Failed To Meet Its Heavy Burden Of Showing That The 

Jumara Factors Weigh Strongly In Favor Of Transfer.......................22

VI. CONCLUSION..............................................................................................22

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TABLE OF AUTHORITIES

Page(s)

Cases

Analog Devices, Inc. v. Xilinx, Inc.,

C.A. No. 2019-cv-2225-RGA...............................................................................6

Arbor Global Strategies LLC v. Xilinx, Inc. et al.,

2020 WL 4673823 (D. Del. Aug. 12, 2020).......................................6, 11, 12, 14

Autodesk Can. Co. v. Assimilate, Inc.,

2009 WL 3151026 (D. Del. Sep. 29, 2009)........................................................21

Chase Manhattan Bank, U.S.A., N.A. v. Freedom Card, Inc., 

265 F. Supp. 2d 445............................................................................................11

C. R. Bard, Inc. v. Angiodynamics, Inc.

156 F. Supp. 3d 540 (D. Del. 2016)....................................................................17

Genentech, Inc. v. Amgen Inc.,

C.A. No. 17-14072018, 2018 WL 503253 

(D. Del. Jan. 22, 2018)............................................................................13, 15, 16

Globalfoundries U.S. Inc. v. Xilinx, Inc. et al.,

C.A. No. 2019-1576-CFC.....................................................................................6

Globalfoundries U.S. Inc. v. Xilinx, Inc. et al.,

C.A. No. 2019-cv-1573-CFC................................................................................6

Helicos Biosciences Corp. v. Illumina, Inc.,

858 F. Supp. 2d 367 (D. Del. 2012)..................................................10, 19, 20, 21

ICU Med., Inc. v. Rymed Techs., Inc., 

No. 07-468-JJF, 2008 WL 205307 .....................................................................18

Illumina, Inc. v. Complete Genomics, Inc.,

2010 WL 4818083 (D. Del. Nov. 9, 2010)...............................................7, 19, 22

Intel v. Broadcom,

167 F. Supp. 2d 692 (D. Del. 2001)................................................................7, 10

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Intellectual Ventures I LLC v. Altera Corp.,

842 F. Supp. 2d 744 (D. Del. 2012)................................................6, 8, 11, 15, 21

Intellitech Corp. v. Altera Corp., et al.,

C.A. No. 2010-cv-645-MMB ...............................................................................6

Jumara v. State Farm Ins. Co.,

55 F.3d 873 (3d Cir. 1995) ..........................................................................passim

L’Athene, Inc. v. EarthSpring LLC,

570 F. Supp. 2d 588 (D. Del. 2008)......................................................................7

LoganTree LP v. Omron Healthcare, Inc.,

2019 WL 4538730 (D. Del. Sept. 19, 2019).......................................................22

Magnacross LLC v. GE MDS LLC,

2020 WL 6581530 (D. Del. Nov. 10, 2020).........................................................6

McRo, Inc. v. Activision Blizzard, Inc.,

2013 WL 6571618 (D. Del. Dec. 13, 2013) ...................................................9, 14

North Star Innovations Inc. v. Xilinx, Inc.,

C.A. No. 2016-cv-773-RGA.................................................................................6

NorthStar Innovations, Inc. v. Xilinx, Inc.,

C.A. No. 2016-cv-1182-SLR................................................................................6

Papst Licensing GmbH & Co. KG v. Xilinx., Inc.,

126 F. Supp. 3d 430 (D. Del. 2015)....................................................................14

Rosebud LMS, Inc. v. Salesforce.com, Inc., 

C.A. No. 17-1712-CFC, 2018 WL 6061343 ......................................................22

Sci. Telecomm., LLC v. Adtran, Inc.,

2016 WL 1650760 (D. Del. Apr. 25, 2016) .................................................12, 18

Semcon Tech LLC v. Xilinx Inc.,

C.A. No. 2012-cv-691-RGA.................................................................................6

Shutte v. Armco Steel Corp.,

431 F.2d 22 (3d Cir. 1970) ...............................................................................7, 9

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Treehouse Avatar LLC v. Valve Corp.,

170 F. Supp. 3d 706 (D. Del. 2016)..............................................................14, 16

TriStrata Tech., Inc. v. Emulgen Labs, Inc.,

537 F. Supp. 2d 635 (D. Del. 2008)....................................................................20

In re TS Tech USA Corp.,

551 F.3d 1315 (Fed. Cir. 2008) ..........................................................................22

Versata Software, Inc. v. Callidus Software Inc.,

944 F. Supp. 2d 357 (D. Del. 2013)....................................................................20

VLSI Tech. LLC v. Intel Corp.,

2018 WL 5342650 (D. Del. Oct. 19, 2018)..........................................................9

Wesley-Jessen Corp. v. Pilkinton Visioncare, Inc.,

157 F.R.D. 215 (D. Del. 1993) .....................................................................11, 12

Xilinx Inc. v. Invention Investment Fund I LP et al.,

C.A. No. 2011-cv-666-LPS ......................................................................6, 12, 13

Xilinx, Inc., v. LSI Corp, et al.,

C.A. No. 09-886-MMB, D.I. 3 ...........................................................................11

Xilinx, Inc. v. LSI, Corp., et al.,

C.A. No., 2009-cv-886-MMB .....................................................................passim

Zoetics, Inc. v. Yahoo!, Inc., 

No. Civ. A. 06-108-JJF, 2006 WL 1876912 ......................................................11

Statutes

28 U.S.C. § 1404(a) .............................................................................................1, 10

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Plaintiff WSOU Investments LLC (“WSOU” or “Plaintiff”) submits this 

memorandum of law in support of its opposition to Defendant Xilinx, Inc.’s 

(“Xilinx”) motion to transfer venue to the Northern District of California pursuant 

to 28 U.S.C. § 1404(a) (“Motion”). 

I. SUMMARY OF ARGUMENT

Xilinx’s motion to transfer venue is baseless and must be denied. First, this 

Court has already rejected twice Xilinx’s attempt to transfer venue to the Northern 

District of California (“N.D. Cal.”) under similar circumstances, where all parties 

were Delaware corporations with no physical ties to Delaware. The Court should 

do the same here. Second, Xilinx itself has filed two Delaware cases as a plaintiff, 

seeking the protection and conveniences of Delaware. Xilinx cannot have it both 

ways and fundamentally change its position depending on what is convenient to 

Xilinx. Third, Xilinx has plainly failed to meet the clear legal standard and 

demonstrate that there is any unique or unexpected burden from litigating in 

Delaware on Xilinx, which is a multi-billion-dollar company with ample corporate 

resources and an extensive worldwide network selling the accused products 

nationally and globally. 

Xilinx cannot ignore the fact that black letter law gives paramount 

consideration to WSOU’s forum choice and that the proper application of the 

convenience factors enumerated by the Third Circuit weighs against transfer. Nor 

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can Xilinx claim that Delaware is inconvenient when it voluntarily chose to 

incorporate in Delaware and maintain its corporate status here for more than 30 

years. 

Accordingly, the Motion must be denied. 

II. NATURE AND STAGE OF PROCEEDINGS

On September 16, 2020, WSOU filed five complaints against Xilinx 

(“Original Complaints”) for direct and indirect patent infringement of U.S. Patent 

Nos. 6,784,653 (“the ’653 Patent”), 7,068,950 (“the ’950 Patent”), 7,613,938 (“the 

’938 Patent”), 7,903,971 (“the ’971 Patent”), and 9,312,838 (“the ’838 Patent”) 

(collectively, “Patents-In-Suit”) in the above-captioned actions. On November 9, 

2020, Xilinx moved to dismiss the indirect infringement counts in the Original 

Complaints. 

On November 23, 2020, WSOU filed amended complaints1(“Amended 

Complaints”) including additional factual allegations. 

On December 7, 2020, Xilinx filed nearly identical motions to dismiss the 

Amended Complaints. On December 21, 2020, WSOU opposed Xilinx’s motions 

to dismiss the Amended Complaints, which are currently pending before the Court. 

On December 23, 2020, Xilinx filed the Motion. 

1 D.I. 11 in C.A. No. 20-1228-CFC, C.A. No. 20-1229-CFC, C.A. No. 20-1231-

CFC, and C.A. No. 20-1232-CFC; and D.I. 10 in C.A. No. 20-1233-CFC.

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III. STATEMENT OF RELEVANT FACTS

A. WSOU 

WSOU is a limited liability company, which was incorporated in Delaware 

on July 25, 2017. Declaration of Stuart Shanus (“Shanus Decl.”), ¶ 3; Ex. 1. 2 

WSOU’s principal place of business is located at 605 Austin Avenue, Suite 6, 

Waco, Texas 76701. Id. WSOU is the assignee of all right, title, and interest in 

the Patents-In-Suit. Id. at ¶ 4. WSOU does not maintain any offices, facilities, or 

employees in the Northern District of California. Id. at ¶ 7. WSOU’s witnesses 

most knowledgeable about its licensing practices are Stuart Shanus and Craig 

Etchegoyen, both of whom are willing to appear for trial in Wilmington, Delaware. 

Id. at ¶ 6. 

B. Third Parties 

The sole inventor of the ’950 Patent, Jeffrey H. Sinsky, is located in 

Marlboro, New Jersey, which is within the subpoena power of this Court. Exs. 2-

4. Similarly, the prosecuting attorneys of the ’950 Patent, Steve Mendelsohn and 

Yuri Gruzdkov, are located in Philadelphia, Pennsylvania, which is also within the 

subpoena power of this Court. Exs. 5-7. 

2

“Ex. ___” refers to the Exhibits to the Declaration of Jonathan K. Waldrop 

(“Waldrop Decl.”) filed concurrently herewith.

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The prosecuting attorney for the ’653 Patent, David Cushing, is located in 

Washington, D.C., approximately 110 miles from this Court. Exs. 8-10.

The prosecuting attorneys for the ’971 Patent, Gary D. Yacura, John A. 

Castellano, and Donald J. Daley, are located in Reston, Virginia, approximately 

126 miles from this Court. Exs. 11-15. And the prosecuting attorney for the ’971 

Patent, Terry L. Clark, is located in Washington, D.C., approximately 110 miles 

from this Court. Exs. 16-17.

The current and former employees of the original assignees of the PatentsIn-Suit, Lucent Technologies, Inc. and Alcatel-Lucent USA, Inc. (including 

Alcatel-Lucent’s Senior Director of Patent Creation for the ’971 and ’838 Patents, 

Gregory J. Muria), are located in Murray Hill, New Jersey, approximately 125 

miles from this Court. Exs. 18-21.

C. Xilinx 

Xilinx was incorporated in Delaware on February 5, 1990. Ex. 22.

According to Xilinx’s latest Form 10-K, Xilinx is a global company that 

designs and develops programmable devices and associated technologies, and 

reported $3.2 billion of net revenue for the fiscal year ended March 28, 2020, and 

$3.1 billion for the prior fiscal year ended March 30, 2019. Ex. 23 at 3, 31.

Xilinx has 40 subsidiaries and 4,891 employees around the world, including 

in the United States, Europe, and Asia. Ex. 23 at 14. Four of Xilinx’s subsidiaries 

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are incorporated in Delaware: Level 5 Networks Inc., Midgard Acquisition LLC, 

NGCodec Inc., and Solarflare Communications, Inc. Ex. 23 at Exhibit 21.1.

Although Xilinx asserts that its principal place of business is in N.D. Cal., 

Xilinx’s Form 10-K shows that Xilinx operates through its subsidiaries around the 

world and distributes its products nationally and globally.3 Ex. 23 at 3, 11-12. 

Xilinx’s Form 10-K also explicitly states that Xilinx sell its “products and services 

through independent domestic and foreign distributors and through direct sales to 

original equipment manufacturers (OEMs) and electronic manufacturing service 

providers (EMS).” Ex. 23 at 3.

Significantly, Xilinx does not assert that its products are not used in 

Delaware or that its national independent distributors have not sold any products in 

Delaware. See Motion. Instead, Xilinx only vaguely and generally states that 

“Xilinx has no record of any sales of its products into Delaware.” Declaration of 

Xin Wu in Support of Xilinx Inc.’s Motion to Transfer (“Wu Declaration”), D.I. 

18.

To date, Xilinx has been involved in 23 Delaware cases. Ex. 25. Xilinx, as 

a plaintiff, filed two of those cases and opposed a motion to transfer in one of them 

seeking the protection and conveniences of the Delaware forum. See Xilinx, Inc. v. 

3 For example, Xilinx’s website identifies Avnet Inc. as a global distributor of 

Xilinx’s products. Ex. 24. 

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LSI Corp., et al., C.A. No. 2009-cv-886-MMB; Xilinx Inc. v. Invention Investment 

Fund I LP, et al., C.A. No. 2011-cv-666-LPS. Further, Xilinx did not move to 

transfer venue in eight of the 23 referenced cases or otherwise argue that Delaware 

is not a convenient forum.4 

This Court has previously rejected Xilinx’s attempt to transfer venue to N.D. 

Cal. in two other cases under circumstances similar to this case. See Arbor Glob.

Strategies LLC v. Xilinx, Inc., et al., 2020 WL 4673832 (D. Del. Aug. 12, 2020) 

(denying Xilinx’s motion to transfer venue where both parties were Delaware 

corporations with no physical ties to Delaware); Intellectual Ventures I LLC v.

Altera Corp., 842 F. Supp. 2d 744 (D. Del. 2012) (same).

IV. LEGAL STANDARD

It is well settled that “plaintiff’s choice of venue should not be lightly 

disturbed.” Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995). A

plaintiff, as the injured party, has been “accorded [the] privilege of bringing an 

action where he chooses.” Magnacross LLC v. GE MDS LLC, C.A. No. 20-964-

MN, 2020 WL 6581530, at *2 (D. Del. Nov. 10, 2020) (quoting Helicos 

4 See Analog Devices, Inc. v. Xilinx, Inc., C.A. No. 2019-cv-2225-RGA; Intellitech 

Corp. v. Altera Corp., et al., C.A. No. 2010-cv-645-MMB; Semcon Tech LLC v. 

Xilinx, Inc., C.A. No. 2012-cv-691-RGA; North Star Innovations Inc. v. Xilinx, 

Inc., C.A. No. 2016-cv-773-RGA; North Star Innovations, Inc. v. Xilinx, Inc., C.A. 

No. 2016-cv-1182-SLR; Globalfoundries U.S. Inc. v. Xilinx, Inc., et al., C.A. No. 

2019-cv-1573-CFC; Globalfoundries U.S. Inc. v. Xilinx, Inc., et al., C.A. No. 

2019-cv-1576-CFC.

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Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d 367, 371 (D. Del. 2012)). As 

such, “a transfer is not to be liberally granted.” Shutte v. Armco Steel Corp., 431 

F.2d 22, 25 (3d Cir. 1970) (emphasis added). 

The party seeking a transfer carries the burden “to establish that a balancing 

of proper interests weighs in favor of the transfer.” Id. at 25. “That burden is a 

heavy one: ‘unless the balance of convenience of the parties is strongly in favor of 

defendant, the plaintiffs’ choice of forum should prevail.’” Id. Consequently, 

“transfer will be denied if the factors are evenly balanced or weigh slightly in favor 

of transfer.” Illumina, Inc. v. Complete Genomics, Inc., C.A. No. 10-649-RFK, 

2010 WL 4818083, at *2 (D. Del. Nov. 9, 2010). 

When transfer is sought by a defendant with operations on a national or 

international scale, that defendant “must prove that litigating in Delaware would 

pose a unique or unusual burden on [its] operations.” L’Athene, Inc. v. 

EarthSpring LLC, 570 F. Supp. 2d 588, 592 (D. Del. 2008); Intel v. Broadcom, 167 

F. Supp. 2d 692, 706 (D. Del. 2001) (although defendant did not have offices or 

assets in Delaware and was not even licensed to do business there, the court denied 

transfer because defendant was a multi-billion-dollar company doing business on 

an international scale). Unless the defendant is “truly regional in character” and 

operates in a limited territory that does not include Delaware, transfer should be 

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denied. Intellectual Ventures, 842 F. Supp. at 751 (denying Xilinx’s motion to 

transfer venue to N.D. Cal.). 

When deciding a motion to transfer, the Court must analyze “all relevant 

factors to determine whether on balance the litigation would more conveniently 

proceed and the interest of justice be better served by transfer to a different forum.” 

Jumara, 55 F.3d at 879. The Third Circuit has identified a set of private and public 

interest factors for courts to consider “on an individualized, case-by-case basis” to 

determine whether transfer is warranted. See id. 

The private interest factors include: (1) plaintiff’s forum preference as 

manifested in the original choice; (2) defendant’s forum preference; (3) whether 

the claim arose elsewhere; (4) the convenience of the parties indicated by their 

relative physical and financial condition; (5) the convenience of the witnesses but 

only to the extent the witnesses may actually be unavailable for trial in one of the 

fora; and (6) the location of books and records (similarly limited to the extent that 

the files could not be produced in the alternative forum). See Id. at 879-80. 

The public interest factors include: (1) the enforceability of the judgment; 

(2) practical considerations that could make the trial easy, expeditious and 

inexpensive; (3) the relative administrative difficulty in the two fora resulting from 

court congestion; (4) the local interest in deciding local controversies at home; (5) 

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the public policies of the fora; and (6) the familiarity of the trial judge with the 

applicable state law in diversity cases. Id.

As demonstrated below, both the private and public factors weigh against 

transfer. 

V. ARGUMENT

A. The Jumara Private Interest Factors Weigh Against Transfer

1. WSOU’s Forum Choice Is Entitled To A Paramount 

Consideration And Weighs Against Transfer

“It is black letter law that a plaintiff’s choice of proper forum is a paramount 

consideration in any determination of a transfer request.” Shutte, 431 F.2d at 25 

(emphasis added); see also VLSI Tech. LLC v. Intel Corp., 2018 WL 5342650, at 

*6 (D. Del. Oct. 19, 2018) (giving plaintiff’s forum choice paramount 

consideration in balancing the Jumara factors where plaintiff was a Delaware 

corporation). 

Xilinx incorrectly argues that WSOU’s forum preference should be given 

reduced weight because WSOU has no offices in Delaware and its place of 

business is in Texas. (Motion at 8.) This Court has rejected Xilinx’s argument. 

McRo, Inc. v. Activision Blizzard, Inc., C.A. No. 12-1508-LPS-CJB, 2013 WL 

6571618, at *3 n.8 (D. Del. Dec. 13, 2013), adopted by No. CV 12-1508-LPS-CJB, 

2013 WL 6869866 (D. Del. Dec. 30, 2013) (the issue of whether a plaintiff’s place 

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of business or “home turf” is in another state has no independent significance 

regarding the standard used in the Jumara balance of convenience analysis). 

Indeed, this Court has recognized that it is rational for a plaintiff to choose to 

litigate in Delaware as the place of its incorporation because Delaware has an 

interest in protecting the rights of its citizens, which is exactly what WSOU has 

done here. See Intel Corp. v. Broadcom Corp., 167 F. Supp. 2d 692, 706 (D. Del. 

2001) (holding that “the ‘home turf’ rule does not create irrebuttable presumptions 

for or against a transfer pursuant to § 1404(a), and it does not alter a defendant’s 

burden of proof to show that such a transfer is warranted”).

Xilinx is grasping at straws arguing that WSOU does not have a strong 

preference to litigate in Delaware because WSOU has filed other patent 

infringement cases in the Western District of Texas and the Eastern District of 

Virginia. (Motion at 9-10.) This argument makes no sense. WSOU has the right 

to decide where to file its own cases. See Helicos, 858 F. Supp. 2d at 371. 

Further, this issue has no impact on the transfer analysis, as evidenced by Xilinx’s 

failure to cite any supporting authority for its argument. 

Notably, Xilinx took a contrary position as a plaintiff in another Delaware 

case when opposing a motion to transfer, and argued at length that, if all parties are 

Delaware corporations, the case should be litigated in Delaware: 

In fact, Delaware is a more appropriate forum than New 

York. All of the parties are Delaware corporations, and 

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Delaware has an interest in adjudicating cases involving 

corporations which have availed themselves of the 

protection of Delaware’s laws. See Chase Manhattan 

Bank, U.S.A., N.A. v. Freedom Card, Inc., 265 F. Supp. 

2d 445, 451 (D. Del. 2003) (“[T]his forum’s interest 

extends to these corporate citizens that have sought the 

protection of Delaware’s laws.” (quoting Motorola, Inc. 

v. PC-Tel, Inc., 58 F. Supp. 2d 349, 356 (D. Del. 1999)). 

And, because both Defendants are Delaware 

corporations, they should not be inconvenienced by 

litigating in Delaware. See, e.g., Wesley-Jessen Corp. v. 

Pilkinton Visioncare, Inc., 157 F.R.D. 215, 218 (D. Del. 

1993) (“Absent some showing of a unique or unexpected 

burden, [Delaware] corporations should not be successful 

in arguing that litigation in their state of incorporation is 

inconvenient.”); see also Zoetics, Inc. v. Yahoo!, Inc., 

No. Civ. A. 06-108-JJF, 2006 WL 1876912, at *5 (D. 

Del. July 6, 2006) (“a defendant’s incorporation in the 

chosen forum is a rational and legitimate reason for 

choosing the forum that cannot be disregarded.”)

(internal citations omitted). 

Ex. 26 [Xilinx, Inc. v. LSI Corp, et al., C.A. No. 2009-cv-886-MMB, D.I. 3] at 10.

Xilinx’s analysis in the LSI case is the exact opposite of what Xilinx is 

arguing here. Xilinx cannot have it both ways and should not be allowed to 

fundamentally change its position depending on what is convenient to Xilinx.

More importantly, this Court has previously rejected Xilinx’s attempt to 

downplay this factor by denying Xilinx’s motions to transfer venue in Arbor and 

Intellectual Ventures (where all parties were Delaware companies) and finding that 

the plaintiffs’ choice of Delaware as a litigation forum was entitled to paramount 

consideration. Arbor, 2020 WL 4673832, at *2; Intellectual Ventures, 842 F. 

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Supp. 2d at 754.

Accordingly, this factor weighs against transfer. 

2. Xilinx’s Preferred Venue Weighs Against Transfer As 

Xilinx Filed Two Delaware Cases Seeking The Protection 

And Conveniences Of This Forum

Xilinx’s choice to incorporate in Delaware reflects its recognition that 

Delaware is an appropriate jurisdiction for resolution of commercial disputes 

through litigation. Sci. Telecomm., LLC v. Adtran, Inc., C.A. No. 15-647-SLR,

2016 WL 1650760, at *1 (D. Del. Apr. 25, 2016). As Xilinx argued when 

opposing the motion to transfer in the LSI case: “[a]bsent some showing of a 

unique or unexpected burden, [Delaware] corporations should not be successful in 

arguing that litigation in their state of incorporation is inconvenient.” Ex. 26; see 

also Wesley-Jessen Corp. v. Pilkinton Visioncare, Inc. 157 F.R.D. 215, 218 (D. 

Del. 1993); Sci. Telecomm., 2016 WL 1650760, at *1. 

Here, Xilinx only asserts that the case should be transferred because Xilinx’s 

employees and records are in N.D. Cal. (Motion at 10.) This is not the standard. 

As a Delaware corporation, Xilinx has plainly failed to present any evidence that 

litigating this case in Delaware imposes a unique or unexpected burden on Xilinx. 

Importantly, Xilinx has filed two cases as a plaintiff in Delaware seeking the 

protection of this forum. See Xilinx, Inc. v. LSI Corp., et al., C.A. No. 2009-cv886-MMB; Xilinx, Inc. v. Invention Investment Fund I LP, et al., C.A. No. 2011-

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cv-666-LPS. And, despite complaining about the inconvenience of this forum 

here, it is telling that Xilinx did not even move to transfer venue in eight Delaware 

cases filed against it. Ex. 25. If litigating in Delaware actually imposed a burden 

on Xilinx, it would have moved to transfer every case against it in Delaware, and 

Xilinx would not have chosen to file two of its own cases here.

Accordingly, this factor weighs against transfer. 

3. The Location Of The Activities Giving Rise To WSOU’s

Infringement Claims Is Neutral Because The Claims Arose 

In Multiple States

The next Jumara factor asks “whether the claim arose elsewhere.” Jumara, 

55 F. 3d at 879. This Court has found that when the defendant operates on a 

national or global scale, as Xilinx does here, this factor is neutral. See Genentech,

Inc. v. Amgen Inc., C.A. No. 17-1407-GMS, 2018 WL 503253, at *4 (D. Del. Jan. 

22, 2018).

Xilinx, however, argues that because Xilinx conducts the research, design 

and development of the accused products in the N.D. Cal., the alleged infringing 

activities would have occurred there, not in Delaware. (Motion at 11-13.) Xilinx 

is wrong. As a matter of law, a claim regarding patent infringement arises

“whenever someone has committed acts of infringement, to wit, ‘makes, uses, 

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offers to sell, or sells any patented invention’ without authority.” McRo, Inc., 2013 

WL 6571618, at *5 (internal quotation marks and citations omitted).5

Because Xilinx is a global company with a worldwide distribution network, 

and sells and offers to sell its infringing products nationally in all states, the claims 

at issue may arise in all states, including Delaware. See Treehouse Avatar LLC v. 

Valve Corp., 170 F. Supp. 3d 706, 710 (D. Del. 2016); see also Arbor, 2020 WL 

4673832, at *2 (denying motion to transfer where “Defendant did not assert that 

the accused products were not used or sold in this District”).

As in Arbor, here, Xilinx does not assert that Xilinx’s products are not used 

in Delaware or that Xilinx’s national independent distributors have not sold any 

products in Delaware. Motion generally. Instead, Xilinx only vaguely and 

generally states that “Xilinx has no record of any sales of its products into 

Delaware.” (Wu Declaration at ¶ 9.) Moreover, at such an early stage, this factual 

issue cannot be determined without the benefit of fulsome discovery. 

Accordingly, this factor is neutral. 

5 Xilinx cites to Papst Licensing GmbH & Co. KG v. Xilinx., Inc., 126 F. Supp. 3d 

430 (D. Del. 2015), where the court granted Xilinx’s motion to transfer, for the 

proposition that the allegedly infringing acts by Xilinx had a stronger connection to 

N.D. Cal. than to Delaware. However, Papst is distinguishable because, in that 

case, the plaintiff was a German corporation, not a Delaware corporation (like 

here), and the Court did not confer a paramount consideration to the plaintiff’s 

choice of forum. See Papst, 126 F. Supp. 3d at 430. 

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4. The Physical And Financial Convenience Of The Parties Is 

Neutral Because Xilinx Is A Global Company Incorporated 

In Delaware With Ample Resources 

The next factor to be considered is “the convenience of the parties as 

indicated by their relative physical and financial condition.” Jumara, 55 F. 3d at 

879. In evaluating this factor, the Court should consider the parties’ physical 

location and relative ability to bear litigation cost. Genentech, 2018 WL 503253, 

at *4. 

This Court has held that “it is reasonable to conclude that litigating in 

Delaware will not impose an undue financial burden [on a company] with global 

reach and annual revenues in the billions.” Id. (citing C.A. No. 14-1131-GMS, 

Bristol-Myers Squibb Co. v. Merck & Co., 2014 WL 12531129, at *1 n.1 (D. Del. 

Apr. 29, 2014). Thus, “absent some showing of a unique or unexpected burden, a 

company should not be successful in arguing that litigation in its state of 

incorporation is inconvenient.” Intellectual Ventures, 842 F. Supp. 2d at 756.

Notably, in the LSI case, Xilinx followed this Court’s established precedent, 

and argued that litigating in Delaware does not impose undue financial burden on 

defendants with nationwide and international operations. Ex. 26 at 11

(“Defendants are sophisticated corporations with nationwide and international 

operations. Proceeding in Delaware will impose no undue financial burden on 

Defendants.”).

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Xilinx’s argument in LSI applies with full force here. Xilinx is a global, 

multi-billion-dollar company with approximately 5,000 employees, ample 

corporate resources and worldwide presence. Ex. 23 at 3, 14, 31. Therefore, 

Xilinx cannot credibly argue that it could not easily bear any financial costs 

associated with litigating in Delaware. In its Motion, Xilinx fails to argue 

otherwise. 

Furthermore, since the depositions of Xilinx’s witnesses will take place 

where they reside, the location of Xilinx’s employees in California as a 

convenience factor is irrelevant. See Treehouse, 170 F. Supp. 3d at 712 n.9.

Accordingly, this factor is neutral. 

5. The Availability Of Witnesses For Trial Weighs Against 

Transfer Because There Are Third-Party Witnesses Within 

This Court’s Subpoena Power But None Within The 

Subpoena Power Of N.D. Cal.

The next factor is “the convenience of the witnesses – but to the extent that 

the witnesses may actually be unavailable for trial in one of the fora.” Jumara, 55 

F. 3d at 879. This factor only applies to witnesses who will refuse to testify absent 

a subpoena. Genentech, 2018 WL 503253, at *4. “In addition, ‘witnesses who are 

employed by a party carry no weight,’ because ‘each party is able, indeed, 

obligated to procure the attendance of its own employees for trial.’” Id. (citation 

omitted).

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Here, Xilinx asserts that, except for the named inventors in the Patents-InSuit, Xilinx is not aware of any other non-party witnesses. (Motion at 15.) Xilinx 

also recognizes that the inventors would be available for trial (id. at 16), but asserts 

that, because the inventors are located outside of Delaware and N.D. Cal., then

Delaware would be equally convenient or inconvenient. Id. at 15-16. 

However, the standard is not convenience but availability. See C. R. Bard, 

Inc. v. Angiodynamics, Inc., 156 F. Supp. 3d 540, 546 (D. Del. 2016).

Xilinx has failed to show that any witnesses would be unavailable to testify 

in Delaware. More importantly, there are at least three third-party witnesses (the 

sole inventor and both prosecuting attorneys of the ’950 Patent) who are subject to

this Court’s subpoena power, while there is none that would be subject to the 

subpoena power of N.D. Cal. Waldrop Decl. at ¶¶ 3-8, Exs. 2-7. 

Accordingly, this factor weighs against transfer. 

6. Electronic Discovery Makes Books And Records Readily 

Available In Any District, Thus This Factor Is Neutral

The next factor the Court should consider is the “location of books and 

records (similarly limited to the extent that the files could not be produced in 

[Delaware]).” Jumara, 55 F.3d at 879. 

This Court has recognized that “virtually all businesses maintain their books 

and records in electronic format readily available for review and use at any 

location.” C. R. Bard, 156 F. Supp. 3d at 546. To the extent records are kept in 

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hard copy, it would be the plaintiff’s burden to travel for an inspection and pay for 

copies. See Sci. Telecomm., 2016 WL 1650760, at *1. 

Here, Xilinx asserts that its relevant records are located in N.D. Cal. but fails 

to show that those documents cannot be made available in Delaware. (Motion at 

16.)

To the contrary, in the past, Xilinx has taken the clear position that the 

forum location has no impact on document production or access:

The location of documents and other sources of proof do 

not favor the Southern District of New York. In the age 

of electronic discovery, the ultimate location of trial will 

have no impact on document production or access to 

other sources of proof. See e.g., ICU Med., Inc. v. Rymed 

Techs., Inc., No. 07-468-JJF, 2008 WL 205307, at *3 (D. 

Del. Jan. 23, 2008)....

Ex. 26 at 11. 

Xilinx should not be allowed to turn 180 degrees on this issue simply 

because the contrary argument is beneficial to Xilinx in the instant case. 

Accordingly, this factor is neutral. 

B. The Jumara Public Interest Factors Weigh Against Transfer

1. The Factor Concerning Enforceability Of Judgment Is 

Neutral

Xilinx has not demonstrated that a judgment would be unenforceable in 

Delaware. Accordingly, this factor is neutral. 

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2. The Practical Considerations Weigh Against Transfer

The “practical considerations that could make the trial easy, expeditious, 

inexpensive” weigh against transfer. Jumara, 55 F.3d. at 879. Delaware is a more 

time-efficient and inexpensive forum than N.D. Cal., especially since Xilinx has 

already filed two 12(b)(6) motions. While the pending 12(b)(6) motion may be 

transferred if venue is transferred, the court may require supplemental briefing to 

address any applicable California law. The transfer thus may result in increased 

costs and a waste of judicial resources. 

Xilinx misleadingly cites to Illumina Inc. v. Complete Genomics, Inc., 2010 

WL 4818083, at *6 (D. Del. Nov. 9, 2010), for the proposition that the practical 

consideration factor supports transfer under the present circumstances as Xilinx’s 

principal place of business and witnesses are in California. In Illumina, the court 

reached its conclusion on the practical consideration factor only because both

parties operated their businesses in California, which is clearly not the case here. 

Illumina, 2010 WL 4818083, at *6.

Accordingly, this factor weighs against transfer. 

3. Relative Administrative Difficulties Weigh Against Transfer

The next public factor that the Court should consider is the “relative 

difficulty in the two fora resulting from court congestion.” Jumara, 55 F.3d at 

879. 

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In its Motion, Xilinx simply concludes that this factor is neutral without 

providing any supporting evidence. However, the statistics show that, as of June 

30, 2020, Delaware has 611 pending actions per judgeship while N.D. Cal. has 870 

such actions. Ex. 27. Further, the median time from filing to disposition in 

Delaware is 5.7 months, while in N.D. Cal., that time is 10.1 months. Ex. 27. 

Accordingly, this factor weighs against transfer.

4. The Local Interest Factor Is Neutral Because Patent 

Litigation Is Not A Local Controversy

In patent litigation, the local interest factor is typically neutral, “because 

patent issues do not give rise to a local controversy or implicate local interests.” 

TriStrata Tech., Inc. v. Emulgen Labs, Inc., 537 F. Supp. 2d 635, 643 (D. Del. 

2008).

Here, Xilinx’s worldwide distribution network of infringing products 

involves national and global interests and thus weighs against transfer or is neutral 

at best. Versata Software, Inc. v. Callidus Software Inc., 944 F. Supp. 2d 357, 361 

(D. Del. 2013) (denying motion to transfer where local interest did not favor 

transfer given that defendant sold its product throughout the United States). 

Xilinx argues that, although the local interest factor is typically neutral, this 

should not be the case here because WSOU has sued Delaware companies outside 

of Delaware. (Motion at 19.) This argument makes no sense. First, this Court has 

explicitly held that patent rights are national in scope. See Helicos, 858 F. Supp. 

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2d at 375. And second, Xilinx has failed to show otherwise or provide any 

supporting authority. Moreover, Delaware has the strongest interest in 

adjudicating disputes among its corporate citizens. Autodesk Can. Co. v. 

Assimilate, Inc., C.A. No. 08-587-SLR-LPS, 2009 WL 3151026, at *9 (D. Del. 

Sept. 29, 2009). 

Accordingly, this factor is neutral.

5. Delaware Public Policy Encourages Delaware Companies 

To Resolve Business Disputes In Delaware And Weighs 

Against Transfer

“The public policy of Delaware encourages the use by Delaware 

corporations [like the parties here] of Delaware as a forum for resolution of 

business disputes.” Intellectual Ventures, 842 F. Supp. 2d at 760. However, 

Xilinx disregards this fundamental principle and concludes that the public policy 

factor is neutral or slightly in favor of Xilinx because WSOU has sued Delaware 

companies outside of Delaware contrary to the public policy of encouraging 

dispute resolution in Delaware. (Motion at 20.) Xilinx’s conclusion is nonsensical 

and unsupported.

Accordingly, this factor weighs against transfer. 

6. The Factor Concerning The Judges’ Familiarity With State 

Law Is Inapplicable And Thus Neutral

This is a patent case, and not a diversity case requiring the application of 

state law. The patent claims here are governed by federal law, which all district 

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judges are capable of applying. See In re TS Tech USA Corp., 551 F.3d 1315, 

1320 (Fed. Cir. 2008) Accordingly, this factor is neutral. 

C. Xilinx Failed To Meet Its Heavy Burden Of Showing That The 

Jumara Factors Weigh Strongly In Favor Of Transfer

A balancing of the twelve Jumara factors demonstrates that this case should 

not be transferred to N.D. Cal. As detailed above, six factors weigh against 

transfer, six factors are neutral, and zero factors favor transfer. 

Because Xilinx failed to meet its heavy burden of establishing that the 

Jumara factors weigh strongly in favor of transfer, the Motion must be denied. See 

Illumina, 2010 WL 4818083, at *2 (“transfer will be denied if the factors are 

evenly balanced or weigh slightly in favor of transfer.”). See also Rosebud LMS,

Inc. v. Salesforce.com, Inc., C.A. No. 17-1712-CFC, 2018 WL 6061343, at *7 (D. 

Del. Nov. 20, 2018) (denying transfer where three factors weigh against transfer, 

four factors are neutral, and five factors weigh in favor of transfer); LoganTree LP 

v. Omron Healthcare, Inc., C.A. No. 18-1617-MN, 2019 WL 4538730, at *8 (D. 

Del. Sept. 19, 2019) (denying transfer where three factors weigh against transfer, 

seven factors are neutral, and two factors weigh in favor of transfer).

VI. CONCLUSION

For the foregoing reasons, WSOU respectfully requests that this Court deny 

Xilinx’s motion to transfer venue to N.D. Cal.

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Dated: January 20, 2021 Respectfully submitted,

OF COUNSEL:

Jonathan K. Waldrop

Darcy L. Jones

Marcus A. Barber

ThucMinh Nguyen

John W. Downing

Heather S. Kim

Jack Shaw

KASOWITZ BENSON TORRES LLP

333 Twin Dolphin Drive, Suite 200

Redwood Shores, CA 94065

(650) 453-5170

Shelley Ivan

KASOWITZ BENSON TORRES LLP

1633 Broadway

New York, NY 10019

(212) 506-1700

Paul G. Williams

KASOWITZ BENSON TORRES LLP

1230 Peachtree Street, NE, Suite 2445

Atlanta, GA 30309

DEVLIN LAW FIRM LLC

By: /s/ James M. Lennon

James M. Lennon (No. 4570)

1526 Gilpin Avenue

Wilmington, DE 19806

(302) 449-9010

jlennon@devlinlawfirm.com

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WORD COUNT CERTIFICATION 

The undersigned counsel hereby certifies that WSOU Investments, LLC’s 

Opposition to Xilinx, Inc.’s Motion to Transfer Venue Pursuant to 28 U.S.C. 

§ 1404 contains 4991 words, which were counted by James M. Lennon by using 

the word count feature in Microsoft Word, in 14-point Times New Roman font. 

The foregoing word count does not include the cover page, tables of contents or 

authorities, or the counsel blocks.

Dated: January 20, 2021 /s/ James M. Lennon

James M. Lennon (No. 4570)

CERTIFICATE OF SERVICE

The undersigned certifies that a copy of the foregoing document was 

served on all parties who have appeared in this case on January 20, 2021, via the 

Court’s CM/ECF system.

/s/ James M. Lennon

James M. Lennon (No. 4570)

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