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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

UNIFICATION TECHNOLOGIES LLC,

 Plaintiff,

v. 

MICRON TECHNOLOGY, INC., et al.,

 Defendants.

6:20-cv-500-ADA

OPINION & ORDER

Came on for consideration this date are (1) Defendants’ Motion to Strike Plaintiff’s 

Response to Defendants’ Motion to Transfer, and in the alternative, Reply in Support of 

Defendants’ Motion to Transfer, ECF No. 106 (the “Motion to Strike”), and (2) Defendants’ 

Renewed Motion for Intra-District Transfer of Venue to the Austin Division of the Western 

District of Texas, ECF No. 98 (the “Renewed Transfer Motion”). After careful consideration of 

the motions, the Parties’ briefs, and the applicable law, the Court DENIES Defendants’ Motion to 

Strike and GRANTS Defendants’ Renewed Motion for Intra-District Transfer.

I. BACKGROUND

On June 5, 2020, Unification Technologies, LLC (“UTL”) filed suit against Micron 

Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC 

(collectively, “Micron”) in this Division, alleging patent infringement.

On September 10, 2020, the Parties stipulated to transfer this Action to the Austin Division 

“for the convenience of the parties and witnesses and in the interest of justice, pursuant to 28 

U.S.C. § 1404(b).” ECF No. 31 (the “Stipulation”) at 1. The Stipulation continued, “Micron and 

UTL request that an Order be entered directing the Clerk of Court to transfer the above-captioned 

case to the Austin Division but to remain on the docket of this Court.” Id. at 1–2.

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On September 25, 2020, before the Court acted on the Stipulation, Micron filed a Motion 

for Intra-District Transfer of Venue to the Austin Division of the Western District of Texas, 

analyzing convenience under 28 U.S.C.§ 1404(a). ECF No. 34 (the “Original Transfer Motion”). 

UTL did not oppose the motion “but reserve[d] the right to file a response after reviewing Micron’s 

brief.” Id. at 1. It did not exercise that right.

On March 5, 2021, the undersigned communicated during this Action’s Markman hearing:

I am aware of the motion to transfer to Austin. We have been slow 

to transfer things to Austin in large part because of the difficulties 

they have had in reopening because of COVID. And those—even 

though a trial down the road, whenever this trial would be in, let’s 

say, in a year or less, we would assume we won’t have COVID 

issues, it’s still—Austin is going to have a tough time getting 

restarted. And so, I’m going to delay ruling on that motion until we 

get closer to trial. But I can assure the parties that if it’s appropriate 

to transfer this case to Austin, that’s what I’m going to do.

ECF No. 75 at 38:9–20. Then, on May 6, 2021, this Court entered a text order denying the Original 

Transfer Motion without prejudice, instructing Micron to “re-file this motion as trial approaches 

so the Court can evaluate if transfer is proper under § 1404 and whether the Austin Courthouse 

will be open in time for this trial.”

On November 29, 2021, Micron filed its Renewed Transfer Motion, simply re-urging its 

Original Transfer Motion. See ECF No. 98. The next day, the Court e-mailed the Parties, stating 

that this Action would not remain with the undersigned if transferred. In response, UTL claimed

it conditioned its Stipulation and non-opposition to the Original Transfer Motion on the Court’s 

earlier representations to the contrary. UTL reasoned that this new development entitled it to 

respond to the Renewed Transfer Motion. Micron disagreed, asserting that UTL’s failure to 

respond to the Original Transfer Motion waived any opposition to the Renewed Transfer Motion. 

The Court elected to resolve this dispute through motion practice.

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On December 13, 2021, UTL filed an opposition to the Renewed Transfer Motion. ECF 

No. 103. Micron then moved to strike that opposition while, in the alternative, replying to it. ECF 

No. 106. UTL responded to the Motion to Strike on January 3, 2022, ECF No. 109, to which 

Micron replied on January 6, 2022, ECF No. 110. The Renewed Transfer Motion and Motion to 

Strike are now ripe for judgment.

II. LEGAL STANDARD

In patent cases, motions to transfer under § 1404(a) are governed by the law of the regional 

circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). Title 28 U.S.C. § 1404(a) 

provides that, “[f]or the convenience of parties and witnesses, in the interest of justice, a district 

court may transfer any civil action to any other district or division where it might have been 

brought or to any district or division to which all parties have consented.” “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 fairness.’” Stewart Org., Inc. v. 

Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)). 

“The preliminary question under § 1404(a) is whether a civil action ‘might have been 

brought’ in the [transfer] destination venue.” In re Volkswagen, Inc., 545 F.3d 304, 312 (5th Cir. 

2008) (“Volkswagen II”). If the destination venue would have been a proper venue, then “[t]he 

determination of ‘convenience’ turns on a number of public and private interest factors, none of 

which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358 

F.3d 337, 340 (5th Cir. 2004). The private factors include: “(1) the relative ease of access to sources 

of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the 

cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a 

case easy, expeditious and inexpensive.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) 

(“Volkswagen I”) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)). The public 

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factors include: “(1) the administrative difficulties flowing from court congestion; (2) the local 

interest in having localized interests decided at home; (3) the familiarity of the forum with the law 

that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws of the 

application of foreign law.” Id. The weight the Court gives to each of these assorted convenience 

factors will necessarily vary from case to case. See Burbank Int’l, Ltd. v. Gulf Consol. Int’l, Inc., 

441 F. Supp. 819, 821 (N.D. Tex. 1977). A court should not deny transfer where “only the 

plaintiff’s choice weighs in favor of denying transfer and where the case has no connection to the 

transferor forum and virtually all of the events and witnesses regarding the case . . . are in the 

transferee forum.” In re Radmax, Ltd., 720 F.3d 285, 290 (5th Cir. 2013).

The burden to prove that a case should be transferred for convenience falls squarely on the 

moving party. In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010). The burden that a 

movant must carry is not that the alternative venue is more convenient, but that it is clearly more 

convenient. Volkswagen II, 545 F.3d at 314 n.10. While “clearly more convenient” is not explicitly 

equivalent to “clear and convincing,” the moving party “must show materially more than a mere 

preponderance of convenience, lest the standard have no real or practical meaning.” Quest NetTech 

Corp. v. Apple, Inc., No. 2:19-cv-118, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27, 2019). Yet, 

the Federal Circuit has clarified that, for a court to hold that a factor favors transfer, the movant 

need not show that that factor clearly favors transfer. In re Apple Inc., 979 F.3d 1332, 1340 (Fed. 

Cir. 2020).

III. ANALYSIS

A. Motion to Strike

Micron argues that because UTL originally stipulated to transfer and did not oppose the 

Original Transfer Motion, UTL’s opposition to the Renewed Transfer Motion should be struck as 

having been waived. ECF No. 106 at 1–2. UTL responds, noting how Micron did not “cite any 

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authority for its claim that the renewed motion to transfer should be deemed a retroactive filing.” 

ECF No. 110 at 1. UTL does not dispute that it waived opposition to the Original Transfer Motion 

but argues instead that its previous waiver does not preclude opposition to subsequent transfer 

motions. See id.

Micron’s Motion to Strike is DENIED. The Court will not treat the Renewed Transfer 

Motion as relating back to the Original Transfer Motion such that UTL’s non-opposition to the 

latter precludes UTL from opposing the former. At the March 5, 2021 Markman hearing, the Court 

explained how, given the state of the pandemic and its effect on the Austin courthouse, deferring 

the transfer question was efficient from an administrative standpoint. But it also suggested that 

facts may arise that would change the transfer calculus. In that same spirit, UTL should not be 

barred from commenting on recent developments affecting that calculus merely because UTL

previously elected, based on the factual landscape at that time, to waive opposition to transfer.

The Court holds so despite Micron’s reliance on Federal Circuit jurisprudence indicating 

“that courts should evaluate the transfer factors as of the time the plaintiff filed the lawsuit.” ECF 

No. 106 at 1. Micron suggests that the § 1404(a) inquiry cannot contemplate facts arising after an 

action commences. This Court disagrees. To be sure, the Federal Circuit has endorsed this position 

in non-precedential opinions. See In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir. 2013) 

(“Motions to transfer venue are to be decided based on ‘the situation which existed when suit was 

instituted.’” (quoting Hoffman v. Blaski, 363 U.S. 335, 343 (1960))); In re Netscout Sys., No. 2021-

173, 2021 U.S. App. LEXIS 30500, at *12 (Fed. Cir. Oct. 13, 2021) (“[W]e have rejected a district 

court’s reliance on considerations of judicial economy arising after the filing of the lawsuit or the 

transfer motion . . . .”). These opinions ultimately rely on Hoffman v. Blaski, 363 U.S. 335, 343 

(1960), but in doing so, overextend it.

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The Hoffman opinion held that courts must judge the transferee forum’s personal 

jurisdiction without reference to post-complaint facts; it did not bar those facts from the 

convenience analysis. The dispute in Hoffman focused on § 1404(a), which then read: “For the 

convenience of parties and witnesses, in the interest of justice, a district court may transfer any 

civil action to any other district or division where it might have been brought.” See Hoffman, 363 

U.S. at 335. More specifically, the Court was concerned with the effect of the past-participial 

phrase, “where it might have been brought.” It concluded that an action “might have been brought” 

only in a forum where jurisdiction was appropriate when the plaintiff filed its complaint. See id. at 

342–43.

No past-participial phrase affects the “convenience” portion of § 1404(a), “[f]or the 

convenience of parties and witnesses, in the interest of justice, a district court may transfer any 

civil action.” There is no suggestion, then, that the convenience analysis must be retrospective. 

The Hoffman opinion did not even purport to interpret the “convenience” language of § 1404(a); 

convenience was not a disputed issue. This Court refuses to hold, then, that the convenience 

analysis is fixated on pre-complaint facts merely because the evaluation of where an action “might 

have been brought” must be.

1 Cf. Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 34 (1988) (Scalia, 

J., dissenting) (“[T]he courts in applying § 1404(a) have examined a variety of factors, each of 

which pertains to facts that currently exist or will exist . . . .”); Seagen Inc. v. Daiichi Sankyo Co., 

No. 2:20-CV-00337-JRG, 2021 U.S. Dist. LEXIS 156331, at *5 (E.D. Tex. Apr. 19, 2021) 

(“[W]hether to transfer a case for convenience bears primarily on post-complaint matters.”). 

1 Which is not to say that a court must weigh all post-complaint facts. See In re Netscout, 2021 

U.S. App. LEXIS 30500, at *12-13 (“To the extent that post-motion events may ever be considered 

in a section 1404(a) analysis, we must guard against manipulative measures designed to defeat 

transfer to a more convenient venue.”).

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Holding otherwise permits transfer to a proper forum that, at the time of transfer, is inconvenient—

so long as it was convenient when the suit was filed. It cannot be said that such a transfer is “[f]or 

the convenience of parties and witnesses.” In determining the propriety of the Renewed Transfer 

Motion, this Court will consider facts arising after the Original Transfer Motion and it will not 

preclude UTL’s arguments on those facts.

B. UTL’s Transfer Arguments

UTL did not, however, point to any facts arising between the filing of the Original Transfer 

Motion and the Renewed Transfer Motion that could motivate UTL to disavow in earnest its

original position that Austin was more convenient than Waco. More than a year ago, UTL went 

above and beyond in stipulating that transfer to Austin would be “for the convenience of the parties 

and witnesses and in the interest of justice.” ECF No. 31 at 1. While § 1404(a)’s text requires a 

party seeking transfer to establish such “convenience” and “interest of justice,” Micron and UTL 

bore no such burden, having applied under 28 U.S.C. § 1404(b), which requires only a stipulation

for transfer. Yet UTL still agreed to comment on Austin’s convenience. Consistent with the 

Stipulation, UTL did not register any opposition to Micron’s Original Transfer Motion under 

§ 1404(a). See ECF No. 34 at 1. The Court accords this Stipulation and non-opposition great 

weight in determining the propriety of transfer now. UTL cannot so easily cast this conduct aside; 

it is probative of the balance of conveniences at the time (even if UTL premised its conduct on this 

Action remaining with the undersigned).

UTL has not shown how that balance of conveniences has changed, if at all, since the 

Original Transfer Motion. In its opposition to Micron’s Renewed Transfer Motion, UTL primarily 

challenged the sufficiency of the evidence and allegations supporting Micron’s § 1404(a) analysis.

These objections, which could have been raised when Micron filed its Original Transfer Motion,

smack of gamesmanship, diminishing their force. UTL did allude to recent developments affecting 

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the transfer analysis, but only in the context of the practical-problems and docket-congestion 

factors.

UTL argued that the practical-problems factor favors maintaining this Action here under a 

judicial economy rationale. See ECF No. 103 at 7–8. This Action has reached an advanced stage 

so maintaining it here serves judicial economy. Having become familiar with this Action’s 

technical subject matter and legal issues, this Court is best suited to ferry this Action through to 

trial. But that is only so because the Court deferred final resolution of the transfer question, 

instructing Micron to reurge its § 1404(a) motion nearer to trial. The Court will not wield a delay 

of its own making to defeat Micron’s Renewed Transfer Motion. To the contrary, the Court credits 

Micron for originally seeking transfer relatively early on, in September 2021, well before this 

Court issued an order on Micron’s motion to dismiss, ECF No. 55 (issued January 28, 2021), and 

around half-a-year before the Markman hearing, ECF No. 66 (held March 5, 2021). The 

developments UTL relies on, therefore, cannot, under these circumstances, affect this factor.

UTL also argues that the docket-congestion factor favors maintaining this Action here at 

least because “the Austin Division does not appear to have completed a jury trial during the 

pandemic,” while this Division has completed several. The Federal Circuit has recently counseled 

that, even if the pandemic is generating a backlog of trials in Austin (an issue not yet affecting

Waco), this factor “should not alone outweigh all . . . other factors.” In re Apple Inc., No. 2021-

187, 2021 U.S. App. LEXIS 29659, at *7 (Fed. Cir. Oct. 1, 2021) (quoting In re Genentech, Inc., 

566 F.3d 1338, 1347 (Fed. Cir. 2009)). (This Court did not have the benefit of this guidance when 

denying the Original Transfer Motion.) Accordingly, this development has little effect on the 

transfer analysis. See also id. (deeming this factor the “most speculative”).

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The Court is not persuaded that these developments could motivate UTL to disavow its 

original position that transfer was “for the convenience of the parties and witnesses and in the 

interest of justice.” In view of the evidence and arguments in Micron’s Original Transfer Motion

(supplemented by new evidence in Micron’s reply in support of the Renewed Transfer Motion),

the representations in the Stipulation, UTL’s non-opposition to the Original Transfer Motion, 

intervening authority like In re Apple, and UTL’s failure to adduce facts arising after the Original 

Transfer Motion sufficient to overturn the Parties’ earlier consensus that Austin was clearly more 

convenient, the Court is persuaded that transfer to Austin accords with § 1404(a). The Court 

therefore GRANTS Micron’s Renewed Transfer Motion.

IV. CONCLUSION

It is therefore ORDERED that Micron’s Motion to Strike [ECF No. 106] is DENIED and 

Micron’s Renewed Transfer Motion [ECF No. 98] is GRANTED. The docket clerk is instructed 

to transfer this Action to the Austin Division of this District.

SIGNED this 10th day of January, 2022.

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

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