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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

USC IP PARTNERSHIP, L.P.,

 Plaintiff,

v.

FACEBOOK, INC.,

 Defendant.

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6-20-CV-00555-ADA

ORDER DENYING MOTION TO TRANSFER

For consideration by this Court this date is Defendant Facebook, Inc.’s Opposed Motion 

to Transfer Venue to the Austin Division pursuant to 28 U.S.C. § 1404(a) that was filed on 

September 25, 2020. The Court has considered Facebook’s Motion to Transfer, Plaintiff USC IP 

Partnership, L.P.’s Response to the Motion, and Facebook’s Reply. After careful consideration

of the Motion, the Parties’ briefs, and the applicable law, the Court is of the opinion that the 

Motion should be DENIED. 

I. INTRODUCTION

A party seeking a transfer to an allegedly more convenient forum carries a significant 

burden. Babbage Holdings, LLC v. 505 Games (U.S.), Inc., No. 2:13-CV-749, 2014 U.S. Dist. 

LEXIS 139195, at *12–14 (E.D. Tex. Oct. 1, 2014) (stating the movant has the “evidentiary

burden” to establish “that the desired forum is clearly more convenient than the forum where the 

case was filed”). Facebook’s Motion to Transfer to the Austin Division constitutes an intradistrict request to transfer. Neither Facebook nor USC contests that venue is proper in the 

Western District of Texas (“WDTX”). See Def.’s Mot. at 4, ECF No. 16; Pl.’s Original Compl.

at 2, ECF No. 1 at ¶ 5. The burden that a movant must carry is not that the alternative venue is 

more convenient, but that it is clearly more convenient. In re Volkswagen of Am., Inc., 545 F.3d 

304, 314 n. 10 (5th Cir. 2008) (hereinafter “Volkswagen II”). Facebook moved to have this case 

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transferred to the Austin Division of the WDTX. This Court finds that Facebook fails to show 

that transfer is warranted.

II. LEGAL STANDARD

Title 28 U.S.C. § 1404(a) provides that, “for the convenience of parties and witnesses, 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 the parties have consented.” If the civil action 

might have been brought in the destination venue, in the Fifth Circuit, the “[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) 

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

(1982)). The public 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. Courts evaluate these factors 

based on “the situation which existed when suit was instituted.” Hoffman v. Blaski, 363 U.S. 335, 

343 (1960).

The burden the movant must show is that the transferee venue is clearly more convenient 

than the transferor venue. Volkswagen II, 545 F.3d at 314. The plaintiff’s choice of venue is not 

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absolute. However, “when the transferee venue is not clearly more convenient than the venue 

chosen by the plaintiff, the plaintiff’s choice should be respected.” Id. at 315.

III. BACKGROUND

Plaintiff USC is a Texas company with its principal place of business in Irving, Texas. 

Pl.’s Resp. at 1–2. Defendant Facebook is incorporated under Delaware law with its principal 

place of business in Menlo Park, California. Def.’s Mot. at 1–2.

USC filed this lawsuit on June 22, 2020, alleging infringement of U.S. Patent No. 

8,645,300 (“the ’300 patent”). Pl.’s Compl. According to USC, the ’300 patent “teaches systems 

and methods for processing information from visitors to one or more websites. Specifically, 

determining a visitor’s intent and using a visitor’s intent to predict and suggest webpages for the 

visitor.” Id. at 3 ¶ 8. “Facebook denies any and all allegations of infringement and also denies 

that the complaint has adequately pled infringement with respect to any limitation of any asserted 

claim.” Def.’s Mot. to Dismiss, ECF No. 9 at 1.

IV. ANALYSIS

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

brought’ in the destination venue.” Volkswagen II, 545 F.3d at 312. For the purposes of this case, 

Facebook does not dispute that venue is proper in the Western District of Texas in either the 

Waco or Austin divisions. Def.’s Mot. at 2. Whether a Court should grant a motion to transfer is 

determined through a careful consideration of public and private interest factors. Volkswagen I, 

371 F.3d at 203.

Facebook argues that four of the factors favor transfer to the Austin Division: (1) ease of 

access to sources of proof; (2) cost of attendance for willing witnesses; (3) other practical 

problems; (4) and local interest. Def.’s Mot. at 4. Facebook asserts that the remaining four 

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factors are neutral. Id. It is the burden of the party requesting the transfer to show that the 

transferee court is clearly more convenient, warranting the transfer of venue. Babbage Holdings, 

LLC v. 505 Games (U.S.), Inc., No. 2:13-CV-749, 2014 U.S. Dist. LEXIS 139195, at *12–14 

(E.D. Tex. Oct. 1, 2014) (stating the movant has the “evidentiary burden” to establish “that the 

desired forum is clearly more convenient than the forum where the case was filed”).

USC argues that Facebook has not met its burden that the Austin Division is “clearly 

more convenient.” Pl.’s Resp. at 6; see also Volkswagen II, 545 F.3d at 314. USC states that “at 

least three of the private interest factors weigh against transfer, and the remaining factors are 

neutral.” Id.

A. The Private Interest Factors Weigh Strongly Against Transfer.

i. The Relative Ease of Access to Sources of Proof

“In considering the relative ease of access to proof, a court looks to where documentary 

evidence, such as documents and physical evidence, is stored.” Fintiv Inc. v. Apple Inc., 2019 

WL 4743678, at *2. The pertinent question is “relative ease of access, not absolute ease of 

access.” In re Radmax, 720 F.3d 285, 288 (5th Cir. 2013) (emphases in original). “In patent 

infringement cases, the bulk of the relevant evidence usually comes from the accused infringer. 

Consequently, the place where the defendant’s documents are kept weighs in favor of transfer to 

that location.” In re Apple Inc., 979 F.3d 1332, 1340 (Fed. Cir. 2020) (citing In re Genentech, 

566 F.3d 1338, 1345 (Fed. Cir. 2009)). Here, the Court finds that relative ease of access to 

sources of proof is neutral and does not favor transfer.

Facebook alleges that no pertinent documents are likely to be found in the Waco Division

because neither Facebook nor USC have relevant business operations in the Waco Division. 

Def.’s Mot. at 5. Facebook asserts that “this alone supports transfer.” Id. The Court disagrees.

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The absence of relevant documentation in a particular venue does nothing on its own to establish 

that another requested venue is clearly more convenient. See Volkswagen II, 545 F.3d at 314.

Facebook subsequently concedes that a majority of any relevant evidence would come from 

Northern California or outside of Texas. Def.’s Mot. at 5. This concession undermines 

Facebook’s request to transfer, given that most relevant evidence will be located in the Northern 

District of California and not the Austin Division. Facebook does state that, “to the extent that 

there are any relevant documents or materials in the Western District of Texas, those are located 

in Austin.” Id. However, this statement is not sufficiently specific to allow this Court to 

adequately determine that the relative ease of access to sources of proof factor weighs in favor of 

transfer. 

1. Sources of proof must be identified with specificity.

“Vague assertions and unknown relevance and location of potential sources of evidence”

results in a court being unable to weigh the relative ease of access to sources of proof factor in 

its transfer of venue analysis, because “the weighing of this factor would be merely speculative.”

Astute Tech., LLC v. Learners Digest Int’l LLC, 2014 U.S. Dist. LEXIS 197246, at *30 (citing In 

re Apple Inc., 743 F.3d 1377, 1379 (Fed. Cir. 2014)).

Neither party points to the location of any specific documentation or sources of proof. 

2. Witnesses are not a source of proof.

Both Facebook and USC discuss witness availability and ease of attendance for witnesses 

under this factor. This Court has established that witnesses are not properly considered under this 

factor. Kuster v. Western Digital Tech., Inc., No. 6:20-cv-00563-ADA (W.D. Tex. February 9, 

2021); Netlist, Inc. v. SK hynix Inc. et al, No. 6:20-cv-00194-ADA (W.D. Tex. February 2, 2021) 

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(“The first private factor, ease of access to sources of proof, considers ‘documents and physical 

evidence’ as opposed to witnesses.”) (emphasis added).

Because neither party points to specific documentation or sources of proof, the Court 

considers this factor to be neutral. 

ii. The Availability of Compulsory Process to Secure the Attendance of Witnesses

Both parties agree that this factor is neutral. Def.’s Mot. At 8; Pl.’s Resp. at 12. The 

Court agrees.

iii. The Cost of Attendance for Willing Witnesses

The Court should consider all potential material and relevant witnesses. See Alacritech 

Inc. v. CenturyLink, Inc., No. 2:16-cv-693, 2017 WL 4155236, at *5 (E.D. Tex. Sept. 19, 2017). 

“When the distance between an existing venue for trial of a matter and a proposed venue § 

1404(a) is more than 100 miles, the factor of inconvenience of witnesses increases in direct 

relationship to the additional distance to be traveled.” Id. (quoting In re Genentech, Inc., 566 

F.3d 1338, 1342 (Fed. Cir. 2009)); see also In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. 

Cir. 2008) (quoting Volkswagen I, 371 F.3d at 204–05). Under 5th Circuit precedent, this Court 

applies the “100–mile rule” in determining this factor. 

Facebook advances three arguments supporting its assertion that this factor weighs in 

favor of transfer: (1) the majority of relevant evidence is likely to come from the accused 

infringer, Facebook, and the Austin Division is more convenient for Facebook’s witnesses; (2) 

Plaintiff chose to file in the Western District of Texas rather than the Northern District (where 

Dallas is located) and, therefore, acquiesced to minor costs imposed on its witnesses; and (3) the

lack of direct flights to the Waco Division. Def.’s Reply at 4; see also Def.’s Mot. at 6–7.

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The Court will address each argument in turn. First, Facebook states that the bulk of 

relevant evidence is likely to come from Facebook, and that the Austin Division is more 

convenient for Facebook’s witnesses.. Id. However, Facebook fails to provide specific 

information as to the identity of probable witnesses or even classes of witnesses. The assertion 

that the Austin Division would be more convenient for Facebook’s witnesses without more is

pure conjecture and lacks adequate specificity for the Court to accord it any weight.

Second, Facebook contends that USC chose to file in the Waco Division, and therefore 

acquiesced to any costs necessarily imposed on USC’s witnesses traveling from Dallas to the 

Waco Division. Facebook contends that it is subsequently improper for USC to argue that it

would be inconvenienced by a transfer of the case to the Austin Division. Id. Facebook states, 

“Plaintiff baldly asserts that transferring this case to the Austin Division would impose a material 

change in inconvenience on its witnesses and inventors in North Texas by causing them to travel 

an additional 100 miles.” Id; see also Def.’s Reply at 4, n. 5. The Court disagrees. This Court is 

bound by Fifth Circuit precedent to apply the 100–mile rule which states thatinconvenience 

increases in direct relationship to the additional distance traveled. In re Radmax, Ltd., 720 F.3d 

285, 288 (5th Cir. 2013); Volkswagen I, 371 F.3d at 204–05. In applying the 100-mile rule, the

Court finds that an additional 100 miles of travel for USC’s witnesses increases the 

inconvenience in direct relationship and does impose a material change. 

Third, Facebook’s main argument under this factor is focused on the inability of 

witnesses to obtain direct flights into Waco. Def.’s Mot. at 6–7. Facebook maintains that direct 

flights are not generally available to Waco from the Northern District of California, and that 

these flights would require willing witnesses to access connecting flights usually out of Dallas or 

Austin to arrive in Waco for any trial pertaining to this case. Id. The Court disagrees with 

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Facebook that a trial in the Waco Division would be a significant cost imposed on Facebook. 

While the Court may consider factors such as the cost of travel accommodations for witnesses, 

including flights and hotels, these factors are highly impacted by various market forces that are 

unrelated to any particular venue. See Netlist, Inc. v. SK hynix Inc. et al, No. 6:20-cv-00194-

ADA, at 12–13 (W.D. Tex. February 2, 2021). As such, costs of flights and hotel 

accommodations are generally accorded very little persuasive weight under analysis of this 

factor. 

For these reasons, this Court considers the cost of attendance for willing witnesses to be a 

neutral factor. 

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

Facebook argues that because the case is “still in its early stages and discovery has not 

begun, a transfer to the Austin division would not result in any meaningful delay or prejudice.” 

Def.’s Mot. at 7. Facebook then asserts that this weighs in favor of transfer to the Austin 

Division. Id. The fact that a transfer would not result in a delay of the case does not equate to 

support for the transfer of venue and, without more, merely results in this factor being resolved 

as neutral. 

This factor may well be a component undergirding a denial of transfer when a case is not 

in its early stages. See Uniloc2017 LLC v. Apple Inc., 6:19-cv-00532-ADA (W.D. Tex. Sept. 10, 

2019) (denying transfer based, in part, on judicial economy because case is not in early stages 

(i.e., claim construction order issued, trial date set) and significant court congestion is present in 

transferee district). However, there is no reverse implication that because a case is in its early 

stages, that a transfer of venue is supported. As such, the Court considers this factor to be 

neutral.

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B. The Public Interest Factors Weigh Strongly Against Transfer.

i. The Administrative Difficulties Flowing from Court Congestion 

Both parties agree that this factor is neutral. Def.’s Mot. At 8; Pl.’s Resp. at 12. The 

Court agrees.

ii. The Local Interest in Having Localized Interests Decided at Home 

Under this factor, the Court must evaluate whether there is a local interest in deciding 

local issues at home. Volkswagen II, 545 F.3d at 317. “A local interest is demonstrated by a 

relevant factual connection between the events and the venue.” Word to Info, Inc. v. Facebook, 

Inc., No. 3:14-cv-04387-K, 2015 WL 13870507, at *4 (N.D. Tex. Jul. 23, 2015).

Facebook emphasizes the fact that it has offices and facilities located in Austin and that 

neither Facebook nor USC have business facilities in the Waco Division. Def.’s Mot. at 7–8. Due 

to the offices and facilities in the Austin Division, Facebook asserts that the Austin Division has 

a “more particularized interest and connection to the outcome” than does the Waco Division. Id. 

USC rebuts stating: (1) the accused technology is prevalent throughout the U.S.; (2) 

Facebook has failed to provide specific information as to the number of employees working out 

of the Austin offices given the COVID-19 pandemic; and (3) Facebook’s Austin offices are not 

alone sufficient to justify transfer. Pl.’s Resp. at 11–12. 

First, to the extent that Facebook has employees currently working out of its Austin 

offices, those employees very likely reside near or within Austin, and there is a valid local 

interest in having this case decided in the Austin Division. Second, the Court is not persuaded 

that, “given the lack of evidence submitted by Facebook, there is no way to know whether the 

local interest currently lies in Austin any more than it does in Waco.” Id. at 12. While Facebook 

employees may be working remotely due to the pandemic, the majority of the employees 

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presumably still reside in or around the Austin Division. Third, the Court agrees that Facebook’s 

Austin offices alone do not justify or compel a transfer. No single public or private interest factor 

is dispositive in weight. Action Indus., Inc., 358 F.3d at 340. 

Because Facebook has employees currently or recently working out of its offices in 

Austin, the Court determines that this factor weights slightly in favor of transfer to the Austin 

Division. 

iii. Familiarity of the forum with the law that will govern the case

Both parties agree that this factor is neutral. Def.’s Mot. At 8; Pl.’s Resp. at 12. The 

Court agrees.

iv. Avoidance of unnecessary problems of conflict of laws or in the application of foreign law

Both parties agree that this factor is neutral. Def.’s Mot. At 8; Pl.’s Resp. at 12. The 

Court agrees.

V. CONCLUSION

Having found that the local interest in having localized interests factor weighs only 

slightly in favor of transfer and all other factors to be neutral, this Court finds that Facebook has 

not met its significant burden to demonstrate that the Austin Division is a clearly more 

convenient venue than the Waco Division. See Volkswagen II, 545 F.3d at 314. As such, this 

Court DENIES Facebook’s Opposed Motion to Transfer Venue to the Austin Division. 

SIGNED this 8th day of March, 2021.

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

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