1 

IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NETLIST, INC., 

 Plaintiff 

-vsSK HYNIX INC., SK HYNIX AMERICA INC., 

 Defendants 

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6:20-CV-00194-ADA 

 

NETLIST, INC., 

 Plaintiff 

-vsSK HYNIX INC., SK HYNIX AMERICA INC., 

 Defendants 

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6:20-CV-00525-ADA 

 

MEMORANDUM OPINION AND ORDER 

Before the Court is Defendants SK hynix Inc. and SK hynix America Inc.’ (“Hynix” or 

“Defendants”) Motion to Transfer Venue to the Central District of California (“CDCA”) or 

alternatively to the Austin Division of the Western District of Texas (the “Motion to Transfer”).1

ECF #26. Having considered the parties’ briefing, the relevant facts and law, and the parties’ 

oral arguments at the hearing conducted on February 2, 2021, the Court is of the opinion that the 

Motion to Transfer should be DENIED. 

BACKGROUND FACTS 

On March 17, 2020, Plaintiff Netlist, Inc. (“Netlist” or “Plaintiff”) filed a first suit in this 

Court (No. 6:20-CV-00194) (“the -194 action”) accusing Hynix of infringing U.S. Patent Nos. 

1

 Hynix’s Motion to Transfer was filed under Case No. 6:20-CV-00194, but after Case No. 6:20-CV-00525 was 

filed and consolidated with the -194 action, the parties subsequently stipulated that the Motion to Transfer should 

apply to both the -194 and -525 actions. As such, this Order also applies to both actions. 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 1 of 17
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9,858,218 (“the ‘218 patent”) and 10,474,595 (“the ‘595 patent”). ECF #1. The ‘595 patent is a 

continuation of the ‘218 patent. Almost two months later, Hynix filed the Motion to Transfer 

venue to CDCA under the first-to-file rule or alternatively under 28 U.S. Code § 1404(a), or 

alternatively transfer the -194 action to the Austin Division of this District. ECF #26. 

Hynix’s transfer request under the first-to-file rule was based on two cases Netlist had 

previously filed in California. In 2016, Netlist sued Hynix in CDCA (No. 8:16-CV-01605, before 

Judge Staton) (“California I”) and the U.S. International Trade Commission (No. 337-TA-1023) 

(“ITC I”), asserting, among others, U.S. Patent No. 8,489,837 (“the ‘837 patent”). Id. Both the 

‘218 and ‘595 patents are continuations from the ‘837 patent. Netlist sued Hynix a second time 

in June 2017 in CDCA (No. 8:17-CV-01030) (“California II”) and then a second time in the ITC 

in October 2017 (No. 337-TA-1089) (“ITC II”), asserting, among others, U.S. Patent No. 

9,535,623 (“the ‘623 patent”). Id. The ‘623 patent is also a continuation of the ‘837 patent. 

Several months later, in February 2018, Judge Staton stayed both California I and II actions, 

which remain stayed until today. Before the two California actions were stayed, they were 

largely on auto-pilot: the parties negotiated discovery and protective orders, exchanged 

infringement and invalidity contentions, and exchanged claim construction briefs. ECF #26, 27. 

The California court’s only involvement in those two cases includes holding a hearing to 

disqualify Netlist’s initial counsel, granting a motion to strike portions of expert declarations in 

support of opening claim construction brief, and requesting the parties to file periodic status 

reports after the stay. Id. 

Both the ‘837 and ‘623 patents in the California I and II actions have been invalidated by 

the Patent Trial and Appeal Board (“PTAB”) through inter partes review (“IPR”) proceedings. 

The PTAB instituted IPR review of the ‘837 patent in May 2017 and entered a final written 

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decision in May 2018 invalidating all challenged claims. See IPR2017-00548. Netlist did not 

appeal the PTAB’s decision invalidating the ’837 patent. Similarly, the PTAB instituted IPR 

review of the ‘623 patent in May 2018 and entered a final written decision in March 2019 

invalidating all challenged claims. See IPR2018-00303. On May 22, 2019, Netlist filed a notice 

of appeal of the PTAB’s decision regarding the ‘623 patent, which is still pending. 

In the -194 action in this District, the Court held an initial case management conference 

on June 11, 2020. ECF #36. Shortly afterwards, on June 15, 2020, Netlist sued Hynix a second 

time in this Court (No. 6:20-cv-00525-ADA) (“the -525 action”), asserting U.S. Patent No. 

10,217,523 (“the ‘523 patent”). The ‘523 patent is not related to the ‘218 or ‘595 patents 

previously asserted by Netlist in the -194 action, or any of the patents asserted in the California I 

and II actions. Four days later, on June 19, 2020, this Court held a second scheduling 

conference, and subsequently entered a scheduling order on July 8, 2020, setting Markman 

hearing for the -194 action for December 8, 2020 and trial date for October 16, 2021. ECF #39, 

46. Based on the scheduling order, the parties completed their claim construction briefing for the 

-194 action in November 2020. ECF #53, 58, 61, 63, 66, 71. 

Meanwhile, in the -525 action, the Court held a case management conference on October 

16, 2020, where the Court consolidated the -194 action and -525 action upon Hynix’s request. -

525 action, ECF #23. Also upon Hynix’s request, the Court agreed to delay the Markman 

hearing for four months in the consolidated case, re-setting it from December 8, 2020 to March 

19, 2021, and re-setting the trial date for the consolidated case to December 6, 2021. -525 action, 

ECF #23, 28; -194 action, ECF #65, 73. Fact discovery for the consolidated case opened 

immediately after the conference, starting on October 16, 2020. Several days later, the parties 

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stipulated on October 21, 2020 that Hynix’s Motion to Transfer shall apply to both the -194 and -

525 actions. -525 action, ECF #24. 

DISCUSSION 

I. First-To-File Rule 

A. Standards 

The first-to-file rule “stands for the common sense proposition that, when two cases are 

the same or very similar, efficiency concerns dictate that only one court decide both cases.” In re 

Telebrands Corp., 773 F. App'x 600, 602 (Fed. Cir. 2016) (citing Save Power Ltd. v. Syntek Fin. 

Corp., 121 F.3d 947, 950 (5th Cir. 1997). “The concern manifestly is to avoid the waste of 

duplication, to avoid rulings which may trench upon the authority of sister courts, and to avoid 

piecemeal resolution of issues that call for a uniform result.” West Gulf Maritime Ass'n v. ILA 

Deep Sea Local 24, 751 F.2d 721, 729 (5th Cir.1985); Save Power, 121 F.3d at 950. “Where the 

overlap is complete or nearly complete, the usual rule is for the court of first jurisdiction to 

resolve the issues.” In re Telebrands, 773 F. App'x at 602 (citing West Gulf, 751 F.2d at 730). 

However, where the overlap between the two cases is not “complete or nearly complete,” 

the “second district court has considerably more discretion.” Id.; see also In re ASM Int'l, N.V., 

774 F. App'x 650, 652 (Fed. Cir. 2019). Indeed, “[t]he most basic aspect of the first-to-file rule 

is that it is discretionary; ‘an ample degree of discretion, appropriate for disciplined and 

experienced judges, must be left to the lower courts.’” Alltrade, Inc., v. Uniweld Products, Inc., 

946 F.2d 622, 625, 628 (9th Cir. 1991) (quoting Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 

342 U.S. 180, 183-84 (1952)). In such cases, the second district court’s “judgment is made case 

by case, based on such factors as the extent of overlap, the likelihood of conflict, the comparative 

advantage and the interest of each forum in resolving the dispute.” Save Power, 121 F.3d at 951; 

Int'l Fid. Ins. Co. v. Sweet Little Mexico Corp., 665 F.3d 671, 678 (5th Cir. 2011). “The crucial 

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inquiry is one of ‘substantial overlap.’” Save Power, 121 F.3d at 950 (citations omitted); Sweet 

Little Mexico, 665 F.3d at 678. 

B. Analysis 

The overlap between the present WDTX cases and the CDCA cases is far from “complete 

or nearly complete” to require a transfer under the first-to-file rule.2 Although the ‘218 and ‘595 

patents asserted in the -194 action are from the same family as the ‘837 and ‘623 patents asserted 

in the California cases, the present case involves different asserted claims from different patents, 

and therefore different claim construction issues and different infringement and validity issues. 

In addition, the -525 action, which is consolidated with the -194 action, involves a patent that is 

unrelated to any of those asserted in the California cases. Without a “complete or nearly 

complete” overlap between the WDTX cases and the CDCA cases, the Court thus exercises its 

discretion and analyzes the relevant factors in determining whether the first-to-file rule applies. 

1. “extent of overlap” 

Hynix contends that the first-to-file rule applies here because the patents asserted in the 

present actions are from the same family as those asserted in the California actions and as a 

result, the claim construction, infringement, and invalidity analysis across all these actions are 

likely to be nearly identical. ECF #26 at 7-9. However, this alone does not justify a transfer 

under the first-to file rule. The -194 action involves different claims from different patents than 

the two California actions, which therefore requires different claim constructions and different 

2

 Hynix contends that the Court should transfer the cases to CDCA pursuant to the first-to-file rule or alternatively 

pursuant to 28 US.C. 1404(a). However, Hynix does not contend that it does not have any presence in CDCA, and 

the present actions could not have been originally brought in CDCA under the TC Heartland patent venue rule. 

Hynix essentially contends that the first-to-file rule trumps the venue requirements described in Section 1400(b) and 

TC Heartland. Hynix, however, does not provide any legal authority for that proposition, nor has the Court been 

able to find one. In the absence of such legal authority, the Court will not extend the first-to-file rule to trump the 

venue requirements that the Supreme Court clearly set forth in TC Heartland. But to provide a complete record of 

this Court’s analysis, the Court provides its first-to-file analysis. 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 5 of 17
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infringement and validity contentions. Transfer under the first-to-file rule requires far more than 

patents from the same family, same parties, and same accused products. See, e.g., Tinnus 

Enterprises, LLC v. Telebrands Corp., No. 6:15-cv-00551, 2015 WL 11090494, at *4 (E.D. Tex. 

Aug. 31, 2015), report and recommendation adopted, 2015 WL 11089478 (E.D. Tex. Dec. 2, 

2015) (“Cases involving the same parties and accused products will naturally have some 

potential for overlap; the question ... is whether the overlapping issues are substantial, such that 

interests of justice would require dismissal or transfer.”); Document Generation Corp. v. 

Allscripts, No. 6:08-CV-479, 2009 U.S. Dist. LEXIS 149038 at *15-20 (E.D. Tex. May 19, 

2009) (rejecting motion to transfer continuation patents with different claims); Datamize Inc. v. 

Fid. Brokerage Servs., LLC, No. 2:03-cv-321-DF, 2004 U.S. Dist. LEXIS 29100 at *17-18 (E.D. 

Tex. Apr. 22, 2004) (related patents sharing the same specification are nonetheless different 

patents that merit independent construction). Moreover, the ‘523 patent asserted in the -525 

action, to which action the Motion to Transfer also applies, is totally unrelated to any patent 

asserted the California actions. 

Hynix further contends that the RAND royalty issues in the present actions would also 

“substantially overlap” with its RAND royalty counterclaims pending in California I and II. ECF 

#26 at 10. However, there are no viable RAND claims pending in the California cases 

concerning the ‘837 or ‘623 patent – Hynix is fully aware that the PTAB has already invalidated 

both patents through IPR proceedings. ECF #26 at 3, 5. By representing that its RAND royalty 

claims are still pending in the California cases, Hynix seems to suggest that it is willing to take 

licenses for invalidated patents. The Court is not in a place to judge Hynix’s business acumen, 

but it appears to the Court that Hynix keeps its RAND claims in the California cases solely to 

gain certain tactical advantages. 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 6 of 17
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In view of the above, the Court finds no “substantial overlap” between the WDTX cases 

and the CDCA cases. 

2. “likelihood of conflict” 

There is no real likelihood of conflict or risk of inconsistent adjudications between the 

WDTX actions and the CDCA actions. As discussed above, both the ‘837 and ‘633 patents in 

the CDCA actions have been invalidated by the PTAB, and Netlist did not appeal the PTAB’s 

decision invalidating the ‘837 patent. Thus, a valid, enforceable patent claim will only exist in 

the California actions if Netlist successfully appeals the PTAB’s decision concerning the ʼ623 

patent. However, even if the ‘623 patent is eventually determined to be valid, the WDTX actions 

involve different claims from different patent than the CDCA actions: the asserted patent in the -

525 action is not related to any of the asserted patents in the CDcA actions, and the asserted 

patents in the -194 action involves different claims than the ‘623 patent, although they are from 

the same family. Therefore, any likelihood of conflict or risk of inconsistent adjudications would 

be attenuated, to say the least. 

3. “comparative advantage and the interest of each forum in resolving 

the dispute” 

This factor also disfavors transfer under the first-to-file rule. The CDCA actions have 

been stayed since February 2018 and they remain stayed today. The parties have not 

meaningfully litigated the CDCA actions. As the parties indicated in their briefing, the 

California court’s only involvement in those two cases includes holding a hearing to disqualify 

Netlist’s initial counsel, granting a motion to strike portions of expert declarations in support of 

opening claim construction brief, and requesting the parties to file periodic status reports after 

the stay. The California court has not been presented with, let alone decided, any discover 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 7 of 17
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matter or substantive issues in the cases. No Markman hearing has been scheduled and no trial 

date has been set for the California cases. Indeed, there is no indication when the stay will be 

lifted and Hynix has presented no evidence showing that the California court will not also stay 

the present actions if they were transferred to CDCA. The California actions were stayed at least 

partly due to the PTAB’s institution of Hynix’s IPR petitions. ECF #27 at 3. However, as Netlist 

pointed out, the Federal Circuit may not finally resolve its appeal of the PTAB’s decision 

concerning the ‘623 patent for the next 18-24 months. And Hynix has not indicated that it 

intends to request the stay be lifted before the final resolution of the appeal concerning the ‘623 

patent. 

By contrast, the present case has been actively and substantively litigated in this Court. 

This Court has held three case management conferences and issued three scheduling orders for 

this case so far. The parties completed claim construction briefing for the two asserted patents in 

the -194 action and have already begun claim construction briefing for the -525 action. A 

consolidated Markman hearing has been set for March 19, 2021,3

 and trial has been set for 

December 6, 2021. Therefore, this Court has the “comparative advantage and the interest” in 

resolving the present case than the CDCA court. 

In sum, all three factors weigh against transfer under the first-to-file rule. 

II. Transfer under 28 U.S.C. 1404(a) 

A. Standards 

In patent cases, motions to transfer under 28 U.S.C. § 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). Under § 

3

 Markman hearing for the -194 action was originally set for December 8, 2020. The hearing was reset for over four 

months later to March 19, 2021 only upon the request of Hynix to have a consolidated Markman hearing for the -

194 and -525 actions. 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 8 of 17
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1404(a), “[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.” 28 U.S.C. § 1404(a). 

Section 1404(a)’s threshold inquiry is whether the case could initially have been brought 

in the proposed transferee forum. In re Volkswagen AG, 371 F.3d 201, 202–03 (5th Cir. 2004) 

[Volkswagen I]. If that inquiry is satisfied, the Court determines whether transfer is proper by 

analyzing and weighing various private and public interest factors. Humble Oil & Ref. Co. v. Bell 

Marine Serv., 321 F.2d 53, 56 (5th Cir. 1963); In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. 

2020) (applying Fifth Circuit law). The private interest factors are “(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 of Am., Inc., 545 

F.3d 304, 315 (5th Cir. 2008) (en banc) [Volkswagen II] (quoting Volkswagen I, 371 F.3d at 

203). The public interest factors are “(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 [or in] the application of foreign law.” Id. (quoting Volkswagen I, 

371 F.3d at 203) (alterations in original). The factors are neither exclusive nor exhaustive, and no 

one factor is dispositive. Id. In applying these factors, the court enjoys considerable discretion 

and assesses the case “on an ‘individualized, case-by-case consideration of convenience and 

fairness.’” In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010) (quotation omitted). 

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

the moving party. See id. Although the plaintiff’s choice of forum is not a separate factor entitled 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 9 of 17
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to special weight, respect for the plaintiff’s choice of forum is encompassed in the movant’s 

elevated burden to “clearly demonstrate” that the proposed transferee forum is “clearly more 

convenient” than the forum in which the case was filed. Id. at 314–15. While “clearly more 

convenient” is not necessarily 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). 

B. Hynix Has Not Met the Threshold Requirement 

Hynix has not met its burden to establish that the present WDTX actions could initially 

have been brought in CDCA. Hynix does not dispute that it has no presence in CDCA and 

therefore Netlist could not have filed the -194 and -525 actions in CDCA under the TC 

Heartland patent venue rule, which requires that a defendant have a regular and established place 

of business in the subject venue.4 TC Heartland LLC v. Kraft Foods Group Brands, LLC, 137 S. 

Ct. 1514 (2017). ECF #27 at 10, #31 at 1-2. Instead, Hynix only contends that the California I 

and II actions “establish that all parties have ‘consented’ to venue in that district.” ECF #31 at 1-

2. However, there is no evidence showing that the parties have both consented to the CDCA 

venue the in -194 and -525 actions. The fact that Netlist objects to Hynix’s Motion to Transfer 

itself indicates that Netlist has not consented to the CDCA venue. Further, in its briefing, Hynix 

has cited no mandatory or persuasive authority to show that by filing suits in CDCA pre-TC 

Heartland, Netlist has automatically consented to venue in that district for any following suits 

involving different patents. As such, Hynix has not shown that it has met the threshold 

4

 The California I and II cases were filed before the Supreme Court’s TC Heartland decision, and were therefore not 

subject to the TC Heartland patent venue rule. 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 10 of 17
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requirement for transfer under Section 1404(a), and its transfer request under Section 1404(a) 

should be denied for this reason alone. 

C. Volkswagen Interest Factors Also Disfavor Transfer 

Assuming arguendo that the WDTX actions “might have been brought” in CDCA, Hynix 

has not shown that CDCA is “clearly more convenient” than WDTX, by weighing the 

Volkswagen public and private factors. 

1. Volkswagen Private Interest Factors 

a. “Relative ease of access to sources of proof” 

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

physical evidence” as opposed to witnesses. See Volkswagen II, 545 F.3d at 315. Physical 

location of such sources of proof remains relevant notwithstanding technological advances in 

data storage, copying, and transmission. See Volkswagen II, 545 F.3d at 316; In re Genentech, 

Inc., 566 F.3d 1338, 1346 (Fed. Cir. 2009). “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 at 1345. 

SK hynix Inc. is a Korean corporation having a principal place of business in Korea. 

Hynix admits that the documents related to the research and development, operation, and 

function (i.e., design documents) of the accused products, as well as marketing, sales and 

licensing information related thereto, are maintained in Korea. ECF #26 at 6-7. Sources of proof 

could also be in this District in Austin, Texas, where SK hynix America has an office or in San 

Jose, California, where SK hynix America Inc.’s headquarter is located. Id. Hynix does not 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 11 of 17
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contend that any sources of proof is located in CDCA. Therefore, this factor weighs slightly 

against transfer. 

b. “Availability of compulsory process to secure the attendance of 

witnesses” 

Federal district courts have the absolute power to compel attendance of a trial, hearing, or 

deposition “within 100 miles of where the person resides, is employed, or regularly transacts 

business in person.” Fed. R. Civ. P. 45(c)(1)(A). Federal district courts have trial subpoena 

power over a person “within the state where the person resides, is employed, or regularly 

transacts business in person, if the person . . . is a party or a party’s officer; or . . . [if the person] 

is commanded to attend a trial and would not incur substantial expense.” Fed. R. Civ. P. 

45(c)(1)(B). As party witnesses almost invariably attend trial willingly, “[w]hen no party has 

alleged or shown any witness’s unwillingness, a court should not attach much weight to the 

compulsory process factor.” CloudofChange, LLC v. NCR Corp., No. 6-19-cv-00513 (W.D. Tex. 

Mar. 17, 2020) (citation omitted). 

Hynix points out that Dr. Hyun Lee, the lone inventor of the ’837, ’623, ’218 and ’595 

patents, is no longer employed by Netlist; nor is Mr. Noel Whitley, Netlist’s former chief 

licensing officer, and are therefore both third-party witnesses. ECF #26 at 13. Both Dr. Lee and 

Mr. Whitley are allegedly living in Irvine, California. However, Hynix fails to show that either 

potential witness, or any other potential witnesses, are unwilling to testify. In fact, both Dr. Lee 

and Mr. Whitley voluntarily participated in the related ITC actions, which occurred in 

Washington, D.C. Thus, this factor is neutral. 

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c. “Cost of attendance for willing witnesses” 

Courts properly give more weight to the convenience of non-party witnesses than to party 

witnesses. See ADS Sec. L.P. v. Advanced Detection Sec. Servs., No. A-09-CA-773 LY, 2010 

U.S. Dist. LEXIS 27903, at *11 (W.D. Tex. Mar. 23, 2010); Frito-Lay N. Am., Inc. v. Medallion 

Foods, Inc., 867 F. Supp. 2d 859, 870–71 (E.D. Tex. 2012). 

Hynix has not identified any non-party witnesses, but points out that it is easier for its 

party witness in Korea travel to CDCA than to WDTX. However, the Court does not find that 

flying from Korea to the Los Angeles airport and then driving to Santa Ana (where the California 

cases were filed) costs less than flying from Korea to the Dallas-Fort Worth airport and then 

driving to Waco. Similarly, the Court does not find that it would cost more for any Hynix’s party 

witnesses to travel from San Jose to Santa Ana than to Waco. If anything, the hotels in Waco are 

cheaper on average than in Santa Ana. Hynix also contents that Netlists is headquartered in 

Irvine, California, and thus it would cost less for Netlist’s party witnesses to travel to the CDCA 

court. However, when Netlist filed its actions in this Court, it has already taken consideration of 

such potential costs. Therefore, the Court finds that this factor is neutral. 

d. “all other practical problems that make trial of a case easy, 

expeditious and inexpensive” 

The Court finds this factor weighs against transfer. As discussed above, both the ‘837 and 

‘623 patents have been invalidated by the PTAB, and Netlist has only appealed the decision 

concerning the ‘623 patent. Thus, it is very likely that those two patents, which are the main 

basis of Hynix’s Motion to Transfer, will not be litigated in CDCA at all. Further, the parties 

have not meaningfully and substantively litigated the CDCA actions, where the court’s only 

involvement in those cases was holding a hearing to disqualify counsel, striking portions of 

expert declarations, and requesting the parties to file status reports after stay. The California 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 13 of 17
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cases have been stayed three years since February 2018, and there is no evidence when the stay 

will be lifted in the near future. Further, Hynix has presented no evidence showing that the 

California court will not also stay the present actions if they were transferred to CDCA. 

On the other hand, the parties have been actively litigation the -194 and -525 actions 

since the first case was filed in March 2020: the claim construction briefing for the -194 action 

was already completed in November 2021, the claim construction briefing for the -525 action is 

ongoing, Markman hearing has been scheduling for March 19, 2021, and trial has been 

scheduled for December 6, 2020. To transfer the present case to another district would largely 

obviate all the resources expended by the parties and the Court to prepare this case. Therefore, 

this factor weighs against transfer. 

2. Volkswagen Public Interest Factors 

a. “Administrative difficulties flowing from court congestion” 

A faster average time to trial means a more efficient and economical resolutions of the 

claims at issue. Hynix offers no evidence showing that the present case will be tried faster in 

CDCA than in this district. On the contrary, the California cases have been stayed three years 

with no evidence of that stay being lifted and no trial date set. By contrast, the present case is set 

for trial in this District in December 2021, around 10 months from now. Thus, this factor weighs 

against transfer. 

b. “Local interest in having localized interests decided at home” 

While Netlist’s headquarter is located in C.D. Cal, Hynix maintains an office in Austin 

and provides support to one of its largest American customers in this District. On the other hand, 

Hynix does not contend that it has any presence in CDCA. Further, the fact that Hynix is willing 

to transfer the present actions to the Austin Division of this District indicates that Hynix is aware 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 14 of 17
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of the localized interest of litigating the present actions in this District. On balance, the Court 

finds that this factor weighs against transfer. 

c. “Familiarity of the forum with the law that will govern the case” 

and “avoidance of unnecessary problems of conflict of laws or in 

the application of foreign law” 

Noting that this case implicates federal patent law under Title 35 of the United States 

Code, the Court find that both factors are neutral for the transfer analysis. 

3. Hynix Has Failed to Establish That CDCA Would Be Clearly More 

Convenient 

Having considered the private and public interest factors, Court’s conclusions for each 

factor is summarized in the following table: 

Factor The Court’s Finding 

Relative ease of access to sources of proof Weighs slightly against transfer 

Availability of compulsory process to secure the 

attendance of witnesses 

Neutral 

Cost of attendance for willing witnesses Neutral 

all other practical problems that make trial of a case 

easy, expeditious and inexpensive 

Weighs against transfer 

Administrative difficulties flowing from court 

congestion 

Weighs against transfer 

Local interest Weighs against transfer 

Familiarity of the forum with law that will govern 

case 

Neutral 

Problems associated with conflict of law Neutral 

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On balance, the Court is not persuaded that trial in the Central District of California 

would be clearly more convenient than trial in the Western District of Texas. 

III. Intra-District Transfer 

In the Fifth Circuit, the § 1404(a) factors apply to both inter-district and intra-district 

transfers. In re Radmax Ltd., 720 F.3d 285, 288 (5th Cir. 2013). It is well-settled that trial courts 

have even greater discretion in granting intra-district transfers than they do in the case of interdistrict transfers. See, e.g., Sundell v. Cisco Systems Inc., 1997 WL 156824, at *1, 111 F.3d 892 

(5th Cir. 1997) (“Under 28 U.S.C. § 1404(b), the district court has broad discretion in deciding 

whether to transfer a civil action from a division in which it is pending to any other division in 

the same district.”). 

Other than pointing out that Hynix has a presence in Austin, Hynix has not offered any 

persuasive showing that litigating the present actions in Austin would be clearly more convenient 

than in Waco. On the contrary, the Austin courthouse is closed due to the Covid-19 pandemic 

and there is no indication that it will be open by this case’s scheduled trial date. Thus, this case 

can only move forward in the Waco courthouse in the near future. 

 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 16 of 17
17 

CONCLUSION 

For the reasons stated above, the Court finds that Hynix has failed to meet its burden to 

demonstrate that litigating this case in the Central District of California, or in the Austin Division of 

this District would be clearly more convenient than in Waco. Accordingly, the Hynix’s Motion to 

Transfer is DENIED. 

The Court sua sponte reconsiders its previous decision to delay the Markman hearing and 

subsequent scheduling and rescinds it. Accordingly, the Court re-sets the Markman hearings 

for the consolidated -194 and -525 actions to take place on March 1, 2021, and the case is 

set for jury trial for July 6, 2021.

5

 

SIGNED this 2nd day of February, 2021. 

ALAN D ALBRIGHT 

UNITED STATES DISTRICT JUDGE 

5

 The claim construction briefing for the -194 action has been completed and Plaintiff filed its opening claim 

construction brief for the -525 action on January 20, 2021. For the -525 action, the Court orders that Defendants file 

responsive claim construction brief by February 8, 2021, Plaintiff file reply claim construction brief by February 23, 

2021, and the parties submit joint claim construction brief by noon, February 24, 2021. The parties are also ordered 

to submit an amended proposed scheduling order based on these dates by February 5, 2021. 

Case 6:20-cv-00525-ADA Document 30 Filed 02/02/21 Page 17 of 17