IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NEONODE SMARTPHONE LLC,

Plaintiff, 

v. 

APPLE INC., 

Defendant. 

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

JURY TRIAL DEMANDED 

PLAINTIFF'S OPPOSITION TO DEFENDANT'S MOTION TO 

TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA

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TABLE OF CONTENTS 

I. INTRODUCTION .................................................................................................................... 1

II. ARGUMENT ............................................................................................................................ 2

A. The Private Interest Factors Do Not Favor Transfer. .......................................................... 3

1. The Relative Ease of Access to Sources of Proof. ........................................................ 3

2. The Availability of Compulsory Process. ..................................................................... 5

3. The Cost of Attendance for Willing Witnesses. ........................................................... 7

4. Other Factors That Make Trial Easy, Expeditious, and Inexpensive. ........................ 10

B. The Public Interest Factors Do Not Favor Transfer ........................................................... 12

1. Administrative Difficulties Flowing From Court Congestion. ................................... 12

2. Local Interest In Having Localized Interests Decided At Home. ............................... 13

3. The Familiarity Of The Forum With The Law That Will Govern The Case And The 

Avoidance Of Unnecessary Problems Of Conflict Of Laws Or The Application Of 

Foreign Law. ............................................................................................................... 15

C. Other Considerations Counsel Against Transfer. .............................................................. 15

III. CONCLUSION ....................................................................................................................... 15

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TABLE OF AUTHORITIES 

Cases

Action Indus., Inc. v. U.S. Fid. & Guar. Co., 

358 F.3d 337 (5th Cir. 2004) ....................................................................................................... 2 

ADS Sec. L.P. v. Advanced Detection Sec. Servs., Inc., 

2010 WL 1170976 (W.D. Tex. Mar. 23, 2010)........................................................................... 6 

Aerielle, Inc. v. Monster Cable Prods., Inc., 

2007 WL 951639 (E.D. Tex. Mar. 26, 2007) ............................................................................ 10 

Auto-Dril, Inc. v. Nat'l Oilwell Varco, L.P., 

2016 WL 6909479 (W.D. Tex. Jan. 28, 2016) ............................................................................ 3 

Bevil v. Smit Ams., Inc., 

883 F. Supp. 168 (S.D. Tex. 1995) ............................................................................................. 6 

C&J Spec Rent Servs., Inc. v. LEAM Drilling Sys., LLC, 

2019 WL 3017379 (E.D. Tex. July 10, 2019) ......................................................................... 3, 5 

Continental Grain Co. v. The FBL-585, 

364 U.S. 19 (1960) ................................................................................................................ 1, 10 

Fintiv, Inc. v. Apple Inc., 

2019 WL 4743678 (W.D. Tex. Sept. 13, 2019) .................................................................... 7, 15 

Foundation Med., Inc. v. Guardant Health, Inc., 

2017 WL 590297 (E.D. Tex. Feb. 14, 2017) ............................................................................ 12 

Gardipee v. Petroleum Helicopters, Inc., 

49 F. Supp. 2d 925 (E.D. Tex. 1999) .......................................................................................... 3 

Hammond Dev. Int'l, Inc. v. Google LLC, 

2020 WL 3452987 (W.D. Tex. June 24, 2020) ......................................................................... 13 

Ikorongo Texas LLC v. Lyft, Inc., 

20-cv-00258-ADA, slip op. (W.D. Tex. Mar. 1, 2021)...................................................... passim 

In re Apple Inc., 

979 F.3d 1332 (Fed. Cir. 2020) ....................................................................................... 7, 10, 13 

In re Google Inc., 

2017 WL 977038 (Fed. Cir. Feb 23, 2017) ............................................................................... 10 

In re Nitro Fluids L.L.C., 

978 F.3d 1308 (Fed. Cir. 2020) ................................................................................................... 3 

In re Vistaprint Ltd., 

628 F.3d 1342 (Fed. Cir. 2010) ....................................................................................... 2, 11, 12 

In re Volkswagen AG, 

371 F.3d 201 (5th Cir. 2004) ................................................................................................... 2, 7 

In re Volkswagen of Am., Inc., 

545 F.3d 304 (5th Cir. 2008) .............................................................................................. passim 

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In re Volkswagen of Am., Inc., 

566 F.3d 1349 (Fed. Cir. 2009) ................................................................................................. 11 

LBS Innov'ns LLC v. Apple Inc., 

2020 WL 923887 (E.D. Tex. Feb. 26, 2020) ........................................................................ 4, 13 

Rembrandt Wireless Techs., LP v. Apple Inc., 

2019 WL 6344470 (E.D. Tex. Nov. 27, 2019) ............................................................................ 5 

Stewart Org., Inc. v. Ricoh Corp., 

487 U.S. 22 (1988) ...................................................................................................................... 2 

Stingray Music USA, Inc. v. Music Choice, 

2017 WL 1022741 (E.D. Tex. Mar. 16, 2017) ...................................................................... 4, 15 

SynKloud Techs., LLC v. Dropbox, Inc., 2020 

WL 2528545 (W.D. Tex. May 18, 2020) ........................................................................... passim 

TIGI Linea Corp. v. Prof. Prods. Grp., LLC, 

2020 WL 7346211 (E.D. Tex. Nov. 13, 2020) ........................................................................ 4, 5 

Turner v. Cincinnati Ins. Co., 

2020 WL 210809 (W.D. Tex. Jan. 14, 2020) .............................................................................. 8 

Ultravision Techs., LLC v. Govision, LLC, 

2020 WL 896767 (E.D. Tex. Jan. 21, 2020) ........................................................................... 3, 4 

Voxer, Inc. v. Facebook, Inc., 

2020 WL 3416012 (W.D. Tex. June 6, 2020) ..................................................................... 13, 15 

Weatherford Tech. Holdings, LLC v. Tesco Corp., 

2018 WL 4620636 (E.D. Tex. May 22, 2018) ............................................................................ 3 

Statutes

28 U.S.C. § 1404(a) ........................................................................................................................ 2 

Treatises

15 Wright, A. Miller & E. Cooper, Fed. Prac. & Proc. § 3851 (3d ed. 2007) ................................ 6 

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I. INTRODUCTION 

The Court should deny Apple Inc.'s ("Apple's") motion to transfer this case from the 

Western District of Texas ("WDTX") to the Northern District of California ("NDCA"). Apple must 

show "good cause" by demonstrating that NDCA is a "clearly more convenient" venue as a whole. 

It is not enough that NDCA would be more convenient for Apple. The transfer decision is 

discretionary, informed by consideration of public and private interest favors set forth in the Fifth 

Circuit's Volkswagen decision. If, when added together, the factors do not clearly lean in favor of 

the transferee venue, the Court should deny transfer. 

Here, the factors are either neutral or they disfavor transfer. Perhaps the strongest reason 

to deny transfer is that this Court is handling a co-pending case against Samsung involving the 

same patents, very similar accused products, and overlapping issues. That action weighs heavily 

against transfer, because "[t]o permit a situation in which two cases involving precisely the same 

issues are simultaneously pending in different District Courts leads to the wastefulness of time, 

energy and money that § 1404(a) was designed to prevent." Cont’l Grain Co. v. The FBL-585, 364 

U.S. 19, 26 (1960). Also weighing against transfer is that NDCA's docket is materially more 

congested than WDTX's and this case would reach trial much more quickly if it remained in 

WDTX. In addition, Neonode Smartphone LLC ("Neonode") has no witnesses located in NDCA, 

Neonode's witnesses are willing to come to WDTX, pertinent Apple employees are in WDTX, 

Apple has identified no unwilling third party witnesses in NDCA, and both parties' documents are 

accessible in WDTX. Other than speculative COVID-related concerns about travel, Apple has 

admitted that there would be no evidence unavailable to it if the case were to remain in WDTX. 

Finally, Apple has previously asserted patent infringement claims in Texas, revealing that Apple's 

"convenience" arguments are opportunistic and insincere. For these and other reasons, discussed 

further below, the Court should deny Apple's transfer motion. 

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II. ARGUMENT 

Section 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." 28 U.S.C. § 1404(a). "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) (citation omitted). 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 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 AG, 371 F.3d 201, 203 (5th Cir. 2004) (Volkswagen I). 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 of the application of 

foreign law." Id. The party seeking transfer must show good cause. See In re Volkswagen of Am., 

Inc., 545 F.3d 304, 314 (5th Cir. 2008) (Volkswagen II). That means Apple must establish that 

NDCA is "clearly more convenient" than WDTX as a venue for this litigation. Id. at 315. 

In applying the private and public interest factors, the Court enjoys 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) (citation omitted). "If, when added together, 

the relevant private and public interest factors are in equilibrium, or even if they do not clearly 

lean in favor of the transferee venue, the motion must be denied." Ikorongo Texas LLC v. Lyft, 

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Inc., 20-cv-00258-ADA, slip op. at 6 (W.D. Tex. Mar. 1, 2021); see also In re Nitro Fluids L.L.C., 

978 F.3d 1308, 1311 (Fed. Cir. 2020). Transfer of venue "must render the litigation more 

convenient as a whole and not merely shift inconvenience between the parties." Auto-Dril, Inc. v. 

Nat'l Oilwell Varco, L.P., 2016 WL 6909479, at *3 (W.D. Tex. Jan. 28, 2016); see also Gardipee 

v. Petroleum Helicopters, Inc., 49 F. Supp. 2d 925, 931 at n.6 (E.D. Tex. 1999). In adjudicating 

Apple's motion, the Court may "consider undisputed facts outside of the pleadings ... but it must 

draw all reasonable inferences and resolve all factual conflicts in favor of" Neonode. Weatherford 

Tech. Holdings, LLC v. Tesco Corp., 2018 WL 4620636, at *2 (E.D. Tex. May 22, 2018). 

A. The Private Interest Factors Do Not Favor Transfer. 

1. The Relative Ease of Access to Sources of Proof. 

The Court looks to where documents and physical evidence are stored when considering 

this factor. Volkswagen II, 545 F.3d at 316. "For this factor to support transfer, '[p]arties must 

specifically identify the relevant sources of proof (and why they are relevant), and specifically 

identify the physical location of those sources of proof.' 'Without doing so, no court is able to make 

an informed inquiry into the true convenience of the parties.'" Ultravision Techs., LLC v. Govision, 

LLC, 2020 WL 896767, at *8 (E.D. Tex. Jan. 21, 2020) (citations omitted); see also C&J Spec 

Rent Servs., Inc. v. LEAM Drilling Sys., LLC, 2019 WL 3017379, at *5 (E.D. Tex. July 10, 2019). 

Here, Apple relies upon conclusory statements of its declarant, Mr. Rollins, regarding the types 

and locations of its documents. [Dkt. 27-3, ¶¶ 7, 13, 17] In response to Neonode's interrogatories 

asking for specifics, Apple provided none. [Ex. 2 at 31-32, 34-35, 37-39, 40-41] Neonode also 

asked Apple to specify the "the relevant source code associated with the Accused Features" as 

referenced in Mr. Rollins' declaration, but Apple again provided no specifics. [Id. at 35-36] Absent 

the required specifics, the Court can make neither an informed inquiry into the true convenience 

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of the parties, Ultravision Techs., 2020 WL 896767, at *8, nor an informed determination that the 

"ease of access" factor favors transfer. 

Moreover, although the Fifth Circuit has held that "advances in copying technology and 

information storage" do not render the "ease of access" factor "superfluous," Volkswagen II, 545 

F.3d at 316, "that authority does not preclude this Court from diminishing the importance of this 

factor in the overall transfer analysis, especially where ... the movant has identified no sources of 

proof that cannot be transferred electronically." Stingray Music USA, Inc. v. Music Choice, 2017 

WL 1022741, at *3 (E.D. Tex. Mar. 16, 2017); accord TIGI Linea Corp. v. Prof. Prods. Grp., 

LLC, 2020 WL 7346211, at *3 (E.D. Tex. Nov. 13, 2020); LBS Innov'ns LLC v. Apple Inc., 2020 

WL 923887, at *5 (E.D. Tex. Feb. 26, 2020). As the Court has noted, "there is no difference in the 

relative ease of access to sources of proof from the transferor district as compared to the transferee 

district when the vast bulk of documents are electronic." Ikorongo, 20-cv-00258, slip op. at 8 n.2. 

Here, 

 Apple likely 

has relevant documents in WDTX given that, as discussed below, there are Apple employees in 

WDTX whose work pertains to this case. Although Neonode's sources of documentary evidence 

are outside the United States, those documents are stored electronically and are generally 

accessible here.1

When neither the plaintiff's nor the defendants' sources of proof are located in plaintiff's 

chosen forum, such that transfer for the convenience of defendant would "raise a commensurate 

 

1 [Ex. 4 at 7-11; Ex. 7, ¶ 2; Ex. 11, ¶ 2; Ex. 13, ¶ 2; Ex. 14, ¶ 2; Ex. 18 at 15:13-18, 21:15-22:11, 

39:10-42:9, 46:2-47:5, 48:3-13, 49:21-50:8, 96:25-97:12, 112:11-113:12, 124:17-125:5; Ex. 19 

at 11:13-15:5, 40:2-41:22, 46:21-47:22, 52:3-22, 54:13-17, 70:19-71:18, 77:8-14, 95:23-96:18, 

134:1-135:4]

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inconvenience" for plaintiff, courts have found that the "ease of access" factor "weighs against 

transfer." Rembrandt Wireless Techs., LP v. Apple Inc., 2019 WL 6344470, at *2 (E.D. Tex. Nov. 

27, 2019). Other courts have found the factor to be neutral when, as here, the evidence is dispersed 

and can be transferred electronically. See TIGI Linea, 2020 WL 7346211, at *4. Either way, Apple 

has not shown that the "ease of access" factor favors transfer. 

2. The Availability of Compulsory Process. 

"This factor is directed towards unwilling third-party witnesses." C&J Spec Rent Servs., 

2019 WL 3017379, at *3. The Court considers the availability of compulsory process to secure the 

attendance of such witnesses. Volkswagen II, 545 F.3d at 316. "When no party has alleged or 

shown any witness's unwillingness, a court should not attach much weight to the compulsory 

process factor" and may find it "neutral." Ikorongo, 20-cv-00258, slip op. at 10. 

Apple has not shown that this factor favors transfer. Apple points to Aequitas Technologies 

LLC ("Aequitas"), Neonode Inc., and Soquel Group as "relevant third party witnesses ... located 

in California." [Dkt. #27 at 5-6] But none of the pertinent personnel associated with these entities 

works or resides in NDCA.2 All but one reside outside of the United States. The exception is Anuj 

Arora, Aequitas' Director of Engineering, who works and resides in Torrance, California, which is 

in the Central District of California ("CDCA"). Mr. Arora is willing to travel to WDTX for the 

case. [Ex. 11, ¶ 4] The "compulsory process" factor does not support transfer when, as here, nonparty witnesses are willing to travel to the transferor district. SynKloud Techs., LLC v. Dropbox, 

Inc., 2020 WL 2528545, at *5 (W.D. Tex. May 18, 2020). 

 

2 [Ex. 4 at 3-7; Ex. 7, ¶ 1; Ex. 11, ¶ 1; Ex. 13, ¶ 1; Ex. 14, ¶ 1; Ex. 15, ¶ 1; Ex. 18 at 8:18-9:12, 

35:16-39:9, 38:14-39:15; 47:8-48:2; 48:14-20; 51:7-53:21; 57:12-59:8, 60:2-75:9, 82:7-96:23, 

101:7-107:16, 115:14-125:5; Ex. 19 at 19:11-20:15, 27:2-32:14, 34:1-15, 35:5-21, 39:22-40:8, 

41:19-41:24, 42:20-43:13, 47:23-59:12, 60:5-8, 62:13-63:13, 67:6-68:16, 74:4-103:1, 108:4-

116:21, 117:2-7, 117:12-123:20, 136:8-16]

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Apple next argues that, "[a]s the sole inventor of the patents-in-suit, Magnus Goertz is 

highly relevant to this case because of his unique knowledge of the invention story behind the 

patents-in-suit. ... Mr. Goertz is located in Sweden." [Dkt. #27 at 6] Neither this Court nor NDCA 

has subpoena power over Mr. Goertz. Both parties have sought discovery from him via the Hague 

Convention. [Dkt. #44, 48]. The processes to obtain and use evidence from Mr. Goertz are the 

same in NDCA as compared to WDTX. Apple agrees that, if Mr. Goertz were to appear voluntarily 

for trial, WDTX would be "equally convenient" as NDCA. [Dkt. #27 at 6] Transferring the case 

to NDCA would not make obtaining evidence from Mr. Goertz more convenient for anyone. 

Finally, Apple suggests that Neonode's claims might implicate third-parties Google, Inc. 

and Nuance Communications. [Dkt. #27 at 6] "A party seeking a transfer of venue must do more 

than make general allegations that key witnesses are unavailable or are inconveniently located." 

ADS Sec. L.P. v. Advanced Detection Sec. Servs., Inc., 2010 WL 1170976, at *3 (W.D. Tex. Mar. 

23, 2010). "The movant must specifically identify the key witnesses and outline the substance of 

their testimony." Bevil v. Smit Ams., Inc., 883 F. Supp. 168, 170 (S.D. Tex. 1995). "If the moving 

party merely has made a general allegation that necessary witnesses are located in the transferee 

forum, without identifying them and providing sufficient information to permit the district court 

to determine what and how important their testimony will be, the application for transferring the 

case should be denied." 15 Wright, A. Miller & E. Cooper, Fed. Prac. & Proc. § 3851 (3d ed. 

2007). Here, Apple identifies no Google or Nuance witnesses. Apple neither outlines expected 

testimony nor provides sufficient information to permit the Court to determine how important any 

testimony will be. When asked what evidence would be unavailable to Apple in the event this case 

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remained in WDTX, Apple did not identify testimony from Google or Nuance witnesses.3 [Ex. 3 

at 101:23-104:10] Nor has Apple shown that such witnesses would be unwilling to appear in 

WDTX. 

3. The Cost of Attendance for Willing Witnesses. 

To assist in analyzing this factor, the Fifth Circuit has adopted its "100-mile rule": "[w]hen 

the distance between an existing venue for trial of a matter and a proposed venue under § 1404(a) 

is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to 

the additional distance to be traveled." Volkswagen I, 371 F.3d at 204-05. The Federal Circuit has 

held, however, held that "the '100-mile' rule should not be rigidly applied" where "witnesses ... 

will be required to travel a significant distance no matter where they testify." In re Apple Inc., 979 

F.3d 1332, 1341 (Fed. Cir. 2020). Apple argues that this factor "strongly favors transfer" because 

"all of the likely Apple witnesses, as well as many of the Neonode and third-party witnesses, are 

based in N.D. Cal." [Dkt. #27 at 11] This argument is meritless, for several reasons. 

First, "the Court does not assume that all of the party and third-party witnesses listed in 

1404(a) briefing will testify at trial." Fintiv, Inc. v. Apple Inc., 2019 WL 4743678, at *6 (W.D. Tex. 

Sept. 13, 2019). "Indeed, the Court assumes only a few party witnesses and even fewer non-party 

witnesses (if any) will testify at trial. Consequently, long lists of potential party and non-party 

witnesses do not affect the Court's analysis for this factor." Ikorongo, 20-cv-00258, slip op. at 11. 

Although Apple identifies

 it is likely that not all will testify at trial, whether the 

case is tried in WDTX or in NDCA. 

 

3 Apple's only testimony on this issue was that some of its employees might be reluctant to travel 

to WDTX in view of the COVID-19 pandemic. [Ex. 3 at 101:23-104:10] The Court recently 

considered this issue and found such arguments to be "speculative" and not material to the "witness 

convenience" analysis. Ikorongo, 20-cv-00258-ADA, slip op. at 11-12.

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Second, "[t]he convenience of party witnesses is typically given little weight because the 

witnesses' employer could compel their testimony at trial." Ikorongo, 20-cv-00258, slip op. at 12; 

accord SynKloud, 2020 WL 2528545, at *5; see also Turner v. Cincinnati Ins. Co., 2020 WL 

210809, at *4 (W.D. Tex. Jan. 14, 2020) ("[Defendant] cannot cite inconvenience of its employeewitnesses as the basis for transfer."). Although some Apple employees would travel to Texas for 

a trial absent transfer, 

. Apple has not shown that any "inconvenience" and "cost" would be 

materially greater than any other business travel for Apple.4 Nor has it shown that any additional 

"cost" or "inconvenience" of litigating in WDTX, as compared to NDCA, would be material. 

Third, at least one Apple employee located in WDTX will be a pertinent witness in this 

case. In particular, Ben Nielsen, an engineer who was involved in the development of pertinent 

aspects of the accused products, .

5

 Other Apple employees in Austin may also be 

pertinent: 

 James Grimaldo, who "led launch programs for iPhone SE (2nd gen)," [Ex. 5; Ex. 3 

at 107:7-108:13], may be knowledgeable about the functionalities that Apple's customers 

value in the iPhone SE (2nd gen) and other accused products. 

 Braden Hess, who "managed launches" for the iPhone 12, iPhone 12 Pro, and iPad 

Pro, [Ex. 6; Ex. 3 at 108:15-109:18], may be knowledgeable about the functionalities that 

Apple's customers value in these and other accused products.6

 

4 Apple is building a 192 room hotel in Austin, presumably for employee use. [Ex. 17] 

5 [Ex. 2 at 20, 29; Ex. 3 at 19:21-20:7; 34:2-36:9; 38:2-17; 64:11-19; 80:21-83:16; 98:21-99:7; 

110:2-111:10; 118:1-120:4]

6 Neonode's complaint, filed on June 8, 2020, does not specifically identify the iPhone 12 models 

as infringing devices because those models were not introduced until October 2020. See

https://www.apple.com/newsroom/2020/10/apple-announces-iphone-12-and-iphone-12-mini-anew-era-for-iphone-with-5g/ (last visited Mar. 23, 2020). However, Neonode's complaint 

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 Julie Licata, Apple's "Americas iPad Supply Demand Manager" since March 2015 

and, before that, Apple's "Americas iPhone Supply Demand Manager, [Ex. 8; Ex. 3 at 

111:19-112:21], may have knowledge pertinent to quantifying a forward royalty for use of 

Neonode's '879 patent, among other topics. 

 Rahul Menon, Apple's "Americas Supply and Demand" manager for iPhones since 

July 2015, and, before that, "Americas Supply and Demand" manager for iPads, [Ex. 9; 

Ex. 3 at 112:24-114:23], may have knowledge pertinent to quantifying a forward royalty 

for use of the '879 patent. 

 Travis Owens, Apple's Engineering Manager for "Touch and Sensing Hardware" 

since September 2016, [Ex. 10; Ex. 3 at 115:2-120:10], may be knowledgeable about 

aspects of Apple's products that implicate Neonode's patents. In September 2017, Apple 

announced the iPhone X, which lacked a "home button" and incorporated greater use of a 

gesture-based touch screen interface. [Dkt. #1, ¶ 31-32] 

 Scott Tagwerker served as Apple's iPhone supply demand manager from July 2015 

to February 2020, [Ex. 12; Ex. 3 at 121:23-124:12], with responsibilities that included 

numerous accused products, including the iPhone XS/XS Max, 11 Pro/Pro Max, iPhone 

X/8/8+, iPhone 7, and iPhone 6s. 

It would be more convenient and less costly for Mr. Nielsen and Apple's other Austin-based 

employees to testify in WDTX as compared to NDCA. 

 

identifies "iPhone and iPad devices running iOS 13 or a subsequent version of iOS or iPadOS" as 

infringing products. See Dkt. #1, ¶ 77. Apple's iPhone 12 models run iOS 14, an iOS version 

subsequent to iOS 13. See https://www.apple.com/newsroom/2020/10/apple-announces-iphone12-and-iphone-12-mini-a-new-era-for-iphone-with-5g/ (last visited Mar. 23, 2020).

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Finally, no Neonode witnesses and no third-party witnesses whom Neonode currently 

expects to present are "based" in NDCA or reside there. Neonode's manager, Dooyong Lee, works 

and resides in South Korea. Persons involved in commercializing and monetizing the patented 

technology, including Joseph Shain and Ulf Mårtensson, work and reside in Sweden. The patent 

agent who prosecuted the patents-in-suit, Marc Berger, works and resides in Israel. Although Mr. 

Arora resides in Southern California, he, Mr. Lee, Mr. Shain, Mr. Mårtensson, and Mr. Berger are 

willing to travel to WDTX for the case.7 When, as here, witnesses are willing to travel to the 

transferor district, the "convenience of witnesses" factor does not support transfer. Aerielle, Inc. v. 

Monster Cable Prods., Inc., 2007 WL 951639, at *2 (E.D. Tex. Mar. 26, 2007). 

4. Other Factors That Make Trial Easy, Expeditious, and Inexpensive. 

When considering a transfer motion, the Court considers "all other practical problems that 

make trial of a case easy, expeditious and inexpensive." Volkswagen II, 545 F.3d at 315. This 

factor includes "judicial economy benefits" that may result by granting or denying transfer. E.g., 

In re Apple, 979 F.3d at 1344. Apple argues that "[t]his factor is neutral, as this case is still in its 

early stages." [Dkt. #27 at 13] Apple also argues that, "[a]lthough there is a related action in W.D. 

Tex. asserting the '879 and '993 patents, these are separate cases that have only been consolidated 

through the Markman hearing." [Dkt. #27 at 13] The Court should reject these meritless arguments. 

Although considerations of judicial economy and the existence of co-pending litigation 

may not be dispositive, see In re Google Inc., 2017 WL 977038, at *2 (Fed. Cir. Feb 23, 2017), 

"[t]o permit a situation in which two cases involving precisely the same issues are simultaneously 

pending in different District Courts leads to the wastefulness of time, energy, and money that 

§ 1404(a) was designed to prevent," Cont’l Grain, 364 U.S. at 26. "Judicial economy is served by 

 

7 [Ex. 7, ¶ 4; Ex. 11, ¶ 4; Ex. 13, ¶ 4; Ex. 14, ¶ 4; Ex. 15, ¶ 4]

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having the same district court try ... cases involving the same patents." In re Volkswagen of Am., 

Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009); see also In re Vistaprint, 628 F.3d at 1346 (noting that 

"co-pending litigation before the trial court involving the same patent and underlying technology" 

provides "substantial justification" for denying transfer). Thus, "[a] parallel action in this District 

involving the same patent weighs heavily in the transfer analysis." SynKloud, 2020 WL 2528545, 

at *6. This is true regardless of whether the actions are in "early stages," because concerns about 

judicial economy, potentially inconsistent rulings, or expeditious litigation are prospective. See 

Ikorongo, 20-cv-00258, slip op. at 15. 

Here, as in SynKloud and Ikorongo, "[t]hough this factor is not dispositive, judicial 

economy favors having the infringement of the same patent considered by one judge." SynKloud, 

2020 WL 2528545, at *6. On the same day that Neonode sued Apple, it filed Neonode Smartphone 

LLC v. Samsung Elecs. Co. Ltd., No. 20-cv-00507-ADA (Jun. 8. 2020). The complaints against 

Apple and Samsung assert the same two patents and the accused products and functionality are 

very similar.8 Both complaints allege that Apple and Samsung gained pre-suit knowledge of the 

patents in suit, and of their own infringement, as a result of a prior litigation in which Samsung 

cited Neonode's technology as prior art against an Apple patent. [Dkt. #1, ¶¶ 18-27; 20-cv-00507 

Dkt. #1, ¶¶ 18-27] Thus, the two cases involve the same patents, similar accused products and 

functionality, and overlapping factual issues. Although Apple moved to transfer, Samsung did not. 

Samsung's case will remain in WDTX, as should Apple's. 

 

8 For example, Neonode's allegations against Apple for the '879 patent target "swipe typing" 

functionality enabled by Apple's QuickPath application. [Dkt. #1, ¶¶ 43-87] Neonode's allegations 

against Samsung similarly target "swipe typing" functionality. [20-cv-00507 Dkt. #1, ¶¶ 47-48] 

Neonode's allegations against both Apple and Samsung for the '993 patent target similar 

functionality that enables a user to transition the device from a tap-absent state to a tap-present 

state by swiping a displayed graphic. [Dkt. #1, ¶¶ 93-106; 20-cv-00507 Dkt. #1, ¶¶ 56-68]

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Finally, as to Apple's assertion that the Apple and Samsung cases "have only been 

consolidated through the Markman hearing," the cases have in fact been coordinated all the way 

through at least the close of expert discovery, as reflected in the Amended Agreed Scheduling 

Orders entered in both cases. [Dkt. # 35; 20-cv-00507, Dkt. #35] The parties and the Court agreed 

to coordinate the pre-trial schedules in the two cases, recognizing inefficiencies that will result 

from litigating on separate tracks two cases involving the same patents and the same types of 

products. And, when the deadlines in this action's Amended Agreed Scheduling Order were 

vacated pending the resolution of Apple’s transfer motion, the Court granted Samsung's request to 

stay the Samsung case in order to "[t]o promote efficiency." [20-cv-00507, Dkt. #36 at 1; Dec. 11, 

2020 Text Order] Thus, everyone recognizes that having the same court try two cases that involve 

the same patents promotes judicial economy and expeditious litigation while minimizing 

potentially inconsistent rulings. See Ikorongo, 20-cv-00258, slip op. at 14. Samsung's case in 

WDTX "provides a substantial justification" for retaining Apple's case here. In re Vistaprint, 628 

F.3d at 1346. Denying transfer would best promote judicial economy and expeditious litigation 

while avoiding inconsistent rulings. This weighs strongly against transfer. 

B. The Public Interest Factors Do Not Favor Transfer 

1. Administrative Difficulties Flowing From Court Congestion. 

This factor "generally favors a district that can bring a case to trial faster." Found. Med., 

Inc. v. Guardant Health, Inc., 2017 WL 590297, at *3 (E.D. Tex. Feb. 14, 2017). In a number of 

recent cases, the Court noted that its time-to-trial is 25% faster than NDCA's. E.g., Ikorongo, 20-

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cv-00258, slip op. at 17.9 However, a particular court's "general ability to set a fast-paced schedule 

is not particularly relevant to this factor." In re Apple, 979 F.3d at 1344. 

Apple says Docket Navigator reports show that "[p]atent cases in N.D. Cal. have a slightly 

shorter time to trial than W.D. Tex. – since 2008, a median of 2.39 versus 2.59 years." [Dkt. #27 

at 14] It is unknown how current this data is or what period it covers. The data for WDTX may 

overlook a faster time to trial in the Waco Division, which has an Order Governing Proceedings 

that ensures efficient administration of patent cases. Regardless, the difference is only about two 

months. Apple concedes that this "should not be assigned significant weight." [Dkt. #27 at 14] 

According to the latest Federal Court Management Statistics, for the 12-month period 

ending September 30, 2020, the median time from filing to trial for a civil case was 20.4 months 

in WDTX and 44.5 months in NDCA.10 [Ex. 16] WDTX had 602 pending cases per judge, 

compared to 870 in NDCA. [Id.] WDTX had 176 civil cases (4.8% of the total) over three years 

old, as compared to 925 (8.4% of the total) in NDCA. [Id.] This data indicates that NDCA's docket 

is more congested than WDTX's and that this case would get to trial faster in WDTX. 

2. Local Interest In Having Localized Interests Decided At Home. 

This factor "most notably regards not merely the parties' significant connections to each 

forum writ large, but rather the 'significant connections between a particular venue and the events 

that gave rise to a suit.'" In re Apple, 979 F.3d at 1345 (emphasis in original). "The localized 

interest of a district exists when 'the cause of action calls into question the work and reputation of 

several individuals residing in or near that district who presumably conduct business in that 

 

9 See also Hammond Dev. Int'l, Inc. v. Google LLC, 2020 WL 3452987, at *5 (W.D. Tex. June 24, 

2020); Voxer, Inc. v. Facebook, Inc., 2020 WL 3416012, at *6 (W.D. Tex. June 6, 2020); 

SynKloud, 2020 WL 2528545, at *7; Fintiv, 2019 WL 4743678, at *7.

10 The time-to-trial numbers cover all civil cases. The difference between WDTX and NDCA 

"would likely be ... even greater ... if the time-to-trial were narrowed to focus on patent cases." 

LBS Innovations, 2020 WL 923887 at *6. 

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community.'" Ikorongo, 20-cv-00258, slip op. at 18 (citation omitted). Apple argues that "this 

factor strongly favors transfer" because "Apple's corporate headquarters and the vast majority of 

its workforce are in N.D. Cal.—where the company was founded and where the likely Apple 

witnesses for this case are located." [Dkt. #27 at 15] But "a company's presence in a particular 

district weighs only slightly in favor of transfer because 'it is generally a fiction that patent cases 

give rise to local controversy or interest, particularly without record evidence suggesting 

otherwise.'" Ikorongo, 20-cv-00258, slip op. at 18 (citation omitted). 

Apple has a significant presence in WDTX, including approximately 6,000 employees in 

the Austin area. [Ex. 2 at 43] Apple's non-retail facility supports various Apple business activities, 

including engineering, research and development, operations, finance, sales, and customer support. 

[Id. at 44] Apple has approximately 2,800 employees in roles relating to AppleCare, which is 

Apple's extended warranty and technical support service. [Id. at 18] Another approximately 490 

employees work in Apple Global Business Services, providing financial services such as managing 

accounts payable, accounts receivable, and employee reimbursements, recording revenue and 

expenses, and maintaining financial records. [Id. at 18-19] 

Moreover, Apple operates five retail stores located in WDTX. [Ex. 2 at 44] Those stores 

sell Apple products (including the accused products), aid customers in making decisions about 

product purchases, and aid customers in trading in or upgrading older generation devices for 

current models. [Id. at 45] Apple's retail stores host Apple's Genius Bar, which provides customer 

service in various areas, including hardware repairs, software repairs, and support for Apple 

services. [Id.] Some employees at Apple's non-retail and retail facilities are involved in operations, 

finance, sales, and/or customer support for Apple products. [Id.] 

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In addition, as discussed above, Apple has at least one employee located in Austin who 

participated in, and/or has pertinent knowledge about, events that gave rise to this suit. This lawsuit 

"calls into question the work and reputation" of that employee and potentially others that reside in 

WDTX. Their presence gives WDTX a localized interest in this case. See Voxer, 2020 WL 

3416012, at *7; SynKloud, 2020 WL 2528545, at *7; Fintiv, 2019 WL 4743678, at *8. Crediting 

Apple's assertions that other pertinent Apple personnel are located in NDCA, the Court should find 

that the "local interests" factor is neutral and does not favor transfer. See Voxer, 2020 WL 3416012, 

at *7; SynKloud, 2020 WL 2528545, at *7; Fintiv, 2019 WL 4743678, at *8. 

3. The Familiarity Of The Forum With The Law That Will Govern The 

Case And The Avoidance Of Unnecessary Problems Of Conflict Of 

Laws Or The Application Of Foreign Law. 

Apple concedes that these factors are "neutral." [Dkt. #27 at 15] They do not favor transfer. 

C. Other Considerations Counsel Against Transfer. 

The Volkswagen factors are "not necessarily exhaustive or exclusive." Volkswagen II, 545 

F.3d at 315. "The Court may consider facts that do not expressly relate to the factors but are 'in the 

interests of justice,' 28 U.S.C. § 1404(a)." Stingray Music, 2017 WL 1022741, at *3. Relevant here 

is that Apple has previously filed patent infringement actions in Texas.11 This "suggests that 

[Apple] may believe ... venue [in Texas] to be favorable and convenient as a plaintiff in a patent 

lawsuit, but unfavorable and inconvenient as a defendant .... This weighs against transfer." Id.

III. CONCLUSION 

Apple has not carried its burden to show that NDCA is "clearly more convenient" than 

WDTX as a venue for this litigation. The Court should deny Apple Inc.'s motion to transfer. 

 

11 See Apple Computer, Inc. v. Creative Tech. Ltd., No. 9:06-cv-114 (E.D. Tex. June 1, 2006); 

Apple Computer, Inc. v. Creative Tech. Ltd., No. 9:06-cv-149 (E.D. Tex. Jul. 19, 2006); Apple 

Computer, Inc. v. Creative Tech. Ltd., No. 9:06-cv-150 (E.D. Tex. Jul. 19, 2006).

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Case 6:20-cv-00505-ADA Document 56 Filed 04/09/21 Page 19 of 21
Date: April 2, 2021 Respectfully submitted, 

By: /s/ Greer N. Shaw 

Philip J. Graves (CA State Bar No. 153441) 

Email: philipg@hbsslaw.com 

Greer N. Shaw (CA State Bar No. 197960) 

Email: greers@hbsslaw.com 

HAGENS BERMAN SOBOL SHAPIRO LLP 

301 North Lake Avenue, Suite 920 

Pasadena, CA 91101 

Telephone: (213) 330-7150 

Craig D. Cherry (State Bar No. 24012419) 

craig@swclaw.com 

Justin W. Allen (State Bar No. 24081977) 

justin@swclaw.com 

STECKLER WAYNE COCHRAN CHERRY 

8416 Old McGregor Road 

Waco, Texas 76712 

Telephone: (254) 651-3690 

Counsel for Plaintiff Neonode Smartphone LLC 

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Case 6:20-cv-00505-ADA Document 56 Filed 04/09/21 Page 20 of 21
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CERTIFICATE OF SERVICE 

STATE OF CALIFORNIA, COUNTY OF LOS ANGELES 

At the time of service, I was over 18 years of age and not a party to this action. I am 

employed in the City and County of Los Angeles, State of California. My business address is 

Hagens Berman Sobol & Shapiro, 301 North Lake Avenue, Suite 920, Pasadena, CA 91101. 

On April 2, 2021, I served true copies of the following document described as the 

following: 

PLAINTIFF'S OPPOSITION TO DEFENDANT'S MOTION TO TRANSFER 

VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA 

on the interested parties in this action listed below via e-mail: 

 /s/ William Stevens 

 William Stevens 

Betty H. Chen 

Fish & Richardson PC 

111 Congress Avenue, Suite 810 

Austin, TX 78701 

(512) 472-5070 

Fax: 512/320-8935 

Email: Bchen@fr.com 

Benjamin C. Elacqua 

Kathryn A. Quisenberry 

Fish and Richardson PC 

1221 McKinney Street Suite 2800 

Houston, TX 77010 

713-654-5300 

Fax: 713-652-0109 

Email: Elacqua@fr.com 

Email: Quisenberry@fr.com 

Attorneys for Defendant Apple Inc.

Jared A. Smith 

Fish & Richardson P.C. 

12860 El Camino Real, Suite 400 

San Diego, CA 92130 

(858) 678-5070 

Fax: (878) 678-5099 

Email: Jasmith@fr.com 

Aamir A. Kazi 

Fish & Richardson P.C. 

1180 Peachtree Street NE, 21st Floor 

Atlanta, GA 90309 

(404) 892-5005 

Fax: (404) 892-5002 

Email: kazi@fr.com 

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