IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

PROVEN NETWORKS, LLC, SONICWALL 

INC. 

 Plaintiff, 

 v. 

AMAZON.COM, INC., AMAZON WEB 

SERVICES, INC., DELL TECHNOLOGIES, 

INC., DELL, INC., EMC CORPORATION, 

ARISTA NETWORKS, INC., SOLARWINDS 

CORP., NETAPP, INC., ARUBA 

NETWORKS, INC., HEWLETT PACKARD 

ENTERPRISE COMPANY, CISCO 

SYSTEMS, INC., 

 Defendants. 

CASE NO: 6:20-MC-02959-ADA

PROVEN NETWORKS, LLC., 

 Plaintiff, 

 v. 

SOLARWINDS CORP., 

 Defendant. 

Case No. 6:20-CV-00338-ADA 

DEFENDANT SOLARWINDS CORP.’S UNOPPOSED MOTION FOR INTRADISTRICT TRANSFER OF VENUE TO THE AUSTIN DIVISION OF THE WESTERN 

DISTRICT OF TEXAS 
-iTABLE OF CONTENTS 

Page No. 

INTRODUCTION .......................................................................................................................... 1

STATEMENT OF FACTS ............................................................................................................. 2

ARGUMENT .................................................................................................................................. 3

I. LEGAL STANDARD ......................................................................................................... 3

II. THIS CASE SHOULD BE TRANSFERRED TO THE AUSTIN DIVISION. ................. 5

1. Factors Favoring Transfer ........................................................................... 5

a) Access to Sources of Proof Is Easier In the Austin Division. ......... 5

b) The Cost of Attendance for Willing Witnesses Is Less 

in the Austin Division.. ................................................................... 6

c) Local Interests Favor Transfer to Austin. ....................................... 7

2. The Remaining Factors Are Neutral. .......................................................... 8

CONCLUSION ............................................................................................................................... 8
-iiTABLE OF AUTHORITIES 

Page No(s). 

Cases 

Auto-Dril, Inc. v. Pason Sys. USA Corp., 

No. 6:15-CV-00093, 2015 WL 12780779 (W.D. Tex. June 29, 2015) .....................................8 

Cadle Co. v. Keyser, 

No. 14-CV-00758, 2015 WL 764256 (W.D. Tex. Feb. 23, 2015) .............................................1 

Datascape, Ltd v. Dell Techs., 

No. 19-CV-00129-ADA, ECF No. 44 (W.D. Tex. June 7, 2019) .....................................1, 4, 8 

Eastep v. City of Odessa, 

No. 17-CV-00059, 2017 WL 2537358 (W.D. Tex. June 12, 2017) ..........................................1 

Frac Shack Inc. v. Alaska Fuel Distribs. Inc., 

No. 18-CV-00660, ECF No. 28 (W.D. Tex. Jan. 29, 2019) ......................................................1 

Hammond Dev. Int’l, Inc. v. Amazon.com, Inc., 

No. 6:19-CV-00355-ADA, 2020 WL 6136783 (W.D. Tex. Mar. 30, 2020) .................1, 4, 6, 7 

McCloud v. McClinton Energy Grp., L.L.C., 

No. 14-CV-00620, 2014 WL 6388417 (W.D. Tex. Nov. 14, 2014) ..........................................1 

Mimedx Grp., Inc. v. Texas Human Biologics, Ltd., 

No. 14-CV-00464, 2014 WL 12479284 (W.D. Tex. Aug. 12, 2014) ............................1, 5, 6, 7 

Proven Networks, LLC v. SolarWinds Corp., 

No. 6:20-cv-003338 ...................................................................................................................2 

In re Radmax, Ltd., 

720 F.3d 285 (5th Cir. 2013) .................................................................................................4, 5 

In re Volkswagen of Am. Inc., 

545 F.3d 304 (5th Cir. 2008) .....................................................................................................4 

Statutes 

28 U.S.C. § 1404(a) .................................................................................................................1, 4, 5 

Other Authorities 

Fed. R. Civ. P. 45(c)(1)(B)(ii) ..........................................................................................................8 
-1- 

Pursuant to 28 U.S.C. § 1404(a), SolarWinds Corp. (“SolarWinds”) moves this Court for 

an intra-district transfer of this action to the Austin Division. Plaintiff does not oppose. 

INTRODUCTION 

Plaintiff Proven Networks, LLC (“Proven”) and Defendant SolarWinds have no 

meaningful connection to the Waco Division. SolarWinds does, however, have a significant 

presence in Austin, Texas, where it is headquartered. Accordingly, SolarWinds requests this case 

remain in the Western District of Texas but be transferred to the Austin Division. 

Courts in this district have frequently transferred cases within the Western District of 

Texas when a case had little or no connection to the initial forum and the majority of the events 

and witnesses are located elsewhere in the district. See, e.g., Hammond Dev. Int’l, Inc. v. 

Amazon.com, Inc., No. 6:19-CV-00355-ADA, 2020 WL 6136783 (W.D. Tex. Mar. 30, 2020); 

Datascape, Ltd v. Dell Techs., No. 19-CV-00129-ADA, ECF No. 44 (W.D. Tex. June 7, 2019) 

(citing In re Radmax, Ltd., 720 F.3d 285, 288-90 (5th Cir. 2013)); see also, Mimedx Grp., Inc. v. 

Texas Human Biologics, Ltd., No. 14-CV-00464, 2014 WL 12479284 (W.D. Tex. Aug. 12, 

2014); Frac Shack Inc. v. Alaska Fuel Distribs. Inc., No. 18-CV-00660, ECF No. 28 (W.D. Tex. 

Jan. 29, 2019); McCloud v. McClinton Energy Grp., L.L.C., No. 14-CV-00620, 2014 WL 

6388417 (W.D. Tex. Nov. 14, 2014); Eastep v. City of Odessa, No. 17-CV-00059, 2017 WL 

2537358 (W.D. Tex. June 12, 2017); Cadle Co. v. Keyser, No. 14-CV-00758, 2015 WL 764256 

(W.D. Tex. Feb. 23, 2015). 

The Austin Division is clearly a more convenient forum for this case than Waco, to which 

neither SolarWinds nor Proven has any relevant connection. The Court should therefore transfer 

this case to Austin for the convenience of the parties and witnesses. 
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STATEMENT OF FACTS 

Proven alleges that SolarWinds’s use of deep packet inspection (DPI) functionality in 

products such as SolarWinds’s Network Performance Monitor Solution (NPM) infringes United 

States Patent No. 8,165,024 (the “’024 Patent” or the “Asserted Patent”). Compl. ¶¶ 1, 4, 12, 

ECF No. 1 (“Compl.”), Proven Networks, LLC v. SolarWinds Corp., No. 6:20-cv-003338. 

Proven filed its complaint in Waco, alleging that venue is proper in the Western District of Texas 

because SolarWinds maintains its principal place of business in Austin. Id. ¶ 9. 

SolarWinds is a developer of enterprise IT infrastructure management software for IT 

professionals and is headquartered in Austin, Texas. Ex. A, Declaration of Tim Danner (“Danner 

Decl.”) ¶¶ 3-4. The DPI functionality accused in this case was released as a module to the NPM 

product in 2014. Id. ¶ 8. In 2015, SolarWinds incorporated the functionality into the NPM 

product. Id. SolarWinds developed and maintains the software underpinning the NPM product. 

Id. ¶ 6. The NPM product is a network monitoring software product that enables IT professionals 

to quickly detect, diagnose, and resolve network performance problems and outages. Id. ¶ 9. 

Among other things, SolarWinds’s NPM product provides users the ability to monitor network 

devices, interface availabilities, and performance indicators, such as bandwidth utilization, 

packet loss, latency, and other technical errors. Id. The NPM product allows users to get an at-aglance summary of network and application performance metrics so that the user can identify 

reduction or changes in performance and act accordingly. Id. 

The NPM product, like all of SolarWinds’s software products, is distributed online 

through SolarWinds’s publicly accessible website, www.solarwinds.com. Id. ¶ 10. Through 

distribution on SolarWinds’s website, the NPM product can be downloaded and used by any IT 
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professional in the United States. Id. The SolarWinds website through which it is distributed is 

maintained from Austin, Texas. Id. 

SolarWinds has no offices or operations in the Waco Division of the Western District of 

Texas. Id. ¶ 11. SolarWinds is not aware of any documents or evidence relevant to this case that 

are in the Waco Division. Id. SolarWinds is not aware of any witness that it expects to depose 

that would be in this Division. Id. 

Persons knowledgeable about the accused functionality will be SolarWinds employees 

located in Austin, Texas. Id. ¶ 12. For example, SolarWinds’s NPM design team, product teams, 

and engineering executives are in Austin. Id. To the extent SolarWinds is in possession of 

relevant evidence, such evidence would thus be found in its Austin-based headquarters. Id. 

Similarly, to the extent any witnesses from SolarWinds are called to testify, they would also be 

found in Austin. Id. ¶ 13. For example, technical witnesses would likely include Tim Danner and 

Lee McClendon, who are involved in DPI and NPM development, and Darren Beck, who is 

involved in the continual development of SolarWinds’s website (i.e., SolarWinds’s distribution 

platform). Id. These witnesses work in Austin, Texas and reside nearby. Id. 

Like SolarWinds, Proven does not appear to have any relevant connection to the Waco 

Division. Proven alleges that it is organized under the laws of California and does not allege that 

it has any presence in Texas or that it operates anywhere in Texas—including in Waco or in 

Austin. See Compl. ¶ 5. Proven’s place of business is in Los Angeles, California. Ex. B, 

Declaration of Austin Schnell (“Schnell Decl.”) ¶¶ 2-4. 

ARGUMENT 

I. LEGAL STANDARD 

“For the convenience of parties and witnesses, in the interest of justice, a district court 

may transfer any civil action to any other district or division where it might have been brought.” 
-4- 

28 U.S.C. § 1404(a) (emphasis added). As the Fifth Circuit held in Radmax, the § 1404(a) 

analysis applies not only when a defendant seeks transfer to another judicial district, but also 

when a defendant seeks transfer to another division within the same district. 720 F.3d at 288 (5th 

Cir. 2013). 

In determining whether transfer is appropriate under § 1404(a), courts first consider 

“whether a civil action ‘might have been brought’ in the destination venue.” In re Volkswagen of 

Am. Inc., 545 F.3d 304, 312 (5th Cir. 2008). If so, courts weigh the relative convenience of the 

venue based on: “(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; (4) all other practical problems that make trial of a case easy, expeditious and 

inexpensive; (5) the administrative difficulties flowing from court congestion; (6) the local 

interest in having localized interests decided at home; (7) the familiarity of the forum with the 

law that will govern the case; and (8) the avoidance of unnecessary problems of conflict of laws 

[or in] the application of foreign law.” Radmax, 720 F.3d at 288 (citing Volkswagen, 545 F.3d at 

315). 

In Radmax, the Fifth Circuit ordered an intra-district transfer because the “facts and 

circumstances of [the] case [were] wholly grounded in the transferee forum” and the “case [had] 

no connection to the [transferor forum]” after it found that three factors supported the transfer 

and the remaining five factors were neutral. Id. at 290. Similarly, in Hammond, this Court 

ordered an intra-district transfer from Waco to Austin when access to sources of proof was 

relatively easier in Austin, no employees of the defendant were located in the Waco division, and 

other factors either favored transfer or were neutral. 2020 WL 6136783 at *2-6; see also 

Datascape, No. 6:19-CV-00129-ADA, slip op. at 3-6 (same). 
-5- 

II. THIS CASE SHOULD BE TRANSFERRED TO THE 

AUSTIN DIVISION. 

Proven Could Have Filed This Case in Austin. 

The first question under § 1404(a) is whether the destination venue would have been a 

proper venue for the filing of the lawsuit. Because SolarWinds has its principal place of business 

has in Austin and, for purposes of this case only, admit that venue is proper in the Western 

District of Texas, this case could have been brought in the Austin Division. See Mimedx, 2014 

WL 12479284, at *1.

The Austin Division Is Clearly More Convenient 

Than the Waco Division. 

The relevant factors show that Austin is clearly more convenient than Waco. Three 

factors favor transfer, five are neutral, and none support remaining in Waco. Transfer is therefore 

warranted. See Radmax, 720 F.3d at 290 (compelling intra-district transfer where three factors 

supported transfer and five were neutral); Mimedx, 2014 WL 12479284, at *3 (ordering transfer 

where four factors favored transfer, four were neutral, and none favored the original venue). 

1. Factors Favoring Transfer 

a) Access to Sources of Proof Is Easier In 

the Austin Division. 

SolarWinds’s relevant documents and physical evidence in the Western District of Texas 

are in Austin. Danner Decl. ¶¶ 11-12. Courts have recognized that 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 weigh[s] in favor of transfer to that location.” 

Mimedx, 2014 WL 12479284, at *2 (quoting In re Nintendo Co., Ltd., 589 F.3d 1194, 1199 (Fed. 

Cir. 2009)). SolarWinds has no offices or operations in the Waco Division of the Western 

District of Texas. Danner Decl. ¶ 11. SolarWinds is not aware of any documents, evidence, or 
-6- 

witnesses relevant to this case that are in the Waco Division. Id. In short, SolarWinds has no 

meaningful connection to the Waco division. 

SolarWinds does have a significant connection to the Austin division because its 

headquarters and principal place of business is in Austin. Id. ¶ 3. For example, SolarWinds’s 

NPM design team, product teams, and engineering executives are in Austin. Id. ¶ 12. To the 

extent SolarWinds is in possession of relevant evidence, such evidence would thus be found in 

its Austin-based headquarters. Id. Any pertinent financial and marketing witnesses would also 

work at the company’s Austin, Texas headquarters and reside nearby. Id. ¶ 14. 

Proven does not allege that it has any connection to the Western District, or that it has 

any documents relevant documents here. Accordingly, this factor strongly supports transfer to 

the Austin Division. 

b) The Cost of Attendance for Willing 

Witnesses Is Less in the Austin Division. 

The third factor “considers the cost of attendance of all willing witnesses.” Mimedx, 2014 

WL 12479284, at *2. This Court has acknowledged that “[t]he convenience of witnesses is the 

single most important factor in the transfer analysis.” See Hammond, 2020 WL 6136783 at *3 

(citing In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)). In Hammond, this Court 

found this factor favored an intra-district transfer when the defendants’ witnesses with relevant 

knowledge worked in and resided near Austin, Texas, and the plaintiff’s witnesses were located 

outside of the Western District. Id. at *3-4. The Court noted that all the Amazon defendants’ 

witnesses would need to travel for trial and pay for lodging if the trial were in Waco, but not if 

the trial were in Austin. Id. at *4. Even though the costs for plaintiff’s witnesses may have been 

lower in Waco, on balance the Court found this factor favored defendants because there were 
-7- 

“likely significantly more [defendant] witnesses than [plaintiff] witnesses 

 who could “stay in their Austin homes” if transferred to the Austin Division. Id. 

Here, as in Hammond, persons knowledgeable about the accused functionality are 

SolarWinds employees located in Austin, Texas. Danner Decl. ¶ 12. This includes technical 

witnesses, witnesses who maintain the website through which the accused product is distributed, 

and any pertinent financial or marketing witnesses. Id. ¶¶ 12-14. And like the defendants’ 

witnesses in Hammond, trial in Austin would significantly reduce or even eliminate 

SolarWinds’s lodging expenses that would otherwise be incurred if trial were in Waco. Id. ¶ 15. 

Austin is clearly more convenient for SolarWinds witnesses. Id. 

To the extent there are Proven witnesses whose inconvenience might be increased if trial 

were held in Austin, that inconvenience should be discounted because, as this Court has 

observed, in “patent infringement cases, the bulk of the relevant evidence usually comes from the 

accused infringer.” Mimedx, 2014 WL 12479284, at *2 (quoting Nintendo, 589 F.3d at 1199). 

Although the identity and exact number of witnesses likely to be presented at trial cannot be 

determined at this early stage of the case, it is reasonable to assume that the number of witnesses 

will be greater for SolarWinds than for Proven, just as this Court did in Hammond. See 2020 WL 

6136783 at *4. Accordingly, a transfer to Austin will decrease the collective overall cost and 

inconvenience to the parties because there are likely to be more relevant documents and 

witnesses produced by SolarWinds.

c) Local Interests Favor Transfer to Austin. 

Austin also has a considerable interest in deciding this case. SolarWinds is headquartered 

in Austin and has numerous employees there. See Danner Decl. ¶¶ 12-14. Austin therefore has 

substantially more interest and connection to the outcome of this litigation than Waco, where no 

party has a presence. Mimedx, 2014 WL 12479284, at *3 (“Defendants and their employees are 
-8- 

local to the San Antonio area. The ultimate outcome of this suit likely affects local San Antonio 

interests more acutely than local Austin interests.”); Datascape, No. 19-CV-00129-ADA, slip op. 

at 5-6 (local interest favors transfer from Waco to Austin when “outcome of the instant action 

likely affects local Austin interests more acutely than local Waco interests.”). 

2. The Remaining Factors Are Neutral. 

The remaining factors are neutral. SolarWinds is unaware of any third-party witnesses 

unwilling to attend trial. “However, courts, including courts within this district, have found this 

factor to be neutral ‘where the parties have not alleged that non-party witnesses are unwilling to 

testify.’” Auto-Dril, Inc. v. Pason Sys. USA Corp., No. 6:15-CV-00093, 2015 WL 12780779, at 

*3 (W.D. Tex. June 29, 2015). Even if there were a witness who could not be persuaded to attend 

trial voluntarily, a non-party witness may still be compelled to travel to Austin so long as they 

are not subject to “substantial expense.” Fed. R. Civ. P. 45(c)(1)(B)(ii). 

This case would remain part of the multidistrict litigation even if transferred to Austin for 

trial. Because the parties do not seek reassignment to another judge, there is no dispute that both 

divisions are equally familiar with the patent laws, are subject to the same local rules, and apply 

Fifth Circuit law, and there are no concerns with other practical considerations because the case 

would remain consolidated for pretrial purposes. These factors are therefore also neutral.

CONCLUSION 

This case has no ties to Waco. All the private and public factors either favor transfer to 

Austin, or are neutral. Accordingly, the Court should transfer this case to Austin. 

 
-9- 

December 4, 2020 Respectfully submitted, 

By: /s/ Brian C. Nash 

Brian C. Nash (TX Bar No. 24051103) 

brian.nash@pillsburylaw.com 

Edward A. Cavazos (TX Bar No. 00787223) 

ed.cavazos@pillsburylaw.com 

Austin M. Schnell (TX Bar No. 24095985) 

austin.schnell@pillsburylaw.com 

401 Congress Avenue, Suite 1700 

Austin, Texas 78701 

Telephone: (512) 580-9629 

Facsimile: (512) 580-9601 

Attorney for Defendant SolarWinds Corp.

 
-10- 

CERTIFICATE OF CONFERENCE 

In accordance with Local Rule CV-7(i), counsel for the parties conferred on December 1, 

2020 regarding the subject matter of this motion and counsel for Plaintiff indicated that Plaintiff 

is opposed to the motion. 

/s/ Brian C. Nash 

Brian C. Nash 

CERTIFICATE OF SERVICE 

I hereby certify that a true and correct copy of the above and foregoing document has 

been served on all counsel of record via the Court’s ECF system on December 4, 2020. 

/s/ Brian C. Nash 

Brian C. Nash