EMERGING AUTOMOTIVE LLC,

Plaintiff, 

v. 

KIA CORPORATION, KIA AMERICA, 

INC.,

Defendants. 

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CIVIL ACTION NO. 2:23-CV-00437-JRG

(LEAD CASE)

EMERGING AUTOMOTIVE LLC,

Plaintiff, 

v. 

TOYOTA MOTOR CORP., et al., 

Defendants. 

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CIVIL ACTION NO. 2:23-CV-00434-JRG

(MEMBER CASE)

MEMORANDUM OPINION AND ORDER

I. INTRODUCTION

Before the Court is Defendants Kia Corporation and Kia America, Inc.’s Motion to Transfer

Venue to the United States District Court for the Central District of California Pursuant to 28 

U.S.C. § 1404(a) (the “Motion”). (Dkt. No. 31). Having considered the Motion and the related 

briefing, the Court finds that it should be and hereby is DENIED. 

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

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II. BACKGROUND

Emerging Automotive LLC (“EA” or “Plaintiff”) filed this lawsuit against Defendants Kia

Corporation (“KC”) and Kia America, Inc. (“KUS”) (together, the “Kia Defendants” or 

“Defendants”) on September 22, 2023, accusing Defendants of both directly and indirectly 

infringing U.S. Patent Nos. 10,407,026, 11,738,659, and 9,365,188 (collectively the “Asserted 

Patents”). (Dkt. No. 1). 

On September 20, 2023, two days prior to filing the present action, Plaintiff filed Case No. 

2:23-cv-00434-JRG (the “Toyota Case”) in this district alleging that Toyota Motor North America 

Inc. and affiliates (collectively, “Toyota” or the “Toyota Defendants”) infringe the Asserted Patents 

and two additional patents. See Emerging Automotive LLC v. Toyota Motor North America Inc., et 

al., No. 2:23-cv-00434-JRG, Dkt. No. 1 (E.D. Tex. Sep. 20, 2023). On December 13, 2023, given 

the overlapping nature of the cases, the Court consolidated the Toyota Case with the present case 

(No. 2:23-cv-437-JRG) against the Kia Defendants. (Dkt. No. 15). On January 17, 2024, the Kia 

Defendants filed this Motion seeking transfer to the Central District of California (“CDCA”) for 

convenience under 28 U.S.C. § 1404(a). (Dkt. No. 31). On February 6, 2024, the Court granted 

Plaintiff’s unopposed request for expedited venue discovery. (Dkt. No. 35). 

The Toyota Defendants have not sought transfer from the Eastern District of Texas 

(“EDTX”). Accordingly, regardless of the disposition of the present Motion, the claims brought by 

Plaintiff against the Toyota Defendants will be adjudicated by this Court. 

III. 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 may have been brought.” 28 

U.S.C. § 1404(a). The question of whether a suit “might have been brought” in the transferee forum 

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encompasses subject matter jurisdiction, personal jurisdiction, and propriety of venue. Viking 

Techs., LLC v. Assurant, Inc., No. 2:20-CV-00357-JRG, 2021 WL 3520756, at *1 (E.D. Tex. June 

21, 2021) (quoting Hoffman v. Blaski, 363 U.S. 335, 343–44 (1960)). If this threshold burden is 

satisfied, the party seeking transfer must then establish that transfer is warranted in the interest of 

convenience. 

In evaluating a motion to transfer pursuant to § 1404(a), the Court considers the Fifth 

Circuit’s non-exhaustive list of private and public interest factors. In re Volkswagen AG, 371 F.3d 

201, 203 (5th Cir. 2004) (Volkswagen I). The private interest factors include: (1) “the relative ease 

of access to sources of proof,” (2) “the availability of compulsory process to secure the attendance 

of witnesses,” (3) “the cost of attendance for willing witnesses,” and (4) “all other practical 

problems that make trial of a case easy, expeditious and inexpensive.” (Id.). The public interest 

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

interest in having localized interests decided at home,” (3) “the familiarity of the forum with the 

law that will govern the case,” and (4) “the avoidance of unnecessary problems of conflict of laws 

of the application of foreign law.” (Id.). 

While a plaintiff’s choice of venue is not an express factor in this analysis, the appropriate 

deference afforded to the plaintiff’s choice is reflected in a defendant’s elevated burden of proof. 

In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (Volkswagen II). To support its 

claim for a transfer under § 1404(a), the defendant must demonstrate that the transferee venue is 

“clearly more convenient” than the venue chosen by the plaintiff. (Id.). Absent such a showing, 

however, the plaintiff’s choice is to be respected. (Id.). “When deciding a motion to transfer under 

§ 1404(a), the Court may consider undisputed facts outside of the pleadings, such as affidavits or

declarations, but must draw all reasonable inferences and resolve factual conflicts in favor of the 

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non-moving party.” Hammers v. Mayea-Chang, No. 2:19-cv-181-JRG, 2019 WL 6728446, at *4 

(E.D. Tex. Dec. 11, 2019) (collecting cases). 

IV. DISCUSSION

The threshold inquiry is “whether the judicial district to which transfer is sought would

have been a district in which the claim could have been filed.” Volkswagen I, 371 F.3d at 203. 

Plaintiff does not dispute that the Complaint could have been filed in the Central District of 

California. See (Dkt. No. 46). Accordingly, the Court finds that this threshold question is satisfied 

and turns next to the question of convenience. 

A. Private Interest Factors

1. The Relative Ease of Access to Sources of Proof

Defendants argue that this factor favors transfer because “the relevant evidence within 

KUS’ possession, custody, or control relating to the accused Digital Key technology is located in 

Irvine, California.” (Dkt. No. 31 at 10-11 (citing Dkt. No. 31-1 (Somasekharan Decl.), ¶ 6)).

Defendants further contend that “[n]either KUS nor KC are aware of any documents related to the 

design and development of the accused Digital Key feature of Kia vehicles, or sales and 

profitability information regarding that feature, located in the Eastern District of Texas.” (Id. at 11

(citing Dkt. No. 31-3 (Kim Decl.), ¶ 5)). Finally, Defendants argues that “documentary evidence 

related to the conception and reduction to practice of the invention claimed by the patents-in-suit 

is likely to be held by the inventors, Angel A. Penilla and Albert S. Penilla, who, on information 

and belief, reside in California.” (Id. (citing Dkt. No. 31-6)).

In response, Plaintiff argues that “KUS has offices in this district” in Plano, Texas, and that 

those offices “house a document server that holds documents concerning sales and marketing of 

the accused Kia vehicles.” (Dkt. No. 46 at 4). Plaintiff further argues that “there are numerous 

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KUS employees at the Plano office that are relevant to sales and marketing of the accused Kia 

vehicles, and any documents from these custodians reside in this District as well.” (Id.). Finally, 

Plaintiff notes that “KUS does not identify any physical or hard copy documents” in CDCA related 

to the “design, development, and sale of the accused functionality,” only speculation from KUS’ 

declarant that such documents might exist. (Id.). With respect to Plaintiff’s own documents, 

Plaintiff represents that its “documents are stored in electronic format and are in Scotts Valley, 

California, which is in NDCA and hundred miles outside CDCA.” (Id. (citing Dkt. No. 46-2 

(Penilla Decl.), ¶¶ 2-3)).

In reply, Defendants argue that “while there is a server in Texas that stores documents 

relating to distribution, marketing, and sales of Kia vehicles generally within the Southwest region, 

that server has ‘no documents concerning the design, development, manufacture, marketing, or 

sale of the accused functionality [i.e., Digital Key or Kia Connect].’” (Dkt. No. 48 at 4 (citing Dkt. 

No. 46-3 at 8)). As such, Defendants contend that “the server in Texas cannot be afforded the same 

weight as the servers that support the accused functionality or store documents specifically related 

to that functionality, all of which are located in CDCA.” (Id. at 4-5). Defendants further argue that 

source code developed by third parties including HAEA (located in CDCA) will need to be 

analyzed to assess Plaintiff’s direct infringement allegations in this case. (Id. at 5).

In sur-reply, Plaintiff argues that “Defendants proffer no evidence about the relative volume 

of documents in either District” and that “all that is in the record is that there are some relevant 

documents on servers in CDCA.” (Dkt. No. 51 at 1-2).

The Court finds that this factor is neutral in the transfer analysis. As an initial matter, neither 

party asserts that any physical documents or evidence exist in either district, lessening the weight 

of this factor in the transfer analysis. In re Planned Parenthood Fed’n of Am., Inc., 52 F.4th 625, 

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630 (5th Cir. 2022) (recognizing that electronic evidence is equally accessible in different forums

and holding that “[t]he location of evidence bears much more strongly on the transfer analysis 

when, as in Volkswagen, the evidence is physical in nature”) (citing Volkswagen II, 545 F.3d at 

316–17). 

With respect to KC’s documents in the Republic of Korea and Plaintiff’s documents in the 

NDCA, the Court finds that such electronically-stored documents are equally accessible in either 

district. Cf. Lionra Techs. Ltd. v. Fortinet, Inc., No. 2:22-CV-00322-JRG-RSP, 2023 WL 7491853, 

at *3 (E.D. Tex. Nov. 12, 2023) (finding that the defendant had “not shown there would be any 

difference between sending electronic files from Vancouver to Texas compared to California”). 

With respect to KUS and HAEA, Defendants contend that relevant information related to 

the accused technology is maintained electronically in CDCA and Plaintiff contends that 

documents related to the sales and marketing of the accused Kia vehicles exist in EDTX. Neither 

Plaintiff nor Defendants identify the quantity of relevant documents stored in either location. On 

the limited record before it, the Court is not in the position to decide which type of documents are 

more relevant based on little more than attorney argument. Cf. Cardware Inc. v. Samsung Elecs. 

Co., No. 2:22-CV-0141-JRG-RSP, 2023 WL 2871052, at *2 (E.D. Tex. Apr. 8, 2023) (finding this 

factor neutral where “the record establishes that evidence related to design and development is 

located in the NDCA whereas evidence related to damages is located in the EDTX”). Given that 

(1) sources of proof are maintained in both districts, (2) all the evidence is apparently stored

electronically on servers, and (3) the parties provide no indication as to the quantity of evidence in 

either district, the Court finds that this factor weighs neutrally in the transfer analysis. 

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2. The Availability of Compulsory Process to Secure the Attendance of

Witnesses

Defendants argue that “this factor weighs heavily in favor of transfer” because: (1) 

“employees of non-party HAEA assist in technical development of the accused Digital Key 

technology and are located in the Central District of California, within its subpoena power” and 

(2) “to the extent a trial subpoena is require to compel attendance of the named inventors of the

Asserted Patents, they are also located in California and traveling to the Central District would not 

incur ‘substantial expense’ for those witnesses.” (Dkt. No. 38 at 10 (quoting Fed. R. Civ. P. 45(c))). 

By contrast, Defendants claim that they are “aware of no non-party witnesses having relevant 

evidence in the Eastern District of Texas.” (Id.).

In response, Plaintiff argues that “Defendants fail to identify by name a single-third party 

witness under this factor, and unnamed witnesses cannot be considered in the convenience transfer 

analysis.” (Dkt. No. 38 at 5 (citing Durret v. Walmart, Inc., No. 2:18-cv-00332-JRG, 2018 WL 

5630521, at *3 (E.D. Tex. Oct. 31, 2018))). Specifically, Plaintiff contends that “[n]aming three 

Hyundai-related companies as third-party witnesses is tantamount to failing to name any witnesses 

at all,” as “[a] third-party corporation cannot be called at trial via a Rule 45 trial subpoena.” (Id. at 

6). Plaintiff further argues that “for two of the three Hyundai-related third parties—HAEC and 

HMG R&D—Defendants admit that any pertinent individuals are in Korea and not subject to 

compulsory service for trial in any district court, even if there were witnesses identified by name.” 

(Id.). Further, Plaintiff contends with respect to HAEA that Defendants simply state that “the 

HAEA employees with whom [Defendants] work on these technologies are predominantly located 

in the Los Angeles area,” (Dkt. No. 31-1, ¶ 7), which “fails to identify an actual witness by name 

who is subject to the subpoena power of CDCA.” (Id.). With respect to its own inventors, Plaintiff 

argues that: (1) “compulsory service is not necessary for the two named inventors because neither 

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is an unwilling witness;” and (2) “the inventors cannot be counted by Defendants in both the 

compulsory process and willing witness factors, as Kia’s motion attempts to do.” (Id. at 7).

By contrast, Plaintiff argues that there “are third-party prior art witnesses located in the 

Eastern District of Texas and subject to this Court’s subpoena power,” specifically the “purported 

inventors of U.S. Patent No. 8,816,845,” including Scott J. Hoover (Allen, Texas), Joseph Hilburn 

(Frisco, Texas), and Paul Hubner (McKinney Texas). (Id.). Plaintiff notes that “Defendants 

represented that these are relevant witnesses.” (Id.).1

In reply, Defendants argue that Plaintiff “does not dispute that these [Hyundai] third parties 

have corporate knowledge of the accused functionality and that HAEA employees with that 

knowledge are located in CDCA”; rather, Plaintiff “argues these third parties should be discounted 

because their employees are not identified by name.” (Dkt. No. 48 at 4). With respect to witnesses 

in EDTX, Defendants contend that Plaintiff merely “cherry picked from among hundreds of 

references listed on the Asserted Patents” to identify prior art inventors in Texas, and that these 

individuals “should be afforded no weight as there is no evidence that this reference is particularly 

important, and ‘inventors of prior art rarely, if ever, actually testify at trial.’” (Id. (quoting Realtime 

Data, LLC v. Rackspace US, Inc., No. 6:16-CV-00961, 2017 WL 772653, at *8 (E.D. Tex. Feb. 28, 

2017))).

In sur-reply, Plaintiff first notes that “Defendants do not dispute that two of the third-party 

companies named—HAEC and HMG R&D—are in Korea and thus not subject to compulsory 

service in any district court.” (Dkt. No. 51 at 4). Plaintiff notes that this leaves only HAEA, which 

“cannot be subpoenaed to testify at trial” under Rule 45. (Id. at 5). Further, Plaintiff notes that 

“Defendants’ assertion that employees of HAEA are relevant and ‘predominantly located in the 

1 In sur-reply, Plaintiff contends that Defendants identified these individuals as relevant in their initial disclosures. 

(Dkt. No. 51 at 5 (citing Dkt. No. 51-1)).

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Los Angeles area,’ strains credibility,” as “none are specifically named despite the fact that 

Defendants purport to work with these folks.” (Id.). 

The Court finds that this factor is neutral in the transfer analysis. The Fifth Circuit has 

instructed that “the availability of compulsory process receives less weight when it has not been 

alleged or shown that any witness would be unwilling to testify.” Planned Parenthood, 52 F.4th at 

630–31 (internal quotation omitted). Here, Defendants have neither shown nor alleged that any 

non-party witnesses would be unwilling to testify in this case. Indeed, Defendants point to the 

named inventors of the Asserted Patents for this factor, but those individuals—Angel A. Penilla 

and Albert S. Penilla—affirmatively represent that they are willing witnesses in this case. (Dkt. 

No. 46-2, ¶¶ 4-5).2

 As such, these named inventors have no bearing on this factor.3

The only other potential witnesses Defendants identify for this factor are employees of 

non-party HAEA who purportedly reside in CDCA.4 However, Defendants do not identify a single 

actual witness at HAEA who they expect to testify at trial, despite Plaintiff making that issue 

central in its Response. On the record before it, the Court has no way of knowing whether one, 

ten, or zero HAEA employees may be sought for trial testimony, let alone whether any such 

witnesses would be unwilling and require compulsory process. Defendants seek transfer based on

convenience—a request for which they bear the burden—and yet Defendants fail to provide the 

Court with sufficient evidence to conclude that their proposed forum would be any more 

convenient than this District with respect to this factor. 

2 The Court further notes that these named inventors are outside of the absolute subpoena power of the CDCA.

3 Defendants identify the named inventors under this factor as well as the willing witnesses factor. As the Court 

discusses in greater detail below (see infra § IV.A.3), such double counting of witnesses is improper. 4 It is undisputed that any potential witnesses from non-parties HAEC and HMG R&D are located in the Republic of 

Korea and not subject to compulsory process in either CDCA or EDTX.

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No doubt it would be unreasonable for the Court to heavily weigh every single employee 

of HAEA (a number not even in the record before the Court) as favoring transfer under this factor; 

likewise, it would be unreasonable to afford zero weight to any potential, relevant HAEA 

employees that do reside within CDCA. While Defendants are correct that the HAEA employees 

should not be discounted “just because individual employees were not identified,” In re HP Inc., 

826 F. App’x 899, 903 (Fed. Cir. 2020), the Court still needs a reasoned basis to afford weight to 

those employees under this factor. 

The only evidence in the record on this point is the Declaration of Sujith Somasekharan, 

which, in a single sentence, provides that “HAEA employees with whom [KUS] work[s] on these 

[Kia Connect and Digital Key] technologies are predominantly located in the Los Angeles area.” 

(Dkt. No. 31-1). Based on Defendants’ own representation, they work with these HAEA employees 

and surely could identify specific individuals if they so desired. The Court further notes that 

Defendants only represent that the HAEA employees are “predominantly” located in the Los 

Angeles area, providing no certainty that any relevant witnesses would actually be subject to the 

subpoena power of the CDCA. At its base, the Court finds Mr. Somasekharan’s declaration devoid 

of information readily attainable (or already possessed) by Defendants that could provide the 

necessary insight to resolve the issue. As the Federal Circuit has repeatedly noted, “it is reasonable 

to reject vague and unsupported statements regarding the location of potential witnesses or sources 

of proof.” In re HP Inc., 826 F. App’x at 903 (citing In re Apple Inc., 743 F.3d 1377, 1379 (Fed. 

Cir. 2014)). While the Court will not zero out the weight of potential HAEA witnesses entirely, the 

Court cannot place significant weight on a single vague and carefully worded sentence devoid of 

relevant details. Accordingly, while the Court finds that these potential HAEA witnesses generally 

favor transfer to CDCA, the Court does not afford them significant weight. 

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On the other hand, Plaintiff specifically identifies three third-party prior art witnesses 

located in EDTX—Scott J. Hoover (Allen, Texas), Joseph Hilburn (Frisco, Texas), and Paul 

Hubner (McKinney, Texas)—who are listed inventors on U.S. Patent No. 8,816,845 (the “’845 

Patent”). The basis for these individuals’ relevance is as follows: (1) Defendants’ Initial and 

Additional Disclosures state that “the following individuals are likely to have discoverable 

information on the subject of prior art: individuals listed in patents, publications and other 

references in the file histories of the patents-in-suit, and any related patents or related applications” 

(Dkt. No. 51-1 at 6 (emphasis added)); and (2) these three individuals are named inventors on one 

out of hundreds of prior art references listed in the Asserted Patents (Dkt. No. 1-2 at (56 

(References Cited); Dkt. No. 1-4 at (same); Dkt. No. 1-6 at (same))). 

Defendants contend that these prior art witnesses “should be afforded no weight as there is 

no evidence that [the ’845 Patent] is particularly important, and ‘inventors of prior art rarely, if 

ever, actually testify at trial.’” (Dkt. No. 46 at 4 (quoting Realtime Data, 2017 WL 772653, at *8)).

While the Court agrees that prior art witnesses are rarely called to testify at trial, the Federal Circuit 

has explicitly rejected the argument that Defendants now make. See In re Hulu, LLC, No. 2021-

142, 2021 WL 3278194, at *3 (Fed. Cir. Aug. 2, 2021) (“[T]he district court erred by ignoring all 

of Hulu’s proposed prior art witnesses for the reason that ‘prior art witnesses are generally unlikely 

to testify at trial....’”) (citation omitted). 

The Federal Circuit in Hulu also noted the potential relevance of prior art witnesses in 

general and particularly where the prior art at issue is referenced in the asserted patents: “certain 

of [the] proposed prior art witnesses directly related to prior art that was specifically mentioned in 

the asserted patents themselves, heightening their potential relevance.” Id. In Hulu the prior art 

witnesses related to prior art systems discussed by the inventors in the specification of the asserted 

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patents. By contrast, the prior art witnesses identified by Plaintiff here are only related to one out 

of hundreds of references listed on the face of the Asserted Patents. As such, this Court is 

unconvinced that these witnesses have any particularly “heighten[ed]” relevance to this case. 

Nonetheless, if it would be improper to “requir[e] a defendant to show that the potential witness 

has more than relevant and material information at this point in the litigation or risk facing denial 

of transfer on that basis,” it would no doubt be improper to require Plaintiff (who bears no burden) 

to do so. In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009). Accordingly, the Court is 

unpersuaded by Defendants’ argument that the ’845 Patent is not “particularly important” to this 

case such that the impact of the prior art witnesses identified by Plaintiff should be zero. 

Having considered the witnesses identified by both parties, the Court concludes that neither 

party has established that either forum would be more convenient than the other due to its ability 

to compel witnesses. As such, the Court finds that this factor is neutral in the transfer analysis. 

3. The Cost of Attendance of Willing Witnesses

Defendants argue that “the Central District of California is more convenient for the 

potential party and non-party witnesses as they are all located in California—none are located in 

the Eastern District of Texas—or can more easily travel to California.” (Dkt. No. 31 at 7). Plaintiff 

argues that this factor weighs against transfer because six party employees of KUS reside in or 

near EDTX as compared to only two potential witnesses identified by Defendants (Mr. 

Somasekharan and Ms. Lim). (Dkt. No. 46 at 10). Plaintiff contends that the Court should not 

consider any unnamed witnesses in CDCA or the Republic of Korea, not the least of which because 

“it would be impossible for the Court (or Emerging Auto) to test whether an unnamed witness is 

relevant or even a ‘willing witness.’” (Id.).

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For the reasons discussed below, the Comt finds that this factor f

a

vors transfer. In total, the

patties identify potential willing witnesses from six different entities: the three pa1ties (Plaintiff, 

KC, KUS) and three non-party Hyundai entities (HAEA, HAEC, and HMG R&D). The location 

of the pmpo1ted witnesses from each entity is smmnat·ized in the below table: 

Entity Location of Witnesses Na med Witnesses 

KUS CDCA and EDTX CDCA: Mr. Somasekhat·an and Ms. Lim 

EDTX1: Efren Arias, Scott Ma1tin, Mark 

Taylor, Jesse HeITera, Amber Parham, and 

Corin Seale 

Plaintiff NDCA and EDCA NDCA: Albeit Penilla 

EDCA: Angel Penilla 

KC The Republic of Korea None 

HAEC The Republic of Korea None 

HMGR&D The Republic of Korea None 

HAEA CDCA None 

As shown in the above table, the only witnesses specifically identified and named by the 

patties relate to Defendant KUS and Plaintiff; all other potential witnesses are unnamed and 

unce1tain in number. 

As an initial matter, the Court addresses the parties' at·guments regat·ding unnamed 

witnesses. As discussed for the preceding factor (see supra § IVA.2), the Comt will not entirely 

discount witnesses for this factor simply because they have not been specifically named. However, 

the fact that Defendants have failed to specifically identify most of the witnesses they rely upon 

5 All six witnesses identified by Plaintiff "live and work in or near this District" as discussed below in greater detail. 

(Dkt. No. 46 at 7). 

13 

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for this factor—including any willing witnesses at all from KC, HAEA, HAEC, and HMG R&D—

seriously hamstrings the Court’s ability to consider such witnesses in this analysis. See Godo 

Kaisha IP Bridge 1 v. Broadcom Ltd., No. 2:16-CV-0134-JRG-RSP, 2017 WL 750290, at *5 (E.D. 

Tex. Feb. 27, 2017) (“[E]ven though there is no requirement that the movant identify ‘key 

witnesses,’ or show ‘that the potential witness has more than relevant and material information,’ 

the movant must still provide enough information to allow the Court to make the required 

assessment.”) (quoting In re Genentech, Inc., 566 F.3d at 1343-44). An analysis of the costs of 

attendance for willing witnesses factor is necessarily affected by the number of relevant witnesses 

at issue and those witnesses’ specific factual circumstances. While the Court accepts the 

assumption, based on Defendants’ arguments, that such unnamed witnesses would be willing, the 

Court has no basis to afford these unnumbered, hypothetical witnesses the same weight as those 

specifically identified by the parties.6

 Having qualified the Court’s view on these unidentified 

witnesses, the Court next turns to an analysis of each category of witnesses, beginning with the 

party witnesses.

i. KUS Witnesses

Defendants contend that “[a]ny KUS witness that would be expected to testify in this case 

regarding issues relevant to Emerging Auto’s allegations . . . will be located in California.” (Dkt. 

No. 31 at 7 (citing Dkt. No. 31-1 (Somasekharan Decl.), ¶ 5; Dkt. No. 31-2 (Mittermiller Decl.), ¶ 

3)). Specifically, Defendants note that “Kia’s U.S.-based employees that work on the accused 

Digital Key technology (including Mr. Somasekharan and Ms. Lim) are based in its office in Irvine, 

6 Logic dictates that these unnamed witnesses, to the extent they materialize, are unlikely to be as critical as the 

witnesses actually identified by the parties, as supported by Defendants’ representation that Mr. Somasekharan and 

Ms. Lim “are indisputably the KUS employees having key knowledge regarding the accused Kia Connect and Digital 

Key functionality.” (Dkt. No. 48 at 2).

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that none of the six KUS Texas employees identified by EA have information regarding the accused 

Kia Connect or Digital Key features, including marketing and sale of those features.” (Id. (citing 

Dkt. No. 46-3)). Defendants further contend that “these Texas employees’ knowledge and 

responsibilities are limited to the Southwest region, while KUS’ employees in CDCA have 

nationwide knowledge and responsibilities.” (Id. at 3 (citing Dkt. No. 46-3 at 6-7; Dkt. No. 31-1; 

Dkt. No. 31-2)). As such, Defendants argue that Plaintiff “has failed to show ‘any evidence 

supporting an inference that [the Texas employees] have any knowledge of or connection to this 

specific dispute.’” (Id. (quoting In re TikTok, Inc., 85 F.4th 352, 360 n.9 (5th Cir. 2023))). 

In sur-reply, Plaintiff first argues that “Defendants must concede these [Plano-based

witnesses] have relevant knowledge of the sales and marketing of the accused Kia automobiles,” 

and that “witnesses with knowledge of the sales and marketing of the accused Kia automobiles 

necessarily have knowledge of the features of automobiles.” (Dkt. No. 51 at 2). Plaintiff next 

argues that “[w]hile sales and marketing of a certain region—especially a region that covers a vast 

area of the country—is in and of itself highly relevant, the record evidence further demonstrates 

the witnesses’ relevance spans the country, as they are tasked with creating and implementing 

KUS’s sales and marketing policies.” (Id. (citing Dkt. No. 46-5)).

The Court finds that, on balance, the KUS employees slightly favor transfer. As an initial 

matter, the Court refuses to adopt the raw counting methodology of “six vs two” proposed by 

Plaintiff. Convenience-based transfer analysis does not lend itself to such a formulaic approach.

Rather, the Court must “assess the relevance and materiality of the information the witness[es] 

may provide.” In re Genentech, Inc., 566 F.3d at 1343. 

Defendants have specifically identified two witnesses “having key knowledge” regarding 

the accused functionality: Mr. Somasekharan (KUS’ National Manager, Connected Car and 

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Mobility) and Ms. Lim (KUS’ Senior Product Manager for the Digital Key feature). (Dkt. No. 31 

at 4). Plaintiff does not dispute the relevance of these witnesses, nor could it. Mr. Somasekharan 

and Ms. Lim’s presence in the CDCA favors transfer to that district. While Defendants generally 

contend that “other KUS witnesses located in CDCA hav[e] knowledge regarding Kia Connect 

and/or Digital Key,” the Court has no way to assess whether those “other KUS witnesses” could 

provide any relevant, material information that is not wholly duplicative of that provided by Mr. 

Somasekharan and Ms. Lim. Such likely duplication makes it uncertain these potential witnesses 

would even be sought for trial testimony. As such, on the limited information provided by 

Defendants, the Court awards these potentially duplicative “other KUS witnesses” little additional 

weight in the transfer analysis. 

On the other hand, Plaintiff has identified six specific individuals living near, and working 

from, KUS’s Plano office in this District. The Court finds that these witnesses are relevant to this 

dispute at least based on their knowledge of the sales and marketing of the accused vehicles and, 

in the case of Arias, Martin, and Taylor, their relationship to Plaintiff’s induced infringement 

claims. Cf. In re Genentech, Inc., 566 F.3d at 1344 (“The petitioners have identified witnesses 

relevant to [topics that might be issues at trial], and the identification of those witnesses weighs in 

favor of transfer.”). While it is “not necessary for the district court to evaluate the significance of 

the identified witnesses’ testimony” (id.), like KUS’ “other witnesses” the Court notes that

testimony from at least some of these six witnesses would likely be duplicative of the others. For 

instance, Plaintiff describes the relevant work of Arias, Martin, and Taylor based on the same job 

description without any differentiation among the individuals. See (Dkt. No. 46 at 7-8). As for the 

remaining three witnesses—Herrera, Parham, and Seale—the job descriptions referenced by 

Plaintiff all relate only generally to sales and marketing tasks within the Southwest region. See (id.

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18 

at 8 (quoting Dkt. Nos. 46-3, 46-7, 46-8)). The Court further notes that the sales and marketing 

testimony from these identified witnesses could also possibly be provided by the unnamed KUS 

employees in Irvine who Defendants contend are responsible for nationwide sales of the accused 

vehicles. (Dkt. No. 31 at 4). While the Court has noted the difficulties with assigning the 

appropriate weight to such unidentified witnesses, any such witnesses in Irvine would—like the 

six KUS employees in Texas—be relevant to this dispute. 

Having considered the various KUS witnesses identified by the parties, and assessing their 

relevance to the case, the Court concludes that these witnesses on balance slightly favor transfer

to CDCA.

ii. Plaintiff Witnesses

Defendants contend that CDCA would be more convenient for Plaintiff because its 

members and the inventors of the Asserted Patents “are located in Scotts Valley, California, only 

300 miles away from the Central District of California compared to over 1,600 miles from the 

Eastern District of Texas.” (Dkt. No. 31 at 9 (citing Dkt. No. 1, ¶ 2)).

Plaintiff argues that “[g]iven the two inventors will need to fly to either venue (either 1.5 

hours from the San Francisco Bay Area to Los Angeles or 3.5 hours to Dallas), the transfer analysis 

is neutral with regard to them.” (Dkt. No. 46 at 10). 

With respect to Plaintiff’s witnesses located in California but outside of the CDCA, the 

Court finds that these witnesses slightly favor transfer to CDCA. While it may be true that 

Plaintiff’s named inventors must fly regardless—and that “an extra two hours on a plane is not 

inconvenient” to them (Dkt. No. 46-2 (Penilla Decl.))—the distance of such flights would be more 

than doubled by travel to this District for trial. A doubling of travel distance is a material additional 

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19 

burden, even considering said witnesses’ desire to attend trial in this District. As such, Plaintiff’s 

party witnesses weigh slightly in favor of transfer to CDCA on this factor. 

iii. Korean Witnesses: KC, HAEC, and HMG R&D

Defendants argue that CDCA is “clearly more convenient to KC and its witnesses than this 

District,” as “KC does not maintain an office in this District, and none of its employees are located 

in this District.” (Dkt. No. 31 at 7). Furthermore, “to the extent any of KC’s witnesses are required 

to travel from Korea to testify at trial, the Central District of California would be a far more 

convenient forum than traveling to Texas given the presence of KUS’ offices in Irvine, California.” 

(Id.). Likewise, Defendants argue that “[t]here are also non-parties [HAEC and HMG R&D] whose 

employees are likely to have knowledge relevant to this dispute that reside and/or work . . . in 

Korea,” and that CDCA “would clearly be more convenient for those non-party witnesses for the 

reasons outlined above with respect to . . . KC witnesses.” (Id. at 9).14 Defendants note that travel 

to CDCA from Korea (~6,000 miles) is shorter than travel to EDTX from Korea (~7,000 miles), 

making CDCA more convenient for these Korean witnesses. (Id. at 7).

Plaintiff argues that “Korean witnesses are neutral in the transfer analysis” because they 

must “travel a significant distance regardless of any transfer.” (Dkt. No. 46 at 9 (internal quotation 

omitted)). 

14 The Court notes that Defendants have provided no declaration or otherwise indicated that these unnamed witnesses 

from non-parties HAEC and HMG R&D would actually be willing. As the Federal Circuit has instructed, “when there 

is no indication that a non-party witness is willing, the witness is presumed to be unwilling and considered under the 

compulsory process factor.” In re DISH Network L.L.C., No. 2021-182, 2021 WL 4911981, at *3 (Fed. Cir. Oct. 21, 

2021) (internal quotation omitted). As this Court stated with respect to the compulsory service factor, any HAEC and 

HMG R&D employees would reside in the Republic of Korea, far outside the subpoena power of either proposed 

forum. See supra § IV.A.2. That such potential witnesses are not subject to the subpoena power of any court in the 

United States does not transform them into willing witnesses that should then be analyzed under this factor. 

Nonetheless, as the Court finds that any proposed Korean witnesses would not face a practically significant additional 

burden in traveling to EDTX rather than CDCA, the Court’s analysis does not change even considering these additional 

Korean witnesses under this factor.

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With respect to Korean-resident employees of KC and non-parties HAEC and HMG R&D, 

it is undisputed that any such witnesses would have to travel roughly 6,000 miles to reach the 

CDCA and 7,000 to attend trial in this District. Accordingly, these witnesses will already be 

traveling a substantial distance such that any difference in travel time between this Court and the 

CDCA is unlikely to impose a practically significant additional burden. “Although it might be true 

that these individuals will need to travel a greater distance to reach [Marshall] than [CDCA], and 

although a flight from [the Republic of Korea] to [CDCA] might take a bit less time than from [the 

Republic of Korea] to [Marshall], in either instance these individuals will likely have to leave 

home for an extended period of time and incur travel, lodging, and related costs.” Cf. In re Apple 

Inc., 979 F.3d 1332, 1342 (Fed. Cir. 2020) (holding 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”) (internal quotations omitted). As such, while these witnesses may be “‘slightly more 

inconvenienced by having to travel to [Texas]’ than [California],” their residences far from either 

proposed forum lessens their significance with respect to this factor. Id. (quoting In re Genentech, 

Inc., 566 F.3d at 1348). Furthermore, and as noted above, the actual burdens that would be imposed 

on these Korean witnesses are almost entirely speculative where, as here, Defendants have 

provided no particularized information as to these potential witnesses. 

With respect to KC, Defendants further contend that “the Central District of California 

would be a far more convenient forum than traveling to Texas given the presence of KUS’ offices 

in Irvine, California.” (Dkt. No. 31 at 8 (citing Dkt. No. 31-3, ¶ 4)). However, the only support 

Defendants provide for this conclusion is a single sentence to the same effect from the Declaration 

of Yei Jin Kim (KC’s Senior Counsel). See (Dkt. No. 31-3, ¶¶ 1, 4)).15 Unsupported attorney 

15 Notably, Yei Jin Kim is not an identified witness for this factor.

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21 

argument is not transformed into convincing evidence merely by including it in a declaration. 

Indeed, the Court can ascertain no reason why the subsidiary’s headquarters in Irvine, California 

would alleviate the travel burdens on KC witnesses flying in from the Republic of Korea— 

Defendants certainly provide no such reasoning. Regardless of KUS’ presence in the district, 

“these individuals will [] have to leave home for an extended period of time and incur travel, 

lodging, and related costs.” In re Apple Inc., 979 F.3d at 1342. Absent any evidence in the record—

or even explanation in support of Defendants’ position—the Court cannot conclude that CDCA 

would be more convenient for KC’s Korean employees simply due to the presence of a related 

entity’s offices in that district.

iv. HAEA Witnesses

Defendants argue that “[t]here are also [HAEA] . . . employees [who] are likely to have 

knowledge relevant to this dispute that reside and/or work in the Central District of California,” 

and that CDCA “would clearly be more convenient for those non-party witnesses for the reasons 

outlined above with respect to KUS . . . witnesses.” (Dkt. No. 31 at 9). 

With respect to these potential HAEA witnesses, Defendants point to the same employees 

already identified for the previous factor—“HAEA employees that work on design and 

development of the accused Digital Key feature” (Dkt. No. 31 at 9)—which is improper. As this 

Court has recently expressed in Liberty Access Tech. Licensing LLC v. ASSA ABLOY AB, No. 2:22-

cv-00507-JRG, Dkt. No. 82 at 14-15 (E.D. Tex. Dec. 5, 2023), and as it reiterates now, such double

counting of witnesses is improper. 

Either these HAEA witnesses require compulsory process to secure their attendance 

(assessed under the second private interest factor) or they are willing witnesses (assessed under 

the third private interest factor). They cannot be both. See In re DISH Network L.L.C., 2021 WL 

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22 

4911981, at *3 (“[W]hen there is no indication that a non-party witness is willing, the witness is 

presumed to be unwilling and considered under the compulsory process factor.”) (internal 

quotation omitted); cf. Enovsys LLC v. T-Mobile USA, Inc., No. 2:21-CV-00368-JRG, 2022 WL 

2161028, at *5 (E.D. Tex. June 14, 2022) (“The non-party witnesses identified by T-Mobile in this 

factor were also identified by T-Mobile in the previous factor. The Court is perplexed as to why 

compulsory process would be required for a willing witness. .... This Court has repeatedly 

cautioned litigants not to conflate the two factors and the necessary showing required to 

demonstrate willingness or unwillingness.”). This Court has already assessed HAEA’s employees 

under the second private interest factor, as Defendants argued it should, and the Court will not 

improperly double count the impact of these unidentified witnesses by also analyzing them under 

the third private interest factor. See In re Apple Inc., 979 F.3d at 1340 (cautioning against 

“inappropriately count[ing] twice” the convenience of witnesses under multiple factors).16 

v. Conclusion Regarding Willing Witnesses

Having considered the witnesses identified by the parties, including those witnesses not 

specifically named or otherwise identified, the Court finds that this factor favors transfer to CDCA.

4. All Other Practical Problems that Make Trial of a Case Easy, Expeditious,

and Inexpensive

Defendants argue that “[t]here are no practical problems with transferring this case,” as it 

“is in its infancy: at the time of filing this motion, no discovery has been conducted and the Court 

has had little involvement in the case.” (Dkt. No. 31 at 11). Defendants contend that “[o]ther than 

16 The Court recognizes that some relevant HAEA witnesses—to the extent more than one exists—could be willing 

and others unwilling. However, on the record before the Court, there is no basis to make such a determination. 

Accordingly, and consistent with the Court’s practice for specifically identified witnesses, the Court declines to double

count the potential HAEA witnesses. To do otherwise would create a perverse incentive for parties to withhold relevant 

details regarding the identity of witnesses from the Court so that an unidentified collective of witnesses may count 

under both private interest witness factors. Such a result would certainly be improper.

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involving three of the same patents, Emerging Auto’s case against Toyota is entirely distinct from 

the case against Kia,” as “Kia and Toyota are separate entities, and the Kia accused products are 

distinct from the Toyota accused products,” meaning “it is unlikely that there will be much, if any, 

overlap in the substantive facts and discovery performed in each case.” (Id. at 12). 

In response, Plaintiff argues that this Court “recognized the efficiencies of retaining this 

matter in the District by consolidating it with Case No. 2:23-cv-434-JRG (the Toyota matter) for 

all pretrial issues.” (Dkt. No. 38 at 10). Plaintiff notes that the Toyota Case includes allegations of 

infringement for every claim asserted against the Kia Defendants, and that the case against Toyota 

will remain in this District, as Toyota has not sought transfer. (Id.). Plaintiff contends that “both 

cases involve the same or similar issues of claim construction and validity.” (Id. (internal 

quotations omitted)). 

The Court finds that this factor weighs materially against transfer. The Court disagrees with 

Defendants’ conclusion that the consolidated Toyota Case cannot result in this factor weighing 

against transfer. The core of Defendants’ argument relies on the Federal Circuit’s recent In re 

Google LLC decision (“Google III”), but that opinion only states that this factor standing alone

cannot justify a denial of transfer in view of a “clear case for transfer in light of the imbalance on 

the other factors.” 58 F.4th 1379, 1383 (Fed. Cir. 2023). That does not mean, however, that 

concerns of judicial economy cannot factor into the transfer analysis. See In re EMC Corp., 501 F. 

App’x 973, 976 (Fed. Cir. 2013) (“[W]e have held that a district court’s experience with a patent 

in prior litigation and the co-pendency of cases involving the same patent are permissible 

considerations in ruling on a motion to transfer venue.”). Indeed, the Federal Circuit has 

“repeatedly noted that judicial economy may play a prominent role in a district court’s transfer 

analysis.” In re Caring Drilling Tech., Ltd., No. 2015-139, 2015 WL 10936672, at *1 (Fed. Cir. 

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Aug. 7, 2015); In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (“[T]he 

existence of multiple lawsuits involving the same issues is a paramount consideration when 

determining whether a transfer is in the interest of justice.”).

Here: (1) all three patents and every claim asserted against the Kia Defendants are also 

asserted in the Toyota Case, (2) the accused technologies are “substantially similar,”17 and (3) the 

two cases have been consolidated for pre-trial proceedings. Cf. In re Canrig Drilling, 2015 WL 

10936672, at *1 (finding the district court’s conclusion that this factor weighed against transfer 

was adequately supported where “[a]ll three lawsuits deal with the same patent, same technology, 

and substantially similar products and have been consolidated for pre-trial proceedings”). The fact 

that the Toyota Case includes two additional patents at issue is immaterial. The Court’s resolution 

of overlapping issues in the two cases will necessarily be easier, more expeditious, and less 

expensive than trying these cases separately—indeed, those are the underlying motivations behind

consolidation in the first place. Furthermore, this Court’s simultaneous adjudication of the Toyota

Case will benefit judicial economy and avoid inconsistent determinations across the Asserted 

Patents, not only because this Court will be familiar with the Asserted Patents, but because this 

Court will no doubt face and rule upon identical issues across the two consolidated cases. Cf. 

Enovsys LLC, 2022 WL 2161028, at *6 (“[I]t would be inefficient to transfer a case to a different 

venue when the Verizon Case involving the same Asserted Patents and asserted claims is currently 

pending . . . before the undersigned.”). While this Court recognizes that concerns of judicial 

17 See (Dkt. No. 46 at 2 (Plaintiff representing that “the accused technology at issue in the Accused Kia Vehicle 

Instrumentalities and the Accused Toyota Vehicle Instrumentalities is substantially similar, namely Kia’s ‘Kia 

Connect’ and ‘Digital Key’ functionality and Toyota’s ‘Remote Connect’ and ‘Digital Key’ functionality, along with 

the servers that enable that functionality”) (citing Dkt. No. 46-9 at 1-5; Dkt. No. 46-10 at 1-7); Dkt. No. 48 (Defendants 

not contesting Plaintiff’s representation of substantial similarity)).

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economy are not dispositive, the Court finds that this factor weighs materially against transferring 

the present case. 

B. Public Interest Factors

1. The Administrative Difficulties Flowing from Court Congestion

Defendants argue that this factor is neutral because “[a]lthough the Eastern District of 

Texas has tended to resolve patent cases in slightly less time than the Central District of California, 

the weighted filings per judgeship is higher in the Eastern District of Texas (660) than in the Central 

District of California (596).” (Dkt. No. 31 at 13 (citing Dkt. No. 31-7)).18 Defendants further argue 

that because “Emerging Auto is a non-practicing entity” recent Federal Circuit law requires that 

this factor be given no weight in the transfer analysis. (Id. (citing Google III, 58 F.4th at 1383)). 

Accordingly, “even if there were a delay in the present case resulting from prospective congestion, 

there is no practical impact from such congestion and this factor should be given no weight.” (Id.).

In response, Plaintiff argues that because “Defendants concede that this District resolves 

patent cases more quickly than CDCA,” this factor “weighs against transfer.” (Dkt. No. 46 at 12). 

Plaintiff notes that the difference in time to trial is “substantial: civil cases in this District proceed 

nearly ten months and 50% faster,” and the same is true for patent cases. (Id.). Plaintiff contends 

that the Federal Circuit’s decision in Google III is inapplicable here because “Emerging Auto is an 

inventor-owned company that is attempting to actively prosecute and enforce its intellectual 

property against infringers.” (Id. at 13). As Plaintiff explains, “[d]ragging this matter out in two 

different forums would prejudice Emerging Automotive because of the added expense associated 

with litigating in two venues and delayed resolution of its claims.” (Id. at 13-14). 

18 Plaintiff argues that “weighted filings” is “not the relevant inquiry.” (Dkt. No. 46 at 12). Without any further rationale 

provided by Defendants, the Court agrees with Plaintiff that “weighted filings” is a less helpful measure when actual 

time-to-trial statistics are available.

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The Court finds that this factor weighs slightly against transfer. Here, the parties agree that 

EDTX has a faster median time-to-trial than CDCA. See (Dkt. No. 31 at 13); (Dkt. No. 38 at 12).19

While Defendants contend that this difference is only “slight[],” the Court disagrees. Indeed, as 

Plaintiff noted in its Response—and as Defendants did not dispute—civil cases proceed to trial 

nearly 50% faster in this District than in CDCA; the same relationship holds true for patent cases 

(22-month average in EDTX vs 31-month average in CDCA). See (Dkt. No. 46-11). Nonetheless, 

this Court recognizes that the Federal Circuit has instructed that this factor should not weigh 

against transfer when the plaintiff “is not engaged in product competition in the marketplace and 

is not threatened in the market in a way that, in other patent cases, might add urgency to case 

resolution.” Google III, 58 F.4th at 1383.20 Here, there is no dispute that Plaintiff is not a competitor 

in the marketplace. While this Court finds it perplexing to consider the marketplace status of the 

parties in assessing this public interest factor related to court congestion, it is bound by the Federal 

Circuit’s decision in Google III to afford this factor no weight based on time-to-trial differences. 

Nevertheless, that is not the end of the inquiry. 

The Court is convinced that the specific posture of this case makes it such that transfer

would only serve to increase court congestion. As Plaintiff noted, this case has been consolidated 

with Emerging Automotive LLC v. Toyota North America, Inc., et. al., No. 2:23-cv-00434-JRG (the 

“Toyota Case”) for all pretrial matters. (Dkt. No. 15). Every claim asserted against the Kia

Defendants has also been asserted against the Toyota Defendants. (Dkt. No. 46 at 1-2). Defendants 

do not dispute that the accused instrumentalities between the cases are “substantially similar.” See 

(id.; Dkt. No. 48 (Defendants not contesting Plaintiff’s representation of substantial similarity)). 

19 This is not a case where “the parties[] [cite] opposing statistics regarding the rate of disposition in the two venues.” 

In re Genentech, Inc., 566 F.3d at 1347. 20 As this Court has previously noted, a faster average time to trial leads to the more efficient and economical resolution 

of cases, something all litigants can value regardless of market position.

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As is the case with consolidation in general, these present cases were consolidated to streamline 

the proceedings by removing unnecessary duplication. There is no dispute that the Toyota Case 

will remain pending before this Court. As such, the practical effect of transferring the case against 

the Kia Defendants would be to duplicate these proceedings. It is axiomatic that such a result 

would necessarily increase court congestion—not just for the present litigants but for the public at 

large. As such, the Court finds that this factor weighs slightly against transfer. 

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

Defendants argue that this factor favors transfer because “Kia’s U.S.-based activities 

related to the accused technology are primarily centered in the Central District of California.” (Dkt. 

No. 31 at 13 (citing Dkt. No. 31-1 (Somasekharan Decl.), ¶¶ 4-7)). Specifically, Defendants 

contend that the “accused Digital Key technology is developed, tested, and supported from the 

Central District of California and Korea and marketed and sold from the Central District of 

California, giving the California court a strong interest in this litigation.” (Id. at 14). Further, 

Defendants contend that “[b]ecause this lawsuit will impact two California companies and their 

employees/members, the Central District of California’s interest in this case is significant.” (Id. at 

13). Finally, Defendants note that “this case has no connection to the Eastern District of Texas that 

could not be drawn to any other district” due to the nationwide marketing of Kia’s vehicles. (Id. at 

14).

In response, Plaintiff argues that “in this District there is a relevant KUS office, with six 

relevant KUS witnesses and a document server with KUS documents,” whereas Defendants “name 

just two witnesses in CDCA.” (Dkt. No. 46 at 14 (emphasis in original)). Plaintiff contends that 

because “there are more relevant witnesses in this District than in CDCA,” there “is a greater local 

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28 

interest [in EDTX] on the record before the Court.” (Id.). Further, Plaintiff argues that Defendants’ 

marketing activities in this District mean that this factor weighs against transfer. (Id. at 14-15). 

In reply, Defendants argue that, while Plaintiff “claims that this District has a greater local 

interest in the present dispute than the CDCA based on the KUS office and document server located 

in this District,” “the functionality accused of infringing the Asserted Patents was developed in 

CDCA (along with Korea), and its marketing and sales are controlled from that location.” (Dkt. 

No. 48 at 5). Defendants further note that “sales of Kia vehicles in general (that may support Kia 

Connect and Digital Key)—EA’s identified alleged tie to this District—are made ineffectively 

every district in the United States,” meaning that “any interest this District has in the present 

dispute would be the same in every district in this country.” (Id.). Defendants contrast this with 

CDCA “where the accused functionality was designed and/or developed, at least in part, and where 

the sales and marketing strategy for the U.S. is developed and executed.” (Id. (citing Dkt. No. 31-

1, ¶¶ 3, 5-8)).

The Court finds that this factor weighs slightly in favor of transfer. Defendants point to 

non-party HAEA (headquartered in CDCA) and Defendant KUS (same), along with those entities’

employees to support Defendants’ position that the CDCA has a “compelling local interest” in this 

case. As an initial matter, the Court takes note that HAEA is not a named party to this action. While 

it may be true that source code related to the accused functionalities may come from HAEA, that 

does not elevate that entity’s status to that of a party or otherwise place them as a key figure in the 

transfer analysis. The Court is unconvinced that the presence of non-party HAEA in the CDCA

necessarily transforms this into “the sort of localized case where the citizens of [CDCA] have a 

greater ‘stake’ in the litigation than the citizens of [EDTX],” especially where “the defendants and 

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29 

the witnesses are located across the state[,] across the country,” and even across the globe. Planned 

Parenthood, 52 F.4th at 631–32. 

As to Defendant KUS, the Court takes well Defendants’ argument that the accused Digital 

Key technology is developed, tested, and supported from the Central District of California (in 

addition to the Republic of Korea) and that such development imparts CDCA with a greater local 

interest in this dispute. Furthermore, Defendants have identified two particular KUS witnesses—

Mr. Somasekharan and Ms. Lim—both of whom reside in CDCA and possess knowledge related 

to the accused technology. These facts impart the citizenry of CDCA with a localized interest in 

the resolution of this case. 

However, EDTX is not without any interest itself. In addition to selling the accused 

vehicles in this District, Defendant KUS also employs six individuals with relevant knowledge in 

or near this District. Indeed, as Plaintiff argues and Defendants do not contest, these identified 

individuals’ actions may evidence Plaintiff’s induced infringement allegations. Accordingly, the 

citizenry of EDTX also has a localized interest in this dispute. See In re Hoffmann-La Roche Inc., 

587 F.3d 1333, 1336 (Fed. Cir. 2009) (finding the local interest in the case strong where “the cause 

of action calls into question the work and reputation of several individuals residing in or near that 

district and who presumably conduct business in that community”).21 This is not a case where jury 

21 The Court recognizes that “Kia markets its vehicles and associated technologies nationwide,” but that does not ipso 

facto mean that “this case has no connection to the Eastern District of Texas” as Defendants argue. (Dkt. No. 31 at 

14). As noted, Plaintiff’s allegations bring into question the work and reputation of particular individuals residing 

within and near this district, which necessarily provides the citizenry of this District with a particularized interest in 

the dispute. In re Hoffmann-La Roche Inc., 587 F.3d at 1336. The cases Defendants cite in support of the proposition 

that “this case has no connection to the Eastern District of Texas” are clearly distinguishable. See In re TS Tech USA 

Corp., 551 F.3d 1315, 1321 (Fed. Cir. 2008) (noting that “[n]one of the companies have an office in the Eastern District 

of Texas; no identified witnesses reside in the Eastern District of Texas; and no evidence is located within the venue”); 

Vigilos, LLC v. Sling Media, Inc., No. 2:11-CV-112-DF, 2011 WL 13156923, at *6 (E.D. Tex. July 25, 2011) (noting 

that it was undisputed that “Plaintiff established its presence in the Eastern District in anticipation of litigation”) 

(internal quotation omitted). Here, Defendant KUS has an office in EDTX, identified witnesses reside in and near 

EDTX, and evidence is located on a server in EDTX. 

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30 

duty would be “imposed upon the people of a community which has no relation to the litigation,” 

as Defendants suggest. Volkswagen I, 371 F.3d at 206. 

Having found that both districts have localized ties to this case, the only remaining question 

is whether one district has greater ties than the other. Due to the presence of Defendant KUS and 

its employees in CDCA (including Mr. Somasekharan and Ms. Lim), and to a lesser extent the 

presence of non-party HAEA, the Court finds that CDCA has a somewhat greater localized interest 

in the resolution of this case than EDTX.

22 Accordingly, the Court finds that on balance this factor 

weighs slightly in favor of transfer. 

3. The Familiarity of the Forum with the Law that Will Govern the Case and

The Avoidance of Unnecessary Problems of Conflict of Laws of the

Application of Foreign Law

Plaintiff and Defendants agree that these final two public interest factors weigh neutrally 

in the transfer analysis. (Dkt. No. 31 at 14-15); (Dkt. No. 46 at 3). The Court sees no reason to 

upset the parties’ agreement and accordingly considers these factors to be neutral.

V. CONCLUSION

In view of the foregoing factors, the Court must determine whether the Central District of

California is “clearly more convenient” than the Eastern District of Texas. The Fifth Circuit has 

been careful to emphasize that district courts should not merely engage in a “raw counting” 

exercise which tallies up the factors favoring transfer and the factors militating against transfer. In 

re Radmax, 720 F.3d 285, 290 n.8 (“We do not suggest—nor has this court held—that a raw 

counting of the factors in each side, weighing each the same and deciding transfer only on the 

resulting ‘score,’ is the proper methodology.”). Instead, the Court must make factual 

22 By Defendants’ own admission, many witnesses will also be traveling from the Republic of Korea—these witnesses 

certainly will not have any localized ties to CDCA or EDTX

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31 

determinations to ascertain the degree of actual convenience, if any, and whether such rises to the 

level of “clearly more convenient.” See id. Where the present and proposed forums are both 

roughly similar in terms of convenience, courts should not conclude that the proposed transferee 

forum is “clearly more convenient.” Volkswagen II, 545 F.3d at 315. While this Court does not 

hold that “clearly more convenient” is equal to “clear and convincing,” a movant must show 

materially more than a mere preponderance of convenience, lest the standard have no real or 

practical meaning. See id. When carefully applying the convenience factors and the related factual 

arguments in each unique case, courts should be careful not to lose sight of the plaintiff’s choice 

of forum and its historical significance in our jurisprudence. Id. (“[W]hen the transferee venue is 

not clearly more convenient than the venue chosen by the plaintiff, the plaintiff’s choice should be 

respected.”). 

Having found one factor weighs slightly in favor of transfer, one factor weighs in favor of 

transfer, four factors weigh neutrally, one factor weighs slightly against transfer, and the remaining 

factor weighs materially against transfer, the Court concludes that the Central District of California

is not a “clearly more convenient” forum for this dispute. In conclusion, considering the weight of 

the specific factors and facts of this case, the Court is of the opinion that Defendants’ Motion (Dkt. 

No. 31) should be and hereby is DENIED. The parties are directed to jointly prepare a redacted 

version of this Opinion for public viewing and to file the same on the Court’s docket as an 

attachment to a Notice of Redaction within five (5) business days of this Opinion. 

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32 

____________________________________

RODNEY GILSTRAP

UNITED STATES DISTRICT JUDGE So ORDERED and SIGNED this 14th day of June, 2024.

Case 2:23-cv-00437-JRG Document 56 Filed 06/25/24 Page 32 of 32 PageID #: 1112