IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

SHERMAN DIVISION

CHIEN-MIN SUNG,

Plaintiff,

v. 

SAMSUNG ELECTRONICS CO. LTD., 

SAMSUNG ELECTRONICS AMERICA, 

INC., SAMSUNG SEMICONDUCTOR, 

INC., and SAMSUNG AUSTIN 

SEMICONDUCTOR LLC,

Defendants. 

Case No. 4:23-cv-752 

JURY TRIAL DEMANDED

DEFENDANTS’ MOTION FOR INTER-DISTRICT TRANSFER 

TO THE NORTHERN DISTRICT OF CALIFORNIA

Case 4:23-cv-00752-SDJ Document 30 Filed 01/17/24 Page 1 of 22 PageID #: 435
i 

TABLE OF CONTENTS

Page 

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

II. BACKGROUND .................................................................................................................2

A. The Asserted Patents and Accused Instrumentalities. .............................................2

B. Sung Has No Relevant Connection To This District. ..............................................2

C. Defendants’ Manufacturing Facilities Are Predominantly Located In 

Korea. .......................................................................................................................2

D. The Third-Party Suppliers Are Located In Korea, California, And Oregon. ..........4

E. Evidence Concerning Ownership Of The Asserted Patents Is In Taiwan. ..............5

F. Important Third-Party Prior Art Evidence Is Located in NDCA. ............................6

III. LEGAL STANDARD ..........................................................................................................6

IV. ARGUMENT .......................................................................................................................7

A. This Action Could Have Been Brought In NDCA. .................................................7

B. The Private Interest Factors Strongly Favor Transfer..............................................7

1. The Relative Ease Of Access To Sources Of Proof Favors 

Transfer. .......................................................................................................7

a. Defendants’ Relevant Sources Of Proof Are Not In This 

District..............................................................................................8

b. Critical Third-Party Sources Of Proof Are Located In 

Korea, California, And Taiwan—None Is Located In This 

District..............................................................................................8

c. Sung’s Relevant Sources Of Proof Are Not In This District. ..........9

2. The Availability Of Compulsory Process Strongly Favors Transfer. ........10

3. The Convenience Of Willing Witnesses Strongly Favors Transfer...........11

4. There Are No Practical Problems With Transfer To NDCA. ....................13

C. The Public Interest Factors Favor Transfer. ..........................................................14

1. This District Has No Local Interest In Resolving This Dispute. ...............14

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TABLE OF CONTENTS (cont’d)

Pages

ii

2. The Remaining Public Interest Factors Are Neutral..................................15

V. CONCLUSION..................................................................................................................15

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iii

TABLE OF AUTHORITIES

Page(s) 

Cases

Bluestone Innovations, LLC v. LG Elecs., Inc., 

940 F. Supp. 2d 310 (E.D. Va. 2013) ......................................................................... 10, 13 

Empty Barge Lines II, Inc. v. DREDGE LEONARD FISHER, 

441 F. Supp. 2d 786 (E.D. Tex. 2006) .............................................................................. 10 

Fairfield Indus. Inc. v. Wireless Seismic, Inc., 

No. 13-CV-903, 2014 WL 4829071 (E.D. Tex. Sept. 26, 2014) ...................................... 14 

Frito-Lay N. Am., Inc. v. Medallion Foods, Inc., 

867 F. Supp. 2d 859 (E.D. Tex. 2012) ................................................................................ 8 

In re Apple Inc., 

979 F.3d 1332 (Fed. Cir. 2020)........................................................................................... 6 

In re Apple, Inc., 

581 F. App’x 886 (Fed. Cir. 2014) ................................................................................... 10 

In re EMC Corp., 

501 F. App’x 973 (Fed. Cir. 2013) ................................................................................... 14 

In re Genentech, 

566 F.3d 1338 (Fed. Cir. 2009)................................................................................... 11, 15 

In re Juniper Networks, Inc., 

14 F.4th 1313 (Fed. Cir. 2021) ......................................................................................... 11 

In re Nintendo Co., 

589 F.3d 1194 (Fed. Cir. 2009)..................................................................................... 7, 11 

In re Samsung Elecs. Co., 

2 F.4th 1371 (Fed. Cir. 2021) ............................................................................................. 7 

In re TikTok, Inc., 

85 F.4th 352 (5th Cir. 2023) ....................................................................................... 11, 15 

In re Volkswagen AG, 

371 F.3d 201 (5th Cir. 2004) ........................................................................................ 7, 11 

In re Volkswagen of Am., Inc., 

545 F.3d 304 (5th Cir. 2008) ............................................................................................ 15 

In re: NetScout Sys., Inc.,

No. 2021-173, 2021 WL 4771756 (Fed. Cir. Oct. 13, 2021)............................................ 14 

Case 4:23-cv-00752-SDJ Document 30 Filed 01/17/24 Page 4 of 22 PageID #: 438
TABLE OF AUTHORITIES (cont’d)

Pages

iv

Intell. Ventures I LLC v. T-Mobile USA, Inc., 

No. 17-CV-00577, 2018 WL 4175934 (E.D. Tex. June 29, 2018) ................................... 11 

Life Techs. Corp. v. Biosearch Techs., Inc., 

No. 09-CV-283, 2010 WL 11541641 (E.D. Tex. Sept. 30, 2010) .................................... 14 

Macronix Int’l Co. v. Spansion Inc., 

No. 13-cv-679, 2014 WL 934521 (E.D. Va. Mar. 10, 2014) ............................................ 13 

Solas OLED Ltd. v. Apple Inc., 

No. 19-cv-00537, 2020 WL 3440956 (W.D. Tex. June 23, 2020) ................................... 12 

Stellar Restoration Servs., LLC v. James Christopher Courtney, 

533 F. Supp. 3d 394 (E.D. Tex. 2021) .............................................................................. 15 

Uniloc USA Inc. v. LG Elecs. USA, 

No. 17-CV-0825, 2018 WL 3419175 (N.D. Tex. May 14, 2018) .................................... 10 

Word to Info, Inc. v. Facebook, Inc., 

No. 14-CV-4387, 2015 WL 13870507 (N.D. Tex. July 23, 2015) ................................... 15 

Statutes

28 U.S.C. § 1404(a) ........................................................................................................................ 6 

28 U.S.C. § 1391(c) ........................................................................................................................ 7 

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I. INTRODUCTION

This case primarily involves a Taiwan-based plaintiff (“Sung”) and a Korea-based 

defendant (Samsung Electronics Co., Ltd. or “SEC”) that sources the allegedly infringing 

components from three Korea-based suppliers.

Sung—the sole named inventor of the Asserted Patents—resides in Taiwan and has no 

discernible connection to this District.

SEC likewise has no relevant connection to this District. Sung’s Asserted Patents are

directed to “CMP pad dressers,” which are used to clean “CMP pads” that are themselves used 

during semiconductor fabrication. See ’862 patent, claim 1; ’802 patent, claim 1; ’270 patent, 

claim 1. None of the asserted claims is directed to end-user products, like smartphones, tablets, or 

watches. Id. SEC uses CMP pad dressers at its thirteen semiconductor fabrication facilities

(“fabs”) in Korea. SEC does not make or sell the accused CMP pad dressers. Rather, it purchases 

those CMP pad dressers from three Korea-based companies: Shinhan Diamond Ind. Co., Ltd. 

(“Shinhan”), Saesol Diamond Ind. Co., Ltd. (“Saesol”), and EHWA Diamond Industrial Co. Ltd. 

(“EHWA”). Shin Decl. ¶ 13. Thus, the technical evidence concerning the structure of the allegedly 

infringing CMP pad dressers will primarily come from Korea. None will come from this District.

Sung’s suit ropes in three of SEC’s U.S. subsidiaries: Samsung Electronics America, Inc. 

(“SEA”), Samsung Semiconductor, Inc. (“SSI”), and Samsung Austin Semiconductor LLC 

(“SAS”). Compl. ¶¶ 4–7. None of those subsidiaries is incorporated in Texas, and only SEA 

maintains offices in this District. Shin Decl. ¶¶ 8–10. But SEA does not make, use, purchase, or 

sell the accused CMP pad dressers, id. ¶ 14, and therefore has little, if any, relevance to this case. 

For the reasons explained below, the Northern District of California (“NDCA”) is clearly 

more convenient than the Eastern District of Texas (“EDTX”) for the parties and for critical foreign 

third-party suppliers, each of whose most relevant evidence is located in Asia. Accordingly, 

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Defendants respectfully submit that the Court should transfer the case to NDCA.

II. BACKGROUND

A. The Asserted Patents and Accused Instrumentalities.

The Asserted Patents relate to a “common” semiconductor manufacturing technique called 

“Chemical Mechanical Polishing (CMP),” which uses a “polishing pad” to create smooth, polished 

semiconductor wafers. See, e.g., ’862 patent, 1:18–25; ’802 patent, 1:40–54; ’270 patent, 1:16–24. 

The asserted claims are directed to “CMP pad dressers,” which are devices used to “condition” the 

polishing pads by “removing dirt and debris” to prolong the polishing pad’s lifetime. ’862 patent, 

7:15–18; ’802 patent, 9:50–64; ʼ802 patent, claim 1 (“A CMP pad dresser”); ʼ270 patent, claim 1 

(“A CMP pad dresser”); ʼ862 patent, claim 1 (“A method of conditioning a CMP pad, comprising: 

pressing a CMP pad dresser against a CMP pad”). The claims are not directed to end-user products

like smartphones or home appliances. See id.

Sung alleges that Defendants infringe the Asserted Patents by purchasing and using certain 

“pad conditioners” (the “accused CMP pad dressers”) manufactured by various third parties. 

Compl. ¶¶ 10–11. Sung alleges that Defendants use those accused CMP pad dressers to 

manufacture “semiconductor devices and/or integrated circuits” that are then incorporated into 

generically identified end-user products like smartphones and home appliances. Id. ¶¶ 11–12.

B. Sung Has No Relevant Connection To This District.

Sung resides in Taipei, Taiwan and does not appear to have any connection to this District. 

See Compl. ¶ 2. Sung’s most recent apparent connectionsto the United States are that he “reside[d] 

in Cupertino, CA” in July 2020, and that he was deposed in NDCA. Lewis Decl., Ex. 1, ¶ 3; Ex. 2.

C. Defendants’ Manufacturing Facilities Are Predominantly Located In Korea.

SEC researches, develops, and uses various semiconductor fabrication processes, some of 

which include CMP polishing steps. Shin Decl. ¶¶ 12, 19. Over time, just like sandpaper used to 

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smooth wood, the CMP pads used to polish semiconductor wafers likewise lose roughness, 

becoming less effective as a consequence of their use. Id. ¶ 12. To prolong the CMP pad’s useful 

life, the semiconductor industry generally uses “CMP pad dressers” to remove dirt and debris from 

the CMP pad and restore the pad’s surface roughness. Id. 

SEC has thirteen semiconductor fabs that use CMP pad dressers. Id. ¶ 15. All of those 

fabs are in Korea. SEC does not have any fabs in the United States. Id. All of SEC’s engineers 

who use SEC’s CMP processes work and live in Korea. Id. ¶ 23. All of their documents are 

located in Korea. Id. And critically, the materials that describe how and when CMP steps are 

performed during semiconductor manufacture are highly-confidential “process recipes” located in 

Korea that are subject to Korea’s strict export controls. Id. ¶ 26. 

SAS, on the other hand, has only two fabs that use CMP pad dressers. Id. ¶ 17. Those fab 

are located in Austin, Texas (in the Western District of Texas (“WDTX”)). In a given month, SAS

produces significantly less than one tenth of the semiconductor wafers produced by SEC in Korea 

(approximately 90,000 versus 1.19 million). Id. ¶¶ 16, 18. The SAS engineers who use CMP 

processes (and any relevant documents) are located in or around Austin—not in this District. Id.

¶ 24. SAS also maintains a research lab (the “Advanced Computing Lab”) in San Jose, California, 

where it designs and develops graphical processing units and systems-on-chip that are used in 

smartphone, memory, and other products. Lewis Decl., Ex. 3. 

SEC and SAS do not design, make, or sell CMP pad dressers (or even CMP pads). Rather, 

SEC and SAS source their CMP pad dressers from third-party suppliers Shinhan, Saesol, and 

EHWA. Shin Decl. ¶¶ 13, 20. Each of those third-party suppliers is headquartered in Korea. Id. 

¶ 20; Lewis Decl., Exs. 4–6. 

SEC selects and purchases the CMP pad dressers used by SEC and SAS directly from the 

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three Korean suppliers. Shin Decl. ¶¶ 13, 19, 20. SAS similarly purchases CMP pad dressers 

selected by SEC from two of the three Korean suppliers (Shinhan and Saesol). Id. ¶¶ 19–20. Thus, 

information concerning their selection and purchase of CMP pad dressers is primarily located in 

Korea.

Finally, because CMP is an internal step—among thousands—performed during 

semiconductor fabrication (and one not discernable to any user of an end device), SEC and SAS 

do not market their use of CMP pad dressers. Id. ¶ 21. Thus, SEC and SAS have no materially 

knowledgeable witnesses or documents relating to the marketing of CMP pad dressers.

With respect to SEA, although it maintains offices in Plano, Texas, it does not manufacture 

any products. Id. ¶¶ 8, 27. SEA does not have any fabs in the United States or elsewhere, and 

does not make, use, purchase, or sell CMP pad dressers. Id. ¶¶ 11, 14. Accordingly, SEA does 

not have any employees, documents, or other evidence concerning CMP pad dressers or their use. 

Rather, SEA markets and facilitates the sales of end-user products, such as smartphones and 

televisions, that are designed and manufactured by SEC in Korea. Id. ¶¶ 27, 30. SEA also

maintains office in Mountain View, California. Id. ¶ 8. 

SSI is headquartered in San Jose, California and does not have any presence in EDTX. Id.

¶ 9. SSI does not manufacture any products. Id. ¶ 28. SSI does not have any fabs in the United 

States or elsewhere, and does not make, use, purchase, or sell CMP pad dressers. Id. ¶¶ 11, 14. 

Accordingly, SSI does not have any employees, documents, or other evidence concerning CMP 

pad dressers or their use. Rather, SSI markets and facilitates the sales of memory and 

semiconductor products that are designed and manufactured by SEC in Korea. Id. ¶¶ 28, 30. 

D. The Third-Party Suppliers Are Located In Korea, California, And Oregon.

SEC’s third-party CMP pad dresser suppliers have critical information concerning the 

accused CMP pad dressers, and they are all headquartered in Korea. Lewis Decl., Exs. 4–6. Two 

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of those suppliers have connections to California: Shinhan’s U.S. subsidiary, Shinhan Diamond 

America, Inc., has a sales office in City of Industry, CA; and EHWA has an office in Irvine, CA. 

Lewis Decl., Exs. 5–6. The third supplier, Saesol, has an office in Beaverton, OR. Lewis Decl., 

Ex. 4. Thus, critical information concerning the accused CMP pad dressers is certainly located in 

Korea and, potentially, in California and Oregon.

Moreover, each of those third-party suppliers has critical information concerning product 

prior art that is central to Defendants’ invalidity defenses. In particular, Defendants intend to rely 

on Shinhan’s ARIX diamond disks, Saesol’s Standard diamond disks, and EHWA’s CMP Pad 

Conditioner as prior art that renders the asserted claims invalid. Lewis Decl., Exs. 7–9. Those 

third-party suppliers likely have samples of the prior art, publications, sales records, measurement 

data, and/or witnesses at their Korea headquarters and, potentially, at their U.S. offices in 

California or Oregon.

E. Evidence Concerning Ownership Of The Asserted Patents Is In Taiwan.

Kinik Co. (“Kinik”) is a Taiwanese corporation with headquarters in Taipei, Taiwan. 

Lewis Decl., Ex. 10. Kinik and Sung have a lengthy history concerning CMP pad dresser 

technology and even the Asserted Patents. Lewis Decl., Exs. 11–12. In particular, since 1996,

Kinik and Sung engaged in multiple joint ventures (“JVs”), which granted Kinik ownership claims 

to certain intellectual property subject to the JVs. Lewis Decl., Ex. 12. Those JVs provoked

extensive national and international patent ownership disputes between Kinik and Sung, including 

some that involved the asserted ’802 patent. Lewis Decl., Ex. 11. Thus, Kinik likely has

information concerning the alleged invention, inventorship, and ownership of the Asserted Patents. 

Kinik also has information regarding product prior art. Specifically, Kinik has information 

regarding the DiaGrid diamond disks and the Organic Diamond Disks (“ODDs”), related to 

invalidity of the asserted claims. Kinik likely has samples of those products, publications, sales 

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records, measurement data, and/or witnesses in Taiwan. Lewis Decl., Exs. 13–15. 

F. Important Third-Party Prior Art Evidence Is Located in NDCA.

NDCA is a hotbed for third-party prior art. In particular, in the early 2000s, LAM Research 

Corporation (“LAM”), headquartered in Fremont, CA (in NDCA), developed and sold a CMP 

system called Teres, which Defendants will use to show that the Asserted Patents are invalid. 

Lewis Decl., Exs. 16–18. As described in various patents issued to LAM, Teres worked with a 

CMP pad conditioning system that used CMP pad dressers with diamond grits. Lewis Decl., 

Ex. 19 at 3:31–35, 4:45–64; Ex. 20 at 3:27–30, 4:56–5:3, Fig. 1. Similarly, in the mid-2000s, 

Applied Materials Inc. (“AMAT”), headquartered in Santa Clara, CA (in NDCA), developed and 

sold a CMP system called REFLEXION LK, which Defendants will use to show that the Asserted 

Patents are invalid. Lewis Decl., Exs. 21–22. Similar to LAM’s Teres, a prior art patent 

application shows that AMAT’s REFLEXION LK worked with a CMP pad conditioning system 

that used CMP pad dressers. Lewis Decl., Ex. 23 at [0022]. And at least five engineers who 

worked on the LAM or AMAT prior art still reside in NDCA. Lewis Decl., Exs. 24–28. 

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 might have been brought[.]” 28 

U.S.C. § 1404(a). A moving party satisfies its burden to transfer under § 1404(a) if it shows that 

the proposed venue is “clearly more convenient” than the original venue. In re Apple Inc., 979 

F.3d 1332, 1338 (Fed. Cir. 2020) (citation omitted). In determining whether that test is satisfied, 

courts must look at “the situation which existed when suit was instituted.” In re Samsung Elecs. 

Co., 2 F.4th 1371, 1376 (Fed. Cir. 2021) (citation omitted).

The threshold question is whether the suit could have been brought in the transferee venue. 

In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). If so, the Court 

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considers a number of private and public interest factors to determine whether transfer is 

appropriate. Id. (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1982)). 

IV. ARGUMENT

The Court should transfer this case to NDCA because it is the clearly more convenient 

forum, venue is proper there, and the relevant factors favor transfer. “[I]n a case featuring most 

witnesses and evidence closer to the transferee venue with few or no convenience factors favoring 

the venue chosen by the plaintiff, the trial court should grant a motion to transfer.” In re Nintendo 

Co., 589 F.3d 1194, 1198 (Fed. Cir. 2009).

A. This Action Could Have Been Brought In NDCA.

Defendants do not dispute in this case that they are subject to personal jurisdiction in 

NDCA because they directly or indirectly market, sell, and/or facilitate sales of certain products

accused in the complaint in California, including in NDCA. Shin Decl. ¶¶ 27–30. Venue is proper 

in NDCA as to each defendant because: SEC is a foreign corporation (28 U.S.C. § 1391(c)); SAS 

maintains an office in San Jose, CA; SEA maintains an office in Mountain View, CA; and SSI is 

a California corporation with its principal place of business in San Jose, CA. Shin Decl. ¶¶ 7–10.

B. The Private Interest Factors Strongly Favor Transfer.

1. The Relative Ease Of Access To Sources Of Proof Favors Transfer.

This factor favors transfer because the most relevant sources of proof—technical 

information concerning the accused CMP pad dressers, information concerning ownership of the 

Asserted Patents, and information related to the prior art—are primarily located in Korea, Taiwan,

and California—each of which is more conveniently accessible from NDCA than EDTX. There 

are no relevant sources of proof in this District. Frito-Lay N. Am., Inc. v. Medallion Foods, Inc., 

867 F. Supp. 2d 859, 869 (E.D. Tex. 2012) (“This factor will rely on which party has a greater 

volume of documents relevant to the litigation, and their presumed location in relation to the 

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transferee and transferor venues.”).

a. Defendants’ Relevant Sources Of Proof Are Not In This District.

SEC, SEA, SSI, and SAS do not have any relevant documents or witnesses in this District. 

The asserted claims are directed to CMP pad dressers. Supra at p.1. Only SEC and SAS have 

fabs, so only SEC and SAS have information concerning the accused CMP pad dressers. SEC 

selects which CMP pad dressers to use, and SEC and SAS purchase those CMP pad dressers from 

Korean suppliers. Thus, the information in Defendants’ possession concerning the accused CMP 

pad dressers is primarily located in Korea (at SEC) or, to a far lesser extent, in WDTX (at SAS)—

not in this District.

Sung will inevitably point to SEA’s presence in this District. But Sung cannot dispute that 

SEA does not have any fabs and, accordingly, does not make, use, purchase, or sell the accused 

CMP pad dressers. All of Defendants’ information relevant to alleged infringement—i.e., whether 

the CMP pad dressers that SEC and SAS use satisfy the asserted claims—is located in Korea (at 

SEC) or, to a far lesser extent, in Austin (at SAS). Shin Decl. ¶¶ 23–26. None of that technical 

information is in this District.

Sung will also presumably point to SEA’s sales of end-user products containing 

semiconductor chips allegedly made using CMP pads that are conditioned using the accused CMP 

pad dressers. But even if Sung can maintain his dubious assertion that sales of end-user products—

rather than the accused CMP pad dressers that allegedly infringe the asserted claims—are 

somehow relevant, that limited information does not outweigh all of the technical information that 

is primarily located in Korea at SEC and the third-party suppliers.

b. Critical Third-Party Sources Of Proof Are Located In Korea, 

California, And Taiwan—None Is Located In This District.

NDCA is clearly more convenient because relevant third-party evidence is located in

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California, Korea, and Taiwan—more easily accessible from NDCA than this District.

First, Shinhan, Saesol, and EHWA—from which SEC and SAS purchase the accused CMP 

pad dressers (Shin Decl. ¶¶ 13, 20)—are all headquartered in Korea. Lewis Decl., Exs. 4–6. Thus, 

evidence pertaining to the design, manufacture, and sales of the accused CMP pad dressers is

located in Korea. Shinhan, Saesol, and EHWA also likely have documents concerning key prior 

art products—Shinhan’s ARIX diamond disks, Saesol’s Standard diamond disks, EHWA’s CMP 

Pad Conditioner—that Defendants will show render the asserted claims invalid. Those documents 

are certainly located at the suppliers’ headquarters in Korea and, potentially, at their offices in 

California (Shinhan and EHWA) or Oregon (Saesol). None of the third-party suppliers has any 

presence in this District. Id. 

Second, Kinik—who has a lengthy history with Sung involving CMP pad dresser 

technology and even the Asserted Patents—is located in Taiwan. Lewis Decl., Ex. 10. Kinik

likely has information concerning the alleged invention, inventorship, and ownership of the 

Asserted Patents. Lewis Decl., Exs. 11–12. Kinik also likely has information regarding prior art 

products—DiaGrid and ODD—that Defendants intend to rely on for invalidity, including physical 

samples, technical documents, and sales records. Lewis Decl., Exs. 13–15.

Third, LAM, AMAT, and at least five engineers who Defendants believe worked on the 

Teres and REFLEXION LK prior art systems, are located in NDCA. They likely have knowledge 

and documents concerning those prior art systems and their dates of use.

c. Sung’s Relevant Sources Of Proof Are Not In This District.

Sung has no presence in this District or, it appears, anywhere else in the United States. 

Sung resides in Taipei, Taiwan. See Compl. ¶ 2. Sung’s most recent apparent connection to the 

United States was in NDCA: he “reside[d] in Cupertino, CA” in July 2020, and he was deposed 

in NDCA. Lewis Decl., Ex. 1, ¶ 3; Ex. 2.

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* * *

Thus, because there are no material sources of proof in this District, and because, on 

balance, the relevant sources of proof gravitate towards NDCA, this factor favors transfer. See

Bluestone Innovations, LLC v. LG Elecs., Inc., 940 F. Supp. 2d 310, 316–17 (E.D. Va. 2013)

(finding ease of access to sources of proof weighed in favor of transfer in part because defendants 

“assert that all the technical information about their allegedly infringing monitors and televisions 

is located in [] Asian offices or in the Northern District of California”); Uniloc USA Inc. v. LG 

Elecs. USA, No. 17-CV-0825, 2018 WL 3419175, at *4 (N.D. Tex. May 14, 2018) (“This factor 

[] weighs in favor of transfer. No document or piece of evidence resides in [this district] . . . .”).

2. The Availability Of Compulsory Process Strongly Favors Transfer.

This factor strongly favors transfer because important third-party witnesses are located in 

NDCA—outside the subpoena bounds of this District. In re Apple, Inc., 581 F. App’x 886, 889 

(Fed. Cir. 2014) (stating the availability of compulsory process “will weigh heavily in favor of 

transfer when more third-party witnesses reside within the transferee venue than reside in the 

transferor venue”); Empty Barge Lines II, Inc. v. DREDGE LEONARD FISHER, 441 F. Supp. 2d 

786, 796 (E.D. Tex. 2006) (“The Supreme Court has indicated a strong preference for live 

testimony.”).

Here, critical third parties—who Defendants will need to show invalidity based on product 

prior—are within the subpoena power of NDCA. Specifically, the witnesses knowledgeable 

regarding LAM’s Teres and AMAT’s REFLEXION LK systems are located in NDCA, where

LAM and Applied are headquartered. In particular, prior art patents describing Teres show that 

the engineers who worked on that technology were—and currently are—located in NDCA. Lewis 

Decl., Exs. 19–20, 27–28. As shown in the public information describing Teres, Teres used CMP 

pad dressers with diamond particles (Lewis Decl., Ex. 19 at 4:45–64; Ex. 20 at 5:49–52), which 

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are precisely the types of pad dressers that Sung alleges are covered by the Asserted Patents. 

Similarly, the patent application describing REFLEXION LK shows that the engineers who 

worked on that technology were—and currently are—located in NDCA. Lewis Decl., Exs. 23–26. 

And like the LAM’s Teres, AMAT’s REFLEXION LK used CMP pad dressers with diamond 

particles (Lewis Decl., Ex. 23 at [0011]–[0012])—again, precisely the types of pad dressers that

Sung alleges are covered by the Asserted Patents.

3. The Convenience Of Willing Witnesses Strongly Favors Transfer.

The convenience factor is “probably the single most important factor in [the] transfer 

analysis.” In re Juniper Networks, Inc., 14 F.4th 1313, 1318 (Fed. Cir. 2021) (quoting In re 

Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009)). The convenience factor considers

inconvenience to both party and non-party witnesses. See Intell. Ventures I LLC v. T-Mobile USA, 

Inc., No. 17-CV-00577, 2018 WL 4175934, at *5 (E.D. Tex. June 29, 2018). Beyond travel time, 

courts consider the additional burdens imposed by travel, including layovers, “meal and lodging 

expenses,” and “overnight stays [that] increase[] the time which these fact witnesses must be away 

from their regular employment.” Volkswagen I, 371 F.3d at 204–05.

The Federal Circuit has consistently found that witnesses based in Asia can more 

conveniently travel to California or other west coast locations than to EDTX, because travel to 

Texas adds significant distance, time, and expense. See In re Nintendo Co., Ltd., 589 F.3d at 1199 

(cost of attendance factor clearly favored transfer from EDTX to the Western District of 

Washington in part because four Japanese witnesses would “each have to travel an additional 1,756 

miles or 7 hours”); In re TikTok, Inc., 85 F.4th 352, 361 (5th Cir. 2023) (where “the ‘bulk of 

relevant witnesses [are] in China[,]’ it is indisputable that the Northern District of California is 

clearly more convenient for these witnesses than the Western District of Texas” (alterations in 

original)).

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Texas courts have likewise recognized that the difference in cost and travel time to NDCA 

versus Texas for witnesses based in Asia is significant and that transfer alleviates those 

inconveniences. See, e.g., Solas OLED Ltd. v. Apple Inc., No. 19-cv-00537, 2020 WL 3440956, 

at *6 (W.D. Tex. June 23, 2020) (“[T]he Court finds that the increased travel time to the WDTX 

for the third party engineers from Asia is significant. . . . [T]ransfer to the NDCA would alleviate 

the cost of time and money as opposed to travelling to the WDTX. . . . The inconvenience to nonparty witnesses is enough to weigh in favor of transfer; moreover, the inconvenience to party 

witnesses for similar reasons would supplement this finding regardless of its less weight.” 

(citations omitted)).

Defendants’ most relevant witnesses—SEC’s CMP engineers—live and work in Korea. 

Those witnesses would experience significantly greater inconvenience traveling to and testifying 

in this District as compared with NDCA. See Lewis Decl., Exs. 29-30 (showing that travel

between Seoul and Plano is significantly less convenient than travel between Seoul and San 

Franscisco when measured by distance, time, and availability of air travel).

Even more importantly, the third-party suppliers are headquartered in Korea and have 

offices in California or Oregon—not in this District. Those third-party suppliers make the accused 

CMP pad dressers. Accordingly, those third-party suppliers have the most relevant technical 

information concerning the structure of the accused CMP pad dressers—which is the information 

most relevant to the issue of alleged infringement—and product prior art. It is far more likely that 

those third-party suppliers will willingly present witnesses at trial if trial occurs in NDCA—closer 

to their Korean headquarters and closer to their California and Oregon locations. That evidence—

in the sole possession of the third-party suppliers—cannot be understated. Each of Sung’s asserted 

claims will require highly confidential and highly technical information concerning the structure—

Case 4:23-cv-00752-SDJ Document 30 Filed 01/17/24 Page 17 of 22 PageID #: 451
13

at the micron scale—of the accused CMP pads, which is in the sole possession of those suppliers. 

See, e.g., ’862 patent, claim 1 (requiring “a CMP pad dresser” that includes “a monolayer” of 

“superabrasive particles” with differences in “protrusion distance” that is less than “10 microns”); 

’270 patent, claim 1 (requiring “a CMP pad dresser” that includes “a monolayer” of “superabrasive 

particles” with differences in “protrusion distance” that is less than “50 microns”); ’802 patent, 

claim 1 (requiring “[a] CMP pad dresser” that includes “a monolayer” of “superabrasive particles” 

with “tip[s]” that “align[] along a designated profile with a tip variation of from about 5 microns 

to about 100 microns”).

Therefore, because the majority of Defendants’ relevant witnesses will travel from Korea, 

and, critically, because the majority of the third-party suppliers’ relevant witnesses will travel from 

Korea, California, or potentially Oregon, this factor strongly favors transfer to NDCA. See

Bluestone, 940 F. Supp. 2d at 318 (“[M]uch of the relevant evidence, and associated witnesses, 

will likely be found in [NDCA] and Asia. It cannot be reasonably disputed that procuring the 

attendance of these inevitable witnesses, some party and some non-party, will be significantly less 

expensive, and significantly more convenient, in [NDCA], even if they would be otherwise willing 

to travel across two continents to this District.” (citation omitted)); Macronix Int’l Co. v. Spansion 

Inc., No. 13-cv-679, 2014 WL 934521, at *6 (E.D. Va. Mar. 10, 2014) (“[T]he record indicates 

that Macronix’s witnesses reside in Taiwan, which is more convenient to [NDCA than EDVA] as 

measured by distance, time, and availability of air travel.”).

4. There Are No Practical Problems With Transfer To NDCA.

This factor is neutral because this case is in its infancy. The Court has not yet entered a 

scheduling order, Defendants have not filed an Answer, and no discovery has taken place. Transfer 

therefore creates no practical problems. Life Techs. Corp. v. Biosearch Techs., Inc., No. 09-CV283, 2010 WL 11541641, at *1, *4 (E.D. Tex. Sept. 30, 2010) (finding this factor neutral in a case 

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14

with a similar timeline – September complaint and January motion to transfer).

Sung’s co-pending suit against Texas Instruments (“TI”) in this District does not weigh 

against transfer because: (1) there is not significant overlap between the TI suit and this suit1

; and 

(2) although Sung filed his complaint against TI shortly after filing this complaint, transfer motions 

are decided based on facts that “existed when suit was instituted,” so “[a]ny subsequent familiarity 

gained by the district court” in the TI case is “irrelevant.” In re EMC Corp., 501 F. App’x 973, 

976 (Fed. Cir. 2013) (citations omitted); see also In re: NetScout Sys., Inc., No. 2021-173, 2021 

WL 4771756, at *4 (Fed. Cir. Oct. 13, 2021) (“In previous cases, we have rejected a district court’s 

reliance on considerations of judicial economy arising after the filing of the lawsuit or the transfer 

motion as irrelevant to the analysis.”).

C. The Public Interest Factors Favor Transfer.

1. This District Has No Local Interest In Resolving This Dispute.

The local interest consideration “is based on the principle that [j]ury duty is a burden that 

ought not to be imposed on the people of a community [that] has no relation to the litigation.” 

Fairfield Indus. Inc. v. Wireless Seismic, Inc., No. 13-CV-903, 2014 WL 4829071, at *4 (E.D. 

Tex. Sept. 26, 2014) (alterations in original) (internal quotations omitted). “A local interest is 

demonstrated by a relevant factual connection between the events and the venue.” Word to Info, 

Inc. v. Facebook, Inc., No. 14-CV-4387, 2015 WL 13870507, at *4 (N.D. Tex. July 23, 2015).

This District has no meaningful connection to this case because neither the parties nor 

relevant non-parties have any relevant connection to this District. Sung and Kinik are located in 

1 For example, SEC and SAS use CMP pad dressers from a supplier—Shinhan—that TI does not 

use, while TI uses CMP pad dressers from a supplier—3M—that SEC and SAS do not use; 

moreover, the accused products are completely different between the two cases. Lewis Decl., 

Ex. 31; compare Compl. ¶ 12 (accusing “mobile phones,” “smart watches,” and “tablets,” among 

others), with Lewis Decl., Ex. 32 at ¶ 8 (accusing “amplifiers” and “audio converters,” among 

others).

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15

Taiwan—not in this District. Indeed, Sung’s last known U.S. residence was in Cupertino, CA—

in NDCA. Lewis Decl., Ex. 1. And Defendants have seen no evidence that Sung has even set foot 

in this District, let alone performed any work relevant to this case in this District.

SEC and SAS—the defendants who actually use CMP pad dressers—do not have any fabs 

or relevant employees or information in this District. And none of the critical third-party suppliers 

has any connection to this District. See In re TikTok, 85 F.4th at 364 (The local interest “factor 

weighs heavily in favor of transfer [when] . . . there is no relevant factual connection to the 

[transferor district].” (alterations in original) (quoting In re Volkswagen of Am., Inc., 545 F.3d 304, 

317–18 (5th Cir. 2008) (“Volkswagen II”))).

Only SEA has any presence in this District (albeit entirely unrelated to the accused CMP 

pad dressers), but each of the defendant U.S. entities—SEA, SSI, and SAS—has a presence in 

NDCA. Shin Decl. ¶¶ 8–10. Thus, to the extent Sung argues that this District has a local interest 

based on SEA’s presence in this District, NDCA undoubtedly has a greater local interest because 

all three of SEA, SSI, and SAS have offices and employees there.

2. The Remaining Public Interest Factors Are Neutral.

The remaining public interest factors—court congestion, conflicts of laws, and familiarity 

with governing law—are neutral. Court congestion is the “most speculative [factor],” In re 

Genentech, 566 F.3d at 1347, and, accordingly, is afforded “little weight,” Stellar Restoration 

Servs., LLC v. James Christopher Courtney, 533 F. Supp. 3d 394, 429 (E.D. Tex. 2021). The court 

congestion factor is neutral as both forums have a similar number of weighted filings per judgeship. 

Lewis Decl. Exs. 33–34. There are no conflict of law issues and both courts are familiar with 

patent law.

V. CONCLUSION

Defendants respectfully request that this Court transfer the case to NDCA.

Case 4:23-cv-00752-SDJ Document 30 Filed 01/17/24 Page 20 of 22 PageID #: 454
16 

Dated: January 17, 2024 By: /s/ Cosmin Maier (with permission by Mandy 

Nelson)

Otis Carroll 

Collin Maloney 

Mandy Nelson 

CARROLL MALONEY 

HENRY & NELSON PPLC

1327 Dominion Plaza Ste. 100

Tyler, TX 75703 

Tel: (903) 561-1600 

otis@cmhnlaw.com 

collin@cmhnlaw.com 

mandy@cmhnlaw.com 

John Desmarais (Admitted Pro Hac Vice)

Paul Bondor (Admitted Pro Hac Vice) 

Cosmin Maier (Admitted Pro Hac Vice)

Yung-Hoon Ha (Admitted Pro Hac Vice) 

Taeg Sang Cho (Admitted Pro Hac Vice) 

DESMARAIS LLP

230 Park Avenue 

New York, New York 10169 

Tel: (212) 351-3400 

Fax: (212) 351-3401 

jdesmarais@desmaraisllp.com

pbondor@desmaraisllp.com 

cmaier@desmaraisllp.com

yha@desmaraisllp.com 

tcho@desmaraisllp.com 

David Cho (Admitted Pro Hac Vice) 

Paxton Lewis (Admitted Pro Hac Vice)

DESMARAIS LLP

1899 Pennsylvania Avenue, NW, Suite 400 

Washington, DC 200069 

Tel: (202) 451-4900 

Fax: (202) 451-4901 

dcho@desmaraisllp.com 

plewis@desmaraisllp.com

Attorneys for Defendants Samsung Electronics 

Co. Ltd., Samsung Electronics America, Inc., 

Samsung Semiconductor, Inc., and Samsung 

Austin Semiconductor LLC

Case 4:23-cv-00752-SDJ Document 30 Filed 01/17/24 Page 21 of 22 PageID #: 455
17 

CERTIFICATE OF CONFERENCE

Pursuant to Local Rule 7(h), I certify that Defendants conferred in good faith about this 

motion with Plaintiff. Specifically, during the 26(f) conference on January 3, 2024, I, as counsel 

for Defendants, conferred by teleconference with Plaintiff’s counsel and stated that most of the 

discovery related to this action would be located in Asia. Prior to filing this motion on January 17, 

2024, I reiterated that most pertinent discovery would likely come from Asia, and stated that the 

Northen District of California would clearly be more convenient. Based upon my understanding 

of Plaintiff’s position in this case, it is my belief that Plaintiff opposes this motion. 

/s/ Cosmin Maier (with permission by Mandy 

Nelson) 

CERTIFICATE OF SERVICE

I hereby certify that on January 17, 2023, I electronically filed the foregoing with the Clerk 

of the Court using the CM/ECF system, which will send notification of such filing to all counsel 

of record.

/s/ Mandy Nelson 

Case 4:23-cv-00752-SDJ Document 30 Filed 01/17/24 Page 22 of 22 PageID #: 456