UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

VIRTAMOVE, CORP.,

Plaintiff,

v.

HEWLETT PACKARD ENTERPRISE 

COMPANY,

Defendant.

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Case No. 2:24-cv-00093-JRG

(Lead Case)

JURY TRIAL DEMANDED

ORAL ARGUMENT REQUESTED

VIRTAMOVE, CORP.,

Plaintiff,

v.

INTERNATIONAL BUSINESS 

MACHINES CORP.,

Defendant.

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Case No. 2:24-cv-00064-JRG

(Member Case)

JURY TRIAL DEMANDED

ORAL ARGUMENT REQUESTED

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DEFENDANT IBM’S REPLY IN SUPPORT OF ITS MOTION TO TRANSFER VENUE

TO THE NORTHERN DISTRICT OF CALIFORNIA PURSUANT TO 

28 U.S.C. § 1404(a)

(PUBLIC VERSION - REDACTED)

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VirtaMove does not dispute that this case has no connection to the Eastern District of 

Texas.1 It also does not dispute that the accused technology was developed and is maintained in

the Northern District of California (“NDCA”), the witnesses most knowledgeable about it reside 

in NDCA, and the key prior art products are based in NDCA. Indeed, not a single factor favors 

keeping this case in EDTX—except possibly time to trial, which VirtaMove concedes cannot 

override the other factors. See Resp. at 14. Transfer to NDCA therefore is warranted.

Recent Fifth Circuit precedent has not altered the analysis. VirtaMove incorrectly 

suggests that under In re Clarke, IBM faces the nigh-impossible burden of identifying the exact

witnesses who will “actually materialize” at trial. 94 F.4th 502, 509 (5th Cir. 2024); Resp. at 3–4, 

9–10. Yet, whether potential witnesses resided in the transferee forum was not even at issue in

Clarke. In the discussion VirtaMove cites, the Fifth Circuit merely confirmed that court congestion 

cannot be the deciding factor, in part because it is speculative. See Clark, 94 F.4th at 515. IBM 

need only identify the “relevant witnesses in this case,” which it has done—not commit to which

witnesses will appear at trial. In re TikTok, Inc., 85 F.4th 352, 362 (5th Cir. 2023).2

VirtaMove also wrongly suggests Clarke “d[id] away with the ‘design and development’ 

analysis.” Resp. at 4–5. Not so: the Fifth Circuit merely emphasized that the local interest factor 

turns on the “events that gave rise to the suit,” not just the parties’ locations or “connections to the 

venue.” In re Clarke, 94 F.4th at 511 (emphasis added). Far from changing the analysis, Clarke 

relied on previous decisions that treated design and development as relevant events giving rise to 

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the suit. See id. at 512. And decisions following Clarke continue to consider development location

when analyzing the local interest. See Emerging Auto. LLC v. Kia Corp., No. 2:23-CV-00437-

JRG, Dkt. 56 at 29–30 (E.D. Tex. June 14, 2024); DH Int’l Ltd. v. Apple Inc., No. 1:23-CV-1114-

DII, 2024 WL 4119374, at *6 (W.D. Tex. Aug. 30, 2024) (finding creation locale as relevant to 

analysis); In re Haptic, Inc., No. 2024-121, 2024 WL 3159288, at *2 (Fed. Cir. June 25, 2024). 

Availability of compulsory process. This factor “weigh[s] heavily in favor of transfer 

when more third-party witnesses reside within [NDCA] than [EDTX].” In re Apple, Inc., 581 F. 

App’x 886, 889 (Fed. Cir. 2014). IBM has identified nine non-party witnesses in NDCA having 

highly relevant information. See Ex. 1. VirtaMove identifies zero non-party witnesses in EDTX. 

Although VirtaMove identifies two former employees in Dallas who “may” have information

about “the accused VirtaMove product,” Resp. at 9, neither was identified in its Rule 26 

disclosures, and VirtaMove has not otherwise identified them in discovery.3 The five other former 

VirtaMove employees (see id. at 8) are retained VirtaMove consultants, not “third-party witnesses” 

to be given greater weight in the venue analysis. Keldar, Inc. v. Baby Brezza Enters. LLC, No. 

2:14-cv-904-JRG-RSP, 2015 WL 4624863, at *3 (E.D. Tex. Aug. 3, 2015).4

And while VirtaMove asserts CNCF and Docker do not have information on “IBM’s 

specific implementation of Kubernetes or Docker,” it does not explain why this is relevant. Resp. 

at 9 (emphasis in original).

5 VirtaMove’s infringement contentions point to IBM’s use of open3

 Moreover, those witnesses are relevant only to IBM’s counterclaims against “the accused VirtaMove product,” 

Resp. at 9, not VirtaMove’s Complaint, which should be the “focus” when considering transfer. Starco Impex, 

Inc. v. Biotab Nutraceuticals, Inc., No. 1:11–CV–208-RC, 2011 WL 13227698, at *1 (E.D. Tex. Oct. 6, 2011). 

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 VirtaMove argues that IBM fails to designate these third-party witnesses as “30(b)(6) corporate representatives”

on IBM’s Kubernetes and Docker implementation, Resp. at 9, but VirtaMove has not served any 30(b)(6) topics. 

Case 2:24-cv-00093-JRG Document 88 Filed 10/16/24 Page 3 of 8 PageID #: 4349
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source Kubernetes and Docker, not any “specific implementation.” See Dkt. 78, Ex. NN. 

Access to sources of proof. VirtaMove identifies no sources of proof in EDTX, and it 

failed to produce or permit inspection of its “two heavy boxes” of “patent files” in Canada, Resp. 

at 10, by the June 5 Patent Rule 3-2 deadline.6 Nor has VirtaMove shown “there would be any 

difference between sending electronic files from [Canada] to Texas compared to California.” 

Lionra Techs. Ltd. v. Fortinet, Inc., No. 2:22-CV-00322-JRP-RSP, 2023 WL 7491853, at *3 (E.D. 

Tex. Nov. 12, 2023). Meanwhile, it is undisputed that the majority of evidence relevant to the 

accused technology and prior art will come from NDCA third parties. See Resonant Sys., Inc. v. 

Sony Grp. Corp., No. 2:22-CV-00424-JRG, Dkt. 55 at 6–7 (E.D. Tex. Apr. 10, 2024) (transfer 

favored where NDCA third party “holds [relevant] documents”). It also is uncontested that the 

custodians of IBM’s contributions to Docker and Kubernetes are in NDCA. Dkt. 78-1 ¶¶ 6–8. 

NDCA is more convenient for willing witnesses. VirtaMove fails to identify any willing 

witnesses in or even near EDTX, instead focusing on its five employees in Canada (including three

unidentified in its initial disclosures). See Resp. at 6; Dkt. 78, Ex. V. Because these witnesses “will 

already be traveling a substantial distance such that any difference in travel time between this 

Court and [NDCA] is unlikely to impose a practically significant additional burden,” “their 

residences far from either proposed forum lessens their significance with respect to this factor.” 

Emerging Auto., Dkt. 56 at 20 (E.D. Tex. June 14, 2024). 

As for current or former IBM employees, VirtaMove fails to specify individuals or does 

not explain why they are likely to attend trial. See Resp. at 7–8. The inventors of one asserted IBM 

patent—Markley (Kansas) and Pfitzmann (Switzerland)—no longer work at IBM and are beyond 

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subpoena range. VirtaMove cites IBM’s non-California offices but does not identify supposed 

witnesses there except Chris Rosen, who is not named in initial disclosures. See id. at 7. While 

VirtaMove claims IBM “may call” Harvinder Saini to rebut testimony “about what happened at [a

2016] meeting” between the parties, id. at 8, he also is not named in initial disclosures, and 

VirtaMove’s own exhibit confirms the meeting concerned an older VirtaMove product. See id., 

Ex. 7. Because VirtaMove “does not identify any of its instrumentalities as practicing the Asserted 

Claims,” IBM’s knowledge of that product is irrelevant. Dkt. 78, Ex. NN at 5.7

Meanwhile, at least three party witnesses reside in NDCA, see Ex. 1, the sole inventor of 

three of the four asserted IBM patents (Allen Havemose) resides in California, and the only other 

willing witness the parties identified as potentially relevant (Amit Paradkar) is in New York. Thus, 

this factor strongly favors transfer. See Voxpath RS, LLC v. LG Elecs. U.S.A., Inc., No. 2:10-CV160-JRG, 2012 WL 194370, at *4 (E.D. Tex. Jan. 23, 2012). 

Other practicalities. Because the relevant evidence and witnesses are concentrated in 

NDCA, all parties accused of infringing VirtaMove’s patents have moved for transfer there, where

Red Hat’s DJ action is also pending. VirtaMove does not deny that consolidating these matters in 

the same district will rectify the inefficiencies and potential conflicts introduced by its decision to 

file in separate districts.8 Moreover, while VirtaMove presumes the WDTX Court will deny 

Amazon’s and Google’s transfer motions, see Resp. at 12, it fails to address the previous WDTX 

decision granting HPE’s motion to transfer to NDCA where, as here, the accused products 

implemented Docker and Kubernetes. See Dkt. 78 at 1, 13. VirtaMove’s assertion that Red Hat

7 VirtaMove cannot identify any patents mentioned during the 2016 presentation to IBM, and it confirmed it has 

not discussed its patents with anyone in EDTX. See Ex. 2 at 144:12–145:8, 46:23–47:2.

8 Courts evaluating this factor have considered transfer of similarly situated defendants to the transferee forum. 

See Traxcell Techs., LLC v. Verizon Wireless Pers. Commc’ns, LP, No. 6:20-CV-01175-ADA, 2022 WL 

1127222, at *3 (W.D. Tex. Feb. 1, 2022). 

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brought its DJ action to “manipulate the transfer factors” also is incorrect. See Resp. at 12; Dkt. 

82-4 ¶¶ 1–4 (detailing basis for DJ claim).

Local interest considerations. Although VirtaMove claims this factor is neutral because 

both parties’ “products are sold nationwide,” Resp. at 12, it does not identify any relevant 

customers in this District, and it fails to address its own concentration of partners and customers 

in NDCA.9 As noted above, VirtaMove’s attempt to discount NDCA’s local interest by arguing 

the Fifth Circuit no longer considers the accused technology’s “design and development” location 

misstates the law. Resp. at 13. The non-party NDCA residents who developed and contributed to 

the accused open-source technologies have an interest in this case, as do the numerous NDCAbased companies and citizens that use the technologies or developed key prior art. See, e.g., In re 

Hoffmann-La Roche Inc., 587 F.3d 1333, 1336, 1338 (Fed. Cir. 2009). 

VirtaMove’s procedural arguments fail. With this case still in its early stages, IBM did 

not improperly “delay” in bringing this motion or cause any prejudice to VirtaMove. IBM 

investigated VirtaMove’s claims, identified locations of the key prior art and technical witnesses, 

and filed its motion upon learning that all pertinent evidence and witnesses are located elsewhere. 

Nor did IBM fail to “finish meeting and conferring.” Resp. at 14. At the meet-and-confer, 

VirtaMove stated it would “most likely oppose IBM’s [transfer] request” but would consider

whether to accept transfer in exchange for a limit on prior art contentions. Dkt. 82-1. VirtaMove 

then returned with new and unrelated conditions, such as “bind[ing] Red Hat to litigation 

agreements” and foregoing IPRs. Id. IBM could not accept those added conditions and informed 

VirtaMove that due to the inability to resolve the dispute, IBM would proceed with its motion. Id. 

VirtaMove never responded with another offer or denied the parties were at an impasse. 

9 VirtaMove confirmed it has at least 20 customers in California and around 12 in NDCA. Ex. 2 at 119:19–120:15.

Case 2:24-cv-00093-JRG Document 88 Filed 10/16/24 Page 6 of 8 PageID #: 4352
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Dated: October 16, 2024 Respectfully submitted,

/s/ Brandon Brown

Brandon H. Brown 

California State Bar No. 266347 

KIRKLAND & ELLIS LLP 

555 California Street 

San Francisco, CA 94104 

Telephone: (415) 439-1400

Facsimile: (415) 439-1500

Email: brandon.brown@kirkland.com

Todd M. Friedman (pro hac vice) 

KIRKLAND & ELLIS LLP 

601 Lexington Avenue 

New York, NY 10022 

Telephone: (212) 446-4800 

Facsimile: (212) 446-4900 

Email: todd.friedman@kirkland.com 

Of Counsel:

Andrea L. Fair

Texas State Bar No. 24078488

WARD, SMITH & HILL, PLLC

1507 Bill Owens Parkway

Longview, TX 75604

Telephone: (903) 757-6400

Facsimile: (903) 757-2323

Email: andrea@wsfirm.com

Attorneys for Defendant

International Business Machines Corp

.

Case 2:24-cv-00093-JRG Document 88 Filed 10/16/24 Page 7 of 8 PageID #: 4353
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CERTIFICATE OF SERVICE

The undersigned hereby certifies that all counsel of record who are deemed to have 

consented to electronic service are being served with a copy of this document via the Court’s 

CM/ECF system pursuant to Local Rule CV-5(a)(3) on October 16, 2024. 

/s/ Brandon H. Brown

Brandon H. Brown

Case 2:24-cv-00093-JRG Document 88 Filed 10/16/24 Page 8 of 8 PageID #: 4354