IP Law Daily, PATENT—W.D. Tex.: Transmitted beam network patent dispute against HP transferred to California, (Aug 22, 2022)

By Kevin M. Finson, J.D.

Transfer was warranted because both parties were headquartered in California and none of the relevant factors supported keeping the case in Texas.

A patent infringement case brought by XR Communications against HP over a networking patent would clearly be more convenient if held in the Northern District of California, the federal district court in Waco has held. Four of the traditional factors convenience favored transfer and none weighed against it (XR Communications LLC v. HP Inc., August 17, 2022, Albright, A.).

XR Communications, LLC, doing business as Vivato Technologies (Vivato), was the owner of U.S. Patent No. 10,715,235 (the ’235 patent), which was directed at a transmitted beam-forming network that routed data to client devices via directed communication beams emanated from an antenna. Vivato alleged that HP, Inc. infringed claims 8 and 12 of the ’235 patent by the manufacture and sale of several varieties of HP laptop and desktop computers. Vivato filed suit for infringement, along with several other suits for infringement of the same patent against other defendants, in the Western District of Texas. HP moved for transfer to the Northern District of California under 28 U.S.C. § 1404(a). It was not contested that the case could have been properly brought in the Northern District of California, so the court addressed the public and private interest convenience factors.

Sources of proof. The documents relating to marketing, sales, financials, and patent licensing were kept in the Northern District of California. Research, design, and development documents were kept in Taiwan and could be accessed just as easily from either location. No documents were kept in the Western District of Texas. This factor favored transfer.

Compulsory process. Of the named inventors of the ’235 patent, four of whom resided in California and one in Texas. One other third-party witness, a former Vivato employee, resided in Texas. Nine third party witnesses altogether resided in California, so this factor favored transfer.

Cost of attendance. Employee witnesses familiar with the technical details of the accused product all resided in Taiwan, from which attendance in California or Texas would make little difference. However, HP identified seven witnesses familiar with the marketing and sales of the accused products who resided in California, and only one resided in Texas. This factor favored transfer.

Other factors. Under the catch-all private interest factor, the court considered Vivato’s other pending cases asserting the same patent in the Western District of Texas. These cases were in the early stages and four had pending motions to transfer of their own, so this factor was neutral.

Court congestion. HP argued that the Western District of Texas was more congested, with 800 patent cases compared to the Northern District of California’s 300. Vivato argued that cases would come to trial faster in the Western District of Texas. The court held that the difference in congestion and time to trial were negligible, especially when the total number of cases and not just patent cases were considered. This factor was neutral.

Local interests. Both HP and Vivato were headquartered in California, as was the company from which Vivato acquired its interest in the asserted patent. There was no connection to the Western District of Texas at all except that HP maintained an office there with no connection to the product in question and that HP sold its products in the Western District of Texas as part of a nationwide marketing strategy. There was no particular targeting of that forum by HP. This factor favored transfer.

The remaining factors were not contested and it was agreed they were neutral. The court held that because four factors favored transfer and none weighed against it, transfer was clearly more convenient. The court granted HP’s motion to transfer.

The Case is No. 6:21-cv-00694-ADA.

Attorneys: Christian W. Conkle (Russ August & Kabat) for XR Communications LLC a/k/a Vivato Technologies. Aamir A. Kazi (Fish & Richardson PC) for HP Inc.

Companies: XR Communications LLC; HP Inc.

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Cases: Patent TexasNews CaliforniaNews