Contract analysis

I. INTRODUCTION Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully submits this Opposition to Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") Motion to Transfer Venue to the Western District of Texas, Austin Division, filed on June 17, 2024 (D.E. 13). For the reasons set forth below, Lumicore's Motion should be denied in its entirety. OWS filed this patent infringement acti

II. STATEMENT OF FACTS A. The Parties Optiwave Semiconductor Corp. OWS is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Complaint ¶ 1 (D.E. 1). OWS is a fabless semiconductor company that specializes in the design, development, and commercialization of silicon phot

III. LEGAL STANDARD A. 28 U.S.C. § 1404(a) — Burden on the Moving Party

Section 1404(a) of Title 28 of the United States Code provides that "[f]or 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 or to any district or division to which all parties have consented." 28 U.S.C. § 1404(a). The statute vests broad discretion in the district court, but that disc

IV. ARGUMENT A. Venue Is Proper in the Eastern District of Texas As a threshold matter, there is no dispute that venue is proper in this District. Under 28 U.S.C. § 1400(b), the sole statute governing venue in patent infringement actions, a patent case may be brought "in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place

1. Relative Ease of Access to Sources of Proof. The first private interest factor examines the relative ease of access to sources of proof. Volkswagen II, 545 F.3d at 315. This factor has been described as "the most important of the private interest factors" in cases where relevant evidence is located in the transferee district. In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013). However, in the modern era of elec

2. Availability of Compulsory Process to Secure Attendance of Witnesses. The second private interest factor evaluates the availability of compulsory process to secure the attendance of non-party witnesses. Volkswagen II, 545 F.3d at 316. Under Federal Rule of Civil Procedure 45(c)(1), a subpoena for attendance at trial may command a person to attend only within 100 miles of where the person resides, is employed, or r

3. Cost of Attendance for Willing Witnesses. The third private interest factor — the cost of attendance for willing witnesses — is often the most significant factor in the transfer analysis. Volkswagen II, 545 F.3d at 317; In re Pemberton Partners LLC, 566 F.3d 1338, 1343–44 (Fed. Cir. 2009). The inquiry focuses on willing witnesses — both party and non-party — who are likely to testify at trial, and evaluates whethe

4. All Other Practical Problems. The fourth private interest factor — a catch-all consideration of "all other practical problems that make trial of a case easy, expeditious, and inexpensive" — weighs against transfer. Local Counsel Considerations. Both parties' local counsel are based in Tyler, Texas. OWS's local counsel, Whitmore & Callahan LLP, is located at 110 North College Avenue, Suite 800, Tyler, Texas 75702.

1. Court Congestion and Administrative Difficulties. The first public interest factor examines the administrative difficulties flowing from court congestion. Volkswagen II, 545 F.3d at 315. While "court congestion" is measured by more than mere caseload statistics, the efficiency and experience of the transferor court are relevant considerations. The Eastern District of Texas, and Judge Gilstrap's docket in particula

2. Local Interest in Having Localized Controversies Decided at Home. The second public interest factor — the local interest in having localized controversies decided at home — weighs in favor of the Eastern District, or is at minimum neutral. The Fifth Circuit has emphasized that "jury duty is a significant burden on the local community" and that "the community's interest in adjudicating disputes that arise from or r

3. Familiarity of the Forum with Governing Law. The third public interest factor — the familiarity of the forum with the law that will govern the case — is neutral. This is a patent infringement action governed exclusively by federal law, specifically Title 35 of the United States Code and the precedent of the United States Court of Appeals for the Federal Circuit. Both the Eastern District of Texas and the Western D

4. Avoidance of Conflict of Laws. The fourth public interest factor — the avoidance of unnecessary problems of conflict of laws or the application of foreign law — is entirely inapplicable to this case. This is a federal patent infringement action in which all claims and defenses are governed by federal law. There are no state-law claims, no choice-of-law issues, and no application of foreign law. The same federal pa

V. SUPPORTING DECLARATIONS In further support of this Opposition, Plaintiff respectfully directs the Court's attention to the following declarations, filed concurrently herewith: Declaration of James "Jim" Callahan in Support of Plaintiff's Opposition to Defendant's Motion to Transfer Venue (D.E. [__]). Mr. Callahan is a partner at Whitmore & Callahan LLP, OWS's local counsel in this District. His declaration attests

VI. CONCLUSION For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court deny Defendant Lumicore Technologies, Inc.'s Motion to Transfer Venue to the Western District of Texas, Austin Division (D.E. 13) in its entirety. This action was properly filed in the Eastern District of Texas, marshall Division, where the Defendant maintains a regular and established place of busine