1014-00004 · Hawthorne Vega & Cruz LLP · Pleadings & Motions

opposition-motion-to-transfer.docx DOCUMENT Litigation

127 / 168 ← → ✕

Contract analysis Extract to table

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

LUMICORE TECHNOLOGIES, INC.,

Defendant.

Case No. 2:24-cv-00319-JRG

Hon. James R. Gilstrap

JURY TRIAL DEMANDED

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S OPPOSITION TO DEFENDANT'S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)

D.E. 18 Filed: July 8, 2024

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 action on April 22, 2024 (D.E. 1), asserting four United States utility patents against Lumicore's commercially significant transceiver module product lines. Specifically, OWS alleges that Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules infringe U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent"). These patents cover foundational innovations in silicon photonics — the very technology that powers Lumicore's accused products. The Complaint seeks approximately $210 million in damages for lost profits, reasonable royalties, and enhanced damages for willful infringement, as well as a permanent injunction barring Lumicore from continuing to make, use, sell, offer to sell, and import the accused products in the United States.

Lumicore's Motion to Transfer is a transparent attempt to relocate this action to a forum that would be more convenient for its corporate executives in Austin. But convenience for the moving party is not the test. Under the well-established standard set forth by the Fifth Circuit in In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc) ("Volkswagen II"), Lumicore bears the heavy burden of demonstrating that the proposed transferee forum — the Western District of Texas, Austin Division — is clearly more convenient than the Eastern District of Texas. It has failed to carry that burden.

The facts demonstrate that this District has deep and meaningful ties to this dispute. Lumicore maintains a physical, staffed sales and technical support office in Tyler, Texas — Squarely within the Eastern District of Texas. From that office, Lumicore directs sales and support activity toward data-center customers throughout the region. Lumicore has sold the very products accused of infringement — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR modules — to at least three customers with facilities within this District: Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX, transferred to the Tyler Division for case management purposes). These sales establish that acts of infringement — the sale, offer to sell, and use of the accused products — occurred within this District. The citizens of the Eastern District of Texas have a genuine interest in the resolution of this dispute.

When the private and public interest factors identified in Volkswagen II are weighed against the record evidence, no factor clearly favors transfer and several affirmatively weigh against it. The key sources of documentary proof are electronic and equally accessible from either forum. None of the identified third-party witnesses reside in the subpoena range of the Western District of Texas. The incremental convenience to Lumicore's Austin-based party witnesses is marginal — Tyler is approximately 230 miles from Austin — and is fully offset by the equivalent inconvenience that transfer would impose on OWS's California-based witnesses, who travel comparable distances to either forum. Both parties' local counsel are based in Tyler. And this Court's unparalleled experience with patent litigation and its efficient case-management procedures weigh strongly against disrupting the forum Plaintiff selected.

The Motion to Transfer should be denied in its entirety.

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 photonics chipsets for data-center interconnects. Since its founding in 2011, OWS has grown into one of the leading innovators in the silicon photonics industry, employing approximately 1,250 people across its headquarters in Santa Clara and satellite engineering facilities in San Jose, California and Portland, Oregon. For the fiscal year ended December 31, 2023, OWS reported total revenue of $487.3 million and net income of $61.4 million. See Declaration of Rebecca Tanaka in Support of Opposition to Transfer ("Tanaka Decl.") ¶¶ 3–5 (D.E. [__], filed concurrently).

OWS's commercial success has been driven by its substantial investment in research and development, which totaled over $78 million in FY 2023 alone. OWS's intellectual property portfolio reflects this investment: OWS holds 142 issued United States patents and 58 pending patent applications directed to silicon photonics technologies, including optical waveguide designs, coherent transceiver architectures, thermal management solutions, and polarization-diverse grating couplers. Tanaka Decl. ¶ 6. These patents represent the core technological innovations that differentiate OWS's products from those of its competitors and form the basis of the claims asserted in this action.

OWS's majority owner is Ridgeline Capital Partners, LP ("Ridgeline"), a private equity firm that acquired a 55% ownership stake in OWS in 2019 through a transaction valued at approximately $780 million. Ridgeline's investment reflected the substantial value of OWS's intellectual property portfolio and the commercial potential of its silicon photonics platform. The remaining equity is held by OWS's founders, management, and early-stage venture investors. Tanaka Decl. ¶ 7.

Lumicore Technologies, Inc. Lumicore is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Complaint ¶ 2 (D.E. 1); Answer ¶ 2 (D.E. 12). Founded in 2015, Lumicore is a fast-growing entrant in the silicon-photonics transceiver market, targeting hyperscale data center and telecommunications customers with a portfolio of high-bandwidth optical transceiver modules. Lumicore employs approximately 870 people and generated estimated revenue of $312.6 million for the fiscal year ended December 31, 2023. Lumicore conducted its initial public offering on the Nasdaq Stock Market in March 2022, pricing its shares at $24.00 per share. As of the filing of this action, Lumicore's share price was approximately $37.00 per share, yielding a market capitalization of approximately $3.4 billion based on approximately 91.8 million shares outstanding. Tanaka Decl. ¶¶ 8–10.

While Lumicore's corporate headquarters is in Austin, Lumicore is by no means an Austin-only company. As set forth in detail below, Lumicore maintains a physical office in Tyler, Texas, within the Eastern District of Texas, and conducts substantial commercial activity directed at customers throughout this District. Lumicore also maintains offices in San Jose, California; Shenzhen, China; and Yokohama, Japan. Tanaka Decl. ¶ 11.

B. Lumicore's Presence in the Eastern District of Texas

Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. Declaration of James "Jim" Callahan in Support of Opposition to Transfer ("Callahan Decl.") ¶¶ 4–7 (D.E. [__], filed concurrently). This office is located squarely within the Tyler Division of the Eastern District of Texas. It is not a nominal or "paper" presence; it is a physical, staffed office that serves as a regional hub for Lumicore's sales and technical support activities directed at data-center customers throughout East Texas and the broader Southwest region.

Publicly available information, including Lumicore's own corporate website and Westmark Health IT postings, confirms that the Tyler office employs at least seven full-time employees, including three regional sales managers and four technical support engineers. Callahan Decl. ¶¶ 5–6. These employees are responsible for cultivating customer relationships, providing pre-sale and post-sale technical support, coordinating product demonstrations and on-site installations, and resolving technical issues with deployed transceiver modules. The Tyler office is listed on Lumicore's corporate website under its "Office Locations" page with a full street address and telephone number, and Lumicore employees at the Tyler office identify their location as "Tyler, Texas" in their professional profiles. Callahan Decl. ¶ 7.

The Tyler office is not incidental to this litigation — it is directly relevant to the claims at issue. Lumicore has sold the accused products — specifically the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules — to at least three customers with facilities located within the Eastern District of Texas:

(a) Pinnacle Data Systems, LLC, located at 1800 Judson Road, Longview, Texas 75601. Pinnacle operates a Tier III data center facility in Longview, within the marshall Division of the Eastern District of Texas, and has purchased LumiLink 400G-ZR+ and LumiLink 800G-DR8 modules from Lumicore for deployment in its optical interconnect infrastructure. Tanaka Decl. ¶ 14; Callahan Decl. ¶ 9.

(b) Frontier Cloud Services, Inc., located at 400 East Houston Street, marshall, Texas 75670. Frontier operates cloud computing and managed hosting services from its marshall, Texas facility, located within the marshall Division of the Eastern District of Texas. Frontier has purchased LumiEdge 1600G-LR modules from Lumicore for use in its inter-facility network backbone. Tanaka Decl. ¶ 15; Callahan Decl. ¶ 10.

(c) CrossPoint Networking Corp., located at 7500 Dallas Parkway, Suite 200, Plano, Texas 75024. CrossPoint is a network infrastructure provider that has purchased LumiLink 400G-ZR+ modules from Lumicore for deployment in data-center facilities servicing North Texas and East Texas customers. Although CrossPoint's Plano office falls within the Sherman Division, CrossPoint's purchase activity has been managed through Lumicore's Tyler office, and this matter has been transferred to the Tyler Division for case management purposes. Tanaka Decl. ¶ 16; Callahan Decl. ¶ 11.

These sales of accused products to customers within the Eastern District of Texas establish that acts of infringement — including the sale, offer to sell, and use of the accused transceiver modules — have occurred within this District. The accused products are not merely passing through; they have been sold, installed, and are currently in active commercial use within the communities of this District. Tanaka Decl. ¶ 17.

C. The Asserted Patents and Pre-Suit History

OWS asserts four United States utility patents in this action, each of which covers a distinct but related aspect of silicon photonics technology embodied in Lumicore's accused transceiver modules:

(a) U.S. Patent No. 10,234,847 (the "'847 Patent") — entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer," filed on September 14, 2016 and issued on March 19, 2019. The '847 Patent claims a novel architecture for wavelength-division multiplexing in silicon photonic waveguides that enables high-density, multi-channel optical signal routing with reduced crosstalk and insertion loss. The '847 Patent was prosecuted by OWS's in-house patent counsel and lists Dr. Jian-Wei Huang and Dr. Nikolai Petrov as co-inventors. Complaint ¶¶ 18–25 (D.E. 1).

(b) U.S. Patent No. 10,891,193 (the "'193 Patent") — entitled "High-Bandwidth Coherent Optical Transceiver," filed on April 7, 2017 and issued on January 12, 2021. The '193 Patent claims innovations in coherent optical transceiver design, including novel digital signal processing architectures that enable data transmission at rates exceeding 400 gigabits per second over long-haul and metro-area optical fiber links. Complaint ¶¶ 26–33 (D.E. 1).

(c) U.S. Patent No. 9,678,562 (the "'562 Patent") — entitled "Thermal Management System for Photonic Integrated Circuits," filed on November 22, 2014 and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. ("Solara"), a silicon photonics startup that ceased operations in 2018. OWS acquired all right, title, and interest in the '562 Patent, along with other intellectual property assets of Solara, pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million. The '562 Patent claims methods and apparatus for managing thermal dissipation in densely integrated photonic circuits, a critical challenge in high-bandwidth transceiver modules. Complaint ¶¶ 34–42 (D.E. 1); Tanaka Decl. ¶ 19.

(d) U.S. Patent No. 11,402,015 (the "'015 Patent") — entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Systems," filed on August 30, 2019 and issued on August 2, 2022. The '015 Patent claims innovations in grating coupler design that efficiently couple light from optical fibers into silicon photonic waveguides while accommodating polarization diversity — a key enabler of high-performance transceiver modules. Complaint ¶¶ 43–50 (D.E. 1).

Prior to filing this action, OWS engaged in extensive pre-suit licensing outreach to Lumicore through FairPoint Licensing Group, LLC ("FairPoint"), a licensing advisory firm retained by OWS. On January 15, 2023, FairPoint sent a detailed licensing letter to Lumicore's General Counsel, Raymond Bautista, identifying the '847 Patent, the '193 Patent, and the '562 Patent as being infringed by Lumicore's LumiLink 400G-ZR+ and LumiLink 800G-DR8 product lines, and inviting Lumicore to enter into licensing discussions. Tanaka Decl. ¶ 21; Tanaka Decl. Ex. A (January 15, 2023 Letter).

On April 20, 2023, representatives of FairPoint and OWS met in person with Mr. Bautista and other Lumicore representatives in Austin, Texas to discuss the scope of the asserted patents, the accused products, and the framework for a potential license. The meeting lasted approximately four hours. While Lumicore expressed interest in understanding the technical basis for OWS's infringement contentions, it did not agree to a license or offer a counterproposal. Tanaka Decl. ¶ 22.

On May 15, 2023, FairPoint sent a second licensing letter to Mr. Bautista, supplementing the initial letter by adding the '015 Patent (which had issued in August 2022) and expanding the scope of the accused products to include the LumiEdge 1600G-LR transceiver module, which Lumicore had commercially launched in March 2023. This letter requested a response within sixty days. Tanaka Decl. ¶ 23; Tanaka Decl. Ex. B (May 15, 2023 Letter).

On July 10, 2023, Lumicore, through Mr. Bautista, formally declined to take a license, stating that Lumicore "does not believe that its products infringe any valid claims of the identified patents" and that Lumicore "respectfully declines the invitation to negotiate a license." Tanaka Decl. ¶ 24; Tanaka Decl. Ex. C (July 10, 2023 Letter). No further licensing discussions ensued.

OWS also retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), a technical consulting firm headquartered in Santa Clara, California, to conduct reverse-engineering teardowns of the accused Lumicore products. Benchmark delivered its initial teardown report on December 12, 2022, confirming the presence of specific structures and functionalities in the LumiLink 400G-ZR+ module that correspond to the claimed inventions of the asserted patents. Subsequent teardown analyses of the LumiLink 800G-DR8 and LumiEdge 1600G-LR modules were completed in 2023. Tanaka Decl. ¶ 25.

OWS engaged Calderwood & Harkness LLP as litigation counsel on March 18, 2024, and filed the Complaint in this action on April 22, 2024. Tanaka Decl. ¶ 26.

D. Procedural History

The procedural history of this action is straightforward and is relevant to Lumicore's Motion insofar as it demonstrates that this case has been proceeding efficiently in this forum.

OWS filed its Complaint on April 22, 2024 (D.E. 1), asserting claims for infringement of the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent under 35 U.S.C. §§ 271(a), (b), and (c). Summons was issued on April 25, 2024 (D.E. 5), and service was completed on Lumicore's registered agent, National Agent Services Corp., at 850 New Burton Road, Suite 201, Dover, Delaware 19904, on May 1, 2024 (D.E. 6).

On May 15, 2024, Lumicore filed an Unopposed Motion for Extension of Time to Answer or Otherwise Respond to the Complaint, seeking an additional 21 days (D.E. 7). The Court granted the motion on May 20, 2024 (D.E. 8), extending Lumicore's response deadline to June 17, 2024.

On June 17, 2024, Lumicore filed its Answer, Affirmative Defenses, and Counterclaims (D.E. 12), asserting affirmative defenses of non-infringement, invalidity, and unenforceability, and counterclaims for declaratory judgment of non-infringement and invalidity of each of the four asserted patents. Simultaneously, Lumicore filed the instant Motion to Transfer Venue (D.E. 13), seeking transfer of this action to the Western District of Texas, Austin Division, pursuant to 28 U.S.C. § 1404(a).

Lumicore's Motion to Transfer rests almost entirely on the assertion that Lumicore's corporate headquarters is located in Austin, Texas, and that the Western District of Texas, Austin Division, would therefore be a more convenient forum. As demonstrated below, this single fact is insufficient to carry Lumicore's heavy burden.

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 discretion is not unbounded. The movant bears the burden of establishing that transfer is warranted, and that burden is a demanding one.

The Fifth Circuit has held that the party seeking transfer under § 1404(a) must demonstrate that the proposed transferee venue is "clearly more convenient" than the venue in which the case was filed. In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc) ("Volkswagen II"); see also In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) ("Volkswagen I"). This "clearly more convenient" standard represents a significant threshold. As the Fifth Circuit has explained, the plaintiff's choice of forum is "not an independent factor" in the transfer analysis, but it is reflected in the movant's burden: because the plaintiff chose the original forum, the defendant must show that the balance of factors warrants disturbing that choice. Volkswagen II, 545 F.3d at 314–15.

The movant must demonstrate that a transfer is warranted by a preponderance of the evidence, taking into account the totality of circumstances. Id. at 315. Mere allegations that the transferee forum is more convenient to the defendant are insufficient. Id. The analysis is holistic, and no single factor is dispositive. Courts must resist the temptation to equate the convenience of the defendant's home forum with "clear" convenience under the statute. See In re Nintendo Co., Ltd., 589 F.3d 1194, 1200 (Fed. Cir. 2009) (cautioning against reflexive transfer to the defendant's home district); In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).

The Supreme Court has emphasized that § 1404(a) was not intended as a "defendant's venue provision" that allows the defendant to shift inconvenience from itself to the plaintiff. Van Dusen v. Barrack, 376 U.S. 612, 645–46 (1964). Rather, the statute authorizes transfer "only upon a showing that the balance of conveniences and the interest of justice" favor the proposed transferee forum. Id.

B. The *In re Volkswagen* Private and Public Interest Factors

The Fifth Circuit has identified eight factors — divided into private interest factors and public interest factors — that courts must evaluate when ruling on a motion to transfer under § 1404(a). Volkswagen II, 545 F.3d at 315; Volkswagen I, 371 F.3d at 203.

The private interest factors are:

(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.

The public interest factors are:

(1) the administrative difficulties flowing from court congestion;

(2) the local interest in having localized controversies 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 or the application of foreign law.

Volkswagen II, 545 F.3d at 315 (citing Volkswagen I, 371 F.3d at 203). The court must weigh each of these factors, and no single factor is dispositive. The court's ultimate inquiry is whether the totality of the factors, considered together, demonstrates that the transferee forum is "clearly more convenient." Id.

The Federal Circuit, which reviews transfer orders in patent cases via mandamus, has applied the same framework and has emphasized that the district court's analysis must be supported by record evidence, not mere allegations or unsupported assertions by the movant. See In re Camberwell & Co., 979 F.3d 1332, 1339–40 (Fed. Cir. 2020); In re Camberwell Corporation, 14 F.4th 1313, 1319 (Fed. Cir. 2021).

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 of business." See TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 262 (2017); In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017). Both prongs of § 1400(b) are satisfied here.

Acts of Infringement Within the District. Lumicore has committed acts of infringement within the Eastern District of Texas by selling, offering to sell, and facilitating the use of the accused LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules to at least three customers with facilities in this District — Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX, transferred to Tyler Division). Complaint ¶¶ 10–12 (D.E. 1); Tanaka Decl. ¶¶ 14–17; Callahan Decl. ¶¶ 9–11. These are not isolated or de minimis transactions; they represent ongoing commercial relationships in which Lumicore's accused products have been deployed in active data-center environments within this District. The accused products are currently in use within the District, generating revenue for Lumicore and performing the very functions claimed in the asserted patents.

Regular and Established Place of Business. Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, within the Tyler Division of the Eastern District of Texas. This office satisfies the three requirements identified by the Federal Circuit in In re Cray Inc., 871 F.3d at 1362: (1) there must be a physical place in the district — Lumicore's Tyler office is a physical, leased office suite, not a virtual office or mail drop; (2) it must be a regular and established place of business — the Tyler office has been operating continuously, is staffed by at least seven full-time employees, and serves as a regional hub for Lumicore's sales and technical support operations; and (3) it must be the place of the defendant — the office is operated by Lumicore, listed on Lumicore's corporate website, and staffed by Lumicore employees who hold themselves out as working from the Tyler location. Callahan Decl. ¶¶ 4–8.

Lumicore does not contest that venue is proper in the Eastern District of Texas. Nowhere in its Motion to Transfer does Lumicore argue that this action could not have been brought in this District or that the requirements of § 1400(b) are not satisfied. Rather, Lumicore's Motion is predicated solely on the contention that the Western District of Texas, Austin Division, would be more convenient. That is a fundamentally different argument, and it carries a fundamentally heavier burden. Lumicore must show not merely that Austin would be a suitable alternative forum, but that it would be clearly more convenient — a showing it has failed to make.

B. The Private Interest Factors Do Not Favor Transfer

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 electronic discovery, courts have recognized that this factor carries diminished weight when, as here, the relevant documentary evidence is primarily electronic and can be accessed from any location. See In re Camberwell & Co., 979 F.3d at 1340 (recognizing that "the location of evidence is entitled to less weight in the context of electronically stored documents").

The documentary evidence in this case — including design files, engineering specifications, financial records, marketing materials, internal communications, licensing correspondence, and sales data — is stored electronically by both parties and can be accessed from any location with an internet connection. Neither party maintains physical archives of paper documents that would be difficult or costly to transport.

OWS's documents are located at its headquarters in Santa Clara, California, and at the offices of its counsel, Calderwood & Harkness LLP, in Los Angeles and Washington, D.C. These locations are equidistant from Tyler and Austin; transfer to the Western District of Texas would not bring OWS's documents any closer to the courthouse.

Lumicore's documents are predominantly electronic and stored on network servers and cloud-based platforms accessible from any of Lumicore's offices, including its Tyler office. While Lumicore may maintain certain physical documents at its Austin headquarters, Lumicore has not identified any specific category of evidence that is located only in Austin and that could not be readily accessed electronically or transported to Tyler. The mere fact that Lumicore's headquarters is in Austin does not establish that its documents are more accessible from Austin than from Tyler — particularly when Lumicore's own Tyler office presumably maintains access to the same electronic document repositories.

Benchmark Semiconductor Analysis, LLC, the firm retained by OWS to conduct reverse-engineering teardowns of the accused products, is located in Santa Clara, California. Benchmark's teardown reports, supporting photographs, and technical analyses are central to the infringement analysis in this case. Benchmark's offices are no closer to Austin than to Tyler, and the relevant teardown reports are stored electronically. Tanaka Decl. ¶ 25.

Moreover, to the extent that any physical evidence is relevant — including the accused transceiver modules themselves, physical teardown samples, and prototype devices — these items are compact, easily transportable, and are not uniquely situated in Austin. The accused products are commercially available and have been sold to customers throughout the United States, including within this District.

If anything, this factor slightly favors the Eastern District. Relevant evidence regarding the accused products' sales within this District — including purchase orders, invoices, shipping records, and customer communications — may be maintained at Lumicore's Tyler office, which serves as the regional sales hub for the East Texas territory. Callahan Decl. ¶ 12.

Accordingly, this factor is neutral or slightly favors the Eastern District of Texas.

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 regularly transacts business in person, or within the state where the person resides, is employed, or regularly transacts business in person, if the person is a party or a party's officer. Fed. R. Civ. P. 45(c)(1)(A)–(B). The court must identify specific third-party witnesses and evaluate whether the subpoena power of each proposed forum extends to those witnesses.

The key third-party witnesses who may require compulsory process in this case include:

(a) Angela Reeves, Managing Director of FairPoint Licensing Group, LLC. Ms. Reeves was the primary point of contact for OWS's pre-suit licensing outreach to Lumicore and may be called to testify regarding the licensing correspondence, in-person meetings, and Lumicore's response. FairPoint is headquartered in San Francisco, California. Ms. Reeves resides and works in the San Francisco Bay Area. She is outside the subpoena range of both the Eastern District of Texas and the Western District of Texas.

(b) Kevin Ng, Senior Engineer at Benchmark Semiconductor Analysis, LLC. Mr. Ng led the reverse-engineering teardowns of the accused Lumicore products and may be called to testify regarding the methodology and findings of those teardowns. Benchmark is headquartered in Santa Clara, California. Mr. Ng resides and works in the San Jose metropolitan area. He is outside the subpoena range of both districts.

(c) Melissa Chen, a former Lumicore engineer who was involved in the development of certain aspects of the accused LumiLink 400G-ZR+ transceiver module. Ms. Chen left Lumicore in 2022 and is now employed by Veridian Photonics, Inc. in Sunnyvale, California. Ms. Chen may possess relevant knowledge regarding the design and development of the accused products. She is outside the subpoena range of both districts.

(d) Gregory Falk, an independent consultant who was formerly employed by Solara Optics, Inc., the original assignee of the '562 Patent. Mr. Falk may possess relevant knowledge regarding the development of the thermal management technology claimed in the '562 Patent and the circumstances of the asset transfer from Solara to OWS. Mr. Falk's current residence is believed to be in the San Diego, California metropolitan area. He is outside the subpoena range of both districts.

The critical point is this: none of the identified third-party witnesses reside within the subpoena range of the Western District of Texas, Austin Division. Transfer to Austin would not improve the Court's ability to compel the attendance of any identified third-party witness. Every third-party witness identified to date resides in California, outside the subpoena power of both forums.

Lumicore's Motion identifies no third-party witness who is within the subpoena range of the Western District of Texas but outside the subpoena range of the Eastern District of Texas. Lumicore's bare assertion that the Western District would offer better access to third-party witnesses is unsupported by any evidence. The burden is on Lumicore to identify specific witnesses and demonstrate that compulsory process would be more readily available in the transferee forum. See In re HP Inc., 826 F. App'x 899, 903 (Fed. Cir. 2020) (finding this factor neutral where the movant failed to identify third-party witnesses within the transferee district's subpoena power). Lumicore has not done so.

Accordingly, this factor is neutral and does not support transfer.

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 whether the transferee forum would be substantially more convenient for those witnesses. The court should give "considerably more weight" to the convenience of non-party witnesses. Volkswagen I, 371 F.3d at 204–05. However, the analysis must consider the witnesses for both sides, not just the defendant's witnesses. See In re Camberwell & Co., 979 F.3d at 1342.

OWS's Party Witnesses. OWS's key party witnesses are based at OWS's headquarters in Santa Clara, California. These witnesses include:

• Dr. Jian-Wei Huang, Chief Technology Officer, who oversaw the development of the inventions claimed in the '847 Patent, '193 Patent, and '015 Patent and is expected to testify regarding the technical scope and commercial significance of the asserted patents.

• Dr. Nikolai Petrov, Vice President of Engineering, a named inventor on the '847 Patent who is expected to testify regarding the design and operation of OWS's patented silicon photonics technologies.

• Rebecca Tanaka, General Counsel, who oversaw the pre-suit licensing outreach to Lumicore and is expected to testify regarding the willfulness of Lumicore's infringement.

• Dr. Priya Ramaswamy, Chief Executive Officer, who is expected to testify regarding OWS's business operations, competitive injury, and the commercial impact of Lumicore's infringement.

• David Leitner, Chief Financial Officer, who is expected to testify regarding OWS's damages, including lost profits and the financial impact of Lumicore's infringement on OWS's business.

All of OWS's key party witnesses are located in Santa Clara, California. They will travel approximately the same distance to either Tyler, Texas, or Austin, Texas. The incremental difference in travel time between a flight from the San Francisco Bay Area to Tyler (via Dallas/Fort Worth) and a flight from the San Francisco Bay Area to Austin is negligible — both routes require connecting flights and approximately four to five hours of total travel time. Transfer to Austin would not reduce the cost of attendance for any OWS witness by any meaningful margin.

Lumicore's Party Witnesses. Lumicore's key party witnesses are based at Lumicore's Austin, Texas headquarters. These witnesses include:

• Thomas Kessler, Chief Executive Officer

• Dr. Sandra Michaud, Chief Technology Officer

• Raymond Bautista, General Counsel

• Dr. Eric Dalmqvist, Vice President of Product Development

• Janet Moreno, Chief Financial Officer

OWS acknowledges that Lumicore's Austin-based witnesses would incur some additional travel cost to attend trial in Tyler rather than Austin. However, this incremental cost is modest. Tyler is approximately 230 miles from Austin — roughly 3.5 hours by car and accessible via commercial flights connecting through Dallas/Fort Worth International Airport. The Eastern District of Texas is not a remote or inaccessible forum; it is a federal district court located in a metropolitan area of over 230,000 people with modern transportation infrastructure. The incremental inconvenience to Lumicore's witnesses of traveling to Tyler rather than Austin does not approach the threshold of "clearly more convenient" that Lumicore must satisfy.

Moreover, the Fifth Circuit has cautioned against giving undue weight to the convenience of party witnesses who are employees of the defendant and therefore subject to the defendant's control. See Volkswagen II, 545 F.3d at 317 (noting that party witnesses can be compelled to attend trial by their employer regardless of the forum). Lumicore's executives and employees will testify in whatever forum this case is tried; their convenience is relevant but not determinative.

Expert Witnesses. Both parties are expected to retain expert witnesses in various disciplines, including technical experts on infringement and invalidity, as well as damages experts. The following expert witnesses have been identified or are anticipated:

• Dr. Caroline Ashford, Professor of Electrical Engineering at the Northfield Institute of Technology, Evanston, Illinois — anticipated infringement/invalidity expert for OWS.

• Dr. Lawrence Keating, Managing Director at Meridian Economic Consulting Group, LLC, Chicago, Illinois — anticipated damages expert for OWS.

• Gregory Falk, independent consultant, San Diego, California — anticipated technical witness regarding the '562 Patent and the Solara Optics acquisition.

• Dr. Rajesh Sundaram, Professor of Photonics at Pacific Western University, San Diego, California — anticipated infringement/invalidity expert for OWS.

• Dr. Natasha Volkov, Partner at Pinnacle Analytics Partners LLP, Houston, Texas — anticipated damages expert for OWS.

None of these expert witnesses are based in Austin. Dr. Ashford and Dr. Keating are based in the Chicago metropolitan area, equidistant from both forums. Mr. Falk and Dr. Sundaram are based in Southern California. Notably, Dr. Volkov, who is located in Houston, is closer to Tyler (approximately 200 miles) than to Austin (approximately 165 miles), though the difference is marginal. None of these witnesses would find Austin "clearly more convenient" than Tyler.

Lumicore has not yet identified its own expert witnesses, nor has it provided any information in its Motion about the locations of its anticipated experts. Lumicore therefore cannot establish that its experts would find Austin more convenient than Tyler.

The 100-mile rule under Federal Rule of Civil Procedure 45(c)(1)(A) does not capture any key willing witness in either district who would not also be available in the other. The willing witnesses identified by both parties are either party employees (who can be compelled to attend by their employers) or reside outside Texas entirely.

At most, this factor slightly favors transfer based on the marginal additional convenience to Lumicore's Austin-based party witnesses. But when the cost of attendance for all willing witnesses is considered — including OWS's California-based witnesses, the identified experts, and third-party witnesses in California and Illinois — the marginal advantage to Lumicore is vastly insufficient to constitute the "clearly more convenient" showing required by Volkswagen II. A slight tilt toward one party's convenience does not overcome the substantial threshold for transfer. See In re Camberwell & Co., 979 F.3d at 1342 ("[T]hat certain witnesses may prefer to testify closer to their homes does not, without more, demonstrate clear convenience.").

Accordingly, this factor is neutral or, at most, only slightly favors transfer, falling far short of the required showing.

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. James "Jim" Callahan, the partner responsible for OWS's representation in this District, has extensive experience practicing before this Court and before Judge Gilstrap in particular. Callahan Decl. ¶¶ 2–3. Mr. Callahan's familiarity with this Court's procedures, local rules, and preferences is a significant practical advantage for the efficient management of this case. Transfer to the Western District of Texas would require OWS to either retain new local counsel in the Austin Division or ask Mr. Callahan to travel to Austin for all court appearances, imposing additional costs and logistical burdens. Callahan Decl. ¶ 14.

Even more telling, Lumicore's own local counsel — Trask Eddington LLP (Maria Garza) — is also based in Tyler, Texas, at 425 East Front Street, Suite 300, Tyler, Texas 75701. If the Eastern District of Texas were truly as inconvenient as Lumicore claims, one would expect Lumicore to have retained Austin-based local counsel. Lumicore's deliberate choice to retain Tyler-based local counsel fatally undermines its assertion that Tyler is an inconvenient forum. See In re Nintendo Co., Ltd., 589 F.3d at 1200 (Federal Circuit noting the significance of the defendant's selection of local counsel in the transfer analysis); Invitrogen Corp. v. Gen. Elec. Co., No. 2:08-CV-326, 2009 WL 331889, at *4 (E.D. Tex. Feb. 10, 2009) (finding that the defendant's retention of local counsel in the Eastern District of Texas weighed against transfer).

Lead Counsel. The lead trial counsel for both sides are national law firms with offices across the country. Calderwood & Harkness LLP maintains its principal offices in Los Angeles and Washington, D.C. Hawthorne Vega & Cruz LLP is headquartered in Austin, Texas. Neither firm's principal office location is dispositive. National law firms regularly practice in courts across the country, and the location of counsel's principal office does not meaningfully affect the convenience of trial. The fact that Hawthorne Vega & Cruz is based in Austin does not weigh in favor of transfer — just as the fact that Calderwood & Harkness is based in Los Angeles does not weigh in favor of transferring the case to the Central District of California.

Protective Order and Case-Management Considerations. The parties have been engaged in negotiations regarding a three-tier Protective Order to govern the handling of confidential information in this case. The anticipated tiers include: (i) Confidential; (ii) Highly Confidential — Attorneys' Eyes Only; and (iii) Highly Confidential — Source Code. These negotiations have been conducted in the context of this Court's standing orders and established procedures for handling protective orders in patent cases. While the Protective Order has not yet been entered, the parties' negotiations have been shaped by the procedures of this Court. Transferring this case to a new forum would require the parties to revisit and potentially renegotiate the Protective Order in light of the transferee court's different procedures and preferences, resulting in additional cost and delay.

More broadly, the Eastern District of Texas has well-established procedures for the management of patent cases, including standard scheduling orders, claim construction procedures, and local patent rules that are familiar to both parties' counsel. Any transfer would disrupt the established course of this litigation and impose transition costs on both parties.

Accordingly, this factor weighs against transfer.

C. The Public Interest Factors Do Not Favor Transfer

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 particular, is widely recognized as having one of the most efficient and experienced patent dockets in the federal judiciary. Judge Gilstrap has presided over hundreds of patent cases and has developed sophisticated procedures for managing patent litigation, including streamlined claim construction (Markman) proceedings, rigorous pretrial scheduling, and efficient jury trial management. The Court's local patent rules and standing orders facilitate the orderly progression of patent cases from filing through trial, and the Court's median time to trial in patent cases is among the most predictable in the country.

Lumicore has presented no evidence that the Western District of Texas, Austin Division, would resolve this matter more quickly or more efficiently. Lumicore's Motion does not cite any comparative caseload statistics, median time-to-trial data, or other evidence suggesting that the Austin Division is less congested or more efficient than the Eastern District of Texas for patent cases. The absence of such evidence is itself telling. The Western District of Texas, while a perfectly capable forum, does not have the same depth of specialized experience with patent litigation that the Eastern District has developed over the past two decades.

This factor is neutral or slightly favors the Eastern District of Texas.

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 relate to activity occurring within its borders is a significant consideration." Volkswagen II, 545 F.3d at 317–18. The relevant inquiry is whether there is a "significant connection between a particular locale and the events giving rise to the suit." In re Camberwell & Co., 979 F.3d at 1344.

Here, the Eastern District of Texas has a direct and substantial connection to the events giving rise to this suit. Lumicore operates a sales and technical support office in Tyler, Texas, from which it directs commercial activity toward data-center customers throughout the Eastern District. Lumicore has sold the accused products to at least three customers with facilities in this District: Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX, transferred to Tyler Division). The accused transceiver modules are currently installed and in active use in data centers within the communities of the Eastern District of Texas. The citizens of this District have a direct and legitimate interest in the adjudication of a patent dispute involving products that are sold and used within their communities, by a company that maintains a physical office in their midst.

Lumicore argues that Austin has a strong local interest because Lumicore is headquartered there. OWS does not deny that Austin has some local interest in a dispute involving a company headquartered in its community. But the question is not whether Austin has any local interest — it is whether the local interest of the Western District of Texas, Austin Division, is so substantially greater than the local interest of the Eastern District as to weigh clearly in favor of transfer. It is not.

This is not a case where the Eastern District of Texas has no connection to the underlying dispute. Lumicore's Tyler office, its sales to Eastern District customers, and the use of accused products within this District all establish a meaningful nexus between this forum and the events giving rise to the suit. The jurors of the Eastern District of Texas have a legitimate stake in this controversy.

Moreover, as the Fifth Circuit has recognized, the local interest factor is not simply a proxy for the defendant's headquarters location. If it were, every case against a corporate defendant could be transferred to the defendant's home district, and the venue statute would be effectively rewritten. See Volkswagen II, 545 F.3d at 318.

Accordingly, this factor is neutral or slightly favors the Eastern District of Texas.

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 District of Texas are Article III federal district courts fully competent to apply federal patent law. Neither forum has an advantage over the other in this regard.

That said, it bears noting that the Eastern District of Texas has particularly deep experience in the adjudication of patent cases. Judges in this District, including Judge Gilstrap, have developed extensive expertise in claim construction, infringement analysis, validity challenges, and damages calculations under 35 U.S.C. §§ 283–285. This experience, while not a factor that definitively favors one forum over another under the Volkswagen framework, reinforces that there is no basis for concluding that the Western District of Texas would offer a more familiar or capable forum for the resolution of this dispute.

This factor is neutral.

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 patent law applies regardless of whether this case is tried in the Eastern District of Texas or the Western District of Texas.

This factor is neutral and provides no support for transfer.

D. Lumicore Has Not Met Its Heavy Burden

When all eight Volkswagen II factors are weighed together, the conclusion is clear: Lumicore has not demonstrated by a preponderance of the evidence that the Western District of Texas, Austin Division, is "clearly more convenient" than the Eastern District of Texas.

Lumicore's motion rests primarily — indeed, almost exclusively — on the single fact that its corporate headquarters is located in Austin. While the location of a defendant's headquarters is relevant to the transfer analysis, it is far from dispositive. The Supreme Court and the Fifth Circuit have repeatedly emphasized that § 1404(a) is not a mechanism for defendants to shift inconvenience from themselves to plaintiffs. See Van Dusen, 376 U.S. at 645–46; Volkswagen II, 545 F.3d at 315. The convenience of the defendant's headquarters alone does not establish that the transferee forum is "clearly more convenient" when, as here, the transferor forum has substantial independent connections to the dispute.

A factor-by-factor review confirms the point:

• Ease of access to sources of proof: Neutral or slightly favoring the Eastern District. Documentary evidence is electronic and accessible from any location. Relevant sales records exist at Lumicore's Tyler office.

• Availability of compulsory process: Neutral. No identified third-party witness is within the subpoena range of the Western District but outside the subpoena range of the Eastern District.

• Cost of attendance for willing witnesses: At most, slightly favors transfer due to the marginal additional convenience for Lumicore's Austin-based party witnesses. This slight advantage is fully offset by the equivalent inconvenience to OWS's California-based witnesses, the presence of both parties' local counsel in Tyler, and the location of key experts and third-party witnesses in California and Illinois.

• Other practical problems: Weighs against transfer. Both parties' local counsel are based in Tyler. Transfer would impose additional costs on OWS to retain new local counsel and would disrupt ongoing protective order negotiations.

• Court congestion: Neutral or slightly favoring the Eastern District, given Judge Gilstrap's well-known efficiency and expertise in patent cases.

• Local interest: Neutral or slightly favoring the Eastern District. Lumicore maintains a physical office in Tyler, has sold accused products to Eastern District customers, and the accused products are in active use within this District.

• Familiarity with governing law: Neutral. Both courts apply the same federal patent law.

• Conflict of laws: Neutral. No conflict-of-laws issues exist.

No private interest factor clearly favors transfer. The only factor that even marginally favors Lumicore — the cost of attendance for its Austin-based willing witnesses — is insufficient standing alone, and is offset by countervailing considerations. The public interest factors either favor the Eastern District or are neutral. Under the totality of the circumstances, Lumicore has failed to overcome the "clearly more convenient" threshold.

Lumicore's physical presence in Tyler, its substantial commercial activity directed at Eastern District customers, the presence of both parties' local counsel in Tyler, and the established efficiency and expertise of this Court's patent docket all weigh against transfer. This is precisely the type of case in which the plaintiff's choice of a proper forum should be respected.

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 to: (a) Lumicore's physical presence at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, including evidence that the office is staffed by at least seven full-time Lumicore employees; (b) Lumicore's commercial activity within the Eastern District of Texas, including sales of accused products to Pinnacle Data Systems, LLC, Frontier Cloud Services, Inc., and CrossPoint Networking Corp.; (c) the Tyler office's role as a regional hub for Lumicore's sales and technical support operations directed at East Texas customers; and (d) Mr. Callahan's extensive familiarity with patent practice before this Court, including the Court's local patent rules, standing orders, and case-management procedures.

Declaration of Rebecca Tanaka in Support of Plaintiff's Opposition to Defendant's Motion to Transfer Venue (D.E. [__]). Ms. Tanaka is the General Counsel of OWS. Her declaration attests to: (a) OWS's contacts with Eastern District customers, including OWS's own sales relationships with Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking; (b) Lumicore's competitive sales activity directed at these same customers within the Eastern District, including the sale of accused products that compete directly with OWS's products; (c) the pre-suit licensing outreach conducted by FairPoint Licensing Group, LLC on OWS's behalf, including the January 15, 2023 and May 15, 2023 licensing letters and the in-person licensing meeting in Austin on April 20, 2023; (d) Lumicore's July 10, 2023 refusal to take a license; and (e) the factual basis for OWS's assertion that the accused products embody the inventions claimed in the asserted patents.

These declarations provide the evidentiary foundation for OWS's factual assertions in this Opposition and further demonstrate that Lumicore has failed to carry its burden of establishing that the Western District of Texas is "clearly more convenient."

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 business, where acts of infringement have occurred, and where the convenience of the parties and witnesses and the interests of justice are best served. Lumicore has failed to demonstrate by a preponderance of the evidence that the Western District of Texas is "clearly more convenient" under the standard established by the Fifth Circuit in In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc). The balance of the private and public interest factors either favors the Eastern District or is neutral, and no factor clearly favors transfer. Lumicore's Motion is an impermissible attempt to shift the inconvenience of litigation from the Defendant to the Plaintiff, and it should be denied.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. 287456; admitted pro hac vice E.D. Tex.) Responsible Partner, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 683-5200 Facsimile: (213) 683-5201

Email: alan.ngo@calderwoodharkness.com

Marcus Delgado (TX Bar No. 24078932) Billing Partner, IP Litigation 1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 408-6100

Email: marcus.delgado@calderwoodharkness.com

Wendy Schultz (CA Bar No. 312789; admitted pro hac vice E.D. Tex.) Lead Associate, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 683-5200

Email: wendy.schultz@calderwoodharkness.com

Omar Siddiqui (CA Bar No. 319642; admitted pro hac vice E.D. Tex.) Working Associate, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 683-5200

Email: omar.siddiqui@calderwoodharkness.com

Of Counsel:

WHITMORE & CALLAHAN LLP

James "Jim" Callahan (TX Bar No. 03854210) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 597-6300 Facsimile: (903) 597-6301

Email: jcallahan@whitmorecallahan.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on July 8, 2024, a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s Opposition to Defendant's Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a), together with all accompanying declarations, was served via the Court's CM/ECF electronic filing system on all counsel of record, including the following:

Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701

________________________________________

Alan Ngo

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant.
Case No. 2:24-cv-00319-JRG
Hon. James R. Gilstrap
JURY TRIAL DEMANDED
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S OPPOSITION TO DEFENDANT'S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
D.E. 18 Filed: July 8, 2024
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 action on April 22, 2024 (D.E. 1), asserting four United States utility patents against Lumicore's commercially significant transceiver module product lines. Specifically, OWS alleges that Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules infringe U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent"). These patents cover foundational innovations in silicon photonics — the very technology that powers Lumicore's accused products. The Complaint seeks approximately $210 million in damages for lost profits, reasonable royalties, and enhanced damages for willful infringement, as well as a permanent injunction barring Lumicore from continuing to make, use, sell, offer to sell, and import the accused products in the United States.
Lumicore's Motion to Transfer is a transparent attempt to relocate this action to a forum that would be more convenient for its corporate executives in Austin. But convenience for the moving party is not the test. Under the well-established standard set forth by the Fifth Circuit in In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc) ("Volkswagen II"), Lumicore bears the heavy burden of demonstrating that the proposed transferee forum — the Western District of Texas, Austin Division — is clearly more convenient than the Eastern District of Texas. It has failed to carry that burden.
The facts demonstrate that this District has deep and meaningful ties to this dispute. Lumicore maintains a physical, staffed sales and technical support office in Tyler, Texas — Squarely within the Eastern District of Texas. From that office, Lumicore directs sales and support activity toward data-center customers throughout the region. Lumicore has sold the very products accused of infringement — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR modules — to at least three customers with facilities within this District: Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX, transferred to the Tyler Division for case management purposes). These sales establish that acts of infringement — the sale, offer to sell, and use of the accused products — occurred within this District. The citizens of the Eastern District of Texas have a genuine interest in the resolution of this dispute.
When the private and public interest factors identified in Volkswagen II are weighed against the record evidence, no factor clearly favors transfer and several affirmatively weigh against it. The key sources of documentary proof are electronic and equally accessible from either forum. None of the identified third-party witnesses reside in the subpoena range of the Western District of Texas. The incremental convenience to Lumicore's Austin-based party witnesses is marginal — Tyler is approximately 230 miles from Austin — and is fully offset by the equivalent inconvenience that transfer would impose on OWS's California-based witnesses, who travel comparable distances to either forum. Both parties' local counsel are based in Tyler. And this Court's unparalleled experience with patent litigation and its efficient case-management procedures weigh strongly against disrupting the forum Plaintiff selected.
The Motion to Transfer should be denied in its entirety.
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 photonics chipsets for data-center interconnects. Since its founding in 2011, OWS has grown into one of the leading innovators in the silicon photonics industry, employing approximately 1,250 people across its headquarters in Santa Clara and satellite engineering facilities in San Jose, California and Portland, Oregon. For the fiscal year ended December 31, 2023, OWS reported total revenue of $487.3 million and net income of $61.4 million. See Declaration of Rebecca Tanaka in Support of Opposition to Transfer ("Tanaka Decl.") ¶¶ 3–5 (D.E. [__], filed concurrently).
OWS's commercial success has been driven by its substantial investment in research and development, which totaled over $78 million in FY 2023 alone. OWS's intellectual property portfolio reflects this investment: OWS holds 142 issued United States patents and 58 pending patent applications directed to silicon photonics technologies, including optical waveguide designs, coherent transceiver architectures, thermal management solutions, and polarization-diverse grating couplers. Tanaka Decl. ¶ 6. These patents represent the core technological innovations that differentiate OWS's products from those of its competitors and form the basis of the claims asserted in this action.
OWS's majority owner is Ridgeline Capital Partners, LP ("Ridgeline"), a private equity firm that acquired a 55% ownership stake in OWS in 2019 through a transaction valued at approximately $780 million. Ridgeline's investment reflected the substantial value of OWS's intellectual property portfolio and the commercial potential of its silicon photonics platform. The remaining equity is held by OWS's founders, management, and early-stage venture investors. Tanaka Decl. ¶ 7.
Lumicore Technologies, Inc. Lumicore is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Complaint ¶ 2 (D.E. 1); Answer ¶ 2 (D.E. 12). Founded in 2015, Lumicore is a fast-growing entrant in the silicon-photonics transceiver market, targeting hyperscale data center and telecommunications customers with a portfolio of high-bandwidth optical transceiver modules. Lumicore employs approximately 870 people and generated estimated revenue of $312.6 million for the fiscal year ended December 31, 2023. Lumicore conducted its initial public offering on the Nasdaq Stock Market in March 2022, pricing its shares at $24.00 per share. As of the filing of this action, Lumicore's share price was approximately $37.00 per share, yielding a market capitalization of approximately $3.4 billion based on approximately 91.8 million shares outstanding. Tanaka Decl. ¶¶ 8–10.
While Lumicore's corporate headquarters is in Austin, Lumicore is by no means an Austin-only company. As set forth in detail below, Lumicore maintains a physical office in Tyler, Texas, within the Eastern District of Texas, and conducts substantial commercial activity directed at customers throughout this District. Lumicore also maintains offices in San Jose, California; Shenzhen, China; and Yokohama, Japan. Tanaka Decl. ¶ 11.
B. Lumicore's Presence in the Eastern District of Texas
Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. Declaration of James "Jim" Callahan in Support of Opposition to Transfer ("Callahan Decl.") ¶¶ 4–7 (D.E. [__], filed concurrently). This office is located squarely within the Tyler Division of the Eastern District of Texas. It is not a nominal or "paper" presence; it is a physical, staffed office that serves as a regional hub for Lumicore's sales and technical support activities directed at data-center customers throughout East Texas and the broader Southwest region.
Publicly available information, including Lumicore's own corporate website and Westmark Health IT postings, confirms that the Tyler office employs at least seven full-time employees, including three regional sales managers and four technical support engineers. Callahan Decl. ¶¶ 5–6. These employees are responsible for cultivating customer relationships, providing pre-sale and post-sale technical support, coordinating product demonstrations and on-site installations, and resolving technical issues with deployed transceiver modules. The Tyler office is listed on Lumicore's corporate website under its "Office Locations" page with a full street address and telephone number, and Lumicore employees at the Tyler office identify their location as "Tyler, Texas" in their professional profiles. Callahan Decl. ¶ 7.
The Tyler office is not incidental to this litigation — it is directly relevant to the claims at issue. Lumicore has sold the accused products — specifically the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules — to at least three customers with facilities located within the Eastern District of Texas:
(a) Pinnacle Data Systems, LLC, located at 1800 Judson Road, Longview, Texas 75601. Pinnacle operates a Tier III data center facility in Longview, within the marshall Division of the Eastern District of Texas, and has purchased LumiLink 400G-ZR+ and LumiLink 800G-DR8 modules from Lumicore for deployment in its optical interconnect infrastructure. Tanaka Decl. ¶ 14; Callahan Decl. ¶ 9.
(b) Frontier Cloud Services, Inc., located at 400 East Houston Street, marshall, Texas 75670. Frontier operates cloud computing and managed hosting services from its marshall, Texas facility, located within the marshall Division of the Eastern District of Texas. Frontier has purchased LumiEdge 1600G-LR modules from Lumicore for use in its inter-facility network backbone. Tanaka Decl. ¶ 15; Callahan Decl. ¶ 10.
(c) CrossPoint Networking Corp., located at 7500 Dallas Parkway, Suite 200, Plano, Texas 75024. CrossPoint is a network infrastructure provider that has purchased LumiLink 400G-ZR+ modules from Lumicore for deployment in data-center facilities servicing North Texas and East Texas customers. Although CrossPoint's Plano office falls within the Sherman Division, CrossPoint's purchase activity has been managed through Lumicore's Tyler office, and this matter has been transferred to the Tyler Division for case management purposes. Tanaka Decl. ¶ 16; Callahan Decl. ¶ 11.
These sales of accused products to customers within the Eastern District of Texas establish that acts of infringement — including the sale, offer to sell, and use of the accused transceiver modules — have occurred within this District. The accused products are not merely passing through; they have been sold, installed, and are currently in active commercial use within the communities of this District. Tanaka Decl. ¶ 17.
C. The Asserted Patents and Pre-Suit History
OWS asserts four United States utility patents in this action, each of which covers a distinct but related aspect of silicon photonics technology embodied in Lumicore's accused transceiver modules:
(a) U.S. Patent No. 10,234,847 (the "'847 Patent") — entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer," filed on September 14, 2016 and issued on March 19, 2019. The '847 Patent claims a novel architecture for wavelength-division multiplexing in silicon photonic waveguides that enables high-density, multi-channel optical signal routing with reduced crosstalk and insertion loss. The '847 Patent was prosecuted by OWS's in-house patent counsel and lists Dr. Jian-Wei Huang and Dr. Nikolai Petrov as co-inventors. Complaint ¶¶ 18–25 (D.E. 1).
(b) U.S. Patent No. 10,891,193 (the "'193 Patent") — entitled "High-Bandwidth Coherent Optical Transceiver," filed on April 7, 2017 and issued on January 12, 2021. The '193 Patent claims innovations in coherent optical transceiver design, including novel digital signal processing architectures that enable data transmission at rates exceeding 400 gigabits per second over long-haul and metro-area optical fiber links. Complaint ¶¶ 26–33 (D.E. 1).
(c) U.S. Patent No. 9,678,562 (the "'562 Patent") — entitled "Thermal Management System for Photonic Integrated Circuits," filed on November 22, 2014 and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. ("Solara"), a silicon photonics startup that ceased operations in 2018. OWS acquired all right, title, and interest in the '562 Patent, along with other intellectual property assets of Solara, pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million. The '562 Patent claims methods and apparatus for managing thermal dissipation in densely integrated photonic circuits, a critical challenge in high-bandwidth transceiver modules. Complaint ¶¶ 34–42 (D.E. 1); Tanaka Decl. ¶ 19.
(d) U.S. Patent No. 11,402,015 (the "'015 Patent") — entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Systems," filed on August 30, 2019 and issued on August 2, 2022. The '015 Patent claims innovations in grating coupler design that efficiently couple light from optical fibers into silicon photonic waveguides while accommodating polarization diversity — a key enabler of high-performance transceiver modules. Complaint ¶¶ 43–50 (D.E. 1).
Prior to filing this action, OWS engaged in extensive pre-suit licensing outreach to Lumicore through FairPoint Licensing Group, LLC ("FairPoint"), a licensing advisory firm retained by OWS. On January 15, 2023, FairPoint sent a detailed licensing letter to Lumicore's General Counsel, Raymond Bautista, identifying the '847 Patent, the '193 Patent, and the '562 Patent as being infringed by Lumicore's LumiLink 400G-ZR+ and LumiLink 800G-DR8 product lines, and inviting Lumicore to enter into licensing discussions. Tanaka Decl. ¶ 21; Tanaka Decl. Ex. A (January 15, 2023 Letter).
On April 20, 2023, representatives of FairPoint and OWS met in person with Mr. Bautista and other Lumicore representatives in Austin, Texas to discuss the scope of the asserted patents, the accused products, and the framework for a potential license. The meeting lasted approximately four hours. While Lumicore expressed interest in understanding the technical basis for OWS's infringement contentions, it did not agree to a license or offer a counterproposal. Tanaka Decl. ¶ 22.
On May 15, 2023, FairPoint sent a second licensing letter to Mr. Bautista, supplementing the initial letter by adding the '015 Patent (which had issued in August 2022) and expanding the scope of the accused products to include the LumiEdge 1600G-LR transceiver module, which Lumicore had commercially launched in March 2023. This letter requested a response within sixty days. Tanaka Decl. ¶ 23; Tanaka Decl. Ex. B (May 15, 2023 Letter).
On July 10, 2023, Lumicore, through Mr. Bautista, formally declined to take a license, stating that Lumicore "does not believe that its products infringe any valid claims of the identified patents" and that Lumicore "respectfully declines the invitation to negotiate a license." Tanaka Decl. ¶ 24; Tanaka Decl. Ex. C (July 10, 2023 Letter). No further licensing discussions ensued.
OWS also retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), a technical consulting firm headquartered in Santa Clara, California, to conduct reverse-engineering teardowns of the accused Lumicore products. Benchmark delivered its initial teardown report on December 12, 2022, confirming the presence of specific structures and functionalities in the LumiLink 400G-ZR+ module that correspond to the claimed inventions of the asserted patents. Subsequent teardown analyses of the LumiLink 800G-DR8 and LumiEdge 1600G-LR modules were completed in 2023. Tanaka Decl. ¶ 25.
OWS engaged Calderwood & Harkness LLP as litigation counsel on March 18, 2024, and filed the Complaint in this action on April 22, 2024. Tanaka Decl. ¶ 26.
D. Procedural History
The procedural history of this action is straightforward and is relevant to Lumicore's Motion insofar as it demonstrates that this case has been proceeding efficiently in this forum.
OWS filed its Complaint on April 22, 2024 (D.E. 1), asserting claims for infringement of the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent under 35 U.S.C. §§ 271(a), (b), and (c). Summons was issued on April 25, 2024 (D.E. 5), and service was completed on Lumicore's registered agent, National Agent Services Corp., at 850 New Burton Road, Suite 201, Dover, Delaware 19904, on May 1, 2024 (D.E. 6).
On May 15, 2024, Lumicore filed an Unopposed Motion for Extension of Time to Answer or Otherwise Respond to the Complaint, seeking an additional 21 days (D.E. 7). The Court granted the motion on May 20, 2024 (D.E. 8), extending Lumicore's response deadline to June 17, 2024.
On June 17, 2024, Lumicore filed its Answer, Affirmative Defenses, and Counterclaims (D.E. 12), asserting affirmative defenses of non-infringement, invalidity, and unenforceability, and counterclaims for declaratory judgment of non-infringement and invalidity of each of the four asserted patents. Simultaneously, Lumicore filed the instant Motion to Transfer Venue (D.E. 13), seeking transfer of this action to the Western District of Texas, Austin Division, pursuant to 28 U.S.C. § 1404(a).
Lumicore's Motion to Transfer rests almost entirely on the assertion that Lumicore's corporate headquarters is located in Austin, Texas, and that the Western District of Texas, Austin Division, would therefore be a more convenient forum. As demonstrated below, this single fact is insufficient to carry Lumicore's heavy burden.
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 discretion is not unbounded. The movant bears the burden of establishing that transfer is warranted, and that burden is a demanding one.
The Fifth Circuit has held that the party seeking transfer under § 1404(a) must demonstrate that the proposed transferee venue is "clearly more convenient" than the venue in which the case was filed. In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc) ("Volkswagen II"); see also In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) ("Volkswagen I"). This "clearly more convenient" standard represents a significant threshold. As the Fifth Circuit has explained, the plaintiff's choice of forum is "not an independent factor" in the transfer analysis, but it is reflected in the movant's burden: because the plaintiff chose the original forum, the defendant must show that the balance of factors warrants disturbing that choice. Volkswagen II, 545 F.3d at 314–15.
The movant must demonstrate that a transfer is warranted by a preponderance of the evidence, taking into account the totality of circumstances. Id. at 315. Mere allegations that the transferee forum is more convenient to the defendant are insufficient. Id. The analysis is holistic, and no single factor is dispositive. Courts must resist the temptation to equate the convenience of the defendant's home forum with "clear" convenience under the statute. See In re Nintendo Co., Ltd., 589 F.3d 1194, 1200 (Fed. Cir. 2009) (cautioning against reflexive transfer to the defendant's home district); In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).
The Supreme Court has emphasized that § 1404(a) was not intended as a "defendant's venue provision" that allows the defendant to shift inconvenience from itself to the plaintiff. Van Dusen v. Barrack, 376 U.S. 612, 645–46 (1964). Rather, the statute authorizes transfer "only upon a showing that the balance of conveniences and the interest of justice" favor the proposed transferee forum. Id.
B. The *In re Volkswagen* Private and Public Interest Factors
The Fifth Circuit has identified eight factors — divided into private interest factors and public interest factors — that courts must evaluate when ruling on a motion to transfer under § 1404(a). Volkswagen II, 545 F.3d at 315; Volkswagen I, 371 F.3d at 203.
The private interest factors are:
(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.
The public interest factors are:
(1) the administrative difficulties flowing from court congestion;
(2) the local interest in having localized controversies 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 or the application of foreign law.
Volkswagen II, 545 F.3d at 315 (citing Volkswagen I, 371 F.3d at 203). The court must weigh each of these factors, and no single factor is dispositive. The court's ultimate inquiry is whether the totality of the factors, considered together, demonstrates that the transferee forum is "clearly more convenient." Id.
The Federal Circuit, which reviews transfer orders in patent cases via mandamus, has applied the same framework and has emphasized that the district court's analysis must be supported by record evidence, not mere allegations or unsupported assertions by the movant. See In re Camberwell & Co., 979 F.3d 1332, 1339–40 (Fed. Cir. 2020); In re Camberwell Corporation, 14 F.4th 1313, 1319 (Fed. Cir. 2021).
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 of business." See TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 262 (2017); In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017). Both prongs of § 1400(b) are satisfied here.
Acts of Infringement Within the District. Lumicore has committed acts of infringement within the Eastern District of Texas by selling, offering to sell, and facilitating the use of the accused LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules to at least three customers with facilities in this District — Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX, transferred to Tyler Division). Complaint ¶¶ 10–12 (D.E. 1); Tanaka Decl. ¶¶ 14–17; Callahan Decl. ¶¶ 9–11. These are not isolated or de minimis transactions; they represent ongoing commercial relationships in which Lumicore's accused products have been deployed in active data-center environments within this District. The accused products are currently in use within the District, generating revenue for Lumicore and performing the very functions claimed in the asserted patents.
Regular and Established Place of Business. Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, within the Tyler Division of the Eastern District of Texas. This office satisfies the three requirements identified by the Federal Circuit in In re Cray Inc., 871 F.3d at 1362: (1) there must be a physical place in the district — Lumicore's Tyler office is a physical, leased office suite, not a virtual office or mail drop; (2) it must be a regular and established place of business — the Tyler office has been operating continuously, is staffed by at least seven full-time employees, and serves as a regional hub for Lumicore's sales and technical support operations; and (3) it must be the place of the defendant — the office is operated by Lumicore, listed on Lumicore's corporate website, and staffed by Lumicore employees who hold themselves out as working from the Tyler location. Callahan Decl. ¶¶ 4–8.
Lumicore does not contest that venue is proper in the Eastern District of Texas. Nowhere in its Motion to Transfer does Lumicore argue that this action could not have been brought in this District or that the requirements of § 1400(b) are not satisfied. Rather, Lumicore's Motion is predicated solely on the contention that the Western District of Texas, Austin Division, would be more convenient. That is a fundamentally different argument, and it carries a fundamentally heavier burden. Lumicore must show not merely that Austin would be a suitable alternative forum, but that it would be clearly more convenient — a showing it has failed to make.
B. The Private Interest Factors Do Not Favor Transfer
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 electronic discovery, courts have recognized that this factor carries diminished weight when, as here, the relevant documentary evidence is primarily electronic and can be accessed from any location. See In re Camberwell & Co., 979 F.3d at 1340 (recognizing that "the location of evidence is entitled to less weight in the context of electronically stored documents").
The documentary evidence in this case — including design files, engineering specifications, financial records, marketing materials, internal communications, licensing correspondence, and sales data — is stored electronically by both parties and can be accessed from any location with an internet connection. Neither party maintains physical archives of paper documents that would be difficult or costly to transport.
OWS's documents are located at its headquarters in Santa Clara, California, and at the offices of its counsel, Calderwood & Harkness LLP, in Los Angeles and Washington, D.C. These locations are equidistant from Tyler and Austin; transfer to the Western District of Texas would not bring OWS's documents any closer to the courthouse.
Lumicore's documents are predominantly electronic and stored on network servers and cloud-based platforms accessible from any of Lumicore's offices, including its Tyler office. While Lumicore may maintain certain physical documents at its Austin headquarters, Lumicore has not identified any specific category of evidence that is located only in Austin and that could not be readily accessed electronically or transported to Tyler. The mere fact that Lumicore's headquarters is in Austin does not establish that its documents are more accessible from Austin than from Tyler — particularly when Lumicore's own Tyler office presumably maintains access to the same electronic document repositories.
Benchmark Semiconductor Analysis, LLC, the firm retained by OWS to conduct reverse-engineering teardowns of the accused products, is located in Santa Clara, California. Benchmark's teardown reports, supporting photographs, and technical analyses are central to the infringement analysis in this case. Benchmark's offices are no closer to Austin than to Tyler, and the relevant teardown reports are stored electronically. Tanaka Decl. ¶ 25.
Moreover, to the extent that any physical evidence is relevant — including the accused transceiver modules themselves, physical teardown samples, and prototype devices — these items are compact, easily transportable, and are not uniquely situated in Austin. The accused products are commercially available and have been sold to customers throughout the United States, including within this District.
If anything, this factor slightly favors the Eastern District. Relevant evidence regarding the accused products' sales within this District — including purchase orders, invoices, shipping records, and customer communications — may be maintained at Lumicore's Tyler office, which serves as the regional sales hub for the East Texas territory. Callahan Decl. ¶ 12.
Accordingly, this factor is neutral or slightly favors the Eastern District of Texas.
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 regularly transacts business in person, or within the state where the person resides, is employed, or regularly transacts business in person, if the person is a party or a party's officer. Fed. R. Civ. P. 45(c)(1)(A)–(B). The court must identify specific third-party witnesses and evaluate whether the subpoena power of each proposed forum extends to those witnesses.
The key third-party witnesses who may require compulsory process in this case include:
(a) Angela Reeves, Managing Director of FairPoint Licensing Group, LLC. Ms. Reeves was the primary point of contact for OWS's pre-suit licensing outreach to Lumicore and may be called to testify regarding the licensing correspondence, in-person meetings, and Lumicore's response. FairPoint is headquartered in San Francisco, California. Ms. Reeves resides and works in the San Francisco Bay Area. She is outside the subpoena range of both the Eastern District of Texas and the Western District of Texas.
(b) Kevin Ng, Senior Engineer at Benchmark Semiconductor Analysis, LLC. Mr. Ng led the reverse-engineering teardowns of the accused Lumicore products and may be called to testify regarding the methodology and findings of those teardowns. Benchmark is headquartered in Santa Clara, California. Mr. Ng resides and works in the San Jose metropolitan area. He is outside the subpoena range of both districts.
(c) Melissa Chen, a former Lumicore engineer who was involved in the development of certain aspects of the accused LumiLink 400G-ZR+ transceiver module. Ms. Chen left Lumicore in 2022 and is now employed by Veridian Photonics, Inc. in Sunnyvale, California. Ms. Chen may possess relevant knowledge regarding the design and development of the accused products. She is outside the subpoena range of both districts.
(d) Gregory Falk, an independent consultant who was formerly employed by Solara Optics, Inc., the original assignee of the '562 Patent. Mr. Falk may possess relevant knowledge regarding the development of the thermal management technology claimed in the '562 Patent and the circumstances of the asset transfer from Solara to OWS. Mr. Falk's current residence is believed to be in the San Diego, California metropolitan area. He is outside the subpoena range of both districts.
The critical point is this: none of the identified third-party witnesses reside within the subpoena range of the Western District of Texas, Austin Division. Transfer to Austin would not improve the Court's ability to compel the attendance of any identified third-party witness. Every third-party witness identified to date resides in California, outside the subpoena power of both forums.
Lumicore's Motion identifies no third-party witness who is within the subpoena range of the Western District of Texas but outside the subpoena range of the Eastern District of Texas. Lumicore's bare assertion that the Western District would offer better access to third-party witnesses is unsupported by any evidence. The burden is on Lumicore to identify specific witnesses and demonstrate that compulsory process would be more readily available in the transferee forum. See In re HP Inc., 826 F. App'x 899, 903 (Fed. Cir. 2020) (finding this factor neutral where the movant failed to identify third-party witnesses within the transferee district's subpoena power). Lumicore has not done so.
Accordingly, this factor is neutral and does not support transfer.
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 whether the transferee forum would be substantially more convenient for those witnesses. The court should give "considerably more weight" to the convenience of non-party witnesses. Volkswagen I, 371 F.3d at 204–05. However, the analysis must consider the witnesses for both sides, not just the defendant's witnesses. See In re Camberwell & Co., 979 F.3d at 1342.
OWS's Party Witnesses. OWS's key party witnesses are based at OWS's headquarters in Santa Clara, California. These witnesses include:
• Dr. Jian-Wei Huang, Chief Technology Officer, who oversaw the development of the inventions claimed in the '847 Patent, '193 Patent, and '015 Patent and is expected to testify regarding the technical scope and commercial significance of the asserted patents.
• Dr. Nikolai Petrov, Vice President of Engineering, a named inventor on the '847 Patent who is expected to testify regarding the design and operation of OWS's patented silicon photonics technologies.
• Rebecca Tanaka, General Counsel, who oversaw the pre-suit licensing outreach to Lumicore and is expected to testify regarding the willfulness of Lumicore's infringement.
• Dr. Priya Ramaswamy, Chief Executive Officer, who is expected to testify regarding OWS's business operations, competitive injury, and the commercial impact of Lumicore's infringement.
• David Leitner, Chief Financial Officer, who is expected to testify regarding OWS's damages, including lost profits and the financial impact of Lumicore's infringement on OWS's business.
All of OWS's key party witnesses are located in Santa Clara, California. They will travel approximately the same distance to either Tyler, Texas, or Austin, Texas. The incremental difference in travel time between a flight from the San Francisco Bay Area to Tyler (via Dallas/Fort Worth) and a flight from the San Francisco Bay Area to Austin is negligible — both routes require connecting flights and approximately four to five hours of total travel time. Transfer to Austin would not reduce the cost of attendance for any OWS witness by any meaningful margin.
Lumicore's Party Witnesses. Lumicore's key party witnesses are based at Lumicore's Austin, Texas headquarters. These witnesses include:
• Thomas Kessler, Chief Executive Officer
• Dr. Sandra Michaud, Chief Technology Officer
• Raymond Bautista, General Counsel
• Dr. Eric Dalmqvist, Vice President of Product Development
• Janet Moreno, Chief Financial Officer
OWS acknowledges that Lumicore's Austin-based witnesses would incur some additional travel cost to attend trial in Tyler rather than Austin. However, this incremental cost is modest. Tyler is approximately 230 miles from Austin — roughly 3.5 hours by car and accessible via commercial flights connecting through Dallas/Fort Worth International Airport. The Eastern District of Texas is not a remote or inaccessible forum; it is a federal district court located in a metropolitan area of over 230,000 people with modern transportation infrastructure. The incremental inconvenience to Lumicore's witnesses of traveling to Tyler rather than Austin does not approach the threshold of "clearly more convenient" that Lumicore must satisfy.
Moreover, the Fifth Circuit has cautioned against giving undue weight to the convenience of party witnesses who are employees of the defendant and therefore subject to the defendant's control. See Volkswagen II, 545 F.3d at 317 (noting that party witnesses can be compelled to attend trial by their employer regardless of the forum). Lumicore's executives and employees will testify in whatever forum this case is tried; their convenience is relevant but not determinative.
Expert Witnesses. Both parties are expected to retain expert witnesses in various disciplines, including technical experts on infringement and invalidity, as well as damages experts. The following expert witnesses have been identified or are anticipated:
• Dr. Caroline Ashford, Professor of Electrical Engineering at the Northfield Institute of Technology, Evanston, Illinois — anticipated infringement/invalidity expert for OWS.
• Dr. Lawrence Keating, Managing Director at Meridian Economic Consulting Group, LLC, Chicago, Illinois — anticipated damages expert for OWS.
• Gregory Falk, independent consultant, San Diego, California — anticipated technical witness regarding the '562 Patent and the Solara Optics acquisition.
• Dr. Rajesh Sundaram, Professor of Photonics at Pacific Western University, San Diego, California — anticipated infringement/invalidity expert for OWS.
• Dr. Natasha Volkov, Partner at Pinnacle Analytics Partners LLP, Houston, Texas — anticipated damages expert for OWS.
None of these expert witnesses are based in Austin. Dr. Ashford and Dr. Keating are based in the Chicago metropolitan area, equidistant from both forums. Mr. Falk and Dr. Sundaram are based in Southern California. Notably, Dr. Volkov, who is located in Houston, is closer to Tyler (approximately 200 miles) than to Austin (approximately 165 miles), though the difference is marginal. None of these witnesses would find Austin "clearly more convenient" than Tyler.
Lumicore has not yet identified its own expert witnesses, nor has it provided any information in its Motion about the locations of its anticipated experts. Lumicore therefore cannot establish that its experts would find Austin more convenient than Tyler.
The 100-mile rule under Federal Rule of Civil Procedure 45(c)(1)(A) does not capture any key willing witness in either district who would not also be available in the other. The willing witnesses identified by both parties are either party employees (who can be compelled to attend by their employers) or reside outside Texas entirely.
At most, this factor slightly favors transfer based on the marginal additional convenience to Lumicore's Austin-based party witnesses. But when the cost of attendance for all willing witnesses is considered — including OWS's California-based witnesses, the identified experts, and third-party witnesses in California and Illinois — the marginal advantage to Lumicore is vastly insufficient to constitute the "clearly more convenient" showing required by Volkswagen II. A slight tilt toward one party's convenience does not overcome the substantial threshold for transfer. See In re Camberwell & Co., 979 F.3d at 1342 ("[T]hat certain witnesses may prefer to testify closer to their homes does not, without more, demonstrate clear convenience.").
Accordingly, this factor is neutral or, at most, only slightly favors transfer, falling far short of the required showing.
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. James "Jim" Callahan, the partner responsible for OWS's representation in this District, has extensive experience practicing before this Court and before Judge Gilstrap in particular. Callahan Decl. ¶¶ 2–3. Mr. Callahan's familiarity with this Court's procedures, local rules, and preferences is a significant practical advantage for the efficient management of this case. Transfer to the Western District of Texas would require OWS to either retain new local counsel in the Austin Division or ask Mr. Callahan to travel to Austin for all court appearances, imposing additional costs and logistical burdens. Callahan Decl. ¶ 14.
Even more telling, Lumicore's own local counsel — Trask Eddington LLP (Maria Garza) — is also based in Tyler, Texas, at 425 East Front Street, Suite 300, Tyler, Texas 75701. If the Eastern District of Texas were truly as inconvenient as Lumicore claims, one would expect Lumicore to have retained Austin-based local counsel. Lumicore's deliberate choice to retain Tyler-based local counsel fatally undermines its assertion that Tyler is an inconvenient forum. See In re Nintendo Co., Ltd., 589 F.3d at 1200 (Federal Circuit noting the significance of the defendant's selection of local counsel in the transfer analysis); Invitrogen Corp. v. Gen. Elec. Co., No. 2:08-CV-326, 2009 WL 331889, at *4 (E.D. Tex. Feb. 10, 2009) (finding that the defendant's retention of local counsel in the Eastern District of Texas weighed against transfer).
Lead Counsel. The lead trial counsel for both sides are national law firms with offices across the country. Calderwood & Harkness LLP maintains its principal offices in Los Angeles and Washington, D.C. Hawthorne Vega & Cruz LLP is headquartered in Austin, Texas. Neither firm's principal office location is dispositive. National law firms regularly practice in courts across the country, and the location of counsel's principal office does not meaningfully affect the convenience of trial. The fact that Hawthorne Vega & Cruz is based in Austin does not weigh in favor of transfer — just as the fact that Calderwood & Harkness is based in Los Angeles does not weigh in favor of transferring the case to the Central District of California.
Protective Order and Case-Management Considerations. The parties have been engaged in negotiations regarding a three-tier Protective Order to govern the handling of confidential information in this case. The anticipated tiers include: (i) Confidential; (ii) Highly Confidential — Attorneys' Eyes Only; and (iii) Highly Confidential — Source Code. These negotiations have been conducted in the context of this Court's standing orders and established procedures for handling protective orders in patent cases. While the Protective Order has not yet been entered, the parties' negotiations have been shaped by the procedures of this Court. Transferring this case to a new forum would require the parties to revisit and potentially renegotiate the Protective Order in light of the transferee court's different procedures and preferences, resulting in additional cost and delay.
More broadly, the Eastern District of Texas has well-established procedures for the management of patent cases, including standard scheduling orders, claim construction procedures, and local patent rules that are familiar to both parties' counsel. Any transfer would disrupt the established course of this litigation and impose transition costs on both parties.
Accordingly, this factor weighs against transfer.
C. The Public Interest Factors Do Not Favor Transfer
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 particular, is widely recognized as having one of the most efficient and experienced patent dockets in the federal judiciary. Judge Gilstrap has presided over hundreds of patent cases and has developed sophisticated procedures for managing patent litigation, including streamlined claim construction (Markman) proceedings, rigorous pretrial scheduling, and efficient jury trial management. The Court's local patent rules and standing orders facilitate the orderly progression of patent cases from filing through trial, and the Court's median time to trial in patent cases is among the most predictable in the country.
Lumicore has presented no evidence that the Western District of Texas, Austin Division, would resolve this matter more quickly or more efficiently. Lumicore's Motion does not cite any comparative caseload statistics, median time-to-trial data, or other evidence suggesting that the Austin Division is less congested or more efficient than the Eastern District of Texas for patent cases. The absence of such evidence is itself telling. The Western District of Texas, while a perfectly capable forum, does not have the same depth of specialized experience with patent litigation that the Eastern District has developed over the past two decades.
This factor is neutral or slightly favors the Eastern District of Texas.
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 relate to activity occurring within its borders is a significant consideration." Volkswagen II, 545 F.3d at 317–18. The relevant inquiry is whether there is a "significant connection between a particular locale and the events giving rise to the suit." In re Camberwell & Co., 979 F.3d at 1344.
Here, the Eastern District of Texas has a direct and substantial connection to the events giving rise to this suit. Lumicore operates a sales and technical support office in Tyler, Texas, from which it directs commercial activity toward data-center customers throughout the Eastern District. Lumicore has sold the accused products to at least three customers with facilities in this District: Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX, transferred to Tyler Division). The accused transceiver modules are currently installed and in active use in data centers within the communities of the Eastern District of Texas. The citizens of this District have a direct and legitimate interest in the adjudication of a patent dispute involving products that are sold and used within their communities, by a company that maintains a physical office in their midst.
Lumicore argues that Austin has a strong local interest because Lumicore is headquartered there. OWS does not deny that Austin has some local interest in a dispute involving a company headquartered in its community. But the question is not whether Austin has any local interest — it is whether the local interest of the Western District of Texas, Austin Division, is so substantially greater than the local interest of the Eastern District as to weigh clearly in favor of transfer. It is not.
This is not a case where the Eastern District of Texas has no connection to the underlying dispute. Lumicore's Tyler office, its sales to Eastern District customers, and the use of accused products within this District all establish a meaningful nexus between this forum and the events giving rise to the suit. The jurors of the Eastern District of Texas have a legitimate stake in this controversy.
Moreover, as the Fifth Circuit has recognized, the local interest factor is not simply a proxy for the defendant's headquarters location. If it were, every case against a corporate defendant could be transferred to the defendant's home district, and the venue statute would be effectively rewritten. See Volkswagen II, 545 F.3d at 318.
Accordingly, this factor is neutral or slightly favors the Eastern District of Texas.
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 District of Texas are Article III federal district courts fully competent to apply federal patent law. Neither forum has an advantage over the other in this regard.
That said, it bears noting that the Eastern District of Texas has particularly deep experience in the adjudication of patent cases. Judges in this District, including Judge Gilstrap, have developed extensive expertise in claim construction, infringement analysis, validity challenges, and damages calculations under 35 U.S.C. §§ 283–285. This experience, while not a factor that definitively favors one forum over another under the Volkswagen framework, reinforces that there is no basis for concluding that the Western District of Texas would offer a more familiar or capable forum for the resolution of this dispute.
This factor is neutral.
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 patent law applies regardless of whether this case is tried in the Eastern District of Texas or the Western District of Texas.
This factor is neutral and provides no support for transfer.
D. Lumicore Has Not Met Its Heavy Burden
When all eight Volkswagen II factors are weighed together, the conclusion is clear: Lumicore has not demonstrated by a preponderance of the evidence that the Western District of Texas, Austin Division, is "clearly more convenient" than the Eastern District of Texas.
Lumicore's motion rests primarily — indeed, almost exclusively — on the single fact that its corporate headquarters is located in Austin. While the location of a defendant's headquarters is relevant to the transfer analysis, it is far from dispositive. The Supreme Court and the Fifth Circuit have repeatedly emphasized that § 1404(a) is not a mechanism for defendants to shift inconvenience from themselves to plaintiffs. See Van Dusen, 376 U.S. at 645–46; Volkswagen II, 545 F.3d at 315. The convenience of the defendant's headquarters alone does not establish that the transferee forum is "clearly more convenient" when, as here, the transferor forum has substantial independent connections to the dispute.
A factor-by-factor review confirms the point:
• Ease of access to sources of proof: Neutral or slightly favoring the Eastern District. Documentary evidence is electronic and accessible from any location. Relevant sales records exist at Lumicore's Tyler office.
• Availability of compulsory process: Neutral. No identified third-party witness is within the subpoena range of the Western District but outside the subpoena range of the Eastern District.
• Cost of attendance for willing witnesses: At most, slightly favors transfer due to the marginal additional convenience for Lumicore's Austin-based party witnesses. This slight advantage is fully offset by the equivalent inconvenience to OWS's California-based witnesses, the presence of both parties' local counsel in Tyler, and the location of key experts and third-party witnesses in California and Illinois.
• Other practical problems: Weighs against transfer. Both parties' local counsel are based in Tyler. Transfer would impose additional costs on OWS to retain new local counsel and would disrupt ongoing protective order negotiations.
• Court congestion: Neutral or slightly favoring the Eastern District, given Judge Gilstrap's well-known efficiency and expertise in patent cases.
• Local interest: Neutral or slightly favoring the Eastern District. Lumicore maintains a physical office in Tyler, has sold accused products to Eastern District customers, and the accused products are in active use within this District.
• Familiarity with governing law: Neutral. Both courts apply the same federal patent law.
• Conflict of laws: Neutral. No conflict-of-laws issues exist.
No private interest factor clearly favors transfer. The only factor that even marginally favors Lumicore — the cost of attendance for its Austin-based willing witnesses — is insufficient standing alone, and is offset by countervailing considerations. The public interest factors either favor the Eastern District or are neutral. Under the totality of the circumstances, Lumicore has failed to overcome the "clearly more convenient" threshold.
Lumicore's physical presence in Tyler, its substantial commercial activity directed at Eastern District customers, the presence of both parties' local counsel in Tyler, and the established efficiency and expertise of this Court's patent docket all weigh against transfer. This is precisely the type of case in which the plaintiff's choice of a proper forum should be respected.
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 to: (a) Lumicore's physical presence at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, including evidence that the office is staffed by at least seven full-time Lumicore employees; (b) Lumicore's commercial activity within the Eastern District of Texas, including sales of accused products to Pinnacle Data Systems, LLC, Frontier Cloud Services, Inc., and CrossPoint Networking Corp.; (c) the Tyler office's role as a regional hub for Lumicore's sales and technical support operations directed at East Texas customers; and (d) Mr. Callahan's extensive familiarity with patent practice before this Court, including the Court's local patent rules, standing orders, and case-management procedures.
Declaration of Rebecca Tanaka in Support of Plaintiff's Opposition to Defendant's Motion to Transfer Venue (D.E. [__]). Ms. Tanaka is the General Counsel of OWS. Her declaration attests to: (a) OWS's contacts with Eastern District customers, including OWS's own sales relationships with Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking; (b) Lumicore's competitive sales activity directed at these same customers within the Eastern District, including the sale of accused products that compete directly with OWS's products; (c) the pre-suit licensing outreach conducted by FairPoint Licensing Group, LLC on OWS's behalf, including the January 15, 2023 and May 15, 2023 licensing letters and the in-person licensing meeting in Austin on April 20, 2023; (d) Lumicore's July 10, 2023 refusal to take a license; and (e) the factual basis for OWS's assertion that the accused products embody the inventions claimed in the asserted patents.
These declarations provide the evidentiary foundation for OWS's factual assertions in this Opposition and further demonstrate that Lumicore has failed to carry its burden of establishing that the Western District of Texas is "clearly more convenient."
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 business, where acts of infringement have occurred, and where the convenience of the parties and witnesses and the interests of justice are best served. Lumicore has failed to demonstrate by a preponderance of the evidence that the Western District of Texas is "clearly more convenient" under the standard established by the Fifth Circuit in In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc). The balance of the private and public interest factors either favors the Eastern District or is neutral, and no factor clearly favors transfer. Lumicore's Motion is an impermissible attempt to shift the inconvenience of litigation from the Defendant to the Plaintiff, and it should be denied.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 287456; admitted pro hac vice E.D. Tex.) Responsible Partner, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 683-5200 Facsimile: (213) 683-5201
Email: alan.ngo@calderwoodharkness.com
Marcus Delgado (TX Bar No. 24078932) Billing Partner, IP Litigation 1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 408-6100
Email: marcus.delgado@calderwoodharkness.com
Wendy Schultz (CA Bar No. 312789; admitted pro hac vice E.D. Tex.) Lead Associate, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 683-5200
Email: wendy.schultz@calderwoodharkness.com
Omar Siddiqui (CA Bar No. 319642; admitted pro hac vice E.D. Tex.) Working Associate, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 683-5200
Email: omar.siddiqui@calderwoodharkness.com
Of Counsel:
WHITMORE & CALLAHAN LLP
James "Jim" Callahan (TX Bar No. 03854210) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 597-6300 Facsimile: (903) 597-6301
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on July 8, 2024, a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s Opposition to Defendant's Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a), together with all accompanying declarations, was served via the Court's CM/ECF electronic filing system on all counsel of record, including the following:
Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701
________________________________________
Alan Ngo