Google Inc. v. Rockstar Consortium US LP et al

Filing 104

NOTICE by Google Inc. Notice of Filing Before The Court of Appeals for The Federal Circuit of Petitions for Writ of Mandamus to The Eastern District of Texas (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Warren, Matthew) (Filed on 8/20/2014)

EXHIBIT B

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Miscellaneous Docket No. __________

United States Court of Appeals
for the Federal Circuit
IN RE ASUSTEK COMPUTER, INC.
and ASUS COMPUTER INTERNATIONAL, INC.,
Petitioners.

On Petition for a Writ of Mandamus to the U.S. District Court for the
Eastern District of Texas in Case Nos. 2:13-cv-894
Judge Rodney Gilstrap

PETITION FOR WRIT OF MANDAMUS
FOR ASUSTEK COMPUTER, INC. AND
ASUS COMPUTER INTERNATIONAL, INC.
Harold H. Davis, Jr.
K&L Gates LLP
4 Embarcadero Center, Suite 1200
San Francisco, California 94111
415-882-8200
415-882-8220 facsimile
Attorneys for Petitioners
ASUStek Computer, Inc. and
ASUS Computer International. Inc.
August 20, 2014

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CERTIFICATE OF INTEREST
Pursuant to Federal Circuit Rule 47.4(a) and Federal Rule of Appellate
Procedure 26.1, counsel for Petitioners ASUStek Computer, Inc. and ASUS
Computer International, Inc. certifies the following:
1.

The full name of every party represented by the undersigned is

ASUStek Computer, Inc. and ASUS Computer International, Inc.
2.

There are no other real parties in interest represented by the

undersigned.
3.

The parent corporations and any publicly held companies that own 10

percent or more of the stock of the parties represented by the undersigned are:
ASUStek Computer, Inc., which is the parent corporation of ASUS Computer
International, Inc.
4.

The names of all law firms and the partners or associates that

appeared for the parties now represented by the undersigned in the trial court or are
expected to appear in this Court, are:
Harold H. Davis, Jr.
Rachel E. Maire
Irene I. Yang
K&L Gates LLP
4 Embarcadero Center, Suite 1200
San Francisco, California 94111

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Jeffrey M. Ratinoff
K&L Gates LLP
630 Hansen Way
Palo Alto, CA 94304
Jennifer Klein Ayers
K&L Gates LLP - Dallas
1717 Main Street
Suite 2800
Dallas, TX 75201

DATED: August 20, 2014
Harold H. Davis, Jr.
K&L Gates LLP
4 Embarcadero Center, Suite 1200
San Francisco, CA 94131
415-882-8200

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TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST ............................................................................... ii
RELIEF SOUGHT ..................................................................................................... 1
ISSUES PRESENTED............................................................................................... 1
SUMMARY OF ARGUMENT ................................................................................. 1
STATEMENT OF RELEVANT FACTS .................................................................. 4
A.

The Parties. ............................................................................................ 4
1.

Nortel, Rockstar, and MobileStar. .............................................. 4

2.

ASUS. ......................................................................................... 4

B.

The Same Accused Products and Android Operating System Is
at Issue in Both the California and Texas Actions. ............................... 5

C.

The California Court Concluded That Google’s Suit Takes
Precedence, and That Texas Is Not a More Convenient Forum. .......... 6

D.

The Texas Court’s Analysis of the Transfer Issues. ............................. 8

STANDARD OF REVIEW ....................................................................................... 9
REASONS WHY THE WRIT SHOULD ISSUE ................................................... 10
I.

THE TEXAS DISTRICT COURT CLEARLY ABUSED ITS
DISCRETION BY NOT GIVING PRECEDENCE TO GOOGLE’S
CALIFORNIA ACTION. .............................................................................. 10

II.

THE TEXAS DISTRICT COURT CLEARLY ABUSED ITS
DISCRETION BY NOT ANALYZING CONVENIENCE FACTORS
IN VIEW OF THE PRECEDENCE TO BE GIVEN GOOGLE’S
CALIFORNIA ACTION. .............................................................................. 15
A.

California is the Presumptive Forum. ................................................. 15

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TABLE OF CONTENTS (cont'd)
Page
B.

The Texas District Court Did Not Analyze Convenience
Factors in View of the Forum Given Precedence. .............................. 17
1.

Key Witnesses and Documents from Google and Apple
Are Located in the Northern District of California. ................. 18

2.

Neither ASUS Witnesses Nor Documents Are Located in
the Eastern District of Texas. .................................................... 19

3.

Rockstar’s Claimed Ties to Texas Are Entitled to
Minimal Weight ........................................................................ 20

C.
D.
III.

Litigating the Texas Action Creates a Direct Conflict. ....................... 21
Purported Jury Bias Is Not a Relevant Factor. .................................... 23

THE TEXAS DISTRICT COURT ABUSED ITS DISCRETION IN
REJECTING ASUS’S MOTION TO STAY THE TEXAS ACTION. ........ 24

CONCLUSION ........................................................................................................ 24
CERTIFICATE OF SERVICE ................................................................................ 26

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TABLE OF AUTHORITIES
Page (s)
CASES
A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,
960 F.2d 1020, 1039 (Fed. Cir. 1992) .................................................... 10, 13
Affinity Labs of Texas v. Samsung Elecs. Co., Ltd.,
2013 WL 5508122 (E.D. Tex.) ......................................................................18
Codex Corp. v. Milgo Elec. Corp.,
553 F.2d 735 (1st Cir. 1977)..........................................................................12
Continental Grain Co. v. Barge FBL-585,
364 U.S. 19, 26 (1960) .................................................................................23
In re EMC Corp.,
677 F.3d 1351 (Fed. Cir. 2012) .....................................................................10
In re Genentech, Inc.,
566 F.3d 1338 (Fed. Cir. 2009) .....................................................................17
In re Microsoft Corp.,
630 F.3d 1361 (Fed. Cir. 2011) .....................................................................22
In re Nintendo of America, Inc.,
Case No. 2014-132, 2014 U.S. App. LEXIS 12707 (Fed. Cir. June 25,
2014) ............................................................................................. 6, 12, 18, 23
In re Toyota Motor Corp.,
747 F.3d 1338 (Fed. Cir. 2014) .....................................................................16
In re TS Tech. USA Corp.,
551 F.3d 1315 (Fed. Cir. 2008) .......................................................................9
In re Volkswagen of Am., Inc.,
545 F.3d 304 (5th Cir. 2008) (en banc) .........................................................10
Jones v. GNC Franchising, Inc.,
211 F.3d 495, 499 (9th Cir. 2000) .................................................................19
Joy Techs., Inc. v. Flakt, Inc.,
6 F.3d 770, 772 (Fed. Cir. 1993) ........................................................... 10, 13
Kahn v. Gen. Motors Corp.,
889 F.2d 1078 (Fed. Cir. 1989) .......................................................................7
Katz v. Lear Siegler, Inc.,
909 F.2d 1459 (Fed. Cir. 1990) ........................................................ 12, 13, 15
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TABLE OF AUTHORITIES (cont'd)
Page
Micron Tech., Inc. v. Mosaid Techs., Inc.,
518 F.3d 897 (Fed. Cir. 2008) .......................................................................16
Seattle Box Co. v. Indus. Crating & Packing,
756 F.2d 1574, 1581 (Fed. Cir. 1985) ................................................... 10, 13
Spread Spectrum Screening LLC v. Eastman Kodak Co.,
657 F.3d 1349 (Fed. Cir. 2011) .............................................................. 12, 26
STATUTES
28 U.S.C. § 1404 ................................................................................... 16, 23, 24, 25

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RELIEF SOUGHT
ASUStek Computer, Inc. (“ASUStek”) and ASUS Computer International,
Inc. (“ACI”) (collectively “ASUS”) respectfully petition for a writ of mandamus
directing the United States District Court for the Eastern District of Texas (the
“Texas court”) to vacate its order denying transfer or stay of this action, and to
either transfer this action to the Northern District of California, or stay this action
until resolution of the action filed by Google Inc. (“Google”) in the Northern
District of California.
ISSUES PRESENTED
1.

Did the Texas court clearly abuse its discretion by not giving

precedence to the manufacturer’s (Google’s) California action where Petitioners’
same products are at issue for the same patent claims?
2.

Did the Texas court clearly abuse its discretion by not analyzing

convenience factors in view of the precedence to be given the manufacturer’s
California action?
3.

Did the Texas court abuse its discretion in refusing to stay this action

until resolution of Google’s California action?
SUMMARY OF ARGUMENT
ASUS’s products are at issue in two different courts concerning the same
patents. ASUS should not be forced to litigate in two different forums on mirrorimage claims for the same accused products. These claims should be litigated in
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the Northern District of California, which is undoubtedly a more convenient forum
because ASUS’s U.S. base of operations, Google’s headquarters, and critical third
party witnesses are located in that District.
For these reasons, ASUS joins the separate petition for writ of mandamus,
Misc. No. 2014-147, filed by Google on August 14, 2014. ASUS writes separately
to explain why the patent case that Rockstar Consortium US LP and MobileStar
Technologies LLC (collectively “Rockstar”) filed against Android customer ASUS
in Texas should be transferred to California, where the suit filed by Android
manufacturer Google is already pending.
The facts are not in dispute. The same ASUS products are at issue in both
the Eastern District of Texas and Northern District of California actions. Compare
A0015 ¶ 15 with A0054 ¶¶ 22, 25. Rockstar’s complaint only accused ASUS
products that have the Android operating system as infringing. A0014-39 ¶¶ 14,
17, 27, 43, 58, 73, 88. Google has moved to transfer the Texas action, and
Rockstar, in turn, moved to transfer Google’s California action.
In denying Rockstar’s motion, Chief Judge Claudia Wilken of the Northern
District of California correctly concluded that Google’s manufacturer suit takes
precedence over the Texas actions filed against Android customers such as ASUS
and that Texas is not a more convenient forum. A2086. The California court

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suggested that the Texas actions against Android customers be transferred to
California, or stayed until Google’s manufacturer suit was resolved. A2084.
ASUS filed its own motion to transfer the Texas case to California or, in the
alternative, stay the Texas case until Google’s manufacturer suit was resolved,
consistent with this Court’s precedents and Chief Judge Wilken’s order. A006281. The Texas court denied ASUS’s motion and, in doing so, did not even
acknowledge Chief Judge Wilken’s earlier ruling, much less follow her careful and
thorough analysis. Instead, the Texas court incorrectly applied the law,
erroneously holding ASUS to the burden of showing that California was a “clearly
more convenient” forum without acknowledging the precedence that the Northern
District of California should be given as the forum of the manufacturer suit.
A0008. The Texas court’s error constitutes a clear abuse of discretion in at least
three ways: (1) the Texas court did not give precedence to the suit filed by Android
manufacturer Google in California; (2) the Texas court did not analyze
convenience factors within the context of this precedence; and (3) the Texas court
refused to stay the Texas action pending resolution of Google’s California action.
Each of these errors is a clear abuse of discretion, and ASUS respectfully requests
that this Court correct the Texas court’s error.

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STATEMENT OF RELEVANT FACTS
A.

The Parties.
1.

Nortel, Rockstar, and MobileStar.

Google, in its separate petition for writ of mandamus, sets out the relevant
facts surrounding the original ownership of the patents at issue (“Asserted
Patents”) by Canada-based Nortel Networks, Rockstar’s purchase of the Asserted
Patents through a bankruptcy auction conducted in New York, and the transfer of
selected Asserted Patents to MobileStar, literally on the eve of Rockstar’s Android
lawsuits. For the convenience of the Court, ASUS adopts and incorporates by
reference those facts from Google’s separate petition for writ of mandamus, Misc.
No. 2014-147.
2.

ASUS.

ASUStek Computer, Inc. is headquartered in Taiwan and ASUS Computer
International, Inc. is headquartered in Fremont, California, within the Northern
District of California. A0073, 1446 ¶ 3, 1450 ¶ 4. ASUS’s potential witnesses and
documents are located in Taiwan and California, including employees and
information relating to the research, design, development, marketing, and sale of
the accused products. A0073, 1446-47 ¶¶ 3, 8-10, 1450 ¶¶ 8-10. There are no
relevant ASUS documents or employees located in the Eastern District of Texas.
A0073, 1147 ¶ 10, 1450-51 ¶¶ 9-12.

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B.

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The Same Accused Products and Android Operating System is at
Issue in Both the California and Texas Actions.

Rockstar filed its Texas complaint on October 31, 2013, accusing ASUS
(and several additional actions accusing other customers of Google) of infringing
various patents now owned by Rockstar and MobileStar (“the Texas action”).
A0011-48. The six patents asserted against ASUS include U.S. Patent Nos.
5,838,551, 6,037,937, 6,128,298, 6,463,131, 6,765,591 and 6,937,572. A0011-48,
2207-2330. While Rockstar’s Texas complaint alleges that only ASUS devices
“having a version (or an adaption thereof) of Android operating system” infringe
the Asserted Patents, Rockstar did not name Google as a defendant. A0014 ¶ 14.
Google, the developer and manufacturer of the Android operating system,
filed a complaint for declaratory judgment in the Northern District of California on
December 23, 2013 (“the California action”). A0049-61. Google’s complaint
seeks a declaration that not “any version of Google’s Android platform” infringes
the Asserted Patents. A0054 ¶ 25. It identifies ASUS as a “customer” that uses
the Android platform in ASUS devices. A0053 ¶ 17. Google’s complaint in the
California action is not limited to any particular version of the Android platform,
or to any particular ASUS devices that use the Android platform. Instead, Google
broadly requests a declaration that no version of the Android platform in any
ASUS device infringes the Asserted Patents. A0054 ¶ 25. Google’s complaint
also requests a declaration that no version of the Android platform infringes U.S.
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Patent No. 6,333,973 (the “’973 patent”), a patent Rockstar asserted against other
Android customers but not ASUS. A0058 ¶ 49, 2244-69.
The same Android platform that is run on the accused ASUS devices is at
issue in both actions. Compare A0018 ¶ 27 with A0056 ¶ 37 (’937 claim 13);
A0023 ¶ 43 with A0057 ¶ 43 (’298 patent claims 27 and 31); A0028-29 ¶ 58 with
A0059 ¶ 55 (’131 patent claim 1); A0034 ¶ 73 with A0060 ¶ 61 (’591 claims 1 and
8); and A0039 ¶ 88 with A0061 ¶ 67 (’572 patent claim 17). In particular, the
Google-branded ASUS Nexus 7 is accused of infringement in both the California
and Texas actions. A0054 ¶¶ 22, 25, 0015 ¶ 15.
C.

The California Court Concluded That Google’s Suit Takes
Precedence, and That Texas Is Not a More Convenient Forum.

In response to Google’s declaratory judgment complaint filed in the
Northern District of California, Rockstar moved to dismiss or, in the alternative,
transfer the action to Texas. Chief Judge Wilken denied both requests. A2086.
Chief Judge Wilken’s analysis was based on established Federal Circuit
precedent, recently reaffirmed in In re Nintendo, Case No. 2014-132, 2014 U.S.
App. LEXIS 12707, at *4-5, that a manufacturer’s suit takes precedence. The
California court articulated the standard as follows: “where the earlier action is an
infringement suit against a mere customer and the later suit is a declaratory
judgment action brought by the manufacturer of the accused devices,” the
manufacturer suit generally takes precedence. A2082. The California court found
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that “the relationships between Google and the [Texas] defendants is one of
manufacturer and customer.” Id. Accordingly, Chief Judge Wilken concluded
that, “[b]ecause the determination of the infringement issues here would likely be
dispositive of the other cases, and the manufacturer presumably has a greater
interest in defending against charges of patent infringement than the customers, the
[California] suit takes precedence.” A2082 (citing Kahn v. Gen. Motors Corp.,
889 F.2d 1078, 1081 (Fed. Cir. 1989)).
Chief Judge Wilken then turned to the convenience factors to determine
whether an exception should be made to the general rule giving preference to the
manufacturer suit. A2082-83. As for the convenience of the parties, the California
court observed that Google, the developer and manufacturer of the Android
operating system, is based in the Northern District of California: “Google’s
Android products, the target of this infringement action, were designed and created
[in the Northern District of California.]” A2083. As for Rockstar, the California
court noted that though Rockstar claims “to have substantial ties to Texas, their
headquarters appear to be in Canada.” A2085.
The convenience of the Northern District of California extended to key
third-party witnesses at Apple, Inc. (“Apple”). The California court described a
“direct link” between various actions filed by Apple and Rockstar against Google
and its customers. A2076. Chief Judge Wilken first observed that Apple

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contributed $2.6 billion, or a controlling 58% of the $4.5 billion paid by Rockstar
Bidco (a consortium consisting of Apple, Microsoft, RIM, Ericsson, Sony and
EMC). A2075. The California court noted that Rockstar’s litigation strategy of
suing Google’s customers “is consistent with Apple’s particular business
interests.” A2077. It noted that Rockstar limited its infringement claims in Texas
action “to Android-operating devices only” and, according to Chief Judge Wilken,
“[t]his ‘scare the customer and run’ tactic advances Apple’s interest in interfering
with Google’s Android business.” Id.
Based on the foregoing, the California court concluded that the convenience
factors favored California over Texas: “On balance, the factors do not weigh in
favor of transferring the action to the Eastern District of Texas.” A2086. As a
practical matter, Chief Judge Wilken suggested that the customer suits in Texas
could be transferred to the Northern District of California and consolidated for
pretrial purposes or, in the alternative, stayed by the Texas court. A2084.
D.

The Texas Court’s Analysis of the Transfer Issues.

In contrast, the Texas court did not give preference to the manufacturer suit
filed by Google in California. Nor did the Texas court analyze the convenience
factors within the context of the precedence to be given Google’s California action.

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In fact, the Texas court never mentioned Chief Judge Wilken’s ruling, which
had issued more than three months earlier.1 The Texas court cited the general
principle that “litigation against or brought by the manufacturer of infringing goods
takes precedence over a suit by the patent owner against customers of the
manufacturer,” A0004, but never analyzed or applied that principle as enumerated
by this Court. To the contrary, the Texas court held Android customer ASUS to
the burden of showing that the Northern District of California was “clearly more
convenient” than the Eastern District of Texas, and ruled that ASUS had not met
its burden. A0008.
STANDARD OF REVIEW
Writs of mandamus are available for “extraordinary situations to correct a
clear abuse of discretion or usurpation of judicial power.” In re TS Tech. USA
Corp., 551 F.3d 1315, 1318 (Fed. Cir. 2008). A clear abuse of discretion occurs
when the district court reaches a “patently erroneous result.” Id. at 1319. A
“district court abuses its discretion if it relies on an erroneous conclusion of law.”
In re EMC Corp., 677 F.3d 1351, 1355 (Fed. Cir. 2012). “An abuse of discretion
may be established by showing that the district court either made a clear error of
judgment in weighing relevant factors, or exercised its discretion based on an error
1

Chief Judge Wilken’s order denying Rockstar’s motion to dismiss, or transfer,
issued on April 17, 2014. A2059-86. The Texas court’s order denying ASUS’s
motion to transfer, or in the alternative, stay issued on July 28, 2014. A0001-10.

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of law or on findings which were clearly erroneous.” Joy Techs., Inc. v. Flakt,
Inc., 6 F.3d 770, 772 (Fed. Cir. 1993) (citing A.C. Aukerman Co. v. R.L. Chaides
Constr. Co., 960 F.2d 1020, 1039 (Fed. Cir. 1992) and Seattle Box Co. v. Indus.
Crating & Packing, 756 F.2d 1574, 1581 (Fed. Cir. 1985)). “If the district court
clearly abused its discretion,” the moving party’s “right to issuance of the writ is
necessarily clear and indisputable.” In re TS Tech., 551 F.3d at 1318-19; In re
Volkswagen of Am., Inc., 545 F.3d 304, 311 (5th Cir. 2008) (en banc).
REASONS WHY THE WRIT SHOULD ISSUE
I.

THE TEXAS DISTRICT COURT CLEARLY ABUSED ITS
DISCRETION BY NOT GIVING PRECEDENCE TO GOOGLE’S
CALIFORNIA ACTION.
When a manufacturer files a suit for declaratory relief of non-infringement

in response to an earlier filed suit against customers, the manufacturer’s suit takes
precedence. See Spread Spectrum Screening LLC v. Eastman Kodak Co., 657 F.3d
1349, 1357 (Fed. Cir. 2011). This case fits squarely within that rule. As Google
confirms, ASUS is a customer of Google’s Android platform. A0053 ¶ 17. The
Texas action against Android customer ASUS, alleging that ASUS devices running
any version of the Android operating system infringe the Asserted Patents, was
filed on October 31, 2013. A0011-48. Google, the manufacturer of the Android
operating system, filed in California on December 23, 2013, seeking a declaration
that no version of the Android platform infringes any of the Asserted Patents.

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A0049-61. Google’s California action is even broader than Rockstar’s Texas
action against ASUS because it includes a seventh patent, the ’973 patent, which is
not asserted against ASUS in the Texas action. A0058 ¶ 49. Under controlling
law, Google’s California action takes precedence.
Under similar circumstances, this Court recently reaffirmed that “[w]hen a
patent owner files an infringement suit against a manufacturer’s customer and the
manufacturer then files an action of noninfringement or patent invalidity, the suit
by the manufacturer generally take[s] precedence.” In re Nintendo of America,
Inc., Case No. 2014-132, 2014 U.S. App. LEXIS 12707, at *4-5 (Fed. Cir. June 25,
2014) (citing Spread Spectrum Screening LLC, 657 F.3d at 1357; Katz v. Lear
Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990)). The purpose of the rule is “to
avoid, if possible, imposing the burdens of trial on the customer, for it is the
manufacturer who is generally the ‘true defendant’ in the dispute.” Id. at *5 (citing
Codex Corp. v. Milgo Elec. Corp., 553 F.2d 735, 737-38 (1st Cir. 1977)). It is
meant to “facilitate just, convenient, efficient, and less expensive determination.”
Id. (citing Katz, 909 F.2d at 1464). When evaluating the customer suit exception,
the “primary question is whether the issues and parties are such that the disposition
of one case would be dispositive of the other.” Katz, 909 F.2d at 1463.
The Texas court cited to this standard, but failed to analyze it, apply it, or
give any precedence to the manufacturer’s suit filed by Google in California. The

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Texas court’s failure to follow clearly articulated controlling law is a clear abuse of
discretion. Joy Techs., 6 F.3d at772 (citing A.C. Aukerman Co., 960 F.2d at 1039
and Seattle Box Co., 756 F.2d at1581).
Simply put, this case is about the Android platform used by various devices.
Android functionality is at the heart of both the Texas and California actions. The
Texas complaint alleges that “mobile communication devices having a version (or
an adaption thereof) of Android operating system” infringe each of the Asserted
Patents. A0014-39 ¶¶ 14, 17, 27, 43, 58, 73, 88. Nowhere does the Texas
complaint allege that software functionality separate from the Android operating
system infringes the Asserted Patents. The California complaint encompasses the
scope of the Texas complaint, alleging that no version of the Android platform on
any mobile device infringes the same Asserted Patents. A0054 ¶ 25. In addition,
the California case puts all seven Asserted Patents at issue. A0053-54 ¶ ¶19, 25.2
As previously noted, the Texas action against ASUS only addresses six of the
seven patents at issue in the California action. A0014 ¶ 14.

2

That there may be additional issues in the Texas actions against Google’s
customers does not prohibit application of the customer suit exception. Katz, 909
F.2d at 1464 (“Although there may be additional issues involving the defendants in
the [customer] action, their prosecution will be advanced if [plaintiff] is successful
on the major premises being litigation in [the manufacturer suit], and may well be
mooted if he is unsuccessful.”).

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The California court, when presented with these same facts, correctly
concluded that Google and ASUS have a manufacturer-customer relationship.
A2082. As a result, determining infringement issues in the California
manufacturer suit “would likely be dispositive” of the Texas action against ASUS.
Id. Further, Google, as the manufacturer of the Android platform, would
“presumably ha[ve] a greater interest in defending against charges of patent
infringement than the customers.” Id. Thus, the California court held that the case
was properly litigated in California. Id.
Rockstar’s attempt to avoid Google’s California action, by arguing that it
has now sued Google in Texas, is unavailing. As noted above, Rockstar filed an
amended complaint on December 31, 2013 - adding Google as a defendant to the
related Texas action filed against Samsung - a week after Google had filed its
California complaint. In that amended complaint, however, Rockstar only asserted
three of the seven patents against Google. On March 10, 2014, Rockstar moved to
file a Second Amended Complaint, now asserting all seven of the patents. On July
1, 2014, over six months after Google filed the California action, the Texas court
granted Rockstar’s motion and allowed all seven patents to be asserted against
Google.
Rockstar’s attempt to distinguish the Android operating system at issue in
the California and Texas actions is equally unavailing. In both cases, it is devices

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running versions of Google’s Android operating system that are at issue. There are
no claims in either case that ASUS devices with other operating systems, such as
the Windows operating system, infringe any of the software-based Asserted
Patents. Rockstar has pointed to no evidence in the record that ASUS modifies the
Android operating system in any way that impacts the infringement analysis. This
fact is confirmed by Rockstar’s infringement contentions in the Texas case, which
only cite to Google’s stock Android code as providing the purported infringing
functionality. See A2160-65.
Rockstar’s attempt to distinguish the ’551 patent as not involving Google’s
Android operating system is undermined by Rockstar’s complaint, which alleges
that only ASUS devices having a version of the Android operating system infringe
the ’551 patent, just like its allegations for each of the other Asserted Patents. 3
A0014 ¶ 14. Chief Judge Wilken pointed to this fact, noting that Rockstar had
gone so far as to limit its infringement claims to “Android-operating devices only”
even where they asserted hardware claims, such as this in the ’551 patent. A2077.

3

Given Rockstar’s admissions, the fact that three of the ten ASUS products that
Rockstar subsequently identified of infringing the hardware claims of the ’551
patent may be running a different operating system is inconsequential and does not
affect the application of the customer-suit rule. See Katz, 909 F.2d at 1464. To be
sure, these three products are not accused of infringing the claims of any of the
other Asserted Patents.

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II.

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THE TEXAS DISTRICT COURT CLEARLY ABUSED ITS
DISCRETION BY NOT ANALYZING CONVENIENCE FACTORS
IN VIEW OF THE PRECEDENCE TO BE GIVEN GOOGLE’S
CALIFORNIA ACTION.
A.

California is the Presumptive Forum.

Once Google’s California action is given the precedence to which it is
entitled, the issue under § 1404(a) becomes whether the “convenience of parties
and witnesses, in the interest of justice” justify proceeding in the other forum -here, the Eastern District of Texas. 28 U.S.C. § 1404(a); see In re Toyota Motor
Corp., 747 F.3d 1338, 1341 (Fed. Cir. 2014) (emphasis in original); see Micron
Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 904 (Fed. Cir. 2008). Chief Judge
Wilken understood this analysis, and took the additional step of determining
whether “an exception to the general rule giving preference” to the California
action was merited. A2082-83. As Chief Judge Wilken correctly concluded after
analyzing the factors considered in a transfer motion under § 1404, the answer is
no: the relevant factors favor the Northern District of California. A2083.
The California court correctly found that the convenience and availability of
witnesses, which this Court has deemed the “single most important factor” in the
transfer analysis, actually favors the Northern District of California. A2083; In re
Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009). “Google’s Android
products, the target of this infringement action, were designed and created here [in
the Northern District of California]. Many of the witnesses who can testify to the
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design and development of the accused Android platform’s features reside near
Google’s headquarters in Mountain View, California.” A2083. Further, Apple,
the majority shareholder of Rockstar and the 58% contributor to the purchase of
the total investment in Rockstar’s predecessor entity, is in the Northern District of
California. A2075. There is a “direct link between Apple’s unique business
interests, separate and apart from mere profitmaking, and [Rockstar’s] actions
against Google and its customers.” A2076.
As to the other factors relevant to a transfer analysis, Rockstar’s “primary
operations and headquarters are in Canada,” not the Eastern District of Texas, and
many of the inventors of the Asserted Patents are in Canada. A2085. In fact,
Rockstar represented to the Texas State tax authority that its mailing address was
in Canada. A0729.
Courts in the Eastern District of Texas have recognized that the “Northern
District of California has an interest in protecting intellectual property rights that
stem from research and development in Silicon Valley.” A2085 (citing Affinity
Labs of Texas v. Samsung Elecs. Co., Ltd., 2013 WL 5508122, at *3 (E.D. Tex.)).
Based on a thorough analysis of these factors, Chief Judge Wilken correctly
concluded that “the factors do not weigh in favor of transferring the action to the
Eastern District of Texas.” A2086.

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B.

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The Texas District Court Did Not Analyze Convenience Factors in
View of the Forum Given Precedence.

As explained in Section I, supra, the Texas court erred in not giving
precedence to the California action filed by Android manufacturer Google. The
Texas court compounded the error by then requiring ASUS to show that it would
be “clearly more convenient” to transfer the Texas action to the Northern District
of California. A0008. That is the wrong standard. In view of the precedence
given Google’s California action, the correct standard is whether it is more
convenient for the parties and witnesses to proceed in Texas.4
As detailed above, the Texas court never even acknowledged Chief Judge
Wilken’s opinion, much less her analysis of the convenience factors. Instead, the
Texas court seemingly went out of its way to avoid the convenience of the
California forum, giving weight to inaccurate “Texas” facts and drawing inaccurate
inferences from the evidence. We address those inaccuracies below.

4

Under Fifth Circuit law, the question is articulated as whether it is “clearly more
convenient” to proceed in the other forum after balancing the relevant factors. See
In re Nintendo, 589 F.3d 1194, 1200 (Fed. Cir. 2009). Under Ninth Circuit law,
the question is articulated as whether the other forum is the “more appropriate
forum for the action.” Jones v. GNC Franchising, Inc., 211 F.3d 495, 499 (9th Cir.
2000). Even giving Rockstar the benefit of the doubt and applying the less
stringent formulation of the question, the convenience factors dictate that the
Northern District of California, not the Eastern District of Texas, is the more
convenient forum. The case should not proceed in the Eastern District of Texas,
under either standard.

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1.

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Key Witnesses and Documents from Google and Apple Are
Located in the Northern District of California.

There is no dispute that Google is in the Northern District of California, and
even the Texas court acknowledged that Google documents would be relevant to
the case. A0005. The Texas court suggested, however, that it did not “believe that
Google’s documentary evidence is located on servers located at its Mountain
View, California headquarters.” Id. The Texas court is simply mistaken. It is
undisputed that Google is headquartered in Mountain View, California and Chief
Judge Wilken correctly determined that Google’s witnesses and documents are
located in the Northern District of California. A0005, 2083.
There is also no dispute that Apple is in the Northern District of California,
and that the bulk of its documents are located there. The Texas court, however,
suggested that ASUS had not identified any particular Apple witness expected to
testify at trial. A0006. The Texas court is again mistaken. ASUS identified Kyle
Krpata, Apple’s attorney who is located in the Northern District of California,
A0075, and Apple employees involved in the Nortel bidding process. A0074-75,
A0089. ASUS explained that testimony from Mr. Krpata and Apple employees is
relevant to the valuation of Rockstar’s patent portfolio. A0075. Chief Judge
Wilken also suggested that Apple would have testimony relevant to “a direct link
between Apple’s unique business interests, separate and apart from mere
profitmaking, and Defendants’ actions against Google and its customers.” A2076.
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In analyzing whether compulsory process of any non-party witnesses for
trial might be affected by Federal Rule of Civil Procedure 45, the Texas court also
ignored ASUS’s identification of Google as a particular non-party witness who is
expected to testify at trial. A0071-72. A corporate representative of Google is
located in the Northern District of California and would be subject to that Court’s
compulsory process. A0073-74. Similarly, both Mr. Krpata and Apple’s
employees, located in the Northern District of California, would be subject to that
Court’s compulsory process but not the Eastern District of Texas’. Fed. R. Civ. P.
45(c).
In view of Google and Apple witnesses, as well as Google and Apple
documents, being located in the Northern District of California, the Texas forum is
not a more convenient forum.
2.

Neither ASUS Witnesses Nor Documents Are Located in the
Eastern District of Texas.

There is no dispute that ASUS’s potential witnesses are located in the
Northern District of California and Taiwan. The Texas court correctly declined to
simply redistribute the inconvenience of travel or substantially increase the cost of
attendance for willing witnesses. But the evidence supports that proceeding with
the case in the Northern District of California imposes fewer, not equivalent, costs
on Rockstar witnesses than the cost on ASUS witnesses to litigate this case in the
Eastern District of Texas. A0073-74. The Texas court also ignored
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uncontroverted evidence of the increased inconvenience and cost of requiring
ASUS’s witnesses located in Taiwan to travel to the Eastern District of Texas
versus the Northern District of California. Id.
The Texas court correctly noted that ASUS maintains business documents
and records related to marketing and sales in Fremont, California and research and
development documents in Taiwan. A0004. Yet, the Texas court then discounted
the inconvenience to ASUS in transferring documents to the Eastern District of
Texas while it also gave weight to the assertion that Rockstar’s documents are
located in the Eastern District of Texas. A0005. To be consistent under the Texas
court’s reasoning, the “ease in the modern era of transferring electronic data”
should be applied equally to Rockstar’s ability to produce documents in the
Northern District of California. A0005.
With the location of ASUS witnesses and documents in Taiwan and the
Northern District of California, the Texas forum is not a more convenient forum.
3.

Rockstar’s Claimed Ties to Texas Are Entitled to Minimal
Weight.

Rockstar’s claimed ties to Texas are not entitled to little or no weight. Chief
Judge Wilken, after reviewing the evidence, concluded that “the circumstances
here strongly suggest that Rockstar formed MobileStar as a sham entity for the sole
purpose of avoiding jurisdiction in all other fora except MobileStar’s state of
incorporation (Delaware) and claimed principal place of business (Texas).”
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A2067. Indeed, Rockstar has told the Texas State tax authority that it is a
Canadian corporation. A0729.
“A mere day before it initiated litigation against Google’s customers,
Rockstar freshly minted MobileStar…and assigned the asserted patents to that
subsidiary.” A2067-68. The plaintiff’s choice of its “home” forum does not
require the Court to “honor connections to a preferred forum made in anticipation
of litigation and for the likely purpose of making that forum appear convenient.”
In re Microsoft Corp., 630 F.3d 1361, 1364 (Fed. Cir. 2011).
The Texas court strained to find any real connection that Rockstar and
MobileStar had with Texas. It resorted to identifying two prosecuting attorneys
and two former Nortel employees as potential non-party witnesses that lean
towards convenience of the Eastern District of Texas. A0006. Rockstar never
claims that any of these people will be testifying witnesses. In fact, Rockstar
admits that its inventors are mostly located in Canada or elsewhere outside of
Texas, and most prosecuting attorneys are also outside Texas. A1465-67. Thus,
the location of these non-party, non-witnesses has no bearing on the transfer
analysis.
C.

Litigating the Texas Action Creates a Direct Conflict.

A foundational goal of § 1404(a) is to “facilitate just, convenient, efficient,
and less expensive determination.” In re Nintendo, 2014 U.S. App. LEXIS, at *5.

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“To permit a situation in which two cases involving precisely the same issues are
simultaneously pending in different District Courts leads to the wastefulness of
time, energy and money that § 1404(a) was designed to prevent.” Continental
Grain Co. v. Barge FBL-585, 364 U.S. 19, 26 (1960). The Texas court’s refusal to
transfer the Texas action to California creates a direct conflict that § 1404(a) and
the customer suit exception are expressly designed to avoid: two district courts
making independent determinations about whether the same accused technology
infringes the same patents. Principles of judicial economy and comity counsel
against the result reached by the Texas court.
Remarkably, the Texas court ignored Chief Judge Wilken’s decision entirely
and pointed only to the presence of the other Texas litigations as a factor favoring
denial of transfer to the Northern District of California. A0008. This ignores that
each of the other customer defendants also moved to transfer to the Northern
District of California and each provided ample justification for doing so. Google,
the developer of the Android platform at the heart of the dispute, is litigating the
same issues in California. The issues Google is currently litigating in California
span all of the customer defendants. Judicial economy points only to the Northern
District of California, and it was error for the Texas court to reach the contrary
result by ignoring the presence of the California action.

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Google’s manufacturer suit in California action will be dispositive of almost
all of the issues in the Texas action. The alleged infringement of the ASUS and
Google Nexus 7 product is at issue in both actions. A0054 ¶¶ 22, 25, 0015 ¶ 15.
The issues of invalidity are identical in both cases, and the issues of infringement
are identical for the Nexus 7 and are likely to be indistinguishable for the
remaining accused ASUS products. Chief Judge Wilken stated in no uncertain
terms that Google’s manufacturer suit addresses the same issues as the Texas
action. The Texas District Court’s refusal to transfer the Texas action therefore
creates the exact type of wasteful, duplicative litigation that § 1404(a) was
designed to prevent.
D.

Purported Jury Bias Is Not a Relevant Factor.

Without support in the record, the Texas court states that the “Court has
previously been highly skeptical of arguments that a particular jurisdiction has a
‘local interest’ that amounts to a bias in its jury pool.” A0008. The Texas order
also infers that an interest in resolving cases involving intellectual property
developed within a particular district amounts to a “predisposition toward one
party, independent of the merits of the case.” Id. There is no basis in the record
for a conclusion that the Northern District of California contains a biased jury pool
or that a Northern California jury would overlook the merits of a case to blindly

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favor a particular party.5 To conclude so, and to therefore give this factor no
weight in the transfer analysis, is error.
III.

THE TEXAS DISTRICT COURT ABUSED ITS DISCRETION IN
REJECTING ASUS’S MOTION TO STAY THE TEXAS ACTION.
As discussed in Sections I and II, the California case between Google and

Rockstar will dispose of most if not all of the key issues in this case, including
infringement and invalidity. This Court has recognized that the precedence taken
by manufacturer suits “need only have the potential to resolve the ‘major issues’
concerning the claims against the customer - not every issue - in order to justify a
stay of the customer suites.” Spread Spectrum, 657 F.3d at 1358. For the reasons
stated in Sections I and II, above, at the very least the Texas action against ASUS
should be stayed pending resolution of Google’s California action.
CONCLUSION
Based upon the foregoing, ASUS respectfully requests that this Court issue a
writ of mandamus directing to the United States District Court for the Eastern
District of Texas to vacate its order denying transfer or stay of this action, and to

5

In fact, the record suggests the opposite conclusion. As Chief Judge
Wilken recognized, Apple, which is based in the Northern District of California,
controls a majority interest in Rockstar and there is a “direct link” between Apple
and Rockstar’s actions against Google and its customers. A2075-76. There are
also a number of third party Apple witnesses that will be called in both actions.
Thus, given its close connection to Apple, it is highly unlikely that Rockstar would
suffer any local bias.

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transfer this action to the Northern District of California, or to stay this action until
resolution of Google’s action in the Northern District of California.
Respectfully submitted,

DATED: August 20, 2014
By
Harold H. Davis, Jr.
K&L Gates LLP
4 Embarcadero Center, Suite 1200
San Francisco, California 94111
Jeffrey Ratinoff
K&L Gates LLP
630 Hansen Way
Palo Alto, CA 94304
Attorneys for Petitioners ASUStek
Computer, Inc. and ASUS Computer
International. Inc.

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CERTIFICATE OF SERVICE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
Misc. No. ______
--------------------------------------------------------------------------------IN RE ASUSTEK COMPUTER, INC.
and ASUS COMPUTER INTERNATIONAL, INC.,
Petitioners.
--------------------------------------------------------------------------------I, John C. Kruesi, Jr., being duly sworn according to law and being over the
age of 18, upon my oath depose and say that:
Counsel Press was retained by K&L Gates LLP, attorneys for Petitioners to
print this document. I am an employee of Counsel Press.
On the 20th Day of August, 2014, I served the within Petition for Writ of
Mandamus upon:
Mike McKool (via FedEx)
[e-mail]
Douglas A. Cawley
[e-mail]
Ted Stevenson III
[e-mail]
David Sochia
[e-mail]
Ryan Hargrave
[e-mail]
Nicholas M. Mathews
[e-mail]
MCKOOL SMITH, P.C.
300 Crescent Court Suite 1500
Dallas, TX 75201
Telephone: [phone]
Telecopier: [phone]

Jennifer Leigh Truelove
[e-mail]
Samuel Franklin Baxter
[e-mail]
MCKOOL SMITH, P.C.
P.O. Box O
104 East Houston St., Suite 300
Marshall, TX 75670
Telephone: [phone]
Telecopier: [phone]
Joshua W. Budwin
[e-mail]
MCKOOL SMITH, P.C.
300 W. 6th Street, Suite 1700
Austin, TX 78701
Telephone: [phone]
Telecopier: [phone]

Attorneys for Rockstar Consortium US LP and MobileStar Techs. LLC

Case: 14-149

Document: 2

Richard D. Harris (via FedEx)
[e-mail]
Jeffrey G. Mote
[e-mail]
Eric J. Maiers
[e-mail]
James J. Lukas, Jr.
[e-mail]
GREENBERG TRAURIG LLP
77 West Wacker Drive, Suite 3100
Chicago, Illinois 60601
[phone]
[phone] facsimile

Page: 34

Filed: 08/20/2014

Mary-Olga Lovett
[e-mail]
GREENBERG TRAURIG LLP
1000 Louisana, Suite 1800
Houston, Texas 77002
[phone]
[phone]

Attorneys for Defendants LG Electronics, Inc., LG Electronics U.S.A., Inc.,
and LG Electronics MobileComm USA Inc.
Alexas D. Skucas (via FedEx)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, New York 10036
[phone]
[phone] facsimile
Steven T. Snyder
[e-mail]
Anup M. Shah
[e-mail]
KING & SPALDING LLP
100 North Tryon Street, Ste. 3900
Charlotte, North Carolina 28202
[phone]
[phone] facsimile

Everett Upshaw
[e-mail]
David A. Bailey
[e-mail]
LAW OFFICE OF EVERETT
UPSHAW, PLLC
811 South Central Expressway
Suite 307
Richardson, Texas 75080
[phone]
[phone] facsimile

Attorneys for Defendants ZTE (USA) Inc. and ZTE Corp.

Case: 14-149

Document: 2

W. Barton Rankin (via FedEx)
[e-mail]
BAKER & MCKENZIE LLP
2300 Trammel Crow Center
2001 Ross Avenue, Suite 2300
Dallas, Texas 75201
[phone]
[phone] facsimile

Page: 35

Filed: 08/20/2014

D. James Pak
[e-mail]
BAKER & MCKENZIE LLP
Two Embarcadero Center, 11th Floor
San Francisco, California 94111
[phone]
[phone] facsimile

Attorneys for Defendants Pantech Co., Ltd., and Pantech Wireless, Inc
Kathleen M. Sullivan (via FedEx)
Patrick D. Curran
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
[phone] facsimile

Charles K. Verhoeven
Sean S. Pak
Amy H. Candido
Matthew S. Warren
Kristin J. Madigan
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
415-875-6600
415-875-6700 facsimile

Attorneys for Defendant Google, Inc.
Charles K. Verhoeven (via FedEx)
Sean S. Pak
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
415-875-6600
415-875-6700 facsimile
Kevin P.B. Johnson
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
[phone]
[phone] facsimile

Joseph Milowic III
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
[phone] facsimile
Eugene Y. Mar
Erik C. Olson
Farella Braun & Martel LLP
235 Montgomery St, 17th Floor
San Francisco, CA 94104
415/954-4400
415/954-4480 facsimile

Attorneys for Defendants’ Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., and Samsung Telecommunications America, LLC

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Michael J. Bettinger (via FedEx)
[e-mail]
Curt Holbreich
[e-mail]
Irene I Yang
[e-mail]
K&L GATES LLP
Four Embarcadero, Suite 1200
San Francisco, California 94111
[phone]
[phone] facsimile

Page: 36

Filed: 08/20/2014

Steven G Schortgen
[e-mail]
Jennifer Klein Ayers
[e-mail]
K&L GATES LLP
1717 Main Street, Suite 2800
Dallas, Texas 75201
[phone]
[phone] facsimile

Attorneys for Defendants HTC Corporation and HTC America, Inc.
via E-mail and also via Overnight Delivery to the lead counsel indicated above.
Additionally, a copy will be sent to these U.S. District Judges:
The Honorable Rodney Gilstrap
U.S. District Court, District Judge
Sam B. Hall, Jr. Federal Building
and United States Courthouse
100 East Houston Street
Marshall, Texas 75670
Tel: [phone]
Fax: [phone]
via Express Mail, by causing a true copy of each to be deposited, enclosed in a
properly addressed wrapper, in an official depository of the U.S. Postal Service.
Unless otherwise noted, 4 copies and a pdf copy on disk, along with the
required filing fee, have been hand-delivered to the Court on the same date as
above.
August 20, 2014

_________________
John C. Kruesi, Jr.
Counsel Press