Google Inc. v. Rockstar Consortium US LP et al

Filing 107

NOTICE by Google Inc. Notice of Filing Before The Court of Appeals for The Federal Circuit of Petition for Writ of Mandamus to The Eastern District of Texas (Attachments: # 1 Exhibit A)(Warren, Matthew) (Filed on 8/22/2014)

EXHIBIT A

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Misc. No. 2014 -

3fit the

tiniteb iptateo Court of appeato
for the jfeberat Circuit
IN RE LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and
LG ELECTRONICS MOBILECOMM USA INC.,

Petitioners.

On Petition for a Writ of Mandamus to the United States District Court
for the Eastern District of Texas, Case No. 2:13-cv-898.
The Honorable Rodney Gilstrap, Judge Presiding.

PETITION FOR WRIT OF MANDAMUS
FOR LG ELECTRONICS, INC.,
LG ELECTRONICS U.S.A., INC., AND
LG ELECTRONICS MOBILECOMM USA INC.

RICHARD D. HARRIS
JEFFREY G. MOTE
JAMES J. LUKAS, JR.

GREENBERG TRAURIG, LLP
77 West Wacker Drive, Suite 3100
Chicago, Illinois 60601
Telephone: [phone]
Facsimile: [phone]

Dated: August 21, 2014

•

COUNSEL PRESS • [phone]

Attorneys for Petitioners
LG Electronics, Inc., LG Electronics U.S.A., Inc.,
and LG Electronics MobileComm USA Inc.

PRINTED ON RECYCLED PAPER

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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 LG Electronics, Inc., LG Electronics
U.S.A., Inc., and LG Electronics MobileComm USA Inc. ("LG") certifies the
following:
1.
The full name of every party represented by the undersigned
petitioners is: LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG
Electronics MobileComm USA Inc.
2.

No other real parties in interest are represented by the undersigned.

3.
LG Electronics U.S.A., Inc. is a wholly owned subsidiary of LG
Electronics, Inc., a publicly held company in the Republic of Korea. LG
Corporation, a publicly held company in the Republic of Korea, owns more than
10% of LG Electronics, Inc. LG Electronics MobileComm U.S.A., Inc. is a wholly
owned subsidiary of LG Electronics U.S.A., Inc.
4.
The names of all law firms and the partners or associates that
appeared for the party now represented by the undersigned in the trial court or
agency, or are expected to appear in this Court, are: Greenberg Traurig LLP:
Richard D. Harris, Jeffrey G. Mote, and James J. Lukas, Jr.
DATED: August 21, 2014

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TABLE OF CONTENTS
CERTIFICA 1 E OF IN 1 EREST
RELIEF SOUGHT

1

ISSUES PRESENTED

1

SUMMARY OF ARGUMENT

2

STATEMENT OF RELEVANT FACTS

3

A.

The Parties

3

1.

Nortel, Rockstar, and MobileStar.

3

2.

LG

3

B.

Rockstar Files Actions Against LG and Other Google
Customers in Texas Based on Their Sale of Certain
Mobile Devices Incorporating Google's Android OSBut Does Not Sue Google Itself 3

C.

Google Files Suit in the Northern District of California to
Protect Its Android OS Customers Including LG

4

D. Rockstar Moves to Dismiss or to Transfer Google's
Action in the Northern District of California to the
Eastern District of Texas 5
E.

The Northern District of California Denies Rockstar's
Motion to Dismiss or to Transfer and Issues Significant
Holdings Highly Relevant To LG's Motion to Stay or
Transfer. 6
1.

2.

Google's California Action, Not Rockstar's Texas
Action Against Google's Customer Samsung in
Texas, Was First-Filed
LG is a Customer of Google With Respect to the
Accused Android OS Product, the Customer-Suit
Exception Also Applies, and Because the
Determination of Infringement Issues in Google's

6

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California Action "Would Likely Be Dispositive"
of the OEM Actions in Texas, the California
Action Takes Precedence 6
3.

Rockstar Is Based in Canada, Has No Essential
Witnesses in Texas, and Its Related Entity,
MobileStar, is a Sham Created to Dodge
Jurisdiction

7

The Private and Public Convenience Factors under
§ 1404 Favor Maintaining the Google Action in
California, Not Texas.

8

LG Moves to Stay or Transfer its Eastern District of
Texas Action to the Northern District of California

9

The District Court Ignores the Northern District of
California's Significant Holdings and Denies LG's
Motion to Stay or Transfer

10

4.

F.
G.

STANDARDS OF REVIEW

10

REASONS WHY THE WRIT SHOULD ISSUE

11

I. THE DISTRICT COURT CLEARLY ABUSED ITS
DISCRETION BY NOT GIVING PRECEDENCE TO
GOOGLE'S CALIFORNIA ACTION AND THE
SIGNIFICANT HOLDINGS OF THE CALIFORNIA COI= 11
A.

B.

The District Court Clearly Erred By Failing to Dismiss,
Transfer, or Stay Rockstar's Second-Filed Action
Against Google and By Basing Its Decision to Deny
LG's Motion to Stay or Transfer on its Erroneous Denial
of Google's Similar Motion to Stay or Transfer and
Google's Continued Presence in the Texas Case.

15

The District Court Clearly Erred By Failing to Follow the
California Court's Holdings that the Google California
Action Would Likely Be Dispositive of the LG action,
that the Customer-Suit Doctrine Also Applied, and that
the District Court Transfer or Stay the LG Action.

16

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II.

III.

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THE DISTRICT COURT CLEARLY ABUSED ITS
DISCRETION BY CONSIDERING THE OTHER ACTIONS
BEFORE IT, ALSO SUBJECT TO MOTIONS TO
TRANSFER, DEFEATING CONGRESS' PURPOSE IN THE
AIA

18

THE DISTRICT COURT CLEARLY ABUSED ITS
DISCRETION IN FINDING TEXAS TO BE THE MOST
CONVENIENT FORUM

21

A.

The District Court Clearly Erred by Crediting Rockstar's
Made-For-Litigation Office in Plano, Texas

22

The District Court Clearly Abused Its Discretion and
Ignored Precedent, Including Its Own, in Ruling on the §
1404 Factors

23

Cost of Attendance of Willing Witnesses

24

2.

Local Interest

26

3.

Compulsory Process

27

4.

C.

21

1.

B.

The District Court Clearly Erred By Failing to Defer to
The California Court's Convenience Factors Holdings
and By Failing to Analyze The Convenience Factors in
View of the Presumptive California Forum

Ease of Access to Sources of Proof

28

CONCLUSION

30

iv

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TABLE OF AUTHORITIES
Page(s)
Federal Cases

Affinity Labs of Texas v. Samsung Elecs. Co.,
968 F. Supp. 2d 852 (E.D. Tex. 2013)
In re EMC Corp.,
501 F. App'x 973 (Fed. Cir. 2013)

26, 27
20

Futurewei Techs., Inc. v. Acacia Research Corp.,
737 F.3d 704 (Fed. Cir. 2013)

12, 13

In re Genentech, Inc.,
566 F.3d 1338 (Fed. Cir. 2009)

22, 26

GeoTag, Inc. v. Starbucks Corp.,
No. 10 572, 2013 WL 890484 (E.D. Tex. Jan. 14, 2013)
-

In re Hoffmann La Roche Inc.,
587 F.3d 1333 (Fed. Cir. 2009)

21

-

26, 27

Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367 (Fed. Cir. 1986)

15

Lake Cherokee Hard Drive Techs., LLC v. Bass Computers, Inc.,
No. 10 216, 2012 WL 462956 (E.D. Tex. Feb. 13, 2012)

23

Mann Mfg, Inc. v. Hortex, Inc.,
439 F.2d 403 (5th Cir. 1971)

13

-

Merial Ltd. v. Cipla Ltd,
681 F.3d 1283 (Fed. Cir. 2012)
MHL Tek, LLC v. Nissan Motor Co.,
No. 07 289, 2009 WL 440627 (E.D. Tex. Feb. 23, 2009)
-

Micron Techs., Inc. v. Mosaid Techs., Inc.,
518 F.3d 897 (Fed. Cir. 2008)

13, 14
19
6, 21, 22

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Filed: 08/22/2014

In re Microsoft Corp.,
630 F.3d 1361 (Fed. Cir. 2011)

23

Minn. Mining and Mfg. Co. v. Norton Co.,
929 F.2d 670 (Fed. Cir. 1991)

10

In re Nintendo of Am.,
No. 14-132, 2014 WL 2889911 (Fed. Cir. 2009)

17,18

On Semiconductor Corp v. Hynix Semiconductor, Inc.,
No. 09-0390, 2010 WL 3855520 (E.D. Tex. Sep. 30, 2010)

28, 29

Save Power Ltd. v. Synteck Fin. Corp.,
121 F.3d 947 (5th Cir. 1997)

13, 17

Sawgrass Techs, Inc. v. Texas Original Graphics, Inc.,
Case No. 06-1190, 2007 U.S. App. Lexis 5084 (Fed. Cir. Mar. 2,
2007)

13, 15

Spread Spectrum Screening LLC v. Eastman Kodak Co.,
657 F.3d 1349 (Fed. Cir. 2011)
Sutter Corp. v. P&P Indus., Inc.,
125 F.3d 914 (5th Cir. 1997)

18
14, 15

In re TOA Techs, Inc.,
543 F. App'x 1006 (Fed. Cir. 2013)

26, 27, 30

Troy v. v. Samson Mfg. Corp.,
2013-1565, 2014 WL 3377125 (Fed. Cir. July 11, 2014)
In re TS Tech. USA Corp.,
551 F.3d 1315 (Fed. Cir. 2008)

27
10, 11

In re Volkswagen of Am., Inc.,
545 F.3d 304 (5th Cir. 2008) (en banc)
In re Volkswagen of Am., Inc.,
566 F.3d 1349 (Fed. Cir. 2009)

11, 26, 29, 30
20

West Gulf Maritime Assoc. v. ILA Deep Sea Local 24,
751 F.2d 721 (5th Cir. 1985)

vi

12, 13

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In re WMS Gaming,
No. 14-107, 2014 WL 1614530 (Fed. Cir. Apr. 23, 2014)

11

In re Zimmer Holdings, Inc.,
609 F.3d 1378 (Fed. Cir. 2010)

23

Federal Statutes

passim

28 U.S.C. § 1404

20

35 U.S.C. § 299

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RELIEF SOUGHT

LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
Mobilecomm USA Inc. (collectively "LG") respectfully petition for a writ of
mandamus directing the United States District Court for the Eastern District of
Texas ("EDTX" or "District Court") to vacate its order denying LG's motion to
stay or transfer, and to either stay this action until resolution of LG's supplier,
Google Inc.'s ("Google") action in the Northern District of California ("NDCA"
or "California Court") or to transfer this action to that court.
ISSUES PRESENTED

Did the District Court abuse its discretion by denying LG's motion to stay or
to transfer ("Motion") this action to the NDCA? Specifically:
1.

Did the District Court clearly abuse its discretion by failing to dismiss,

transfer, or stay Rockstar's EDTX case against Google after the NDCA held that
the NDCA action was the first-filed case and that it would retain its case
concerning the same patents, parties, and accused product and by premising the
District Court's denial of LG's Motion on its erroneous denial of Google's similar
motion to stay or transfer and Google's continued presence in the EDTX?
2.

Did the District Court clearly abuse its discretion by failing to transfer

this action to the NDCA or stay this action, after the NDCA held that it was the
first-filed case, that the Google California action would likely be dispositive of the

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LG action

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in the EDTX, that the customer-suit exception also applied to Google's

customers, and that the District Court could transfer or stay LG's case?
3. Did the District Court clearly abuse its discretion by failing to transfer
this action to the NDCA under § 1404 by not analyzing the convenience factors in
view of the precedence to be given Google's action in the NDCA forum, and by
considering other actions brought by Rockstar against Google's customers in the
EDTX, thus avoiding a full and fair consideration of LG's transfer motion?
SUMMARY OF ARGUMENT

The Google Android Operating System ("Android OS") supplied to LG
forms the basis under which Rockstar alleges infringement by LG and other mobile
device manufacturers in the EDTX. In order to eliminate the threat Rockstar's
claims pose, Google brought a declaratory action in the NDCA asserting that its
Android OS does not infringe the same patents asserted against Google's
customers in Texas. The Google NDCA action will proceed as the NDCA ruled
that it is the first-filed action, that the customer-suit exception also applies, and that
action will likely be dispositive of Rockstar's suits against Google's customers in
Texas. Instead of staying or transferring Rockstar's suit against LG, the District
Court clearly abused its discretion by ignoring the NDCA's holdings, violating
fundamental principles of judicial comity, and committing additional clear errors.
Accordingly, LG respectfully requests that this Court correct those clear errors.

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STATEMENT OF RELEVANT FACTS
A.

The Parties.
I.

Nortel, Rockstar, and MobileStar.

In its separate petition for writ of mandamus filed with this Court in Misc.
No. 2014-147 on August 14, 2014, Google sets out the relevant facts surrounding
Nortel's original ownership of the asserted patents, Rockstar's purchase of the
asserted patents through a bankruptcy auction process, and the transfer of selected
asserted patents to MobileStar. LG adopts those facts from Google's petition.
2.

LG.

LG Electronics Inc. is a Korean corporation whose principal offices are
located in Seoul, Korea. A559. LG Electronics U.S.A., Inc., a Delaware
corporation whose principal offices are in New Jersey, is a wholly-owned
subsidiary of LG Electronics, Inc.. A85. LG Electronics MobileComm U.S.A.,
Inc., a California corporation with its principal offices located in San Diego,
California, is a wholly-owned subsidiary of LG Electronics U.S.A., Inc. A80.
B.

Rockstar Files Actions Against LG and Other Google Customers
in Texas Based on Their Sale of Certain Mobile Devices
Incorporating Google's Android OS—But Does Not Sue Google
Itself

On October 31, 2013, Rockstar sued LG in the EDTX for infringement of
seven patents: U.S. Patent Nos. 5,838,551; 6,037,937; 6,128,298; 6,333,973;
6,463,131; 6,765,591; and 6,937,572 (the "patents-in-suit."). A2, A57. Rockstar

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alleges that LG infringes the patents-in-suit by "making, using, selling and offering
to sell . . . certain mobile communication devices having a version (or an adaption
thereof) of Android operating system

[sic] ('LG Mobile Communication

Devices.')." A2, A57, A562. By Rockstar's express definition, the only accused
LG mobile devices are devices using the Android OS. Id. LG is an Original
Equipment Manufacturer ("OEM") of mobile devices incorporating the Android
OS. A57, A80-1. LG sells other mobile devices that do not incorporate the
Android OS, but those devices are not accused in this case. A57, A81.
Rockstar also filed six other separate suits in the EDTX against other OEMs,
alleging infringement of the same patents-in-suit by ASUS, Huawei, HTC,
Pantech, Samsung and ZTE. A2, A14, A24, A57. The actions against LG and the
other OEMs (the "OEM actions") each allege infringement by mobile devices
incorporating the Android OS. Id Observers immediately viewed these actions as
an attack on the Android OS and Google. A29. But Rockstar did not sue Google
directly; instead it moved to attack only Google's customers—makers of devices
using Google's Android OS. A29, A31-3. Rockstar could have sued Google when
it sued the other OEMs in Texas and asserted that Google infringed the same
patents by selling the same product, but opted not to. A2, A24, A31-3, A57.
C.

Google Files Suit in the Northern District of California to Protect
Its Android OS Customers Including LG

Even though Google was not a named defendant, Rockstar's actions accused
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Google's Android OS. A2, A14, A24, A57. Accordingly, on December 23, 2013,
Google, the developer of the Android OS, filed an action against Rockstar in the
NDCA seeking a declaratory judgment that its Android OS does not infringe the
same seven patents that Rockstar had previously asserted against the OEM
defendants. A2, A24, A31-4, A57. Google's complaint is not limited to any
version of the Android OS, or to use of the Android OS in any particular device.
Instead, Google's complaint requests a declaration that no version of the Android
OS infringes the patents-in-suit. Id.
Only after Google brought its action in the NDCA, did Rockstar amend its
complaint against Samsung to include allegations of infringement against Google
on the patents-in-suit. A14-5, A32-3, A40, A57. Thus, in both California and
Texas, Rockstar now asserts that Google infringes the very same patents by
making the very same products. A2, A14-5, A31-4, A40, A57.
D. Rockstar Moves to Dismiss or to Transfer Google's Action in the
Northern District of California to the Eastern District of Texas

On January 23, 2014, Rockstar moved to dismiss or to transfer Google's
California action. Al 1 . Rockstar first argued that the NDCA lacked personal
jurisdiction over its subsidiary, MobileStar. A17-30. Second, Rockstar argued that
the court should dismiss Google's action against Rockstar as second-filed. A30-4.
Third, Rockstar argued that the § 1404 convenience factors favored transferring
Google's action to Texas. A34-8.
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E.

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The Northern District of California Denies Rockstar's Motion to
Dismiss or to Transfer and Issues Significant Holdings Highly
Relevant To LG's Motion to Stay or Transfer.

On April 17, 2014, the NDCA denied Rockstar's motion to dismiss or to
transfer. A11-38. In so ruling, Judge Wilken, the Chief Judge of the NDCA, made
several holdings that were highly relevant to the motion to stay or transfer filed by
LG's supplier, Google, in the EDTX, and LG's similar Motion.
I.

Google's California Action, Not Rockstar's Texas Action
Against Google's Customer Samsung in Texas, Was FirstFiled.

The NDCA agreed that the "court of the actual first-filed case should rule on
motions to dismiss or transfer based on exceptions to the first-to-file rule or on the
convenience factors." A33 (quoting Micron Techs., Inc. v. Mosaid Techs., Inc.,
518 F.3d 897, 904 (Fed. Cir. 2008).) Rockstar argued that its OEM action against
Google's customer Samsung (but not Google initially) was first-filed because it
involved "substantially the same parties" as implicated in Google's California
action. However, the NDCA held that Google's action was first-filed. A33-34.
2.

LG is a Customer of Google With Respect to the Accused
Android OS Product, the Customer-Suit Exception Also
Applies, and Because the Determination of Infringement
Issues in Google's California Action "Would Likely Be
Dispositive" of the OEM Actions in Texas, the California
Action Takes Precedence.

The NDCA held that "Google's Android products" are "the target of
[Rockstar's] infringement action." A35. Consequently, the NDCA concluded that

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"the relationship between Google and [LG] is one of manufacturer and customer"
and that even if the OEM actions in Texas were considered first-filed instead of the
Google California action, "the customer-suit exception to the first-to-file rule
would apply." A34. The NDCA further held that:
Because the determination of the infringement issues here would
likely be dispositive of the other [OEM] cases, and the
manufacturer presumably has a greater interest in defending
against charges of patent infringement than the customers, the
present suit takes precedence. (A34.)

In discussing Google's customers, such as LG, and how the convenience of
the NDCA extended to third-party witness Apple, based on Apple's unique and
critical knowledge, the NDCA held there was a "direct link" between Apple and
Rockstar's actions against Google and its customers. A28. Observing that Apple
contributed $2.6 billion, or 58% of the $4.5 billion paid by Rockstar Bidco (a
consortium consisting of Apple, Microsoft, RIM, Ericcson, Sony and EMC) (A27),
the NDCA noted that Rockstar's strategy of suing Google's customers "is
consistent with Apple's particular business interests." A29. The NDCA held that
Rockstar limited its infringement claims in the EDTX "to Android-operating
devices only" and, noted, "[t]his 'scare the customer and run' tactic advances
Apple's interest in interfering with Google's Android business." A29.
3.

Rockstar Is Based in Canada, Has No Essential Witnesses in
Texas, and Its Related Entity, MobileStar, is a Sham
Created to Dodge Jurisdiction.

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The NDCA also held that: (1) Rockstar's "primary operations and
headquarters are in Canada"; (2) Rockstar's "nerve center,' or the place where its
'officers direct, control, and coordinate the corporation's activities,' thus appears to
be in Ottawa, Canada"; (3) Rockstar's "operations appear to be based in Canada,
not Texas"; (4) Rockstar "could not name any witnesses in Texas essential to the
suit"; and (5) "although [Rockstar] claim[s] to have substantial ties to Texas, [its]
headquarters appear to be in Canada." A13, A35, A37. The NDCA also held that
"the circumstances here strongly suggest that Rockstar formed MobileStar as a
sham entity for the sole purpose of avoiding jurisdiction" outside Texas. A19.
4.

The Private and Public Convenience Factors under § 1404
Favor Maintaining the Google Action in California, Not
Texas.

The NDCA found the § 1404 factors favored the NDCA, not the EDTX.
A34-8. Noting that the "convenience and availability of witnesses is 'probably the
single most important factor' in the transfer analysis," the NDCA held this "factor
favors California because Google's Android products, the target of this
infringement action, were designed and created here," because "[m]any of the
witnesses who can testify to the design and development of the accused Android
platform's features reside near Google's headquarters in Mountain View,
California," and, finally, that lo]ther witnesses, such as the inventors of the
patents-in-suit, are likely to be in Canada." A25. The NDCA also held that "much

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of the evidence is here. Some of the evidence may be in Canada or other states;
however, that does not make Texas the more convenient forum." A38. The
NDCA found that the NDCA itself "has the greater interest in this litigation
because the claims here will 'call into question the work and reputation of several
individuals residing in or conducting business in this community.' A37.
Considering all of the § 1404 factors, the NDCA held that the litigation between
Google and Rockstar should proceed in the NDCA, not in the EDTX. A38.
F.

LG Moves to Stay or Transfer its Eastern District of Texas Action
to the Northern District of California

On March 25, 2014—while this case was still in its infancy, before the
parties had engaged in any discovery, and long before LG's Answer was due—LG
moved to stay or transfer its action from the EDTX to the NDCA. A50-73. LG's
Motion explained that because the identical seven patents and Google Android OS
at issue in Google's California action were also at issue in Rockstar's Texas
infringement action against LG, LG's case should be stayed pending resolution of
Google's California action or transferred to the NDCA. Id. LG sought to stay the
EDTX action on two grounds: (1) the Court's inherent authority; and (2) the
"customer-suit" exception. A58-63. LG alternatively requested that the District
Court transfer the Texas LG action to the NDCA, arguing that the factors under 28
U.S.C. § 1404, weighed heavily in favor of the NDCA. A63-71.

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G. The District Court Ignores the Northern District of California's
Significant Holdings and Denies LG's Motion to Stay or Transfer.
On

July 30, 2014, more than four months after LG filed its Motion, the

District Court denied LG's Motion. A1-10. The District Court agreed that
Rockstar accused only LG's "Android-based phones" of infringing the patents-insuit (A2), and acknowledged that Google had filed a declaratory action in the
NDCA "seeking a judgment that the Android [OS] does not infringe the patents at
issue in [LG's] case" (Id.). In its previous denial of LG's supplier, Google's
motion, the District Court confirmed that it was aware that the NDCA "issued an
opinion denying Rockstar's motion to dismiss, finding that the California action
was the first filed between Rockstar and Google" (A40), yet ignored the NDCA's
significant holdings in both its denial of LG's and Google's motions.
STANDARDS 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). An abuse of discretion occurs when:
"(1) the court's decision was clearly unreasonable, arbitrary, or fanciful; (2) the
decision was based on an erroneous conclusion of law; (3) the court's findings
were clearly erroneous; or (4) the record contains no evidence upon which the
court rationally could base its decision." Minn. Mining and Mfg. Co. v. Norton
Co., 929 F.2d 670, 673 (Fed. Cir. 1991). "If the district court clearly abused its
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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).
The Fifth Circuit has not addressed the standard of review for district court
decisions involving comity issues after a sister court has accepted jurisdiction of a
first-filed patent action, but has noted that its comity precedent "severely limit[s]
the district court's discretion." West Gulf Maritime Assoc. v. ILA Deep Sea Local
24, 751 F.2d 721, 729 n.2 (5th Cir. 1985). "[Moth this Court and the Fifth Circuit
have made clear that a motion to transfer venue pursuant to § 1404(a) should be
granted if the movant demonstrates that the transferee venue is clearly more
convenient." In re WMS Gaming, No. 14-107, 2014 WL 1614530, at 2 (Fed. Cir.
Apr. 23, 2014)(quoting Van Dusen v. Barrack, 376 U.S. 612, 616 (1964) and In re
Radmax, 720 F.3d 285, 288 (5th Cir. 2013)).
REASONS WHY THE WRIT SHOULD ISSUE
I. THE DISTRICT COURT CLEARLY ABUSED ITS DISCRETION BY
NOT GIVING PRECEDENCE TO GOOGLE'S CALIFORNIA
ACTION AND THE SIGNIFICANT HOLDINGS OF THE
CALIFORNIA COURT.

The District Court clearly erred by failing to give precedence to the decision
by the California Court hearing the declaratory judgment action involving LG's
supplier (Google), Rockstar, and the same seven patents and Google Android OS
at issue in LG's action. The NDCA decided to retain Google's action under the
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first-filed doctrine and the customer suit exception. A33-4. Based on the first-filed
doctrine and principles of judicial comity aimed at conserving judicial resources,
comprehensively disposing of litigation, and avoiding duplication, the District
Court should have dismissed, transferred, or stayed Rockstar's action against
Google in the EDTX. Furthermore, in its decision denying LG's Motion, the
District Court should not have considered and relied upon its earlier, erroneous
denial of Google's motion and that Google remained in Texas based on that denial.
The District Court should also have transferred or stayed Rockstar's action
against LG based on the California Court's holdings that the Google California
action would likely be dispositive of the LG action, that LG was a customer of
Google with respect to the accused Android OS, that the customer-suit exception
also applied, and that the District Court could transfer or stay the LG action.
The NDCA held that its action was first filed and, in any event, "the
relationship between Google and [LG] is one of manufacturer and customer," so
"the determination of the infringement issues here would likely be dispositive of
the other cases." A34. Accordingly, under controlling law, Google's suit in
California and the California Court's holdings take precedence. "The federal
courts long have recognized that the principle of comity requires federal district
courts . . . to exercise care to avoid interference with each other's affairs."

West

Gulf, 751 F.2d at 728-29 (5th Cir. 1985); See also Futurewei Techs., Inc. v. Acacia

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Research Corp., 737 F.3d 704, 708 (Fed. Cir. 2013) (the "first-to-file' rule exists
to 'avoid conflicting decisions and promote judicial efficiency").
In order to "avoid the waste of duplication, to avoid rulings which may
trench upon the authority of sister courts, and to avoid piecemeal resolution of
issues that call for a uniform result," a district court should dismiss, transfer, or
stay a later filed action where most of the issues presented can be resolved in the
first-filed action. West Gulf 751 F.2d at 729 n. 1; See also Merial Ltd v. Opla
Ltd, 681 F.3d 1283, 1299 (Fed. Cir. 2012) ("Under the first-to-file rule, a district
court may choose to stay, transfer, or dismiss a duplicative later-filed action."). 1
The Fifth Circuit has held that once the first-filed court determination has
been made, the first-filed court—and not the second-filed court—is exclusively
responsible for determining whether later-filed cases should proceed:
Once the likelihood of substantial overlap between the two suits had
been demonstrated, it [is] no longer up to the [second filed court] to
resolve the question of whether both should be allowed to proceed. . .
• the ultimate determination of whether there actually [is] a substantial
overlap requiring consolidation . . . belonged to the [first filed court].
(Mann Mfg., Inc. v. Hortex, Inc., 439 F.2d 403, 408 (5th Cir. 1971); See also Save
Power Ltd. v. Synteck Fin. Corp., 121 F.3d 947, 950 (5th Cir. 1997) ("the court in
See also Sawgrass Techs, Inc. v. Texas Original Graphics, Inc., Case No. 061190, 2007 U.S. App. Lexis 5084, *7-*9 (Fed. Cir. Mar. 2, 2007) (upholding
district court's transfer order stating "the 'first-to-file' rule proposes that when an
action involving the same parties and issues has already been filed in a different
federal district, the court may either transfer, stay, or dismiss the second suit.")
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which an action is first filed is the appropriate court to determine whether
subsequently filed cases involving substantially similar issues should proceed.").
Thus, the first-filed court is responsible for deciding whether the second-filed case
should be dismissed, stayed, or transferred. Sutter Corp. v. P&P Indus., Inc., 125
F.3d 914, 920 (5th Cir. 1997) ("[T]he 'first to file rule' not only determines which
court may decide the merits of substantially similar issues, but also establishes
which court may decide whether the second suit filed must be dismissed, stayed or
transferred and consolidated.") This Court agrees: "Under the first-to-file rule, a
district court may choose to stay, transfer, or dismiss a duplicative later-filed
action." Merial Ltd. v. Opla Ltd, 681 F.3d at 1299.
The District Court compounded these errors by (1) proceeding to evaluate
the transfer and stay issues raised by LG—without recognizing that the case
involving LG's supplier, Google, was first-filed and also subject to the customersuit doctrine, (2) by disregarding the NDCA's specific holdings, and (3) by
ignoring fundamental principles of judicial comity. 2

In ignoring the first-filed California Court's significant holdings, the District
Court took inconsistent positions that further highlight that it clearly erred in
denying LG's motion to stay or transfer. For example, the District Court found
that Rockstar's cases before it "will present common issues of claim construction
and damages, and (most likely) validity" (A9), while simultaneously finding that
Rockstar's claims against Google in California will not "dispose of key issues in
this case and the other related Rockstar litigations" (A4). These findings are polar
opposites. According to the District Court, Rockstar's claims against ASUS, HTC,
LG, Pantech and ZTE are so similar to its claims against Google (in Texas) that
2

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A. The District Court Clearly Erred By Failing to Dismiss, Transfer,
or Stay Rockstar's Second-Filed Action Against Google and By
Basing Its Decision to Deny LG's Motion to Stay or Transfer on
its Erroneous Denial of Google's Similar Motion to Stay or
Transfer and Google's Continued Presence in the Texas Case.

The NDCA held that it was the first-filed action between Rockstar and
Google (A33-4) and that its action takes precedence, but stopped short of directing
the District Court to dismiss, transfer, or stay Rockstar's action against Google in
the EDTX. See Sutter Corp., 125 F.3d at 920; Sawgrass Techs, Inc., 2007 U.S.
App. Lexis 5084 at *7-*9. Instead, the NDCA left it up to the District Court to
dismiss, transfer, or stay Rockstar's Google action in Texas.
The District Court did confirm that the NDCA "issued an opinion denying
Rockstar's motion to dismiss, finding that the California action was the first filed
between Rockstar and Google," but ignored the NDCA's holdings in denying
Google's motion to stay or transfer. A40. Its refusal to dismiss, transfer, or stay
Rockstar's action against Google was clear error because it: (1) defeated the
purpose of the first-filed rule, i.e., to avoid conflicting rulings and duplicative
litigation, and (2) ignored fundamental principles of judicial comity. The District

they present significant common issues, but Rockstar's claims against Google (in
California) are so different from its claims against Google (in Texas) that they will
not resolve "major issues." A4, A9. If the first statement is true, the second
cannot be. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375
(Fed. Cir. 1986) (reversing ruling by district court depending on "internally
inconsistent" findings).

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Court's reliance on its denial of Google's motion and the fact that Rockstar's
action against Google, the supplier of the accused product to LG, improperly
remained pending in the EDTX to support its denial of LG's Motion was also
clearly erroneous and infected the District Court's entire decision. A2, A6, A9.
B.

The District Court Clearly Erred By Failing to Follow the
California Court's Holdings that the Google California Action
Would Likely Be Dispositive of the LG action, that the CustomerSuit Doctrine Also Applied, and that the District Court Could
Transfer or Stay the LG Action.

The California Court also held "because the determination of the
infringement issues here would likely be dispositive of the other [OEM] cases, and
the manufacturer presumably has a greater interest in defending against charges of
patent infringement than the customers, the present suit takes precedence." A34.
In line with that holding, the NDCA held that "Google's Android products" are
"the target of [Rockstar's] infringement action" and that "the relationship between
Google and [LG] is one of manufacturer and customer." A34-5. Accordingly, even
if Google's suit against Rockstar had not been found to be first-filed, "the
customer-suit exception to the first-to-file rule would apply." A34. Finally, the
California Court further held that "The [LG Action] might not and need not be
transferred here. [It] might be stayed in Texas and be reopened upon completion
of this suit, which likely will resolve some of the infringement issues there. If the
Texas actions are transferred here, they can be consolidated with this case at least

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for pretrial purposes." A36.
The District Court clearly erred by failing to consider, much less follow the
first-filed California Court's holdings that: (1) the customer-suit doctrine applies;
and (2) LG's action may be transferred to the NDCA or stayed. A34, A36. Under
controlling law, the NDCA was responsible for making these holdings and the
District Court should have followed them instead of issuing its own, unsupported,
and conflicting findings. Save Power, 121 F.3d at 950 ("the court in which an
action is first filed is the appropriate court to determine whether subsequently filed
cases involving substantially similar issues should proceed.").
Notably, the NDCA's customer-suit doctrine holding is consistent with this
Court's decisions discussing the doctrine. The NDCA noted that Rockstar asserts
six of the seven patents-in-suit against Android OS, which Google designed and
developed—and, even on its hardware patent, Rockstar limited its "infringement
claims to Android-operating devices only." A29, A34. Rockstar's infringement
contentions to LG assert only source code that comes from Google's Android
Open Source Project or the open-source Linux kernel. A61-3, A80-81, A93-94,
A133-222. These contentions expressly claim that Google's Android OS code can
show infringement by all of the accused devices from LG. A133-222.
This Court has repeatedly held that a manufacturer suit takes precedence. In
re Nintendo of Am., No. 14-132, 2014 WL 2889911, *2 (Fed. Cir. 2009) ("When a

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patent owner files

Document: 2-1 Page: 26 Filed: 08/22/2014

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 takes precedence."); see also Spread Spectrum
Screening LLC v. Eastman Kodak Co., 657 F.3d 1349, 1357 (Fed. Cir. 2011)
("Generally speaking, courts apply the customer suit exception to stay earlier-filed
litigation against a customer while a later-filed case involving the manufacturer
proceeds in another forum."). Further, "the manufacturer's case 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 suits."
Spread Spectrum , 657 F.3d at 1358 (citing Katz, 909 F.2d at 1464); Nintendo of
Am., 2014 WL 2889911, at *2 ("although there may be additional issues involving
the defendants in the customer action, their prosecution will be advanced if the
plaintiff is successful on the major premises being litigated in the manufacturer
litigation, and may well be mooted if the plaintiff is unsuccessful.").
As the NDCA held here, the California Google action has the potential to
resolve all of the issues—not only the "major issues." A34. The District Court's
failure to abide by the California Court's decisions and follow judicial comity
principles aimed at avoiding duplicative litigations constitutes clear error.
II. THE DISTRICT COURT CLEARLY ABUSED ITS DISCRETION BY
CONSIDERING THE OTHER ACTIONS BEFORE IT, ALSO
SUBJECT TO MOTIONS TO TRANSFER, DEFEATING
CONGRESS' PURPOSE IN THE AIA
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The District Court clearly erred by considering, in its discussion of judicial
economy, Rockstar's OEM actions against other defendants in Texas, each of
which had sought transfer to the NDCA. A2, A8-9. Congress meant to prohibit
precisely this possibility in passing the America Invents Act, Pub. L. No. 112-29,
Sep. 16, 2011. A primary purpose of the MA's was to curtail litigation tactics
Congress found abusive. H.R. Rep. 113-279, 18. One such mechanism was the
bulk filing of actions in one district, a tactic employed most often in the EDTX.
David 0. Taylor, PATENT MISJOINDER, 88 N.Y.U. L. Rev. 652, 690 (2013). These
actions were often "anchored" in the plaintiff's chosen venue, as multiple
defendants' documents were spread around the country, causing the plaintiff s
chosen court to conclude it was as good a venue as any and deny transfer for that
reason. Id.; see, e.g., MHL Tek, LLC v. Nissan Motor Co., No. 07-289, 2009 WL
440627, at *4 (E.D. Tex. Feb. 23, 2009) (denying transfer with "many defendants"
where "party witnesses will come from all over the globe").
To address this concern, Congress in the AIA mandated more stringent
joinder rules. 35 U.S.C. § 299. This rule stopped plaintiffs from filing multidefendant cases in a chosen district. See Tracie L. Bryant, The America Invents
Act: Slaying Trolls, Limiting Joinder, 25 HARV. J.L. & TECH. 687, 703 (2012). The

District Court clearly erred by allowing precisely the result Congress sought to
prohibit. In considering LG's Motion, the District Court, in a section entitled

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"Other Practical Problems," noted that "There are six Rockstar litigations currently
proceeding in the [EDTX], each suit alleging violations of the same patents. The
Court has already consolidated these cases for all pre-trial purposes save venue."
Based on those statements, the District Court found that considerations of "judicial
economy" "weigh against a transfer." 3 A8-9. Although the defendants in those
cases had already filed their own motions to transfer, and the District Court had
notably chosen not to consolidate the actions for venue purposes, the District Court
ignored those motions, simply assuming that all actions would remain before it.
Id. Since then, the District Court has denied all of defendant's motions to transfer.
This was grave error. The District Court created a self-fulfilling prophecy,
denying transfer of each action because of the others pending before it, and thus
never fairly considered LG's Motion. The District Court's bootstrapping denials
violated not only the AIA, but also this Court's rule that courts cannot "properly
rely on judicial economy involved in retaining the very cases that were the subject
of the transfer motion."

In re EMC Corp., 501 F. App'x 973, 976 (Fed. Cir.

2013). The District Court let Rockstar do what Congress intended the AIA to
stop—litigate in its preferred district simply by suing many defendants. As the
EDTX has previously acknowledged, the law does not allow this:

The District Court cited In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed.
Cir. 2009)—a pre-AIA case—in support of its finding. A9.
3

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The Court will not permit the existence of separately filed cases to sway its
transfer analysis. Otherwise, a plaintiff could manipulate venue by serially
filing cases within a single district. Allowing a plaintiff to manufacture
venue based on this alone would undermine the principles underpinning
transfer law and the recently enacted America Invents Act.
GeoTag, Inc. v. Starbucks Corp., No. 10-572, 2013 WL 890484, at *6 (E.D. Tex.

Jan. 14, 2013). The District Court's significant mistake constitutes clear error.
III. THE DISTRICT COURT CLEARLY ABUSED ITS DISCRETION IN
FINDING TEXAS TO BE THE MOST CONVENIENT FORUM
A. The District Court Clearly Erred By Failing to Defer to The
California Court's Convenience Factors Holdings and By Failing
to Analyze The Convenience Factors in View of the Presumptive
California Forum.

The District Court also clearly erred in failing to defer to the first-filed
court's holding that California was the more convenient forum for the action
between LG's supplier, Google, and Rockstar, and by not considering that holding
in its denial of LG's Motion. The NDCA held that the "court of the actual firstfiled case should rule on motions to dismiss or transfer based on the convenience
factors." A34-5.
As further instructed by Micron Techs., the NDCA determined whether "an
exception to the general rule giving preference" to the California action was
merited. A34-5. After analyzing the § 1404 factors, the NDCA concluded, that the
relevant factors favor the NDCA. A34-8. Thus, the M)CA had already performed
a full transfer analysis under § 1404(a) and held, that the NDCA was the
presumptive forum for LG's supplier's action against Rockstar.
21

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Techs., 518 F.2d at 904 ("The general rule favors the forum of the first-filed
action.")4
The District Court ignored the NDCA's holding that California is the more
convenient forum for the action brought by LG's supplier, Google against
Rockstar, much less its analysis of the convenience factors. Instead, as shown
below the District Court seemingly went out of its way to avoid the convenience of
the California forum, giving undue weight to inaccurate facts and drawing
unreasonable inferences from the evidence.
B. The District Court Clearly Erred by Crediting Rockstar's MadeFor-Litigation Office in Plano, Texas

Notwithstanding the NDCA's holdings that Rockstar has no presence in
Texas (see E (3), supra), the District Court's order denying transfer relied heavily
on Rockstar's satellite office in Plano, Texas. E.g., A6, A8. But it was clear error
to credit this office at all, which Rockstar established solely to bolster its venue
Specifically, 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, favors the NDCA—and not the EDTX. A35; In re
Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009). The NDCA held that
"Google's Android products, the target of this infringement action, were designed
and created here [in the Northern District]. Many of the witnesses who can testify
to the design and development of the accused Android platform's features reside
near Google's headquarters in Mountain View, California." A35. Further, Apple,
the majority shareholder of Rockstar, is in the Northern District of California.
A27. 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. See A27-8.
4

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claims, because courts cannot credit "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); see also
In re Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010).
As further discussed in Google's writ, Misc. No. 2014-147, which LG
incorporates, Rockstar's presence in Plano, Texas is entirely an artifact of litigation
and the District Court did not address the facts submitted on this point. When
examined, however, Rockstar's rationale for its satellite office in Plano quickly
collapses and, as the EDTX has previously acknowledged, following Zimmer and
Microsoft "it is the Court's duty to carefully scrutinize" party assertions supporting
venue claims, "to determine whether the party is trying to manipulate venue
through its place of incorporation or principal place of business." Lake Cherokee
Hard Drive Techs., LLC v. Bass Computers, Inc., No. 10 - 216, 2012 WL 462956, at
*3 (E.D. Tex. Feb. 13, 2012). The District Court here failed to "carefully
scrutinize" Rockstar's claim, accepting without question its unsupported
assertions, and ignoring the NDCA's holding that Rockstar's actual headquarters is
in Ottawa, Canada. A13. The District Court's ruling depends on the Plano
facility, so this clear error requires reversal. A6, A8.
C. The District Court Clearly Abused Its Discretion and Ignored
Precedent, Including Its Own, in Ruling on the § 1404 Factors
After improperly crediting Rockstar's office in Plano and disregarding that

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the California Court had determined California was the preferred forum for LG's
supplier's suit against Rockstar, the District Court also committed clear error in
evaluating the convenience favors and denying transfer.
1.

Cost of Attendance of Willing Witnesses

LG primarily relied on the location of Google's witnesses but also
referenced and incorporated LG's witnesses to support its Motion. A64-7, A80-3,
A85-6, A95. In its denial of Google's motion, the District Court found that "Many
of the Google employees who work on the Android operating system are located in
or near the [NDCA]" and that "Google employees from northern California would
face substantial costs in traveling to the [EDTX] for trial." A45. Likewise, in its
denial of LG's Motion, the District Court acknowledged that LG argued that
Google witnesses would testify as willing witnesses and found that "LG employees
from San Diego and San Jose would face somewhat lower costs in traveling to the
NDCA rather than the [EDTX]." A8. Further, the District Court noted that this
was a "critical" or "key" factor in the District Court's analysis. Id. Despite these
findings, the District Court found this factor "weighs slightly against transfer" as
transfer would "merely redistribute the inconvenience of travel among parties." Id.
To reach this conclusion, however, the District Court made several clear
errors. First, the District Court noted that "Rockstar has identified several potential
witnesses who work at its Plano office"—in fact, exactly three—but did not note

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that Google had identified several hundred Android engineers who work in the San
Francisco Bay Area nor did it note that LG had identified several Google and LG
employees in California. A64-7, A80-3, A85-6, A95. Google and LG did even
more than that. Google's unchallenged declaration established that Mountain
View is the "strategic center of Google's business," housing not only Hiroshi
Lockheimer, Vice President of Engineering for Android, but also the vast majority
of Android employees in his group. A64, A958-60. Similarly, the District Court
found that LG made "no particular assertions about its likely witnesses,"
disregarding LG's unchallenged declarations listing numerous LG witnesses in
California. A80-3. Second, in reaching its determination and despite
acknowledging that LG had argued that Google's witnesses were willing witnesses
and should be considered, the District Court only referenced LG's witnesses in its
determination that there would be a redistribution of inconvenience—it failed to
address Google's witnesses. A8. It was thus clear error to conclude that "if the
court were to transfer this case, roughly equivalent costs would be imposed on
Rockstar's witnesses"—because, on the record before it, substantially more
witnesses would travel from Google (and LG) than from Rockstar. A64-7, A80-3,
A85-6, A95, A957-60. Notably, elsewhere the District Court acknowledged in its
denial of Google's and LG's motion that "the bulk of the relevant evidence in this
action will come from Google [and LG]"—but, erroneously, not while discussing

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this factor. A5, A43. Third, the District Court clearly erred in concluding that
travel to the EDTX would be only marginally more inconvenient than travel to
California for foreign witnesses located in Korea. A8.
2.

Local Interest

The District Court found that the local interest factor was neutral (A9),
further erring by ignoring binding precedent finding strong local interest where an
accused product was designed "because the cause of action calls into question the
work and reputation of several individuals residing in or near that district and who
presumably conduct business in that community." In re Hoffmann-La Roche Inc.,
587 F.3d 1333, 1336 (Fed. Cir. 2009); see also, e.g., In re TOA Techs, Inc., 543 F.
App'x 1006, 1010 (Fed. Cir. 2013) ("significant interest in trying this case in a
venue in which the accused product was designed"). As this Court found in
Hoffmann-La Roche, ignoring this interest is an abuse of discretion:
The district court also disregarded Volkswagen and Genentech in
holding that the [transferee district] had no more of a local interest in
deciding this matter than the Eastern District of Texas. While the sale
of an accused product offered nationwide does not give rise to a
substantial interest in any single venue, if there are significant
connections between a particular venue and the events that gave rise
to a suit, this factor should be weighed in that venue's favor.
587 F.3d at 1338 (citations omitted). Following these cases, the EDTX previously
acknowledged that the "[NDCA] has an interest in protecting intellectual property
rights that stem from research and development in Silicon Valley." Affinity Labs

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of Texas v. Samsung Elecs. Co., 968 F. Supp. 2d 852, 855 (E.D. Tex. 2013). Here,
however, the District Court ignored these cases, finding instead only "a
predisposition toward one party" to which it accorded "no weight in its analysis."
A9. This was clear legal error. If this Court felt that the local interests it identified
were in fact mere jury bias, it would not have ruled as it did in Hoffmann-La Roche
or TOA.

The District Court thus improperly overrode this Court's decisions,

although they were directly on point—clear error mandating reversal. E.g, Troy v.
v. Samson Mfg. Corp., 2013-1565, 2014 WL 3377125, at *3 (Fed. Cir. July 11,
2014) ("Indeed, lower courts are bound not only by the holdings of higher courts'
decisions but also by their 'mode of analysis.'").
3.

Compulsory Process

As the District Court found, this factor primarily concerns "witnesses for
whom compulsory process to attend trial might be necessary." A6. Google (and
LG) listed four types of such witnesses residing in the NDCA and thus subject to
process there, but not in the EDTX: Apple employees, at least one named
inventor, prior artists, and former Android employees. A7-8, A68-69, A96-7. Of
these, Apple witnesses are the most important; as the NDCA held, "Google
demonstrates a direct link between Apple's unique business interests, separate and
apart from mere profitmaking, and Defendants' actions against Google and its
customers." A28. The District Court did not address any of these points, noting

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only that "the Court views Google's asserted interest in Apple's testimony with
some skepticism." A7 Again, this was error; as the NDCA noted, "Google and
Apple's rivalry in the smartphone industry is well-documented," and Rockstar's
"litigation strategy of suing Google's customers in the [OEM] actions is consistent
with Apple's particular business interests." A29. LG presented evidence showing
Apple's importance to this action, and Rockstar presented no contrary evidence; it
was clear error for the District Court to dismiss Apple's uniquely important role, as
well as the NDCA's findings on this point. Concluding that "one inventor's
presence in the [NDCA] weighs in favor of transfer, but is counterbalanced by the
presence of several non-party witnesses in Texas," the District Court erroneously
found this factor to be neutral (A7), when it weighed in favor of transfer.
4.

Ease of Access to Sources of Proof

Despite acknowledging it "likely that the bulk of the relevant evidence in
this action will come from Google" based in Mountain View, California, in its
denial of Google's motion and also finding the same in its denial of LG's Motion
(A5, A43), the District Court found this factor to weigh against transfer. A5-6.
This too was clear error, resting on an abrogation of the District Court's prior
cases. This factor turns on "which party, usually the accused infringer, will most
probably have the greater volume of documents relevant to the litigation and their
presumed location in relation to the transferee and transferor venues."

28

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Semiconductor Corp v. Hynix Semiconductor, Inc.,

No. 09-0390, 2010 WL

3855520, at *2 (E.D. Tex. Sep. 30, 2010) (citing Volkswagen, 545 F.3d at 314-15).
Even if relevant documents are "spread throughout the country and world,"
this factor still favors transfer to the NDCA when it is closer to most of defendants'
documents because, "typically in a patent case, the defendant has the majority of
relevant documents." Id. at *4. In this action, however, the District Court refused
to conclude that Google's and LG's relevant documents were in Mountain View,
San Jose, and San Diego (A5-6, A43, A67-8, A80-83,A95-6)—cities located in the
NDCA and California—but assumed, without any evidence, that Rockstar's patentrelated documents were stored in Plano, Texas. A5-6. The District Court erred by
inconsistently presuming Rockstar's patent documents were in Plano, Texas, but
not presuming Google's and LG's relevant documents were in California. A5-6.
As further discussed in Google's writ, Misc. No. 2014-147, which LG
incorporates, the District Court compounded its error by failing to credit Google's
declarations and focused on other statements in the same declarations. From the
other statements the District Court came to an erroneous conclusion and failed to
credit the separate, unchallenged statement that "records regarding Google's
Android platform are also predominantly based in Mountain View [California]."
Likewise, the District Court failed to credit LG's unchallenged declarations stating
that the only relevant documents were located in California, and no relevant

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documents were located in Texas. A80-3, A85-6. The District Court compounded
this error by fully crediting Rockstar's declaration, which stated only that
unspecified and unnumbered "hard drives" and "boxes of hard copy documents"
were in Plano. A284. It was clear error for the District Court to credit Rockstar's
statement that some unidentified documents were in Plano, while refusing to credit
LG's much clearer statements that any Android OS records are with Google, which
is "predominantly based in Mountain View [California]" (A67-8, A95-6, A957-60)
or in LG's possession in San Jose or San Diego, California. Id., A80-83. 5
CONCLUSION

Based upon the foregoing, LG respectfully requests that this Court issue a
writ of mandamus directing to the United States District Court for the EDTX to
vacate its order denying transfer or stay of this action, and to transfer this action to
the NDCA or, stay this action until resolution of Google's action in the NDCA.

Finally, the Court again compounded its error by ruling that, "Because modern
document production is done electronically, there is no practical difference
between the burden of producing documents from the Southern District of
California to the NDCA and that of producing them to the [EDTX]." A5. This
ruling ignores law from this Court and the Fifth Circuit stating that, even when
some electronic evidence is widely accessible, "this does not negate the
significance of having trial closer to where [moving party] TOA's physical
documents and employee notebooks are located." TOA, 543 F. App'x at 1010; see
also Volkswagen, 545 F.3d at 316.
5

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Respectfully submitted,

DATED: August 21, 2014
Ric
e i ey G. Mote
James J. Lukas, Jr.
GREENBERG TRAURIG, LLP
77 West Wacker Drive, Suite 3100
Chicago, Illinois 60601
Telephone: [phone]
Facsimile: (312) 456-843

Attorneys for Petitioners LG Electronics,
Inc., LG Electronics U.S.A., Inc., and LG
Electronics MobileComm USA Inc.

31

Case: 14-150

Document: 2-1 Page: 40 Filed: 08/22/2014

ADDENDUM

Case: 14-150

Document: 2-1 Page: 41 Filed: 08/22/2014

TABLE OF CONTENTS
TO ADDENDUM

Memorandum Opinion and Order, Dkt. 44, Filed 7/30/14

Al

Order Denying Motion to Dismiss or, In the Alternative,
To Transfer, Dkt. 58, Filed 4/17/14

A 11

Memorandum Opinion and Order, Dkt. 70, Filed 7/1/14

A39

Case 2:13-catt#139BIZEG DennuenIn442-EilecPW19424 Filge:138f21202lejelD #: 1530

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP, AND §
MOBILESTAR TECHOLOGIES, LLC,
§ CASE NO. 2:13-CV-00894-JRG
Plaint
§ LEAD CASE
v.
§ CASE NO. 2:13-CV-00898-JRG
LG ELECTRONICS, INC., et al,
§ MEMBER CASE
Defendants.

MEMORANDUM OPINION AND ORDER

Before the Court is Defendants LG Electronics, Inc.'s, LG Electronics U.S.A., Inc.'s, and
LG Electronics Mobilecomm USA Inc.'s (collectively, "LG") Motion to Transfer (Dkt. No. 35),
filed March 25, 2014. For the reasons set forth below, the Court finds that the motion should be
DENIED.
I.

BACKGROUND AND PROCEDURAL HISTORY

Plaintiffs Rockstar Consortium US LP, Inc. and Mobilestar Technologies, LLC are
entities arising out of the demise of Nortel, a Canadian telecommunications company with a
substantial patent portfolio. When Nortel confronted bankruptcy in 2011, it held an auction for
its patents. Five major technology companies—Apple, Blackberry, Ericsson, Microsoft, and
Sony—pooled their resources into Rockstar Bidco LP for the purpose of purchasing the Nortel
patent portfolio at auction (Dkt. No. 38-8). Rockstar Bidco LP then transferred the patents in suit
here to the Rockstar Consortium US LP, a Delaware limited partnership with its headquarters in
1

Al

Case 2:13-cetita8981.4613 Dilammaiatnt42-EHecR14604B4 Rig€1:2:16taDaedrplD #: 1531

Plano, Texas and one of the plaintiffs in this case. Id Rockstar Consortium US LP subsequently
created a wholly-owned subsidiary, MobileStar Technologies, LLC, to which it assigned five of
the seven patents-in-suit. Id. Meanwhile, Rockstar Consortium Inc. was formed as a vehicle to
hire certain of Nortel's former employees. Id Rockstar Consortium US LP contracts with
Rockstar Consortium, Inc. for "intellectual-property-support services." Id.
Rockstar Consortium US LP, Inc. and MobileStar Technologies, LLC (hereinafter,
collectively, "Rockstar") filed this suit against LG on October 31, 2013, alleging that LG
infringes seven of Rockstar's patents, accusing certain mobile phones using a version of Google,
Inc.'s ("Google") Android operating system (Dkt. No. 1). On the same day, Rockstar separately
sued six other mobile phone manufacturers, again accusing Android-based phones.
On December 23, 2013, Google filed an action for declaratory relief in the United States
Court for the Northern District of California (NDCA), seeking a judgment that the Android
operating system does not infringe the patents at issue in this case. Google Inc. v. Rockstar
Consortium US. LP, No. C-13-5933-CW (Dkt. No. 1). On July 1, 2014, this Court denied a

motion in a related case to stay the case pending resolution of the Google case or to transfer that
case to the NDCA (Case No. 2:13-CV-00894-JRG, Dkt. No. 122).
In this motion, LG asks the Court to stay the case pending resolution of the NDCA suit.
In the alternative, LG asks the Court to transfer this case to the NDCA.
II. LEGAL STANDARDS
"The district court has the inherent power to control its own docket, including the power
to stay proceedings." Soverain Software LLC v. Amazon.com , Inc., 356 F. Supp. 2d 660, 662
(E.D. Tex. 2005). In deciding whether to stay litigation, courts typically consider "(1) whether a
stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party; (2)
2

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whether a stay will simplify the issues in question and trial of the case; and (3) whether

discovery is complete and whether a trial date has been set. Id.
When cases between the same parties present the same issues for resolution, the general
rule favors the first-filed action. Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 904
(Fed. Cir. 2008). However, "trial courts have discretion to make exceptions to this general rule in
the interest of justice or expediency . . . . These exceptions are not rare." Id In particular,
"'litigation against or brought by the manufacturer of infringing goods takes precedence over a
suit by the patent owner against customers of the manufacturer.' Spread Spectrum Screening
LLC v. Eastman Kodak Co., 657 F.3d 1349, 1357 (Fed. Cir. 2011) (quoting Katz v. Lear Siegler,
Inc., 909 f.2d 1459, 1464 (Fed. Cir. 1990)).
28 U.S.C. section 1404(a) provides that "fflor 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." The first inquiry when analyzing a case's eligibility
for 1404(a) transfer is "whether the judicial district to which transfer is sought would have been a
district in which the claim could have been filed." In re Volkswagen AG, 371 F.3d 201, 203 (5th
Cir. 2004) (Volkswagen I).
Once that threshold is met, the movant has the burden of proving that the transferee
venue is "clearly more convenient" than the transferor venue.

In re Nintendo, 589 F.3d 1194,

1200 (Fed. Cir. 2009); In re TS Tech, 551 F.3d 1315, 1319 (Fed. Cir. 2008); In re Volkswagen of
Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (Volkswagen I1). In this regard, courts analyze both
public and private factors relating to the convenience of parties and witnesses as well as the
interests of particular venues in hearing the case. See Nintendo, 589 F.3d at 1198; TS Tech, 551
F.3d at 1319. The private factors include: (1) the relative ease of access to sources of proof; (2)
3

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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. Nintendo, 589 F.3d at 1198; TS Tech, 551 F.3d at 1319;
Volkswagen I, 371 F.3d at 203. The public factors include: (1) the administrative difficulties
flowing from court congestion; (2) the local interest in having localized interests 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 in the application of foreign law.
Nintendo, 589 F.3d at 1198; TS Tech, 551 F.3d at 1319; Volkswagen I, 371 F.3d at 203. Though
the private and public factors apply to most transfer cases, "they are not necessarily exhaustive or
exclusive," and no single factor is dispositive. Volkswagen II, 545 F.3d at 314-15.
ILI. STAY

LG suggests that the Court stay proceedings in this case pending resolution of the Google
litigation in the Northern District of California. The Court does not expect the current California
litigation to dispose of key issues in this case and the other related Rockstar litigations. See
Spread Spectrum, 657 F.3d at1358. Though the patents-in-suit in the Texas litigations are the
same, the suits' accused products are importantly different. Though each of the accused products
uses some version of Android, a product driven primarily by Google, each defendant mobile
phone manufacturer modifies and customizes the Android system to its own particular purposes
(Dkt. No. 39-7). It is by no means clear, then, that resolving infringement issues as to Android
proper will resolve issues relating to other manufacturers' various implementations of the
Android system. These specialized implementations place these suits far outside of the usual
"customer suit" exemption from the first-filed rule. See Spread Spectrum, 657 F.3d at 1358.

4

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The Texas litigations also present issues relating to each phone manufacturer's devices
and hardware, as the California litigation does not. One of the patents-in-suit claims only
hardware (Dkt. No. 39-5). Rockstar alleges that the other patents-in-suit cover the interaction of
the parties' Android implementations with hardware (Dkt. No. 1). Thus, only if the patents are
invalidated completely in the California court will major issues in the Texas cases be resolved.
LG's request for a stay, then, should be denied.
IV.

TRANSFER

A. Availability of the Transferee Venue
The parties agree that this suit could originally have been brought in the Northern District
of California. The LG subsidiary responsible for importing and selling the accused products
maintains its headquarters in San Diego, California. LG also maintains an office in San Jose,
California, in the NDCA. Accordingly, the case could have been brought in the Northern District
of California. See In re Genentech, Inc., 566 F.3d 1338, 1346 (Fed. Cir. 2009).
B. Private Interest Factors
1. Relative Ease of Access to Sources of Proof
This being a patent case, it is likely that the bulk of the relevant evidence in this action
will come from LG. See In re Genentech, 566 F.3d at 1345. LG avers that "Rflocuments and
records relating to LG-branded Android Products, such as sales agreements, marketing
documents and marketing strategy reports, are either physically present or electronically
accessible at the San Diego office" in the Southern District of California (Dkt. No. 34-13).
Because modern document production is done electronically, there is no practical difference
between the burden of producing documents from the Southern District of California to the
NDCA and that of producing them to the Eastern District of Texas. Furthermore, LG's affidavit
5

A5

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in support of this motion pointedly does not make firm representations about the physical
locations of its data (Dkt. No. 36). Rockstar, in contrast, avers that documentary evidence
relating to the patents-in-suit is stored at its Plano, Texas headquarters—within the Eastern
District of Texas (Dkt. No. 38-8). LG also suggests that Google retains documentary evidence at
its headquarters in Mountain View, California, but the Court has already rejected that claim as
insufficiently supported by evidence (Case No. 2:13-CV-00894-JRG, Dkt. No. 122).
The evidence supports the conclusion that a substantial body of relevant evidence exists
in or near the Eastern District of Texas. The location of LG's documentary evidence is unclear,
and, to the extent that the data is in San Diego, that data would be insubstantially more difficult
to produce in this Court than the NDCA. The Court thus finds that this factor weighs against
transfer. The Court notes, however, that given the ease in the modern era of transferring
electronic data from one place to another, this factor weighs only slightly in its decision.
2. AvailabiliO, of Compulsory Process
Under Federal Rule of Civil Procedure 45 (as recently amended), this Court may enforce
a subpoena issued to any nonparty witness in the State of Texas to appear at trial, provided the
party does not incur substantial expense. Fed. R. Civ. P. 45(c)(1)(B). Similarly, the Court may
enforce any subpoena for a deposition to be taken within its boundaries, provided that the
deposition is taken no more than 100 miles from a location where the person resides, is
employed, or regularly transacts business in person. See id. at (a)(2), (c)(1)(A), (d)(3)(a);
Ingeniador, LLC v. Adobe Systems Inc., 2014 WL 105106, No. 2:12-cv-805-JRG (E.D. Tex. Jan.
9, 2014). Rule 45, however, makes compulsory process for deposition effectively nationwide.
Moreover, party witnesses do not require compulsory process for trial and are not given much

6

A6

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weight in this factor. See Ingeniador, supra. Rather, the focus of this factor is on witnesses for
whom compulsory process to attend trial might be necessary.
LG suggests that the case will require compulsory process for Google and Apple, Inc.
witnesses and documents in or near Mountain View, California, and Cupertino, California,
respectively. "kit least one named inventor resides in the [NDCA] . . . and dozens of relevant
prior artists of record live in the [NDCM" (Dkt. No. 35, at 13).
LG does not, however, identify any particular nonparty witnesses who are expected to
testify at trial. Nor does the Court give particular credence to the assertion that prior artists will
be called to testify; this Court has previously noted that "inventors of prior art rarely, if ever,
actually testify at trial." PersonalWeb Techs., LLC v. Target Brands, Inc., No. 6:11-cv-655-LED,
Dkt. No. 74, at 15 n.13 (E.D. Tex. Mar. 21, 2013). Finally, though the Court views LG's asserted
interest in Apple's testimony with some skepticism, it notes that other Rockstar parents—notably
Ericsson and Blackberry—maintain U.S. headquarters in Texas (Dkt. Nos. 39-12, 39-13).
In contrast, Rockstar identifies two prosecuting attorneys and two former Nortel
employees, in or near the Eastern District of Texas whom it suggests might be called to testify
(Dkt. No. 37, at 11-12). It also suggests that LG customers such as AT&T and Verizon might be
called to prove damages. Id. The Court is not convinced that any of these witnesses will likely be
called to testify, but their appearance in the case is at least plausible.
Weighing all considerations of available compulsory process, the Court finds that this
factor is neutral. One inventor's presence in the Northern District of California weighs in favor
of transfer, but is counterbalanced by the presence of several potential nonparty witnesses in
Texas.

7

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3. Cost of Attendance for Willing Witnesses

The cost of attendance for willing witnesses is another key factor in the Court's analysis.
LG argues that its employees in San Jose, California and San Diego, California, will be relevant,
but makes no particular assertions about its likely witnesses.' LG also suggests that Google
witnesses from the Northern District of California would testify as willing witnesses at trial (Dkt.
No. 35, at 9). Rockstar's headquarters is in Plano, Texas, and Rockstar has identified several
potential witnesses who work at its Plano office (Dkt. No. 35, at 7-8).
LG employees from San Diego and San Jose would face somewhat lower costs in
traveling to the NDCA rather than the Eastern District of Texas for trial. However, if the court
were to transfer this case, roughly equivalent costs would be imposed on Rockstar's witnesses.
LG witnesses located overseas, by contrast, will be subjected to substantial costs in either venue.
Transferring this case would, at best, merely redistribute the inconvenience of travel
among the parties; at worst, a transfer might substantially increase the cost of attendance for
willing witnesses. Cf Thomas Swan & Co., Ltd. v. Finisar Corp., 2014 WL 47343, No. 2:13-cv178-JRG (E.D. Tex. Jan. 6, 2014). Having considered the evidence, the Court finds that this
factor weighs slightly against transfer.
4. Other Practical Problems

In this case, where multiple and parallel litigations in two different jurisdictions are
contemplated, judicial economy weighs heavily in the Court's transfer analysis. See In re

The Court notes that neither of LG's two US-based entities appear to design or manufacture the
accused products. Common sense suggests that some LG witnesses might be traveling from
overseas, which would make travel to this Court only marginally more inconvenient for those
witnesses than a trip to the NDCA.
8

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Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009). These considerations weigh
against a transfer.
There are six Rockstar litigations currently proceeding in the Eastern District of Texas,
each suit alleging violations of the same patents. The Court has already consolidated these cases
for all pre-trial purposes save venue (Dkt. No. 32). The cases will present common issues of
claim construction and damages, and (most likely) validity.
C. Public Interest Factors
1. Local Interest
LG argues that "the [NDCA] has an interest in protecting intellectual property rights that
stem from research and development in Silicon Valley' (Dkt. No. 35, at 14 (quoting AffiniO,
Labs of Texas v. Samsung Elecs. Co., Ltd, No. 12-CV-557-RC (E.D. Tex. Sept. 18, 2013))).
Rockstar also suggests that its location in the Eastern District of Texas should lead the Court to
find a specialized local interest in resolving the case (Dkt. No. 37, at 14-15). 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. See Ingeniador, 2014 WL 105106, at *3-4. A
predisposition toward one party, independent of the merits of the case, cannot be the kind of
"local interest" cognized by the federal rules, and this Court gives this consideration no weight in
its analysis. The Court finds that this factor is neutral.
2. Other Public Interest Factors
Both parties wee that other public interest factors are neutral. The Court sees no reason
to disagree with this conclusion.

9

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Having considered all appropriate factors, the Court finds that LG has not shown that it
would be clearly more convenient to transfer this case to the Northern District of California.
LG's request for a transfer must therefore be denied.
V.

CONCLUSION

The Court finds that a stay of proceedings would not serve the interests of justice,
because major issues in this case and other pending cases will likely remain even after the
California litigation is resolved. The Court also finds that the Northern District of California is
not clearly a more convenient venue for this case.
Having considered the matter carefully, the Court finds that Defendants' motion (Dkt.
No. 35) should be and hereby is DENIED.

10

A10

CRastilizetE15933;MmEataibn5EagEtIonzurtim 04864112Gr1z28

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

2.

4
5
6.
7
8
9

No. C 13-5933 CW

GOOGLE INC.,

ORDER DENYING.
MOTION TO DISMISS
OR, IN THE
ALTERNATIVE, TO.
TRANSFER

Plaintiff,
V

.

ROCKSTAR CONSORTIUM U.S. LP,
MOBILESTAR TECHNOLOGIES, LLC,

(Docket No. 20)
Defendants.

10'
11 .
1.2
13H
14
.15:

Google Inc. filed this declaratory jUdgment action for non-

infringement of seven patents owned by Defendants Rockstar
Consortium U.S. LP (Rockstar) and MobileStar Technologies, LLC
(.MobileStar). Defendants now move to dismiss or, in the
alternative, to transfer the: actioh tO the Eastern District of

Texas, where tile action could be consolidated with several other
1:&
19
20
21
22
23!
24
25
26.
27

actions filed by Detendant8 against Googlers ctstomers. Google
opposes the motion or, in the alternative, requests jurisdictional
diSCovery. The Cotrt held otal atgument on March 13, 2014. After
considering the papets and the atguments of counsel, the Court

DENIES the motion to disMisS or tranSfer.
BACKGROUND
GOogie is a corpOration lOcated in Mountain View, California.
Docket No, 1 ¶ 2. Google produces the Android mobile platform, an
open-source Operating system that is used by many original
equipment manufacturers around the world. Id, at 1[5 1 - 2.

28

All

Cent lizeftgE93DIUMmlantilhientRagreilfs104/Flitel: OBffliki2Gti28

NOrtel NetWOrks was a proMinent Canadian telecOmmuniCations
2 provider headquartered in Ottawa, Canada.
-

See Madigan Decl-, Exs.

3

1-2. Nortel had offices throughout. the - - united StateS, including

4

one in Santa Clara, California. See id„ Ex. 2. On. January 14,

5

2009, NOrtel filed for bankruptcY.

6

court ordered an auction of Nortel's patent licensing operations,

7

including a portfolio of over 6,000 patents "spanning wireless,

8

wireless 40, data networking, optical, voice, internet, sOrvice

Id., Exs. 3-4. The bankruptcy

9 provider, semiconductors" and many other aspects of
10

telecommunications and Internet search. Id., EXs, 4-6. Around.

11

the same time, five of the World's largest technology companies

12 Apple, Microsoft, Research in Motion, Sony, and Ericsson -13

jointly created and funded an entity Called "Rockstar Bidco LP," a

14

Delaware limited liability partnership, See id., Exs. 7-8, Apple .

15

cOntributed approxiMately$2.6 million to Rockstar Bidca. Id.,

16 Ex, 9 at 34, Both GOogie arid. Rockstar Bid•Co bid on the Nortel
17 patent licensing opetation at the June 2011 aUction, but ROCkstar
18

Bidco ultimately prevailed with a bid, of $',4.5 billion. Id„

19

Ex. 7.

20

Rockstar Bidco transferred around 2,000 patents to its

21

ownets, with at leaSt 1,147' going to Apple. Id,, EXs. 7, 14.

22

Rockstar Bidco then reorganized itself into Rockstar, a Delaware-

23

limited partnership which claims a principal place of business in

24
25
26
27
28

Al2

1334atUE933:X3kilimbott&tntRagEilfferimmer. 0113W3GtiA28

Plano, Texas.

Id., Exs. 7, 15. 1 Led by former Nortel executive

2

and current Rockstar CEO John Veschi, Nortel's patent portfolio

3

and licensing team of about forty employees immediately moved to

4

Rockstar. Id., Exs. 10-12. Rockstar's CFO and CTO had also been

5

executives at Nortel. Id. Veschi and the rest of his team remain

6

in Nortel's old headquarters in Ottawa, Canada.

7

According to its own website, Rockstar produces no products, but

8

operates a "patent licensing business that owns and manages a

9

portfolio of more than 4,000 patents developed by" Nortel. Id.,

10

Id., Ex. 12.

Ex. 13.

11

Q

12

contractor in California who provides Rockstar with "licensing

13

consulting services." Dean Decl. ¶ 34. In Rockstar organization

14

charts appearing in a news article to which Rockstar contributed

15

and which it featured on its own website, Wilson was named as a

16

tc,2
073
wec4°

Rockstar has worked with Mark Wilson, an independent

"licensing executive" in senior management. Madigan Decl., Exs.

17

12-13. This suggestion of an emPloYee relationship has now been

18

deleted from the website and Wilson has removed "Rockstar

19

Consortium" from his professional profile.

°)
<1.0

a

E
Z
0

See id., Exs. 12-13,

21
22
23
24
25
26
27
28

Although Defendants assert that they both have principal
places of business in Texas, theY have not named any executives or
employees who reside or work there. Rockstar's website and the
declaration of Afzal Dean, Rockstar Vice President and President
of MobileStar, identifies officers and board members who represent
both Defendants and who are almcst all based in Canada, except one
in Colorado- See, generally, Dean Decl; see also Madigan Decl.,
Exs. 10, 19, 23. Rockstar's "nerve center," or the place where
its "officers direct, control, and coordinate the corporation's
activities," thus appears to be in Ottawa, Canada. Hertz Corp. v.
Friend, 559 U.S. 77, 92-93 (2010).
1

A13

Cent 224etE11933D6tAbmamt&tnt5PagrediEd04/Flitel: 019t2Ata1se28

1

37. Defendants assert that Wilaon's patent licensing dUtie8 do

2

not encompass enforcement of the patents-in-suit.

3

On October 30, 2013, Rockstar created MObileStar, a Wholly-

4

owned subsidiary and Delaware limited liability corporation

5

claiming a principal place of business in Plano, Texas.

6

Decl. I 5. A day later, on October 31, 2013, Defendants filed

7

suit in the- Eastern District of Texas against ASUS, HTC, Huawei,

8

LG, Pantech, Samsung, and ZTE, alleging each company' infringes

9

seVen patents: U.S. Patent Nos. 6,037,937 (the '937 . patent),

Dean

10

6,463,131 (the '131 patent), 6,765,591 (the 1 591 patent),

11

5,838,551 (the '551 patent), 6,128,298 (the

12

6,33 3,973 (the '973 patent), and 6,937,572 (the '572 patent). (the

13

Halloween actions). In each of the_ Halloween actionS, Rockstar

14

and Mobile$tar alleged infringement by "certain mobile

15

cOmmunication devices having - a Version '(or adaptation thereof) of

16

Android operating system,' whieh i8 developed by Google. See: Dean

17

Decl„ EXs. A-H. ROCkStar Owns tWo Of the. seven patents-in-suit

18

and transferred the remaining five patent$ to MobileStar shortly

19

before filing litigation, but retained an exclusive license to

20

those patents. See Dean Deel. II 5, 15, 24.

1-298 patent),

21

On December 23, 2013, Google filed the present aetion in the

22

Northern District of California. In this action, Google seeks a .

23

declaration that its Android platform and products (the Nexus 5,

24

Nexus 7, and Nexus 10) do not infringe the seven patents held by

25

Defendant8 tbat were asserted in the Halloween actions. See

26

Docket No. 1.

27
28

On December 31, 2013, Defendants respended with a. NeW Year's
Eve amendment to one of the Halloween, actions to include
4

A14

Cent ibletall933:;CiglAmDatatlibnt5BagEdEd04/Facid 018tiginatz28

1

allegations that Google infringes three of the asserted patents at

2

issue in this case: the 1 937,

3

Samsung, Case No. 13-0900 (S.D. Tex.), Docket No. 19. Defendants

4

did not, however, assert that Google infringed the four additional

5

patents at issue in the Halloween actions and in this case: the

6

'551,

7

Defendants moved to amend their complaint in the Texas case to

8

allege that Google infringed these four additional patents. Case

9

No. 13-0900, Docket Nos. 45-46.

1 298,

12
13

1 973, and 1 572 patents.

Rockstar V.

See id. On March 10, 2014,

LEGAL STANDARDS

10
11

1 131, and '591 patents.

Under Rule 12(b)M of the Federal Rules of Civil Procedure,
a defendant may move to dismiss for lack of PerSonal jurisdiction.
In a declaratory action for non - infringement, because the

14

jurisdictional issue is intimately connected with substance of

15

patent laws, Federal Circuit law aPPlies.

16

Corp. v. Aten Int'l Co, Ltd 552 F.3d 1324, 1328 (Fed. Cir.

17

2008).

Avocent Huntsville

18

Where the court decides the personal jurisdiction question

19

based on affidavits and other written materials, and without an

20

evidentiary hearing, a plaintiff need only make a prima facie

21

showing that a defendant is subject to personal jurisdiction-

22

Nuance Commc'ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1231

23

(Fed. Cir. 2010); Electronics For Imaging, Ind. v. Coyle, 340 F.3d

24

1344, 1349 (Fed. Cir. 2003). Uncontroverted allegations in the

25

complaint must be taken as true. Id. If both the plaintiff and

26

the defendant submit admissible evidence, conflicts in the

27

evidence must be resolved in the plaintiff's favor.

28

A15

Trintec

Catet133,^025125933)6thimbiataftntRagreilEcr4/FittlEt

oespoa1e28

1

Indus., Inc. v. Pedre Promotional Products, Inc., 395 F.3d 1275,

2

1282 (Fed, Cir. 2005).

3

There are two independent limitations on a court's power to

4

exercise personal jurisdiction over a non-resident defendant: the

5

applicable state personal jurisdiction rule and constitutional

6 principles of due process.

Electronics For Imaging, Inc., 340

7

F.3d at 1349. Because California's jurisdictional statute is co-

8

extensive with federal due process requirements, jurisdictional

9

inquiries under state law and federal due process standards merge

10
11

into one analysis. IdThe "constitutional touchstone" for the exercise of personal

12

jurisdiction "remains whether the defendant purposefully

13

established minimum contacts" in the forum state such that

14

"maintenance of the suit does not offend traditional notions of

15

fair play and substantial justice."

Burger King Corp. v.

16 Rudzewicz, 471 U.S. 462, 474 (1985); Int'l Shoe Co. v. Washington,
17

326 U.S. 310, 316 (1945) .== Although the application of this

18

doctrine has evolved to keep pace with the increasingly national

19

and international nature of modern business affairs, the Supreme

20

Court has repeatedly stressed that there must always be "some act

21

by which the defendant purposefully avails itself of the privilege

22

of conducting activities within the forum state, thus invoking the

23

benefits and protections of its laws."

24

552 F.3d at 1329 (quoting Hanson v. Denckla, 357 U.S. 235, 253

25

(1958)). "This purposeful availm.ent requirement ensures that a

26

defendant will not be haled into a jurisdiction solely as a result

27

of random, fortuitous, or attenuated contacts, or of the

28
6

A16

Avocent Huntsville Corp.,

CillastialzoNE5933:4MmigotafibntMagRIELE04/Elitat. Oetfp211428

unilateral activity of another patty or a third perSon." Id.
2
3

(quoting Burger King Corp., 471 U.S. at 475).
Per8Onal jurisdiction may be either general or Specific-

4

General, jurisdiction exists when the defendant maintains

5

"Continuous and: syStematiC" contacts With the forum state, even if

6

the cause of action is unrelated to , those contacts. Helieopteros

7

Nacionales de Colombia, S.A, v. Ha ll, 466 U.S. 408, 415-16 (1984).

8

Specific jurisdiction is satisfied where the defendant has

9

"purposefully directed his activities at residents of the forum,

10

and the litigation results from alleged injuries that 'arise out

11

of or relate to' those activities

12

at 472.

13

I. Personal Jurisdiction over Rockstar through MobileStar

14

Burger King Cotp., 471 U.S.

As a preliminary matter, Defendants argue that jurisdiction

15

OVer RO:ckstar and MObileStar shOuld be assessed independently

16

beCause they arp separate corporate entities. Google disagrees,

17

cOntending that Rockstar's Qontacts: Should be impUted to

18

MobileStar,

19

The Court must begin from "the general rule that the

20

corporate entity should be recognized and upheld, unless specifiC,

21

utUSual circumstandes call fOr an eXception." 3D Sys., Inc. v.

22

Aarotech Labs„ Inc., 160 F.3d 1373, 1380 (Fed. Cir. 1998). One

23

exception is where the parent and subsidiary are not really

24

separate entities and are alter egos of each other. Doe v. Unocal

25

Corp., 248 F.3d 915, 926 (9th Cir. 2001); see als0 Panjaq, S.A. v.

26

Pathe Commc'ns corp., 979 F,2d 772, 775 (9th cit. 1992) (finding

27: that many courts have discuSsed whether a parent's citizenship can
28

be imputed to the subsidiary- and recognized that it can where the
7

A17

COEcatiNetg6933Xittlimigrotilhitnt9liagreile104/Fili121: 018t2Glite28

ego

1

Sub8idiary is the alter

2

this exception where the plaintiff makes a prima facie case. that

3

(1) there is a unity of interest and ownership suth that the

4

separate personalities of the two entities no longer exist and

5

(2)failure tO disregard the separate identities "would result in

6

fraud or injustice."

of the parent). Courts have invoked

Doe, 248 F.3d at 926.

7

In a similar Situation, the Federal Circuit found that the

8

parent-subsidiary relationship between a parent company and its-

9

wholly-owned subsidiary holding coMpany justified imputing the

10

parent company's California contacts to the- subsidiary.

11

•

12
13
14
15
16
17
18
19
20
21
22

Dainippon

creen Mfg. Co., Ltd. v, CFMT t Inc.., 142 F,3d 1266, 1271 (Fed.

Cir. 1998), The court observed:
Stripped to its essentials, CFM contends that a parent
company can incorporate a holding company in another state,
transfer its patents to the holding company, arrange to have
those patents licensed back to itself by virtue of its
complete control over the holding company, and threaten its
competitors with infringement without fear of being a
declaratory judgment defendant, save perhaps in the state of
incorporation of the holding company. This argument
qualifies for one of our "chutzpah" awards. See Refac Int'l,
Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1584, 38 USPQ2d 1665,
1671 (Fed. Cir. 1996); Checkpoint Sys., Inc. v. United States
Int'l Trade Comm'n, 54 F.3d 756, 763 n. 7, 35 USPQ2d 1042,
1048 n.7 (Fed. Cir. 1995) (noting that "chutzpah" describes
"the behavior of a person who kills his parents and pleads
for the court's mercy on the ground of being an orphan").
Id. (reversing district court's findihg that it lacked personal

23

jurisdiction beCause Of CFMT, the newly - forMed sUbsidiary). With
24
25
26

these observation8 in Mind, the Federal Circuit determined that it
would be "reasonable and fair" to find jurisdiction over both CFM

27

and CFMT because of their parent-subsidiary relationship. Id.

28

The court reasoned that, while a "patent holding snbidiary is a
8

A18

Ciaitst 134315E593DeliteimBott2TItntRagEileDf04/Elltel: 013t49KitaL28

1

legitimate creature . . . , it cannot fairly be used to insulate

2

patent owners from defending declaratory judgment actions in those

3

fora where its parent company operates under the patent and

4

engages in activities sufficient to create, personal jurisdiction

5

and declaratory judgment jurisdiction." Id. 2

6

The facts in this case are- at least as strong as those, in
7
8
9

Dainippon. As in Dainippon, MobileStar here had some contact with
the forum state: it met with Google in California to attempt to

10 negotiate a license. See id. ("Moreover, CFMT's attempts to
11

negotiation a sublicense with. Dainippon - in California further

12

strengthen CFMT's contacts With that state.")

13

fundamentally / as in DainiPpOn, the circumstances here strongly

14

More.

suggest that Rockstar formed MobileStar as a sham entity for the

15

sole purpose of avoiding jurisdiction in all other fora except
16
17

MobileStar's state of incorporatdon (Delaware) and claimed

18

principal place of business: (Texas). A mete day before it

19

initiated litigation against Googlefs customers, Rockstar freshly

20 minted MobileStar, with no California ContactS, and assigned the
21

2 Defendants initially attempted to argue that Dainipponrs
22 holding was based "first and foremost" on its determination "that
the subsidiary itself had minimum contacts with the forum, and
23 those contacts (not the parent'S contacts). justified the
imposition of personal jurisdiction," insinuating - the test was
24
dicta. Defendants' Reply at 3 Omternal qUotation marks and
25 italics. omittedl. Eowever, Defendants latex conceded that
DainiPpon stood for the proposition that one valid ground for
26 setting aside corporate formalities for purposes of assessing the
interests of fair play and substantial justice was if the
27 defendants engaged in "a deliberate attempt to manipulate
jurisdiction." Id. at 4.
28

9

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1

1;11

@UCOtbf128

asserted patents to that subsidiary. Dean Decl. ¶ 15. Other

2

evidence suggesting MobileStar maintains no independent identity

3

is the fact that all MobileStar employees also work fOr Rockstar.

4

MobileStar has three officers (President Afzal Dean, Vice

5

President Chad Hilyard, and Corporate Secretary Mika Dunleavy) and

6

one board member (Director of the . Board John Veschi); all serve: on

7

8
9

Rockstar's board as well.

Dean Decl. ¶ 10. MobileStar

purportedly operates out of the same office suite listed for

10

Rockstar. Dean Decl. ¶1 5, 15. AlthOugh Rockstar asserts that

11

"there is no hint whatsoever of any . manipulation" and. that

12

"MobileStar was created for legitimate reasons haVing nothing to

13

do with personal jurisdiction," Rotkstar doeS not actUally provide

14

any evidence supporting this point. Defendants' Reply at 4.

15

Because' the evidence presented sapPorts GoOgle's allegation. that
16
17
18

Rockstar created MObileStar solely to dodge jurisdiction,

the

traditional notions of fair play and justice would not be offended

19

if the Court considers the two entities jointly for purposes of

20

jurisdiction and imputes Rockstar' - s tontaCts to the forum state - to

21

MobileStar. 3

22
23
24
25
26
27
28

Cf. In re Microsoft, 630 F.3d 1361, 1364-65 (Fed. Cir.
2011) (for purposes of a motion to transfer, ignoring the impact
of litigation-driven incorporation under the laws of Texas, which
occurred sixteen days before filing suit); In re Zimmer Holdings,
Inc., 609 F.3d at 1381 (rejecting connections to Texas as "recent,
ephemeral, and an artifact of litigation").
3

10

A20

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1
2

II.

ge20d428

General Jurisdiction

General, or 'all-purpose" personal jurisdiction, subjects a

3

defendant to suit in a forum only where a defendant's contacts

4

with that forum "are so continuous and systematic as to render

5

them essentially at home in the forum State." Daimler AG v.

6
7

Bauman, 134 S. Ct. 746, 754 (2014) (quoting Goodyear Dunlop Tires
Operations, S.A. v. Brown, 131 S. Ct. 2846, 2851 (2011)). The

8

"paradigm bases for general jurisdiction" for a corporation are
9
10
11
12

its place of incorporation and principal place of business. Id.
at 760.
Both Rockstar and MobileStar are incorporated in Delaware and

13

claim to have principal places of business in Plano, Texas. Dean

14

Decl. ¶ 5, 15. Neither Defendant is licensed to do business in

15

California, nor do they own real or personal property, pay taxes,

16

maintain offices, or file lawsuits in California. Dean Decl.
17
18
19

11 6-9, 16, 22-24, 29 - 33.
Google nevertheless contends that Rockstar has stepPed in the

20

shoes of its predecessor. Nortel, and assumed its jurisdictional

21

position. 4 Although Nortel was a Canadian company, it maintained

22
23

See Doe, 248 F.3d at 926 (explaining requirements for alter
ego theory and agency theory for imputing contacts of one
24
corporation to another). See also Katzir's Floor & Home Design,
25 Inc. v. M-MLS.com , 394 F.3d 1143, 1150 (9th Cir. 2004) ("The
general rule of successor liability is that a corporation that
26 purchases all of •he assets of another corporation is not liable
for the former corporation's liabilities unless, among other
27 theories, the purchasing corporation is a mere continuation of the
selling corporation.").
4

28

11

A21

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g@tafJ6428

its primary United States campus in Santa Clara and designated a
2

registered agent for service of process in California. See

3

Madigan Decl., Exs. 3, 27. Nortel routinely brought suits and

4

defended them in California. See, e.g., Times Networks, Inc.

5

Nortel Networks Corp., Case No. 06-00532 (N.D. Cal.) and Nortel

6

Networks Inc. v. State Bd. of Equalization, 191 Cal. App. 4th 1259

7

(2011).
8
9

Google does not allege that Rockstar maintained. Nortel's

10

Santa Clara presence in California. Google contends instead that,

11

although the bulk of Rockstar's employees operate out of Canada,

12

Rockstar nevertheless pursues a significant patent licensing

13

business aimed at the technology industry in the Silicon Valley,

14

in California. As Rockstar has stated on many occasions to the

15

Press and others, Rockstar is exclusively "a patent licensing
16•
17
18

business" and operates by reverse-engineering products on the
market and proposing that the companies which offer those products

19

purchase licenses. Madigan Decl., Ex. 7, 13; Dean Decl. ¶91 18-21.

20

Rockstar does not currently sell any products; commercialization

21

of its significant patent portfolio is its only business. Because

22

the Silicon Valley technology industry is Rockstar's main target,

23

as acknowledged by Rockstar's CEO, Rockstar naturally would have

24

to come into constant contact with the forum state. Madigan
25
26

Decl., Exs. 16, 35. Rockstar confirmed that, as of May 2012, it

27

had "started negotiations with as many as 100 potential licensees"

28

and has since approached many more. Id-, Exs. 7, 17. At least a
12

A22

CaSail€2.3t4v1613933Mainikeduthant5Pape6164/117i11341:

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couple of these meetings were in California. See Dean Decl. ¶ 18.

2

Rockstar has one employee or independent contractor in California,

3

Wilson, who contacts potential licensees in California. See

4

Madigan Decl. Ex. 17.

5
6

Google's showing is insufficient to render Defendants
"essentially at home" in California. Even if it is true that

7

Defendants engage in "continuous and systematic" business in the
8
9

forum state, that does not mean that Defendants' presence in the

10

forum state is so substantial that it should fairly be subject to

11

suit "on causes of action arising from dealings entirely distinct

12

from those activities."

Daimler AG, 134 S. Ct. at 761.

13

Specific Jurisdiction

14

Specific jurisdiction exists where the cause of action arises

15

out of the defendant's contacts with the forum state, even if

16

those contacts are isolated and sporadic.

Red Wing Shoe Co., Inc.

17
18
19

v. Hockerson - Halberstadt, Inc., 148 F.3d 1355, 1359 ('ed. Cir.

1998) (citing Burger King Corp., 471 U.S. at 471-77). Even a

20

single act may support a finding of personal jurisdiction so long

21

as it creates a "substantial connection with the forum, as opposed

22

to an attenuated affiliation." Id. The Federal Circuit has

23
24

developed a three-factor test to determine whether specific
jurisdiction exists: "whether (1) the defendant purposefully

25

directed its activities at residents of the forum state, (2) the
26
27
28

claim arises out of or relates to the defendant's activi.ties with
the forum state, and (3) assertion of personal jurisdiction is
13
A23

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@MDC6#28

reasonable and fair." Electronies Fox Imaging, Inc., 340 F.3d at
1350.

Here, Defendants sued seven Google customers, alleging that
they infringed by making and selling "certain mobile communication
devices having a. version (or adaptation thereof) of Android
operating system" which is developed by Google. See Dean Decl.,
Exs. A-H. Both Defendants met with Google in California to
discuss licensing of the patents-in-suit. Rockstar also met in
California with a few of the Google customers sued in the
Halloween actions to discuss lidensing of the patents-in-suit.
These cOntacts with Google and its customers in California created
a cloud of patent infringement ChargeS over Gboglea Android
platform. Google's causes of action for declaratory judgment of
non-infringement, whiCh are intended to "clear the air of
infringement charges" targeting Google's Android platform, "arise
out of or relate to" Defendants' contacts with the forum. See. Red
Wing Shoe Co., Inc:, 14,8 F.3d •t. 1360

that "cease-and-

desist letters are the cause of the entanglement and at least
partially give rise to the plaintiff's action. ").
Defendants argue that imposing jurisdiction based on the act
of sending cease-And-desist letters alone violates the principles
of fair play and substantial justice.

Id. The Federal Circuit

has explained that exercising personal jurisdiction over a
patentee based sOlely on the sending of cease-and-desist letters
would be unfair under the second prong of the traditional due
14

A24

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I ":1

g@taotbf128

process inquiry: "whether the maintenance of personal jurisdiction
2

would comport with fair play and substantial justice." Id. at

3

1361 (quotation marks omitted). This is because due process

4

"afford[s] the patentee sufficient latitude to inform others of

5
6

its patent rights without subjecting itself to jurisdiction in a
foreign forum." Id. An offer to license may sometimes be "more

7

closely akin to an offer for settlement of a disputed claim rather
8
9
10

than an arms-length negotiation in anticipation of a long-term
continuing business relationship," and, if so, by itself may be

11

insufficient to justify exercising specific jurisdiction. Id.

12

Accordingly, to find specific jurisdiction, the Federal Circuit

13

has required that a showing that a defendant engaged in "other

14

activities" in the forum state related to the action at hand.

15

Id.; Avocent Huntsville Corp., 552 F.3d at 1334. These activities
16
17
18
19
20

need not be limited to those directed at Google itself, but must
be related in some way to the patents-in-suit.

Avocent Huntsville

Corp, 552 F.3d at 1334.

Courts have held that such "other activities" may include

21

forming obligations with forum residents that relate to

22

enforcement of the asserted patents. Some examples of "other

23

activities" that courts have recognized include "initiating

24

judicial or extra - judicial patent enforcement within the forum, or
25
26
27

entering into an exclusive license agreement or other undertaking
which imposes enforcement obligations with a party residing or

28

15

A25

Ca2a4€134v165933011:ttinfitatuftvint5PapiediM/R#11341:

1

I NI g@ti2Ddifi28

regularly doing business in the forum." Id. 5 A review of Federal

2 Circuit case law reveals that the relationship must extend beyond
3

the mere payment of royalties or cross-licensing payments, "such

4

as granting both parties the right to litigate infringement cases

5

or granting the liCensor the tight to exercise control Over the

6
licensee's sales or marketing activities." Breckenridge Pharm.,
7
8
9

Inc. v. Metabolite Labs., Inc., 444 F.3d 1356, 1366 (Fed. Cir.
2006), The defendants must create "continuing obligations between

10

themselves and residents of the forum," forming a "substantial

11

connection" that proximately results from the defendants' own

12

actions such that it woUld not be "Unreasonable to require

13

detendants to stbmit to theburdens of litigation in that forum as

14

well." EleCtxonicS For Imaging 4 Inc., 34.0 F.3d at 1350.

15
16
17
18
19
20
21
22
23
24
25
26
27
28

- 5 See:: CaMPbeil Pet Co. V, Miale, 542: F.3d 879, 88•6 (Fed, Cir,
2008) (finding jurisdiction over a patentee who conducted extraiudicial patent enforcement by enlisting a third party in the
forum to remOVO defendant's prOducts from a trade show).;. GenetiC
Implant ays„ Inc. v. CoreHVent Corp., 123 F.3d 1455, 1458 (Fed.
Cir. 1997) (holding that specific jurisdiction existed over
patentee because it had appointed an in-state distributor to sell
a product covered by the asserted patent l which was a business
relationship "analogous to a grant of a patent license" and
created obligations to sue third-party infringers); Akrp Corp. v.
Luker, 45 F.3d 1541, 1548-49 (Fed. Cir. 1995) (because defendant
had entered into an exclusive licensing agreement with one of the
alleged infringer's competitors, which meant that defendant had
"Obligations
. . to defend and pursue any infringement" against
the patent, specifiC jurisdiction was proper); SRAM Corp. v.
Sunrace Roots Enter. CO-, Ltd., 390 F, Supp. 2d 781, 787 (N,D.
Ill. 2005) (specific jurisdiction was proper where detendant had
"purposefully directed its activities" at residents of the forum
by marketing a product that directly competed with the alleged
infringer).
16

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Google contends that Defendants have accepted substantial

2

obligations to Apple, a forum resident, which require Defendants

3

"to defend and pursue any infringement against" their patents.

4

Akro Corp., 45 F.3d at 1543. Google alleges that Apple is a

5
6

majority shareholder of Defendants and exerts subStantial control
over them, and as a result Defendants are obliged to act on

7

Apple's behalf in a campaign to attack Google's Android platform. 6
8
9

In support of this allegation, Google submits strong evidence

10

that Apple is indeed the majority shareholder of Defendants based

11

on Apple's majority investment in Rockstar's predecessor entity,

12

Rockstar Bid-co. 7 Currently, Rockstat is a Delaware limited

13

partnership which lists_ "Rockstar Consortium LLC" located in. New

14

YOrkaS general. partner. Id., Exs. 32-33; Dean. Deci. 1 15. But
15
16
17
18

Apple. contributed $2,6 billion, ot fifty -eight percent of the $4.5
billion total investment. in Rocl-cstar B.idco,

Madigan Decl., Ex. 9

at 34,. Although Rockstar Bidoo_ reorganized_ itSelf to become

19

6 Defendants contend that Google has not proven that alter
ego or agency theories apply, and thus Apple's contacts with the
22 forum cannot be imputed to Defendants. See Defendants' Reply
at 11. Defendants misunderstand Google's argument. Google does
23 not seek to impute to Defendants Apple's contacts with the forum
state, but instead argues that Defendants have undertaken a
24
substantial obligation to Apple related to the asserted patents
25 that makes it reasonable to impose specific jurisdiction.

21

26
27
28

7 As previously noted, Rockstar wholly owns MobileStar and
the Court considers the two entities jointly for purposes of
jurisdiction because it is likely that MobileStar was cteated
solely for litigation purposes.

17

A27

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Rockstar, it does not appear that any ownership interests changed,
2 nor do. Defendants assert otherwise.
3

Even. if Apple is a majority shareholder of Rockstar, if

4 Defendants were able to demonstrate that Apple is A mere passive
5
6

shareholder and takeS no part in: patent assertion strategy, then
the relationship between Apple and Defendants might not be

7
sufficient to uphold specific jurisdiction. Cf. Breckenridge
8
9

Pharm,, Inc., 444 F.3d at 1366. Google alleges that Apple's role

10
11

stated that he does not talk to its shareholders about potential

12

licensing partners or inftingetent suits, but admitted that he has

13

•

extends beyond the mere receipt of profits. Rockstar's CEO Veschi

to ShOw them "prOgress and that real Work is being. done." Madigan

14
15

Decl., Ex. 12 at 4-5. Veschi holds ..periodic calls and meetings
with the owners, primarily- with their intellectual property

16
17
18

departments, and Veschi. acknOwledges that they "Work well
together." Id. at 5. Although Veschi states they avoid talking

19

about details, it does appear at least telling that Veschi speaks

20

directly and periodically with the owners' intelleCtual property

21

departments to demonstrate that "work is being done." Id. at 4-5.

22

Google demonstrates a direct link between Apple's unique

23

business interestS, Separate and apart from mere profitmaking, and

24
25

Defendants' actions against Google and its customers. Google and

26
27
28
18

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Apple's rivalry in the smartphone industry is well-documented. 8

2

Apple's founder stated that he viewed Android as a "rip off" of

3

iPhone features and intended to "destroy" Android by launching a

4

"thermonuclear war." Id., Ex. 31. Defendants' litigation

5

strategy of suing Google's customers in the Halloween actions is

6

consistent with Apple's particular business interests. In suing
7
8
9

the Halloween action defendants, Defendants here limited their
infringement claims to Android-operating devices only, even where

10

they asserted a hardware -based Patent. See, e.g., Dean Decl

11

Ex. A and the 1 551 patent. This "scare the customer and run"

12

tactic advances Apple's interest in interfering with Google's

13
14

Android business. See Campbell, 542 F.3d at 887 (finding
jurisdiction where the patentee "took steps to interfere with the

15
16
17

Plaintiff's business").
In sum, with conflicts in the allegations and evidence

18

resolved in its favor, Google has shown that it is likely that

19

Defendants have created continuing obligations with a forum

20

resident to marshal the asserted patents such that it would not be

21

unreasonable to require Defendants to submit to the burdens of

22
23
24
25
26
27
28

8 See, e.g., Madigan Decl., Ex. 24 (Rockstar's "stockpile was
finally used for what pretty much everyone suspected it would be
used for -- launching an all-out patent attack on Google and
Android"); Ex. 25 ("This is an all out assault on Google and the
Android smartphone ecosystem and it would be fair to say that most
experts expected those patents would rear their ugly head sometime
in the future"); Ex. 26 (new attention focused on Rockstar
"largely because it gives the appearance that three leading
competitors to Android are teaming up against it"); Ex. 27
(further detailing Apple's anti -Android litigation campaign).

19

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litigation in this forum. Electronics For Imaging, Inc., 340 F.3d
2

at 1350. Defendants have purposefully directed activities to

3

residents of this forum in a way which relates materially to the

4

enforcement or defense of the patent, which is sufficient to

5
6

establish specific jurisdiction. Avocent Huntsville Corp., 552
F.3d at 1338. 9

7
8
9

III. Jurisdiction under Declaratory Judgment Act
The Declaratory Judgment Act provides, "In a case of actual

10

controversy within its jurisdiction, any court of the United

11

States . . . may declare the rights and other legal relations of

12

any interested party seeking such declaration, whether or not

13
14

further relief is or could be sought." 28 U.S.C.

2201. The

declaratory judgment plaintiff, must establish that the "facts

15

alleged under all the circumstances show that there is a
16
17

substantial controversy between parties having adverse legal

18

interests of sufficient immediacy and reality to warrant the

19

issuance of a declaratory judgment." Micron Tech., Inc. v. Mosaid

20

Technologies, Inc., 518 F.3d 897, 901 (Fed. Cir. 2008) (citing

21

MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126 (2007)

22

(holding that there was a real and substantial controversy based

23

on threatening letters and Public statements showing an "intent to
24
25

continue an aggressive litigation strategY")).

9 Because the Court finds personal jurisdiction over
Defendants is proper, venue is also proper. Trintech Indus., 395
27 F.3d at 1280 ("Venue in a patent action against a corporate
defendant exists wherever there is personal jurisdiction").

26

28

20

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Even when declaratory judgment jurisdiction is present,
2

courts have some discretion to decline to exercise that

3

jurisdiction. Wilton v. Seven Falls Co., 515 U.S. 277, 289-90

4

(1995). In order to decide whether to exercise jurisdiction under

5

the Declaratory Judgment Act, the court "must determine whether

6

hearing the case would serve the objectives for which the

7

Declaratory Judgment Act was created." Capo, Inc. v. Dioptics
8
9

Med. Products, Inc., 387 F.3d 1352, 1355 (Fed. Cir. 2004). When

10

the objectives of the Declaratory Judgment Act are served by the

11

action, dismissal is rarely proper. Id. "There must be well-

12

founded reasons for declining to entertain a declaratory judgment

13

action." Id.

14

The present suit serves the purposes of the Declaratory

15

Judgment Act, which "in patent cases is to provide the allegedly
16
17
18

infringing party relief from uncertainty and delay regarding its
legal rights." Micron Tech., Inc., 518 F.3d at 902. A real and

19

substantial controversy existed when Google filed suit.

20

Defendants had sued a number of Google's customers, based in part

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25
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27
28

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on their use of the Android platform developed by Google. 1 °
2

Defendants did not, however, name Google as a defendant. This

3

tactic of targeting the customers instead of the manufacturer

4

"infects the competitive environment of the business community

5

with uncertainty and insecurity." Electronics for Imaging, Inc.

6

V. Coyle, 394 F.3d 1341, 1346 (Fed. Cir. 2005). In response to
7
8
9

the uncertainty caused by Defendants' actions, Google filed this
declaratory judgment action to "clear the air of infringement

10
11

uncertainty still exists in part because, although Defendants

12

•

charges." Avocent Huntsville Corp., 552 F.3d at 1329. That

later amended one of the Halloween actions to implicate Google

13
14

directly, they accused Google of infringing only three of the
seven of the patents at issue here. Case No. 13-0900, Docket

15

No. 19. Although Defendants recently sought to include the final
16•
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19
20
21
22
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24
25
26
27
28

four other patents in the Texas case, leave to amend has not yet
Defendants filed a Statement of Recent Decision calling the
Court's attention to Microsoft Corp. v. DataTern, Inc., 2013-1184,
2014 WL 1327923 (Fed. Cir. Apr. 4, 2014). The Federal Circuit
noted that, although suits against customers do not "automatically
give rise to a case or controversy regarding induced
infringement," there is a case or controversy if "there is a
controversy between the patentee and the supplier as to the
supplier's liability for induced or contributory infringement
based on the alleged acts of direct infringement by its
customers." Id. at *2-3. The vast majority of the claims brought
in the Halloween actions appear to be targeted specifically at
Android features; the exception is the '551 patent, with which it
is not clear if Android is specifically involved. It is also not
clear if Defendants approached Google to license the '551 patent.
See id. at *2. Because the DataTern court had the benefit of
claim charts to discern the details of the patentee's infringement
theories, the Court may revisit the inclusion of the '551 patent
at a later date.
10

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been granted. Case No. 13-0900, Docket Nos. 45-46. Because the

2

patent owners failed to "grasp the nettle and sue," Google was

3

justified in bringing the present action.

4

Imaging, Int-, 394 F.3d at 1346,

5

TV. Motion to Transfer

6
7
8

A.

ElectronicS for

First-to-File Rule

When cases between the same parties raising the same isSueS
are pending in two or more federal districts, the general rule is

9
10
11

to favor the forum of the first-filed action, regardless of
whether it is a declaratory judgment action.

Micron Tech., Inc.,

12

518 F-Ad at 904. The court of the actual first-tiled case should

13

rule on motions to dismiss or transfer based on exceptions to the

14

first-to-file rule or on the convenience factors.

15

parties: disputer Whith iS the firSt-filed attion-

16

Bee id. •he
Google: argues

that the first-filed action is the present suit, which was filed

17

before Google faced charges in the Eastern District of Texas due
18
19

to Defendants' New Year's Eve amendment.

Defendants argue that

20

the Halloween actions themselves constituted the first-tiled

21

suits. Defendants' Motion to Dismiss at 5, 19-24. Although the

22

Halloween actions did not nate Google spetifically, Defendants

23

contend that they should be considered first-filed suits against

24

Google because they involved "substantially the same" parties as

25

those implicated here,

Id. (citing Futurewei Techs., Inc.

26
27
28

Acacia Research Corp, 737 F.3d 704, 706 (Fed. cir, 2013)).
However, the present situation is not equivalent tO the

A33

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geM106#1.28

"substantially similar" parties that were implicated in Futurewei,
2 which were a patent owner, its exclusive licensee,

and the
By

3

licensee's wholly-owned subsidiary/assignee. Id. at 705-06.

4

contrast, the relationship between Google and the Halloween

5

defendants is one of manufacturer and customer. Google and the

6

Halloween defendants are not in privity. Cf. Microchip Tech, Inc.

7
v. United Module Corp., 2011 WL 2669627, at *3 (N.D. Cal.)

8
9
10

("similar" parties were parent and its wholly-owned subsidiary).
Even if the parties were substantially similar in the

11

Halloween actions and this one, the customer-suit exception to the

12

first-to-file rule would apply.

13

553 F.2d 735, 737 (1st Cir. 1977) ("an exception to the first-

14

Codex Corp v. Milgo Elec. Corp,

filed rule has developed in patent litigation where the earlier

15
action is an infringement suit against a mere customer and the
16
17
18

later suit is a declaratory judgment action brought by the
manufacturer of the accused devices"). Because the determination

19 of the infringement issues here would likely be dispositive of the
20

other cases, and the manufacturer presumably has a greater

21

interest in defending against charges of patent infringement than

22

the customers, the present suit takes precedence.

23

Kahn v. Gen.

Motors Corp., 889 F.2d 1078, 1081 (Fed. Cir. 1989); Cf.

24
ContentGuard Holdings, Inc. v. Google, Inc., Case No. 14-0061

25
26

(E.D. Tex.), Docket N . 37, at 6.
convenience Factors

27

B.

28

The Court could make an exception to the general rule giving
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1

preference the first-filed case if doing so would be "in the

2

interest of justice or expedienoy, as in any issue of choice of

3

forum." Micron Tech,, Inc., 518 F.3d at 904. To resolve disputes

4

of "competing forum interests" between accused infringers and

5
6

patent holdetS, the cOutt may consider the "convenience factors"
under the transfer analysis of 28 U.S.C. § 1404(a), including: the

7

convenience and availability of witnesses, the absence of
8
9

jurisdiction over all necessary or desirable parties, the

10

possibility of consolidation with related litigation, and

11

considerations relating to the interests of justice.

12

05. See Reflex Packaging, Inc, v4 Audio 'Video COlor COrp., 2013

13

WL 5568345, at *2 (N.D Cal.) (liSting additional tranSfer

14
15
16

Id. at 902-

factors).
1..

Convenience •nd availability of witnesses -

The convenience and availability of• witnesses is '"probably

1.7
18
19

the single- most impOrtant factor" in the transfer analysis. In re
Genentech, Inc,, 566. F•3d 1338, 1343 (Fed. Cir. 2009). This

20

factor favors California because Google's Android products-, the

21

target of this. infringement action, were designed arid created

22

here. Many of the witnesses who can testify to the design and

23
24

development of the accused Android platform's features reside near
Google's headquarters in Mountain. View, California. Dubey Decl.

25
26
27
28

11 3-8. Other witnesses, such as the inventors of the patents-in-

suit, are likely to be in Canada. Defendants do not name any
witnesses in TexaS esSential to the. suit.
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2.

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1; 1 :1

Pg&1428

Jurisdiction over parties to this action and
possibility of consolidation with related
litigation

Defendants argue that this Court lacks jurisdiction over some
of the customer defendants to the Halloween actions in Texas.
Defendants contend those customers necessarily would b
indispensable parties to this litigation because their rights in

7

the patents-in-suit are at play. However, those parties are not
8
9

essential to resolution of claims between Defendants and Google.

10

It cannot be said that any customer who uses the technology at

11

issue is an indispensable party.

12
13
14

The Halloween actions might not and need not be transferred
here. 11 They might be stayed in Texas and be reopened upon
completion of this suit, which likely will resolve some of the

15
16
17
18

infringement issues there. If the Texas actions are transferred
here, they can be consolidated with this case at least for
pretrial purposes.
3.

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20

Other factors

Other factors that may be considered include: the plaintiff's

21

choice of forum, the convenience of the parties, the ease of

22

access to the evidence, the familiarity of each forum with the

23

applicable law, the local interest in the controversy, the

24
25
26

In each of the. remaining Halloween actions, the defendant
has filed a motion to stay or, in the alternative, to transfer the
case to this district. See Docket Nos. 46, 48, 50-51, 55.
11

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relative- court congestion, and the interests of justice.
2
3

Reflex

Packaging, Inc., 2013 WL 5568345, at *2.
Defendants argue that they are the true plaintiffs and

4

accordingly, their choice of forum should take precedence.

5

Court finda this factor at best to favof Defendants- only slightly

6

The

because each side accuses the other of forum shopping. Indeed,

7

Defendants have not identified any witnesses residing in Texas,
8
9

their primary- operations and headquarters are in Canada, and they

10

admit that many of the inventors of the patents-in-suit were

11

listed at least years ago as being from Canada. Defendants'

12

argument of their own convenience is similarly attenuated becaUse,

13

again, their operations. appear to be baSed in Canada, not TeXaS.

14

The - Northern District of California has the greater interest

15

ih thiS• litigation because the-- clodms here will. 'call into
16

question the work and reputation of several individuals residing
17
18

in or conducting business in this community."

In re lioffman-La

19

Roche, 587 P.3d 1333, 1336 (Fed. Cir. 2009). Courts in the

20

Eastern District of Texas have recognized that the 'Northern

21

District of- California has an interest in protecting intellectual

22
23

property rights that stem from research and development in Silicon
Valley."

Affinity IJabs of Texas v. Samsung Elecs. Co„ Ltd„ 2013

24

WL 5508122, at *3 (E-D. Tex.), AlthOugh Defendants claim to have
25
26
27

substantial ties to Texas, their headquarters appear to be in
Canada. The interest of the Eastern District of TexaS in this

28

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g MEOthf128

1

controversy is therefore outweighed by the compelling interests in

2

California.

3

The remaining factors are either neutral or favor Google.

4 I3ecatse Google, the accused infringer, resides in California, much
5
6

of the evidence iS here. Some of the evidence Itay be in. Canada or
other states; however, that does not- make Texas the more

7

convenient forum. Each forum is familiar with patent law, and
8
9
10
11
12

both have similar court- congestion and time to trial. All of the
cases are in early stages.
On balance, the factors do not weigh in favor of transferring
the action to the Eastern District of Texas.

13
14

CONCLUSION
The motion to dismiss or transfer is DENIED-

15
16

IT IS SO ORDERED.

17
18

Dated: 04/17/2014
CLA DIA WILKEN
United States District Judge

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-

-

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP, AND §
MOBILESTAR TECHOLOGIES, LLC,
§ CASE NO. 2:13-CV-00894-JRG
v.

§ LEAD CASE
SAMSUNG ELECTRONICS CO., LTD., et §
al.,
§ CASE NO. 2:13-CV-00900-JRG
Defendants.

MEMBER CASE

§

MEMORANDUM OPINION AND ORDER
Before the Court is Defendants Google, Inc.'s ("Google") and Samsung Electronics Co.,
Ltd.'s, Samsung Electronics America, Inc.'s, and Samsung Telecommunications America,
LLC's (collectively, "Samsung") Motion to Stay or, in the Alternative, to Transfer to the
Northern District of California (Dkt. No. 52), filed March 21, 2014. For the reasons set forth
below, the Court finds that the motion should be DENIED.

I.

BACKGROUND AND PROCEDURAL HISTORY

Plaintiffs Rockstar Consortium US LP, Inc. and Mobilestar Technologies, LLC are
entities arising out of the demise of Nortel, a Canadian telecommunications company with a
substantial patent portfolio. When Nortel confronted bankruptcy in 2011, it held an auction for
its patents. Five major technology companies—Apple, Blackberry, Ericsson, Microsoft, and
Sony—pooled their resources into Rockstar Bidco LP for the purpose of bidding on the Nortel
patent portfolio (Dkt. No. 61-4). Rockstar Bidco LP outbid Google for the patents. Id Rockstar

1

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Bidco LP then transferred the patents in suit here to the Rockstar Consortium US LP, a Delaware
limited partnership with its headquarters in Plano, Texas and one of the plaintiffs in this case. Id
Rockstar Consortium US LP subsequently created a wholly-owned subsidiary, MobileStar
Technologies, LLC, to which it assigned five of the seven patents-in-suit (Dkt. No. 61-7).
Meanwhile, Rockstar Consortium Inc. was formed as a vehicle to hire certain of Nortel's former
employees. Id. Rockstar Consortium US LP contracts with Rockstar Consortium, Inc. for
"intellectual-property-support services." Id.
Rockstar Consortium US LP, Inc. and Mobilestar Technologies, LLC (hereinafter,
collectively, "Rockstar") filed this suit against Samsung on October 31, 2013, alleging that
Samsung infringes seven of Rockstar's patents, accusing certain mobile phones using a version
of Google's Android operating system (Dkt. No. 1). On the same day, Rockstar separately sued
six other mobile phone manufacturers, again accusing Android-based phones.
On December 23, 2013, Google filed an action for declaratory relief in the United States
Court for the Northern District of California (NDCA), seeking a judgment that the Android
operating system does not infringe the patents at issue in this case. Google Inc. v. Rockstar
Consortium U.S. LP, No. C-13-5933-CW (Dkt. No. 1). On December 31, 2013, Rockstar
amended its complaint in this Court, accusing Google of violating three of the seven patents in
suit (Dkt. No. 19). Rockstar has since requested leave to file a Second Amended Complaint
accusing Google of infringing all seven of the patents in suit (Dkt. No. 45). On April 17th, 2014,
the NDCA issued an opinion denying Rockstar's motion to dismiss, finding that the California
action was the first filed between Rockstar and Google (5933 Dkt. No. 58).
In this motion, Google asks the Court to stay the case pending resolution of the NDCA
suit. In the alternative, Google asks the Court to transfer this case to the NDCA.

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IL

LEGAL STANDARDS

"The district court has the inherent power to control its own docket, including the power
to stay proceedings." Soverain Software LLC v. Arnazon.corn, Inc., 356 F. Supp. 2d 660, 662
(E.D. Tex. 2005). In deciding whether to stay litigation, courts typically consider "(1) whether a
stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party; (2)
whether a stay will simplify the issues in question and trial of the case; and (3) whether
discovery is complete and whether a trial date has been set. Id.
When cases between the same parties present the same issues for resolution, the general
rule favors the first-filed action. Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 904
(Fed. Cir. 2008). However, "trial courts have discretion to make exceptions to this general rule in
the interest of justice or expediency. . . . . These exceptions are not rare." Id. Reasons such as "the
convenience and availability of witnesses, or absence of jurisdiction over all necessary or
desirable parties, or the possibility of consolidation with related litigation, or considerations
relating to the real party in interest" may trump the general first-filed rule. Genentech, Inc. v. Eli
Lilly 7 Co., 998 F.2d 931, 937-39 (Fed. Cir. 1998).
28 U.S.C. section 1404(a) provides that "[for 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." The first inquiry when analyzing a case's eligibility
for 1404(a) transfer is "whether the judicial district to which transfer is sought would have been a
district in which the claim could have been filed." In re Volkswagen AG, 371 F.3d 201, 203 (5th
Cir. 2004) (Volkswagen I).
Once that threshold is met, the movant has the burden of proving that the transferee
venue is "clearly more convenient" than the transferor venue.

3

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In re Nintendo, 589 F.3d 1194,

Case 2:13-cOMINC14-ING DiDnonentrff02-EilecP401884 FilgelA8f2121ZedgielD #: 4236

1200 (Fed. Cir. 2009); In re TS Tech, 551 F.3d 1315, 1319 (Fed. Cir. 2008); In re Volkswagen of

Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (Volkswagen II). In this regard, courts analyze both
public and private factors relating to the convenience of parties and witnesses as well as the
interests of particular venues in hearing the case. See Nintendo, 589 F.3d at 1198; TS Tech, 551
F.3d at 1319. The private factors include: (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. Nintendo, 589 F.3d at 1198; TS Tech, 551 F.3d at 1319;

Volkswagen I, 371 F.3d at 203. The public factors include: (1) the administrative difficulties
flowing from court congestion; (2) the local interest in having localized interests 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 in the application of foreign law.

Nintendo, 589 F.3d at 1198; TS Tech, 551 F.3d at 1319; Volkswagen I, 371 F.3d at 203. Though
the private and public factors apply to most transfer cases, "they are not necessarily exhaustive or
exclusive," and no single factor is dispositive. Volkswagen II, 545 F.3d at 314-15.
ANALYSIS
Defendants request a stay of these proceedings as their preferred relief. Because the
considerations involved in a decision to stay closely mirror those involved in a decision to
transfer, however, the Court will combine its discussion of these issues.
A. Availability of the Transferee Venue
The parties do not appear to dispute that this suit could originally have been brought in
the Northern District of California, and this Court agrees that the case could have been originally
brought in that district. See In re Genentech, Inc., 566 F.3d 1338, 1346 (Fed. Cir. 2009).

4

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B. Private Interest Factors

1. Relative Ease of Access to Sources of Proof
It is likely that the bulk of the relevant evidence in this action will come from Google.

See In re Genentech, 566 F.3d at 1345. Google avers that "all relevant documants and evidence
are [sic] accessible from Google's headquarters in the Northern District," but is pointedly silent
on the physical location where said documents are stored (Dkt. No. 52-29). Samsung, in contrast,
maintains a US headquarters in Richardson, Texas—within the Eastern District of Texas (Dkt.
No. 62-7). Samsung also maintains a laboratory in Dallas, Texas; the Dallas office appears to be
significantly involved in the development of the accused products (Dkt. No. 62-9). Moreover,
Rockstar's documentary evidence relating to the patents-in-suit is stored at its Plano, TX
headquarters—also within the Eastern District (Dkt. Nos. 61-4, 61-7). Though Google suggests
that this evidence was transported to the Eastern District explicitly to game the Court's transfer
analysis, the Court finds that such a conclusion is unwarranted given the evidence presented.
The evidence supports the conclusion that a substantial body of relevant evidence exists
in or near the Eastern District of Texas. In contrast, it is unclear whether and how much relevant
information actually exists within the Northern District of California. The Court thus finds that
this factor weighs against transfer. The Court notes, however, that given the ease in the modern
era of transferring electronic data from one place to another, this factor is not dominant in its
ultimate decision.

2. Availability of Compulsory Process
Under Federal Rule of Civil Procedure 45 (as recently amended), this Court may enforce
a subpoena issued to any nonparty witness in the State of Texas to appear at trial, provided the
party does not incur substantial expense. Fed. R. Civ. P. 45(c)(1)(B). Similarly, the Court may

5

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enforce any subpoena for a deposition to be taken within its boundaries, provided that the
deposition is taken no more than 100 miles from a location where the person resides, is
employed, or regularly transacts business in person. See id. at (a)(2), (c)(1)(A), (d)(3)(a);
Ingeniador, LLC v. Adobe Systems Inc., 2014 WL 105106, No. 2:12-cv-805-JRG (E.D. Tex. Jan.
9, 2014). Rule 45, however, makes compulsory process for deposition effectively nationwide.
Moreover, party witnesses do not require compulsory process for trial and are not given much
weight in this factor. See Ingeniador, supra. Rather, the focus of this factor is on witnesses for
whom compulsory process to attend trial might be necessary.
Google suggests that "former employees of Google and Andrioid Inc. remain heavily
concentrated in the Northern District. At least one named inventor resides in the Northern
District . . . and dozens of relevant prior artists of record live in the Northern District" (Dkt. No.
52, at 11). They also suggest that employees of Apple, one of Rockstar's corporate owners, may
be compelled to testify in the Northern District.
Google does not, however, identify any former employees who are expected to testify at
trial. Nor does this Court give particular credence to the assertion that prior artists will be called
to testify; this Court has previously noted that "inventors of prior art rarely, if ever, actually
testify at trial." PersonalWeb Techs., LLC v. Target Brands, Inc., No. 6:11-cv-655-LED, Dkt.
No. 74, at 15 n.13 (E.D. Tex. Mar. 21, 2013). Finally, though the Court views Google's asserted
interest in Apple's testimony with some skepticism, it notes that other Rockstar parents—notably
Ericsson and Blackberry—maintain U.S. headquarters in Texas (Dkt. Nos. 63-17, 63-18).
In contrast, Rockstar specifically identifies two prosecuting attorneys, two former Nortel
employees, and one former Samsung employee in or near the Eastern District of Texas whom it
suggests might be called to testify (Dkt. No. 61, at 11). It also suggests that Samsung customers

6

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such as AT&T and Verizon might be called to prove damages. Id The Court is not convinced
that any of these witnesses will likely be called to testify, but their appearance in the case is
certainly plausible.
Weighing all considerations of available compulsory process, the Court finds that this
factor is neutral. One inventor's presence in the Northern District of California weighs in favor
of transfer, but is counterbalanced by the presence of several potential nonparty witnesses in
Texas.
3. Cost of Attendance for Willing Witnesses
A critical factor in this Court's analysis of this case is the cost of attendance for willing
witnesses. As noted above, Google's headquarters is in Mountain View, California. Many of the
Google employees who work on the Android operating system are located in or near the
Northern District of California (Dkt. No. 52-29). Samsung is a Korean entity with its U.S.
headquarters in the Eastern District of Texas; moreover, Samsung maintains a Dallas office that
appears to do substantial work on its Android-based products (Dkt. No. 62-7, 62-9). Rockstar's
headquarters is in Plano, Texas, and Rockstar has identified several potential witnesses who
work at its Plano office.
Google employees from northern California would face substantial costs in traveling to
the Eastern District of Texas for trial. However, if the court were to transfer this case, roughly
equivalent costs would be imposed on Rockstar's witnesses, and also (potentially) some
Samsung witnesses. Samsung witnesses located in Korea, by contrast, will be subjected to
substantial costs in either venue.
Transferring this case would, at best, merely redistribute the inconvenience of travel
among the parties; at worst, a transfer might substantially increase the cost of attendance for

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willing witnesses. Cf Thomas Swan & Co., Ltd v. Finisar Corp., 2014 WL 47343, No. 2:13-cv178-JRG (E.D. Tex. Jan. 6, 2014). Having considered the evidence, the Court finds that this
factor weighs slightly against transfer.

4. Other Practical Problems
In this case, where multiple and parallel litigations in two different jurisdictions are
possible, considerations of judicial economy bear heavily upon the Court's transfer analysis.

See In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009).
Google argues that its suit against Rockstar in California presents identical issues among
identical parties, and that the Court should stay or transfer this litigation under the first-filed rule.
It also argues that, even if this litigation is the first-filed (because of Rockstar's October
complaint against Samsung and subsequent addition of Google as a defendant), the Court should
stay or transfer this case because Rockstar's Texas suits are essentially "customer suits," whose
major issues will be resolved in the California declaratory judgment action.
The Court need not resolve the formalistic question of whether Rockstar's October
complaint makes this suit the first-filed case. The decision to stay or transfer a case is contextual
and multifaceted, and the Court may give weight to considerations beyond the simple race to the
courthouse. See Micron Tech., 518 F.3d at 904. This is particularly so in this case, where the
merits of the "first filed" designation are by no means clear. The considerations of judicial
economy that underlie the general first-filed rule, in this case, weigh against a transfer or stay.
First, the Court notes that there are six Rockstar litigations currently proceeding in the
Eastern District of Texas, each suit alleging violations of the same patents. The Court has already
consolidated these cases for all pre-trial purposes except venue (Dkt. No. 51). These cases will
present common issues of claim construction and damages, and (most likely) validity. Moreover,

8

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now that Google is a party to this litigation, Google will have every opportunity to participate
fully in these proceedings. 1 Considerations of judicial economy weigh strongly in favor of
consolidating all cases on these patents in the Eastern District of Texas, if possible.
Second, the Court does not expect the current California litigation to dispose of key
issues in this case and the related Rockstar cases. See Spread Spectrum Screening LLC v.
Eastman Kodak, 657 F/3d 1349, 1358 (Fed. Cir. 2011). Though the patents-in-suit in the Texas
cases are the same, the suits' accused products are importantly different. Though each of the
accused products uses some version of Android, a product driven primarily by Google, each
defendant mobile phone manufacturer modifies and customizes the Android system to its own
particular purposes (Dkt. Nos. 63-6, 63-11). It is by no means clear, then, that resolving
infringement issues as to Android proper will resolve issues relating to other manufacturers'
various implementations of the Android system.
The Texas actions also present issues relating to each phone manufacturer's devices and
hardware, which the California litigation does not. One of the patents-in-suit claims only
hardware (Dkt. No. 63-10). Rockstar alleges that the other patents-in-suit cover the interaction of
the parties' Android implementations with hardware (Dkt. No. 61, at 4). Thus, only if the patents
are invalidated completely in the California court will major issues in the Texas cases be
resolved.
The Court finds that this factor weighs heavily against transfer. This factor also weighs
against a stay of proceedings.
C. Public Interest Factors

An Order of this Court to be released contemporaneously grants Rockstar leave to amend its
complaint to assert all seven patents-in-suit against Google.

9

A47

Case 2:13-cCE090M43HZE3D Ddbooteneff0 2Fliled wpm- Riyff110a122t29IAelD #: 4242

1. Local Interest
Google argues that "[t]he Northern District of California has an interest in protecting
intellectual property rights that stem from research and development in Silicon Valley" (Dkt. No.
52, at 15) (quoting Affinio) Labs of Tex. v. Samsung Elecs. Co., Ltd,

2013 WL 5508122, No.

1:12-cv-557-RC (E.D. Tex. Sept. 18, 2013). 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.

See Ingeniador, 2014 WL 105106, at *3-4• A predisposition toward one party,

independent of the merits of the case, cannot be the kind of "local interest" cognized by the
federal rules, and this Court gives this consideration no weight in its analysis. Also, the products
here accused are so ubiquitous throughout the nation that no single community can establish an
exceptional link that rightly makes any venue preferable to any other. The Court finds that this
factor is neutral.
2. Other Public Interest Factors
Both parties agree that other public interest factors are neutral. The Court sees no reason
to disagree with this conclusion.
IV.

CONCLUSION

The Court finds that a stay of proceedings would not serve the interests of justice,
because major issues in this case and other pending cases will likely remain even after the
California litigation is resolved. The Court also finds that the Northern District of California is
not clearly a more convenient venue for this case.
Having considered the matter carefully, the Court finds that Defendants' motion (Dkt.
No. 52) should be and hereby is DENIED.

10

A48

Case 2:13-m0M9:043HD DclbomemeN 2flIed I1i.@ PRO:110812212ErblelD #: 4243

So ORDERED and SIGNED this 1st day of July, 2014.

.1-( tiAKCI
C

RAp
RODNEY GIL
UNITED STAT DISTRICT JUDGE

11

A49

Case: 14-150

Document: 2-1 Page: 91 Filed: 08/22/2014

CERTIFICATE OF SERVICE
UNrrED STATES COURT OF APPEALS
FOR THE FEDE•AL CIRCUIT

Misc. No.
msmme

.=s•••••

ss

s•ssssssss

wwmw.ressssss•

s

••s===="

IN RE LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
ELECTRONICS MOBILECOMM USA INC.,
Petitioners.
01.1110111111•1•• s•s1 111

11•1

Mi1110•1114.••• s•1011M•041/1001

I, Lindsay C. Cloonan, 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 Greeenberg Traurig, LLP, attorneys for
Petitioners to print this document. I am an employee of Counsel Press.
On the 21st Day of August, 2014, I served the within Petition for Writ of
Mandamus upon:
Mike McKool (via Fed Ex)
[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 0
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: 14-150

Document: 2-1 Page: 92 Filed: 08/22/2014

Harold H. Davis, Jr. (via Fed Ex)
[e-mail]
Irene I. Yang
[e-mail]
K&L GATES LLP
Four Embarcadero, Suite 1200
San Francisco, California 94111
[phone]
[phone] facsimile

Jeffrey M. Ratinoff
[e-mail]
K&L GATES LLP
630 Hansen Way
Palo Alto, California 94304
[phone]
[phone] facsimile

Jennifer Klein Ayers
[e-mail]
K&L GATES LLP
1717 Main Street, Suite 2800
Dallas, Texas 75201
[phone]
[phone] facsimile
Attorneys for Defendants ASUStek Computer, Inc.
and ASUS Computer International
Alexas D. Skucas (via Fed Ex)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, New York 10036
[phone]
[phone] facsimile
Steven T. Snyder
[e-mail]

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

Anup M. Shah
[e-mail]
KING & SPALDING LLP
100 North Tryon Street, Ste. 3900
Charlotte, North Carolina 28202
[phone]
[phone] facsimile
Attorneys for Defendants ZTE (USA) Inc. and ZTE Corp.

Case: 14-150

Document: 2-1 Page: 93 Filed: 08/22/2014

W. Barton Rankin (via Fed Ex)
bart.rankin•bakermekenzie.com
BAICER & MCKENZIE LLP
2300 Trammel Crow. Center
2001 Ross Avenue, Suite 2300
Dallas, Texas 75201
[phone]
[phone] facsimile

D. James Pak
[e-mail]
BAKER & MCICENZIE LLP
Two Embarcadero Center, 1 lth Floor
San Francisco, California 94111
[phone]
[phone] facsimile

Attorneys for Defendants Pantech
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

Co.. Ltd.. and Pantech Wireless. Inc
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)
Joseph Milowic III
Sean S. Pak
QUINN EMANUEL URQUHART
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
50 California Street, 22nd Floor
New York, NY 10010
San Francisco, CA 94111
[phone]
415-875-6600
[phone] facsimile
415-875-6700 facsimile
Eugene Y. Mar
Keviti P.13. Johnson
Erik C. Olson
QUINN EMANUEL URQUHART
Farella Braun & Martel LLP
& SULLIVAN, LLP
235 Montgomery St, 17th Floor
555 Twin Dolphin Drive, 5th Floor
San Francisco, CA 94104
Redwood Shores, CA 94065
415/954-4400
[phone]
415/954-4480 facsimile
[phone] facsimile
Attorneys for Defendants' Samsung Electronics Co., Ltd., Samsung Electronics
America. Inc.. and Samsung Telecomtmmications America, LLC

Case: 14-150

Document: 2-1 Page: 94 Filed: 08/22/2014

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

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 pre-paid Federal Express 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 pre-paid Federal Express overnight delivery.
Unless otherwise noted, 4 copies and a pdf copy on disk, along with the
required filing fee, have been sent via pre-paid Federal Express overnight delivery
to the Court on the same date as above.
August 21, 2014