Google Inc. v. Rockstar Consortium US LP et al

Filing 108

NOTICE by Google Inc. of Filings in The Court of Appeals for The Federal Circuit Regarding Petitions for Writ of Mandamus to The Eastern District of Texas (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Warren, Matthew) (Filed on 8/27/2014) Modified on 8/28/2014 (cpS, COURT STAFF).

EXHIBIT B

Case: 14-147

Document: 20-1

Page: 1

Filed: 08/22/2014

_____________________________________________
IN THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
_____________________________________________
2014-147
_____________________________________________
IN RE GOOGLE INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC,
Petitioners.
_____________________________________________
On Petition for a Writ of Mandamus to the United States District Court for the
Eastern District of Texas in Case Nos. 2:13-cv-894 and 2:13-cv-900,
Judge Rodney Gilstrap.
_____________________________________________
OPPOSITION TO
PETITION FOR WRIT OF MANDAMUS
_____________________________________________
Joel L. Thollander
Joshua W. Budwin
Leah Buratti
MCKOOL SMITH, P.C.
300 W. 6th Street, Suite 1700
Austin, TX 78701
[phone]

Theodore Stevenson, III
Principal Attorney
David Sochia
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
[phone]

Attorneys for Respondents Rockstar Consortium US LP and MobileStar
Technologies, LLC
Dated: August 22, 2014

McKool 391101v4

Case: 14-147

Document: 20-1

Page: 2

Filed: 08/22/2014

CERTIFICATE OF INTEREST
Counsel for Respondents Rockstar Consortium US LP and MobileStar
Technologies, LLC certifies the following:
1.

The full name of every party represented by me is:
Rockstar Consortium US LP and MobileStar Technologies, LLC

2.

The names of the real parties in interest represented by me are:
Rockstar Consortium US LP and MobileStar Technologies, LLC

3.

All parent corporations and any publicly held companies that own 10 percent
or more of the stock of the parties represented by me are:
Rockstar Consortium US LP is the parent entity of MobileStar Technologies,
LLC, and in turn Rockstar Consortium LLC is the general partner of
Rockstar Consortium U.S. LP. The publicly-traded companies that directly
or indirectly own 10% or more of Rockstar Consortium US LP are Apple
Inc., BlackBerry Limited, Telefonaktiebolaget LM Ericsson (publ), and
Microsoft Corporation.

4.

The names of all law firms and the partners or associates that appeared for
the parties represented by me in the trial court or are expected to appear in
this Court are:
Mike McKool, Jr.; Douglas A. Cawley; Theodore Stevenson, III; David
Sochia; Ryan A. Hargrave
MCKOOL SMITH, P.C., Dallas, TX
Joel L. Thollander; Joshua W. Budwin; Leah Buratti
MCKOOL SMITH, P.C., Austin, TX
Samuel F. Baxter; Jennifer Leigh Truelove
MCKOOL SMITH, P.C., Marshall, TX

Dated: August 22, 2014

/s/ Joel L. Thollander
Joel L. Thollander

ii

Case: 14-147

Document: 20-1

Page: 3

Filed: 08/22/2014

TABLE OF CONTENTS
CERTIFICATE OF INTEREST ............................................................................... ii
TABLE OF CONTENTS ......................................................................................... iii
TABLE OF AUTHORITIES ..................................................................................... v
I.

ISSUES PRESENTED .................................................................................... 1

II.

INTRODUCTION ........................................................................................... 2

III.

STATEMENT OF FACTS .............................................................................. 4
A.

The Claims of the Patents-in-Suit Recite Hardware
Limitations............................................................................................. 4

B.

The Accused Devices Use a Modified Version of
Android Open Source, for Which Google Has Not
Accepted Responsibility. ....................................................................... 5

C.

Rockstar Has Longstanding Ties to the EDTX. .................................... 7

D.

The EDTX is Samsung’s Home Forum. ............................................... 9

E.

Google Also Has Connections to the EDTX....................................... 10

F.

Rockstar Sues in the EDTX; Google Forum Shops to the
NDCA. ................................................................................................. 11

IV.

STANDARD OF REVIEW ........................................................................... 12

V.

ARGUMENT: REASONS WHY MANDAMUS SHOULD
NOT ISSUE ................................................................................................... 13
A.

The District Court Committed No Error Regarding the
First-to-File Rule—This Case, Not the NDCA Case, Was
First Filed. ........................................................................................... 13
1.

Rockstar sued Samsung in the EDTX in October;
Google forum shopped to the NDCA in December.................. 14

2.

Samsung is not a Google customer in the Texas
action—it is a manufacturer, not a reseller, of the
iii

Case: 14-147

Document: 20-1

Page: 4

Filed: 08/22/2014

accused devices. ........................................................................ 16
3.
4.
B.

There is no threat to comity and judicial efficiency. ................ 19
The district court did not err in fully and fairly
considering the proffered transfer arguments. .......................... 21

The District Court Properly Analyzed the TransferRelated Public and Private Interest Factors. ....................................... 22
1.
2.

VI.

The challenged public interest factor is neutral. ....................... 26

3.
C.

The challenged private interest factors are either
neutral or weigh against transfer. .............................................. 23

The district court committed no legal error with
respect to Rockstar’s Plano office. ........................................... 27

The District Court Did Not Err in Noting That
Considerations of Judicial Efficiency Further Supported
Its Transfer Analysis. .......................................................................... 29

CONCLUSION.............................................................................................. 30

iv

Case: 14-147

Document: 20-1

Page: 5

Filed: 08/22/2014

TABLE OF AUTHORITIES
Page(s)
CASES
Elecs. for Imaging, Inc. v. Coyle,
394 F.3d 1341 (Fed. Cir. 2005) .......................................................................... 14
Eolas Tech. v. Adobe Sys., No. 6:09-CV-446,
2010 U.S. Dist. LEXIS 104125 (E.D. Tex. Sept. 28, 2010) ............................... 28
In re Apple, Inc.,
743 F.3d 1377 (Fed. Cir. 2014) .......................................................................... 24
In re EMC Corp.,
501 Fed. Appx. 973 (Fed. Cir. 2013) .................................................................. 30
In re Hoffman-La Roche,
587 F.3d 1333 (Fed. Cir. 2009) .......................................................................... 27
In re Microsoft,
630 F.3d 1361 (Fed. Cir. 2011) .......................................................................... 28
In re Nintendo Am., No. 14-132,
2014 U.S. App. LEXIS 12707 (Fed Cir. June 25, 2014) ..............................19, 21
In re TS Tech USA Corp.,
551 F.3d 1315 (Fed. Cir. 2008) .......................................................................... 13
In re Vistaprint Ltd.,
628 F.3d 1342 (Fed. Cir. 2010) .......................................................................... 29
In re Volkswagen of Am., Inc.,
545 F.3d 304 (5th Cir. 2008) ........................................................................12, 13
In re Volkswagen of Am., Inc.,
566 F.3d 1349 (Fed. Cir. 2009) .................................................................... 29, 30
In re Zimmer Holdings, Inc.,
609 F.3d 1378 (Fed. Cir. 2010) .......................................................................... 28

v

Case: 14-147

Document: 20-1

Page: 6

Filed: 08/22/2014

Kahn v. Gen. Motors Corp.,
889 F.2d 1078 (Fed. Cir. 1989) .................................................................... 18, 23
Katz v. Lear Siegler, Inc.,
909 F.2d 1459 (Fed. Cir. 1990) .......................................................................... 17
Merial Ltd. v. Cipla Ltd.,
681 F.3d 1283 (Fed. Cir. 2012) ...................................................................passim
Micron Tech., Inc. v. Mosaid Techs., Inc.,
518 F.3d 897 (Fed. Cir. 2008) ..........................................................14, 22, 29, 30
Microsoft Corp. v. DataTern, Inc.,
755 F.3d 899 (Fed. Cir. 2014) ............................................................................ 15
Spread Spectrum Screening LLC v. Eastman Kodak Co.,
657 F.3d 1349 (Fed. Cir. 2011) .................................................................... 16, 17
Stewart Org., Inc. v. Ricoh Corp.,
487 U.S. 22 (1988) .............................................................................................. 20
STATUTES
35 U.S.C. § 299 ........................................................................................................ 29
OTHER AUTHORITIES
Matt Hamblen, Google’s Nexus lineup may not sell well, but still challenges,
COMPUTERWORLD, http://www.computerworld.com/s/article/9244477/ ........... 16
Dan Levine, Apple, Google settle smartphone patent litigation, REUTERS,
http://www.reuters.com/article/2014/05/16/us-apple-google-settlementidUSBREA4F0S020140516 ............................................................................... 25

vi

Case: 14-147

I.

Document: 20-1

Page: 7

Filed: 08/22/2014

ISSUES PRESENTED
1. Whether Samsung and Google have an indisputable right to stay this

Texas-based case or transfer it to California pursuant to either the discretionary
“first-filed” rule or its discretionary “customer-suit” exception when: a) this Texas
case was first filed two months before the California case; b) Texas-based
Samsung is the manufacturer, not a reseller, of the accused mobile devices, and
substantially modifies the Android open source software before installing it on
those devices; and c) the district court in California recognized that it could be
“particularly helpful” if this case remained in Texas and proceeded to claim
construction prior to the case in California. RA98 (emphasis added).
2. Whether Samsung and Google have an indisputable right to transfer this
Texas-based case to California when the district court fully and fairly considered
their motion to transfer and reasonably concluded that—among other points, with
defendant Samsung based in the Eastern District of Texas, and defendant Google
in the Northern District of California—each of the challenged private and public
interest factors was either neutral or weighed against transfer.
3. Whether Samsung and Google have an indisputable right to transfer this
Texas-based case to California when the district court’s transfer analysis and
conclusion was further buttressed by the fact that five additional related actions
involving the same patents were already consolidated in the Texas forum.

1
McKool 391101v4

Case: 14-147

II.

Document: 20-1

Page: 8

Filed: 08/22/2014

INTRODUCTION
This is not a customer suit. Samsung, based in the Eastern District of Texas,

is accused of manufacturing and selling mobile devices that infringe the patents-insuit. Google does not make these devices, and Samsung does not buy them from
Google. While the accused devices use a customized version of the Android open
source software, Samsung modifies this software substantially before installing it
on the devices. And because of these modifications, a single suit against Google
cannot and will not resolve infringement by Samsung. Samsung has not agreed to
be bound by the resolution of the infringement case against Google, and Google
has not agreed to indemnify Samsung against infringement. Nor has Google stated
that it is jointly and severally liable for infringement by Samsung.
This is so because the patents-in-suit involve hardware elements,
manufactured by Samsung, with which Google has no involvement. One patent
covers electromagnetic shielding of components, which has no connection to
Android whatsoever. The claims of other patents require hardware elements such
as touch screens for displaying data and receiving input, memory for
storing/maintaining data, antennas, transmitters and receivers for sending and
receiving data, as well as processors for performing various functions—all of
which are sourced and manufactured by Samsung. While Google vaguely refers to
an adjudication of the “Android platform,” in reality there is no single “platform”

2
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 9

Filed: 08/22/2014

used by Samsung or other manufacturers for which Google is legally responsible
or even has standing to seek a noninfringement adjudication.
While not a customer suit, this action was the one first filed—in October
2013. It covered infringing mobile devices made by Samsung, including the Nexus
branded devices that Samsung manufactured for Google. This suit thus placed at
issue both Samsung mobile devices and Google Nexus devices manufactured by
Samsung. Two months after this first suit was filed, Google filed a declaratory
judgment action in the Northern District of California seeking a declaration that its
Nexus devices (at issue in Texas) and the so-called “Android platform” do not
infringe. This suit was expressly filed “because” of the first filed Texas action.
Google’s responsive NDCA case is plainly the second-filed suit.
The Eastern District of Texas is the logical focal point for the parties in this
case. Rockstar and MobileStar are U.S. entities with their sole place of business in
the EDTX, having succeeded to the patents that were owned by Nortel—which had
its U.S. headquarters in Richardson, Texas. Many of the employees of Rockstar
and MobileStar are ex-Nortel employees, including several who previously worked
in Nortel’s Richardson office. Defendant Samsung is also based in the EDTX.
Samsung and Google conspicuously underplay Samsung’s involvement in this
case, but it cannot be ignored—Samsung manufactures the accused devices and
was the initial defendant, and Samsung has its U.S. headquarters and develops the
3
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 10

Filed: 08/22/2014

accused devices (including the Nexus devices) in the EDTX.
III.

STATEMENT OF FACTS
A.

The Claims of the Patents-in-Suit Recite Hardware Limitations.

In October 2013, Rockstar and MobileStar (collectively, “Rockstar”)
asserted seven patents against Samsung in the home district of each of these
parties: the EDTX. A12-55; A783-84. Rockstar’s infringement allegations include
assertions against mobile devices manufactured and sold under the Samsung brand,
as well as mobile devices manufactured by Samsung and rebranded for Google
under the Google Nexus brand. RA118-24.
The claims of the patents-in-suit cover various aspects of a mobile device.
That means that neither this case, nor any other case, will adjudicate whether the
“Android platform” infringes. Indeed, the Android platform has not been accused
of infringing any patent. Of the patents-in-suit, none read solely on functions or
features found in Android software. A942-63. All require either hardware alone or
a mix of hardware and software. And critically, Samsung (like all of the
manufacturers in these related cases) modifies the Android software in Texas. As a
result, none of the cases filed by Rockstar and MobileStar will adjudicate
infringement by all the various accused devices because, at the very least, they are
different implementations of Android with different combinations of hardware.
The ’551 patent, for example, covers only hardware (shielding of

4
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 11

Filed: 08/22/2014

components), which has nothing whatsoever to do with Android. A942-63; A322.
Each of the other six patents covers a specific combination of hardware (designed
by Samsung and the other original equipment manufacturers) with software. The
hardware limitations are non-trivial, requiring hardware such as antennas,
transmitters and receivers for “sending,” “receiving,” touch screens for
“displaying” data, and “receiving” user input, as well as memory for “storing” and
maintaining data—functionality that occurs solely within hardware. A696. Certain
claim elements may be met by the custom Android operating system that has been
modified and provided by Samsung, but these software elements are combined
with the particularly claimed hardware elements or functionality provided by such
hardware elements that are specified and sold by Samsung, not by Google.
B.

The Accused Devices Use a Modified Version of Android Open
Source, for Which Google Has Not Accepted Responsibility.

Android is an open-source software project managed by Google, but
contributed to by many other entities and individuals, including Samsung, other
device manufacturers, and even members of the public. A9; A673-76; A936-37;
A971-76; A987-91. Mobile device manufacturers modify the Android open source,
which Google refers to as the “Android platform,” to suit their needs and to include
features and functions not found in the open source code. A9; A936-37; A971-76;
A987-91. Like the manufacturers in the related cases, Samsung does not use
Android open source in unmodified form. A9; A673-76; A936-37; A971-76;
5
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 12

Filed: 08/22/2014

A987-91. Rockstar’s infringement contentions reveal considerable differences in
the various custom implementations of the “Android platform.” A977-83.
Samsung’s modifications are so extensive that it employs a team of Android
engineers to customize the open source code. A984-86. Indeed, the extent of these
modifications has been a source of contention with Google. A987-91.
Google does not charge companies to implement the Android operating
system on their devices. Anyone may download the software for free, modify it
extensively, and use it as deemed appropriate. Companies that download and use
Android are not Google customers—they do not pay Google anything and they
may modify and use the software as they deem fit. Given the wide-open nature of
the Android source code, it is not surprising that Google has not accepted legal
responsibility for patent infringement by Samsung’s devices, or by the devices
accused in the related cases. Nor has Google agreed to indemnify those who use or
sell devices incorporating the Android operating system. RA75; RA85.
This case will not adjudicate the hypothetical question of whether Android
open source infringes. Samsung, like the other mobile device manufacturers, uses a
modified version of Android, and none of the manufacturers have agreed to be
bound by any infringement findings against Google.1 And the Android software,
1

At a hearing in the NDCA case, the court asked Google whether the accused
manufacturers would agree to be bound by the outcome of the NDCA suit. RA8586. Google has failed to obtain consent from a single mobile device defendant.
6
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 13

Filed: 08/22/2014

standing alone, is not a product accused of infringement. The accused products are
mobile devices with numerous hardware elements combined with software.2
C.

Rockstar Has Longstanding Ties to the EDTX.

Rockstar and MobileStar are the assignees of patents that resulted from
extensive research and development performed by Nortel Networks. A693.
Although its worldwide headquarters was located in Canada, for twenty years the
headquarters for Nortel’s U.S. entity and its largest U.S. facility (with
approximately 10,000 employees) was in Richardson, Texas. A729. Nortel
conducted patent prosecution and licensing activities from Richardson. A720.
After confronting bankruptcy in 2009, in 2011 Nortel held an auction for its
patents. A720. Google ultimately bid $4.4 billion for the Nortel portfolio, but lost
the auction to Rockstar Bidco LP, which bid $4.5 billion. A720. Rockstar Bidco
LP—an entity distinct from Rockstar—subsequently assigned a minority of the
Nortel patents directly to some of its limited partners, and assigned the remaining
Nortel patents (including the patents-in-suit) to Rockstar. RA41.
Rockstar is a Delaware limited partnership. Its limited partners are: Apple,
BlackBerry, Ericsson, Microsoft, and Sony, each with a minority ownership
percentage. A729. None of the above companies has a majority or controlling
2

Google thus does not have standing to seek an adjudication of Android open
source because there is no evidence that anyone, even Google, uses the Android
open source in a mobile device without substantial modification.
7
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 14

Filed: 08/22/2014

interest in Rockstar. Two of the limited partners have strong Texas connections:
Ericsson’s U.S. headquarters are located within the EDTX, and BlackBerry’s
headquarters are in Irving. The other limited partners are scattered, with Microsoft
in Washington, Apple in California, and Sony in New Jersey. A730; RA42.
After receiving the assignments from Rockstar Bidco LP, Rockstar created
subsidiary entities for the purpose of licensing its intellectual property in different
markets. A1288; RA71. Rockstar then assigned certain patents corresponding to
different market segments and technology areas to those newly-created
subsidiaries. A1288; RA71. For example, MobileStar focuses on licensing patents
related to mobile device technology, NetStar Technologies focuses on internet
search technology, Bockstar Technologies focuses on technology for network
components, and Constellation Technologies focuses on network technologies for
telecommunications service providers to deliver cable, telecommunications, and
other multimedia services. Rockstar owns two of the patents-in-suit. A729; RA42.
MobileStar owns five of the patents-in-suit and is the exclusive licensee (from
Rockstar) of the other two patents, within its field of use. A729.
Rockstar is based in the EDTX. Rockstar initially leased Nortel’s
Richardson office space—where many of Nortel’s patent files were located,
including files relevant to the patents-in-suit. A731-33. In August 2012, after
Nortel sold its Richardson campus, Rockstar was forced to move and leased its
8
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 15

Filed: 08/22/2014

current offices in nearby Plano, within the EDTX. A731. Rockstar and MobileStar
still maintain their principal place of business in Plano. A729-31. The Plano office
is Rockstar’s only U.S. office, although some employees also work out of their
homes. A731. The office contains 8,125 square feet, with 10 assigned offices, 2
guest offices, 4 conference rooms, 7 work areas, and storage space. A731.
When Rockstar Bidco LP acquired the patents-in-suit from Nortel, the
Rockstar entities also acquired former Nortel employees responsible for licensing
and prosecuting the Nortel patents. A730-31. Rockstar now has 15 full-time
employees in the U.S., including five full-time employees in Plano and others who
spend significant time there. A731. No Rockstar or MobileStar executive or
employee lives or works in California. A732. Eight of the U.S.-based employees
likely have relevant information; three of them work full-time in the Plano office,
one lives in Colorado, and the rest are on the east coast. A732-33. Additionally,
two Rockstar board members are in the EDTX or nearby. Kasim Alfalahi (also
Chief IP officer at Ericsson), works in the EDTX. A733. Randy Mishler (also
Senior Director of IP Licensing at BlackBerry), works in nearby Irving. A733.
D.

The EDTX is Samsung’s Home Forum.

Samsung Telecommunications America, LLC has its headquarters in
Richardson—within the EDTX. A783-84. From the EDTX, Samsung “researches,
develops and markets a variety of personal and business products throughout North

9
McKool 391101v4

Case: 14-147

America

including

Document: 20-1

handheld

wireless

Page: 16

phones,

Filed: 08/22/2014

wireless

communications

infrastructure systems and enterprise communications systems.” A785-86. The
products developed in the EDTX by Samsung include the mobile devices at issue
in this case. Samsung also has an office in Dallas, where its “Dallas Technology
Labs (DTL) leads Samsung’s standardization initiatives in the IEEE, ITU, 3GPP,
WiMAX and other major forums.” A787-88. These laboratories employ over 150
engineers, including Samsung’s Android software engineers. A787-88. The DTL is
“highly regarded” by Samsung “as the thought leader and innovation engine for its
wireless business units.” A787-88.
Because the EDTX is Samsung’s home forum, Samsung is no stranger to
litigating there. When Samsung sues on its patents, it frequently selects the EDTX
as its preferred venue. A789-94. Samsung has even opposed previous motions to
transfer from the EDTX to the NDCA on the grounds that the EDTX was a more
convenient forum. A897-901. EDTX and NDCA courts have each recognized that
the EDTX is a convenient forum for litigation involving Samsung. A902-18.
E.

Google Also Has Connections to the EDTX.

In 2012, Google opened an office in Frisco (in the EDTX). A670-71. Google
later relocated that office to Dallas (in the NDTX). A761-74. Today Google
maintains at least two Texas offices, in Dallas (approximately 20 miles from the
EDTX) and in Austin. A761-76. Google’s Austin office focuses on developer

10
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 17

Filed: 08/22/2014

relations and technical solutions, among other issues. A777-79. Google’s Dallas
office contains departments for design and engineering, as well as sales. A780-82.
Publicly available information suggests that Google’s Texas employees work on
the development of the Android platforms. Specifically, Jeff Hamilton, a software
engineer on Google’s Android team who specializes in “[o]perating systems
development for mobile devices,” lives in Austin, Texas. A1070-72.
F.

Rockstar Sues in the EDTX; Google Forum Shops to the NDCA.

On October 31, 2013, Rockstar and MobileStar filed patent infringement
lawsuits in the EDTX against Samsung, ASUS, HTC, Huawei, LG, Pantech, and
ZTE—all mobile device manufacturers. A919-32. The EDTX was a logical forum
because Rockstar, MobileStar, and Samsung are each headquartered there.
Samsung has a huge mobile-device presence in the EDTX, and ZTE is also
headquartered in Texas, only a few miles from the EDTX border. The other
defendants are scattered in different locations around the country: California,
Washington, New Jersey, and Georgia. But given that the EDTX had the strongest
ties to Rockstar, as well as to the defendants as a whole, the EDTX was a logical
central venue for all the suits. On December 23, rather than intervene in the EDTX
case, Google filed its action for declaratory judgment in the NDCA. A933-35. On
December 31, Rockstar and MobileStar added Google as a defendant to the
Samsung case in the EDTX. A69-135. Neither Google nor EDTX-based Samsung

11
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 18

Filed: 08/22/2014

moved to sever their joinder in a single action in the EDTX.
On January 23, 2014, Rockstar and MobileStar filed a motion to dismiss the
NDCA action. They maintained that the NDCA lacked jurisdiction over
MobileStar and argued for dismissal under the first-to-file rule. A298-328; RA2-4.
In an order issued April 17, the NDCA court denied the motion to dismiss. A30028. Rockstar then filed a motion to transfer the NDCA action to the EDTX. RA2963. There was a hearing on June 26, during which the NDCA court expressed the
view that this suit should precede the NDCA case so the court “would have the
benefit of looking at what the Texas judge had done with claim construction.”
RA93. But in an order issued on August 20, the NDCA court reserved ruling on the
motion to transfer pending the outcome of this mandamus proceeding, noting that
if the EDTX court’s discretionary ruling stands, the better course would be to send
the NDCA case to Texas for consolidation and a single trial. RA127-28.
IV.

STANDARD OF REVIEW
Three requirements must be met before a writ of mandamus may issue:
(1) the party seeking issuance of the writ [must] have no other
adequate means to attain the relief he desires …; (2) the petitioner
must satisfy the burden of showing that [his] right to issuance of the
writ is clear and indisputable; and (3) even if the first two
prerequisites have been met, the issuing court … must be satisfied that
the writ is appropriate under the circumstances.

In re Volkswagen of Am., Inc., 545 F.3d 304, 311 (5th Cir. 2008) (internal quotes
omitted). To show a “clear and indisputable” right to the writ, the petitioner must
12
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 19

Filed: 08/22/2014

prove the existence of “exceptional circumstances amounting to a judicial
usurpation of power or a clear abuse of discretion.” Id. at 309. Thus, as this Court
has explained, “[i]f this case were before the court as an ordinary appeal, we would
review the district court’s denial of transfer under the ‘abuse of discretion’
standard …. However, because [petitioner] is requesting extraordinary relief in the
form of a petition for a writ of mandamus, it must meet an even higher burden of
demonstrating that the denial was a ‘clear’ abuse of discretion such that refusing
transfer produced a ‘patently erroneous result.’” In re TS Tech USA Corp., 551
F.3d 1315, 1319 (Fed. Cir. 2008); see Volkswagen, 545 F.3d at 312 (“[I]n no case
will we replace a district court’s exercise of discretion with our own.”).
V.

ARGUMENT: REASONS WHY MANDAMUS SHOULD NOT ISSUE
A.

The District Court Committed No Error Regarding the First-toFile Rule—This Case, Not the NDCA Case, Was First Filed.

Samsung and Google open with the arguments that the district court “clearly
erred by declining to defer to the first-filed action” in California and by
“evaluat[ing] the convenience factors without first finding that its case was first
filed.” Pet.15. These arguments are meritless: the California action was filed after
this one (and concerned products accused in the EDTX), and the district court’s
decision to base its ultimate conclusion on considerations of litigant convenience
and judicial economy, rather than on any rigid and mechanical application of the
first-to-file rule, is well supported by the controlling case law.
13
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 20

Filed: 08/22/2014

The first-to-file rule is a “doctrine of federal comity, intended to avoid
conflicting decisions and promote judicial efficiency, that generally favors
pursuing only the first-filed action when multiple lawsuits involving the same
claims are filed in different jurisdictions.” Merial Ltd. v. Cipla Ltd., 681 F.3d 1283,
1299 (Fed. Cir. 2012). The date by which the first-filed action is determined
“derives from the filing of the complaint.” Id. This general rule is “not rigidly or
mechanically applied”—district courts are provided with “an ample degree of
discretion” to determine that considerations of litigant convenience or judicial
economy override the rule in a given circumstance. Id.; see also Elecs. for
Imaging, Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005). Factors that
justifiably override the rule include “the convenience and availability of witnesses”
or “the possibility of consolidation with related litigation.” Micron Tech., Inc. v.
Mosaid Techs., Inc., 518 F.3d 897, 904 (Fed. Cir. 2008).
1.

Rockstar sued Samsung in the EDTX in October; Google
forum shopped to the NDCA in December.

Samsung and Google proceed under the misrepresentation that the suit filed
by Google in California is “the first-filed action regarding the same patents” at
issue in this case. Pet.15. That is simply not true. The NDCA action was filed two
months after, and expressly in response to, this first-filed action regarding the same
patents (and some of the same products) in Texas. A12; A56-57.
Rockstar filed this suit against Samsung in the EDTX—Samsung’s home
14
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 21

Filed: 08/22/2014

forum—in October of 2013. A12; A783-84; A897-901. Rockstar alleged that
mobile devices manufactured and sold by Samsung (including the Nexus 10)
infringe seven of Rockstar’s patents. A12-54; RA118-24. Of these patents, one
covers only hardware, and the others cover some combination of hardware and
software functionality. A942-63; A696. Notwithstanding the allegations directed to
devices manufactured by Samsung, Google took note that the accused devices each
run a modified and customized version of the Android operating system—and
decided to respond. But rather than simply intervening in this EDTX action,
Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2014), Google
shopped for its own forum and filed suit against Rockstar in the NDCA, A56.
Google’s California suit sought a declaratory judgment that its “Nexus 5, Nexus 7,
and Nexus 10” devices, as well as its “Android platform” do not infringe the same
seven patents at issue in the Texas suit. A61-68. That responsive action—Google
expressly “request[ed] relief because” Samsung had been sued, A57—was filed in
December of 2013, A56, two months after this suit was filed in Texas, A12.
Merial holds that the relevant dates, for purposes of the first-to-file rule, are
“derive[d] from the filing of the complaint.” 681 F.3d at 1299. Review of those
dates leaves no doubt that the December-initiated California suit cannot possibly
be the first-filed action in relation to the October-initiated suit that Samsung and
Google now seek to stay or transfer from Texas to California. A12; A56.
15
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 22

Filed: 08/22/2014

Significantly, the first-filed EDTX case accuses Samsung branded devices as
well as Nexus branded devices manufactured by Samsung for Google. But the
Nexus devices sold by Google and manufactured by Samsung have an extremely
small market share. RA118-24.3 Focusing on the subordinate claims against
Google, rather than the primary claims against Samsung, would let the tail wag the
dog. Adding Google to the principal suit against Samsung did not somehow
transform that initial suit—the suit that Samsung and Google now seek to stay or
transfer—into a second-filed action. A12; 56-57. To the extent that the first-to-file
rule is relevant, it points to this litigation as the first-filed action.
2.

Samsung is not a Google customer in the Texas action—it is
a manufacturer, not a reseller, of the accused devices.

Samsung and Google also suggest that this action is “subject to the
customer-suit doctrine.” Pet.17. Again, that is not true.
The customer-suit doctrine constitutes an additional exception to the first-tofile rule, and provides that a second-filed action may take precedence “where the
first suit is filed against a customer who is simply a reseller of the accused goods,
while the second suit is a declaratory judgment action brought by the manufacturer
of the accused goods.” Spread Spectrum Screening LLC v. Eastman Kodak Co.,
657 F.3d 1349, 1357 (Fed. Cir. 2011) (citation omitted and emphasis added). The
3

Matt Hamblen, Google’s Nexus lineup may not sell well, but still challenges,
COMPUTERWORLD, http://www.computerworld.com/s/article/9244477/.
16
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 23

Filed: 08/22/2014

doctrine is triggered when “the manufacturer is the true defendant in the customer
suit,” Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990), and “the
second action would resolve all charges against the customer[],” Spread Spectrum,
657 F.3d at 1358. The doctrine is not triggered when it is unlikely to “resolve the
‘major issues’ concerning the claims against the customer.” Id.
Whether or not this discretionary exception to a discretionary rule could ever
be an appropriate subject for mandamus, see id. at 1359, it certainly provides no
basis for mandamus in this case, as none of the doctrine’s requirements are met.
First, Samsung is not “simply a reseller” of its accused mobile devices: it
manufactures those devices. A16. Google manufactures none of the accused
hardware, which is an element of the patents-in-suit. Supra Part III.A. With respect
to the software, Samsung has created its own, unique version of the Android
operating system, making substantial modifications to the code before installing it
on its mobile devices. A936-41; A971-76; A1114-19; A673-76; A9. Samsung is
thus not “simply a reseller” of the Android software. Its modifications to the
Android code are material to the claims of infringement in this case. A9; A977-83;
A984-86; A987-91. And even the modified code, standing alone, is not accused of
infringement—it meets certain elements but only in combination with hardware.
Second, Google is not the “true defendant” with respect to the claims against
Samsung. Google has never accepted legal responsibility for patent infringement
17
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 24

Filed: 08/22/2014

by Android. The petition is deafeningly silent on this point. Google never asserts
that it has agreed to indemnify Samsung for the accused infringement. Google
never asserts that it is jointly and severally liable for infringement by Samsung’s
accused devices, with their modified version of Android. And Samsung has never
agreed to be bound by an infringement judgment that might be rendered in the
NDCA case. Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1082 (Fed. Cir. 1989).
Third, the second-filed action in California will not “resolve all charges” nor
even the “major issues” concerning Rockstar’s infringement claims against
Samsung. The “Android platform” is not accused of infringement and will not be
adjudicated in the abstract by this (or any other case) because the patents all cover
hardware, not just software, and because there is no evidence that any company
uses the Android open source without modification. The district court considered
this point carefully and found that, while “each of the accused products uses some
version of Android,” Samsung “modifies and customizes the Android system to its
own particular purposes.” A9. The court thus reasonably concluded that it was
unlikely that “resolving infringement issues as to Android proper will resolve
issues relating to [Samsung’s] various implementations of the Android system.”
A9. The court further noted that the Texas action presents “issues relating to
[Samsung’s] devices and hardware, which the California litigation does not.” A9.
This conclusion should not be controversial: Google has officially taken the
18
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 25

Filed: 08/22/2014

position that whether or not the results in the California action will bind Samsung
is not an issue before the Northern District of California.4 A1314-27.
The facts here are nothing like those in In re Nintendo Am., No. 14-132,
2014 U.S. App. LEXIS 12707 (Fed Cir. June 25, 2014), where “Nintendo [was] the
true defendant,” id. at *5, and “Nintendo’s liability [was] predicate to recovery
from any of the defendants,” id. at *7. This is not a customer suit. And as the
district court reasonably concluded, “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.” A10.
3.

There is no threat to comity and judicial efficiency.

Samsung and Google make much of purported conflicts between the
decisions of the district courts in California and Texas, Pet.15, but in fact there is
plainly no threat to the principles of comity and judicial efficiency that undergird
the first-to-file rule and its numerous exceptions, see Merial, 681 F.3d at 1299.
As an initial matter, and notwithstanding the repeated suggestions of
Samsung and Google to the contrary, Pet.15-17, the NDCA court never held that

4

Samsung and Google suggest that the district court’s finding that the many
related cases may “present common issues of claim construction and damages” is
“at war” with its finding that the California litigation will not “dispose of key
issues in this case.” Pet.18. That is obviously not true. Related cases regularly
present common issues justifying pre-trial consolidation without overlapping to the
extent that liability in one case disposes of liability issues in the others.
19
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 26

Filed: 08/22/2014

Google’s declaratory judgment action was first-filed with respect to this action.
Instead, it initially reasoned that, even if this Texas action were the first-filed suit,
it could apply the customer-suit exception to keep the second-filed declaratory
judgment action in California. A324. But the NDCA court’s analysis arose in a
procedural context different from this case, and was subject to the standards
applicable for a motion to dismiss—that is, based on the allegations pled in
Google’s complaint and resolving any “conflicts in the allegations and evidence …
in [Google’s] favor.” A305. The Texas district court, in contrast, had the benefit of
proceeding on a more robust record and of weighing the evidence before it. A3-4;
see also Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988).
More importantly, the NDCA court never suggested that its initial decision
to keep Google’s California suit should control the EDTX court’s decision to keep
or transfer this case. To the contrary, the NDCA court noted that the Texas actions
“might not and need not be transferred here.” A326. The court went further at a
subsequent case management conference and hearing on Rockstar’s motion to
transfer under § 1404, noting that it could be “particularly helpful” to push back
the dates for claim construction because “that might mean that if the other cases
stay in Texas, that the claim construction there would be done before we get to it
here, and then I would have the benefit of looking at what the Texas judge had
done with claim construction.” RA93; RA98. And in an order filed just two days
20
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 27

Filed: 08/22/2014

ago, the NDCA court indicated that it is now disposed, if this action proceeds in
the EDTX, to transfer Google’s declaratory judgment action there. RA127-28.
The NDCA court fully expected not only that the EDTX court would make
its own informed decision regarding stay and transfer, but that the EDTX court
might reasonably decide to proceed with this action. In light of those expectations,
the court structured the California suit so as to take advantage of the work done in
the EDTX.5 And upon hearing that the Texas court had decided that the related
cases should proceed in the EDTX, the NDCA court indicated that it is disposed to
transfer the NDCA case to that forum. This is federal comity and judicial
efficiency in action, and provides no grounds for mandamus.
4.

The district court did not err in fully and fairly considering
the proffered transfer arguments.

Samsung and Google’s argument that the district court “clearly erred” by
“evaluat[ing] the convenience factors without first finding that its case was first
filed,” Pet.15, is also meritless. The first-to-file “rule is not rigidly or mechanically
applied,” Merial, 681 F.3d at 1299, and this discretionary rule, its “customer-suit
exception, … and § 1404(a) are all designed to facilitate the just, convenient,
efficient, and less expensive determination” of cases, Nintendo, 2014 U.S. App.

5

While Google raises claims regarding certain of its Nexus mobile devices and the
“Android platform” in California, none of Samsung’s accused devices (with their
customized versions of Android) are at issue there.
21
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 28

Filed: 08/22/2014

LEXIS 12707, at *5. This Court has thus held that district courts addressing firstto-file arguments “must consider the real underlying dispute: the convenience and
suitability of competing forums,” and thus should “weigh the factors used in a
transfer analysis as for any other transfer motion.” Micron, 518 F.3d at 905.
This black-letter law is entirely consistent with, and fully supports, the
district court’s observation that it “need not resolve the formalistic question of
whether Rockstar’s October complaint makes this suit the first-filed case”
because—as the court concluded after a full and fair analysis—the “considerations
of judicial economy that underlie the general first-filed rule, in this case, weigh
against a transfer or stay.” A8. This Court’s holding in Merial is fully applicable:
“even if the [California] action could be considered the first suit filed, the district
court was well within its considerable discretion in concluding that principles of
comity would not support a stay because the precise issues at stake differed
between the proceedings, and a key party [Samsung] was absent from the
[California] action.” 681 F.3d at 1299.
B.

The District Court Properly Analyzed the Transfer-Related
Public and Private Interest Factors.

Samsung and Google suggest that the district court also “committed clear
error in evaluating the convenience factors and denying transfer.” Pet.24. Their
analysis, however, is infected with two fatal flaws. First, Samsung and Google
repeatedly ignore Samsung’s contacts with the EDTX. Pet.22-30. Samsung is the
22
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 29

Filed: 08/22/2014

principal defendant in this action, the manufacturer of the accused devices
(including the Nexus devices it manufactures for Google), and a party with deep
ties to the EDTX. An analysis that ignores these critical contacts is virtually
worthless. Second, Samsung and Google repeatedly ignore that, as the court found,
they principally supported their motion with vague generalizations, rather than
with specific evidence. A5-6. It could never be a clear abuse of discretion to find
that a party offering vague generalizations has failed to carry its burden to make a
“clearly more convenient” showing. In any event, the district court properly
analyzed the transfer-related public and private interest factors.
1.

The challenged private interest factors are either neutral or
weigh against transfer.

Cost of Attendance of Willing Witnesses. The district court found that
Google employees in California would face substantial costs traveling to Texas,
Samsung and Rockstar employees in Texas would face substantial costs traveling
to California, and Samsung employees in Korea would face substantial costs
traveling to either venue. A7. “Transferring this case would” thus, “at best, merely
redistribute the inconvenience of travel among the parties.” A7. That finding was
well supported, A984-86; A1073-75; A727-34; A715-17; A718-20, and fully
justifies the court’s conclusion that this factor “weighs slightly against transfer,”
A8. Kahn, 889 F.2d at 1083.
Samsung and Google complain that the court “noted” Rockstar’s specific
23
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 30

Filed: 08/22/2014

identification of “several potential witnesses who work at its Plano office,” but did
not “note” Google’s reference to “several hundred Android engineers who work in
the San Francisco Bay Area.” Pet.24-25. The vague reference to hundreds of
engineers, however, did not identify any potential witnesses, and thus did little to
advance their position. In re Apple, Inc., 743 F.3d 1377, 1378-79 (Fed. Cir. 2014).
Regardless, the court considered not only Google’s California-based witnesses, but
also Samsung’s Texas-based witnesses—who will have knowledge of the devices
that Samsung manufactures for itself as well as those it manufactures for Google.
Compulsory Process. The district court again pointed out that, while Google
failed to “identify any former employees who are expected to testify at trial,”
Rockstar “specifically identifie[d] 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.” A6. After weighing the
submitted evidence, the court noted that “[o]ne 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.” A7. Again, that finding
was well supported, A748-58; A727-34; A1024-29; A1043-49, and fully justifies
the court’s conclusion that “this factor is neutral,” A7.
Samsung and Google argue that, in addition to the one named inventor in
California, the court should have given weight to the possibility that some
24
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 31

Filed: 08/22/2014

unidentified employee of Apple (as a minority equity owner of Rockstar) might be
called to testify. Pet.27. It is true that the California district court, operating under
the markedly different standards governing motions to dismiss, credited Google’s
Apple-related hypothesizing. A318. But having reviewed the evidence here (which
demonstrated that Rockstar’s equity owners do not direct or control Rockstar’s
licensing efforts, A727-34), the district court “view[ed] Google’s asserted interest
in Apple’s testimony with some skepticism,”6 and further noted “that other
Rockstar parents—notably Ericsson and BlackBerry—maintain U.S. headquarters
in Texas.” A6; A1024-29. Even if Google’s conspiracy theory had merit (and if it
were accompanied with the specific identification of a potential Apple witness),
that would not impact the neutrality of this factor.
Ease of Access to Sources of Proof. The district court noted that while
Google averred that its documents were “accessible from Google’s headquarters in
the Northern District,” Google was “pointedly silent on the physical location where
said documents are stored.” A5. It further noted that Samsung maintains its U.S.
headquarters in the EDTX as well as a laboratory in Dallas that is “significantly
involved in the development of the accused products,” and that Rockstar’s

6

It is worth noting that, after the NDCA court’s ruling on the motion to dismiss,
Apple and Google settled their high-profile dispute. Dan Levine, Apple, Google
settle smartphone patent litigation, REUTERS, http://www.reuters.com/article
/2014/05/16/us-apple-google-settlement-idUSBREA4F0S020140516.
25
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 32

Filed: 08/22/2014

“documentary evidence relating to the patents-in-suit is stored at its Plano, TX
headquarters—also within the Eastern District.” A5. In short, 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.” A5;
A727-34; A718-20. The court thus found that this factor weighed against transfer,
but noted that it was “not dominant in its ultimate decision.” A5.
Samsung and Google argue that “typically,” the “defendant has the majority
of relevant documents,” and quibble with the district court’s interpretation of
Google’s declaration. Pet.28-29. Not once do they challenge the finding that
Samsung’s documents are located in the EDTX. A5. As Samsung is the initial and
primary defendant in this case—the defendant the manufactures the accused
devices both for itself and for Google—that fact alone dooms their analysis.
2.

The challenged public interest factor is neutral.

Local Interest. The district court reasoned that “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,” and so
reasonably found the local-interest factor neutral. A10.
Samsung and Google argue that this finding contravenes this Court’s
observation that local interest can arise when a district is home to a party because

26
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 33

Filed: 08/22/2014

the suit may call “into question the reputation of … individuals that work in the
community.” In re Hoffman-La Roche, 587 F.3d 1333, 1336 (Fed. Cir. 2009);
Pet.25-26. Samsung and Google suggest that the claims against Google might call
into question the reputation of Google’s employees in the NDCA. Pet.26. But they
ignore that, by the same logic, the claims against Samsung would even more
certainly call into question the reputation of Samsung’s employees in the EDTX—
where the devices actually accused of infringing are “research[ed], develop[ed],
and market[ed].” A785-86. To the extent that this proposed local-interest analysis
has merit, it thus suggests that this factor weighs against transfer. A10.
But the cite to Hoffman-La Roche is instructive, because in that case, as in so
many where this Court has granted mandamus, it was “undisputed that th[e] case
has no relevant factual connection to the Eastern District of Texas.” 587 F.3d at
1338. Here it is undisputed that the case has deep factual connections to the EDTX,
including the dispositive fact that the first-sued manufacturer of the accused
devices (including the Nexus 10) makes its home there.
3.

The district court committed no legal error with respect to
Rockstar’s Plano office.

Samsung and Google also suggest that the district court’s analysis “relied
heavily on Rockstar’s satellite office in Plano, Texas.” Pet.22-23. The above
analysis disproves this suggestion. Even discounting Rockstar’s Texas presence,
Samsung’s Texas presence and Google’s failure to meet its burden with specific
27
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 34

Filed: 08/22/2014

evidence doom the motion to transfer. In any event, the Plano office is not recent,
ephemeral, or an artifact of litigation. Nor is it a “satellite.” It is Rockstar’s fully
operational (and only) U.S. office with full-time employees doing patent
prosecution, licensing, and litigation support. A727-34. For over a decade, Nortel
prosecuted patents and ran programs to monetize patents (including the patents-insuit) less than a mile from the EDTX border. A727-34. Today, Rockstar employs
five full-time employees in the Plano office, including three patent attorneys and
an office administrator. A727-34. The patent-related activities conducted in the
Plano office are within Rockstar’s normal course of business, and Rockstar holds
its board meetings and annual strategy sessions at the Plano office. A727-34.
In short, the Plano office is a real office, and nothing like those at issue in In
re Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010), and In re
Microsoft, 630 F.3d 1361, 1364-65 (Fed. Cir. 2011). The district court reasonably
concluded that Samsung and Google had failed to prove the longstanding
connection between Nortel, Rockstar, and the EDTX was nothing but an artifact
designed “to game the Court’s transfer analysis.” A5; Eolas Tech. v. Adobe Sys.,
No. 6:09-CV-446, 2010 U.S. Dist. LEXIS 104125, at *20-22 (E.D. Tex. Sept. 28,
2010), aff’d sub nom. In re Google, 412 Fed. Appx. 295, 296 (Fed. Cir. 2011).7
7

Samsung and Google point to the NDCA court’s assumption, based on Google’s
allegations, that Rockstar is actually headquartered in Canada. Pet.24. But the
evidence and sworn testimony before the EDTX established otherwise. A727-34.
28

McKool 391101v4

Case: 14-147

C.

Document: 20-1

Page: 35

Filed: 08/22/2014

The District Court Did Not Err in Noting That Considerations of
Judicial Efficiency Further Supported Its Transfer Analysis.

In addition to the private and public interest factors discussed above, the
district court also considered the impact of transfer on judicial economy: “there are
six Rockstar litigations currently pending 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.” A8. Because these cases will present
“common issues of claim construction and damages, and (most likely) validity,”
the court concluded that judicial efficiency also counseled against transfer. A8-9.
Such a conclusion is fully supported by the case law. In re Volkswagen of Am.,
Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009); In re Vistaprint Ltd., 628 F.3d 1342,
1347 n.3 (Fed. Cir. 2010); see also Micron, 518 F.3d at 904-05 (approving
consideration of “the possibility of consolidation with related litigation”).
Samsung and Google nevertheless argue, as their second issue presented,
that this analysis constituted clear error because considering the judicial
efficiencies promised by the possibility of consolidation for pre-trial purposes
allegedly contravenes the new joinder provision of the America Invents Act
(“AIA”). Pet.20-21; 35 U.S.C. § 299. As an initial matter, Samsung and Google
never presented this AIA-related issue to the district court. It is thus not preserved
and cannot form the basis for mandamus. The issue is also ultimately irrelevant
because the district court’s transfer analysis did not turn on considerations of
29
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 36

Filed: 08/22/2014

judicial economy—none of the factors weighs in favor of transfer.
The argument further fails on the merits. The new AIA provision applies
only to joinder “in one action” or “consolidat[ion] for trial.” Id. § 299. It does not
prohibit consolidation of separate but related matters for discovery and pre-trial
purposes, and most certainly does not prohibit considerations of judicial efficiency
in a transfer analysis under §1404. On the other hand, it is black-letter law that
judicial economy—including the economies associated with consolidating related
cases for pre-trial purposes—can and should be considered in a transfer analysis.
Volkswagen, 566 F.3d at 1351; Micron, 518 F.3d at 904-05. Samsung and Google
suggest that this Court’s unpublished opinion in In re EMC Corp. suggests
otherwise, Pet.22, but that opinion expressly provides that “the copendency of
cases involving the same patent [is a] permissible consideration[] in ruling on a
motion to transfer venue.” 501 Fed. Appx. 973, 976 (Fed. Cir. 2013). The district
court committed no error in following the black-letter law of this Court.
VI.

CONCLUSION
For the foregoing reasons, Respondents respectfully request that the Court

deny the petition for mandamus.

30
McKool 391101v4

Case: 14-147

Dated: August 22, 2014

Document: 20-1

Page: 37

Filed: 08/22/2014

Respectfully submitted,

/s/ Theodore Stevenson, III
Theodore Stevenson, III
Principal Attorney
David Sochia
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
[phone]
Joel L. Thollander
Joshua W. Budwin
Leah Buratti
MCKOOL SMITH, P.C.
300 W. 6th Street, Suite 1700
Austin, TX 78701
[phone]
Attorneys for Respondents Rockstar
Consortium US LP and MobileStar
Technologies, LLC

31
McKool 391101v4

Case: 14-147

Document: 20-1

Page: 38

Filed: 08/22/2014

CERTIFICATE OF SERVICE
I hereby certify that the foregoing OPPOSITION TO PETITION FOR
WRIT OF MANDAMUS was served on August 22, 2014, by operation of the
Court’s CM/ECF system per FED. R. APP. P. 25.

Date: August 22, 2014

/s/ Joel L. Thollander
Joel L. Thollander

32
McKool 391101v4