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 C

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2014-147

United States Court of Appeals
for the Federal Circuit
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 U.S. District Court for the Eastern
District of Texas in Case Nos. 2:13-cv-894-JRG and 2:13-cv-900-JRG,
Judge Rodney Gilstrap

REPLY IN SUPPORT OF
PETITION FOR WRIT OF MANDAMUS
Kathleen M. Sullivan
Patrick D. Curran
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
[phone] facsimile

Charles K. Verhoeven
Sean S. Pak
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
[phone]
[phone] facsimile

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

Kevin P.B. Johnson
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
[phone]
[phone] facsimile

Attorneys for Petitioner
Google Inc.

August 25, 2014

Joseph Milowic III
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
[phone] facsimile
Attorneys for Petitioners Samsung
Electronics Co., Ltd., Samsung
Electronics America, Inc., and Samsung
Telecommunications America, LLC

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CERTIFICATE OF INTEREST FOR SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA, INC., AND SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC
Pursuant to Federal Circuit Rule 47.4(a) and Federal Rule of Appellate
Procedure 26.1, counsel for Petitioner Samsung Electronics Co., Ltd., Samsung
Electronics America, Inc., and Samsung Telecommunications America, LLC
(“Samsung”) certifies the following:
1.

The full name of every party represented by the undersigned is

Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
Telecommunications America, LLC, and Google Inc.
2.

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

3.

Samsung Electronics Co., Ltd. has no parent corporation and there is

no publicly held corporation that owns 10% or more of its stock. Samsung
Electronics America, Inc. is a wholly owned subsidiary of Samsung Electronics
Co., Ltd. No other publicly held corporation owns 10% or more of the stock of
Samsung Electronics America, Inc. Samsung Telecommunications America, LLC
is a wholly owned subsidiary of Samsung Electronics America, Inc. No other
publicly held corporation owns 10% or more of the stock of Samsung
Telecommunications America, LLC.

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4.

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

appeared for Samsung in the district court or are expected to appear in this Court
are:
Quinn Emanuel Urquhart & Sullivan, LLP: Charles K. Verhoeven, Kevin
P.B. Johnson, Sean S. Pak, Joseph Milowic III

DATED: August 25, 2014

/s/ Charles K. Verhoeven
Charles K. Verhoeven

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CERTIFICATE OF INTEREST FOR GOOGLE INC.
Pursuant to Federal Circuit Rule 47.4(a) and Federal Rule of Appellate
Procedure 26.1, counsel for Petitioner Google Inc. certifies the following:
1.

The full name of every party represented by the undersigned is

Google Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
and Samsung Telecommunications America, LLC.
2.

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

3.

Google Inc. has no parent corporation and no publicly held company

owns 10 percent or more of the stock of Google Inc.
4.

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

appeared for Google Inc. in the district court or are expected to appear in this Court
are:
Quinn Emanuel Urquhart & Sullivan, LLP: Kathleen M. Sullivan, Charles
K. Verhoeven, Sean S. Pak, Amy H. Candido, Matthew S. Warren, Patrick
D. Curran, Kristin J. Madigan
DATED: August 25, 2014

/s/ Charles K. Verhoeven
Charles K. Verhoeven

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TABLE OF CONTENTS
Page
INTRODUCTION ..................................................................................................... 1
I.

THE DISTRICT COURT CLEARLY ERRED BY DECLINING TO
TRANSFER ITS CUSTOMER ACTIONS TO JOIN GOOGLE’S
MANUFACTURER SUIT IN THE NORTHERN DISTRICT ...................... 1
A.

B.

Rockstar Now Asserts That Its Allegations Depend Heavily on
Device Hardware, When Its Actual Infringement Contentions
Demonstrate the Opposite ..................................................................... 4

C.

II.

Rockstar Now Tries to Argue That the Accused Devices Are
All Different, But Its Infringement Contentions Rely on the
Accused Functionality in All the Accused Devices Being the
Same ...................................................................................................... 2

Rockstar Misstates the Legal Standard Governing Manufacturer
and Customer Suits; Under the Correct Standard, the District
Court Clearly Erred in Failing to Find This a Customer Suit ............... 6

THE DISTRICT COURT CLEARLY ERRED IN CONSIDERING
THE REMAINING TRANSFER FACTORS ................................................. 7
A.

B.

The District Court Clearly Abused Its Discretion in Denying
Each Motion to Transfer Based on the Other Five Actions, in
Which Transfer Motions Had Also Been Filed..................................... 9

C.

The District Court Clearly Abused Its Discretion By
Disregarding Apple But Considering Ericsson and
Blackberry—Potential Rockstar Witnesses—in Its Compulsory
Process Analysis .................................................................................. 10

D.
III.

Rockstar Submitted No Evidence That Samsung’s Texas
Facility is Relevant, and Its Infringement Contentions Belie
This Claim ............................................................................................. 7

Rockstar Has Not Shown Any Relevant Connection Between
Google and the Eastern District .......................................................... 13

ROCKSTAR MISCHARACTERIZES THE RULINGS OF THE
NORTHERN DISTRICT .............................................................................. 13
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CONCLUSION ........................................................................................................ 15

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TABLE OF AUTHORITIES
Page
Cases
In re Genentech, Inc.,
566 F.3d 1338 (Fed. Cir. 2009) ................................................................8, 11, 12
In re EMC Corp.,
501 Fed. App’x 973 (Fed. Cir. Jan. 29, 2013) .................................................... 10
Gulf Oil Corp. v. Gilbert,
330 U.S. 501 (1947) ............................................................................................ 12
Kahn v. General Motors Corp.,
889 F.2d 1078 (Fed. Cir. 1989) ............................................................................ 6
Katz v. Lear Siegler, Inc.,
909 F.2d 1459 (Fed. Cir. 1990) ........................................................................ 6, 7
LuvN’Care, Ltd., and Admar Int’l, Inc. v. Royal King Infant Prods. Co.,
No. 10-0461 (E.D. Tex. Feb. 19, 2014) ................................................................ 9
Merial Ltd. v. Cipla Ltd.,
681 F.3d 1283 (Fed. Cir. 2012) ............................................................................ 7
Micron Tech., Inc. v. Mosaid Technologies, Inc.,
518 F.3d 897 (Fed. Cir. 2008) ........................................................................ 9, 10
My Health, Inc. v. Click4Care, Inc.,
No. 13-137, 2014 WL 1159664 (E.D. Tex. Mar. 20, 2014) ............................... 12
Prospect Capital Corp. v. Bender,
No. 09-0826, 2009 WL 4907121 (S.D.N.Y. Dec. 21, 2009) ................................ 9
Spread Spectrum Screening LLC v. Eastman Kodak Co.,
657 F.3d 1349 (Fed. Cir. 2011) ............................................................................ 6
In re Volkswagen of Am., Inc.,
566 F.3d 1349 (Fed. Cir. 2009) ............................................................................ 9

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Statutes
Fed. R. Civ. P. 26(a)(1) ............................................................................................ 13
28 U.S.C. § 1404(a) ...........................................................................................12, 14

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INTRODUCTION
Rockstar’s opposition depends on selective, and often inaccurate,
presentation of law and facts. Rockstar argues that its actions in Texas are not
customer suits and that Google’s California action will not resolve major issues in
them. This assertion is entirely at odds with the findings of the California court,
and depends on Rockstar’s misreading of its own infringement contentions and
governing law. Rockstar argues that the district court properly denied each transfer
motion because of other actions also subject to a transfer motion, but cites no cases
allowing such a result. And Rockstar tries to portray the Northern District of
California as eager to defer to the Eastern District of Texas, when the opposite is
true. Viewing the record fully and fairly, this Court should correct the district
court’s clear errors by ordering it to stay this action until resolution of the related
action in the Northern District of California, or to transfer this action to that court.
I.

THE DISTRICT COURT CLEARLY ERRED BY DECLINING TO
TRANSFER ITS CUSTOMER ACTIONS TO JOIN GOOGLE’S
MANUFACTURER SUIT IN THE NORTHERN DISTRICT
As the Northern District correctly ruled, Google’s action against Rockstar is

first filed between Google and Rockstar; and, regardless of the first filing date, “the
customer-suit exception to the first-to-file rule would apply” because “the
relationship between Google and the Halloween defendants is one of manufacturer
and customer,” and “the determination of the infringement issues here would likely
be dispositive of the other cases” in Texas. A323-24. The district court clearly
erred by ignoring these rulings and by failing to transfer this action and Rockstar’s
other customer actions to join Google’s manufacturer case in California. See Pet.
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at 15-19. Rockstar’s opposition depends on distortions of its own infringement
claims, and a misunderstanding of the law governing manufacturer suits. Opp. at
13-19. In reality, Rockstar’s own infringement theories confirm that Google’s
California action will resolve “major issues” in the Eastern District and, therefore,
that the district court clearly erred by failing to stay or transfer these actions.
A.

Rockstar Now Tries to Argue That the Accused Devices Are All
Different, But Its Infringement Contentions Rely on the Accused
Functionality in All the Accused Devices Being the Same

To avoid the customer-suit rule, Rockstar tries to argue that Google’s
California action will not resolve major issues in Texas, based on a new spin on its
theory of infringement: that Samsung (and presumably the other defendants in
Texas) “substantially modifies the Android open source software before installing
it” on the accused devices—and, critically, that these “modifications to the
Android code are material to the claims of infringement in this case.” Opp. at 1,
17. But this is the exact opposite of Rockstar’s actual infringement contentions in
the district court, required under the patent local rules, which rely on the accused
products being all the same. Rockstar’s new view depends on highly selective
quotation—literally, a few pages from tens of thousands—and finds no support
even in the tiny portion Rockstar cites to this Court.1 Similarly, Rockstar vaguely
1

Rockstar argues that its “infringement contentions reveal considerable
differences in the various custom implementations of the ‘Android platform,’” but
cites only six pages from infringement contentions, which number at least 19,372
pages. Opp. at 6 (citing A977-983). Although the pages Rockstar cites note that
“the notification drawer implemented by each defendant differs substantially (e.g.,
different default settings at the top, different icons associated with the sender or
type of message received),” A978, Rockstar’s infringement contentions admit any
(footnote continued)
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asserts that Samsung “modifies” Google’s Android source code, but nowhere ties
any of these asserted “modifications” to its infringement claims in these actions.2
Rockstar’s infringement contentions repeatedly emphasize that all accused
devices are the same—and that all accused devices infringe in the same way as
Google’s devices. Rockstar’s infringement charts against Samsung cite only to
Google’s open-source code; they neither cite source code from Samsung nor
mention any Samsung modifications to Google’s code. E.g., A1193-1282, SA6198, 122-42, 197-248, 296-339, 368-97. Asserting infringement of the ’572 patent,
for example, Rockstar contends that “open source code citations” of Google’s
code, and “public documentation citations” of Google’s documents, show that each
“limitation is present on all Accused Products running Android versions 1.0 or
such differences are entirely irrelevant to its allegations, by broadly accusing any
Android product that is “capable of displaying a notification in the notification
area, notification drawer/panel or lock screen.” SA143, 197. Thus, according to
Rockstar itself, it does not matter if there are “different default settings at the top”
or “different icons associated with the sender or type of message received”—the
only two differences Rockstar alleges—because infringement occurs, at least by
Rockstar’s lights, as soon as a product displays “a notification in the notification
area.” A978, SA143, 197.
2
Many of Rockstar’s assertions that Samsung “modifies” Google’s source
code are unsupported by citation. E.g., Opp. at 1, 2, 4, 15. Where Rockstar does
use citations, it submits nothing to show that Samsung’s “modifications to the
Android code are material to the claims of infringement in this case.” Opp. at 17.
Rockstar cites the district court’s finding (A9); a “Samsung Careers” web page
listing 17 available jobs including one with “Android” in the title (A984-86); a
Samsung declaration (A673-76) and a Google web page (A936-37), neither of
which say anything about Samsung modifications to Google’s code; and a few
media articles that talk about features Rockstar does not accuse in these actions
(A938-41, 971-76, 987-91, 1114-19). None of these show that Samsung makes
modifications that are material to Rockstar’s claims.

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above.” A1194, A1205, A1229, A1247, A1266. Rockstar’s other claim charts
also assert that citations to Google’s open-source code show infringement by all
accused products.3 Once the Court looks past Rockstar’s revisionist history of its
claims and considers the claims themselves, it is evident that Rockstar’s case rests
on its allegations that all accused devices infringe in precisely the same way.
B.

Rockstar Now Asserts That Its Allegations Depend Heavily on
Device Hardware, When Its Actual Infringement Contentions
Demonstrate the Opposite

Rockstar also argues that its claims are really all about hardware, not
software as the claims indicate. Opp. at 4-5, 17. Again, however, Rockstar’s
actual infringement contentions tell a different story. Rockstar asserts that the
3

See, e.g., ’131 patent (“Open source code citations 1.1(14) to 1.1(17) and
public document citations 1.1(12) and 1.1(13) show that this feature is present on
all Accused Products running Android versions 1.6 or above”) (SA249, 296); ’298
patent (“Open source code citations 11.1(6) to 11.1(7) and public document
citations 11.1(5) show that this feature is present on all Accused Products running
Android versions 2.2 or above”) (SA99, 122); ’591 patent (“Open source code
citations 1.1(15) to 1.1(23) and public documentation citations 1.1(4) to 1.1(6)
show that this feature is present on all Accused Products running Android versions
1.6 or above”) (A340, 368); ’937 patent (“[P]ublic documentation citations
1.3(10)-1.3(14) show that at least control tools such as ‘Compass,’ ‘MyLocation,’
or ‘Layers’ are available on all Accused products running Google Maps Android
API version 1 or above, and further, that Google Maps Android API version 1
works on Android API level 4 onwards, or in other words, from Android version
1.6 and above”) (SA42,80 ); ’973 patent (“The exemplary open source citations
herein show that the cited functionalities appear in Accused Products having any
version or adaptation thereof of Android operating system”) (SA144, 198).
Rockstar and Google agree that the “open source code” cited in Rockstar’s
contentions is Google’s code, controlled by Google and distributed by Google on
the Internet. RA75-76. By definition, this “open source” code has not been
modified by Samsung or anyone else.

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patents’ “hardware limitations are non-trivial,” but cites only attorney argument in
its prior brief, which in turn cites only the patent claims. Opp. at 5 (citing A696);
see A696 ns.9-12. If Rockstar’s case truly turned on hardware, as Rockstar now
argues, Rockstar’s contentions in the district court would allege how accused
hardware infringes each claim. But they do not; instead they repeatedly allege that
Android software infringes the so-called “hardware limitations.” The ’973 patent,
for example, includes limitations for “receiving” and “displaying,” among those
Rockstar calls “hardware” and “non-trivial.” Opp. at 5. But on those limitations
Rockstar’s contentions accuse no hardware whatsoever—instead accusing, for
each defendant, the same open-source Android software: BroadcastReceiver,
ConnectivityManager, ConnectivityService, NotificationBuilder, and
NotificationManager. See, e.g., SA159, 212. Similarly, the ’131 patent claims
“sending”—but, again, Rockstar’s contentions accuse only software. Indeed,
Rockstar’s claim charts against all defendants assert infringement by “sending”
using the same image of the same device—an image taken from a Google web site,
http://developer.android.com/design/patterns/notifications.html. E.g., SA251, 297.
Rockstar’s fourth and final example of a “hardware” limitation, “storing,”
fares no better. Opp. at 5. The ’572 claims, for example, include “storing the call
trace information”; but yet again, Rockstar’s contentions cite not hardware but
software, such as Google’s Maps application and open-source code. SA486, 398472; A1282, 1193-1286. Thus, for all four of the limitations that Rockstar now
calls “non-trivial . . . hardware limitations,” Rockstar’s infringement contentions
actually accuse software for six of the seven patents-in-suit. Compare Opp. at 4-5
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with supra. And on the seventh patent, the ’551, Rockstar specifically limited the
allegations in its complaints to “devices having a version (or an adaption thereof)
of Android operating system” developed by Google. A16 ¶ 16; A335 n.1.
C.

Rockstar Misstates the Legal Standard Governing Manufacturer
and Customer Suits; Under the Correct Standard, the District
Court Clearly Erred in Failing to Find This a Customer Suit

To take precedence over customer suits like Rockstar’s in Texas, a
manufacturer suit like Google’s in California “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 Screening
LLC v. Eastman Kodak Co., 657 F.3d 1349, 1358 (Fed. Cir. 2011). Rockstar
misstates this rule by selectively quoting Spread Spectrum to say that a
manufacturer action can only “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.’”
Opp. at 16 (quoting Spread Spectrum, 657 F.3d at 1357) (emphasis added by
Rockstar). This was not Spread Spectrum’s holding, but rather the holding in a
prior case, Kahn v. General Motors Corp., 889 F.2d 1078, 1081 (Fed. Cir. 1989),
that this Court had since rejected. One paragraph later, Spread Spectrum explained
that a later case, Katz v. Lear Siegler, Inc., “clarified that 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.” 657 F.3d at 1358 (citing Katz, 909 F.2d 1459, 1464 (Fed. Cir. 1990)). The
Court should disregard Rockstar’s attempt to avoid the customer-suit rule based on
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misstatement of this Court’s precedent. E.g., Opp. at 17.4 Rockstar’s infringement
claims show that Google’s action will resolve “the ‘major issues’ concerning the
claims against the customers” in Texas. See supra §§ I.A-I.B. The district court
thus clearly erred in declining to stay or transfer—error this Court should remedy.
II.

THE DISTRICT COURT CLEARLY ERRED IN CONSIDERING
THE REMAINING TRANSFER FACTORS
A.

Rockstar Submitted No Evidence That Samsung’s Texas Facility
is Relevant, and Its Infringement Contentions Belie This Claim

Rockstar argues repeatedly that its “primary claims” are “against Samsung”
and its “claims against Google” are “subordinate,” and that focusing on Google
“would let the tail wag the dog.” Opp. at 16. But this argument would only have
merit if Rockstar’s infringement theories focus on hardware and on different
4

Rockstar also argues, without citation, that the customer-suit rule cannot
apply because Google has not affirmatively “accepted legal responsibility for
patent infringement by Android” or asserted that it is “jointly and severally liable
for infringement by Samsung’s accused devices.” Opp. at 2, 5-6, 17-18. Again
Rockstar misstates the law: this Court squarely rejected the argument that a
customer suit must be indemnified in Katz, where it acknowledged that “neither of
the defendants in the [customer suit] Batavia action has agreed to be bound by the
result in [manufacturer suit in] Massachusetts,” but still affirmed the manufacturer
court’s “injunction against prosecution of the [customer suit] Batavia action”
because the former manufacturer suit could resolve “major issues” as to the
customer suit. 909 F.2d at 1464. As the Northern District correctly stated,
indemnification thus has no bearing on whether this is a customer suit. RA078.
Rockstar also relies heavily on Merial Ltd. v. Cipla Ltd., stating that it is
“fully applicable” to the circumstances here. Opp. at 14, 15, 19, 21-22, citing 681
F.3d 1283, 1299 (Fed. Cir. 2012). Not so: Merial held only that the date of filing
of a contempt motion is not the date considered for determining priority—that is,
that the filing of a motion does not affect the filing date of the complaint. Id. It
has no bearing here, where Google’s complaint in California predated Rockstar’s
complaint in Texas.

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devices—which they do not. Rockstar’s argument depends on the importance of
Samsung’s modifications to Google’s Android product (Opp. at 1-2, 4-6, 17-18),
but Rockstar’s infringement contentions confirm that the importance of these
modifications is precisely zero. See supra §§ I.A-I.B. Rockstar attempts to recast
Samsung as the manufacturer and Google as the customer, (Opp. at 17-18), but
Rockstar’s own infringement contentions allege that if anything Google is the
“dog” and Samsung is the “tail.” See supra §§ I.A-I.B. Rockstar has not shown,
and cannot show, the importance or even relevance of any Samsung documents or
witnesses, and it was thus clear error for the district court to consider them. In re
Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009) (“A district court should
assess the relevance and materiality of the information the witness may provide.”).
And even if Rockstar could show the relevance of Samsung’s documents or
witnesses, it did nothing to show that these documents were located in Texas rather
than Korea, Samsung’s headquarters. As Petitioners explained in their opening
brief, the district court erroneously credited Rockstar’s flimsy assertions about
Samsung’s documents, while ignoring Samsung’s sworn declaration on the same
issue. Pet. at 28-29. Rockstar’s opposition does not address this point, and nor
could it, as Samsung’s declaration establishes that the vast majority of Samsung’s
records and employees, as well as the “planning, design, and development” of the
accused devices, are in Korea. A675 ¶¶ 1, 6-8.5
5

Rockstar notes that Google and Samsung did not move to sever its claims
against them, and argues that this is somehow an admission that they should
remain in Texas. Opp. at 11-12, 22-27. Not so: there was no reason for Google or
(footnote continued)
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The District Court Clearly Abused Its Discretion in Denying Each
Motion to Transfer Based on the Other Five Actions, in Which
Transfer Motions Had Also Been Filed

It cannot be proper to deny transfer of this action simply because Rockstar
filed five other actions in this District. The district court clearly erred by denying
six separate motions to transfer Rockstar’s six separate actions, each time relying
on the other five actions before it. Pet. at 20-22. Seeking to defend this ruling,
Rockstar first argues, tepidly and without citation, that Petitioners have not
preserved this argument. Opp. at 29. Rockstar provides no citation because its
position makes no sense: Petitioners could not brief their objection to a mistake
they did not know the district court would make, before the district court had made
it. Rockstar’s defense on the merits fares no better. Rockstar cites In re
Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) and Micron Tech.,
Inc. v. Mosaid Technologies, Inc., 518 F.3d 897, 904-5 (Fed. Cir. 2008). Opp. at
29-30. But these cases have no bearing here: they predate the America Invents
Act (“AIA”), see Pet. at 20, and thus could not consider its provisions to curtail
anchoring actions through bulk filings. See Pet. at 20-22. Second, these cases do
not address multiple cases subject to multiple transfer actions: Volkswagen
considered related litigation where venue was fully resolved—unlike these actions,
Samsung to move to sever, because both believe all claims against both of them
should move to the Northern District. In any event, courts may always “order
severance of a party or claim under Rule 21 of the Federal Rules of Civil
Procedure sua sponte.” LuvN’Care, Ltd., and Admar Int’l, Inc. v. Royal King
Infant Prods. Co., No. 10-461 (E.D. Tex. Feb. 19, 2014), Docket No. 235, at *2
(quoting Prospect Capital Corp. v. Bender, No. 09-826, 2009 WL 4907121, at *7
n.9 (S.D.N.Y. Dec. 21, 2009) (severing defendant sua sponte to facilitate transfer)).

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which were subject to transfer motions when the district court made its decisions—
and Micron specifically noted that “the record does not show any ongoing
litigation requiring consolidation.” 518 F.3d at 905. Neither case allows or even
addresses transfer of actions for “judicial economy” based on other actions also
subject to transfer. But this Court squarely rejected this possibility in In re EMC
Corp., 501 Fed. App’x 973 (Fed. Cir. Jan. 29, 2013). Rockstar attempts to avoid
EMC by selective quotation, arguing that EMC “expressly provides that ‘the
copendency of cases involving the same patent [is a] permissible consideration[] in
ruling on a motion to transfer venue,’” Opp. at 30, (quoting EMC, 501 Fed. App’x
at 976). But Rockstar fails to quote the statement, two sentences later, limiting the
cases for which the “district court could properly consider the benefits to judicial
economy” to those “as to which there was no issue of transfer.” 501 Fed. App’x at
976. The district court’s ruling is thus contrary not only to the AIA, but also to this
Court’s ruling in EMC. Only a writ from this Court can remedy this clear error.6
C.

The District Court Clearly Abused Its Discretion By Disregarding
Apple But Considering Ericsson and Blackberry—Potential
Rockstar Witnesses—in Its Compulsory Process Analysis

As Petitioners explained in their opening brief, it was clearly error for the
district court to dismiss Apple’s unique and uniquely important role in this case, as
6

Finally, Rockstar tries to minimize the importance of this clear error by
arguing that the “district court’s transfer analysis did not turn on considerations of
judicial economy.” Opp. at 29-30. But the court found that “considerations of
judicial economy bear heavily upon the Court’s transfer analysis” and “weigh
strongly in favor of consolidating all cases on these patents in the Eastern District
of Texas,” and judicial economy “weighs heavily against transfer.” A8-9.

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confirmed by the Northern District’s findings. Pet. at 27. In its opposition to the
petition, Rockstar argues that Google’s evidence of Apple’s relevance is a mere
“conspiracy theory” that, even if true, “would not impact the neutrality of this
factor.” Opp. at 25. This argument must fail, however, because it depends on facts
that Rockstar did not establish, and that the district court could not consider.
Rather than address Petitioners’ explanation of Apple’s central role, the
district court simply stated that it “views Google’s asserted interest in Apple’s
testimony with some skepticism,” and also “notes that other Rockstar parents—
notably Ericsson and Blackberry—maintain U.S. headquarters in Texas.” A6.
This was clear error, however, because Rockstar failed to show that these other two
had any relevance to this proceeding. Genentech, 566 F.3d at 1343 (“A district
court should assess the relevance and materiality of the information the witness
may provide.”). Instead Rockstar argued only that if Apple was relevant,
Blackberry and Ericsson must also be. A702. Rockstar’s unsupported assertion of
equivalence could not overcome Google’s showing of Apple’s relevance. Apple’s
relevance depends on factors unique to Apple, not present for Blackberry and
Ericsson. Only Apple gave “approximately $2.6 billion” to Rockstar, representing
58% of the total price for Nortel’s portfolio. A59. As the Northern District
recognized, only Apple vowed to wage “thermonuclear war” against Android and
Google, and only “Apple’s particular business interests” benefitted from
Rockstar’s “litigation strategy of suing Google’s customers.” A319. And only
Apple bid independently for the Nortel patents, before joining the other members
of Rockstar. A376. The Northern District has already found twice that Rockstar’s
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“Texas suit against Google’s customers merely serves as supporting evidence for
the inference that Defendants undertook an obligation to Apple to disrupt Google’s
business.” SA19; see also A319. Petitioners have thus shown specific evidence
that Apple witnesses are “relevant to those issues” that “might be issues at trial.”
Genentech, 566 F.3d at 1343-44 (Fed. Cir. 2009). Rockstar’s facile argument that
some of its owners have offices in Texas cannot meet this standard. A702.
Separately from Rockstar’s factual failure, the district court also erred
legally, by considering Blackberry and Ericsson at all. In considering venue under
§ 1404(a), courts may consider the “availability of compulsory process for
attendance of unwilling witnesses,” not willing ones. Gulf Oil Corp. v. Gilbert,
330 U.S. 501, 508 (1947) (emphasis added). Because willing witnesses, by
definition, will appear in any venue, courts’ consideration of this factor is “based
on whether a witness would willingly or voluntarily appear.” My Health, Inc. v.
Click4Care, Inc., No. 13-137, 2014 WL 1159664, at *3 (E.D. Tex. Mar. 20, 2014).
Under this rule, “party witnesses do not require compulsory process for trial and
are not given much weight in this factor. Rather, the focus of this factor is on
witnesses for whom compulsory process to attend trial might be necessary.” A6
(citations omitted). As Rockstar itself acknowledges, Blackberry and Ericsson are
among its owners, and have a direct financial interest in its success; their
employees will therefore be its willing witnesses, preventing Rockstar from using
them under this factor. E.g., Genentech, 566 F.3d at 1345. Petitioners could
secure trial testimony from Apple’s witnesses only in the Northern District of
California, home to Apple’s headquarters. The venue allowing the most testimony
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by the most witnesses is the Northern District, and the district court clearly erred
by counting willing witnesses from Blackberry and Ericsson against transfer.
D.

Rockstar Has Not Shown Any Relevant Connection Between
Google and the Eastern District

Although the district court did not rely on any connection between Google
and the Eastern District, Rockstar nonetheless asserts just such connections to this
Court. Opp. at 10-11. The Court can quickly dismiss these assertions: Rockstar
does not even claim relevance of Google’s former tiny office in Frisco, and
Google’s declaration confirms that “[n]one of the employees at this location
worked on the Android platform.” A670-71 ¶ 10. Rockstar next points to Jeff
Hamilton, a single Google engineer who works in Austin, outside the Eastern
District and nearly five hours from Marshall. Opp. at 11. But Rockstar selectively
quotes Mr. Hamilton’s LinkedIn profile, which actually describes his work on
Android “data storage framework and applications,” not “operating systems.”
A1070-72. Confirming his irrelevance, Rockstar did not include Mr. Hamilton in
its disclosures of potential witnesses under Fed. R. Civ. P. 26(a)(1). SA492-506.
Even if one engineer five hours away from the Eastern District could outweigh the
hundreds in Mountain View, Rockstar failed to show he did so here.
III.

ROCKSTAR MISCHARACTERIZES THE RULINGS OF THE
NORTHERN DISTRICT
Seeking to bolster its arguments against transfer, Rockstar several times

mischaracterizes rulings and statements from the Northern District of California.
First, Rockstar selectively quotes the Northern District’s order denying Rockstar’s
first motion to transfer as saying that “the Texas actions ‘might not and need not be
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transferred here,’” and asserts that “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.” Opp. at 20 (citing A326). But Rockstar fails to
quote the very next sentence in the Court’s order: “They might be stayed in Texas
and reopened upon completion of this suit, which likely will resolve some of the
infringement issues there.” A326. Absent Rockstar’s selective quotation, the
order simply expressed the Northern District’s expectation that the Eastern District
would transfer these cases, or keep them and stay them, but had no preference
between those two. Opp. at 20; A326.7 Rockstar also wrongly asserts that the
Northern District endorsed the idea that “that the EDTX court might reasonably
decide to proceed with this action.” Opp. at 21. Again, this is incorrect. The
Northern District repeatedly stated its view that only one court should supervise all
actions concerning Rockstar’s allegations against Android, SA6-7, RA326,
RA128, and noted that the Texas cases should be transferred or stayed. A326.
Although it disfavored separate actions, the Northern District sought to minimize
harm from any duplication by having “the benefit of looking at what the Texas
judge had done with claim construction.” Opp. at 20-21. Preparing for the worst
is not the same as endorsing it; the Northern District did only the former.
7

Rockstar seeks to minimize this order, alleging that it comes from a
“procedural context different from” here. Opp. at 20. Again, this is incorrect: like
the Eastern District, the Northern District denied Rockstar’s motion to transfer
after analyzing the “‘convenience factors’ under the transfer analysis of 28 U.S.C.
§ 1404(a).” A325. The Northern District noted that Rockstar’s second motion to
transfer, which Rockstar admits falls under § 1404(a), was “essentially identical to
the one brought in conjunction with Defendants’ motion to dismiss.” RA127 n.1.

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Finally, Rockstar misreads the Northern District’s recent ruling deferring its
ruling on Rockstar’s renewed motion to transfer. Opp. at 20-21. Rockstar asserts
that this ruling “indicated that it is disposed to transfer the NDCA case to that
forum.” Opp. at 21. Once again, this is incorrect. The Northern District had
already denied Rockstar’s first motion to transfer (A323-28), noted in the process
that the Eastern District should stay or transfer the actions before it (A326), and
indicated its inclination to deny Rockstar’s second, “essentially identical” motion
to transfer. RA127. But the Northern District also wished to avoid duplicative
litigation, and followed this Court’s dictates requiring it to consider this factor.
Rockstar seeks to miscast the Northern District’s simple following of precedent as
an abdication in favor of Texas; it is the opposite.
CONCLUSION
For the foregoing reasons, this Court should issue a writ of mandamus
directing the district court to stay this action until resolution of the related action in
Northern District of California, or to transfer this action to that court.
Dated: August 25, 2014

Respectfully submitted,
QUINN EMANUEL URQUHART & SULLIVAN, LLP
By:

/s/ Charles K. Verhoeven
Charles K. Verhoeven
Attorneys for Petitioners Google Inc., Samsung
Electronics Co., Ltd., Samsung Electronics America,
Inc., and Samsung Telecommunications America, LLC

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CERTIFICATE OF SERVICE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
Misc. No. 14-147
--------------------------------------------------------------------------------IN RE GOOGLE INC., SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC., AND
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC
Petitioners.
--------------------------------------------------------------------------------I, Kristin Madigan, being duly sworn according to law and being over the
age of 18, upon my oath depose and say that:
On the 25th Day of August, 2014, Counsel for Petitioners has authorized
me to electronically file the foregoing Reply in Support of Petition for Writ of
Mandamus with the Clerk of Court using the CM/ECF System, which will serve
via e-mail notice of the filing to all counsel for the parties registered as CM/ECF
users, including any of the following:
Ted Stevenson III (Lead Counsel)
[e-mail]
[e-mail]
David Sochia
[e-mail]
MCKOOL SMITH, P.C.
300 Crescent Court Suite 1500
Dallas, TX 75201
Telephone: [phone]
Telecopier: [phone]

Joshua W. Budwin
[e-mail]
Joel L. Thollander
[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

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Additionally, the following counsel for the additional parties to the
proceeding below will be sent a copy via email:
Harold H. Davis, Jr.
(Lead Counsel)
[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
Richard D. Harris (Lead Counsel)
[e-mail]
Jeffrey G. Mote
[e-mail]
Eric J. Maiers
[e-mail]
James J. Lukas, Jr.
[e-mail]
GREENBERG TRAURIG LLP
77 West Wacker Drive, Suite 3100
Chicago, Illinois 60601
[phone]
[phone] facsimile

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

Attorneys for Defendants LG Electronics, Inc., LG Electronics U.S.A.,
Inc., and LG Electronics MobileComm USA Inc.
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Michael J. Bettinger
(Lead Counsel)
[e-mail]
Curt Holbreich
[e-mail]
K&L GATES LLP
4 Embarcadero Center, Suite 1200
San Francisco, California 94111
[phone]
[phone] facsimile
Attorneys for Defendants HTC Corporation and HTC America, Inc.
Alexas D. Skucas (Lead Counsel)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, New York 10036
[phone]
[phone] facsimile

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

Steven T. Snyder
[e-mail]
Anup M. Shah
[e-mail]
KING & SPALDING LLP
100 North Tryon Street, Ste. 3900
Charlotte, North Carolina 28202
[phone]
[phone] facsimile
Attorneys for Defendants ZTE (USA) Inc. and ZTE Corp.
W. Barton Rankin (Lead Counsel)
[e-mail]
BAKER & MCKENZIE LLP
2300 Trammel Crow Center
2001 Ross Avenue, Suite 2300
Dallas, Texas 75201
[phone]
[phone] facsimile

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

Attorneys for Defendants Pantech Co., Ltd., and Pantech Wireless, Inc

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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 US Mail.
August 25, 2014
Kristin Madigan

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