Google Inc. v. Rockstar Consortium US LP et al

Filing 20

MOTION to Dismiss for Lack of Jurisdiction UNDER FED. R. CIV. P. 12(b)(2) AND 12(b)(3) FOR LACK OF PERSONAL JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY JUDGMENT ACT filed by MobileStar Technologies LLC, Rockstar Consortium US LP. Motion Hearing set for 3/13/2014 02:00 PM in Courtroom 2, 4th Floor, Oakland before Hon. Claudia Wilken. Responses due by 2/6/2014. Replies due by 2/13/2014. (Attachments: # 1 Declaration of Afzal Dean, # 2 Proposed Order, # 3 Exhibit A, # 4 Exhibit B, # 5 Exhibit C, # 6 Exhibit D, # 7 Exhibit E, # 8 Exhibit F, # 9 Exhibit G, # 10 Exhibit H)(Reichman, Courtland) (Filed on 1/23/2014)

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Courtland L. Reichman (SBN 268873)
[e-mail]
MCKOOL SMITH HENNIGAN P.C.
255 Shoreline Drive, Suite 510
Redwood Shores, CA 94065
Telephone: [phone]
Fax: [phone]
Mike McKool (pro hac vice application to be filed)
[e-mail]
Douglas A. Cawley (pro hac vice application to be filed)
[e-mail]
Ted Stevenson III (pro hac vice application to be filed)
[e-mail]
David Sochia (pro hac vice application filed)
[e-mail]
MCKOOL SMITH P.C.
300 Crescent Court Suite 1500
Dallas, TX 75201
[phone]
[phone] (facsimile)
Attorneys for Defendants Rockstar
Consortium US LP and MobileStar
Technologies LLC
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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GOOGLE INC.,

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Plaintiff,
vs.
ROCKSTAR CONSORTIUM U.S. LP, and
MOBILESTAR TECHNOLOGIES LLC,

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Defendants.
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Case No. 13-cv-5933 CW
DECLARATION OF AFZAL DEAN IN
SUPPORT OF DEFENDANTS’ MOTION
TO DISMISS UNDER FED. R. CIV. P.
12(b)(2) and 12(b)(3) FOR LACK OF
PERSONAL JURISDICTION AND
IMPROPER VENUE AND TO DECLINE
EXERCISING JURISDICTION UNDER
THE DECLARATORY JUDGMENT
ACT
Date: March 13, 2014
Time: 2:00 p.m.
Courtroom: 2 - 4th Floor
Judge: Hon. Claudia Wilken

DECLARATION OF AFZAL DEAN IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY
JUDGMENT ACT—Case No. 13-cv-5933-CW

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I, Afzal Dean, declare under oath as follows:
1. I have personal knowledge of the facts stated herein.
2. I am currently the President of MobileStar Technologies LLC (“MobileStar”). I have

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held that position since the formation of MobileStar. I reside in Ottawa, Canada.
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3. I am currently also VP of IP Licensing for Rockstar Consortium.

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4. I am a former employee of Nortel Networks, which owned the patents-in-suit prior to

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Rockstar. My previous positions at Nortel included Director IP Licensing—IP Law and Director

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of Engineering.

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5. MobileStar was incorporated in October 2013. MobileStar is a Delaware limited
liability corporation with a principal place of business at Legacy Town Center 1, 7160 North

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Dallas Parkway, Suite No. 250, Plano, Texas, 75024. MobileStar is the owner of U.S. Patent
Nos. 6,037,937; 6,333,973; 6,463,131; 6,765,591; and 6,937,572.
6. MobileStar is not incorporated in California, has no place of business in California,

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and is not licensed or authorized to do business there. MobileStar has no agent for service of

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process in California. MobileStar has not performed services or sold products to California.

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MobileStar has never solicited business from California. MobileStar has never signed any

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contract in California. MobileStar has never owned real or personal property in California.
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MobileStar has never maintained an office in California. MobileStar has never maintained any
records in California.

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7. MobileStar has no personnel, employees, or agents in California.

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8. MobileStar pays no taxes in California.

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9. MobileStar has 3 officers (President Afzal Dean, Vice-President Chad Hilyard, and

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Corporate Secretary Mike Dunleavy) and one board member (Director of the Board John

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DECLARATION OF AFZAL DEAN IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY
JUDGMENT ACT—Case No. 13-cv-5933-CW

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Veschi). None of them reside in California.

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11. On October 31, 2013, NetStar Technologies LLC (“NetStar”), a subsidiary of
Rockstar, filed a patent infringement action against Google in the Eastern District of Texas
(“NetStar/Google Litigation”).

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DECLARATION OF AFZAL DEAN IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY
JUDGMENT ACT—Case No. 13-cv-5933-CW

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none of MobileStar’s officers or board

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members have otherwise travelled to California on behalf of MobileStar.
MobileStar has not otherwise met with, contacted, or communicated
with any other California entity.

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15. Rockstar Consortium U.S. LP (“Rockstar”) is the parent entity of MobileStar.
Rockstar is a Delaware limited partnership with a principal place of business at Legacy Town

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Center 1, 7160 North Dallas Parkway, Suite No. 250, Plano, Texas, 75024. Rockstar is the

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owner of U.S. Patent Nos. 5,838,551 and 6,128,298. Rockstar was previously the owner of U.S.

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Patent Nos. 6,037,937; 6,333,973; 6,463,131; 6,765,591; and 6,937,572 before assigning them to

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MobileStar in October 2013.

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16. Rockstar is not incorporated in California, has no place of business in California, and
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is not licensed or authorized to do business there. Rockstar has no agent for service of process in

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California. Rockstar has never signed any contract in California. Rockstar has never owned real

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or personal property in California. Rockstar has never maintained an office in California.

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Rockstar has never maintained any records in California.

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DECLARATION OF AFZAL DEAN IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY
JUDGMENT ACT—Case No. 13-cv-5933-CW

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22. Rockstar and MobileStar have not filed any lawsuits in California.

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23. Rockstar and MobileStar have not engaged in extra-judicial enforcement of the
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patents-in-suit, such as engaging third-parties in attempting to remove allegedly infringing
products from a trade show in California.
24.

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As mentioned above, MobileStar is based in Texas.

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27. Nortel Networks, which owned the patents-in-suit prior to Rockstar, had its historical
DECLARATION OF AFZAL DEAN IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY
JUDGMENT ACT—Case No. 13-cv-5933-CW

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U.S. headquarters in Richardson, Texas. For 20 years, from 1991-2011, Nortel occupied a

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800,000 square foot campus in Richardson and employed thousands of residents in Richardson

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and neighboring Plano. Nortel’s licensing activities were headquartered out of Richardson, and

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involved personnel from Nortel’s law department responsible for patent prosecution, patent

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licensing and litigation, many of whom now work for Rockstar. When I was at Nortel, I worked
frequently with Nortel employees in Richardson, and continue to work with many of the same

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people at Rockstar. When Rockstar acquired the patents-in-suit, Rockstar also inherited the
Nortel law department’s Richardson office space, many of Nortel’s employees in Richardson

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responsible for licensing activities, and historical Nortel files in Richardson (including many

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files relevant to the patents-in-suit). After Nortel’s Richardson campus was sold in Nortel’s

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bankruptcy proceedings, Rockstar relocated its offices and subsequently moved to the

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neighboring town of Plano, Texas.

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28. Rockstar’s Plano, Texas office includes Rockstar’s full-time employees who reside in
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Texas. Rockstar’s Plano office also has assigned offices for several home-based Rockstar

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employees who travel frequently to Plano. Even though I reside and work from Rockstar’s

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Ottawa, Canada location, I travel frequently to Plano and have an assigned office in the Plano

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office.

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29. None of Rockstar’s full-time or home-based employees live in California.
30. Rockstar pays no California taxes.

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31. Rockstar has not held any board meetings in California.
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32. Rockstar has not signed any license agreements in California.

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33. Rockstar has not sold any patents to any California entities.

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34. Rockstar has received licensing consulting services from Mark Wilson, an

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independent contractor who lives in California.
DECLARATION OF AFZAL DEAN IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY
JUDGMENT ACT—Case No. 13-cv-5933-CW

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None of his responsibilities related to the patents-in-suit.

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None of his responsibilities related to California and he has never contacted any California
entities on behalf of Rockstar. He has never met with Google, ASUS, HTC, Huawei, LG,
Pantech, Samsung, or ZTE on behalf of Rockstar.

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Rockstar does not pay California taxes on Mark’s
compensation.
35. Rockstar’s limited partners are Apple Inc., Blackberry Limited, Telefonaktiebolaget

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LM Ericsson (publ), Microsoft Corporation and Sony (ICA IPLA Holdings Inc.). The limited
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partners neither direct nor control Rockstar’s licensing efforts in California or anywhere else.

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Rockstar’s management directs Rockstar’s licensing efforts. Rockstar takes measures to ensure

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that information about prospective licensees and negotiations does not flow to the limited

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partners.

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DECLARATION OF AFZAL DEAN IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY
JUDGMENT ACT—Case No. 13-cv-5933-CW

REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED