Google Inc. v. Rockstar Consortium US LP et al

Filing 46

NOTICE by Google Inc. Notice of Filing of Motion to Stay or, In the Alternative, to Transfer to the Northern District of California (Attachments: # 1 Exhibit A, # 2 Exhibit B - Part 1, # 3 Exhibit B - Part 2, # 4 Exhibit B - Part 3, # 5 Exhibit B - Part 4, # 6 Exhibit B - Part 5, # 7 Exhibit B - Part 6, # 8 Exhibit B - Part 7, # 9 Exhibit B - Part 8, # 10 Exhibit C, # 11 Exhibit D, # 12 Exhibit E, # 13 Exhibit F)(Warren, Matthew) (Filed on 3/21/2014)

EXHIBIT A

Case 2:13-cv-00900-JRG Document 52 Filed 03/21/14 Page 1 of 23 PageID #: 1772

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

ROCKSTAR CONSORTIUM US LP AND
MOBILESTAR TECHNOLOGIES, LLC
Plaintiffs,
v.
SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC, GOOGLE INC.,
Defendants.

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Civil Action No. 13-cv-0900-JRG
JURY TRIAL DEMANDED

DEFENDANTS’ MOTION TO STAY OR, IN THE ALTERNATIVE,
TO TRANSFER TO THE NORTHERN DISTRICT OF CALIFORNIA

Case 2:13-cv-00900-JRG Document 52 Filed 03/21/14 Page 2 of 23 PageID #: 1773

TABLE OF CONTENTS
Page
STATEMENT OF FACTS ..............................................................................................................1
A.

Apple and Other Companies Form Rockstar ...........................................................1

B.

Rockstar Consortium US LP and MobileStar File This Action ...............................2

C.

Rockstar’s Principal Place of Business is in Canada, Not Texas ............................3

ARGUMENT ...................................................................................................................................4
I.

THE COURT SHOULD STAY THIS ACTION PENDING RESOLUTION OF
THE GOOGLE ACTION ....................................................................................................4

II.

IN THE ALTERNATIVE, THE COURT SHOULD TRANSFER TO THE
NORTHERN DISTRICT OF CALIFORNIA .....................................................................6
A.

This Action Could Have Been Filed in The Northern District of California ...........6

B.

Rockstar Has No Meaningful Connection to This Forum .......................................7

C.

The Private Interest Factors Strongly Favor Transfer..............................................7
1.
2.

The Cost of Attendance of Willing Witnesses is Lower in The
Northern District of California Than in The Eastern District of
Texas ............................................................................................................8

3.

Availability of Compulsory Process Favors Transfer ................................11

4.

There Are No Practical Problems With Transferring This Case to
The Northern District of California ...........................................................13

5.
D.

Documentary Sources of Proof Are in The Northern District .....................7

This Court Has Transferred Similar Cases on Similar Facts .....................13

The Public Interest Factors Similarly Favor Transfer or Are Neutral ...................15
1.

The Northern District Has a Much Greater Interest in This Case..............15

2.

The Remaining Public Interest Factors Are Neutral ..................................15

CONCLUSION ..............................................................................................................................16

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TABLE OF AUTHORITIES
Page
Cases
Adaptix, Inc. v. HTC Corp.,
937 F. Supp. 2d 867 (E.D. Tex. 2013) .......................................................................................8
Affinity Labs of Texas v. Samsung Elecs. Co.,
No. 12-557, 2013 WL 5508122 (E.D. Tex. Sept. 18, 2013) ..............................................13, 15
In re Apple Inc.,
456 F. App’x 907 (Fed. Cir. 2012) ............................................................................................7
Blue Spike, LLC v. Texas Instruments, Inc.,
No. 12-558 (E.D. Tex. Mar. 13, 2014) ....................................................................................14
DataTern, Inc., v. Staples, Inc.,
No. 10-133 (E.D. Tex. Feb. 12, 2012) .......................................................................................5
Delphi Corp. v. Auto. Tech.’s Int’l, Inc.,
No. 08-11048, 2008 WL 2941116 (E.D. Mich. July 25, 2008) .................................................5
In re Genentech, Inc.,
566 F.3d 1338 (Fed. Cir. 2009)........................................................................................6, 8, 11
Google Inc. v. Rockstar Consortium US LP,
Case No. 13-5833 (N.D. Cal.)....................................................................................................2
Hertz Corp. v. Friend,
559 U.S. 77 (2010) .....................................................................................................................7
In re Hoffman-La Roche Inc.,
587 F.3d 1333 (Fed. Cir. 2009)............................................................................................8, 15
Ingeniador, LLC v. Adobe Sys. Inc.,
No. 12-00805, 2014 WL 105106 (E.D. Tex. Jan. 10, 2014)..........................................9, 12, 14
Katz v. Lear Siegler, Inc.,
909 F.2d 1459 (Fed. Cir. 1990)..................................................................................................4
Landis v. North Am. Co,
299 U.S. 248 (1936) ...................................................................................................................5
Leviton Mfg. Co., Inc. v. Interline Brands, Inc.,
No. 05-123, 2006 WL 2523137 (M.D. Fla. Aug. 30, 2006) ......................................................5
Microlinc, LLC v. Intel Corp.,
No. 07-488, 2010 WL 3766655 (E.D. Tex. Sept. 20, 2010) ......................................................5
In re Microsoft Corp.,
630 F.3d 1361 (Fed. Cir. 2011)..................................................................................................7

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Microsoft Corp. v. Geotag Inc.,
847 F. Supp. 2d 675 (D. Del. 2012) ...........................................................................................5
In re Nintendo Co.,
589 F.3d 1194 (Fed. Cir. 2009)..................................................................................................6
On Semiconductor Corp v. Hynix Semiconductor, Inc.,
No. 09-0390, 2010 WL 3855520 (E.D. Tex. Sept. 30, 2010) ....................................................7
Optimum Power Solutions LLC v. Apple Inc.,
794 F. Supp. 2d 696 (E.D. Tex. Feb. 22, 2011) .......................................................................13
Phil-Insul Corp. v. Reward Wall Sys., Inc.,
No. 11-0053 (E.D. Tex. Feb. 10, 2012), Docket No. 106 ..........................................................8
Ricoh Co. Ltd. v. Aeroflex Inc.,
279 F. Supp. 2d 554 (D. Del. 2003) ...........................................................................................5
Rockstar Consortium US LP v. ASUSTek Computer, Inc.,
No. 13-0894, Docket No. 1 ........................................................................................................2
Rockstar Consortium US LP v. HTC Corp.,
No. 13-0895, Docket No. 1 ........................................................................................................2
Rockstar Consortium US LP v. Huawei Investment & Holding Co.,
No. 13-0896, Docket No. 1 ........................................................................................................2
Rockstar Consortium US LP v. LG Elecs. Inc.,
No. 13-0898, Docket No. 1 ........................................................................................................2
Rockstar Consortium US LP v. Pantech Co.,
No. 13-0899, Docket No. 1 ........................................................................................................2
Rockstar Consortium US LP v. ZTE Corp.,
No. 13-0901, Docket No. 1 ........................................................................................................2
Rockstar Consortium US LP v. Google Inc.,
No. 13-0893 ...........................................................................................................3, 4, 8, 10, 13
Southwire Co. v. Cerro Wire, Inc.,
750 F. Supp. 2d 775 (E.D. Tex. 2010) .......................................................................................5
Spread Spectrum Screening LLC v. Eastman Kodak Co.,
657 F.3d 1349 (Fed. Cir. 2011)..............................................................................................4, 5
Touchscreen Gestures v. HTC,
No. 12-0261 (E.D. Tex. Mar. 27, 2013) ..................................................................................13
In re TS Tech,
551 F.3d 1315, 1320 (Fed. Cir. 2008)......................................................................................15
TransUnion Intelligence LLC v. Search America, Inc.,
No. 10-130, 2011 WL 1327038 (E.D. Tex. Apr. 5, 2011) .......................................................13

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Van Dusen v. Barrack,
376 U.S. 612 (1964) ...................................................................................................................6
In re Verizon Bus. Network Servs. Inc.,
635 F.3d 559 (Fed. Cir. 2011)....................................................................................................8
In re Volkswagen AG,
371 F.3d 201 (5th Cir. 2004) ...................................................................................................10
In re Volkswagen of Am., Inc.,
545 F.3d 304 (5th Cir. 2008) .................................................................................................6, 7
In re Zimmer Holdings, Inc.,
609 F.3d 1378 (Fed. Cir. 2010)............................................................................................7, 13
Statutes
28 U.S.C. § 1404(a) ...................................................................................................................6, 16
Fed. R. Civ. P. 45(b)(2)..................................................................................................................11
Fed. R. Civ. P. 45(c)(1)(B)(ii)........................................................................................................11

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Plaintiffs assert that devices running Google’s Android platform (designed and developed
primarily in Mountain View, California) manufactured by Samsung (in Korea) or sold by Google
(in Mountain View) infringe patents developed by Nortel (formerly Canada’s largest telephone
company) and now owned by Rockstar Consortium US LP and MobileStar Technologies LLC
(both headquartered in Ottawa, Canada). Whether or not these allegations are correct, they do
not have anything to do with Texas. The Court should thus stay this action pending resolution of
Google’s complaint for declaratory judgment that its Android platform does not infringe the
patents asserted here, currently pending in the Northern District of California. That action will
dispose of major questions at issue in this case, and will likely moot this litigation entirely. In
the alternative, the Court should transfer this action to the Northern District, where Google
developed and develops Android, and which holds the vast majority of documents and witnesses.
STATEMENT OF FACTS
A.

Apple and Other Companies Form Rockstar

In 2011, five companies including Google competitors Apple, Blackberry, and Microsoft,
together purchased patents auctioned following the bankruptcy of Nortel Networks (“Nortel”).
(Declaration of Kristin Madigan (“Madigan Decl.”) Exs. 1-3.) Their winning bid was $4.5
billion. (Id. Exs. 1-2.) Apple contributed “approximately $2.6 billion,” or 58% of the total. (Id.
Ex. 4.) To hold and assert these patents, the five new owners formed an interlocking and often
opaque network of companies including the two plaintiffs here, Rockstar Consortium US LP and
MobileStar Technologies LLC (collectively, “Rockstar”). (Id. Ex. 1, 5-9.) Rockstar is
admittedly a “patent licensing business” that produces no products and practices no patents. (Id.
Ex. 10.) Instead, Rockstar engineers examine other companies’ successful products to develop
infringement allegations, its licensing staff send demand letters to those companies, and Rockstar
extracts licenses to its patents under threat of litigation. (Id. Exs. 1, 11.)
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B.

Rockstar Consortium US LP and MobileStar File This Action

On October 30, 2013, Rockstar Consortium US LP formed a wholly owned subsidiary,
MobileStar LLC (“MobileStar”). (Madigan Decl. Ex. 8.) Rockstar Consortium US LP and
MobileStar are both Delaware entities claiming their “principal place of business” at Legacy
Town Center 1, 7160 North Dallas Parkway, Suite No. 250, Plano, Texas. (Docket No. 19
(“Am. Compl.”) ¶¶ 1-2.) The next day, Halloween 2013, Rockstar Consortium US LP
transferred to MobileStar ownership of five of the seven patents in suit. (Madigan Decl. Ex. 12.)
That same day, Rockstar filed this action and six others accusing Android OEMs of infringement
by “certain mobile communication devices having a version (or an adaption thereof) of Android
operating system” developed by Google. (Docket No. 1 ¶ 16.)1 Although Google is well-known
as the author of Android, Rockstar, for its own reasons, chose not to sue Google itself. (Id.)
On December 23, 2013, Google filed a declaratory action in the Northern District of
California, seeking judgment that Android does not infringe the same seven patents. Google Inc.
v. Rockstar Consortium US LP, No. 13-5833 (N.D. Cal.), Docket No. 1; the “Google Action”.
Only after that, on December 31, 2013, did Rockstar amend its complaint here to accuse Google
of infringing three of the seven patents. (Am. Compl. ¶ 27.) Three months later, on March 10,
2014, Rockstar sought leave to add allegations that Google infringed the other four patents as
well. (Docket No. 45.) The Google Action in California remains the first-filed action between
Rockstar and Google, and the only action between them to include all patents-in-suit.

1

See also Rockstar Consortium US LP v. ASUSTek Computer, Inc., No. 13-0894,
Docket No. 1 ¶ 14; Rockstar Consortium US LP v. HTC Corp., No. 13-0895, Docket No. 1 ¶ 15;
Rockstar Consortium US LP v. Huawei Investment & Holding Co., No. 13-0896, Docket No. 1
¶ 20; Rockstar Consortium US LP v. LG Elecs. Inc., No. 13-0898, Docket No. 1 ¶ 16; Rockstar
Consortium US LP v. Pantech Co., No. 13-0899, Docket No. 1 ¶ 14; and Rockstar Consortium
US LP v. ZTE Corp., No. 13-0901, Docket No. 1 ¶ 15.

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C.

Rockstar’s Principal Place of Business is in Canada, Not Texas

Plaintiffs in this action, Rockstar Consortium US LP and MobileStar LLC (collectively,
“Rockstar”), each claim to have “its principal place of business” in Texas. (Am. Compl. ¶¶ 1-2.)
Public records reveal that Rockstar’s principal place of business is in Ottawa, Canada.
Rockstar does not hide its Canadian connections. Rockstar’s website lists addresses in
Canada and Texas; Canada comes first, and has the only phone number. (Madigan Decl. Ex.
10.) The same website links to Rockstar’s LinkedIn page, which lists Rockstar’s Canadian
address as its “headquarters.” (Id. Exs. 13-14.) Rockstar also lists its employees on LinkedIn;
there are 33 of them, with only five in Texas. (Id. Exs. 14-15.) Even Rockstar’s own declarant,
opposing transfer in another action, could aver only that the same employees work in Rockstar’s
Texas office. Rockstar Consortium US LP v. Google Inc., No. 13-0893, Docket No. 33-1 ¶ 21.
The bulk of Rockstar’s employees, including its senior management, work in Ontario, Canada:

(Madigan Decl. Ex. 16.) Of these ten members of Rockstar’s senior management, five work in
Canada; one each in California, Colorado, Massachusetts, New York, and Pennsylvania; and
none in Texas. (Id. Exs. 15-19.) In addition to its senior management, Rockstar lists on its
website six “Corporate Leaders,” none of whom are from Texas. (Id. Ex. 20.) None of
Rockstar’s declarants have averred that its management, “senior” or otherwise, is in Texas.
Rockstar’s documents confirm this. Rockstar’s business is licensing, and its licensing

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letters are key to this business. Rockstar’s licensing letters come from Rockstar’s headquarters
in Canada, and from Rockstar’s licensing executive in California. (Madigan Decl. Ex. 21.) But
the most telling exposure of Rockstar’s Canadian origin comes from the document transferring
five of the patents-in-suit from Rockstar Consortium US LP to MobileStar. (Id. Ex. 12.)
Although Rockstar alleges that both buyer and seller have “Texas roots” (Google Action, Docket
Nos. 20 at 5, 39-3 at 9) and “longstanding ties” to “this area,” (Rockstar Consortium US LP v.
Google Inc., No. 13-0893, Docket No. 33 at 1), this critical transaction, which Rockstar alleges
makes MobileStar indispensable, was executed by two members of Rockstar’s senior
management, both Canadians, in Canada—duly witnessed and notarized by Rockstar’s Canadian
corporate counsel. (Madigan Decl. Ex. 12.) Rockstar has not even asserted that MobileStar set
foot in Texas before filing this action. MobileStar did not even register with the Secretary of
State, as required by Texas law, until more than a month later. (Docket No. 26 at 3-4.)
ARGUMENT
I.

The Court Should Stay This Action Pending Resolution of The Google Action
Because the Google Action will answer many, if not all, of the central questions at issue

here, the Court should stay this case and allow that action to proceed to judgment first. In the
interest of judicial efficiency and to guard against abuse, “‘litigation against or brought by the
manufacturer of infringing goods takes precedence over a suit by the patent owner against
customers of the manufacturer.’” Spread Spectrum Screening LLC v. Eastman Kodak Co., 657
F.3d 1349, 1357 (Fed. Cir. 2011) (quoting Katz v. Lear Siegler, Inc., 909 F. 2d 1459, 1464 (Fed.
Cir. 1990)). The manufacturer’s case need not resolve every issue in the customer suits; it “need
only have the potential to resolve the ‘major issues’ concerning the claims against the
customer—not every issue—in order to justify a stay of the customer suits.” Spread Spectrum,
657 F.3d at 1358 (citing Katz, 909 F.2d at 1464). The Google Action easily clears this bar.
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Android originates with Google, which supervises its “design and production” and is “in
the best position to defend its own products.” Delphi Corp. v. Auto. Tech.’s Int’l, Inc., No. 0811048, 2008 WL 2941116, at *5 (E.D. Mich. July 25, 2008); Microsoft Corp. v. Geotag Inc., 847
F. Supp. 2d 675, 681 (D. Del. 2012) (finding “the real dispute” was between the patentee and
defendants Microsoft and Google, rather than customers who featured Microsoft and Google
mapping services on their websites). The Google Action will resolve “major issues” in this
litigation, simplifying and likely obviating it. Spread Spectrum, 657 F.3d at 1358; DataTern,
Inc., v. Staples, Inc., No. 10-133 at 9 (E.D. Tex. Feb. 12, 2012), Docket No. 185 (staying
customer suits in favor of declaratory judgment action brought by software developers in New
York because “‘in all likelihood [the New York cases] will settle many [issues] and simplify
them all.’” (quoting Landis v. North Am. Co, 299 U.S. 248, 256 (1936) (alterations in original)).
The Google Action should “efficiently dispose of the infringement issues” presented here, Ricoh
Company v. Aeroflex Inc., 279 F. Supp. 2d 554, 558 (D. Del. 2003), and should promote judicial
economy by encouraging “global” resolution rather than “piecemeal litigation.” Delphi Corp.,
2008 WL 2941116, at *5; Ricoh, 279 F. Supp. 2d at 557 (“it is more efficient for the dispute to
be settled directly between the parties in interest”); Leviton Mfg. Co., Inc. v. Interline Brands,
Inc., No. 05-123, 2006 WL 2523137, at *2 (M.D. Fla. Aug. 30, 2006) (stay will “preserve
judicial resources, prevent duplicative expenses, and prevent the possibility of inconsistent
judgments”). The Court should stay this action pending resolution of the Google Action.2

2

This Court should also stay this action under its inherent authority because this case is
in its early stages, a stay will simplify the issues, see supra at 5, and will not prejudice Rockstar.
See Southwire Co. v. Cerro Wire, Inc., 750 F. Supp. 2d 775, 778-80 (E.D. Tex. 2010). Rockstar
is a non-practicing entity that can be fully compensated with damages. Microlinc, LLC v. Intel
Corp., No. 07-488, 2010 WL 3766655, at *2 (E.D. Tex. Sept. 20, 2010).

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II.

In the Alternative, the Court Should Transfer to the Northern District of California
Should the Court decline to grant a stay, it should transfer this case to the Northern

District of California, the more convenient forum. For “the convenience of parties and
witnesses, in the interest of justice, a district court may transfer any civil action to another district
or division where it might have been brought.” In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed.
Cir. 2009) (citing 28 U.S.C. § 1404(a)). In evaluating whether the proposed transferee forum is
sufficiently more convenient, courts look to “private” and “public” interest factors:
The private interest factors are: (1) the relative ease of access to sources of proof; (2) the
availability of compulsory process to secure the attendance of witnesses; (3) the cost of
attendance for willing witnesses; and (4) all other practical problems that make trial of a
case easy, expeditious and inexpensive. The public interest factors are: (1) the
administrative difficulties flowing from court congestion; (2) the local interest in having
localized interests decided at home; (3) the familiarity of the forum with the law that will
govern the case; and (4) the avoidance of unnecessary problems of conflict of laws [or in]
the application of foreign law.
In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc) (“Volkswagen II”)
(citation omitted)). The law requires an “individualized, case-by-case consideration of
convenience and fairness” to the parties, Van Dusen v. Barrack, 376 U.S. 612, 622 (1964), and
“forbids treating the plaintiff’s choice of venue as a factor in the analysis of a request to transfer
for the convenience of the parties.” In re Nintendo Co., 589 F.3d 1194, 1200 (Fed. Cir. 2009);
Volkswagen II, 545 F.3d at 313-15.
A.

This Action Could Have Been Filed in The Northern District of California

The Court must first determine “whether a civil action ‘might have been brought’ in the
destination venue.” Volkswagen II, 545 F.3d at 312. This test is not difficult to meet; it is “only
a requirement that the transferee court have jurisdiction over the defendants in the transferred
complaint.” Genentech, 566 F.3d at 1346. Google and Samsung are both subject to jurisdiction
in the Northern District of California, resolving this issue.

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B.

Rockstar Has No Meaningful Connection to This Forum

Although both Rockstar Consortium LP and MobileStar claim their “principal place of
business” is in this District, Rockstar’s true principal place of business is in Canada. (See supra
at 3-4.) The Supreme Court has defined “principal place of business” as “the place where a
corporation’s officers direct, control, and coordinate the corporation’s activities,” also known as
“the corporation’s ‘nerve center.’” Hertz Corp. v. Friend, 559 U.S. 77, 92-93 (2010). Citing
Hertz Corp., the Federal Circuit has transferred similar cases out of this District. In re Microsoft
Corp., 630 F.3d 1361, 1364 (Fed. Cir. 2011) (granting mandamus and reminding that courts
should, if “the record reveals attempts at manipulation” regarding the principal place of business,
“take as the ‘nerve center’ the place of actual direction, control, and coordination, in the absence
of such manipulation”); In re Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010)
(noting that Hertz Corp. urges “courts to ensure that the purposes of jurisdictional and venue
laws are not frustrated by a party’s attempts at manipulation,” and finding the patentee’s
“presence in Texas appears to be recent, ephemeral, and an artifact of litigation”). “Courts
should not ‘honor connections to a preferred forum made in anticipation of litigation and for the
likely purpose of making that forum appear convenient.’” In re Apple Inc., 456 F. App’x 907,
908-09 (Fed. Cir. 2012) (quoting Microsoft Corp., 630 F.3d at 1364).
C.

The Private Interest Factors Strongly Favor Transfer
1.

Documentary Sources of Proof Are in The Northern District

This factor turns on “which party, usually the accused infringer, will most probably have
the greater volume of documents relevant to the litigation and their presumed location in relation
to the transferee and transferor venues.” On Semiconductor Corp v. Hynix Semiconductor, Inc.,
No. 09-0390, 2010 WL 3855520, at *2 (E.D. Tex. Sep. 30, 2010) (citing Volkswagen II, 545
F.3d at 314-15). In Hynix, the court noted that relevant documents were “spread throughout the
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country and world,” including in Texas, but still found that this factor favored transfer to the
Northern District of California because it was closer to most of defendants’ documents and,
“typically in a patent case, the defendant has the majority of relevant documents.” Id. at *4. That
is certainly true here: Google’s design and development documents are managed and maintained
from Google’s headquarters in California. (Declaration of Abeer Dubey (“Dubey Decl.”) ¶ 12.)
“[T]he volume of physical evidence located in, or closer to, the transferee forum” is significant
“especially when no physical evidence is located in Texas.” Phil-Insul Corp. v. Reward Wall
Sys., Inc., No. 11-53, at 4 (E.D. Tex. Feb. 10, 2012), Docket No. 106 . Rockstar admits that its
purportedly relevant documents come from Nortel’s former office, which Rockstar further
admits was not in this District. Rockstar Consortium US LP v. Google Inc., No. 13-0893,
Docket No. 33-1 ¶¶ 6, 24. Rockstar moved these documents into this District (id. ¶¶ 18, 24),
“but documents relocated in anticipation of litigation are not considered.” Adaptix, Inc. v. HTC
Corp., 937 F. Supp. 2d 867, 872 (E.D. Tex. 2013) (citing In re Hoffman-La Roche Inc., 587 F.3d
1333, 1336-7 (Fed. Cir. 2009)). In any event, “the bulk of the relevant evidence usually comes
from the accused infringer,” here, Google in the Northern District. Genentech, 566 F.3d at 1345.
2.

The Cost of Attendance of Willing Witnesses is Lower in The
Northern District of California Than in The Eastern District of Texas

Transfer to the Northern District of California will serve the convenience of the
witnesses, which is “probably the single most important factor in transfer analysis.” Genentech,
566 F.3d at 1343; see In re Verizon Bus. Network Servs. Inc., 635 F.3d 559, 561 (Fed. Cir. 2011).
“All potential material and relevant witnesses must be taken into account for the transfer
analysis, irrespective of their centrality to the issues raised in a case or their likelihood of being
called to testify at trial.” Hynix, 2010 WL 3855520, at *5 (citing Genentech, 566 F.3d at 1343).

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Google is headquartered in Mountain View, California. (Dubey Decl. ¶¶ 4-6.) Google
witnesses are concentrated in Mountain View, including engineers responsible for the research,
design, and development of the accused Android features. (Id. ¶ 7.) There are approximately
850 people in the group that develops the Android platform. Of these, over 200 are outside of
the U.S. (id. ¶ 8)—which should not impact the venue analysis. Of the approximately 630
United States-based employees in this group, more than 85% work in the San Francisco Bay
Area. (Id.) This group is led by Hiroshi Lockheimer, Vice President of Engineering, who works
in Mountain View, California. Jon Gold, a Finance Manager with knowledge of financial
information related to Google’s Android platform, also works in Mountain View. (Id. ¶ 9.)
There are no relevant Google documents or employees in the Eastern District. (Id. ¶¶ 11-12.)
Google’s witnesses residing near Mountain View “would be forced to travel more than 1,500
miles to attend trial in this Court.” Ingeniador, LLC v. Adobe Sys. Inc., No. 12-0805, 2014 WL
105106, at *3 (E.D. Tex. Jan. 10, 2014).
Samsung Electronics Co., Ltd. (“SEC”) is a Korean company based in Korea. Samsung
Electronics America, Inc. (“SEA”) is a corporation organized and existing under the laws of the
state of New York, with a principal place of business at 85 Challenger Road, Ridgefield Park,
New Jersey. Samsung Telecommunications America, LLC (“STA”) is a limited liability
company organized and existing under the laws of the state of Delaware, with a principal place
of business at 1301 East Lookout Drive, Richardson, Texas. SEC manufactures the accused
devices outside the U.S.—in fact, no Samsung cell phones or tablets are manufactured here.
(Decl. of B. J. Kang In Support of Defendants’ Motion to Stay, Or In The Alternative, To
Transfer To The Northern District of California (“Kang Decl.”) ¶ 4.) Neither STA nor SEA
manufactures Samsung cell phones or tablets. (Id.) Samsung does not operate any retail stores

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or conduct any retail operations in the U.S., nor does it sell the accused devices directly to any
consumer in the U.S. (Id. ¶ 5.) Samsung cell phones and tablets are not available for direct
purchase in the U.S. through Samsung’s websites. (Id.) The vast majority of Samsung’s
employees are located in Korea, where the vast majority of planning, design, and development of
the accused devices Samsung takes place. (Id. ¶¶ 6-7.) The vast majority of Samsung’s records
relating to the design, manufacture, and operation of the accused devices would be located in
Korea. (Id. ¶ 8.) The vast majority of the Samsung employees who possess knowledge likely
relevant to the present case, including those knowledgeable about Samsung’s phones and tablets
with the Android Operating System, live and work in South Korea. (Id. ¶ 10.)
The Northern District of California is more than 100 miles from this District, so the
“factor of inconvenience to witnesses increases in direct relationship to the additional distance to
be traveled.” In re Volkswagen, 371 F.3d 201, 204-05 (5th Cir. 2004). The Northern District is a
dramatically shorter average distance from the vast majority of potential witnesses, including
Google’s witnesses in that District and Samsung’s in Korea, than is this District. But the Court
must consider not only average distance, but also travel time. See id. at 205 n.3. Here too the
Northern District prevails: the much smaller number of witnesses who would still have to fly
there can fly into international airports in Oakland or San Francisco, 10 and 25 miles from the
courthouse hearing the Google Action, while witnesses traveling to this Court must additionally
drive 170 miles from Dallas, or take a connecting regional flight into Shreveport and drive back
35 miles. Rockstar tepidly argues that its employees would prefer to come here instead of San
Francisco (Rockstar Consortium US LP v. Google Inc., No. 13-0893, Docket No. 33-1 ¶ 25), but
cannot show the Eastern District is objectively more convenient for these employees. In
contrast, Google’s more numerous witnesses, with more central information, are actually in

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Mountain View in the Northern District. (Dubey Decl. ¶¶ 4-9.) In any event, witnesses traveling
from Rockstar’s Ottawa headquarters must travel a significant distance to either district and
therefore should not affect the Court’s venue consideration. Genentech, 566 F.3d at 1344.
3.

Availability of Compulsory Process Favors Transfer

The third factor, “availability of compulsory process to secure the attendance of
witnesses,” strongly favors the Northern District. Both this Court and the Northern District can
issue nationwide deposition subpoenas under Fed. R. Civ. P. 45(b)(2), but each Court has
different powers to require attendance at trial. This Court can compel only non-party witnesses
residing within Texas, and the Northern District only from within California. Fed. R. Civ. P.
45(c)(1)(B)(ii). In at least three subject-matter areas, the relevant witnesses are in the Northern
District. First, witnesses with knowledge of the Android platform, including former employees
of Google and Android Inc., remain heavily concentrated in the Northern District. At least one
named inventor resides in the Northern District (Madigan Decl. Ex. 22), and dozens of relevant
prior artists of record live in the Northern District.3
3

The inventors include Edward H. Frank, James Arthur Gosling, and John C. Liu,
named inventors on European Patent No. 0,605,945; Ashish Thanawala, named inventor on
European Patent No. 0,630,141; Michael C. Tchao, named inventor on U.S. Patent No.
5,563,996; Scott A. Jenson, named inventor on U.S. Patent No. 5,570,109; Mitchell D. Forcier,
named inventor on U.S. Patent No. 5,590,257; Robert Irribarren, named inventor on U.S. Patent
No. 5,737,395, Stephen P. Capps, named inventor on U.S. Patent No. 5,745,716; Ilan Raab, Ravi
Manghirmalani, Ofer Doitel, and Lynne Marie Izbicki, named inventors on U.S. Patent No.
5,751,967; Ajay Gupta and Gregory Skinner, named inventors on U.S. Patent No. 5,781,550;
Judy Dere, Leon Leong, Daniel Simone, and Allan Thomson, named inventors on U.S. Patent
No. 5,802,286; Thomas P. Moran and Patrick Chiu, named inventors on U.S. Patent No.
5,809,267; Christopher D. Coley, named inventors on U.S. Patent No. 5,826,014; Tom Ziola and
William Herman, named inventors on U.S. Patent No. 5,862,339; Nicolle Henneuse and Pete
Billington, named inventors on U.S. Patent No. 5,963,913; John H. Hart and W. Paul Sherer,
named inventors on U.S. Patent No. 6,041,166; Srikumar N. Chari, named inventor on U.S.
Patent No. 6,046,742; Prakash C. Banthia, a named inventor on U.S. Patent No. 6,085,243;
Umesh Muniyappa, Alampoondi Eswaran Natarajan, Nicholas Michael Brailas, and Michael
Terzich, named inventors on U.S. Patent No. 6,092,200; Keith McCloghrie, Bernard R. James,
Christopher Young, and Norman W. Finn, named inventors on U.S. Patent No. 6,219,699; Leslie
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Finally and most critically, the Northern District is home to important, but very likely
unwilling, trial witnesses: employees of Apple. “[T]he focus of this factor is on witnesses for
whom compulsory process might be necessary.” Ingeniador, 2014 WL 105106, at *2.
Rockstar’s complaint includes allegations regarding the auction of Nortel’s patent
portfolio. (Docket No. 19 ¶¶ 7-12.) Rockstar alleges that Google “ultimately bid[] as high as
$4.4 billion” for the portfolio, but lost to Apple and the other Rockstar owners. (Id. ¶
11.) Rockstar has thus put at issue in this action—in fact, at the forefront—the valuation of the
entire portfolio auctioned by Nortel. Rockstar evidently intends to introduce evidence at trial
regarding Google’s bids on the total Nortel portfolio, evidence which Google can counter by
calling witnesses from Apple—but only if Google can compel those witnesses to attend the trial,
which it can do in the Northern District but not here.
This Court cannot compel live testimony from these out-of-state witnesses. As a result,
in this District Rockstar could compel testimony from Google regarding its valuation of the
Nortel portfolio, while Google could present Apple’s valuation only though deposition
testimony, on which jurors focus less. There would thus be total asymmetry of presentation on
this controversial issue, which would be highly prejudicial to Google. The Northern District can
compel live testimony from Apple, eliminating this asymmetry. This factor favors transfer.
Google and Samsung should not be deprived of their ability to call these witnesses live,
especially where no relevant non-party witness appears to reside in the Eastern District. None of
the prosecuting attorneys appear to reside here. (Madigan Decl. Ex. 23.) Not a single inventor
named on the asserted patents was located in Texas. The sale of Nortel’s patent portfolio took

J. Arrow and Quentin C. Liu, named inventors on U.S. Patent No. 6,226,751; Snehal G. Karia
and Dean C. Cheng, named inventors on U.S. Patent No. 6,643,267; and Kamran Sistanizadeh
and Masoud M. Kamali, named inventors on U.S. Patent No. 6,681,232. (Jachlewski Decl. ¶ 3.)

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place in New York, in which Nortel was represented by New York attorneys. Rockstar
Consortium US LP v. Google Inc., No. 13-0893, Docket No. 33-1 ¶ 14. The former Nortel
licensing executives involved in the sale and Rockstar’s acquisition of the patents-in-suit reside
in Canada and Massachusetts. (Madigan Decl. Exs. 24-25.) The Court should grant transfer
where, as here, the present District “is convenient only for [plaintiff]’s litigation counsel.”
Zimmer, 609 F.3d at 1381.
4.

There Are No Practical Problems With Transferring
This Case to The Northern District of California

“Practical problems include those that are rationally based on judicial economy.”
Optimum Power Solutions LLC v. Apple Inc., 794 F. Supp. 2d 696, 702 (E.D. Tex. Feb. 22,
2011). There are no practical problems with transferring this case because this case is just
beginning: discovery has not started, the parties have not exchanged initial disclosures or
contentions, and any such disclosures or contentions exchanged in the future can be used in the
Northern District as well. The Local Patent Rules of this District were patterned on those of the
Northern District of California, meaning any work the parties have done in this District will not
be wasted. Affinity Labs of Texas v. Samsung Elecs. Co., No. 12-557, 2013 WL 5508122, at *2
(E.D. Tex. Sept. 18, 2013). This factor is thus neutral. TransUnion Intelligence LLC v. Search
America, Inc., No. 10-130, 2011 WL 1327038, at *5 (E.D. Tex. Apr. 5, 2011).
5.

This Court Has Transferred Similar Cases on Similar Facts

In Touchscreen Gestures v. HTC, the court granted transfer to the Northern District on
strikingly similar facts. No. 12-0261 (E.D. Tex. Mar. 27, 2013), Docket No. 17. In
Touchscreen, a Texas LLC brought a patent infringement lawsuit in the Eastern District against a
foreign device manufacturer and its U.S. subsidiary. Id. at 1-2. As in this case, the LLC plaintiff
was formed shortly before filing suit against an Android OEM. Id. at 6. The Court found that

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Google’s documents are more easily accessed from the Northern District, and the Northern
District would be more convenient for witnesses from Google. Id. at 7 and 10. The same holds
true here. (Dubey Decl. ¶ 3.) Each of the public and private factors is neutral or favors transfer
to the Northern District. No factor favors this District.
This Court also recently granted transfer in Ingeniador, 2014 WL 105106. Defendant
there was headquartered in the Northern District of California. Id. at *1. Although some
relevant documentary evidence was located in Texas, as Rockstar claims here, most of the
evidence and witnesses were in the Northern District. Id. at *2, *3. The Court found the
inconvenience to the witnesses in Texas outweighed by the “substantially increased convenience
of witnesses in California,” in particular “given that most witnesses will likely come from
California.” Id. at *3. The same is true here.
Similarly, in Blue Spike, LLC v. Texas Instruments, Inc., this Court transferred a patent
infringement suit against Google to the Northern District of California. No. 12-558 at 1 (E.D.
Tex. Mar. 13, 2014), Docket No. 16. Google’s motion was based “largely on the fact that its
headquarters—and thus its witnesses and evidence—are in Mountain View, California.” Id. at 2.
Plaintiff argued “(1) the pendency of dozens of related cases in this district, and (2) the presence
of Plaintiff Blue Spike as well as Blue Spike CEO and Inventor Scott Moskowitz” weighed
against transfer. Id. This Court found “the location of Defendant’s sources of proof far
outweighs the presence of Plaintiff’s documents and servers in Texas.” Id. at 5. This Court also
found compulsory process and cost of attendance of willing witnesses favored transfer because
Google identified numerous non-party witnesses. Id. at 5-7. The Court found the Northern
District of California was “a clearly more convenient forum” and granted transfer. Id. at 10. The
same analysis should apply here.

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D.

The Public Interest Factors Similarly Favor Transfer or Are Neutral
1.

The Northern District Has a Much Greater Interest in This Case

The Android platform, developed by Google at Mountain View, is at the core of
Rockstar’s claims. “The Northern District of California has an interest in protecting intellectual
property rights that stem from research and development in Silicon Valley.” Affinity, 2013 WL
5508122, at *3. The Northern District’s local interest is even stronger, however, because this
action “calls into question the work and reputation of several individuals residing in or near that
district and who presumably conduct business in that community.” Hoffman La-Roche, 587 F.3d
at 1336. This District’s interest is much weaker. Rockstar alleges only a single connection to
this District, its asserted “principal place of business,” but that is actually in Canada. (See supra
at 3-4.) The allegedly infringing devices are “sold throughout the United States, and thus the
citizens of the Eastern District of Texas have no more or less of a meaningful connection to this
case than any other venue.” In re TS Tech, 551 F.3d 1315, 1321 (Fed. Cir. 2008). This factor
favors transfer.
2.

The Remaining Public Interest Factors Are Neutral

The remaining public interest factors are neutral or weigh slightly in favor of transfer.
The Northern District and this District resolve cases in nearly identical time. (Madigan Decl. Ex.
26.) Both Courts are familiar with and can apply the federal patent laws to this case, and no
conflict of laws problems are expected in either district. See TS Tech, 551 F.3d at 1320.

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CONCLUSION
For the foregoing reasons, defendants Google and Samsung respectfully request that this
Court stay this case pending resolution of the Google Action or, in the alternative, transfer this
case to the Northern District of California pursuant to 28 U.S.C. § 1404(a).

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Case 2:13-cv-00900-JRG Document 52 Filed 03/21/14 Page 22 of 23 PageID #: 1793

Dated: March 21, 2014

Respectfully submitted,

/s/ J. Mark Mann
J. Mark Mann (State Bar No. 12926150)
J. Mark Mann (State Bar No. 12926150)
[e-mail]
[e-mail]
G. Blake Thompson (State Bar No. 24042033) G. Blake Thompson (State Bar No. 24042033)
[e-mail]
[e-mail]
MANN | TINDEL | THOMPSON
MANN | TINDEL | THOMPSON
300 West Main Street
300 West Main Street
Henderson, Texas 75652
Henderson, Texas 75652
[phone]
[phone]
[phone] facsimile
[phone] facsimile
Charles K. Verhoeven (Cal. Bar. No. 170151)
Sean Pak (Cal. Bar. No. 2190323)
quinn-samsung-e.d.tex.-13-0900
@quinnemanuel.com
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
[phone]
[phone] facsimile
Kevin P.B. Johnson (Cal. Bar No. 177129)
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Dr., 5th Floor
Redwood Shores, California 94065
[phone]
[phone] facsimile

Charles K. Verhoeven (Cal. Bar. No. 170151)
Sean Pak (Cal. Bar No. 219032)
Amy H. Candido (Cal. Bar No. 237829)
Matthew S. Warren (Cal. Bar No. 230565)
quinn-google-e.d.tex.-13-00900
@quinnemanuel.com
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
[phone]
[phone] facsimile
Attorneys for Defendant Google Inc.

Joseph Milowic III (NY Bar. No. 4,622,221)
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
[phone]
[phone] facsimile
Attorneys for Defendants Samsung Electronics, Co., Ltd.,
Samsung Electronics America, Inc., and Samsung
Telecommunications America, LLC

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CERTIFICATE OF SERVICE
I hereby certify that all counsel of record have consented to electronic service and are
being served with a copy of this document via the Court’s CM/ECF system per Local Rule CV5(a)(3) on March 21, 2014.
/s/ J. Mark Mann
J. Mark Mann

18