Google Inc. v. Rockstar Consortium US LP et al

Filing 72

RESPONSE (re 67 MOTION to Transfer Case or, in the Alternative to Stay ) Opposition of Google Inc. to Rockstar's Renewed Motion to Transfer or Stay This Action filed byGoogle Inc.. (Attachments: # 1 Declaration of Kristin J. Madigan, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18)(Warren, Matthew) (Filed on 5/23/2014)

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
Sean Pak (Cal. Bar No. 219032)

Matthew S. Warren (Cal. Bar No. 230565)
[e-mail]

50 California Street, 22nd Floor
 San Francisco, California 94111
[phone]
 [phone] (facsimile)
 Attorneys for Plaintiff GOOGLE INC.



UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA



OAKLAND DIVISION


 GOOGLE INC.,

CASE NO. 13-cv-5933-CW



OPPOSITION OF GOOGLE INC. TO
ROCKSTAR’S RENEWED MOTION TO
TRANSFER OR STAY THIS ACTION



Plaintiff,
v.

 ROCKSTAR CONSORTIUM US LP and
MOBILESTAR TECHNOLOGIES LLC,

Defendants.


Date:
Time:
Courtroom:
Judge:

Thursday, June 26, 2014
2:00 P.M.
Courtroom 2, Fourth Floor
Hon. C.J. Claudia Wilken












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01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1

TABLE OF CONTENTS

2

Page

3 INTRODUCTION ............................................................................................................................. 1
4 BACKGROUND ............................................................................................................................... 1
5

A.

Rockstar Moves to Dismiss This Action or, in the Alternative, to Transfer ............. 1

6

B.

This Court Denies Rockstar’s Motion to Dismiss and Its Motion to Transfer ......... 1

7

C.

Rockstar Distorts This Court’s Order to the Eastern District of Texas ..................... 2

8

D.

Rockstar Files Its Renewed Motion to Transfer This Action, or Stay It ................... 3

9 ARGUMENT .................................................................................................................................... 4
10 I.

Rockstar’s Renewed Motion to Transfer Violates Local Rule 7-9 ....................................... 5

11 II.
12

As This Court Found in Denying Rockstar’s Prior Motion to Transfer, Rockstar’s
Headquarters is in Canada, Not Texas; Rockstar Has No Meaningful Connection to
Texas, and Brought the Halloween Actions There Solely for Strategic Purposes ................ 7

13

A.

MobileStar Technologies LLC is a Sham Entity Which the Court Must Ignore ...... 7

14

B.

Rockstar’s Principal Place of Business is in Ottawa, Canada ................................... 9

15

C.

Proceeding With This Action Will Prevent Duplicative Litigation ........................ 11

16 III.

Because Each of the Transfer Factors Favors This District or is Neutral, to the
Extent the Court Reconsiders Its Original Order Denying Rockstar’s Motion to
Transfer This Action, It Should Again Deny Rockstar’s Renewed Motion to
Transfer ............................................................................................................................... 12

17
18

A.

Plaintiff’s Choice of Forum Favors This District .................................................... 12

B.

Convenience of Parties and Witnesses Favors This District ................................... 14

C.

Availability of Compulsory Process Favors This District ...................................... 15

D.

Feasibility of Consolidation With Other Claims Favors This District .................... 19

E.

Ease of Access to the Evidence Favors This District .............................................. 20

F.

Local Interest in the Controversy Favors This District ........................................... 21

G.

Relative Court Congestion and Time to Trial Favor This District .......................... 22

H.

Familiarity of Each Forum with the Applicable Law is Neutral ............................. 23

19
20
21
22
23
24
25
26
IV.

The Court Should Deny Rockstar’s Cursory Request for a Stay ........................................ 23

27
CONCLUSION ............................................................................................................................... 25
28
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CASE NO. 13-cv-5933-CW
-iGOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1

TABLE OF AUTHORITIES

2
3

Page
Cases

4 Affinity Labs of Texas v. Samsung Elecs. Co.,
2013 WL 5508122 (E.D. Tex.) ..................................................................................................21
5
Altmann v. Republic of Austria,
6
317 F.3d 954 (9th Cir. 2002) ......................................................................................................12
7 Brackett v. Hilton Hotels Corp.,
619 F. Supp. 2d 810 (N.D. Cal. June 30, 2008) .........................................................................15
8
Brookstone Co.,
9
2009 U.S. Dist. LEXIS 69630 (N.D. Cal. July 30, 2009) ..........................................................24
10 Clinton v. Jones,
520 U.S. 681 (1997) ...................................................................................................................23
11
Decker Coal Co. v. Commonwealth Edison Co.,
12
805 F.2d 834 (9th Cir. 1986) ............................................................................................5, 12, 14
13 Electronics for Imaging, Inc. v. Coyle,
394 F.3d 1341 (Fed. Cir. 2005) ............................................................................................13, 19
14
FTC v. Publishing Clearing House, Inc.,
15
104 F.3d 1168 (9th Cir. 1997) ....................................................................................................14
16 Forte Capital Partners v. Harris Cramer,
No. 07-1237, 2007 WL 1430052 (N.D. Cal. May 14, 2007) .....................................................14
17
Google Inc. v. ContentGuard Holdings, Inc.,
18
No. 14-498 (N.D. Cal. Apr. 15, 2014), .....................................................................................24
19 Gulf Oil Corp. v. Gilbert,
330 U.S. 501 (1947) ...................................................................................................................12
20
Hertz Corp. v. Friend,
21
559 U.S. 77 (2010) .....................................................................................................................21
22 Hynix Semiconductor, Inc. v. Rambus, Inc.
2009 U.S. Dist. LEXIS 10939 (N.D. Cal. Feb. 3, 2009) ............................................................24
23
In re Hoffman-LaRoche,
24
587 F.3d 1333 (Fed. Cir. 2009) ..................................................................................................21
25 Ingeniador, LLC v. Adobe Sys. Inc.,
No. 12-00805, 2014 WL 105106 (E.D. Tex. Jan. 10, 2014) ................................................14, 15
26
Kina v. United Air Lines, Inc.,
27
No. 08-4358, 2008 WL 5071045 (N.D. Cal. Dec. 1, 2008) .........................................................5
28
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-iiGOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 King v. B.F. Saul Mortg. Co.,
No. 10-1749, 2010 U.S. Dist. LEXIS 99022 (S.D. Cal. Sept. 21, 2010) .....................................6
2
LML Holdings, Inc. v. Pac. Coast Distrib. Inc.,
3
No. 11-cv-06173, 2012 WL 2994017 (N.D. Cal. July 20, 2012) .................................................4
4 Landis v. N. Am. Co.,
299 U.S. 248 (1936) .....................................................................................................................2
5
Leviton Mfg. Co. v. Interline Brands, Inc.,
6
2006 U.S. Dist. LEXIS 61944 (M.D. Fla. Aug. 30, 2006) .........................................................24
7 Man Against Extinction v. Hall,
No. 08-01488, 2008 WL 4534279 (N.D. Cal. Oct. 7, 2008) ........................................................6
8
Mateos v. Select Energy Servs., L.L.C.,
9
919 F. Supp. 2d 817 (W.D. Tex. 2013) ......................................................................................23
10 Micron Technology, Inc. v. Mosaid Technologies, Inc.,
518 F.3d 897 (Fed. Cir. 2008) ..............................................................................................11, 12
11
Microsoft Corp. v. Geotag Inc.,
12
847 F. Supp. 2d 675 (D. Del. 2012) ...........................................................................................15
13 Natural Wellness Centers of Am., Inc. v. J.R. Andorin Inc.,
No. 11-04642, 2012 WL 216578 (N.D. Cal. Jan. 24, 2012) ......................................................13
14
Natural Wellness Ctrs. of Am., Inc. v. Golden Health Prods.,
15
2013 U.S. Dist. LEXIS 8658 (N.D. Cal. Jan. 22, 2013) ............................................................18
16 Nuance Commc'ns, Inc. v. Abbyy Software House,
626 F.3d 1222 (Fed. Cir. 2010) ....................................................................................................2
17
Oakley, Inc. v. Jofa AB, 287 F. Supp. 2d 1111 (C.D. Cal. 2003) .......................................................6
18
Protrade Sports, Inc. v. Nextrade Holdings, Inc.,
19
No. 05-4039, 2006 WL 269951 (N.D. Cal. Feb. 2, 2006) ...........................................................6
20 In Ricoh Co., Ltd. v. Aeroflex Inc.,
279 F. Supp. 2d 554, 556 (D. Del. 2003) ...................................................................................24
21
Saleh v. Titan Corp.,
22
361 F. Supp. 2d 1152 (N.D. Cal. 2005) .......................................................................................4
23 Sec. Investor Protection Corp.,
764 F.2d at 1317 .........................................................................................................................12
24
Stewart Org., Inc. v. Ricoh Corp.,
25
487 U.S. 22 (1988) ...................................................................................................................2, 4
26 In re TS Tech United States Corp.,
551 F.3d 1315 (Fed. Cir. 2008) ....................................................................................................4
27
Trintec Indus., Inc. v. Pedre Promotional Products, Inc.,
28
395 F.3d 1275 (Fed. Cir. 2005) ....................................................................................................6
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CASE NO. 13-cv-5933-CW
-iiiGOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 Tuazon v. R.J. Reynolds Tobacco Co.,
433 F.3d 1163 (9th Cir. 2006) ....................................................................................................12
2
Ventress v. Japan Airlines,
3
486 F.3d 1111 (9th Cir. 2007) ......................................................................................................4
4 Wellens v. Daiichi Sankyo Co., Inc.,
No. 13-00581, 2013 WL 3242294 (N.D. Cal. June 25, 2013) .....................................4, 5, 14, 15
5
Wesley-Jessen Corp. v. Pilkington Visioncare, Inc.,
6
157 F.R.D. 215 (D. Del. 1993) ...................................................................................................23
7
Statutes and Rules
8
28 U.S.C. § 1292(b) ...........................................................................................................................1
9
28 U.S.C. § 1391 ........................................................................................................................2, 3, 6
10
28 U.S.C. § 1404 ............................................................................................................................3, 4
11
Del. Code Ann. Tit. 6, § 17-403 .........................................................................................................3
12
Fed. R. Civ. P. 15 ...........................................................................................................................1, 5
13
Fed. R. Civ. P. 26(a)(1) ....................................................................................................................15
14
Fed. R. Civ. P. 45(b)(2) ....................................................................................................................15
15
Fed. R. Civ. P. 45(c)(1)(B)(ii) ..........................................................................................................15
16
17
18
19
20
21
22
23
24
25
26
27
28
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CASE NO. 13-cv-5933-CW
-ivGOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1
2

INTRODUCTION
This motion seeks to relitigate an issue this Court already decided. In January, Rockstar

3 asked this Court to dismiss this action or “in the alternative transfer Google’s claims to the Eastern
4 District of Texas,” where Rockstar claimed its principal place of business. After reviewing the
5 record, however, this Court found that Rockstar’s principal place of business is actually in Canada,
6 denied Rockstar’s motion to dismiss, and denied Rockstar’s motion to transfer. Although most
7 litigants would have accepted the Court’s ruling and moved on, Rockstar instead filed not only a
8 request for certification under 28 U.S.C. § 1292(b), but also this do-over transfer motion, which
9 again asks the Court to transfer this action, again to the Eastern District of Texas. Rockstar’s
10 redux quickly devolves into farce: having failed to convince the Court that Texas is its “principal
11 place of business,” Rockstar now argues that its Texas office is “the only office for the company.”
12 Rockstar supports this incredible allegation—literally, not credible—with a sworn declaration, just
13 four months after it filed a different sworn declaration from another Rockstar executive, who
14 testified to “reside and work from Rockstar’s Ottawa, Canada location.” Rockstar’s remaining
15 arguments are not as risible, but they fare no better. Rockstar’s renewed transfer motion is exactly
16 that: a rehash of arguments Rockstar has made before. The Court should deny it.
17

BACKGROUND

18

A.

19

On December 23, 2013, Google filed this action. (Docket No. 1.) On January 23, 2014,

Rockstar Moves to Dismiss This Action or, in the Alternative, to Transfer

20 Rockstar moved to dismiss for lack of personal jurisdiction—or, in the alternative, to transfer this
21 action to the Eastern District of Texas. (Docket No. 19-4.) With this motion, Rockstar submitted
22 a declaration from Afzal Dean, President of MobileStar Technologies LLC and Vice President of
23 IP Licensing for Rockstar Consortium US LP. (Docket No. 19-6 ¶¶ 2-3.) Seeking to support
24 Rockstar’s allegation that its “principal place of business” was in Plano, Texas, Mr. Dean averred
25 under penalty of perjury that, “Even though I reside and work from Rockstar’s Ottawa, Canada
26 location, I travel frequently to Plano and have an assigned office in the Plano office.” (Id. ¶ 28.)
This Court Denies Rockstar’s Motion to Dismiss and Its Motion to Transfer

27

B.

28

On April 17, this Court entered an order denying Rockstar’s motion to dismiss (Docket

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CASE NO. 13-cv-5933-CW
-1GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 No. 58 at 7-23), and separately denying Rockstar’s motion to transfer this action to the Eastern
2 District of Texas. (Id. at 23-28.)
Rockstar Distorts This Court’s Order to the Eastern District of Texas

3

C.

4

Instead of preparing to litigate this action in this Court, Rockstar launched a campaign to

5 misrepresent this Court’s ruling to the Eastern District of Texas. This campaign sought to
6 encourage the Eastern District to ignore this Court’s ruling while deciding the motions to transfer
7 pending before it. Toward this end, Rockstar systematically distorted this Court’s ruling by
8 conflating two separate portions: this Court’s ruling on the motion to dismiss and its ruling on the
9 motion to transfer:
10
11
12
13
14

The NDCA Order was decided in the context of a motion to dismiss or transfer
venue under 28 U.S.C. § 1391. The § 1391 legal standard required that the NDCA
base its decision on the allegations pled in Google’s complaint and resolve any
“conflicts in the allegations and evidence . . . in [Google’s] favor.” Google Inc.,
2014 U.S. Dist. LEXIS 53757, at *26. As a result, the NDCA Order rests on an
incomplete view of the facts and the acceptance of pled allegations that are false.
No such legal standard is applicable here, and as such, unlike the NDCA, this Court
has the benefit of weighing the evidence and facts before it. Stewart Org., Inc. v.
Ricoh Corp., 487 U.S. 22, 29 (1988).

15 Rockstar v. Samsung, No. 13-900 (E.D. Tex. May 8, 2014), Docket No. 67 at 1 (alterations and
16 emphasis in original) (footnotes omitted); see also Rockstar v. ASUS, No. 13-894 (E.D. Tex. May
17 5, 2014), Docket No. 93 at 1; Rockstar v. HTC, No. 13-895 (E.D. Tex. May 5, 2014), Docket No.
18 38 at 1; Rockstar v. LG, No. 13-898 (E.D. Tex. May 5, 2014), Docket No. 42 at 1; Rockstar v.
19 Pantech, No. 13-899 (E.D. Tex. Apr. 25, 2014), Docket No. 28 at 15; id., Docket No. 31 at 1-2;
20 Rockstar v. ZTE, No. 13-901 (E.D. Tex. May 5, 2014), Docket No. 48, at 1.
21

For several reasons, this was false. First, Rockstar’s self-serving summary of this Court’s

22 order improperly conflated two separate portions, one denying Rockstar’s motion to dismiss
23 (Docket No. 58 at 7-23), and another denying Rockstar’s motion to transfer. (Id. at 23-28.) As the
24 Court explained in its Order, under Rule 12(b)(2) and cases applying it, when a “court decides the
25 personal jurisdiction question based on affidavits and other written materials, and without an
26 evidentiary hearing, a plaintiff need only make a prima facie showing that a defendant is subject to
27 personal jurisdiction.” (Docket No. 58 at 5:18-21 (citing Nuance Commc’ns, Inc. v. Abbyy
28 Software House, 626 F.3d 1222, 1231 (Fed. Cir. 2010).) But Rockstar’s summary alleged that this
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CASE NO. 13-cv-5933-CW
-2GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 Court also applied the same standard to the second portion of its opinion denying Rockstar’s
2 motion to transfer. That portion of this Court’s ruling, however, does not depend on any
3 assumption of correctness of any portion of Google’s complaint. (Docket No. 58 at 23-28.) To
4 the contrary, the Court’s denial of Rockstar’s motion to transfer depends on the parties’ submitted
5 declarations and documentary evidence—precisely the type of evidence Rockstar and the
6 Halloween defendants have submitted to the Eastern District. (See, e.g., Docket No. 58 at 25:227 26 (citing declaration submitted by Google).) Where this Court relied on the allegations in
8 Google’s complaint, it carefully so stated—and never did so during the Court’s ruling on
9 Rockstar’s motion to transfer, because that standard did not apply. (See, e.g., Docket No. 58 at
10 10:15-17; 17:9-12; 19:17 to 20:1.)
11

In addition to misrepresenting the standards applied by this Court, Rockstar also distorted

12 its own motion, stating that this Court’s order “was decided in the context of a motion to dismiss
13 or transfer venue under 28 U.S.C. § 1391.” Rockstar v. Samsung, No. 13-900 (E.D. Tex.), Docket
14 No 67 at 1; see also Rockstar v. ASUS, No. 13-894 (E.D. Tex. May 5, 2014), Docket No. 93 at 1;
15 Rockstar v. HTC, No. 13-895 (E.D. Tex. May 5, 2014), Docket No. 38 at 1; Rockstar v. LG, No.
16 13-898 (E.D. Tex. May 5, 2014), Docket No. 42 at 1; Rockstar v. Pantech, No. 13-899 (E.D. Tex.
17 Apr. 25, 2014), Docket No. 28 at 15; id., Docket No. 31 at 1-2; Rockstar v. ZTE, No. 13-901 (E.D.
18 Tex. May 5, 2014), Docket No. 48, at 1. Rockstar thus admitted that it previously moved this
19 Court to transfer this action, but contended that it did so only “under 28 U.S.C. § 1391,” and not
20 under 28 U.S.C. § 1404. (Id.) Unfortunately for Rockstar, there is no such thing as a motion to
21 transfer venue under 28 U.S.C. § 1391. Section 1391 concerns “venue generally,” simply states
22 where an action may be brought, and says absolutely nothing about transfer. Id. Rockstar has
23 never explained what it means by “a motion to dismiss or transfer venue under 28 U.S.C. § 1391,”
24 likely because it cannot do so.
25

D.

26

On May 9, Rockstar filed its renewed motion to transfer this action, this time adding a

Rockstar Files Its Renewed Motion to Transfer This Action, or Stay It

27 brief section also requesting a stay. (Docket No. 67; the “Motion.”) With this renewed motion,
28 Rockstar submitted declarations including one from Donald Powers, Litigation Counsel for
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CASE NO. 13-cv-5933-CW
-3GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 Rockstar Consortium US LP. Mr. Powers swore under penalty of perjury that “Rockstar’s Plano,
2 Texas, office is the only office for the company, although some employees work out of their
3 homes in addition to working from offices in the Plano, Texas, facilities.” (Docket No 67-43
4 ¶ 26.) Mr. Powers thus directly contradicted his superior, Mr. Dean, who four months before had
5 sworn that “I reside and work from Rockstar’s Ottawa, Canada location.” (Docket No. 19-6 ¶ 28.)
6

ARGUMENT
“For the convenience of the parties and witnesses, in the interest of justice, a district court

7

8 may transfer any civil action to any other district or division where it might have been brought.”
9 28 U.S.C. § 1404(a). “A district court has broad discretion to adjudicate motions for transfer on a
10 case-by-case basis, considering factors of convenience and fairness.” Wellens v. Daiichi Sankyo
11 Co., Inc., No. 13-00581, 2013 WL 3242294, at *1 (N.D. Cal. June 25, 2013) (citing Stewart Org.
12 Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988)). In exercising its discretion under the statute, this
13 Court may consider factors including “(1) the plaintiff’s choice of forum; (2) convenience of the
14 parties; (3) convenience of the witnesses; (4) relative ease of access to the evidence; (5) familiarity
15 of each forum with the applicable law; (6) feasibility of consolidation with other claims; (7) any
16 local interest in the controversy; and (8) the relative court congestion and time to trial in each
17 forum.” Wellens, 2013 WL 3242294, at *1 (citing Saleh v. Titan Corp., 361 F. Supp. 2d 1152,
18 1156 (N.D. Cal. 2005)).1 “Weighing of the factors for and against transfer involves subtle
19 considerations and is best left to the discretion of the trial judge.” Ventress v. Japan Airlines, 486
20 F.3d 1111, 1118 (9th Cir. 2007).
“As a general rule, the plaintiff’s choice of forum is given significant weight and will not

21

22 be disturbed unless other factors weigh substantially in favor of transfer.” Wellens, 2013 WL
23 3242294 at *2 (citing 28 U.S.C. § 1404(a)). Thus the party seeking transfer “bears the burden of
24 justifying the transfer by a strong showing of inconvenience.” Wellens, 2013 WL 3242294 at *2
25
1

“[B]ecause a motion to transfer does not involve substantive issues of patent law, this court
applies the law of the regional circuit in which the district court sits.” LML Holdings, Inc. v. Pac.
27 Coast Distrib. Inc., No. 11-cv-06173, 2012 WL 2994017, at *2 n.3 (N.D. Cal. July 20, 2012)
(citing In re TS Tech United States Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008)).
28
26

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CASE NO. 13-cv-5933-CW
-4GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 (citing Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986)); see
2 also Kina v. United Air Lines, Inc., No. 08-4358, 2008 WL 5071045, at *5 (N.D. Cal. Dec. 1,
3 2008) (“The burden is on the party seeking transfer to show that when these factors are applied,
4 the balance of convenience clearly favors transfer.”). This Court may deny the motion “if the
5 increased convenience to one party is offset by the added inconvenience to the other party.”
6 Wellens, 2013 WL 3242294 at *2 (citing Decker Coal, 805 F.2d at 843). Indeed, “[w]here the
7 defendant attempts to shift the inconvenience—and disproportionately so—onto plaintiff, transfer
8 must be denied.” Wellens, 2013 WL 3242294, at *3 (citing Decker Coal, 805 F.2d at 843).
9 I.
10

Rockstar’s Renewed Motion to Transfer Violates Local Rule 7-9
Rockstar’s Motion improperly seeks reconsideration and violates Local Rule 7-9; the Court

11 can deny it for this reason alone. Rule 7-9 allows Rockstar to seek “leave to file a motion for
12 reconsideration of any interlocutory order,” but bars it from filing a “motion for reconsideration
13 without first obtaining leave of Court to file the motion.” Loc. R. 7-9(a). Rockstar’s Motion
14 stands in clear violation of this Rule: this Court specifically and separately denied Rockstar’s
15 motion to dismiss (Docket No. 58 at 7-23) and Rockstar’s prior motion to transfer this action. (Id.
16 at 23-28.) Google informed Rockstar several times that this “Court has already resolved this
17 issue,” and that any renewed motion to transfer “would violate, among other things, Local Rule 718 9(a).” (Docket No. 65 at 5:12-13 (citing Docket No. 58 at 23-28).) Despite these warnings,
19 Rockstar forged ahead with its renewed motion to transfer and, in that motion, barely addressed
20 Local Rule 7-9, dismissing it in a footnote. (Motion at 1 n.1.) In that footnote, Rockstar states
21 that “Defendants have not previously moved to transfer under § 1404(a) or based on forum non22 conveniens, nor have Defendants asked for a stay. As such, Defendants do not believe, and do not
23 intend for this to be, a motion for reconsideration pursuant to L.R. 7-9.” (Id.) Rockstar’s
24 argument is self-executing: because Rockstar itself does not “believe” its motion violates Local
25 Rule 7-9 and does not “intend” to violate the rule, Rockstar argues, its motion cannot violate the
26 Rule. But if Rockstar’s own opinion of its prior motion were sufficient to avoid Rule 7-9, then the
27 rule would have no meaning. The Court, not Rockstar, must determine whether Rockstar’s
28 renewed motion to transfer improperly overlaps with its prior motion, and thus violates Local Rule
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CASE NO. 13-cv-5933-CW
-5GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 7-9. See Man Against Extinction v. Hall, No. 08-01488, 2008 WL 4534279, at *1 (N.D. Cal. Oct.
2 7, 2008) (construing “an ill-disguised opposition to defendants’ original motion to dismiss, which
3 is untimely” as a motion for reconsideration filed in violation of Local Rule 7-9); King v. B.F.
4 Saul Mortg. Co., No. 10-1749, 2010 U.S. Dist. LEXIS 99022, at *2 (S.D. Cal. Sept. 21, 2010)
5 (where the Court had granted a motion to dismiss, construing a motion for extension of time to
6 oppose dismissal as an improper motion for reconsideration).
7

Rockstar’s renewed motion to transfer says nothing about what Rockstar actually meant, in

8 its prior motion, when it moved this Court to “transfer Google’s claims to the Eastern District of
9 Texas.” (Docket No. 19-4 at 24:7-9; see also supra § A.) Rockstar offers slightly more
10 explanation in the parties’ Joint Case Management Statement, stating that its prior “motion only
11 raised venue under 28 U.S.C. § 1391.” (Docket No. 65 at 2 n.1 (citing Docket No. 20 at 3, 16);
12 see also Docket No. 65 at 4:1-3.) Unfortunately for Rockstar, this explanation makes no sense.
13 As this Court found in denying Rockstar’s prior motion, “Venue in a patent action against a
14 corporate defendant exists wherever there is personal jurisdiction.” (Docket No. 58 at 20 n.9
15 (quoting Trintec Indus., Inc. v. Pedre Promotional Prods., Inc., 395 F.3d 1275, 1280 (Fed. Cir.
16 2005).) Thus, if venue failed under 28 U.S.C. § 1391 (which the Court found it did not), then
17 jurisdiction would necessarily also fail, reducing the available remedies to dismissal. See, e.g.,
18 Protrade Sports, Inc. v. Nextrade Holdings, Inc., No. 05-4039, 2006 WL 269951, at *4 (N.D. Cal.
19 Feb. 2, 2006) (“Accordingly, the Court cannot exercise personal jurisdiction over defendant and
20 must dismiss this action.”); Oakley, Inc. v. Jofa AB, 287 F. Supp. 2d 1111, 1113 (C.D. Cal. 2003),
21 (“Pursuant to Federal Rule of Civil Procedure 12(b)(2), a court must dismiss a case for ‘lack of
22 jurisdiction over the person.’”). Nor can Rockstar’s nonsensical, post-hoc explanation of its prior
23 motion explain why it not only discussed the §1404(a) convenience factors in its prior motion, but
24 also specifically sought transfer of this action while doing so. (See, e.g., Docket No. 19-4 at
25 23:13-16 (“interest of judicial efficiency, then, dictates that Google’s Action is properly heard in
26 the Eastern District of Texas”); 23:23-24 (“this factor favors dismissing or transferring Google’s
27 Action”); 24:1-2 (“this factor weighs in favor of the Texas Actions”).)
28
01980.00011/5938111.10

In short, Rockstar previously moved to transfer this action to the Eastern District of Texas;
CASE NO. 13-cv-5933-CW
-6GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 this Court reviewed its motion and denied it; but Rockstar now returns with a renewed motion to
2 transfer this action—and offers no justification for its attempted do-over other than its own,
3 unsupported assertion that its motion is not an attempted do-over. Under these circumstances, the
4 Court could easily deny Rockstar’s renewed motion simply for failing to follow the strictures of
5 Local Rule 7-9. In light of Rockstar’s statements to the Eastern District, however, that this
6 Court’s prior Order “rests on an incomplete view of the facts” and that the Eastern District “unlike
7 the NDCA . . . has the benefit of weighing the evidence and facts before it” (supra at 2), the Court
8 should also consider the merits of Rockstar’s motion. Rockstar’s representations to the Eastern
9 District can have only one purpose: to encourage that Court to deny the Halloween defendants’
10 pending motions to transfer to this Court, thus leaving the parties and the courts with related
11 actions actively pending in two Districts. As the Court recognized at oral argument and in its
12 order denying Rockstar’s original motion, such competing “clusters” of cases are far from ideal.
13 (Docket No. 47 at 6:22 to 7:1; Docket No. 58 at 26:12-18.) In denying Rockstar’s renewed
14 motion to transfer, the Court should enter as firm and complete an order as possible, so that
15 Rockstar cannot further mischaracterize its ruling to the Eastern District.

17

As This Court Found in Denying Rockstar’s Prior Motion to Transfer, Rockstar’s
Headquarters is in Canada, Not Texas; Rockstar Has No Meaningful Connection to
Texas, and Brought the Halloween Actions There Solely for Strategic Purposes

18

A.

19

As this Court has already found, Rockstar’s one-day-before-filing creation of MobileStar

16 II.

MobileStar Technologies LLC is a Sham Entity Which the Court Must Ignore

20 Technologies LLC was a sham. (Docket No. 58 at 7:19-10:21.) Rockstar seeks to relitigate this
21 issue as well, but inevitably fails. Opposing Rockstar’s first motion to transfer venue, Google
22 showed that, although Rockstar argued that “MobileStar’s Texas roots are long-standing and
23 substantial” and it had its “principal place of business” in Texas, in fact, Rockstar formed
24 MobileStar the day before Rockstar filed the Halloween Actions and used it solely to argue that
25 this Court could not have jurisdiction over this action, because freshly-minted MobileStar had
26 never left Texas and, in “the absence of jurisdiction as to MobileStar, this action must be
27 dismissed.” (Docket No. 30-4 at 6:18-24; Docket No. 19-4 at 1:22-26; see id. at 6-9.) This Court
28 agreed with Google, finding that “the circumstances here strongly suggest that Rockstar formed
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-7GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 MobileStar as a sham entity for the sole purpose of avoiding jurisdiction in all other fora except
2 MobileStar’s state of incorporation (Delaware) and claimed principal place of business (Texas).”
3 (Docket No. 58 at 9:12-15; see id. at 9:12 to 10:21 & n.3.)
4

The Court’s ruling should have resolved this issue. Rockstar, however, returns in its

5 renewed motion to transfer, and again argues that MobileStar has “deep ties to the EDTX,” is
6 “resident in the EDTX,” and that the Court should transfer this action for those reasons. (See, e.g.,
7 Motion at 2:6-8, 4:14-20 & n.4, 5:8-15, 5 n.4, 7:19 to 8:1.) Rockstar’s arguments have not gained
8 through repetition: although Rockstar now tries to articulate a non-sham reason for MobileStar’s
9 existence, its attempts only confirm the correctness of this Court’s prior ruling. Rockstar first
10 argues that it “assigned certain patents corresponding to different market segments and technology
11 areas to those newly-created subsidiaries” such as MobileStar, and that “MobileStar focuses on
12 licensing patents related to mobile device technology.” (Motion at 4:13-15.) That may be so, but
13 it does not make MobileStar less of “a sham entity.” (Docket No. 58 at 9:12-15.) To the contrary,
14 nothing stopped Rockstar from “licensing patents related to mobile device technology” without
15 transferring them to a paper subsidiary, and nothing required Rockstar to argue that its subsidiary
16 barred jurisdiction beyond Delaware and Texas—as Rockstar did to this Court and to the Eastern
17 District. (See, e.g., Docket No. 19-4 at 1:22-26; id. at 6-9; Rockstar v. Samsung, No. 13-900 (E.D.
18 Tex. April 14, 2014), Docket No. 61 at 6.) Transferring patents to MobileStar cannot make it
19 legitimate, especially when Rockstar previously argued that the same transfer of patents supported
20 the same arguments that this Court found a sham.
21

Rockstar next argues, even less convincingly, that MobileStar could not be a sham because

22 it was too poorly executed to qualify as one:
23
24
25
26

Had Rockstar created MobileStar as a “sham” entity for the purpose of evading
personal jurisdiction or manipulating venue, Rockstar would have assigned all of
the patents-in-suit to MobileStar and would not have made itself a party to the
Texas Actions. That Rockstar and MobileStar are both resident in the EDTX,
Rockstar maintained ownership of certain of the patents-in-suit, and Rockstar made
itself a party to the Texas Actions belies any suggestion that MobileStar’s creation
constitutes some jurisdiction or venue-driven machination.

27 (Motion at 4-5 n.4.) But this ignores Rockstar’s own prior argument to this Court. Rockstar
28 argued, vociferously and at length, that Rockstar Consortium US LP’s presence as a plaintiff did
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-8GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 not matter at all, because “the suit cannot be maintained against MobileStar without personal
2 jurisdiction, and MobileStar is indispensable to the suit.” (Docket No. 39-3 at 2:20-22; see id. at
3 2-5; Docket No. 19-4 at 1:22-26; id. at 6-9.) Rockstar thus asked this Court to dismiss Google’s
4 allegations against Rockstar Consortium US LP because, it argued, they could not proceed without
5 the allegations against MobileStar. (Docket No. 19-4 at 1:22-26; id. at 6-9.; Docket No. 39-3 at
6 2:20-22.) Having specifically argued that MobileStar’s presence in this action exempted Rockstar
7 Consortium US LP from this Court’s jurisdiction, Rockstar cannot now argue the flip side, that
8 Rockstar Consortium US LP’s presence in this action exempts MobileStar from being a sham
9 entity. The Court recognized as much, specifically finding that MobileStar was a “sham entity”
10 designed to protect the rest of Rockstar, a finding Rockstar conveniently ignores. (Docket No. 58
11 at 9:12 to 10:21.) Rockstar has submitted nothing to contradict this Court’s finding that “Rockstar
12 formed MobileStar as a sham entity for the sole purpose of avoiding jurisdiction,” and the same
13 rationales apply to questions of venue too. In resolving Rockstar’s renewed motion to transfer
14 venue, therefore, the Court can and should exclude MobileStar from its analysis.
Rockstar’s Principal Place of Business is in Ottawa, Canada

15

B.

16

Rockstar seeks to relitigate another issue as well: the location of its principal place of

17 business and, hence, the location of witnesses and documents. Opposing Rockstar’s first motion
18 to transfer venue, Google established that the substantial majority of Rockstar’s employees work
19 at what Mr. Dean averred was “Rockstar’s location” in Ottawa, Canada. (Docket No. 30-4 at
20 3:12-15; Docket No. 31 Ex. 19.) Rockstar argued that it instead ran its business out of Plano,
21 Texas, but again the Court agreed with Google:
22
23
24

Rockstar’s website and the declaration of Afzal Dean, Rockstar Vice President and
President of MobileStar, identifies officers and board members who represent both
Defendants and who are almost all based in Canada, except one in Colorado.
Rockstar’s “nerve center,” or the place where its “officers direct, control, and
coordinate the corporation’s activities,” thus appears to be in Ottawa, Canada.

25 (Docket No. 58 at 3 n.1.) Since opposing Rockstar’s first motion to transfer, Google has learned
26 additional facts confirming Rockstar’s “nerve center” in Canada. For example, MobileStar did not
27 even register as a foreign corporation with the Texas Secretary of State, as required by Texas law,
28 until more than a month after filing the Halloween Actions. Rockstar v. Samsung, No. 13-900
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-9GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 (E.D. Tex.), Docket No. 26 at 3-4. Indeed, Rockstar does not even allege that MobileStar took
2 any actions in Texas whatsoever before filing the Halloween Actions. (Docket Nos. 20, 39, 67.)
3 Most tellingly, through a public-records request, Google obtained the document effecting transfer
4 of five patents-in-suit from Rockstar Consortium US LP to MobileStar. (Madigan Decl. Ex. 1.)
5 Although Rockstar still insists that transferor (Rockstar Consortium US LP) and transferee
6 (MobileStar) “reside in Texas” and “run their business from the EDTX” (Docket No. 20 at 3:4-5;
7 Motion at 21:14-15), this critical transaction, which Rockstar alleged made MobileStar
8 indispensable to this action, was executed in Canada by two members of Rockstar’s senior
9 management, both Canadians, and was duly witnessed and notarized by Rockstar’s Canadian
10 corporate counsel. (Madigan Decl. Ex. 1.)
11

Again, the Court’s finding that Rockstar’s “nerve center” is in Ottawa, Canada, should

12 have resolved this issue; again, Rockstar’s renewed motion seeks to reopen what the Court has
13 already resolved. Instead of abandoning its argument for a “principal place of business” in Texas,
14 Rockstar now doubles down, asserting that its “only office is located in Plano, Texas.” (Motion at
15 16:12; Powers Decl. ¶ 23.) Rockstar’s supporting declarations reveal how it hopes to square this
16 impossible circle: by contending that the Canadian office is irrelevant to this action because it is
17 operated by Rockstar Consortium Inc., which Rockstar has described as a “different (although
18 affiliated) entity from Rockstar Consortium US LP.” (Docket No. 57-4 at 2-3.) As Rockstar
19 acknowledges, “Rockstar Consortium Inc. employs 21 employees in Canada – 19 in its office in
20 Ottawa and two in Toronto.” (Id. ¶ 32.) Rockstar does not provide specifics, but it appears that all
21 of Rockstar’s self-identified “senior management” are employees of Rockstar Consortium Inc.
22 (Docket No. 30-4 at 16:13-24.) There is no evidence that anyone at Rockstar previously cared
23 about, or even knew of, the distinction between Rockstar and its subsidiary or sister company,
24 Rockstar Consortium Inc.; to the contrary, Rockstar’s “VP of IP Licensing for Rockstar
25 Consortium,” Afzal Dean, swore under oath: “I reside and work from Rockstar’s Ottawa, Canada
26 location.” (Dean Decl. ¶ 28.) More importantly, it does not matter if another company also pays
27 for Rockstar’s senior management; what matters is the “nerve center” from which executives
28 exercise control, and nothing in Rockstar’s renewed motion disturbs or even challenges the
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-10GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 Court’s finding that this “nerve center” for Rockstar itself is in Ottawa, Canada.
2

C.

3

Rockstar spills substantial ink to make a simple argument: because it would be more

Proceeding With This Action Will Prevent Duplicative Litigation

4 efficient for one Court to supervise both this action and the Halloween actions, this Court should
5 transfer this action to join the Halloween actions in Texas. (Motion at 9-15.) There is nothing
6 controversial about Rockstar’s first point, as the Court itself acknowledged during oral argument
7 on Rockstar’s prior motion. (Docket No. 47 at 6:22 to 7:1; 9:17-24.) But Rockstar’s second point
8 does not follow from its first: the cases would better be supervised together, but that does not
9 mean they must be supervised together in Texas. The Halloween defendants have all moved to
10 transfer their actions to this Court, as this Court has already noted in denying Rockstar’s prior
11 motion to transfer. (Docket No. 58 at 26 n.11.) Rockstar’s renewed transfer motion entirely
12 ignores this critical fact, and instead proceeds from the unstated assumption that the Halloween
13 actions will proceed in Texas, not here. (Motion at 9-15.) Rockstar can make this assumption, but
14 the Court cannot; to the contrary, as this Court already found in resolving Rockstar’s first motion
15 to transfer, “[t]he court of the actual first-filed case should rule on motions to dismiss or transfer
16 based on exceptions to the first-to-file rule or on the convenience factors.” (Docket No. 58 at
17 23:12-14 (citing Micron Technology, Inc. v. Mosaid Technologies, Inc., 518 F.3d 897, 904 (Fed.
18 Cir. 2008).) This Court further found that this action was “the actual first-filed case,” and in any
19 event “takes precedence” over the Halloween actions under “the customer-suit exception to the
20 first-to-file rule.” (Docket No. 58 at 23:6 to 24:26.) Rockstar does not contest these rulings.
21

Once it decided this action was the first-filed one, as required by Micron, this Court then

22 analyzed the convenience factors and correctly concluded it should not transfer the case. (Docket
23 No. 58 at 24:27 to 28:12.) To the extent the Court considers the merits of Rockstar’s renewed
24 motion to transfer, it must undertake the analysis of these factors again—it cannot, as Rockstar
25 repeatedly urges in its renewed motion, simply transfer this action to Texas because there are other
26 actions there. Micron, 518 F.3d at 904. Rockstar’s proposed rule would lead to nonsensical
27 results: whenever parties in two actions moved to transfer each action to join the other, the court
28 that ruled first would always transfer its action to the other forum. Luckily the law does not allow
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-11GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 such a silly system, but rather requires the “court of the actual first-filed case”—here, this Court—
2 to apply the convenience factors and determine the proper forum. (Docket No. 58 at 23; Micron,
3 518 F.3d at 904.) Rockstar itself agrees: in its first motion to transfer, Rockstar argued that
4 “Micron makes application of the factors mandatory” in a “first-filed action analyzed by the court
5 presiding over the first-filed action.” (Docket No. 20 at 22 n.6.) At that time, of course, Rockstar
6 still argued that the Halloween actions were first-filed and this action was not. (Id. at 20:10 to
7 22:3.) Now that the Court has rejected that argument, however, Rockstar has changed its tune, and
8 removed any mention of Micron from its renewed motion. Still, Rockstar’s original position was
9 correct: under Micron, this Court cannot abdicate its responsibility to consider the convenience
10 factors simply by noting that other actions are pending in another court. Nor can Rockstar require
11 transfer of this action simply by asserting the same.
12 III.
13

Because Each of the Transfer Factors Favors This District or is Neutral, to the Extent
the Court Reconsiders Its Original Order Denying Rockstar’s Motion to Transfer
This Action, It Should Again Deny Rockstar’s Renewed Motion to Transfer

14

Although this Court has substantial discretion to evaluate the relevant factors as applied to

15 the specific facts of this action (see supra at 4), in this action this exercise of discretion should be
16 relatively easy: each of the eight factors favors this Court over the Eastern District, or is neutral.
Plaintiff’s Choice of Forum Favors This District

17

A.

18

“[P]laintiff’s choice of forum should rarely be disturbed.” Gulf Oil Corp. v. Gilbert, 330

19 U.S. 501, 508 (1947); Sec. Investor Protection Corp., 764 F.2d at 1317. Indeed, the Ninth Circuit
20 has repeatedly expressed its preference for the plaintiff’s choice of forum. E.g., Tuazon v. R.J.
21 Reynolds Tobacco Co., 433 F.3d 1163, 1177 (9th Cir. 2006) (“the plaintiff’s choice of forum is
22 entitled to deference”); Altmann v. Republic of Austria, 317 F.3d 954, 973 (9th Cir. 2002)
23 (plaintiff’s “choice of forum should not be disturbed unless, when weighing the convenience of
24 the parties and the interests of justice, the balance is strongly in favor of the defendant.”); Decker
25 Coal, 805 F.2d at 843 (“The defendant must make a strong showing of inconvenience to warrant
26 upsetting the plaintiff’s choice of forum.”).
27

This Court is Google’s home forum. (Docket No. 1 ¶ 2; Docket No. 61 ¶ 2.) Since

28 Google’s founding, it has maintained its headquarters in this District. (Docket No. 30-5 ¶ 4.)
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-12GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 Rockstar admits that Google’s principal place of business is in this District. (Docket No. 1 ¶ 2;
2 Docket No. 61 ¶ 2.) Under the law, “the plaintiff’s choice of forum should rarely be disturbed.”
3 Natural Wellness Centers of Am., Inc. v. J.R. Andorin Inc., No. 11-04642, 2012 WL 216578, at
4 *10 (N.D. Cal. Jan. 24, 2012). “This is especially true when a plaintiff chooses to sue in its ‘home
5 turf,’” as Google did here. Id. (citations omitted.) This factor counsels strongly against transfer.
6

Seeking to avoid this rule, Rockstar argues that because Google brought claims in the court

7 nearest its headquarters—this Court—it somehow engaged in nefarious forum shopping. (Motion
8 at 15:14 to 16:9.) Rockstar cannot challenge Google’s presence in this District, and does not try to
9 do so. Instead, Rockstar argues that Google is forum shopping because it failed to sue Rockstar in
10 Rockstar’s preferred forum. (Id.) But if Rockstar wanted to include Google as a defendant in the
11 Halloween actions, it could have included Google as a defendant in those actions when it filed
12 them. Rockstar did not do so, of course, choosing instead a “litigation strategy of suing Google’s
13 customers in the Halloween actions.” (Docket No. 58 at 19:4-6.) As this Court has recognized, it
14 was entirely appropriate for Google to respond to this “‘scare the customer and run’ tactic,” which
15 “infects the competitive environment of the business community with uncertainty and insecurity,”
16 with a declaratory judgment action of its own, filed in its own home forum. (Id. at 19:11-12; 22:417 6 (quoting Electronics for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1346 (Fed. Cir. 2005); see also
18 Docket No. 58 at 20:8 to 23:4.) Rockstar thus failed to present any cognizable argument against
19 Google’s choice of forum, counting this factor firmly against transfer.2
20
21
22
23
24
25
26
27
28
01980.00011/5938111.10

2

Rockstar also asserts that Google “invited Rockstar to a meeting in California,” and then
“six days later Google filed this case—using that meeting as a basis for venue and jurisdiction.”
(Motion at 15:23 to 16:2.) This is incorrect: the only party that has referenced Rockstar’s meeting
with Google is Rockstar. Rockstar’s motion cites only Rockstar’s own declaration (Motion at
15:22 to 16:2 (citing Docket No. 19-6 ¶¶ 12-13)), and the only other document discussing this
meeting is Rockstar’s initial motion to transfer, which did so at some length. (Docket No. 20 at 68, 10, 19.) Google never mentioned this meeting, which was covered by a non-disclosure
agreement, in its pleadings. Indeed, even though Rockstar discussed the meeting in its motion
papers, Google explicitly declined to rely on this meeting in its opposition. (Docket No. 30-4 at
17 n.9.) But because Rockstar put this meeting at issue, the Court could of course rely on it, along
with many other things, in denying Rockstar’s prior motion to dismiss or transfer. (Docket No. 58
at 14:8-9.) Rockstar may rue this result, but it has no one but itself to blame.

CASE NO. 13-cv-5933-CW
-13GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1

B.

2

The convenience of parties and witnesses firmly favors this District. This Court has

Convenience of Parties and Witnesses Favors This District

3 already addressed this factor in resolving Rockstar’s prior motion to transfer:
4
5
6

This factor favors California because Google’s Android products, the target of this
infringement action, were designed and created here. Many of the witnesses who
can testify to the design and development of the accused Android platform’s
features reside near Google’s headquarters in Mountain View, California. Other
witnesses, such as the inventors of the patents-in-suit, are likely to be in Canada.

7 (Docket No. 58 at 25:15-27.) As the Court ruled, the majority of witnesses likely to be called at
8 trial reside in the Northern District. (Madigan Decl. Ex. 2 ¶¶ 3-9.) Most employees involved in
9 the design and development of the accused features work at Google’s headquarters in Mountain
10 View. (Id. ¶ 6.) If this case were transferred to the Eastern District, these witnesses “would be
11 forced to travel more than 1,500 miles to attend trial.” Ingeniador, LLC v. Adobe Sys. Inc., No.
12 12-00805, 2014 WL 105106, at *3 (E.D. Tex. Jan. 10, 2014) (transferring to this Court where
13 “most witnesses will likely come from California”). “Where the defendant attempts to shift the
14 inconvenience—and disproportionately so—onto plaintiff, transfer must be denied.” Wellens,
15 2013 WL 3242294, at *3 (N.D. Cal. June 25, 2013) (citing Decker Coal, 805 F.2d at 843.)
16

Defendants submit cookie-cutter declarations stating—without any support or elaboration

17 whatsoever—that the Eastern District of Texas is more convenient than the Northern District of
18 California. (See Docket No. 67-38 ¶ 6 (“It would be more convenient for me to attend trial in the
19 Eastern District of Texas than to attend trial in the Northern District of California.”); Docket Nos.
20 67-42 ¶ 6 (same); 67-44 ¶ 6 (same); 67-46 ¶ 5 (same).) Such conclusory, self-serving declarations
21 receive no weight. See, e.g., Forte Capital Partners v. Harris Cramer, No. 07-1237, 2007 WL
22 1430052, at *2 (N.D. Cal. May 14, 2007) (“In order to meet its burden, the moving party must
23 present affidavits or declarations to establish the facts supporting transfer.” For a motion to
24 transfer, “[c]onclusory declarations are not sufficient.” Furthermore, “a party seeking transfer
25 cannot rely on vague generalizations as to the convenience factors.”); cf. FTC v. Publishing
26 Clearing House, Inc., 104 F.3d 1168, 1171 (9th Cir. 1997) (“A conclusory, self-serving affidavit,
27 lacking detailed facts and any supporting evidence, is insufficient to create a genuine issue of
28 material fact.”).
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-14GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

Setting aside Rockstar’s self-serving declarations, travel from Rockstar’s headquarters in

1

2 Ottawa is equally convenient to this Court and the Eastern District. The flights from Ottawa to
3 Dallas-Fort Worth or Shreveport are shorter than or equivalent to flights to the Bay Area, but
4 require lengthy drives to Marshall, Texas. (Madigan Decl. ¶¶ 3-8; Microsoft Corp. v. Geotag Inc.,
5 847 F. Supp. 2d 675, 678 (D. Del. 2012) (noting that “Marshall is three hours from a major
6 airport”).) As a result it would take the same time, and cost the same amount, for Rockstar’s
7 witnesses to travel to trial in either forum.3 Google’s witnesses, in contrast, can travel easily to
8 this Court from Google’s headquarters in Mountain View, but must travel “more than 1,500
9 miles” to the Eastern District. Ingeniador, 2014 WL 105106, at *3.4
10

C.

11

“The convenience of witnesses includes ‘a separate but related concern, the availability of

Availability of Compulsory Process Favors This District

12 compulsory process to bring unwilling witnesses live before the jury.’” Wellens, 2013 WL
13 3242294 at *4 (quoting Brackett v. Hilton Hotels Corp., 619 F. Supp. 2d 810, 821 (N.D. Cal. June
14 30, 2008)). The Eastern District agrees that “the focus of this factor is on witnesses for whom
15 compulsory process might be necessary.” Ingeniador, 2014 WL 105106, at *2. But in this area,
16
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23
24
25
26
27
28
01980.00011/5938111.10

3

As of June 26, 2014, the day of the hearing on this motion, the fastest flight from Ottawa to
San Francisco would take 7 hours and 30 minutes of travel time, and cost $455. (Madigan Decl.
Ex. 3.) The drive from San Francisco International Airport to the United States Courthouse in
Oakland, California would take approximately 29 minutes. (Id. Ex. 4.) The fastest flight from
Ottawa to Dallas/Fort Worth would take 5 hours and 4 minutes of travel time and cost $485. (Id.
Ex. 5.) The drive from Dallas/Fort Worth to the United States Courthouse in Marshall, Texas
would take approximately 2 hours and 38 minutes. (Id. Ex. 6.) The fastest flight from Ottawa to
Shreveport Regional Airport is would take 7 hours and 6 minutes of travel time and cost $805.
(Id. Ex. 7.) The drive from Shreveport to the United States Courthouse in Marshall, Texas would
take approximately 35 minutes. (Id. Ex. 8.) In total, travel from Ottawa to this court would take 7
hours and 59 minutes and cost $455 plus a taxi fee; travel from Ottawa to Marshall via Dallas
would take 7 hours and 42 minutes and cost $485 plus car rental or transport to Marshall; and
travel from Ottawa to Marshall via Shreveport would take 7 hours and 41 minutes and cost $805
plus a taxi fee or car rental. Travel from Ottawa to this District is thus equally or more convenient
than travel from Ottawa to the Eastern District.
4
Rockstar briefly mentions that “Jeff Hamilton, a software engineer on Google’s Android
team who specializes in ‘[o]perating systems development for mobile devices,’ lives in Austin,
Texas.” (Motion at 6:7-9.) But Rockstar does not include Mr. Hamilton in its disclosures under
Fed. R. Civ. P. 26(a)(1), confirming his irrelevance. (Madigan Decl. Ex. 9.)

CASE NO. 13-cv-5933-CW
-15GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 too, the facts strongly favor this District over Texas. Both this Court and the Eastern District can
2 issue nationwide deposition subpoenas under Fed. R. Civ. P. 45(b)(2), but each Court has different
3 powers to require attendance at trial. This Court can compel only non-party witnesses residing
4 within California, and the Eastern District only from within Texas. Fed. R. Civ. P. 45(c)(1)(B)(ii).
5 In at least three subject-matter areas, the relevant witnesses are here. First, witnesses with
6 knowledge of the Android platform, including former employees of Google and Android Inc.,
7 remain heavily concentrated in the Northern District. At least one named inventor resides in the
8 Northern District (Madigan Decl. Ex. 10), as do dozens of relevant prior artists of record.5
9

Finally and most critically, the Northern District is home to important, but very likely

10 unwilling, trial witnesses: employees of Apple. As this Court has already found in denying
11 Rockstar’s first motion to transfer, Apple will play a significant role in this action:
Google demonstrates a direct link between Apple’s unique business interests,
separate and apart from mere profitmaking, and Defendants’ actions against Google
and its customers. Google and Apple’s rivalry in the smartphone industry is welldocumented. Apple’s founder stated that he viewed Android as a “rip off” of
iPhone features and intended to “destroy” Android by launching a “thermonuclear
war.” Defendants’ litigation strategy of suing Google’s customers in the

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01980.00011/5938111.10

5

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 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. (Madigan Decl. Ex. 11 ¶ 3.)

CASE NO. 13-cv-5933-CW
-16GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1
2
3

Halloween actions is consistent with Apple’s particular business interests. In suing
the Halloween action defendants, Defendants here limited their infringement claims
to Android-operating devices only, even where they asserted a hardware-based
patent. This “scare the customer and run” tactic advances Apple’s interest in
interfering with Google’s Android business.

4 (Docket No. 58 at 18:22 to 19:14 (citations and footnotes omitted).) This finding explains why
5 witnesses from Apple will likely testify at trial—but will not do so willingly. They will only
6 testify at trial if the action is heard in this District, where Apple is headquartered.
7

Although Rockstar unsurprisingly tries to minimize the importance of its ally and owner,

8 Apple, it cannot succeed. Rockstar first argues that “[a]ny focus on Apple as a non-party witness
9 is inapposite because the parties do not dispute the amounts of the bids placed for the Nortel patent
10 portfolio.” (Motion at 17:18-19.) But Rockstar’s Answer and Counterclaims puts at issue in this
11 action—in fact, at the forefront—the not the mere amounts of the bids, but the valuation they
12 represent. (Docket No. 61 ¶¶ 4-9.) Rockstar alleges that Google “ultimately bid as high as $4.4
13 billion” for the portfolio, but lost to Apple and the other Rockstar owners. (Id. ¶ 4.) Rockstar will
14 surely argue to the jury that Google’s alleged bids indicate that Google recognized the intrinsic
15 value and importance of these patents, including the patents-in-suit. To counter this argument,
16 Google must be able to present to the jury evidence of other rationales for the valuation of the
17 auction portfolio—including “Apple’s particular business interests” and its intention to “destroy
18 Android by launching a thermonuclear war” of litigation using these patents. (Docket No. 58 at
19 19:1-7.) But the Eastern District of Texas cannot compel live testimony from Apple’s California
20 witnesses, although Rockstar would receive live testimony from Google’s California witnesses.
21 Google would suffer grave prejudice from the resulting asymmetry. This District can compel live
22 testimony from Apple, eliminating this asymmetry and prejudice. The Eastern District cannot.
23

Recognizing this, Rockstar argues in the alternative that, “to the extent that testimony from

24 Apple is relevant, testimony from the other Nortel bidders (such as Google) and other Rockstar
25 limited partners would be equally relevant.” (Motion at 18:1-3.) Not so. This Court has already
26 found a “direct link between Apple’s unique business interests” and Rockstar’s “actions against
27 Google and its customers”; other bidders or Rockstar owners cannot shed light on “Apple’s unique
28 business interests.” (Docket No. 58 at 18:23-25.) In addition, this Court has already found
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-17GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 “strong evidence that Apple is indeed the majority shareholder of Defendants based on Apple’s
2 majority investment in Rockstar’s predecessor entity, Rockstar Bidco.” (Id. at 17:9-13.) In
3 response, Rockstar submits only a red herring, stating that “each limited partner, including Apple,
4 owns a ‘minority’ stake” in Rockstar. (Motion at 17:16-18.) But Rockstar is, once again, tellingly
5 mum regarding Apple’s ownership of its general partner, Rockstar Consortium LLC. (See Motion
6 at 3:8-9). The general partner controls the limited partnership, Del. Code Ann. Tit. 6, § 17-403,
7 but Rockstar has said almost nothing about the general partner’s composition or ownership, even
8 though Google has previously raised this issue. (Docket No. 30-4 at 11:26 to 12:12.) Rockstar’s
9 silence does not come from a lack of information: Rockstar volunteered that, as of now, “Rockstar
10 Consortium LLC’s CEO is John Veschi” (Motion at 4 n.3), and further provided a list of the
11 general partner’s current officers. (Docket No 67-4.) Although it evidently and unsurprisingly has
12 access to its general partner’s records, Rockstar provided no evidence to rebut Google’s “strong
13 evidence” that Apple controls Rockstar through Rockstar Consortium LLC. (Docket No. 58 at
14 17:9-13.) To the contrary, every assertion Rockstar makes about Apple’s alleged lack of control
15 includes the same Texas-sized loophole: they address only Apple’s role as a limited partner, and
16 not its control over the general partner. (E.g., Docket No. 20 at 15:17-23; Motion at 7:13-18, 8:417 10, 17:14-18.) To explore Apple’s control of Rockstar and its use of Rockstar to advance
18 “Apple’s unique business interests,” Google must present to the jury live testimony from Apple
19 witnesses, which it can only do in this District. This factor weighs strongly against transfer.6
20
21
22

6

Rockstar also argues that Google’s assertions of likely Apple witnesses “lack the required
23 level of specificity” for inclusion in the venue analysis. (Motion at 18 n.22 (citing Natural
Wellness Ctrs. of Am., Inc. v. Golden Health Prods., 2013 U.S. Dist. LEXIS 8658, at *16 (N.D.
24 Cal. Jan. 22, 2013).) Natural Wellness found that defendants “fail to explain adequately how these
witnesses’ testimony is material to this dispute.” (Id. at *16.) But here, Google has already
25
shown, in opposing Rockstar’s prior motion to dismiss or transfer, why Apple is central to this
26 action and what testimony Apple witnesses will provide. (Docket No. 30-4 at 11:1-16.) This
Court has already accepted Google’s reasoning. (Docket No. 58 at 18:22 to 19:14.) Google has
27 further detailed likely testimony from Apple witnesses, see supra at II.D.2. It rings hollow for
Rockstar to now argue that Google’s allegations lack specificity.
28
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-18GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1

D.

2

This Court has already addressed this factor in resolving Rockstar’s prior motion to

Feasibility of Consolidation With Other Claims Favors This District

3 transfer, and found that it favored retaining this action in this District:
4
5
6

The Halloween actions might not and need not be transferred here. They might be
stayed in Texas and be reopened upon completion of this suit, which likely will
resolve some of the infringement issues there. If the Texas actions are transferred
here, they can be consolidated with this case at least for pretrial purposes.

7 (Docket No. 58 at 26:12-18.) Rockstar simply ignores the Court’s prior ruling, arguing instead
8 that it would, hypothetically, be feasible to consolidate this action with the Halloween action
9 against Samsung, to which Rockstar belatedly added Google. (Motion at 19:22 to 20:10.) This
10 argument is both legally and factually insufficient. Legally, Rockstar says nothing to explain why
11 the Court’s prior ruling was incorrect, or why cases should be consolidated in Texas rather than
12 this District. As required by Micron, the Court already considered where this action should best
13 occur, and that is here, not in Texas. (Docket No. 58 at 24:27 to 28:10.) The correct resolution
14 would be to stay or transfer the Halloween actions into this one. See Elecs. For Imaging, Inc., 340
15 F.3d at 1352 (finding that a pending patent infringement case in Nevada “can be consolidated with
16 the current action,” a declaratory judgment action in the Northern District of California).
17

Rockstar’s arguments are also factually incorrect. Rockstar asserts that “[t]his case and

18 Defendants’ case against Google in the EDTX involve wholly overlapping issues as to
19 infringement and damages, including whether and to what extent Google’s products (including the
20 Nexus 5, Nexus 7 and Nexus 10) infringe one or more claims of the patents-in-suit.” (Motion at
21 20:6-9.) But as this Court explained in ruling on Rockstar’s prior motion to transfer, Rockstar’s
22 New Year’s Eve complaint against Google included only “allegations that Google infringes three
23 of the asserted patents at issue in this case”; although Rockstar later “sought to include the final
24 four other patents in the Texas case, leave to amend has not yet been granted.” (Docket No. 58 at
25 4:27 to 5:9; 22:15 to 23:1.) That remains true. As Google explained in opposition to that motion,
26 Rockstar could not excuse any delay in asserting the final four patents because, “[i]n its Halloween
27 complaint against ASUS, Rockstar expressly accused the Nexus 7, one of Google’s Nexus
28 products developed by Google and sold on Google’s website.” Rockstar v. Samsung, No. 13-900
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-19GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 (E.D. Tex.), Docket No. 56 at 2. As confirmed by Rockstar’s later accusations against Google for
2 infringement by selling the same Nexus 7, Rockstar could have sued Google on Halloween, but
3 for strategic decisions did not; Rockstar’s strategic delay cannot allow amendment under Fed. R.
4 Civ. P. 15. Id. Thus this case and Rockstar’s Texas action against Google do not present “wholly
5 overlapping issues”; this action will resolve the issues in that action, but not vice versa.
6

Similarly, this action will resolve any allegation of infringement against Google’s Android

7 Platform, including Google’s publication of the Android Open Source Project on the Internet.
8 (Docket No. 1 ¶¶ 25-26, 31, 37, 43, 49, 55, 61, 67.) Rockstar’s action in Texas will not resolve
9 these issues, and Rockstar does not argue otherwise. Instead Rockstar contends only that, in this
10 action, “Defendants contest Google’s identification of the ‘Android Platform.’” (Motion at 20:9.)
11 But that is precisely the point: this action will resolve whether Google can seek a declaration of
12 non-infringement govering its Android Platform and, if it can, whether that platform infringes any
13 of the asserted patents. Rockstar’s Texas action will not resolve these issues, even if that Court
14 grants Rockstar’s motion for leave to amend its complaint. Rockstar is thus doubly wrong in
15 asserting that the two actions have “wholly overlapping issues,” and that “[e]ach of the claims in
16 this case could be raised by Google as a defense in the Texas Action.” (Id. at 20:9-10.) This
17 factor therefore favors this district.
18

E.

19

Google’s development of Android is largely in Mountain View; unsurprisingly, Google’s

Ease of Access to the Evidence Favors This District

20 relevant documents are largely in Mountain View as well. (Madigan Decl. Ex. 2 ¶ 12.) Because
21 Rockstar’s principal place of business is in Ottawa, Canada, most of Rockstar’s documents are
22 likely there as well. (See supra at 9.) Rockstar does not argue otherwise, but only claims to have
23 some relevant documents in Texas, including “files relating to patent licenses, patent licensing
24 efforts, and payment of royalties.” (Motion at 19:13-16.) But Rockstar has not quantified any of
25 these documents further, and has not produced any of them to Google. More tellingly, public
26 evidence indicates most documents are indeed in Canada. In bankruptcy proceedings regarding
27 Nortel’s assets, a Canadian court appointed a Monitor to represent the court during the proceeding.
28 See R.S.C., 1985, c. C-36 § 11.7(1); Madigan Decl. Ex. 12 (order of Canadian court requiring
01980.00011/5938111.10

CASE NO. 13-cv-5933-CW
-20GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 routine reports on status of bankruptcy proceedings). The Monitor found little-to-no connection
2 between Nortel’s R&D and the Richardson facility:
3
4
5
6

Nortel was always headquartered in Canada, where it was founded as part of the Bell
Telephone Company of Canada in 1883. Before the 1980s, all of Nortel’s R&D was
performed in Ottawa. While laboratories were later established in other jurisdictions,
Ottawa always remained the primary centre for R&D. NNL’s Ottawa campus was home to
the largest concentration of Nortel’s R&D employees. Ottawa was also the location of
Nortel’s advanced technology and R&D leadership. No major decision regarding R&D
direction or funding was taken without approval from Ottawa.

7 (Madigan Decl. Ex. 13 ¶ 30.) These proceedings thus confirm the logical inference that most of
8 Rockstar’s relevant documents are in Canada, not Texas. This factor favors this District.
9
10

F.

Local Interest in the Controversy Favors This District

This Court has a local interest in the controversy between Google and Rockstar. The

11 Eastern District of Texas does not. As this Court has already found, Rockstar’s allegations
12 specifically target Google’s Android platform; in the Halloween actions, for example, Rockstar
13 “limited their infringement claims to Android-operating devices only, even where they asserted a
14 hardware-based patent.” (Docket No. 58 at 19:7-11.) The Android platform is overwhelmingly
15 designed, developed, and maintained by Google in this District. (Madigan Decl. Ex. 2 ¶¶ 3-9.)
16 Thus, as this Court found in denying Rockstar’s prior motion to transfer, this District “has the
17 greater interest in this litigation because the claims here will ‘call into question the work and
18 reputation of several individuals residing in or conducting business in this community.’” (Docket
19 No. 58 at 27:14-19 (quoting In re Hoffman-LaRoche, 587 F.3d 1333, 1336 (Fed. Cir. 2009)). The
20 Eastern District itself has “recognized that the ‘Northern District of California has an interest in
21 protecting intellectual property rights that stem from research and development in Silicon Valley.”
22 (Docket No. 58 at 27:19-25 (quoting Affinity Labs of Texas v. Samsung Elecs. Co., 2013 WL
23 5508122, at *3 (E.D. Tex.)).) Conversely, the Eastern District of Texas has little interest in this
24 action. Rockstar’s mere proclamation that Plano, Texas is its principal place of business does not
25 establish a local interest; to the contrary, the Court must “take as the ‘nerve center’ the place of
26 actual direction, control, and coordination, in the absence of such manipulation.” Hertz Corp. v.
27 Friend, 559 U.S. 77, 79 (2010). After undertaking this analysis, this Court has already found that
28 Rockstar’s “nerve center” is in Ottawa, Canada (Docket No. 58 at 3 n.1), reducing or removing
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CASE NO. 13-cv-5933-CW
-21GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 any interest in the Eastern District. Thus, this factor favors this District.
2

Rockstar makes two arguments in response; both fail. First, Rockstar argues that it

3 actually has “meaningful ties to the EDTX” and “conducts its business in the EDTX.” (Motion at
4 20:24 to 21:10.) As the Court has already found, however, Rockstar actually conducts the
5 overwhelming majority of its business from Ottawa, Canada (see supra § II.B); so this argument
6 fails. Second, Rockstar argues that “the patents-in-suit are the result of Nortel’s research, and
7 Nortel’s long-standing U.S. headquarters was in Richardson, Texas.” (Motion at 21:15-16.) As
8 an initial matter, the Court can dismiss this argument because Richardson, as Rockstar has
9 admitted, is not in the Eastern District at all. (Madigan Decl. Ex. 14 ¶ 8.) Furthermore,
10 Rockstar’s statement carefully omits any connection between where “Nortel’s research” was
11 conducted and Nortel’s facility in Texas; absent any evidence, the Court should discount it. As
12 the bankruptcy Monitor found, “Ottawa always remained the primary centre for R&D,” further
13 reducing any Texas interest in this action. (See supra at 20-21.) The Monitor also found that
14 Nortel’s Canadian parent “was a substantial funder of R&D,” and “proportionally spent the most
15 on R&D.” (Id.) When Rockstar CEO John Veschi took control of Nortel’s IP function in 2009,
16 he did so from Nortel’s Ottawa headquarters, “the former centre of Nortel’s R&D operations.”
17 (Id. Ex. 15.) Especially in light of this substantial contrary evidence, the Court can and should
18 ignore Rockstar’s unsupported assertion that all of Nortel’s research came from Texas.
19

G.

20

This factor also favors this District. The most recent federal judicial caseload statistics,

Relative Court Congestion and Time to Trial Favor This District

21 compiled by the judiciary using data through June 30, 2013, show average times to trial of 27.5
22 months in this Court and 25.5 months in the Eastern District, a negligible difference. (Madigan
23 Decl. Ex. 16.) Rockstar submits a PricewaterhouseCoopers study of patent cases from 1995
24 through 2012, which finds median time-to-trial in this District to be 2.72 years, and in the Eastern
25 District to be 2.19 years. (Docket No. 67-32.) Rockstar now argues that “this factor favors
26 transfer,” although it found the same factor “neutral” in opposing Google’s motion to transfer
27 before the Eastern District. (Motion at 22; Rockstar v. Samsung, No. 13-900 (E.D. Tex. April 14,
28 2014), Docket No. 61 at 15.)
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CASE NO. 13-cv-5933-CW
-22GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1

This factor would in fact be neutral, but for a more recent study released by Lex Machina

2 on May 13, 2014. (Madigan Decl. Ex. 17; see id. Ex. 18.) That study surveyed every patent case
3 filed in 2013, and found that Judge Gilstrap, to whom the Eastern District assigned the Halloween
4 actions, received 941 new patent actions in 2013 alone, representing more than 15% of the total
5 patent actions filed anywhere in the nation, and more than triple the number of cases, 263,
6 received by the next-most-busy judge. This deluge of 941 new cases would tax any chambers,
7 even the most efficient, and militates strongly against transfer of this action. The purpose of the
8 congestion factor is not only to avoid unreasonable delays to actions directly at issue on transfer
9 motions, but also to ensure a more even and fair distribution of cases across the various judicial
10 districts. See, e.g., Mateos v. Select Energy Servs., L.L.C., 919 F. Supp. 2d 817, 824 (W.D. Tex.
11 2013) (considering new case assignments per judge and refusing transfer where potential
12 transferee district “is as busy, if not busier” as current district); Wesley-Jessen Corp. v. Pilkington
13 Visioncare, Inc., 157 F.R.D. 215, 219 (D. Del. 1993) (refusing to transfer “to a court that is
14 already carrying the burden of many more cases” where adding matter to another judge’s docket
15 could “impose a significant incremental burden on that judge’s work load”). This Court need not
16 add to the heavy burden already imposed on Judge Gilstrap and his chambers by the myriad of
17 filings in 2013. This factor favors this District.
18

H.

19

As this Court has already found, this Court and the Eastern District are both familiar with

Familiarity of Each Forum with the Applicable Law is Neutral

20 patent law. (Docket No. 58 at 28:7-10.) For once, Rockstar does not challenge the prior ruling of
21 this Court. (Motion at 23:1-2.) This factor is neutral.
22 IV.

The Court Should Deny Rockstar’s Cursory Request for a Stay

23

Rockstar closes its brief with a perfunctory request that the Court exercise its inherent

24 authority to stay these proceedings pending resolution of the Halloween Actions. Like Rockstar’s
25 motion to transfer, this request falls within the Court’s sound discretion, exercised to balance the
26 parties’ competing interests. Landis v. N. Am. Co., 299 U.S. 248, 254-56 (1936). For Rockstar to
27 prevent this action from proceeding, it must clear a high bar:
28
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CASE NO. 13-cv-5933-CW
-23GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1

The suppliant for a stay must make out a clear case of hardship or inequity in being
required to go forward, if there is even a fair possibility that the stay for which he
prays will work damage to someone else. Only in rare circumstances will a litigant
in one cause be compelled to stand aside while a litigant in another settles the rule
of law that will define the rights of both.

2
3

4 Landis, 299 U.S. at 255. “The proponent of a stay bears the burden of establishing its need.”
5 Clinton v. Jones, 520 U.S. 681, 708 (1997) (quoting Landis, 299 U.S. at 255). Rockstar presents
6 no interests favoring a stay; the Court should quickly deny this request.
First, Rockstar argues that the Halloween actions will not “resolve each of the

7

8 infringement claims presently before this Court as to Google’s devices.” (Motion at 23.) But as
9 Google has already explained, this is simply not so; to the contrary, only this action will resolve all
10 issues between Rockstar and Google. (See supra at 11.) Second, the primary case Rockstar uses
11 to support its request actually supports Google here, not Rockstar. In Google, Inc. v.
12 ContentGuard Holdings, Inc., this Court stayed a declaratory action in favor of an infringement
13 action in the Eastern District—but did so, critically, following a finding that the Eastern District
14 case was the first-filed one, and after the Eastern District had considered the convenience factors
15 under Micron and decided to keep its case. Google Inc. v. ContentGuard Holdings, Inc., No. 1416 498 (N.D. Cal. Apr. 15, 2014), Docket No. 42. Here, in contrast, this Court has already found this
17 action to be the first-filed one, further found that “even if the parties were substantially similar in
18 the Halloween actions and this one, the customer-suit exception to the first-to-file rule would
19 apply,” applied the Micron factors, and ruled that this action should proceed. (Docket No. 58 at
20 23:6-28:12.) Under these circumstances, Rockstar’s request for a stay reduces to yet another
21 instance of its well-worn argument that this Court should abandon this action simply because other
22 actions exist in Texas. (See supra at 11-12.) This argument cannot support a stay any more than it
23 can a transfer; instead the Court must apply the convenience factors and decide the proper location
24 of this action. (Id.) Rockstar may not like the answer yielded by the convenience factors, but
25 seeking a stay cannot and does not change it.7 Rockstar provides no support for its request, let
26
27

7

Rockstar’s other authorities militate against stay of this action. In Nat’l Broom Co. of Cal. v.
Brookstone Co., the court stayed after finding, unlike the Court here, that “departing from the first28
(footnote continued)
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CASE NO. 13-cv-5933-CW
-24GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY

1 alone “a clear case of hardship or inequity”; the Court should deny its rote request for a stay.
2
3

CONCLUSION
For all of the foregoing reasons, this Court should deny Rockstar’s renewed motion to

4 transfer or stay this action, and should enter an order precluding further attempts by Rockstar to
5 avoid the jurisdiction of this Court.
6 DATED: May 23, 2014

Respectfully submitted,

7

QUINN EMANUEL URQUHART & SULLIVAN, LLP

8

By /s Matthew S. Warren
Matthew S. Warren
Attorneys for Google Inc.

9
10
11
12
13
14
15
16
17
18
19
20
21
22

to-file rule is warranted.” 2009 U.S. Dist. LEXIS 69630, at *8 (N.D. Cal. July 30, 2009). In
23 Ricoh Co., Ltd. v. Aeroflex Inc., the court concluded the customer-suit exception favored
resolution of the manufacturer’s suit, and did not even consider a stay. 279 F. Supp. 2d 554, 556
24 (D. Del. 2003). In Leviton Mfg. Co. v. Interline Brands, Inc., as here, the court found the
customer-suit exception applied to stay of the customer suits, expressly rejecting Rockstar’s
25 position that the customer-suit exception requires an agreement by the customers to be bound.
2006 U.S. Dist. LEXIS 61944 (M.D. Fla. Aug. 30, 2006). Finally, Hynix Semiconductor, Inc. v.
26 Rambus, Inc. is irrelevant: it imposed a stay pending appeal of a ruling of unenforceability of the
patents due to the plaintiff’s destruction of documents. 2009 U.S. Dist. LEXIS 10939, at *13-15
27 (N.D. Cal. Feb. 3, 2009).
28
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CASE NO. 13-cv-5933-CW
-25GOOGLE’S OPPOSITION TO ROCKSTAR’S RENEWED MOTION TO TRANSFER OR STAY