Google Inc. v. Rockstar Consortium US LP et al

Filing 74

REPLY (re 66 MOTION for Certificate of Interlocutory Appeal ) in Support of Motion for 1292(b) Certification for Interlocutory Review filed byMobileStar Technologies LLC, Rockstar Consortium US LP. (Budwin, Joshua) (Filed on 5/30/2014)

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Courtland L. Reichman (SBN 268873)
[e-mail]
McKool Smith Hennigan, P.C.
255 Shoreline Drive Suite 510
Redwood Shores, CA 94065
[phone]
[phone] (facsimile)
ADDITIONAL COUNSEL LISTED ON
SIGNATURE PAGE

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Attorneys for Defendants
Rockstar Consortium US LP and
MobileStar Technologies LLC

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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OAKLAND
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Google, Inc.
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Plaintiff,
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vs.
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Rockstar Consortium U.S. LP and MobileStar
Technologies LLC

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Defendants.

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Case No. 13-cv-5933-CW
DEFENDANTS’ REPLY IN
SUPPORT OF MOTION FOR
§ 1292(b) CERTIFICATION FOR
INTERLOCUTORY REVIEW;
MEMORANDUM OF POINTS AND
AUTHORITIES
Date: Thursday, June 19, 2014
Time: 2:00 p.m.
Courtroom:
Courtroom 2, Fourth Floor
Judge: Hon. Claudia Wilken

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TABLE OF CONTENTS

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INTRODUCTION .................................................................................................................................1
ARGUMENT .........................................................................................................................................2
I.

Google Does Not Dispute That The Court’s Order Denying Rockstar’s Motion To
Dismiss Presents A Controlling Question Of Law. ...................................................................3

II.

There Is Substantial Ground For Difference Of Opinion Among Reasonable Jurists
As To Whether Rockstar Is Subject To Personal Jurisdiction In The NDCA. ..........................3

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A.

No Authority From The Federal Circuit—Including Avocent—Holds An
Entity Subject To Personal Jurisdiction In A Foreign Forum Absent A
Showing Of Enforcement “Obligations” Related To The Patents-In-Suit In
The Forum. .....................................................................................................................5

C.

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Google Concedes That It Has Not Alleged Veil Piercing Or Alter Ego, Nor
Has The Court Made Such A Finding............................................................................4

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Google’s “Fall-Back” Assertion That It Has Alleged “Enforcement
Obligations In California” By Rockstar Is Insufficient Under The Controlling
Law. .............................................................................................................................10

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III.

Certification Will Materially Advance The Litigation. ...........................................................12

CONCLUSION ....................................................................................................................................13

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TABLE OF AUTHORITIES

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Page(s)
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CASES

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Autogenomics, Inc. v. Oxford Gene Technology Ltd.,
566 F. 3d 1012 (Fed. Cir. 2009)...........................................................................................9, 10

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Avocent Huntsville Corp. v. Aten Int’l Co.,
552 F.3d 1324 (Fed. Cir. 2008)......................................................................................6, 7, 8, 9
Juniper Networks, Inc. v. SSL Servs., LLC,
Case No. 08-cv-5758, 2009 U.S. Dist. LEXIS 112399 (N.D. Cal. Nov. 16, 2009), aff’d
2010 U.S. App. LEXIS 25498 (Fed. Cir. Dec. 13, 2010) ..........................................................7
Radio Sys. Corp. v. Accession, Inc.,
638 F.3d 785 (Fed. Cir. 2011)............................................................................................6, 7, 9
Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc.,
148 F.3d 1355 (Fed.Cir.1998)..................................................................................................11
Reese v. BP Exploration (Alaska) Inc.,
643 F.3d 681 (9th Cir. 2011) ...........................................................................................3, 4, 12

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Ruhrgas AG v. Marathon Oil Co.,
526 U.S. 574 (1999) .................................................................................................................12
Smugmug, Inc. v. Virtual Photo Store LLC,
Case No. 09-cv-2255 CW, 2009 U.S. Dist. LEXIS 112400 (N.D. Cal. Nov. 16, 2009) (J.
Wilken) ....................................................................................................................................11

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STATUTES
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28 U.S.C. § 1292(b) ............................................................................................................... passim
OTHER AUTHORITIES
Fed. R. App. P. 5(a)(3)...................................................................................................................13
http://www.reuters.com/article/2014/05/17/us-apple-google-settlementidUSBREA4F0S020140517 (last accessed on May 28, 2014) ...................................................1
SUSPECTS

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§ 1292(b)’s .......................................................................................................................................3
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id. at 3-4 ...........................................................................................................................................4
id. at 7...............................................................................................................................................4

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Id. at 7-8 ...........................................................................................................................................5

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Id. at 7 ..............................................................................................................................................5

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id. at 8...............................................................................................................................................5

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id. at 9...............................................................................................................................................6

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id. at 10-11 .......................................................................................................................................6

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id. at 1, 7-9 .......................................................................................................................................7

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INTRODUCTION

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Google’s Opposition is is divorced from the law of the Federal Circuit regarding personal

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jurisdiction. As it relates to the personal jurisdiction issues raised in Rockstar’s Motion, there are

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two ways Rockstar US LP (hereinafter “Rockstar”)—a Delaware limited liability partnership

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resident in Texas (and, by association MobileStar Technologies, LLC, its subsidiary)—could be

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subject to personal jurisdiction in the NDCA.
First, Rockstar could be subject to personal jurisdiction in the NDCA if it was found to be the

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alter ego or agent of Apple, a forum resident. While Google makes various statements suggesting

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that Rockstar is in effect Apple’s proxy in a “thermonuclear war” against Android, the statements

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Google points to were made by Apple and not Rockstar. 1 Rockstar is not Apple, it is a legally

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separate limited liability partnership organized under the state laws of Delaware. Google has not

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alleged, and the Court has not found, that Rockstar is the agent or alter ego of Apple. Google

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provides no other justification or reason to attribute any statement by Apple to Rockstar. Therefore,

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in the absence of alter ego or veil piercing, Apple’s statements are irrelevant to whether Rockstar is

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subject to personal jurisdiction in the Northern District of California (“NDCA”).
Second, even if not the agent or alter ego of Apple, Rockstar could be subject to personal

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jurisdiction in the NDCA if it owed “continuing obligations” to Apple (or another forum resident),

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which are sufficient under controlling Federal Circuit law to subject Rockstar to personal jurisdiction

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in the NDCA. The crux of the issue is whether, Rockstar owes “obligations” to Apple (or another

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forum resident) of the type found sufficient by the Federal Circuit to subject an entity to personal

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jurisdiction in a foreign forum. The answer to this controlling question of law is no. No Federal

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Circuit case, including Avocent—which Google’s Opposition hangs its proverbial hat on—has held

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an entity subject to personal jurisdiction in a foreign forum absent a showing of “continuing

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In an apparent nuclear détente, on May 16, 2014 Google and Apple announced an end to their
patent hostility. See “Apple, Google settle smartphone patent litigation” available at
http://www.reuters.com/article/2014/05/17/us-apple-google-settlement-idUSBREA4F0S020140517
(last accessed on May 28, 2014).
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obligations” that relate to enforcement of the patents in the forum where jurisdiction is sought. Nor

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has any Federal Circuit authority, absent veil piercing or a finding of alter ego (which Google

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concedes is not at issue here), held a foreign defendant subject to personal jurisdiction in a forum

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where an alleged-to-be influential shareholder or limited partner resides. This is because any other

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rule sweeps aside the corporate form, sets aside the careful balance created in the controlling Federal

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Circuit authority, and would subject any foreign entity to suit in any jurisdiction where any alleged-

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to-be influential shareholder or partner resides.

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Each of the three requirements for interlocutory review is satisfied here. First, whether
Rockstar is subject to personal jurisdiction in the NDCA involves a controlling question of Federal

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Circuit law. Google does not suggest otherwise. Second, whether Rockstar can be subject to personal

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jurisdiction in the NDCA due to “continuing obligations” it is alleged to owe Apple is subject to

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substantial ground for difference of opinion among reasonable jurists. As explained herein, both

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Google and the Court’s Order broaden the scope of personal jurisdiction under the controlling

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Federal Circuit precedent. None of the “continuing obligations” alleged by Google, or found by the

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Court, relate to enforcement of the patents in the forum and therefore are not the type of obligations

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that the Federal Circuit has held subjects a non-resident entity to personal jurisdiction in a foreign

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forum. Third, the interlocutory review will undisputedly advance the ultimate determination of this

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litigation. If the Federal Circuit were to reach a contrary decision, this case would be dismissed and

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this litigation would terminate.

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In light of the foregoing, the Court should exercise its sound discretion by certifying for

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interlocutory review the question presented in Rockstar’s Motion together with the Court’s Order

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denying Rockstar’s Motion to Dismiss.

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ARGUMENT

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Under 28 U.S.C. § 1292(b), the Court has discretion to certify to the Federal Circuit an

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otherwise non-appealable order if: (1) the “order involves a controlling question of law”; (2) there is

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“substantial ground for difference of opinion”; and (3) “an immediate appeal from the order may
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materially advance the ultimate termination of the litigation.” All of § 1292(b)’s requirements are

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met, and an immediate appeal is appropriate.

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I.

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Google Does Not Dispute That The Court’s Order Denying Rockstar’s Motion To
Dismiss Presents A Controlling Question Of Law.
Rockstar’s Motion explained that because personal jurisdiction is a threshold issue essential

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to the Court’s authority, the Court’s Order denying Rockstar’s Motion to Dismiss presented a
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controlling question of law. (Docket No. 66 at 5-6). Google ducks this issue, merely asserting in
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conclusory fashion that the Court “need not decide this issue.” (Docket No. 71 at 12-13).
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Accordingly, there is no material dispute—the Court’s Order presents a controlling question of law.
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II.

There Is Substantial Ground For Difference Of Opinion Among Reasonable Jurists As
To Whether Rockstar Is Subject To Personal Jurisdiction In The NDCA.
The relevant standard in the Ninth Circuit to determine if there is a substantial ground for

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difference of opinion in the context of Section 1292(b) is whether or not “reasonable jurists might

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disagree on an issue’s resolution, not merely where they have already disagreed.” Reese v. BP

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Exploration (Alaska) Inc., 643 F.3d 681, 688 (9th Cir. 2011) (emphasis added). Google attempts to

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spin the standard advanced by the Ninth Circuit in Reese by citing two unpublished district court

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decisions from earlier in 2011 (pre-Reese) for the proposition that Rockstar “must demonstrate an

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‘established split of authority among the circuits’ or ‘clearly conflicting decisions by the Ninth

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Circuit’ or other controlling circuit (here, the Federal Circuit), ‘which merit a departure from the

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general rule that only final judgments are appealable.’” (Docket No. 66 at 5). However, as the Ninth

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Circuit explained in Reese, “when novel legal issues are presented, on which fair-minded jurists

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might reach contradictory conclusions, a novel issue may be certified for interlocutory appeal

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without first awaiting development of contradictory precedent.” Reese, 643 F.3d at 688. In the Ninth

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Circuit, there is no requirement, as Google postulates, to show a “split” of authority between circuits

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or “clearly conflicting decisions” within a circuit, to warrant certification.

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While Google asserts that “strong disagreement with the court’s ruling” by itself fails to meet
the certification standard, Rockstar’s request goes beyond its disagreement with the Court’s Order.
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Indeed, every request under Section 1292(b), including the request granted in Reese (where the

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Ninth Circuit reversed a district court’s order denying in-part a motion to dismiss for failure to state

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a claim), is predicated upon some disagreement with a court order. See Reese, 643 F.3d at 688.

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Rockstar’s Motion asserts that the Court’s Order denying its Motion to Dismiss impermissibly

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broadens the scope of personal jurisdiction under the controlling law of the Federal Circuit, such that

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other judges or a panel of the Federal Circuit might reasonably disagree with the Court’s holding.

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This is precisely the type of issue the Ninth Circuit determined in Reese was proper for certification.

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Rockstar’s Motion presents a novel issue of first impression appropriate for interlocutory
review because no court (including the Federal Circuit) has ever held a non-resident entity subject to

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personal jurisdiction in a foreign forum on facts similar to those presented here: no veil piercing or

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alter ego; the presence of one limited partner with a minority ownership interest in the forum; no

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exclusive licensee in the forum; no allegation of judicial or extra-judicial enforcement activities in

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the forum; but assertions that the one in forum limited partner exerts control or influence over the

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non-resident limited partnership that was found to be subject to personal jurisdiction in the forum.

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Surely, if an analogous factual situation existed, Google would have located it and brought it to the

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Court’s attention. Because the Court’s Order effectively broadens the scope of personal jurisdiction

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beyond the scope of the controlling law, it is appropriate for interlocutory review.

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A.

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Google Concedes That It Has Not Alleged Veil Piercing Or Alter Ego, Nor Has
The Court Made Such A Finding.

In its Motion, Rockstar cited various authorities in support of the “general rule” that the
corporate form is to be “respected” and not “swept aside” absent veil piercing or a finding of alter
ego. (See Docket 66 at 3, 7-9). Google does not take serious issue with these authorities, instead
conceding that it is not asserting that “alter ego or agency theories are at issue.” (Docket 71 at 5-6).
Rockstar’s Motion did not assert that Google alleged alter ego or veil piercing (or that the
Court found them). (See Docket 66 at 2 (“[i]mportantly however, the Court did not pierce the
corporate veil, did not find Rockstar to be the alter ego of Apple . . .”); id. at 3-4; id. at 7 (“[t]he
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Court determined that veil piercing or finding alter ego was not required because ‘Defendants have

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undertaken a substantial obligation to Apple related to the asserted patents . . .’”). Rather, Rockstar

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pointed out that if Google could establish either veil piercing or alter ego, Rockstar would likely be

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subject to personal jurisdiction in the NDCA. (Id. at 7-8). However, it remains true—and

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undisputed—that “under settled law courts should not look past the legal form without proving alter

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ego or veil piercing.” (Id. at 7).
Here, the absence of a finding or allegation of veil piercing or alter ego is important for two

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reasons. First, it forecloses one of the two ways that Rockstar could be subject to personal

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jurisdiction in the NDCA on the facts presented. Second, it shows that Google’s hyperbole about

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Apple (not Rockstar) wanting to start a now-settled (see fn. 1, supra) “thermonuclear war” against

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Google (and other such statements made by Apple, not Rockstar) is irrelevant to whether Rockstar, a

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legally separate limited liability partnership organized under the state laws of Delaware and resident

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in Texas, is subject to personal jurisdiction in the NDCA. 2 Google admits that Rockstar is not the

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agent or alter ego of Apple and provides no other reason to attribute statements made by Apple to

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Rockstar. As such, Rockstar can only be subject to personal jurisdiction in the NDCA based upon a

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showing of “obligations” owed by Rockstar to Apple that are sufficient, under controlling Federal

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Circuit law, to subject Rockstar to personal jurisdiction in the NDCA. (See Docket 66 at 7; Docket

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71 at 5-6).

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B.

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No Authority From The Federal Circuit—Including Avocent—Holds An Entity
Subject To Personal Jurisdiction In A Foreign Forum Absent A Showing Of
Enforcement “Obligations” Related To The Patents-In-Suit In The Forum.

Google’s Opposition asserts that “the Court merely applied existing black-letter law, holding

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that personal jurisdiction can arise from an ‘undertaking which imposes enforcement obligations

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with a party residing or regularly doing business in the forum.’” (Docket 71 at 6 (Google citing

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Court’s Order which in turn cites Avocent for this proposition); id. at 8 (Google repeating this same

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Indeed, if Apple were truly “pulling the strings” as Google alleges, then the parties should be
obligated to end this litigation as well.
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line from Avocent); id. at 9 (same); see also Docket No. 58 at 15-16, 20 (Court’s Order discussing

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this portion of Avocent)). As confirmed by Avocent itself, and the later Federal Circuit cases of

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Radio Sys. Corp. and Autogenomics, Google’s Opposition—like the Court’s Order—reads this one

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line from the Federal Circuit’s Avocent opinion too broadly. For this reason, other judges or a panel

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of the Federal Circuit might reasonably disagree with the Court’s holding which effectively broadens

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the scope of personal jurisdiction beyond the boundaries of controlling Federal Circuit authority set

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forth in Avocent, Radio Sys. Corp. and Autogenomics as discussed below and in Rockstar’s Motion.
Avocent holds that the alleged “enforcement obligations” must relate to enforcement of the

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patents-in-suit in the forum where jurisdiction is sought. Avocent Huntsville Corp. v. Aten Int’l Co.,

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552 F.3d 1324, 1334 (Fed. Cir. 2008). It is not enough to show or allege that a foreign defendant

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owes obligations to a forum resident to enforce the patents-in-suit outside the forum. Radio Sys.

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Corp. v. Accession, Inc., 638 F.3d 785, 792 (Fed. Cir. 2011) (emphasis added) (“We made clear in

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Avocent that enforcement activities taking place outside the forum state do not give rise to personal

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jurisdiction in the forum, and that decision is controlling here.”) 3

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Discussing what “other activities” may subject a foreign entity to personal jurisdiction in a
foreign forum, the Avocent panel stated:

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Because declaratory judgment actions raise non-infringement, invalidity, and/or
unenforceability issues central to enforcement of the patents in question, we have
looked beyond the ‘arises out of’ inquiry and have found jurisdiction where such
‘other activities’ in some identifiable way ‘relate to’ enforcement of those patents
in the forum.

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Avocent, 552 F.3d at 1334 (emphasis added). The Avocent panel then summarized its reasoning by

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stating:

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[B]ased on our precedent, as discussed supra, if the defendant patentee
purposefully directs activities at the forum which relate in some material way to
the enforcement or the defense of the patent, those activities may suffice to
support specific jurisdiction. For example, when the patentee enters into an
exclusive license or other obligation relating to the exploitation of the patent by
such licensee or contracting party in the forum, the patentee’s contractual

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As explained in Defendants’ Motion, Defendants do not owe any enforcement obligation to Apple,
or any other limited partner, in any forum. (Docket No. 66 at 2-4; id. at 10-11).
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undertaking may impose certain obligations to enforce the patent against
infringers. By such conduct, the patentee may be said to purposefully avail itself
of the forum and to engage in activity that relates to the validity and enforceability
of the patent.

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Id. at 1336. As the Avocent opinion makes clear, the “continuing” or “other obligations” sufficient to

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subject a non-resident entity to personal jurisdiction in a foreign forum must, “in some identifiable

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way ‘relate to’ enforcement of those patents in the forum.” Id. at 1334 (emphasis added). Said

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another way, such “other obligations” must “relat[e] to the exploitation of the patent by such licensee

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or contracting party in the forum.” Id. at 1336 (emphasis added). No allegation that Rockstar owed

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Apple (or any other forum resident) any obligation to enforce or exploit any of the patents-in-suit in

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the NDCA was alleged by Google or found by the Court. 4

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Sandwiched between the paragraphs quoted above, is the one line of the Avocent opinion that

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Google refers to as “black-letter law.” (Docket 71 at 6). Throughout its opposition, Google ignores

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the portions of Avocent quoted above, and instead selectively focuses only on the panel’s reference

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to “other undertaking[s] which imposes enforcement obligations with a party residing or regularly

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doing business in the forum.” (Id.; see also id. at 1, 7-9). Google uses this one line from Avocent

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time and again as the “hook” for personal jurisdiction in this case. (Id.) The Court’s Order also reads

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this one line from Avocent broadly. (Docket No. at 15-16, 20 (Court’s Order discussing this portion

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of Avocent)). However, in addition to the portions of Avocent quoted above, immediately following

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this line, the Avocent panel includes cites to other Federal Circuit cases with parentheticals which

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explain the factual scenarios where “other obligations” have been deemed sufficient to subject an

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Radio Sys. Corp., 638 F.3d at 792 (“We made clear in Avocent that enforcement activities taking
place outside the forum state do not give rise to personal jurisdiction in the form, and that decision is
controlling here.”). Therefore, any alleged enforcement obligation in Texas (which, Rockstar asserts
does not exist, see fn. 3, supra), is irrelevant to whether Rockstar is subject to personal jurisdiction in
the NDCA. See also Avocent, 552 F.3d at 1339 (“We are aware of no precedent that holds that the
filing of a suit in a particular state subjects that party to specific personal jurisdiction everywhere
else”); Juniper Networks, Inc. v. SSL Servs., LLC, Case No. 08-cv-5758, 2009 U.S. Dist. LEXIS
112399, *11-12 (N.D. Cal. Nov. 16, 2009), aff’d 2010 U.S. App. LEXIS 25498 (Fed. Cir. Dec. 13,
2010) (suing a California entity in Texas is insufficient to confer specific jurisdiction in California).
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non-resident entity to jurisdiction in a foreign forum. Avocent, 552 F.3d at 1334-1335. These factual

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scenarios include:

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enlisting a third party to assist in extra-judicial patent enforcement activities in the forum by
removing alleged infringing products from a trade show being held in the forum;

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entering into exclusive license agreements with entities who transact business in the forum;

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entering into exclusive license agreements with forum residents;

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the prior grant of an exclusive license to the plaintiff, a forum resident;

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substantial contacts with an exclusive licensee and forum resident;

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contract with an exclusive distributor to sell the patented products in the forum, where the

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agreement required patent enforcement and was analogous to a grant of an exclusive license;

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filing of suit against other parties, on the patents in question, in the forum;

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grant of an exclusive license to the patent to entity who competes with forum-resident

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plaintiff, including the obligation to defend and pursue any infringement against the patent.

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Id. (citations and internal quotations omitted). (See also Docket No. 58 at 16, n. 5). The Avocent

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panel also explained that certain types of “other activities,” including “mere sales within the forum”

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of products covered by the patents and “a patentee with thirty-four non-exclusive licensees selling

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the patented product in the forum state” are insufficient to establish personal jurisdiction. Avocent,

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552 F.3d at 1336. Avocent further makes clear that alleged harm to a company’s reputation or

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customer relationships is insufficient to create personal jurisdiction in the forum where the alleged-

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to-be-harmed company resides. See Avocent, 552 F.3d at 1340 (rejecting plaintiff’s argument that

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patentees’ infringement letters sent to a third-party retailer provided specific jurisdiction because

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“the intended effect was to slow the sale of plaintiff’s allegedly infringing products”).

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Here, no fact or allegation analogous to any of the personal jurisdiction scenarios set forth in

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Avocent, or any other controlling authority, was alleged by Google or found by the Court in its

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Order. Viewed in the light most favorable to Google, Google’s allegations amount to the assertion

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that Rockstar owes “obligations” to Apple as an NDCA resident to enforce the patents-in-suit in
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Texas; that Apple benefits from Rockstar’s lawsuits in Texas; and that by enforcing its patents in

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Texas, Rockstar may have caused harm to Google’s business relationships with the Texas

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defendants. (Docket 66 at 2; Docket 71 at 2-3 (Google’s bullet-point list of alleged “continuing

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obligations” owed by Rockstar to Apple – none of which relate to enforcement of the patents-in-suit

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in the NDCA)). However, consistent with the foregoing discussion of Avocent, such allegations

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(even if true, which they are not), are insufficient as a matter of law under controlling Federal Circuit

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precedent to subject Rockstar to personal jurisdiction in the NDCA. Avocent, 552 F.3d at 1336,

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1340. Radio Sys. Corp., 638 F.3d at 792 (emphasis added) (“We made clear in Avocent that

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enforcement activities taking place outside the forum state do not give rise to personal jurisdiction in

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the form, and that decision is controlling here.”); Avocent, 552 F.3d at 1340 (rejecting plaintiff’s

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argument that patentees’ infringement letters sent to a third-party retailer provided specific

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jurisdiction because “the intended effect was to slow the sale of plaintiff’s allegedly infringing

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products”); see also fn. 4, supra. Despite being cited and discussed in Rockstar’s Motion, Google’s

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Opposition is entirely silent regarding Radio Sys. Corp.—a case that is fatal to Google’s personal

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jurisdiction assertions.

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Google attempts to save face by citing to the Federal Circuit’s decision in Autogenomics.

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(Docket 71 at 9). In Autogenomics the district court and the Federal Circuit each held that the non-

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resident defendant was not subject to personal jurisdiction in the forum. Autogenomics, Inc. v.

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Oxford Gene Technology Ltd., 566 F. 3d 1012, 1021 (Fed. Cir. 2009). In Autogenomics, just after the

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portion of the opinion quoted by Google (Docket No. 71 at 9), the panel noted that district courts are

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required to “examine the jurisdictional facts for conduct whereby the patentee ‘may be said to

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purposefully avail itself of the forum and to engage in activity that relates to the validity and

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enforceability of the patent.’” Id. Later, the Autogenomics panel summarized its findings, analyzed

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the relevant case law (including Avocent), and explained that the foreign defendant was not subject

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to personal jurisdiction due to an absence of enforcement activities in the forum:

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Our holding in Avocent was that only enforcement or defense efforts related to the
patent rather than the patentee’s own commercialization efforts are to be
considered for establishing specific personal jurisdiction in a declaratory
judgment action against the patentee. The dissent suggests that this reading of
Avocent renders it in conflict with other precedent of this court. The court in
Avocent, however, considered and distinguished the very precedent that the
dissent cites. In Viam, for example, where this court held personal jurisdiction
existed, the patentee had sued another infringer in the same court on the same
patent—enforcement efforts in the forum. In Campbell Pet, where the court held
personal jurisdiction existed, the patentee had enlisted a third party to remove the
defendant’s products from a trade show that was being held in the forum state—
enforcement efforts in the forum. In Red Wing Shoe, despite the patentee’s thirtyfour non-exclusive licensees selling the patented product in the forum State, no
personal jurisdiction existed because of an absence of enforcement efforts [in the
forum].

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Id. at 1020 (emphasis added). Here, Rockstar cannot be said to have “purposefully availed itself” of
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the NDCA in any way, other than the presence of Apple, one of its five limited partners in the
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NDCA, that Apple is alleged to benefit from Rockstar’s patent enforcement activities in Texas and
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the fact that Rockstar and Apple have limited and normal partnership-partner interactions (e.g.,
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reports of ongoing business activity). 5 None of these alleged “obligations” or “activities”

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aresufficient under controlling Federal Circuit precedent to subject Rockstar to personal jurisdiction
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in the NDCA. As the Autogenomics panel confirmed, under controlling Federal Circuit authority
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(including Avocent), the absence of “enforcement efforts in the forum” by Rockstar shows that
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Rockstar is not subject to personal jurisdiction in the NDCA. Id.
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C.

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Google’s “Fall-Back” Assertion That It Has Alleged “Enforcement Obligations
In California” By Rockstar Is Insufficient Under The Controlling Law.

In apparent recognition of the merits of Rockstar’s assertion that under the facts as alleged by

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Google the controlling law requires Google to show enforcement activities by Rockstar in the

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NDCA for Rockstar to be subject to personal jurisdiction there, Google asserts that it has shown

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such activities. (Docket No. 71 at 10). Google alleges that Rockstar has “focused on the technology

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As explained in Rockstar’s Motion, the types of “obligations” Rockstar is alleged by Google, and
found by the Court, to owe Apple (e.g. updates on ongoing business activities), are normal
obligations that every corporation or partnership owes to its shareholders or partners. (See Docket
No. 66 at 8-9). No authority from the Federal Circuit, or cited by Google, stands for the proposition
that such normal obligations are the types of “other obligations” sufficient to establish personal
jurisdiction over a non-resident defendant under any of Avocent, Radio Sys. Corp., or Autogenomics.
-10Defendants’ Reply in Support of Motion for §1292(b) Certification
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industry of California, including companies such as Google, Facebook and LinkedIn.” (Id.) The

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apparent basis for this assertion is a magazine article quoting Rockstar’s CEO John Veschi. (Id.)
Three facts undercut Google’s assertion. First, at the time Google filed its declaratory

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complaint, Rockstar had not undertaken any judicial or extra-judicial enforcement activities under

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any of its patents (including the patents-in-suit) against any of Google, Facebook or LinkedIn, in any

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forum, much less in the NDCA. Since that time, Rockstar has only asserted infringement of the

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patents-in-suit against Google in Texas (and as counterclaims to Google’s complaint in this Court,

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following the Court’s denial of Rockstar’s Motion to Dismiss). Second, the allegations Google refers

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to are generic, they are not specific to any patents, much less the patents-in-suit. Rockstar owns well

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over 1,000 patents; the generic statements Google refers to do not subject Rockstar to personal

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jurisdiction in any forum (including the NDCA) in a suit by any of Google, Facebook or LinkedIn on

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any of its patents. Third, as recognized by the Court in its Order, in Red Wing Shoe Co. v.

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Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1361 (Fed.Cir.1998) and other cases including

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Avocent, Autogenomics, and Radio Sys. Corp., the Federal Circuit recognized that the mere act of

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sending a cease and desist letter to a forum resident, or otherwise notifying forum residents of their

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infringement of specifically-identified patents, is insufficient to subject a foreign entity to personal

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jurisdiction in the forum. (See e.g. Docket No. 58 at 14-15). At most, the generic statements Google

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refers to (which, again, fail to specifically identify any patent, much less the patents-in-suit) are of

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the type permitted by Red Wing Shoe, Avocent, Autogenomics, and Radio Sys. Corp. This is

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insufficient to establish personal jurisdiction over Rockstar in the NDCA. 6 Accordingly, Google’s

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“fall back” assertion fails.

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6

See also Smugmug, Inc. v. Virtual Photo Store LLC, Case No. 09-cv-2255 CW, 2009 U.S. Dist.
LEXIS 112400, *11 (N.D. Cal. Nov. 16, 2009) (J. Wilken) (letters sent by patentee to California
companies seeking to discuss potential licensing terms “are not the type of enforcement activity
envisioned in Autogenomics, but rather Defendant’s efforts at commercialization; they cannot be
used to support specific jurisdiction”).
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III.

Certification Will Materially Advance The Litigation.
Google asserts that certification of the Court’s Order will not materially advance the

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litigation because Courts “routinely” deny certification of case-dispositive issues (e.g. summary
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judgment motions, where there are disputed issues of material fact and motions to dismiss) and
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regardless the Texas Action will continue. (Docket No. 71 at 10-11). Neither argument carries water.
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First, as the Ninth Circuit stated in Reese (in the context of granting certification of a motion
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to dismiss for lack of standing):
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[N]either § 1292(b)’s literal text nor controlling precedent requires that the
interlocutory appeal have a final, dispositive effect on the litigation, only that it
‘may materially advance’ the litigation. The district court correctly concluded that
our reversal ‘may’ take BPXA, as a defendant, and Reese’s control claims against
all remaining defendants out of the case. That is sufficient to advance materially
the litigation, and therefore certification of the interlocutory appeal was
permissible.
Reese, 643 F. 3d at 688. Here, it is undisputed that the Federal Circuit’s reversal of the Court’s Order

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will (not “may” as in Reese) take Rockstar as a defendant, together with all of Google’s claims, “out
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of the case.” Personal jurisdiction is a “threshold” issue—it is “essential” to the Court’s authority,
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and the Court is “‘powerless to proceed’” without it. Ruhrgas AG v. Marathon Oil Co., 526 U.S.
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574, 584-85 (1999). Moreover, here, while Rockstar disagrees with the veracity of various “factual”
16
allegations by Google which were adopted by the Court in its Order (see Docket No. 66 at 2-3, fn. 117
3), resolution of the legal issues Rockstar asks the Court to certify for interlocutory review is
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predicated on “[a]ccepting Google’s pleaded allegations that the Court’s factual findings rest on as
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true.” (Docket No. 66 at 2). Under the authority of Reese then, Rockstar has made showing that is
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“sufficient to advance materially the litigation” which shows that “certification of the interlocutory
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appeal [is] permissible.”
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Second, the standard under Section 1292(b) is whether certification will materially advance
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the litigation, not all related litigation between the parties. As such, the pendency of Rockstar’s
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Texas cases, where personal jurisdiction is not at issue, is irrelevant to the determination of whether
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this Court should certify its Order for interlocutory appeal. That the parties have to endure the
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burden of litigation in one forum is not a valid basis to subject the parties to parallel litigations in

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two forums, particularly where, as here, there are doubts about this Court’s jurisdiction that are not

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present in Texas. Indeed, as Rockstar’s Motion explained, immediate review here satisfies one of

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Congress’s core objectives in Section 1292(b): avoiding the potential waste of judicial and party

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resources by litigating a large and complex case to conclusion in this district, only to have the

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threshold jurisdictional issue decided differently on appeal. (Docket No. 66 at 11, citing In re

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Cement Antitrust Litig., 673 F.2d at 1026 (Section 1292(b) review is appropriate when “allowing an

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interlocutory appeal would avoid protracted and expensive litigation.”). Google cannot credibly

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assert that if the Federal Circuit was to reverse the Court’s Order denying Rockstar’s Motion to

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Dismiss now as opposed to at the conclusion of the litigation, that the parties and the Court will not

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each save a significant expenditure of time, effort and money.
CONCLUSION

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For the reasons set forth herein, and in Rockstar’s Motion, Rockstar respectfully requests that

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this Court amend its Order under Fed. R. App. P. 5(a)(3) and certify these important questions for

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interlocutory appeal under 28 U.S.C. § 1292(b).

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Respectfully submitted,

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Dated May 30, 2014.
By:

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/s/ Joshua W. Budwin __________________
Courtland L. Reichman (SBN 268873)
MCKOOL SMITH HENNIGAN, P.C.
255 Shoreline Drive Suite 510
Redwood Shores, CA 94065
[phone]
[phone] (facsimile)
Mike McKool (Admitted Pro Hac Vice)
[e-mail]
Douglas A. Cawley (Admitted Pro Hac Vice)
[e-mail]
Ted Stevenson III (Admitted Pro Hac Vice)
[e-mail]
David Sochia (Admitted Pro Hac Vice)
[e-mail]
McKool Smith, P.C.
300 Crescent Court Suite 1500
Dallas, TX 75201
[phone]
[phone] (facsimile)

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Joshua W. Budwin (Admitted Pro Hac Vice)
[e-mail]
McKool Smith, P.C.
300 W. 6th Street, Suite 1700
Austin, TX 78701
[phone]
[phone] (facsimile)

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Attorneys for Defendants
Rockstar Consortium US LP and MobileStar
Technologies LLC

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Defendants’ Reply in Support of Motion for §1292(b) Certification
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