Motorola Mobility, Inc. v. Microsoft Corporation

Filing 62

Defendant's MOTION to Change Venue Defendant's Motion to Transfer This Action to the Western District of Washington and Accompanying Memorandum of Law by Microsoft Corporation. Responses due by 6/6/2011 (Attachments: #1 Exhibit Exhibit A David Kaefer's Declaration, #2 Exhibit Exhibit 1 to David Kaefer's Declaration, #3 Exhibit Exhibit 2 to David Kaefer's Declaration, #4 Exhibit Exhibit 3 to David Kaefer's Declaration, #5 Exhibit Exhibit B Curtis Miner's Declaration, #6 Exhibit Exhibit 1 to Curtis Miner's Declaration, #7 Exhibit Exhibit 2 to Curtis Miner's Declaration, #8 Exhibit Exhibit 3 to Curtis Miner's Declaration, #9 Exhibit Exhibit 4 to Curtis Miner's Declaration, #10 Exhibit Exhibit 5 to Curtis Miner's Declaration, #11 Exhibit Exhibit 6 to Curtis Miner's Declaration, #12 Exhibit Exhibit 7 to Curtis Miner's Declaration, #13 Exhibit Exhibit 8 to Curtis Miner's Declaration, #14 Exhibit Exhibit 9 to Curtis Miner's Declaration, #15 Exhibit Exhibit 10 to Curtis Miner's Declaration, #16 Exhibit Exhibit 11 to Curtis Miner's Declaration, #17 Exhibit Exhibit 12 to Curtis Miner's Declaration, #18 Exhibit Exhibit 13 to Curtis Miner's Declaration, #19 Exhibit Exhibit 14 to Curtis Miner's Declaration, #20 Exhibit Exhibit 15 to Curtis Miner's Declaration, #21 Exhibit Exhibit 16 to Curtis Miner's Declaration, #22 Exhibit Group Exhibit C to Motion, #23 Exhibit Group Exhibit D to Motion)(Miner, Curtis)

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UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
APPLE INC. and NeXT SOFTWARE,
INC. (f/k/a NeXT COMPUTER, INC.),
Plaintiffs,

v.
MOTOROLA, INC. and MOTOROLA
MOBILITY, INC.
Defendants.

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Case No. 10-CV-662-slc
JURY TRIAL DEMANDED

OPENING BRIEF IN SUPPORT OF DEFENDANTS' MOTION TO DISMISS OR TO
SEVER AND TRANSFER CLAIMS IN PLAINTIFFS' AMENDED COMPLAINT
BASED ON PATENTS AT ISSUE IN AN EARLIER-FILED DELAWARE ACTION

December 23, 2010

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TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .......................................................................................................... ii
INTRODUCTION ...........................................................................................................................1
SUMMARY OF ARGUMENT .......................................................................................................1
STATEMENT OF FACTS ..............................................................................................................4
ARGUMENT...................................................................................................................................7
I.

Plaintiffs' Claims Based on the Twelve Amended Complaint Patents Should Be
Dismissed Under the First-Filed Rule Pursuant to Fed. R. Civ. P. 12(b)(3) .......................7
A.
B.

II.

Motorola's Filing of the Motorola Delaware Action Did Not Provoke a
Race to the Courthouse ............................................................................................9
Motorola's Selection of Delaware Favors Judicial and Litigant Economy..............9

Alternatively, Plaintiffs' Claims Based on the Twelve Amended Complaint
Patents Should Be Severed and Transferred to the District of Delaware ..........................10
A.

Plaintiffs' Amended Complaint Patent Claims Are Severable Because
They Are Discrete and Separate From the Remaining Claims ..............................10

B.

Plaintiffs' Amended Complaint Patent Claims Should Be Transferred .................12
1.

Plaintiffs' Amended Complaint Patent Claims Could Have Been
Brought in Delaware ..................................................................................12

2.

The Plaintiffs' Choice of Forum Does Not Weigh Against Transfer.........12

3.

The Convenience to Parties Favors Transfer .............................................13

4.

The Convenience to Witnesses Favors Transfer........................................14

5.

The Interests of Justice Weigh Heavily in Favor of Transfer....................15

CONCLUSION..............................................................................................................................18

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TABLE OF AUTHORITIES
Page(s)

CASES
Broadcom Corp. v. Agere Systems, Inc.,
Civil Action No. 04-066, 2004 WL 1176168 (W.D. Wis. May 20, 1994) ....................... 15
Chicago, Rock Island and Pac. R.R. Co. v. Igoe,
220 F.2d 299 (7th Cir. 1955) ............................................................................................ 15
Coffey v. Van Dorn Iron Works,
796 F. 2d 217 (7th Cir. 1986) ........................................................................................... 12
Continental Grain Co. v. The Barge FBL-585,
364 U.S. 19 (1960)............................................................................................................ 18
Electronics for Imaging, Inc. v. Coyle,
394 F.3d 1341 (Fed. Cir. 2005)....................................................................................... 7, 8
Encyclopedia Britannica, Inc. v. Magellan Navigation, Inc.,
512 F. Supp. 2d 1169 (W.D. Wis. 2007) .................................................................... 15, 16
Gaffney v. Riverboat Serv. of Ind., Inc.,
451 F. 3d 424 (7th Cir. 2006) ........................................................................................... 11
Heller Fin., Inc. v. Midwhey Powder Co.,
883 F.2d 1286 (7th Cir. 1989) .......................................................................................... 18
Kraft Foods Holdings, Inc. v. Proctor & Gamble Co.,
Civil Action No. 07-613, 2008 WL 4559703 (W.D. Wis. Jan. 24, 2008) .................. 11, 16
Lineage Power Corp. v. Synqor, Inc.,
Civil Action No. 08-397, 2009 WL 90346 W.D. Wis. Jan. 13, 2009) ........... 13, 14, 15, 17
Micron Technology, Inc. v. Mosaid Technologies, Inc.,
518 F. 3d 897 (Fed. Cir. 2008)............................................................................................ 9
Nokia Corp. v. Apple Inc.,
C.A. No. 09-1002-GMS...................................................................................................... 5
Nokia Corp. v. Apple Inc.,
C.A. No. 09-791-GMS........................................................................................................ 5
Nokia Corp. v. Apple Inc.,
C.A. No. 10-249 (W.D. Wis.) ....................................................................................... 7, 10
Rudich v. Metro Goldwyn Mayer Studio,
Civil Action No. 08-389, 2008 WL 4691837 (W.D. Wis. Oct. 22, 2008).................. 13, 15

ii

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U.S.O. Corp. v. Mizuho Holding Co.,
547 F.3d 749 (7th Cir. 2008) ............................................................................................ 15
Uniroyal Engineered Prods., LLC v. Omnova Solutions Inc.,
Civil Action No. 08-586, 2009 WL 736700 (W.D. Wis. Mar. 19, 2009)......... 9, 10, 12, 15
Vanguard Products Group, Inc. v. Protex Int'l Corp.,
Civil Action No. 05-6310, 2006 WL 695700 (N.D. Ill. Mar. 14, 2006)............................. 7
Winner Int'l Royalty Corp. v. Wang,
202 F. 3d 1340 (Fed. Cir. 2000)........................................................................................ 12

STATUTES
28 U.S.C. § 1391(b) ...................................................................................................................... 12
28 U.S.C. § 1391(b)(1) ................................................................................................................. 12
28 U.S.C. § 1391(c) ...................................................................................................................... 12
U.S.C. § 1404(a) ............................................................................................................................. 1

RULES
Fed. R. Civ. P. 12(b)(3)................................................................................................................... 1
Fed. R. Civ. P. 21............................................................................................................................ 1

iii

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INTRODUCTION
Defendants Motorola Mobility, Inc. ("Motorola") and Motorola, Inc. ("MI") hereby move
to dismiss Counts IV through XV of Apple Inc.'s ("Apple's") and NeXT Software, Inc.'s
("NeXT's") Amended Complaint (D.I. 12) pursuant to Fed. R. Civ. P. 12(b)(3). Alternatively,
Defendants move to sever Counts IV through XV of the Amended Complaint and transfer these
claims to the District of Delaware pursuant to Fed. R. Civ. P. 21 and 28 U.S.C. § 1404(a).
SUMMARY OF ARGUMENT
Plaintiffs improperly seek to duplicate the adjudication of claims that are already the
subject of Defendants' first-filed action in Delaware. Apple's original complaint in this action
asserted three patents against Defendants (D.I. 1). That complaint was filed several weeks after
Motorola brought an action for a declaratory judgment against Apple and NeXT in the District of
Delaware on twelve patents ("the Motorola Delaware Action"). Nearly two months after the
Motorola Delaware Action was filed, Plaintiffs filed an Amended Complaint here (D.I. 12),
alleging infringement of the twelve patents ("the Amended Complaint Patents") already at issue
in the Motorola Delaware Action by the same products at issue in the Delaware action.
Plaintiffs' claims based on the Amended Complaint Patents should be dismissed on the
basis of the first-filed rule. Motorola filed the earlier declaratory judgment action in Delaware
because the twelve patents were already at issue in two actions pending in Delaware before
Judge Sleet (involving different defendants). Motorola's action was also assigned to Judge Sleet.
The interests of judicial economy and avoidance of inconsistent rulings are best served by having
the same judge hear infringement actions on the same patents involving similar technology (the
Android operating system platform used by Motorola, and at least some of the defendants, in the
Delaware actions involving the Amended Complaint Patents).
If the Court decides not to dismiss Plaintiffs' claims based on the Amended Complaint

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Patents, then severance of those claims and transfer to Delaware is appropriate. The three Apple
patents originally at issue here are generally directed to different technology than the Amended
Complaint Patents already at issue in Delaware.1 Specifically, the three original patents2 are
directed to high-level, user interface functionality – the '949 patent relates to interpreting a user's
touches on a touch-sensitive screen, while the '315 and '002 patents relate to different aspects of
a graphical user interface. Conversely, the twelve Amended Complaint Patents are directed to
unrelated, low-level functionality – eight of the twelve Amended Complaint Patents generally
relate to various low-level Operating System functionality,3 two relate to object-oriented
networking,4 one relates to detecting data structures in a document,5 and the last relates to objectoriented graphics.6 Because the original three patents relate to technology that is largely discrete
1

A separate action in this district between the parties here involves patents that are at
issue in pending ITC actions between the parties. As a result, the parties have jointly moved to
stay that action. (Joint Motion to Stay (Ex. 1).)
2

The three original Apple patents are entitled: "Touch Screen Device, Method, and
Graphical User Interface for Determining Commands by Applying Heuristics" (U.S. Patent No.
7,479,949 ("the '949 Patent")); "Method and Apparatus for Displaying and Accessing Control
and Status Information in a Computer System" (U.S. Patent 6,493,002 ("the '002 Patent")); and
"Support for Custom User-Interaction Elements in a Graphical, Event-Driven Computer system"
(U.S. Patent No. 5,838,315 ("the '315 Patent")).
3

U.S. Patent Nos. 6,424,354 ("Object-oriented Event Notification System with Listener
Registration of Both Interests and Methods"); 5,519,867 ("Object Oriented Multitasking
System"); 5,566,337 ("Method and Apparatus for Distributing Events in an Operating System");
5,915,131 (Method and Apparatus for Handling I/O Requests Utilizing Separate Programming
Interfaces to Access Separate I/O Services"); 5,969,705 ("Message Protocol for Controlling a
User Interface From an Inactive Application Program"); 6,275,983 ("Object-oriented Operating
System"); and 6,343,263 ("Real-time Signal Processing System for Serially Transmitted Data");
and 5,481,721 ("Method for Providing Automatic and Dynamic Translation of Object Oriented
Programming Language-based Message Passing into Operation System Message Passing Using
Proxy Objects").
4

U.S. Patent Nos. RE 39,486 ("Extensible, Replaceable Network Component System")
and 5,929,852 ("Encapsulated Network Entity Reference of a Network Component System").
5

U.S. Patent No. 5,946,647 ("System and Method for Performing an Action on a
Structure in Computer-generated Data").
6

U.S. Patent No. 5,455,599 ("Object Oriented Graphic System").
2

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and separate from that of the Amended Complaint Patents, the claims based on the Amended
Complaint Patents may be severed and transferred independently of the remaining claims, even if
the Court decides not to dismiss those claims altogether.7
Furthermore, Apple has argued inconsistently that other pending actions involving
patents and technology that overlap those at issue in Plaintiffs' Amended Complaint Patent
claims here should not be litigated in Wisconsin. In a pending patent infringement action against
Nokia in this district involving one of the Amended Complaint Patents, Apple has moved for
transfer to Delaware. Nokia Corp. v. Apple Inc., Civil Action No. 10-CV-249 (Apple Inc.'s
Mem. in Support of Motion to Transfer Venue to the District of Delaware Pursuant to 28 U.S.C.
§ 1404(a) ("Wisconsin Apple Nokia Transfer Mem.") (Ex. 2)). Apple's arguments on that
motion support transfer here. Apple asserted that the case "has no meaningful connection to the
Western District of Wisconsin," and made every effort to distance itself from this District,
arguing that Apple and Nokia had no relevant contacts with Wisconsin: "Apple does not
maintain any relevant offices in Wisconsin; it has no relevant employees in Wisconsin; and it has
no relevant documents or other evidence in Wisconsin." (Wisconsin Apple Nokia Transfer
Mem. (Ex. 2) at 1, 7.) Apple also argued that a pending, earlier-filed Delaware action on the
same patents supported transfer to Delaware:
There can be no genuine dispute, especially in light of Nokia's previously-filed
litigation in the District of Delaware, that the District of Delaware is a clearly
more convenient forum for the parties and the witnesses (including the
overlapping third-party witnesses). Transfer would likewise serve the interests of
justice by avoiding duplicative litigation and potentially conflicting rulings, and
by facilitating consolidation of these related cases.

7

Motorola has also filed counterclaims here against Apple for infringement of six of its
own patents by Apple’s products. (D.I. 5.) The Amended Complaint Patents do not relate to
either the original patents asserted by Apple or the patents asserted by Motorola in its
counterclaims. It is more efficient under the transfer analysis to litigate Apple’s unrelated
Amended Complaint Patents in Delaware, where litigation on those patents is already pending.
3

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(Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 1-2.) The same is true here.
Similarly, Apple and NeXT opposed transfer of actions they filed in Delaware involving
the Amended Complaint Patents (asserted against a different group of defendants) to the
Northern District of California (where Apple is located) on the grounds that different judges
should not "separately (and potentially inconsistently) decide common issues of fact and law."
(Apple Inc. and NeXT Software, Inc.'s Opposition to Defendants' Motion to Transfer Venue
Pursuant to 28 U.S.C. § 1404 ("Delaware Apple HTC Transfer Opp.") (Ex. 3) at 1.) Apple and
NeXT asserted that the cases should be handled by the same judge currently presiding over
Motorola's Delaware declaratory judgment action concerning the Amended Complaint Patents
(Judge Sleet) (Delaware Apple HTC Transfer Opp. (Ex. 3) at 1, 4.)
In light of their willingness to avail themselves of the District of Delaware when it suits
their litigation strategy, Plaintiffs should not be permitted to create duplicative litigation in this
district in an effort to thwart Motorola's appropriate choice of forum and create the potential for
inconsistent rulings on twelve patents. Plaintiffs' Amended Complaint Patent claims are more
appropriately litigated in Delaware.
STATEMENT OF FACTS
The key facts are not disputed. Motorola's Delaware Action is the first-filed action
between Motorola and Plaintiffs on the Amended Complaint Patents. After Motorola initiated
the Motorola Delaware Action on October 8, 20108 seeking a declaratory judgment on the twelve
Amended Complaint Patents, Apple filed this action on October 29, 2010 asserting three
different patents against Motorola. (D.I. 1.) More than a month later, on December 2, 2010,
Apple and NeXT filed an Amended Complaint adding allegations of infringement of the twelve
Amended Complaint Patents to its original complaint. (D.I. 12.) The Amended Complaint
8

Motorola served Apple and NeXT on October 13, 2010. (Notice of Mailing (Ex. 4).)
4

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Patents are asserted against the same products here and in the Motorola Delaware Action,
namely, the Droid, Droid 2, Droid X, Cliq, Cliq XT, BackFlip, Devour A555, il, and Charm
products. (See, e.g., Delaware Motorola Complaint (Ex. 5) ¶ 14); D.I. 12 ¶ 8).) In short,
Plaintiffs decided to assert the Amended Complaint Patents against Motorola here after the
validity and infringement of those patents had already been challenged by Motorola in
Delaware.
It also cannot be disputed that Apple and NeXT have sought and are seeking to enforce
the twelve Amended Complaint Patents against other parties in co-pending actions in Delaware
involving products based on the same technology at issue here, namely, mobile phones
incorporating the Android platform. (Delaware Motorola Complaint (Ex. 5) ¶¶ 6-7; Delaware
Apple HTC Complaint I (Ex. 6) ¶ 15; Delaware Apple HTC Complaint II (Ex. 7) ¶ 13.) On
March 2, 2010, Apple and NeXT sued HTC Corp., HTC (B.V.I.) Corp., HTC America, Inc., and
Exedea, Inc. for infringement of ten of the twelve Amended Complaint Patents in Delaware.
Apple Inc., NeXT Software, Inc. f/k/a/ NeXT Computer, Inc. v. High Tech Computer Corp., a/k/a
HTC Corp., HTC (B.V.I.) Corp., HTC America, Inc., and Exedea, Inc., C. A. No. 10-166-GMS
(D. Del.) (Delaware Apple HTC Complaint I (Ex. 6) ¶ 7)). On that same day, Apple sued the
same defendants for infringement of the remaining two Amended Complaint Patents in
Delaware. Apple Inc. v. High Tech Comp. Corp., a/k/a/ HTC Corp., HTC (B.V.I.) Corp., HTC
America, Inc., Exedea, Inc., C.A. No. 10-167-GMS (D. Del.) (Delaware Apple HTC Complaint
II (Ex. 7) ¶ 6)) (with C.A. 10-166, "the HTC Actions").
Furthermore, in two additional Delaware actions, Nokia Corp. v. Apple Inc., C.A. No. 091002-GMS (D. Del.), and Nokia Corp. v. Apple Inc., C.A. No. 09-791-GMS (D. Del.), Apple
asserted a total of seven of the Amended Complaint Patents by counterclaim. (Apple Inc.'s
Answer, Defenses, and Counterclaims ("Delaware Nokia Apple Counterclaims I") (Ex. 8) ¶¶ 58,
5

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64, 70, 82, 88, 94, 100; ("Delaware Nokia Apple Counterclaims II") (Ex. 9) ¶¶ 200, 206, 242).)
The 09-1002 action is currently stayed pending an ITC proceeding. (Stay Order (Ex. 10).)
All four of these actions involving these Apple patents are assigned to the same Delaware
judge, Chief Judge Sleet.
Importantly, in the HTC Actions, Apple and NeXT opposed a motion by the defendants
to transfer to the Northern District of California, where Apple is located, arguing that "[l]ike
HTC, Apple is capable of litigating cases on the East Coast." (Delaware Apple HTC Transfer
Opp. (Ex. 3) at 13.) Apple and NeXT argued in opposing transfer that, based on the pending
Nokia cases in Delaware involving some of the same patents and issues, transfer would be
wasteful and inefficient:
These four cases share numerous overlapping patents and thus share numerous
identical issues of fact and law. For example, both sets of cases will involve
construction of a number of identical patent claims, a number of the same fact
witnesses will need to testify in both cases, and a number of the same experts will
provide reports and testimony involving issues of infringement and validity of the
overlapping patents. Sending these cases to another District would, as the
Supreme Court has noted, be wasteful and inefficient . . . . . Rather than transfer
the two present cases out of this District—so that different judges on opposite
ends of the country will separately (and potentially inconsistently) decide
common issues of fact and law—these cases should be consolidated with the
related Delaware actions before the same judge.
(Delaware Apple HTC Transfer Opp.(Ex. 3) at 1 (internal citation omitted).) Apple and
NeXT noted that "the convenience of the parties and the interests of judicial economy
both would best be served by keeping these actions in the District of Delaware" before a
single judge "[e]ven if these cases are not consolidated." (Delaware Apple HTC Transfer
Opp. (Ex. 3) at 2.)9

9

The District of Delaware denied Apple's motion to consolidate but noted that if "the
parties have claim construction disputes regarding claims that are asserted both in C.A. No. 10167 (Apple, Inc. v. High Tech Computer Corp.) and in C.A. No. 09-971 (Nokia Corporation v.
Apple, Inc.), the court will hear those claim construction arguments at the Markman hearing for
6

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Apple is also currently seeking to transfer a patent infringement action filed against it by
Nokia in this Court to Delaware. Nokia Corp. v. Apple Inc., C.A. No. 10-249 (W.D. Wis.) (the
"Nokia Wisconsin Action") (Wisconsin Apple Nokia Transfer Mem. (Ex. 2)). This action
involves one of the twelve Amended Complaint Patents at issue here, U.S. Patent No. 5,946,647.
(Apple Inc.'s Answer, Defenses, and Counterclaims to Nokia's First Amended Complaint (Ex.
12) Counterclaim ¶ 2.) In its June 29, 2010 memorandum in support of its transfer motion,
Apple told this Court that it has no "meaningful relationship with the Western District of
Wisconsin . . . . Apple Inc. is a California corporation with its principal place of business in
Cupertino, California; it has no corporate offices or research facilities in Wisconsin."
(Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 7.) That motion is still pending.
ARGUMENT
I.

Plaintiffs' Claims Based on the Twelve Amended Complaint Patents Should Be
Dismissed Under the First-Filed Rule Pursuant to Fed. R. Civ. P. 12(b)(3)
Plaintiffs' Amended Complaint Patent claims should be dismissed under the first-filed

rule pursuant to Fed. R. Civ. P. 12(b)(3). See, e.g., Vanguard Products Group, Inc. v. Protex
Int'l Corp., Civil Action No. 05-6310, 2006 WL 695700 (N.D. Ill. Mar. 14, 2006) (dismissing
infringement action pursuant to Fed. R. Civ. P. 12(b)(3) on the basis of the first-filed rule in
favor of earlier-filed declaratory judgment action). Federal Circuit law governs the
determination whether a court should decline jurisdiction over a patent declaratory judgment
action in favor of a later-filed patent infringement action. See, e.g., Electronics for Imaging, Inc.
v. Coyle, 394 F.3d 1341, 1345-46 (Fed. Cir. 2005) (stating that Federal Circuit law applies to the
"question whether to accept jurisdiction in an action for a declaration of patent rights in view of a
later-filed suit for patent infringement").
C.A. No. 09-971, currently scheduled for May 16, 2011." (Delaware Apple HTC Order re
Consolidation (Ex. 11) at 1 n.2).)
7

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Federal Circuit precedent strongly favors application of the first-filed rule here and
dismissal of Plaintiffs' Amended Complaint Patent claims in favor of Motorola's first-filed
Delaware declaratory judgment action. The Federal Circuit has expressly held that the first-filed
rule is equally applicable when the first-filed action is a declaratory judgment action. See, e.g.,
Electronics for Imaging, 394 F. 3d at 1348 (reversing district court's dismissal of first-filed
declaratory judgment action and stating that "[t]he considerations affecting transfer to or
dismissal in favor of another forum do not change simply because the first-filed action is a
declaratory action").
In Electronics for Imaging, the district court dismissed the first-filed declaratory
judgment action on the grounds that it was filed in anticipation of an impending infringement
action. The district court viewed the filing of the declaratory judgment action as prompting a
"race to the courthouse." Id. at 1347. The Federal Circuit reversed the district court's dismissal
of the declaratory judgment, finding that the court "abused its discretion in its dismissal order by
focusing on the anticipatory nature of the suit." Id. The Federal Circuit stated that the first-filed
rule applies "unless considerations of judicial and litigant economy, and the just and effective
disposition of disputes, requires otherwise." Id. The Federal Circuit further explained that
although courts may consider whether the filing of a declaratory judgment action prompted a
"race to the courthouse," this consideration is "merely one factor in the analysis." Id. Other
factors include "the convenience and availability of witnesses, or absence of jurisdiction over all
necessary or desirable parties, or the possibility of consolidation with related litigation, or
considerations relating to the real party in interest." Id. at 1348 (internal quotations and citation
omitted). The first-filed rule applies in the absence of "sound reason that would make it unjust
or inefficient to continue the first-filed action." Id. at 1347 (internal quotations and citations
omitted).
8

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A.

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Motorola's Filing of the Motorola Delaware Action Did Not Provoke a Race
to the Courthouse

The facts demonstrate that Motorola's filing of the Motorola Delaware Action did not
provoke a race to the courthouse. It is beyond dispute that, several weeks after Motorola filed
the Delaware action, Apple brought suit in this Court for three different patents against Motorola
but did not at that time assert the Amended Complaint Patents. It is similarly beyond dispute that
Plaintiffs did not assert the Amended Complaint Patents in this Court until nearly two months
after Motorola filed the Delaware action, when they filed their Amended Complaint. There was
no race to the courthouse here. Cf. Uniroyal Engineered Prods., LLC v. Omnova Solutions Inc.,
Civil Action No. 08-586, 2009 WL 736700, at *3-5 (W.D. Wis. Mar. 19, 2009) (declining to
dismiss action pursuant to the first-filed rule on the grounds that "[a] race to the courthouse
appears to be exactly what happened in this case, with defendant filing its action two days after
plaintiff first initiated its filing here," but transferring case pursuant to application of transfer
factors); Micron Technology, Inc. v. Mosaid Technologies, Inc., 518 F.3d 897, 904 (Fed. Cir.
2008) (stating that "where the two actions were filed almost simultaneously, this court detects
that the transfer analysis essentially mirrors the considerations that govern whether the California
court could decline to hear the case").
B.

Motorola's Selection of Delaware Favors Judicial and Litigant Economy

Furthermore, consideration of the other factors the Federal Circuit set out as relevant to
the first-to-file analysis demonstrates that the first-to-file rule requires dismissal of Plaintiffs'
Amended Complaint Patent claims in this district. The pendency of four related cases in
Delaware involving the same patents and underlying technology strongly supports litigation of
the present dispute between Motorola and Plaintiffs on the Amended Complaint Patents in
Delaware, rather than in this Court because it permits consolidation and coordination of issues

9

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common to all the actions.
In fact, Apple itself is currently moving to transfer an action involving one of the
Amended Complaint Patents at issue here from this Court to Delaware on the basis of the
pendency of the related Delaware actions. Nokia Corp. v. Apple Inc., Civil Action No. 10-249
(Wisconsin Apple Nokia Transfer Mem. (Ex. 2)). In its motion to transfer, Apple argued:
litigating all cases in the same forum will facilitate coordination of the practical
aspects of discovery, thereby reducing duplicative efforts and preserving the
resources of the courts and parties and facilitating the resolution of any discovery
disputes. Similarly, the parties and the courts will benefit from litigating diputes
before a court that is familiar with the parties, their products, and the essential
technology.
(Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 15.) By Apple's own reasoning, Motorola's
selection of Delaware was wholly appropriate from the standpoint of judicial and litigant
economy. Plaintiffs' Amended Complaint Patent claims should therefore be dismissed.
II.

Alternatively, Plaintiffs' Claims Based on the Twelve Amended Complaint Patents
Should Be Severed and Transferred to the District of Delaware
In Uniroyal, this Court declined to dismiss an action pursuant to the first-filed rule but

transferred the action after consideration of the convenience factors of 28 U.S.C. § 1404(a). See
Uniroyal, 2009 WL 736700, at *1. Because the parties were involved in a declaratory judgment
action in another forum concerning the patent at issue, this Court found that "the likely result of
transfer will be that the two cases will be consolidated and both judicial and litigant resources
will be saved." Id. Here, severance and transfer of Plaintiffs' Amended Complaint Patent claims
to Delaware would be similarly appropriate, in view of the prospects for consolidation or
coordination with the currently pending Delaware actions involving the same patents.
A.

Plaintiffs' Amended Complaint Patent Claims Are Severable Because They
Are Discrete and Separate From the Remaining Claims

According to Seventh Circuit precedent, severance of claims pursuant to Fed. R. Civ. P.
21 is appropriate where the claims are "discrete and separate." See, e.g., Gaffney v. Riverboat
10

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Serv. of Ind., Inc., 451 F.3d 424, 442-43 (7th Cir. 2006) (finding severance of claims by district
court appropriate where the claims were "clearly independent" of each other); Kraft Foods
Holdings, Inc. v. Proctor & Gamble Co., Civil Action No. 07-613, 2008 WL 4559703 (W.D.
Wis. Jan. 24, 2008) (severing plaintiff's infringement claim relating to one patent from
defendant's infringement counterclaim and third party claim relating to a different patent). In
Gaffney, the Seventh Circuit stated that two claims are "discrete and separate" where one claim is
"capable of resolution despite the outcome of the other claim." Gaffney, 451 F.3d at 442.
In Kraft, Procter & Gamble ("P&G") sued Kraft in the Northern District of California for
infringement of a P&G patent ("the '418 Patent") by a particular Kraft coffee container product.
Kraft subsequently filed an action in this Court alleging that a P&G coffee container product
infringed a Kraft patent ("the '443 Patent"). P&G then answered, counterclaimed, and asserted a
third party claim for infringement of a related patent ("the '419 Patent") by the Kraft coffee
container products at issue in the California action. This Court granted Kraft's motion to sever
P&G's counterclaim and third party claim and transfer them to the Northern District of
California. Regarding severance, this Court reasoned that severance was appropriate because
Kraft's infringement claim could be resolved regardless of the outcome of P&G's infringement
claim. See Kraft, 2008 WL 4559703, at *3. This Court further reasoned that "[i]n fact, it is
possible that Kraft's coffee container could infringe the '419 patent and that P&G's coffee
container could infringe the '443 patent as well." Id.
Similarly, Plaintiffs' claims of infringement of the three original patents in this action
(D.I. 1 ¶¶ 8-10) and Defendants' counterclaims of infringement of six additional patents (D.I. 5
Counterclaim ¶ 27) are discrete and separate from Plaintiffs' Amended Complaint Patent
infringement claims (D.I. 12 ¶¶ 12-23). Because resolution of these claims in no way turns on
resolution of the Amended Complaint Patent claims, severance of those claims is permissible.
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B.

Filed: 12/23/10 Page 16 of 23

Plaintiffs' Amended Complaint Patent Claims Should Be Transferred

Decisions regarding transfer of patent actions are governed by the law of the regional
circuit. See, e.g., Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1352 (Fed. Cir. 2000)
(applying law of regional circuit in upholding district court's denial of transfer motion). Transfer
pursuant to 28 U.S.C. § 1404(a) is appropriate if the transferee district is one in which the action
might have been brought initially. See Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th
Cir. 1986). If this threshold condition is met, the transfer analysis requires a court to consider
whether transfer serves the convenience of the parties and witnesses and will promote the
interests of justice. See Uniroyal, 2009 WL 736700, at *3; Coffey, 796 F.2d at 219 n.3, 219-20.
Relevant factors in this determination are: (1) the plaintiff's choice of forum; (2) the
convenience to parties; (3) the convenience to witnesses; and (4) the interests of justice. See id.
1.

Plaintiffs' Amended Complaint Patent Claims Could Have Been
Brought in Delaware

Pursuant to 28 U.S.C. § 1391(b), venue is proper in a judicial district where any
defendant resides, if all defendants reside in the same state. 28 U.S.C. § 1391(b)(1). Pursuant to
28 U.S.C. § 1391(c), a corporation is deemed to reside in any judicial district in which it is
subject to personal jurisdiction at the time the action was commenced. 28 U.S.C. § 1391(c).
Because both Motorola and MI are Delaware corporations (Declaration of William P. Alberth Jr.
in Support of Defendants' Motion to Dismiss or, in the Alternative, to Transfer Venue ("Alberth
Dec.") ¶¶ 4-5 filed concurrently herewith), there is no dispute that Plaintiffs' Amended
Complaint Patent claims could have been brought against Motorola and MI in Delaware.
2.

The Plaintiffs' Choice of Forum Does Not Weigh Against Transfer

Apple's choice to litigate the Amended Complaint Patent claims in this Court deserves no
weight because Apple is not litigating in its home forum. See, e.g., Uniroyal, 2009 WL 736700,
at *3 (stating that a plaintiff's choice of forum deserves deference "only when a plaintiff is
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Filed: 12/23/10 Page 17 of 23

litigating in his home forum"); Lineage Power Corp. v. Synqor, Inc., Civil Action No. 08-397,
2009 WL 90346, at *5 (W.D. Wis. Jan. 13, 2009); Rudich v. Metro Goldwyn Mayer Studio, Civil
Action No. 08-389, 2008 WL 4691837 at *4 (W.D. Wis. Oct. 22, 2008). Apple argued in its
motion in Nokia Corp. v. Apple Inc. to transfer from this Court to Delaware that it has no
connection to this district and that "[t]his complete lack of connection to Wisconsin 'militates
toward transfer.'" (Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 10.)
3.

The Convenience to Parties Favors Transfer

Delaware is the more convenient forum for both parties as a result of the pendency of the
related Delaware actions involving the Amended Complaint Patents. As Apple argued in its
motion to transfer from this Court to Delaware in Nokia Corp. v. Apple Inc.:
The District of Delaware is a clearly more convenient forum because the parties
are already conducting related litigation in that district. The parties and their
principal lawyers will be litigating in the District of Delaware regardless of where
this case proceeds.
(Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 11 (footnotes omitted).) The convenience of
the parties also favors Delaware because Defendants are both Delaware corporations and Apple
has a physical presence in Delaware. Defendants have no facilities located in Wisconsin.
(Alberth Dec. ¶ 9; Declaration of Michael Romie in Support of Defendants' Motion to Dismiss
or, in the Alternative, to Transfer Venue ("Romie Dec.") ¶ 3, filed concurrently herewith.) Apple
does not dispute that it has a retail store in Newark, Delaware. (Delaware Apple HTC Transfer
Opp. (Ex. 3) at 5.) By Apple's own admission, Apple does not have "any meaningful
relationship with the Western District of Wisconsin" and "has no corporate offices or research
facilities in Wisconsin." (Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 7.) As Apple has
argued in opposing transfer of the HTC actions out of Delaware, "Apple is capable of litigating
cases on the East Coast." (Delaware Apple HTC Transfer Opp. (Ex. 3) at 13.)

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Filed: 12/23/10 Page 18 of 23

In its motion to transfer the Nokia v. Apple action from this district to Delaware, Apple
argued that:
Nokia cannot deny that the District of Delaware is a convenient forum. Indeed,
Nokia made the choice to litigate this ongoing business dispute between Nokia
and Apple in the District of Delaware—where its U.S. subsidiary, Nokia Inc. is
incorporated—by filing its first two lawsuits against Apple in that forum.
(Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 8.) Similarly, Apple has chosen to litigate the
Amended Complaint Patents in Delaware by filing two infringement actions against HTC in that
forum. (Delaware Apple HTC Complaint I (Ex. 6) and II (Ex. 7).)
4.

The Convenience to Witnesses Favors Transfer

Delaware is the more convenient forum for witnesses that will appear in Delaware in one
or more of the related actions. Apple argued in its Nokia Corp. v. Apple Inc. transfer motion that
Delaware was more convenient because "many of the witnesses will be appearing in the District
of Delaware regardless of where this case proceeds" and "because consolidation permits
effective coordination and can eliminate the need for duplicative appearances of both the parties
and the witnesses." (Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 11.)
As this Court stated in Lineage Power, in granting a motion to transfer a second-filed suit
to a forum where two related suits were pending, "[t]o the extent that this third-filed lawsuit can
plug into the discovery process currently occurring in the [transferee forum] lawsuits, it is
possible to save some witnesses time and money by consolidating their depositions, affidavits
and other evidentiary input, whereas such economies would be elusive or nonexistent if
witnesses were in play" both in the transferor and transferee fora. Lineage Power, 2009 WL
90346, at *6.
Relevant employees and documents of Defendants will be equally available in Delaware
and Wisconsin. (Alberth Dec. ¶¶ 6-8.) The products at issue are not and have not been

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Filed: 12/23/10 Page 19 of 23

manufactured in Wisconsin, and no research or testing of these products took place in Wisconsin.
(Id. ¶ 7.) None of Defendants' third-party manufacturers are located in Wisconsin and
Defendants are not aware of any third-party witnesses or third-party documents located in
Wisconsin. (Id. ¶ 8.)
As Apple argued in its motion to transfer the Nokia v. Apple action from this district to
Delaware:
neither Apple nor Nokia has "any connection to this district," … and it is highly
unlikely that any relevant fact witness resides or is employed in Wisconsin. This
complete lack of connection to Wisconsin "militates toward transfer." Lineage
Power Corp., 2009 WL 90436, at *5; see also, e.g., U.S.O. Corp. v. Mizuho
Holding Co., 547 F.3d 749, 753 (7th Cir. 2008) ("The more tenuous a party's
relation to the forum, the weaker the case for litigating there."); cf. Chicago, Rock
Island and Pac. R.R. Co. v. Igoe, 220 F.2d 299, 304 (7th Cir. 1955) ("this factor
has minimal value where none of the conduct complained of occurred in the
forum selected by the plaintiff.").
(Wisconsin Apple Nokia Transfer Mem. (Ex. 2) at 11 (record citations omitted).)
5.

The Interests of Justice Weigh Heavily in Favor of Transfer

This Court has repeatedly stated that "[t]he interests of justice may be determinative in a
particular case," Uniroyal, 2009 WL 736700, at *4, and that "judicial economy may be
dispositive in determining whether the interests of justice warrant transfer." Encyclopedia
Britannica, Inc. v. Magellan Navigation, Inc., 512 F. Supp. 2d 1169, 1177 (W.D. Wis. 2007)
(granting motion to transfer to district where related infringement suits were pending); see also
Broadcom Corp. v. Agere Systems, Inc., Civil Action No. 04-066, 2004 WL 1176168, at *3
(W.D. Wis. May 20, 1994) (granting motion to transfer patent infringement action on grounds
that a related case was pending in the transferee forum and noting the transferee forum's
"familiarity with the general technology behind the patents at issue" and the possibility of
consolidation); Rudich, 2008 WL 4691837, at *6 (granting transfer on the grounds that the
"interest of justice factor tips the scale in favor of transfer" where defendant had filed a related
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Filed: 12/23/10 Page 20 of 23

case in the transferee forum so that consolidation was likely and "judicial economy favors
facilitating such consolidation").
In Uniroyal, this Court granted a motion to transfer a second-filed infringement action to
the venue of the first-filed declaratory judgment action on the grounds that transfer "is very
likely to lead to a consolidation of lawsuits." Id. This Court reasoned that that the declaratory
judgment action "is a mirror image of [the] infringement action" that "concerns the same parties
and the same patent." Id. As a result, transfer would not only conserve judicial resources but
also "avoid the possibility that two courts could reach inconsistent rulings on claim
constructions, dispositive motions, and verdicts." Id.; see also Encyclopedia Britannica, 512 F.
Supp. 2d at 1177 (noting that litigation of the dispute in two different fora would present the
"risk that the same patents will be interpreted differently creating inconsistent claim construction
rulings, piecemeal litigation, and inconsistent judgments"). As this Court stated in Encyclopedia
Britannica:
the facts and circumstances weigh heavily in favor of transfer to conserve judicial
resources through consolidation. First, practicality of consolidation supports the
Court's expectation that this case would be consolidated with [either of the two
cases pending in the transferee forum]. All three cases involve common questions
of law and fact concerning the three related patents and the alleged infringement.
Id.
In Kraft, this Court severed the claims in the second-filed action and transferred those
claims to the forum of the first-filed action where related claims were pending. This Court found
that the "interests of justice factor is determinative in this case" and that "[t]he interests of justice
analysis involves the consideration of factors relating to the efficient administration of the court
system." Kraft, 2008 WL 4559703, at *3-4 (internal quotations and citations omitted). This
Court concluded:

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Filed: 12/23/10 Page 21 of 23

[t]ransfer and consolidation of actions involving common questions of law or fact
support judicial economy and favor transfer in the interests of justice. The facts
and circumstances surrounding P&G's counterclaim and third party claim for
infringement of the '419 patent weigh heavily in favor of transfer to conserve
judicial resources through consolidation….
Id. at *4. In Kraft, there were common questions of law and fact between the severed and
transferred action and the first-filed action because each action involved the same potentially
infringing product. Id. at *4-5. Transfer was also favored because it would eliminate the risk of
inconsistent claim construction and inconsistent judgments. Id.
In Lineage Power, this Court found the interests of justice weighed heavily in favor of
transfer where there was a "concrete overlap between the technology and the patents" in the
second-filed and first-filed cases. Lineage Power, 2009 WL 90346, at *6. Because the
transferee court was already familiar with the technology at issue, "that court incurs only a small
marginal cost to use that knowledge to preside simultaneously over a third [related] case." Id.
These considerations apply in full force here, where four related actions in addition to
Motorola's Delaware declaratory judgment action are pending in Delaware. All twelve of the
Amended Complaint Patents are involved in the HTC Delaware Actions (Delaware Apple HTC
Complaint I (Ex. 6) ¶ 7); Delaware Apple HTC Complaint II (Ex. 7) ¶ 6)), and seven of the
twelve are involved in the Nokia Delaware Actions (Delaware Nokia Apple Counterclaims I (Ex.
8) ¶¶ 58, 64, 70, 82, 88, 94, 100; Delaware Nokia Apple Counterclaims II (Ex. 9) ¶¶ 200, 206,
242). These actions involve accused products that share the same accused technology so that
numerous common questions of law and fact exist and the potential for inconsistent rulings in the
absence of coordination or consolidation is significant.
As Apple itself recognized in its motion to transfer in from this district to Delaware in
Nokia Corp. v. Apple Inc.:

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Filed: 12/23/10 Page 22 of 23

[t]he benefits of consolidation are particularly important in complex patent cases,
where consolidation "reduce[s] the need for duplicative time-consuming
[technological] tutorials" necessary for both the Court and the jury to understand
the issues in dispute.
(Ex. 2 at 14 (citation omitted).) In that motion, Apple argued in every possible manner that the
interests of justice strongly favored transfer:
•

[t]ransfer would likewise serve the interests of justice by avoiding duplicative
litigation and potentially conflicting rulings…. As the Supreme Court has made
clear, litigating the same issues in multiple cases across different district courts
inevitably "leads to the wastefulness of time, energy and money that [28 U.S.C.] §
1404(a) was designed to prevent. Continental Grain Co. v. The Barge FBL-585,
364 U.S. 19, 26 (1960). (Ex. 2 at 2.)

•

[o]ne of the most important factors in assessing the "interests of justice" is
whether transfer would permit related litigation to proceeding the same district.
See Heller Fin., Inc. v. Midwhey Powder Co., 883 F.2d 1286 (7th Cir. 1989)
("[t]he 'interest[s] of justice' include such concerns as ensuring speedy trials,
trying related litigation together, and having a judge who is familiar with the
applicable law try the case.") (Ex. 2 at 12.)

•

even without full consolidation, litigating all cases in the same forum will
facilitate coordination of the practical aspects of discovery, thereby reducing
duplicative efforts and preserving the resources of the courts and parties and
facilitating the resolution of any discovery disputes. Similarly, the parties and the
courts will benefit from litigating disputes before a court that is familiar with the
prties, their products, and the essential technology. (Ex. 2 at 15 (citations
omitted.))

All of these assertions by Apple support transfer here.
CONCLUSION
For the foregoing reasons, Defendants respectfully request that the Court grant their
motion to dismiss or sever and transfer to Delaware Plaintiffs' Amended Complaint Patent
claims.

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Case: 3:10-cv-00662-bbc Document #: 29

Filed: 12/23/10 Page 23 of 23

Respectfully submitted this 23rd day of December, 2010.

Edward J. DeFranco*
[e-mail]
Alexander Rudis*
[e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Ave., 22nd Floor
New York, NY10010
Telephone: [phone]
Facsimile: [phone]

David A. Nelson*
[e-mail]
Jennifer A. Bauer*
[e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
500 West Madison Street, Suite 2450
Chicago, Ill 60661
Telephone: [phone]
Facsimile: [phone]

s/ Rebecca Frihart Kennedy
Scott W. Hansen (SBN1017206)
[e-mail]
Lynn M. Stathas (SBN 1003695)
[e-mail]
Rebecca Frihart Kennedy (SBN 1047201)
[e-mail]
Reinhart, Boerner, Van Deuren, S.C.
22 East Mifflin Street
Madison, WI 53703-4220
Telephone: [phone]
Facsimile: [phone]
Charles K. Verhoeven*
[e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

Kevin P.B. Johnson*
[e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
* Motion for Pro Hac Vice Admission
Pending
Attorneys for Defendants Motorola, Inc. and
Motorola Mobility, Inc.

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