Motorola Mobility, Inc. v. Microsoft Corporation

Filing 74

RESPONSE in Opposition re #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 filed by Motorola Mobility, Inc.. (Attachments: #1 Exhibit, #2 Exhibit, #3 Exhibit, #4 Exhibit, #5 Exhibit, #6 Exhibit, #7 Exhibit, #8 Exhibit, #9 Exhibit, #10 Exhibit, #11 Exhibit, #12 Exhibit, #13 Exhibit, #14 Exhibit, #15 Exhibit, #16 Exhibit, #17 Exhibit, #18 Exhibit, #19 Exhibit, #20 Exhibit, #21 Exhibit, #22 Exhibit, #23 Exhibit, #24 Exhibit, #25 Exhibit, #26 Exhibit, #27 Exhibit, #28 Affidavit, #29 Affidavit, #30 Affidavit)(Giuliano, Douglas)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10-24063-CIV-MORENO
MOTOROLA MOBILITY, INC.,
Plaintiff / Counterclaim Defendant,
v.
MICROSOFT CORPORATION,
Defendant / Counterclaim Plaintiff.
/

MOTOROLA MOBILITY, INC.’S OPPOSITION TO
DEFENDANT/COUNTERCLAIM PLAINTIFF’S MOTION TO TRANSFER

TABLE OF AUTHORITIES
Cases

Page(s)

Carrizosa v. Chiquita Brands Intern., Inc.,
No. 07-60821, 2007 WL 3458987 (S.D. Fla. November 14, 2007) ........................................11
Geltech Soln’s, Inc. v. Marteal, Ltd.,
No. 09-81027, 2010 WL 1791423 (S.D. Fla. May 5, 2010) ......................................................9
Global Innovation Tech. Holdings, LLC v. Acer Am. Corp.,
634 F. Supp. 2d 1346 (S.D. Fla. 2009) ..................................................................................8, 9
In re Wyeth,
406 Fed. Appx. 475 (Fed. Cir. 2010) .........................................................................................9
Ivax Corp. v. B. Braun of Am., Inc.,
No. No. 00-4909-CIV, 2001 WL 253253 (S.D. Fla. Feb. 28, 2001) .......................................15
Manuel v. Convergys Corp.,
430 F.3d 1132 (11th Cir. 2005) .................................................................................................9
Mason v. Smithkline Beecham Clinical Labs.,
146 F. Supp. 2d 1355 (S.D.Fla. 2001) ...............................................................................12, 14
Motorola Mobility, Inc. v. Apple Inc.
No. 10-cv-23580, Order on Motion to Transfer Venue .................................................... 16, 17
Omega Patents, LLC v. Lear Corp.,
No. 07-1422, 2009 WL 1513392 (M.D. Fla. Jan. 23, 2009)....................................................12
Peteet v. Dow Chemical Co.,
868 F.2d 1428 (5th Cir. 1989) ...................................................................................................9
Promex, LLC v. Perez Distrib. Fresno, Inc.,
No. 09-22285, 2010 WL 3452341 (S.D. Fla. Sept. 1, 2010) (Moreno, J.) ..............................12
Robinson v. Giarmarco & Bill, P.C.,
74 F.3d 253 (11th Cir. 1996) .........................................................................................8, 11, 13
Steifel Labs., Inc. v. Galderma Labs., Inc.,
588 F. Supp. 2d 1336 (S.D. Fla. 2008) ..............................................................................13, 15
RULES & STATUTES
Wright & Miller § 1424 .................................................................................................................12
28 U.S.C. § 1404 ..............................................................................................................................1
i

Plaintiff Motorola Mobility, Inc. (“Motorola”) opposes defendant/counterclaim plaintiff
Microsoft Corporation’s (“Microsoft”) Motion to Transfer this action to the Western District of
Washington (D.E. 62).
I.

INTRODUCTION
Microsoft’s motion – filed more than six months after the filing of Motorola’s Complaint,

five months after Microsoft filed its own permissive counterclaims, and mere weeks before
discovery closes – does not genuinely seek transfer based on convenience or in the interest of
justice, as required by 28 U.S.C. § 1404. If convenience or the interest of justice truly mattered,
Microsoft would have moved to transfer months ago. Indeed, Microsoft did precisely that in
other patent actions pending between the parties filed at nearly the same time as this action. But
rather than promptly seeking transfer as it did in those other cases, Microsoft embraced this
District, alleging infringement of seven of its own patents as permissive counterclaims.
The delay in filing this motion is inexcusable – the relevant circumstances of this case are
exactly what they were when this case was filed.

Indeed, Microsoft participated in the

preparation of pretrial scheduling reports and a motion to modify the same (D.E. 49), all the
while never indicating to either Motorola or the Court that it intended to seek transfer of this
action. And, Microsoft in its motion offers no explanation for why it delayed seeking transfer –
presumably because none exists. In light of Microsoft’s timely transfer motions in the other
cases between the parties and its unjustifiable delay in seeking transfer here, the motivation for
its belated motion is clear: delay the fast-approaching October 24, 2011 trial date and forum
shop for a jurisdiction that it believes will be favorable to it. These are not legitimate purposes
for a motion to transfer.
But, regardless of Microsoft’s purpose in filing this motion, Microsoft has failed to show
that transfer is warranted. When applied to all the facts, the relevant private and public transfer
1

factors actually weigh heavily against transfer. This District is close to one of Motorola’s
significant United States facilities (located in Plantation, less than 30 miles away from the
courthouse). Two of the seven patents in suit either were invented or were prosecuted in this
District and many of the inventors and prosecuting attorneys for the Motorola patents (who are
now non-party witnesses) continue to reside in the area.

Moreover, one of the products

Microsoft has accused in its permissive counterclaims was designed, developed, marketed, and
supported in this District. These facts undermine Microsoft’s argument that the Western District
of Washington is the “center of gravity” of this dispute.
In addition to its erroneous “center of gravity” argument, Microsoft argues that
transferring this case to Washington (where other cases between the parties are pending)
supposedly will promote efficient use of judicial resources and streamline the dispute. In fact,
doing so would have the opposite effect. None of the fourteen patents at issue here overlaps with
any in Washington. And despite Microsoft’s vague generalizations of similarities between the
patents and accused products in this case and in the Washington cases, Microsoft concedes that
“the specific accused technology in each case is different.” (D.E. 62 at 16.) Transferring this
action would force the District Court in Washington to contend with an unworkably large
number of patents that have significant dissimilarities.

Efficiency will not be served by

transferring yet another case to Washington, but by keeping this case on track for trial here.
Trial is set for October 24, 2011, and the case is in the final stages of discovery – millions
of pages of documents have been produced, over 25 depositions have been or are being
scheduled, expert reports are being drafted, and the parties have been engaged in claim
construction activities for weeks. To transfer this case now, at this late hour, would result only in
delay and significant prejudice to Motorola. Microsoft’s motion should be denied.

2

II.

THE FACTS WEIGH HEAVILY AGAINST TRANSFER TO WASHINGTON
Microsoft repeatedly argues that this District has little, if any, connection with this

dispute. (D.E. 62 at 1, 11.) In doing so, Microsoft chooses to rely only on facts that support its
Washington-centric view of this dispute. But consideration of all relevant facts strongly favor
denial of Microsoft’s motion, including: (1) Motorola’s Plantation facility is a substantial
connection to this District; (2) one of the phones accused by Microsoft in its permissive
counterclaims (the i1 iDEN phone) was designed, developed, marketed, and supported in
Plantation; (3) two of the Motorola patents have a significant connection to this District; and (4)
the Washington actions do not involve the same patents or accused technology as this case.
A.

Motorola’s Plantation, FL Location Is A Substantial Tie To This District

Motorola’s facility in Plantation is located at 8000 West Sunrise Boulevard. (Decl. of C.
Masci (“Masci Decl.”) ¶ 3.) This facility handles sales operations (other than distribution) for a
total of thirty (30%) percent of Motorola sales units, including fifty (50%) percent of the
Worldwide sales for its iDEN phones – one of which has been accused of infringement in
Microsoft’s permissive counterclaims. (Id. ¶ 4.) The Plantation facility’s sales for Motorola in
2010 were $2.1 billion, with a total of 15.5 million handsets shipped. (Id. ¶ 8.)
In addition to providing management and technical support for several Motorola phones,
(Id. ¶ 6.), the Plantation location also houses the headquarters for Latin America business for
Motorola.

(Id. ¶ 7.)

This organization includes management, sales, finance, legal, and

operations. The Plantation site also includes the Latin America (“LATAM”) sales organization
for all of Motorola and the iDEN International sales organization. (Id. ¶ 8.)
B.

Two Of The Patents-In-Suit Have A Significant Connection To This District

Two of the patents in suit – U.S. Patents Nos. 6,983,370 and 5,784,001– resulted from
inventive activities in Plantation. (Decl. of Kevin J. Post (“Post Decl.”) at ¶¶ 3, 4; Exhs. A, B.)
3

Motorola employed each of the six inventors for these patents at its Plantation facility and the
work that resulted in these patents took place there. (Id.) These activities required a substantial
investment by Motorola of time, money and resources that are directly relevant to this case.
C.

Numerous Non-Party Witnesses Are Located In The District

As a result of Motorola’s long-time presence in the Plantation area and its history of
product development here, a large number of non-party witnesses are located in the District.
And because Motorola no longer employs these individuals, this Court – and not the Western
District of Washington – has the unique ability to subpoena their presence for trial. Based on
current information, there are currently at least eleven such non-party witnesses:
•

Joan DeLuca (Inventor of U.S. Patent No. 5,784,001) – Boca Raton, FL

•

Senaka Balasuriya (Inventor of U.S. Patent No. 6,757,544) – Weston, FL

•

Eric Eaton (Inventor of U.S. Patent No. 6,983,370) – Lake Worth, FL

•

David Hayes (Inventor of U.S. Patent No. 6,983,370) – Lake Worth, FL

•

Von Mock (Inventor of U.S. Patent No. 6,983,370) – Lake Worth, FL

•

Michael Zazzara (Prosecuting attorney for U.S. Patent No. 5,784,001) – Delray Beach, FL

•

Gregg Rasor (Prosecuting attorney for U.S. Patent No. 5,784,001) – Lantana, FL

•

Pablo Meles (Prosecution of U.S. Patent Nos. 5,784,001 and 6,272,333) – Weston, FL

•

Philip Macnak (Prosecution of U.S. Patent Nos. 5,784,001 and 6,272,333) – West Palm
Beach, FL

•

Daniel Crilly (Prosecution of U. S. Patent No. 6,408,176) – Fort Lauderdale, FL

•

Randi Karpinia (Prosecution of United States Patent No. 6,983,370) – Plantation, FL

(Post Decl. ¶¶ 5-20; Exhs. A-O.)
In contrast, despite Microsoft’s general proclamation that its knowledgeable witnesses all
reside in the Seattle area, Microsoft did not identify a single relevant, non-party witness in that
District who could be compelled to appear at trial.

4

D.

One Of The Products Microsoft Has Accused of Infringement Was
Developed And Designed In Plantation And Marketed and Supported Here

Plantation is the main Motorola campus for the design and development of iDEN
products. (Masci Decl. ¶ 4.) The i1 iDEN phone – accused of infringing five Microsoft patents
in this case – was developed at Plantation between January 2009 and June 2010. (Decl. of J.
Conroy (“Conroy Decl.”) ¶ 4).) All of the lead Motorola employees for the product and most of
the rest of the employees who worked on the product were located in Plantation. (Id.) The bulk
of the work on the product was carried out in Plantation and included software design work,
electrical work, mechanical work, media decision-making, and marketing. (Id. ¶¶ 2, 4.) This
work included the design of the accused gesture recognition and data synchronization features on
the i1 phone. (Id. ¶ 4.) In addition to the foregoing local activities, a manager at the Plantation
facility oversaw integration of work on the i1 phone carried out at other locations. (Id. ¶ 5.)1
Work on the i1 iDEN phone was a priority for the Plantation location.

(Id. ¶ 6.)

Plantation was the logical choice for development of this product because the Motorola
employees with expertise in the iDEN network are located here. In fact, the technology for the
i1 IDEN phone grew out of this expertise. (Id.) At peak, about 74 people at the Plantation
location were working on the i1 IDEN phone. (Id. at ¶ 7.) And numerous documents relating to
the design, development, testing, and marketing of the i1 phone were collected from – and
remain located at – the Plantation facility. (Id. at. ¶ 12.)
E.

The Pending Washington Disputes Do Not Relate To This Action

The supposedly “related” cases in Washington have virtually nothing to do with this
action. Any alleged “relationship” is based on the named parties – nothing more.

1

Some of the development work was carried out in China, Chicago, and San Diego. (Conroy Decl. ¶ 5.)
None of that work was done in Washington.

5

One of the two active cases pending in Washington (the 1823 Action) is a breach of
contract action relating to Motorola’s offer for a license to its 802.11 and H.264 essential patent
portfolios. There is no breach of contract issue in Florida. The 1823 Action was consolidated
with the 343 Action – a patent infringement action that includes three Motorola patents.2 These
patents relate to video compression technology and are asserted against Windows 7. (Post Decl.
¶¶ 21, 22; Exhs. P, Q.) While Microsoft points out that Windows 7 is accused here (D.E. 62 at
15), there is nothing even remotely close to video compression technology at issue in this case.
(Post Decl. ¶¶ 21, 23; Exhs. P, R.) Microsoft does not contend otherwise. The other active case
in Washington (the 595 Action) also is a patent infringement action. (Post Decl. ¶ 24; Exh. S.)
It includes five Motorola patents asserted against Microsoft’s Kinect and Xbox gaming systems,
relating to biometric sensing, graphical passwords, telepresence communications, and multiplayer wireless gaming. These patents and the accused products have nothing to do with this
action.3 (Post Decl. ¶¶ 25, 26; Exhs. T, U.) Microsoft, again, does not contend otherwise.
Microsoft argues that the technology of the Microsoft patents asserted in its permissive
counterclaims here is similar to the technology of the patents it has asserted in the Washington
actions. For example, Microsoft concludes – without any analysis whatsoever – that the ’536
and ’853 patents in this case and the ’582 patent in the 1823 Action are similar because they each
relate to detecting touchscreen input. (D.E. 62 at 16). But, even a cursory examination of these
patents shows that this is misleading – while the ’536 and ’853 patents claim the recognition of
handwritten user “gestures” supplied using a touchscreen, the ’582 patent relates to a keyboard
2

See Post Decl. ¶ 31, Exh. Z (Order Granting in Part and Denying in Part Motorola’s Motion to Dismiss,
Denying Microsoft’s Motion to Dismiss and Consolidating Case No. C10-1823JLR and C11-343JLR (Case No. 10cv-1823) (W.D. Wash. June 1, 2011)).
3

A fourth case (the 1577 Action) is stayed pending completion of an action in the International Trade
Commission. Therefore, that stayed case is irrelevant to any overlap, because no economy can be gained from
parallel proceedings. Nevertheless, Microsoft does not contend that the Microsoft patents in the stayed 1577 Action
overlaps with Microsoft’s patents here in Florida.

6

displayed on a device. (Post Decl. ¶ 23; Exh. R.) Microsoft makes the same conclusory
statements about the ’460 patent in this case and the ’276 and ’642 patents asserted in
Washington. (D.E. 62 at 16-17). Again, a cursory examination of these patents contradicts
Microsoft’s statements – whereas the ’276 patent relates to a notification system that generates
user-recognizable alerts and the ’642 patent relates to flash memory management, the ’460 patent
describes and claims a lower-level hardware timer, which is completely unrelated and detached
from the claimed inventions of the other patents. (Post Decl. ¶¶ 26, 32; Exhs. U, AA.) Indeed,
Microsoft concedes that “the specific accused technology in each case is different because each
patent covers a different ‘invention….’” (D.E. 62 at 15-16.) Accordingly, none of the technical
testimony in Washington will overlap with the testimony in this case. Microsoft has not shown
otherwise.4
Importantly, many of the alleged similarities between here and Washington on which
Microsoft attempts to rely (see, e.g., D.E. 62 at 16-17) are due to Microsoft’s own permissive
patent counterclaims that it filed here. Microsoft surely could have asserted these seven patents
in Washington, but it chose not to do so. Instead, it voluntarily asserted these patents as
permissive counterclaims here and engaged in extensive discovery relating to these patents. It
comes with ill grace for Microsoft to rely on these very same permissive counterclaims to
bootstrap its transfer request. At the time it filed the permissive counterclaims here, Microsoft
surely believed that doing so would be convenient and be consistent with conserving judicial
resources. No material change has occurred since Microsoft made that decision.

4

And even to the extent similar products are accused of infringement, damages testimony will relate to the
specific accused features and will be necessarily unique in each case.

7

F.

The Washington Actions Will Not Be Heard As Expeditiously As Here

This action was filed on November 10, 2010, and trial is set for October 24, 2011. (D.E.
36.) The two active Washington actions were filed about the same time – on October 1, 2010,
and December 21, 2010. Yet, neither Washington case has a trial date set or a scheduling order.
While the parties have served some limited discovery, neither party has produced documents and
no depositions have been taken.
III.

ARGUMENT
Microsoft makes the general statement in its motion that “[t]he private interest factors –

such as the locus of operative facts (i.e., the case’s center of gravity) and the convenience and
location of relevant witnesses and other sources of proof – favors transferring this case to the
Western District of Washington” and that “the public interest factors also support the transfer of
this case.” (D.E. 62 at 7.) But, an examination of the relevant facts tells a different story – this
dispute has a direct relationship to this District and to transfer it to Washington now would result
in delay and resultant prejudice to Motorola.
A.

The Relevant Law

“To obtain a transfer, a movant must show (1) the availability of an adequate alternative
forum; (2) that public and private factors weigh in favor of transfer; and (3) that the plaintiff can
reinstate the action in the alternative forum without undue inconvenience or prejudice.” Global
Innovation Tech. Holdings, LLC v. Acer Am. Corp., 634 F. Supp. 2d 1346, 1347 (S.D. Fla.
2009). Courts in the Eleventh Circuit have exercised their discretion under this statute carefully,
stating that “[t]he plaintiff’s choice of forum should not be disturbed unless it is clearly
outweighed by other considerations.” Robinson v. Giarmarco & Bill, P.C., 74 F.3d 253, 260
(11th Cir. 1996) (citing Howell v. Tanner, 650 F.2d 610, 616 (5th Cir. 1981)) (emphasis added).
In making this determination, courts in the Eleventh Circuit consider the following factors:
8

(1) the convenience of the witnesses; (2) the location of relevant
documents and the relative ease of access to sources of proof; (3)
the convenience of the parties; (4) the locus of operative facts; (5)
the availability of process to compel the attendance of unwilling
witnesses; (6) the relative means of the parties; (7) a forum’s
familiarity with the governing law; (8) the weight accorded a
plaintiff's choice of forum; and (9) trial efficiency and the interests
of justice, based on the totality of the circumstances.
Manuel v. Convergys Corp., 430 F.3d 1132, 1135 n.1 (11th Cir. 2005). Transfer is appropriate
only if the moving party shows that the totality of the circumstances favor transfer.5
B.

Microsoft’s Unjustified Delay In Seeking Transfer Will Prejudice Motorola

Parties seeking a change of venue should act with “reasonable promptness.” Peteet v.
Dow Chemical Co., 868 F.2d 1428, 1436 (5th Cir. 1989) (quoting 15 C. Wright, A. Miller & E.
Cooper, supra, § 3844 at 335-37). “Courts have considered a party’s delay in denying a motion
to transfer.” Id.; see also In re Wyeth, 406 Fed. Appx. 475, 477 (Fed. Cir. 2010) (denying
petitioner’s request for a writ of mandamus regarding transfer of a patent case, in part, because of
petitioner’s delay in requesting transfer). This Court has recognized that transfer is appropriate
only when “the plaintiff can reinstate the action in the alternative forum without undue
inconvenience or prejudice.” Global Innovation Tech. Holdings, LLC, 634 F. Supp. 2d at 1347.
Microsoft has not acted diligently in moving for transfer. This case has been proceeding
in this District for over six months. The Court issued its pretrial schedule on January 4, 2011,
the parties filed a joint motion to modify that schedule on April 4, fact discovery closes on July
7, and trial has long been set for October 24, 2011. (D.E. 23, 36, 49.) Motorola has been
diligently pursuing and responding to discovery to place this case in position for trial. To date,
Motorola has produced over 7 million pages of documents, and more than 25 depositions have or

5

See, e.g., Geltech Soln’s, Inc. v. Marteal, Ltd., No. 09-81027, 2010 WL 1791423, at *6 (S.D. Fla. May 5,
2010) (denying transfer and stating that “[i]n a motion to transfer, the burden is on the movant to establish that the
suggested forum is more convenient”) (internal quotations and citation omitted).

9

being scheduled. The parties have engaged in substantial claim construction activities and
preliminary expert reports are being finalized for exchange later this month. Despite all this
activity, Microsoft delayed filing its transfer motion until now, just weeks away from the
completion of fact discovery.
Any transfer now will result in a significant delay in having this case tried. Indeed, the
cases pending in Washington were filed around the same time as this case, yet no trial date has
been set and no scheduling orders have been entered.

And, when the 343 Action was

consolidated with the 1823 Action, the Washington court reset the date of the Parties’ Joint
Status Report – further delaying progress there. The prejudice to Motorola of a delay in trial
occasioned by transfer is real and cannot seriously be disputed by Microsoft.
Microsoft tries to downplay the delay transfer would create by ignoring the actual posture
of these cases and instead citing general time-to-trial statistics, concluding that average
differences in the time to trial are not significant. (D.E. 62 at 17 n.1.) Such statistics might have
been meaningful if Microsoft filed this motion at the outset of the case instead of countersuing.
But now, they are irrelevant. The reality is that trial of this action has been scheduled to begin in
less than five months. None of the “related” cases identified by Microsoft that are pending in the
Western District of Washington even has a trial date. It will be nearly impossible to get
resolution of these claims anytime close to October 2011.
The prejudice to Motorola based on Microsoft’s failure to act promptly is amplified when
compared with Microsoft’s motions to transfer the two Wisconsin actions to Washington.
Microsoft filed those motions about six weeks after those cases were filed. Microsoft could have
– and if it truly believed transfer was warranted, should have – moved to transfer this case long

10

ago. But, it did not do so, and there is no justification for its delay.6 The relevant circumstances
are the same today as they were six months ago when this case was first filed.
C.

The Private Interest Factors Weigh Against Transfer

Microsoft argues that the private factors favor transfer because (1) Motorola’s choice of
forum should not be given any deference, (2) this action has no meaningful connection to this
District, (3) Washington in the center of gravity of this dispute, and (4) transfer would provide
easier access to sources of proof. None of these support transfer.
1.

The District Has A Substantial Connection To This District And
Motorola’s Choice of Forum Should Not Be Disturbed

According to Eleventh Circuit law, “[t]he plaintiff’s choice of forum should not be
disturbed unless it is clearly outweighed by other considerations.” Robinson v. Giarmarco &
Bill, P.C., 74 F.3d 253, 260 (11th Cir. 1996) (affirming denial of transfer motion) (internal
quotations and citation omitted) (emphasis added).

When transfer would “merely shift

inconvenience from the defendants to the plaintiff,” the plaintiff’s choice of forum should
prevail. Id.; Carrizosa v. Chiquita Brands Intern., Inc., No. 07-60821, 2007 WL 3458987, at *3
(S.D. Fla. November 14, 2007) (“[t]he movant must ... show that the balance of convenience
strongly favors transfer in order to overcome the presumption in favor of the plaintiffs choice of
forum,” even when the plaintiff is not resident in the forum) (internal quotations and citation
omitted) (emphasis added).
Microsoft argues that “where the operative facts underlying the action occurred outside
the District in which the action is brought, … a plaintiff’s choice of forum is not entitled to any

6

Any argument by Microsoft that the recent transfers of the cases from Wisconsin justify its belated transfer
motion falls short. The Wisconsin Court transferred one of the cases on February 18, 2011. (Post Decl. ¶ 29; Exh.
X.) Despite this, Microsoft still waited three months before filing its motion.

11

deference and the action should be transferred.” (D.E. 62 at 8).7 Microsoft, however, ignores
Motorola’s – and this dispute’s – substantial connection to this District. As discussed above,
Motorola operates a substantial facility in Plantation that was responsible for over $2 billion in
sales in 2010 alone. And, one of the products accused by Microsoft of infringement – the
Motorola i1 – was designed, developed and supported in Plantation. In addition, two of the
seven patents asserted by Motorola have substantial ties to this District. And there are 11 nonparty Motorola witnesses in this District.
Accordingly, Motorola’s decision to file here based on its extensive connection to the
District – which only has been enhanced after Microsoft chose to file its permissive
counterclaims here8 – cannot and should not be ignored. See Omega Patents, LLC v. Lear Corp.,
No. 07-1422, 2009 WL 1513392, at *4 (M.D. Fla. Jan. 23, 2009) (denying transfer motion and
stating that the Eleventh Circuit “continues to credit a Plaintiff’s choice of forum, unless clearly
outweighed by other considerations,” even when the plaintiff is not a resident).9
2.

Microsoft Ignores The Existence Of Numerous Non-Party Witnesses
In This District, Whose Presence Strongly Weighs Against Transfer

As this Court has recognized, trying a case in Florida when non-party witnesses reside
here “increases the availability of process to compel the attendance of these potential witnesses.”
Promex, LLC v. Perez Distrib. Fresno, Inc., No. 09-22285, 2010 WL 3452341 at *11 (S.D. Fla.

7

None of the cases Microsoft cites in its Brief (D.E. 62 at 8, 9) addresses the issue faced by this Court –
namely, whether transfer is appropriate when a significant number of non-party witnesses reside in the District, and
a defendant’s counterclaims implicate a locally developed accused product. As discussed above, it is not.

8

“[A] party bringing a claim under Rule 13(b) [i.e., permissive counterclaim] is actually indicating a desire
to use the forum for personal objectives. Thus, by interposing a claim for relief defendant has waived the right to
object to the venue of the action . . . . Stated briefly, this result follows logically from the notion that a party who
invokes the power of the court in order to assert a claim against a particular person should not be able to object
simultaneously to the inconvenience of that forum for purposes of defending against a claim by that same party.”
Wright & Miller § 1424 (emphasis added).
9

Microsoft points out that during oral argument on the transfer motion in the Motorola v. Apple case, Judge
Ungaro commented that Motorola may have been forum shopping by filing here. (D.E. 62 at 10 n.6). Notably,
Judge Ungaro’s order denying the transfer motion found no evidence of forum shopping.

12

Sept. 1, 2010) (denying motion to transfer) (Moreno, J.). Ensuring attendance of non-party
witnesses at trial is a more important consideration than general witness convenience. See
Mason, 146 F. Supp. 2d at 1361.
As explained above, eleven inventors and prosecuting attorneys who are no longer
employed by Motorola all reside within the subpoena power of this Court. These witnesses are
expected to provide testimony regarding the inventive activity taking place at Motorola, the
conception of the inventions resulting in the patents in suit, the state of the art at the time of the
invention and the manner in which these patents were procured. In contrast, Microsoft has failed
to identify a single non-party witness who could be compelled to attend trial in Seattle. But,
even some non-party witnesses in Washington would not “clearly outweigh” the presence of at
least eleven non-party witnesses here.
3.

Washington Is Not The “Center Of Gravity” Of This Dispute

By arguing that Washington is the center of gravity of this dispute (D.E. 62 at 10-11),
Microsoft is telling only part of the story. Although some Microsoft witnesses do reside in
Washington, and the Microsoft accused products may have been developed (at least in part)
there, that does not end the inquiry. This dispute is far more national than Microsoft describes
and there is no single location that is the center of gravity.
In addition to the substantial connection Motorola and this dispute have to this District,
many of the Motorola products accused by Microsoft were designed and developed in locations
far from Washington. Substantial engineering and software work was performed in the greaterChicago area, along with input from other Motorola facilities, such as those located in California.
And Motorola’s set-top box products accused of infringement by Microsoft were designed,
developed and supported mainly in Horsham, Pennsylvania. (Post Decl. ¶ 30; Exh. Y.)

13

With headquarters and major facilities and significant witnesses spread across the
country, transferring this case to Washington would merely shift the burden of travel from
Microsoft to Motorola. But, in doing so, transfer would improperly put a disproportionate
burden on Motorola’s non-party witnesses that reside in this District. See Robinson, 74 F.3d at
260. And the possibility that material non-party witnesses cannot be compelled to attend trial is
a more important inquiry than the convenience of party witnesses. See Steifel Labs., Inc. v.
Galderma Labs., Inc., 588 F. Supp. 2d 1336, 1340 (S.D. Fla. 2008) (“[W]hen considering [the
convenience of non-party witnesses], it is not so much the convenience of the witnesses but the
possibility of having their testimony at trial”). Moreover, Microsoft does not state that it will be
unable to bring its witnesses to Florida for trial – likely because it knows it can do so. See
Mason v. Smithkline Beecham Clinical Labs., 146 F. Supp. 2d 1355, 1361 (S.D. Fla. 2001)
(“[T]ransfer may be denied when the witnesses, although in another District, are employees of a
party and their presence can be obtained by that party.”).
Finally, Microsoft’s argument that Washington is the center of gravity of this dispute is
belied by its decision to file permissive counterclaims in this District. Incredibly, Microsoft
relies on the location of the Microsoft inventors of its permissive counterclaim patents to support
its transfer motion. (D.E. 62 at 11.) If the location of Microsoft’s inventors were that important
to Microsoft, Microsoft could and should have asserted its counterclaim patents in Washington in
the first instance (where it already had other cases pending against Motorola), rather than in this
action as permissive counterclaims. But it chose not to do so, ignoring the convenience of its
own inventors. Given that Microsoft voluntarily asserted its patents in this action, the location of
the inventors of those patents is completely irrelevant.10 Microsoft should not be allowed to

10

Microsoft’s focus on the decision of the Wisconsin Court to transfer the Wisconsin cases is misplaced.
(D.E. 62 at 10.) First, Motorola does not have a facility in Wisconsin, while it does in Florida. Second, two of the

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avail itself of this District by asserting permissive counterclaims only to turn around and use that
as a means to hijack Motorola’s choice of forum.
4.

The Location Of Sources Of Proof Is A Neutral Factor

Contrary to Microsoft’s arguments, the location of sources of proof is not a factor that
weighs in favor of transfer here.

As is typical in cases like these, most documents and

information are maintained electronically and can be moved easily around the country. See
Steifel, 588 F. Supp. 2d at 1340 (“[T]his Court believes that, in the current world of expedited
transfer of information, assembly and production of any necessary information can be produced
just as easily in this District as in Texas.”); Ivax Corp. v. B. Braun of Am., Inc., No. No. 00-4909CIV, 2001 WL 253253, at *2 (S.D. Fla. Feb. 28, 2001) (“In the real world of computerization
and electronic transfer of information, the assemblage of accounting data can be accomplished as
easily in Miami, Florida as elsewhere.”). In any event, because of Microsoft’s delay in filing this
motion, many – if not nearly all – documents already have been produced in this action. Thus,
by the time this motion is fully briefed, this factor will be irrelevant.11
D.

The Public Interest Favors Prompt Resolution Of This Case In This District

Microsoft argues that the public factors favor transfer primarily because (1) this District
has no local interest in trying this case and (2) public interest favors consolidated litigation in
patent cases. These factors do not support transfer.
Microsoft states that residents in Washington have a local interest in resolving disputes
over the validity of Microsoft’s patents and issues concerning Microsoft’s products because

seven Motorola patents in this case had a connection to this District, and there are at least eleven non-party
witnesses here – the same can not be said for Wisconsin. Third, unlike here, Microsoft did not delay in seeking
transfer. Fourth, the difference in time to trial between Wisconsin and Washington was minimal. Trial has been set
in this case for October 2011, while the parties are still waiting for a trial date in Washington.
11

The remaining private factors – convenience of the parties and their relative means – are neutral here. Both
parties are large corporate entities with national counsel and sufficient means to try these cases in any District.

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Microsoft is located there. (D.E. 62 at 15). Under any logic, given the extensive connection that
this case has to this District, the same must hold true here. Indeed, the local interest here results
not just from the fact that Motorola has a facility in this District, but also because two of the
patents-in-suit have a connection to the District and one of the accused products was developed
here. If anything, local interest is a neutral factor and does not strongly favor transfer. Again, if
local interest was so important to Microsoft, one would have expected it to file its permissive
counterclaims in Washington originally.

Microsoft’s “local interest” argument is wholly

discredited by its decision to file permissive counterclaims here.
Microsoft next argues that public interest favors consolidation, especially in patent cases.
(D.E. 62 at 15.) But, again, Microsoft’s own actions undercut its self-serving statements. For
example, despite transfer of the 595 Action to Washington months ago, Microsoft did not request
consolidation of that case. And Microsoft’s arguments about the benefits of consolidation are
completely undermined by its decision to assert its patents here as permissive counterclaims,
rather than adding them to the 1823 Action or even filing an original patent action in
Washington. Microsoft’s own actions mock its belated suggestion that consolidation in
Washington should override Motorola’s choice of forum and convenience.
Microsoft even goes so far as to point to supposed similarities between the Microsoft
patents and Motorola accused products in this case and the Washington cases. (D.E. 62 at 1617.) These arguments deserve only to be disregarded. Microsoft cannot voluntarily assert its
patents in this District and then argue later that that this case should be transferred because the
patents it chose to assert (and the products they are asserted against) supposedly are similar to
those in a District in which it could have asserted its patents in the first place. Microsoft’s

16

decision to ignore Washington for these patents and then assert “overlap” was little more than a
bootstraps effort to manufacture “relatedness.”
And, even if the Court does decide to consider the supposed “similarities” between the
patents asserted here and in Washington, Microsoft “bears the burden of explaining to the Court
exactly how the [technical] elements involved in the … patents are similar to those in the
[Washington] patents.” See Motorola Mobility, Inc. v. Apple Inc. No. 10-cv-23580, Order on
Motion to Transfer Venue (D.E. 85) at 5. Microsoft has not met this burden. As explained
above, the best Microsoft can offer is vague generalities and conclusory statements that there is a
general overlap in technology.

As this Court recently recognized, a general overlap in

technology is simply not enough to consider actions sufficiently related for transfer to be
required. See id.
Ultimately, the transfer of this action – and its consolidation with the actions pending in
Washington – would not advance the interest of justice, nor would it result in increased judicial
efficiency. Rather, transfer would create a dispute with in an unworkably large number of
patents (38) in Washington, along with a corresponding complex mixture of technologies and
legal issues – a complicated dispute by any measure that would require significant judicial
resources to untangle. Indeed, it would create monumental jury confusion if the cases are tried
together, and would offer no efficiency over Florida if the cases are tried separately. This is
hardly a formula for convenience or efficiency.
And, as explained above, the patents in this case are directed to different technologies and
functionality than those in Washington and transfer only will complicate an already complicated
set of actions in Washington. Judge Ungaro recently came to the same conclusion and denied

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Apple’s motion to transfer a case filed by Motorola in this District to a district where other patent
litigation between the parties was pending:
The Court finds more convincing Motorola’s contention that the
overlap is too general to lead to gains in efficiency upon transfer to
Wisconsin. Transferring this action to the Western District of
Wisconsin would force that court to contend with an unworkably
large number of patents that involve technologies that have some
similarities but which also have significant dissimilarities.
Id. at 6.
IV.

CONCLUSION
Microsoft’s motion to transfer – filed more than six months after the filing of Motorola’s

Complaint – comes too late and ignores Motorola’s extensive connection to this District.
Transferring this case, after the parties have made significant advancement toward trial, would
be an inefficient use of resources and would hinder, rather than help, the parties’ ability to
resolve their dispute. Microsoft simply has not shown, and cannot show, that transfer would
promote convenience and efficiency. Microsoft’s motion should be denied.

June 6, 2011

Respectfully submitted,
__ /s/Edward M. Mullins
Edward M. Mullins, Fla. Bar No. 863920
[e-mail]
Hal M. Lucas, Fla. Bar No. 0853011
[e-mail]
ASTIGARRAGA DAVIS MULLINS
& GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Tel.: [phone]; Fax. [phone]
Local Counsel for Plaintiff,
MOTOROLA MOBILITY, INC.

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Jesse J. Jenner
(admitted pro hac vice)
Steven Pepe
(admitted pro hac vice)
Khue Hoang
(admitted pro hac vice)
Ropes & Gray LLP
1211 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: [phone]
Norman H. Beamer
(admitted pro hac vice)
Mark D. Rowland
(admitted pro hac vice)
Gabrielle E. Higgins
(admitted pro hac vice)
Ropes & Gray LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
Lead Counsel for Plaintiff,
MOTOROLA MOBILITY, INC.

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CERTIFICATE OF SERVICE
I hereby certify that the foregoing was electronically filed with the Clerk of Court
using the CM/ECF system on June 6, 2011, which will cause a true copy of same to be served
this day upon all counsel of record included in the attached Service List by transmission of
Notices of Electronic Filing generated by the CM/ECF system or in some other authorized
manner for counsel of record that have not subscribed to receive electronically Notices of
Electronic Filing.
/s/Edward M. Mullins
Edward M. Mullins

SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-MORENO/TORRES
Roberto Martinez, Esq.
Curtis Miner, Esq.
COLSON HICKS EIDSON
255 Alhambra Circle, Penthouse
Coral Gables, Florida 33134
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
Ellen S. Robbins
Erin E. Kelly
Herman F. Webley
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Brian R. Nester
Kevin C. Wheeler
SIDLEY AUSTIN LLP
1501 K Street NW
Washington, DC 20005
20
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.

Paul D. Tripodi, II
Sandra Fujiyama
Theodore W. Chandler
Michael C. Lee
SIDLEY AUSTIN LLP
555 West Fifth Street
Los Angeles, California 90013
Philip W. Woo
SIDLEY AUSTIN LLP
555 California Street
San Francisco, California 94104
Tung T. Nguyen
SIDLEY AUSTIN LLP
717 North Harwood Suite 3400
Dallas, Texas 75201

Attorneys for Defendant and Counterclaim Plaintiff, Microsoft Corporation

21
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.