Software Rights Archive, LLC v. Google Inc. et al

Filing 133

Opposed MOTION for Extension of Time to File Response/Reply as to 130 SEALED MOTION Defendants' Motion to Transfer Pursuant to 28 U.S.C. 1404(a) SEALED MOTION Defendants' Motion to Transfer Pursuant to 28 U.S.C. 1404(a) SEALED MOTION Defendants' Motion to Transfer Pursuant to 28 U.S.C. 1404(a) by Software Rights Archive, LLC. (Attachments: # 1 Exhibit A, # 2 Text of Proposed Order)(Kaplan, Lee)

Software Rights Archive, LLC v. Google Inc. et al

Doc. 133

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

SOFTWARE RIGHTS ARClIIVE" LLC
v.

GOOGLE, INC., et al.

§ § § § §

CIVIL NO. 2:07-cv-511 (TJW-CE)

PLAINTIFF'S OPPOSED MOTION FOR AN EXTENSION TO MAY 8, 2009 TO RESPOND TO DEFENDANTS' MOTION TO TRANSFER PURSUANT TO 28 U.S.C. § 1404(a)
Plaintiff Software Rights Archive, LLC ("SRA") seeks an extension until May 8, 2009 to

respond to Defendants' Motion to Transfer Pursuant to 28 U.S.C. § 1404(a). Defendants have

agreed to, and the Court has granted, a 22-day extension, to March 31. SRA requires at least
until May 8, however, for two reasons: First, Defendants' motion raises numerous fact issues
and makes IIany factual claims that SRA is entitled to explore and test through discovery. Even
assuming that Defendants provide timely discovery responses without meritless objections, SRA
wil not

obtain any discovery until ApriL. Secop.d, SRA's lead counsel is intensely engaged in

pretrial preparation in the ca.se of Quantum World v. Lenovo, Civil Action No. 2:07-cv-24-CE,

which is curently pending in this Court and is set for trial on March 23. SRA's lead counsel wil
require

until May 8 to secure discovery and respond to Defendants' dispositive briefing.

Therefore, SRA respectfully requests this Cour to extend the due date for its response to Defendants' motion to.May 8.

I. INTRODUCTION
SRA filed this case on November 21,2007. Defendants requested extensions of

time to

fie their answers, which SRA agreed to, and Defendants filed their answers on January 31, 2008.

Six months later, on July 16, 2008, Defendants fied a motion to dismiss for lack of standing.

Extensions of time again were agreed to on both sides, and after Plaintiff filed its response,

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Defendants sought discovery. With SRA's cooperation, Defendants took three depositions in
South Carolina and North Carolina and sought and received thousands of docuients which they

believed Would assist them in challenging standing. The parties engaged in multiple rounds of
briefing, and the standing issue was submitted to this Cour for resolution in mid-December
2008.1 In the meantime, Defendants also requested, and SRA agreed to, an extension of

time for

Defendants to serve their invalidity contentions. Defendants served those invalidity contentions
on Januar 23, 2009.

Now, fifteen months after this case was filed, and over six months after filing their
motion to dismiss, Defendants have filed another defensive motion, this time a motion to transfer

pursuant to 28 U.S.C. § 1404(a). SRA requested Defendants' agreement to a 60-day extension to

respond to the motion to transfer, for tWo reasons. First, SRA is entitled to discovery so that it

can test and respond to the factual contentions made by Defendants in their motion. The
determination of

whether a transfer is appropriate turs on two issues: (1) whether the Northern

District of California would be "clearly more convenient" than the Eastern District of Texas, and

(2) whether the case could have been brought in the Northern District of California. Both these

elements involve numerous factual issues giving rise to the need for discovery. As to the first
element, for example, Defendants have claimed that they would be inconvenienced by having to

litigate in Texas rather than California, and SRA is entitled, in disputing this contention, to
obtain discovery from Defendants regarding their and their witnesses' connections with Texas
i In July 2008, Defendaiits also fied a miror-action declaratory judgment suit in the Northern District of California

against SRA, Egger, and Site Techlologies, Inc., based on the same standing arguments they raised in the first-fied Texas Action. Furher, not satisfied with duplicative litigation, Defendants opened a third front in November 2008;
they formed a.n allance with a purorted creditor in a closed banptcy and sought to reopen the long-closed

bankptcy of Site Techlologies, Inc., which had sold the patents to Daniel Egger. Defendants again raised the
issue of who owns the patents- in-suit, arguing, as they do in their standing challenge and in their Northern District of
California declaratory judgment action, that the patents-in-suit belong to the banuptcy estate of Site Technologies,

Inc. The bankptcy cour in the Northern District of California reopened the proceedings for a status conference
and then continued them until April 2009 pending a ruling by this Cour regarding standing.

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for over a year, they now contend that Texas is an inconvenient venue for them and their

witnesses and that California is the center of gravity of their infringing activity. This contention
entails fact issues too numerous to set forth completely here, but a broad sampling of the relevant
factual inquiries is as follows:

. Whether and to what extent Defendants have maintained offices in and near this District, and what functions those offces serve in Defendants' businesses;
. Whether and to what extent Defendants have employed persons in and near this

District, and what roles those employees have played in Defendants' businesses;

. Whether and to what extent Defendants have engaged in business activities in and near this District, and to what extent those business activities relate to the alleged
infringement in this case; and

. The identity of witnesses, particularly third-party witnesses, in this District with
whom Defendants have engaged in business activities, particularly Defendants' inducement of infringement.

This Cour has expressly held that relevant factors concerning the "convenience" inquiry

include "the discovery burden on parties," "the location of documentary evidence," and the
locations of key witnesses. Odom v. Microsoft Corp., 2009 WL 279968, at *3-4 (E.D. Tex. Jan.

30,2009). In other words, the following questions, among others, wil have a direct bearing on

how this Court resolves Defendants' motion: Where have Defendants stored various types of
documents, and in what form? Where have Defendants stationed various employees who wil be
witnesses in this

case? How voluminous are Defendants' records regarding the various issues in

this suit? SRA is entitled to discover from Defendants the answers to these and further related
questions.
Not surrisingly, in view of the fact-based nature of the transfer inquiry, Defendants'

motion itself contains numerous factual assertions-assertions that SRA is entitled to test
through discovery. Defendants' opposition to a 60-day extension on the ground that "(w)e do
not believe any discovery is necessary in order for SRA to prepare its opposition to our transfer
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motion" is thus patently disingenuous. (Ex. A.) For example, Defendants claim that "a great
number of key fact witnesses reside in the Northern District of California." (Mot. at 9.) SRA is
entitled to test this assertion and determine who really

are the "key" fact witnesses in this case

and where they reside. Discovery is necessary for this; Defendants have unique knowledge of

which persons in their organizations possess which types of proof as to which issues, and where

they are located. Similarly, Defendants predicate their argument in par on the factual assertion
that one of SRA's witnesses "travels regularly to California on business"-and therefore, so the

argument goes, can travel to California without significant added inconvenience. (Mot. at 11.)
SRA likewise is entitled to know how much of a burden it wil be, in practical terms, for the key

witnesses in Defendants' employ to travel to Texas. Again, this information is uniquely within
the possession of Defendants, so discovery is necessary. As an additional example, Defendants
claim in their motion that "lmJost, if not

all, of the relevant physical and documentary evidence

is located outside this District. Indeed, the majority of that evidence is found in California."

(Mot. at 12.) Again, SRA is entitled to test this assertion. Where exactly is the "relevant
evidence" in this case, on an issue-by-issue basis? In what forms is that evidence currently

maintained? How much of a burden would it entail to transfer that evidence to Texas or to

California? Again, the answers to these and other relevant questions are solely within the
possession of

Defendants, so discovery is necessary.

Most tellngly, Defendants' own motion cites and is accompanied by multiple

declarations in support of their arguments for dismissaL. For Defendants to attach these
declarations, yet claim that evidentiary issues are not implicated by their motion, is incredible.
To cite portions of just one such declaration "Google regularly conducts business in the Northern

District of California. For example, Google has key sales, finance, and engineering staff in the

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Northern District of California, and Google engages in a range of ongoing activities in this
region to develop, maintain, and increase its business. Google's Headquarters in California also

serve as a center for its product research and development, product sales and licensing, and
corporate marketing efforts." (Barea Decl. ~ 4.) Defendants cannot make these assertions while
in the same breath seeking to foreclose SRA from discovering the rest of the story-for example,
to what extent Google conducts business in the Eastern District of Texas, what activities Google
engages in here, and what aspects of its link-based search technology are sold, financed,

engineered, developed, sold, licensed, or marketed in this District. Similarly, Defendants assert

that "Google does not have any offices in the Eastern District of Texas" and "(t)he servers on
which Google's search engines are run are not located in the Eastern District of Texas." (Barea
Decl. ~~ 5,7.) But does Google have offices near the Eastern District of Texas? And if

Google

has no offces here or near here now, did it have offces here when suit was filed in November

2007, as SRA suspects? Apart from offces, what other facilities does Google have in this

district, and what functions do they serve? Defendants know full well that Google's alleged
infringement extends far beyond its search engine. What other infringing technologies are run

on servers in this district? As a final of many more possible examples, Defendants assert that
"(k)ey engineers who work on Google's search technology are not located in the Eastern District
of Texas." (Barea Decl. ~ 8.) This raises the questions: Who are these supposedly "key"

engineers, and where acroSs the country are they located? Where are the engineers located who

possess information relevant to this case but whom Google did not designate as "key"? Where
are the engineers who work on the other infringing technologies?

Far from being idle inquiries, these are issues as to which, SRA's independent research
indicates, Defendants have self-servingly mischaracterized the record in their brief. Put simply,

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Defendants' assertion that "(t)he facts, witnesses, and evidence here have absolutely no

connection to the Eastern District of Texas" is a blatant falsehood. (Mot. at 1.) On information

and belief, Defendants connections with this district and with the State of Texas are both
extensive and significant. For example, while Defendants claim that "Google does not have any
offces in the Eastern District of Texas," (Barea Decl. ~ 5), on information and belief, Google

recently had, and perhaps stil has, at least four offices in Texas, at least three of which are
within fifty miles of the Eastern District of

Texas. Similarly, while Defendants claim that "(t)he

servers on which Google's search engines run are not located in the Eastern District of Texas,"

(Barea Decl. ~ 7), on information and belief, Google houses at least one major data center in
Texas-a facility where infringing activities occur literally on a twenty-four hour basis. As a

third of many possible examples, while Defendants claim that "no Defendants have significant

contacts with the Eastern District of Texas," on information and belief, Google derives tens of
milions of dollars in revenue through infringing conduct in and near this District.

The possible examples go on, but the conclusion is simple: SRA is entitled to discovery

regarding numerous issues that bear on the resolution of Defendants' motion. Much of the

evidence necessary to test Defendants' factual contentions lies exclusively in the hands of
Defendants. Therefore, sufficient time must be given for SRA to conduct discovery before
responding to Defendants' motion to transfer.
The second element in the § 1404 analysis is also fact-intensive and calls for discovery.

It requires determining whether "all Defendants are subject to personal jurisdiction (in the
suggested transferee district)." fd. This analysis is fact-intensive. SRA does not dispute that
Google, Yahoo!, lAC, and AOL are subject to personal jurisdiction in California. SRA does
dispute, however, that Lycos is subject to personal jurisdiction in California, and SRA is entitled

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to discovery to demonstrate that position. Specific fact issues respecting jurisdiction over Lycos

include the following:
. Whether Lycos engaged in infringing conduct connected with California;
. Whether Lycos has continuous or systematic contacts with California;

. Whether and to what extent Lycos has offces or employees in California;
. Whether and to what extent Lycos does business in California;
. Whether and to what extent Lycos maintains property

in California;

. Whether Lycos pays taxes in California;
. Whether Lycos is registered to do business in California.

There are many other such questions that directly bear on the propriety of a transfer in
this case. But much evidence respecting these questions lies exclusively with Defendants.

Therefore, SRA must be given time for discovery. The extension to May 8 should be granted.
B. SRA's Lead

Counsel Wil Be Intensely Engaged in Pretrial and Trial Activities in

Another Matter at Least Until Early ApriL.

The second reason why this Cour should give SRA until May 8 to respond to
Defendants' motion is that SRA's lead counsel is engaged in intense pretrial preparation in the
case of Quantum World v. Lenovo, Civil Action No. 2:07-cv-24-CE, which is curently pending

in this Court and is set. for trial on March 23. Recent and ongoing pretrial preparation has
includêd designation of deposition testimony, objections to same and counter-designations,

designation of exhibits and objections to same, work on the joint pretrial order, attendance at a
lengthy conference

with opposing counsel regarding potential agreements on motions in limine,

attendance at the Cour's February 24 pretrial conference, jury selection on March 3, and
presentation of two expert witnesses for deposition later this week as well as upcoming

preparation of direct examination, cross-examination, and demonstrative exhibits. Once trial

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begins on March 23, SRA's lead counsel is likely to be involved with the Quantum World action

on a round-the-clock basis. It goes without saying that it is exceedingly difficult to secure

discovery and respond to dispositive briefing in one case while engaged in intense pretrial
preparation and trial in another case. Moreover, Defendants have not identified any discernible
prejudice whatsoever that they would suffer from the requested extension. (See Ex. 1.) Indeed,

because they were perfectly happy to wait fifteen months before fiing this motion, one wonders
why they suddenly are in such a rush, to the extent that the most they are wiling to agree to is an

extension of 22 days, to March 31 ~an extension that would require SRA to respond within two
days of the Quantum World

triaL. Defendants themselves offer no clue.

ÌII. CONCLúSION

Because . SRA requires time to conduct discovery related to Defendants' motion, and
because SRA's lead counsel is engaged in intense pretrial and trial activities in another matter
that is likely to last for several weeks, SRA respectfully requests this Cour to grant it until May
8,2009 to respond to Defendants' motion to transfer.

Respectfully submitted,

.La ~(6- . (~ ~)
Lee L. Kaplan
LEAD ATTORNEY

State Bar No. 11094400
SMYSER KAPLAN & VESELKA, L.L.P.

700 Louisiana, Suite 2300 Houston, Texas 77002 [phone] [phone] (fax) Ikaplan(fskv.com
Victor G. Hardy
10

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State Bar No. 00790821
(Requesting Admission Pro Hac Vice)

Andrew G. DiNovo State Bar No. 00790594 Adam G. Price State Bar No. 24027750 Jay D. Ellwanger State Bar No. 24036522
DiNovo PRICE ELLWANGER LLP

P.O. Box 201690 Austin, Texas 78720 [phone] [phone] (fax) vhardyCfdpelaw.com

O/counsel:
S. Calvin Capshaw State Bar No. 03783900 Elizabeth L. DeRieux State Bar No. 05770585
CAPSHAW DERíEUX

1127 Judson Road, Suite 220 P.O. Box 3999 Longview, TX 75606-3999 [phone] [phone] (fax) ccapshaWCfcapshawlaw.cöm

RobertM. Parker State Bar No. 15498000 Robert C. Bunt State Bar No. 00787165 Charles Ainsworth State Bar No. 0078352
PARKER, BUNT & AINSWORTH, P.C. 100 East Ferguson, Suite 1114

Tyler, Texas 75702 [phone] [phone] (fax)

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CERTIFICATE OF CONFERENCE
SRA's counsel has conferred with Defendants' counseL. Defendants' counsel have

stated that they do not believe that SRA requires any discovery to response to their Motion to
Transfer and that they caiot agree to an extension beyond March 31, 2009. See Exhibit 1
attached hereto.

Lee L. Kaplan .

L,,~ ~/~ (~~

CERT1FICATE OF SERVICE
I hereby certify that a true and correct copy of the above and foregoing instrument has been forwarded to all counsel of record pursuant to Federal Rules of Civil Procedure on this the
4th day of

March, 2009.

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