Wireless Recognition Technologies LLC v. A9.com, Inc. et al

Filing 68

RESPONSE in Opposition re 62 Opposed MOTION to Change Venue to the U.S. District Court for the Northern District of California Pursuant to 28 U.S.C. § 1404(a)Opposed MOTION to Change Venue to the U.S. District Court for the Northern District of California Pursuant to 28 U.S.C. § 1404(a)Opposed MOTION to Change Venue to the U.S. District Court for the Northern District of California Pursuant to 28 U.S.C. § 1404(a) filed by Wireless Recognition Technologies LLC. (Attachments: # 1 Exhibit A - Declaration of Bradley J. Botsch, # 2 Exhibit B - Declaration of Craig Yudell, # 3 Exhibit C - "Hiding in Plain Sight, Google Seeks More Power," The New York Times, June 14, 2006, # 4 Exhibit D - Areas of Focus at Bangalore Center, Amazon Development Center, India, # 5 Exhibit E - Areas of Focus at Bangalore Center, Amazon Development Center, India, # 6 Exhibit F - Nokia Point & Find, May 17, 2010, # 7 Exhibit G - Unicorn Media Company, Executive Staff, # 8 Exhibit H - Unicorn Media Contact Information, # 9 Exhibit I - Declaration of Raymond F. Ratcliff, III, July 24, 2001, # 10 Exhibit J - U.S. Patent No. 7,392,287, # 11 Exhibit K - Revocation and Appointment of New Power of Attorney of Craig Yudell, February 19, 2009, # 12 Exhibit L - Power of Attorney Regarding Pillsbury Winthrop LLP, July 24, 2002, # 13 Exhibit M - Correspondence from Kelber to Assistant Commissioner for Patents, Regarding Revocation of Power of Attorney and New Power of Attorney Re Piper Rudnick LLP, April 21, 2004, # 14 Exhibit N - July 19, 2007 Amendment Re '287 Patent, # 15 Exhibit O - Northern District of California Judicial Caseload Profile, # 16 Exhibit P - Eastern District of Texas Judicial Caseload Profile, # 17 Exhibit Q - NovelPoint Learning LLC v. LeapFrog Enterprises, Inc., et al., Case No. 6:10-cv-229, (EDTX), Dkt. 67 Memorandum Opinion and Order, # 18 Exhibit R - Optimum Power Solutions LLC v. Apple Inc., et al., Case No. 6:10-cv-61 (EDTX), Dkt. 69 Defendant's Initial Disclosures, # 19 Exhibit S - Calypso Wireless, Inc. and Drago Daic v. T-Mobile USA, Inc., Case No. 2:08-cv-441 (EDTX), Dkt. 146, Order Denying Motion to Transfer)(Davis, William) (Additional attachment(s) added on 4/28/2011: # 20 Text of Proposed Order) (ch, ).

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
v.
A9.COM, INC.,
AMAZON.COM, INC.,
GOOGLE, INC.,
NOKIA, INC.
and
RICOH INNOVATIONS, INC.
Defendants.

)
)
)
)
)
)
)
)
)
)
)
)
)
)
)

C.A. No. 2:10-cv-00364-TJW-CE

JURY TRIAL DEMANDED

PLAINTIFF WIRELESS RECOGNITION TECHNOLOGIES LLC’S
RESPONSE IN OPPOSITION TO DEFENDANTS' MOTION
TO TRANSFER VENUE TO THE NORTHERN
DISTRICT OF CALIFORNIA UNDER 28 U.S.C. § 1404(A)

TABLE OF CONTENTS
I.

INTRODUCTION .................................................................................................................. 1

II.

STATEMENT OF RELEVANT FACTS ............................................................................... 1

III.

POINTS AND AUTHORITIES .......................................................................................... 2

A.

The Private Interest Factors Do Not Render The Northern District of California

Clearly More Convenient ......................................................................................................... 3
1.

Relative Ease of Access to Sources of Proof ................................................................ 4

2.

Availability of Compulsory Process ........................................................................... 10

3.

Cost of Attendance for Willing Witnesses ................................................................. 11

4.

Other Practical Problems ............................................................................................ 12

B.

The Public Interest Factors Do Not Render the Northern District of California

Clearly More Convenient ....................................................................................................... 13
1.
2.

Local Interest .............................................................................................................. 14

3.

Familiarity with the Governing Law .......................................................................... 15

4.
IV.

Court Congestion ........................................................................................................ 13

Avoidance of Conflicts of Laws ................................................................................. 15
CONCLUSION .................................................................................................................. 15

ii

TABLE OF AUTHORITIES

CASES
Aloft Media, Inc. v. Yahoo!, Inc., 2009 U.S. Dist. LEXIS 48716, (E.D. Tex. 2009).................... 14
Calypso Wireless, Inc. v. T-Mobile USA, Inc., Order, Case No. 2:08-cv-441 (E.D. Tex. Mar. 31,
2010) ....................................................................................................................................... 5, 8
Gardipee v. Petroleum Helicopters, Inc., 49 F. Supp. 2d 925, 928 (E.D. Tex. 1999).................... 3
In re Hoffman-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009) .......................................... 14
In re Horseshoe Entm't, 337 F.3d 429, 434 (5th Cir. 2003) ........................................................... 8
In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008) ...................................... 2, 3, 4, 5
In re Volkswagen AG (“Volkswagen I”), 371 F.3d 201, 203 (5th Cir. 2004) .................... 3, 11, 13
In re Volkswagen of Am., Inc. (“Volkswagen II”), 545 F.3d 304 (5th Cir. 2008) ................. passim
In re Volkswagen of Am., Inc. (“Volkswagen III”), 566 F.3d 1349 (Fed. Cir. 2009) ............... 2, 13
NovelPoint Learning LLC v. LeapFrog Enterprises, Inc., et al., Memorandum Opinion and
Opinion, Case No. 6:10-cv-229 (E.D. Tex. Dec. 6, 2010).................................................... 8, 13
Optimum Power Solutions LLC v. Apple, Inc., Memorandum Opinion and Order, Case No. 6:10cv-61 (E.D. Tex. Feb. 22, 2011) ..................................................................................... 4, 10, 11
Red River Fiber Optic Corp. v. Verizon Servs. Corp., 2010 WL 1076119 (E.D. Tex., Mar. 23,
2010) ........................................................................................................................................... 4
See Paltalk Holdings, Inc. v. Sony Computer Entertainment Am., Inc., Case No. 2:09-CV-274DF-CE 2010 U.S. Dist. LEXIS 92229 (E.D. Tex. 2010)............................................................ 3
Shoemake v. Union Pac. R.R. Co., 233 F. Supp. 2d 828, 830 (E.D. Tex. 2002) ............................ 8

iii

STATUTES
28 U.S.C. § 1404(a) ............................................................................................................... passim

RULES
Local Rule CV-7(g) ...................................................................................................................... 15

TREATISES
15 C. Wright, A. Miller & E. Cooper, FEDERAL PRACTICE AND PROCEDURE § 3848, at
398 (2d. ed. 1986) ....................................................................................................................... 3

iv

I.

INTRODUCTION
Pending before the Court in the above-captioned proceeding is a motion to transfer venue

(“Motion” or “Mot.”) jointly filed by all Defendants 1 (collectively, “Movants”). By the Motion,
the Movants seek an Order transferring this case to the United States District Court for the
Northern District of California. Plaintiff Wireless Recognition Technologies LLC (“WRT”)
respectfully opposes the Motion, and submits for the Court’s consideration the following
response in opposition (“Opposition” or “Opp.”).
II.

STATEMENT OF RELEVANT FACTS
This action arises out of Movants’ accused infringement of U.S. Pat. No. 7,392,287 (the

“‘287 Patent”), claiming systems and methods for sending information to a data processing
apparatus for identifying a document to share with a recipient. 2 WRT is the owner by assignment
of all right, title, and interest in the '287 Patent. 3
WRT is a limited liability company, organized and existing under the laws of Texas. 4
WRT maintains its principal place of business within this District and has done so since June 24,
2010. 5 “WRT is not registered to do business in California, has no designated registered agent
for service of process in California, and does not maintain or own any offices, places of business,
post office boxes, telephone listings, real estate, bank accounts, or other interest in any property
in California.” 6
1

A9.com, Inc. (hereinafter “A9”), Amazon.com (hereinafter “Amazon”), Google Inc.
(hereinafter “Google”), Nokia Inc. (hereinafter “Nokia”) and Ricoh Innovations, Inc. (hereinafter
“RII”).
2
Dkt. No. 1 at ¶ 13.
3
Id. at ¶ 12.
4
Ex. A to Opp. at ¶ 2.
5
Id. at ¶ 3.
6
Id. at ¶ 4.
1

Movants consist of (i) Amazon, a Delaware corporation headquartered in Seattle,
Washington; 7 (ii) A9, a wholly owned subsidiary of Amazon, having offices in Palo Alto,
California, and presumably headquartered in Seattle, Washington by virtue of its 2009
acquisition by Amazon; 8 (iii) Google, a Delaware corporation headquartered in Mountain View,
California, 9 (iv) Nokia, a Delaware corporation headquartered White Plains, New York, and
indirect subsidiary of Nokia Corp., a publicly held Finnish company with a principal place of
business in Espoo, Finland; 10 and (v) RII, a California corporation with principal business in
Menlo Park, California, and subsidiary of the foreign entity Ricoh Company, Ltd., 11
III.

POINTS AND AUTHORITIES
“For the convenience of the parties and witnesses, in the interest of justice, a district court

may transfer any civil action to any other district or division where it might have been brought.”
28 U.S.C. § 1404(a) (“§ 1404(a)”). As the Federal Circuit looks to regional circuit law with
respect to venue transfer motions in patent cases, the present Motion is governed by the law of
the Fifth Circuit. In re Volkswagen of Am., Inc. (“Volkswagen II”), 545 F.3d 304 (5th Cir. 2008)
(en banc) (emphasis added); see also In re Volkswagen of Am., Inc. (“Volkswagen III”), 566 F.3d
1349 (Fed. Cir. 2009) (applying the Volkswagen II holding to transfer motions from the Fifth
Circuit).
The present burden is not on WRT, but rather on the Defendants seeking transfer, to
show good cause for the transfer. Volkswagen II, 545 F.3d at 315; In re TS Tech USA Corp., 551
F.3d 1315, 1320 (Fed. Cir. 2008) (emphasis added). Under the good cause standard, “when the
7

Dkt. No. 47 at ¶ 4.
Mot. at 2, 3; Ex. D to Mot. at ¶¶ 4-6.
9
Mot. at 2.
10
Mot. at 3; Ex. F. to Mot. at ¶ 2.
11
Mot. at 3; Ex. E to Mot. at ¶¶ 3, 14.
8

2

transferee venue is not clearly more convenient, the plaintiff’s choice [of venue] should be
respected.” Volkswagen II, 545, F.3d at 315; see also In re TS Tech, 551 F.3d at 1320.
This action arises directly and proximately from Defendants' purposeful activities
infringing WRT's patents in this District. The Court should not transfer venue to the Northern
District of California under § 1404(a) because Movants have failed to meet their substantial
burden in establishing that the convenience of the witnesses and parties and the interests of
justice are substantially furthered by such a transfer. See Paltalk Holdings, Inc. v. Sony Computer
Entertainment Am., Inc., Case No. 2:09-CV-274-DF-CE 2010 U.S. Dist. LEXIS 92229 (E.D.
Tex. 2010) *9-10. If, as here, the transfer merely shifts the inconvenience from one party to
another, transfer should be denied. See Gardipee v. Petroleum Helicopters, Inc., 49 F. Supp. 2d
925, 928 (E.D. Tex. 1999) (quoting 15 C. Wright, A. Miller & E. Cooper, FEDERAL
PRACTICE AND PROCEDURE § 3848, at 398 (2d. ed. 1986)).
The initial threshold question is whether the suit could have been brought in the
transferee district. In re Volkswagen AG (“Volkswagen I”), 371 F.3d 201, 203 (5th Cir. 2004).
Once the threshold is met, the court weighs several private interest factors – relating to the
convenience of the litigants – and public interest factors – relating to the efficient administration
of justice – with no single factor awarded dispositive weight. Volkswagen I, 371 F.3d at 203; In
re TS Tech., 551 F.3d at 1319.
A.

The Private Interest Factors Do Not Render The Northern District of

California Clearly More Convenient 12

12

“The private interest factors are: ‘(1) the relative ease of access to sources of proof; (2) the
availability of compulsory process to secure the attendance of witnesses; (3) the cost of
attendance for willing witnesses; and (4) all other practical problems that make trial of a case
easy, expeditious, and inexpensive.’” Volkswagen II, 545 F.3d at 315 (quoting Volkswagen I, 371
F.3d at 203).
3

Contrary to Movants’ assertions, the private interest factors fail to support the Motion.
1.

Relative Ease of Access to Sources of Proof

Given that the headquarters of some of the Defendants are in Silicon Valley, WRT freely
admits that a number witnesses may be located at the proposed transferee jurisdiction. However,
technological advances have certainly lightened any inconvenience for Movants in transporting
documents across the country, notwithstanding that ease of access to sources of proof is still a
factor in the transfer analysis. Optimum Power Solutions LLC v. Apple, Inc., Memorandum
Opinion and Order, Case No. 6:10-cv-61 (E.D. Tex. Feb. 22, 2011) 13 (emphasis added) (citing
Volkswagen II, 545 F.3d at 316).
Movants’ reference to Genentech notwithstanding, 14 they have not established that any
of their evidence cannot be produced electronically, 15 or that otherwise transporting the physical
evidence to Marshall, Texas would pose an additional inconvenience as opposed to transporting
the same to Northern California. See Red River Fiber Optic Corp. v. Verizon Servs. Corp., 2010
WL 1076119 (E.D. Tex., Mar. 23, 2010) (citing In re TS Tech, 551 F.3d at 1321.).
Furthermore, WRT has had no opportunity to perform any discovery to determine which
party or non-party witnesses’ testimony it would need to prove its infringement and damages
contentions. Movants attempt to map the present facts to Optimum Power Solutions, supra,16
where the Court held for motion transfer to the Northern District of California. 17 However, in
Optimum Power Solutions, defendants had served their respective initial disclosures, such that
the Court could make a meaningful evaluation of which persons bear knowledge of relevant facts
13

See Ex. N. to Mot. at 3.
See Mot. at 8, quoting In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009).
15
On this point, one Movant’s computing facilities are arguably unparalleled in the world. See,
e.g., Ex. C to Opp. at ¶ 5, 1, and ¶ 1, 3.
16
Ex. N to Mot.
17
See Mot. at 10, ¶ 2.
14

4

and the scope of their knowledge – not the case here. 18 In fact, WRT is left having to rely upon
Movants’ affidavits – clearly calculated to win its Motion – to offer where documents and
witnesses relating to allegedly infringing products may be located.
In Volkswagen II and In re TS Tech, “access to the physical evidence was clearly more
convenient in the proposed transferee venue.” Calypso Wireless, Inc. v. T-Mobile USA, Inc.,
Order, Case No. 2:08-cv-441 (E.D. Tex. Mar. 31, 2010). 19 In both of those cases, the sources of
proof were indeed “clustered near the proposed transferee district.” Id. 20 On the contrary, here
there is no clustering of sources of proof near the propounded transferee venue, but rather
widespread distribution, and hence the Northern District of California is no more convenient than
the Eastern District of Texas, and certainly not clearly so.
Taking Movant Google as example, it is undisputed that that Google’s headquarters are in
the Northern District of California. However, realizing headquarters location is neither
dispositive nor necessarily determinative of where the sources of proof reside, Movants offer
affidavits of informed personnel regarding the accused infringing products – namely the affidavit
of Mr. David Petrou for Google Goggles, and that of Mr. Richard Hung for Google Shopper. 21
Beginning with Google Goggles, Mr. Petrou admits the records, source code and other
materials for its allegedly infringing product Google Goggles are not limited to Mountain View,
California, but also reside in Santa Monica (in the Central District of California) and New York,

18

See Ex. R to Opp. (showing extracted first pages of defendants’ initial disclosures).
Ex. S to Opp. at ¶ 2, 5.
20
(further stating “In Volkswagen II, all of the physical evidence was located within the proposed
transferee venue . . . Similarly in TS Tech, all of the sources of proof were located within 300
miles of the proposed transferee district, the Southern District of Ohio, and the original venue,
the Eastern District of Texas, was about 900 additional miles away.”)
21
See Exs. B, C to Mot.
19

5

New York. 22 Regarding witnesses, despite that two individuals in Mountain View are mentioned,
another individual resides in Santa Monica. Mr. Petrou, himself the technical lead offering the
affidavit, and therefore a more likely potential witness for WRT, states that he works and resides
in New York, New York. 23
With regard to Google Shopper, Movants’ position is even more tenuous. According to
affiant, of the individuals responsible for development, the majority – seven – work in and
reside near New York, New York, and the remaining four are employed and reside near
Waterloo, Canada. 24 The records, source code and other materials concerning Google Shopper
are also not confined to Mountain View either, being also located in New York, New York and
Waterloo, Canada. 25 Accordingly, ease of access to Defendant Google’s documents and
witnesses is no less a burden in the Eastern District of Texas than in the Northern District of
California, and certainly not “clearly more convenient” in the proposed transferee district.
In fact, a closer look at the sources of proof leaves more gaping holes in Movants’
position. Movant Amazon, headquartered in Seattle Washington, states that its employees
familiar with its mobile applications are located in Seattle, Washington, not California. 26 It also
neglects to mention its development center in India, where witnesses may be located. 27
A9 sets forth that “some” of its employees knowledgeable about SnapTell 28 work in Palo
Alto, and that it is unaware of employees within the Eastern District of Texas. 29 It neglects to

22

Ex. B to Mot. at ¶ ¶ 5, 7.
Ex. B to Mot. at ¶ ¶ 4, 5.
24
Ex. C to Mot. at ¶ 5.
25
Ex. C to Mot. at ¶ 7.
26
Ex. D to Mot. at ¶ 8.
27
Ex. D to Opp.
28
I.e., the company that developed the accused infringing technology, and was acquired by
Amazon.
29
Ex. D to Mot. at ¶¶ 6, 9.
23

6

mention that some other employees may be working in Bangalore, India, where the Amazon
subsidiary researches and builds innovative technologies. 30 Amazon’s accused infringing
Amazon Remembers and Price Check similarly use the underlying visual search engine of
SnapTell, the company acquired by A9. 31 Accordingly, it is neither unreasonable to assume there
may be valuable witnesses for Movants Amazon and A9 in India, nor that key source code and
other documentation would be easily electronically accessible between different locations in the
world, whether the accessing computer were located in Palo Alto, California, or in Marshall,
Texas.
RII mentions that the majority of its developers for its accused products French Rev and
DriveTube are located in the California, though the names and scope of knowledge of its
developers in Costa Rica and Peru are not presented. 32
Nokia, headquartered in White Plains, New York, not California, sets forth that the
majority of individuals involved with the accused infringing Point & Find product are located in
Silicon Valley, California, with the remainder located near London, United Kingdom and Oulu,
Finland. 33 As there has been no discovery, WRT cannot determine which individuals, the ones in
Silicon Valley or the ones abroad, have valuable insight regarding the accused product.
Furthermore, as the affiant is a litigation paralegal and not a Point & Find developer, the scope
of affiant’s personal knowledge is questionable, 34 and no testimony has been provided regarding
the due diligence employed, if any. For example, the lead software engineer for Point & Find – a
likely candidate for inquiry by WRT – is currently employed by Unicorn Media, Inc., a company

30

Ex. E to Opp. at ¶ 1, 1.
Ex. D to Mot. at ¶ 8.
32
Ex. E to Mot. at ¶ 6.
33
Ex. F to Mot. at ¶ 5.
34
Ex. F to Mot. at ¶ 1.
31

7

headquartered in Temple, Arizona, a fact Nokia was not motivated to investigate for its present
purpose. 35
Accordingly, rather than clustered sources of proof near Defendant Movants’ preferred
venue of the Northern District of California, the sources of proof for the present civil action are
widespread across the United States, and indeed internationally. See, e.g., Calypso Wireless,
supra. 36
Turning to plaintiff WRT’s choice of forum, though WRT’s decision to use the present
forum is not determinative, it is still a factor to be considered, In re Horseshoe Entm't, 337 F.3d
429, 434 (5th Cir. 2003), and not to be disturbed unless clearly outweighed by other factors.
Shoemake v. Union Pac. R.R. Co., 233 F. Supp. 2d 828, 830 (E.D. Tex. 2002). WRT’s specific
ties to the Eastern District of Texas, and general ties to Texas as opposed to California cannot be
easily dismissed, contrary to the Movants’ opinion.
Movants prefer to dismiss WRT as a recently formed, ephemeral entity, not properly
subject to Eastern District venue. Their arguments notwithstanding, WRT made affirmative
choices to incorporate in the State of Texas, and located its offices in Frisco, Texas, in the
Eastern District of Texas. 37 In addition, the suit was filed nearly three months from formation,
and this Court has found that Texas incorporation four months prior to filing suit is not a
“recent” formation under Federal Circuit precedence. NovelPoint Learning LLC v. LeapFrog
Enterprises, Inc., et al., Memorandum Opinion and Opinion, Case No. 6:10-cv-229 (E.D. Tex.
Dec. 6, 2010). 38
Movants have apparently checked the prosecution history enough to determine that the
35

Ex. F to Opp. at ¶ 1, 1; Exs. G, H to Opp.
Ex. S to Opp., at ¶ 2, 5.
37
Ex. A to Opp. at ¶¶ 2, 3; See also, Ex. G to Mot.
38
Ex. Q to Opp. at ¶ 2, 8.
36

8

original patent prosecutor, Mr. John F. Griffith, is located in Northern California. 39 In fact,
Movants’ proof is actually garnered from the inventor’s declaration, the same declaration that
shows Mr. Raymond F. Ratcliff, III – the sole inventor – to reside in Plano, Texas, 40 as also
demonstrated by the front page of the ‘287 Patent. 41 The declaration was signed by Mr. Ratcliff
on July 24, 2001, over nine years before the present suit was filed, and Movants’ have noted that
he currently resides in Austin. 42 Accordingly, it is hardly unreasonable that WRT would desire to
pursue justice under the present forum.
Furthermore, the current prosecuting patent attorney for the ‘287 Patent is a founding
partner of an intellectual property law firm located in nearby Austin, Texas as well. 43 Notably, as
revealed by the prosecution history, Mr. Yudell has represented the applicant since February 19,
2009, about seventeen months before WRT filed suit. 44
Notwithstanding Movant’s point that the original patent prosecutor, Mr. John F. Griffith,
is located in Northern California, attorneys of Pillsbury Winthrop, LLP, located in Washington,
DC and McLean, Virginia, took over patent prosecution on August 1, 2002, 45 and maintained
prosecution until Mr. Yudell took it over in February, 2009. 46
Finally, Movants argue the Northern District of California is more convenient for the
witnesses as Acacia Research Corporation (WRT's ultimate parent) is located in California.47
However, the point is a red herring since Acacia is located in southern California.

39

Ex. K to Mot. at 2; See also Ex. I to Opp. at 2 (which may be easier to view).
Id.
41
Ex. J to Opp. at line ‘(75)’.
42
See Mot. at 5.
43
Ex. B to Opp. at ¶ 3.
44
Ex. K to Opp.
45
Ex. L to Opp.; Ex. M to Opp.
46
See Ex. N to Opp. at 1, 15 (last filed response); see also Ex. K to Opp.
47
Mot. at ¶ 4, 10, ¶ 1, 11.
40

9

Accordingly, as Movants have not met their substantial burden, transfer under § 1404(a)
is not appropriate.
2.

Availability of Compulsory Process

“This factor will weigh more heavily for transfer when more third-party witnesses reside
within the non-transferee venue.” Optimum Power Solutions, supra. 48
Movants identify the original patent prosecutor, Mr. John F. Griffith, as a non-party
witness, and two contractors named by RII. 49
WRT notes that sole inventor, Mr. Raymond Ratcliff, is a non-party who has resided in
Plano, Texas, 50 and from Movants’ investigation, currently resides in Austin.

51

The current

prosecuting patent attorney, Mr. Craig Yudell, is a non-party who lives in Austin, Texas and
works in Austin, Texas. Before Mr. Yudell’s handling of the prosecution on February 19, 2009,
non-party attorneys of Pillsbury Winthrop, LLP, having offices in Washington, DC and McLean,
Virginia handled the patent prosecution,

52

from August 1, 2002 to February 19, 2009.

53

In

particular, Messrs. Steven B. Keller and Dale Lazar appear in the file history with Washington,
DC and Virginia addresses. 54
As the foregoing non-party witnesses are indeed closer to the Eastern District of Texas
than the Northern District of California, the factor either disfavors transfer under § 1404(a) or is
neutral.

48

Ex. N to Mot. at ¶ 2, 4, citing Volkswagen II, 545 F.3d at 316.
Mot. at ¶ 2, 11.
50
See Mot. at ¶ 4, 5.
51
Ex. B to Opp. at ¶ 4.
52
Ex. L to Opp.; Ex. M to Opp.
53
See Ex. N to Opp. at 1, 15 (last filed response); see also Ex. K to Opp.
54
See, e.g., Ex. M to Opp. at 1, and Ex. N to Opp. at 15.
49

10

3.

Cost of Attendance for Willing Witnesses

The Fifth Circuit has set a ‘100-mile’ rule to evaluate witness convenience. Volkswagen
I, 371 F.3d at 204, 205. 55 The Fifth Circuit recognizes the inconvenience to witnesses factor
broadly, giving “consideration [to] the parties and witnesses in all claims and controversies
properly joined in a proceeding.” Id., at 204. See also, Optimum, supra at 4. 56
Without repeating the foregoing discussion, and in view of the Fifth Circuit’s broad
perspective, the following summary may be made. 57 Google witnesses for the accused infringing
products Google Goggles and Google Shopper are likely located in New York and California.
A9 and Amazon witnesses for accused infringing products SnapTell, Amazon Remembers and
Price Check are likely located in Seattle, Washington, Palo Alto, California and Bangalore,
India. RII witnesses for accused products French Rev and DriveTube are likely located in
Northern California, Costa Rica and Peru. Nokia witnesses for accused product Point & Find are
likely located in Tempe, Arizona, Silicon Valley, California, London, United Kingdom, Oulu,
Finland and New York, New York.
With respect to fact witnesses bearing direct knowledge of the invention, patent and
prosecution history, the locations include Austin, Texas for the inventor Mr. Ratcliff, Austin,
Texas for the current patent prosecutor Mr. Yudell, and Washington, DC and Northern Virginia
for patent prosecutors of Pillsbury Winthrop, LLP, and California for the first prosecutor John F.
Griffith.

55

("When the distance between an existing venue for trial of a matter and a proposed venue
under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses increases in
direct relationship to the additional distance to be traveled.")
56
(“All potential material and relevant witnesses must be taken into account for the transfer
analysis, irrespective of their centrality to the issues raised in a case or their likelihood of being
called to testify at trial.”)
57
See § III.A.1 of this Opp.
11

As there is great geographic diversity between likely Movants’ witnesses and closer
proximity to Texas among WRT’s witnesses, the factor either disfavors transfer or is neutral
under § 1404(a).
4.

Other Practical Problems

Judicial economy favors WRT’s position of non-transfer. The Complaint case was filed
on September 14, 2010, over six months ago. 58 Since that time, Movant Defendants have been
properly served, 59 have appeared 60, answered, 61 and filed corporate disclosures, 62 and WRT has
answered counterclaims. 63 Parties also attended a February 16 status conference where Markman
and jury selection dates were set. 64 After some three weeks of negotiations between parties, on
March 23, they stipulated to, and WRT filed, a Joint Motion for Entry of Discovery Order and
Docket Control Order, 65 which Orders were respectively entered by the Court the following
day. 66 Per the Order, initial disclosures and WRT’s infringement contentions are due on May 5.
Furthermore, three related cases have been filed before the Court, including: 2:10-cv00365-TJW-CE, filed contemporaneously and asserting the ‘287 Patent against the parent
entities of Nokia and RII; 2:10-cv-00577-TJW, filed on December 21 and asserting related U.S.
Patent No. 7,856,474 (‘474 Patent) against the present Movants; and 2:10-cv-00578-DF, filed on
December 21 and asserting the ‘474 Patent against the parent entities of Nokia and RII.
Accordingly, a transfer would lead to tremendous wasting of court resources. Volkswagen III,

58

Dkt. No. 1.
Dkt. No. 8-10, 12, 13, 16.
60
Dkt. Nos. 22, 27, 32, 33, 36, 39-41, 48 49, 51, 52.
61
Dkt. Nos. 25, 28, 30, 34, 37.
62
Dkt. No. 24, 26, 31, 35, 38.
63
Dkt. Nos. 42-47.
64
Minute Entry, Feb. 16, 2011.
65
Dkt. No. 61.
66
Dkt. Nos. 63, 64.
59

12

566 F.3d at 1349 (“[T]he existence of multiple lawsuits involving the same issues is a paramount
consideration when determining whether a transfer is in the interest of justice.”)
B.

The Public Interest Factors Do Not Render the Northern District of

California Clearly More Convenient 67
1.

Court Congestion

Court congestion is considered the most speculative of the factors, and may not, by itself,
outweigh others. NovelPoint Learning, supra68, citing Genentech, 566 F.3d at 1347. “However,
the speed with which a case may get to trial is relevant to the § 1404(a) analysis.” Id.
Here, Movants compare the actual trial time for the case, namely 33 months from the
present, to 2009 Federal Court Management Statistics for the Northern District of California,
which indicate an average of 24.5 months from filing to trial for civil cases. 69
This curiously apples-to-oranges approach is obviously devised to show great disparity
between getting to trial in the Eastern District of Texas versus the proposed transferee district.
However, an apples-to-apples approach, namely comparing Federal Court Management Statistics
between both forums for 2009, has the Eastern District of Texas at an average of 25.0 months to
trial versus the above noted 24.5 for the Northern District of California. 70 For 2010, the numbers
are even closer, with the Eastern District of Texas having an average of 21.7 months to trial
versus 21.5 months for the Northern District of California. 71 Accordingly, the factor is neutral

67

“The public interest factors are: ‘(1) the administrative difficulties flowing from court
congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity
of the forum with the law that will govern the case; and (4) the avoidance of unnecessary
problems of conflict laws or in the application of foreign law.’” Volkswagen II, 545 F.3d at 315
(quoting Volkswagen I, 371 F.3d at 203).
68
Ex. Q to Opp. at 13.
69
Ex. O to Mot.
70
Exs. O, P to Opp.
71
Id.
13

under § 1404(a).
2.

Local Interest

To the best of WRT’s knowledge, any of the Movants headquartered in California sell
their products nationwide. Nationwide sales of a product are disregarded in favor of
particularized local interests. In re Hoffman-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir.
2009). Thus, this Court has observed that, in a patent case where defendants sell products
throughout the United States, no specific venue has a dominant interest in resolving the issue of
patent infringement. Aloft Media, Inc. v. Yahoo!, Inc., 2009 U.S. Dist. LEXIS 48716, (E.D. Tex.
2009) *22, *23.
Movants posit that “the ‘local interest’ factor is of particular relevance to this action, and
weighs heavily in favor of transfer to the Northern District of California.” 72 The reason provided
is that the Defendants being alleged to infringe the ‘287 Patent are “concentrated in,” California,
and the action “calls into question the work and reputation of these companies and their
employees, a majority of whom are residents of California [].” 73
Movants apparently rely upon In re Hoffmann-La Roche, 587 F.3d at 1338, and its
progeny, the former holding “if there are significant connections between a particular venue and
the events that gave rise to a suit, this factor should be weighed in that venue's favor.” Id.
However, Movants’ statements are neither clear nor accurate.
First, the Northern District of California has no greater interest in the action than do the
districts in which the non-California defendants are located. Accordingly, even if the Eastern
Texas has no interest in the matter, there would be insufficient basis for holding this factor to
favor a transfer to the Northern California.
72
73

Mot. at ¶ 1, 14.
Id. at ¶ 2, 14.
14

Secondly, if California has an interest in this matter because a number of its citizens are
named as defendants, then Texas also has an interest, by virtue of its citizens, WRT, as well as
Mr. Ratcliff, the inventor, and Mr. Yudell, the prosecuting attorney, being apparent residents of
Texas. Movants cannot propound their local interests and deny WRT’s. Accordingly, the factor
is neutral under § 1404(a).
3.

Familiarity with the Governing Law

Movants make no assertions that courts in the Northern District of California are more
familiar with patent law than in the Eastern District of Texas. In fact, they assert both districts
are well served by judiciaries adept at handling patent litigation. 74 WRT agrees. This factor is
either inapplicable in this case, or neutral to the Court's determination under § 1404(a).
4.

Avoidance of Conflicts of Laws

Movants assert that there are no perceived conflict of law issues. 75 WRT agrees. The
factor is therefore inapplicable in this case, and neutral to the Court’s determination under §
1404(a).
IV.

CONCLUSION
Movants have not met their burden of showing that transfer to the Northern District of

California is warranted under § 1404(a). 76 Thus, the Motion should be denied. To the extent that
it would assist the Court, oral argument is requested under Local Rule CV-7(g).

74

Mot. at 15.
Id.
76
Specifically, they have failed to demonstrate that the balance of private and public interest
factors reveals that the Northern District of California is “clearly more convenient” as the venue
for this case than the Eastern District of Texas.
75

15

Dated: April 25, 2011

Respectfully Submitted,

By: /s/ William E. Davis, III
William E. Davis, III
Texas State Bar No. 24047416
The Davis Firm, P.C.
111 W. Tyler St.
Longview, Texas 75601
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
Of Counsel
Cameron H. Tousi
David M. Farnum
Ralph P. Albrecht
Albrecht Tousi & Farnum, PLLC
1701 Pennsylvania Ave, NW Ste 300
Washington, D.C. 20006
Telephone: [phone]
Facsimile: [phone]

ATTORNEYS FOR DEFENDANT
WIRELESS RECOGNITION
TECHNOLOGIES LLC

16

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are
deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R.
Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have
consented to electronic service were served with a true and correct copy of the foregoing by
email, on this the 25th day of April, 2011.
/s/ William E. Davis, III
William E. Davis, III

17