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

Filing 73

REPLY to Response to Motion 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 A9.com, Inc., Amazon.com, Inc., Google, Inc.,. (Attachments: # 1 Exhibit P, # 2 Exhibit Q)(Shvodian, Daniel)

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

WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
vs.
A9.COM, INC., AMAZON.COM, INC.,
GOOGLE INC., NOKIA, INC., and
RICOH INNOVATIONS, INC.,
Defendants.

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CIVIL NO. 2:10-CV-00364-TJW-CE

REPLY OF DEFENDANTS A9.COM, INC., AMAZON.COM, INC., GOOGLE INC.,
NOKIA INC., AND RICOH INNOVATIONS, INC. IN SUPPORT OF THEIR MOTION
TO TRANSFER TO THE U.S. DISTRICT COURT FOR THE NORTHERN
DISTRICT OF CALIFORNIA PURSUANT TO 28 U.S.C. § 1404(a)

TABLE OF CONTENTS
Page
I.

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

II.

ARGUMENT....................................................................................................................... 1
A.

Given The Complete Absence Of Witnesses And Evidence In The Eastern
District Of Texas, The Private Interest Factors Show That The Northern
District Of California Is Clearly More Convenient ................................................. 1
1.
2.

WRT Has Failed To Identify A Single Witness That Would Be
Within The Compulsory Power Of The Eastern District Of Texas ............. 5

3.

Northern California Is More Convenient For Third-Party And
Party Witnesses............................................................................................ 6

4.
B.

WRT Has Failed To Identify Any Sources Of Proof Located
Within The Eastern District Of Texas ......................................................... 1

Trial In Northern California Will Be Easier, More Expeditious,
And Less Expensive..................................................................................... 8

WRT Failed To Rebut That Public Interest Factors Also Weigh In Favor
Of Transferring The Case To The Northern District Of California......................... 8
1.

2.

III.

It Is Undisputed That The Average Time To Trial In The Northern
District Of California Is Less Than The Time To Trial For This
Case In The Eastern District Of Texas ........................................................ 9
Given That WRT Fails To Identify Any Local Interests In The
Eastern District Of Texas, The Local Interests In The Northern
District Of California Weigh In Favor Of Transfer ..................................... 9

CONCLUSION.................................................................................................................. 10

i

I.

INTRODUCTION
In their opening brief and supporting declarations, Defendants identify specific witnesses

and evidence located in the Northern District of California that relate to each of the Defendants
and each of the accused products in this case. Those witnesses and evidence render that district a
clearly more convenient venue for this litigation. In opposition to Defendants’ motion, WRT
fails to identify a single relevant witness or piece of evidence in the Eastern District of Texas.
Because there is no material connection between this litigation and the Eastern District of Texas,
WRT resorts to misdirection and arguments that have been rejected by this Court, the Fifth
Circuit, and the Federal Circuit. In doing so, WRT fails to rebut Defendants’ showing that the
Northern District of California is a clearly more convenient venue, and therefore this case should
be transferred.
II.

ARGUMENT
WRT does not dispute that the threshold question for a motion to transfer – whether the

claims in the complaint could have been brought in the requested transferee district – is satisfied.
Thus, the Court must consider both the private and public interest factors to determine whether
the Northern District of California would be a clearly more convenient venue. In light of the
evidence offered by Defendants regarding witnesses and evidence in the Northern District of
California, coupled with WRT’s failure to identify a single witness or piece of evidence in the
Eastern District of Texas, Defendants have satisfied their burden to demonstrate that this case
should be transferred.
A.

Given The Complete Absence Of Witnesses And Evidence In The Eastern
District Of Texas, The Private Interest Factors Show That The Northern
District Of California Is Clearly More Convenient
1.

WRT Has Failed To Identify Any Sources Of Proof Located Within
The Eastern District Of Texas

Defendants submitted evidence that relevant documents and source code relating to each
of the accused products are located in the Northern District of California. (See Ex. B at ¶ 7; Ex.

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C at ¶ 7; Ex. D at ¶¶ 7-8; Ex. E at ¶¶ 7-9; Ex. F at ¶ 6.)1 In stark contrast, WRT fails to identify a
single piece of relevant evidence located in the Eastern District of Texas. As discussed in more
detail below, Defendants also identified numerous witnesses in the Northern District of
California who are likely to be sources for relevant documents. Once again, in contrast, WRT
fails to identify a single relevant witness in the Eastern District of Texas.
Unable to identify any relevant evidence located in this district, WRT resorts to untenable
arguments. First, WRT argues that technological advances have lightened any inconveniences
for the Defendants in transporting documents to the Eastern District of Texas. (Opp. Br. at p. 4.)
This argument has been rejected by the Court of Appeals for the Fifth Circuit. In re Volkswagen
of America, Inc., 545 F.3d 201 (5th Cir. 2008) (the fact “that access to some sources of proof
presents a lesser inconvenience now than it might have absent recent developments does not
render this factor superfluous”).
WRT next argues that it has not had the opportunity to take any discovery. (Opp. Br. at
p. 4.) That is false. WRT has had the opportunity to conduct discovery (see Fed. R. Civ. P.
26(d)(1)), but has chosen not to do so. WRT also tries to minimize the influence of this Court’s
decision in Optimum Power Solutions LLC v. Apple, Inc., claiming that the Optimum defendants
had served their initial disclosures, which enabled the Court to “make a meaningful evaluation of
which persons bear relevant knowledge . . .” (Opp. Br. at pp. 4-5.) Here, Defendants submitted
sworn declarations that identified the relevant witnesses and evidence located in the Northern
District of California and the lack of any relevant witnesses or evidence in the Eastern District of
Texas. Those declarations allow the Court to make a meaningful evaluation of the relevant
witnesses in this case. See, e.g., In re Genentech, Inc., 566 F.3d 1338, 1344 (Fed. Cir. 2009)
(concluding that “[t]he petitioners have identified witnesses relevant to [issues that might be
relevant at trial], and the identification of those witnesses weighs in favor of transfer. It was not

1

Exhibits A-O were submitted with Defendants’ opening brief (Dkt. No. 62-1 to 62-15).

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necessary for the district court to evaluate the significance of the identified witnesses’
testimony.”). Regardless, WRT’s argument is rendered moot because, in accordance with the
Discovery Order, Defendants have served their initial disclosures concurrent with the filing of
this reply brief. The initial disclosures once again identify numerous relevant witnesses in the
Northern District of California, and not a single relevant witness in the Eastern District of Texas.
WRT next argues that the sources of proof are not clustered in the Northern District of
California. (Opp. Br. at pp. 5-8.) That is false. While there are relevant witnesses and other
sources of proof located in various locations inside and outside the United States, there are far
more relevant witnesses and other sources of proof located in the Northern District of California
than anywhere else. (See Ex. B at ¶ 5; Ex. C at ¶ 5; Ex. D at ¶¶ 4-6, 8; Ex. E at ¶ 6; Ex. F at ¶ 5.)
Even if we accept as true WRT’s argument that the sources of proof are widely
distributed, this case should not remain in the Eastern District of Texas. That is because it is
undisputed that multiple defendants are headquartered in the Northern District of California, a
large number of witnesses and other sources of proof are located there, and there are no
identified witnesses or evidence located in the Eastern District of Texas. See Genentech, 566
F.3d at 1343-44. This holds true even if the Eastern District of Texas were “centrally located”
amongst the witnesses, which it is not. Id. (concluding that a district court may not “use[] its
central location as a consideration in the absence of witnesses within the plaintiff’s choice of
venue”). Thus, that there may be some relevant sources of proof spread outside of the Northern
District of California does not rebut Defendants’ showing that the Northern District of California
is a clearly more convenient forum. See In re Acer America Corp., Misc. Docket No. 384, 2010
U.S. App. LEXIS 24678 (Fed. Cir. Dec. 3, 2010) (“Our prior orders in venue transfer cases make
clear that the combination of multiple parties being headquartered in or near the transferee venue
and no party or witness in the plaintiff’s chosen forum is an important consideration.”).
WRT next argues that its choice of forum “is still a factor to be considered” and that its
“specific ties to the Eastern District of Texas, and general ties to Texas as opposed to California
cannot be easily dismissed . . .” (Opp. Br. at p. 8.) These arguments should be disregarded.

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First, WRT relies on outdated cases (id.), and ignores binding precedent making clear that the
plaintiff’s choice of forum is not a distinct factor to be weighed by courts in deciding whether to
transfer a case.

In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed. Cir. 2008); On

Semiconductor Corp. v. Hynix Semiconductor, Inc., No. 6:09-CV-390, 2010 U.S. Dist. LEXIS
104616 at *2 (E.D. Tex. Sept. 30, 2010) (“The plaintiff’s choice of venue is not a factor in this
analysis.”). Rather, the plaintiff’s choice of forum merely establishes the burden of proof, such
that the moving party must show that the transferee forum is clearly more convenient, which the
Defendants have done. Id. Second, WRT has not provided any evidence of ties to the Eastern
District of Texas, other than its incorporation there just three months before this suit was filed.
As Defendants pointed out in their opening brief (at p. 4) and WRT does not deny, WRT’s
alleged “business address” in Frisco is simply the address of Regus, a provider of “virtual
offices.” WRT also does not deny that it is governed by Acacia, which is based in Newport
Beach, California. (See Ex. G (to Defendants’ motion).) Indeed, the only declaration submitted
on WRT’s behalf that attests to facts about WRT as an entity (Dkt. No. 68-1) was submitted by
Bradley J. Botsch, who is an officer of Acacia located in Newport Beach, California. (See Exs.
P-Q.) Thus, WRT has failed to rebut that its presence in the Eastern District of Texas is recent,
ephemeral, and an artifact of litigation, and therefore should not be considered as part of the
motion to transfer analysis. See In re Microsoft Corp., 630 F.3d 1361, 1365 (Fed. Cir. 2010)
(rejecting the plaintiff’s attempt to rely upon an office that “staffed no employees, w[as] recent,
ephemeral, and a construct for litigation and appeared to exist for no other purpose than to
manipulate venue.”).
WRT also makes much of the fact that Craig Yudell, whom WRT describes as the
“current prosecuting attorney for the ‘287 patent,” is located in Austin, Texas. (Opp. Br. at p. 9.)
It appears, however, that Mr. Yudell had little if any actual involvement with the prosecution of
the ‘287 patent, because his current role did not begin until more than seven months after the
‘287 patent was granted. Moreover, he is located outside of the Eastern District of Texas and
almost 300 miles from Marshall.

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In sum, WRT has failed to identify a single witness or piece of evidence located in the
Eastern District of Texas, while Defendants have identified numerous witnesses and substantial
evidence located in the Northern District of California. Therefore, the “relative ease of access to
sources of proof” factor weighs heavily in favor of granting the motion to transfer.
2.

WRT Has Failed To Identify A Single Witness That Would Be Within
The Compulsory Power Of The Eastern District Of Texas

As noted in Optimum Power, the “compulsory power” factor weighs more heavily in
favor of transfer when more third-party witnesses reside within the transferee venue. Optimum
Power Solutions LLC v. Apple, Inc., Memorandum Opinion and Order, Case No. 6:10-cv-61 at p.
4 (E.D. Tex. Dec. 6, 2010) (previously submitted as Ex. N). And this factor weighs heaviest in
favor of transfer when the transferee venue has absolute subpoena power – subpoena power for
both deposition and trial. Id.
WRT does not dispute that Defendants identified three non-party witnesses that reside in
the Northern District of California and within 100 miles of all of the Northern District of
California courts and, therefore, are subject to the absolute subpoena power of the Northern
District of California. By contrast, WRT fails to identify any third-party witnesses that reside
within the Eastern District of Texas or within 100 miles of Marshall, and therefore has failed to
identify a single witness over which the Eastern District of Texas has absolute subpoena power.
Because WRT cannot dispute the fact that the Northern District of California’s
compulsory power is more significant than that of the Eastern District of Texas in this case,
WRT resorts to arguing that some third-party witnesses (two individuals that reside in Austin,
Texas, and two former prosecuting attorneys in Washington, D.C. and McLean, Virginia) are
located closer to the Eastern District of Texas than the Northern District of California. Even if
true, WRT’s argument does not address the availability of compulsory process with regard to
those witnesses and, therefore, is irrelevant to the analysis of this factor.
Thus, this factor weighs in favor of transfer.

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3.

Northern California Is More Convenient For Third-Party And Party
Witnesses

Notably absent from WRT’s opposition brief is the identification of a single relevant
witness located in the Eastern District of Texas. This stands in stark contrast to numerous party
and relevant third-party witnesses located in the Northern District of California.
Relevant Witnesses in the Northern
District of California2

Relevant Witnesses in the Eastern
District of Texas

Matt Casey (Google)

None

Ashkot Popat (Google)
Richard Hung (Google)
G.D. Ramkumar (A9/Amazon)
Gautam Bhargava (A9/Amazon)
Keshav Menon (A9/Amazon)
Arnab Dhua (A9/Amazon)
Jonathan Hull (RII)
Jamey Graham (RII)
Jorge Moraleda (RII)
Timothee Bailloeul (RII)
Xu Liu (former RII employee)
Michael Hill (RII consultant)
Michael Simbirsky (RII consultant)
20 Nokia employees and/or
contractors

2

(See Ex. B at ¶ 5; Ex. C at ¶ 5; Ex. D at ¶¶ 4-6, 8; Ex E at ¶ 6; Ex. F at ¶ 5.)

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Relevant Witnesses in the Northern
District of California2

Relevant Witnesses in the Eastern
District of Texas

John F. Griffith (original prosecuting
attorney)3
Incredibly, despite Defendants’ identification of 35 potential witnesses in the Northern District of
California and WRT’s failure to identify one witness in the Eastern District of Texas, WRT
argues that this factor either favors denying the motion or is neutral. WRT’s argument is based
upon witnesses in other jurisdictions or countries, but the Federal Circuit rejected a similar
argument in Genentech. There, the Federal Circuit stated that “[t]he witnesses from Europe will
be required to travel a significant distance no matter where they testify. In contrast to the foreign
witnesses, there are a substantial number of witnesses residing within the transferee venue who
would be unnecessarily inconvenienced by having to travel away from home to testify in the
Eastern District of Texas.” Genentech, 566 F.3d at 1344. The Federal Circuit also rejected the
plaintiff’s reliance upon U.S. witnesses in other jurisdictions in light of the number of witnesses
in the proposed forum and the lack of witnesses in the plaintiff’s chosen forum. Id. at 1345
(“Because a substantial number of material witnesses reside within the transferee venue and the
state of California, and no witnesses reside within the Eastern District of Texas, the district court
clearly erred in not determining this factor to weigh substantially in favor of transfer.”).
Thus, the sheer number of relevant witnesses located in the Northern District of
California, compared to none in the Eastern District of Texas, demonstrates that this factor
weighs heavily in favor of transfer.
3

WRT argues that because Defendants relied upon a nine-year-old invention disclosure form
(Ex. K) to prove that Mr. Griffith is located in the Northern District of California, WRT should
be allowed to rely upon that same document to show that the named inventor of the ‘287 patent
resides in Plano, Texas. Not only is this argument nonsensical (WRT ultimately asserts that the
inventor resides in Austin), but it misconstrues the facts. Defendants relied upon the invention
disclosure form (Ex. K) to identify Mr. Griffith’s status as the original prosecuting attorney, not
to identify Mr. Griffith’s current location. Defendants provided additional documentation from
2010 (Ex. L) to show that Mr. Griffith resides in the Northern District of California.

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4.

Trial In Northern California Will Be Easier, More Expeditious, And
Less Expensive

In its opposition brief, WRT fails to rebut that trial will be easier, more expeditious, and
inexpensive in Northern California because: three of the five Defendants are headquartered
there; the relevant visual search technology for a fourth Defendant, Amazon, was developed
there; and the majority of the documents and employees related to the development of the
accused technology of the fifth Defendant, Nokia, are located there. Instead, WRT argues that
judicial economy will be served by keeping the case in Texas due to the proceedings in this case
to date. Most of what WRT references would simply transfer with the case, and therefore would
not be lost, such as the service of the Defendants, the appearance of the Defendants, the answers
to the complaint, the corporate disclosures, and the answer to counterclaims. The only thing that
would require modification if the case were to be transferred would be the case and discovery
schedule, which would simply need to be adjusted in light of the trial date provided by the Court
in the Northern District of California. This adjustment of the schedule would not outweigh the
savings that would occur based upon having the case venued where the majority of the
Defendants, witnesses, and relevant documents are located.
WRT also argues that judicial economy would be lost because it filed three other related
lawsuits in the Eastern District of Texas. As Defendants noted in their opening brief, they intend
to move for the other three cases to be transferred for the same reasons as this initial case. Thus,
judicial economy would be preserved.
B.

WRT Failed To Rebut That Public Interest Factors Also Weigh In Favor Of
Transferring The Case To The Northern District Of California

Both parties agree that two of the public interest factors – familiarity with the governing
law and the avoidance of conflicts of law – are inapplicable or neutral in regard to this motion.
In regard to the two other factors, WRT once again fails to rebut Defendants’ showing that the
factors weigh in favor of transfer.

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1.

It Is Undisputed That The Average Time To Trial In The Northern
District Of California Is Less Than The Time To Trial For This Case
In The Eastern District Of Texas

In their motion, Defendants demonstrated that the time to trial in this case, according to
the schedule set forth by this Court, was 33 months from the date of Defendants’ motion; by
contrast, the average time to trial in the Northern District of California is only 24.5 months. In
its opposition, WRT argues that Defendants are comparing apples to oranges by comparing the
actual time to trial in this case with the average time to trial in the Northern District of
California. But the comparison made by Defendants in the only sensical comparison that can be
made. Obviously a comparison between the actual times to trial for this case in each jurisdiction
cannot be made until after the case is transferred and an actual trial date is set in the Northern
District of California. And it does not make sense to compare the average times to trial in each
jurisdiction when it is already known that the time to trial for this case in the Eastern District of
Texas will be much longer than the average time to trial. Therefore, Defendants made the only
reasonable comparison possible, and that comparison shows that “court congestion” factor
weighs in favor of transfer. WRT’s argument to the contrary is simply illogical.
2.

Given That WRT Fails To Identify Any Local Interests In The
Eastern District Of Texas, The Local Interests In The Northern
District Of California Weigh In Favor Of Transfer

In its opposition brief, WRT cites Aloft Media, Inc. v. Yahoo!, Inc., 2009 U.S. Dist. Lexis
48716 at *6 (E.D. Tex. Jun 10, 2009) for the proposition that if a defendant sells a product
throughout the United States, then no specific venue has a dominant interest in resolving the
issue of infringement. (Opp. Br. at p. 14.) What WRT ignores, however, is the last sentence of
that same paragraph in Aloft in which this Court stated: “Nonetheless, where a forum has
identifiable connections to the events giving rise to the suit, this factor may support litigating the
case in that forum.” Aloft, 2009 U.S. Dist. Lexis 48716 at *6; see also In re Hoffman-La Roche,
Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009) (“While the sale of an accused product offered
nationwide does not give rise to a substantial interest in any single venue, if there are significant

9

connections between a particular venue and the events that gave rise to a suit, this factor should
be weighed in that venue’s favor.”).
Defendants demonstrated in their opening brief that because of the concentration of
Defendants in the Northern District of California as well as the relevant work there that led to
each of the accused products, that forum has identifiable connections to the events giving rise to
this suit that support litigating the case there. Thus, WRT’s argument that “the Northern District
of California has no greater interest in the action than do districts in which the non-Californian
Defendants are located” (Opp. Br. at p. 14) is untenable.
WRT then argues that if California has an interest in this litigation, Texas also does by
virtue of its citizens, WRT, the inventor, and Mr. Yudell. (Opp. Br. at p. 15.) But the relevant
venue is the Eastern District of Texas, not the entire state of Texas. The only “citizen” in the
Eastern District of Texas is WRT, and, as discussed above, WRT’s presence is merely ephemeral
and litigation driven, and therefore entitled to no weight. Microsoft, 630 F.3d at 1365.
Thus, the “local interest” factor also weighs in favor of the transfer.
III.

CONCLUSION
The facts supporting Defendants’ motion to transfer are compelling. Defendants have

identified numerous witnesses and substantial evidence located in the Northern District of
California; WRT cannot identify a single relevant witness or piece of evidence located in the
Eastern District of Texas. Three of the Defendants are headquartered in the Northern District of
California, while the technology underlying the accused products of the other two Defendants
were developed there; WRT cannot identify a single employee in the Eastern District of Texas
and its “office” is simply a Regus virtual office. Because of these facts and that all four of the
private interest factors and two of the public interest factors weigh in favor of transfer (with the
other two public interest factors being neutral), Defendants have carried their burden to
demonstrate that the Northern District of California is a clearly more convenient forum for this
matter. Therefore, Defendants respectfully request that the Court grant their motion to transfer.

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Dated: May 5, 2011

Respectfully submitted,

By:

/s/ Daniel T. Shvodian
James F. Valentine (admitted pro hac vice)
California State Bar No. 149269
Daniel T. Shvodian (admitted pro hac vice)
California State Bar No. 184576
PERKINS COIE LLP
3150 Porter Drive
Palo Alto, CA 94304-1212
Telephone: [phone]
Facsimile: 650.838.4350
E-mail: [e-mail]
E-mail: [e-mail]
Michael C. Smith
Texas State Bar No. 18650410
SIEBMAN, BURG, PHILLIPS & SMITH, LLP
P.O. Box 1556
Marshall, TX 75671-1556
Telephone: [phone]
Facsimile: 972.767.4620
E-mail: [e-mail]
Attorneys for Defendants and Counterclaimants
A9.COM, INC., AMAZON.COM, INC., and
GOOGLE INC.

By:

/s/ Michael C. Smith
Michael C. Smith
Texas State Bar No. 18650410
SIEBMAN, BURG, PHILLIPS & SMITH, LLP
P.O. Box 1556
Marshall, TX 75671-1556
Telephone: [phone]
Facsimile: 972.767.4620
E-mail: [e-mail]

11

Robert F. Perry (admitted pro hac vice)
Allison H. Altersohn (admitted pro hac vice)
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: 212.556.2222
E-mail: [e-mail]
E-mail: [e-mail]
Attorneys for Defendant
NOKIA INC.

By:

/s/ Michael E. Jones
Michael E. Jones
Texas State Bar No. 18650410
Allen Franklin Gardner
POTTER MINTON P.C.
110 N. College, Suite 500
P.O. Box 359
Tyler, TX 75710-0359
Telephone: [phone]
Facsimile: 903.593.0846
E-mail: [e-mail]
E-mail: [e-mail]
Mark D. Rowland (admitted pro hac vice)
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
Telephone: [phone]
Facsimile: 650.566.4144
Email: [e-mail]
Attorneys for Defendant and Counterclaimant
RICOH INNOVATIONS, INC.

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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 5th day of May, 2011.
/s/ Daniel T. Shvodian
Daniel T. Shvodian

09234-0001/LEGAL20744455.2