Vertical Computer Systems, Inc. v. Interwoven, Inc. et al

Filing 87

RESPONSE in Opposition re 84 SEALED MOTION to Sever and Transfer Claims filed by Vertical Computer Systems Inc. (Attachments: # 1 Exhibit Declaration of Luiz Claudio Valdetaro (signed), # 2 Exhibit A - Google Information on LG Electronics, # 3 Exhibit B - Complaint (Vertical Computer Systems, Inc. v. Interwoven, Inc., et al; Civil Action No. 210-cv-490), # 4 Exhibit C - Samsung's Claim Charts, # 5 Exhibit D - LG's Claim Charts, # 6 Exhibit E - U.S. Court of Appeals for the Federal Circuit - Brief of Petitioner - Vertical Computer Systems, Inc, # 7 Exhibit F - U.S. Court of Appeals for the Federal Circuit - Petition on Writ of Mandamus Order, # 8 Exhibit G - U.S. District Court for the Northern District of California - Claims Construction Order, # 9 Exhibit H - Declaration of Seo Won Kwon, # 10 Exhibit I - LexisNexis Documents, # 11 Exhibit J - LexisNexis Documents, # 12 Text of Proposed Order)(Davis, William)

EXHIBIT J

Page 1

IN RE GOOGLE INC., ADOBE SYSTEMS INC., AMAZON.COM, INC., APPLE
INC., CDW LLC, EBAY INC., JP MORGAN CHASE & CO., NEW FRONTIER
MEDIA, INC., ORACLE AMERICA, INC., (FORMERLY KNOWN AS SUN
MICROSYSTEMS INC.), PLAYBOY ENTERPRISES INTERNATIONAL, INC.,
STAPLES, INC., THE GO DADDY GROUP, INC., YAHOO! INC., AND
YOUTUBE, LLC, Petitioners.
Miscellaneous Docket No. 968
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
412 Fed. Appx. 295; 2011 U.S. App. LEXIS 4381

March 4, 2011, Decided
March 4, 2011, Filed
NOTICE:
THIS DECISION WAS ISSUED AS
UNPUBLISHED OR NONPRECEDENTIAL AND
MAY NOT BE CITED AS PRECEDENT. PLEASE
REFER TO FEDERAL RULES OF APPELLATE
PROCEDURE RULE 32.1 GOVERNING THE
CITATION TO UNPUBLISHED OPINIONS.
PRIOR HISTORY: [**1]
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in case
nos. 09-CV-0446, Judge Leonard Davis.
Eolas Techs., Inc. v. Adobe Sys., Inc., 2010 U.S. Dist.
LEXIS 104125 (E.D. Tex., Sept. 28, 2010)
COUNSEL: For Adobe Systems, Inc., Petitioner:
HEALEY, DAVID J., PRINCIPAL ATTORNEY, Fish &
Richardson, P.C., Houston, TX; WOLFF, JASON W.,
OF COUNSEL ATTORNEY, Fish & Richardson, P.C.,
San Diego, CA.
For Amazon.com, Inc., eBay Inc., Yahoo! Inc.,
Petitioners: LUMISH, DOUGLAS E., PRINCIPAL
ATTORNEY, REINES, EDWARD R., OF COUNSEL
ATTORNEY, Weil, Gotshal & Manges LLP, Redwood
Shores, CA.

For Apple Inc., Petitioner: CEDEROTH, RICHARD A.,
OF COUNSEL ATTORNEY, PRITIKIN, DAVID T.,
PRINCIPAL ATTORNEY, Sidley Austin LLP, Chicago,
IL; CHANDLER, THEODORE W., OF COUNSEL
ATTORNEY, Sidley Austin LLP, Los Angeles, CA;
DONAHEY, TEAGUE I., OF COUNSEL ATTORNEY,
Sidley Austin LLP, San Francisco, CA.
For CDW LLC, Petitioner: DUSTON, THOMAS L.,
PRINCIPAL ATTORNEY, Marshall, Gerstein & Borun
LLP, Chicago, IL.
For Eolas Technologies Incorporated, Respondent:
CAWLEY,
DOUGLAS
A.,
OF
COUNSEL
ATTORNEY, MCKOOL, JR., MIKE, PRINCIPAL
ATTORNEY, McKool Smith, P.C., Dallas, TX;
BURGESS, KEVIN LEE, THOLLANDER, JOEL L., OF
COUNSEL ATTORNEYS, McKool Smith, P.C., Austin,
TX.
For Google Inc., [**2] Petitioner: CLEMENT, PAUL
D., PRINCIPAL ATTORNEY, JOSEFFER, DARYL L.,
OF COUNSEL ATTORNEY, King & Spalding LLP,
Washington, DC; WEINGAERTNER, SCOTT T., OF
COUNSEL ATTORNEY, King & Spalding LLP, New
York, NY; CONRAD, ADAM M., OF COUNSEL

Page 2
412 Fed. Appx. 295, *; 2011 U.S. App. LEXIS 4381, **2

ATTORNEY, King & Spalding LLP, Charlottle, NC.
For JP Morgan Chase & Co., Petitioner: SHAHIDA,
STEPHEN K., PRINCIPAL ATTORNEY, McDermott,
Will & Emery, Washington, DC.
For Microsoft Corporation, Amicus Curiae: BASH,
JOHN F., OF COUNSEL ATTORNEY, MCGILL,
MATTHEW D., PRINCIPAL ATTORNEY, Gibson,
Dunn & Crutcher LLP, Washington, DC.
For New Frontier Media, Inc., Petitioner: SIMONS,
MICHAEL, PRINCIPAL ATTORNEY, Akin, Gump,
Strauss, Hauer, Austin, TX.
For Office Depot, Inc., Amicus Curiae: JUREK,
KENNETH J., PRINCIPAL ATTORNEY, WALLMAN,
SUZANNE M., OF COUNSEL ATTORNEY,
McDermott, Will & Emery, Chicago, IL; WARREN,
BUREDEN
J.,
OF
COUNSEL
ATTORNEY,
McDermott, Will & Emery, Washington, DC.
For Oracle America, Inc. (f/k/a Sun Microsystems Inc.),
Petitioner: RILEY, KATHRYN B., PRINCIPAL
ATTORNEY, DLA Piper US LLP, San Diego, CA.
For Perot Systems Corp., Amicus Curiae: FULGHUM,
ROGER J., OF COUNSEL ATTORNEY, PARTRIDGE,
SCOTT F., PRINCIPAL ATTORNEY, Baker Botts,
LLP, Houston, [**3] TX.
For Playboy Enterprises International, Inc., Petitioner:
FEDOCK, JOHN A., MCLEAN, GENTRY C., OF
COUNSEL ATTORNEYS, WEAVER, DAVID B.,
PRINCIPAL ATTORNEY, Vinson & Elkins LLP,
Austin, TX.
For Staples, Inc., Petitioner: STEINBERG, DONALD R.,
PRINCIPAL ATTORNEY, Wilmer Cutler Pickering
Hale, Boston, MA.
For The Go Daddy Group, Inc., Petitioner: BROWN,
THOMAS
A.,
OF
COUNSEL
ATTORNEY,
MUKHERJI, PROSHANTO, PRINCIPAL ATTORNEY,
Fish & Richardson, P.C., Boston, MA.
For YouTube, LLC, Petitioner: CLEMENT, PAUL D.,
PRINCIPAL ATTORNEY, King & Spalding LLP,
Washington, DC.
For YouTube, LLC, Petitioner: WEINGAERTNER,
SCOTT T., OF COUNSEL ATTORNEY, King &

Spalding LLP, New York, NY; JOSEFFER, DARYL L.,
OF COUNSEL ATTORNEY, King & Spalding LLP,
Washington, DC; CONRAD, ADAM M., OF COUNSEL
ATTORNEY, King & Spalding LLP, Charlottle, NC.
JUDGES: Before PROST, MAYER, and MOORE,
Circuit Judges.
OPINION BY: MOORE
OPINION

[*295] ON PETITION
MOORE, Circuit Judge.
ORDER
This is a petition for a writ of mandamus from an
order denying a motion to transfer to the Northern
District of California pursuant to 28 U.S.C. § 1404(a) or,
in the alternative, to sever and transfer plaintiffs claims
against certain defendants. The petition arises out of a
patent infringement [**4] suit against twenty-two
defendants1 brought by Eolas Technologies, Inc. (Eolas),
the exclusive licensee of the patents-in-suit.
1 Among the petitioners, Google, Adobe, Apple,
eBay Inc., Oracle, Yahoo! Inc., YouTube, LLC,
are headquartered in the Northern District of
California, Amazon.com, Inc. is headquartered in
Seattle, Washington, CDW LLC and Playboy
Enterprises International, Inc. are headquartered
in Illinois, Go Daddy Group is headquartered in
Arizona, New Frontier Media, Inc. is
headquartered in Colorado, Staples, Inc. is
headquartered in Massachusetts, and JPMorgan
Case & Co. is headquartered in New York.
Among the other defendants, Texas Instruments
Inc. is headquartered in Dallas, Texas, Perot
Systems Corp., Frito-Lay, Inc., J.C. Penney
Company, Inc., and Rent-A-Center, Inc. are
headquartered in the Eastern District of Texas,
Citigroup Inc. is headquartered in New York,
Argosy Publishing Inc. is headquartered in
Massachusetts, and Office Depot, Inc. is
headquartered in Florida. Originally, Blockbuster
Inc. was also joined but has now been severed.
Eolas filed this suit in its home district, the Eastern

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412 Fed. Appx. 295, *295; 2011 U.S. App. LEXIS 4381, **4

District of Texas. Of the defendants, four reside in the
forum, seven reside [**5] in the Northern District of
California, and the remaining reside in other districts
throughout the country. Several [*296] defendants
moved to transfer the case to the Northern District of
California. Alternatively, the defendants argued that, if
any defendant served as a barrier to transfer, then the
district court should sever the claims against that
defendant and transfer the remainder of the case to the
Northern District of California. The district court denied
those motions. The district court explained that the
Eastern District of Texas has a local interest in
adjudicating this matter because Eolas maintains offices
and is incorporated in the forum and because four
defendants are also headquartered there. The court also
explained that for those parties "it will be substantially
more convenient for the case to continue in the Eastern
District of Texas." Eolas Techs. Inc. v. Adobe Systems,
Inc., 6:09-CV-00446, 2010 U.S. Dist. LEXIS 104125, *19
(E.D. Texas. Sept. 28, 2010) (hereinafter Transfer Order).
The court also denied the petitioners' request to sever and
transfer, explaining that the products, facts, and issues of
law were significantly related and overlapping and that
severance and transfer would not [**6] preserve judicial
economy.
"[D]eference" the Supreme Court has stated "is the
hallmark of abuse of discretion review." Gen. Elec. Co. v.
Joiner, 522 U.S. 136, 143, 118 S. Ct. 512, 139 L. Ed. 2d
508 (1975). Our reluctance to interfere is not a formality.
Section 1404(a) of title 28 of the United States Code
provides that a district court "may transfer" a civil action
to another court "[f]or the convenience of parties and
witnesses, in the interest of justice." (emphasis added).
Thus, the transfer statute itself commits the balancing
determination to the sound discretion of the trial court
based on its familiarity with the case and issues involved.
See In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir.
2010) (citing A. Olinick & Sons v. Dempster Bros., Inc.,
365 F.2d 439, 444 (2d Cir. 1966)). Our authority here on
mandamus review is narrow, confined solely to
determining whether the trial court's denial of transfer

produced a patently erroneous result. See In re
Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir.
2008) (en banc).
The district court did not abuse its discretion. With
regard to the motion to transfer the entire action, the
district court first acknowledged that the Northern
District of California would [**7] be more convenient
for the seven defendants that reside there. Transfer
Order, 2010 U.S. Dist. LEXIS 104125 at *19. But it
similarly determined that four of the defendants were
headquartered in the Eastern District of Texas and that
for these parties "it will be substantially more convenient
for the case to continue in the Eastern District of Texas."
Id. "Where [defendants] are in different states there is no
choice of forum that will avoid imposing
inconvenience[.]" In re Nat'l Presto Indus., Inc., 347 F.3d
662, 665 (7th Cir. 2003). We cannot hold that, on these
facts, the district court abused its discretion in refusing to
transfer the entire action.
We also cannot say that the trial court abused its
discretion in refusing to sever and transfer the petitioners'
claims to the Northern District of California. Courts have
consistently held that judicial economy plays a
paramount role in trying to maintain an orderly, effective,
administration of justice and having one trial court decide
all of these claims clearly furthers that objective. See
Cont'l Grain Co. v. Barge FBL-585, 364 U.S. 19, 26, 80
S. Ct. 1470, 4 L. Ed. 2d 1540 (1960); see also Vistaprint,
628 F.3d at 1346. Further, the district court noted that, in
this case, "adjudicating infringement [**8] . . . will
involve substantially overlapping questions of law or
fact." Transfer Order, 2010 U.S. Dist. LEXIS 104125 at
*15. This determination does not amount to an abuse of
discretion.
Accordingly,
[*297] IT IS ORDERED THAT:
The petition is denied.