Rockstar Consortium US LP et al v. Google Inc

Filing 165

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 09/23/2014. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP, et al.
v.
GOOGLE INC.

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Case No. 2:13-CV-893-JRG-RSP

MEMORANDUM ORDER
Before the Court is Defendant Google Inc.’s Motion to Transfer Venue to the Northern
District of California. (Dkt. No. 18, the “Motion to Transfer”.) Also before the Court is
Rockstar’s Motion for Leave to File a Supplemental Brief in Light of Newly-Acquired Evidence
(Dkt. No. 92, the “Motion for Leave”), Google’s Motion for Leave to Expedite Briefing on
Rockstar’s Motion for Leave (Dkt. No. 98), and Rockstar’s Motion to Strike Google’s Response
to the Motion for Leave (Dkt. No. 100).
BACKGROUND AND PROCEDURAL HISTORY
Plaintiffs Rockstar Consortium US LP, Inc. and NetStar Technologies LLC are entities
arising out of the demise of Nortel, a Canadian telecommunications company. (See Resp. at 2-5.)
Nortel declared bankruptcy in 2009 and subsequently held an auction for its substantial patent
portfolio in 2011. (See id. at 2-3.) Five major technology companies—Apple, Blackberry,
Ericsson, Microsoft, and Sony—pooled their resources into Rockstar Bidco LP for the purpose
of bidding on Nortel’s patent portfolio (Id. at 3-4.). Rockstar Bidco LP outbid the other
participants, including Defendant Google, in the auction for Nortel’s patent portfolio. (Id.)
Rockstar Bidco LP then transferred the patents in suit to the Rockstar Consortium US LP, a
Delaware limited partnership with its headquarters in Plano, Texas and one of the plaintiffs in
this case. (Id. at 3.) Rockstar Consortium US LP subsequently created a wholly-owned

subsidiary, NetStar Technologies LLC, to which it exclusively assigned the patents-in-suit (Dkt.
No. 33-1 at ¶ 26). Meanwhile, Rockstar Consortium Inc. was formed as a vehicle to hire certain
of Nortel’s former employees. (Resp. at 4-5.) Rockstar Consortium US LP contracts with
Rockstar Consortium, Inc. for various services in support of its intellectual property business.
(Id. at 4)
Rockstar Consortium US LP, Inc. and NetStar Technologies, LLC (hereinafter,
collectively, “Rockstar”) filed this suit against Google on October 31, 2013, alleging that certain
technologies related to Google’s search and search advertising infringe seven of Rockstar’s
patents. (Dkt. No. 1).
I.

MOTION TO TRANSFER

APPLICABLE LAW
Section 1404(a) provides that “[f]or the convenience of 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) (2006). The first inquiry when analyzing
a case’s eligibility for § 1404(a) transfer is “whether the judicial district to which transfer is
sought would have been a district in which the claim could have been filed.” In re Volkswagen
AG, 371 F.3d 201, 203 (5th Cir. 2004) (“In re Volkswagen I”).
Once that threshold is met, courts analyze both public and private factors relating to the
convenience of parties and witnesses as well as the interests of particular venues in hearing the
case. See Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963); In re
Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d
1315, 1319 (Fed. Cir. 2009). The private 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
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easy, expeditious, and inexpensive. In re Volkswagen I, 371 F.3d at 203; In re Nintendo, 589
F.3d at 1198; In re TS Tech, 551 F.3d at 1319. The public 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 of laws or in the application of foreign law. In re
Volkswagen I, 371 F.3d at 203; In re Nintendo, 589 F.3d at 1198; In re TS Tech, 551 F.3d at
1319.
The plaintiff’s choice of venue is not a factor in this analysis. In re Volkswagen of Am.,
Inc., 545 F.3d 304, 314-15 (5th Cir. 2008) (“In re Volkswagen II”). Rather, the plaintiff’s choice
of venue contributes to the defendant’s burden of proving that the transferee venue is “clearly
more convenient” than the transferor venue. In re Volkswagen II, 545 F.3d at 315; In re
Nintendo, 589 F.3d at 1200; In re TS Tech, 551 F.3d at 1319. Furthermore, though the private
and public factors apply to most transfer cases, “they are not necessarily exhaustive or
exclusive,” and no single factor is dispositive. In re Volkswagen II, 545 F.3d at 314-15.
Timely motions to transfer venue should be “should [be given] a top priority in the
handling of [a case],” and “are to be decided based on ‘the situation which existed when suit was
instituted.’” In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003); In re EMC Corp., Dkt.
No. 2013-M142, 2013 WL 324154 (Fed. Cir. Jan. 29, 2013) (quoting Hoffman v. Blaski, 363
U.S. 335, 443 (1960)).
DISCUSSION
A. Proper Venue
The Northern District of California and the Eastern District of Texas are proper venues.

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B. Private Interest Factors
1.

Relative Ease of Access to Sources of Proof

“In patent infringement cases, the bulk of the relevant evidence usually comes from the
accused infringer. Consequently, the place where the defendant’s documents are kept weighs in
favor of transfer to that location.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)
(citation omitted).
Google is a Delaware corporation with its principal place of business in Mountain View,
California. Google has submitted a brief declaration by Abeer Dubey—the only identification
provided for Mr. Dubey is that he is an employee of Google Inc.—in support of its Motion.
(Dubey Decl., Dkt. No. 18-3.) According to Mr. Dubey, “Google’s ongoing development efforts,
operations, and records regarding Google’s search engine and AdWords are also predominantly
based at the Mountain View headquarters.” (Id. at 2.) “Google engineers with relevant technical
knowledge of the search engine or AdWords are also predominantly located at these
headquarters, as are Google employees familiar with relevant business and financial aspects of
these products.” (Id.) “All or nearly all of the documents related to Google’s search engine and
Google AdWords are available in Mountain View, California, or are stored on Google’s various
secure servers, which are accessible and ultimately managed from Mountain View.” (Id. at 3)
“These documents include technical documents related to Google’s search engine and Google
AdWords, as well as documents related to Google’s operations, marketing, financials, and
customer-service concerning these products.” (Id.) Mr. Dubey’s declaration briefly discusses two
Google offices in Frisco and Austin, Texas. For Google’s Frisco, Texas location Google only
provides that “[i]n April 2012, Google opened a small office to temporarily house a handful of
employees in Frisco, Texas. None of the employees at this location work on any of the accused

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instrumentalities identified in the Complaint.”1 (Id. at 2.) For Google’s Austin, Texas office,
Google only provides that “[t]he Google employees in the Austin office are not involved with the
development or management of Google's search engine or AdWords, and are instead
predominantly involved with Google's enterprise sales group.” (Id.)
Rockstar argues that Google’s Motion suggests more substance than its carefully worded
statements actually contain. (Resp. at 1, 5-6.) Rockstar argues that “Google is careful, however,
not to claim that all or nearly all of its relevant information is in the Northern District of
California” and that instead of providing concrete detail “Google uses vague phrases.” (Id. at 5.)
Rockstar argues that “Google never discusses where it actually created or stored those
documents—or indeed whether other Google offices (including the ones in Texas) can ‘access’
those same documents.” (Id. at 6.) Rockstar argues that Google “does not provide details about
where else or how much of this work Google performs outside California.” (Id.) Rockstar points
to evidence that Google has failed to disclose Google facilities in other states and countries
where Google performs relevant work and keeps relevant infrastructure. Rockstar argues that
“Google still does not address any documents related to one of the accused products—namely
searchplus-advertising on third-party sites—despite evidence suggesting those documents are on
the East Coast and Dallas, among other locations.” (Sur-Reply at 2.)
Google’s Motion does not appear to offer any evidence regarding the location of its
relevant documents or infrastructure. Google’s Motion only provides that Google’s headquarters
is located in the Northern District of California and describes that “all or nearly all” of its
documents are “available in” its headquarters or “are stored on Google’s various secure servers,
which are accessible and ultimately managed from” its headquarters. The recitations provided by
1

Two months later Mr. Dubey filed a second declaration stating that the Frisco office
was closed in December 2013. (Dkt. No. 36-4, filed March 3, 2014.)

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Google create a suggestion of helpful evidence, but, unpacked, Google’s Motion provides neither
evidence of where its documents are actually located nor evidence that these documents are more
available or accessible from the Northern District of California than they would be from the
Eastern District of Texas. As to its facilities and infrastructure, Google’s Motion simply recites
the location of its headquarters but is essentially silent as to all other Google locations (e.g.
Google’s briefing says nothing of its Dallas location). A careful examination of Mr. Dubey’s
declaration makes it unmistakably clear both that other relevant Google locations exist and that
Mr. Dubey’s declaration was worded to avoid statements as to locations other than Google’s
headquarters. This conclusion is confirmed by the Court’s review of the briefing on Google’s
Motion. The Court is significantly concerned that Google is not being fully candid with the Court
regarding the location of its relevant documents and facilities.
Google’s Motion presents scant evidence as to its own technical, business, and financial
witnesses. Mr. Dubey’s declaration provides that “Google engineers with relevant technical
knowledge of the search engine or AdWords are also predominantly located at [its] headquarters,
as are Google employees familiar with relevant business and financial aspects of these products.”
(Dubey Decl. at 2.) Mr. Dubey’s declaration provides that “[t]he Google employees in the Austin
office are not involved with the development or management of Google's search engine or
AdWords, and are instead predominantly involved with Google's enterprise sales group.” (Id.)
Google’s Motion provides no clear identification of where its witnesses with relevant
knowledge of the business and financial aspects of the accused products are located. Google’s
Motion only identifies where some employees “familiar with” such aspects are located.2
2

Mr. Dubey’s declaration makes no statement as to whether the employees of Google’s
Austin office have any relevant knowledge or familiarity, so it is unclear whether or not they are
“familiar with relevant business and financial aspects of these products.”

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Google’s Motion does, at least, identify where its employees “with relevant technical
knowledge” are “predominantly” located, but the Court observes that Google omits to mention
where the remainder of such employees are located. As with Google’s relevant documents,
facilities, and infrastructure, the Court is concerned that it is being presented with an incomplete
and misleading factual record.3
Google’s Motion does present argument as to possible prior art witnesses in California,
stating that “[s]everal early Internet search and search engine advertising companies were
founded in the Northern District” and that key witnesses and publications “are thus likely located
in the Northern District.” (Mot. at 3.) Google identifies several third-party individuals who
founded companies that produced alleged prior art systems and who allegedly still work in the
Northern District of California—Martin Reinfried,4 Graham Spencer,5 Brian Pinkerton,6 and
Louis Monier7—or who “appear to reside” in the Northern District of California—Steve Kirsh.8

3

As one example, Mr. Dubey’s declaration appears to draw a distinction (known only to
Google) between employees who have “work[ed] on any of the accused instrumentalities
identified in the Complaint” and employees who have worked on, have relevant knowledge of, or
are familiar with aspects of Google’s search engine or AdWords.
4

Google’s evidence as to Mr. Reinfried is a web page printout from LinkedIn.com that is
provided without explanation. As this Court has found in the past, it is not at all clear that a
printout replete with evidentiary (e.g. hearsay) problems is sufficient to meet the evidentiary
burden in a Motion to Transfer context, but the Court need not conclusively address this issue
because this evidence is not dispositive.
5

Mr. Dubey’s Declaration states that Mr. Spencer works at Google’s headquarters.

6

Google’s evidence as to Mr. Pinkerton is web page printouts from LinkedIn.com and a
web page of unexplained providence (possibly a web page created by Mr. Pinkerton), containing
the statement “I run A9, a search company in Palo Alto.” (Dkt. No. 18-15, 16.) Both web pages
are provided without explanation.
7

Google’s evidence as to Mr. Monier is a web page printout from LinkedIn.com that is
provided without explanation.

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Of these third-party individuals though, Google only clearly identifies Martin Reinfried as
having knowledge of prior art. Google also identifies Danny Sullivan9, though Google does not
identify what Mr. Sullivan would testify to, as residing in the Central District of California.
Google also generally speculates (e.g. “[c]rucial documentary evidence about Excite prior art is
also likely in the Northern District”) that relevant evidence exists in the Northern District of
California.
Rockstar argues that Google’s analysis “cherry-pick[s] prior art witnesses who live in the
Northern District of California” and ignores “prior art witnesses liv[ing] throughout the
country—including the Dallas area.” (Resp. at 1, 8-9.) Rockstar argues that the prior art that
Google will actually use in the case has not yet been decided: Google filed its Motion before it
served its invalidity contentions and “Google makes no representation that this identified art is
the only art on which it will rely.” (Id. at 8.) Rockstar argues that—instead of all of the relevant
art being coincidentally located in the Northern District of California—it is more likely that
relevant prior art will be spread across the country. Rockstar argues that witnesses relevant to
one of the prior art references that Google suggests it will rely upon (Excite) are actually located
in New York and not in California. (Id. at 9.)
Google’s Motion identifies potential non-party witnesses—all of which happen to be in
California and all but one of which happens to be in the Northern District of California—but
Google provides little, if any, evidence for the Court to work with as to what the witnesses would
actually testify to and as to where the witnesses actually live. Google makes no statement which,

8

Google’s evidence as to Mr. Kirsch is a web page printout from LinkedIn.com that is
provided without explanation.
9

Google’s evidence as to Mr. Sullivan is a web page printout from LinkedIn.com that is
provided without explanation.

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if any, of these witnesses will be called to testify and whether any of the witnesses are willing or
unwilling. For Google’s other possible prior art references, Google only provides speculation,
arguing that witnesses and documents “are likely in the Northern District” or that witnesses
“appear to reside” there. The Court weighs that Google’s evidence as to residency for most
witnesses is a bare printout from LinkedIn.com. The Court weighs that that Google only provides
speculation regarding the existence of possible prior art sources (e.g. documents).10
Rockstar subsequently filed a three-page supplemental brief detailing that the prior art
references asserted by Google in its P. R. 3-3 invalidity contentions are associated with locations
throughout the United States—including Texas—and across the world. (Dkt. No. 92, filed June
20, 2014) Rockstar’s supplemental brief also asserts that only a portion of the subpoenas relating
to prior art (4 out of 14) served by Google were directed at California while the remainder were
directed to New York, Georgia, Massachusetts, Oklahoma and Tennessee. (Id. at 2.) Rockstar’s
supplement supports the Court’s conclusion that Google’s Motion selectively identified possible
prior art witnesses in the Northern District of California and omitted possible witnesses in other
states, including Texas.
The Court observes that Rockstar appears to fully disclose the location of all of its
relevant witnesses and documents, not just those in its chosen venue. Rockstar presents evidence
that its U.S. office is located in Plano, Texas, that it leased this office for 7 years, and that it
moved into this office December of 2012, following a build-out of the office.11 Rockstar presents

10

As noted elsewhere herein, many of the actual prior art sources upon which Google
actually relies are located far outside the Northern District of California.
11

Plano, Texas, is located in the Eastern District of Texas a few miles north of
Richardson, Texas.

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evidence that its U.S. office was previously located in Richardson, Texas12 at that the U.S.
headquarters of the patentee—Nortel.13 Rockstar presents evidence that its U.S. office was
established to hire (and did hire) former employees of the patentee Nortel to consult on the
Nortel patents that it had purchased.14 Rockstar also describes the location of its other U.S.
employees and related employees located outside the United States. Rockstar also presents
evidence of relevant third-party documents, including third-party documents related to the
bidding process and Rockstar’s equity owners. Rockstar’s evidence clearly refutes Google’s
claim that Plaintiffs “maintain an office in the Eastern District for litigation purposes.” (Mot. at
1.)
The evidence presented by the Parties supports the conclusion that a substantial body of
relevant evidence exists in or near the Eastern District of Texas. In contrast, it is unclear whether
and how much relevant evidence actually exists within the Northern District of California. The
weight of the evidence presented by Google for this factor does not meet its burden. This factor
weighs against transfer to the Northern District of California.
2.

Cost of Attendance for Willing Witnesses

“The convenience of the witnesses is probably the single most important factor in a
transfer analysis.” In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). While the Court
must consider the convenience of both the party and non-party witnesses, it is the convenience of
12

Richardson, Texas, is located in part in the Northern District of Texas and in part in the
Eastern District of Texas.
13

Nortel’s facility in Richardson, Texas, was located in the Northern District of Texas.
(Resp. at 2.)
14

Rockstar’s Response (Dkt. No. 33, filed February 20, 2014) includes declarations by
Mr. Donald Powers (Dkt. No. 33-1) and Mr. Mark Hearn (Dkt. No. 33-2) stating, among other
things, that they are former Nortel employees—Senior Counsel to Nortel—employed by
Rockstar in Plano, Texas.

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non-party witnesses that is the more important factor and is accorded greater weight in a transfer
of venue analysis. Aquatic Amusement Assoc., Ltd. v. Walt Disney World Co., 734 F.Supp. 54, 57
(N.D.N.Y. 1990); see also 15 Charles Alan Wright & Arthur R. Miller, Federal Practice and
Procedure § 3851 (3d ed. 2012). “A district court should assess the relevance and materiality of
the information the witness may provide.” In re Genentech, Inc., 566 at 1343. However, there is
no requirement that the movant identify “key witnesses,” or show “that the potential witness has
more than relevant and material information . . . .” Id. at 1343-44.
Google argues that “key non-party witnesses, including prior art witnesses and Rockstar
shareholders, are concentrated in the Northern District [of California].” (Reply at 2.) Google
argues that “Google employees knowledgeable about non-infringement, invalidity, and damages
are also in large part in the Northern District.” (Id.) Google argues that Rockstar “fails to show
that most individuals described in its opposition . . . are indeed ‘likely’ witnesses” and that
Rockstar “tellingly fails to name any specific, relevant witnesses that would reap significant
convenience in this District.” (Id. at 3.)
Rockstar argues that “Google does not identify any third-party witness who would be
‘willing’ to testify at trial.” (Resp. at 13 (emphasis in original).) Rockstar provides a declaration
stating that it has specific willing third-party witnesses in Texas, including one residing in this
District. (Id.) Rockstar argues that “Texas also is more convenient for the equity investors of
Rockstar.” (Id.) Rockstar also specifically identifies several of its employees with relevant
knowledge and argues that these employees would find this venue more convenient.
Rockstar’s argument that Google’s non-party prior art witnesses were “cherry-picked”
appears to have been a valid concern. The record before the Court reflects that non-party

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witnesses at issue in this case are distributed across the United States and are not solely located
in or generally closer to the Northern District of California.15
As discussed above, Google provides very limited evidence as to its party witnesses on
technical, business, and financial topics, and the Court has its concerns regarding the candor of
the limited information that Google has provided. As discussed above, Google does provide
evidence of possible party and non-party prior art witnesses. As discussed above, Rockstar does
identify specific witnesses, including specific willing non-party witnesses.
The weight of the evidence presented by Google for this factor does not meet its burden.
The weight of the evidence of before the Court as witnesses who will likely testify at trial weighs
against transfer.
3.

Availability of Compulsory Process to Secure the Attendance of Witnesses

Under Federal Rule of Civil Procedure 45 (as recently amended), this Court may enforce
a subpoena issued to any nonparty witness in the State of Texas to appear at trial, provided the
party does not incur substantial expense. Fed. R. Civ. P. 45(c)(1)(B). Similarly, the Court may
enforce any subpoena for a deposition to be taken within its boundaries, provided that the
deposition is taken no more than 100 miles from a location where the person resides, is
employed, or regularly transacts business in person. See id. at (a)(2), (c)(1)(A), (d)(3)(a).
Moreover, party witnesses do not require compulsory process for trial and are not given much
weight in this factor. Rather, the focus of this factor is on witnesses for whom compulsory
process to attend trial might be necessary.
Google argues that the possible prior art witnesses are within the absolute subpoena
power of the Northern District and that Danny Sullivan—an alleged prior art witness residing in

15

See supra p. 9; infra p. 15-16.

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the Central District of California—is within the trial subpoena power of the Northern District.
(Mot. at 12.) Google argues that in contrast only one non-party witness—a prosecuting
attorney—is within the trial subpoena power of the Eastern District of Texas. (Id.)
Rockstar argues that former Nortel employees and a relevant prosecuting attorney reside
in this district. Rockstar argues that Bruce Garlick a resident of Austin, Texas, is a relevant
witness: Mr. Garlick was “Nortel’s primary outside counsel” and his name “appears on 6 of the 7
patents-in-suit.” (Resp. at 2.) Rockstar argues that there is no evidence suggesting that the priorart witnesses Google points to are unwilling. (Sur-Reply at 3.)
The weight of the evidence presented by Google for this factor does not meet its burden.
The weight of the evidence of before the Court as to compulsory process for non-party witnesses
who will likely testify at trial weighs against transfer.
4.
All Other Practical Problems that Make Trial of a Case Easy, Expeditious,
and Inexpensive
The Court finds that this factor is neutral.
C. Public Interest Factors
1.

Administrative Difficulties Flowing From Court Congestion

The speed with which a case can come to trial and be resolved is a factor in the transfer
analysis. A proposed transferee court’s “less congested docket” and “[ability] to resolve this
dispute more quickly” is a factor to be considered. In re Hoffman-La Roche, 587 F.3d 1333, 1336
(Fed. Cir. 2009). This factor is the “most speculative,” and in situations where “several relevant
factors weigh in favor of transfer and others are neutral, the speed of the transferee district court
should not alone outweigh all of those other factors.” In re Genentech, 566 F.3d at 1347.
Google presents evidence that time to trial is a half a year faster in this District than in the
Northern District of California and argues that that this factor is neutral. (Mot. at 15.) Google

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argues that “[b]ecause most patent cases do not go to trial, however, total time to disposition in
each venue is also important, if not more so, than time to trial.” (Reply at 5.) Google points to a
2.3 month difference in the time to termination between the venues. (Id.) Google makes no
representation that it does not intend to carry its case to trial.
The Court finds that this factor weighs against transfer.
2.

Local Interest in Having Localized Interests Decided at Home

This factor considers the interest of the locality of the chosen venue in having the case
resolved there. Volkswagen I, 371 F.3d at 205-06. This consideration is based on the principle
that “[j]ury duty is a burden that ought not to be imposed upon the people of a community [that]
has no relation to the litigation.”
Google argues that the Northern District of California has a greater local interest in this
case since “Google’s activities related to these [accused] products are in large part in the
Northern District [of California].” (Mot. at 14.)
Rockstar presents evidence that the U.S. headquarters of the patentee—Nortel—was
located in Richardson, Texas, and that the Plaintiff has its U.S. office located in this District.
Rockstar argues that many of its witnesses “have lived in or near the Eastern District for years.”
(Resp. at 15.)
While it is clear that some portion of Google’s activities related to the accused products
occurs in the Northern District of California, it is unclear from the evidence presented by Google
what relative portion of Google’s relevant activities occurs in the Northern District of California
and what portion occurs in other districts. In contrast, Rockstar presents straightforward evidence
that its U.S. presence is in the Eastern District of Texas.
The weight of the evidence presented by Google for this factor does not meet its burden.
This Court finds that this factor weighs against transfer.
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3-4. Familiarity of the Forum With the Law that Will Govern the Case
and Avoidance of Unnecessary Problems of Conflict of Laws or in the Application of
Foreign Law
The Parties agree these factors are neutral. The Court finds that these factors are neutral.
II.

SUBSEQUENT MOTION PRACTICE

As detailed above, Rockstar moved to supplement its response to Google’s motion to
transfer with three pages (excluding exhibits) detailing information related to the prior art
references asserted in Google’s invalidity contentions. (Dkt. No. 92.) Despite the fact that the
bulk of the evidentiary argument in Google’s Motion to Transfer concerned the location and
importance of prior art, Google opposed Rockstar’s supplement, arguing that the location of
Google’s prior art evidence “is not important to the Court’s resolution of the Transfer Motion.
Rather, it simply repeats Rockstar’s prior argument that prior art witnesses and evidence are
dispersed around the world [and the United States], an irrelevant fact under well-established
Federal Circuit law.” (Dkt. No. 97 at 1.) In view of Google’s previous attestation that its entire
world of prior art consisted of six references in California (five in the Northern District), the
Court finds no merit to Google’s contention that it is “not important” and “irrelevant” that
Google has subsequently taken the position that far more prior art is relevant (30+ additional
references) and that this prior art is located in other forums, such as Massachusetts (one
subpoena), New York (six subpoenas), New Jersey, Virginia, Georgia (one subpoena),
Tennessee (one subpoena), Texas, Oregon, and Washington.
The duty of candor imposed upon parties in this Court is especially important in the
Motion to Transfer context, where one side often has exclusive access to a substantial portion of
information regarding the locations of relevant evidence, facilities, witnesses, and other pertinent
factors. It is troubling then, that not only did Google fail to timely come forward and disclose to
the Court when the factual evidence it relied upon in the Motion to Transfer briefing was shown
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to be incomplete and—at least in part—incorrect and misleading, but that Google also opposed
Rockstar’s attempts to ensure that the factual record before the Court was both accurate and
sufficiently complete to allow it to perform the analysis required by Section 1404(a). Rockstar’s
Motion for Leave to File a Supplemental Brief in Light of Newly-Acquired Evidence (Dkt. No.
92) is GRANTED. Google’s Motion for Leave to Expedite Briefing on Rockstar’s Motion for
Leave (Dkt. No. 98) is DENIED. Rockstar’s Motion to Strike Google’s Response to the Motion
for Leave (Dkt. No. 100) is DENIED.

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.

CONCLUSION
A movant seeking to transfer bears the evidentiary burden of establishing that the
movant’s desired forum is clearly more convenient than the forum where the case was filed. The
Court finds that Movant has not established that the Northern District of California is a clearly
more convenient forum than the Eastern District of Texas. Accordingly, Defendant Google Inc.’s
Motion to Transfer Venue to the Northern District of California (Dkt. No. 18) is DENIED.

SIGNED this 3rd day of January, 2012.
SIGNED this 23rd day of September, 2014.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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