Rockstar Consortium US LP et al v. Google Inc

Filing 217

RESPONSE to 188 Appeal of Magistrate Judge Decision to District Court by NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Declaration of Justin A. Nelson, # 2 Exhibit 1 - Google's Responses to Plaintiffs' 3rd Set of Interrogatories FILED SEPARATELY UNDER SEAL, # 3 Exhibit 2 - Address of Ericsson's Headquarters, # 4 Exhibit 3 - Map showing Ericsson's Headquarters is in the EDOT, # 5 Exhibit 4 - 8/4/14 Krishnan Notice of Subpoena, # 6 Exhibit 5 - 6/5/14 Garlick Notice of Subpoena, # 7 Exhibit 6 - 6/5/14 Garlick & Markison Notice of Subpoena, # 8 Exhibit 7 - 7/22/14 Ericsson Notice of Subpoena, # 9 Exhibit 8 - 9/8/14 Fisher Notice of Subpoena, # 10 Exhibit 9 - 9/8/14 Weiss Notice of Subpoena, # 11 Exhibit 10 - Google's 2d Notice of Rule 30(b)(6) Depo to Rockstar)(Nelson, Justin)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES
LLC,
Plaintiffs,

Case No. 2:13-cv-00893-JRG-RSP

v.
GOOGLE INC.,

JURY TRIAL DEMANDED

Defendant.

PLAINTIFFS’ RESPONSE
TO DEFENDANT GOOGLE’S OBJECTIONS (Dkt. 188)
TO THE MAGISTRATE’S MEMORANDUM OPINION AND ORDER (Dkt. 165)
DENYING GOOGLE’S MOTION TO TRANSFER

I.

Google Continues to Misrepresent the Facts and Law
Google attempts to excuse its misrepresentations to Judge Payne by asserting that “the

Order failed to address Google’s repeated argument that under governing Federal Circuit law the
location of sources of evidence in places removed from both forums is not relevant.” Dkt. 188 at
1. This argument is wrong factually and legally. Factually, Google repeatedly argued that witnesses
outside both forums were relevant. The first heading in Google’s Motion to Transfer addressed
witnesses in “OR NEAR” the NDCA, and the entirety of “TEXAS.” Dkt. 18, at 2 (emphasis in
original). Google’s Motion discussed witnesses from coast-to-coast and beyond the United States,
and argued that its documents were “maintained or accessible in or near the [NDCA].” Id. at 1014 (emphasis added). And Google expressly invoked the “100 mile rule” on grounds that witnesses
lived in “or closer to” the NDCA. Id. at 13.
On the law, the reason why Google argued about witnesses not just in EDTX or NDCA is
that witnesses outside those districts still matter, especially where they are near the relevant
venues—a point elsewhere Google itself seems to acknowledge. Dkt. 188 at 2 (citing to witnesses
in Washington and Southern California that are “near” the NDCA). While Google now cites In re
Toyota Motor Corp., 747 F.3d 1338, 1340 (Fed. Cir. 2014), it did not argue below that only
witnesses and documents in the two districts matter. It did not cite In re Toyota even though the
case was decided while the parties were still briefing transfer-related issues and Google filed other
notices of supplemental authority. It has now waived that argument. Freeman v. County of Bexar,
142 F.3d 848, 852 (5th Cir. 1998).
More fundamentally, a court can consider the location of witnesses and documents both
near the venues and in other States. In re Toyota does not and cannot hold that only witnesses and
documents in the two venues matter. The Fifth Circuit considers outside-of-district witnesses. In re
Volkswagen of Am., Inc., 545 F.3d 304, 317 (5th Cir.2008) (en banc) (including the convenience of
a Kansas party witness in the convenience balance between NDTX and EDTX). And the Federal
Circuit routinely has considered the locations of other witnesses and documents even in different
states and countries as long as some tie to the EDTX exists. E.g., In re TS Tech USA Corp. 551
1

F.3d 1315, 1320 (Fed. Cir. 2009) (convenience of Michigan and Canadian witnesses in a case
seeking transfer from EDTX to Ohio); In re Nintendo Co., 589 F.3d 1194, 1199 (Fed. Cir. 2009)
(considering “average travel” for Ohio and New York witnesses in a case requesting transfer from
EDTX to Seattle); In re Zimmer Holdings, Inc., 609 F.3d 1378, 1382 (Fed. Cir. 2010) (proximity
of Michigan witnesses in a case seeking transfer from EDTX to Indiana). Only in limited
circumstances where no witnesses or documents whatsoever exist in the forum should the court
disregard a district court’s central location. In re Genentech, 566 F.3d 1338, 1344 (Fed. Cir. 2009).
But even where one witness is in the EDTX, the Federal Circuit has permitted
consideration of a court’s central location. In re VTech Communications, 2010 WL 46332, at *2
(Fed. Cir. Jan.6, 2010); see also In re Nintendo Co., 589 F.3d at 1199 (restating In re Genentech’s
holding as “it is improper to consider the centralized location of the Eastern District of Texas when
no identified witness resides in the district.”) (emphasis added). Likewise, the Federal Circuit has
denied mandamus where the district court considered “documents and witnesses in or in close
proximity to” the district of suit. In re Emerson Elec. Corp., 559 Fed. Appx. 1007, 1008 (Fed. Cir.
2014). In re Toyota, by contrast, involved a complete lack of documents or witnesses in the district,
as did the cases on which it relied—Genentech and Nintendo. Finally, new Federal Rule 45 allows
“absolute subpoena power” in this Court for any witness in the entire Dallas area. Invensense, Inc.
v. STMicroelectronics, Inc., 2014 WL 105627 at *2, *6 n.1 (E.D. Tex. Jan. 10, 2014) (considering
evidence within a mile from the EDTX border).
In short, Google cannot explain away its misrepresentations to Judge Payne or find error in
the decision below by arguing that it only omitted facts because it did not think the information
was relevant. As this Court has stated, it “routinely observes movants utilizing carefully worded
statements to avoid disclosing key facts that disfavor their positions, especially in the context of a
Motion to Transfer.” My Health Inc. v. Click4Care, Inc., No. 2:13-cv-137, Dkt. 32, at *4 (E.D.
Tex. Mar. 20, 2014). The Federal Circuit likewise has disapproved of a movant “withhold[ing]
information” relevant to transfer. In re HTC Corp., 494 F. App’x 81, 83 (Fed. Cir. 2012).
Google’s failure to disclose relevant facts cuts strongly against transfer.
2

II.

Private Interest Factors
Relative Ease of Access to Sources of Proof: Incredibly, Google maintains that this factor

cuts in its favor even though it still does not provide any more detail regarding the sources of its
own proof or attempt to rebut Judge Payne’s detailed factual findings. Instead, Google argues that
its documents are “more accessible” from the NDCA (Dkt. 188 at 4) and cites only to the same
declaration that Judge Payne correctly held was “an incomplete and misleading factual record.”
Order, Dkt. 165, at 7. Google argues that it was “not seeking to hide anything” and focused only on
the NDCA and EDTX. But Judge Payne’s ruling specifically addressed Google’s failure to
identify proof within the NDCA and failure to specify what resided within or near the EDTX.
Google refuses to detail, for example, what was stored or accessible from its EDTX office
at the time Rockstar filed suit in October 2013. It argues that its EDTX office has been vacant
since November 2013. But Google cannot evade venue by moving out all of its relevant documents
immediately after Rockstar filed suit. Venue is measured at the time of suit and the court frowns
upon post-suit manipulation. MobileMedia Ideas LLC v. HTC Corp., 2012 WL 15070136 at *3
(E.D. Tex. May 3, 2012). While Google attempts to dismiss its Dallas office by saying it is not in
the EDTX, for the first time Google provides an address for that office—one that is approximately
two miles from the EDTX border. Google does not dispute that according to public documents, it
appears that servers for the accused instrumentalities are managed from that office. Dkt. 33 at 7 &
Exh. 8 to Motion. Notably, Google still has refused to answer interrogatories in this case regarding
the location of its documents, facilities, and servers. Exh. 1. As Judge Payne correctly held, “The
Court is significantly concerned that Google is not being fully candid with the Court regarding the
location of its relevant documents and facilities.” Order at 6. Google’s failure to specify its location
of documents and witnesses in light of the evidence suggesting Google’s strong presence in the
EDTX creates a strong inference that much of Google’s sources of proof are located here.
Google also argues that Judge Payne ignored evidence from third parties in the NDCA,
“such as Apple and prior art witnesses.” Dkt. 188 at 5. But Judge Payne correctly found that the
location of third party witnesses includes many in or near the EDTX. Order at 9-10. And Judge
3

Payne correctly found that Google was not presenting a complete picture of non-party witnesses.
Id. at 8-9. Indeed, since the Motion, Google has served 6 subpoenas to non-party witnesses in
Texas, including Ericsson, a Rockstar investor whose North American headquarters are within the
EDTX (6300 Legacy Drive, Plano, TX, see Exhs. 2-3), at least one other EDTX witness, and the
prosecuting attorney for the patents-in-suit who is a central figure in Google’s inequitable conduct
allegations. Exhs. 4-9. Judge Payne correctly found that this factor weighs against transfer.
Cost of Attendance for Willing Witnesses: Judge Payne also correctly found that this
factor weighs against transfer and that Google cherry-picked its prior art witnesses to make it seem
that all reside in the NDCA. Google’s only excuse for why it only discussed certain witnesses is
that its witnesses were “specifically noted during prosecution of the patents-in-suit.” Dkt. 188 at 2.
But Google did not provide a comprehensive list of the prior art cited during prosecution. Such a
list reveals that the witnesses are scattered throughout the United States, including in the Dallas
area. Dkt. 33 at 8-9 & Ex. 13. And Google opposed Rockstar’s attempt to present the Court with a
complete record of the prior art on which Google relies in its invalidity contentions. That
information also shows that the witnesses are not concentrated in the NDCA. Dkt. 92. Even
though Google had not filed its invalidity contentions at the time of the transfer motion, it has
known about the patents for years before suit, filed its contentions soon after briefing was
completed, and opposed Rockstar’s attempt to supplement the record.
Judge Payne correctly found that Google’s actions were “troubling” because not only was
Google’s information “incomplete,” it was “incorrect and misleading” “at least in part.” Order at
15-16. And while Google’s objection still relies on Apple as a non-party witness in the NDCA and
Microsoft in the Western District of Washington because they are Rockstar shareholders, it ignores
that both Ericsson and Blackberry also are Rockstar investors. Their offices are in (Ericsson) and
near (Blackberry) the EDTX, and they have relevant documents and witnesses. Powers Dec.,
Dkt.33-1, at ¶ 10. Rockstar’s prosecution counsel discussed above is in Austin, Texas, and the
Nortel employee who negotiated with Google in 2012 works a few miles from the EDTX border.
Exhs. 4 (Krishnan) & 5 (Garlick).
4

As Google concedes, non-party witnesses generally are given greater weight than party
witnesses. Dkt. 188 at 2; see also Geotag, Inc. v. OnTargetJobs, Inc., No. 2:13-cv-64, Dkt. 28, at
*4 (E.D. Tex. Mar. 7, 2014). With respect to Google’s witnesses, it relies on the same disputed and
misrepresented evidence as it does for documents. Indeed, Google relies on the fact that it closed
its Frisco, Texas office after Rockstar filed suit. Dkt. 188 at 3, 4. And it does not discuss its Dallas
or New York or India offices at all, where relevant witnesses likely exist. Dkt. 33 at 7-8; Dkt. 41 at
7. Google’s silence is intentional, especially as this Court has denied transfer because the movant
had relevant employees in both California and India. My Health Inc., No. 2:13-cv-137, at *4.
Google also urges the Court to disregard Rockstar’s presence in the EDTX and argues that
the Federal Circuit’s recent decision granting the writ in another Rockstar case due to the “first-tofile” doctrine weighs in its favor. Both these arguments are unavailing. As Google concedes, the
Federal Circuit’s decision revolved around principles of comity and the first-filed doctrine. In re
Google, No. 2014-147, at 5-6. The Federal Circuit then examined whether an exception to the
comity doctrine would apply in light of the “comparative convenience” of the venues—an analysis
on its face that is substantially different from the “clearly more convenient” transfer inquiry here.
Id. at 7. Moreover, the Android-specific factors the Federal Circuit cited do not apply in this case.
Just the opposite. As discussed above, Google has refused to disclose where it develops and
maintains its products and documents, and the evidence suggests much of it in or near the EDTX.
The Federal Circuit’s discussion of Rockstar’s Plano office also does not apply in the
context of this case due to the extensive previous interactions between Rockstar’s employees and
Google on these very patents. In contrast to the other case, Rockstar's employees discussed the
patents-in-suit with Google. Therefore, their knowledge of the case is not as in-house counsel but
as fact witnesses. See, e.g., Dkt. 33-2 (Hearn Dec.). The cases cited by the Federal Circuit on this
point revolve around litigation counsel, and do not implicate situations where an attorney is a fact
witness. See, e.g., In re Horseshoe Entm’t, 337 F.3d 429, 434 (5th Cir. 2003) (discussing location
of outside counsel who were representing the parties in the litigation); Keir v. Life Office Mgmt.
Ass’n, Inc., 1993 WL 283902 at *2 (E.D. Pa. Jul. 27, 1993) (under Third Circuit law, court rejected
5

argument that in-house counsel alleged inconvenience based on traveling to the transferee venue
for the litigation). That situation is far different from the facts in this case, where the relevance of
employees has nothing to do with litigation management. Rather, the relevant employees are fact
witnesses who were involved in prior discussions with Google about the patents-in-suit and also
have knowledge about the patent sale to Rockstar in which Google also bid. Indeed, Google itself
has issued subpoenas to former employees on this subject, and has issued a 30(b)(6) deposition
notice to Rockstar on similar topics. Exh. 10, Topics 21-22, 25-27, 29, 31-32, 34-39, 44-45, 48, 5561. Finally, while the petition asked to transfer the cases, notably the Federal Circuit only stayed
them and in fact did not transfer the cases. As Judge Payne correctly found, Rockstar and its
predecessor entity’s connections to the EDTX are extensive and long-standing. Order at 9-10.
Availability of Compulsory Process: Judge Payne also correctly found that the
availability of compulsory process weighs against transfer. Google has not identified a single
witness who would be unwilling to testify, and non-party witnesses currently willing to testify may
require compulsory process to testify at trial. Contrary to Google’s speculation on who may testify
or have relevant information, the third-party witnesses within this Court’s subpoena power that
Rockstar cites are witnesses that Google itself already has subpoenaed. These include (1) Bruce
Garlick, the prosecuting attorney whom Google cites 30 times in its Answer and whom Google
concedes is subject to this Court’s subpoena power, Dkt 18 at 12, Dkt. 33 at 13; (2) Raj Krishnan,
the former Nortel employee who negotiated with Google on the patents-in-suit; (3) at least two
other former Nortel employees whom Google has subpoenaed, at least one of whom (Richard
Weiss) lives in the Eastern District of Texas; and (4) the Rockstar shareholders Ericsson and
Blackberry, at least one of whom (Ericsson) Google already has subpoenaed and is based in the
EDTX, and the other (Blackberry) is nearby in Irving, Texas. Powers Dec., Dkt. 33-1, ¶ 10.
III.

Public Interest Factors
Local Interests: Google repeats its same arguments for local interest as it does for the

private factors. Google points to the prior art witnesses and Apple, who is one of Rockstar’s
shareholders. But Google ignores the significant and long-standing ties to the Eastern District of
6

Texas. As the Declaration of Don Powers notes, when the first patent in the family issued, Nortel
employed a little fewer than 10,000 employees at its United States headquarters in Richardson,
Texas—less than a mile from the EDTX border. Many of these employees—including Mr. Powers
himself—lived (and still live) in the EDTX. Dkt. 33-1 ¶¶ 4, 6-7. It is thus no surprise that Google
has subpoenaed former Nortel employees who live or work in or near the EDTX. And while
Google points to Apple as a Rockstar shareholder, it ignores Ericsson and Blackberry, who are in
and near the EDTX, respectively. While Google also argues that no tie exists between the Nortel
office and this case, Google itself has subpoenaed these former employees who worked at the
Richardson office. Finally, Google relies on the discredited declaration of Abeer Dubey to argue
that no portion of the relevant activities occur in the EDTX despite the fact that Google (a) admits
that it operated its EDTX office after suit was filed and never disputes that it could access all
relevant documents from that office; (b) does not address its Dallas office, which is approximately
2 miles from the EDTX border; and (c) never provides the level of requisite detail to support its
assertion regarding the location of its relevant activities, and in fact public documents suggest that
these activities are not “predominantly based” in the NDCA. In short, Google still does not try to
supplement or fix the serious errors and misrepresentations in its Motion on this very point.
Court Congestion: Google does not dispute in its objections that time to trial in the EDTX
is shorter. In fact, it is substantially shorter, as Google admitted it its Motion. Dkt. 18 at 15. This
fact alone establishes that this factor cuts strongly against transfer.
IV.

Conclusion
Google has tried to manipulate the venue analysis by not disclosing all relevant facts

initially and by still not disclosing all the facts even after Judge Payne’s decision. A true picture
establishes that transfer is not appropriate, and in fact that the EDTX is most convenient. At a
minimum, Google cannot establish that the NDCA is clearly more convenient—especially in light
of its failure of proof. For all these reasons, along with those in the prior briefing and exhibits
thereto (Dkts. 33, 41, 63, 92-2) and Rockstar’s Response to Google’s Writ of Mandamus to the
Federal Circuit (Dkt. 15 in Case No. 14-152), this Court should affirm Judge Payne’s Order.
7

DATED: October 23, 2014

Respectfully submitted,

By: /s/ Justin A. Nelson
Max L. Tribble, Jr. – Lead Counsel
State Bar No. 20213950
Alexander L. Kaplan, State Bar No. 24046185
John P. Lahad, State Bar No. 24068095
Shawn Blackburn, State Bar No. 24089989
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Justin A. Nelson, State Bar No. 24034766
Parker C. Folse, III, WA State Bar No. 24895
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, Washington 98101
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Amanda K. Bonn, CA State Bar No. 270891
Meng Xi, CA State Bar No. 280099
SUSMAN GODFREY L.L.P.
1901 Avenue of the Stars, Suite 950
Los Angeles, CA 90067-6029
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

8

T. John Ward, Jr., State Bar No. 00794818
Claire Abernathy Henry, State Bar No. 24053063
WARD & SMITH LAW FIRM
P.O. Box 1231
Longview, TX 75606-1231
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
S. Calvin Capshaw, State Bar No. 03783900
Elizabeth L. DeRieux, State Bar No. 05770585
D. Jeffrey Rambin, State Bar No. 00791478
CAPSHAW DERIEUX, LLP
114 E. Commerce Ave.
Gladewater, TX 75647
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Rockstar Consortium US LP and
NetStar Technologies LLC

CERTIFICATE OF SERVICE
I hereby certify that all counsel of record, who are deemed to have consented to electronic
service are being served this 23rd day of October, 2014 with a copy of this document via the
Court’s CM/ECF system per Local Rule CD-5(a)(3).
/s/ Justin A. Nelson
Justin Nelson
CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
I hereby certify that Exhibit 1 should be filed under seal because it contains material covered
by the Protective Order entered in this case on June 19, 2014 (Dkt. No. 90).
/s/ Justin A. Nelson
Justin A. Nelon

9