Rockstar Consortium US LP et al v. Google Inc

Filing 241

Appellant's REPLY BRIEF by Google Inc. (Attachments: # 1 Affidavit of Sam Stake, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4)(Perlson, David)

EXHIBIT 2

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_____________________________________________
IN THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
_____________________________________________
2014-147
_____________________________________________
IN RE GOOGLE INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC,
Petitioners.
_____________________________________________
On Petition for a Writ of Mandamus to the United States District Court for the
Eastern District of Texas in Case Nos. 2:13-cv-894 and 2:13-cv-900,
Judge Rodney Gilstrap.
_____________________________________________
OPPOSITION TO
PETITION FOR WRIT OF MANDAMUS
_____________________________________________
Joel L. Thollander
Joshua W. Budwin
Leah Buratti
MCKOOL SMITH, P.C.
300 W. 6th Street, Suite 1700
Austin, TX 78701
[phone]

Theodore Stevenson, III
Principal Attorney
David Sochia
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
[phone]

Attorneys for Respondents Rockstar Consortium US LP and MobileStar
Technologies, LLC
Dated: August 22, 2014

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standing alone, is not a product accused of infringement. The accused products are
mobile devices with numerous hardware elements combined with software.2
C.

Rockstar Has Longstanding Ties to the EDTX.

Rockstar and MobileStar are the assignees of patents that resulted from
extensive research and development performed by Nortel Networks. A693.
Although its worldwide headquarters was located in Canada, for twenty years the
headquarters for Nortel’s U.S. entity and its largest U.S. facility (with
approximately 10,000 employees) was in Richardson, Texas. A729. Nortel
conducted patent prosecution and licensing activities from Richardson. A720.
After confronting bankruptcy in 2009, in 2011 Nortel held an auction for its
patents. A720. Google ultimately bid $4.4 billion for the Nortel portfolio, but lost
the auction to Rockstar Bidco LP, which bid $4.5 billion. A720. Rockstar Bidco
LP—an entity distinct from Rockstar—subsequently assigned a minority of the
Nortel patents directly to some of its limited partners, and assigned the remaining
Nortel patents (including the patents-in-suit) to Rockstar. RA41.
Rockstar is a Delaware limited partnership. Its limited partners are: Apple,
BlackBerry, Ericsson, Microsoft, and Sony, each with a minority ownership
percentage. A729. None of the above companies has a majority or controlling
2

Google thus does not have standing to seek an adjudication of Android open
source because there is no evidence that anyone, even Google, uses the Android
open source in a mobile device without substantial modification.
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interest in Rockstar. Two of the limited partners have strong Texas connections:
Ericsson’s U.S. headquarters are located within the EDTX, and BlackBerry’s
headquarters are in Irving. The other limited partners are scattered, with Microsoft
in Washington, Apple in California, and Sony in New Jersey. A730; RA42.
After receiving the assignments from Rockstar Bidco LP, Rockstar created
subsidiary entities for the purpose of licensing its intellectual property in different
markets. A1288; RA71. Rockstar then assigned certain patents corresponding to
different market segments and technology areas to those newly-created
subsidiaries. A1288; RA71. For example, MobileStar focuses on licensing patents
related to mobile device technology, NetStar Technologies focuses on internet
search technology, Bockstar Technologies focuses on technology for network
components, and Constellation Technologies focuses on network technologies for
telecommunications service providers to deliver cable, telecommunications, and
other multimedia services. Rockstar owns two of the patents-in-suit. A729; RA42.
MobileStar owns five of the patents-in-suit and is the exclusive licensee (from
Rockstar) of the other two patents, within its field of use. A729.
Rockstar is based in the EDTX. Rockstar initially leased Nortel’s
Richardson office space—where many of Nortel’s patent files were located,
including files relevant to the patents-in-suit. A731-33. In August 2012, after
Nortel sold its Richardson campus, Rockstar was forced to move and leased its
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current offices in nearby Plano, within the EDTX. A731. Rockstar and MobileStar
still maintain their principal place of business in Plano. A729-31. The Plano office
is Rockstar’s only U.S. office, although some employees also work out of their
homes. A731. The office contains 8,125 square feet, with 10 assigned offices, 2
guest offices, 4 conference rooms, 7 work areas, and storage space. A731.
When Rockstar Bidco LP acquired the patents-in-suit from Nortel, the
Rockstar entities also acquired former Nortel employees responsible for licensing
and prosecuting the Nortel patents. A730-31. Rockstar now has 15 full-time
employees in the U.S., including five full-time employees in Plano and others who
spend significant time there. A731. No Rockstar or MobileStar executive or
employee lives or works in California. A732. Eight of the U.S.-based employees
likely have relevant information; three of them work full-time in the Plano office,
one lives in Colorado, and the rest are on the east coast. A732-33. Additionally,
two Rockstar board members are in the EDTX or nearby. Kasim Alfalahi (also
Chief IP officer at Ericsson), works in the EDTX. A733. Randy Mishler (also
Senior Director of IP Licensing at BlackBerry), works in nearby Irving. A733.
D.

The EDTX is Samsung’s Home Forum.

Samsung Telecommunications America, LLC has its headquarters in
Richardson—within the EDTX. A783-84. From the EDTX, Samsung “researches,
develops and markets a variety of personal and business products throughout North

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America

including

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handheld

wireless

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phones,

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wireless

communications

infrastructure systems and enterprise communications systems.” A785-86. The
products developed in the EDTX by Samsung include the mobile devices at issue
in this case. Samsung also has an office in Dallas, where its “Dallas Technology
Labs (DTL) leads Samsung’s standardization initiatives in the IEEE, ITU, 3GPP,
WiMAX and other major forums.” A787-88. These laboratories employ over 150
engineers, including Samsung’s Android software engineers. A787-88. The DTL is
“highly regarded” by Samsung “as the thought leader and innovation engine for its
wireless business units.” A787-88.
Because the EDTX is Samsung’s home forum, Samsung is no stranger to
litigating there. When Samsung sues on its patents, it frequently selects the EDTX
as its preferred venue. A789-94. Samsung has even opposed previous motions to
transfer from the EDTX to the NDCA on the grounds that the EDTX was a more
convenient forum. A897-901. EDTX and NDCA courts have each recognized that
the EDTX is a convenient forum for litigation involving Samsung. A902-18.
E.

Google Also Has Connections to the EDTX.

In 2012, Google opened an office in Frisco (in the EDTX). A670-71. Google
later relocated that office to Dallas (in the NDTX). A761-74. Today Google
maintains at least two Texas offices, in Dallas (approximately 20 miles from the
EDTX) and in Austin. A761-76. Google’s Austin office focuses on developer

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relations and technical solutions, among other issues. A777-79. Google’s Dallas
office contains departments for design and engineering, as well as sales. A780-82.
Publicly available information suggests that Google’s Texas employees work on
the development of the Android platforms. Specifically, Jeff Hamilton, a software
engineer on Google’s Android team who specializes in “[o]perating systems
development for mobile devices,” lives in Austin, Texas. A1070-72.
F.

Rockstar Sues in the EDTX; Google Forum Shops to the NDCA.

On October 31, 2013, Rockstar and MobileStar filed patent infringement
lawsuits in the EDTX against Samsung, ASUS, HTC, Huawei, LG, Pantech, and
ZTE—all mobile device manufacturers. A919-32. The EDTX was a logical forum
because Rockstar, MobileStar, and Samsung are each headquartered there.
Samsung has a huge mobile-device presence in the EDTX, and ZTE is also
headquartered in Texas, only a few miles from the EDTX border. The other
defendants are scattered in different locations around the country: California,
Washington, New Jersey, and Georgia. But given that the EDTX had the strongest
ties to Rockstar, as well as to the defendants as a whole, the EDTX was a logical
central venue for all the suits. On December 23, rather than intervene in the EDTX
case, Google filed its action for declaratory judgment in the NDCA. A933-35. On
December 31, Rockstar and MobileStar added Google as a defendant to the
Samsung case in the EDTX. A69-135. Neither Google nor EDTX-based Samsung

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moved to sever their joinder in a single action in the EDTX.
On January 23, 2014, Rockstar and MobileStar filed a motion to dismiss the
NDCA action. They maintained that the NDCA lacked jurisdiction over
MobileStar and argued for dismissal under the first-to-file rule. A298-328; RA2-4.
In an order issued April 17, the NDCA court denied the motion to dismiss. A30028. Rockstar then filed a motion to transfer the NDCA action to the EDTX. RA2963. There was a hearing on June 26, during which the NDCA court expressed the
view that this suit should precede the NDCA case so the court “would have the
benefit of looking at what the Texas judge had done with claim construction.”
RA93. But in an order issued on August 20, the NDCA court reserved ruling on the
motion to transfer pending the outcome of this mandamus proceeding, noting that
if the EDTX court’s discretionary ruling stands, the better course would be to send
the NDCA case to Texas for consolidation and a single trial. RA127-28.
IV.

STANDARD OF REVIEW
Three requirements must be met before a writ of mandamus may issue:
(1) the party seeking issuance of the writ [must] have no other
adequate means to attain the relief he desires …; (2) the petitioner
must satisfy the burden of showing that [his] right to issuance of the
writ is clear and indisputable; and (3) even if the first two
prerequisites have been met, the issuing court … must be satisfied that
the writ is appropriate under the circumstances.

In re Volkswagen of Am., Inc., 545 F.3d 304, 311 (5th Cir. 2008) (internal quotes
omitted). To show a “clear and indisputable” right to the writ, the petitioner must
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Respectfully submitted,

/s/ Theodore Stevenson, III
Theodore Stevenson, III
Principal Attorney
David Sochia
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
[phone]
Joel L. Thollander
Joshua W. Budwin
Leah Buratti
MCKOOL SMITH, P.C.
300 W. 6th Street, Suite 1700
Austin, TX 78701
[phone]
Attorneys for Respondents Rockstar
Consortium US LP and MobileStar
Technologies, LLC

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