Rockstar Consortium US LP et al v. Google Inc

Filing 248

REPLY IN SUPPORT to 217 Response to Non-Motion, Reply in Support of Objections to Magistrate's Memorandum Opinion and Order Denying Google's Motion To Transfer filed by Google Inc. (Attachments: # 1 Affidavit of Sam Stake, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4)(Perlson, David) Modified on 11/3/2014 (ch, ).

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

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Civil Action No. 13-cv-00893-JRG-RSP
JURY TRIAL DEMANDED

DEFENDANT GOOGLE’S REPLY IN SUPPORT OF ITS OBJECTIONS TO THE
MAGISTRATE’S MEMORANDUM OPINION AND ORDER DENYING GOOGLE’S
MOTION TO TRANSFER

NOTES ON CITATIONS
1.

“Br.” refers to Google’s Objections to the Magistrate’s Memorandum Opinion and Order
Denying Google’s Motion To Transfer (Dkt. 188), filed on October 3, 2014.

2.

“Opp.” refers to Rockstar’s Response to Google’s Objections to the Magistrate’s
Memorandum Opinion and Order Denying Google’s Motion To Transfer (Dkt. 217), filed
on October 23, 2014.

3.

“Dubey” refers to the Declaration of Abeer Dubey in Support of Google’s Motion To
Transfer Venue to the Northern District of California, filed with Google’s Motion To
Transfer (Dkt. 18) on January 10, 2014.

4.

“Dubey II” refers to the Second Declaration of Abeer Dubey in Support of Google’s Motion
To Transfer Venue to the Northern District of California, filed with Google’s Reply in
Support of Its Motion To Transfer (Dkt. 36) on March 10, 2014.

5.

“Ex.” refers to exhibits appended to the Declaration of Sam Stake, filed herewith.

I.

THE MANDAMUS ORDER STRONGLY SUPPORTS TRANSFER
Rockstar’s responsive brief barely addresses the reasoning in the Federal Circuit’s

mandamus order on transfer in In re Google, No. 2014-147 (“Order”) though its findings are
directly on point. The Federal Circuit analyzed the “comparative convenience” of this District and
the Northern District, concluding that “those considerations point firmly in the direction of the
Northern District.” (Dkt. 207-1, 7 (emph. added).) Specifically it found that Google “designed and
created” its accused products (the Android platform) in the Northern District, that its witnesses for
these products largely “reside near Google’s headquarters in Mountain View,” and that Google’s
pertinent records “are predominantly based in its headquarters in the Northern District.” (Id., 7-8.)
The same is true in this case.
Here, the location of Google’s operations, witnesses, and documents likewise strongly
support transfer. It is undisputed, as shown through an employee declaration nearly identical in
form and detail to its declaration in In re Google (Ex. 1), that Google’s accused products (Google’s
search engine and AdWords) were principally developed at its headquarters in the Northern District,
that Google’s ongoing operations for these products are still largely based in the Northern District,
and that numerous witnesses who can testify about the design, development, and business aspects of
these products work at Google’s headquarters. (Dubey I, Dkt. 18-3, ¶¶ 3, 5, 7-8.) Google also
established through this declaration that its documentary records about the accused products are
based in the Northern District, not in this District. (Dubey I, ¶¶ 6, 9-10; Dubey II, Dkt. 36-4, ¶ 3.)
The Federal Circuit also made significant findings in the Order about Rockstar and
Rockstar’s witnesses that support granting transfer. Specifically, the Federal Circuit gave no weight
to Rockstar’s purported “significant and long-standing ties” to this District (Opp., 6), concluding
that “Respondents do not dispute that their primary operations are run out of Canada. Moreover,
the only prospective employee witnesses that Respondents name from Plano work as counsel for
Respondents, and are thus entitled to little consideration in a convenience calculus.” (Dkt. 207-1,
8.) In this case too, Rockstar has not disputed that its primary operations are in Canada, and the
only potential witnesses that either party has identified in or near this District are former Nortel

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attorneys: four in Plano, two in Dallas, and one in Austin. (Br., 2, 5.) Rockstar argues that these
attorneys are potential fact witnesses (Opp., 5-6), but the Federal Circuit rejected Rockstar’s
identical argument in In re Google that its attorneys deserve consideration in the transfer analysis
because they are knowledgeable about “licensing and prosecuting the Nortel patents.”1 (Ex. 2, 9.)
Other key facts about this case show that the balance of convenience even more strongly
favors the Northern District than in In re Google. In In re Google, Rockstar argued that two
defendants, Samsung and ZTE, had offices in or near this District where witnesses knowledgeable
about the accused products work. (Ex. 2, 9, 11.) In contrast, Google is the only defendant in this
case, and there is no evidence that any Google witnesses work in or near this District. Also here,
unlike In re Google, Google established that numerous non-party and party prior art witnesses are
located in or near the Northern District, including former founders and chief software architects at
Excite, Yahoo!, InfoSeek, WebCrawler, AltaVista, and the Search Engine Report.2 (Dkt. 18, 3-6.)
This concentration of prior art witnesses in the Northern District supports granting transfer.
II.

FEDERAL AND FIFTH CIRCUIT LAW STRONGLY SUPPORTS TRANSFER
Rockstar accuses Google of making “misrepresentations” in its transfer briefing (Opp., 1-2,

5, 7), but then fails to identify even a single misrepresentation. For example, Rockstar accuses
Google of concealing a “strong presence in the EDTX,” but Google explained that its small office in
Frisco closed in November 2013 and staffed no employees that work on the accused products.
(Dubey II ¶¶ 2-3; Dubey I ¶ 6.) Rockstar also accuses Google of failing to disclose its Dallas office,
but this recently-opened office outside of the District has no meaningful connection to this case, nor
could Rockstar establish one during briefing. (Dkt. 33, 7.) Rockstar also accuses Google of
concealing prior art witnesses, but neither party has identified any prior art witnesses in this District.
1

Rockstar states that the cases cited by the Federal Circuit concern only litigation counsel, and
not an attorney as a fact witness. (Opp., 5.) Not so. A case cited in the Order (but ignored by
Rockstar) held that the convenience of an attorney who might also serve as a fact witnesses was
“not a factor to be considered.” Solomon v. Cont’l Am. Life Ins. Co., 472 F.2d 1043, 1047 (3d Cir.
1973) (cited by Order, Dkt. 207-1, 8).
2
Rockstar now faults Google for failing to provide a “comprehensive list of the prior art cited
during prosecution” (Opp. at 4), but it ignores that Google’s InfoSeek, WebCrawler, and AltaVista
prior art formed the basis for key Patent Office rejections, and that this prior art is now central to
Google’s inequitable conduct defense. (Dkt. 18 at Exs. 12-13; Dkt. 20, e.g., ¶¶ 52-69.)
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(Opp., 4.) Rockstar further contends that Google ignores Ericsson and Blackberry’s offices in and
near this District, but Rockstar overlooks that these offices only house the US subsidiaries of
Rockstar’s shareholders, and that no witnesses or documents relevant to this case have been
identified in either office. (Id.; Exs. 3-4.) Finally, while Rockstar points out that Google served
subpoenas on former Nortel attorneys that live in Texas, and one in this District, the Federal
Circuit’s Order held these witnesses deserve no weight in the transfer analysis. (Dkt. 207-1, 8.)
Rockstar also contends that Google manufactured a new legal standard in its Objections.
(Opp., 1-2.) But Google has always applied the correct legal standard: the transfer analysis should
focus on sources of evidence in and around this District and in the Northern District, and it is
improper to treat either venue as a “centralized location.” In re Genentech, Inc., 566 F.3d 1338,
1344-45 (Fed. Cir. 2009). The Federal Circuit’s most recent application of this standard, in In re
Toyota, 747 F.3d 1338, 1340 (Fed. Cir. 2014), confirms that the Court’s focus should be on the
transferee and transferor forums rather than on sources of proof removed from both venues: “The
comparison between the transferor and transferee forums is not altered by the presence of other
witnesses and documents in places outside both forums.”3
Applying this legal standard, Google demonstrated that the Northern District is home to
substantially more party witnesses, non-party witnesses, and documentary evidence than this
District, supporting transfer. The Federal Circuit’s mandamus Order only further confirms this
imbalance is decisive, because Google has substantial operations, witnesses, and documents based
in the Northern District, and Rockstar has no meaningful, non-litigation or non-licensing presence
in this District. Google respectfully requests that the Court reconsider the Magistrate’s denial of
transfer, and grant Google’s motion.

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Rockstar argues that Google waived any reliance on In re Toyota by failing to include it in its
transfer briefing. (Opp. at 1.) But as Rockstar concedes, In re Toyota issued after principle briefing
closed on Google’s transfer motion. Freeman v. County of Bexar, 142 F.3d 848, 852 (5th Cir. 1998)
is inapposite because it concerns waiver of a legal argument, not a new case. In any event, the
Court must makes an “independent assessment of the law” when reviewing a magistrate’s
recommendation, and should consider binding precedent like In re Toyota. Acosta v. United States,
No. SA-06-CR-364, 2010 WL 519706, at *1 (W.D. Tex. Feb. 9, 2010).
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DATED: October 31, 2014

QUINN EMANUEL URQUHART & SULLIVAN, LLP
By

/s/ David Perlson
J. Mark Mann
State Bar No. 12926150
G. Blake Thompson
State Bar No. 24042033
MANN | TINDEL | THOMPSON
300 West Main Street
Henderson, Texas 75652
[phone]
[phone] (fax)
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Charles K. Verhoeven
[e-mail]
David A. Perlson
[e-mail]
50 California Street, 22nd Floor
San Francisco, California 94111-4788
Telephone: [phone]
Facsimile: [phone]
Attorneys for Google Inc.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system per Local Rule CV-5(a)(3) on October 31, 2014.
/s/ Sam Stake
Sam Stake

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