Rockstar Consortium US LP et al v. Google Inc

Filing 274

***FILED IN ERROR. PLEASE IGNORE.***SUR-REPLY to 241 Appellant's Reply Brief Plaintiffs Sur-Reply To Defendant Googles Objections (Dkt. 188) To The Magistrates Memorandum Opinion And Order (Dkt. 165) Denying Googles Motion To Transfer filed by NetStar Technologies LLC, Rockstar Consortium US LP. (Bonn, Amanda) Modified on 11/14/2014 (ch, ). Modified on 11/14/2014 (ch, ).

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

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

Plaintiffs,
v.

JURY TRIAL DEMANDED

GOOGLE INC.
Defendant.

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

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A.

Judge Payne’s Finding that Google Was Not Candid Is Entitled to Great Deference.
Google persists in resting its transfer position on its discredited evidence, Reply at 1,

completely ignoring that Magistrate Judge Payne found such evidence to be “incomplete and—at
least in part—incorrect and misleading,” causing him to have “concerns regarding the candor of the
limited information Google has provided.” Order at 12 & 15-16. To this day, Google is resisting
answering interrogatories asking Google to identify where such documents (and witnesses working
on the accused instrumentalities) are actually located, arguing that such information is “irrelevant”
and that it need not provide any specifics over and above the questionable Dubey declaration. Bonn
Decl. Exh. 1; see also Order at 5-6 (noting the Dubey declaration “provide[d] neither evidence of
where [Google’s] documents are actually located” nor that they “are more available or accessible
from the Northern District of California than they would be in the Eastern District of Texas”).
Google relies on the purported absence of evidence “that any Google witnesses work in or near this
District.” Reply at 2. But Google cannot submit an “incomplete” and “misleading” declaration,
refuse to answer interrogatories seeking information within its sole possession, and then argue a lack
of evidence regarding Google’s documents and witnesses supports transfer. As Magistrate Judge
Payne noted, “[t]he 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.” Order at 15.
Magistrate Judge Payne’s factual findings—particularly his credibility assessments—are
entitled to great deference. See, e.g., Phillip M. Adams & Assocs., LLC v. Dell Computer Corp., 519
F. App’x 998, 1001 & n.3 (Fed. Cir. March 18, 2013) (reversing the district court for “failing to
properly defer to the magistrate judge’s factual findings” regarding “bad faith”); Smith v. Smith, 154

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F.R.D. 661, 665 (N.D. Tex. 1994) (“[T]he district court may not disturb a factual finding of the
magistrate judge unless, although there is evidence to support it, the reviewing court is left with the
definite and firm conviction that a mistake has been committed.”) (quotation marks and citations
omitted). Google offers no compelling reason why Magistrate Judge Payne’s findings that “Google is
not being fully candid with the Court regarding the location of its relevant documents and facilities”
should be disturbed. Order at 6.
B.

Important Party and Third-Party Witnesses Live in or Near this District.
Because its own evidence has been discredited, Google attempts to downplay the significance

of witnesses who reside in or near this district. But Google’s arguments ignore the law and the facts.
Relying on Solomon v. Cont’l Am. Life Ins. Co., 472 F.2d 1043, 1044 & 1046 (3d Cir. 1973), Google
argues that even attorneys who are fact witnesses cannot be considered in a transfer analysis. Reply
at 2 n.1. But Mr. Solomon, the attorney at issue in that case, was “the attorney for the plaintiffs” and
counsel of record in the pending litigation—meaning he would necessarily attend the trial regardless
of the forum. Here, by contrast, the in-house attorneys for Rockstar with knowledge of discussions
with Google regarding the patents-in-suit are not outside litigation counsel and thus would not
otherwise be required to attend trial.
More critically, two of the key attorney-witnesses at issue are not even current Rockstar
employees or attorneys at all, but rather are third parties whose convenience must be given great
weight. On Semiconductor Corp. v. Hynix Semiconductor, Inc., No. 09-CV-390, 2010 WL 3855520,
at *6 (E.D. Tex. Sep. 30, 2010) (“Typically, the convenience of third-party witnesses is given greater
weight than the convenience of party witnesses.”); Hem v. Toyota Motor Corp., 07-CV-079, 2009
WL 2591374, at *4-5 (E.D. Tex. Aug. 20, 2009) (giving “more weight” to “the convenience of thirdparty witnesses” who would “play an important role in the trial”). Mr. Krishnan—who has

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knowledge of Nortel and Google’s discussions regarding the patents-in-suit and now works in
Carrolton, TX—has not worked for Rockstar since well before this suit was filed. Just yesterday, in
support of its inequitable conduct defense, Google deposed Bruce Garlick, the prosecuting attorney
on the patents-in-suit and a third party who resides in Austin, TX. Bonn Decl. Exh. 2. Mr. Garlick is
a third-party witness who is not employed by Rockstar, nor does he currently represent Rockstar. Id.
Exh. 3. Google admits that the convenience of witnesses with knowledge “central to Google’s
inequitable conduct defense” should be given particular weight over others when it comes to its
selective reporting of prior art witnesses, Reply at 2 n.2, but then utterly ignores the convenience of
the prosecuting attorney at the heart of its inequitable conduct claim.
Google’s excuse for selectively informing Magistrate Judge Payne only of “cherry-picked”
prior art witnesses in the Northern District—that such witnesses purportedly relate to its inequitable
conduct claim in particular as opposed to its other invalidity defenses—falls flat. Reply at 2 n.2. The
private knowledge of prior art witnesses regarding how systems like InfoSeek and Alta Vista worked
is of little relevance to its inequitable conduct claim, which is premised on Mr. Garlick’s alleged
failure to disclose a publicly-available news article to the PTO. See Dkt. 20 at ¶ 101.
C.

Critical Documentary Evidence is Located in this District.
Google urges the Court to disregard the presence of Rockstar, Ericsson, and Blackberry in

this district—an argument belied by these entities’ document productions. Ericsson and Blackberry
have both produced documents in response to Google’s subpoenas directed to their offices in or near
this district. Bonn Decl. ¶¶ 8-9. And Rockstar recently produced Nortel-era documents it maintained
from the laptops of former Nortel employees—an issue that Google hotly litigated due to the
documents’ significance to this case and its inability to obtain them elsewhere. Id. ¶ 7 & Exhs. 4-6.
The Court should reject Google’s objections to the Order denying transfer.

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DATED: November 13, 2014

Respectfully submitted,
By: /s/ Amanda Bonn
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]
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]

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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

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CERTIFICATE OF SERVICE
I hereby certify that all counsel of record, who are deemed to have consented to
electronic service are being served this 13th day of November, 2014 with a copy of this document
via the Court’s CM/ECF system per Local Rule CD-5(a)(3).

/s/ Amanda Bonn
Amanda Bonn

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