Rockstar Consortium US LP et al v. Google Inc

Filing 64

RESPONSE to 49 Notice (Other), 63 Motion for Leave to File Plaintiffs' Response to Google's Notice of Supplemental Authority filed by NetStar Technologies LLC, Rockstar Consortium US LP. (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 GOOGLE’S NOTICE OF SUPPLEMENTAL AUTHORITY

Google incorrectly argues that the recent decision from the Northern District of
California involving Google’s declaratory action against another Rockstar subsidiary
(MobileStar) on separate patents, separate products, and separate technologies changes the venue
analysis. It does not.
As a threshold matter, the procedural posture of Google’s declaratory action case itself
demonstrates the irrelevance of the Northern District of California’s opinion. Because the
Northern District of California Court issued its order in the context of a motion to dismiss for
lack of personal jurisdiction and/or transfer venue under 28 U.S.C. § 1391, its decision was thus
based on facts taken as true from Google’s complaint. The controlling standard thus required
resolving any “conflicts in the evidence . . . in [Google’s] favor.” Google Inc. v. Rockstar
Consortium US LP, Dkt. 49, Exh. A, slip op., at *5 (N.D. Cal. Apr. 17, 2014) (citing Trintec
Indus. v. Pedre Promotional Prods., Inc., 395 F.3d 1275, 1282 (Fed. Cir. 2005)); see also id. at
*19 (resolving “conflicts in the allegations and evidence in [Google’s] favor”). The NDCA
Court therefore did not have the benefit of the full record of facts regarding Rockstar's Texas
facilities and witnesses that Plaintiffs provided to this Court here.
Indeed, some of the NDCA Court’s findings are simply incorrect and Google does not
even dispute them in this case. For example, the NDCA Court found that Nortel’s “primary
United States campus” was in “Santa Clara,” within the boundaries of the NDCA. Id. at *12.
This fact not only is wrong, it is incontrovertibly so. The Declarations on which the NDCA
Court relies do not say that Nortel’s primary United States operations were in California. While
Nortel formerly had a satellite office in Santa Clara, it was never the primary campus. In this
case, the undisputed record shows that Nortel’s United States headquarters was in Richardson,
Texas, with nearly 10,000 employees working for the company. Powers Dec., Dkt. 33-1, at ¶ 6.

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Many of those worked for Nortel’s IP Group, which was based in Richardson. Hearn Dec., Dkt.
33-2, at ¶ 4. And documents about licensing and monetization—including with Google about
the patents-in-suit—have resided in or near the Eastern District of Texas since the time of their
creation in the Nortel era. Id. ¶ 9. It is also not true ― and Google does not allege in this case
― that Apple is the majority shareholder of Rockstar.
Moreover, even taking the NDCA opinion at face value, the undisputed facts here are
different from the NDCA case. While the NDCA Court found that Rockstar “did not name any
witnesses in Texas essential” to the NDCA suit, the uncontested record in this case is different.
Plaintiffs here have identified numerous essential witnesses—including third-party witnesses—
who have relevant knowledge to this particular case. For example, the prosecuting attorney of
the patents-in-suit resides in Texas. Google’s Answer mentions his name over thirty times.
Response, Dkt. 33, at 2. Moreover, because of the longstanding ties that Nortel maintained in
this area, former Nortel employees with relevant knowledge live and/or work within the
deposition and trial subpoena power of this Court. Id. at 3. It is also undisputed here that
Plaintiffs’ headquarters are in Plano. Id. at 4-5. See also Google Reply, Dkt. 36, at 2 (attempting
to downplay ties of Texas witnesses identified by Plaintiffs but not disputing that these witnesses
have relevant knowledge and not contesting the facts in Plaintiffs’ Response that Plaintiffs are
based in Plano). Likewise, Rockstar’s own employees who work in this District (and who
previously worked at Nortel near this District) have relevant knowledge about this case and the
patents-in-suit, including meeting with Google to discuss the patents-in-suit. Response at 3.
The NDCA Court also did not and could not address Google’s evidentiary failing here to
identify the locations of its own witnesses or documents on the products at issue in this case. As
discussed extensively in Plaintiffs’ Response (5-8; 10-11) and Surreply (2, 4), Google failed to

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identify with specificity the locations of its witnesses or documents. The evidence Plaintiffs
submitted—and that Google simply ignores in its Reply—shows that Google witnesses who have
relevant knowledge reside in or near this District; on the East Coast; and in India. And Google
did not even address the location for one of its accused products in this case, even though
Plaintiffs pointed out that witnesses with relevant knowledge reside in or near this District or on
the East Coast. Response at 10-11.

Likewise, the California Court did not and could not

address the third parties who have relevant knowledge due to the Nortel auction, all of whom are
closer to this District than the Northern District of California.
In short, the NDCA Court’s findings that the Texas witnesses are not essential to that
case, that Rockstar’s headquarters are in Canada, and that the Northern District of California has
a greater local interest than the Eastern District of Texas are inconsistent with the undisputed
facts of this case. Regardless of the final outcome on venue for Google’s Northern District of
California declaratory action or the MobileStar actions in this Court on the same patents as the
NDCA action, this case has separate facts, separate patents, separate products, separate
technologies, and a separate record. Even if the NDCA Court did not assume all facts in
Google’s favor, its opinion does not change the analysis here. Under the record and facts in this
case, transfer is inappropriate. At a minimum, Google cannot show on the record here that the
Northern District of California is clearly more convenient than this District.
DATED: May 2, 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.
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
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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
Kristin Malone, WA State Bar No. 46251
SUSMAN GODFREY L.L.P.
1201 Third Ave, Suite 3800
Seattle, Washington 98101
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[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]
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 2nd day of May, 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

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