Rockstar Consortium US LP et al v. Google Inc

Filing 92

MOTION for Leave to File A Supplemental Brief In Response To Googles Motion To Transfer In Light Of Newly-Acquired Evidence by NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Text of Proposed Order Granting Motion for Leave to File a Supplemental Brief In Response to Google's Motion to Transfer in Light of Newly-Acquired Evidence, # 2 Supplement Plaintiffs' Supplemental Brief In Response to Google's Motion to Transfer, # 3 Affidavit of Amanda Bonn In Support of Plaintiffs' Supplemental Brief In Response to Google's Motion to Transfer, # 4 Exhibit 1, # 5 Exhibit 2, # 6 Exhibit 3, # 7 Exhibit 4, # 8 Exhibit 5, # 9 Exhibit 6, # 10 Exhibit 7, # 11 Exhibit 8, # 12 Exhibit 9, # 13 Exhibit 10, # 14 Exhibit 11, # 15 Exhibit 12, # 16 Exhibit 13, # 17 Exhibit 14, # 18 Exhibit 15, # 19 Exhibit 16, # 20 Exhibit 17, # 21 Exhibit 18, # 22 Exhibit 19, # 23 Exhibit 20, # 24 Exhibit 21, # 25 Exhibit 22, # 26 Exhibit 23, # 27 Exhibit 24, # 28 Exhibit 25, # 29 Exhibit 26, # 30 Exhibit 27, # 31 Exhibit 28, # 32 Exhibit 29, # 33 Exhibit 30)(Bonn, Amanda)

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.
GOOGLE INC.

JURY TRIAL DEMANDED

Defendant.

PLAINTIFFS’ SUPPLEMENTAL BRIEF
IN RESPONSE TO GOOGLE’S MOTION TO TRANSFER

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In its Motion to Transfer, Google argued that “[k]ey witnesses” regarding prior art
“likely” resided in the Northern District of California. Mot. at 3. Google served its Invalidity
Contentions on May 23, 2014, and several subpoenas in June 2014, after transfer briefing was
complete. See Bonn Decl. Exh. 2. Far from showing a locus of witnesses in the Northern District
of California, Google’s contentions confirm that prior art witnesses are spread throughout the
country and even internationally, with many residing in subpoena range of this Court. Few such
witnesses appear to be located in California. See Exh. 1.1
Prior Art Patents. Four inventors and two assignees of alleged prior art patents or patent
applications appear to reside in Texas within subpoena range of this Court. Exhs. 1, 6, 31. By
contrast, only three inventors of a single patent and two assignees appear to reside in California.
Exhs. 1, 7-8, 10, 41. Of the remaining inventors, eight appear to reside in New York, two in New
Jersey, two in Oregon, two in Japan, one in Colorado, and one in Connecticut. Exhs. 1, 3, 7, 10,
14, 22.
Prior Art Publications. The authors of alleged printed publication prior art appear to be
scattered throughout the country in Maryland, New York, Oregon, Tennessee, and Virginia.
Exhs. 1, 5, 8-10, 16, 32-36, 45, 66. In addition, many authors appear to be located abroad,
including in Canada, Denmark, Finland, Poland, South Korea, and the United Kingdom, and
Japan. Exhs. 1, 15, 17, 21, 23, 24-27, 37, 42. Not one is in California.
Prior Art “In Use” Systems. Finally, Google asserted that it intended to rely on prior
“use” systems. Reply at 1. But Google’s Invalidity Contentions bely its suggestion that witnesses
relevant to such alleged “use” art are primarily located in California. The AdaptX System was
developed in New Jersey. Exhs. 1-3. DoubleClick, which Google now owns, appears to have
1

For the Court’s convenience, Plaintiffs submit as Exhibit 1 a chart summarizing the apparent locations of the
authors, inventors, owners, and assignees of Google’s asserted prior art references.

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been developed in New York and not California. Exh. 1, 11-12. Excite is now owned by IAC, a
company based in New York. Exhs. 1, 13, 56. HealthGate is owned by HealthGate Data Corp. in
Burlington, Massachusetts. Exhs. 1, 18, 54. The SMART system was developed by Cornell
University in Ithaca, New York. Exhs. 1, 5. Submit-It! was developed in Bedford,
Massachusetts, and has since been acquired by Microsoft in Redmond, Washington. Exhs. 1, 13,
39-40. Lycos appears to have been developed in Waltham, Massachusetts, and then acquired by
various companies in Spain, South Korea, and India. Exhs. 1, 13, 43. WebCrawler appears to be
headquartered in Bellevue, Washington. Exhs. 1, 13, 44, 51. Open Text is owned by Open Text
Corp., which is based in Ontario, Canada and has offices in New York. Exhs. 1, 29-30. And
while Google asserted in its transfer briefing that Infoseek witnesses were likely to be in
California, it appears that certain of Infoseek’s assets were acquired by a Autonomy Corp. (and
later HP Autonomy), headquartered in the United Kingdom. Exhs. 1, 13, 20, 55. Of the
remaining systems, three appear to be owned by one company, Yahoo!, in California (e.g., Alta
Vista, HotBot, and Yahoo!) and one is owned by Google (e.g., NetGravity). Exhs. 1, 13.
Subpoenas. Google has recently served six subpoenas relating to prior art in New York,
one in Georgia, one in Massachusetts, one in Oklahoma, one in Tennessee, and one in
Washington. Exhs. 52, 54, 56-59, 61-62, 64-65. Only four of its fourteen subpoenas relating to
prior art were served in California.2 Exhs. 53, 55, 60, 63.
Google refused to represent in its transfer motion that most or even many of the prior art
witnesses are located in the Northern District of California, asserting only that an unknown
number of such “[k]ey witnesses” reside there. Mot. at 3. Google’s Invalidity Contentions and
subpoenas demonstrate why: such witnesses live throughout the country (as well as in Canada,
2

Similarly, Google has attempted to serve subpoenas on the inventors of the asserted patents as well as patent
prosecution counsel—persons who reside in the Eastern District of Texas, Florida, and Canada. Exhs. 46-50.

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Europe, and Asia) and few reside in California. Indeed, it appears that four inventors and two
assignees of two prior art patents are located in Texas within subpoena range of this Court. Exhs.
1, 6, 31. “[T]he relevance and materiality of these witnesses turns on more than prior art,” as
prior licenses or attempts to license such patents could potentially “be germane to a standard
reasonable royalty analysis.” Innoband, Inc. v. Aso Corp., No. 10-CV-191-TJW-CE, 2011 WL
835934, at *4 (E.D. Tex. March 4, 2011) (Everingham, J.) (citing Georgia-Pacific Corp. v.
United States Plywood Corp., 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970)). This is yet another
potential source of proof that is more readily accessed from the Eastern District of Texas than
from the Northern District of California. Id.
Google failed to demonstrate why the fact that a handful of potential prior art witnesses
reside in California—while dozens of others reside in Texas, elsewhere throughout the United
States, and even internationally—merits transfer. j2 Global Comm’s, Inc. v. Protus IP Solutions,
Inc., No. 08-CV-211, 2009 WL 440525, at *5 (E.D. Tex. Feb. 20, 2009) (Love, J.) (“Because the
prior art witnesses are spread throughout the world, the [Northern] District if California is no
more convenient than the Eastern District of Texas for these witnesses.”). To the contrary, and
particularly in light of newly-amended Rule 45, “regardless of whether this case remains in E.D.
Tex. or gets transferred to N.D. Cal., Defendant[] would be able to secure the attendance of [its]
identified non-party witnesses at least through deposition.” VirtualAgility, Inc. v. Salesforce.com,
Inc., No. 13-cv-00011-JRG, 2014 WL 459719, at *5 (E.D. Tex. Jan. 31, 2014) (Gilstrap, J.)
(denying motion to transfer).
For the foregoing reasons—in addition to those set forth in Plaintiffs’ prior briefing—the
Court should deny Google’s Motion to Transfer.

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DATED: June 20, 2014

Respectfully submitted,
By: /s/ Amanda K. 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.
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
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]
Amanda K. Bonn, CA State Bar No. 270891
SUSMAN GODFREY L.L.P.
1901 Avenue of the Stars, Suite 950
Los Angeles, CA 90067
Telephone: [phone]
Facsimile: [phone]
[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 20th day of June, 2014, with a copy of this document via
the Court’s CM/ECF system per Local Rule CD-5(a)(3).

/s/ Amanda K. Bonn
Amanda K. Bonn

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