EMG Technology, LLC v. Apple, Inc.

Filing 209

MOTION to Change Venue by Apple, Inc., American Airlines, Inc., Dell Inc., Hyatt Corporation, Marriott International, Inc., Barnes & Noble, Inc.. (Attachments: # 1 Declaration, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Exhibit K - Part 1, # 13 Exhibit K - Part 2, # 14 Exhibit L, # 15 Exhibit M, # 16 Exhibit N, # 17 Exhibit O, # 18 Exhibit P, # 19 Exhibit Q, # 20 Exhibit R, # 21 Exhibit S, # 22 Exhibit T, # 23 Exhibit U, # 24 Exhibit V, # 25 Exhibit W, # 26 Text of Proposed Order)(Rambin, Daymon)

EMG Technology, LLC v. Apple, Inc.

Doc. 209

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION EMG TECHNOLOGY, LLC, Plaintiff,
v.

APPLE INC., AMERICAN AIRLINES, INC., DELL, INC., HYATT CORPORATION, MARRIOTT INTERNATIONAL, BARNES & NOBLE, INC.

INC., &

§ § § Civil Action No. 6:08-CV-00447 § § § Jury Trial Demanded § § § § § § §

(LED)

Defendants. DEFENDANTS' MOTION TO TRANSFER

Dockets.Justia.com

Defendants American Airlines, Inc., Dell, Inc., Hyatt Corporation, Marriott Corporation, Apple Inc. and Barnes & Noble, Inc. move to transfer this case to the Western Division of the Central District of California ("CDCA") pursuant to 28 U.S.C. § 1404(a). In addition to the above-captioned case, EMG Technology, LLC is also the plaintiff in another case in this same Court against six other defendants (No. 09-cv-00367, or the "Microsoft case"). Defendants Microsoft, Scottrade, Southwest Airlines, Zagat Survey, and Comcast in the Microsoft case likewise move to transfer that case to the CDCA.
1

The remaining defendant in that case,

Priceline.com, consents to transfer to the CDCA. (Carraway Decl. ~ 27.) For the Court's convenience, this motion tracks the motion to transfer being filed in the Apple case. I. PRELIMINARY STATEMENT Both pending EMG cases should be transferred to the CDCA because they have "no relevant factual connection to the Eastern District of Texas." In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009). In contrast, Plaintiff, almost all non-party witnesses, all the named inventors, and much of the relevant evidence are located in the CDCA or within its subpoena power. The key facts that render the CDCA "clearly more convenient" than this District include: · All three named inventors of the patents in suit reside in the CDCA, but only one of them is employed by Plaintiff. The other two named inventors are outside the subpoena power of this Court and accordingly cannot be compelled to attend trial; Every witness identified in Plaintiff s initial disclosures resides in the CDCA; Plaintiff is a California corporation with its principal place of business in the CDCA. It has no employees or business outside the CDCA; Over the course of more than a decade, EMG's sole principal-Elliot Gottfurcht-has paid three groups of computer programmers hundreds of thousands of dollars in an attempt to commercialize the technology in the patents in suit. All these groups of

· ·

·

1

Defendants moving for transfer in both cases will be referred to as "Moving Defendants."
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programmers are located within California, and two of them are located within the CDCA and performed all their work for Mr. Gottfurcht within the CDCA; · In addition to the programmers described above, many other party and non-party witnesses reside in or within the subpoena power of the CDCA, including most of the attorneys who prosecuted the patents in suit and many witnesses knowledgeable about prior art; Defendants are scattered around the country. No development activities by any defendant occurred in the Eastern District of Texas, and no identified witness within any defendant's control is located here.

·

The Federal Circuit has made clear that, "in a case featuring most witnesses and evidence closer to the transferee venue with few or no convenience factors favoring the venue chosen by the plaintiff, the trial court should grant a motion to transfer." In re Nintendo Co., Ltd, -- F.3d --, 2009 WL 4842589, at *2 (Fed. Cir. Dec. 17, 2009). As discussed below, that is the case here.

II. BACKGROUND
A. The Two Pending EMG Cases

EMG filed its original complaint in the above-captioned case (the "Apple case") on November 24,2008. In that first complaint, Apple-a California corporation-was the only

defendant. Since then, EMG has amended its complaint five times, adding nine additional defendants. (See Dkt. No. 159.) There are now six defendants and two patents in suit. On August 14,2009, EMG filed its Complaint in the Microsoft case (No. 09-cv-00367) and has twice amended its complaint to add more defendants. (See Dkt. Nos. 6,44 in No. 09-cv00367.) Presently, there are six defendants in the Microsoft case. EMG asserts the same two patents in the two cases. (See Dkt. No. 113 at 2.) EMG has propounded no written discovery requests in either case and has not noticed or taken any depositions. EMG has represented to the Court and to defendants' counsel that it intends to move to consolidate the two cases. (See Dkt. No. 113 in No. 08-cv-00447, at 2.)

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B.

The Parties Plaintiff is a California corporation with its principal place of business in Los

Plaintiff:

Angeles, in the CDCA. (Dkt. No. 159 ~ Defendants: Case Microsoft case
TOo.

5l
· Place of .·..· .·. Redmond, WA St. Louis, MO Dallas, TX (NDTX) Norwalk, CT New York City, NY Philadelphia, P A Cupertino, CA Fort Worth, TX (NDTX) Round Rock, TX (WDTX) Chicago,IL Bethesda, MD New York City, NY
T'o>'

There are currently twelve defendants in the two related cases:
··

.

.

Apple case

Microsoft Corporation Scottrade, Inc. Southwest Airlines Co. Priceline.com, Inc. Zagat Survey, LLC Comcast Corporation Apple Inc. American Airlines, Inc. Dell, Inc. Hyatt Corporation Marriott International, Inc. Barnes & Noble, Inc.

(See Dkt. No. 159 ~~ 5-13; Dkt. No. 44 in No. 09-cv-00367, ~~ 5-11.) No defendant in either case is based in or has a principal business location in this District and Moving Defendants are aware of no development activity of any accused product that occurred in this District. C. The Patents In Suit

All three named inventors of the patents in suit reside in the CDCA. (Carraway Dec1. ~~ 6-7; Exs. C-D.) The patents in suit claim priority to U.S. Patent No. 6,600,497, which includes five inventors in addition to the three named inventors on the patents in suit. Four of those five additional named inventors also reside in the CDCA. (Id. ~~ 8, 10; Exs. E, G.) Moreover, the current and past owners of the patents in suit and the alleged priority patent are located in the

2 EMG claims that it "operates offices at 100 East Ferguson, Ste. 1200, Tyler, Texas" (Dkt. No. 159 ~ 5), but its sole principal admitted in his deposition that Plaintiff has no employees or operations in Tyler, the office was set up by EMG's local counsel just before the first complaint in the Apple case was filed, no EMG employee has ever been to Tyler, and the office serves no purpose other than to store documents. (Carraway Dec!. ~ 23; Ex. Tat 294-297.)

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CDCA. (Id. ~~ 6-8, 11-12; Exs. C-E, H, I.) These patents were prosecuted by Blakely, Sokoloff, Taylor & Zafman, located in Los Angeles, CA (in the CDCA). (Id. ~~ 9, 13; Exs. F, J.) Other firms involved in the prosecutions include SoCAL IP Law Group LLP, of Westlake Village, CA, and Jeffer, Mangels, Butler & Marmaro, LLP, of Los Angeles, CA (both in the CDCA). (Id.) Finally, as discussed further in Section II.D below, Mr. Gottfurcht hired several entities located in the CDCA to try to commercialize the patents. (Id ~ 24; Ex. U at 159; see also idEx. G.) Below, along with their known residences, is a list of the witnesses who are likely to have knowledge related to the development, ownership, and prosecution of the patented technology:
~

.

'''''.

T

.

.

Named inventors of patents in suit with ownership interest in EMG Named inventor of patents in suit Named inventors of alleged priority patent to patents in suit

Elliott Gottfurcht Grant E. Gottfurcht Albert-Michael C. Long Donald Dukeshire Manuel V. Beltran J. Teague McKnight Stephen K. Woesner John Marinuzzi Thomas Ciotti Thomas M. Coester Scott Doyle John E. Gunther Jun- Youg E. Jeon Jonathan Miller Steven C. Sereboff Brennan C. Swain Art & Logic employees Protovu Angel Gulermovich Bob Bajoras Rick Soss Online Labs (former) employees Marlo Longstreet

Santa Monica, CA (CDCA) Pacific Palisades, CA (CDCA) Irvine, CA (CDCA) Huntington Beach, CA (CDCA) Santa Ana, CA (CDCA) Formerly Los Angeles, CA (CDCA), now Park City, UT Santa Ana, CA (CDCA) Mission Viejo, CA (CDCA) Palo Alto, CA Los Angeles, CA (CDCA) Washington, DC Westlake Village, CA (CDCA) Pasadena, CA (CDCA) Los Angeles, CA (CDCA) Westlake Village, CA (CDCA) Los Angeles, CA (CDCA) Pasadena, CA (CDCA) Foster City, CA Los Angeles, CA (CDCA) Los Angeles, CA (CDCA) Foster City, CA Los Angeles, CA (CDCA) Pacific Palisades, CA (CDCA)

Attorneys who prosecuted applications leading to patents in suit and alleged priority patent

Attempted commercialization of patents in suit

Ownership interest in EMG (Id. ~~ 6-10; Exs. C-G.)

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This Court has no power to compel any of these witnesses to trial. The CDCA, however, has full subpoena power over the vast majority of these witnesses, including all witnesses anywhere in the State of California. See Fed. R. Civ. P. 45(b)(2)(C); Cal. Civ. P. Code § 1989. D. The Alleged Commercial Embodiment Of The Patents In Suit (MallTV)

By their own admission, Mr. Gottfurcht and his son Grant (named inventors on the patents in suit) know very little about the technology described in the patents in suit. (Carraway Dec1. Ex. Tat 20-23, 127-128; Ex. U at 86-89.) Nonetheless, over the course of more than a decade, Elliot Gottfurcht spent hundreds of thousands of dollars hiring programmers in an attempt to commercialize the supposed inventions. (Id. Ex. Tat 232-33; Ex. U at 159.) Mr. Gottfurcht's current brand name for the attempted commercialization is "MallTY." The

programmers Mr. Gottfurcht hired include several named inventors of the alleged priority patent, as well as Angel Gulermovich, Bob Bajoras, and Rick Soss. (Id. Ex. Tat 23-24, 172-78, 191-97, 205-09.) These individuals work or previously worked at three California firms-Art
& Logic,

Online Labs (apparently now defunct), and Protovu. (Id.) The witnesses and firms that still exist are all in the CDCA or other parts of California. (Id Ex. G.) Importantly, Mr. Gottfurcht and his hired programmers have never been able to make Mall TV embody any claims asserted in the Apple case. EMG's attorneys admitted this on the record. (Id. ~ 25; Ex. Vat 282-83.) Subsequently, EMGtook a contrary position in responding to Apple's counterclaims. (See Dkt. Nos. 171 ~~ 380-451; 183 ~~ 459-610.)

EMG seeks injunctive relief in these cases. (Dkt. No. 159 at 8; Dkt. No. 44 of No. 09-cv00367, at 7.) Whether EMG has been irreparably harmed, however, turns in part on whether Mall TV embodies the asserted claims. Whether MallTV practices the claims also is a factor in damages and marking. EMG's contrary positions on this issue need to be resolved, and it is the

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California programmers hired by Mr. Gottfurcht (and, as demonstrated in their depositions, not Mr. Gottfurcht or his son) who know the facts that will resolve this issue. E. Significant Prior Art Evidence Is Located In California

Defendants have uncovered significant prior art to the patents in suit. Much of this prior art was developed in California, and much of the evidence regarding this prior art (including documents and witnesses) likewise is located in California. The patents in suit generally relate to providing web pages "associated with a sister site" and having a "simplified navigation interface" for display on mobile devices or televisions. e.g., '845 patent, claim 1.) The following figures from the patents illustrate this concept: Regular Web Page Web Page for Mobile Device or TV (See,

fiG. 28
FfG 2A

This idea was hardly new when the patent applications were filed. This field of porting Internet content for use on devices other than general purpose computers started taking shape in the mid-1990s (soon after the Internet became more common). This was years before the earliest priority date of the patents in suit. Witnesses and documents related to at least four important prior art systems-Unwired Channels, and Web TV-are Planet/Openwave, Palm Web Clippings, Windows CE Mobile located in or within the subpoena power of the CDCA. As early as 1996, Unwired Planet (now named Openwave

Unwired Planet/Openwave:

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Systems), located in Redwood City, CA, distributed a "micro-browser" that enabled cell phones and other mobile devices to wirelessly access simplified versions of web sites. (Carraway Dec1. ~~ 18-20; Exs. O-Q.) Below are screenshots ofa January 1998 version of the abcnews.com website (id. ~ 18; Ex. 0) optimized for use on mobile devices with Unwired Planet's technology:

.JJ5C ),J~'lls. '
~;:~~1 ~;~;;'\;:]t)'''):t'i1!

~;tii,rn?~,

Unwired Planet also filed prior art patent applications on this technology.

(Id. ~ 17; Ex. N.)

Palm Web Clippings: By 1999, Palm Computing, which is located in Sunnyvale, CA, developed technology that enabled Web developers to "clip" or designate specific information from a website for use on mobile devices, like its Palm VII handheld device. (Id. ~ 14; Ex. K.) Palm VII users could access the "Web Clippings" over (slow) wireless connections and then browse simplified Web content. The following prior art photos (id. Ex. Kat 123) show a regular Web page and the Web clip version formatted for a Palm VII mobile device: Regular MapQuest Web Page MapQuest Web Clipping Page for Palm VII

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WebTV: WebTV was founded in the mid-1990s by Steve Perlman in Palo Alto, CA (Id. ~ 21; Ex. R.) The main purpose of a WebTV system was to integrate the World Wide Web ("WWW") with customers' home television systems. (Id ~ 15; Ex. L.) Specifically, it provided customers a simple interface to navigate the WWW on their television screens, and converted regular Web pages into a special format for display on the television screen. Windows CE Mobile Channels: By 1998, Microsoft was providing a tool to create "mobile channels" on Windows CE mobile devices. (Id. ~ 16; Ex. M.) A "mobile channel" is a website that has been reformatted specifically for viewing on a mobile device. Some witnesses and documents pertaining to this technology are located in the CDCA (Id. ~ 26; Ex. W.)

Key third-party witnesses knowledgeable about all four of these prior art systems are located in or within the subpoena power of the CDCA, as listed below: ....

.,

~~

· T,7>

IT

..

Knowledge of development, publications, patenting, and the public use of Unwired Planet

Knowledge of development, publications and public use of Windows® CE mobile channels Knowledge of development and public use of Web TV Knowledge of development and public use of Palm Web Clippings

Openwave Systems, Inc. employees Tim Hyland Alain Rossmann Peter King Bruce Schwartz Russell Greer Mark Fox Andrew Laursen Mark Lentczner Brad Sandman Chris De Herrera

Redwood City, CA Bay Area, CA Menlo Park, CA Bay Area, CA Bay Area, CA Bay Area, CA San Francisco, CA Bay Area, CA Mountain View, CA Bay Area, CA Los Angeles, CA (CDCA)

Bruce Leak Stephen G. Perlman Palm, Inc. employees

Los Altos, CA Mountain View, CA Sunnyvale, CA

(Id. ~ 10; Ex. G; see also id. ~~ 2-4; Ex. A)

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III.

THE SECTION 1404(A) TRANSFER INQUIRY CLEARLY FAVORS TRANSFER HERE The Court has discretion under 28 U.S.C. § 1404(a) to transfer this case, "[fJor the

convenience of parties and witnesses, in the interest of justice, ... to any other district or division where it might have been brought." The preliminary inquiry under Section 1404(a) is whether the case could have been filed in the district to which transfer is sought. In re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) ("Volkswagen IF'). There can be no dispute that this case could have been brought in the CDCA: the CDCA has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a), venue is proper there, and all defendants are amenable to process there. Once that threshold inquiry is met, the Fifth Circuit applies the "public" and "private" factors to determine whether the transferee venue is "clearly more convenient than the venue chosen by the plaintiff." Volkswagen II, 545 F.3d at 315. A. The CDCA Is A "Clearly More Convenient" Forum For Witnesses

The Federal Circuit has noted that perhaps the most "important factor" in analyzing a transfer request is the "convenience for and cost of attendance of witnesses." In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009). Several important rules govern this factor. First, "the convenience of the nonparty witnesses is accorded the greatest weight." Indeed, "[t]his factor will weigh more heavily in favor of transfer when more third-party witnesses reside within the transferee venue." A TEN Int'l Co. Ltd v. Emine Tech. Co., Ltd, 261 F.RD. 112,2009 WL 1809978, at *9 (E.D. Tex. 2009) (J. Davis). Second, to find the transferee venue clearly more convenient, the Court need not find it more convenient for all witnesses, nor that a majority of witnesses live there. Genentech, 566 F.3d at 1345. Instead, if a substantial number of identified witnesses reside in the transferee venue and none resides in the present venue, this factor weighs substantially in favor of transfer.
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Id. ("Because a substantial number of material witnesses reside within the transferee venue and the state of California, and no witnesses reside within the Eastern District of Texas, the district court clearly erred in not determining this factor to weigh substantially in favor oftransfer."). Third, the Fifth Circuit employs a "100 mile rule" in analyzing this factor. Fujitsu Ltd v. Tellabs, Inc., 639 F. Supp. 2d 761, 765 (E.D. Tex. 2009) (J. Davis). If, as here, the two venues in question are more than 100 miles apart, the Court must determine the respective distances between the residences (or workplaces) of all the identified material and relevant witnesses and the transferor and transferee venues. Volkswagen II, 545 F.3d at 317. This is because "it generally becomes more inconvenient and costly for witnesses to attend trial the further they are away from home." In re TS Tech USA Corp., 551 F.3d 1315,1320 (Fed. Cir. 2009). The "100 mile rule" favors transfer (with differing degrees) if the transferee venue is a shorter average distance away from witnesses than the transferor venue. Volkswagen II, 545 F.3d at 317. 1. The CDCA is "clearly more convenient" for non-party witnesses and has absolute subpoena power over most of them

No known non-party witness resides in the Eastern District of Texas. In contrast, several dozen identified non-party witnesses reside in the CDCA or its neighboring California districts (and thus within the CDCA's subpoena power). (Carraway Decl. ~~ 6-10; Exs. C-G.) For all these witnesses, the CDCA is clearly more convenient, as they either reside in that district or within a short drive or flight away. (Id ~~ 2-4; Ex. A (identifying conveniences for witnesses measured by travel time and distance).) In contrast, the Eastern District of Texas is over 1000 miles away from these witnesses. The average travel required for non-party witnesses is over 1100 miles more or nearly three hours by plane to Tyler, Texas than to Los Angeles, California. (Id) Thus, the convenience of the non-party witnesses weighs heavily in favor of transfer. See

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Nintendo, 2009 WL 4842589, at *3 (transferring to Washington where average domestic witness

travel time was 700 miles more to Texas than to Washington); Genentech, 566 F.3d at 1343; A TEN Int 'I, 2009 WL 1809978, at *9 ("This factor will weigh more heavily in favor of transfer when more third-party witnesses reside within the transferee venue."). Furthermore, having subpoena power over these non-party witnesses, including for trial, is extremely important for defendants. As the Federal Circuit explained in Genentech, witness location impacts more than the issue of convenience; it also impacts a party's ability to secure the attendance of witnesses at trial. Genentech, 566 F.3d at 1345.3 Pursuant to Fed. R. Civ. P. 45(b )(2)(C) and California law, the CDCA has "absolute subpoena power" over all non-party witnesses identified in this Motion who reside anywhere in California. A subpoena may be served anywhere within the state of the issuing court if a state

statute allows state-wide service of a subpoena. Fed. R. Civ. P. 45(b )(2)(C). California has such a state-wide service statute. Cal. Civ. P. Code § 1989 (providing that witnesses are obliged to attend a proceeding "before any court, judge, justice or any other officer" if he or she is "a resident within the state"). Thus, the CDCA has "absolute" subpoena power over any California resident, and defendants could compel any witness who resides in California to appear at a trial in the CDCA, including the majority of the non-party witnesses identified herein."

The U.S. Supreme Court has recognized that, "to fix the place of trial at a point where litigants cannot compel personal attendance and may be forced to try their cases on deposition, is to create a condition not satisfactory to court, jury or most litigants." Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 511 (1947), superseded by statute, 28 U.S.c. § l404(a); see also Volkswagen 11,545 F.2d at 316 (weighing in favor of transfer because the transferee forum "enjoy[s] absolute subpoena power for both depositions and trial"). 4 See also Morris v. Safeco Ins. Co., 2008 WL 5273719, at *5 (N.D. Cal. Dec. 19,2008) ("The Eastern District [ofCalifornia]'s subpoena power extends throughout the state of California pursuant to Rule 45 of the Federal Rules of Civil Procedure, which provides that a subpoena may be served anywhere within the state of the issuing court if a state statute allows state-wide service of a subpoena issued by a state court of general jurisdiction .... Section 1989 of the California Code of Civil Procedure authorizes such state-wide service.").
3

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Because the CDCA affords defendants the ability to compel several dozen non-party witnesses to appear for trial and because this District does not, this factor strongly favors transfer to the CDCA. See Genentech, 566 F.3d at 1345 ("The fact that the transferee venue is a venue with usable subpoena power here weighs in favor of transfer, and not only slightly."). 2. The CDCA is "clearly more convenient" for party witnesses

No party in the two cases is based in the Eastern District of Texas. Nor are Moving Defendants aware of any party witness residing in this District. In contrast, Plaintiff is a California company with its principal place of business in the CDCA, and all of the witnesses it identified in its initial disclosures reside in California. (Carraway Dec1. ~ 5; Ex. B.) Defendant Apple is headquartered adjacent to the CDCA in Northern California. Defendant Microsoft is headquartered in Washington and has substantial research offices in Northern California. While a few defendants-Dell, Southwest Airlines-are American Airlines, and

located in Texas, they do not have principal places of business in the

Eastern District of Texas, have no known witness located in the Eastern District of Texas, and all join this Motion. The remaining defendants are based in New York, Connecticut, Maryland,

Missouri, Pennsylvania, and Illinois. The" 100 mile rule" is applied less rigidly and with less weight for these witnesses who would be required to travel "a significant distance no matter where they testify." Genentech, 566 F.3d at 1343-44; see also A TEN Int'l, 2009 WL 1809978, at *10. In any event, because defendants either join in moving to transfer or do not oppose transfer, the locations of their witnesses do not weigh against transfer.
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See, e.g., SMDK Corp. v. Creative Labs, Inc., 2:08-CV-00026-TJW, Dkt. No. 174, at *2 (E.D. Tex. Dec. 11,2009) ("The Northern District of California may potentially be less convenient for defendants located closer to the Eastern District of Texas, to wit, the New York, Arkansas, and Indiana defendants, but no defendant opposes the present motion to transfer.").
5

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In sum, a large number of party witnesses are located in the CDCA, no party witness resides in this District, and other witnesses either are much closer to the CDCA or would find transfer no less convenient. (Carraway Dec1.

,m 2-4; Ex. A)

On balance, the CDCA clearly

would be more convenient to the parties and party witnesses than this District. This factor weighs heavily in favor of transfer. B.
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The CDCA Would Create A Greater Ease Of Access To Sources Of Proof

Plaintiff s documents relevant to this litigation were at one time located in the CDCA, where it and its business are based. Plaintiff s local counsel set up an office for Plaintiff in Tyler, Texas just before Plaintiff first initiated litigation at the end of 2008, and Plaintiff shipped some documents to that office. (Carraway Dec1. Ex. Tat 294-97.) No EMG officer has been to that office. Id This transfer of documents to Plaintiff s office in Tyler solely in preparation for this litigation cannot weigh against transfer. Hoffman-La Roche, 587 F.3d at 1336. In contrast, the CDCA is where all the named inventors and owners of the patents in suit and most of the prosecution attorneys-and presumably the documents of all of these personspresumably their

are located. California is also where important prior art witnesses-and documents-are

located. (Carraway Dec1. Exs. C-G.) And, California is where defendant

Apple's documents are located. In contrast, Moving Defendants are not aware of any relevant document that is located within the Eastern District of Texas. Documents possessed by several other parties are located outside both this District and the CDCA (e.g., Washington, New York). The location of those documents is mostly irrelevant
See, e.g., Genentech, 566 F.3d at 1345 (ordering transfer to N.D. Cal., where one defendant was based, while another defendant was nearby in the S.D. Cal., and plaintiff was located in Europe); Hoffman LaRoche, 587 F.3d at 1338 (ordering transfer to E.D.N.C., where defendant was located, while plaintiff was located in California and other defendants were in Michigan and Europe); Transauction LLC v. Bidz.com, Inc., No. 2:08-CV-00232-DF, at *2 (E.D. Tex. Aug. 3,2009) (ordering transfer to N.D. Cal., where
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plaintiff and one defendant were based, even though plaintiff was legally organized as a Texas company). -13-

because they will need to be transported whether the case remains in this District or is transferred. See Genentech, 566 F.3d at 1346 (finding that this factor weighs in favor of transfer because no document is housed in Texas, and transporting documents housed outside of transferee district would only be "slightly more inconvenient"). As between the CDCA and this

District, the CDCA is clearly more convenient for accessing sources of proof, and this factor weighs heavily in favor of transfer. C. The CDCA Has A Local Interest In Having This Issue Decided In Its District, But The Eastern District Of Texas Does Not

Determining which venue has a local interest in this case requires a "factual connection" with the transferor or transferee venue. A TEN Int' I, 2009 WL 1809978, at * 11. In A TEN, this Court found that, because the plaintiffs and one defendant's principal places of business were in California, California had "a particular local interest in th[ e] suit no matter the outcome of the case." Id In analyzing this factor, this Court held that "the mere fact that an accused product is available in this district is not a particularized interest that weighs against transfer." Id As was the case in A TEN, jurors in the proposed transferee forum have a unique interest in deciding this litigation-Plaintiff has its principal place of business in the CDCA, and the

patents in suit were developed and prosecuted there. And, because important prior art for this "mobile website" field of technology was developed in California, the people of that state have a greater interest in adjudicating the validity of the patents in suit. In contrast, the Eastern District of Texas-at most-has a non-particularized interest in

removing alleged infringement from within its borders based on widely-sold products or technologies. This is an interest that "'could apply virtually to any judicial district' ... [and is]

disregarded in favor of particular local interests." Fujitsu Ltd, 639 F. Supp. 2d at 769 (quoting

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Volkswagen II, 545 F.3d at 318). California's strong, particular interest in this litigation heavily favors transfer. See, e.g., Hoffman-La Roche, 587 F.3d at 1338. D. Neither District Has An Advantage Regarding Practical Problems, Administrative Difficulties, The Governing Law, Or Conflicts Of Laws

EMG has indicated an intent to seek consolidation of its two cases. Transferring both would ensure the same judicial economy as transferring neither, making this factor neutral. Both this District and the CDCA are busy districts with similar median time-to-trial numbers, with only a 3.5 month difference in favor of this District? (Carraway Dec1. ~ 22; Ex.

S.) Neither district has any particular advantage with regard to familiarity with the patent law, and there are no issues regarding conflicts of laws. These factors are neutral. IV. CONCLUSION The Fifth Circuit's test for determining whether transfer is appropriate clearly favors transfer here. Private interest factors 1, 2, and 3 and public interest factor 2 strongly favor transfer. The remaining factors are neutral. Accordingly, Moving Defendants' motions to transfer both of these related cases to Plaintiff s home district should be granted. Respectfully submitted, Dated: January 7,2010 By: lsi Russell J Genet, bvpermission DJR Russell J. Genet David C. McKone Nixon Peabody LLP 300 S Riverside Plaza, 16th Floor Chicago, IL 60606 Telephone: [phone] Facsimile: [phone] Email: [e-mail]

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See Invitrogen Corp. v. Gen. Elec. Co., 2009 WL 331891, at *5 (E.D. Tex. Feb. 9,2009) ("This Court is not persuaded that this 4.5 month time difference weighs for or against transfer.").

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Constance M Boland NIXON PEABODY LLP Nixon Peabody LLP 437 Madison Avenue New York, NY 10022 [phone] Telephone [phone] Facsimile Elizabeth L. DeRieux Texas Bar No. 05770585 S. Calvin Capshaw Texas Bar No. 03783900 Daymon Jeffrey Rambin Texas Bar No. 00791478 CAPSHAW DERIEUX LLP 1127 Judson Road, Suite 220 P.O. Box 3999 (75606-3999) Longview, Texas 75601-5157 Telephone: [phone] Fax: [phone] E-mail: [e-mail] E-mail: [e-mail] E-mail: [e-mail] ATTORNEYS FOR DEFENDANTS AMERICAN AIRLINES, INC., & HYATT CORPORA TION By: lsi Russell J Genet, bvpermission DJR Russell J. Genet David C. McKone Nixon Peabody LLP 300 S Riverside Plaza, 16th Floor Chicago, IL 60606 Telephone: [phone] Facsimile: [phone] Email: [e-mail] Constance M Boland NIXON PEABODY LLP Nixon Peabody LLP 437 Madison Avenue New York, NY 10022 [phone] Telephone [phone] Facsimile ATTORNEYS FOR DEFENDANT DELL, INC. -16-

By:

lsi John M Guaragna by permission DJR John M. Guaragna DLA Piper US LLP 401 Congress Ave, Suite 2500 Austin, TX 78701-3799 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] ATTORNEYS FOR DEFENDANT MARRIOTT INTERNATIONAL, INC.

By:

lsi David J Healey. by permission DJR David J. Healey, State Bar No.: 09327980 Garland T. Stephens, State Bar No.: 24053910 John R. Lane, State Bar No.: 24057985 FISH & RICHARDSON P.C. 1221 McKinney Street, Suite 2800 Houston, TX 77010 Telephone: [phone] Facsimile: 713-652-0109 Email: healeylalfr.com Email: stephenslalfr.com Email: [e-mail] ATTORNEYS FOR DEFENDANT APPLE INC.

By:

lsi Neil J McNabnay by permission DJR Neil J. McNab nay FISH &RICHARDSON 1717 Main St. Suite 5000 Dallas, TX 75201 [phone] Fax: [phone] E-mail: [e-mail] ATTORNEYS FOR DEFENDANT BARNES & NOBLE, INC.

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CERTIFICATE OF CONFERENCE On January 5, 2010, attorneys J. Christopher Carraway (representing Microsoft), Anthony Fenwick (representing Comcast), Russell Genet (representing Dell, Hyatt, and American Airlines), and D. Jeffrey Rambin (representing American Airlines), met and conferred by telephone with attorneys Shawn Hansen and Charlie Ainsworth, representing EMG, regarding the issues presented herein. Chris Carraway and Shawn Hansen further discussed these issues by email and telephone on January 6,2010. accordingly, the parties are at an impasse. As movants understand it, EMG opposes transfer, and

lsi Russell J Genet bvpermission DJR Russell J. Genet

CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on all counsel of record who are deemed to have consented to electronic service via the Court's CMlECF system per Local Rule CV-5(a)(3) on this 7th day of January, 2010.

lsi Russell J Genet bvpermission DJR Russell J. Genet