Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al

Filing 117

RESPONSE in Opposition re 113 Joint MOTION to Change Venue Under 28 U.S.C. § 1404(a)Joint MOTION to Change Venue Under 28 U.S.C. § 1404(a)Joint MOTION to Change Venue Under 28 U.S.C. § 1404(a)Joint MOTION to Change Venue Under 28 U.S.C. § 1404(a)Joint MOTION to Change Venue Under 28 U.S.C. § 1404(a) filed by Uniloc Singapore Private Limited, Uniloc USA, Inc.. (Attachments: # 1 Exhibit A - G)(Hayes, Paul) (Additional attachment(s) added on 4/13/2011: # 2 Text of Proposed Order) (kls, ).

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION

UNILOC USA, INC. and
UNILOC SINGAPORE PRIVATE LIMITED,
Plaintiffs,
v.

Civ. Action No.: 6:10-cv-00472 LED

NATIONAL INSTRUMENTS, INC., et al.,
Defendants.

JURY TRIAL DEMANDED

PLAINTIFFS’ OPPOSITION TO DEFENDANTS’
MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404

TABLE OF CONTENTS
I.

INTRODUCTION. ................................................................................................................... 1

II.

FAILURE TO PROVE THAT UNILOC COULD HAVE BROUGHT SUIT IN RHODE ISLAND IS FATAL
TO DEFENDANTS’ MOTION................................................................................................... 2

III. RHODE ISLAND IS NOT CLEARLY MORE CONVENIENT. ....................................................... 3
A. The Private Factors Weigh Against Transfer........................................................................... 4
1. The relative ease of access to sources of proof weighs against transfer. .............. 4
2. The availability of compulsory process weighs against transfer........................... 6
3. The cost of attendance for willing witnesses weighs against transfer................... 7
B. The Public Factors Weigh Against Transfer. ........................................................................... 8
1. Court congestion weighs against transfer.............................................................. 8
2. The local interests weigh against transfer. .......................................................... 10
3. Defendants have not shown that Judicial Economy weighs heavily in favor of
transfer................................................................................................................. 10
a. There will be no judicial economy gained by transferring only one of the
cases pending before this Court..................................................................... 11
b. Defendants fail to prove that overlap between this case and the Microsoft
case is substantial. ......................................................................................... 11
4. Any Judicial Economy that could have been realized by transferring this case has
been lost due to the lapse in time between now and the Microsoft litigation...... 14
5. Judicial Economy is not dispositive in this case.................................................. 15
IV. CONCLUSION..................................................................................................................... 15

i

TABLE OF AUTHORITIES
Federal Cases
3D Sys., Inc. v. Aarotech Laboratories, Inc.,
160 F.3d 1373 (Fed. Cir. 1998)................................................................................................... 3
Acceleron, LLC v. Egenera, Inc, et al.,
634 F. Supp 2d 758, 767-68 (E.D. Tex. 2009).................................................................. 3, 9, 10
ATEN Int'l Co. Ltd. v. Emine Tech. Co., Ltd.,
261 F.R.D. 112 (E.D. Tex. 2009)................................................................................................ 6
Am. Calcar Inc. v. Am. Honda Motor Co.,
2006 U.S. Dist. LEXIS 69373 at *4-8 (E.D. Tex. Sep. 26, 2006) ............................................ 15
Chirife v. St. Jude Med., Inc.,
2009 U.S. Dist. LEXIS 50482 at 3-4 (E.D. Tex. Jun. 16, 2009)................................................. 2
ConnecTel, LLC v. Cisco Sys., Inc.,
2005 U.S. Dist. LEXIS 2252 at *10 (E.D. Tex. Feb. 16, 2005).......................................... 11, 12
Fujitsu Ltd. v. Tellabs, Inc.,
639 F. Supp. 2d 761, 765-66 (E.D. Tex. 2009)........................................................................... 8
Gulf Oil Corp. v. Gilbert,
330 U.S. 501, 67 S. Ct. 839, 91 L. Ed. 1055 (1947) ................................................................... 3
In re Genentech,
566 F.3d 1338, 1345 (Fed. Cir. 2009)........................................................................... 4, 7, 8, 13
In re TS Tech USA Corp.,
551 F.3d 1315 (Fed. Cir. 2008)................................................................................................... 3
In re Vistaprint Ltd.,
628 F.3d 1342 (Fed. Cir. 2010)..................................................................................... 12, 13, 15
In re Volkswagen AG,
371 F.3d 201, 203-05 (5th Cir. 2004) ................................................................................. 2, 3, 8

ii

In re Volkswagen,
545 F.3d at 315.............................................................................................................. 3, 4, 6, 15
Invitrogen Corp. v. GE Elec. Co.,
2009 U.S. Dist. LEXIS 9127 at *12 (E.D. Tex. Feb. 9, 2009)............................................ 11, 15
Jackson v. Intel Corp.,
2009 U.S.Dist. LEXIS 22117 at *10 (E.D. Tex. Mar. 19, 2009) .............................................. 15
Kinetic Concepts, Inc. v. Bluesky Med. Group, Inc.,
2008 U.S. Dist. LEXIS 2900 at *5 (E.D. Tex. Jan. 14, 2008) .................................................. 15
Knapper v. Safety Kleen Sys., Inc.,
2009 U.S. Dist. LEXIS 30118 at *20 (E.D. Tex. Apr. 3, 2009) ............................................. 7, 8
Liaw Su Teng v. Skaarup Shipping Corp.,
743 F.2d 1140 (5th Cir. 1984)..................................................................................................... 3
Mangosoft Intellectual Prop. v. Skype Techs., S.A.,
2007 U.S. Dist. LEXIS 48622 at *5 (E.D. Tex. Jul. 5, 2007) ..................................................... 7
Rambus Inc. v. Hynix Semiconductor Inc.,
569 F. Supp. 2d 946, 963 (N.D. Cal. 2008) .............................................................................. 12
Realtime Data, LLC v. Packeteer, Inc., et al.,
2009 U.S. Dist. LEXIS 81067, *35-37 (E.D. Tex. Mar. 5, 2009)......................................... 9, 10
Sanofi-Aventis Deutschland GmbH v. Genentech, Inc.,
607 F. Supp. 2d 769, 779-80 (E.D. Tex. 2009)........................................................................... 8
Silent Drive, Inc. v. Strong Indus., Inc.,
326 F.3d 1194 (Fed. Cir. 2003)................................................................................................... 3
Uniloc USA, Inc. et al. v. Microsoft Corp.,
2008 U.S. App. LEXIS 16938 (Fed. Cir. Aug. 7, 2008)........................................................... 12
Uniloc USA, Inc. v. Microsoft Corp.,
632 F.3d 1292 (Fed. Cir. 2011)........................................................................................... 14, 15

iii

Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc.,
355 F. Supp. 2d 848 (N.D. Tex. 2005)........................................................................................ 6
Zoltar Satellite Sys., Inc. v. LG Electronics Mobile Communications Co.,
402 F. Supp. 2d 731 (E.D. Tex. 2005).................................................................................... 11, 15
Statutes
28 U.S.C. § 1404............................................................................................................................. 1
Rules
Fed. R. Civ. P. 1401(a) ................................................................................................................... 1
Rule 45(b)(2) of the Federal Rules of Civil Procedure................................................................... 7

iv

Plaintiffs, Uniloc USA, Inc. and Uniloc Singapore Private Ltd. (together “Uniloc”),
respectfully submit this opposition to the motion of certain defendants to transfer this case to the
District of Rhode Island pursuant to Fed. R. Civ. P. 1401(a).1/ For the reasons set forth herein,
defendants’ motion should be denied.2/
I.

INTRODUCTION.
Defendants neither prove that this case “might have been brought” in the District of

Rhode Island, nor that Rhode Island is “clearly more convenient” than this District for all parties
and witnesses. As a threshold matter, defendants fail to offer any reliable evidence that any one
of them is subject to personal jurisdiction in Rhode Island. Defendants’ conclusory declarations
asserting that they have offered for sale and/or sold accused product in Rhode Island are
insufficient to make out a prime facie case of personal jurisdiction. Failure to meet this threshold
requirement alone is an independent ground for denying their motion.
Defendants mistakenly attempt to meet their burden of showing that the transferee forum
is clearly more convenient by relying on briefs filed by different defendants, Sony et al., in a
different case. Proper analysis of whether to transfer under Section 1404(a), however, requires a
fact-intensive analysis of, at a minimum, the location of party witnesses, non-party witnesses and
evidence. As defendants in this case fail to submit any evidence specific to them, they cannot
meet their burden of showing that Rhode Island is clearly more convenient in this case.
Defendants’ failure in this regard provides another independent basis for denying their motion.
With respect to the convenience, defendants concede that they are “located throughout
the country.” Defs’ br., p. 2. However, with a dozen defendants in the six Uniloc cases pending

1/

Defendant FileMaker, Inc. has filed a separate Joinder to the present motion. According to moving
defendants, defendant Pervasive Software, Inc., based in Texas, does not oppose their motion. Defs’ br., p. 1.
2/
Defendants failed to meet-and-confer with Uniloc’s counsel prior to filing their motion as required by
Local Rule 7(h) and, further, failed to attach a Certificate of Conference at the end of the motion as required by
Local Rule 7(i). On this basis alone, their motion should be denied.

1

in this District residing in this State, and none residing in Rhode Island, these cases have a strong
Texas connection. Thus, it cannot seriously be argued that transfer will decrease travel expenses,
distances traveled and time away from home.
Additionally, the fact that the patent-in-suit was litigated years ago in the District of
Rhode Island does not mandate transfer to that district. The Federal Circuit recently explained
that a court’s knowledge gained from litigation is perishable in nature and the lapse in time
between two suits involving the same patent would result in no judicial efficiency because the
same court would be forced to relearn a considerable amount. Regardless, judicial economy
does not, by itself, weigh so heavily in favor of transfer as to nullify all of the other public and
private factors that weigh heavily against transfer. Accordingly, defendants fail to satisfy their
heavy burden of proving the convenience of the parties and witnesses and interest s of justice
warrant transfer.
II.

FAILURE TO PROVE THAT UNILOC COULD HAVE BROUGHT SUIT IN RHODE ISLAND IS
FATAL TO DEFENDANTS’ MOTION.
The “threshold question” when analyzing a case’s eligibility for 1404(a) transfer is

“whether the judicial district to which transfer is sought would have been a district in which the
claim could have been filed.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004). When
the answer to this threshold question is “no,” the motion for transfer should be denied without
further analysis of the Section 1404(a) factors. See, e.g., Chirife v. St. Jude Med., Inc., 2009 U.S.
Dist. LEXIS 50482 at 3-4 (E.D. Tex. Jun. 16, 2009).
Defendants have failed to prove that they are all subject to specific or general jurisdiction
in Rhode Island. First, no evidence at all was submitted by defendant Pervasive Software
regarding Pervasive’s amenability vel non to jurisdiction in Rhode Island. Thus, defendants have
failed to show that Uniloc could have filed against Pervasive in Rhode Island and their motion
2

should be denied. Id. The declarations submitted by the other defendants are equally lacking.
While each declares that it has offered for sale and/or sold at least one accused product in Rhode
Island, see Defs’ Exs. 6-14, none has made the requisite statement that an accused product was
sold in Rhode Island prior to Uniloc filing this lawsuit. See, e.g. Liaw Su Teng v. Skaarup
Shipping Corp., 743 F.2d 1140, 1149 (5th Cir. 1984) (transfer analysis focuses on the situation
that existed at the time suit was brought). Moreover, the Rhode Island District Court has
explained that, even had one online sale occurred, such a sale would be “the kind of fortuitous,
random, and attenuated contact that the Supreme Court has held insufficient to warrant the
exercise of jurisdiction.” Swarowski Optik N. Am. Ltd. v. Euro Optics, Inc., 2003 U.S.Dist. Ct.
LEXIS, at *26 (D.R.I. Aug. 25, 2003).3/ As defendants failed to show that jurisdiction would
have been proper in Rhode Island over all defendants, this case cannot be transferred. Acceleron,
LLC v. Egenera, Inc., 634 F. Supp. 2d 758, 764-65 (E.D. Tex. 2009).
III.

RHODE ISLAND IS NOT CLEARLY MORE CONVENIENT.
Defandants bear the burden of showing that “good cause” exists for transferring Uniloc’s

case and must do so by proving that Rhode Island is “clearly more convenient.” In re TS Tech
USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). If defendants fail to show that Rhode Island
is clearly more convenient, Uniloc’s choice of this forum should be respected. In re Volkswagen
of Am., Inc., 545 F.3d 303, 315 (5th Cir. 2008) (“[t]his ‘good cause’ burden reflects the
appropriate deference to which the plaintiff’s choice of venue is entitled.”) Defendants’
generalized and factually unsupported allegations fail to satisfy their burden.
The Fifth Circuit Court of Appeals has adopted the private and public factors enunciated
in Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 67 S. Ct. 839, 91 L. Ed. 1055 (1947), as appropriate
3/

Federal Circuit and First Circuit law are controlling on this issue. Silent Drive, Inc. v. Strong Indus., Inc.,
326 F.3d 1194, 1200-01 (Fed. Cir. 2003); 3D Sys., Inc. v. Aarotech Laboratories, Inc., 160 F.3d 1373, 1377 (Fed.
Cir. 1998).

3

for determining whether a §1404(a) transfer is for the convenience of parties and witnesses and
in the interest of justice. In re Volkswagen, 545 F.3d at 315. However, the Gilbert factors are
not necessarily exhaustive or exclusive, and none “can be said to be of dispositive weight.” Id.
These factors are addressed below.
A. The Private Factors Weigh Against Transfer.

The private interest factors are: (1) the relative ease of access to sources of proof; (2) the
availability of compulsory process; (3) the cost of attendance for willing witnesses; and (4) all
other practical problems.4 Id. None of these factors weighs in favor of transfer.
1. The relative ease of access to sources of proof weighs
against transfer.
Courts have recognized that in patent cases the accused infringer’s documents normally
amount to “the bulk of relevant evidence”. In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed.
Cir. 2009). Defendants’ motion to transfer is highly unusual in that no documents of any of the
moving defendants are alleged to be located in the proposed transferee venue. Defendants make
no showing of any other evidence or witnesses located in Rhode Island. This is not surprising,
since none of the defendants is located in Rhode Island.
Two of the defendants (National Instruments and Pervasive), however are headquartered
in Austin, Texas. The remaining defendants are located throughout the country and in Israel.
Further, none of the defendants is incorporated in Rhode Island and none has a place of business
or an employee in Rhode Island. As two defendants reside in Texas, relevant evidence regarding
the design, functionality, technical specifications, sales and marketing of their respective accused
products is clustered in and around this District.

4

As in most patent cases, the third and fourth public factors, familiarity of the forum with the law that will govern
the case and the avoidance of unnecessary problems of conflict of laws, are neutral. Defendants do not assert that
there are “other practical problems” at issue and Uniloc is unaware of any and as such this factor is neutral as well.

4

Obviously, this Court is far more convenient to National Instruments and Pervasive,
which are both headquartered in Austin, Texas, than is Rhode Island. These two defendants,
their witnesses and documents need travel only 229 miles from Austin to Tyler. In contrast, they
would have to travel 1,957 miles from Austin to trial in Providence. Thus, any argument by
National Instruments and Pervasive that they wish to be transferred to Rhode Island for the sake
of convenience must be rejected. The same holds true for all but two of the other U.S.
defendants, as evidenced by the following table showing the comparative distances from their
respective headquarters to Tyler as compared to Providence:5/
Defendant

Distance to Tyler

Nat’l Instruments

Austin, TX

229

Distance to
Providence
1,957

Pervasive

Austin, TX

229

1,957

Adobe

San Jose, CA

1,875

3,165

FileMaker

Santa Clara, CA

1,879

3,167

Pinnacle

Mountain View, CA

1,886

3,169

Sonic

Novato, CA

1,936

3,116

Onyx

Salt Lake City, UT

1,407

2,392

Symantec

Mountain View, CA

1,886

3,169

Aladdin Inc.

Arlington Heights, IL

919

1,028

CA

Islandia, NY

1,579

219

SafeNet

5/

Headquarters

Belcamp, MD

1,511

180

Source: www.mapquest.com.

5

As a result, this Court is far more convenient than Rhode Island for the great majority of
the defendants (and for Uniloc). Thus, on the whole, defendants cannot legitimately argue that it
is more convenient to litigate this case in Rhode Island than in this Court. Additionally, many of
Uniloc’s relevant documents are located in the Eastern District of Texas. Lin Decl., ¶ 7. Uniloc
has maintained an office in Plano, Texas for approximately two and a half years. Id., ¶ 4.
Moreover, just like all defendants, Uniloc has no offices, facilities, or employees in Rhode
Island. Id., ¶ 8. Thus, Tyler is also more convenient than Rhode Island for Uniloc.6/
Due to the clear inconvenience of Rhode Island, defendants are forced to argue that it
does not matter because documents can easily be moved around the country. Sony et al. br., pp.
12-13.7/ The Fifth Circuit has explicitly rejected this faulty reasoning, explaining that “[d]espite
technological advances that certainly lighten the relative inconvenience of transporting large
amounts of documents across the country, this factor is still part of the transfer analysis.” In re
Volkswagen of Am., Inc., 545 F.3d at 316. Accordingly, this Court has determined that “whether
documents may be produced electronically is no longer relevant in the convenience analysis.”
ATEN Int'l Co. Ltd. v. Emine Tech. Co., Ltd., 261 F.R.D. 112, 124 (E.D. Tex. 2009). Instead,
this factor is analyzed as though “voluminous documents must be transported from their physical
location . . . to the trial venue.” Id. at 123.8/
2. The availability of compulsory process weighs against
transfer.
6/

Defendants ignore this geographic evidence and simply argue that Rhode Island is convenient because the
Court there conducted a technology tutorial. While such an argument may be relevant for the purposes of judicial
economy, it has no relevance to this factor.
7/
As noted in the Introduction above, defendants do nothing more than adopt the arguments of the Sony case
defendants as their own. To be clear, it is Uniloc’s position that by doing nothing more, defendants cannot meet the
heavy burden placed upon them and their motion should be denied. Nonetheless, Uniloc responds to those
arguments of Sony et al. in this brief to relieve the Court of the burden of searching through the pleadings from
other cases to piece together the defendants’ arguments herein.
8/
Defendants’ assertion that “defendants that would allegedly be inconvenienced do not oppose transfer to
the RI District” is irrelevant. “The fact that [defendants are] agreeable to having th[is] case[] heard in [Rhode
Island] is irrelevant [to the 1404(a) transfer analysis].” Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc., 355 F. Supp.
2d 848, 852 (N.D. Tex. 2005).

6

The next factor to be considered under Volkswagen I is the availability of compulsory
process in the transferee forum over potential witnesses. Volkswagen I at 203. This factor also
strongly supports denying defendants’ motion. As the moving parties, defendants must
“specifically identify key witnesses and outline the substance of their testimony.” Mangosoft
Intellectual Prop. v. Skype Techs., S.A., 2007 U.S. Dist. LEXIS 48622 at *5 (E.D. Tex. Jul. 5,
2007). Defendants, however, fail to identify a single witness in either venue. Therefore,
defendants fail to effectively address this factor and it cannot support their burden of proof.
Knapper v. Safety Kleen Sys., Inc., 2009 U.S. Dist. LEXIS 30118 at *20 (E.D. Tex. Apr. 3,
2009).
Although not its burden, Uniloc has identified 29 key non-party witnesses that reside
either in this District or elsewhere in Texas. See Ex. A. The District of Rhode Island has no
subpoena power over these witnesses. Moreover, the Federal Circuit has explained that when a
district, such as this District, has “usable subpoena power,” this fact weighs against transfer, “and
not only slightly,” to a district that has none. In re Genentech, Inc., 566 F.3d at 1345, As
defendants have failed to meet their burden of identifying any non-party witnesses, and because
this is the only district with usable subpoena power, this factor weighs strongly against transfer.
3. The cost of attendance for willing witnesses weighs
against transfer.
Next, the court must weigh the relative cost between the districts for witnesses to travel
and attend trial. Because the District of Rhode Island is almost 1700 miles from Tyler, Texas,
the Fifth Circuit’s “100 mile” rule applies. Under this rule, the inconvenience to witnesses
increases in direct relationship to the additional distance they must travel. Volkswagen I at 204205. The court must consider the convenience of both the party and non-party witnesses. Id. at

7

204 (requiring courts to “contemplate consideration of the parties and witnesses”); Fujitsu Ltd. v.
Tellabs, Inc., 639 F. Supp. 2d 761, 765-66 (E.D. Tex. 2009).
Defendants have failed to identify a single party witness or employee who might testify
in either forum. Thus, this factor cannot support transfer. Knapper, 2009 U.S. Dist. LEXIS
30118 at *20. As stated above, two defendants are headquartered in Texas and Uniloc believes
that at least 29 witnesses are located in Texas. When parties and witnesses are located within the
existing venue, as here, and other parties are widely dispersed, the court’s central location
weighs against transfer. In re Genentech, Inc., 566 F.3d at 1343-44. This District is centrally
located for the non-Texas based defendants.
Additionally, the round-trip travel time for each party is significantly less if this case
remains in Texas. The majority of defendants will be forced to endure substantially greater
travel times if the case is transferred to Rhode Island. Additional distance means additional
travel time which increases the probability for meal, lodging expenses for overnight stays and
increases the time which these witnesses must be away from their regular employment.
Volkswagen I at 205. Hearings, and especially trial, in Providence would cost substantially more
for willing witnesses and the parties in general. The cost of hotels, food, rental cars, local
counsel, parking, and temporary office space is unquestionably much less in Tyler than in Rhode
Island. All things considered, out-of-pocket costs for a trial in Providence, Rhode Island can be
expected to be between $130,220 and $153,980, up to nearly two times more than the expected
out of pocket costs of roughly $87,000 for trial in Tyler, Texas. See Ex. B (Declaration of Dianna
Case), ¶ 15. See also, Sanofi-Aventis Deutschland GmbH v. Genentech, Inc., 607 F. Supp. 2d
769, 779-80 (E.D. Tex. 2009). Therefore, this factor also weighs strongly against transfer.
B. The Public Factors Weigh Against Transfer.

1. Court congestion weighs against transfer.
8

In a single paragraph on page 11 of the adopted brief in the Uniloc v. Sony et al. case,
defendants argue that median time to trial in Rhode Island is 19 months as compared with 25
months in this district. Defendants’ selective reliance on irrelevant court statistics fails to paint a
true picture of the relative congestion between the districts. Uniloc assumes that defendants are
adopting the flawed assertion from the Sony case that median time to trial in Rhode Island is 19
months as compared with 25 months in this District. As Uniloc pointed out in that case, this
faulty premise is based upon a selective reliance on irrelevant court statistics and fails to paint a
true picture of the relative congestion between the two districts. When all the facts are
examined, the District of Rhode Island is a clearly more congested venue. According to a 2009
PricewaterhouseCoopers (PWC) patent litigation study the Eastern District of Texas ranks fifth
out of the twenty most active patent districts with a median time-to-trial in patent cases of 1.79
years (21 months). Bostock Decl., ¶ 8. Indeed, at a Status Conference held on April 4, 2011, this
Court was setting Markman hearings in the February-April 2012 timeframe (10-12 months) and
trial dates in the January-March 2013 timeframe (21-23 months). As the District of Rhode Island
is not included in the PWC Study, Uniloc reviewed every patent case filed since 2003 to
determine their median time-to-trial. Based on the only two patent cases to go to trial in the past
seven years, the median time to trial in the District of Rhode Island was 51 months. Id. at ¶ 10.
Accordingly, this factor weighs strongly against transfer. Acceleron, LLC, 634 F. Supp. 2d at
767.
Defendants’ reliance on the median time form filing to trial of all civil cases is misplaced.
The proper focus is on the difference between the median times from filing to trial for patent
cases between the two districts. See Realtime Data, LLC v. Packeteer, Inc., 2009 U.S. Dist.
LEXIS 81067 at *35-37 (E.D. Tex. Mar. 5, 2009). Defendants also erroneously fail to
acknowledge that there are two-and-a-half times as many judges in this District than in Rhode
9

Island. See Ex. C. Moreover, the number of active pending cases per judgeship, clearly a
significant fact to consider, is 967 in Rhode Island compared with 463 in this District. Id. Thus,
both the median time to trial and the relative caseload in the two districts demonstrate that this
District is less congested.
With an average time to Markman of 28 months (versus 10-12 months for this Court) and
an average time to trial of 51 months (versus 19-20 months for this Court), transfer of this case to
Rhode Island will result in additional delay. This delay will operate to the prejudice of Uniloc.
The patent-in-suit expires in 2013. Thus, it is unlikely that Uniloc could even get to trial in
Rhode Island before the patent expires, hampering Uniloc’s ability to recover damages and
obtain injunctive relief. Accordingly, this factor weighs heavily against transfer.
2. The local interests weigh against transfer.
Uniloc is a Texas corporation and has maintained an office in Plano for over two years.
Lin Decl., ¶ 4. Thus, Texas has a particularized interest in the trial of Uniloc’s case as a whole.
Acceleron, LLC, 634 F. Supp. 2d at 767-68. Texas’ interest in this case is further bolstered by
the fact, as set forth above, that defendants National Instruments and Pervasive both have their
principal places of business in this State. Id. at 768. None of the defendants has a headquarters
or principal place of business in Rhode Island. As a result, this factor strongly favors denying
transfer.
3. Defendants have not shown that Judicial Economy weighs
heavily in favor of transfer.
Defendants argue that judicial economy weighs heavily in favor of transfer. Uniloc disagrees.

10

a. There will be no judicial economy gained by
transferring only one of the cases pending before this
Court.
In its six pending cases in this Court, Uniloc alleges infringement of the same patent-insuit as in this case against a large number of defendants. Transferring this case to Rhode Island
would not serve judicial economy because in three of the cases none of the defendants has
moved to transfer to Rhode Island (or to anywhere else). Thus, those three cases at least will
remain in this District. Furthermore, around a dozen of the remaining defendants are Texas
companies based in Texas and, therefore, likely not subject to personal jurisdiction in Rhode
Island. As a result, judicial economy would be served by keeping all of the cases together in this
Court, not by transferring this case to Rhode Island.
b. Defendants fail to prove that overlap between this case
and the Microsoft case is substantial.
Judicial economy weighs in favor of transfer when there is substantial overlap between
suits in two different districts. Invitrogen Corp. v. GE Elec. Co., 2009 U.S. Dist. LEXIS 9127 at
*12 (E.D. Tex. Feb. 9, 2009). There is substantial overlap if one court is extensively familiar
with the technology or legal issues, has construed the claims, and the cases involve the same or
similar defendants and products. Zoltar Satellite Sys., Inc. v. LG Electronics Mobile
Communications Co., 402 F. Supp. 2d 731, 737 (E.D. Tex. 2005). Conversely, the overlap is
small if risk of inconsistent claim constructions is small and the cases involve different
defendants with different products. ConnecTel, LLC v. Cisco Sys., Inc., 2005 U.S. Dist. LEXIS
2252 at *10 (E.D. Tex. Feb. 16, 2005).
It cannot be disputed that this case involves different products from eleven new
defendants that were, and are, not parties to the Rhode Island case against Microsoft. Further,
11

none of the defendants in this case has asserted that they use the accused Microsoft activation
system. Thus, defendants have failed to establish that the cases involve the same or similar
parties or technologies. As a result, defendants have failed to establish that judicial economy
would be served by transferring this case to Rhode Island.
Defendants also argue that this case should be transferred to prevent inconsistent claim
construction. Sony et al. br., pp. 8-9. Defendants do not identify, however, a single claim term
that would potentially be construed inconsistently by this Court as compared with Judge Smith’s
constructions in the Rhode Island case. Moreover, while it is undeniable that Judge Smith
construed the disputed terms of the patent-in-suit, that claim construction was partially appealed
and several key claim terms were construed by the Federal Circuit. Uniloc USA, Inc. v.
Microsoft Corp., 2008 U.S. App. LEXIS 16938 (Fed. Cir. Aug. 7, 2008). Federal Circuit claim
constructions have a stare decisis effect and a “district court must apply the Federal Circuit’s
claim construction even where a non-party to the initial litigation would like to present new
arguments.” Rambus Inc. v. Hynix Semiconductor Inc., 569 F. Supp. 2d 946, 963 (N.D. Cal.
2008). This unique situation greatly reduces the possibility of inconsistent claim construction.
In addition, any risk of possible inconsistent claim construction of terms that were not ruled on
by the Federal Circuit can be avoided by referring to Judge Smith’s prior claim construction.
ConnecTel, LLC v. Cisco Sys. Inc., 2005 U.S. Dist. LEXIS 2252 at *12 (E.D. Tex. Feb. 16,
2005).
Finally, defendants argue that Uniloc’s choice of venue in this Court should not be given
deference because Uniloc filed the prior suit against Microsoft in Rhode Island. Sony et al. br.,
pp. 9-10. Defendants’ argument should be rejected. First, the Federal Circuit has rejected the
position that “once a patent is litigated in a particular venue the patent owner will necessarily
have a free pass to maintain all future litigation involving that patent in that venue. In re
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Vistaprint Ltd., 628 F.3d 1342, 1347 (Fed. Cir. 2010) n, 3 (Fed. Cir. 2010). Second, Uniloc filed
the Rhode Island complaint against Microsoft et al. in Rhode Island in September, 2003. See
Bostock Decl., ¶ 3. At that time, Uniloc USA was a Rhode Island corporation with a principal
place of business in Rhode Island. Lin Decl., ¶ 6. Moreover, one of the three original defendants
therein was also a Rhode Island corporation having a principal place of business in Rhode Island.
Bostock Decl., ¶ 4. Of the other two defendants, one (Microsoft) was based in Washington and
the other (Aladdin) was based in Illinois. Id. Thus, Uniloc properly brought suit in Rhode
Island. In contrast, none of the defendants in this case is a Rhode Island corporation, nor does
any defendant have a place of business in Rhode Island.
Third, while defendants list a litany of proceedings from the Microsoft case, they fail to
explain how these proceedings relate to the current litigation and the current accused products.
The bulk of the prior litigation was focused on Microsoft and its products. For example, fifteen
of the twenty witnesses introduced at trial where specific to Microsoft and its products. Bostock
Decl., ¶ 5. Two of the remaining witnesses were Uniloc’s technical expert relating the patent to
Microsoft’s technology and Uniloc’s damages expert calculating damages from the sale of the
Microsoft products. Id. Those transcripts would be available just as easily in Tyler. Moreover,
of the 690,000 pages of documents produced in the litigation, over 600,000 pages (87 %) were
produced by Microsoft. Uniloc produced less than 90,000 pages.9 Id. at 6.
Any argument that judicial economy is best served by transfer to Rhode Island due to the
pendency of the Uniloc v. Microsoft case before Judge Smith in that court is factually incorrect.
First, that case is on appeal to the Federal Circuit. Second, Judge Smith has taken himself off the
Uniloc v. Microsoft case and referred it for assignment to Judge Young of the District of

9

This disparity is to be expected, because as the Fed. Cir. has explained, in patent cases the bulk of the relevant
evidence comes from the accused infringer. In re Genentech, Inc., 566 F.3d at 1345.

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Massachusetts, sitting by designation. See Ex. D. Judge Young has had no prior involvement
with the ‘216 patent or the Uniloc v. Microsoft case. In any event, if and when the Uniloc v.
Microsoft case goes forward in Massachusetts, Judge Young will be focused on remand solely on
the issue of damages as the issues of infringement, willful infringement, claim construction and
validity have already been tried and appealed. The only issue being remanded for trial is
damages. See Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011), reh'g denied
(Mar. 22, 2011), . Thus, defendants’ argument that Judge Smith’s experience in that case
supports transfer should be rejected.

As this case involves different parties with different

products, and because the chance of inconsistent adjudication is greatly reduced, the overlap with
the previous Microsoft litigation is not substantial. Accordingly, judicial economy does not
weigh in favor of transfer.
4. Any Judicial Economy that could have been realized by
transferring this case has been lost due to the lapse in
time between now and the Microsoft litigation
The Federal Circuit recently held that prior litigation does not control the judicial
economy/transfer analysis. In In re Verizon Business Network Services, Inc., Misc. Dkt. No. 956,
slip op. (Fed. Cir. Mar. 23, 2011) (copy submitted as Exhibit E), the plaintiff opposed transfer
from this District to the Northern District of Texas on the grounds that this Court was familiar
with the patent-in-suit from settled litigation several years earlier that included claim
construction of 25 claim terms. Id., pp. 2-3. The Federal Circuit disagreed, stating inter alia that
this Court “would have to relearn a considerable amount based on the lapse in time between the
two suits.” Id., p. 5. The same is true for the Rhode Island court, even were Judge Smith still
presiding over the Microsoft case. Judge Smith issued the claim construction order in that case
almost five years ago on August 22, 2006. See Ex. F. Trial took place almost two years ago in
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March-April, 2009. Moreover, as the Federal Circuit noted in the Verizon case, none of the
witnesses resided in this District. Ex. E, p. 5. Likewise, defendants herein have identified no
witness or evidence located in Rhode Island. Thus, as in the Verizon case, the fact that the
patent-in-suit was previously litigated in Rhode Island does not favor transfer, particularly where
the prior judge in that case has removed himself from all further proceedings therein.
5. Judicial Economy is not dispositive in this case.
Even if, notwithstanding the foregoing, this Court finds that judicial economy weighs in
favor of transfer, this factor alone does not trump every other factor weighing against it. Indeed
to hold so would violate the Fifth Circuit’s mandate that no single factor is dispositive. In re
Volkswagen of Am., Inc., 545 F.3d at 315. While the Federal Circuit has held that judicial
economy may outweigh the private interests of the parties, it has rejected any per se rules when it
comes to favoring any factors over others. In re Vistaprint Ltd., 628 F.3d at 1346. In this case,
the private and public factors overall are in Uniloc’s favor.10/ Similarly, where this Court found
judicial economy dispositive, the other public and private factors viewed as a whole either
favored transfer or were neutral. See e.g. Invitrogen, 2009 U.S. Dist. LEXIS 9127 at *19
(judicial economy weighed in favor and remaining factors were neutral or slightly favored
transfer).
IV.

CONCLUSION
For the reasons set forth above, defendants’ motion to transfer should be denied. A

proposed Order is submitted as Exhibit G.

10/

Many of the cases cited in the Sony et al. brief and relied upon by defendants herein are distinguishable on
other grounds as well. Unlike this case, neither Jackson, Invitrogen, Am. Calcar nor Zoltar had Texas parties and
thus there was no localized interest. Jackson v. Intel Corp., 2009 U.S.Dist. LEXIS 22117 at *10 (E.D. Tex. Mar. 19,
2009); Invitrogen, 2009 U.S. Dist. LEXIS 9127 at *8; Am. Calcar Inc., 2006 U.S. Dist. LEXIS 69373 at *4-6;
Zoltar Satellite Sys., Inc., 402 F. Supp. 2d at 738-39. Also unlike this case, both Invitrogen and Kentic Concepts
involved transfer of cases that involved the same or essentially the same parties as in the previous suits. Invitrogen,
2009 U.S. Dist. LEXIS 9127 at *14; Kinetic Concepts, 2008 U.S. Dist. LEXIS 2900 at *5.

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Dated: April 11, 2011
Respectfully Submitted,
UNILOC USA, INC. and UNILOC
(SINGAPORE) PRIVATE LIMITED
By: /s/ Paul Hayes (w/ permission Wesley Hill)
Paul J. Hayes
(LEAD ATTORNEY)
Dean G. Bostock
MINTZ, LEVIN, COHN, FERRIS,
GLOVSKY and POPEO, P.C.
One Financial Center
Boston, Massachusetts 02111
Tel: [phone]
Fax: [phone]
T. John Ward, Jr.
Texas State Bar. No. 00794818
J. Wesley Hill
Texas State Bar. No. 24032294
WARD & SMITH LAW FIRM
111 West Tyler St.
Longview, Texas 75601
Tel: [phone]
Fax: [phone]
Email: [e-mail]
[e-mail]
Of counsel:
ATTORNEYS FOR PLAINTIFFS
UNILOC USA, INC. and UNILOC
(SINGAPORE) PRIVATE LIMITED

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CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing document was filed
electronically in compliance with Local Rule CV-5 on April 11, 2011. As of this date, all counsel
of record have consented to electronic service and are being served with a copy of this
documents through the Court’s CM/ECF system under Local Rule CV-5(a)(3)(A).

/s/ Dean Bostock

5364842v.1

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