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

Filing 132

RESPONSE in Support 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 Adobe Systems Inc., Alladin Knowledge Systems Ltd., Alladin Knowledge Systems, Inc., CA, Inc., NATIONAL INSTRUMENTS CORP., Onyx Graphics, Inc., Pinnacle Systems, Inc., Safenet, Inc., Sonic Solutions, Symantec Corp.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9)(Healey, David)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., ET AL.,
Plaintiffs,
Civil Action No. 6:10-cv-472-LED
v.
JURY TRIAL DEMANDED
NATIONAL INSTRUMENTS CORP., ET
AL.,
Defendants.
REPLY IN SUPPORT OF
MOTION TO TRANSFER VENUE UNDER 28 U.S.C. § 1404(a)

1

Defendants respectfully submit this reply in support of their motion to transfer this case to
the District of Rhode Island—the same forum that Uniloc chose when it first asserted U.S. Patent
No. 5,490,216 (the “’216 Patent”), the very same patent at issue here, against Microsoft Corporation
and Aladdin Knowledge Systems, Inc. (“Aladdin”) in Rhode Island (the “Rhode Island case”). For
the reasons set forth below and in the briefing submitted by the movants in Uniloc v. Sony et al.,
Case No. 6:10-cv-373 (the “Sony case”), Defendants’ motion should be granted.
A.

Judicial Economy and the Public Interest Factors Favor Transfer

The District of Rhode Island has spent nearly seven years addressing issues pertaining to the
’216 Patent. During this time, the Rhode Island court spent untold hours construing the claims of
the ’216 Patent, ruling on substantive motions, presiding over a jury trial, and issuing orders on
post-trial motions. Having invested considerable time and effort learning about the technology and
the patent at issue, it is thoroughly familiar with the issues in this case. Therefore, judicial economy
and the public interest factors overwhelmingly favor transfer to Rhode Island.
1.

Substantial Overlap Exists Between This and the Rhode Island Case

Uniloc attempts to downplay the obvious judicial economy that would be gained by
transferring this case to Rhode Island by suggesting that there is no “substantial overlap” between
the Rhode Island case and this case because they involve different defendants and products. This
argument is specious and inconsistent with Uniloc’s actions and previous arguments.
Uniloc has initiated ten lawsuits against over 100 defendants, including six actions pending
in this District against 77 defendants. In each of those cases, including this one, Uniloc has sued
numerous unrelated defendants that sell different products. Presumably Uniloc has joined these
unrelated defendants under the theory that because it is asserting the same patent against all
defendants, questions of law or fact “common to all defendants will arise in the action.” See Fed. R.
Civ. P. 20(a)(2). It is disingenuous for Uniloc to join multiple defendants in the same action under
2

that premise yet then contend that there is no “substantial overlap” between this case and the Rhode
Island case that involves the very same patent.
The inconsistency of Uniloc’s position is further highlighted by the fact that Uniloc sued
Aladdin Knowledge Systems, Inc.––the very same defendant it had sued in the Rhode Island case,
in the present action. Having previously chosen to sue Aladdin in Rhode Island over the very same
patent and the very same accused products, Uniloc cannot seriously argue that there is no
substantial overlap between the Texas and Rhode Island actions.
The two cases cited by Uniloc do not suggest otherwise. See Uniloc’s Opposition at 11. In
Zoltar Satellite Syst., Inc. v. LG Elecs. Mobile Commc’ns Co., 402 F. Supp. 2d 731 (E.D. Tex.
2005), this Court held that the interests of justice and judicial economy favored transfer to the
Northern District of California on facts very similar to those here. As in this case, judicial economy
favored transfer to California because the Northern District judge had reviewed technology
tutorials, conducted claim construction proceedings and issued claim construction orders,
considered motions for summary judgment and motions in limine, conducted a jury trial in which he
heard invalidity, infringement and inequitable conduct arguments, prepared jury instructions and
considered motions for judgment as a matter of law. 402 F. Supp. 2d at 734-37. This Court did not
hold or suggest that the same defendants or products had to be at issue for there to be “substantial
overlap” between suits in two different districts. Indeed, the Court transferred the case to the
Northern District of California even though the two cases involved different defendants and
different accused products. Id.
Furthermore, in Zoltar, this Court specifically addressed and distinguished the other case
cited by Uniloc, ConnecTel, LLC v. Cisco Sys., Inc., 2005 U.S. Dist. LEXIS 2252 (E.D. Tex.
Feb. 16, 2005). As noted by the Court, only one of four patents-in-suit in ConnecTel had been
previously construed, and none was being simultaneously litigated in another district. In contrast, in
3

Zoltar, three of four patents-in-suit had been construed, and all three were being simultaneously
litigated in another district. This Court emphasized the “serious problems” created by inconsistent
claim constructions by different courts, which deserve special consideration when the same patent is
simultaneously being litigated in another district. Zoltar, 402 F. Supp. 2d at 737. Here, there is
only one patent-in-suit and that patent has been previously construed by the Rhode Island court.
Moreover, the patent remains in litigation in that court. Accordingly, judicial economy strongly
favors transfer to Rhode Island.
2.

No Significant Time Has Lapsed Since the Rhode Island Case

Uniloc argues that the judicial efficiency to be gained from a transfer to Rhode Island is
“lost” because trial in that case took place almost two years ago. However, the case that Uniloc
relies on, In re Verizon Bus. Network Servs., Inc., 635 F.3d 559 (Fed. Cir. 2011), is inapposite. In
Verizon, the Federal Circuit held that this District could not retain jurisdiction over a case based
solely on the efficiency from having handled a case involving the same patent that settled before
trial and over five years earlier. Here, the Rhode Island case proceeded all the way through trial,
which took place less than two years ago, and which was followed by substantive post-trial motions
that were ruled on by the court. Moreover, there has been no “lapse in time” because the Rhode
Island case is still being litigated. Accordingly, unlike Verizon, judicial efficiency strongly favors
transfer.1
B.

Jurisdiction in Rhode Island

Uniloc argues that the Defendants have failed to prove that this action could have been
brought in Rhode Island because their supporting declarations do not expressly state that the
accused products were sold in Rhode Island prior to Uniloc’s filing of this lawsuit. Here again,
Uniloc’s argument is without merit. The Defendants each submitted a declaration confirming that it
1

Uniloc’s remaining arguments regarding judicial economy are essentially duplicative of arguments
made (and addressed) in the briefing in the Sony case.
4

has sold accused products in Rhode Island. The language in these declarations is virtually identical
to the language in the amended declarations filed in the Sony case, and Uniloc never objected to
those declarations on the ground that they failed to explicitly state that the sales of the accused
products occurred prior to the filing of Uniloc’s complaint. See, e.g., Exhibits to Document 92 and
Document 97 in the Sony case. Likewise, the declarations filed by Defendants are not deficient.
Each of the declarants’ representations concerning past sales were representations of sales prior to
the filing of the complaint. Despite Uniloc’s quibble about the precise wording of the declarations,
there is no serious dispute that this case could have been filed in Rhode Island. Nevertheless, to
resolve any remaining ambiguity, Defendants each submit amended declarations with this reply.
(Ex. 1, Declaration of National Instruments Corporation; Ex. 2, Declaration of Adobe Systems
Incorporated; Ex. 3, Declaration of SafeNet, Inc.; Ex. 4, Declaration of CA, Inc.; Ex. 5, Declaration
of Pinnacle Systems, Inc.; Ex. 6, Declaration of Sonic Solutions; Ex. 7, Declaration of Onyx
Graphics, Inc.; Ex. 8, Declaration of Symantec Corp.; Ex. 9 Declaration of Aladdin Knowledge
Systems, Inc. and Aladdin Knowledge Systems Ltd.).
C.

The Private “Convenience” Factors Are, at Best, Neutral

Uniloc spends the bulk of its opposition discussing various convenience factors.2 Most are
identical to those made in the Sony case and are addressed in the moving and supporting papers
submitted in that case, which are hereby incorporated by reference.
Uniloc’s arguments regarding these convenience factors are largely irrelevant. Until two
years ago, Uniloc was based in Rhode Island. Uniloc chose to bring its first suit on the ’216 Patent
in Rhode Island, demonstrating that Rhode Island is not inconvenient for Uniloc. Not surprisingly,
Uniloc makes little mention of any hardship to itself and instead focuses on purported hardships to
2

Uniloc also suggests that the motion failed to comply with the “meet and confer” requirements.
Because the instant Motion essentially joined a contested motion already on file with the Court in
the Sony case, Defendants considered the Rule 7(h & i) requirements to be moot. Nonetheless,
Defendants have since conferred with Uniloc and confirmed that the parties are at an impasse.
5

Defendants. The Defendants, of course, have all joined this motion to transfer and would not have
done so if they felt that it would be inconvenient to litigate this case in Rhode Island. Thus, any
arguments by Uniloc about Defendants’ convenience should be ignored.
Uniloc’s arguments should also be discounted as they are founded on its deliberate forumshopping tactics. It is readily apparent that Uniloc carefully divided the 77 defendants in the six
currently pending actions into separate cases, so that in each individual case, Uniloc could argue
that no other forum was “clearly more convenient” than Texas due to its central location.3 This is
further confirmed by examining the specific composition of defendants in each case.4 In each
action, Uniloc carefully selected a few defendants from different regions of the country in an
attempt to avoid transfer to a more convenient and/or judicially efficient forum. Uniloc’s attempt to
create a connection to this forum after originally litigating the asserted patent in Rhode Island, and
then improperly join disparate defendants with disparate products in this forum (one in which most
defendants do not have any significant presence) should not be rewarded. Accordingly, beyond the
fact that any convenience factors identified by Uniloc are at best neutral, any factor the existence of
which arises from Uniloc’s improper joinder stratagem should be discounted.
D.

Conclusion

For all of the foregoing reasons and those stated in the moving and supporting papers,
Defendants respectfully request this case be transferred to the District of Rhode Island.

3

The central location of Texas as a basis for denying transfer has been rejected by the Federal
Circuit. See, e.g., In re Genentech, 566 F.3d 1338 (Fed. Cir. 2009).
4
Rather than suing defendants from the same region in the same action, Uniloc has sued three
Minnesota defendants in two separate actions; three Colorado and nine Florida defendants in three
separate actions; and a dozen Texas defendants and 22 California defendants in six separate actions.
6

Dated: April 29, 2011
Respectfully submitted,
/s/ John M. Guaragana
Brian K Erickson
Email: [e-mail]
John M Guaragna
Email: [e-mail]
DLA Piper US LLP
401 Congress Avenue - Suite 2500
Austin, TX 78701-3799
Telephone: [phone]
Facsimile: 512-457-7001

/s/ David J. Healey
David J Healey
Email: [e-mail]
Fish & Richardson P.C.
1221 McKinney Street - Suite 2800
Houston, TX 77010
Telephone: [phone]
Facsimile: 713-652-0109
Counsel for Defendants
NATIONAL INSTRUMENTS
CORPORATION, ADOBE SYSTEMS
INCORPORATED, ALADDIN
KNOWLEDGE SYSTEMS LTD.,
ALADDIN KNOWLEDGE SYSTEMS,
INC., ONYX GRAPHICS, INC.,
PINNACLE SYSTEMS, INC., and
SAFENET, INC.

John Allcock
Email: [e-mail]
Erin P Gibson
Email: [e-mail]
DLA Piper US LLP
401 B Street - Suite 1700
San Diego, CA 92101
Telephone: [phone]
Facsimile: 619-699-2701
Elizabeth L DeRieux
Email: [e-mail]
Capshaw DeRieux LLP
114 E Commerce Avenue
Gladewater, TX 75647
Telephone: [phone]
Facsimile: 903-236-8787
Joshua C. Krumholz (pro hac vice pending)
Email: [e-mail]
Benjamin M. Stern (pro hac vice pending)
Email: [e-mail]
J. Mitchell Herbert, Jr. (pro hac vice pending)
Email: [e-mail]
HOLLAND & KNIGHT LLP
10 St. James Avenue
Boston, Massachusetts 02116
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant
CA, INC.

7

/s/ Roderick M. Thompson
Deborah J. Race
Email: [e-mail]
Otis W. Carroll, Jr.
Email: [e-mail]
Ireland Carroll & Kelley
6101 S Broadway - Suite 500
Tyler, TX 75703
Telephone: [phone]

/s/ Allen Franklin Gardner
Allen Franklin Gardner
Email: [e-mail]
Michael E Jones
Email: [e-mail]
Potter Minton PC
110 N College - Suite 500
PO Box 359
Tyler, TX 75710-0359
Telephone: [phone]

Roderick M Thompson
Email: [e-mail]
Farella Braun & Martel LLP
235 Montgomery Street - 17th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: 415-954-4480

Dean Geoffrey Dunlavey
Email: Email: [e-mail]
Latham & Watkins LLP
650 Town Center Drive - Suite 2000
Costa Mesa, CA 92626
Telephone: [phone]
Mark Alan Flagel
Email: [e-mail]
Yury Kapgan
Email: [e-mail]
Latham & Watkins LLP
355 South Grand Avenue
Los Angeles, CA 90071
Telephone: [phone]

Counsel for Defendant
SONIC SOLUTIONS

Counsel for Defendant
SYMANTEC CORP.

8

CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served, via the Court’s CM/ECF system per Local Rule CV-5(a)(3), upon all
counsel of record, as identified below, on April 29, 2011:
Paul J. Hayes
Dean G. Bostock
HAYES, BOSTOCK & CRONIN, LLC
300 Brickstone Square, 9th Floor,
Andover, MA 01810
Tel: [phone]
Fax: [phone]
E-Mail: [e-mail]
E-Mail: [e-mail]

Attorney for Plaintiffs
Uniloc USA, Inc. and Uniloc Singapore
Private Limited

T. John Ward, Jr.
Texas State Bar No. 00794818
J. Wesley Hill
Texas State Bar No. 24032294
WARD & SMITH LAW FIRM
111 W. Tyler Street
Longview, Texas 75601
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
E-mail: [e-mail]

Attorneys for Plaintiffs
Uniloc USA, Inc. and Uniloc Singapore
Private Limited

/s/ David J. Healey
David J. Healey

9

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