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

Filing 95

REPLY to Response to Motion re 60 MOTION to Dismiss for Improper Venue Pursuant to Rule 12(B)(3), FRCP MOTION to Dismiss for Improper Venue Pursuant to Rule 12(B)(3), FRCP filed by Symantec Corp.. (Attachments: # 1 Declaration of Mark Flagel, # 2 Exhibit J, # 3 Exhibit K, # 4 Exhibit L, # 5 Exhibit M, # 6 Exhibit N, # 7 Exhibit O, # 8 Exhibit P, # 9 Exhibit Q, # 10 Exhibit R, # 11 Exhibit S, # 12 Exhibit T)(Jones, Michael)

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Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al Doc. 95 Att. 2 Exhibit J Dockets.Justia.com Case 8:10-cv-01483-DOC -MLG Document 19-1 #:182 Filed 11/22/10 Page 1 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 12 13 MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. Harvey I. Saferstein, Esq. (SBN: 49750) Nada I. Shamonki, Esq. (SBN: 205359) 2029 Century Park East, Suite 1370 Los Angeles, California 90067 Phone: 310.586.3200 Fax: 310.586.3202 hsaferstein@mintz.com; nshamonki@mintz.com Attorneys for Defendants/Counterclaimants UNILOC USA, INC., UNILOC (SINGAPORE) PRIVATE LIMITED and UNILOC CORPORATION PTY LIMITED UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA Case No. SACV10-01483 DOC (MLGx) MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANTS'/ COUNTERCLAIMANTS' MOTION TO TRANSFER VENUE TO THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS OR, IN THE ALTERNATIVE, TO DISMISS Date: December 20, 2010 Time: 8:30 a.m. Courtroom No.: 9D Judge: Honorable David O. Carter UNILOC USA, INC., UNILOC (SINGAPORE) PRIVATE LIMITED and UNILOC CORPORATION PTY LIMITED, Counterclaimants, vs. SYMANTEC CORPORATION and XTREAMLOK PTY, Counterdefendants. 1 SYMANTEC CORPORATION and 11 XTREAMLOK PTY, Plaintiffs, vs. 14 UNILOC USA, INC., UNILOC (SINGAPORE) PRIVATE LIMITED and 15 UNILOC CORPORATION PTY LIMITED, 16 Defendants. 17 18 19 20 21 22 23 24 25 26 27 28 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:183 Filed 11/22/10 Page 2 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 IV. E. D. I. II. III. Tables of Contents and Authorities BACKGROUND ........................................................................................... 4 LEGAL STANDARDS ................................................................................. 6 ARGUMENT................................................................................................. 8 A. B. C. Venue is Proper in this Court .............................................................. 8 The Action Might Have Been Brought in the Eastern District of Texas .................................................................................. 8 Interests of Justice ............................................................................... 9 1. 2. 3. 4. 5. 6. Judicial Economy ...................................................................... 9 Symantec's Choice of Forum Should not be Given Weight ..................................................................................... 10 The Comparative Costs Favor Transfer.................................. 12 Ability to Enforce a Judgment ................................................ 13 Obstacles to a Fair Trial .......................................................... 13 Conflict of Law Issues and Advantages of Having a Local Court Determine Questions of Local Law ................. 13 Convenience of the Parties Favors Transfer ........................... 13 Convenience of the Witnesses Favors Transfer ..................... 14 Accessibility to Records and Documents Favors Transfer ................................................................................... 15 Location Where the Conduct Complained of Occurred .................................................................................. 15 Applicability of Each Forum State's Substantive Law.......................................................................................... 16 Convenience ...................................................................................... 13 1. 2. 3. 4. 5. Alternatively, Symantec's Claims Should be Dismissed under the First-to-File Rule ............................................................... 16 CONCLUSION ........................................................................................... 17 2 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:184 Filed 11/22/10 Page 3 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Cases Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d 622 (9th Cir. 1991) ....................................................................... 8, 16 Cedars-Sinai Med. Ctr. v. Shalala, 125 F.3d 765 (9th Cir. 1997) ....................................................................... 8, 16 Clip Ventures, LLC v. U-Dig-It Enterprises, Inc., No. 10-cv -3227, 2010 WL 4269199 (N.D. Cal. Oct. 25, 2010) .......................7 Garcia v. 3M Co., No. 09-cv -1943, 2009 WL 3837243 (N.D. Cal. Nov. 16, 2009) ............. 10, 11 In re Oracle Corp., 2010 WL 4286372 (Fed. Cir. Nov. 1, 2010) ............................................... 6, 11 Inherent.com v. Martindale-Hubbell, 420 F. Supp. 2d 1093 (N.D. Cal. 2006)....................................................... 8, 16 Irvine Pharm. Services, Inc. v. Arnold, No. 08-cv-974, 2008 WL 4792513 (C.D. Cal. Oct. 28, 2008) .................... 7, 10 Jones v. GNC Franchising, Inc., 211 F.3d 495(9th Cir.), .......................................................................................6 Manuel v. Convergys Corp., 430 F.3d 1132 (11th Cir. 2005) ................................................................... 7, 16 Rowsby v. Gulf Stream Coach, Inc., No. 08-cv-1213, 2009 WL 1154130 (C.D. Cal. Feb. 9, 2009) ..........................7 Schott v. Ivy Asset Management Corp., No. 10-cv -1562, 2010 WL 4117467 (N.D. Cal. Oct. 19, 2010) .................... 10 Uniloc USA, Inc. v. Microsoft Corp., 290 Fed. Appx. 337 (Fed. Cir. 2008) .......................................................... 4, 14 Uniloc USA, Inc. v. Microsoft Corp., 447 F. Supp.2d 177 (D.R.I. 2006) ......................................................................4 Wilton v. Seven Falls Co., 515 U.S. 277, 115 S. Ct. 2137, 132 L. Ed. 2d 214 (1995) .............................. 10 Statutes 28 U.S.C. 1400(b) and 1391(c) ..................................................................................9 28 U.S.C. 1404(a) ........................................................................................... 4, 6, 12 35 U.S.C. 101 et seq., ........................................................................................... 16 Rules Fed. R. Civ. P. 41(a) .....................................................................................................6 3 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:185 Filed 11/22/10 Page 4 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants Uniloc USA, Inc., Uniloc (Singapore) Private Limited and Uniloc Corporation Pty. Limited (together "Uniloc") respectfully submit this memorandum of points and authorities in support of their motion to transfer the patent issues in this case to the Eastern District of Texas pursuant to 28 U.S.C. 1404(a). In the alternative, Uniloc requests that the patent issues be dismissed in favor of the pending proceedings in the Eastern District of Texas. For the reasons set forth below, Uniloc requests that this motion be granted. I. BACKGROUND Uniloc USA, Inc. is a Texas Limited Liability Company with an office in Plano, Texas and a principal place of business in Irvine, California. Dkt. No. 15, 1. Uniloc (Singapore) Private Limited is a Singapore corporation located in Singapore. Id., 2. Uniloc Corporation PTY Limited is an Australian corporation. Id., 3. Uniloc (Singapore) Private Limited is the owner of U.S. Patent No. 5,490,216 ("the `216 patent"). See Declaration of Dean G. Bostock ("Bostock Decl."), Ex. 1, p. 1. Uniloc USA, Inc. is the exclusive licensee under the `216 patent in the United States. Dkt. No. 15, 10. According to the Complaint, Symantec Corporation is a Delaware corporation having a principal place of business in Mountain View, California, and XtreamLok Ltd. is an Australian company and an indirect subsidiary of Symantec. Dkt. No. 1, 1-2. The `216 patent relates to a software registration system that is used to prevent the unauthorized use of software. See Uniloc USA, Inc. v. Microsoft Corp., 447 F. Supp.2d 177, 180 (D.R.I. 2006); Uniloc USA, Inc. v. Microsoft Corp., 290 Fed. Appx. 337, 339 (Fed. Cir. 2008) (unpublished). The subject matter claimed in the `216 patent was invented by the sole inventor named on the patent, Frederic B. Richardson in 1992. See Bostock Decl., Ex. 1, p. 1. At the time, Mr. Richardson was living in his native Australia. Subsequently, Mr. Richardson formed, and assigned his patent rights to, Uniloc (Singapore) Private Limited, which is still the owner of the `216 patent. See id. In the mid-1990's, Mr. Richardson contacted Microsoft Corporation's 4 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:186 Filed 11/22/10 Page 5 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Australian affiliate to determine whether or not Microsoft had any interest in his invention. Microsoft expressed an interest and Uniloc provided Microsoft with its product for Microsoft to sample, with an express prohibition against Microsoft reverse engineering the software. See Bostock Decl., Ex. 2, 8. Thereafter, Uniloc learned that Microsoft had violated its agreement not to reverse engineer the Uniloc software and had copied Uniloc's invention when Microsoft implemented its own registration system known as "Product Activation." As a result, in 2003, Uniloc brought suit against Microsoft for infringement of the `216 patent. After more than five years of litigation, the case went to trial in Rhode Island in March, 2009. The jury returned a verdict that Microsoft had willfully infringed the patent and awarded damages in the amount of $388 million. See Bostock Decl., Ex. 3. Microsoft thereafter prevailed on judgment as a matter of law, the verdict was vacated, and that case is now on appeal before the Federal Circuit. In 2002, Uniloc granted XtreamLok a license under the '216 patent. Subsequent to the grant of that license, Symantec acquired XtreamLok. Following that acquisition, Uniloc believed that XtreamLok/Symantec were under-reporting the royalties due pursuant to the license. As a result, Uniloc filed suit against Symantec and XtreamLok in this Court in May 2008 alleging infringement of the `216 patent, unfair competition and breach of contract. See Bostock Decl., Ex. 4. In October 2008, the parties agreed to arbitrate the claim for breach of the license agreement and stipulated to stay that case pending resolution of the arbitration proceedings. More particularly, the parties stipulated that: (3) This Court shall retain jurisdiction over Uniloc's Patent Infringement and Unfair Competition Claims, and shall re-activate the matter upon application of the parties upon completion of the arbitration to allow the continuation of the action as to any claims and issues which either party may contend remain to be resolved in accordance with applicable law. See Bostock Decl., Ex. 5, pp 2-3. 5 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:187 Filed 11/22/10 Page 6 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 This Stipulation was embodied in the Order staying the case pending arbitration. See id, Ex. 6, p. 1, 3. As stated in Symantec/XtreamLok's Complaint herein, in September 2009, the Arbitrator determined that royalties had been underpaid by Syamntec/XtreamLok and, as a result, the License Agreement had been breached and terminated. See Dkt. No. 1, 12. The Arbitrator also ordered XtreamLok to pay Uniloc the unpaid royalties that were due and payable. Id. The Arbitrator's findings were subject to a determination to be made subsequently on whether or not the products on which royalties had been underpaid were covered by the `216 patent. Id. Thereafter, however, neither side attempted to reactivate that case. Accordingly, Uniloc dismissed the case pursuant to Fed. R. Civ. P. 41(a). Id., 13. On September 14, 2010, Uniloc (Singapore) Private Limited and Uniloc USA, Inc. brought suit for infringement of the `216 patent against Symantec and others in the Eastern District of Texas. See Bostock Decl., Ex. 7. In response, on October 1, 2010, Symantec and XtreamLok filed the Complaint herein requesting inter alia declaratory judgments that they do not infringe the `216 patent and that the `216 patent is invalid. See Dkt. No. 1, 17-22. In their Complaint, Symantec and XtreamLok argue that a jurisdiction retention clause contained in the dismissal of a prior case between the parties hereto in this Court requires that the patent dispute between them regarding the `216 patent be resolved in this Court. See id., 9-16. As set forth below, Uniloc asserts that this provision is not controlling in light of intervening acts and a recent decision of the Court of Appeals for the Federal Circuit. See In re Oracle Corp., 2010 WL 4286372 (Fed. Cir. Nov. 1, 2010) (unpublished). II. LEGAL STANDARDS District courts have discretion to transfer according to an "individualized, caseby-case consideration of convenience and fairness." See Jones v. GNC Franchising, Inc., 211 F.3d 495, 498 (9th Cir.), cert. denied, 531 U.S. 928 (2000) (internal quotations and citations omitted). Pursuant to 28 U.S.C. 1404(a), a case may be 6 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:188 Filed 11/22/10 Page 7 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 transferred "[f]or the convenience of parties and witnesses, in the interest in justice." To prevail on a motion to transfer, a moving party must establish (1) that venue is proper in the transferor district; (2) that the transferee district is one where the action might have been brought; and (3) that the transfer will serve the convenience of the parties and witnesses and will promote the interests of justice. See Clip Ventures, LLC v. U-Dig-It Enterprises, Inc., No. 10-cv -3227, 2010 WL 4269199, at *1 (N.D. Cal. Oct. 25, 2010). In determining whether transfer is appropriate, relevant "convenience" factors include the following: (1) the convenience of the parties, (2) the convenience of the witnesses-including the willingness of witnesses to appear, the ability to subpoena witnesses, and the adequacy of deposition testimony, (3) the accessibility to records and documents, (4) the location where the conduct complained of occurred, and (5) the applicability of each forum state's substantive law. Irvine Pharm. Services, Inc. v. Arnold, No. 08-cv-974, 2008 WL 4792513, at *2 (C.D. Cal. Oct. 28, 2008). Relevant and somewhat overlapping factors implicating the interest of justice include, (1) judicial economy, (2) the plaintiff's choice of forum, (3) the comparative costs to the parties of litigating in each forum, (4) each party's ability to enforce a judgment, (5) obstacles to a fair trial, (6) conflict of law issues, and (7) the advantages of having a local court determine questions of local law. Id. at *3. Before considering whether transfer is appropriate under this provision, the transferee court must be within a district where the claim "might have been brought." Id. In other words, venue must be proper in the transferee court. See Rowsby v. Gulf Stream Coach, Inc., No. 08-cv-1213, 2009 WL 1154130, at *3 (C.D. Cal. Feb. 9, 2009). When two actions involving overlapping issues and parties are pending in two different federal courts, there is a "strong presumption across the federal circuits that favors the forum of the first-filed suit under the first filed rule." See, e.g., Manuel v. 7 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:189 Filed 11/22/10 Page 8 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Convergys Corp., 430 F.3d 1132, 1135 (11th Cir. 2005); Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d 622, 625 (9th Cir. 1991). The two actions need not be identical so long as they are substantially similar. Inherent.com v. MartindaleHubbell, 420 F. Supp. 2d 1093, 1097 (N.D. Cal. 2006). The purpose of the rule is to promote efficiency and avoid duplicative litigation. Id. If the rule applies, the second-filed court "has discretion to transfer, stay, or dismiss the second case in the interest of efficiency and judicial economy." Cedars-Sinai Med. Ctr. v. Shalala, 125 F.3d 765, 769 (9th Cir. 1997). III. ARGUMENT The foregoing factors are addressed below and warrant transferring this case to the Eastern District of Texas. A. Venue is Proper in this Court Uniloc does not dispute that venue is proper in this District. Rather, Uniloc asserts that this patent dispute should be resolved in the Eastern District of Texas where venue is also proper. B. The Action Might Have Been Brought in the Eastern District of Texas Uniloc must also demonstrate that this patent case might have been brought in the transferee court, namely the Eastern District of Texas. Uniloc is a Texas company and has maintained an office in the Eastern District of Texas since February 2007. See Declaration of Bradley C. Davis, 4. Before Symantec/XtreamLok filed the Complaint herein, Uniloc had previously filed seven cases, six of which remain pending, in the Eastern District of Texas alleging that numerous defendants are infringing the '216 patent. See Bostock Decl., Ex. 8. Symantec is a named defendant on the complaint filed in Texas on September 14, 2010. Id., p. 1. Symantec does business in the Eastern District of Texas. For example, Symantec has sold its "Endpoint Protection" software to the City of Plano, Texas for use on hundreds of the City's personal computers. See Bostock Decl., Ex. 9, p 2. Symantec has also entered 8 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:190 Filed 11/22/10 Page 9 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 into a technology partnership with Dell Computer, based in Plano, Texas. Id. Ex. 10, p. 1. Moreover, Symantec itself has previously brought suit for patent infringement in the Eastern District of Texas wherein it alleged that "[v]enue is proper in this district pursuant to 28 U.S.C. 1400(b) and 1391(c). Id., Ex. 11, 7. In addition, Uniloc is a Texas corporation having places of business within the Eastern District of Texas in Plano, Texas. See Dkt. No. 15, 1. Thus, there can be no legitimate dispute that Uniloc's patent claim asserted herein could have been brought in the Eastern District of Texas. C. Interests of Justice The interests of justice strongly favor transferring this case to the Eastern District of Texas. 1. Judicial Economy In their Complaint in this case, Symantec/XtreamLok deny infringement and assert that the claims of the `216 patent are invalid. See Dkt. No. 1, 17-22. Uniloc counterclaims that Symantec/XtreamLok infringe the `216 patent and that such infringement has caused damage to Uniloc. See Dkt. No. 15, 8-13. To date, this Court has not issued a Scheduling Order or otherwise become involved substantively in this patent dispute. In contrast, as indicated above, prior to Symantec/XtreamLok filing the Complaint herein, Uniloc filed seven cases in the Eastern District of Texas alleging that numerous defendants (including Symantec) have infringed the `216 patent. Scheduling Orders have been entered in three of the Texas cases. Pursuant thereto, claim construction briefing is ongoing, document production has been completed, depositions have been taken, a Markman hearing is scheduled for February 3, 2011, and trial has been scheduled to commence on November 14, 2011. See Bostock Decl., Ex. 12, pp. 1-5. Judicial economy would, therefore, be served by transferring the patent case herein against Symantec/XtreamLok to be resolved with those against the other fifty-three remaining defendants in Texas where Symantec is 9 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:191 Filed 11/22/10 Page 10 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 already a named defendant.1/ It would make no sense to try Uniloc's patent claims against Symantec in a separate trial in this court when the case is going to trial against the other defendants in Texas. "The presence of related litigation in another venue weighs heavily in favor of transfer." Schott v. Ivy Asset Management Corp., No. 10cv -1562, 2010 WL 4117467, at *5 (N.D. Cal. Oct. 19, 2010) (citations omitted). Thus, the presence of the pending Texas cases weighs heavily in favor of transfer because it would promote judicial economy. The nature of the patent relief requested by Symantec/XtreamLok in this case also favors transferring to Texas or dismissing in favor of proceeding in Texas. In its Texas complaint against Symantec, Uniloc affirmatively alleges that Symantec has infringed the `216 patent. In contrast, the patent claims asserted by Symantec/XtreamLok in this case (Counts I and II) are requests for declaratory judgments that the `216 patent is not infringed and is invalid. See, Dkt. No. 1, 1722. "[D]istrict courts possess discretion in determining whether and when to entertain an action under the Declaratory Judgment Act, even when the suit otherwise satisfies subject matter jurisdictional prerequisites." Wilton v. Seven Falls Co., 515 U.S. 277, 282, 115 S. Ct. 2137, 132 L. Ed. 2d 214 (1995). The Texas Court has no such discretion to decline to hear Uniloc's infringement claims. Accordingly, this Court should exercise its discretion and decline to hear Symantec/XtreamLok's declaratory judgment claims for the reasons stated above. 2. Symantec's Choice of Forum Should not be Given Weight Typically the plaintiff's choice of forum is accorded weight. See, e.g., Irvine Pharm. Services v. Arnold, 2008 WL 4792513, at *3. A plaintiff's choice of forum, however, is given diminished weight when the plaintiff files suit outside of its home forum. See, e.g., Garcia v. 3M Co., No. 09-cv -1943, 2009 WL 3837243, at *2 (N.D. 1/ During the meet-and-confer discussion between counsel regarding this dispute, counsel for Uniloc indicated that they would be filing the present motion and counsel for Symantec/XtreamLok indicated they would be filing a motion to 10 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:192 Filed 11/22/10 Page 11 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Cal. Nov. 16, 2009) (citation omitted). As Symantec is located in the Northern District, its choice of filing in this District is given little weight. In any event, it is obvious that Symantec is forum-shopping. As indicated above, the prior litigation between these parties was dismissed in November 2009. Uniloc filed its patent suit against Symantec (and others) in Texas on September 14, 2010. Symantec/XtreamLok did not file their Complaint in this case until October 1, 2010, i.e. more than a year after the prior litigation terminated and only two weeks after Uniloc filed in Texas. Thus, it is apparent that Symantec/XtreamLok filed this retaliatory suit in an effort to forum-shop its way out of Texas. Not surprisingly, a court "should disregard a plaintiff's forum choice where the suit is a result of forum shopping." Garcia v. 3M, 2009 WL 3837243, at *2 (citation omitted). Thus, Symantec/XtreamLok's choice of this forum should be disregarded. Symantec/XtreamLok will undoubtedly argue that it filed suit in this forum because this Court retained jurisdiction over the patent issue in the prior case between these parties. The pertinent provision of the dismissal Order is as follows: (3) This Court shall retain jurisdiction over Uniloc's Patent Infringement and Unfair Competition Claims, and shall re-activate the matter upon application of the parties upon completion of the arbitration to allow the continuation of the action as to any claims and issues which either party may contend remain to be resolved in accordance with applicable law. Bostock Decl., Ex. 6, p. 1 (emphasis added). As conceded in Symantec/XtreamLok's Complaint herein, in September 2009, the Arbitrator determined the License Agreement has been terminated. See Dkt. No. 1, 12. Accordingly, this provision no longer applies. In the In re Oracle decision referenced above, the Federal Circuit has determined that, even were such a provision still in effect, it is not always controlling. See In re Oracle Corp., 2010 WL 4286372, at *2 ("district court's sole reliance on the parties' private expression of dismiss in the Texas case. See Bostock Decl., 20. Symantec/XtreamLok's motion was filed in Texas on November 18, 2010. 11 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:193 Filed 11/22/10 Page 12 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 venue choice and failure to provide a meaningful evaluation of the 1404(a) factors was plainly incorrect as a matter of law"). Moreover, as neither party, let alone all parties, moved to reactivate, Uniloc dismissed that case. Symantec/XtreamLok did not cry foul or attempt to reactivate the prior case in order to resolve this patent dispute. Symantec/XtreamLok did nothing until filing this present new case in response to the Texas case filed against it in September 2010. Thus, Symantec/XtreamLok elected to forego reactivating the prior case and to pursue instead the patent issues in a new case. Accordingly, the above provision is not controlling in this case. 3. The Comparative Costs Favor Transfer The comparative costs of litigating in the transferor and transferee courts is also a factor to be considered. As explained in the Convenience arguments above, Uniloc's documents are already located in Texas and Uniloc's witness residing in this District is amenable to traveling to Texas for trial. Any Uniloc witnesses, such as experts, who live outside of this District will have to travel in any event. The difference in costs for these experts, whom Uniloc intends to use in this dispute irrespective of its locus, to travel to Texas for trial as compared with to this Court is negligible. Likewise, as explained above, Symantec/XtreamLok's employee witnesses will have to travel to trial from headquarters in Mountain View whether this case is tried in this Court or in Texas. To the extent, by the time of trial, airfares to Texas may be a little higher than to this Court, Symantec is sitting on over $2.25 billion in cash and equivalents. See Bostock Decl., Ex. 13. Therefore, Symantec/XtreamLok can certainly afford such expenditures. Furthermore, as also indicated above, Symantec has previously filed a patent infringement case in the Eastern District of Texas when it could have sued the defendant therein in Utah. As a result, Symantec has acknowledged that the cost of trying a case in Texas is acceptable. Symantec should not be permitted to avail itself of the Eastern District's court when it suits Symantec, 12 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:194 Filed 11/22/10 Page 13 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 only to complain later that the Eastern District is an inconvenient venue in a subsequent suit against the company. The comparative actual costs of appearing for trial in Texas versus this Court will not pose any inconvenience for Symantec/XtreamLok as they have over $2.5 billion of cash and equivalents on hand. In any event, costs of hotel rooms, meals, parking etc. are, if anything, likely to be lower in the Eastern District of Texas that in this District. Accordingly, this factor also favors transfer. 4. Ability to Enforce a Judgment This factor is neutral. Any judgment will be federal and can be enforced against Uniloc and Symantec at their places of business in the U.S. With respect to the foreign defendants, any issues that may arise regarding enforceability will be the same irrespective of whether the case is tried in Texas or in this Court. 5. Obstacles to a Fair Trial This factor is neutral. Both the Eastern District of Texas and this Court handle a large numbers of patent cases and are well-versed in patent law. 6. Conflict of Law Issues and Advantages of Having a Local Court Determine Questions of Local Law There are no conflict of law issues in either forum as this motion pertains to patent claims brought under federal statutes and Federal Circuit law is controlling in both jurisdictions. Likewise, there are no questions of local law that will need to be determined. D. Convenience 1. Convenience of the Parties Favors Transfer Symantec is headquartered in Mountain View, California. See Dkt. No. 1, 1. Thus, this Court is geographically closer to Symantec's headquarters than is the Eastern District of Texas. Symantec, however, maintains substantial facilities in Dallas, Texas, thereby confirming that Texas is a convenient place for Symantec to do business. More particularly, Symantec is registered to business in Texas, see 13 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:195 Filed 11/22/10 Page 14 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Bostock Decl., Ex. 14, and maintains places of business in Austin, Dallas, Houston and Round Rock, Texas. Id., Ex. 15. Symantec also maintains education centers in Dallas and Houston to which it invites students to fly to Texas to train. Id., Ex. 16. Further, as indicated above, Symantec has previously instituted patent litigation in the Eastern District of Texas, thereby confirming that Texas is a convenient place for Symantec to litigate patent disputes. Notably, the defendant in Symantec's Texas patent case was located in Utah. Bostock Decl., Ex. 11, 3. Symantec's strategy of suing the defendant in the Eastern District of Texas, rather than in California or Utah, indicates that it is very convenient for Symantec to litigate patent claims in Texas. Symantec, therefore, cannot be heard to argue that the Eastern District of Texas is an inconvenient forum for resolving this patent dispute. XtreamLok is an Australian corporation located, if anywhere, in Australia. As a result, the Eastern District of Texas is not significantly, if at all, more or less inconvenient to XtreamLok than this District. The Eastern District of Texas is convenient to Uniloc. Uniloc has had an office within that district since early 2007. See Davis Decl., 4. Also, due to the pendency of the numerous cases in the Eastern District of Texas alleging infringement of the `216 patent, Uniloc's documents relating to the infringement of that patent are already located at its Texas facilities. 2. Convenience of the Witnesses Favors Transfer There are unlikely to be many fact witnesses who testify at trial in this case. Only one inventor is named on the `216 patent, Mr. Richardson, who currently resides in Australia but, health permitting, is willing to travel to Texas for trial. Uniloc's Chief Executive Office, Brad Davis, testified at trial in Rhode Island in the Uniloc v. Microsoft case. Mr. Davis is likewise willing to travel to testify in Texas if this case is transferred. It is probable that Symantec will argue that it will need to fly one or more fact witnesses from its headquarters in Mountain View, California to Texas for trial. This 14 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:196 Filed 11/22/10 Page 15 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 should pose no real inconvenience to Symantec. No doubt the flight from San Jose or San Francisco to Los Angeles is shorter than the flight to Dallas. Symantec, however, must routinely fly its employees and others from Mountain View to its facilities in Dallas. Moreover, with over $2.25 billion in cash and equivalents on hand, see Bostock Decl., Ex. 13, p. 7, the cost of flying a few employees to Dallas for trial would not pose a financial problem or inconvenience to Symantec. Also, as indicated above, Symantec previously filed a patent case in the Eastern District of Texas, thereby acknowledging that Texas is not an inconvenient venue for its witnesses. Undoubtedly, both Symantec/XtreamLok and Uniloc will use expert witnesses at trial. Such witnesses, however, are typically located around the country and are more than willing to travel to testify at trial at their client's expense. 3. Accessibility to Records and Documents Favors Transfer As indicated above, Uniloc's documents relating to the `216 patent are already located at its offices in the Eastern District of Texas. Symantec/XtreamLok is a sophisticated software company that, in this day and age can electronically send its relevant records and documents to its facilities in Texas and be able to access its documents in Mountain View electronically from Texas. As Symantec touts on its website: [m]ore than ten million end users at more than 31,000 organizations ranging from small businesses to the Fortune 500 use Symantec Hosted Services to secure and manage information stored on endpoints and delivered via email, Web, and instant messaging. Bostock Decl., Ex. 17, p. 1. Therefore, it would not pose any real inconvenience for Symantec to transfer a copy of its relevant records and documents to Texas for trial. Thus, this factor favors transfer. 4. Location Where the Conduct Complained of Occurred Symantec sells its products throughout the United States. Thus, the alleged infringement occurred both in Texas and in this judicial district. Uniloc believes that 15 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:197 Filed 11/22/10 Page 16 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 the design and testing of the infringing Symantec product activation technology likely occurred in Mountain View. Thus, this activity did not take place in either this judicial district or the Eastern District of Texas. Accordingly, this factor is neutral. 5. Applicability of Each Forum State's Substantive Law As the patent issues will be resolved in accordance with the provisions of the Federal Patent Statute, 35 U.S.C. 101 et seq., state substantive law is inapplicable. Accordingly, this factor is neutral. E. Alternatively, Symantec's Claims Should be Dismissed under the First-to-File Rule Uniloc's Texas case against Symantec was filed two weeks prior to Symantec/XtreamLok filing this case. As a result, Uniloc's Texas case is the "firstfiled." When two actions involving overlapping issues and parties are pending in two different federal courts, there is a "strong presumption across the federal circuits that favors the forum of the first-filed suit under the first filed rule." Manuel v. Convergys, 430 F.3d at 1135; Alltrade v. Uniweld Prods., 946 F.2d at 625. The two actions need not be identical so long as they are substantially similar. Inherent.com v. Martindale-Hubbell, 420 F. Supp.2d at 1097. The purpose of the rule is to promote efficiency and avoid duplicative litigation. Id. As this it is the "second-filed" forum, this Court "has discretion to transfer, stay, or dismiss th[is] second case in the interest of efficiency and judicial economy." Cedars-Sinai v. Shalala, 125 F.3d at 769. Accordingly, as this is the second-filed suit, the Court should transfer the patent claims herein to Texas or dismiss them in favor of the Texas proceedings between Uniloc and Symantec. /// /// /// /// /// 16 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:198 Filed 11/22/10 Page 17 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 IV. CONCLUSION For the reasons set forth above, Uniloc requests that Counts I and II of the Complaint and the Counterclaims be transferred to the Eastern District of Texas or, in the alternative, be dismissed. Dated: November 22, 2010 Respectfully submitted, MINTZ LEVIN COHN FERRIS GLOVSKY AND POPEO P.C. Harvey I. Saferstein Nada I. Shamonki Attorneys for Defendants/ Counterclaimants UNILOC USA, INC., UNILOC (SINGAPORE) PRIVATE LIMITED and UNILOC CORPORATION PTY LIMITED 17 Case 8:10-cv-01483-DOC -MLG Document 19-1 #:199 Filed 11/22/10 Page 18 of 18 Page ID 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5070576v.2 CERTIFICATE OF SERVICE I am a resident of the State of California, over the age of eighteen years, and not a party to the within action. My business address is 2029 Century Park East, Suite 1370, Los Angeles, California 90067. I hereby certify that on November 22, 2010, I electronically filed Defendants' MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANTS'/COUNTERCLAIMANTS' MOTION TO TRANSFER VENUE TO THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS OR, IN THE ALTERNATIVE, TO DISMISSANSWER TO COMPLAINT AND COUNTERCLAIM with the Clerk of the Court by using the CM/ECF system which will send a notice of electronic filing to all CM/ECF registered parties. I hereby certify that I have mailed the foregoing document via U.S. Postal Service First Class Mail to the non-CM/ECF participants indicated below: Dale Chang LATHAM & WATKINS LLP 355 South Grand Avenue Los Angeles, CA 90071-1560 Phone: 213-485-1234 Facsimile: 21-891-8763 dale.chang@lw.com I am readily familiar with the firm's practice of collection and processing correspondence for mailing. Under that practice it would be deposited with the U.S. Postal Service on that same day with postage thereon fully prepaid in the ordinary course of business. I declare under penalty of perjury that the foregoing is true and correct. Executed on November 22, 2010, at Los Angeles, California. JAZMIN LEON

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