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)

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

Doc. 95 Att. 3

Exhibit K

Dockets.Justia.com

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1 LATHAM & WATKINS LLP Mark A. Flagel (Bar No. 110635) 2 Yury Kapgan (Bar No. 218366) Dale Chang (Bar No. 248657) 3 355 South Grand Avenue 4 Los Angeles, California 90071-1560 Telephone: [phone] Facsimile: [phone] 6 [e-mail] [e-mail] 7 [e-mail] 8 LATHAM & WATKINS LLP Dean G. Dunlavey (Bar No. 115530) 9 650 Town Center Drive, 20th Floor 10 Costa Mesa, CA 92626-1925 Telephone: [phone] Facsimile: [phone] 12 [e-mail] 13 Attorneys for Plaintiffs Symantec Corporation and 14 XtreamLok, Pty 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA SOUTHERN DIVISION SYMANTEC CORPORATION and XTREAMLOK, PTY, v. Plaintiffs, CASE NO. SACV10-01483 DOC (MLGx) SYMANTEC AND XTREAMLOK'S OPPOSITION TO MOTION TO TRANSFER VENUE TO THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS OR, IN THE ALTERNATIVE, TO DISMISS Hearing Date: Time: Place: Judge: December 20, 2010 8:30 AM Courtroom 9D Hon. David O. Carter

UNILOC USA, INC., UNILOC (SINGAPORE) PRIVATE LIMITED and UNILOC CORPORATION PTY LIMITED, Defendants.

AND RELATED COUNTERCLAIMS
OPPOSITION TO MOTION TO TRANSFER VENUE TO THE EASTERN DISTRICT OF TEXAS OR, IN THE ALTERNATIVE, TO DISMISS

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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 III. 26 27 28
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TABLE OF CONTENTS PAGE I. II. INTRODUCTION ........................................................................................ 1 ARGUMENT ................................................................................................ 3 A. Uniloc Has Not Satisfied The Requirements For Transfer.................. 3 1. 2. This action could not have been brought in the Eastern District of Texas ........................................................... 4 The convenience and interest of justice factors weigh against transfer ................................................................ 5 a. b. c. d. e. f. g. h. i. j. B. Judicial economy does not favor transfer........................ 5 Plaintiffs' choice of forum is accorded deference ......................................................................... 7 The comparative costs do not favor transfer ................. 11 The factors related to ability to enforce a judgment, obstacles to a fair trial, and conflict of law issues are, at best, neutral...................... 14 Convenience of the parties weighs strongly against transfer .............................................................. 14 Convenience of the witnesses weighs strongly against transfer ................................................ 15 Accessibility to records and documents does not favor transfer ........................................................... 17 Location where the conduct complained of occurred weighs strongly against transfer..................... 18 Applicability of each forum State's substantive law weighs against transfer ........................ 19 The availability of compulsory process weighs against transfer .................................................. 19

The First-to-File Rule Does Not Support Dismissal.......................... 20

CONCLUSION........................................................................................... 22

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1 2

TABLE OF AUTHORITIES

CASES Alltrade, Inc. v. Uniweld Prods., Inc., 3 946 F.2d 622 (9th Cir. 1991) ...................................................................... 20, 21 4 Amini Innovation Corp. v. JS Imps., Inc., 497 F. Supp. 2d 1093 (C.D. Cal. 2007)........................................................8, 15 5 Arete Power, Inc. v. Beacon Power Corp., 6 No. C-07-5167, 2008 U.S. Dist. LEXIS 111000 (N.D. Cal. Feb. 22, 2008) ................................................................................................................. 18 7 Colt Def. LLC v. Heckler & Koch Def., Inc., 8 No. 2:04-CV-258, 2004 U.S. Dist. LEXIS 28690 (E.D. Va. Oct. 22, 2004)............................................................................................................. 7 9 Decker Coal Co. v. Commonwealth Edison Co., 10 805 F.2d 834 (9th Cir. 1986) .............................................................................. 8 11 DIRECTV, Inc. v. EQ Stuff, Inc., 207 F. Supp. 2d 1077 (C.D. Cal. 2002).............................................................. 8 12 EMG Tech., LLC v. Microsoft Corp., 13 No. 6:09-CV-367, 2010 U.S. Dist. LEXIS 104114 (E.D. Tex. Sept. 28, 2010)........................................................................................................... 15 14 Florens Container v. Cho Yang Shipping, 15 245 F. Supp. 2d 1086 (N.D. Cal. 2002) ............................................................. 8 16 Fujitsu Ltd. v. Tellabs, Inc., 639 F. Supp. 2d 761 (E.D. Tex. 2009) ....................................................... 18, 19 17 Gates Learjet Corp. v. Jensen, 18 743 F.2d 1325 (9th Cir. 1984)............................................................................ 8 19 Hatch v. Reliance Ins. Co., 758 F.2d 409 (9th Cir. 1985) .......................................................................... 3, 4 20 Hoffman v. Blaski, 21 363 U.S. 335 (1960) ........................................................................................... 4 22 Hy Cite Corp. v. Advanced Mktg. Int'l, Inc., No. 05-C-722-S, 2006 U.S. Dist. LEXIS 18615 (W.D. Wis. Apr. 23 10, 2006)........................................................................................................... 21 24 In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) ................................................................. passim 25 In re Hoffmann-La Roche, Inc., 26 587 F.3d 1333 (Fed. Cir. 2009) .................................................................. 12, 18 27 In re Oracle Corp., 2010 U.S. App. LEXIS 22829 (Fed. Cir. 2010)............................................... 10 28
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1 In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2009) ........................................................................ 19 2 In re Yahoo! Inc., No. CV-07-3125, 2008 U.S. Dist. LEXIS 20605 (C.D. Cal. Mar. 3 10, 2008)............................................................................................................. 4 4 In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010) .............................................................. 6, 12, 15 5 6 Jones v. GNC Franchising, Inc., 211 F.3d 495 (9th Cir. 2000) .............................................................................. 8 7 Kannar v. Alticor, Inc., No. C-08-5505, 2009 U.S. Dist. LEXIS 35091 (N.D. Cal. Apr. 9, 8 2009) ................................................................................................................. 17 9 Metz v. United States Life Ins. Co., 674 F. Supp. 2d 1141 (C.D. Cal. 2009)........................................................3, 19 10 11 Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897 (Fed. Cir. 2008) .......................................................................... 21 12 Neil Bros. Ltd. v. World Wide Lines, Inc., 425 F. Supp. 2d 325 (E.D.N.Y. 2006).............................................................. 15 13 14 Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93 (9th Cir. 1982) .............................................................................. 20 15 Rowsby v. Gulf Stream Coach, Inc., No. 08-CV-1213, 2009 U.S. Dist. LEXIS 40046 (C.D. Cal. Feb. 9, 16 2009) ................................................................................................................... 9 17 Serco Servs. Co., L.P. v. Kelley Co., Inc., 51 F.3d 1037 (Fed. Cir. 1995) .......................................................................... 21 18 19 SkyRiver Tech. Solutions, LLC v. OCLC Online Computer Library Ctr., Inc., No. C-10-03305, 2010 U.S. Dist. LEXIS 119984 (N.D. Cal. Oct. 20 28, 2010)........................................................................................................... 16 21 Texas Instruments Inc. v. Tessera, Inc., 231 F.3d 1325 (Fed. Cir. 2000) .......................................................................... 5 22 23 Uniloc USA, Inc. v. Microsoft Corp., 640 F. Supp. 2d 150 (D.R.I. 2009) ................................................................... 17 24 Valpak of Cincinnati, Inc. v. Valpak Direct Mktg. Sys., Inc., No. 1:05-CV-00510 2005 WL 3244321 (S.D. Ohio Nov. 30, 2005)............... 21 25 26 Van Dusen v. Barrack, 376 U.S. 612 (1964) ......................................................................................... 13 27 28
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STATUTES 28 U.S.C. § 1404(a) ........................................................................................ passim Fed. R. Civ. P. 20................................................................................................. 2, 7

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1 I. 2

INTRODUCTION Two years ago, Uniloc stipulated to this Court's jurisdiction over the patent

3 infringement and contract disputes at issue in this lawsuit. Four weeks ago, 4 consistent with that stipulation, Uniloc agreed to drop its patent infringement claim 5 in the Eastern District of Texas and proceed in this forum. Shortly thereafter, 6 Uniloc filed its Answer and Counterclaims in this action. Now, however, Uniloc 7 has changed its mind and asks the Court to either transfer this lawsuit to Texas or 8 dismiss it. The Court should deny Uniloc's request.1 9 Uniloc's motion is fatally defective because Uniloc has failed to establish 10 the threshold requirement for the Court to even consider a transfer under 28 U.S.C. 11 § 1404(a) ­ i.e., that this action could have been brought in Texas. XtreamLok 12 could not have brought its claims there because the forum selection clause in its 13 2002 license agreement with Uniloc Corporation Pty Limited specifies that such 14 claims must be brought in this forum. Moreover, Uniloc has not shown that its 15 own claims against XtreamLok, or the Symantec/XtreamLok claims against Uniloc 16 Corporation Pty Limited, could have been brought in Texas. Indeed, Uniloc has 17 made no showing whatsoever that either Uniloc Corporation Pty Limited (the 18 Australian Uniloc entity in this action) or XtreamLok (also an Australian entity) 19 are subject to personal jurisdiction in Texas. In contrast, both Australian entities 20 have appeared in this action and are subject to personal jurisdiction in this district. 21 23 24 See Symantec and XtreamLok's Motion to Enjoin Uniloc from Proceeding 25 with Duplicative Action as Against Symantec, and to Require Uniloc to Dismiss Symantec as a Defendant from that Action ("Motion to Enjoin") (Dkt. No. 18). 26 Rather than repeat all of the facts pertinent to this Opposition, Symantec and 27 XtreamLok incorporate herein by reference the facts and arguments set forth in the Motion to Enjoin. 28
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Even if the Court were to ignore the threshold legal requirements for a

22 Section 1404 transfer, there simply is no legitimate reason to transfer this lawsuit

1

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1 to the Eastern District of Texas. The parties' disputes have no factual connection 2 with Texas. In contrast, the disputes are intimately connected with this forum. 3 Uniloc USA is headquartered in Irvine, California. Nearly all of Symantec's U.S. 4 development of the accused technology takes place in the Central District of 5 California. None of it occurs in Texas. Therefore, many witnesses reside here, 6 and the relevant documents would be accessed from Symantec's facility here. 7 Furthermore, the parties contractually agreed to resolve their disputes in this 8 forum. In 2008, the parties stipulated, and the Court ordered, that this Court would 9 be the forum that resolved issues of patent infringement concerning the patent-in10 suit. This lawsuit belongs in this forum. 11 Uniloc argues that the Court should ignore all of these facts because Uniloc 12 has sued a lot of other companies in the Eastern District of Texas and it would like 13 to lump Symantec into one of those cases along with eleven other companies 14 unrelated to Symantec. According to Uniloc, this would promote judicial 15 economy. In actuality, Uniloc's Texas action is improper ab initio (and Symantec 16 does not belong in it) because it joins multiple unrelated defendants and accuses 17 them of patent infringement by reason of selling multiple unrelated products. This 18 does not meet the requirements of the permissive joinder statute. See Fed. R. Civ. 19 P. 20(a)(2). In any event, the Court should not reward Uniloc's procedural 20 gamesmanship or allow it to disregard the parties' prior agreement and Stipulation 21 and this Court's Order. 22 Uniloc also argues that, pursuant to the "first-to-file" rule, this case should 23 be dismissed. That rule, however, does not apply here given the prior history in 24 this forum and the improper joinder discussed above. 25 27 28
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In short, it is difficult to imagine a case in which a transfer (or dismissal)

26 would be less convenient and less in the "interest of justice."

2

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1 II. 2

ARGUMENT Uniloc's motion to transfer this case to the Eastern District of Texas is an

3 improper attempt to manipulate venue. As set forth in more detail in Symantec and 4 XtreamLok's Motion to Enjoin, the Court should prohibit Uniloc from pursuing its 5 duplicative claims in Texas. Four weeks ago, Uniloc's counsel agreed to dismiss 6 Symantec from the Texas lawsuit and proceed only in this forum. Now, however, 7 it has reneged on that agreement and asks this Court to transfer this case to a forum 8 that has virtually no connection to this dispute. 9 Under Section 1404(a), Uniloc bears the burden of demonstrating that this 10 action could have been brought in the Eastern District of Texas, and that the 11 convenience and justice factors weigh heavily in favor of that forum. Uniloc does 12 not and cannot meet that burden. Nor can Uniloc demonstrate that this case should 13 be dismissed under the "first-to-file" rule. 14 15 A. Uniloc Has Not Satisfied The Requirements For Transfer "For the convenience of parties and witnesses, in the interest of justice, a

16 district court may transfer any civil action to any other district or division where it 17 might have been brought." 28 U.S.C. § 1404(a). The first inquiry when analyzing 18 a case's eligibility for transfer under Section 1404(a) is whether the litigation 19 "might have been brought" in the proposed transferee district. Hatch v. Reliance 20 Ins. Co., 758 F.2d 409, 414 (9th Cir. 1985). Once that threshold inquiry is met, 21 courts must consider: (1) the convenience of the parties; (2) the convenience of the 22 witnesses; and (3) the interests of justice. Metz v. United States Life Ins. Co., 674 23 F. Supp. 2d 1141, 1145 (C.D. Cal. 2009). Several considerations are relevant to 24 weighing the interests of justice, including: 25 26 27 28
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(1) the location where the relevant agreements were negotiated and executed, (2) the state that is most familiar with the governing law, (3) the plaintiff's choice of forum, (4) the respective parties' contacts with the forum, (5) the contacts relating to the plaintiff's cause of action in the chosen forum, (6) the differences in the
3
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1 2 3 4 Id. 5

costs of litigation in the two forums, (7) the availability of compulsory process to compel attendance of unwilling non-party witnesses, and (8) the ease of access to sources of proof.

The party seeking transfer has the burden of showing that the convenience

6 and justice factors "weigh heavily" in favor of the transferee forum. In re Yahoo! 7 Inc., No. CV-07-3125, 2008 U.S. Dist. LEXIS 20605, at *5 (C.D. Cal. Mar. 10, 8 2008). As discussed below, even ignoring Uniloc's failure to meet the threshold 9 "could have been brought in Texas" requirement, the balancing of the transfer 10 factors is not even close, and weighs heavily against transferring this action to the 11 Eastern District of Texas. 12 13 14 1. This action could not have been brought in the Eastern District of Texas The threshold question under Section 1404(a) is whether the litigation

15 "might have been brought" in the proposed transferee district. 28 U.S.C. 16 § 1404(a); Hatch v. Reliance Ins. Co., 758 F.2d 409, 414 (9th Cir. 1985). This 17 requires Uniloc to prove both personal jurisdiction and venue in the transferee 18 court. Hoffman v. Blaski, 363 U.S. 335, 342-44 (1960). Here, Uniloc has failed to 19 prove that the Eastern District of Texas has personal jurisdiction over either 20 XtreamLok ­ an Australian entity ­ or Uniloc Corporation Pty Limited, another 21 Australian entity that is an answering defendant in this forum but not a party to any
2 22 of Uniloc's Texas actions. This failure, alone, compels denial of the motion.

23 24 25 While Uniloc claims that "there can be no legitimate dispute that Uniloc's patent [counter]claim asserted herein could have been brought in the Eastern 26 District of Texas" (Motion at 9), that assertion ignores Uniloc's failure to 27 demonstrate that XtreamLok, a counterclaim defendant in this action, would be subject to personal jurisdiction in the Eastern District of Texas. 28
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2

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1

Moreover, Uniloc Corporation Pty Limited is the entity that entered into the

2 2002 agreement with XtreamLok. That agreement specifies that the "parties 3 consent to the exclusive jurisdiction and venue of the federal and state courts 4 located in Orange County, California in any action arising out of or relating to this 5 Agreement. The parties waive any other venue to which either party might be 6 entitled by domicile or otherwise." Dkt. No. 18-3, at 4. Choice of forum clauses 7 are routinely enforced, and "[p]atent infringement disputes do arise from license 8 agreements." Texas Instruments Inc. v. Tessera, Inc., 231 F.3d 1325, 1331 (Fed. 9 Cir. 2000) (finding that choice of forum clause in patent license agreement 10 required patent infringement claim to be brought in California, and noting that the 11 clause "in the present case, as in any patent license agreement, necessarily covers 12 disputes concerning patent issues"). 13 The reality is that the claims by and against XtreamLok and Uniloc 14 Corporation Pty Limited could not have been brought in Texas, based on the lack 15 of personal jurisdiction and the forum selection clause. Since Uniloc has failed to 16 satisfy even the threshold requirement under Section 1404(a), the Court should 17 deny the motion. 18 19 20 2. The convenience and interest of justice factors weigh against transfer Even if Uniloc somehow could meet the threshold requirement under

21 Section 1404(a), there is no merit to Uniloc's assertions that the convenience of the 22 parties and witnesses, and the interests of justice, favor a transfer to Texas. 23 24 a. Judicial economy does not favor transfer Uniloc first argues that judicial economy favors transfer because it has

25 already filed seven cases in the Eastern District of Texas. (Motion at 9-10.) But 26 this is misleading. In reality, the Texas court has issued a schedule in only the first 27 28
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1 three of those cases.3 In those three cases, only two of 41 defendants remain. In 2 each of the first two cases, only one defendant remains, and in the third case, 3 Uniloc has voluntarily dismissed all of the defendants. See Declaration of Mark A. 4 Flagel ("Flagel Decl.") ¶ 3. Thus, in practice, there have been no meaningful 5 developments in the Texas cases that would suggest judicial economy would be 6 served by a transfer to that forum. 7 Moreover, Uniloc's disregard of the parties' prior agreement (Dkt. No. 18-3) 8 and Stipulation (Dkt. No. 18-5) and this Court's Order (Dkt. No. 18-6) should not 9 be rewarded by assigning any weight to its procedural gamesmanship of suing 10 Symantec together with other defendants in Texas. Cf. In re Zimmer Holdings, 11 Inc., 609 F.3d 1378, 1382 (Fed. Cir. 2010) (ordering transfer out of Eastern District 12 of Texas, noting: "The district court assigned substantial weight in its analysis to 13 the fact that [plaintiff] had also filed suit against another defendant in the same 14 forum. However, in the circumstances of this case, we cannot say this negates the 15 significance of having trial close to where most of the identified witnesses reside 16 and where the other convenience factors clearly favor."). 17 Indeed, Uniloc's undifferentiated, scattershot approach of suing multiple 18 defendants in Texas is simply a litigation-inspired manufacturing of "judicial 19 economy." In reality, Uniloc's tactics impede judicial economy and are improper 20 because they do not meet the requirements of the permissive joinder statute. 21 Uniloc's action against Symantec in Texas joins multiple unrelated defendants and 22 accuses them of patent infringement by reason of selling multiple unrelated 23 products. The only thing that Uniloc alleges Symantec has in common with the 24 other defendants in Texas is that it allegedly infringes the same patent. Symantec 25 does not, and is not alleged to, infringe the '216 patent jointly with any of the other 26 27 28
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Each of the cases filed by Uniloc in Texas have been assigned to the Honorable Leonard E. Davis.
6
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3

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1 defendants. Symantec does not, and is not alleged to, share any of the technology 2 accused of infringing the '216 patent with any of the other defendants. Likewise, 3 Symantec does not, and is not alleged to, supply to the other defendants (or receive 4 from any of them), any allegedly infringing components. See Flagel Decl., Ex. A. 5 This is hardly the stuff from which judicial economy is made. At bottom, the relief 6 that Uniloc seeks against Symantec and the other defendants in Texas does not and 7 is not alleged to arise out of "the same transaction, occurrence, or series of 8 transactions or occurrences." Fed. R. Civ. P. 20(a)(2); see also Colt Def. LLC v. 9 Heckler & Koch Def., Inc., No. 2:04-CV-258, 2004 U.S. Dist. LEXIS 28690, at 10 *13 (E.D. Va. Oct. 22, 2004) (noting "the overwhelming weight of authority" 11 "indicates that allegations against multiple and unrelated defendants for 12 independent acts of patent, copyright and/or trademark infringement do not set 13 forth claims arising from the same transaction or occurrence within the meaning of 14 Rule 20(a)"). 15 Given the prior history of the parties' disputes in this forum, and the strong 16 local interests and convenience of having these disputes adjudicated here (as 17 discussed further below), judicial economy can be advanced only by denying 18 Uniloc's motion and keeping the case in this forum, and ordering Uniloc to cease 19 pursuing its claims against Symantec in Texas.4 20 21 23 Uniloc also makes the puzzling argument that "[t]he nature of the patent relief requested by Symantec/XtreamLok in this case also favors" transfer or 25 dismissal because this Court has discretion to determine whether to entertain the dispute under the Declaratory Judgment Act whereas Uniloc's claims in Texas are 26 affirmative claims for patent infringement. (Motion at 10.) Given that Uniloc has 27 asserted affirmative counterclaims for patent infringement in this action, it is hard to see how this argument makes any sense at all. 28 24
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b.

Plaintiffs' choice of forum is accorded deference

Uniloc also argues that Symantec's choice of forum should be given no

22 weight because Symantec is located in the Northern District of California. (Motion
4

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1 at 10-11.) Although Uniloc is right about the location of Symantec's headquarters, 2 it is wrong about the conclusion to be drawn. 3 A plaintiff's choice of forum is accorded substantial deference. See Decker 4 Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986) ("The 5 defendant must make a strong showing of inconvenience to warrant upsetting the 6 plaintiff's choice of forum."); DIRECTV, Inc. v. EQ Stuff, Inc., 207 F. Supp. 2d 7 1077, 1082 (C.D. Cal. 2002) ("There is a strong presumption in favor of the 8 plaintiff's choice of forum") (citation omitted); Florens Container v. Cho Yang 9 Shipping, 245 F. Supp. 2d 1086, 1092 (N.D. Cal. 2002) ("under Ninth Circuit law, 10 a plaintiff's choice of forum is accorded substantial weight . . . and courts generally 11 will not transfer an action unless the `convenience' and `justice' factors strongly 12 favor venue elsewhere") (citation omitted). Indeed, a plaintiff's choice of forum is 13 entitled to even greater deference where the plaintiff is a resident of the chosen 14 forum or where "there is a material connection or significant contact between the 15 forum state and the . . . events allegedly underlying the claim." See Gates Learjet 16 Corp. v. Jensen, 743 F.2d 1325, 1335 (9th Cir. 1984); Amini Innovation Corp. v. 17 JS Imps., Inc., 497 F. Supp. 2d 1093, 1110 (C.D. Cal. 2007) (citation omitted). 18 Here, although Symantec is headquartered in the Northern District of 19 California, the U.S. facility where the accused activation technology is developed 20 is located in the Central District of California. See Declaration of James 21 Kazanegras ("Kazanegras Decl.") ¶ 6. Not surprisingly, therefore, this is also the 22 location where most of the knowledgeable witnesses reside, and from which the 23 relevant documents are accessed. Id. ¶¶ 4, 6-7. The Central District of California 24 is also where Uniloc USA maintains its principal place of business. Answer ¶ 3 25 (Dkt. No. 13). 26 Moreover, XtreamLok's choice of forum was an unavoidable consequence 27 of the forum selection clause contained in its license agreement with Uniloc. See 28 Jones v. GNC Franchising, Inc., 211 F.3d 495, 499 (9th Cir. 2000) ("the presence
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8

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1 of a forum selection clause is a `significant factor' in the court's § 1404(a) 2 analysis"); Rowsby v. Gulf Stream Coach, Inc., No. 08-CV-1213, 2009 U.S. Dist. 3 LEXIS 40046, at *10 (C.D. Cal. Feb. 9, 2009) ("a court may treat a forum 4 selection clause `as a manifestation of the parties' preferences as to a convenient 5 forum' . . . [and] "it is entitled to substantial consideration") (citation omitted). 6 Ironically, Uniloc asserts that "it is obvious that Symantec is forum7 shopping." (Motion at 11.) But it is Uniloc that is forum shopping and should be 8 enjoined from doing so. After all, Uniloc agreed to a forum selection clause 9 specifying that this forum would have exclusive jurisdiction; filed an action in this 10 forum against Symantec and XtreamLok; stipulated that this Court would retain 11 jurisdiction over Uniloc's infringement claims after completion of an arbitration 12 between the parties (which this Court ordered); and voluntarily dismissed its action 13 after completion of the arbitration, only to re-file it against Symantec months later 14 in Texas. See Motion to Enjoin. 15 Uniloc also makes a number of other specious arguments. First, it argues 16 that because the arbitrator found that the 2002 license agreement had been 17 terminated, somehow this Court's prior Order retaining jurisdiction after 18 completion of the arbitration "no longer applies." (Motion at 11). This makes no 19 sense, since this Court's Order is specifically directed to that outcome: "This 20 Court shall retain jurisdiction over Uniloc's Patent Infringement and Unfair 21 Competition Claims, and shall re-activate the matter upon application of the parties 22 upon completion of the arbitration . . . ." This Court's retention of jurisdiction was 23 not dependent upon the outcome of the arbitration. 24 Second, Uniloc contends that, even if applicable, this Court's retention of 25 jurisdiction "is not always controlling." (Motion at 11.) For support, Uniloc relies 26 on a non-precedential Federal Circuit decision directing the lower court to vacate 27 its order denying a motion to transfer venue, because the lower court relied solely 28 on "the parties' private expression of venue choice" and "fail[ed] to provide a
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9

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1 meaningful evaluation of the § 1404(a) factors." See In re Oracle Corp., 2010 2 U.S. App. LEXIS 22829 (Fed. Cir. 2010). Uniloc does not explain why the Oracle 3 decision would affect this Court's retention of jurisdiction. All that the Oracle 4 decision stands for is that a forum selection clause is not dispositive in the transfer 5 analysis, and the other familiar factors under Section 1404(a) must be considered. 6 That proposition is hardly remarkable, and Symantec and XtreamLok do not 7 contend otherwise. 8 Third, Uniloc argues that this Court's retention of jurisdiction in fact "is not 9 controlling in this case." (Motion at 12.) In an apparent attempt to justify its own 10 forum shopping, Uniloc asserts that it was entitled to dismiss the case in this Court 11 and file a new action in Texas because this Court's Order required the parties to 12 apply to the Court to reactivate the prior action after completion of the arbitration, 13 and neither party did so. (Id.) However, nothing in the Court's Order required 14 immediacy, and the parties' failure to immediately reactivate the prior action does 15 not render this Court's retention of jurisdiction "not controlling." Moreover, it 16 does nothing to vitiate either (a) the forum selection clause in the 17 Uniloc/XtreamLok agreement, or (b) the parties' Stipulation in which they agreed 18 without condition or any "immediate reactivation" requirement that this Court 19 would retain jurisdiction to resolve any infringement or related disputes after 20 completion of the arbitration. 21 Uniloc's stratagem to get its claims out of this Court and into Texas simply 22 by dismissing the prior action in this Court and re-filing the same claims against 23 Symantec in Texas is tactical gamesmanship. This maneuvering does not vitiate 24 the parties' Stipulation to or this Court's retention of jurisdiction, and Uniloc cites 25 no legal authority to the contrary. In any event, this Court should prohibit Uniloc's 26 forum shopping and permit this case to be resolved where it began, here. 27 28
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1 2

c.

The comparative costs do not favor transfer

Uniloc argues that the comparative costs of litigating in Texas instead of

3 California favor transfer. Specifically, it argues that: (1) some of Uniloc's 4 documents are located in Texas and its witnesses are amenable to traveling to 5 Texas; (2) the parties' witnesses and experts who live outside the Central District 6 of California will have to travel anyway and Symantec can afford any increase in 7 travel costs resulting from transferring the case to Texas; and (3) Symantec has 8 previously litigated in Texas, thereby acknowledging that the costs of litigating 9 there are acceptable. (Motion at 12-13.) Each of these arguments is specious or 10 irrelevant to the transfer analysis. 11 First, although Uniloc argues that its documents from an earlier Rhode 12 Island lawsuit with Microsoft are now located in Texas, the location of the accused 13 infringer's documents is far more relevant under the transfer analysis. See In re 14 Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009) ("In patent infringement 15 cases, the bulk of the relevant evidence usually comes from the accused infringer. 16 Consequently, the place where the [accused infringer's] documents are kept weighs 17 in favor of transfer to that location.") (citations and quotations omitted). Virtually 18 all relevant documentary evidence in this case is accessed from computers in Los 19 Angeles County, California and Sydney, Australia, or otherwise resides physically 20 in those locations, and virtually none exists in Texas. See Kazanegras Decl. ¶ 6. 21 All of the U.S. development of the accused technology takes place in Los Angeles 22 County, and all of the code and related documentation is accessed from there. Id. 23 Moreover, even if the purported location of Uniloc's documents were 24 somehow relevant, it should be accorded no weight because it is unsubstantiated 25 and rendered irrelevant by Uniloc's prior actions. In support of Uniloc's motion, 26 all that its CEO testifies is that Uniloc has an office in Texas; he conspicuously 27 omits mention of the location of any documents. We do know, however, that 28 Uniloc USA admits that its principal place of business is in the Central District of
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1 California (Answer ¶ 3 (Dkt. No. 13)); that Uniloc previously sued Microsoft in 2 Rhode Island in a litigation which is pending appeal (Motion at 5); and that in the 3 first two of the Texas actions that it filed, Uniloc opposed motions to transfer to 4 Rhode Island and stated that certain documents produced during that prior 5 litigation in Rhode Island were actually located in its Texas office. See Flagel 6 Decl., Exs. C & D. All of this simply suggests that Uniloc and its litigation 7 counsel easily can move documents around. See In re Zimmer Holdings, Inc., 8 609 F.3d at 1381 (noting that plaintiff transported copies of certain documents 9 "from Michigan to its Texas office space, which it shares with another of its trial 10 counsel's clients," and concluding that "[o]ur assessment of the realities of this 11 case makes it clear that the Eastern District of Texas is convenient only for 12 [plaintiff's] litigation counsel"); In re Hoffmann-La Roche, Inc., 587 F.3d 1333, 13 1336-37 (Fed. Cir. 2009) (finding that "there appears to be no connection between 14 this case and the Eastern District of Texas except that in anticipation of this 15 litigation, [plaintiff's] counsel in California converted into electronic format 16 75,000 pages of documents . . . and transferred them to the offices of its litigation 17 counsel in Texas . . . Thus, the assertion that these documents are `Texas' 18 documents is a fiction which appears to be have been created to manipulate the 19 propriety of venue."). Consequently, not only does the location of the parties' 20 documents not favor transfer, but in fact the location of the Symantec and 21 XtreamLok documents favors keeping the case in this forum. 22 Second, the fact that certain Uniloc witnesses, including its experts, may 23 need to travel regardless of the forum, and that Uniloc is willing to pay for those 24 costs, does not somehow "favor" transfer to Texas. Here, the reality is that the 25 comparative costs favor keeping the case in this forum. Aside from the fact that 26 Uniloc USA's principal place of business is here, and its board members reside 27 here, the travel that would be required of Symantec's witnesses by a transfer to 28 Texas is significant, burdensome and costly. Given that most of Symantec's
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1 developers who develop the accused technology in the United States actually work 2 in Symantec's Los Angeles County facility, Uniloc's argument that the higher 3 costs in airfare for travel are negligible when comparing flights is based on the 4 faulty premise that most witnesses would need to travel from Symantec's 5 Mountain View headquarters. However, most of the relevant Symantec witnesses 6 residing in the United States would not need to fly at all if the case is kept in this 7 forum, but would need to do so if this case were transferred to Texas. Moreover, 8 even if Uniloc's premise were not faulty to begin with, contrary to Uniloc's 9 suggestion, the amount of cash that Symantec has in the bank is irrelevant to the 10 transfer analysis. In short, the increase in costs resulting from transferring the case 11 to Texas actually supports keeping the case in this forum. 12 Third, Symantec's prior litigation in the Eastern District of Texas also does 13 not somehow favor transfer to Texas or serve as an "acknowledge[ment] that the 14 cost of trying a case in Texas is acceptable." (Motion at 12.) That litigation 15 involved different technology, different patents, and different parties. It is 16 completely irrelevant to the transfer analysis. "The Supreme Court has long held 17 that § 1404(a) requires `individualized, case-by-case consideration of convenience 18 and fairness.'" In re Genentech, 566 F.3d at 1346 (quoting Van Dusen v. Barrack, 19 376 U.S. 612, 622 (1964)). In ordering a patent infringement case transferred from 20 Texas to California, the Federal Circuit in Genentech held that the district court 21 "clearly erred in finding Genentech's prior suit weighed against transfer," since 22 there was no indication that "Genentech's previous lawsuit involved the same 23 parties, witnesses, evidence and facts." In re Genentech, 566 F.3d at 1346. The 24 same applies here. Indeed, it is Uniloc's own prior action in this Court against 25 Symantec and XtreamLok that involves the same parties, witnesses, evidence and 26 facts. Uniloc's argument otherwise simply is a red herring, and unsupported by 27 any legal precedent. 28
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1 2 3 4

d.

The factors related to ability to enforce a judgment, obstacles to a fair trial, and conflict of law issues are, at best, neutral

Symantec and XtreamLok agree with Uniloc that each forum's ability to

5 enforce a judgment, obstacles to a fair trial, and conflict of law issues do not 6 meaningfully affect the transfer analysis. (See Motion at 13.) However, given that 7 XtreamLok has asserted a California common law claim for Money Paid, if this 8 action were transferred to Texas, there is a question of local law that would need to 9 be determined, contrary to Uniloc's assertion. 10 11 12 e. Convenience of the parties weighs strongly against transfer Uniloc asserts that Texas is more convenient for the parties because:

13 (1) although Symantec's headquarters are in the Northern District of California, 14 Symantec has facilities and is registered to do business in Texas; (2) Symantec 15 previously filed a patent litigation in Texas; and (3) Uniloc has an office in Texas 16 and its documents are located there. Again, each of these arguments is specious or 17 irrelevant to the transfer analysis. 18 As discussed above, the facility where development of the accused 19 technology takes place is not Symantec's headquarters. Instead, nearly all of the 20 U.S. development of the accused technology takes place at Symantec's facility in 21 the Central District of California, and that is the location from which the relevant 22 documents would be accessed. See Kazanegras Decl. ¶ 6. That makes this forum 23 far more convenient than Texas. Again, Symantec's prior lawsuit in Texas 24 involving different parties, technologies and patents is irrelevant to the transfer 25 analysis. 26 While Uniloc's CEO, Brad Davis, claims that Uniloc "has maintained an 27 office in the Eastern District of Texas since February 2007," he omits to mention 28 that it only incorporated in Texas in July 2010 ­ a few months after motions to
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1 transfer venue were filed by defendants in the first two Texas lawsuits brought by 2 Uniloc, and just two months before Uniloc filed its lawsuit against Symantec there. 3 This Texas incorporation also came years after Uniloc had incorporated in Rhode 4 Island. See Flagel Decl. ¶¶ 5-6, Exs. A, D & E. Mr. Davis also neglects to 5 mention that, at least as of April 2010, Uniloc had only a single employee in 6 Texas. See id., Exs. C & D. In reality, Uniloc's "presence in Texas appears to be 7 recent, ephemeral, and an artifact of litigation." In re Zimmer Holdings, Inc., 609 8 F.3d at 1381; see also EMG Tech., LLC v. Microsoft Corp., No. 6:09-CV-367, 9 2010 U.S. Dist. LEXIS 104114, at *9 (E.D. Tex. Sept. 28, 2010) ("While 10 [plaintiff] does have an office in Tyler, Texas where its documents are kept, the 11 Court gives no weight to this fact as it appears that the documents are kept there 12 solely to influence the Court's venue analysis."). For these reasons, Uniloc's 13 purported presence in Texas should be disregarded entirely for purposes of the 14 transfer analysis. 15 Given that this dispute has strong ties to this forum and virtually no 16 connection to the Eastern District of Texas, the convenience of the parties weighs 17 strongly against transfer. 18 19 20 f. Convenience of the witnesses weighs strongly against transfer "The convenience of the witnesses is probably the single most important

21 factor in transfer analysis." In re Genentech, 566 F.3d at 1343 (quoting Neil Bros. 22 Ltd. v. World Wide Lines, Inc., 425 F. Supp. 2d 325, 329 (E.D.N.Y. 2006)); Amini 23 Innovation Corp., 497 F. Supp. 2d at 1111. It "becomes more inconvenient and 24 costly for witnesses to attend trial the further they are away from home." In re 25 Genentech, 566 F.3d at 1343. Therefore, "[w]hen the distance between an existing 26 venue for trial of a matter and a proposed venue under § 1404(a) is more than 100 27 miles, the factor of inconvenience to witnesses increases in direct relationship to 28 the additional distance to be traveled." Id. (citations and quotations omitted).
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1

Remarkably, despite failing to identify a single witness residing in or near

2 the Eastern District of Texas, Uniloc argues that the convenience of the witnesses 3 "favors" transfer. (Motion at 14.) For support, Uniloc simply states that its CEO 4 (who resides in the Central District of California), the inventor of the '216 patent 5 (who resides in Australia), and its paid expert witnesses would be willing to travel 6 to Texas if the case is transferred there. (Id. at 14-15.) These facts hardly "favor" 7 a transfer based on convenience of witnesses. 8 In fact, as already noted, nearly all of Symantec's developers of the accused 9 technology reside in or around either Los Angeles County or Sydney, Australia. 10 See Kazanegras Decl. ¶ 6. Uniloc USA's principal place of business is here, and 11 its board members reside here as well. Answer ¶ 3 (Dkt. No. 13); Flagel Decl., Ex. 12 E. It is not convenient to travel from this district to the Eastern District of Texas. 13 Flight time from Los Angeles to Houston or Dallas is approximately 3 hours. It is 14 then another 45 minute to 1 hour flight to Tyler. Alternatively, the last leg of the 15 trip can be driven, with the 200-mile route from Houston to Tyler taking 16 approximately four hours, or the 120-mile route from Dallas to Tyler taking 17 approximately two hours. Accounting for airport security, flight check-in, and 18 flight layover or drive time, a trip from the Central District of California to Tyler, 19 Texas is a day-long endeavor. 20 Moreover, this District would be far more convenient for the likely non21 party witnesses in this case. See SkyRiver Tech. Solutions, LLC v. OCLC Online 22 Computer Library Ctr., Inc., No. C-10-03305, 2010 U.S. Dist. LEXIS 119984, at 23 *10 (N.D. Cal. Oct. 28, 2010) ("Importantly, while the convenience of party 24 witnesses is a factor to be considered, the convenience of non-party witnesses is 25 the more important factor."). These include the former Symantec developers of the 26 accused technology who still reside here, and the law firm and lead attorney who 27 prosecuted the '216 patent who also reside here. See Kazanegras Decl. ¶ 7, Flagel 28 Decl. ¶ 9, Ex. F. Furthermore, Professor Martin E. Hellman, the author of the key
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1 prior art reference relied on by Microsoft in the prior Rhode Island case filed by 2 Uniloc, and who testified at trial as a fact witness in that case, is a professor at 3 Stanford University. See Uniloc USA, Inc. v. Microsoft Corp., 640 F. Supp. 2d 4 150, 169 n. 20, 180-83 (D.R.I. 2009); Flagel Decl., Exs. G & H. This Court clearly 5 is the more convenient forum for all of these non-party witnesses. 6 Symantec is not aware of any relevant witness located in the Eastern District 7 of Texas, and Uniloc has not identified a single such witness. See In re Genentech, 8 566 F.3d at 1345 (finding this factor to weigh substantially in favor of transfer 9 from Texas to California "[b]ecause a substantial number of material witnesses 10 reside within the transferee venue . . . and no witnesses reside within the Eastern 11 District of Texas"). Clearly, it would be far more convenient for the potential 12 relevant witnesses, most of whom reside in the Central District of California and 13 none of whom resides in Texas, to testify in the Central District of California rather 14 than 1,500 miles away. See Kannar v. Alticor, Inc., No. C-08-5505, 2009 U.S. 15 Dist. LEXIS 35091, at *6 (N.D. Cal. Apr. 9, 2009) ("The Court finds unpersuasive 16 defendants' argument that little significance should be given the additional time it 17 would take such witnesses to travel to the [transferee forum]"). 18 19 20 21 Therefore, this factor weighs strongly against transfer to Texas. g. Accessibility to records and documents does not favor transfer Uniloc claims that its own documents are located in its office in the Eastern

22 District of Texas, and that Symantec can move its own documents to that 23 jurisdiction. As discussed above, the location of the accused infringer's documents 24 is far more relevant under the transfer analysis, and in this case most of the 25 relevant documents are accessed from Symantec's facility in Los Angeles County. 26 Moreover, the purported location of Uniloc's documents should be given no 27 weight because it is unsubstantiated and rendered irrelevant by Uniloc's prior 28
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1 actions. See section II.A.2.c, supra. For these reasons, this factor does not favor 2 transfer. 3 4 5 h. Location where the conduct complained of occurred weighs strongly against transfer Uniloc suggests that the allegedly infringing activity did not occur in this

6 district or in Texas, and therefore this factor is neutral in the transfer analysis. 7 (Motion at 15-16.) However, as discussed above, development of the accused 8 technology actually does take place in this district, and therefore many potential 9 witnesses are here as well. "The law asks us, here, to identify the principal 10 location of the legally operative facts ­ and in patent cases that location generally 11 is where the allegedly infringing product was designed, developed and produced." 12 Arete Power, Inc. v. Beacon Power Corp., No. C-07-5167, 2008 U.S. Dist. LEXIS 13 111000, at *12-13 (N.D. Cal. Feb. 22, 2008) (citation omitted). Moreover, Uniloc 14 USA maintains its principal place of business here. Thus, there is a compelling 15 local interest in adjudicating this case in the Central District of California. See also 16 In re Hoffman-La Roche, 587 F.3d at 1338 ("if there are significant connections 17 between a particular venue and the events that gave rise to a suit, this factor should 18 be weighed in that venue's favor"); Fujitsu Ltd. v. Tellabs, Inc., 639 F. Supp. 2d 19 761, 769 (E.D. Tex. 2009) ("Because the accused products are designed and 20 developed in Illinois and defendants' principal places of business are located 21 within the Northern District of Illinois, that district certainly has a particularized 22 local interest in the dispute."). 23 In contrast, Uniloc does not even argue that there is a particular local interest 24 that would be served by having this litigation against Symantec decided in the 25 Eastern District of Texas. Indeed, the residents of that district have virtually no 26 connection to the events giving rise to this litigation. As a general principle, "local 27 interests that `could apply virtually to any judicial district or division in the United 28 States' are disregarded in favor of particularized local interests." Fujitsu, 639 F.
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1 Supp. 2d at 769 (citation omitted). Symantec's products are sold throughout the 2 United States. Accordingly, "the citizens of the Eastern District of Texas have no 3 more or less of a meaningful connection to this case than any other venue." In re 4 TS Tech USA Corp., 551 F.3d 1315, 1321 (Fed. Cir. 2009). 5 Because the case against Symantec has significant connections to the Central 6 District of California and lacks any meaningful connection to the Eastern District 7 of Texas, this factor weighs heavily against transfer. 8 9 10 i. Applicability of each forum State's substantive law weighs against transfer Symantec and XtreamLok agree with Uniloc that the patent issues would be

11 resolved under federal patent law. (Motion at 16.) However, XtreamLok has 12 asserted a California common law claim for Money Paid in this forum. Therefore, 13 this forum would be the preferred one to adjudicate that claim, and therefore this 14 factor weighs against transfer.5 15 16 17 j. The availability of compulsory process weighs against transfer Although Uniloc does not discuss it, the availability of compulsory process

18 to compel attendance of unwilling non-party witnesses is a relevant factor in the 19 transfer analysis. Metz, 674 F. Supp. 2d at 1145. Here, the power of courts in the 20 Eastern District of Texas to compel process does not apply to any third-party 21 witnesses known to Symantec. On the other hand, this Court has the power to 22 compel process over several third-party witnesses. These include the former 23 Symantec developers of the accused technology who still reside in the Central 24 25 To the extent Uniloc is suggesting that the rest of the case should be 26 transferred, but this claim should not be, the suggestion has no merit. Even a 27 cursory review of that claim demonstrates that all of the patent claims and issues must be resolved in order to resolve that claim. 28
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1 District of California, and the law firm and lead attorney who prosecuted the 2 asserted patent, also located in the Central District of California. See Kazanegras 3 Decl. ¶ 7; Flagel Decl. ¶ 9, Ex. F. Thus, this factor weighs against transfer. See In 4 re Genentech, Inc., 566 F.3d at 1345 (the "venue with usable subpoena power" 5 weighs in favor of that venue for transfer purposes, "and not only slightly"). 6 7 B. The First-to-File Rule Does Not Support Dismissal As a last ditch effort, Uniloc argues that Symantec's claims should be

8 dismissed under the first-to-file rule. The first-to-file rule is a "generally 9 recognized doctrine of federal comity which permits a district court to decline 10 jurisdiction over an action when a complaint involving the same parties and issues 11 has already been filed in another district." Pacesetter Sys., Inc. v. Medtronic, Inc., 12 678 F.2d 93, 94-95 (9th Cir. 1982). "The most basic aspect of the first-to-file rule 13 is that it is discretionary." Alltrade, Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 628 14 (9th Cir. 1991). In applying the rule, courts consider three factors: "(1) the 15 chronology of the two actions; (2) the similarity of the parties, and (3) the 16 similarity of the issues." See id. at 625. The first-to-file rule does not support 17 Uniloc, for several reasons. 18 First, this Court is the first court with jurisdiction over this action, dating 19 back to Uniloc's filing of suit in 2008. This Court is the court that the parties 20 stipulated, in 2008, would have jurisdiction over this dispute. The fact that Uniloc 21 filed its complaint in Texas after dismissing the 2008 action and two weeks before 22 Symantec filed the present action does not change this reality. Moreover, Uniloc's 23 suit in Texas, unlike its Counterclaims here, does not (and for jurisdictional 24 reasons could not) name XtreamLok as a defendant. Instead, it names eleven other 25 companies, all unrelated to Symantec, and accuses them of patent infringement by 26 reason of selling numerous unrelated products. See Flagel Decl., Ex. A; 27 Kazanegras Decl. ¶ 5. Similarly, Uniloc Corporation Pty Limited is a defendant 28 and counterclaim plaintiff in this action, but it is not a party in Uniloc's Texas suit.
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1 Accordingly, this lawsuit is essentially the first-filed action. In any event, the 2 parties and issues in this case are substantially different from those in the Texas 3 case. 4 Second, even if the factors somehow permitted application of the rule, this 5 Court "can, in the exercise of [its] discretion, dispense with the first-filed principle 6 for reasons of equity." Alltrade, 946 F.2d at 628. Uniloc's agreements that this 7 Court would adjudicate its infringement claims against Symantec and XtreamLok, 8 and this Court's prior Order, provide ample reason to dispense with the rule. See 9 Hy Cite Corp. v. Advanced Mktg. Int'l, Inc., No. 05-C-722-S, 2006 U.S. Dist. 10 LEXIS 18615, at *10 (W.D. Wis. Apr. 10, 2006) ("The interests of justice mandate 11 that the first-to-file rule should not be applied . . . because of the forum selection 12 clause."); Valpak of Cincinnati, Inc. v. Valpak Direct Mktg. Sys., Inc., No. 1:0513 CV-00510, 2005 WL 3244321, at *3 (S.D. Ohio Nov. 30, 2005) ("One of the 14 `special circumstances' justifying departure from the first-to-file rule is the 15 presence of a forum selection clause"). 16 Third, because Uniloc acted in bad faith by disregarding its agreements and 17 this Court's Order, and by maneuvering to get its claims against Symantec out of 18 the first California action and into Texas, Uniloc should not be entitled to the 19 benefit of the first-to-file rule. See Alltrade, 946 F.2d at 628 ("Circumstances 20 under which an exception to the first-to-file rule typically will be made include bad 21 faith, anticipatory suit and forum shopping.") (citations omitted). 22 Finally, because the convenience factors weigh strongly against a transfer, 23 the first-to-file rule should not be applied. See Micron Tech., Inc. v. Mosaid 24 Techs., Inc., 518 F.3d 897, 904 (Fed. Cir. 2008) (explaining that "instead 25 of . . . automatically going with the first filed action," a court should weigh the 26 Section 1404(a) convenience factors); Serco Servs. Co., L.P. v. Kelley Co., Inc., 51 27 F.3d 1037, 1038 (Fed. Cir. 1995) (affirming dismissal of first-filed action where 28
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1 convenience of witnesses and location of evidence favored the second-filed 2 forum). 3 III. 4 CONCLUSION Uniloc's motion should be denied. It has not met its burden of

5 demonstrating that this action could have been brought in Texas, or that the 6 convenience and justice factors favor transfer. In fact, this action could not have 7 been brought in Texas, and the relevant factors weigh heavily against transfer. 8 Moreover, this action should not be dismissed under the first-to-file rule, as the 9 rule simply does not apply to this case. 10 11 Dated: November 29, 2010 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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Respectfully submitted, LATHAM & WATKINS LLP

By /s/ Mark A. Flagel Mark A. Flagel Attorneys for Plaintiffs SYMANTEC CORPORATION AND XTREAMLOK, PTY

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