Microsoft Corporation v. TIVO Inc

Filing 25

DECLARATION of Shane Cramer filed by Plaintiff Microsoft Corporation re 21 MOTION to Stay Pursuant to 28 U.S.C. § 1659 and Transfer Venue Pursuant to 28 U.S.C. § 1404(a) MOTION to Stay Pursuant to 28 U.S.C. § 1659 and Transfer Venue Pursuant to 28 U.S.C. § 1404(a) (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7)(Cramer, Shane)

Microsoft Corporation v. TIVO Inc

Doc. 25 Att. 6

EXHIBIT 6

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION TIVO INC., Plaintiff, vs. 1. AT&T INC.; 2. AT&T OPERATIONS, INC.; 3. AT&T SERVICES, INC.; 4. AT&T VIDEO SERVICES, INC.; 5. SBC INTERNET SERVICES, INC.; 6. SOUTHWESTERN BELL TELEPHONE COMPANY. Defendants, and MICROSOFT CORPORATION, Intervenor.
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Civil Action No. 2:09-CV-259-DF

Jury Trial Demanded

TIVO'S OPPOSITION TO MICROSOFT AND AT&T OPERATIONS' MOTION TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA UPON SEVERANCE

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TABLE OF CONTENTS Page INTRODUCTION...........................................................................................................................1 FACTUAL BACKGROUND .........................................................................................................3 I. II. III. IV. The Alleged Infringement Has A Nexus To This District ..................................................3 The Technology At Issue Has A Nexus To This District ...................................................4 TiVo Has A Nexus To This District....................................................................................5 Defendants And The Movants Have A Nexus To This District .........................................6

ARGUMENT ..................................................................................................................................7 I. This Court Should Not Transfer This Case To The Northern District of California.............................................................................................................................7 The Private Interest Factors Weigh Against Transfer .............................................7 Practical Problems Making Trial Easy, Expeditious And Inexpensive..................................................................................................7 Relative Ease Of Access To Sources Of Proof .........................................11 Availability Of Compulsory Process To Secure Attendance Of Witnesses .............................................................................................12 Cost Of Attendance For Willing Witnesses ..............................................13

2. 3.

The Public Interest Factors Weigh Against Transfer ............................................14 Local Interest In Having Local Issues Decided At Home.........................14 Administrative Difficulties Flowing From Court Congestion ..................15 Familiarity Of The Forum With The Law That Will Govern The Case ....................................................................................................15

C.

TiVo's Choice Of Forum Is Entitled To Deference ..............................................15

CONCLUSION .............................................................................................................................15

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TABLE OF AUTHORITIES Page(s) Cases AMS Staff Leasing v. Starving Students, 2003 WL 21436476 (N.D. Tex. 2003) .............................................................................. 13 Connectel, LLC v. Cisco Sys., 2005 U.S. Dist. LEXIS 2252 (E.D. Tex.).......................................................................... 12 Deep Nines, Inc. v. McAfee, Inc., 2009 U.S. Dist. LEXIS 104817 (E.D. Tex.)...................................................................... 15 Dish Network Corp. et al v. TiVo, Inc., No. 1:08-CV-327, at 5 (D. Del., May 28, 2009) ................................................................. 5 In re Genentech, Inc., 566 F. 3d 1338 (Fed. Cir. 2009) ........................................................................................ 15 In re TS Tech United States Corp., 551 F.3d 1315 (Fed. Cir. 2008) ..................................................................................... 8, 13 In re Volkswagen AG, 371 F. 3d 201 (5th Cir. 2004)............................................................................................ 14 In re Volkswagen of Am., Inc., 506 F.3d 376 (5th Cir. 2007)....................................................................................... 12, 15 In re Volkswagen of America, Inc., 545 F. 3d 304 (5th Cir. 2008).............................................................................. 7, 8, 13, 14 In re Volkswagen, 566 F.3d 1349 (Fed. Cir. 2009) ..................................................................................... 8, 10 In re VTech Communications, Inc., Misc. No. 909, 2010 WL 46332 (Fed. Cir. Jan. 6, 2010).................................................... 9 In re Zimmer Holdings, Inc., 2010 U.S. App. LEXIS 12939 (Fed. Cir. June 24, 2010) ........................................... 10, 11 j2 Global Communs., Inc. v. Protus IP Solutions, Inc., 2008 U.S. Dist. LEXIS 103609 (E.D. Tex. 2008)............................................................. 12 Jackson v. Intel Corp., 2009 U.S. Dist. LEXIS 22117 (E.D. Tex. 2009)............................................................... 11 Logan v. Hormel Foods Corp., No. 6:04-cv-211, 2004 WL 5216126 (E.D. Tex. Aug. 25, 2004) ....................................... 9 MedIdea LLC v. Zimmer Holdings, Inc., Case No. 2:09-cv-258, 2010 WL 796738 (E.D.Tex.) ....................................................... 11 MHL Tech. v. Nissan Motor Co., No. 2:07-cv-289, 2009 WL 440627 (E.D. Tex. Feb. 23, 2009) .................................... 9, 10 - ii -

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3 Monster Cable Prods., Inc. v. Trippe Mfg. Co., 2008 U.S. Dist. LEXIS 47198 (E.D. Tex.).......................................................................... 7 4 Network-1 Sec. Solutions, Inc. v. D-Link Corp., 433 F. Supp. 2d 795 (E.D. Tex. 2006) .............................................................................. 12 5 6 Norwood v. Kirkpatrick, 349 U.S. 29, 32 (1955), cert. denied, 129 S. Ct. 1336 (2009)............................................. 7 7 Odom v. Microsoft Corp., 596 F. Supp. 2d 995 (E.D. Tex. 2009) ........................................................................ 12, 13 8 9 Realtime Data v. Morgan Stanley, No. 6:09-cv-00327-LED, 2010 WL 1064474 (E.D. Tex. Mar. 18, 2010) .......................... 8 10 Red River Fiber Optic Corp. v. Verizon Services Corp., No. 2:08- cv-00215-TJW, 2010 WL 1076119 (E.D. Tex. Mar. 23, 2010) ..................... 8, 9 11 12 Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997).............................. 7, 8 13 TiVo Inc. v. EchoStar Communs Corp., 446 F. Supp. 2d 664 (E.D. Tex. 2006) ................................................................................ 4 14 TiVo Inc. v. EchoStar Communs Corp., 516 F.3d 1290 (Fed. Cir. 2008) ........................................................................................... 1 15 16 TiVo Inc. v. EchoStar Corp., 2:04-cv-00001 (E.D. Tex.) .................................................................................................. 1 17 Two-Way Media, LLC v. AT&T, Inc., Civil No. CC-8-116, 2009 U.S. Dist. LEXIS 47700 (S.D. Tex. 2009)............... 2, 3, 12, 13 18 19 Two-Way Media, LLC v. AT&T, Inc., No. 09-cv-00476 (W.D. Tex 2009) ..................................................................................... 6 20 Zoltar Satellite Sys. v. LG Elecs. Mobile Communs. Co., 402 F. Supp. 2d 731 (E.D. Tex. 2005) ............................................................................ 7, 9 21 22 Statutes 23 28 U.S.C. §1404(a).................................................................................................................... 7, 13 24 35 U.S.C. § 282 ............................................................................................................................. 10 25 35 U.S.C. § 307 ............................................................................................................................. 10 26 Fed. R. Civ. P. Rule 45(b)(2) ........................................................................................................ 13 27 28
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INTRODUCTION In an attempt to delay the resolution of this dispute, Microsoft Corporation ("Microsoft") and AT&T Operations, Inc. ("AT&T Operations"), (collectively, the "movants"), have moved to transfer this case to the Northern District of California, nearly ten months after TiVo Inc. ("TiVo") filed its complaint for patent infringement against AT&T Inc. ("AT&T"). The movants themselves assert that Defendant AT&T is not subject to personal jurisdiction in California. Accordingly, movants' transfer request depends on this Court severing the claims involving Microsoft and AT&T Operations and staying the proceedings involving AT&T pending adjudication of the transferred claim. But, even assuming the improbable, namely that this Court would grant the motion to sever and stay that movants have filed along with the current motion and hold that AT&T is not a party of interest, movants' transfer motion would still lack merit. Movants do not come close to carrying the heavy burden of demonstrating good cause for transfer to California. This is not a case where the patentee has gone forum-shopping for a district that has no connection to the parties' dispute. To the contrary, TiVo filed a patent infringement suit against AT&T in this District because it bears a strong nexus to the parties, alleged infringement, and technology at issue. First, this Court is uniquely qualified to preside over this case given that it was involved in an earlier case concerning both the same technology and the core patent also at issue here. TiVo Inc. v. EchoStar Corp., 2:04-cv-00001 (E.D. Tex.) (the "EchoStar action"). Over the last six years, Chief Judge Folsom issued a claim construction ruling for the relevant claims of the core patent, ruled on motions for summary judgment and in limine and presided over a jury trial. Accordingly, this Court has already invested substantial time and resources becoming familiar with the technology at issue in this case. See TiVo Inc. v. EchoStar Communs Corp., 516 F.3d 1290 (Fed. Cir. 2008). The Federal Circuit and other courts have recognized that issues of judicial economy, such a court's familiarity with the patented technology, may be dispositive of the decision about where the case should go forward. Here, proceeding in another district would result in delay in a case where swift resolution is at an absolute premium. Indeed, TiVo seeks to resolve this case as quickly as possible in order to

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1 obtain effective relief. Each day, thousands of new customers purchase the accused U-verse 2 products and services. Declaration of Azar Mouzari ("Mouzari Decl.") at Ex. 1. If TiVo's 3 allegations prove true, then AT&T is accumulating a massive customer base at TiVo's expense on 4 the basis of an infringing product. Delay ­ apparently the very point of movants' transfer motion ­ 5 is the last thing this case needs. 6 Second, the parties have a strong nexus with Texas. It is undisputed that AT&T's corporate

7 headquarters is in Texas. All the other Defendants, including AT&T Operations, are also based in 8 Texas. AT&T's U-verse and EchoStar products and services lie at the heart of TiVo's patent 9 infringement claims. As admitted by AT&T in the Two-Way Media case, the U-verse business is 10 based in Texas.1 The network engineering, testing, and integration of the accused U-verse products 11 and services take place in Texas. Project management, financial reporting, and financial analysis for 12 the accused U-verse products and services also occur in Texas. Employees that work in the U-verse 13 business are based in Texas. In fact, TiVo has identified over 45 likely witnesses living in Texas, 14 including 10 witnesses from nonparties who could be compelled to testify at trial by this Court, if 15 necessary. TiVo provides its products and services throughout Texas, and, in particular, in this 16 District. Declaration of Pavel Kovar ("Kovar Decl.") at ¶ 3. TiVo also houses up to 11 million 17 dollars of inventory in its distribution center in Fort Worth, Texas, and has employees based in 18 Texas. Id. at ¶¶ 4-7. 19 Third, AT&T purposefully directed its allegedly infringing activities at Texas. AT&T

20 targeted Texas customers to introduce the first rollout of the U-verse products and services accused 21 of infringement in this lawsuit. Since then, the accused products and services have been offered for 22 sale and sold throughout Texas, including in the Eastern District of Texas. Citizens of Allen, Frisco, 23 Lebanon, The Colony, and Plano, for example, can purchase the accused U-verse products or 24 services through AT&T's active website, which offers for sale the U-verse products and services to 25 citizens of those towns. Mouzari Decl. at Ex. 2. 26 27 28
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AT&T's admissions are taken from the Two-Way Media, LLC v. AT&T, Inc., Civil No. CC-8-116, 2009 U.S. Dist. LEXIS 47700 *10-35 (S.D. Tex. 2009) case. Two-Way Media accused AT&T's U-verse products and services of patent infringement. Defendant AT&T moved to transfer venue to United States District Court for the Western District of Texas. AT&T's motion to transfer was granted.

1

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1

The movants' assertion that the convenience of the parties and witnesses favors transfer to

2 California is simply wrong. This is a Texas lawsuit through and through. 3 4 I. 5 FACTUAL BACKGROUND The Alleged Infringement Has A Nexus To This District TiVo, a pioneer in home entertainment, created the first commercially viable digital video

6 recorder ("DVR"). On August 26, 2009, TiVo filed this patent infringement lawsuit to put an end to 7 AT&T's ongoing and past infringement of three patents. 8 TiVo alleges ongoing infringement by AT&T's U-verse products and services. AT&T's U-

9 verse products and services are offered in over 19 states to over 1.3 million customers, including 10 customers in the Eastern District of Texas. Id. at Ex. 1. For example, customers in Allen, Frisco, 11 Lebanon, The Colony, and Plano are offered U-verse products and services, as AT&T's website 12 makes clear. Id. at Ex. 2. Further, AT&T specifically targeted Texas customers to introduce the 13 first rollout of the accused U-verse products and services. Id. That the accused U-verse products 14 and services have strong ties to Texas is unmistakable: 15 16 17 18 19 20 21 22 23 24 · · · · · · AT&T's U-verse business is based in San Antonio, Texas; AT&T's senior management for U-verse is based in San Antonio; AT&T's teams responsible for managing the U-verse business and for financial analysis and reporting related to U-verse products and services are located in San Antonio; Testing and integration of U-verse was performed at AT&T laboratory facilities in Austin; The team that conducted the testing and integration of U-verse in Austin includes approximately 45 people who are based in Austin; Approximately 85 employees in San Antonio were involved in the U-verse project.2 In addition to the accused U-verse products and services, TiVo also seeks to recover

25 damages arising from AT&T's past infringement, including AT&T's admitted and extensive sales of 26 27 28
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Two-Way Media, supra note 2.

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1 EchoStar products that this Court has already determined infringe TiVo's patent claims.3 2 Accordingly, this Court already addressed in the EchoStar action patented technology at issue here. 3 Because of the undeniable nexus between the accused products and services and this District,

4 the movants seek to change the subject by arguing about a purported link between Microsoft and 5 Microsoft's Mediaroom software and the Northern District of California. There is however one 6 major flaw to this reasoning; TiVo has not accused Microsoft's Mediaroom software itself of patent 7 infringement. Instead, Mediaroom is only one component in the accused AT&T U-verse products. 8 Despite the movants' lengthy discussion about Microsoft, its Mediaroom software and alleged ties to 9 California, this case is about AT&T's specifically identified products and services that infringe 10 TiVo's patents, including AT&T's sales of the infringing EchoStar products, which do not utilize 11 the Mediaroom software. Products and parties not at issue in this lawsuit cannot establish a nexus 12 with the Northern District of California. 13 II. 14 The Technology At Issue Has A Nexus To This District This Court is exceedingly well-qualified to preside over this case because of its unique

15 knowledge about the technology at issue. In 2004, TiVo sued the five parties, collectively referred 16 to as EchoStar, in this District, alleging that they had infringed various claims of TiVo's U.S. Patent 17 No. 6,233,389 ("the `389 patent"), entitled "Multimedia Time Warping System." In April 2006, 18 after nearly three years of protracted litigation, a jury concluded that EchoStar willfully infringed 19 TiVo's patented DVR technology and awarded TiVo $73 million in compensatory damages. TiVo 20 Inc. v. EchoStar Communs Corp., 446 F. Supp. 2d 664 (E.D. Tex. 2006) (Folsom, J.). And as 21 mentioned previously, the accused products in the EchoStar action are also at issue in this case given 22 AT&T's past infringing use. 23 The present matter includes two additional patents ­ and both of them are related to the `389

24 patent that the Court has spent years litigating. The first, U.S. Patent No. 7,529,465 ("the `465 25 26 27 28
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During appeal in the EchoStar action, AT&T submitted a motion and amicus brief in support of EchoStar in which AT&T admitted that it sold the adjudged infringing EchoStar products to hundreds of thousands of customers: "AT&T is part of one of the world's largest communications companies and a reseller of EchoStar's Dish Network® digital satellite television service. As a feature of this service, digital video recorders ("DVRs") are provided to AT&T's customers, of which there are presently several hundred thousand. In the present matter, TiVo's request for relief includes compensation for these adjudged infringing products." See AT&T Video Services, Inc.'s Motion for Leave to File Amicus Curiae Brief in Support of Defendants-Appellants (April 24, 2007) in TiVo, Inc. v. EchoStar Communs. Corp., et al, Case No. 2006-1574; 2007-1022.

3

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1 patent"), entitled "System for Time Shifting Multimedia Content Streams," is a continuation of the 2 `389 patent and includes a nearly identical specification. The second, U.S. Patent No. 7,493,015 3 ("the `015 patent"), entitled "Automatic Playback Overshoot Correction System," also shares 13 4 figures and numerous paragraphs of specification in common with the `389 patent. Just like the `389 5 patent, both these additional patents cover technology relating to TiVo's digital video recording and 6 video playback. The movants' assertion that twenty of the twenty-two claims at issue here "were 7 not at issue in the EchoStar litigation" is misleading. Movants' Mot. to Transfer at 14. All twenty8 two claims relate to the same DVR technology at issue in the EchoStar action. And, of the twenty9 two claims, sixteen are contained in the same patent at issue in the EchoStar action, the `389 patent, 10 or in its continuation, the `465 patent. 11 This Court's knowledge of the complex patented technology and products at issue render it

12 uniquely qualified to preside over this case. In the EchoStar action, Chief Judge Folsom issued 13 claim construction rulings, decided motions for summary judgment, presided over a jury trial, 14 conducted a bench trial, adjudicated post-trial motions, and issued a permanent injunction, which the 15 Federal Circuit affirmed in all pertinent respects on appeal. This Court also presided over contempt 16 proceedings, and issued a contempt order that the Federal Circuit has since affirmed in all respects 17 (and is now subject to en banc review). Judge Farnan transferred a related case to this district from 18 the District of Delaware in light of, among other things, Chief Judge Folsom's "expertise in the 19 relevant subject matter." Dish Network Corp. et al v. TiVo, Inc., No. 1:08-CV-327, at 5 (D. Del., 20 May 28, 2009). 21 Movants, however, seek to transfer the case to the Northern District of California, a district

22 devoid of any special knowledge about the issues of this case, but with a more congested docket and 23 a substantially longer median time to trial. Appendix A. This is nothing but an attempt to delay that 24 should not meet with success. 25 III. 26 TiVo Has A Nexus To This District TiVo also maintains a strong local presence around this District. For example, TiVo offers

27 its products and services nationwide, including in this District, using a centrally located distribution 28 center, operated by ATC Logistics & Electronics in Texas. Kovar Decl. at ¶ 4. Specifically, TiVo
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1 distributes the vast majority--over 90%--of its products from a logistics center in Fort Worth. Id. 2 Indeed, at any given time over TiVo's last fiscal year, TiVo housed between $4.2 million and $11.4 3 million worth of new and refurbished inventory in Fort Worth, Texas. Id. at ¶ 5. On average over 4 the last fiscal year, TiVo maintained approximately $6.8 million worth of inventory in Fort Worth. 5 Id. In addition, two of TiVo's employees live in Texas, including one that lives specifically in the 6 Eastern District. Id. at ¶ 7. 7 IV. 8 Defendants And The Movants Have A Nexus To This District The movants do not deny that Defendant AT&T's ties to Texas are strong. For example,

9 AT&T's global corporate headquarters is situated in Texas. The movants further admit that AT&T 10 is not subject to personal jurisdiction in California. To set aside this blockade to their motion to 11 transfer, the movants claim, however, that "AT&T Inc. is not the real party in interest," and that the 12 Court should grant AT&T Operations' request to intervene as the real party of interest. AT&T's 13 Mot. to Sever at 1. It should be noted however that the newly-minted assertion that AT&T 14 Operations is "the real party of interest" comes nearly ten months after TiVo filed its complaint 15 against AT&T. Id. 16 To lessen its undeniable Texas connection, AT&T hides behind a façade--calling itself a

17 mere "holding company." Id. But, its actions show otherwise. Despite AT&T's contrary 18 allegations, AT&T is one of the entities responsible for the accused U-verse products and services. 19 TiVo's Opp. to Mot. to Sever and Stay (filed concurrently) at III.B.1. Even if this were not the case, 20 no practical reason exists to transfer the case. The nexus between the parties, the alleged 21 infringement and accused products and this District would remain just as strong. Indeed, all the 22 other Defendants, including AT&T Operations, AT&T Services, Inc., AT&T Video Services, Inc., 23 SBC Internet Services, Inc., and Southwestern Bell Telephone Company, operate and are based in 24 Texas.4 TiVo's Amended Complaint at 6-11. Microsoft also provides products and services in the 25 26
4

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TiVo has been negotiating with AT&T the need to add these related entities since December 2009. Mouzari Decl. at Ex. 4. Because the parties have been unable to come to terms, TiVo filed an amended complaint adding these entities on June 23, 2010, several months ahead of the deadline dictated by the scheduling order. TiVo does not expect the new entities to alter the parameters of discovery or trial. TiVo expects AT&T to stipulate to treat all named Defendants as one vis-à-vis the U-verse product and services, as it did in Two-Way Media, LLC v. AT&T, Inc., No. 09-cv-00476 (W.D. Tex 2009). Id. at Ex. 5.

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1 Eastern District of Texas. Mouzari Decl. at Ex. 3. Further, this Court's unique knowledge of the 2 technology at issue would also remain unaffected. 3 4 I. 5 ARGUMENT This Court Should Not Transfer This Case To The Northern District of California "For the convenience of parties and witnesses, in the interest of justice, a district court may

6 transfer any civil action to any other district court where it might have been brought." 28 U.S.C. 7 §1404(a). The movants, as the party seeking transfer, bear a heavy burden of demonstrating that this 8 case should be transferred to the Northern District of California. They shoulder the burden of 9 showing "good cause" for transfer, which means a showing "that the transferee venue is clearly 10 more convenient." In re Volkswagen of America, Inc. ("Volkswagen II"), 545 F. 3d 304, 314 (5th 11 Cir. 2008) (citing Norwood v. Kirkpatrick, 349 U.S. 29, 32 (1955), cert. denied, 129 S. Ct. 1336 12 (2009). In determining whether the movants have met the heavy burden, "the court must consider 13 several private and public interest factors." Monster Cable Prods., Inc. v. Trippe Mfg. Co., 2008 14 U.S. Dist. LEXIS 47198 (E.D. Tex.). These factors support adjudication before this Court. 15 16 A. The Private Interest Factors Weigh Against Transfer

The private interest factors include: 1) practical problems that make trial of a case easy,

17 expeditious and inexpensive; 2) the relative ease of access to sources of proof; 3) the availability of 18 compulsory process to secure the attendance of witnesses; and 4) the cost of attendance for willing 19 witnesses. Volkswagen II, 545 F. 3d at 315. 20 21 1. Practical Problems Making Trial Easy, Expeditious And Inexpensive

It is well-established that "[i]n cases that involve a highly technical subject matter, such as

22 patent litigation, judicial economy may be best served when the case is heard by a court already 23 familiar with the issues of the case." Zoltar Satellite Sys. v. LG Elecs. Mobile Communs. Co., 402 F. 24 Supp. 2d 731, 735 (E.D. Tex. 2005). See also Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 25 1559, 1565 (Fed. Cir. 1997) ("[I]n a case such as this in which several highly technical factual issues 26 are presented and the other relevant factors are in equipoise, the interest of judicial economy may 27 favor transfer to a court that has become familiar with the issues."). The Federal Circuit has 28 explicitly stated that, in patent cases, the consideration of the interest of justice, which includes
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1 judicial economy, may trump the other private and public interest factors when one court is already 2 familiar with the issues involved in the case. Regents of Univ. of Cal., 119 F. 3d at 1565 3 ("[c]onsideration of the interest of justice, which includes judicial economy, may be determinative to 4 a particular transfer motion, even if the convenience of the parties and witnesses might call for a 5 different result") (citations omitted). See also In re Volkswagen ("Volkswagen III"), 566 F.3d 1349, 6 1351 (Fed. Cir. 2009) (finding that "judicial economy is served by having the same district court try 7 the cases involving the same patents"); Red River Fiber Optic Corp. v. Verizon Services Corp., No. 2:08- cv-00215-TJW, 2010 WL 1076119 at *14 (E.D. Tex. Mar. 23, 2010) (finding that where a 8 Court has done "the heavy lifting involved in claim construction," the interests of justice "weigh 9 heavily against transfer"); Realtime Data v. Morgan Stanley, No. 6:09-cv-00327-LED, 2010 WL 10 1064474 at *20 (E.D. Tex. Mar. 18, 2010) (finding "the Court's extensive involvement with the 11 technology and issues involved in the previous litigation is an overriding consideration when 12 weighing the private and public interest factors"). 13 Movants all but ignore this principle, and attempt to rely on the more generic cases in which 14 the courts required transfer out of this district. See, e.g., Volkswagen II, 545 F.3d 304; In re TS Tech 15 United States Corp., 551 F.3d 1315 (Fed. Cir. 2008); In re Genentech Inc., 566 F.3d 1338 (Fed. Cir. 16 2009). But none of these cases involved transfer from a Court with years of experience litigating 17 complex patented technology. Further, none of these cases disturbs the legal principle discussed 18 above, namely that judicial economy is an important factor in the transfer calculus. 19 Here, this Court invested substantial time and resources to learn and understand the same 20 technology, and legal issues present in this case. In 2004, TiVo sued EchoStar for patent 21 infringement in this District. Chief Judge Folsom reviewed tutorials on the relevant technology, 22 conducted claim construction proceedings, issued claim construction orders, considered motions for 23 summary judgment and motions in limine, conducted a jury trial in which he heard invalidity and 24 infringement arguments, prepared jury instructions, and considered motions for judgment as a matter 25 of law. To transfer this case would require duplication by the Northern District of California of the 26 extensive work already performed by this Court. In other patent cases, similar considerations have 27 been decisive - so much so that they have even convinced courts to grant venue transfer motions 28 (overcoming the weight attached to a plaintiff's choice of forum) to courts already familiar with the
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1 patented technology. See Zoltar Satellite Sys., 402 F. Supp. 2d at 735 (granting transfer to court that 2 had already construed three out of the four patents in prior action against different defendant and 3 was intimately familiar with the relevant technology, in part because denying the motion to transfer 4 would require the court to engage in duplicative and unnecessary work); MHL Tech. v. Nissan Motor 5 Co., No. 2:07-cv-289, 2009 WL 440627 at *7 (E.D. Tex. Feb. 23, 2009) (retaining case for purposes 6 of judicial economy where another case against different defendants involving the same patents was 7 also pending before the court); Logan v. Hormel Foods Corp., No. 6:04-cv-211, 2004 WL 5216126 at *2 (E.D. Tex. Aug. 25, 2004) (granting motion to transfer to court that had adjudicated a previous 8 case involving the same patent but different defendants; reasoning that there was no reason to 9 duplicate that court's work and that doing so would "risk inconsistent claim constructions, create 10 greater uncertainty regarding the patent's scope, and impede the administration of justice"). 11 Accordingly, the EchoStar action, and its claim construction ruling, alone create efficiencies 12 sufficient to preclude transfer. See In re VTech Communications, Inc., Misc. No. 909, 2010 WL 13 46332 at *2 (Fed. Cir. Jan. 6, 2010) (denying mandamus relief for refusal to transfer where the 14 district court relied in part on its "familiarity with the case and the completion of claim 15 construction."). In fact, where a court has "previously adjudicated a lawsuit involving the same 16 patents with the same plaintiff" then that court "has already performed much of the heavy lifting 17 involved in claim construction and the interests of justice weigh heavily against transfer." Red River 18 Fiber Optic Corp. v. Verizon Services Corp., No. 2:08-cv-00215-TJW, 2010 WL 1076119 at *4 19 (E.D. Tex. Mar. 23, 2010). 20 In pursuing a transfer, the movants argue that "the overlap between this case and...the

21 EchoStar litigation...is small" in part because "two claims from the `389 patent that were asserted 22 against EchoStar are currently rejected in a pending reexamination proceeding before the Patent and 23 Trademark Office." Movants' Mot. to Transfer at 14. The movants further argue that "the final 24 office action rejecting the asserted claims of the '389 patent minimizes or completely eliminates any 25 potential argument that judicial economy prevents the transfer of this action to the Northern District 26 of California." Movants' Notice of Additional Authority at 2-3. Yet, the reexamination proceeding 27 has no bearing on movants' meritless motion. The pending second reexamination of the `389 patent 28 is not complete. Although the PTO issued a "final" office action, "final" in this context is anything
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1 but "final."5 TiVo may respond to the examiner's arguments in a variety of ways, including by 2 appealing the examiner's decision. 37 CFR 1.116 In any event, the PTO will not issue a certificate 3 of patentability, unpatentability, or claim cancellation until the "time for appeal has expired or any 4 appeal proceeding has terminated." 35 U.S.C. § 307. Accordingly, the `389 patent remains fully 5 enforceable and is presumed valid. 35 U.S.C. § 282. Further, the movants' claim that eliminating 6 the `389 patent would eliminate the overlap between this case and EchoStar is flawed. Even were 7 the `389 patent removed from this case, the `465 patent would remain. The `465 patent is a continuation of the `389 patent and contains a nearly identical specification. 8 The two additional patents at issue here in no way minimize the waste of judicial resources 9 that a transfer of this case would cause. The two additional patents do not introduce new 10 technology. The `465 patent is a continuation of the `389 patent and includes a nearly identical 11 specification, and the `015 patent also shares 13 figures and numerous paragraphs of specification in 12 common with the `389 patent. Like the `389 patent, both these patents relate solely to TiVo's DVR 13 technology. Further, even a partial overlap of significant issues in pending matters can be a 14 dispositive reason for this Court to deny the motion to transfer. Indeed, in Volkswagen III, dozens of 15 different defendants had each manufactured and sold tire monitoring systems. See MHL Tech. v. 16 Nissan Motor Co., No. 2:07-cv-289, 2009 WL 440627 at *2 (affirmed by Volkswagen III, 566 F.3d 17 at 1351). The Federal Circuit ruled that although the cases, "may not involve precisely the same 18 issues, there will be significant overlap and a familiarity with the patents could preserve time and 19 resources," such that a motion to transfer should be denied. Id. 20 In addition, the movants misleadingly cite In re Zimmer Holdings, Inc., 2010 U.S. App.

21 LEXIS 12939 (Fed. Cir. June 24, 2010) to argue that "the existence of a second, ongoing lawsuit 22 involving `the same patent, the same plaintiff, and similar technology' d[oes] not outweigh the 23 convenience factors favoring transfer" in this case. Movants' Second Notice of Additional 24 Authority at 1. Yet, the movants fail to discuss the important distinctions that exist between this 25 case and the present matter. First, unlike in the present matter where the Court has expended 26 important judicial resources litigating the technology at issue and presided over a jury trial, in 27 Zimmer Holdings, this District had no prior experience with the technology and patents at issue. The 28
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For example, in the first reexamination of the `389 patent, the PTO issued a "final" office action where several of the patent's claims were rejected. Mouzari Decl. at Ex. 6. The PTO later allowed those claims without change. Id. at Ex. 7.

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1 only overlap cited by the Plaintiff was the existence of another pending suit "in the infancy stages of 2 litigation" filed in the District by the Plaintiff. Id. at *9-10. Further, unlike in this case where the 3 accused products have strong ties to this District, the Plaintiff operates in this District and has Texas4 based employees, and all Defendants are based in Texas and operate in this District, in Zimmer 5 Holdings, no such ties existed. In fact, the Federal Court stated that "[t]his is a classic case where 6 the plaintiff is attempting to game the system by artificially seeking to establish venue by sharing 7 office space with another of the trial counsel's clients." Id. at *8. Finally, TiVo has named 45 potential witnesses, and specifically 10 non-party witnesses, in, and around, this District, whereas 8 the Plaintiff in Zimmer Holdings could not name a single non-party witness living in this District. 9 MedIdea LLC v. Zimmer Holdings, Inc., Case No. 2:09-cv-258, 2010 WL 796738 *2 (E.D.Tex.). 10 Hence, the movants' arguments miss the point. Because of this Court's familiarity with the 11 technology at issue, the interests of judicial economy so strongly disfavor transfer, that "other factors 12 may be afforded little or no weight." Jackson v. Intel Corp., 2009 U.S. Dist. LEXIS 22117 at *13 13 (E.D. Tex. 2009) (granting transfer because "the knowledge and experience that the judges of that 14 district have developed with respect to the [] patent cannot easily be replicated in this district without 15 a substantial duplication of effort"). 16 2. Relative Ease Of Access To Sources Of Proof 17 The movants state that "the place where evidence about the accused technology is kept 18 weighs in favor of a transfer to that location." However, the movants ignore the Texas location of 19 evidence about AT&T's U-verse products and attempt to focus instead on the location of 20 Microsoft's Mediaroom software. Microsoft's argument that the bulk of the evidence will come 21 from its Silicon Valley campus lacks merit because the infringement issues in this case relate 22 principally to AT&T's accused products and services, not the Mediaroom software. The 23 Mediaroom software is one component of some of the accused products. For example, the accused 24 products and services relating to AT&T's alleged prior infringement, namely the EchoStar products, 25 do not include the Mediaroom software. 26 AT&T's own statements make clear that a large number of documents will be collected from

27 AT&T's corporate headquarters, AT&T Operations and the other four Defendants, laboratory 28 facilities, U-verse business office, and the hard drives of employees involved in the U-verse business
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1 and project, all located in Texas.6 Simply put, the parties will have a greater ease of access to 2 sources of proof in Texas. 3 Further, the movants' contention that that this District is an inconvenient forum for TiVo is

4 baseless. TiVo itself chose to file in this District, accepting any potential inconvenience its decision 5 would bring. See Connectel, LLC v. Cisco Sys., 2005 U.S. Dist. LEXIS 2252 (E.D. Tex.) 6 ("[C]onvenience to a plaintiff is not a consideration when analyzing a defendant's motion to transfer 7 since the plaintiff chose the forum and presumably considered convenience and cost."). Rather, the Court must presume that this District is the most convenient forum for TiVo. See j2 Global 8 Communs., Inc. v. Protus IP Solutions, Inc., 2008 U.S. Dist. LEXIS 103609 (E.D. Tex. 2008) ("The 9 Court further presumes that this district is the most convenient forum for j2 because it filed here."); 10 Odom v. Microsoft Corp., 596 F. Supp. 2d 995, 1002 (E.D. Tex. 2009) ("Concerning the location of 11 the plaintiff's witnesses, this Court has noted that when a plaintiff files suit in a particular forum it is 12 presumed to be more convenient for the plaintiff to litigate in that forum."). 13 The majority of documents that will be produced in this case are situated in Texas, and not 14 thousands of miles away in California. But movants' attempt to argue that they will have a greater 15 burden to produce evidence in this District must be disregarded for another reason as well: the 16 exchange of documents here will be electronic. See, for example, Network-1 Sec. Solutions, Inc. v. 17 D-Link Corp., 433 F. Supp. 2d 795, 799 (E.D. Tex. 2006) (giving little weight to burden imposed by 18 document production given that it is done electronically); In re Volkswagen of Am., Inc. 19 ("Volkswagen I"), 506 F.3d 376, 385 (5th Cir. 2007) ("access to some sources of proof presents a 20 lesser inconvenience now than it might have absent recent developments"). 21 Finally, additional sources of proof exist in Texas, including in the Eastern District, such as

22 the following: (1) 45 potential party witnesses; (2) 10 potential non-party witnesses; (3) documents 23 of the potential nonparty witnesses; and (4) the court files from the related EchoStar action. 24 Appendices B and C. The relative ease of access factor therefore disfavors transfer to California. 3. Availability Of Compulsory Process To Secure Attendance Of Witnesses 25 A court's power to issue a deposition or trial subpoena under Rule 45 of the Federal Rules of 26 Civil Procedure extends to any witness who resides in the district or within 100 miles of where the 27 28
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Two-Way Media, supra note 1.

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1 deposition or trial is held, and for the purpose of this analysis, are applied specifically to non-party 2 witnesses. See Fed. R. Civ. P. Rule 45(b)(2); Volkswagen II, 545 F. 3d at 316 (court only considered 3 the location of non-party witness). 4 Here, the movants claim that "there are no significant non-party witnesses in the Eastern

5 District of Texas." Even without the benefit of discovery, TiVo already can list 10 non-party 6 witnesses living in, or near, this District, and that could be compelled to trial by this District. 7 Appendix B. Further, although the movants claim to have identified 24 non-party potential witnesses in the Northern District of California, they fail to provide facts that suggest that any of the 8 witnesses identified as being located outside of this District are unable or unwilling to attend trial or 9 a deposition. See AMS Staff Leasing v. Starving Students, 2003 WL 21436476, *3 (N.D. Tex. 2003) 10 (defendants' failure to explain why witness would be "either unwilling or unable to travel to Texas 11 for trial" is a factor for denying transfer motion); Odom v. Microsoft Corp., 596 F. Supp. 2d at 1002 12 (considers parties' failure to explain why witness would be unwilling to travel to Texas for trial). 13 4. Cost Of Attendance For Willing Witnesses 14 In evaluating the factor of witness convenience, the Federal Circuit recognized a "100-mile 15 rule, which requires that when the distance between an existing venue for trial of a matter and a 16 proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses 17 increases in direct relationship to the additional distance to be traveled." In re TS Tech, 551 F.3d at 18 1320 (citation omitted). 19 This is not a case where the accused infringer is seeking transfer to its home district. Rather, 20 this is a case where a transfer out of the accused infringer's home State is sought. As admitted by 21 AT&T in the Two-Way Media case, many important witnesses are located in Texas: AT&T's U22 verse business is based in and managed from Texas, the senior management for U-verse work in 23 Texas, employees with knowledge about the product design and development of the accused U24 verse products and services work in Texas, technical personnel involved in the testing and 25 integration of accused U-verse products and services work in Texas, and AT&T's global corporate 26 headquarters is in Texas.7 For the 35 party witnesses and 10 non-party witnesses TiVo has 27 identified thus far, this District is clearly the more convenient forum. Appendices B and C. For the 28
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Two-Way Media, supra note 1.

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1 movants to argue convenience, when all 45 of these witnesses will most likely have to travel 2 thousands of miles if this case is transferred to California, makes little sense. 3 4 B. The Public Interest Factors Weigh Against Transfer

The public interest factors include: 1) the local interest in having local issues decided at

5 home; 2) the administrative difficulties flowing from court congestion; 3) the forum's familiarity 6 with the governing law; and 4) the avoidance of unnecessary conflict of law problems involving 7 application of foreign law. Volkswagen II, 545 F. 3d at 315. 8 9 10 11 12 13 14 15 local interest in adjudicating this suit. AT&T's headquarters, U-verse business, and laboratory 16 facilities are all in Texas. The network engineering, testing, integration of the accused U-verse 17 18 19 20 products as well as the project management, financial reporting, and financial analysis for the accused U-verse products and services also all occur in Texas. Nearly all aspects of AT&T's Uverse business involve Texas-based employees. Further, all six Defendants, including AT&T Operations, operate and are based in Texas. Texas residents are especially affected by AT&T's U1. Local Interest In Having Local Issues Decided At Home

This factor analyzes the "factual connection" that a case has with both the transferee and transferor venues. See In re Volkswagen AG, 371 F. 3d 201, 206 (5th Cir. 2004) (giving significant weight to the "local interest in having localized interests decided at home"). Accordingly, local interests that "could apply virtually to any judicial district or division in the United States" are disregarded in favor of particularized local interests. In re Volkswagen of America, Inc., 545 F. 3d at 318. In this case, the movants seem to have largely disregarded the fact this District has a strong

21 verse business because it is based in Texas ­ not in California. 22 In addition, the allegedly infringing activities are purposefully directed at Texas. The 23 accused U-verse products and services were first launched in Texas. Since then, the accused 24 products and services have been offered for sale and sold throughout Texas, including the Eastern 25 District of Texas. In the Eastern District of Texas, citizens of Allen, Frisco, Lebanon, The Colony, 26 and Plano, for example, can purchase the accused products or services through AT&T's website. 27 28
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1 2

2.

Administrative Difficulties Flowing From Court Congestion

The speed with which a case can come to trial and be resolved affects the public interest

3 calculus. See, for example, Deep Nines, Inc. v. McAfee, Inc., 2009 U.S. Dist. LEXIS 104817 (E.D. 4 Tex.) ("[T]he speed with which a case can come to trial and be resolved may be a factor.") (citing In 5 re Genentech, Inc., 566 F. 3d 1338, 1347 (Fed. Cir. 2009)). Although the movants argue that "the 6 dockets of the Eastern District of Texas and the Northern District of California are comparably 7 crowded," a closer look at movants' own documents reveals a different story. Movants' Mot. to 8 Transfer at 14. According to the movants' own cited document, the median time to trial is 20.8 months in the Eastern District of Texas and 25.5 months in the Northern District of California. This 9 represents an increase of nearly 23% to the Eastern District of Texas' time to trial. 10 Accordingly, transfer to California will likely result in significant delay in a case where time 11 is of the essence. AT&T expects U-verse to pass 30 million living units by the end of 2011, thus 12 entrenching itself further with each passing year based on an infringing product. Mouzari Decl. Ex. 13 8. The movants should not be permitted to deprive TiVo of the expeditious resolution this Court can 14 provide. 15 3. Familiarity Of The Forum With The Law That Will Govern The Case 16 As cited above, this Court has already confronted many of the precise issues in this particular 17 case and gained intimate knowledge of the technology at issue and one of the patents-in-suit. 18 C. TiVo's Choice Of Forum Is Entitled To Deference 19 TiVo has chosen to litigate its claim in the Eastern District of Texas, where sales of AT&T's 20 allegedly infringing U-verse products undoubtedly occur. TiVo's choice of forum is one of several 21 factors to be considered under the venue transfer analysis, and is entitled to deference. Volkswagen I, 22 506 F. 3d 380 ("[W]e must still determine the proper degree of deference to be given to a plaintiff's 23 choice of forum."). Consequently, unless the movants show that California is clearly more 24 convenient ­ a showing they have not made ­ TiVo's choice of forum should not be disturbed. 25 26 CONCLUSION The movants have failed to meet their heavy burden of proving that the balance of

27 convenience and justice substantially weighs in favor of transfer. Accordingly, TiVo respectfully 28 requests that this Court deny their motion.
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1 Dated: June 28, 2010 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
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Respectfully submitted By: /s/ Azar Mouzari Azar Mouzari

PARKER, BUNT & AINSWORTH, P.C. Robert M. Parker State Bar No. 15498000 [e-mail] Robert Christopher Bunt Sate Bar No. 00787165 [e-mail] Charles Ainsworth State Bar No. 00783521 [e-mail] 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 Telephone: [phone] Facsimile:[phone] IRELL & MANELLA LLP Morgan Chu (Pro Hac Vice) [e-mail] Andrei Iancu (Pro Hac Vice) [e-mail] Perry Goldberg (Pro Hac Vice) [e-mail] Ellisen S. Turner (Pro Hac Vice) [e-mail] Azar Mouzari (Pro Hac Vice) [e-mail] 1800 Avenue of the Stars, Suite 900 Los Angeles, California 90067-4276 Telephone:[phone] Facsimile:[phone] Attorneys for Plaintiff TiVo Inc.

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1 2 3 4

CERTIFICATE OF SERVICE The undersigned hereby certifies that the foregoing document was served on counsel of record by electronic filing and electronic service this June 28, 2010.

/s/ Azar Mouzari 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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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 26 27 28
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Appendix B Potential Non-Party Witnesses Living in, or near, the Eastern District of Texas NAME Wade David Shaw Austin, TX Elbert G. Tindell Dallas, TX 75201-1903 Kyle Crawford Last known address is Grand Prairie, TX. Ivan H. Darius Plano, TX. Charles W. Martin Ft. Worth, TX. Fredrick S. Reid Plano, TX. Gary L. Forbus Dallas, TX Steve M. Adams last known location is Garland, TX C. Pat Shannon Garland, TX Eric A. Pirpich Garland, TX POTENTIAL TESTIMONY Mr. Shaw is a named inventor of U.S. patent 5,870,553, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Shaw may have relevant evidence concerning the scope and content of prior art. Mr. Tindell is a named inventor of U.S. patent 5,130,792, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Tindell may have relevant evidence concerning the scope and content of prior art. Mr. Crawford is a named inventor of U.S. patent 5,130,792, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Crawford may have relevant evidence concerning the scope and content of prior art. Mr. Darius is a named inventor of U.S. patent 6,788,882, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Darius may have relevant evidence concerning the scope and content of prior art. Mr. Martin is a named inventor of U.S. patent 5,214,768, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Martin may have relevant evidence concerning the scope and content of prior art. Mr. Reid is a named inventor of U.S. patent 5,214,768, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Reid may have relevant evidence concerning the scope and content of prior art. Mr. Forbus is a named inventor of U.S. patent 5,214,768, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Forbus may have relevant evidence concerning the scope and content of prior art. Mr. Adams is a named inventor of U.S. patent 5,214,768, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Adams may have relevant evidence concerning the scope and content of prior art. Ms. Shannon is a named inventor of U.S. patent 5,214,768, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Shannon may have relevant evidence concerning the scope and content of prior art. Mr. Pirpich is a named inventor of U.S. patent 5,214,768, which has been cited as prior art in the prosecution history of the `389 and `465 patents. Mr. Pirpich may have relevant evidence concerning the scope and content of prior art.

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Appendix C Potential Party Witnesses Living Near, the Eastern District of Texas NAME Paul Abraham Jr c/o Baker Botts L.L.P. 620 Hansen Way Palo Alto, CA 94304 [phone] Regina Ackerman c/o Baker Botts L.L.P. 620 Hansen Way Palo Alto, CA 94304 [phone] Bruce Aglietti c/o Baker Botts L.L.P. 620 Hansen Way Palo Alto, CA 94304 [phone] Raj Anbalagan c/o Baker Botts L.L.P. 620 Hansen Way Palo Alto, CA 94304 [phone] Donna Angiulo c/o Baker Botts L.L.P. 620 Hansen Way Palo Alto, CA 94304 [phone] Bill Archer c/o Baker Botts L.L.P. 620 Hansen Way Palo Alto, CA 94304 [phone] Terry Bailey c/o Baker Botts L.L.P. 620 Hansen Way Palo Alto, CA 94304 [phone] POTENTIAL TESTIMONY Mr. Abraham is Financial Director of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Ackerman is Executive Director of Network Planning and Engineering of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Aglietti is Director, Market Research and Analysis, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Anbalagan is Senior Technical Director of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Angiulo is Senior Vice President, Chief Financial Officer and Assistant Treasurer of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Archer is Chief Marketing Officer of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Bailey is Senior Vice President, Sales Operation and Customer Care, of AT&T, Inc., and may have information regarding the infringement of the patentsin-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services.

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1

NAME Sandra Baker 2 c/o Baker Botts L.L.P. 620 Hansen Way 3 Palo Alto, CA 94304 [phone] 4 5 Jace Barbin c/o Baker Botts L.L.P. 6 620 Hansen Way Palo Alto, CA 94304 7 [phone] 8 David Barton c/o Baker Botts L.L.P. 9 620 Hansen Way Palo Alto, CA 94304 10 [phone] 11 Carol Beckham 12 c/o Baker Botts L.L.P. 620 Hansen Way 13 Palo Alto, CA 94304 [phone] 14 Marc Bell 15 c/o Baker Botts L.L.P. 620 Hansen Way 16 Palo Alto, CA 94304 [phone] 17 Carolyn Billings 18 c/o Baker Botts L.L.P. 620 Hansen Way 19 Palo Alto, CA 94304 [phone] 20 21 Eric Boyer c/o Baker Botts L.L.P. 22 620 Hansen Way Palo Alto, CA 94304 23 [phone] 24 Neil Boyer c/o Baker Botts L.L.P. 25 620 Hansen Way Palo Alto, CA 94304 26 [phone] 27 28
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POTENTIAL TESTIMONY Ms. Baker is Executive Director Operations of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Barbin is Vice President, Direct Marketing, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Barton is Chief Technology Officer Security Director of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Beckham is Vice President, Intellectual Property, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Bell is Vice President Finance of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Billings is Executive Director of Product Marketing Management of AT&T, Inc., and may have information regarding the infringement of the patentsin-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Boyer is Vice President Operations of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Boyer is Director Sales and Marketing of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services.

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NAME James W Callaway 2 c/o Baker Botts L.L.P. 620 Hansen Way 3 Palo Alto, CA 94304 [phone] 4 5 George Cambron 6 c/o Baker Botts L.L.P. 620 Hansen Way 7 Palo Alto, CA 94304 [phone] 8 9 Ernest Carey c/o Baker Botts L.L.P. 10 620 Hansen Way Palo Alto, CA 94304 11 [phone] 12 Jim Carter 13 c/o Baker Botts L.L.P. 620 Hansen Way 14 Palo Alto, CA 94304 [phone] 15 16 James W. Cicconi c/o Baker Botts L.L.P. 17 620 Hansen Way Palo Alto, CA 94304 18 [phone] 19 Catherine M. Coughlin 20 c/o Baker Botts L.L.P. 620 Hansen Way 21 Palo Alto, CA 94304 [phone] 22 23 Drucilla Dru Cessac c/o Baker Botts L.L.P. 24 620 Hansen Way Palo Alto, CA 94304 25 [phone] 26 Kristen Cogswell c/o Baker Botts L.L.P. 27 620 Hansen Way Palo Alto, CA 94304 28 [phone]
IRELL & MANELLA LLP
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POTENTIAL TESTIMONY Mr. Callaway is Senior Executive Vice President, Executive Operations, of AT&T, Inc., and may have information regarding the infringement of the patentsin-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Cambron is President and Chief Executive Officer, AT&T Labs, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Carey is President, Advanced Network Technologies, of AT&T, Inc., and may have information regarding the infringement of the patentsin-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Carter is President, Executive Director, Customer Analytics, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Cicconi is Senior Executive Vice President, External and Legislative Affairs, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Coughlin is Senior Executive Vice President and Global Marketing Officer of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Cessac is Director, Investor Relations, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Cogswell is Director of Development, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services.

2259900.2 10

Case 2:09-cv-00259-DF Document 85

Filed 06/28/10 Page 29 of 31

1

NAME Kevin Collins 2 c/o Baker Botts L.L.P. 620 Hansen Way 3 Palo Alto, CA 94304 [phone] 4 5 Chanda Collins 6 c/o Baker Botts L.L.P. 620 Hansen Way 7 Palo Alto, CA 94304 [phone] 8 9 Laura Connelly c/o Baker Botts L.L.P. 10 620 Hansen Way Palo Alto, CA 94304 11 [phone] 12 Richard D. Lindner c/o Baker Botts L.L.P. 13 620 Hansen Way Palo Alto, CA 94304 14 [phone] 15 Forrest E. Miller 16 c/o Baker Botts L.L.P. 620 Hansen Way 17 Palo Alto, CA 94304 [phone] 18 Kieran Nolan 19 c/o Baker Botts L.L.P. 620 Hansen Way 20 Palo Alto, CA 94304 [phone] 21 John T. Stankey 22 c/o Baker Botts L.L.P. 620 Hansen Way 23 Palo Alto, CA 94304 [phone] 24 25 Randall L. Stephenson c/o Baker Botts L.L.P. 26 620 Hansen Way Palo Alto, CA 94304 27 [phone] 28
IRELL & MANELLA LLP
A Registered Limited Liability Law Partnership Including Professional Corporations

POTENTIAL TESTIMONY Mr. Collins is Marketing and Business Development Director, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Collins is Marketing and Director, Marketing Operations, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Ms. Connelly is Director, Data Marketing, of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Lindner is Senior Executive Vice President and Chief Financial Officer of AT&T, Inc., and may have information regarding the infringement of the patentsin-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Miller is Corporate Strategy and Development of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Nolan is Vice President of AT&T, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Stankey is President and Chief Executive Officer of AT&T Operations, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Mr. Stephenson is Chairman, Chief Executive Officer and President of AT&T, Inc., and may have information regarding the infringement of the patentsin-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services.

2259900.2 10

Case 2:09-cv-00259-DF Document 85

Filed 06/28/10 Page 30 of 31

1

NAME Jeff Weber 2 c/o Baker Botts L.L.P. 620 Hansen Way 3 Palo Alto, CA 94304 [phone] 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
IRELL & MANELLA LLP
A Registered Limited Liability Law Partnership Including Professional Corporations

POTENTIAL TESTIMONY Mr. Weber is Vice President of Product and Strategy of AT&T Operations, Inc., and may have information regarding the infringement of the patents-in-suit, and the design, development, manufacture, marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Richard Wellerstein Mr. Wellerstein is Vice President, On Demand c/o Baker Botts L.L.P. Programming, of AT&T, Inc., and may have 620 Hansen Way information regarding the infringement of the patentsPalo Alto, CA 94304 in-suit, and the design, development, manufacture, [phone] marketing sale, licensing, distribution and operation of the accused products and digital video recording products and services. Dan York Mr. York is Executive Vice President, Programming, c/o Baker Botts L.L.P. of AT&T, Inc., and may have information regarding 620 Hansen Way the infringement of the patents-in-suit, and the design, Palo Alto, CA 94304 development, manufacture, marketing sale, licensing, [phone] distribution and operation of the accused products and digital video recording products and services. Jeffrey Michael Moore Mr. Moore is sales manager for TiVo, and may have c/o Irell & Manella LLP information regarding the patents-in-suit, the accused 1800 Avenue of the Stars, Suite 900 products, and TiVo's products and business. Los Angeles, CA 90067 [phone]

2259900.2 10

Case 2:09-cv-00259-DF Document 85

Filed 06/28/10 Page 31 of 31

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 X SBC Internet Services, Inc., c/o CT Corporation System 350 N. Saint Paul Street, Suite 2900 Dallas, TX 75201-4234 AT&T Video Services, Inc., c/o CT Corporation System 350 N. Saint Paul Street, Suite 2900 Dallas, TX 75201-4234

PROOF OF SERVICE I am employed in the County of Los Angeles, State of California. I am over the age of 18 and not a party to the within action. My business address is 1800 Avenue of the Stars, Suite 900, Los Angeles, California 90067-4276. On June 28, 2010, I served the foregoing document described as TIVO'S OPPOSITION TO MICROSOFT AND AT&T OPERATIONS' MOTION TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA UPON SEVERANCE by Plaintiff Tivo, Inc. on each interested party, as follows: AT&T Services, Inc. c/o CT Corporation System 350 N. Saint Paul Street, Suite 2900 Dallas, TX 75201-4234 Southwestern Bell Telephone Company c/o Timothy A. Whitley 6500 West Loop Street, Room 5.5 Bellaire, TX 77401-3503

(BY U.S. MAIL) I caused to be placed a true copy of the foregoing document in sealed envelopes as set forth above. I caused to be placed each such envelope, with postage thereon fully prepaid, for collection and mailing at Irell & Manella LLP, Los Angeles, California. I am readily familiar with Irell & Manella LLP's practice for collection and processing of correspondence for mailing with the United States Mail. Under that practice, the correspondence would be deposited with the United States Mail on that same day in the ordinary course of business.

Executed on June 28, 2010, at Los Angeles, California. 16 17 18 19 20 21 22 23 24 25 26 27 28
IRELL & MANELLA LLP
A Registered Limited Liability Law Partnership Including Professional Corporations

I declare under penalty of perjury under the laws of the State of California that the foregoing is true and correct.

2259900.2 10

Case 2:09-cv-00259-DF Document 85-1

Filed 06/28/10 Page 1 of 1

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 and vs. TIVO INC.,

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 2:09-CV-259-DF

Plaintiff,

1. AT&T INC.; 2. AT&T OPERATIONS, INC.; 3. AT&T SERVICES, INC.; 4. AT&T VIDEO SERVICES, INC.; 5. SBC INTERNET SERVICES, INC.; 6. SOUTHWESTERN BELL TELEPHONE COMPANY. Defendants,

Jury Trial Demanded

MICROSOFT CORPORATION, Intervenor.

ORDER DENYING MOTION BY MICROSOFT AND AT&T OPERATIONS TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA UPON SEVERANCE On this day came for consideration the Motion by Microsoft Corporation and AT&T Operations, Inc., to Transfer Venue to the Northern District of California Upon Severance pursuant to 28 U.S.C. Section 1404(a). After considering the same, the Court is of the opinion that the motion should be DENIED.

It is hereby ORDERED that the Motion by Microsoft and AT&T Operations to Transfer Venue to the Northern District of California Upon Severance pursuant to 28 U.S.C. Section 1404(a) is DENIED.

2259901.1 01