Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 1 of 16 PageID #: 1061
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 16-290-SLR
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`GODO KAISHA IP BRIDGE I,
`
`Plaintiff,
`
`v.
`
`OMNIVISION TECHNOLOGIES, INC.,
`
`Defendant.
`
`REPLY BRIEF IN SUPPORT OF
`DEFENDANT OMNIVISION TECHNOLOGIES, INC.’S
`MOTION TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant OmniVision
`Technologies, Inc.
`
`OF COUNSEL:
`
`Edward G. Poplawski
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Tel: (323) 210-2901
`
`James C. Yoon
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel: (650) 493-9300
`
`Jennifer J. Schmidt
`Madeleine E. Greene
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`One Market Street
`Spear Tower, Suite 3300
`San Francisco, CA 94105-1126
`Tel: (415) 947-2000
`
`Dated: August 31, 2016
`1232798 / 43303
`
`

`

`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 2 of 16 PageID #: 1062
`
`TABLE OF CONTENTS
`
`Page
`
`A.
`
`B.
`
`C.
`
`The Facts Weigh in Favor of Transfer and
`OmniVision’s Discovery Responses Do Not Alter
`the Analysis. ............................................................................................................ 1
`
`IP Bridge Applies The Wrong Legal Standard and
`The Relevant Precedent Weighs In Favor of
`Transfer. .................................................................................................................. 2
`
`IP Bridge Cannot Rebut OmniVision’s Showing
`that the Private Interest Factors Weigh in Favor of
`Transfer. .................................................................................................................. 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`The Propriety of Delaware as a Forum Is Irrelevant. .................................. 4
`
`Because IP Bridge’s Home Forum Is Not In
`Delaware, Its Choice of Forum Is Afforded Less
`Deference. ................................................................................................... 5
`
`OmniVision’s Preference of Forum Favors
`Transfer. ...................................................................................................... 6
`
`The Claims Arose in California—Not Delaware. ....................................... 6
`
`The Convenience of the Parties Weighs in Favor of
`Transfer. ...................................................................................................... 7
`
`The Convenience of Witnesses Weighs in Favor of
`Transfer. ...................................................................................................... 8
`
`The Location of Evidence Weighs in Favor of
`Transfer. ...................................................................................................... 9
`
`D.
`
`IP Bridge Cannot Rebut OmniVision’s Showing
`that the Public Interest Factors Weigh in Favor of
`Transfer. ................................................................................................................ 10
`
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 3 of 16 PageID #: 1063
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`ChriMar Sys., Inc. v. Cisco Sys., Inc.,
`C.A. No. 11-1050-GMS, 2013 WL 828220 (D. Del. Mar. 6, 2013) ...................................4
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)............................................................................................3
`
`In re Link_A_Media Devices Corp.,
`662 F. 3d 1221 (Fed. Cir. 2011).............................................................................3, 4, 5, 10
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)..................................................................................3, 8, 10
`
`In re TS Tech U.S. Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)............................................................................................3
`
`Intellectual Ventures LLC v. Altera,
`842 F. Supp. 2d 744 (D. Del. 2012) .....................................................................................4
`
`Ithaca Ventures k.s. v. Nintendo of Am. Inc.,
`C.A. No. 13-824-GMS, 2014 WL 4829027 (D. Del. Sept. 25, 2014) ...................7, 8, 9, 10
`
`Jumara v. State Farm Inc. Co.,
`55 F. 3d 873 (3rd Cir. 1995) ...................................................................................... passim
`
`Linex Techs., Inc. v. Hewlett-Packard Co.,
`C.A. No. 11-400-GMS, 2013 WL 105323 (D. Del. Jan. 7, 2013) ...................................4, 7
`
`Papst Licensing GmbH & Co. KG v. Lattice Semiconductor Corp.,
`126 F. Supp. 3d 430 (D. Del. 2015) .....................................................................................7
`
`Ricoh Co. v. Honeywell, Inc.,
`817 F. Supp. 473 (D.N.J. 1993) ...........................................................................................4
`
`Semcon Tech, LLC v. Intel Corp.,
`C.A. No. 12-531-RGA, 2013 WL 126421 (D. Del. Jan. 8, 2013) .................................3, 10
`
`Teleconference Sys. v. Proctor & Gamble Pharms., Inc.,
`676 F. Supp. 2d 321 (D. Del. 2009) .....................................................................................9
`
`Wacoh Co. v. Kionix Inc.,
`845 F. Supp. 2d 597 (D. Del. 2012) .....................................................................................7
`
`STATUTES & RULES
`
`28 U.S.C. § 1404 ..............................................................................................................................5
`
`28 U.S.C. § 1404(a) .............................................................................................................1, 3, 4, 5
`
`Fed. R. Civ. P. 26(g)(1)(B) ..............................................................................................................1
`
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 4 of 16 PageID #: 1064
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`Fed. R. Civ. P. 33(b)(4)....................................................................................................................1
`
`Fed. R. Civ. P. 34(b)(2)(B) ..............................................................................................................1
`
`Fed. R. Civ. P. 36(a)(5) ....................................................................................................................1
`
`Fed. R. Civ. P. 45(c)(1)(B)(i) ...........................................................................................................9
`
`- iii -
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 5 of 16 PageID #: 1065
`
`TABLE OF ABBREVIATIONS
`
`Plaintiff Godo Kaisha IP Bridge 1
`
`Plaintiff or IP Bridge
`
`Defendant OmniVision Technologies, Inc.
`
`OmniVision
`
`28 U.S.C. § 1404(a)
`
`Opening Brief in Support of Defendant
`OmniVision Technologies, Inc.’s Motion to
`Transfer Venue to the Northern District of
`California (D.I. 11)
`
`§ 1404(a)
`
`brief or Br.
`
`Plaintiff’s Response to Defendant’s Motion to
`Transfer Venue (D.I. 22)
`
`opposition or Opp.
`
`Plaintiff’s Complaint (D.I. 1)
`
`Answer to Complaint (D.I. 8)
`
`Jumara v. State Farm Inc. Co., 55 F. 3d 873,
`879 (3rd Cir. 1995)
`
`complaint
`
`answer
`
`Jumara
`
`- iv -
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 6 of 16 PageID #: 1066
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`The undisputed facts and relevant factors show that transfer for forum non-conveniens is
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`appropriate under 28 U.S.C. § 1404(a). Attempting to avoid this result, IP Bridge’s opposition
`
`misapplies the legal standard under § 1404(a), alleging that OmniVision must prove transfer to the
`
`Northern District of California is necessary. Arguing that its choice of forum should outweigh
`
`other considerations, IP Bridge ignores the Jumara factors developed to serve the interest of
`
`convenience and wrongly criticizes OmniVision’s application of the correct standard for transfer.
`
`IP Bridge mischaracterizes OmniVision’s venue discovery responses; OmniVision’s responses do
`
`not alter the weight of factors strongly favoring transfer, nor do they offer new facts beyond those
`
`presented in OmniVision’s brief. IP Bridge tries to avoid the reach of relevant Federal Circuit
`
`guidance and decisions from this District, but IP Bridge cannot distinguish the facts of this case
`
`from precedent weighing in favor of transfer. Indeed, IP Bridge’s entire opposition relies upon
`
`the argument that its choice of forum should be given complete deference, but IP Bridge’s principal
`
`place of business is Japan—not Delaware—and IP Bridge’s choice to litigate in this forum should
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`therefore be afforded less weight. As such, OmniVision respectfully requests that the Court grant
`
`its motion to transfer.
`
`A.
`
`The Facts Weigh in Favor of Transfer and OmniVision’s Discovery
`Responses Do Not Alter the Analysis.
`
`IP Bridge relies on a number of purported “admissions” made by OmniVision, some of
`
`which it misrepresents and none of which change that transfer is appropriate.1 See Opp. at 1-3. In
`
`a glaring inaccuracy, IP Bridge claims that OmniVision admitted “[i]t has maintained at least one
`
`address in the State of Delaware in the last 10 years,” a fact OmniVision denied. See Opp. at 1-2,
`
`1 For the first time, IP Bridge claims that OmniVision’s objections to IP Bridge’s discovery
`requests are improper. See Opp. at 1 n. 3. To the contrary, OmniVision’s objections are entirely
`proper pursuant to Fed. R. Civ. P. 26(g)(1)(B), 33(b)(4), 34(b)(2)(B), and 36(a)(5).
`
`

`

`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 7 of 16 PageID #: 1067
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`cf. Rynell Dec., Ex. A at No. 1. IP Bridge also egregiously misrepresents that OmniVision “does
`
`not know if it has sold or offered the Accused Products for sale in Delaware.” See Opp. at 2 (citing
`
`Rynell Dec., Ex. A at Nos. 30, 31), and Opp. at 9. This is also incorrect. OmniVision denied that
`
`it has offered or sold any such products in Delaware during the relevant time period on the basis
`
`that, after a reasonable search, it is not aware of any such offers or sales. See Rynell Dec., Ex. A
`
`at Nos. 30, 31. IP Bridge highlights other alleged “admissions” that are merely consequences of
`
`OmniVision’s incorporation in Delaware, such as filing taxes and maintaining a registered agent
`
`in Delaware. See Opp. at 2 (citing Rynell Dec., Ex. A at Nos. 2, 3, 7, 29). Other alleged
`
`“admissions” are irrelevant to the transfer analysis, such as OmniVision having been a party to
`
`previous lawsuits in Delaware. See Opp. at 2 (citing Rynell Dec., Ex. A at Nos. 14, 15).
`
`IP Bridge also wrongly claims that OmniVision does not identify witnesses that will be
`
`unavailable for trial. But OmniVision does identify potential witnesses—all of whom reside
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`outside of Delaware and each of whom may be unavailable for trial in Delaware—and further
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`states that, at this stage of the litigation, it cannot reasonably predict the willingness of individuals
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`to testify at some unnamed time. See Rynell Dec., Ex. A at Nos. 10, 11, Ex. B at 8-12.
`
`Finally, IP Bridge’s speculation regarding the transmission of accused products (“in a
`
`single business envelope . . . . easily [] shipped . . . for less than $10”) along with the distribution
`
`of products sold (“worldwide by the hundreds of millions, if not billions”) is wholly unsupported
`
`by the record and not relevant to the transfer analysis. See Opp. at 3.
`
`B.
`
`IP Bridge Applies The Wrong Legal Standard and The Relevant Precedent
`Weighs In Favor of Transfer.
`
`IP Bridge applies the wrong legal standard throughout its opposition, conflating improper
`
`venue with forum non-conveniens, and claims that OmniVision bears the burden to “show transfer
`
`is necessary.” See, e.g., Opp. at 1, 3, 13- 15. This is incorrect as a matter of law. Under the
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 8 of 16 PageID #: 1068
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`Jumara factors, OmniVision has the burden to show that transfer to the Northern District of
`
`California is appropriate as a matter of convenience, not that it is necessary because venue is
`
`improper in the District of Delaware. See 28 U.S.C. § 1404(a) (“[f]or the convenience of parties
`
`and witnesses . . . a district court may transfer any civil action to any other district”); In re Nintendo
`
`Co., 589 F.3d 1194, 1197 (Fed. Cir. 2009) (citing In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed.
`
`Cir. 2009) (requiring transfer where “the transferee venue is ‘clearly more convenient’ than the
`
`venue chosen by the plaintiff”).
`
`IP Bridge subsequently tries to avoid the Federal Circuit’s decisions in In re Nintendo, In
`
`re Genentech, In re TS Tech, and the host of other Federal Circuit decisions analyzing factors
`
`relevant to transfer under § 1404(a) in the Third Circuit. See Opp. at 5, 12, 14, 15, 18. But none
`
`of the cases cited by IP Bridge proscribes relying on Federal Circuit analysis when the relevant
`
`considerations are the same between circuits. See Opp. at 5 n. 11 (citing Semcon Tech, LLC v.
`
`Intel Corp., C.A. No. 12-531-RGA, 2013 WL 126421, at *4 n. 6 (D. Del. Jan. 8, 2013)). The Third
`
`Circuit case IP Bridge quotes, Semcon Tech, does not admonish reliance on Federal Circuit
`
`precedent, but rather merely distinguishes the Fifth and Third Circuits’ treatment of plaintiff’s
`
`choice of forum and refrains from relying on Federal Circuit cases arising from the Fifth Circuit in
`
`that regard only. See id. at *4 n. 6. The court in Semcon Tech relies on a number of Federal Circuit
`
`decisions applying Fifth Circuit law, including In re Genentech, in finding that that “ [u]nder Third
`
`Circuit law . . . . [t]he balance of convenience tips strongly enough in favor of transfer.” Id. at *8.
`
`Just as courts in this District regularly rely on Federal Circuit guidance in applying the Jumara
`
`factors, OmniVision’s motion properly looks to Federal Circuit treatment of factors common to
`
`the transfer analysis in both circuits.
`
`IP Bridge also attempts to avoid In re Link_A_Media Devices Corp., 662 F. 3d 1221 (Fed.
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 9 of 16 PageID #: 1069
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`Cir. 2011). See Opp. at 5. But the case IP Bridge cites that declined to follow Link_A_Media
`
`distinguished itself in light of facts not present here. See id. (quoting Intellectual Ventures LLC v.
`
`Altera Corp., 842 F. Supp. 2d 744, 753 (D. Del. 2012) (declining to follow Link_A_Media because
`
`“the plaintiff in Link_A_Media was not a Delaware entity and, as far as can be discerned from the
`
`opinions in the case, had no connection to Delaware whatsoever. By contrast, here, Plaintiffs are
`
`Delaware entities.”). This case confirms the relevance of Link_A_Media to the facts at bar, namely
`
`that IP Bridge is a foreign corporation that does not claim any connection to Delaware. See Opp.
`
`at 7-9. Thus, Link_A_Media applies to caution against putting dispositive weight on OmniVision’s
`
`state of incorporation.
`
`C.
`
`IP Bridge Cannot Rebut OmniVision’s Showing that the Private Interest
`Factors Weigh in Favor of Transfer.
`
`IP Bridge’s argument that OmniVision applies the wrong test is meritless. See Opp. at 6-
`
`7. OmniVision focuses on the proper standard for transfer and applies the Jumara factors and does
`
`not promote a separate test. See Br. at 7-16; Opp. at 6. Specifically, and contrary to IP Bridge’s
`
`implication, “the location of a product’s development, testing, research and production” along with
`
`“the place where marketing and sales decisions were made” remain relevant considerations under
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`Jumara. See Br. at 6 (quoting Ricoh Co. v. Honeywell, Inc., 817 F. Supp. 473, 482 n.17 (D.N.J.
`
`1993)); see also Linex Techs., Inc. v. Hewlett-Packard Co., C.A. No. 11-400-GMS, 2013 WL
`
`105323, at *4 (D. Del. Jan. 7, 2013); ChriMar Sys., Inc. v. Cisco Sys., Inc., C.A. No. 11-1050-
`
`GMS, 2013 WL 828220, at *5 (D. Del. Mar. 6, 2013); Intellectual Ventures, 842 F. Supp. 2d at
`
`755. Nothing in IP Bridge’s opposition changes that transfer is appropriate under the private
`
`interest factors of Jumara.
`
`1.
`
`The Propriety of Delaware as a Forum Is Irrelevant.
`
`That the District of Delaware is a proper forum is irrelevant to transfer under § 1404(a).
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 10 of 16 PageID #: 1070
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`See 28 U.S.C. § 1404(a). IP Bridge stresses that OmniVision does not dispute personal jurisdiction
`
`or that this Court is a proper venue. See Opp. at 6. But the very purpose of transfer under § 1404(a)
`
`for forum non-conveniens is to allow transfer where the selected forum is not improper but another
`
`forum is more convenient. See 28 U.S. Code § 1404. In other words, every time a case is
`
`transferred pursuant to § 1404(a), it is in spite of the fact that the venue is proper in the selected
`
`forum. Thus, IP Bridge’s criticism of OmniVision’s motion misunderstands the proper grounds
`
`for transfer under § 1404(a). See Opp. at 6.
`
`2.
`
`Because IP Bridge’s Home Forum Is Not In Delaware, Its Choice of
`Forum Is Afforded Less Deference.
`
`IP Bridge’s opposition rests entirely on the fallacy that its choice of forum overrides the
`
`remaining factors. See Opp. at 7-9, 14, 15. IP Bridge’s proposition is exactly that which was
`
`rejected in Link_A_Media. 662 F.3d at 1223 (“[T]he district court placed far too much weight on
`
`the plaintiff’s choice of forum . . . When a plaintiff brings its charges in a venue that is not its home
`
`forum . . . that choice of forum is entitled to less deference.”). IP Bridge does not dispute that a
`
`plaintiff’s choice of forum is afforded less deference when its home forum is elsewhere, nor does
`
`IP Bridge distinguish the relevant cases under Jumara that follow this precedent. See Opp. at 7-
`
`9; Br. at 7-8. IP Bridge alleges only that the deference afforded to a plaintiff’s choice “does not
`
`disappear” where the plaintiff is a foreign entity with no connection to the forum. See Opp. at 8.
`
`As asserted in OmniVision’s brief, IP Bridge warrants “less deference;” that some deference
`
`remains does not outweigh the factors already favoring transfer. See Br. at 7.
`
`IP Bridge also points to reasons underlying its choice of forum that do not refute transfer.
`
`See Opp. at 7-8. First, OmniVision’s state of incorporation is inapposite and the fact that neither
`
`party has its principal place of business in the forum simply underscores the arbitrary nature of IP
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`Bridge’s choice. In re Link_A_Media, 662 F.3d at 1224. Further, in emphasizing this District’s
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 11 of 16 PageID #: 1071
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`expeditious handling of cases, IP Bridge relies on data that is over 20 years old. See Opp. at 7-8,
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`8 n. 16. Finally, the Northern District of California possesses the same “expertise in patent
`
`infringement cases” that allegedly motivated IP Bridge to select the District of Delaware. See
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`Opp. at 8. None of these reasons change that IP Bridge’s choice is afforded less deference.
`
`3.
`
`OmniVision’s Preference of Forum Favors Transfer.
`
`IP Bridge does not dispute that OmniVision’s choice of forum favors transfer. See Opp. at
`
`8-9; Br. at 8-9. Rather, IP Bridge attempts to discredit OmniVision’s choice on the basis that IP
`
`Bridge has “faithfully followed United States laws and procedures to obtain patents.” Opp. at 8.
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`This is incorrect—IP Bridge purchased its patents—and irrelevant to the transfer analysis.2 See
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`Opp. at 11. It is also irrelevant that “IP Bridge would be subject to venue anywhere in the United
`
`States.” See id. at 8-9, 9 n. 19. All that matters, as a threshold issue, is that IP Bridge is subject to
`
`venue in the Northern District of California—a fact that is undisputed. See id.
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`4.
`
`The Claims Arose in California—Not Delaware.
`
`The only ties to this District are IP Bridge’s choice of forum and OmniVision’s
`
`incorporation, and IP Bridge’s efforts to fabricate additional connections fail. Despite IP Bridge’s
`
`attempts to manufacture relevant sales activity, OmniVision denies that it has offered or sold the
`
`accused products in Delaware. See supra Section A. IP Bridge’s argument that alleged
`
`OmniVision sales within Delaware gave rise to the infringement claims is therefore meritless. See
`
`Opp. at 9. IP Bridge’s allegations regarding OmniVision’s gross and net revenue also have no
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`bearing on any alleged activity within this District. See id.
`
`Attempting to dismiss the overwhelming connection this case has to California in contrast
`
`to the paucity of connection to Delaware, IP Bridge ignores relevant legal precedent demonstrating
`
`2 That OmniVision’s parent company is a foreign corporation is also irrelevant to the transfer
`analysis. See Opp. at 8 n. 18; Jumara, 55 F. 3d at 879.
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 12 of 16 PageID #: 1072
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`that “infringement claims have even deeper roots in the forum where the accused products were
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`developed.” Linex Techs., 2013 WL 105323, at *4 (citations omitted); see Opp. at 9-10; Br. at 9-
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`11. IP Bridge is also wrong that the analysis changes where the patent claims at issue are system,
`
`rather than method, claims. See Opp. at 9. IP Bridge is incorrect that the method claims in Papst
`
`Licensing “were only infringed after purchase.” See Opp. at 9-10. The court in Papst Licensing
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`expressly held that infringement of method claims would occur both in the transferee district where
`
`the products were developed and in the transferor district where the products were sold. See Papst
`
`Licensing GmbH & Co. KG v. Lattice Semiconductor Corp., 126 F. Supp. 3d 430, 439 (D. Del.
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`2015) (“the direct infringement of these method claims occurred . . . where Defendants develop .
`
`. . their GPA logic design technology” and where “some accused products may be used to perform
`
`the patented methods . . . after sale.”).
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`It is also immaterial that IP Bridge does not accuse OmniVision of indirect infringement.3
`
`See Opp. at 10; Wacoh Co. v. Kionix Inc., 845 F. Supp. 2d 597, 602 (D. Del. 2012) (finding claims
`
`of direct infringement “arose where the allegedly infringing products were designed and
`
`manufactured”); Ithaca Ventures k.s. v. Nintendo of Am. Inc., C.A. No. 13-824-GMS, 2014 WL
`
`4829027, at *3 (D. Del. Sept. 25, 2014) (willful infringement claims “‘arise’ where the products
`
`are marketed”). Thus, this factor weighs in favor of transfer.
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`5.
`
`The Convenience of the Parties Weighs in Favor of Transfer.
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`IP Bridge does not dispute that OmniVision’s key witnesses are located in the Northern
`
`District of California or that travel to Delaware would burden those employees and OmniVision’s
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`operations significantly more than litigating in California. See Opp. at 10-11; Br. at 11. IP Bridge
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`3 In its opposition, IP Bridge narrows its infringement claims for the first time. IP Bridge
`should be required to amend its complaint accordingly.
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 13 of 16 PageID #: 1073
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`instead makes provocative allegations as to OmniVision’s financial resources. See Opp. at 10-11.
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`Yet litigating in California will be less burdensome to OmniVision because it is headquartered there
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`and IP Bridge, located in Japan, will be burdened by its choice to litigate in the United States
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`regardless of venue. See Opp. at 8, 14 n. 4. Even if IP Bridge’s claim of relative poverty were
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`credible,4 greater convenience to one party is sufficient weight in favor of transfer. See Ithaca
`
`Ventures, 2014 WL 4829027, at *4 (“It is unreasonable to subject all parties to an inconvenient
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`forum when a forum exists that would significantly reduce the burden of at least one of the parties.”)
`
`(citing In re Nintendo, 589 F.3d at 1998). This factor favors transfer.
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`6.
`
`The Convenience of Witnesses Weighs in Favor of Transfer.
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`IP Bridge misunderstands this factor as pertaining to actual witness availability. See Opp.
`
`at 12, 13. Witness convenience relates to the location of third-party witnesses and their ability
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`to be subject to compulsory process. See Jumara, 55 F. 3d at 879; Br. at 12-13. Jumara does
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`not require, nor would it be reasonable to require at this stage of the litigation, an affirmative
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`declaration that a witness will be unavailable for trial. See Ithaca Ventures, 2014 WL 4829027,
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`at *5 (“The court also notes that Nintendo need not prove that Ms. Hatcher ‘may actually be
`
`unavailable for trial in one of the fora.’ Ithaca ‘overstates the moving party’s burden of
`
`demonstrating that a third-party witness will be unavailable or unwilling to travel to Delaware. .
`
`. . [I]t is enough that likely witnesses reside beyond the court’s subpoena power and that there is
`
`reason to believe that those witnesses will refuse to testify absent subpoena power.’”) (internal
`
`citations omitted). IP Bridge also conflates the analysis under this factor with the analysis under
`
`4 IP Bridge misrepresents its finances. See Opp. at 12. IP Bridge is what is known as a
`“sovereign patent fund,” a patent aggregator principally backed by the Japanese government. See
`http://www.corpcounsel.com/printerfriendly/id=1202751837822. Funded by a public-private
`partnership called Innovation Network Corporation of Japan, Inc., IP Bridge has a market
`capitalization of $2.6 billion. See id.; Rynell Dec., Ex. G.
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 14 of 16 PageID #: 1074
`
`the previous factor and again attempts to back away from relevant Federal Circuit guidance. See
`
`Opp. at 12, 13 (incorrectly analyzing inconvenience to OmniVision employees as relevant to
`
`witness convenience); supra Section C.5.
`
`As explained in its brief, OmniVision has properly identified third-party witnesses—prior
`
`art inventors, manufacturers, and potential ex-employees—that would be subject to the trial
`
`subpoena power of the Northern District of California but not to that of the District of Delaware.
`
`See Fed. R. Civ. P. 45(c)(1)(B)(i); Br. at 12-13; supra Section A. And the employment status
`
`alone of ex-employees provides “some reason to believe that [the witness] will refuse to testify.”
`
`See Ithaca Ventures, 2014 WL 4829027, at *5. IP Bridge’s criticism of the alleged “lack of
`
`specifics” in OmniVision’s witness identifications is not only inapposite, as discussed above, but
`
`incorrect. See Opp. at 13; Br. at 12-13 (specifying that prior art witnesses may have information
`
`relevant to invalidate asserted patents and that wafer fabrication company witnesses may testify
`
`regarding manufacture of OmniVision image sensors); supra (subpoena power is only relevant
`
`consideration under Jumara). In contrast, IP Bridge fails to identify a single witness in Delaware,
`
`as there simply are none. See Opp. at 12-13. This factor weighs heavily in favor of transfer. See
`
`Teleconference Sys. v. Proctor & Gamble Pharms., Inc., 676 F. Supp. 2d 321, 333 (D. Del. 2009)
`
`(“[T]hat plaintiff has not identified a single material witness who resides in Delaware rather than
`
`California is telling and weighs in favor of transfer.”).
`
`7.
`
`The Location of Evidence Weighs in Favor of Transfer.
`
`It is undisputed that all relevant documentary and physical evidence is in California. See
`
`Opp. at 14-15; Br. at 13-14. The Federal Circuit has found that the location of books and records
`
`in a distant forum cannot be ignored as “outdated” or “irrelevant” in light of “advances in
`
`technology.” In re Link_A_Media, 662 F. 3d at 1224. IP Bridge’s argument that “books and
`
`records . . . . can be transmitted at light-speed around the world” is unpersuasive. See Opp. at 14.
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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 15 of 16 PageID #: 1075
`
`IP Bridge is again mistaken in its proscription of relevant Federal Circuit guidance in
`
`evaluating this factor. See Opp. at 15; supra Section B. “[A]lthough modern technology makes
`
`the task of transporting electronic evidence far less onerous, the court must nevertheless accord at
`
`least some weight to this factor.” Ithaca Ventures, 2014 WL 4829027, at *6 (citing In re Nintendo,
`
`589 F.3d at 1998). Thus, this factor properly weighs in favor of transfer.
`
`D.
`
`IP Bridge Cannot Rebut OmniVision’s Showing that the Public Interest
`Factors Weigh in Favor of Transfer.
`
`IP Bridge does not dispute that trial in the Northern District of California would be easier
`
`and less expensive. See Opp. at 16; Br. at 14-15. Rather, IP Bridge argues that the increased
`
`expense to both parties of litigating in Delaware “level[s] the field” and that the lesser expense of
`
`litigating in California would be “unfair” to IP Bridge. See Opp. at 16. Fairness to both parties is
`
`not the test. See Semcon Tech, 2013 WL 126421, at *6; Ithaca Ventures, 2014 WL 4829027, at
`
`*4. Such practical considerations of expense therefore tip the scale in favor of transfer.
`
`IP Bridge misstates the record, alleging that “OmniVision did not produce evidence
`
`regarding time to trial . . . in this District or in the Northern District of California.” See Opp. at
`
`17. In fact, OmniVision showed that the median times to civil trial in both districts reached parity
`
`in 2015, at 27.7 months. See Br. at 16 (citing Schmidt Decl., Ex. J, at 14, 66). IP Bridge’s historical
`
`data from 20 years ago is of less relevance than the current statistics. See supra Section C.2. The
`
`relative expediency between the fora is therefore neutral.
`
`Finally, while IP Bridge argues that local interest is neutral, IP Bridge does not dispute the
`
`underlying fact that OmniVision indeed has local, and personal, interest in allowing its employees
`
`to defend their work and reputation in their home forum. See Opp. at 17; Br. at 16.
`
`In sum, IP Bridge has failed to rebut OmniVision’s showing that transfer is appropriate.
`
`OmniVision’s motion to transfer should therefore be granted.
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`

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`Case 1:16-cv-00290-MN Document 24 Filed 08/31/16 Page 16 of 16 PageID #: 1076
`
`Respectfully submitted,
`
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant OmniVision
`Technologies, Inc.
`
`OF COUNSEL:
`
`Edward G. Poplawski
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Tel: (323) 210-2901
`
`James C. Yoon
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel: (650) 493-9300
`
`Jennifer J. Schmidt
`Madeleine E. Greene
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`One Market Street
`Spear Tower, Suite 3300
`San Francisco, CA 94105-1126
`Tel: (415) 947-2000
`
`Dated: August 31, 2016
`1232798 / 43303
`
`- 11 -
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`