Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 1 of 57 PageID #: 1568
`1
`
`IN THE UNITED STATES DISTRICT COURT
` FOR THE DISTRICT OF DELAWARE
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`ROBOCAST, INC.,
`)
`
`
`)
`Plaintiff,
`
`) C.A. No. 22-304-RGA
`
`)
`
`v.
`
`)
`
`
`YOUTUBE, LLC, a Delaware limited)
`liability company; and GOOGLE )
`LLC, a Delaware limited
`)
`liability company,
`
`Defendants.
`
`))
`
`) J
`
`. Caleb Boggs Courthouse
`844 North King Street
`Wilmington, Delaware
`Tuesday, December 20, 2022
`2:58 p.m.
`Oral Argument
`
`BEFORE: THE HONORABLE RICHARD G. ANDREWS, U.S.D.C.J.
`
`APPEARANCES:
`
`BAYARD, P.A.
`BY: STEPHEN B. BRAUERMAN, ESQUIRE
`-and-
`CANTOR COLBURN
`BY: MARC N. HENSCHKE, ESQUIRE
`
`For the Plaintiff
`
`
`
`
`
`
`1
`
`IN THE UNITED STATES DISTRICT COURT
` FOR THE DISTRICT OF DELAWARE
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`)
`ROBOCAST, INC.,
`)
`
`
`)
`Plaintiff,
`
`) C.A. No. 22-304-RGA
`
`)
`
`v.
`
`)
`
`
`YOUTUBE, LLC, a Delaware limited)
`liability company; and GOOGLE )
`LLC, a Delaware limited
`)
`liability company,
`
`Defendants.
`
`))
`
`) J
`
`. Caleb Boggs Courthouse
`844 North King Street
`Wilmington, Delaware
`Tuesday, December 20, 2022
`2:58 p.m.
`Oral Argument
`
`BEFORE: THE HONORABLE RICHARD G. ANDREWS, U.S.D.C.J.
`
`APPEARANCES:
`
`BAYARD, P.A.
`BY: STEPHEN B. BRAUERMAN, ESQUIRE
`-and-
`CANTOR COLBURN
`BY: MARC N. HENSCHKE, ESQUIRE
`
`For the Plaintiff
`
`
`
`
`
`
`
`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 2 of 57 PageID #: 1569
`2
`
`
`APPEARANCES CONTINUED:
`
`RICHARDS LAYTON & FINGER, P.A.
`BY: FREDERICK L. COTTRELL, III, ESQUIRE
`-and-
`WILSON SONSINI GOODRICH & ROSATI
`BY: JORDAN R. JAFFE, ESQUIRE
`For the Defendants
`*** PROCEEDINGS ***
`
`
`
`
`
`DEPUTY CLERK: All rise. Court is now in
`session. The Honorable Richard G. Andrews presiding.
`THE COURT: All right. Good afternoon,
`everyone. Everyone be seated.
`Mr. Brauerman.
`MR. BRAUERMAN: Good afternoon, Your Honor.
`Steve Brauerman from Bayard. I'm joined at counsel table by
`Marc Henschke of Cantor Colburn on behalf of Plaintiff,
`Robocast LLC. With Your Honor's permission, Mr. Henschke
`will address the Court today.
`THE COURT: That's fine. Good afternoon,
`Mr. Henschke. It's been a few years.
`MR. HENSCHKE: Yes.
`THE COURT: Mr. Cottrell.
`MR. COTTRELL: Yes. Good afternoon, Your Honor.
`Fred Cottrell from Richards Layton & Finger for the
`Defendants. With me at table from Wilson Sonsini, Jordan
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 3 of 57 PageID #: 1570
`3
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`Jaffe. And our clients are here, Jim Sherwood from Google
`and Robin Gray Schweitzer from Google. And with Your
`Honor's permission, Mr. Jaffe will discuss the transfer
`motion that we've filed.
`THE COURT: All right. Thank you.
`All right. So, Mr. Jaffe, I don't think I've
`seen you before; is that right?
`MR. JAFFE: That's correct, Your Honor.
`THE COURT: All right. Well, good afternoon.
`MR. JAFFE: Good afternoon to you. I'm here
`today to address Defendants' transfer motion, as we just
`discussed. And I wanted to start by giving a brief overview
`of why this motion should be granted.
`This case has no connection in terms of
`witnesses or documents to Delaware. In the course of
`transfer briefing, Defendants are not aware of any witnesses
`or documents here. Plaintiffs similarly identified no
`witnesses or documents here. The vast majority of the
`witnesses or documents are in the Northern District of
`California or are nearer to the Northern District of
`California than they are to the District of Delaware. It's
`also more convenient for the parties to be in the Northern
`District of California.
`And in addition to Defendants being
`headquartered in the Northern District of California, we
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 4 of 57 PageID #: 1571
`4
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`have also identified third-party prior art residing in the
`Northern District of California. And in particular,
`potential unwilling witnesses in the transferee forum. We
`identified one, at least one prior artist in the forum who
`came up in the prior litigation and was in -- as a prior
`artist. And his prior art was asserted by the Defendants in
`that case on summary judgment.
`So, this isn't the case where we just picked
`random prior artists out of a hat that happened to be in
`California. This was an actual prior artist who came up
`within the prior case and is located in the Northern
`District of California.
`THE COURT: The prior art that was asserted on
`summary judgment, what was that?
`MR. JAFFE: It's Mr. Braverman.
`THE COURT: No. What kind of art was it? Was
`it a paper, or a patent or what?
`MR. JAFFE: It was a paper, and I think there
`might have been a corresponding system, but I know the paper
`was asserted.
`THE COURT: All right.
`MR. JAFFE: The other two instances where
`we've -- where third-party witnesses are relevant here is
`Apple itself. As someone who's settled the patent, there
`will likely be relevant testimony and evidence relating to
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 5 of 57 PageID #: 1572
`5
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`damages, licenses, and so Apple will be a potential relevant
`witness for purposes of trial, which is subject to the
`subpoena power of that Court. These patents are also
`expired, and two of the three patents expired several years
`ago.
`
`And in this instance, former employees become
`more relevant. And given that Defendants, YouTube and
`Google are both headquartered in the Northern District of
`California, the former employees would more likely be based
`there and, therefore, is subject to the Court's subpoena
`power.
`
`Finally, in terms of overall convenience, we've
`talked a bit about how it's more convenient for the
`Defendants and third parties. When you look at the
`underlying facts that Plaintiff put in opposition to our
`motion, it's likely actually more convenient for Plaintiff
`than it is to be in Delaware. Specifically, they put in a
`declaration from a Mr. Torres, and that declaration was in
`Idaho. And they put in a statement to the Secretary of
`State in Idaho saying their principal office was there.
`That's closer to California than it is to here.
`So, the CEO and sole inventor of the
`patents-in-suit is in Idaho and as well as their COO. So,
`they have identified two of their four employees are in
`Idaho. Two are in New York. So, in the balance, given
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 6 of 57 PageID #: 1573
`6
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`Defendants and third parties, as well as at least half of
`the employees on the Plaintiff's side --
`THE COURT: So, I remember Mr. Torres because he
`used to come to Court for a lot of the proceedings which, of
`course, is because he was based in New York at the time.
`Coincidentally, like three or four years ago, he came up to
`me at an event in New York and introduced himself because I
`wouldn't have recognized him otherwise. And we spoke for
`like two minutes or so, you know, pleasantries. So, I
`remember him, but what I don't understand is with expired
`patents, and as far as the record shows, I think, it's not
`as though Robocast is making something or selling something.
`I'm kind of wondering: What do the four
`employees do; do you know?
`MR. JAFFE: So, we do not know. I think,
`reading their declaration, it's kind of vague as to what the
`business operations of the entity are. We do know that they
`raised some money recently. It's in one of their exhibits.
`But other than this litigation, we don't know what their
`operations are. I sort of defer to Plaintiff's counsel on
`what those specific operations are.
`THE COURT: The money they raised, tell me more
`about that because I don't remember seeing that.
`MR. JAFFE: Yes. It was something that I
`actually noticed in preparing for today's hearing. They
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 7 of 57 PageID #: 1574
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`attached the Robocast LinkedIn profile. This is Exhibit T
`to their opposition, Docket Entry 34-20. And on ECF Page --
`THE COURT: You don't need to tell me where it
`is, just tell me what it says.
`MR. JAFFE: Okay. Sure. This is a LinkedIn
`post by Robocast. It says, "Ahead of our public launch, we
`are thrilled to be able to announce a follow-on investment
`(for an undisclosed amount) from Brown Venture Group,
`Dr. Chris Brooks, Dr. Paul Campbell, Chris Dykstra, Jerome
`Hamilton," and it says "-- BVG is an especially strategic
`addition to our growing list of follow-on investors in our
`currently active $35 million Series B round. We look
`forward to our continued partnership during this exciting
`period of innovation."
`THE COURT: Is there a date with this post?
`MR. JAFFE: So, it's three -- it says three
`months ago from when this was printed, which was in
`November, November 9th. So...
`THE COURT: All right. Go ahead.
`MR. JAFFE: Sure. So, if I can back up, we
`think that the factors overwhelmingly support transfer in
`this instance. Other than the company being founded in
`Delaware and its strategic litigation choice is to sue here,
`there are no connections to Delaware. And, in fact, when we
`look at the evidence that's provided here, again, the bulk
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 8 of 57 PageID #: 1575
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`of it is in California or closer to California.
`Your Honor's decision in Express Mobile vs.
`Web.com provides a good roadmap to what the same result
`should be here. In that case, Defendants were asking for
`transfer to the Middle District of Florida, and the
`Plaintiffs were based in the Northern District of
`California. And Defendants were a Delaware corporation that
`was headquartered in Florida. And despite the Plaintiff
`being a Delaware corporation, Your Honor found that transfer
`was appropriate. And the same analysis should apply here.
`And in particular, just to rebut a couple of
`their main points on this, they rely heavily on their choice
`of forum here in this district referring to it as a
`paramount consideration. And Your Honor addressed this
`exact point in the Express Mobile decision by saying, "By
`paramount, I understand the Court of Appeals to indicate
`that the Plaintiff's choice is the most important factor.
`That is the law. But beyond that, the balancing of factors
`is going to be influenced by other factors which are related
`to where a Plaintiff is physically located, et cetera.
`Thus, it is still the most important factor when a Plaintiff
`has a principal place of business outside Delaware or has no
`connection to Delaware other than its choice to sue here or
`other than its choice to sue here and its Delaware
`incorporation."
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 9 of 57 PageID #: 1576
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`And we have the same facts here. We have a
`Delaware Plaintiff who is incorporated here and has chosen
`to sue here, but that alone isn't enough.
`The other argument I want to address is their
`argument that Your Honor addressed, one of the three
`patents-in-suit before, and, therefore, by considerations of
`judicial economy, that the Court should keep the case. And,
`again, Your Honor's decision in Express Mobile, I think, is
`helpful on this one where --
`THE COURT: Yeah, even though I think in that
`one didn't I say that I had essentially a glancing contact
`with the patent in the past, not -- I mean, I've got more to
`say about this, but the two Robocast cases I had before were
`litigated virtually up to the eve of trial. I think one of
`them was the eve of trial. The other one may have been not
`quite that close.
`I still remember because it's the longest
`Markman hearing I ever had. I had a five-hour Markman
`hearing. I'm not going to do that again. You know, there
`was lots of briefing on summary judgment. You know, so I
`don't particularly remember it.
`I assume I went through the pretrial conference
`at least for one of the two cases and, you know, probably
`decided motions in limine. And, I mean, short of actually
`having a trial, it would be hard to imagine that I would
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 10 of 57 PageID #: 1577
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`engage with a patent as much as I did in those two cases,
`which I think is completely different than when I
`transferred the Express Mobile case.
`MR. JAFFE: Yeah, I'd be happy to address that.
`So, I think there are two, what I'll call, flavors of the
`judicial economy argument here.
`One is based on Your Honor's prior work on the
`Apple and Microsoft cases, and one is based on the
`co-pending case against Netflix. So, in addressing the
`Apple and Microsoft issue which you just brought up, I think
`there are a number of points of distinctions which are
`important here.
`Number one is those are different Defendants
`with different accused technology, different issues. So,
`there are going to be different issues that come up in this
`case than in that case.
`The second is the -- it only addressed one of
`the three patents-in-suit. So, the '451 Patent was at
`issue, but the other two patents were not at issue.
`THE COURT: But the three patents here, don't
`they have the same specification?
`MR. JAFFE: That's correct, Your Honor.
`THE COURT: So, it's not like they're three
`different patents in different technology fields. They're
`basically the same invention, just claimed differently in
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`the subsequent patents.
`MR. JAFFE: Yes, they are related patents. I
`absolutely agree with that. And I wasn't meaning to state
`that they're completely unrelated. There are just two new
`patents with additional claims to address that Your Honor
`didn't consider before. And prosecution history from each
`of those will be at issue that Your Honor didn't consider
`before.
`
`And in addition, there's also the issue of the
`passage of time. I think Your Honor's mentioning when
`Mr. Torres came up to you, and you didn't recognize him is
`helpful in kind of elucidating this point that it's been a
`long time since those cases were litigated.
`THE COURT: Yeah. No, I was going to say that.
`You know, honestly, in terms of the technology involved, I
`remember the same thing as anybody else who reads whatever
`paper trail I left. I have no -- you know, I remember the
`word nodes being very important because that's what we did
`spend the five hours on the Markman on, but I can't say that
`I'm very optimistic that any of this is going to come back
`to me faster than it would come back to some other judge
`starting from scratch.
`MR. JAFFE: I think that's exactly right, Your
`Honor. And you're in good company in making that
`consideration because the Federal Circuit has found in the
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`Verizon case where there was a case which was settled five
`years, I think, before that case, and they just mentioned
`that the trial Court's previous handling of a lawsuit
`involving the same patent that settled more than five years
`before this suit was filed.
`And I cut off the beginning of the sentence, but
`the next sentence is the key one which says, "The Eastern
`District of Texas would have to re-learn a considerable
`amount based on the lapse of time between the two suits and
`would likely have to familiarize itself with re-examination
`materials that were not part of the record during the
`previous suit."
`So, we don't have a re-examination here, but we
`do have two different patents. And I think it's analogous
`and, logically speaking, it gets at the same result which
`is, yes, Your Honor, worked on those cases and a lot of work
`went into those cases, but they were different Defendants
`involving one of the three patents. And those cases were
`filed almost a decade ago.
`THE COURT: They were filed more than a decade
`ago. I just got them a decade ago. But they were --
`somebody else was handling them before me. I don't --
`actually, never mind that. Yeah, they're a decade old.
`MR. JAFFE: So, given the passage of time, those
`do not suggest transfer because, as Your Honor mentioned,
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`you're going to have to re-learn the materials just as much
`as any other judge would, in some instances, but not all.
`THE COURT: So, you also said the co-pending
`case. You were going to address that.
`MR. JAFFE: Yes. So, the second kind of flavor
`of judicial economy here is the co-pending case against
`Netflix. And there are a couple of distinctions there that
`I want to make clear.
`Number one is that case is in its relative
`infancy. There's been no schedule.
`THE COURT: Right. I mean, they were filed the
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`same day.
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`MR. JAFFE: There's been no schedule set in that
`case. It is addressing the same three patents that are at
`issue in this case, but it's addressing different accused
`product, different technology, which means there's likely
`going to be significantly different discovery at issue, and
`therefore, is not the same for purposes of the transfer
`analysis.
`
`THE COURT: Remind me of who the Defendant is in
`the other case.
`MR. JAFFE: Netflix, Your Honor.
`THE COURT: Where are they headquartered?
`MR. JAFFE: They are headquartered in the
`Northern District of California, I believe.
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`THE COURT: Okay.
`MR. JAFFE: On the point about the distinction
`of the co-pending case, if I can make two points. One is
`the Federal Circuit has repeatedly stated that the presence
`of a co-pending litigation by itself should not drive and
`tip the scales to keeping a case that otherwise should be
`transferred. I almost think back to kind of the difference
`between pre-AIA and post-AIA where you would kind of sue
`five Defendants to be able to anchor the lawsuit in one,
`even where one Defendant was properly transferred.
`I think you can kind of make the same sort of
`argument here where the presence of Netflix staying here
`shouldn't outweigh the other considerations in the transfer.
`THE COURT: In that regard, did you have any
`conversation with Netflix's counsel, because leaving aside
`all the transfer factors, it does seem relatively ridiculous
`to have one case here and one case in California on the same
`three patents when both cases could be here or both cases
`could be in California, but it seems like the worst possible
`solution is to have one case here and one case there.
`MR. JAFFE: So, to address the first point is my
`understanding is Netflix is not moving to transfer which is
`public record.
`THE COURT: So, they haven't filed a motion?
`MR. JAFFE: Yeah. And so, that kind of is their
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`own choice. I think it goes back to 1404 being a
`case-by-case basis. I take Your Honor's point --
`THE COURT: But Netflix isn't going to have any
`employees or documents here, either. I mean, they're going
`to be virtually -- I mean, I'm not trying to encourage them
`to file a motion, but they could make the exact same
`arguments you're making, I'm confident.
`MR. JAFFE: I'm sure they could. And in terms
`of them being a candidate for transfer, they are based in
`the Northern District of California as well.
`I think for our point, to address Your Honor's
`question in terms of the potential for two judges handling
`the same case, this, again, goes back to the point that 1404
`transfer should be done on an individualized case-by-case
`basis. And the pending case should not drive the transfer
`decision.
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`And there's actually a Federal Circuit case.
`This is arising from the Fifth Circuit going up to the
`Federal Circuit, so not directly from the Third Circuit, but
`I think gets at this exact point. It's the In Re: Dish
`Network decision where the Federal Circuit stated,
`"Moreover, each of BBiTV's co-pending suits in the Western
`District of Texas involve different Defendants with
`different hardware and different software. Thus, as in
`Samsung, they are, therefore, likely to involve
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`significantly different discovery and evidence. Applying
`the same analysis we applied in Samsung here requires that
`we conclude that any judicial economy considerations in
`keeping this case in Texas are insufficient to outweigh the
`clear benefits to transfer in light of the imbalance of the
`parties' respective presentations on the other private
`interests and public interest factors."
`I would submit that the same thing is true here
`in terms of the -- just because they filed here in this case
`can't anchor another Defendant's case here because they've
`chosen not to file a motion to transfer.
`THE COURT: So, one of the other things that I
`think the Plaintiff said talking about anchoring was on at
`least one occasion, and I think on more, Google's filed
`declaratory judgment actions here. And I think your
`response in your brief was, Well, jeez, they didn't want to
`be in Texas, so where else could they file it? But doesn't
`it seem that the argument that convenience requires transfer
`sort of -- don't you kind of contradict yourself, not you
`personally, but your company, your client by saying, well,
`when we want to transfer, you should transfer it. When you
`want to file suit in Delaware, you should keep it?
`MR. JAFFE: Yeah. I'm happy to address that,
`Your Honor. There's two things I think to respond to that.
`Number one, was the -- I think that you
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 17 of 57 PageID #: 1584
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`mentioned the Geotag litigation. It was an instance where I
`think they had filed, you know, hundreds of lawsuits.
`THE COURT: Oh, yeah, yeah. I don't remember
`the technology, but I remember the numbers.
`MR. JAFFE: And in the filing that, the
`Plaintiff attached to their motion Google notes that
`Delaware was likely the only jurisdiction available other
`than Texas where they were filing the other lawsuits. So, I
`think that was kind of the reason why Delaware was the
`appropriate location.
`But to answer Your Honor's question in terms of
`the inconsistency, it's just not relevant here because each
`case has to be addressed on its merits.
`THE COURT: But in a way and, you know, and I
`don't question that you're accurately citing what the
`Federal Circuit has said from time to time, but it does seem
`relevant in some sense when we're talking about convenience
`that not only are you able to litigate in Delaware, which
`nobody ever questioned, but that sometimes, for one reason,
`that's where you choose to litigate. And not just, you
`know, you're sued in the Court of Chancery for something
`because you're a Delaware corporation, but that these very
`same kinds of cases that, you know, you're now saying the
`balance of convenience, you know, requires transfer to the
`Northern District, you know, some years ago, not you
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`Case 1:22-cv-00304-RGA-JLH Document 43 Filed 01/19/23 Page 18 of 57 PageID #: 1585
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`personally, but someone was saying it would be an abuse of
`discretion for me to transfer a case to Texas where there
`were already 300 pending cases involving the same
`technology.
`I mean, doesn't that just seem to have some
`relevance here?
`MR. JAFFE: In terms of -- I think under the
`Federal Circuit's and the Supreme Court's discussion of 1404
`that each case has to be evaluated on and so on, I think
`that gets at the real answer to your question, which is
`let's say that we had the same accused functionality, the
`same witnesses, the same third-party witnesses at issue in
`this case as in the Geotag case. Then I think Your Honor
`would be exactly correct that there would be an incongruence
`between the two.
`But here, the evidence that we put forward in
`terms of the convenience of the parties, convenience of the
`third parties, practical considerations on where the
`inventor of the patents-in-suit is closer to ND of Cal, all
`those considerations weigh in consideration of transfer
`here. So, I think the true answer to your question is just
`to look at the applications of the specific factors. And
`stepping back, the fact that Google is moving to transfer
`this suit, has not moved to transfer others and has filed
`here and others, gives credence to the fact that Google is
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`rationally thinking about these things and putting forth
`some judgment on which ones to file transfer motions and
`which ones are not because of the consideration of these
`factors.
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`THE COURT: Well, so one of the things that, you
`know, I do remember thinking about when I had the transfer
`motions, you know, it's not a technology thing. That's the
`reason I remember it. But when I had the transfer motions
`with Robocast a decade ago, one of the things, and I don't
`remember whether I put it down in the opinion or not, but it
`did seem that the imbalance between the size of the
`Defendants and Robocast, who I think at the time I made the
`decision I thought was pretty much a one-person operation --
`but if it had been a four-person operation, it wouldn't have
`been any different -- was that it seemed a lot like the
`transfer motion was just being used to try to gain leverage
`in the litigation. That any sort of rational analysis back
`then was Robocast located in New York, some history of being
`a Delaware corporation, close by. This was much more
`convenient for Robocast to litigate here than it was to
`litigate in the Northern District of California.
`Now, today, yes, okay, Mr. Torres apparently
`lives in Idaho. And it does seem to me that, although
`Mr. Henschke may tell me something else, but it does seem to
`me like he's in between 95 and a hundred percent of
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`Robocast, and it's not quite as easy for him. And yet, he
`still put Delaware.
`You know, and why shouldn't there be, for lack
`of a better word, some -- you know, leaving aside the
`paramount consideration, why shouldn't there be some
`acknowledgment that his resources are, as many of us are
`dwarfed by your resources, and that maybe that ought to
`count for more in his choice of where to sue?
`MR. JAFFE: In terms of how that fits into the
`transfer analysis, I think I want to take it piece by piece.
`First, you mentioned his choice of where to sue. That is
`actually addressed under the paramount consideration
`factors. So, I think given that they are not a -- they
`don't have an office here, that is entitled to reduced
`weight.
`
`In terms of the relative financial sizes of the
`parties, the record evidence indicates that they are a
`four-person company with the CEO and president present in
`Idaho. That is indisputably closer to California than it is
`to Delaware. So, if, you know, we're looking at the
`convenience of the parties here, simply saying I want to be
`in Delaware is not a convenience issue.
`THE COURT: Well, you know, sometimes it is.
`There's a lawyer in the Northern District of California who,
`you know, I've met at other events and, you know, she's
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