Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 1 of 28
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`Miami Division
`Case Number: 1:14-cv-20529-PAS
`
`CAPELLA PHOTONICS, INC.,
`
`Plaintiff,
`
`
`
`vs.
`
`CISCO SYSTEMS, INC.,
`
`Defendant.
`
`________________________________________
`
`JURY TRIAL DEMANDED
`
`DEFENDANT’S MOTION AND MEMORANDUM IN SUPPORT OF MOTION TO
`TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
`
`Capella 2001
`Cisco v. Capella
`IPR2014-00894
`
`

`
`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 2 of 28
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`III.
`IV.
`
`INTRODUCTION ............................................................................................................. 1
`FACTUAL BACKGROUND ............................................................................................ 2
`A.
`Both of the Parties To This Lawsuit Are Based In the Northern District of
`California and Have No Meaningful Connection to Florida ................................. 2
`1.
`Cisco has no meaningful connection to this District ................................. 2
`2.
`Capella has no meaningful connection to this District .............................. 3
`The Accused WSS Technology Was Designed by JDSU and other Third-
`Party Companies, All of Whom are Headquartered and Have Relevant
`Witnesses in the Northern District of California ................................................... 3
`1.
`Capella claims WSS devices are at the heart of the infringement
`issue............................................................................................................ 3
`The development of the WSS technology is centered in the
`Northern District of California, just a few miles from both Cisco
`and Capella................................................................................................. 4
`Key Witnesses For Each of the Major Issues in the Case Reside Outside of
`the Southern District of Florida, and Most Reside in the Northern District
`of California ........................................................................................................... 5
`1.
`Key witnesses relevant to non-infringement are in the Northern
`District of California .................................................................................. 5
`Key witnesses to Capella's inequitable conduct are located in the
`Northern District of California................................................................... 6
`Key witnesses relevant to invalidity are located in the Northern
`District of California .................................................................................. 8
`Key witnesses relevant to damages are located in the Northern
`District of California .................................................................................. 8
`Important sources of relevant documents and physical evidence are
`in the Northern District of California ......................................................... 9
`LEGAL STANDARD ...................................................................................................... 10
`ARGUMENT ................................................................................................................... 11
`A.
`This Action Could Have Been Brought in the Northern District of
`California ............................................................................................................. 11
`The Public and Private Interest Factors Strongly Favor Transfer to the
`Northern District of California............................................................................. 11
`
`B.
`
`C.
`
`B.
`
`2.
`
`2.
`
`3.
`
`4.
`
`5.
`
`-i-
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`

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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 3 of 28
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`1.
`
`2.
`
`3.
`
`4.
`5.
`6.
`
`7.
`
`8.
`
`9.
`
`The locus of operative facts is in the Northern District of
`California ................................................................................................. 11
`Capella’s choice of forum is entitled to little deference because the
`operative facts have no connection to this District .................................. 13
`The convenience of the majority of known witnesses strongly
`favors transfer to the Northern District of California .............................. 14
`Access to the California-based sources of proof favors transfer ............. 16
`The convenience of the California-based parties favors transfer ............. 16
`The availability of compulsory process in the Northern District of
`California strongly favors transfer ........................................................... 16
`The relative means of both parties would improve with transfer to
`the home jurisdiction for those parties ..................................................... 18
`This case presents issues unique to California state law—favoring
`transfer ..................................................................................................... 18
`The interests of justice strongly favors transfer to the home forum
`of the parties and the key witnesses—the Northern District of
`California ................................................................................................. 18
`
`-ii-
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`

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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 4 of 28
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`In re Acer America Corp.,
`626 F.3d 1252 (Fed. Cir. 2010)................................................................................................10
`
`Cellularvision Techs. & Telecomm., L.P. v. Alltel Corp.,
`508 F. Supp. 2d 1186 (S.D. Fla. 2007) ....................................................................................13
`
`In re EMC Corp.,
`501 F. App’x. 973 (Fed. Cir. 2013) ...................................................................................11, 20
`
`In re EMC Corp.,
`677 F.3d 1351 (Fed. Cir. 2012)................................................................................................20
`
`Evans Design Dynamics, LLC v. Nike, Inc.,
`No. 8:12-cv-493-JDW-TBM (M.D. Fla.) ................................................................................13
`
`Game Controller Tech., LLC v. Sony Computer Entm’t Am. LLC,
`No. 13-civ-22795, 2014 WL 321862 (S.D. Fla. Jan. 10, 2014) ...............................................14
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)..........................................................................................14, 16
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................10
`
`Manuel v. Convergys Corp.,
`430 F.3d 1132 (11th Cir. 2005) ...............................................................................................10
`
`Mayfonk, Inc. v. Nike, Inc.,
`No. 13-civ-60755, at 4-5 (S.D. Fla. Jan. 17, 2013) ............................................................15, 19
`
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011)................................................................................................10
`
`Motorola Mobility, Inc. v. Microsoft Corp.,
`804 F. Supp. 2d 1271 (S.D. Fla. 2011) ....................................................................................12
`
`Neil Bros. Ltd. v. World Wide Lines, Inc.,
`425 F. Supp. 2d 325 (E.D.N.Y. 2006) .....................................................................................14
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)................................................................................................10
`
`-iii-
`
`

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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 5 of 28
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`In re Nintendo Co.,
`544 F. App’x. 934 (Fed. Cir. 2013) .........................................................................................20
`
`In re Spalding Sports Worldwide, Inc.,
`203 F.3d 800 (Fed. Cir. 2000)..................................................................................................18
`
`Thermal Techs., Inc. v. Dade Serv. Corp.,
`282 F. Supp. 2d 1373 (S.D. Fla. 2003) ....................................................................................10
`
`In re Toyota Motor Corp.,
`2014-113 (Fed. Cir. April 3, 2014) ..............................................................................10, 15, 20
`
`Trace-Wilco, Inc. v. Symantec Corp.,
`No. 08-civ-80877, 2009 WL 455432 (S.D. Fla. Feb. 23, 2009) ........................................12, 13
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)..........................................................................................18, 19
`
`In re Verizon Bus. Network Serv. Inc.,
`635 F.3d 559 (Fed. Cir. 2011)............................................................................................11, 20
`
`Wi-Lan USA, Inc. v. Alcatel-Lucent USA Inc.,
`No. 12-civ-23568, 2013 WL 358385 (S.D. Fla. Jan. 29, 2013) ...............................................10
`
`STATUTES
`
`28 U.S.C.
`§ 1391(c) ..................................................................................................................................11
`§ 1400(b) ..................................................................................................................................11
`§ 1404(a) ........................................................................................................................1, 10, 11
`
`35 U.S.C.
`§ 287...........................................................................................................................................8
`§ 299(a)(1) ...............................................................................................................................20
`
`Business and Professions Code
`§ 17200...............................................................................................................................18, 19
`
`-iv-
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`

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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 6 of 28
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`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`California Evidence Code
`§§ 911-920 ...............................................................................................................................19
`§ 912(a) ....................................................................................................................................19
`§§ 950-962 ...............................................................................................................................19
`§ 956.........................................................................................................................................19
`
`Cal. CCP. Code
`§§ 2020.240, 220................................................................................................................17, 18
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 45(c)(1) ..................................................................................................................17
`
`-v-
`
`

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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 7 of 28
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`Defendant Cisco Systems, Inc. moves this Court to transfer this action to the United
`
`States District Court for the Northern District of California pursuant to 28 U.S.C. § 1404(a).
`
`I.
`
`INTRODUCTION
`
`To avoid its home forum, San Jose-based Capella flew 3,000 miles to sue another San
`
`Jose-based company, Cisco. The headquarters for Capella and Cisco are a mere 16 miles apart
`
`and both are within 10 miles of the Federal courthouse in San Jose. Capella should have filed this
`
`case in its home forum, the Northern District of California. Not only do Cisco and Capella lack
`
`any significant contacts with Florida, the key witnesses and documents related to the issues in
`
`this case are located in the Northern District of California. This case simply has no meaningful
`
`ties to Florida or the Southern District of Florida.
`
`For issues of non-infringement, both the maker of the accused products (Cisco) and the
`
`companies that design and supply the components at issue within those products (JDSU, Finisar,
`
`and Oclaro) are all in the Northern District of California—just miles from Capella’s
`
`headquarters. These California-based suppliers will be the only witnesses that can testify fully
`
`about the operation and design of the WSS components in the accused products—components
`
`that Capella expressly called out in its complaint.
`
`For inequitable conduct, the two persons specifically identified in Cisco's Third
`
`Affirmative Defense, as well as most of the named inventors, live in the Northern District. The
`
`asserted patents were prosecuted by attorneys in the Northern District. These witnesses, and their
`
`live testimony, will be important to at least one of Cisco's defenses.
`
`For invalidity, important sources of prior art are in the Northern District. Companies such
`
`as JDSU and Finisar—headquartered within miles of Capella in San Jose—pioneered much of
`
`the early work in the technology. Capella, for example, has already acknowledged that JDSU’s
`
`early technology development plays a critical role in the validity of the asserted patents.
`
`For damages, the important sources of data on sales, non-infringing alternatives, and the
`
`differences between the patent and the old modes of operation are the same California companies
`
`(JDSU, Finisar, and Oclaro) that design, manufacture, and/or supply the accused WSS
`
`-1-
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`

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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 8 of 28
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`components. Further, witnesses and records concerning the recent purchase of Capella assets
`
`(which will inform the value of the patents-in-suit) are also in the Northern District.
`
`Accordingly, the vast majority of facts in this case center around the home jurisdiction
`
`for both Capella and Cisco—the Northern District of California. Parties and non-parties alike
`
`will benefit from significantly lower costs and burdens associated with accessing sources of
`
`proof and attending trial if this litigation is transferred to the Northern District of California. The
`
`Northern District is clearly more convenient than the Southern District of Florida for litigating
`
`this suit, and the Northern District has an interest in adjudicating this action unparalleled by any
`
`interest this District might have.
`
`II.
`
`FACTUAL BACKGROUND
`A.
`Both of the Parties To This Lawsuit Are Based In the Northern District of
`California and Have No Meaningful Connection to Florida
`
`Cisco has no meaningful connection to this District
`1.
`Cisco is a California company, incorporated in 1984, with its principal place of business
`
`in San Jose, California. (Haase Decl. ¶ 5.) San Jose is located in the Northern District of
`
`California, and houses a Federal courthouse. (Leary Decl. Ex. LL, at 2.) Cisco runs its primary
`
`operations from its San Jose campus. (Haase Decl. ¶ 5.) Cisco has eight other offices in the
`
`Northern District, and 45% of its U.S. employees work in that District. (Haase Decl. ¶¶ 7, 9.)
`
`Cisco's High End Routing and Optical (“HERO”) business unit manages development,
`
`marketing, and sales activities related to the accused products. (Johnson Decl. ¶ 5.) Most Cisco
`
`employees in charge of the accused products belong to HERO. (Id.) The HERO business unit is
`
`managed from Cisco's San Jose office. (Id.) Most of the people involved in marketing the
`
`accused products are located in the Northern District of California. (Johnson Decl. ¶¶ 12, 14.)
`
`The only Florida-based Cisco office that Capella cites in its Complaint (in the city of
`
`Doral), (Complaint at ¶ 2), has no connection to this case. Neither does Cisco's other office in the
`
`Southern District. (See Haase Decl. ¶¶ 11–13.) Neither Florida office has employees involved in
`
`the design, development, manufacture, marketing, or financial reporting or analysis of the
`
`accused products. (Haase Decl. ¶ 13; Johnson Decl. ¶¶ 5-6, 9; Sacks Decl. ¶ 7.) The head of the
`
`-2-
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`

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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 9 of 28
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`HERO business unit is not aware of even one person in that business unit who works in Florida,
`
`let alone in the Southern District. (Johnson Decl. ¶ 6.) No one in the two Florida offices has ever
`
`sold any of the accused products. (Sacks Decl. ¶ 9.) The number of people in Southern District
`
`offices represents less than 1% of Cisco's employees. (Haase Decl. ¶ 12.)
`
`2.
`
`Capella has no meaningful connection to this District
`
`Capella has no meaningful connection to the Southern District of Florida. It is a Delaware
`
`corporation registered to transact business in California. (Complaint, ¶ 1.) Capella’s principal
`
`place of business since its founding in 2000 is in San Jose, California. (Id.) Capella’s
`
`headquarters are 16 miles from Cisco’s. (Leary Decl. Ex. W.) Cisco is unaware of any Capella
`
`offices or employees in Florida, and Capella pleads no special connection to Florida.
`
`Capella’s senior executives work in the Northern District of California. (See Leary Decl.
`
`Exs. Y, AA–CC.) Not surprisingly, these executives have chosen to work with California
`
`lawyers close to Capella's headquarters. For example, all of the attorneys associated with the
`
`prosecution of the patents-in-suit are located in the Northern District. (Leary Decl. Exs. A-D,
`
`HH–JJ.) Capella even selected local California patent litigators to lead its patent litigation.
`
`(Leary Decl. Ex. KK.)
`
`B.
`
`The Accused WSS Technology Was Designed by JDSU and other Third-
`Party Companies, All of Whom are Headquartered and Have Relevant
`Witnesses in the Northern District of California
`In addition to Cisco, three other companies are involved in the design and development
`
`of components used in the accused products—JDS Uniphase (“JDSU”), Finisar, and Oclaro.
`
`(Johnston ¶¶ 8–10.) All are based in the Northern District of California. (See id.)
`
`Capella claims WSS devices are at the heart of the infringement issue
`1.
`Capella focuses its infringement accusation on one sub-component of the accused
`
`products: “wavelength selective switches.” These switches are known as “WSSs.”
`
`Capella … alleges, that Cisco has directly infringed and continues to directly
`infringe, literally and/or under the doctrine of equivalents, the ’368 patent by
`making, using, selling, offering to sell and/or importing optical ROADM products
`that incorporate a wavelength selective switch (“WSS”)….
`
`-3-
`
`

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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 10 of 28
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`(Complaint at ¶¶ 20, 26 (emphasis added).)
`
`The WSS is sometimes also known as a wavelength separating router (“WSR”) and a
`
`wavelength cross connect (“WXC”). (Johnson Decl. ¶ 7; Leary Decl. Ex. K.) Capella's patents
`
`recite WSS technology. (See, e.g., ’678 patent, at claim 1 (“A wavelength-separating-routing
`
`[WSR] apparatus, comprising.…”).) And as discussed below in §II.C.2, the only points of
`
`novelty Capella claimed for the claims of the patents-in-suit are directed solely at the WSS
`
`components. (See, e.g., Leary Decl. Ex. K (narrowing the ’678 patent claims to WSR devices
`
`with micromirrors that are “pivotal about two axes” to “control the power” of the outputs of the
`
`WSR).) Capella has already signaled that it will make WSS technology important to this case.
`
`Accordingly, Cisco's defenses will also focus on WSS technology.
`
`2.
`
`The development of the WSS technology is centered in the Northern
`District of California, just a few miles from both Cisco and Capella
`The designer, developer, and supplier of most of the WSS devices used in the accused
`
`products is third-party JDSU. (Johnson Decl. ¶¶ 8–9; Johnston Decl. ¶¶ 8–9; Retort Decl. ¶ 5.)
`
`JDSU employees (both past and present) will be the witnesses with information on the design,
`
`development, finances, and sales of the accused WSS devices. (See Johnston Decl. ¶ 9; Kim
`
`Decl. ¶¶ 6, 9, 11; Retort Decl. ¶¶ 6, 10–12.) JDSU is headquartered in the Northern District of
`
`California in Milpitas, California. (Retort Decl. ¶ 2.)
`
`Almost everything about JDSU and its relationship to the accused WSS devices is
`
`directly connected to the Northern District of California. JDSU's headquarters are 15 miles from
`
`Plaintiff Capella, 3.3 miles from Defendant Cisco, and 8 miles from the Federal courthouse in
`
`San Jose. (Leary Decl., Exs. L-N.) The Communications and Commercial Optical Products
`
`(“CCOP”) Business Segment is the part of JDSU's business responsible for the design,
`
`development, manufacture, marketing, and sale of WSS devices. (Retort Decl. ¶¶ 6–7.) The
`
`CCOP Business Segment is based in the Northern District. (Id. at ¶ 7.) Documentation regarding
`
`design, marketing, product development, testing, and supply chain management are located in
`
`the Northern District. (Retort Decl. ¶ 12.) The person in charge of the teams responsible for the
`
`-4-
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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 11 of 28
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`design and development of JDSU's WSS devices works in the Northern District. (Retort Decl. ¶¶
`
`6, 10.) Sales of JDSU's WSS components to Cisco are managed from within the Northern
`
`District. (Kim Decl. ¶ 6.) And the person in charge of JDSU's selection and supply of the micro-
`
`electro-mechanical systems (MEMS) recited in the amended claims of the patents-in-suit is in
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`the Northern District. (Mumm Decl. ¶ 9.)
`
`JDSU does not manufacture the accused WSS components in Florida. (Retort Decl. ¶ 11.)
`
`None of the components JDSU acquires for the WSS devices used in the accused products have
`
`connections to Florida. (Mumm Decl. ¶ 8.) JDSU performs no design or testing of the WSS in
`
`Florida. (Retort Decl. ¶ 10.) No one in the relevant sales organization works in Florida. (Kim
`
`Decl. ¶ 9.)
`
`In addition to JDSU, Finisar and Oclaro produce a portion of the WSS devices in Cisco’s
`
`accused products. (Johnson Decl. ¶ 10; Johnston Decl. ¶ 9–10.) Finisar is headquartered in the
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`Northern District of California, 17 miles from Capella, 4.2 miles from Cisco, and 10 miles from
`
`the Federal courthouse. (Leary Decl. Exs. O-R.) Oclaro is also headquartered in the Northern
`
`District, 13 miles from Capella, 2.5 miles from Cisco, and 6 miles from the Federal courthouse.
`
`(Leary Decl. Exs. S-V.) None of Cisco’s suppliers of the WSS devices is located in Florida.
`
`(Johnston Decl. ¶ 11.)
`
`C.
`
`Key Witnesses For Each of the Major Issues in the Case Reside Outside of
`the Southern District of Florida, and Most Reside in the Northern District of
`California
`Most of the anticipated evidence and testimony in this action will be provided by
`
`witnesses—many of them third parties—located in the Northern District of California. These
`
`witnesses have knowledge and documents related to non-infringement, validity, damages, and
`
`inequitable conduct.
`
`1.
`
`Key witnesses relevant to non-infringement are in the Northern
`District of California
`The facts of Cisco's non-infringement defense will turn largely on witnesses with
`
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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 12 of 28
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`knowledge on the design and development of the accused products and the WSS devices within
`
`them. These witnesses include the following persons, all of whom work and reside in the
`
`Northern District of California:
`
`(cid:120) Ron Johnson, San Jose, CA—Cisco's Director of Product Management for the HERO
`business unit, which is responsible for the accused products. He has information about
`the accused products’ technology as well as the production, marketing, and sales of the
`products. (Johnson Decl. ¶¶ 2, 11.)
`(cid:120) Vince Retort, Milpitas, CA—JDSU's Vice President of Research and Development for
`Communications and Commercial Optical Products. He is familiar with the WSS
`technology of the accused products, and manages teams of engineers that are responsible
`for the design and development of JDSU's WSS devices. (Retort Decl. ¶¶ 2, 6.)
`(cid:120) Patrick Mumm, Milpitas, CA—a Commodity Manager at JDSU, he has information
`about the selection, procurement, qualification, cost, and financial information of
`components such as MEMS micromirrors within the WSSs. (Mumm Decl. ¶¶ 2, 6.)
`(cid:120) Current and former employees of Finisar, Sunnyvale, CA—information related to the
`design/development of WSS devices within the accused products. (Johnson Decl. ¶ 10.)
`(cid:120) Current and former employees of Oclaro, San Jose, CA—information related to the
`design/development of WSS devices within the accused products. (Johnson Decl. ¶ 10.)
`
`2.
`
`Key witnesses to Capella's inequitable conduct are located in the
`Northern District of California
`In this action, the inventors and prosecutors will be important. Cisco alleges inequitable
`
`conduct—challenging the candor and good faith of those involved in prosecuting the patents
`
`before the Patent Office. (See Answer at Third Aff. Def., ¶¶ 1–50.) Personal credibility of those
`
`accused of defrauding the Patent Office—including the inventors and the prosecutors of the
`
`patents-in-suit—will be directly at issue. And the people involved all reside in the Northern
`
`District of California.
`
`Prior to identifying the witnesses for inequitable conduct, a summary of the prosecution
`
`of the patents-in-suit is helpful in understanding why the factual issues for this defense are
`
`centered in California. As Cisco's Answer explains in detail in Cisco's Third Affirmative
`
`Defense, the events surrounding Capella's inequitable conduct include the following:
`
`1.
`
`In 2010, Capella executives were trying to sell the company and knew that the
`perceived strength of their patents was important to the value of the company.
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`-6-
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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 13 of 28
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`2. Capella executives and their California-based attorneys asked the Patent office to
`reissue what became the patents-in-suit, but attempted to avoid admitting the
`“mistake” the Patent Office requires as a basis to grant reissue.
`
`3. Even after the Patent Office demanded that Capella admit the specifics of the
`“mistake,” Capella provided an incomplete response, saying only that “at least” the
`first claim of each of the originally-issued patents (for which Capella sought reissue)
`was invalid in view of a patent to California-based JDSU—the “Bouevitch patent.”
`
`4. Specifically, Capella said the claims were invalid because they lacked limitations to
`(a) 2-dimensional (e.g., two-axis) control of micromirrors; and (b) power control.
`
`5. Capella amended its claims to add the above two limitations and represented that
`those amendments distinguished the resulting claims from JDSU's Bouevitch patent.
`
`6. At the same time, Capella knew that the two allegedly-novel aspects were not new
`and that others had developed them long before Capella.
`The witnesses related to Capella’s inequitable conduct include:
`
`(cid:120)
`
`Jeffery P. Wilde, Los Altos, CA—a named inventor on the patents-in-suit who filed the
`provisional patent which admitted that 2-D mirror control was in the prior art despite
`Capella's later claim that such mirrors were a point of novelty. (Leary Decl. Exs. A, B, I.)
`
`(cid:120)
`
`Joseph Davis, Morgan Hill, CA—Capella's prior CEO and named inventor on the
`patents-in-suit who was involved in prosecution and aware of undisclosed, highly-
`material prior art. (Leary Decl. Exs. A, B, J, FF.)
`(cid:120) Larry Schwerin, San Jose, CA—the President and CEO of Capella, Mr. Schwerin was
`the individual who declared to the Patent Office that the pre-reissue patents were invalid,
`and
`that—incorrectly—the amendments Capella made
`to
`the pre-issue claims
`distinguished those claims from the prior art. (Leary Decl. Exs. Y, BB, CC, EE.)
`(cid:120) Barry Young, Palo Alto, CA—the patent prosecutor for Capella during the reissue of
`the patents-in-suit, he is knowledgeable about the "mistake" forming Capella's stated
`basis for seeking reissue of the patents-in-suit. (Leary Decl. Exs. A, B, JJ.)
`
`(cid:120)
`
`Joshua Isenberg, Fremont, CA—the patent prosecutor for Capella on patents related to
`the patents-in-suit, can testify about Capella’s knowledge of undisclosed, highly-material
`prior art. (Leary Decl. Exs. D, II.)
`(cid:120) David Alberti, Menlo Park, CA—the prosecutor for the original patent and continuing
`applications of the patents in suit, can testify about prior art and its relation to the
`"mistake" in the original prosecution. (Leary Decl. Exs. C, HH.)
`(cid:120) Mark H. Garrett, Auburn, CA—the former Director of Optical Engineering at Capella,
`he was involved with filing the provisional patent to which the patents-in-suit claim
`priority, and can testify about the prior art that Capella was aware of during the
`prosecution of the patents-in-suit (Leary Decl. Ex. X, GG. )
`
`All of the above witnesses with knowledge of patent prosecution are in the Northern
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`District of California. (Leary Decl. Exs. A-D, H-J, X-Y, BB–JJ.) None are in Florida. (See id.)
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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 14 of 28
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`3.
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`Key witnesses relevant to invalidity are located in the Northern
`District of California
`Witnesses related to issues of invalidity include witnesses who can testify about the prior
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`art, the commercial success or failure of Capella's products, motivations to combine prior art, and
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`the state of the art at the time of the filing of the patents-in-suit. Not surprisingly, these witnesses
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`reside in the Northern District of California where much of the WSS technology was originally
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`developed. Each of these witnesses or entities listed below is located in the Northern District or
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`is susceptible to California's statewide subpoena power.
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`(cid:120)
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`JDSU, Milpitas, CA—likely source for prior art documents and physical systems related
`to U.S. Patent No. 6,498,872 (the "Bouevitch patent") which is assigned to JDSU and
`invented by five of JDSU's employees. The Bouevitch patent was disclosed during
`Capella’s reissue prosecution, in view of which Capella admitted the claims of the patents-
`in-suit were "too broad and invalid." (Leary Decl. Ex. MM at 1.)
`(cid:120) Bill O’Hollaren, San Jose, CA—VP Product Development and Operations for Capella for
`more than a decade, he will have information about Capella’s product development,
`products that utilize the patents-in-suit, and the commercial success or failure of those
`products. (Leary Decl., Ex. BB.)
`(cid:120) Armand Neukermans, Portola Valley, CA—co-inventor of U.S. Patent No. 5,629,790,
`which Capella referenced in the patents-in-suit but failed to properly characterize as prior
`art disclosing 2-D mirror control. (Leary Decl. Exs. F-G.)
`(cid:120) Rajiv Ramaswami, Irvine, CA—an author of invalidating prior art, he can testify as to
`that art, the related market, state of the art, and his knowledge of the claimed technology.
`(Leary Decl. ¶ 8; Exs. E-F.)
`(cid:120) Finisar, Sunnyvale, CA—a WSS component supplier, Finisar is likely to have information
`about prior art, the market for the technology at issue, early development of this
`technology, and competitive products. (Johnson Decl. ¶ 10; Leary Decl. Ex. O.)
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`4.
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`Key witnesses relevant to damages are located in the Northern
`District of California
`Witnesses related to issues of damages include witnesses who can testify about (1)
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`financial data for the accused products and WSS components; (2) Capella's failure to properly
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`mark under 35 U.S.C. § 287; (3) marketing for the accused products; (4) non-infringing
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`alternatives; (4) the valuation of Capella and its patent portfolio; (5) which features of WSS
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`devices, if any, drive the value of the accused products; (6) Capella's knowledge with respect to
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`Cisco's laches defense; and (7) licensing. These witnesses also include current or prior Capella
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`executives who were witness to the recent acquisition of Capella, and will have information
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`-8-
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`Case 1:14-cv-20529-PAS Document 19 Entered on FLSD Docket 04/04/2014 Page 15 of 28
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`regarding the value of the patents as informed by the details of that acquisition. These witnesses
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`and entities include the following, each of who are located in the Northern District:
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`(cid:120) Rafael Torres, San Jose, CA—Capella’s former CFO, he will testify about Capella’s
`acquisition and attempts to sell itself, the valuation of its intellectual property, and the
`commercial success/failure of the technology at issue. (Leary Decl. Ex. CC– DD.)
`(cid:120) Bruce Gray, last known in San Jose, CA—the former President of Capella, he was
`involved in the acquisition