Case 2:17-cv-03740-JMV-JBC Document 46 Filed 04/02/18 Page 1 of 20 PageID: 1719
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`FOX ROTHSCHILD LLP
`Formed in the Commonwealth of Pennsylvania
`Karen A. Confoy
`Allison L. Hollows
`Princeton Pike Corporate Center
`997 Lenox Drive, Building 3
`Lawrenceville, NJ 08648
`Telephone: 609.896.3600
`Facsimile: 609.896.1469
`kconfoy@foxrothschild.com
`ahollows@foxrothschild.com
`
`SHEPPARD, MULLIN, RICHTER
`& HAMPTON LLP
`A Limited Liability Partnership
`Including Professional Corporations
`Stephen S. Korniczky (pro hac vice)
`Martin R. Bader (pro hac vice)
`Ericka J. Schulz (pro hac vice)
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Telephone: 858.720.8900
`Facsimile: 858.509.3691
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`
`Counsel for Defendants and Counterclaim-Plaintiffs
`HTC Corporation and HTC America, Inc.
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
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`Plaintiff
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`v.
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`INVT SPE LLC,
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`HTC Corporation, and
`HTC America, Inc.,
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`Defendants.
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`Civil Action No. 2:17-cv-03740-JMV-JBC
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`Filed Electronically
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`RETURN DATE: APRIL 16, 2018
`ORAL ARGUMENT REQUESTED
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`DEFENDANTS HTC CORPORATION AND HTC AMERICA, INC.’S
`REPLY BRIEF IN SUPPORT OF THEIR MOTION TO TRANSFER
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`IPR2018-1581
`HTC EX1015, Page 1
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`Case 2:17-cv-03740-JMV-JBC Document 46 Filed 04/02/18 Page 2 of 20 PageID: 1720
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`
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`I.
`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................ 1
`ARGUMENT................................................................................................ 3
`A. HTC’s And Qualcomm’s Detailed, Unrebutted Affidavits Show
`Not New Jersey—Greatly Favoring Transfer. ..................................... 3
`1.
`Qualcomm. ............................................................................... 4
`2.
`The Carriers Are Not Relevant To Venue In This Case. ............ 6
`3.
`License On FRAND Terms. ...................................................... 8
`4.
`Panasonic’s U.S. Entity Has No Ties To This Case................... 9
`B.
`Factors Favors Transfer To CAND. .................................................. 10
`C.
`The Public Factors Favor Transfer To CAND. .................................. 13
`III. CONCLUSION .......................................................................................... 15
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`The Operative Facts On Key Issues Center Around California,
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`The Infringement Investigation Will Center Around
`
`The Remedies INVT Seeks Rely On Inventergy’s
`Actions, And HTC Asserts Defenses Based On
`Inventergy’s Failure To Provide Notice Or Offer A
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`Given The Weight Of HTC’s Evidence, The Balance Of Private
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`IPR2018-1581
`HTC EX1015, Page 2
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`Case 2:17-cv-03740-JMV-JBC Document 46 Filed 04/02/18 Page 3 of 20 PageID: 1721
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`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Audatex N. Am. v. Mitchell Int’l, Inc.
`No. 12-cv-139, 2013 U.S. Dist. LEXIS 90847 (D. Del. June 28,
`2013) ........................................................................................................... 9, 12
`
`Brandywine Commc’ns. Techs., LLC v. Apple, Inc.
`No. 12-cv-262, 2012 U.S. Dist. LEXIS 198355 (M.D. Fla. Aug.,
`23, 2012) ............................................................................................................ 6
`
`Briger v. Loon Mt. Resort
`No. 2:14-cv-5374(KM)(MAH), 2015 U.S. Dist. LEXIS 189254
`(D.N.J. May 19, 2015) ..................................................................................... 10
`
`Core Wireless Licensing, S.A.R.L. v. Apple, Inc.
` No. 6:12-cv-100, 2013 U.S. Dist. LEXIS 24922 (E.D. Tex. Feb.
`22, 2013) .......................................................................................................... 12
`
`Hemstreet v. Caere Corp.
`No. 90-cv-377, 1990 U.S. Dist. LEXIS 6782 (N.D. Ill. June 5,
`1990) ........................................................................................................... 5, 15
`
`In re Hoffmann-La Roche Inc.
`587 F.3d 1333 (Fed. Cir. 2006) .................................................................. 13, 15
`
`Hostetler v. Baltimore & O.R. Co.
`164 F. Supp. 72 (D. Pa. 1958) .................................................................... 3, 6, 8
`
`In re Apple, Inc., F. App’x 886, 889 (Fed. Cir. 2014), 35 U.S.C. §
`1407 ........................................................................................................... 14, 15
`
`In re Link
`_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011) ..................... 10
`
`Quintiles IMS, Inc. v. Veeva Sys.
`No. 2:17-cv-177(CCC)(MF), 2017 U.S. Dist. LEXIS 97905
`(D.N.J. June 23, 2017) ..................................................................................... 12
`
`Ricoh v. Honeywell
`817 F. Supp. 473 (D.N.J. 1993) ................................................... 3, 4, 6, 8, 9, 10
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`IPR2018-1581
`HTC EX1015, Page 3
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`Smart Audio Techs., LLC v. Apple Inc.
`910 F. Supp. 2d 718 (D. Del. 2012) ........................................................... 10, 12
`
`Spathos v. Payment Plan, LLC
`No. 3:15-cv-8014(MAS)(DEA), 2016 WL 3951672 (D.N.J. July
`21, 2016) .......................................................................................................... 14
`
`Symantec Corp. v. Zscaler, Inc.
`No. 17-cv-806, 2017 U.S. Dist. LEXIS 119528 (D. Del. July 31,
`2017) ............................................................................................................... 12
`
`Tischio v. Bontex, Inc.
`16 F. Supp. 2d 511 (D.N.J. 1998) ..................................................................... 15
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`IPR2018-1581
`HTC EX1015, Page 4
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`
`I.
`
`INTRODUCTION
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`In their Motion to Transfer, HTC Corp. and HTC America, Inc. (together,
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`“HTC”) submitted sworn affidavits, including from third-party Qualcomm, Inc.
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`(“Qualcomm”), demonstrating that the operative facts of this case center around
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`California—not New Jersey. Frank Wu of HTC declared it is Qualcomm chips in
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`the Accused Products that implement the cellular standards at issue in this case.
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`Thus, discovery regarding Qualcomm chips will be necessary to prove
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`infringement or non-infringement. Mr. Wu also confirmed that only Qualcomm
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`can provide the source code and facts regarding the functionality of its chips.
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`Qualcomm also declared that the vast majority of its U.S. witnesses most
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`knowledgeable of the exact cellular standard features and Technical Specifications
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`recited in INVT’s Complaint are located in California, including: EGPRS and
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`EGPRS2 (TS 45.001, 45.003 and 45.004); UMTS, WCDMA, HSPA (TS 25.308,
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`25.214, 25.319, 25.321, 25.212, 25.214); and LTE (TS. 36.211, 36.213, 36.300).
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`HTC must be able to compel Qualcomm’s most relevant and knowledgeable
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`witnesses to attend trial, which HTC can do only in California.
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`In response to HTC and Qualcomm’s evidence, INVT failed to submit any
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`affidavits or provide any concrete evidence that New Jersey witnesses with
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`knowledge of the specific cellular standard features, Technical Specifications, or
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`Qualcomm chips at issue in this case actually exist. Instead, INVT provided only
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`IPR2018-1581
`HTC EX1015, Page 5
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`uncorroborated hearsay statements and conjecture to allege there are potential
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`relevant witnesses who: are “likely to reside in New Jersey,” are “likely involved”
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`with the Accused Products, or may have general non-unique knowledge about
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`wireless technology. This cannot overcome HTC’s detailed affidavits.
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`The fact that INVT seeks to sacrifice the convenience of the most important
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`witnesses in this matter, including its own who are located in California, for the
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`mere possibility of finding a witness in this who has only general or irrelevant
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`knowledge, demonstrates INVT’s desire to forum shop. But such forum shopping
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`will hamper, if not foreclose, HTC’s ability to present its key defenses at trial.
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`Indeed, INVT cannot, and has not, given any assurance that Inventergy’s former
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`employees will voluntarily appear at trial in New Jersey. These witnesses are vital
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`to HTC defenses because (1) Inventergy failed to give proper pre-suit notice of the
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`Asserted Patents and infringement contentions (relevant to damages); and (2)
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`Inventergy’s purported offer breached INVT’s obligation to license its alleged
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`portfolio on fair, reasonable and non-discriminatory (“FRAND”) terms.
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`To ensure HTC can compel trial testimony from Inventergy and Qualcomm,
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`and given the extreme court congestion in this District, among numerous other
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`factors, the Court should transfer this case to the Northern District of California
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`(“CAND”).
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`IPR2018-1581
`HTC EX1015, Page 6
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`II. ARGUMENT
`A. HTC’s And Qualcomm’s Detailed, Unrebutted Affidavits Show
`The Operative Facts On Key Issues Center Around California,
`Not New Jersey—Greatly Favoring Transfer.
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`It is undisputed that “[t]he issues relating to [HTC’s] alleged infringement of
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`[the Asserted Patents] require analysis of facts, documents and testimony relating
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`to the design, development and production of the [allegedly infringing products].”
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`See Ricoh v. Honeywell, 817 F. Supp. 473, 483 (D.N.J. 1993) (“Honeywell”).
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`Additionally, disputes surrounding remedies relate to at least (1) when INVT
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`allegedly gave notice of infringement to HTC, and (2) whether INVT’s alleged
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`pre-suit offer to license the Asserted Patents was on FRAND terms. “As [HTC]
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`has demonstrated by its submission of factually specific affidavits, . . . these facts
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`are far more easily developed in [California] than in New Jersey.” Id. (See D.I.
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`42-1, 42-2, 42-3, 42-4, 42-5, 43-1.)
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`INVT’s arguments, on the other hand, are not supported by affidavits or
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`concrete evidence. Any “[a]lleged hardship unsupported by particulars by way of
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`proof or affidavit cannot be accorded much weight in balancing conveniences.”
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`Hostetler v. Baltimore & O.R. Co., 164 F. Supp. 72, 74 (W.D. Pa. 1958). INVT
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`uses uncorroborated evidence to argue that there are “potential” witnesses and/or
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`evidence located in New Jersey, without identifying any specific evidence. (D.I.
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`45 at 2, 3, 8, 11, 13, 14, 18, 19, 21, etc. (describing the alleged New Jersey
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`witnesses and evidence as “potential”).) As shown below, the weight of HTC’s
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`IPR2018-1581
`HTC EX1015, Page 7
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`evidence clearly favors transferring this case to CAND. See Honeywell, 817 F.
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`Supp. at 482 n. 18.
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`1.
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`The Infringement Investigation Will Center Around
`Qualcomm.
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`In an attempt to keep this case in New Jersey, INVT alleges very broad facts
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`that it argues are material to this case. However, HTC and Qualcomm’s affidavits
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`identified the specific issues that will be key to infringement/non-infringement in
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`this case: Whether the Qualcomm chips’ source code implements the alleged
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`patented technology. (See D.I. 42-3, ¶¶ 7-9; D.I. 45 at 5, 21.) INVT agrees that
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`evidence and testimony related to this source code will be “necessary” to this case.
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`(See D.I. 45-4, Ex. 24 at 12.)
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`Brian Bannister of Qualcomm provided a “factually specific affidavit”
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`identifying the exact cellular standard features and Technical Specifications at
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`issue, including: EGPRS and EGPRS2 (TS 45.001, 45.003 and 45.004); UMTS,
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`WCDMA, HSPA (TS 25.308, 25.214, 25.319, 25.321, 25.212, 25.214); and LTE
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`(TS. 36.211, 36.213, and 36.300). (D.I. 42-4, ¶¶ 6-15; D.I. 1, ¶ 17.) Honeywell,
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`817 F. Supp. at 482-84. Mr. Bannister also declared that the vast majority of
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`Qualcomm’s U.S. witnesses most knowledgeable of the exact cellular standard
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`features and Technical Specifications recited in INVT’s Complaint are located in
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`California. (D.I. 42-4, ¶¶ 6-15.) While Mr. Bannister’s affidavit did not specify
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`individuals by name, that is because Qualcomm could not do so at this early stage.
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`HTC EX1015, Page 8
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`See Hemstreet v. Caere Corp., No. 90-cv-377, 1990 U.S. Dist. LEXIS 6782, at *17
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`(N.D. Ill. June 5, 1990). For Qualcomm to do so, INVT would first need to
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`identify the specific portions of the source code that allegedly practice the Asserted
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`Patents. Moreover, only Qualcomm employees with specialized knowledge of the
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`source code at issue matter, because Qualcomm could not simply “educate” just
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`any employee to serve as a witness on this relevant source code.
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`INVT did not submit any counter witness affidavits to Mr. Bannister’s
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`declaration. Instead, INVT relies on unauthenticated hearsay sources (e.g.,
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`Qualcomm recruiting webpages) to assert there may be witnesses in New Jersey
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`with general knowledge of 3G or 4G technology and/or the accused products.
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`(D.I. 45 at 6-14.) For example, INVT refers to Qualcomm’s recruiting webpages
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`that advertise a commitment to “advance 4G and 5G knowledge,” without properly
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`authenticating or laying foundation for these documents. (See D.I. 45 at 14 (Exs.
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`20-23).) But these webpages provide only general statements regarding “New
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`Opportunities” and/or “job descriptions” at Qualcomm. (Id.) These new jobs in
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`New Jersey in no way correlate to particular Qualcomm engineers who are
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`knowledgeable about the specific functionalities identified by Mr. Bannister or the
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`corresponding source code. Also, the mere fact that someone is familiar with 3G
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`or 4G in general does not mean that person is sufficiently knowledgeable with
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`respect to the technically complex and particularized pieces of source code
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`HTC EX1015, Page 9
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`implicated in this case. Qualcomm already declared which employees are most
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`knowledgeable of this highly complex and specialized topic, and they are in
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`California. (See D.I. 42-4, ¶¶ 6-15.) INVT’s uncorroborated “potential” evidence
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`is insufficient to overcome the facts established by HTC and Qualcomm.
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`Honeywell, 817 F. Supp. at 484-85 nn. 18, 23, 24 (faulting Ricoh for “fail[ing] to
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`submit by affidavit the names of any witnesses—even employee witnesses—in
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`New Jersey” (emphasis added)); see also Hostetler, 164 F. Supp. at 74.
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`2.
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`The Carriers Are Not Relevant To Venue In This Case.
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`INVT’s argument that cellular carriers AT&T and Verizon are relevant to
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`this case should be dismissed. (D.I. 45 at 19-21.) Unlike the Brandywine case
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`cited by INVT, here, AT&T and Verizon are not accused of committing indirect
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`and joint infringement with HTC. Compare Brandywine Commc’ns. Techs., LLC
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`v. Apple, Inc., No. 12-cv-262, 2012 U.S. Dist. LEXIS 198355, at *10 (M.D. Fla.
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`Aug., 23, 2012), with D.I. 1.
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`Nevertheless, INVT argues that HTC collaborates with Verizon and AT&T
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`to “design, develop, test, validate, certify and distribute the Accused Products.”
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`(D.I. 45 at 19.) INVT lists a number of allegedly “potential” witnesses who it
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`cherry-picked from LinkedIn—chosen merely because they may have allegedly
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`collaborated with HTC before this case. (D.I. 45 at 12-13.) INVT fails to
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`corroborate any of this unauthenticated evidence with a sworn affidavit.
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`HTC EX1015, Page 10
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`Regardless, there is no evidence that the carriers are involved with the design and
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`development of the key Qualcomm chips or with whether or not these chips
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`implement the cellular standard features or Technical Specifications at issue here.
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`Frank Wu’s sworn affidavit shows that HTC’s New Jersey employees are
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`not involved with design and development of the Accused Products, and thus, any
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`collaboration with the carriers in New Jersey is irrelevant to this case. First, Mr.
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`Wu does not identify any carriers or HTC New Jersey employees involved in
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`designing and developing the Accused Products. Instead, he identified HTC
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`Corp.’s Taiwanese team. (D.I. 42-3, ¶ 6.) Likewise, Mr. Wu identified the
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`California testing laboratories that HTC uses to test the Accused Products for
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`compatibility with the cellular standards (i.e., those accused in this case)—not the
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`carriers or HTC’s New Jersey employees. (Id., ¶ 10.)
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`Additionally, David Wiggins’s sworn affidavit confirms that HTC’s small
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`New Jersey office does not perform cellular standards compatibility testing. (D.I.
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`43-1, ¶¶ 10-11.) Nor does HTC make design decisions for the Accused Products in
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`New Jersey, and thus, its New Jersey employees could not collaborate with the
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`carriers to do so. (Id., ¶ 12.) Thus, HTC has demonstrated that HTC Corp., the
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`California testing laboratories, and Qualcomm are all far more qualified than the
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`carriers to provide evidence relating to the design and development of the Accused
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`Products.
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`IPR2018-1581
`HTC EX1015, Page 11
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`Not only are Verizon and AT&T unnecessary and irrelevant in this case,
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`INVT fails to support its assertion to the contrary with affidavits, and its attorney
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`argument is insufficient. See Honeywell, 817 F. Supp. at 484-85 nn. 23, 24; see
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`also Hostetler, 164 F. Supp. at 74. Given the weight of HTC’s affidavits, the
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`Court should find transfer is favored because “no witnesses with regard to the
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`design, development, manufacture or marketing of the [Accused Products or the
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`Qualcomm chipsets] [are] located in New Jersey.” See Honeywell, 817 F. Supp. at
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`484. (D.I. 42-3, ¶¶ 6, 9; D.I. 43-1, ¶¶ 11-13.)
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`3.
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`The Remedies INVT Seeks Rely On Inventergy’s Actions,
`And HTC Asserts Defenses Based On Inventergy’s Failure
`To Provide Notice Or Offer A License On FRAND Terms.
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`It is undisputed that INVT was obligated to offer HTC a license under
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`FRAND terms and conditions. (D.I. 1, ¶¶ 34-39.) INVT also needs to show it
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`provided proper notice of infringement to obtain pre-suit damages. To prove both
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`of these key issues, INVT must rely on actions carried out entirely by Inventergy’s
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`former employees. HTC, on the other hand, alleges that Inventergy’s former
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`employees actually did not provide proper pre-suit “notice” of the Asserted
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`Patents, that INVT should not get pre-suit damages, and that INVT is barred from
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`obtaining injunctive relief because its alleged offer to license the Asserted Patents
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`was not on FRAND terms. (D.I. 1, ¶ 34-39.) These disputed issues cannot be
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`simply disregarded, as INVT suggests.
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`The operative facts related to these core issues in the case are centered in
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`California, and have nothing to do with New Jersey—a fact that INVT does not
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`deny. As Inventergy not a party but is merely one of INVT’s parent companies,
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`there is no reason to believe that the former Inventergy employees residing in
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`CAND will voluntarily attend trial to support HTC’s defenses. See Audatex N.
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`Am. v. Mitchell Int’l, Inc., No. 12-cv-139, 2013 U.S. Dist. LEXIS 90847, at *16
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`(D. Del. June 28, 2013). Tellingly, INVT failed to even argue these witness would
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`surely show up to trial in New Jersey. Thus, the only way to compel these key
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`witnesses to trial is to transfer the case to CAND, where they can be subpoenaed.
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`4.
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`Panasonic’s U.S. Entity Has No Ties To This Case.
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`INVT does not, and cannot, rely on Panasonic’s U.S. entity to argue that this
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`case has any ties to New Jersey. “It is implausible to suggest that—in a case
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`involving the design and development of the invention which resulted in [the
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`Asserted Patents]—[INVT] may rely on the presence of a subsidiary which did not
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`participate in those activities and which has no apparent proprietary interest in the
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`resulting patent.” Honeywell, 817 F. Supp. at 481. INVT does not even argue that
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`Panasonic’s Japanese witnesses will cooperate with trial in New Jersey, and thus
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`this should not weigh in favor of keeping this case here. Indeed, the fact that
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`relevant witnesses from Panasonic are located in Japan supports HTC’s contention
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`that INVT’s choice of a foreign forum should be given little deference.
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`B. Given The Weight Of HTC’s Evidence, The Balance Of Private
`Factors Favors Transfer To CAND.
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`Choice of Forum. A plaintiff’s choice gets less weight if it “chose[s] a
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`foreign forum or [if] the choice of forum has little connection with the operative
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`facts.” Briger v. Loon Mt. Resort, No. 2:14-cv-5374(KM)(MAH), 2015 U.S. Dist.
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`LEXIS 189254, at *19-20 (D.N.J. May 19, 2015) (citing Culp v. NFL Prods. LLC,
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`No. 1:13-cv-7815(NLH)(JS), 2014 U.S. Dist. LEXIS 137172, 2014 WL 4828189,
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`at *4 (D.N.J. Sept. 29, 2014)). When the central facts of the lawsuit occurred
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`outside the forum state, a foreign plaintiff’s forum selection is entitled to even less
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`deference. See Honeywell, 817 F. Supp. at 481-82 (finding the “operative facts” of
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`the patent infringement action, which include design, development or manufacture,
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`occurred outside of New Jersey, and disregarding minimal sales in New Jersey).1
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`The Court should give little weight to INVT’s forum choice because INVT
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`is a foreign plaintiff, and the operative facts are centered around California, not
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`New Jersey: (1) the design and development of the Qualcomm chips and source
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`code expected to be implicated in this case, and the persons most knowledgeable
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`1 The potential for carrier testimony does not create a rational or legitimate reason
`for choosing New Jersey, and even if it did, Plaintiff’s forum preference can only
`be given “something more than minimal weight”, but “less than the ‘substantial’ or
`‘paramount’ weight that it would merit had [Plaintiff] filed suit in its home forum.”
`See Smart Audio Techs., LLC v. Apple Inc., 910 F. Supp. 2d 718, 729-30 (D. Del.
`2012) (holding the Federal Circuit foreclosed “substantial[ly]” deferring to a
`foreign plaintiff’s forum choice even if “rational and legitimate” reasons supported
`choosing that forum) (citing In re Link_A_Media Devices Corp., 662 F.3d 1221,
`1223 (Fed. Cir. 2011)).
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`IPR2018-1581
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`regarding functionality of the chip; (2) the testing of the accused devices for
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`compatibility with the allegedly infringing standards; (3) the facts and witnesses
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`surrounding the alleged notice of the Asserted Patents and their infringement; and
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`(4) the facts and witnesses surrounding the alleged FRAND offer. Taken together
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`with HTC’s preference to transfer to CAND, these factors strongly favor transfer.
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`Where the Claims Arose. At least for the reasons stated above, INVT’s
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`claims arose out of California. The Qualcomm chipsets in HTC’s accused
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`products that would perform the cellular standard functionalities INVT asserts are
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`covered by the Asserted Patents (assuming such functionalities exist or are
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`performed at all), were designed and developed by Qualcomm primarily in
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`California. Additionally, the parties’ pre-suit negotiations were initiated out of
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`California. This factor favors a transfer.
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`Convenience of the Parties. INVT cannot deny that CAND is its principal
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`place of business, and is clearly more convenient for its witnesses. INVT has not
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`identified any of its employees that are in New Jersey. INVT’s only argument here
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`is that New Jersey will be more convenient because the ZTE case may remain in
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`New Jersey. However, ZTE is not a party. Thus, this factor favors a transfer.
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`Convenience of Witnesses. This factor favors transfer because, as explained
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`above, there are no relevant New Jersey witnesses from either Party or from any
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`non-party. All of the relevant witnesses are in California, Washington, or Taiwan.
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`HTC EX1015, Page 15
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`For all of these witnesses, and in particular the third-party former Inventergy
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`employees, it would be most convenient to transfer the case to CAND.
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`INVT “overstates [HTC’s] burden of demonstrating that [Qualcomm
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`witnesses] will be unavailable or unwilling to travel to [New Jersey]. [S]uch a
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`clear statement [is not required]—it is enough that likely witnesses reside beyond
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`the court’s subpoena power and that there is reason to believe that those witnesses
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`will refuse to testify absent subpoena power.” Audatex, 2013 U.S. Dist. LEXIS
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`90847, at *16; Symantec Corp. v. Zscaler, Inc., No. 17-cv-806, 2017 U.S. Dist.
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`LEXIS 119528, at *7-8 (D. Del. July 31, 2017).
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`Moreover, INVT’s cited cases are distinguishable in view of HTC and
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`Qualcomm’s detailed declarations regarding the Qualcomm witnesses. Quintiles
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`IMS, Inc. v. Veeva Sys. did not concern the specificity used to identify third-party
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`witnesses because no such witnesses were identified. No. 2:17-cv-177(CCC)(MF),
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`2017 U.S. Dist. LEXIS 97905 (D.N.J. June 23, 2017); Declaration of Ericka J.
`
`Schulz (“Schulz Dec.”), Ex. A at 8. In Smart Audio Techs., LLC v. Apple Inc.,
`
`Apple did not explain why testimony from its former employees was necessary or
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`why they would refuse to testify. 910 F. Supp. at 732. In Core Wireless Licensing,
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`S.A.R.L. v. Apple, Inc., an Eastern District of Texas case, Apple only generally
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`pointed third-party chip supplier Qualcomm and referenced Qualcomm’s
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`headquarter location. No. 6:12-cv-100, 2013 U.S. Dist. LEXIS 24922, at *12
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`(E.D. Tex. Feb. 22, 2013); Schulz Dec., Ex. B at 5, 8, 10-11.
`
`Location of Records. INVT does not deny the fact that INVT and
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`Inventergy’s records, and alleged evidence of “notice” and offering a “FRAND
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`license” are located in California. Moreover, Qualcomm confirmed that it
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`typically offers its source code for review in California. (D.I. 42-4, ¶ 8.)
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`Additionally, records of the relevant testing laboratory for the accused products are
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`likely in California. (D.I. 42-3, ¶ 10.) As described above, the records related to
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`AT&T and Verizon are likely not relevant, or are duplicative of what HTC can
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`produce. Therefore, this factor favors transfer because the majority of the evidence
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`is in California, and there are no relevant, non-duplicative records in New Jersey.
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`C. The Public Factors Favor Transfer To CAND.
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`This District Is Significantly More Congested Than CAND. This District
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`is far more congested than CAND. In re Hoffmann-La Roche Inc., 587 F.3d 1333,
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`1336 (Fed. Cir. 2006) (“[T]he [transferee] district’s less congested docket suggests
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`that [it] may be able to resolve this dispute more quickly.”). INVT does not
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`dispute that this District has almost 400 more pending cases per judge than CAND
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`(a 67% difference) or that the median time to trial in all civil cases is almost 15
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`months longer here (a 54% difference). Instead, INVT lists statistics that differ by
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`only a few percent, or a few weeks at most. (D.I. 45 at 36 (listing differences of
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`0.7 months, 1.7%, 5.7 cases per judge, and 0.3 months).)
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`INVT seeks to sidestep the overwhelmingly lopsided court congestion by
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`conflating court congestion with judicial economy, arguing the latter requires
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`keeping Apple and HTC in this District merely because INVT has a case pending
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`against ZTE here. But INVT’s case against ZTE does not demonstrate a lack of
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`congestion in this District. If anything, transferring INVT’s cases against Apple
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`and HTC would reduce the congestion in this Court. Spathos v. Payment Plan,
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`LLC, No. 3:15-cv-8014(MAS)(DEA), 2016 WL 3951672, at *5 (D.N.J. July 21,
`
`2016) (finding disparity in court congestion, lack of substantial events occurring in
`
`New Jersey, and plaintiff’s status as a non-resident strongly favored transfer).
`
`INVT’s Serial Litigation Does Not Require Denial of Transfer. INVT
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`alleges it would be inefficient to transfer Apple and HTC but not ZTE to CAND.
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`But INVT should not be able to use its serial litigation strategy to deprive HTC of
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`key evidence and defenses that rely on Inventergy’s and Qualcomm’s California
`
`witnesses. In any event, judicial economy is “just one relevant consideration in
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`determining how administration of the court system would best be served by
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`deciding a transfer motion.” In re Apple, Inc., F. App’x 886, 889 (Fed. Cir. 2014)
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`(transferring some but not all related cases). INVT also ignores procedures
`
`available to mitigate any purported inefficiencies that would arise from transferring
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`HTC EX1015, Page 18
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`Apple and HTC but not ZTE, such as coordinated or consolidated pretrial
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`proceedings for multidistrict litigations involving “one or more common questions
`
`of fact.” 35 U.S.C. § 1407. Hemstreet, 1990 U.S. Dist. LEXIS 6782, at *16-17
`
`(“While the Court is aware of the realities of the difficulty in maintaining
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`numerous similar actions in different districts, plaintiff’s recourse is to proceed
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`pursuant to section 1407 which addresses multi-district litigation.”).
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`The Local Interest Favors Transfer. “New Jersey jurors should not be
`
`burdened with adjudicating a matter concerning decisions and[/]or conduct which
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`occurred predominately outside the State of New Jersey.” Tischio v. Bontex, Inc.,
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`16 F. Supp. 2d 511, 526 (D.N.J. 1998). Here, the relevant decisions and/or
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`conduct occurred almost entirely outside of this District. This District has no local
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`interest with respect to INVT because—other than filing lawsuits—it has shown
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`zero contacts here. And HTC’s suit-specific contacts here are minimal and
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`unrelated to the merits of the case. Because of CAND’s significant connections
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`with INVT and the events that “that gave rise to [this] suit, this factor should be
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`weighed in [CAND]’s favor.” Hoffmann-La Roche, 587 F.3d at 1338.
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`III. CONCLUSION
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`
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`HTC respectfully requests the Court grant its motion and transfer this action
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`to CAND for the reasons contained in its motion and herein.
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`IPR2018-1581
`HTC EX1015, Page 19
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`Case 2:17-cv-03740-JMV-JBC Document 46 Filed 04/02/18 Page 20 of 20 PageID: 1738
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`Dated: April 2, 2018
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`Respectfully submitted,
`
`/s/ Karen A. Confoy
`Karen A. Confoy
`Allison L. Hollows
`FOX ROTHSCHILD LLP
`997 Lenox Drive, Bldg. 3
`Lawrenceville, NJ 08648
`Telephone: 609.896.3600
`Facsimile: 609.896.1469
`kconfoy@foxrothschild.com
`ahollows@foxrothschild.com
`
`Stephen S. Korniczky (pro hac vice)
`Martin R. Bader (pro hac vice)
`Ericka J. Schulz (pro hac vice)
`SHEPPARD MULLIN
`RICHTER & HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Telephone: 858.720.8900
`Facsimile: 858.509.3691
`skorniczky@sheppardmullin.com
`mbader@ sheppardmullin.com
`eschulz@sheppardmullin.com
`
`Counsel for Defendants and
`Counterclaim-Plaintiffs HTC
`Corporation and HTC America, Inc.
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`-16-
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`IPR2018-1581
`HTC EX1015, Page 20
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