Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 1 of 17 PageID #: 418
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:14-cv-61
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`ContentGuard Holdings, Inc.,
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`Plaintiff,
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`v.
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`Google, Inc.,
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`Defendant.
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`GOOGLE INC.’S MOTION TO STAY, OR IN THE ALTERNATIVE
` TO TRANSFER VENUE, BASED ON A FIRST-FILED ACTION
` PENDING IN THE NORTHERN DISTRICT OF CALIFORNIA
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 2 of 17 PageID #: 419
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`Mirror-image actions involving the same parties, the same patents, and the same issues of
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`infringement/non-infringement are currently pending before the United States District Court for
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`the Northern District of California (filed on January 31, 2014) and this Court (filed on February
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`5, 2014). Under well-established law, this action, as the second-filed, should be stayed pending
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`determination by the first-filed forum of the appropriate venue for adjudicating the dispute. In
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`the alternative, this action should be transferred to the Northern District of California, the venue
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`of the first-filed action and the venue that will be most conducive to the convenience of the
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`parties and witnesses and the interests of justice.
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`Plaintiff ContentGuard Holdings, Inc. (“ContentGuard”) made a decision to sue several
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`device manufacturers for allegedly infringing ContentGuard’s patents by providing software
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`applications that manage digital rights on their devices, generally alleging that each defendant
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`infringes ContentGuard’s patents because the defendants provide access, instructions and
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`advertising for using certain infringing “apps” and because each of the defendants “provide
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`hardware and software components required by the claims” of each patent. (Ex. 1, Customer
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`Action, Am. Compl. ¶ 57-63.) In this lawsuit, despite pointing to Google, Inc. (“Google”) as one
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`of the providers of such software, ContentGuard chose not to sue Google. At that point, Google
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`had the right to avoid seriatim lawsuits against its customers by filing a declaratory judgment
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`action regarding its rights in Google Play. Google exercised that right and filed a declaratory
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`judgment action in the Northern District of California on January 31, 2014. (Ex. 2, Compl., N.D.
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`Cal. Case No. 3:14-cv-498.) ContentGuard then retaliated and filed a new, second-filed suit here
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`in the Eastern District of Texas. Faced with this factual scenario, courts routinely allow the first-
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`filed declaratory judgment action to proceed rather than the second-filed suit.
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`BACKGROUND
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`On December 18, 2013, ContentGuard filed a Complaint for Patent Infringement in this
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`1
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 3 of 17 PageID #: 420
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`district against device manufacturers Amazon.com, Inc., Apple Inc., Blackberry Corp., Huawei
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`Device USA, Inc. and Motorola Mobility LLC. The Complaint alleges that these defendants sell
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`devices that infringe Plaintiff’s patents by running various software applications that manage
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`digital rights, including the software offered by Google’s Google Play apps1, as well as the
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`Amazon Kindle app and a standard known as UITS (“the customer case”). (Ex. 3, Customer
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`Case, Compl. ¶¶ 41-46; see id. ¶ 43 (“[O]n information and belief, each of the Defendants have
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`accused products and methods that use one or more of the Google Play “apps” (Google Play
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`Books, Google Play Movies, and Google Play Music) to practice the claimed invention.”).) On
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`January 17, 2014, ContentGuard amended its complaint to add additional device manufacturer
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`defendants Blackberry Ltd., HTC Corp., HTC America, Inc., Huawei Technologies Co. Ltd.,
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`Samsung Electronics Co., Ltd., Samsung Electronics America,
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`Inc. and Samsung
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`Telecommunications America LLC, again alleging that their devices infringe ContentGuard’s
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`patents by running software applications, namely Google’s Google Play apps, Amazon’s Kindle
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`app and the UITS standard. (Ex. 1, Customer Case, Am. Compl. ¶¶ 52-55.) Although
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`ContentGuard sued several of Google’s customers based on their use of Google’s Google Play
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`apps, Google was not named as a defendant in that action.
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`Google filed its declaratory judgment suit against ContentGuard in the Northern District
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`of California on January 31, 2013 (“the California case”). (Ex. 2, California Case, Compl.) In
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`its complaint, Google seeks a declaratory judgment that use of its Google Play apps do not
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`infringe ContentGuard’s U.S. Patent Nos. 6,963,859; 7,523,072; 7,774,280; 8,001,053;
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`7,269,576; 8,370,956; 8,393,007; 7,225,160; and 8,583,556 (“the patents-in-suit”).
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`Five days after Google filed its action in the Northern District of California,
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`1 “App” refers to an “application”, which is software designed to run on electronic devices such
`as smartphones.
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`2
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 4 of 17 PageID #: 421
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`ContentGuard filed the instant action in this court against Google: a mirror-image action to
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`Google’s first-filed case (“the Texas case”). In its complaint, ContentGuard alleges that Google
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`infringes the same nine ContentGuard patents-in-suit as are at issue in the California case, and
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`that Google induces its customers to infringe, apparently through use of Google’s Google Play
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`apps. (Ex. 4, Compl.) Thus, the Texas case is the mirror-image of the California case filed five
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`days earlier: each involves identical parties and identical claims regarding Google’s alleged
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`infringement of the same nine ContentGuard patents-in-suit.
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`Simultaneously with this motion, Google has filed a motion in the Northern District of
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`California to enjoin ContentGuard’s prosecution of this later-filed Texas case, based on the first-
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`filed rule and the convenience of the parties and witnesses and the interests of justice. A copy of
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`that motion is attached as Exhibit 5.
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`DISCUSSION
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`The Northern District of California Should Decide the Venue for the Parties’
`Dispute.
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`I.
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`The first-to-file rule directs that when parallel cases with substantially overlapping parties
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`and issues are pending before different district courts, the court of the second-filed action should
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`refuse to hear the action in deference to the court of the first-filed action. Murrell v. Casterline,
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`No. 10-794, 2011 WL 2600600, at *1 (E.D. Tex. June 29, 2011). The Fifth Circuit has
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`recognized this rule “based on principles of comity and sound judicial administration.” Id.
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`Where parallel actions have been filed in different district courts, it is the duty of the court where
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`the first-filed action is pending, here the Northern District of California, to determine what venue
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`is appropriate. “The ‘first-to-file rule’ not only determines which court may decide the merits of
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`substantially similar cases, but also establishes which court may decide whether the second suit
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`filed must be dismissed, stayed or transferred and consolidated. In the absence of compelling
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`3
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 5 of 17 PageID #: 422
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`circumstances the court initially seized of a controversy should be the one to decide whether it
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`will try the case.” Id. at *2; Mondis Tech. Ltd. v. Top Victory Elecs. (Taiwan) Co., No. 08-478,
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`2010 WL 3025243, at *2 (E.D. Tex. July 29, 2010) (same); Acceleron, LLC v. Egnera, Inc., 634
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`F. Supp. 2d 758, 763 (E.D. Tex. 2009) (“The Fifth Circuit adheres to the general rule, that the
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`court in which an action is first filed is the appropriate court to determine whether subsequently
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`filed cases involving substantially similar issues should proceed.”). In order to avoid wasteful
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`litigation burdens on the court and the parties, the court where the second-filed action is pending
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`generally issues a stay pending the venue decision by the court with the first-filed complaint.
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`See Sanofi-Aventis Deutschland GmbH v. Novo Nordisk, Inc., 614 F. Supp. 2d 772, 774 (E.D.
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`Tex. 2009).
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`The California Case is the First-Filed Action.
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`A.
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`As the California case was filed five days before the Texas case, it is the first-filed action.
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`The fact that the California case is a declaratory judgment action does not alter the first-to-file
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`rule. Sanofi-Aventis, 614 F. Supp. 2d at 774 (“As a general rule, a first-filed declaratory
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`judgment suit will be entitled to precedence over a later-filed patent infringement action.”).
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`The pendency of the customer case in this district does not alter the Northern District of
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`California’s position as the court of the first-filed action. Although the same patents are at issue,
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`and ContentGuard asserts that one basis of the alleged infringement is that the customers’ use of
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`Google Play apps allegedly infringe the patents-in-suit, Google itself is not a party to the
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`customer action. Nor are any of the defendants in the customer action parties in the mirror-
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`image Texas case and California case. (In fact, including Google in the customer case would
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`have been misjoinder under the America Invents Act, 35 U.S.C. § 299, a fact that ContentGuard
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`implicitly recognized by filing its Texas case separately, rather than attempting to add Google as
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`a defendant to the customer case.) In Adobe Systems Inc. v. Select Retrieval, LLC, No. 12-2342,
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 6 of 17 PageID #: 423
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`2014 WL 497441 (S.D. Cal. Feb. 6, 2014), for example, Select Retrieval had filed several suits
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`against Adobe’s customers alleging infringement of its patents, but did not name Adobe as a
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`party. Id. at *1. Adobe then filed a declaratory judgment action against Select Retrieval based
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`on the same patents. Id. at *3. Select Retrieval moved to dismiss Adobe’s declaratory judgment
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`suit, arguing that its customer suits were filed first, and thus application of the first-to-file rule
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`mandated that the Adobe suit be dismissed in deference to the customer suits. Id. at *3. The
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`court held that the first-to-file rule did not apply because Adobe’s interests were not adequately
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`represented in the customer suits. Id. at *5. In addition, the court noted that the customer suits
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`alleged infringement of Select Retrieval’s patents by the customers’ own use of Adobe’s
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`technology, so that a finding of whether or not use of the accused Adobe technology infringed
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`could vary based on each customer’s use of it. Id. at *4. So too here, the customer suit is not
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`substantially similar to the mirror-image California case and Texas case as the only overlapping
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`party is ContentGuard itself; the issues of infringement could vary depending on each customer’s
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`accused use of Google’s technology on the customers’ various accused devices. In addition,
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`although the alleged infringement of ContentGuard’s patents via use of the Google Play apps is
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`at issue in the customer suit as well as the California case and the Texas case, additional
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`allegations regarding non-Google products such as the Amazon Kindle app and the UITS
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`standard are also involved in the customer case. (Ex. 1, Customer Case, Am. Compl. ¶¶ 50-54.)
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`The customer case thus does not dislodge the California case’s status as the first-filed suit over
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`this Texas action.
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` In fact, even if the earlier filing date of the customer suit were considered relevant, its
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`status as a peripheral action to the California case would still dictate that the California case,
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`involving Google as the “primary party” as to the allegations involving Google’s Google Play
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`apps, take precedence, i.e., that Google’s case would proceed in the Northern District of
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`5
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 7 of 17 PageID #: 424
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`California despite the earlier filing date of the customer suit, with the customer suit stayed if
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`deemed appropriate in that case. Nintendo, 2013 WL 5345899, at *7 (“the ‘customer suit
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`exception’ [to the first-to-file rule] endorses staying a case against a customer or retailer in light
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`of the notion that the manufacturer is the ‘true defendant.’”). “[L]itigation against or brought by
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`the manufacturer of infringing goods takes precedence over a suit by the patent owner against
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`customers of the manufacturer.” Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990)
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`(affirming district court presiding over manufacturer suit in its order enjoining the patentee from
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`prosecution of separate action against customer defendants). In patent infringement litigation,
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`claims against a customer of a manufacturer are considered to be “peripheral” to those against
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`the manufacturer, so that even a later-filed suit involving the manufacturer will take precedence,
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`to further the policy that “infringement determinations should be made in suits involving the true
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`defendant . . . the party that control’s the product’s design.” Ciena Corp. v. Nortel Networks
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`Inc., No. 05-14, 2005 WL 1189881, at *9 (E.D. Tex. May 19, 2005); see LG Elec. Inc. v.
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`Advance Creative Computer Corp., DTK, 131 F. Supp. 2d 804, 811 (E.D. Va. 2001) (finding
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`claims against subsidiary “peripheral” to main claims against corporation, and therefore severing
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`and transferring claims against corporation); see also Toshiba Corp. v. Hynix Semiconductor,
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`Inc., No. 04-2391, 2005 WL 2415960, at *5-8 (N.D. Tex. Sept. 30, 2005) (severing and
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`transferring claims against manufacturer of accused product from those “peripheral” claims
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`made against distributor). The object of the present litigation focuses on Google Play Books’,
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`Google Play Music’s, and Google Play Movies’ alleged infringement of the ContentGuard patent
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`claims, whereas the customer case focuses on the incorporation of these applications into some
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`of Google’s customers’ independent devices. Thus, the customer case truly is “peripheral” to the
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`California case and Texas case, and should not affect this Court’s analysis of the appropriate
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`venue for this case when deciding the motion to stay, or in the alternative, transfer. See Spread
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 8 of 17 PageID #: 425
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`Spectrum Screening, LLC v. Eastman Kodak Co., No. 10-1101, 2010 WL 3516106, at *2-3 (N.D.
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`Ill. Sept. 1, 2010) (finding customers who used an accused product peripheral to the litigation
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`against manufacturer).
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`The California Case is Not Anticipatory.
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`B.
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`Although ContentGuard has suggested that the California case was anticipatory and the
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`first-to-file rule should not be followed, that exception to the first-to-file rule does not apply
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`here. Google’s declaratory judgment was not filed for the purpose of depriving ContentGuard of
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`the “right to select the proper forum.” Strukmeyer, LLC v. Infinite Financial Sols., Inc., No. 13-
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`3798, 2013 WL 6388563, at *7 (N.D. Tex. Dec. 5, 2013). Of course, if Google had not
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`anticipated a future dispute with ContentGuard, its declaratory judgment claim would lack the
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`immediacy required for its lawsuit to be justiciable. See Commil USA, LLC v. Cisco Sys., Inc.,
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`No. 07-341, 2008 WL 4426591, at *3 (E.D. Tex. Sept. 25, 2008). But “[m]erely filing a
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`declaratory judgment action in a federal court with jurisdiction to hear it . . . is not in itself
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`improper anticipatory litigation or otherwise abusive forum shopping.” Sherwin-Williams Co. v.
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`Homes Cty., 343 F.3d 383, 391 (5th Cir. 2003).
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`The facts preceding the filing of Google’s California case refute any suggestion the filing
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`was anticipatory. Google never received a cease-and-desist letter from ContentGuard, nor did it
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`engage in any discussions in which a threat of litigation deadline was discussed. Although
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`Google believed there was an “immediacy” to protecting its rights surrounding Google Play
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`Books, Google Play Music, and Google Play Movies that led it to file the California case, this
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`belief was not derived from communications with ContentGuard, but from 1) ContentGuard’s
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`filing of the customer case against companies that were identified as unlicensed entities (as was
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`Google) in one of ContentGuard’s recent public filings, and 2) ContentGuard’s allegations in the
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`customer suit, which explicitly called out Google Play Books, Google Play Music, and Google
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 9 of 17 PageID #: 426
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`Play Movies, as being used to practice ContentGuard’s patents-in-suit. Google’s California case
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`was not filed in reaction to a direct threat, but was filed in accordance with the premise of the
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`Declaratory Judgment Act—to remove the cloud of threatened infringement litigation. See Elec.
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`for Imaging v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005) (holding declaratory judgment suit
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`not anticipatory where it was filed in response to threat of infringement claims against plaintiff’s
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`customers). It thus was not anticipatory, and the California court is the proper forum to decide
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`the venue for the parties’ dispute.
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`C.
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`A Stay of the This Action is Appropriate Pending the California Court’s
`Venue Decision.
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`As the first-filed action, the court in the California case should decide the correct venue
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`for the parties’ dispute. It is thus appropriate for this Court to stay the Texas case pending the
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`California court’s ruling on Google’s motion to enjoin ContentGuard from prosecuting the Texas
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`case. Excentus Corp. v. Kroger Co., No. 10-483, 2010 WL 3606016, at *4 (N.D. Tex. Sept. 16,
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`2010) (staying second-filed action pending determination by district of first-filed action on
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`proper venue for dispute); Sanofi-Aventis, 614 F. Supp. 2d at 781 (staying action pending venue
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`determination in court of first-filed action).
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`III.
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`In the Alternative, this Action Should Be Transferred to the Northern District of
`California Pursuant to the First-Filed Rule and 28 U.S.C. § 1404(a).
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`If this Court declines to defer a venue decision pending a determination by the court of
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`the California case, this action should be transferred to the Northern District of California.
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`Pursuant to 28 U.S.C. § 1404(a), “for the convenience of parties and witnesses, in the interest of
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`justice, a district court may transfer any civil action to any other district or division where it
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`might have been brought.” The Court should transfer the action if the balance of private and
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`public factors show that the proposed transferee district is “clearly more convenient” than the
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`Eastern District of Texas. VirtualAgility, Inc. v. Salesforce.com, Inc., No. 13-11, 2014 WL
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 10 of 17 PageID #: 427
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`459719, at *2 (E.D. Tex. Jan. 31, 2014). Here, the factors weigh strongly in favor the of the
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`Northern District of California, making transfer of this action appropriate.
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`Venue is Proper in the Northern District of California.
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`A.
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`The first factor in a Section 1404(a) transfer analysis is “whether the judicial district to
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`which transfer is sought would have been a district in which the claim could have been filed.”
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`VirtualAgility, 2014 WL 459719, at *1. A patent infringement suit may be brought in any
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`district where the defendant is alleged to have committed acts of infringement or where the
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`defendant resides. 28 U.S.C. § 1400(b). Google’s principal place of business is located within
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`the Northern District of California (Id.). Venue is thus proper in the proposed transferee court.
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`B.
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`The Convenience of the Parties and Witnesses Favors Transfer to the
`Northern District of California.
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`When considering the convenience of the parties and witnesses, courts consider several
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`factors: (1) the relative ease of access to sources of proof; (2) the availability of compulsory
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`process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses;
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`and (4) all other practical problems that make trial of a case easy, expeditious, and inexpensive.
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`VirtualAgility, 2014 WL 459719, at *1. Here, these “private interest” factors weigh strongly in
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`favor of transferring this action to the Northern District of California.
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`1.
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`The Relative Ease of Access to Sources of Proof Favors Transfer.
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`This factor turns on which party “will most probably have the greater volume of
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`documents relevant to the litigation and their presumed location in relation to the transferee and
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`transferor venues.” Optimum Power Sols. LLC v. Apple, Inc., 794 F. Supp. 2d 696, 701 (E.D.
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`Tex. 2011). “In patent infringement cases, the bulk of the relevant evidence usually comes from
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`the accused infringer. Consequently, the place where the defendant’s documents are kept weighs
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`in favor of transfer to that location.” In re Genetech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009).
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 11 of 17 PageID #: 428
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`Google’s principal place of business is in Mountain View, California, within the Northern
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`District of California, and this is where material decisions relating to the development,
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`engineering and marketing of Google Play occurred. (Ex. 6, Dubey Decl. ¶¶ 3, 4, 6.) The
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`Northern District of California is also where the majority of employees involved in the
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`development and management of Google Play are located, and relevant documentary evidence is
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`also available in that district. (Id. ¶ ¶ 6, 9.) See In re TOA Techs., Inc., __ Fed. Appx. __, 2013
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`WL 5486763, at *3 (Fed. Cir. Oct. 3, 2013) (although much documentary evidence is now kept
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`electronically, this factor must still be weighed in favor of the venue where relevant documents
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`are located).
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`In contrast, no relevant evidence appears to be located in the Eastern District of Texas.
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`Google has no employees in the Eastern District of Texas, none of the development or
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`management of Google Play takes place in this district, no development or management
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`personnel for Google Play reside in this district, and no known documents related to Google
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`Play, general operations, marketing, financials, licensing practices, and/or customer-service are
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`located in this district. (Dubey Decl. ¶¶ 5, 7, 8.)
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`The Northern District of California appears to be convenient for ContentGuard as well, as
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`it has substantial contacts with that district. During the period from 2009-2013, it was
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`headquartered in El Segundo, California, from where it actively pursued efforts to license or
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`otherwise monetize its patent portfolio, including the patents-in-suit. ContentGuard has
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`“successfully licensed its DRM technologies for use in smartphones and tablets” to companies
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`with U.S. headquarters in California, including Nokia, Toshiba, Fujitsu, Hitachi and Sanyo. (See
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`Ex. 1, Customer Case, Am. Compl. ¶ 38.) Additionally, ContentGuard recently moved its
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`headquarters to Texas from El Segundo, California, in August 2013, suggesting an effort to
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`justify venue in this Court. (Ex. 7, Tex. Sec. of St. Rpt.) Because ContentGuard has strong
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 12 of 17 PageID #: 429
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`contacts with California, its current location should be given little deference. In re Zimmer
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`Holdings, Inc., 609 F.3d 1378, 1381-82 (Fed. Cir. 2010) (holding that the patentee’s presence in
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`Texas was entitled to no weight where it “appears to be recent, ephemeral, and an artifact of
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`litigation”); see also In re Microsoft Corp., 630 F.3d 1361, 1364 (Fed. Cir. 2011) (holding that
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`the court need not weigh connections to forum “made in anticipation of litigation and for the
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`likely purpose of making that forum appear convenient,” rejecting plaintiff’s claim of connection
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`to state where it incorporated sixteen days before filing suit).
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`2.
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`The Availability of Compulsory Process to Secure the Attendance of
`Witnesses Favors Transfer.
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`Google has knowledge of several non-party witnesses that likely will be needed to
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`provide testimony in this action; many of them are located in the Northern District of California,
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`but none are located in this district. For example, key portions of the accused Google Play
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`service use technology from Adobe Systems, Inc. (“Adobe”). (Ex. 6, Dubey Decl. ¶ 10.)
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`Google anticipates that it will need to subpoena documents and testimony from Adobe to support
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`its defense of this action. Adobe is headquartered in San Jose, California, within the Northern
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`District of California, and its relevant employees and documents are likely located there as well.
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`(Id.) Lone Star Doc. Mgmt., LLC v. Catalyst Repository Sys., Inc., No. 12-164, 2013 WL
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`5496816, at *2 (E.D. Tex. Mar. 15, 2013) (the bulk of a corporation’s documents are presumed
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`to be located at the corporate headquarters).
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`Although Google does not know where ContentGuard’s executive team resides, litigation
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`in the Northern District of California would likely be more convenient for a majority of
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`ContentGuard’s witnesses, as Pendrell, ContentGuard’s 90.1% shareholder, maintains an office
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`in San Francisco, California, and numerous inventors of the ContentGuard patents reside in
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`California. See In re Hoffman-La Roche Inc., 587 F.3d at 1337-38 (a venue is favored when it
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 13 of 17 PageID #: 430
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`has subpoena power to compel attendance at deposition and trial over the majority of non-party
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`witnesses). Specifically, Mark J. Stefik, inventor of the ‘859, the ‘072, the ‘576, the ‘956, the
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`‘007, and the ‘160 patents, resides in Portola Valley, California. (Ex. 8.) Peter Pirolli, inventor
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`of the ‘859, ‘072, ‘576, ‘956, ‘007, and the ‘160 patents, resides in or around San Francisco,
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`California. (Id.) Ralph Merkle, inventor of the ‘576 and the ‘160 patents, resides in or around
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`San Francisco, California. (Id.) Mai Nguyen, inventor of the ‘280 and ‘053 patents resides in
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`Sunnyvale, California. (Id.) Xin Wang, inventor of the ‘280 and the ‘053 patents, resides in Los
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`Angeles, California. (Id.) Thanh Ta, inventor of the ‘280 patent, resides in Irvine, California.
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`(Id.) Finally, Eddie Chen, inventor of the ‘280 and the ‘053 patent, resides in Los Angeles,
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`California. (Id.) See In re Biosearch Techs., Inc., 452 Fed. Appx. 986, 988 (Fed. Cir. 2011)
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`(weighing costs of travel and lost time for the third-party inventors in patent action); In re
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`Morgan Stanley, 417 Fed. Appx. 947, 949 (Fed. Cir. Apr. 6, 2011) (giving weight to locale of
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`inventors, patent prosecution attorneys, and defendants’ employees with relevant knowledge).
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`Though this Court has the authority to subpoena these anticipated third-party witnesses for
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`deposition, they would be not be subject to compulsory process for any trial in this district.
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`Thus, because the witnesses would be subject to such process in the Northern District of
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`California that district is the preferred venue, as live trial testimony could be compelled there.
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`See Remmers v. United States, No. 09-345, 2009 WL 3617597, at *4 (E.D. Tex. Oct. 28, 2009)
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`(“The Supreme Court has indicated a strong preference for live testimony. ‘Certainly to fix the
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`place of trial at a point where litigants cannot compel personal attendance and may be forced to
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`try their cases on deposition, is to create a condition not satisfactory to court, jury or most
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`litigants.’”) (quoting Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 511 (1947)).
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`The Cost of Attendance for Willing Witnesses Favors Transfer.
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`3.
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`The convenience of witnesses “is probably the single most important factor” in
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 14 of 17 PageID #: 431
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`determining the convenience of a forum, and consideration of this factor shows that the Northern
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`District of California is more favorable for both parties than this district. In re Genentech, 566 F.
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`3d 1338, 1342 (Fed. Cir. 2009). None of Google’s anticipated employee witnesses with material
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`information pertaining to Google Play are located in the Eastern District of Texas—every
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`employee witness would have to be transported to this district for trial; most, if not all of them
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`from the Northern District of California. If Google were required to transport its employee
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`witnesses to this district from California, it would incur needless travel and lodging expenses, as
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`well as the loss of employee work time occasioned by the employees’ travel to Texas, which
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`could be avoided if the dispute was decided in the Northern District of California. In re Acer
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`Am. Corp., 626 F.3d 1252, 1255 (Fed. Cir. 2011) (required travel of party witnesses to forum
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`would cause “significant expenses for airfare, meals, and lodging, as well as losses in
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`productivity from time spent away from work,” as well as “personal costs associated with being
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`away from work, family, and community,” considerations that should be taken into account in a
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`transfer decision).
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`In particular, the lead Software Engineer for Google Play, Ficus Kirkpatrick, (2) Staff
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`Software Engineer for Google Play, Nicolas Catania, and (3) Principal Engineer for Google Play,
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`Debajit Ghosh are all located in Mountain View, California. (Ex. 6, Dubey Decl. ¶ 6.) The
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`employees are expected to provide testimony in this action. (Id.)
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`Other Practical Problems Favor Transfer.
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`4.
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`As discussed in the initial part of this motion, transfer would promote judicial efficiency
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`in light of the first-filed mirror-image case pending in the Northern District of California. The
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`California court in that earlier-filed action will be addressing the same issues of infringement as
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`are at issue in this Texas case. In accord with the first-to-file rule, this factor weighs in favor of
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`transfer. Morgan Stanley, 417 Fed. Appx. at 949 (consolidation with related litigation weighs in
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 15 of 17 PageID #: 432
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`
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`favor of transfer). In addition, this case is in its infancy; nothing has happened beyond the filing
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`of the Complaint. Thus, this Court has not expended a great deal of time or resources on this
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`case. See Lone Star, 2013 WL 5496816, at *5 (considering amount of court resources spent on
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`case to point of transfer decision).
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`C.
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`The Interests of Justice Favor Transfer to the Northern District of
`California.
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`In considering the interests of justice, courts consider (1) the administrative difficulties
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`flowing from court congestion; (2) the local interest in having localized interests decided at
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`home; (3) the familiarity of the forum with the law that will govern the case; and (4) the
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`avoidance of unnecessary problems of conflict of laws or in the application of foreign law.
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`VirtualAgility, 2014 WL 459719, at *1. These considerations also weigh strongly in favor of
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`transfer to the Northern District of California.
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`1.
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`Administrative Difficulties From Court Congestion is Neutral.
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`The PriceWaterhouseCoopers 2013 Patent Litigation Study indicates that the median time
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`to trial for patent cases in this Court is 2.19 years, compared to 2.72 years in the Northern
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`District of California. (Ex. 9, 2013 Patent Litigation Study at 22.) This factor is neutral, as the
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`difference in median time is only about six months. See Affinity Labs of Tex. v. Samsung Elecs.
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`Co., __ F. Supp. 2d __, 2013 WL 5508122, at *2 (E.D. Tex. Sept. 18, 2013) (court congestion
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`factor neutral as between the Eastern District of Texas and the Northern District of California).
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`2.
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`The Local Interest in Having Localized Interests Decided at Home
`Favors Transfer.
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`The Federal Circuit has directed that in patent actions, the locale where the alleged
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`infringing product was designed and developed be considered to have a “significant interest” in
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`the controversy. TOA Techs., 2013 WL 5486763, at *3 (Fed. Cir. Oct. 3, 2013). The place
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`where the product accused of infringement was developed has a “strong” local interest in the
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`Case 2:14-cv-00061-JRG-RSP Document 15 Filed 02/20/14 Page 16 of 17 PageID #: 433
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`controversy “because the cause of action calls into question the work and reputation” of the
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`accused product’s developers. In r