Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 1 of 18 PageID #: 572
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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-0061-JRG-RSP
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`JURY TRIAL DEMANDED
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`ContentGuard Holdings, Inc.,
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`Plaintiff,
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`-against-
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`Google Inc.
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`Defendant.
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`PLAINTIFF CONTENTGUARD HOLDINGS INC.’S OPPOSITION TO DEFENDANT
`GOOGLE INC.’S MOTION TO STAY, OR IN THE ALTERNATIVE
`TO TRANSFER VENUE (DKT. 15)
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`Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 2 of 18 PageID #: 573
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`INTRODUCTION
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`Google argues that the case should be stayed pursuant to the “first-to-file doctrine” in
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`favor of a Declaratory Judgment Act case Google filed on January 31, 2014 in the Northern
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`District of California (the “N.D. Cal. Action”). Dkt. 15-00 at 1. Alternatively, Google seeks
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`transfer, asserting that California is “most conducive to the convenience of the parties and
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`witnesses and the interests of justice.” Id. Google is mistaken on both counts.
`There is no basis for a stay because the N.D. Cal. Action is not first-filed. The first-filed
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`action (the “Amazon Action”) commenced in this Court on December 17, 2013, when
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`ContentGuard filed a complaint asserting the same nine U.S. patents at issue in the N.D. Cal.
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`Action. The Amazon Action complaint (1) set forth allegations of infringement that substantially
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`overlap with those at issue in the N.D. Cal. Action; and (2) named as defendants manufacturers
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`of hardware (e.g., smartphones and tablets) upon which ContentGuard’s infringement allegations
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`are based, including Google’s wholly-owned subsidiary Motorola Mobility LLC (“Motorola”).
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`While Google seems to argue that the Amazon Action is irrelevant because it is allegedly
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`“peripheral” and “Google itself is not a party to [it]” (Dkt. 15-00 at 6, 4), that is wrong as a
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`matter of law. This Court’s precedent is clear: “The first-to-file rule applies when the two
`actions involve closely related questions or subject matter or the core issues substantially
`overlap.” Quest Med. Inc. v. Acclarent, Inc., 2006 U.S. Dist. LEXIS 96826, at *4 (E.D. Tex.
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`Oct. 26, 2006) (citations omitted, emphasis added). Stated differently, the first-to-file rule turns
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`on which court first obtains “possession of the subject of the dispute,” not the parties to the
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`dispute. Synqor, Inc. v. Ericsson Inc., 2011 U.S. Dist. LEXIS 39904, at *5 (E.D. Tex. Mar. 7,
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`2011) (citations omitted). Here, this Court obtained possession of ContentGuard’s patent
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`infringement allegations six weeks before the N.D. Cal. Action was filed. Furthermore, there is
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`no reason to disregard the first-filed Amazon Action. While Google attempts to invoke the
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`“customer-suit” exception by suggesting that ContentGuard’s claims for patent infringement are
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`all about Google software, that is just not true. To the contrary, ContentGuard’s infringement
`allegations include claims that require elements found in hardware, not simply the Google
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`Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 3 of 18 PageID #: 574
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`software that runs on it. There is thus no basis for a stay. Rather, the proper course of action is
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`to consolidate this case with the Amazon Action, as ContentGuard has requested, and efficiently
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`resolve all of ContentGuard’s patent infringement allegations in the same forum. See Dkt. 14.
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`Google’s motion for transfer based on alleged “convenience” factors (see Dkt. 15-00 at 8)
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`is equally meritless. While Google pretends that this dispute involves only two sources of
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`proof—Google and ContentGuard—that characterization is entirely at odds with ContentGuard’s
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`case. Most notably, as Motorola admits in a pleading filed in the Amazon Action, where it is
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`represented by the same lawyers who represent Google here,
`ContentGuard’s allegations of infringement as to each defendant in this action . . .
`are based on the particular hardware that is designed and sold by each
`defendant. . . . It is the sale of the hardware that underlies the infringement
`allegation against each and every defendant in this case, including Motorola.
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`Lelutiu Decl. Ex. 1 at 6 (emphasis added). By Google’s own admission, therefore, equally
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`relevant to the question of Google’s infringement are witnesses knowledgeable about the
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`operation, use, and sale of devices made by the hardware manufacturers named in the Amazon
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`Action, including Google’s wholly-owned subsidiary Motorola.
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`And despite Google’s puzzlement regarding the connection between this dispute and the
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`State of Texas (see Dkt. 15-00 at 10), the fact is that all hardware manufacturers that incorporate
`Google software in their devices, thereby infringing ContentGuard’s patents, have extremely
`strong connections to Texas and the Eastern District in particular. First and foremost, just 35
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`miles away from ContentGuard’s Plano, Texas, headquarters, Google’s wholly-owned subsidiary
`Motorola manufactures infringing devices—at a rate of 100,000 units per week. Lelutiu Decl.
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`Exs. 2, 3; Lelutiu Decl. ¶ 4. In addition: (1) Samsung’s U.S. operations are headquartered in
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`Richardson, Texas, 14 miles away from ContentGuard’s headquarters (Lelutiu Decl. Ex. 4;
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`Lelutiu Decl. ¶ 5); (2) many Amazon devices accused of infringement use chipsets made by
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`Texas Instruments, a company that maintains a fabrication facility in Richardson, Texas, 12
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`miles away from ContentGuard’s headquarters (Lelutiu Decl. Exs. 5, 6; Lelutiu Decl. ¶ 7); and
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`(3) Huawei’s U.S. operations are headquartered in Plano, Texas, less than half-a-mile away from
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`Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 4 of 18 PageID #: 575
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`ContentGuard’s own headquarters (Lelutiu Decl. Ex. 7; Lelutiu Decl. ¶ 8). These facts alone
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`warrant denial of transfer, and it is frankly disingenuous for Google to not even once
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`acknowledge that it owns Motorola, one of the hardware manufacturers named in the Amazon
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`Action. PersonalWeb Techs, LLC v. NEC Corp. of Am., Inc., 2013 U.S. Dist. LEXIS 46296, at
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`*60-65, 75-78 (E.D. Tex. Mar. 21, 2013) (“As much as they try, the HP Defendants cannot avoid
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`the fact that [one of their subsidiaries] is headquartered in the Eastern District of Texas . . . .
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`HPES, a wholly-owned subsidiary of HP, employs over 5000 people at its headquarters in the
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`Eastern District of Texas. This fact alone, coupled with PersonalWeb’s Tyler location, makes
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`transfer inappropriate.”).
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`In short, this Court is the one that first had possession of the subject matter of the dispute,
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`and it remains ideally suited to efficiently resolve ContentGuard’s claims. That conclusion is
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`underscored by the fact that Google’s wholly-owned subsidiary Motorola, despite having already
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`filed a pleading-related motion, has not moved to transfer. Lelutiu Decl. ¶ 2.
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`RELEVANT FACTS
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`Plano-based ContentGuard is a leading innovator, developer, and licensor of digital rights
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`management (“DRM”) and digital content distribution products. Dkt. 1 ¶ 1. ContentGuard’s
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`long history of innovation began decades ago at Xerox Corporation’s legendary Palo Alto
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`Research Center (“Xerox PARC”), where Xerox PARC scientists laid the technological
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`foundation for what has become the prevailing paradigm for distributing digital content over the
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`Internet and cellular networks. Id. ¶¶ 2, 4.
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`ContentGuard’s foundational DRM technologies are used in virtually every device
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`capable of rendering digital content. Id. ¶ 12. Over the years, companies such as Casio, Fujitsu,
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`Hitachi, LG, Microsoft, NEC, Nokia, Panasonic, Pantech, Sanyo, Sharp, Sony, and Toshiba,
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`embraced ContentGuard’s DRM solutions and agreed to pay substantial royalties to use them.
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`Id. ¶ 31. A small number of industry participants, however, refused to take a license. Id. ¶ 34.
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`On December 17, 2013, after extensive efforts to avoid litigation, ContentGuard filed suit
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`against Amazon.com, Inc.; Apple, Inc.; BlackBerry Corporation; Huawei Device USA, Inc.; and
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`Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 5 of 18 PageID #: 576
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`Motorola. Id. As explained infra, the Eastern District forum made perfect sense for
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`ContentGuard’s lawsuit because, even putting aside the location of ContentGuard’s headquarters,
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`the defendants had strong connections to Texas and this District. On January 17, 2014,
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`ContentGuard amended its complaint, adding two additional U.S. defendants, including Samsung
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`Electronics America, Inc. and HTC America Inc. and their respective foreign parents, as well as
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`foreign parents for certain of the original defendants.
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`In the amended complaint filed in the Amazon Action (Dkt. 15-01), ContentGuard
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`explained that infringement was based in part on the interaction between hardware devices made
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`by the defendants and software “apps,” pre-installed and/or distributed through Google Play, a
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`Google-owned and -operated digital platform for the distribution of digital content. In particular,
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`ContentGuard alleged that (see id. ¶¶ 52-53):
`[E]ach of the Defendants have accused products and methods that use one or
`more of the Google Play “apps” . . . to practice the claimed inventions. For
`example, Google Play Books and Google Play Music are available and have been
`used in accused devices made by each of the Defendants . . . .
`[In addition,] there is a logical relationship and many actual links between the
`infringement claims against the Defendants arising out of their common use of the
`Google Play “apps”. Google supplies the Google Play “apps” that are used by all
`Defendants to practice the claimed inventions, and the Google Play “apps”
`operate the same way relative to the patents.
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`The Amazon Action, however, is not limited to allegations concerning Google Play
`software “apps” used with the defendants’ hardware devices. To the contrary, ContentGuard
`expressly accused the use of any “app” that provides DRM functionality in combination with the
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`hardware manufactured by the defendants. See generally id. ¶¶ 57-125. Google itself concedes
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`that the infringement allegations in the Amazon Action against each hardware manufacturer
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`reach beyond Google Play. Dkt. 15-00 at 2 (noting that ContentGuard’s claims encompass
`“various software applications that manage digital rights, including the software offered by
`Google’s Google Play apps, as well as the Kindle app and a standard known as UITS”)
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`(emphasis added).
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`Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 6 of 18 PageID #: 577
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`On January 31, 2014, Google filed the N.D. Cal. Action, in which it seeks a declaration
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`that “[n]o version of Google Play Books, Google Play Music, and/or Google Play Movies . . .
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`directly or indirectly infringes the [nine patents asserted in the Amazon Action].” Dkt. 15-02 ¶
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`22. In its Complaint and the motion now before the Court, Google admits that the impetus for
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`the N.D. Cal. Action was the filing of the Amazon Action. Id. ¶ 1; Dkt. 15-00 at 7.
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`On February 5, 2014, ContentGuard filed this case, in which it asserts the same nine U.S.
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`patents at issue in the Amazon Action. Dkt. 1. ContentGuard’s infringement allegations against
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`Google are based upon the exact same type of activities at issue in the Amazon Action. Id.
`Importantly, however, ContentGuard’s claims against Google are not limited to activities
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`involving making available and supporting Google Play software on third-party hardware. Most
`notably, ContentGuard has accused certain devices made and sold under a Google-owned
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`trademark, Nexus. Id. ¶¶ 16, 39, 41, 43, 45, 47, 49, 51, 53, 55; Lelutiu Decl. Ex. 8. Nexus
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`devices are made to Google’s specifications by various manufacturers, including Samsung and
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`Google’s wholly-owned subsidiary Motorola. Lelutiu Decl. Exs. 9, 10. Thus, ContentGuard’s
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`case against Google is in fact broader than the N.D. Cal. Action, which makes no mention of
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`Nexus devices and does not seek a declaration of non-infringement with respect to those devices.
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`On February 19, 2014, ContentGuard filed a motion to consolidate its case against
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`Google with the Amazon Action. Dkt. 14.
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`ARGUMENT
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`The Court should deny both aspects of Google’s motion. The request for a stay is plainly
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`frivolous because the Amazon Action is first-filed, and it is thus this Court’s prerogative to
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`decide the proper forum for ContentGuard’s claims.
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`Google’s half-hearted request for a transfer order is just as misguided. As an initial
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`matter, Google’s presence in Fort Worth, Texas, where its wholly-owned subsidiary Motorola is
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`making infringing devices at a rate of 100,000 units per week, coupled with ContentGuard’s
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`headquarters in the Eastern District of Texas, is dispositive. See PersonalWeb Techs, 2013 U.S.
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`Dist. LEXIS 46296, at *60-65. And even if the Court were to ignore Motorola’s substantial
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`Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 7 of 18 PageID #: 578
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`Texas presence, there is ample proof that highly relevant evidence is located in Texas and within
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`the Eastern District, and no considerations exist to support transfer.
`I.
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`Google’s Request for a Stay Should Be Denied
` “The first-to-file rule applies when the two actions involve closely related questions or
`subject matter or the core issues substantially overlap.” Quest Med. Inc., 2006 U.S. Dist.
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`LEXIS 96826, at *4 (citations omitted, emphasis added). For the first-to-file rule to apply, “the
`core issues do not need to be identical and complete identity of the parties is not required.” Id.
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`(emphasis added). Rather, the first-to-file rule turns on which court first obtains “possession of
`the subject of the dispute.” Synqor, 2011 U.S. Dist. LEXIS 39904, at *5 (citations omitted).
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`This Court’s precedent “hold[s] that ‘the first-to-file rule gives the first filed court the
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`responsibility to determine which case should proceed.’” Id. at *4. “The general rule favors the
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`forum of the first-filed action as the forum for resolving all the issues in dispute.” Quest Med.
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`Inc., 2006 U.S. Dist. LEXIS 96826, at *3 (citations omitted).
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`Against this background, Google’s attempts to paint the N.D. Cal. Action as “first-filed”
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`and characterize the Amazon Action as irrelevant and “peripheral” are not credible.
`First, Google’s argument that it is “not a party” to the Amazon Action (Dkt. 15-00 at 4)
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`ignores that the first-to-file rule does not require “complete identity of the parties.” Quest Med.
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`Inc., 2006 U.S. Dist. LEXIS 96826, at *4. And while Google tries to make some hay out of the
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`fact that ContentGuard’s case against Google was filed “separately” from the Amazon Action
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`(Dkt. 15-00 at 4), that is a red herring. As ContentGuard already explained (Dkt. 14 at 3),
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`ContentGuard would have preferred to add Google to the Amazon Action; however, because
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`ContentGuard had already amended its complaint, it could not make another amendment without
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`consent from the Amazon Action defendants or leave of court. ContentGuard chose the path of
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`least resistance and then promptly moved for consolidation.
`Second, Google’s invocation of the so-called “customer suit exception” to the first-to-file
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`rule (Dkt. 15-00 at 6-7) is unavailing. Google is correct that, as a general matter, “litigation
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`against or brought by the manufacturer of infringing goods takes precedence over a suit by the
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`patent owner against customers of the manufacturer.” Dkt. 15-00 at 6 (quoting Katz v. Lear
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`Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990)). But Google’s alleged “customers” are not
`merely end users or resellers—they are also manufacturers of infringing hardware. Moreover,
`in evaluating the customer suit exception “[the] primary question is whether the issues and
`parties are such that the disposition of one case would be dispositive of the other.” Katz, 909
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`F.2d at 1463 (emphasis added). For that reason, the customer-suit exception cannot be invoked
`by a manufacturer that, like Google here, makes only a component of the accused hardware. See
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`Microsoft Corp. v. Commonwealth Sci. & Indus. Res. Org., 2007 U.S. Dist. LEXIS 91550, at *10
`(E.D. Tex. Dec. 13, 2007). Here, it is clear that the N.D. Cal. Action would not be dispositive of
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`ContentGuard’s claims against the Amazon Action hardware defendants. Google concedes this
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`very point in its Motion to Enjoin filed in the N.D. Cal. Action, when arguing that
`[A] determination in this case that Google Play [apps] . . . do not infringe the
`ContentGuard patents would answer one (but only one) of the questions at issue
`in the [Amazon] Action—whether the use of these same Google “apps” on the
`manufacturer’s accused devices constitutes infringement.
`Dkt. 15-05 at 11 (emphasis added). This concession and Google’s component-supplier status
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`doom the applicability of the customer-suit exception.
` Third, Google’s reliance on Adobe Systems Inc. v. Select Retrieval, LLC, 2014 U.S. Dist.
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`LEXIS 15165 (S.D. Cal. Feb. 6, 2014), is unavailing. In Adobe, the U.S. District Court for the
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`Southern District of California allowed a declaratory judgment action filed by a software
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`manufacturer (Adobe) to proceed notwithstanding the pendency of other cases filed by the patent
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`holder against Adobe’s customers. Adobe, however, is entirely distinguishable. As an initial
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`matter, Adobe is nothing more than an illustration of the customer-suit exception. Indeed, the
`court expressly found that Adobe’s dispute with the patent holder would have been dispositive as
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`to each of Adobe’s customers. Id. at *13-14. Here, in contrast, Google has conceded that its
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`dispute with ContentGuard is not outcome-determinative with respect to the Amazon Action.
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`Moreover, in the Adobe case, the patent owner made a choice not to sue Adobe in any of the
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`courts in which it was pursuing Adobe’s customers. Id. at *13. Here, in contrast, ContentGuard
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`has sued both Google and its wholly-owned subsidiary Motorola in this Court, and has also
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`moved to consolidate the two cases. Thus, the Adobe court’s concern that Adobe was not
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`adequately represented in the customer suits, see id. at *14, is absent here.
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`In sum, because the Amazon Action is first-filed, there is no basis to stay this case.
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`II.
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`Google’s Motion for Transfer Should Be Denied
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`Under 28 U.S.C. § 1404(a), a party seeking transfer must prove that the transferee forum
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`is “clearly more convenient” than the venue chosen by the plaintiff. In re Volkswagen of
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`America, Inc., 545 F.3d 304, 315 (5th Cir. 2008). This is a “significant burden,” which is not
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`met when transfer would merely shift the inconvenience from one district to another. Kahn v.
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`Gen. Motors Corp., 889 F.2d 1078, 1083 (Fed. Cir. 1989); Thomas Swan & Co. v. Finisar Corp.,
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`2014 U.S. Dist. LEXIS 773, at *10 (E.D. Tex. Jan. 6, 2014). Google has not come remotely
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`close to meeting its burden. Indeed, Google’s conclusory assertions that Northern California is a
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`more convenient forum ignore both Google’s connection to Texas (where Google’s subsidiary
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`Motorola makes infringing devices every single day), and the vast amount of relevant evidence
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`located within or close to this District.
`A.
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`The Convenience of the Parties and Witnesses Does Not Favor Transfer
`1. The relative ease of access to sources of proof does not favor transfer
`Google asserts that all “material decisions relating to . . . Google Play” are made in
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`California, where “a majority” of Google employees responsible for that platform are also
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`located. Dkt. 15-00 at 10. As an initial matter, the entirely conclusory nature of Google’s proof,
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`which consists of nothing more than a three-page declaration by a “People Analytics Manager”
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`whose knowledge base about Google’s infringing activities is a complete mystery (Dkt. 15-06),
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`is reason enough to deny the motion to transfer. See In re Apple, 2014 U.S. App. LEXIS 3787,
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`at *5 (Fed. Cir. Feb. 27, 2014) (holding that district court was justified to deny transfer where the
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`evidence submitted by the movant was “so general in nature that the court was unable to evaluate
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`its relevance”). And even if the Court were to credit the conclusory statements of Google’s
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`human resources declarant, who is plainly just a mouthpiece for Google’s legal department, his
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`assertions do not justify transfer.
`First, Google and ContentGuard are not the only sources of relevant proof.
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`ContentGuard’s claims against Google—which encompass claims for both direct and indirect
`infringement—require the use of Google Play “apps” on hardware made by third parties,
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`including the defendants in the Amazon Action. As Motorola acknowledges,
`ContentGuard’s allegations of infringement as to each defendant in this action . . .
`are based on the particular hardware that is designed and sold by each
`defendant. . . . It is the sale of the hardware that underlies the infringement
`allegation against each and every defendant in this case, including Motorola.
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`Lelutiu Decl. Ex. 1 at 6 (emphasis added). By Google’s own admission evidence concerning the
`design, manufacture, use, and sale of hardware that incorporates Google software will be of
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`crucial importance. Much of that evidence is located within this District or a short distance
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`away. In particular,
`• Google’s wholly-owned subsidiary Motorola makes infringing devices in Fort Worth,
`Texas, just miles away from the Eastern District, at a rate of 100,000 units per week.
`Lelutiu Decl. Ex. 2. Google’s Executive Chairman and former CEO Eric Schmidt
`traveled to Fort Worth for the opening ceremony and, with the manufacturing floor in the
`background, gave an interview to CNN noting that the Texas facility was “a bet we’re
`taking on America, on Texas, on this incredible workforce that’s assembled here. We
`think
`this
`is
`a
`very,
`very
`safe
`bet.”
` Lelutiu Decl. Ex.
`3;
`http://money.cnn.com/video/technology/2013/09/17/t-ts-schmidt-motorola.cnnmoney.
`Motorola, which markets itself as “a Google Company,” touts its Fort Worth presence in
`advertising, promoting Texas-made devices as “the only smartphone assembled in the
`USA.” Lelutiu Decl. Ex. 11.
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`• Google’s partner Samsung, the world’s most dominant maker of mobile devices, has its
`U.S. headquarters in Richardson, Texas, within the Eastern District. Lelutiu Decl. Ex. 4.
`In its Richardson facilities, Samsung “researches, develops and markets a variety of
`personal and business products throughout North America including handheld wireless
`phones, wireless communications infrastructure systems and enterprise communications
`systems.” Lelutiu Decl. Ex. 12.
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`• Many of Amazon’s Kindle tablets, which run a version of Google’s Android operating
`system, incorporate chipsets made by Texas Instruments, a company headquartered in
`Dallas that maintains a fabrication plant in Richardson, Texas, within the Eastern District.
`Lelutiu Decl. Exs. 5, 6.
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`• Google’s partner Huawei has its U.S. headquarters and other research facilities in Plano,
`Texas, less than half-a-mile away from ContentGuard’s own headquarters. Lelutiu Decl.
`Ex. 7.
`Google and Motorola’s own presence and manufacturing activities in Texas are, by
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`themselves, sufficient to deny the motion to transfer. PersonalWeb Techs, 2013 U.S. Dist.
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`LEXIS 46296, at *60-65 (“As much as they try, the HP Defendants cannot avoid the fact that
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`[one of their subsidiaries] is headquartered in the Eastern District of Texas . . . . HPES, a wholly-
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`owned subsidiary of HP, employs over 5000 people at its headquarters in the Eastern District of
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`Texas. This fact alone, coupled with PersonalWeb’s Tyler
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`location, makes
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`transfer
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`inappropriate.”). And even were that not the case, it is plain that transferring this case to
`California for the benefit of three Google employees, none of whom could be bothered to
`themselves provide testimony to the Court (Dkt. 15-06 ¶ 6), would merely shift inconvenience
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`from one forum to another. Indeed, given the substantial connection between Texas and the
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`Eastern District and the Google partners ContentGuard sued in the Amazon Action, it is clear
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`that scores of relevant witnesses are located in Texas and within the District. Finally, if Google’s
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`Executive Chairman is able to travel to Fort Worth to boast about Google’s commitment to
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`Texas (Lelutiu Decl. Ex. 3), three Google engineers should be able to attend trial in Marshall.
`Second, a substantial amount of relevant evidence is located outside both Texas and
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`California. For instance, Google’s subsidiary Motorola is headquartered in Illinois; defendant
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`Amazon.com, Inc. is headquartered in Washington; defendant Huawei Technologies Co., Ltd. is
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`headquartered in China; defendant HTC Corporation is headquartered in Taiwan; and defendant
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`Samsung Electronics Co., Ltd. is headquartered in South Korea. Given that evidence is scattered
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`throughout the U.S. and Asia, transfer is not appropriate. Stragent LLC v. Audi AG, 2011 U.S.
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`Dist. LEXIS 79688, at *23 (E.D. Tex. July 18, 2011) (transfer would not be substantially more
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`convenient “[b]ecause the relevant evidence is located in multiple states, including the transferor
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`forum”); Network-1 Sec. Solutions, Inc. v. D-Link Corp., 433 F. Supp. 2d 795, 800 (E.D. Tex.
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`2006) (transfer denied where witnesses were not localized in one geographical area).
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`Third, ContentGuard’s headquarters, key employees, hard-copy documents, and
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`electronic servers are located in Plano, Texas (Richardson Decl. ¶¶ 2, 5), and Google’s attempts
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`to discount and demean ContentGuard’s connections to Texas are unpersuasive. ContentGuard
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`had ample business reasons for its relocation to Plano, Texas including lower taxes and
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`operational costs. Richardson Decl. ¶¶ 6-8. Moreover, a large number of telecommunications
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`and digital-technology companies have facilities in the Plano area, making ContentGuard’s new
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`headquarters a good area to develop relationships with potential partners and customers.
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`Richardson Decl. ¶ 9. Perhaps most important, the area provides abundant access to talent for
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`ContentGuard’s growing product-development operation.
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` Richardson Decl. ¶ 11.
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`ContentGuard’s presence in Plano is neither ephemeral nor an artifact of litigation. Richardson
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`Decl. ¶¶ 3,14-15. To the contrary, ContentGuard conducts product-development, marketing, and
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`sales efforts in Plano, Texas, and its office there houses key employees such as Senior Research
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`Engineers Mai Vu and Michael Raley, Engineer Jeremy Tan, and Vice President of Licensing
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`and General Manager James Baker. Richardson Decl. ¶ 4. Put simply, ContentGuard came to
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`Texas to stay, and it is ironic that Google would demean ContentGuard’s presence in Texas
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`while at the same time touting to the world that it is making “a bet . . . on America, on Texas, on
`this incredible workforce that’s assembled here.” See supra.1
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`1 ContentGuard’s presence in Texas stands in stark contrast with the cases cited by Google. In In
`re Zimmer Holdings, Inc., the plaintiff moved into an office space shared with another of its
`counsel’s clients, and apparently had neither employees nor business in the district. 609 F.3d
`1378, 1379-81 (Fed. Cir. 2010). In In re Microsoft Corp., the plaintiff employed no one in the
`Eastern District, and its managing member answered business inquiries from the United
`Kingdom. 630 F.3d 1361, 1365 (Fed. Cir. 2011). In contrast, where the plaintiff has employees
`and legitimate business operations in the District, courts have credited the plaintiff’s location in
`the venue analysis. For instance, one court accepted the presence of a company that had been in
`the district for four months with a single employee, a Vice President of Marketing—a far less
`extensive operation than ContentGuard’s Plano headquarters. RMail Ltd. v. Docusign, Inc., 2012
`U.S. Dist. LEXIS 57559, at *5-6 (E.D. Tex. Apr. 23, 2012). Other courts have reached similar
`findings. Advanced Data Access LLC v. Toshiba Corp., 2012 U.S. Dist. LEXIS 187387, at *8-
`12 (E.D. Tex. Sept. 7, 2012) (finding that plaintiff had incorporated in the district eight months
`before filing, had principals working in the district, and had documents in the district)
`NovelPoint Learning LLC v. LeapFrog Enters., 2010 U.S. Dist. LEXIS 128906, at *12-16 (E.D.
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`Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 13 of 18 PageID #: 584
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`Fourth, while Google seizes on the fact that certain inventors of the patents-in-suit live in
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`California, almost all of those inventors have signed affidavits stating that they agree to appear
`for trial in Texas. Lelutiu Decl. Exs. 13-20. In the same declarations, the inventors also state
`their belief that ContentGuard has possession of all their documents relating to conception,
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`development, and reduction to practice of the inventions, which are located in ContentGuard’s
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`Plano, Texas offices. Id.; Richardson Decl. ¶ 4. Further, not all of the inventors are located in
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`California. Ms. Vu, an inventor on two of the patents-in-suit, works at ContentGuard and resides
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`in Plano. Lelutiu Decl. Ex. 21. Edward Lambert, an inventor on a third patents-in-suit, is Chief
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`Executive Officer of the Taco Bueno QSR restaurant chain and splits his time between the Dallas
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`area and Washington. Lelutiu Decl. Ex. 15. Another inventor, Bijan Tadayon is located in the
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`Washington D.C. area, which closer to the Eastern District than California. Lelutiu Decl. Ex. 21.
`Fifth, a number of third parties that are in possession of relevant evidence are located in
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`Texas or outside Northern California. As noted, a chip supplier for Amazon has a fabrication
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`facility in Richardson, Texas. Lelutiu Decl. Exs. 5, 6. One of ContentGuard’s key patent license
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`agreements was negotiated with individuals whom ContentGuard believes live in the Dallas area.
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`Baker Decl. ¶ 4. Furthermore, in the early 2000s, ContentGuard’s headquarters were located in
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`Bethesda, Maryland (Baker Decl. ¶ 7), and thus witnesses knowledgeable about ContentGuard’s
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`early sales and licensing efforts are likely to be located on the East Coast. Along the same lines,
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`two attorneys that prosecuted all of the patents-in-suit are located in Washington D.C.,
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`significantly closer to Texas than to California. Lelutiu Decl. Exs. 22, 23. The parties are likely
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`to require evidence from telecommunication providers, which represent a key link in the supply
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`chain for the accused hardware. Several telecommunications companies have significant
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`facilities in North Texas. For instance, AT&T Service, Inc. and AT&T Mobility are
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`headquartered in Dallas. See Geotag, Inc. v. Aromatique, Inc., 2013 U.S. Dist. LEXIS 173481,
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`at *20-21 (E.D. Tex. Jan. 14, 2013). Similarly, Verizon has a Richardson, Texas facility with
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`Tex. Dec. 6, 2010) (finding that plaintiff incorporated in Texas four months before litigation and
`that two principals lived in Texas).
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`Case 2:14-cv-00061-JRG-RSP Document 19 Filed 03/06/14 Page 14 of 18 PageID #: 585
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`6,500 employees. See Thomas Swan, 2014 U.S. Dist. LEXIS 773, at *9. Finally, discovery
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`concerning alleged prior art is likely to require depositions around the country.
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`
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`In summary, given Texas’s relevance to this dispute and the multitude of sources of proof
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`located around the United States and in Asia, the “relative ease of access to sources of proof”
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`prong does not favor transfer. Net Navigation Sys. v. Cisco Sys., 2012 U.S. Dist. LEXIS 18728