Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 1 of 9 PageID #: 3067
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT, LLC,
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`Plaintiff,
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`v.
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`HTC CORPORATION,
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`Defendant.
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`CASE NO. 2:17-CV-0514-JRG
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`JURY TRIAL DEMANDED
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`HTC CORPORATION’S OPPOSED MOTION TO
`SUPPLEMENT THE RECORD IN SUPPORT OF MOTION TO DISMISS
`PURSUANT TO FED. R. CIV. P. 12(B)(2) OR, IN THE ALTERNATIVE,
`TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
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`Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 2 of 9 PageID #: 3068
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`Defendant HTC Corporation (“HTC” or “Defendant”) respectfully submits this opposed
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`motion to supplement the record in support of its pending Motion to Dismiss Pursuant to Fed. R.
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`Civ. P. 12(b)(2) or, in the Alternative, to Transfer Venue to the Northern District of California.
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`D.I. 29.
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`I.
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`BACKGROUND
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`On January 22, 2018, HTC moved to transfer the above-captioned action filed by AGIS
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`Software Development LLC (“Plaintiff” or “AGIS”) to the Northern District of California. See
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`D.I. 29. In support of a change in venue, HTC submitted evidence that the core of the accused
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`applications in this case is provided by third-party Google LLC (“Google”), and the relevant
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`witnesses and information about those functionalities are located in and around Northern
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`California. See D.I. 29 at 6, 17-18; see also D.I. 47 at 2-6. HTC submitted declarations from
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`Google witnesses establishing that, for the accused functionality for Google Maps for Mobile
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`application and Google’s Find My Device (formerly known as Android Device Manager), the
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`relevant source code and other information regarding these applications is confidential and
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`proprietary, and that those documents and relevant Google witnesses are located in the Northern
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`District of California. D.I. 29 at 6 (citing 2:17-cv-00513-JRG, D.I. 36-6, ¶¶ 1, 6-8); D.I. 29 at 5
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`(citing 2:17-cv-00513-JRG, D.I. 36-4 at ¶¶ 1, 4; 2:17-cv-00513-JRG, D.I. 36-5 at ¶ 1; and 2:17-
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`cv-00513-JRG, D.I. 36-6 at ¶¶ 6-8). AGIS itself confirmed that these were the core accused
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`applications for the case when it served its Disclosure of Asserted Claims and Infringement
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`Contentions on January 19, 2018. D.I. 29-33.
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`At the time of briefing for the Motion to Transfer Venue, AGIS dismissed the relevance,
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`location and convenience of non-party Google, arguing that “much of that information
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`[concerning the accused functionality related to Google’s Android Operating System] is publicly
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`available through either open source code or public application programming interfaces (‘API’).”
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`Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 3 of 9 PageID #: 3069
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`D.I. 40 at 2, 24. In fact, AGIS explicitly disputed Google’s possible role as a non-party and took
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`the position that any discovery into Google’s confidential and proprietary source code and other
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`information for Google Maps and Find My Device is irrelevant. D.I. 40 at 24-25. Plaintiff
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`further argued that:
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` “HTC also contends that potential non-party witnesses, such as Google, are
`located in and around the Northern District of California. [] However, HTC fails
`to identify how any evidence or testimony from Google witnesses will be relevant
`to this action.” D.I. 40 at 6.
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` “HTC’s argument regarding the relevance of Google generally [] also fails. HTC
`contends that ‘Google’s publicly available open-source code is not what is
`actually relevant’ to this action. [] This argument is entirely ignores that AGIS’s
`infringement contentions rely significantly on Google’s publicly available source
`code.” D.I. 49 at 5.
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` “In this case, AGIS accuses HTC’s mobile phone devices of infringing the
`Patents-in-Suit––not Google’s devices. Even if Google possesses relevant
`documents and employs individuals who have knowledge about the Accused
`Products and functionality, HTC has not demonstrated why any specific Google
`witness or document would necessitate transfer to the Northern District of
`California.” D.I. 40 at 2.
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` “HTC has failed to meet this burden. HTC . . . failed to identify third party
`witnesses from . . . Google, let alone provide evidence as to the relevant and
`materiality of each witness or set forth evidence by each witness identifying any
`purported inconvenience.” D.I. 40 at 19.
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` “HTC fails to identify any witnesses employed by Google, or provide evidence of
`their relevance and materiality.” D.I. 40 at 20.
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`New evidence has recently emerged confirming HTC’s argument that the location and
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`convenience of non-party Google weighs in favor of transfer to the Northern District of
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`California. On August 23, 2018 and August 29, 2018, AGIS served deposition and document
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`subpoenas on Google in both of the consolidated cases against Android Defendants, AGIS
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`Software Development LLC v. Huawei Device USA Inc., et al., No. 2:17-cv-513-JRG (E.D. Tex.)
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`and AGIS Software Development LLC v. HTC Corp., No. 2:17-cv-514-JRG (E.D. Tex.). See Ex.
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`A; see also D.I. 66-2 (Google subpoena submitted in 513 matter against Huawei).
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`Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 4 of 9 PageID #: 3070
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`AGIS’s subpoena undermines the credibility of its previous efforts to discount the
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`relevance of Google’s witnesses, source code and other information to this action.
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`Notwithstanding AGIS’s representations that AGIS’s infringement contentions rely only on
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`“publicly available open source code or public APIs,” D.I. 40 at 24 and D.I. 49 at 7, AGIS’s
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`subpoenas seek the confidential and proprietary source code for Google Maps and Find My
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`Device. AGIS also seeks from Google other technical documents that show the operation,
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`design, development, functionality, features, testing, and manufacture of Google Maps and Find
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`My Device. Furthermore, AGIS also seeks the communication protocols used with Android
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`Applications between one or more Google Servers and/or one or more other Android Devices
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`and the source code for Google Servers.
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`Indeed, the subpoenas confirm that the key sources of evidence regarding the operation,
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`design, and function of the applications identified in AGIS’s Infringement Contentions reside
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`with Google in and around the Northern District of California. Because Google’s documents and
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`witness testimony helps resolve critical issues regarding the accused applications, HTC
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`respectfully submits that AGIS’s service of the subpoenas on Google confirms the
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`appropriateness of transferring the present litigation to the Northern District of California
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`pursuant to 28 U.S.C. § 1404(a).
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`II.
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`ARGUMENT
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`When resolving a challenge to the propriety of venue, this Court enjoys broad discretion
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`to allow the moving party to supplement the record with additional facts and evidence. See, e.g.,
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`Murungi v. Touro Infirmary, No. 6:11-cv-0411, 2011 WL 3206859, at *2 (W.D. La. June 29,
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`2011) (noting the broad discretion to consider supplemental evidence when ruling on a motion to
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`transfer venue); accord Ambraco, Inc. v. Bossclip B.V., 570 F.3d 233, 238 (5th Cir. 2009) (noting
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`the Court’s broad discretion to consider supplemental evidence when ruling on a Rule 12(b)(1)
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`Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 5 of 9 PageID #: 3071
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`or 12(b)(3) motion). Exercise of such discretion is appropriate when new information emerges
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`that can assist the Court’s consideration of the transfer motion. See, e.g., Nationwide Mutual Ins.
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`Co. v. The Overlook, LLC, No. 4:10-cv-00069, 2010 WL 2520973, at *10 (E.D. Va. June 17,
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`2010) (granting motion to supplement a transfer motion because it assisted the court’s
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`consideration of the matter).
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`In the present matter, HTC respectfully submits that the subpoena on Google will
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`advance the Court’s consideration of the transfer venue motion by, inter alia, demonstrating that
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`the relative ease of access to sources of proof and convenience for witnesses factors favor
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`transfer, and confirming that AGIS’s arguments downplaying the relevance of Google’s
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`documents and witnesses was an argument of convenience during transfer briefing that AGIS has
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`abandoned now that it actually must litigate the merits of its claims.
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`In HTC’s Motion to Transfer Venue, HTC argued that relevant documents, including
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`highly proprietary source code, and witnesses with knowledge relating to the operation, design,
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`and function of the third-party Accused Applications are located in the Northern District of
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`California or at locations far more convenient to the Northern District of California than to the
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`Eastern District of Texas. See D.I. 29 at 6; see also D.I. 47 at 3-6. In its opposition, Plaintiff
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`repeatedly suggested that the relevant Google documents are already publicly available, and thus
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`should not be considered under the access to sources of proof factor. Dkt. 40 at 2 (“While AGIS
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`has accused functionality related to Google’s Android Operating System, much of that
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`information is publicly available through either open source code or public application
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`programming interfaces (‘API’).”); id. at 24-25 (“AGIS’s infringement contentions rely on
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`Google’s open source code and/or application programming interfaces which are publicly
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`Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 6 of 9 PageID #: 3072
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`available”); D.I. 49 at 7 (“AGIS’s infringement contentions rely on Google’s open source code
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`and/or application programing interfaces, which are publicly available.”)
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`The subpoenas to Google, however, establishes that Plaintiff’s arguments should not be
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`credited. Specifically, the document subpoena seeks, among other requests, the source code
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`related to the accused functionalities of Google Maps, Find My Device, and Android Device
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`Manager, and documents sufficient to show the structure, operation, design, development,
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`functionality, features, testing, and manufacture of the accused functionalities of Google Maps,
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`Find my Device, and Android Device Manager. These document requests confirm that AGIS
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`does not actually believe that its infringement case will rely solely on publicly available Google
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`documents, regardless of whatever AGIS put in its initial infringement contentions. Moreover,
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`AGIS seeks the production of such documents in the Northern District of California, further
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`confirming that the relevant documents in the instant case are located in the Northern District of
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`California.
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`HTC has consistently emphasized the importance of third party discovery in this case,
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`especially from Google. With respect to the convenience of the parties and witnesses factor,
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`HTC made it clear that “[t]he functionality and operation of Google’s apps are critical, and
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`central, to AGIS’s infringement claim,” and that “Google’s source code for its apps is closed”
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`and not publicly available. D.I. 29 at 17. In its Opposition, Plaintiff dismissed the relevance of
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`Google witnesses. D.I. 40 at 6. AGIS’s deposition subpoena, which was noticed in the Northern
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`District of California, seeks testimony explaining the source code for Google Maps and Find My
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`Device, as well as testimony on the structure, operation, design, development, functionality,
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`features, testing, and manufacture for the accused features of Google Maps and Find My Device.
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`Thus, the deposition subpoena shows that Google’s witnesses are not only relevant but crucial to
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`Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 7 of 9 PageID #: 3073
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`understand the operation of the accused features of Google Maps and Find My Device, and that
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`those witnesses are located in the Northern District of California.
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`When considered in this context, AGIS’s position that it “has no sources of proof in the
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`proposed transferee district,” D.I. 40 at 27, is simply not true. AGIS does have a source of proof
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`in the Northern District of California—Google—and the evidence AGIS now seeks is precisely
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`the evidence HTC identified in its transfer motion and continues to point to. It is not appropriate
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`for AGIS to discount relevant Google documents and testimony for purposes of the transfer
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`analysis, yet simultaneously seek a deposition and documents from Google through a subpoena.
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`See In re Microsoft Corp., 630 F.3d 1361, 1364 (Fed. Cir. 2011) (“The Supreme Court has long
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`urged courts to ensure that the purposes of jurisdictional and venue laws are not frustrated by a
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`party’s attempt at manipulation.”). Accordingly, the Google subpoena demonstrates that relevant
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`evidence in this action resides in the Northern District of California and only further confirms the
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`appropriateness of transferring the present litigation to the United States District Court for the
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`Northern District of California pursuant to 28 U.S.C. § 1404(a).
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`III. CONCLUSION
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`For the foregoing reasons, HTC respectfully submits that the Court grant its motion to
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`supplement the record in support of its motion to dismiss or, in the alternative, transfer venue.
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`Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 8 of 9 PageID #: 3074
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`Dated: September 19, 2018
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`Respectfully submitted,
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`/s/ Miguel Bombach
`Matthew C. Bernstein, (Lead Attorney)
`CA State Bar No. 199240
`mbernstein@perkinscoie.com
`Miguel J. Bombach
`CA State Bar No. 274287
`mbombach@perkinscoie.com
`James Young Hurt (Pro Hac Vice)
`CA State Bar No. 312390
`jhurt@perkinscoie.com
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130-2594
`Tel: (858) 720-5700
`Fax: (858) 720-5799
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`Eric Findlay
`State Bar No. 00789886
`efindlay@findlaycraft.com
`FINDLAY CRAFT, P.C.
`102 N. College Ave., Suite 900
`Tyler, TX 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
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`ATTORNEYS FOR DEFENDANT
`HTC CORPORATION
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`Case 2:17-cv-00514-JRG Document 71 Filed 09/19/18 Page 9 of 9 PageID #: 3075
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on September 19, 2018, to all counsel of record who are deemed to
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`have consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Miguel J. Bombach
` Miguel J. Bombach
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`CERTIFICATE OF CONFERENCE
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`Pursuant to L.R. CV-7(i), the undersigned hereby certifies that counsel for HTC
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`Corporation conferred with counsel for AGIS via phone on September 19, 2018 regarding
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`whether AGIS opposes the motion and relief requested herein. Plaintiff opposes this motion.
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`/s/ Miguel J. Bombach
`Miguel J. Bombach
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