Case 2:17-cv-00516-JRG Document 61 Filed 01/09/18 Page 1 of 8 PageID #: 1242
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:17-cv-516-JRG
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT, LLC,
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`Plaintiff,
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`Defendant.
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`v.
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`APPLE, INC.,
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT, LLC’S SUR-REPLY IN
`OPPOSITION TO DEFENDANT APPLE, INC.’S MOTION (DKT. 53) TO
`TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
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`Case 2:17-cv-00516-JRG Document 61 Filed 01/09/18 Page 2 of 8 PageID #: 1243
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`Apple, Inc.’s (“Apple”) Reply continues to focus on a prior case in a different court
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`involving different parties and different patents. In view of the factors of this case, Apple has
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`failed to show that the Northern District of California is clearly more convenient or that transfer
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`would serve the interest of justice. First, relevant documents are maintained in this District.
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`Second, this District is more convenient for AGIS and relevant third party witnesses. Third,
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`Apple provides no support for its baseless contention that transfer would promote judicial
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`economy or how any local interest of the Northern District of California should weigh in favor of
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`transfer, let alone demonstrate that the Northern District of California is clearly more convenient.
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`I.
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`THE LOCATION OF DOCUMENTARY EVIDENCE DOES NOT JUSTIFY
`TRANSFER
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`Apple’s statement that “no relevant sources of proof exist in this District” is factually
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`incorrect. As AGIS explained in its opposition brief, an AGIS Inc. software developer lives and
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`works in this District under the direct supervision of Mr. Blackwell. While Apple is correct that
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`AGIS has not alleged that any AGIS products practice the asserted claims, Apple conflates AGIS
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`with its sister company, licensee, and practicing entity AGIS Inc. Mr. Armstrong maintains, in
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`this District, documents related to the design, development, and marketing of AGIS Inc. software
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`licensed under the Patents-in-Suit.1 This is not a case where the only relevant documents in the
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`District are those moved “just before the lawsuit,” as Apple contended in Optimum Power
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`Solutions; Mr. Armstrong has had access to AGIS Inc.’s documents for many years and his
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`residence in this District was unrelated to this lawsuit. Dkt. 57-1 ¶¶ 15-16. C.F. Optimum
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`Power Solutions LLC v. Apple, Inc., 794 F. Supp. 2d 696, 701 (E.D. Tex. 2011). Because
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`AGIS’s proof will come from, inter alia, records maintained in offices in this District, as well as
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`from its technical expert located in this District, this factor weighs against transfer. Dkt. 57-1
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`1 AGIS has not represented that it will not rely on AGIS Inc.’s practicing of the asserted patents in this case.
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`Case 2:17-cv-00516-JRG Document 61 Filed 01/09/18 Page 3 of 8 PageID #: 1244
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`¶ 12. Media LLC v. Adobe Sys. Inc., No. 6:07-cv-355, 2008 WL 819956, at *4 (E.D. Tex. Mar.
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`25, 2008); see also Odom v. Microsoft Corp., 596 F. Supp. 2d 995, 1000 (E.D. Tex. 2009).2
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`Regarding its own documents, Apple merely contends that documents “exist at Apple’s
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`headquarters in Northern California,” yet Apple does not contend that those very same
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`documents are inaccessible from this District. Dkt.59 at 1.3 Apple ignores the location of its own
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`source code which was produced at the offices of outside counsel in New York. Dkt 57 at 8.
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`II.
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`CONVENIENCE OF THE PARTIES AND WITNESSES AND COST OF
`ATTENDANCE FOR WILLING WITNESSES WEIGH AGAINST TRANSFER
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`First, this District is more convenient than the Northern District of California for all
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`AGIS and AGIS Inc. witnesses including Mr. Beyer, Mrs. Beyer, Mr. Blackwell, as well as Mr.
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`Sietsema, Mr. Armstrong, and Mr. Rice.4 Apple does not contest that this District is more
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`convenient for Mr. Sietsema and Mr. Armstrong. Dkt. 59 at 3-4. AGIS detailed Messrs.
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`Sietsema’s and Armstrong’s relevant knowledge and anticipated testimony, including their
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`knowledge relating to contracts and licenses involving AGIS’s intellectual property and AGIS’s
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`software development and quality assurance which relates to, inter alia, AGIS’s damages. Dkt.
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`57 at 4, 5; Dkt. 57-1 ¶¶ 15-17.5 Further, Apple does not dispute that this District is the most
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`convenient for AGIS’s technical expert, who is located in this District (Dkt. 59-3) and whose
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`2 Apple’s reliance on Optimum Power Sols., 794 F. Supp. 2d at 702 and Oyster Optics, LLC v. Coriant Am. Inc.,
`2017 WL 4225202, at *5 (E.D. Tex. Sept. 22, 2017) are misplaced because in those cases, there were no witnesses
`or documents located in the transferor district.
`3 See Aloft Media LLC v. Adobe Sys. Inc., No. 6:17-cv-355, 2008 WL 819956, at *4 (E. D. Tex. Mar. 25, 2008)
`(“[P]atent litigation usually involves sources of proof that are readily convertible to an electronic medium” and “it is
`presumed that the parties will exchange discovery electronically.”).
`4 Apple’s sur-reply brief focuses on the status of Mr. Rice as set forth in AGIS’s initial disclosures, however,
`Mr. Rice’s employment status is irrelevant because Mr. Rice is a willing witness in this District.
`5 Apple argues that the convenience of Mr. Sietsema should be discounted because his contacts with Texas are
`“presumably” recent (Dkt. 59 at 3 fn. 8), but he has worked in Austin Texas office since 2005 (Dkt. 57-1 ¶ 17).
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`Case 2:17-cv-00516-JRG Document 61 Filed 01/09/18 Page 4 of 8 PageID #: 1245
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`convenience is, contrary to Apple’s contention, relevant to the transfer analysis. Aloft Media,
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`2008 WL 819956, at *3, *5.6
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`Apple’s argument that the convenience of Mr. Beyer and Mr. Blackwell is entitled to
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`little weight because they live outside this District (Dkt. 59 at 3) is in contravention of Fifth
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`Circuit law. “When the distance between an existing venue for trial of a matter and a proposed
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`venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses increases
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`in direct relationship to the additional distance to be traveled.” In re Volkswagen AG, 371 F.3d
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`201, 204–05 (5th Cir. 2004). The Northern District of California is significantly more
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`inconvenient for both Mr. Beyer and Mr. Blackwell who would be required to travel an
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`additional 1620 miles and 1054 miles, respectively, if this action was transferred. See Dkt. 57-4.7
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`Apple also ignores that this District is convenient for Mr. Rice who has agreed to travel to this
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`District if called to testify. Dkt 57-1 ¶ 20.
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`Second, regarding convenience of potential third parties, Apple, for the first time in its
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`Reply, identifies numerous named inventors of alleged prior art patents. Dkt. 59 at 4. Apple
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`does not indicate whether any of these named inventors would be witnesses, nor does it meet its
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`burden to set forth evidence as to the relevance, materiality, and purported inconvenience of
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`these individuals. Aloft Media, 2008 WL 819956, at *5 (holding that defendant did not
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`demonstrate how existence of 47 prior art inventors would be important to their case.); Sanger
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`Ins. Agency, Inc. v. HUB Int’l, Ltd., 2014 WL 5389936, at *2 (E.D. Tex. Mar. 2, 2014) (Gilstrap,
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`J.). Similarly, Apple fails to set forth the relevance and materiality of the former AGIS
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`6 Berry v. Pilgrim’s Pride Corp., 2016 WL 6092701, at *3 (E.D. Tex. Oct. 19, 2016) cited by Apple, determined
`that experts are entitled to weight in a transfer analysis.
`7 That Mr. Blackwell testified in an unrelated case in Florida (Dkt 59 at 3) is irrelevant to the transfer analysis.
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`Case 2:17-cv-00516-JRG Document 61 Filed 01/09/18 Page 5 of 8 PageID #: 1246
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`prosecuting attorney.8 Id.; Sanger, 2014 WL 5389936, at *2.
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`Additionally, Apple’s representations regarding the cellular carriers contravene publicly
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`available information. Apple states that “none of those companies has ever pursued or been
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`involved with any marketing related to the Apple features.” Dkt. 59 at 5. However, the carriers
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`explicitly market Apple’s “Find My iPhone” application on their websites. See, e.g., Exs. 16-18.
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`Moreover, Apple does not dispute that the cellular carriers may have information regarding the
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`value of the accused features. Dkt 59 at 4-5, Dkt. 57 at 11. These carriers are located in Dallas,
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`Texas, Kansas, and New York (Dkt. 57-2 ¶ 13), may have relevant witnesses in the District, and
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`will likely find Texas more convenient than California (MHL Tek, 2009 WL 440627, at *4).9
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`Third, regarding Apple’s own witnesses, Apple has failed to provide evidence as to the
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`“relevance and materiality” of the information its seven named individuals might have and has
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`failed to identify “evidence (e.g., a declaration from the [employees]) indicating that travel to
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`Marshall would constitute an inordinate inconvenience or expense.” Sanger, 2014 WL 5389936,
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`at *2. Apple’s statements that it “may” call one of these employees as a witness as they “may
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`have information relevant to the case” concerning the development, operation, functionality,
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`sales, and marketing of the Accused Products (Dkt. 59 at 2; 53 at 4), without more, is
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`insufficient. Sanger, 2014, WL 5389936, at *2.10 Further, Apple does not dispute that it
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`employs individuals in Texas, responsible for Apple products. See Dkt. 59; Dkt. 57-2 ¶¶ 9-10.
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`8 Apple also ignores that other prosecuting attorneys of the patents-in-suit are located in Massachusetts and Florida
`(Dkt. 59 at 4; Dkt 53 at 7), who, if called to testify, will likely find Texas more convenient than California (MHL
`Tek, LLC v. Nissan Motor Co., 2009 WL 440627, at *4 (E.D. Tex. Feb. 23, 2009)).
`9 That AGIS has not yet issued subpoenas to the cellular carriers (Dkt. 59 at 4-5) is irrelevant, as the deadline for
`document production has not yet passed. Dkt. 46 at 3.
`10 Godo Kaisha IP Bridge 1 v. Xilinx, Inc., cited by Apple, is inapposite because in that case the defendant set forth,
`in detail, the relevant knowledge of its employees and the aspects of the case for which the witnesses would be
`providing testimony. Godo Kaisha IP Bridge 1 v. Xilinx, Inc., 2017 WL 4076052, at *4 (E. D. Tex. Sept. 14, 2017).
`4
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`Case 2:17-cv-00516-JRG Document 61 Filed 01/09/18 Page 6 of 8 PageID #: 1247
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`Despite Apple’s self-serving declarations, AGIS submitted evidence that Apple employs
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`individuals in Texas who are likely to have information relevant to this action. Dkt. 57-2 ¶¶ 9-10.
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`At this stage, courts are required to resolve such conflicts in the plaintiff’s favor. Payne v.
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`Grayco Cable Servs., Inc., 2011 WL 13076902, at *3 (E.D. Tex. Dec. 8, 2011). Thus, Apple’s
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`employees located in Texas are relevant to this analysis, and this District is more convenient for
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`them than California.
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`III.
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`JUDICIAL ECONOMY AND THIS DISTRICT’S LOCALIZED INTEREST IN
`THIS DISPUTE WEIGHS AGAINST TRANSFER
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`This District has a significant interest in “adjudicating a dispute brought by one of its
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`own residents.” Thurmond v. Compaq Computer Corp., 2000 WL 33795090, at *13 (E. D. Tex.
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`Mar. 1, 2000). AGIS is a Texas company, with its principal place of business operating in this
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`District. Dkt. 57-1 ¶ 9. Apple has failed to provide evidence to controvert AGIS’s sworn
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`testimony regarding its legitimate business activities in this District.11 Additionally, the related
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`AGIS Texas Cases, which involve the same patents-in-suit and underlying technology, weighs
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`against transfer because granting transfer would duplicate the proceedings. RPost Holdings, Inc.
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`v. StrongMail Sys., Inc., 2013 WL 4495119, at *5 (E.D. Tex. Aug. 19, 2013) (Gilstrap, J.). This
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`is precisely the type of “wastefulness of time, energy and money that § 1404(a) was designed to
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`prevent.” In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009).
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`IV. CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court deny Apple’s
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`Motion to Transfer Venue.
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`11 Apple’s reliance on IDB Ventures, LLC v. DSW Inc., No. 2:17-cv-523 (E. D. Tex. Dec. 18, 2017), Dkt. 31 at 4, is
`misplaced because in that case the plaintiff did not controvert a single argument or piece of evidence set forth by the
`defendant in support of the defendant’s argument that the transferee district was clearly more convenient.
`5
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`Case 2:17-cv-00516-JRG Document 61 Filed 01/09/18 Page 7 of 8 PageID #: 1248
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`Dated: January 9, 2018
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`BROWN RUDNICK LLP
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`
`
`/s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique William Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`
`Samuel F. Baxter
`Texas State Bar No. 01938000
`sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: 903-923-9000
`Facsimile: 903-923-9099
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`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT, LLC
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`6
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`Case 2:17-cv-00516-JRG Document 61 Filed 01/09/18 Page 8 of 8 PageID #: 1249
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on January 9, 2018, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court's CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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